DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION. —The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-5, 9-13 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1, 9-13 recite the limitation “generating a three-dimensional reference plane…wherein in the generating of the three-dimensional reference plane, the three-dimensional reference plane is generated by coupling a plurality of different planes to one another, each of the plurality of different planes being defined by sequentially selecting two adjacent ones of the first specific points, and by two straight lines extending from a predetermined reference point and passing through the selected two adjacent ones of the first specific points”. It is unclear how the reference plane is three-dimensional, since a plane is generally known to be two-dimensional or how the step of coupling a plurality of different planes to one another makes it 3D. Furthermore, it is unclear how each of the recited different planes are considered planes and how sequentially selecting two adjacent points with lines passing through them create a plane. As shown in Figure 12, it appears that the reference plane (30) is two dimensional and is defined by a combination of a plurality of triangular plane portions that each is formed by an area between two straight lines passing from a reference point at the back of the arch and through two adjacent facial axis point and that being sequentially repeated along the entire arch form points as to combine into the reference plane. For examining purposes, it was understood that the reference plane is two-dimensional in a three-dimensional space and that each of the first specific points corresponds to a tooth of the patient arch form and through each of the first specific point along the arch, passes a straight line that extends from a predetermined reference point, such that every two adjacent lines define a portion of the reference plane with the predetermined reference point and the reference plane is generated by the combination of each portion to form the entire reference plane for said arch form. Clarification is required.
Claims 2-5, 11-13 are rejected under 35 USC 112(b) by virtue of dependency.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-5, 9-13 are rejected under 35 U.S.C. 101 because:
the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or
an abstract idea) without significantly more.
Regarding Claim 1:
Step 1 – The claim is drawn to a “method for generating an orthodontic teeth alignment shape” and is therefore a process.
Step 2A – The claim is drawn to an abstract idea. The abstract idea being a mental process. The
limitations of:
• extracting specific points from a plurality of teeth
• generating a three-dimensional patient arch form
• comparing the three-dimensional patient arch form
• generating the orthodontic teeth alignment shape
• selecting a standard arch form by overlaying and comparing it with the reference model
are all data manipulation steps and can be performed by a human mind (i.e. a mental process). The step of acquiring a model is considered mere data gathering and the step of using a trained network is considered as performing an abstract idea with artificial intelligence. The claim does not recite any additional elements that integrate the abstract idea into a practical application.
Step 2B- There are no further elements in the claim that amount to significantly more than the
judicial exception (abstract idea). The steps as disclosed are performed on a generic use computer (i.e.
judicial exception (abstract idea). These dependent claims merely recite further specifics of the data
being processed in the independent claim or they recite further data identification and selection steps which themselves are an abstract idea.
Regarding claims 2-5, these claims do not integrate the abstract idea into a practical application and they do not recite additional elements that amount to significantly more than the judicial exception (abstract idea). These dependent claims merely recite further specifics of the data being processed in the independent claim or they recite further data identification and selection steps which themselves are an abstract idea.
Regarding Claim 9:
Step 1 – The claim is drawn to “device for generating an orthodontic teeth alignment shape” and is therefore an apparatus.
Step 2A – The claim is drawn to an abstract idea. The abstract idea being a mental process. The
limitations of:
• extracting specific points from a plurality of teeth
• generating a three-dimensional patient arch form
• comparing the three-dimensional patient arch form
• generating the orthodontic teeth alignment shape
• selecting a standard arch form by overlaying and comparing it with the reference model
are all data manipulation steps and can be performed by a human mind (i.e. a mental process). The step of acquiring a model is considered mere data gathering and the step of using a trained network is considered as performing an abstract idea with artificial intelligence. The claim does not recite any additional elements that integrate the abstract idea into a practical application.
Step 2B- There are no further elements in the claim that amount to significantly more than the
judicial exception (abstract idea). The steps as disclosed are performed on a generic use computer (i.e.
judicial exception (abstract idea). These dependent claims merely recite further specifics of the data
being processed in the independent claim or they recite further data identification and selection steps which themselves are an abstract idea.
Regarding Claim 10:
Step 1 – The claim is drawn to “a computer program stored in a non-transitory recording medium” and is therefore an apparatus.
Step 2A – The claim is drawn to an abstract idea. The abstract idea being a mental process. The
limitations of:
• extracting specific points from a plurality of teeth
• generating a three-dimensional patient arch form
• comparing the three-dimensional patient arch form
• generating the orthodontic teeth alignment shape
• selecting a standard arch form by overlaying and comparing it with the reference model
are all data manipulation steps and can be performed by a human mind (i.e. a mental process). The step of acquiring a model is considered mere data gathering and the step of using a trained network is considered as performing an abstract idea with artificial intelligence. The claim does not recite any additional elements that integrate the abstract idea into a practical application.
Step 2B- There are no further elements in the claim that amount to significantly more than the
judicial exception (abstract idea). The steps as disclosed are performed on a generic use computer (i.e.
judicial exception (abstract idea). These dependent claims merely recite further specifics of the data
being processed in the independent claim or they recite further data identification and selection steps which themselves are an abstract idea.
Allowable Subject Matter
Claims 1-5, 9-13 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 101 and 35 U.S.C. 112(b) or 35 U.S.C. 112(pre-AIA ), 2nd paragraph set forth in this office action.
The following is a statement of reasons for the indication of allowable subject matter:
Matov (US 2007/0168152 A1) teaches a method for generating an orthodontic treatment involving generation of a three-dimensional model of a current representation of teeth and using reference objects, planes, points to create the orthodontic treatment for a desired arrangement of teeth. Matov teaches the method is performed automatically using an algorithm, however, does not specifically teach it being a trained network to extract points and using said points to create the three-dimensional model, or comparing the model to find a most similar model from a plurality of standard models and using the extracted points to generate the reference plane as claimed.
Sandholm (US 2016/0220200 A1) teaches overlaying orthodontic models to find a best match from a plurality of standard arches as to idealize a current tooth arrangement of teeth.
Lee (KR 2011/0065766 A) teaches using a reference plane formed according to a plurality of core points passing through each tooth and a predetermined core point on a reference line and further comparing and analyzing an interim core curve formed according to the arrangement of teeth currently being treated and to a normal/ideal core curve.
None of the closest prior art or combinations of them disclose or suggest the claimed method including extraction of points through a trained network function pre-learned to detect the points and using them as claimed to generate a model and applying them as recited to form the reference plane.
Response to Arguments
Applicant's arguments filed 4/29/2026 have been fully considered but they are not persuasive.
Claim Rejections – 35 U.S.C. 101
Applicant’s arguments regarding the 35 U.S.C. 101 rejections are considered but they
are not persuasive. Applicant argues that the claimed method and recited steps integrate the claims into a practical application and provide a technological improvement, such that they are not a mere mental process or mathematical algorithm, it’s a practical application that involves executing complex 3D spatial computations and utilizes a learned network function that exceeds cognitive capabilities of the human mind.
Applicant’s declaration providing studies showing that it was determined that calculation of the Facial axis points of the teeth, which are relied upon in the method, are often not accurate and highly depend on and vary with clinician experience and that said trained network was shown to improve accuracy and consistency and reduce errors in determination of said FA points. The declaration further states that the use of such AI network enables consistency when it comes to simultaneous processing of many coordinates and models and variables of different models, which is unrealistic for mental processing.
The examiner appreciates applicant’s efforts to provide evidence of technological improvement, However, the submitted arguments and studies are not sufficient to overcome the 101 rejections. The claimed method is directed to an abstract idea such that the steps fall under mere data gathering (i.e., the acquiring step), conventional computing and display systems performing their ordinary functions, routine digital steps (i.e., superimposing/overlaying models), and generic extra-solution activity. With respect to the trained network limitation, it appears that it is the abstract idea being performed by AI.
The evidence does not indicate that it impossible to perform such steps, or show any limitations as to why the claimed steps could not be done, even if difficult or time-consuming. The claimed trained network extracting the points automatically and being pre-taught to detect them is considered a machine-based algorithm that would also not be eligible since it is merely the abstract ideas being performed by artificial intelligence.
Although the recited steps and trained network techniques may improve the speed, accuracy and consistency and reduce errors and may eliminate the risk of dependability on human proficiency, it is not impossible or impractical to perform such steps by other means and the steps may be carried out mentally or with the aid of a generic computer. The trained network merely automates or accelerates the abstract process. Such advantages, alone, do not integrate the abstract idea into practical application, because they relate to the efficiency with which the abstract idea is performed rather than to an improvement in computer functionality or the technological field.
Under step 2A, Prong 1, the claims are directed to an abstract idea such that the steps involve data gathering and data analysis.
Under step 2A, Prong 2, the claims fail to integrate the abstract idea into a practical
application. The method merely uses a computing system to perform the abstract idea.
Under step 2B, the claims do not recite an inventive concept sufficient to transform the abstract idea into patent-eligible subject matter. The additional elements are conventional computing and display systems performing their ordinary functions, mere data gathering (i.e., the acquiring step), routine digital steps (e.g., superimposing/overlaying models), and generic extra-solution activity.
Therefore, the recited limitations are not found to amount to significantly more than the
judicial exception and the claims remain patentably ineligible under 35 USC 101.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892 attached to this office action.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LINA FARAJ whose telephone number is (571)272-4580. The examiner can normally be reached Monday-Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Edelmira Bosques can be reached at (571) 270-5614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LINA FARAJ/ Examiner, Art Unit 3772
/HEIDI M EIDE/ Primary Examiner, Art Unit 3772
8/6/2026
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