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 .
Status of Claims
Claims 8, 17, and 19 are amended while claim 21 is newly added. Claims 1-21 filed November 20, 2025 are pending and are hereby examined.
Claim Rejections - 35 USC § 101
3. 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.
4. Claims 1-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e. a law of nature, a natural phenomenon, or an abstract idea), an abstract idea without significantly more.
5. Step 1 Statutory Category: Claims 1-21 are directed to a system, all of which are statutory classes of invention.
6. Step 2A – Prong 1: Judicial Exception Recited: Nevertheless, independent claims 1, 16, 19, and 21 recite an abstract idea of tracking dental material as it becomes a prosthetic. These claims fall under certain methods of organizing human activities, and within certain methods of organizing human activities, the claims specifically fall within the subgrouping of commercial or legal interactions.
The independent claims 1, 16, 19, and 21 recite the following limitations which fall under commercial or legal interactions:
a) a bulk dental material configured to subsequently originate multiple different dental restorations:
b) a trackable code associated with and carried with the bulk dental material, the trackable code associated with bulk information of the bulk dental material: and
c) a plurality of certificates associated with and carried with the bulk dental material, each certificate having a different distinguishable code associable with restoration information of a different one of the multiple different dental restorations, each certificate heme separable from the bulk dental material and configured to be associable with a different one of the multiple different dental restorations.
7. According to the MPEP, "Commercial interactions" or "legal interactions" include agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations. Clearly, tracking dental material as it becomes a prosthetic falls under sales activities, therefore commercial or legal interactions. If the claim limitations, under the broadest reasonable interpretation, covers performance of the limitations as a commercial or legal interaction, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
8. Step 2A – Prong 2: Practical Application: These steps are all performed by using generic computing components. This judicial exception is not integrated into a practical application because the claim as a whole merely recites a control system for tracking dental material as it becomes a prosthetic with generally recited computer elements. These steps are recited at a high-level of generality such that it amounts to more than mere instructions to apply the exception using a generic computer component, and are merely invoked as tools for tracking dental material as it becomes a prosthetic. Accordingly, these elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Simply implementing the abstract idea on a generic computing environment is not a practical application of the abstract idea, and does not take the claim out of the Commercial or Legal Interactions subgrouping of Certain Methods of Organizing Human Activity grouping. The claims are directed to an abstract idea.
9. Step 2B – Inventive Concept: The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered individually and as an ordered combination, they do not add significantly more (also known as “inventive concept”) to the exception. As discussed above with respect to integration of the abstract idea into a practical application, there are no additional elements to perform these steps amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Accordingly, these additional elements, do not change the outcome of the analysis, when considered individually and as an ordered combination as there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. The claims are not patent eligible.
10. Regarding dependent claims 2-5, 8-10, 13-14, 17-18, and 20 the claims merely narrow the abstract idea of tracking dental material as it becomes a prosthetic, and these claims neither integrate into a practical application nor contain additional elements which amount to significantly more than the abstract idea.
11. Regarding dependent claims 6-7, although the claims recite generally recited database, the claims merely narrow the abstract idea of tracking dental material as it becomes a prosthetic, and these claims neither integrate into a practical application nor contain additional elements which amount to significantly more than the abstract idea.
12. Regarding dependent claims 11-12, although the claims recite generally recited machine-readable code, the claims merely narrow the abstract idea of tracking dental material as it becomes a prosthetic, and these claims neither integrate into a practical application nor contain additional elements which amount to significantly more than the abstract idea.
13. Regarding dependent claim 15, although the claims recite generally recited encryption and keys, the claims merely narrow the abstract idea of tracking dental material as it becomes a prosthetic, and these claims neither integrate into a practical application nor contain additional elements which amount to significantly more than the abstract idea.
14. Therefore, the limitations of the inventions, when viewed individually and in ordered combination, are directed to ineligible subject matter.
Examiner Notes
15. Claims 1-21 are novel and unobvious over the prior art, however, there remains a pending 35 U.S.C. 101 rejection and claim objections. After further search and consideration, the most pertinent U.S. prior art was found to be Ebert et al (US 2016/0089220), Leeson et al (US 2017/0035537), Zandinejad et al (US 2017/0056138), Ruppert et al (US 2020/0261196), Hansen et al (US 2021/0386528), Saphier et al (US 2021/0353154), Mayr et al (US 2017/0209244), Pettersson (US 2011/0008751), and Stine et al (US 2017/0020638). Ebert et al (US 2016/0089220) is directed to manufacturing a dental restoration. Leeson et al (US 2017/0035537) is directed to a dental restoration preform. Zandinejad et al (US 2017/0056138) is directed to fabricating dental restorations. Ruppert et al (US 2020/0261196) is directed to polymerized dental material blocks. Hansen et al (US 2021/0386528) is directed to dental restoration molds. Saphier et al (US 2021/0353154) is directed to an automatic determination of workflow for restorative dental procedures. Mayr et al (US 2017/0209244) is directed to making a customized dental blank. Stine et al (US 2017/0020638) is directed to fabricating dental restorations. Pettersson (US 2011/0008751) is directed to dental planning and production. Meanwhile, Caliganano et al (Overview of Additive Manufacturing Technologies, NPL) was found to be the most pertinent NPL prior art, and is directed to tracking of manufactured items.
16. However, both the most pertinent U.S. prior art and NPL fail to disclose all of the limitations particularly:
a plurality of certificates associated with and carried with the bulk dental material, each certificate having a different distinguishable code associable with restoration information of a different one of the multiple different dental restorations, each certificate being separable from the bulk dental material and configured to be associable with and carriable with a different one of the multiple different dental restorations; and
each certificate being a single monolithic certificate with a partition separable into two parts including a dentist part distributable to a dentist and a patient part distributable to a patient, each part having the trackable code and the distinguishable code.
17. No prior art cited here or in any previous Office Action neither fully anticipates nor supports a conclusion of obviousness with respect to the subject matter present in the independent claims, either alone or in combination. The limitations lacking in the prior art, in combination with the other limitations clearly claimed in the application, are novel and unobvious.
18. The Examiner first suggests mirroring the independent claims to include all of the limitations of the other ones, or merely cancel the other independent claims and have one that has all of the limitations. Then, the Examiner suggests incorporating claims 3, 5-7, 9-13, and 15 together into the independent claims. Finally, the Examiner suggests incorporating more hardware from the Specification and any unique arrangements of hardware, unique hardware, or unique ways the hardware is communicating. The aforementioned claim suggestions, in combination together, is suggested to help advance prosecution forward, although further search, examination, and consideration is required.
Response to Arguments
19. Applicant's arguments filed 11/20/25 have been fully considered and are not found to be convincing, therefore the 35 U.S.C. 101 rejection is hereby maintained.
a) Argument #1: Claims do not recite a judicial exception because it is not directed to “certain methods of organizing human activity” and therefore not an abstract idea
20. With regards to the 35 U.S.C. 101 rejection, the Examiner respectfully disagrees. First, the applicant argues that the claims are not directed to an abstract idea. The Examiner respectfully disagrees as the claims are related to tracking dental material as it becomes a prosthetic, which would fall under certain methods of organizing human activity of commercial or legal interactions. Tracking dental material as it becomes a prosthetic is a commercial interaction. According to MPEP 2106.04(a)(2), "commercial interactions" or "legal interactions" include agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations. Tracking dental material as it becomes a prosthetic is a form of marketing or sales activity or behavior, and is therefore an abstract idea.
b) Argument #2: Applicant argues that the abstract idea is integrated into a practical application under Step 2A, Prong 2
21. The Examiner respectfully disagrees. In regards to improving the functioning of the computer/technology/technical field, the claims recite general computing components, and they are recited at a high level of generality, and therefore are merely using computer processing components for tracking dental material as it becomes a prosthetic. After further review of the Specification, there is no disclosure of technical enhancements to any of the computing components, as in multiple instances of the Specification it discloses generally recited elements. Interpreting the claims in view of the Specification, the claims recite the judicial exception are mere instructions to apply the exception of tracking dental material as it becomes a prosthetic (see MPEP 2106.05(f)). The elements recited above do not recite and are not directed to any elements or functions that improve underlying technology.
22. According to MPEP 2106.05(a), it states: “It is important to note that in order for a method claim to improve computer functionality, the broadest reasonable interpretation of the claim must be limited to computer implementation. That is, a claim whose entire scope can be performed mentally, cannot be said to improve computer technology. Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 120 USPQ2d 1473 (Fed. Cir. 2016) (a method of translating a logic circuit into a hardware component description of a logic circuit was found to be ineligible because the method did not employ a computer and a skilled artisan could perform all the steps mentally). Similarly, a claimed process covering embodiments that can be performed on a computer, as well as embodiments that can be practiced verbally or with a telephone, cannot improve computer technology. See RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1328, 122 USPQ2d 1377, 1381 (Fed. Cir. 2017) (process for encoding/decoding facial data using image codes assigned to particular facial features held ineligible because the process did not require a computer).”
23. Furthermore, in determining whether a claim integrates a judicial exception into a practical application, a determination is made of whether the claimed invention pertains to an improvement in the functioning of the computer itself or any other technology or technical field (i.e., a technological solution to a technological problem). Here, the claims recite generic computer components, i.e., that are recited at a high level of generality and are recited as performing generic computer functions customarily used in computer applications. The pending claims do not describe a technical solution to a technical problem. The pending claims are directed to solving the problem of tracking dental material as it becomes a prosthetic. The claims of the instant application describe an improvement to a business process i.e., tracking dental material as it becomes a prosthetic, not improvement in the functioning of the computer itself or an improvement to any other technology or technological field. Therefore, the claims do not integrate into a practical application either by improvement to a computer/technology/technical field.
24. The claims are not directed to any improvement in computer technology. The claims are directed to an abstract idea of tracking dental material as it becomes a prosthetic. The applicant must take into consideration that in order to view the claims as supplying an inventive concept the technological improvement must be present within the claims themselves (Accenture Global Servs., GmbH v. Guidewire Software, inc., 108 USPQ2d 1173 (Fed. Cir. 2013)), (Synopsys, inc. v. Mentor Graphics Corp... 120 USPQ2d 1473 (Fed. Cir. 2016). Additionally, the Specification does not provide any evidence that how the claims provide an improvement to functioning of computing systems or technology. The applicant failed to provide persuasive arguments supported by any necessary evidence to demonstrate that one of ordinary skill in the art would understand that the disclosed invention improves technology.
c) Argument #3: Applicant argues that the claim elements are significantly more than the abstract idea under Step 2B
25. Having determined under step one of the Mayo/Alice framework that claims 1, 16, 19, and 21 are directed to an abstract idea, we next consider under Step 2B of the Guidance, the second step of the Mayo/Alice framework, whether the claims include additional elements or a combination of elements that provides an “inventive concept,” i.e., whether an additional element or combination of elements adds specific limitations beyond the judicial exception that are not “well-understood, routine, conventional activity” in the field (which is indicative that an inventive concept is present) or simply appends well-understood, routine, conventional activities previously known to the industry to the judicial exception. 2019 Revised Guidance, 84 Fed. Reg. at 56.
26. Under step two of the Mayo/Alice framework, the elements of each claim are considered both individually and “as an ordered combination” to determine whether the additional elements, i.e., the elements other than the abstract idea itself, “transform the nature of the claim” into a patent-eligible application. Alice Corp., 573 U.S. at 217 (citation omitted); see Mayo, 566 U.S. at 72-73 (requiring that “a process that focuses upon the use of a natural law also contain other elements or a combination of elements, sometimes referred to as an ‘inventive concept,’ sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the natural law itself’ (emphasis added) (citation omitted)).
26. Here the only additional elements recited in claims 1, 8, and 15 beyond the abstract idea are: i.e., generic computer components. See Alice, 573 U.S. at 223 (“[T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.”). Applicant has not identified any additional elements recited in the claim that, individually or in combination, provides significantly more than the abstract idea.
27. Accordingly, there are no meaningful limitations in the claims that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself. The dependent claims do not resolve the deficiency of the independent claims and accordingly stand rejected under 35 U.S.C. 101 based on the same rationale.
Conclusion
28. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Caliganano et al (Overview of Additive Manufacturing Technologies, NPL) is found to be the most pertinent NPL prior art.
29. 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).
30. 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.
31. Any inquiry concerning this communication or earlier communications from the examiner should be directed to FAWAAD HAIDER whose telephone number is (571)272-7178. The examiner can normally be reached Mon-Fri 8 AM to 5 PM.
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/FAWAAD HAIDER/Primary Examiner, Art Unit 3627