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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 63316509, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
Amended claim 1, lines 3-4 disclose "an outer surface at least a portion of which is spherical". These lines are not supported by the disclosure. Paragraphs [0011] and [0014] describe an outer surface (14) with a circumference, but make no mention of a spherical outer surface, nor is this shown in Figs. 2 and 5. Paragraph [0021] discloses a sphere; however, this “sphere” is disclosed in reference to the system locating a center of specular reflection on the scan body, not in terms of the shape of the outer surface of the scan body. Of note, “the sphere” is not defined prior to Paragraph [0021], therefore it is unclear what Applicant’s specification is referring to by “the sphere”; Examiner is understanding “the sphere” as a sphere defined by the specular reflection of the scan body.
Further, lines 6-8 disclose “the spherical portion of the outer surface of the body casing”. This is also not supported by the disclosure, for the same reasons as highlighted above.
For the purpose of examination, the priority date for claim 1 is 02/28/2023.
Claim Objections
Claim 1 is objected to because of the following informalities:
Line 5, "the cavity" should be corrected to "the inner cavity" for consistency.
Lines
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claim 1 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Amended claim 1, lines 3-4 disclose "an outer surface at least a portion of which is spherical". These lines are not supported by the disclosure. Paragraphs [0012] and [0015] describe an outer surface (14) with a circumference, but make no mention of a spherical outer surface, nor is this shown in Figs. 2 and 5. Paragraph [0022] discloses a sphere; however, this “sphere” is disclosed in reference to the system locating a center of specular reflection on the scan body, not in terms of the shape of the outer surface of the scan body. Of note, "the sphere” is not defined prior to Paragraph [0022], therefore it is unclear what Applicant’s specification is referring to by "the sphere”; Examiner is understanding “the sphere” as a sphere defined by the specular reflection of the scan body.
Further, lines 6-8 disclose “the spherical portion of the outer surface of the body casing”. This is also not supported by the disclosure, for the same reasons as highlighted above.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Suttin et al. (US 20150173870 A1), herein referred to as Suttin.
Regarding claim 1, Suttin discloses a scan body (10) for use in locating an implant fixture during optical imaging as part of oral surgery (refer to Paragraphs [0011], [0061]; the scan body (10) is scanned, with the code on the scan body (10) indicating the x-y location of the underlying implant), the scan body (10) comprising:
a hollow body casing (12) with an outer surface (15) at least a portion of which is spherical (refer to annotated Fig. 1B below) and an inner cavity (13+16) extending from an opening at or near the top of the body casing to a lower portion of the body casing (refer to annotated Fig. 1B below), the cavity (13+16) adapted to receive a fastener through the opening for securing the body casing (12) to an implant fixture (refer to Paragraph [0059]; an internal bore (13) receives the retaining screw (14) to removably couple the abutment (10) to an implant in the mouth of a patient); and
wherein the spherical portion of the outer surface of the body casing has an associated surface reflection (refer to annotated Fig. 1B below; all surfaces of materials have an associated surface reflection based on reflecting light from a source, thus, the spherical surface of Suttin’s scan body (10) also has an associated surface reflection) with a center of specular reflection from a light source that defines an optically detectable characteristicof the body casing (10) that can be captured in images from externally mounted cameras (by definition (Wikipedia; specular reflection), a center or peak of specular reflection is where the incident light reflects at an angle equal to the angle of incidence, and this feature is defined by the surface of the material in the presence of a light source, thus the outer surface of the scan body (15) also has a center of specular reflection when in the presence of a light source, that is capable of being optically detected; additionally, Examiner is interpreting this limitation as intended use, see below explanation on functional limitations),
wherein a center of a sphere associated with the body casing is defined by the center of the specular reflection for use in determining a position and location of the scan body in a patient's mouth (Examiner is interpreting this limitation as intended use; as Suttin discloses the required structure (scan body (10), with outer surface (14) with surface reflection), this device (10) is capable of performing the intended use; see below explanation on functional limitations).
When the cited prior art teaches all of the positively recited structure of the claimed apparatus, it will be held that the prior art apparatus is capable of performing all of the claimed functional limitations of the claimed apparatus. The courts have held that: (1) "apparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990), and (2) a claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). MPEP § 2114).
PNG
media_image1.png
413
661
media_image1.png
Greyscale
PNG
media_image2.png
267
513
media_image2.png
Greyscale
PNG
media_image3.png
274
400
media_image3.png
Greyscale
(Claims 2-9 Cancelled)
Response to Arguments
The outstanding drawing objection of the “threads in the body casing for securing the body casing to an implant fixture" of claim 1 is withdrawn in view of the newly submitted claim amendment(s).
The outstanding drawing objection of Fig. 4, 54 is withdrawn in view of the newly submitted specification amendment.
The outstanding specification objections of the embedded hyperlinks are withdrawn in view of the newly submitted specification amendment(s).
The outstanding 35 USC 112(b) rejections of claims 1-9 are withdrawn in view of the newly submitted claim amendments.
Applicant's arguments filed 12/17/2025 have been fully considered but they are not persuasive.
In response to the argument that Suttin does not disclose the limitations of amended claim 1, the additional claim language does not further limit the scan body in such a way to overcome Suttin. The spherical shape of the scan body is not defined in the specification, as such this term is interpretated under BRI as any portion of the body that is shaped like a sphere, with the top surface (15) of Suttin’s scan body (10) demonstrating this feature (refer to annotated Fig. 1B in the rejection above).
Further, all materials have an associated surface reflection and center of specular reflection when in the presence of a light source, whether the material is smooth or rough. Applicant even states “faceted edges of a scan body will yield different reflectance than a smoothly curved or cylindrical portion”, which means that the protrusions and indentations (16a, 16b) of Suttin (refer to Paragraph [0063]) would also yield the same effect of different reflectance (see Paragraph [0018] of the specification).
In terms of the last limitation, describing how the scan body is used to define a center of a sphere defined by the specular reflection is intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Of note, Applicant states amended claim 1 is supported by Paragraphs [0018], and [0022]. Claim 1 is an apparatus claim drawn to a scan body. Paragraphs [0018] and [0022] of the specification disclose a system and the associated intended use of the scan body by the system, but do not further define the limitations of the scan body, as is discussed in the above 35 USC 112(a) rejection
In response to the arguments that Chung and Dekel do not disclose the features of amended claim 1, neither reference is relied upon for the current rejection.
.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
McGinley et al. (US 20040153062 A1) discloses spherical reflective tracking device used with a localizing system (refer to Paragraph [0056]).
Mazzocchi (US 20040030236 A1) discloses a spherical fiducial marker with reflective properties (refer to Paragraph [0040]).
THIS ACTION IS MADE FINAL. 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 Adriena J Webb Lyttle whose telephone number is (571)270-7639. The examiner can normally be reached Mon - Fri 10:00-7:00 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ADRIENA J WEBB LYTTLE/ Examiner, Art Unit 3772
/EDELMIRA BOSQUES/ Supervisory Patent Examiner, Art Unit 3772