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 .
Election/Restrictions
Claims 3, 4, 8, 9, 12, 13, 17 and 18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7/13/2026. Therefore, the restriction is made final herein.
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 22 November 2005), Annex IV, reads as follows:
In contrast, a claimed computer-readable medium encoded with a computer program is a computer element which defines structural and functional interrelationships between the computer program and the rest of the computer which permit the computer program’s functionality to be realized, and is thus statutory See Lowry, 32 F.3d at 1583-84, 32 USPQ2d at 1035.
Claims that recite nothing but the physical characteristics of a form of energy, such as frequency, voltage, or strength of a magnetic field, define energy or magnetism, per se, and as such are nonstatutory natural phenomena. O’Reilly, 56 I.S. (15 How.) at 112-14. Moreover, it does not appear that a claim reciting a signal encoded with functional descriptive material falls within any of the categories of patentable subject matter set forth in Sec. 101.
…a signal does not fall within one of the four statutory classes of Sec 101.
…signal claims are ineligible for patent protection because they do not fall within any of the four statutory classes of Sec. 101.
Claim 19 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter as follows. Claim 19 is drawn to functional descriptive material recorded on one or more computer readable media. A computer readable recording medium can be defined as encompassing statutory medium, but it also encompasses non-statutory subject matter such as a signal or carrier wave.
A “signal” embodying functional descriptive material is neither a process nor a product (i.e., a tangible “thing”) and therefore does not fall within one of the four statutory classes of §101. Rather, “signal” is a form of energy, in the absence of any physical structure of tangible material.
Because the full scope of the claim encompasses non-statutory subject matter, the claim as a whole is non-statutory. The examiner suggests amending the claim to "a non-transitory computer readable medium encoded with a computer program.” Any amendment to the claim should be commensurate with its corresponding disclosure.
Iti is noted that claims 1, 2, 5-7, 10, 11 and 14-16 are considered eligible subject matter. Even if the claims could be construed as an abstract idea, the claims provide limitations that provide a practical application, i.e. intraoral image display.
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.
Claim 5 is 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.
Claim 5 recites the limitation "the obtaining of the target color" in line 1. There is insufficient antecedent basis for this limitation in the claim.
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.
Claims 1, 2, 5, 10, 11 and 14 are rejected under 35 U.S.C. 102(a)(1) as being unpatentable by U.S. Patent Application Publication NO. 20180243051 (Stemmer et al).
Regarding claim 1, Stemmer et al discloses a method of processing a three-dimensional intraoral model, the method (fig. 2) comprising: displaying a first three-dimensional intraoral model, i.e. an initial virtual model (page 4, paragraph 73) on a display/ screen (fig. 1, item 25, page 4, paragraph 73); receiving an input for setting at least a part of the displayed first three-dimensional intraoral model as an attribute control area by providing manipulation of one or more teeth of the model, thus defining an area of the model (page 4, paragraph 80); obtaining a second three-dimensional intraoral model by creating a second 3D virtual model of the part that is modified (page 4, paragraph 79); changing a color of the at least a part of the first three-dimensional intraoral model set as the attribute control area by modifying the initial appearance with the mock-up (page 5, paragraph 99), which involves a change in tooth colour (page 4, paragraph 75), to a target color representing a color of an area of the obtained second three-dimensional intraoral model corresponding to the attribute control area (page 4, paragraph 75, page 4, paragraph 81, page 4, paragraph 95); and displaying, on the display, the first three-dimensional intraoral model in which the color of the attribute control area is changed to the target color by displaying the virtual models created (page 6, paragraph 108, page 5, paragraph 95).
Regarding claim 2, Stemmer et al discloses the changing to the target color comprises identifying the area of the obtained second three-dimensional intraoral model corresponding to the attribute control area by identifying the area that should be modified (Page 4, paragraph 80), and obtaining the target color by extracting color information from the identified area by having a modified tooth colour in the manipulation (page 4, paragraph 75), and utilizing the modified tooth colour in the updated virtual model (page 4, paragraph 81), used to modify the initial appearance (page 4, paragraph 99).
Regarding claim 5, Stemmer et al discloses obtaining of the target color comprises identifying a position set as the attribute control area in the first three-dimensional intraoral model by allowing the operator to manipulate the part of the model, thus identifying the position for manipulation (page 4, paragraph 74, 79, 80), and obtaining the target color by extracting color information from an area of the second three-dimensional intraoral model corresponding to the identified position by defining the second 3D models tooth colour (page 4, paragraph 75) used to modify the initial appearance (page 4, paragraph 99).
Claims 10 and 19 are rejected for the same reasons as claim 1. Thus, the arguments analogous to that presented above for claim 1 are equally applicable to claims 10 and 19. Claims 10 and 19 distinguish from claim 1 only in that claims 10 is a device claim with a processor and memory, the processor configured to execute one or more instructions stored in the memory to carry out the method of claim 1, and claim 19 is a computer-readable recording medium claim having recorded thereon a program for causing a computer to execute a method of processing a three-dimensional intraoral model, the method comprising the method of claim 1. Stemmer et al teaches further this feature, i.e. a device (fig. 1) with a processor (fig. 1, item 2, 26), and memory (fig. 2, items 21, 22, 24, page 6, paragraph 113), the processor configured to execute one or more instructions stored in the memory to carry out the method of claim 1 (fig. 2), and claim 19 is a computer-readable recording medium (page 6, paragraph 113) having recorded thereon a program (page 5, paragraph 117) for causing a computer (fig. 1, item 2) to execute a method of processing a three-dimensional intraoral model, the method comprising the method of claim 1 (fig. 2).
Claims 11 and 14 are rejected for the same reasons as claims 2 and 5, respectively. Thus, the arguments analogous to that presented above for claims 2 and 5 are equally applicable to claims 11 and 14. Claims 11 and 14 distinguish from claims 2 and 5 only in that they have different dependencies, both of which have been previously rejected. Therefore, prior art applies.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 6 and 15 are rejected under 35 U.S.C. 103(a) as being unpatentable over Stemmer et al in view of U.S. Patent Application Publication No. 20210059796 (Weiss et al).
Regarding claim 6, Stemmer et al discloses all of the claimed elements as set forth above and incorporated herein by reference. Stemmer et al further discloses the receiving of the input for setting the at least a part of the displayed first three-dimensional intraoral model as the attribute control area comprises receiving an input for setting the attribute control area in the first three-dimensional intraoral model (page 4, paragraph 80) obtained by scanning a tooth, the teeth from the initial model (page 4, paragraph 73).
Stemmer et al does not disclose expressly the scanning of a tooth is on which cord packing has been performed.
Weiss et al discloses the scanning of a tooth is on which cord packing has been performed (page 7, paragraph 56).
Stemmer et al and Weiss et al are combinable because they are from the same field of endeavor, i.e. dental imaging.
Before the effective filing date of the claimed invention, it would have been obvious to a person of ordinary skill in the art to image after cord packing.
The suggestion/motivation for doing so would have been to provide a more flexible system that would allow for teeth to be imaged under all conditions.
Therefore, it would have been obvious to combine the method of Stemmer et al with cord packing of Weiss et al to obtain the invention as specified in claim 6.
Claim 15 is rejected for the same reasons as claim 6. Thus, the arguments analogous to that presented above for claim 6 are equally applicable to claim 15. Claim 15 distinguishes from claim 6 only in that they have different dependencies, both of which have been previously rejected. Therefore, prior art applies.
Allowable Subject Matter
Claims 7 and 16 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 7 and 16 contain allowable subject matter regarding the changing of the color of the claimed first 3D intraoral model comprises obtaining the claimed 2nd 3D intraoral model which is generated by scanning a tooth from which foreign substances are removed, obtaining the claimed target color as claimed, and changing the claimed first 3D intraoral model set as the attribute control are to the obtained target color, wherein the receiving of the input for setting the claimed part of the displayed first 3D intraoral model as the attribute control area comprises receiving an input for the claimed setting obtained by scanning a tooth on which cord packing has been performed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kathleen Yuan Dulaney whose telephone number is (571)272-2902. The examiner can normally be reached M-F: 9AM-5PM.
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, Emily Terrell can be reached at 5712703717. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KATHLEEN Y DULANEY/Primary Examiner, Art Unit 2666 8/13/2026
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