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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 5/1/26 has been entered.
Response to Amendment
The amendment filed 5/1/2026 has been entered.
Claims 1, 3-9, 11-18 and 22-25 are currently pending and an Office Action on the merits follows.
Response to Arguments
Applicant's arguments filed on 5/1/26 regards to the 35 USC 101 rejection have been fully considered but they are not persuasive. Particularly, the applicant argues that the newly added limitation of “expanding the 2D brush” into a 3D model and computing 3D overlap against point cloud data cannot be practically performed in the human mid or with pen and paper. Examiner respectfully disagrees. It should first be noted that the limitation of “expanding 2D brush” into a 3D model is recited in high level of generality that it is unclear how this 3D model is used in any of the previously steps recited. For example, none of limitations requires analyzing or using the 3D in making the determination nor the identification. As currently claimed, the 3D model has no relations to the prior steps and the selection step that this limitation itself can be construed as insignificant extra-solution activity that also can be performed by a generic purpose computer such as converting a 2D marker into a 3D marker. Furthermore, the limitations of 1) “3D model” and “the at least one object of the intraoral image overlap each other in three-dimensional space” and 2) “the selection region excludes a region… where there is no point data stored as a point cloud” again do not detail how that these limitations are used in making the determination or the selection of a region. Therefore, these additional elements in these limitations are considered insignificant extra-solution activities (mere data gathering) in Step 2A prong Two.
The applicant further argues that the recited combinations of 1) determining a 2D brush, 2) expanding 2D into a 3D, 3) computing the overlap boundary and 4) excluding regions lacking point data provides a concrete technical improvement to intraoral image processing. As noted above, steps 2) and 3) are recited in high level of generality that they are considered to be insignificant extra solution activities. Furthermore, claims do not recite “computing the overlap boundary”. The claims rather simply recite that the 3D model and the at least one object overlap each other. As for step 1), as stated in the Final rejection, a person analyzing an image can mentally determine the type of the brush. Furthermore, a person can mentally exclude undesired region in the image from a further analysis. There is nothing in these limitations that require more than an operation that a human, armed with the appropriate apparatus cannot process. Therefore, the claim rejection under 35 USC 101 should be maintained.
Applicant’s arguments with respect to claim rejections under 35 USC 103 rejections have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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, 3-9, 11-18 and 22-25 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., abstract idea – mental processes) without significantly more.
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Claim 1 is used as an example. Claim 1 recites
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With regard to Step (1), the instant claims recite a method, an apparatus and a computer program recording medium, therefore the answer is “yes”.
With regard to Step (2A), Prong One: Yes. When viewed under the broadest most reasonable interpretation, the instant claims are directed to a Judicial Exception – an abstract idea belong to the group of mental process. The limitations b), c), d) and e) of determining and identifying are generically recited because there is no description of how they are accomplished. It can be interpreted as merely selecting a point, placing a circle/box over an area of interest in the image using some sort of distance/length information and then identifying an area from the area of the interest. There is nothing in these limitations that require more than an operation that a human, armed with the appropriate apparatus cannot process. Hence, limitations b), c), d) and e) are interpreted as a mental step by having a person who is managing a screen/display of a system to place the bounding box/circle around the display as necessary and then determining the type of the brush as either 2D or 3D based on a mental image analysis displayed/printed. As mentioned above, a person looking at a paper print out or drawing of fig. 7~16 of applicant’s drawings filed on 9/8/2023, he/she can mentally analyze the images and determine the type of the brush. As for the limitation that “excludes a region”, this also can be done mentally by a person who can intentionally excludes a particular region.
With regard to Step (2A), Prong Two: No.
The limitations a) and f) are all considered to be additional elements. The limitations a) and f) are considered to be insignificant pre/post/extra-solution activity. These two additional elements are no more than insignificant extra-solution activity and no more than mere instructions to apply the exception using a generic computer component like displaying data on a screen. The claim further recites additional element of a) “displaying the intraoral imager”. This additional element, a) represents mere data gathering (receiving and displaying an image) that is necessary for use of the recited judicial exception and is recited at a high level of generality. There are no specifics on how the data is displayed from the processor.
Other than reciting “display”, “processors”, “memory” and “computer readable medium” in claims 9 and 17, nothing in the claim elements precludes the step from practically being performed in the human mind by an operator (i.e., the user manually selecting a bounding box/circle and identifying a certain region). Additionally, the mere nominal recitation of a generic processor does not take the claim limitation out of the mental processes grouping. The processor is a generic tool to perform the steps recited in the claims, one can do these steps using a generic computer, as recited. There is nothing in the claim that is recited that integrally requires a specific processor to perform such steps. Even when viewed in combination, these additional elements in the claim do no more than automate the mental process that a medical operator used to perform. Therefore, they do not integrate the recited judicial exception into a practical application.
With regard to Step (2B): No.
The pending claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As explained above in Prong Two, the additional elements of b), c), d) and e) in the claim amounts to no more than mere instructions to apply the exception using a generic computer component. These additional elements are also, as explained previously, insignificant extra-solution activity. As mentioned above that element a) of receiving is mere data gathering. Further, recitation of displaying the identified region is insignificant extra-solution activity that is recited at a high level of generality, as disclosed in the specification in paragraphs [0127, 0154]. These limitations therefore remain insignificant extra-solution activity/data gathering even upon reconsideration. Thus, these limitations do not amount to significantly more. Even when considered in combination, these additional elements represent mere instructions to apply an exception and insignificant extra-solution activity, which do not provide an inventive concept. The claim is not eligible.
With regard to all dependent claims 3-8 and 11-21 similar analysis is applied and they therefore do not integrate the judicial exception into a practical application and further do not amount to significant more. These claims are therefore rejected for the same reasons.
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, 3-9, 11-18 and 22-25 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 recites “wherein the selection region excludes a region of the at least one object of the intraoral image where there is no point data stored as a point cloud comprising location information and color information”. It is confusing as to what this “point data” is. Is this point data related to 1) the selection region, 2) an excluded region or 3) the intraoral image? Furthermore, it is unclear what the “location information” and “color information” is referring to or related to. Is this information about 1) the selection region, 2) an excluded region or 3) the intraoral image? Clarification/explanation is respectfully requested.
Claim 1 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The claim requires that the 3D model and the intraoral image to be overlapped. However, it is confusing as to where/when the overlapping occurs. For example, after the 3D model is expanded, there is no recitation of how the intraoral image is merged/included in the 3D model. Furthermore, it is unclear if this “3D model” should be interpreted as “3D brush” or the space where the “3D brush” is projected. If it’s just the 3D space, it is unclear as to what is being overlapped in 3D model. Clarification/explanation is respectfully requested.
With respect to claims 9 and 17, arguments analogous to those presented for claim 1, are applicable.
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 1, 3, 6, 9, 11, 14 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Kim USPGPUB 2021/0205057 in view of Nakai USPGPUB 2017/0071713.
With respect to claim 1, Kim teaches the method of identifying a selection region in an intraoral image, the method comprising:
obtaining the intraoral image (figs. 4a, 5a, 6a & 7a);
determining at least one reference point of the intraoral image based on a user input to select a point of a user interface in which the intraoral image is displayed (border 212 comprising multiple points is defined in paragraph 26);
determining a 2D brush, based on the at least one reference point and at least one piece of distance information (either smaller circle 232 or larger circle 231 and the radius/size of each circle cannot be either smaller or bigger than the border 212 in paragraph 26);
identifying at least one object of the intraoral image, based on a location information of the at least one reference point (defining the border in paragraph 30)
identifying a region of the intraoral image, which overlaps a region determined by the brush, as the selection region (a plurality of points 2311 and 2321 with the circles are selected);
wherein the selection region excludes a region of the at least one object of the intraoral image where there is no point data stored as a point cloud comprising location information and color information (please note that the plurality of points 2311 and 2321 exclude other neighboring tooth thus there is no point data stored)
displaying the selection region in the intraoral image (figs. 4b, 5b, 6b & 7b).
Kim, however, does not explicitly disclose identifying a selection region based on at least one boundary where 3D model obtained by expanding 2D brush and the at least one object of the intraoral image overlap each other in 3D space.
Nakai, the same field of endeavor of generating the 3D intraoral scan data of a patient, teaches the method of identifying a selection region based on at least one boundary where 3D model obtained by expanding 2D brush and the at least one object of the intraoral image overlap each other in 3D space (paragraph 153).
It would have been obvious to a person of ordinary skill in the art, before the effective filing date, to modify the method of Kim to include 3D model for display as taught by Nakai.
The suggestion/motivation for doing so would have been to provide a better view of the overlapping region in the 3D space.
With respect to claim 3, Kim teaches the method of claim 1, wherein the selection region comprises the at least one boundary and a region of the intraoral image, which is located within the identified at least one boundary (note that the boundary is located within the circle in figs. 4b, 5b, 6b & 7b).
With respect to claim 6, Kim teaches the method of claim 1, further comprising displaying the at least one object of the intraoral image identified based on the location information of the at least one reference point (figs. 4b, 5b, 6b & 7b).
With respect to claims 9 and 17, arguments analogous to those presented for claim 1, are applicable. Also, Kim discloses a computing system for running the program in paragraph 24.
With respect to claim 11, arguments analogous to those presented for claim 3, are applicable.
With respect to claim 14, arguments analogous to those presented for claim 6, are applicable.
Claims 4, 5, 7, 8, 12, 13, 15 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Kim and Nakai in view of Elbaz et al. (USP 10507087).
With respect to claim 4, Kim teaches the method of claim 1, but it does not teach the displaying of the selection region comprises displaying the selection region by emphasizing at least one boundary of the selection region.
Elbaz, the same field of identifying a certain area in an intraoral image, teaches the method of emphasizing one boundary of a selected/defined region in a display (col. 72, line 48 ~ col. 73, line 12 & figs. 18~22).
It would have been obvious to a person of ordinary skill in the art, before the effective filing date, to modify the method of Kim to include the emphasizing step as taught by Elbaz.
The suggestion/motivation for doing so would have been to provide more user friendly display to the patient and the physician.
With respect to claim 5, the combination of Kim, Nakai and Elbaz teaches the method of claim 4, wherein the displaying of the selection region by emphasizing the at least one boundary of the selection region comprises displaying the at least one boundary of the selection region in a pre-set color, wherein a region of the at least one object of the intraoral image, which is located within the at least one boundary, is displayed by overlapping or blending a color of the intraoral image and the pre-set color (region/border is emphasized by providing color (col. 72, line 48 ~ col. 73, line 12 & figs. 18~22).
With respect to claim 7, Kim teaches the method of claim 1, but it does not teach the displaying of the selection region comprises: identifying at least one object of the intraoral image, which is included in the selection region; and displaying the selection region in a different color according to the at least one object.
Elbaz, the same field of identifying a certain area in an intraoral image, teaches the method of identifying at least one object of the intraoral image, which is included in the selection region; and displaying the selection region in a different color according to the at least one object (col. 63, lines 23-30; col. 72, line 48 ~ col. 73, line 12 & figs. 18~22).
It would have been obvious to a person of ordinary skill in the art, before the effective filing date, to modify the method of Kim to include the identifying the tooth decay, cracks step using different colors as taught by Elbaz.
The suggestion/motivation for doing so would have been to provide more user friendly display to the patient and the physician.
With respect to claim 8, Kim teaches the method of claim 1, but it does not teach the at least one piece of distance information comprises information about a distance between the reference point and another point of the intraoral image.
Elbaz, the same field of identifying a certain area in an intraoral image, teaches the method of providing a distance information between any given two points in the intraoral image (col. 24, lines 10-20; col. 26, lines 49-54 & fig. 22).
It would have been obvious to a person of ordinary skill in the art, before the effective filing date, to modify the method of Kim to include the step of providing distance information as taught by Elbaz.
The suggestion/motivation for doing so would have been to provide more user friendly display to the patient and the physician.
With respect to claim 12, arguments analogous to those presented for claim 4, are applicable.
With respect to claim 13, arguments analogous to those presented for claim 5, are applicable.
With respect to claim 15, arguments analogous to those presented for claim 7, are applicable.
With respect to claim 16, arguments analogous to those presented for claim 8, are applicable.
Claims 18 and 22-25 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Kim and Nakai in view of Kopelman (USPGPUB 2018/0168781).
With respect to claim 18, the combination of Kim and Nakai teaches the method of claim 1, but it does not teach that the reference point includes a point at which a vector identified based on a mouse pointer intersects with the surface of at least one object of the intraoral image.
Kopelman, the same field of identifying a certain area in an intraoral image (fig. 16), teaches the method of identifying a point where the point at which a vector identified based on a mouse pointer intersects with the surface of at least one object of the intraoral image (paragraph 97).
It would have been obvious to a person of ordinary skill in the art, before the effective filing date, to modify the method of Kim/Nakai to include the step of using a vector identified by a pointer that intersects with a tooth image as taught by Kopelman.
The suggestion/motivation for doing so would have been to provide various identifying tool for analyzing intraoral images by the physician.
With respect to claim 22, the combination of Kim and Nakai teaches the method of claim 1, but it does not teach wherein the identifying the object of the intraoral image comprises: comparing color information corresponding to the location information of the at least one reference point with color information of the point cloud stored in a memory; and identifying the object based on a result of the comparing, wherein objects of different types have different color information stored in the point cloud.
Kopelman, the same field of identifying a certain area in an intraoral image (fig. 16), teaches the method of identifying the object of the intraoral image comprises: comparing color information corresponding to the location information of the at least one reference point with color information of the point cloud stored in a memory; and identifying the object based on a result of the comparing, wherein objects of different types have different color information stored in the point cloud (paragraph 164 & 88).
It would have been obvious to a person of ordinary skill in the art, before the effective filing date, to modify the method of Kim/Nakai to include the step of using a color code to identify how much a certain tooth has been moved as taught by Kopelman.
The suggestion/motivation for doing so would have been to easily identify different type and treatment result using color code.
With respect to claim 23, the combination of Kim and Nakai teaches the method of claim 1, but it does not teach determining, as a hole of the selection region, at least one region where there is no point data among a plurality of points located in the selection region; and displaying the selection region including an indication of the hole in the intraoral image.
Kopelman, the same field of identifying a certain area in an intraoral image (fig. 16), teaches the method of determining, as a hole of the selection region, at least one region where there is no point data among a plurality of points located in the selection region; and displaying the selection region including an indication of the hole in the intraoral image (paragraph 142).
It would have been obvious to a person of ordinary skill in the art, before the effective filing date, to modify the method of Kim/Nakai to include the step of marking a hole in a tooth as taught by Kopelman.
The suggestion/motivation for doing so would have been to easily identify a place where a hole needs to be drilled for a treatment.
With respect to claim 24, arguments analogous to those presented for claim 22, are applicable. Particularly, paragraph 148 of Kopelman teaches that either color or type of indicators which can be interpreted as the claim “types of objects”. Furthermore, a particular region of intraoral image does not need a treatment can be excluded from displaying (fig. 12 show only certain region are displayed. Teeth and gum of other regions are not displayed).
With respect to claim 25, Kopelman discloses, when the at least one reference point is located at a tooth, a region of a gum is excluded from the selection region (fig. 12 show only certain region are displayed. Teeth and gum of other regions are not displayed).
Conclusion
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/CHAN S PARK/Supervisory Patent Examiner, Art Unit 2669
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