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 .
Response to Amendment
The amendment filed 11/7/2025 has been entered.
Claims 1, 3-9 and 11-21 are currently pending and an Office Action on the merits follows.
Response to Arguments
Applicant’s arguments with respect to claims 1, 3-9 and 11-21 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.
Upon further consideration of claims 1, 3-9 and 11-21 under 35 USC 101 analysis, the rejection of 35 USC 101 previously applied in the Non-Final rejection mailed 8/7/2024 is maintained. In response to the Non-Final office action, the applicant argued that claim 1 does not recite any abstract idea (page 10). Examiner respectfully disagrees. For example, the steps of “determining a reference point”, “determining a brush”, “identifying a region” and “identifying the selection region” can all be done mentally. As stated in the NF mailed on 8/7/2024, these recited steps 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. There is nothing in these limitations that require more than an operation that a human, armed with the appropriate apparatus cannot process. As an example, 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 perform the recited steps mentally. While the examiner recognizes that the recited steps may require a machine/computer to performed the steps, the recited computer and its parts are merely recited to generally linked to the Judicial Exception of mental process. The recitation of “a display” and “a processor” in these claims do not negate the mental nature of these limitations because the claims here merely use the “machine” as a tool to perform the otherwise mental process. See MPEP 2106.04(a)(2), subsection III.C. More detailed reasoning is provided in the body of the 101 rejection below.
Furthermore, the applicant generally stated, without any evidence, that “each of the operations and the ordered combination of the operations in claim 1 are not purely conventional and are a clear practical application of any alleged abstraction”. The applicant is directed to the step 2B analysis provided in the NF and the current office action below.
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 and 11-21 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.
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 and 11-21 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, line 11 recites a limitation of “the region defined by the brush includes a surface of the three dimensional brush”. It is unclear what it means by the region having a surface of the 3D brush. Does this mean that the image includes a surface image of the brush or a surface of a tooth captured in 3D image? Also, it is confusing how a dental/intraoral image can include a surface of scanner/camera itself.
Furthermore, claim 1, line 12-13 recites a limitation of “the region defined by the brush includes a three-dimensional shape”. It is unclear if this is referring to the shape of a tooth or the brush.
Clarification/explanation is respectfully requested.
Claim 20 recites the limitation "at least one piece of distance information". There is insufficient antecedent basis for this limitation in the claim.
Claim 21 recites “when the brush is a sphere 3D brush, …. Thereby determining the sphere 3D brush.” The limitation is confusing. It appears that the it’s been already determined that the brush is 3D when it says when the brush is a sphere 3D brush. If so, is there another determining that the brush is a 3D after the identifying the reference point step? If the determining step occurs after the identifying step of claim 21, shouldn’t the determining step of claim 1 come in result of the identifying step in claim 1 as well? Clarification/explanation is respectfully requested.
Claim 21 recites the limitation "the pre-set distance information". There is insufficient antecedent basis for this limitation in the claim.
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.
Claims 1, 3, 9, 11, 17 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Clausen et al. USP 9775491 in view of Kim (USP 2021/0205057). Alternatively, its parent Korean publication 10-2018-0098286 can also be used.
With respect to claim 1, Clausen teaches a method of identifying a selection region in an intraoral image in an apparatus for processing the intraoral image, the method comprising:
displaying the intraoral image (figs. 1a~1g);
determining a reference point of the intraoral image based on an user input to select a point of an user interface screen in which the intraoral image is displayed (col. 4, lines 47-58);
identifying a region defined by a brush, wherein when the brush is a three-dimensional brush, the region defined by the brush includes a surface of the three-dimensional brush (the 3D image region having the reference points is identified for aligning in col. 5, lines 1-10), and when the brush is a two-dimensional brush, the region defined by the brush includes a three-dimensional shape obtained by projecting the two-dimensional brush in a normal direction onto a user interface screen (the 2D image region having the reference points is identified for aligning in col. 5, lines 1-10);
identifying the selection region based on at least one boundary where the region defined by the brush overlaps with a surface of at least one object of the intraoral image (overlapping region is identified in col. 5, lines 36-52); and
displaying the selection region in the intraoral image (figs. 2a~2c).
Clausen, however, does not teach the step of determining a brush, based on the reference point and at least one piece of distance information.
Kim, the same field of endeavor of generating the 3D intraoral scan data of a patient, 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 a reference point of the intraoral image (border 212 comprising multiple points is defined in paragraph 26;
determining a brush (either smaller circle 232 or larger circle 231), based on the reference point and at least one piece of distance information (the radius/size of each circle cannot be either smaller or bigger than the border 212 in paragraph 26);
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); and
displaying the selection region in the intraoral image (figs. 4b, 5b, 6b & 7b).
The examiner notes that the current claim wording does not require “determining a brush” to be the determination of the brush being either 2D or 3D. Also, it is further noted that the claimed “brush” is nothing more than a 2D marker on the image according to the specification.
It would have been obvious to a person of ordinary skill in the art, before the effective filing date, to modify the method of Clausen to include the determining a brush step as taught by Kim.
The suggestion/motivation for doing so would have been to select a proper bounding box size (either smaller circle 232 or larger circle 231) to accurately identify the desired region of interest in the intraoral image.
With respect to claim 3, the combination of Clausen and Kim teaches the method of claim 1, wherein the selection region comprises the at least one boundary and a region of the surface of at least one object of the intraoral image (tooth or gum can be interpreted to be the recited object), 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 of Kim and fig. 2 of Clausen).
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 20, the combination of Clausen and Kim teaches the method of claim 1, wherein the at least one piece of information distance information is determined according to a default value determined in a user input for changing a size of the brush (paragraph 26 of Kim).
Claims 4-8 and 12-16 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Clausen and Kim in view of Elbaz et al. (USP 10507087).
With respect to claim 4, the combination of Clausen and 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 Clausen/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 Clausen, Kim 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 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 6, the combination of Clausen and Kim teaches the method of claim 1, but it does not teach the identifying of the selection region comprises: identifying at least one object of the intraoral image, based on location information of the reference point; and identifying the selection region, further based on a region of the identified 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, based on location information of the reference point; and identifying the selection region, further based on a region of the identified 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 Clausen/Kim to include the identifying the tooth decay, cracks 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 7, the combination of Clausen and 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 Clausen/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, the combination of Clausen and 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 Clausen/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 14, arguments analogous to those presented for claim 6, 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.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over the combination of Clausen and Kim in view of Kopelman (USPGPUB 2018/0168781)
With respect to claim 18, the combination of Clausen and Kim 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, 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 Clausen/Kim 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.
Claims 19 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Clausen and Kim in view of Griffin (USPGPUB 2021/0077227).
With respect to claim 19, the combination of Clausen and Kim teaches the method of claim 1, but it does not teach the 3D brush is a sphere.
Griffin, the same field of identifying a certain area in an intraoral image, teaches the method of having 3D object being a sphere where a reference point is identified as a center of the sphere and a preset distance information is identified as a radius of the sphere (paragraph 8).
It would have been obvious to a person of ordinary skill in the art, before the effective filing date, to modify the method of Clausen/Kim to include the step of using a sphere object as taught by Griffin.
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 21, the combination of Clausen and Kim teaches the method of claim 1, but it does not teach the 3D brush is a sphere.
Griffin, the same field of identifying a certain area in an intraoral image, teaches the method of identifying a reference point being a center of a sphere and identifying a preset information as a radius of the sphere (paragraph 8).
It would have been obvious to a person of ordinary skill in the art, before the effective filing date, to modify the method of Clausen/Kim to include the step of using a sphere object as taught by Griffin.
The suggestion/motivation for doing so would have been to provide various identifying tool for analyzing intraoral images by the physician.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 CHAN S PARK whose telephone number is (571)272-7409. The examiner can normally be reached Monday-Friday 8:30am-5:00pm.
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/CHAN S PARK/ Supervisory Patent Examiner, Art Unit 2669