DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
2. Claim 14 is rejected under 35 U.S.C. 112 first and second paragraphs as attempting to define a product (i.e., machine or apparatus) entirely by virtue of its function, in the absence of any recited structure.
Products must distinguish over the prior art in terms of their structure (or structure + structure’s function when claimed functionally) rather than function alone (MPEP 2114). Therefore, an “apparatus” not having structural limitations fails to “particularly point out and distinctly claim …” the invention in accordance with 35 U.S.C. 112, 2nd paragraph.
Furthermore, while the specification disclosure may be enabling for a plurality of structural elements performing the claimed functions [1], the specification does not reasonably provide enablement for a single structural element (or no structural elements) performing all of the claimed functions. That is, given the claim in question, the specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims (“A single means claim, i.e., where a means recitation does not appear in combination with another recited element of means, is subject to an undue breadth rejection under 35 U.S.C. 112, first paragraph” because a single means claim covers “every conceivable means for achieving the stated purpose” and “the specification disclosed at most only those means known to the inventor” - MPEP, at paragraph 2164.08(a)).
Applicant is advised to define the apparatus by virtue of the individual structural element that serve to perform the individual functions recited in the corresponding method claim.
[1] Even when an apparatus is disclosed as being computer implemented (e.g., software implemented on hardware), the requirement remains that there be some structure recited in the body of the claim (e.g., a processor and a memory storing a program which when implemented performs the method steps). For purposes of “means plus function” language, individual disclosed steps corresponding to computer program elements operating on a processor (e.g., inputting, filtering, detecting and resolving) may be considered as separate means (Dossel, 115 F.3d at 946–47, 42 USPQ2d at 1885).
Claim Rejections - 35 USC § 102
3. 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 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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-4 and 7-19 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Sabina et al. (WO 2016/142817 A1).
Regarding claims 1 and 14: Sabina et al. discloses a method to generate a dental scan clip, comprising:
(a) providing a clip start point, a clip end point, and a dental scan parameter (paragraphs 0028 and 0029, a video of the intraoral scan is made based on a first position and second position. Also the system does the recording based on the scanner identifying the teeth and/or other structures. Video=clip, first position=start point, and second position=end point. Paragraph 0029 discloses based on the procedure then certain intraoral scans are performed to obtain specific objects. Paragraph 0029 also discloses wherein the “dental practitioner may input the identity of a procedure into medical scan application” or “choose a procedure from a number of preset options”. Each of these procedures have specific dental parameters to obtain the correct intraoral segments and/or intraoral structures.); and
(b) editing a dental scan in accordance with the clip start point, the clip end point, and the dental scan parameter to generate the dental scan clip (Paragraphs 0019, 020, 0028 and 0029, see paragraphs 0019 and 0020, the medical images are manipulated, i.e. read as editing a dental scan).
Regarding claim 2: The method of claim 1, wherein the clip start point is determined by a point in the dental scan at which a dental landmark is identified within the dental scan or wherein the clip end point is determined by a point in the dental scan at which a dental landmark is no longer visible in the dental scan (paragraph 0028, when the scanning is done in the automatic mode it is carried out based on the identification of teeth and/or other objects. This is read as present when identified and not present (i.e. when not identified after it is identified).
Regarding claim 3: The method of claim 2, wherein the dental landmark is a maxillary tuberosity, a retromolar pad, or a tooth (paragraph 0028, the teeth are identified).
Regarding claim 4: The method according to claim 1, wherein the dental scan parameter comprises ensuring an upper teeth arch, a lower teeth arch, or a bite arch remains horizontal in the dental scan frame (paragraphs 0069, 0079 and 0097).
Regarding claim 7: The method according to claim 1, wherein the dental scan parameter comprises ensuring the movement speed of a dental scan remains constant (paragraphs 0028 and 0029).
Regarding claim 8: The method according to claim 1, wherein the dental scan provided is comprises one or more videos or images (paragraphs 0028 and 0029).
Regarding claim 9: The method according to claim 1, wherein the dental scan provided is a video or image acquired with a mobile device (paragraphs 0027, 0057, and 0061. The probe is read as a mobile device since it is handheld device.).
Regarding claim 10: The method according to claim 1, wherein the editing comprises matching at least part of the provided dental scan parameters to a reference dental scan clip (paragraphs 0029-031).
Regarding claim 11: The method according to claim 1, wherein the dental scan clip is a movie, video, or animation (paragraphs 0028 and 029).
Regarding claim 12: The method according to claim 1, wherein the dental scan clip is less than 1 minute long (paragraphs 0028 and 0029).
Regarding claim 13: The method according to claim 1, further comprising presenting the dental scan clip simultaneously with a reference dental scan clip (0035, 0036, 0039, 0054, and 0055).
Regarding claim 15: Sabina et al. discloses a method to transform three dimensional (3D) dental data into a dental model clip (paragraphs 0026, 0028, and 0029), comprising:
(a)providing the 3D dental data (paragraph 0026);
b) providing a graphic visualization tool (0035, 0036, 0039, 0054, and 0055);
(c) using the graphic visualization tool to generate a dental model from the 3D dental data (paragraphs 0028, 0029, 0036, and 0043);
(d) providing a clip start point, a clip end point, and a dental model parameter (see claim 1 and paragraphs 0028, and 0029); and
(e) generating the dental model clip from the dental model in accordance with the clip start point, the clip end point, and the dental model parameter (see claim 1 and paragraphs 0028, 0029, 0036, and 0043).
Regarding claim 16: The method according to claim 15, further comprising presenting the dental model clip simultaneously with a reference dental scan clip (see claim 13).
Regarding claim 17: The method according to claim 15, further comprising underlying or overlying the dental model clip with a reference dental scan clip (fig. 7 and paragraph 0016).
Regarding claim 18: The method according to claim 17, wherein differences between the dental model clip and the reference dental scan clip are marked (paragraphs 0093-0095).
Regarding claim 19: Sabina et al. discloses a computer-implemented method for remote dental monitoring (paragraphs 0021, 0023, and 0026, system could be connected by LAN OR WAN, i.e. at a different location or room. This is read as remote dental monitoring), the method comprising:
providing a dental scan clip of a user (paragraphs 0028, 0029);
providing a reference dental scan clip of the user or a dental model clip of the user (paragraphs 0028 and 0029); and
simultaneously presenting the dental scan clip with the reference dental scan clip or the dental model clip on a graphical display (paragraphs 0028, 0029, 0036, and 0043).
Allowable Subject Matter
4. Claims 5 and 6 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.
Contact Information
5. Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANAND BHATNAGAR whose telephone number is (571)272-7416. The examiner can normally be reached on M-F 7:30am-4:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Vu Le can be reached on 571-272-4650. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANAND P BHATNAGAR/
Primary Examiner, Art Unit 2668
February 2, 2026