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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Response to Arguments
Applicant's arguments filed May 21, 2026, regarding the rejection of claim 1 under 35 U.S.C. 112(b), have been fully considered but they are not persuasive.
Examiner rejected claim 1 under 35 U.S.C. 112(b), stating that it is unclear how the cell phone could be simultaneously clamped in three clamping directions (length/width/diagonal).
Applicant states on page 5 of Remarks that “in the present invention, it is possible to have a plurality of clamping zones which are arranged in different directions on the cell phone (for example: clamping in several directions with a base with jaws that clamp in different directions)”. Examiner respectfully disagrees. Additional explanation as to the lack of clarity can be seen in the rejection of claim 1 under 35 U.S.C. 112(b) maintained below. Further, Applicant's argument fails to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
Applicant's arguments, regarding the rejection of claim 1 under 35 U.S.C. 103 as unpatentable over Yoo (KR 10-1584737 B1) in view of Kerschbaumer (US 2003/0148243 A1), have been fully considered but they are not persuasive.
On page 7 of Remarks, that Yoo’s lens 110 “cannot be considered as the adapter opening of claim 1” at least in part because the adapter opening described in claim 1 is placed to be opposite to the lens of the cell phone in an acquisition position, so that the lens 110 of Yoo located at the distal end of the imaging support unit 100 is not opposite to the lens of the cell phone and cannot be considered as the adapter opening as claimed. Applicant also states that “the claimed lateral offset between the adapter opening and the clamping zone of the base is completely absent from Yoo”.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the adapter opening being placed opposite to the lens of the cell phone in an acquisition position) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Claim 1 requires “an adapter attached to the spacer and defining with the spacer a chamber opening out through the oral opening and through an adapter opening, the adapter comprising a base to which the cell phone is rigidly attached, removably, in an acquisition position in which the lens has an at least partial view of the oral opening, through the adapter opening and the acquisition opening” and “the adapter opening is laterally offset with respect to a clamping zone in which the cell phone is clamped to the adapter, the clamping zone being made up of a set of points at which the adapter exerts a clamping force on the cell phone, a lateral offset being a non-zero distance, in an offset direction perpendicular to the clamping direction and in a plane parallel to the plane of the front face of the cell phone, between the position of the center of the adapter opening and the position of the center of the clamping zone”. Claim 1 does not require that the adapter opening is opposite the lens of the cell phone.
As described in the rejection of claim 1, maintained below, Yoo’s lens/opening 110 defines an adapter opening of adapter 100, and in an acquisition position with the base 200 clamped to the cell phone, as shown in Figs. 1a-1b and 2b of Yoo, the lens of camera 21 of the cell phone has a view through the adapter opening due to the presence of refraction portions 120 and 130, as indicated by arrows in Fig. 2b. Further, the adapter opening defined above is laterally offset from the center of clamping zone (i.e., between jaws of the base 100 engaged with edges of the cell phone), in a vertical offset direction as viewed in Figs. 1a-1b which is perpendicular to the horizontal clamping direction between jaws of base 200, and the adapter opening is in a plane that is parallel to the front face of the cell phone, as shown in Figs. 1a-1b and 2b.
On page 8 of Remarks, Applicant asserts that Kerschbaumer “teaches away from the use of a smart phone with an auxiliary device such as in Yoo” and “emphasizes the importance of calibrated sensors, controlled lighting and a tiltable display integrated into the housing for professional one-handed use […] so that a person of ordinary skill in the art would understand that to achieve a good result, one must abandon the idea of a smartphone and build a dedicate camera. Examiner respectfully disagrees. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
As can be seen in the rejection of claim 1 maintained below, Kerschbaumer is applied for teaching a spacer in the form of a mouthpiece having the claimed structure, where Yoo’s adapter is modified to include the mouthpiece/spacer so that the adapter opening of Yoo’s device is aligned with the openings of the mouthpiece. As noted below, both Yoo and Kerschbaumer are directed towards devices for oral and/or dental photography, and one of ordinary skill in the art would reasonably understand that providing Yoo’s adapter with Kerschbaumer’s mouthpiece (spacer) would allow a user to better orient the camera with the oral area of interest while preventing injury to the user.
Claim Objections
Claim 3 is objected to because of the following informalities:
Claim 3, as amended, recites “wherein the set of points at which the cell phone is clamped against the base at a plurality of clamping points, the greatest distance between clamping points, measured perpendicular to the clamping direction, being greater than 1 cm”. The structure and language of this limitation includes grammatical errors. It appears the claim should recite ---wherein the set of points at which the cell phone is clamped against the base includes a plurality of clamping points, the greatest distance between clamping points, measured perpendicular to the clamping direction, being greater than 1 cm---.
Appropriate correction is required.
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 1-8 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.
Claim 1, at lines 20-24, recites “in which kit the cell phone is clamped against the base of the adapter in a clamping direction perpendicular to the direction of the length of the cell phone and/or perpendicular to the direction of the width of the cell phone and/or along a diagonal connecting two corners of the cell phone” (emphasis added by Examiner), where it is unclear how the cell phone could be clamped simultaneously in all three clamping directions. That is, the present wording and inclusion of “and/or” in the claim limitation render the scope of the claim unclear because, were one to rely on the “and” term (rather than “or”), it indicates that the base of the adapter is clamped against the cell phone in a clamping direction that is perpendicular to a length direction and a width direction and a diagonal connecting corners of the cell phone. For examination purposes, the above limitation is interpreted as ---in which kit the cell phone is clamped against the base of the adapter in a clamping direction perpendicular to a direction of a length of the cell phone, perpendicular to a direction of a width of the cell phone, or along a diagonal connecting two corners of the cell phone---.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Yoo (KR 101584737 B1) in view of Kerschbaumer (US 2003/0148243 A1). Note that citations to Yoo are taken from the English translation provided with the Office Action dated May 8, 2025.
Regarding claim 1, Yoo teaches an acquisition kit (shown in Figs. 1-2) comprising:
a cell phone (20; Fig. 1; para. 0035) having
a front face (shown in Fig. 1b, the face opposite the screen side),
a rear face with a screen (shown in Fig. 1a), and
a side edge, defining the thickness of the cell phone and connecting the front and rear faces (shown between front and rear faces; Figs. 1a-1b);
the cell phone being provided with a 2D and/or 3D data acquisition lens (cell phone 20 includes camera 21, understood to include a 2D and/or 3D data acquisition lens; Figs. 1-2; para. 0040);
a cell phone holder (defined by photography assistance unit 100 and holder unit 200, collectively; Fig. 1; para. 0035) comprising
an adapter (defined by adapter unit 100; Figs. 1-2) defining a chamber (defined within housing 150 of adapter unit 100; Fig. 2; para. 0039) opening out through an adapter opening (chamber within housing 150 of the adapter opens out through an adapter opening defined at upper lens 110; Figs. 1-2; para. 0039), the adapter comprising a base (defined by adapter unit 200; Fig. 1) to which the cell phone is rigidly attached, removably, in an acquisition position (shown attached to cell phone 20 in Fig. 1, which removable attachment may be achieved via including the adjustable part 211 with the adapter unit 200 embodiment shown in Figs. 5a-b, described in para. 0052) in which the lens has an at least partial view through the adapter opening (the lens, i.e. lens of camera 21 identified in Figs 1a and 2b, has a view through the adapter opening defined at upper lens 110 of the adapter unit 100 by way of refracting units 120 and 130, as schematically depicted in Fig. 1b; para. 0039-0045),
less than 20% of the area of the rear face being concealed by the adapter (as shown in Fig. 1a),
in which kit the cell phone is clamped against the base of the adapter in a clamping direction perpendicular to the direction of the length of the cell phone and/or perpendicular to the direction of the width of the cell phone and/or along a diagonal connecting two corners of the cell phone (where unit 200 of the adapter shown in Figs. 1a-b includes the length adjustment part 211 in Figs. 5a-b, as described above, the cell phone 20 is clamped against the base 200 of the adapter in a clamping direction perpendicular to a width of the cell phone, said clamping direction identified in Examiner’s Annotated Fig. 1 below),
and in which the adapter opening (110; Fig. 2a) is laterally offset with respect to a clamping zone in which the cell phone is clamped to the adapter, the clamping zone being made up of the set of points at which the adapter exerts a clamping force on the cell phone, a lateral offset being a non-zero distance, in an offset direction perpendicular to the clamping direction and in a plane parallel to the plane of the front face of the cell phone, between the position of the center of the adapter opening and the position of the center of the clamping zone (see the lateral offset identified in Examiner’s Annotated Fig. 1 below, the offset being a distance in an offset direction perpendicular to the clamping direction defined across a width of the cell phone at adapter unit 200, the lateral offset distance being in a plane parallel to the front face of the cell phone and the lateral offset distance being defined between the position of the center of adapter opening at lens element 110 and the center of the clamping zone, identified in Annotated Fig. 1 below).
Yoo does not disclose the acquisition kit also comprising:
a spacer comprising a body of generally tubular shape, opening out through an oral opening intended to be inserted in the mouth of the user and through an acquisition opening, and a distal flange extending outward from the body and shaped so as to be inserted between the user’s lips and teeth; and
the adapter being attached to the spacer and defining with the spacer the chamber opening out through the oral opening and through the adapter opening, and where the lens has at least a partial view of the oral opening through the adapter opening and the acquisition opening in the acquisition position.
Kerschbaumer, in analogous art, is directed towards an acquisition kit comprising a dental camera for obtaining images of a patient’s mouth (see camera system 10 in Fig. 1; para. 0035), and discloses a spacer (mouthpiece 12; Figs. 1-2) comprising a body of generally tubular shape (as shown in Figs. 1-2), opening out through an oral opening (26; Fig. 2; para. 0043) intended to be inserted in the mouth of the user (oral opening 26 is inserted in mouth of user when user bites down on bite projections 30, 32 for oral imaging; Fig. 2; para. 0043-0044) and through an acquisition opening (where mouthpiece/spacer 12 defines a channel 20 extending therethrough, coupling sleeve 16 defines an acquisition opening of the spacer, for being attached to a coupling 14 of the camera device; Figs. 1-2; para. 0041), and a distal flange (22, 24; Fig. 2) extending outward from the body and shaped so as to be inserted between the user’s lips and teeth (as shown in Fig. 2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Yoo’s kit to include Kerschbaumer’s mouthpiece spacer, by including Kerschbaumer’s coupling structure (i.e., coupling 14 in Fig. 1) at the upper end of Yoo’s adapter (i.e., adjacent the adapter opening/lens, identified in Examiner’s Annotated Fig. 1 of Yoo below) and attaching the mouthpiece spacer to the coupling, so that the adapter opening is attached to the spacer, via the coupling, thereby defining with the mouthpiece spacer a chamber that opens out through the oral opening of the spacer and through the adapter opening, and such that the lens of the phone’s camera has a view through the adapter opening and the oral opening of the spacer, as claimed, because for the purposes of oral photography, Kerschbaumer recognizes that providing a dental camera with such a spacer/mouthpiece advantageously provides reference points for the orientation of the camera relative to the oral area of interest (see Kerschbaumer, para. 0028) and further because the inclusion of a spacer/mouthpiece such as Kerschbaumer’s having the claimed distal flange reduces injury to a patient (as described in Kerschbaumer, para. 0042).
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Examiner’s Annotated Fig. 1 of Yoo
Regarding claim 2, Yoo and Kerschbaumer, in combination, teach the acquisition kit as claimed in claim 1, and Yoo teaches wherein the rear face of the cell phone is not in contact with the adapter or the area of the contact surface between the rear face of the cell phone and the adapter represents less than 10% of the area of said rear face (see Examiner’s Annotated Fig. 1 of Yoo above, where the contact surface area between rear face of cell phone 20 and adapter 200 is significantly less than 10% of the rear face area).
Regarding claims 3 and 4, Yoo and Kerschbaumer, in combination, teach the acquisition kit as claimed in claim 1, and Yoo further teaches [Claim 3] wherein the cell phone is clamped against the base at a plurality of clamping points (identified in Examiner’s Annotated Fig. 1 above), the greatest distance between clamping points, measured perpendicular to the clamping direction, being greater than 1 cm (where the adaptor is clamped to a typical smartphone, as described in at least the Abstract, the distance between the clamping points identified in Examiner’s Annotated Fig. 1 above is understood to be greater than 1 cm), and [Claim 4] wherein said greatest distance between the clamping points is greater than 3 cm (where the adaptor is clamped to a typical smartphone, as described in at least the Abstract, the distance between the clamping points identified in Examiner’s Annotated Fig. 1 above is understood to be greater than 3 cm).
Regarding claim 5, Yoo and Kerschbaumer, in combination, teach the acquisition kit as claimed in claim 1, and Yoo teaches wherein the adapter comprises at least one strap and/or at least one first jaw pressing the cell phone against the base (Yoo’s adapter may include the base configuration in Figs. 5a-b, comprising at least one first jaw 220 for pressing cell phone 20 against adaptor base 200; para. 0052).
Regarding claim 6, Yoo and Kerschbaumer, in combination, teach the acquisition kit as claimed in claim 1.
Yoo further discloses where the lateral offset (identified in Examiner’s Annotated Fig. 1 of Yoo above, defined between the adaptor opening 110 and the lens of cell phone camera 21) is adjustable because the length of housing (150; Figs. 2-3; para. 0047) is adjustable (via housing length adjustment part 151, as shown in Fig. 3; para. 0047-0048).
However, neither Yoo nor Kerschbaumer specifically disclose wherein the lateral offset is greater than 3 cm and less than 10 cm.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected a dimension of the lateral offset to be greater than 3 cm and less than 10 cm, as claimed, because such a lateral offset would reasonably provide an appropriate configuration for examining a patient’s oral cavity (as viewed in Fig. 2of Yoon, where the lateral offset is defined between camera 21 and adaptor opening 110), and because such a modification would only involve routine experimentation in the art. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Allowable Subject Matter
Claims 7 and 8 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 8 in the instant application have not been rejected using prior art because no references, or reasonable combination thereof, could be found which disclose, or suggest, the claimed combination of limitations recited in either claim. In particular, none of the cited references teach or suggest:
“wherein the adapter comprises a plate movably mounted on the base and to which the spacer is rigidly attached, the plate being mounted slidably on the base exclusively in a single direction parallel to the clamping direction” as required by claim 7, and
“wherein the adapter opening is of a size such that, at least in a centered position of the lens in which the lens is opposite the adapter opening at the center of the adapter opening, a flash of the cell phone is opposite the adapter opening” as required by claim 8.
Conclusion
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 ANNA VICTORIA LITTLE whose telephone number is (571)272-6630. The examiner can normally be reached M-F 9a-6p EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eduardo Robert can be reached at (571)272-4719. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANNA V. LITTLE/Examiner, Art Unit 3773 /EDUARDO C ROBERT/Supervisory Patent Examiner, Art Unit 3773
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