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 § 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.
The USPTO “Interim Guidelines for Examination of Patent Applications for Patent Subject Matter Eligibility” (Official Gazette notice of 23 February 2010), reads as follows (see also MPEP 2111.01):
CLAIMS MUST BE GIVEN THEIR BROADEST REASONABLE INTERPRETATION
During patent examination, the pending claims must be “given their broadest reasonable interpretation consistent with the specification.” >The Federal Circuit’s en banc decision in Phillips v. AWH Corp., 415 F.3d 1303, 75 USPQ2d 1321 (Fed. Cir. 2005) expressly recognized that the USPTO employs the “broadest reasonable interpretation” standard: The Patent and Trademark Office (“PTO”) determines the scope of claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction “in light of the specification as it would be interpreted by one of ordinary skill in the art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364[, 70 USPQ2d 1827] (Fed. Cir. 2004). Indeed, the rules of the PTO require that application claims must “conform to the invention as set forth in the remainder of the specification and the terms and phrases used in the claims must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description.” 37 CFR 1.75(d)(1). 415 F.3d at 1316, 75 USPQ2d at 1329. See also< In re Hyatt, 211 F.3d 1367, 1372, 54 USPQ2d 1664, 1667 (Fed. Cir. 2000). Applicant always has the opportunity to amend the claims during prosecution, and broad interpretation by the examiner reduces the possibility that the claim, once issued, will be interpreted more broadly than is justified. In re Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA 1969) (Claim 9 was directed to a process of analyzing data generated by mass spectrographic analysis of a gas. The process comprised selecting the data to be analyzed by subjecting the data to a mathematical manipulation.
The examiner made rejections under 35 U.S.C. 101 and 102. In the 35 U.S.C. 102 rejection, the examiner explained that the claim was anticipated by a mental process augmented by pencil and paper markings. The court agreed that the claim was not limited to using a machine to carry out the process since the claim did not explicitly set forth the machine. The court explained that “reading a claim in light of the specification, to thereby interpret limitations explicitly recited in the claim, is a quite different thing from reading limitations of the specification into a claim,’ to thereby narrow the scope of the claim by implicitly adding disclosed limitations which have no express basis in the claim.” The court found that applicant was advocating the latter, i.e., the impermissible importation of subject matter from the specification into the claim.). See also In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027-28 (Fed. Cir. 1997) (The court held that the PTO is not required, in the course of prosecution, to interpret claims in applications in the same manner as a court would interpret claims in an infringement suit. Rather, the “PTO applies to verbiage of the proposed claims the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded
by the written description contained in applicant’s specification.”).
The broadest reasonable interpretation of the claims must also be consistent with the interpretation that those skilled in the art would reach. In re Cortright, 165 F.3d 1353, 1359, 49 USPQ2d 1464, 1468 (Fed. Cir. 1999) (The Board’s construction of the claim limitation “restore hair growth” as requiring the hair to be returned to its original state was held to be an incorrect interpretation of the limitation. The court held that, consistent with applicant’s disclosure and the disclosure of three patents from analogous arts using the same phrase to require only some increase in hair growth, one of ordinary skill would construe “restore hair growth” to mean that the claimed method increases the amount of hair grown on the scalp, but does not necessarily produce a full head of hair.).
The broadest reasonable interpretation of a claim drawn to a computer readable medium typically covers both forms of non-transitory tangible media and transitory propagating signals per se in view of the ordinary and customary meaning of computer readable media. See the OG Notice of 23 February 2010 entitled "Subject Matter Eligibility of Computer Readable Media", 1351 OG 212.
When the broadest reasonable interpretation of a claim covers a signal per se, the claim must be rejected under 35 U.S.C. § 101 as covering non-statutory subject matter. See In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007). Since none of the clearly and unambiguously exclude propagating signals from the full scope of the claimed invention. Furthermore, because signals can be considered to "store" the values of the information being transmitted, at least during the transient period of the transmission, the term "storage" also fails to clearly and unambiguously exclude such signals from the claimed invention.
Claim 12 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter as follows.
Claim 12 defines a computer-readable recording medium embodying functional descriptive material (i.e., a computer program or computer executable code). However, the claim does not define a “non-transitory computer-readable recording medium or non-transitory computer-readable memory” and is thus non-statutory for that reason (i.e., “When functional descriptive material is recorded on some non-transitory computer-readable recording medium it becomes structurally and functionally interrelated to the medium and will be statutory in most cases since use of technology permits the function of the descriptive material to be realized” – Guidelines Annex IV). The scope of the presently claimed invention encompasses products that are not necessarily non-transitory computer readable, and thus NOT able to impart any functionality of the recited medium.
The examiner suggests amending the claims to embody the medium on “non-transitory computer-readable recording medium” or equivalent; assuming the specification does NOT define the computer readable medium as a “signal”, “carrier wave”, or “transmission medium” which are deemed non-statutory (refer to “note” below).
Any amendment to the claim should be commensurate with its corresponding disclosure.
Note:
“A transitory, propagating signal … is not a “process, machine, manufacture, or composition of matter” Those four categories define the explicit scope and reach of subject matter patentable under 35 U.S.C. § 101; thus, such a signal cannot be patentable subject matter.” (In re Nuijten, 84 USPQ2d 1495 (Fed. Cir. 2007). Should the full scope of the claim as properly read in light of the disclosure encompass non-statutory subject matter such as a “signal”, the claim as a whole would be non-statutory. Should the applicant’s specification define or exemplify the computer readable medium or memory (or whatever language applicant chooses to recite a computer readable medium equivalent) as statutory tangible products such as a hard drive, ROM, RAM, etc, as well as a non-statutory entity such as a “signal”, “carrier wave”, or “transmission medium”, the examiner suggests amending the claim to include the disclosed tangible non-transitory computer readable storage media, while at the same time excluding the intangible transitory media such as signals, carrier waves, etc.
Merely reciting functional descriptive material as residing on a “tangible” or other medium is not sufficient. If the scope of the claimed medium covers media other than “non-transitory computer readable” media, the claim remains non-statutory. The full scope of the claimed media (regardless of what words applicant chooses) should not fall outside that of a non-transitory computer readable medium.
Allowable Subject Matter
Claims 1-11 and 13-20 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: The closest applied Prior Art of record fails to disclose or reasonably suggest wherein deleting scan data on the edge of the tooth based on the edge line in the scan data; disposing data in which multiple plates are disposed at intervals along the edge line while superimposing the data on the scan data; creating a first profile curve and a second profile curve indicating an outline of the scan data across a part deleted in each of sections of the scan data, the sections being taken along the corresponding multiple plates in the data; extending the first profile curve and the second profile curve in a direction of compensating for the scan data on the part deleted in each of the sections of the scan data, the sections being taken along the corresponding multiple plates in the data; and restoring the edge of the tooth based on the first profile curve and the second profile curve that are extended in each of the sections of the scan data, the sections being taken along the corresponding multiple plates in the data.
Prior Art of record
The Prior Art which are pertinent to Applicant’s invention but were not relied upon:
Wang et al. (CN 119359754 A, Method And Device For Determining False Tooth Edge Line, Computer Device And
Storage Medium), recites on page 7, 4th paragraph, “through the artificial intelligent learning mode, identifying the myostatic line or the false tooth edge line on the scanned gypsum model, and then mapping the myostatic line or the false tooth edge line to the oral cavity digital impression obtained by the in-mouth scanner.”.
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/AMIR ALAVI/Primary Examiner, Art Unit 2668
Wednesday, June 3, 2026
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