Status under America Invents Act
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
Rejection based on 35 U.S.C. 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 1-20 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) without significantly more.
In determining patent subject matter eligibility under 35 U.S.C. 101 the U.S. Patent Office issued guidance on January 7, 2019 that was then updated in October 2019. That guidance has since been incorporated into the Ninth Edition, Revision R-07.2022 of the Manual of Patent Examination Procedure (MPEP), particularly Sections 2103 through 2106.07(c). The Step 1, Step 2A Prong One, Step 2A Prong Two, and Step 2B determinations set forth in the Patent Office guidance and MPEP are addressed below.
35 U.S.C. 101 – Step 1 – Determination as to whether claims are directed to a statutory category specified in 35 U.S.C. 101 (MPEP 2106.03) - Claims 1-8 are directed to a “method” and determined to meet the “useful process” statutory category of 35 U.S.C. 101. Claims 9-16 and 17-20 are respectively directed to a “system” and a “non-transitory computer readable medium storing instructions” and determined to meet the “machine” and/or “manufacture” categories of 35 U.S.C. 101.
35 U.S.C. 101 – Step 2A Prong One - Determination as to whether the claims recite a Judicial Exception including an abstract idea, law of nature, or natural phenomenon (MPEP 2106.04). Claims 1-20, as a whole, are directed to the Judicial Exception (MPEP 2106.04) of an abstract idea (MPEP 2106.04(a)). The claimed invention is directed to a mental process – concepts that are capable of being performed in the human mind – including observations, evaluations and judgements (MPEP 2106.04(a)(2)). More particularly with respect to independent claims 1, 11, and 17, the method steps/memory instructions of “receiving . . . a 2D image or a patient dentition” may be performed mentally (e.g. a dentist/orthodontist views an image of a patient’s teeth); “obtaining . . . a template dentition comprising a plurality of template teeth” may be performed mentally (e.g. the dentist/orthodontist recalls from memory or views a model/template of human teeth); the step of “generating . . . based on the 2D image and template dentition, a tooth location input that identifies a location of the plurality of template teeth relative to the subset of the plurality of patient teeth” may be performed mentally (e.g. the dentist/orthodontist determines which teeth in the 2D image correspond to the teeth in the model/template); the step of “identifying . . . an area of generation in the 2D image” wherein the area of generation comprises pixels and contextual information of a plurality of the patient’s teeth may be performed mentally (e.g. the dentist/orthodontist mentally identifies an area in the 2D image of the patient’s teeth); the step of “generating . . . new photo realistic teeth based on the tooth location input, contextual information and the area of generation” may be performed mentally (e.g. the dentist/orthodontist generates mentally (or draws) an image or realistic teeth); and finally, the step of “disposing . . . the photo realistic teeth in the area of generation of the 2D image to replace the subset of the plurality of patient teeth” may be performed mentally (e.g. the dentist/orthodontist disposes/replaces mentally, or in a drawing, the new photo realistic place teeth in place of the image of the teeth in the original 2D image). The additional steps of “identifying,” “aligning,” “generating,” “projecting,” “applying,” “obtaining,” “generating,” “disposing” and “defining” set forth in dependent claims 2-8, 10-16 and 18-20 fail to provide for any additional limitations that could not be mentally determined by a dentist/orthodontist in the practice of dentistry. Moreover, it is noted that each of the claimed steps/instructions are set forth with a high level of generality with no particularity or detail as to how a tooth location is generated, how an area of generation is determined, how the new photo of realistic teeth is generated, or how it is disposed to replace a subset of the 2D image which further supports the “mental process” determination.
35 U.S.C. 101 – Step 2A Prong Two requires a determination as to whether the claims as a whole integrates the Judicial Exception into a Practical Application of that exception (MPEP 2106.04(d)). The limitations in claims 1-8 requiring that the steps be performed “by one or more processors”; in claims 9-16 that the system comprises “one or more processors; and a memory coupled with the one or more processors”; and in claims 17-20 of a “non-transitory computer readable medium” amounts to an “additional element” beyond the abstract idea, however, the performance of a mental process on a generic computer/computer readable medium fails to integrate the Judicial Exception into a Practical Application of the exception (see MPEP 2106.04(a)(2)(III)(C)). ("[T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention." Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014). There is no disclosure that the method steps/computer instructions improve the manner in which the computer/processor/computer readable medium operates (see MPEP 2106.04(d)(1)). The claims do not go beyond generally linking the judicial exception to a computer environment. The claims do not require that the method be implemented by a particular machine (see MPEP 2106.05(b)), nor do the claims require the method to particularly transform a particular article (see MPEP2106.05(c)). The claims as whole fail to integrate the abstract idea (the “judicial exception”) into a practical application of that abstract idea.
The claims are directed solely to a digital virtual environment where data is input (“receiving” and “obtaining”) and processed (“generating;: “identifying”; “disposing”) – there are no additional elements integrating the judicial exception into a practical solution – the computer method is not used to operate a manufacturing device, the computer method is not used to improve the functioning of a computer, the computer method is not used to transform a particular article into a different state or thing – there is no meaningful limitation beyond generally linking the use of the judicial exception to a particular technological environment.
Additionally, it is noted that dentists/orthodontists have long practiced their trade/art of restoring teeth – well before the advent of computer use in the medical and dental fields – and are most certainly capable of viewing a 2D image of a patient’s dentition; determining which of the patient’s teeth in the 2D image correspond to a desired model/”template” of each of the different teeth; generating/identifying portions of “areas” of the patient’s teeth in the 2D image where a change is desired (e.g. a cosmetic or alignment repair); identifying pixels in the area of the 2D image where change is desired; generating a realistic drawing of the desired cosmetic/alignment repair of a tooth; and then “disposing” the image of the cosmetic/alignment repair over the original 2D image . . . all without the use of a computer.
35 U.S.C. 101 – Step 2B requires a determination as to whether the claims amount to Significantly More than the Judicial Exception (MPEP 2106.05). As set forth above with respect to Step 2A Pong One. the claimed computer method, the method performed by the computer system and the method steps set forth on the non-transitory computer readable medium in claims 1-20 are all capable of being performed mentally and represent nothing more than concepts related to performing observations, evaluations and judgements which fall within the judicial exception. The claims, at most, require a generic general purpose computer or generic computer memory. There is no disclosure in the written description that the computer or the computer memory device is anything more than a generic component, nor is there any disclosure that the instructions improve the manner in which the computer device operates. The mere recitation in the claims of a generic conventional computer/memory that is intended to be used in a conventional manner to perform conventional computer functions that are well understood and routine does not amount to "significantly more" than the judicial exception. The claims do not go beyond inputting (“obtaining”/”receiving”), and processing (“generating”, “identifying”, “disposing”) data with a standard generic computer.
The analysis of data in a particular field and the stating those functions in general terms, without limiting them to technical means for performing the functions is an abstract idea and does not meet the requirements of 35 U.S.C. 101. The claims do not require that the method be implemented by a particular machine and they do not require that the method particularly transform a particular article. The claims set forth a process of presenting information of a specific content and are not directed to any particularly asserted inventive
technology for performing those functions. Nothing in the claims or specification requires anything more than a conventional prior art computer for analyzing numbers according to a mathematical algorithm. The claimed system and method fall with the judicial exception to patent eligible subject matter of an abstract idea without significantly more. See Elec. Power Grp., LLC v. Alstom S.A., 119 USPQ2d 1739 (Fed. Cir. 2016) for further guidance.
Rejections based on 35 U.S.C. 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 2, 3, 5, 10, 11, 13, 18 and 19 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.
In claims 2, 10, 18, the limitation in line 5, “second edges associated with remaining patient teeth” is unclear. What teeth are “remaining” and what are they “remaining” from. Insufficient context and basis is provided for reasonably interpreting the limitation.
In claims 5 and 13, there is no antecedent basis for the “3D mesh.” It is unclear what applicant is attempting to claim.
Rejections based on Prior Art
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, 4-9, 12-17 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Abyad et al (“Virtual prosthetic try in using Photoshop: Method of transferring veneers from the cast to the patient’s mouth digitally”).
Abyad et al disclose a method/system for using Adobe Photoshop to Photoshop images of tooth veneers into a 2D image of a patient dentition that meets applicant’s broadly claimed method/system. More particularly, Abyad et al disclose receiving by a computer a 2D image of a patient’s dentition (smiling image layer - Figure 5a); obtaining by the processor a template dentition comprised of a plurality of template teeth that correspond to a subset of the patient’s teeth (the imaged restorations with erased backgrounds Figure 3 meet the “template” limitation); generating by the processor a tooth location input that locates the template teeth relative to the patient’s teeth (the calibration steps of Figures 4a and 4b and the alignment of the margins of the restorations/template with the gingival margin of the teeth – paragraph bridging pages 4 and 6, Figure 6); identifying by the processor an area of generation in the 2D image comprising a plurality of pixels (the patient’s top frontal teeth are identified in the original 2D image of the patient’s dentition – Figure 5a); generating by the processor new photo realistic teeth based on location input, contextual information and area of generation (the “new photo realistic teeth” (the calibration/resizing of the template/restoration images to match that of the 2D image discussed at pages 4 and 6); and then disposing by the processor the photo realistic in the area of generation of the 2D image (Figure 7a).
In regard to claims 4 and 12, at least the shape of Abyad et al photo realistic teeth is based on the contextual information of the area of generation. In regard to claims 5 and 13, the Abyad et al template/restoration image stored in memory may be called “library teeth.” In regard to claims 6 and 14, the teeth in Abyad et al may be given the title “target teeth.” Naming elements and identifying what applicant intends for the elements to be used for in the future fails to impose any patentable distinction from the method and system disclosed by Abyad et al. In regard to claims 7, 15 and 20, as discussed above with respect to the identifying, generating and disposing steps Abyad et al discloses the claimed features – the “pixels” limitation is inherent in the Photoshop manipulation of digital images. In regard to claims 8 and 16, Abyad et al disclose the identification of the gingival margins in the images and the use of the gingival margins as a boundary (note the discussion at pages 4 and 6, as well as Figure 6a and b).
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 2, 3, 10, 11, 18 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Abyad et al (“Virtual prosthetic try in using Photoshop: Method of transferring veneers from the cast to the patient’s mouth digitally”).
In regard to claims 2, 10 and 18, it is somewhat unclear as to what is being claimed (note the 112 rejection above), however, it would have been obvious, if not inherent, for the operator to use the Abyad et al Adobe Photoshop software to align the first edges of the template (restoration images) with the second edges of the teeth in the 2D image of the patient so that they are properly aligned in the overlaid/”disposed” image. Furthermore to have “segmented” the template image such that only some of the teeth are shown as restored so that the patient may make determinations as to what work they want to have done on their teeth would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention. In regard to “bundle adjustment” of claims 3, 11 and 19, it is inherent that the resizing and correlation of the template teeth to the 2D image of the patient’s applies not only to a single tooth, but the “bundle” of teeth.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ralph Lewis whose telephone number is (571)272-4712. The examiner can normally be reached Monday-Friday from 9AM-4PM.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Eric Rosen, at (571) 272-4964. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://portal.uspto.gov/external/portal. Should you have questions about access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
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.
/RALPH A LEWIS/Primary Examiner, Art Unit 3772 (571) 272-4712