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 .
Response to Arguments
Applicant's arguments filed 09/17/2025 have been fully considered but they are not persuasive. Applicant has argued that the amendments have overcome the 101 rejection, however upon further consideration the language of the previously pending claims and new claims are found to still be rejected under 101 for the reason laid out below.
Applicant has argued that the amendment to the claims would overcome the cited prior art, claims 2 and it’s depending claims are still rejected under Manemann et al. though now under section 103. Further while no prior art rejections are directed to claims 13-16, 18-31, these claims are rejected under 101 and double patenting.
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 2, 3, 4, 6, 9, 10, 13-16, 18-31 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 accordance with the “2019 Revised Patent Subject Matter Eligibility Guidance,” issued January 7, 2019 the pending claims are analyzed as follows —
Step 1 - In regard to claims 2, 3, 4, 6, 9, 10, 13-16, 18-31 which are directed to either a process or system with readable medium to perform the process of receiving data, generating data of treatment plans by computing device, and displaying the data of the treatment plans and receiving at the computing tool data of selection of the treatment plan data which amounts to data sending, receiving and manipulation which would be intended to operate on a generic computing device. The various dependent claims all add only additional data manipulation steps, inputs or outputs. The method is within the 35 U.S.C. 101 statutory category of a “process” (MPEP 2106.03), but falls into the judicial exception (MPEP 2106.04).
Step 2A —In regard to claims 2, 3, 4, 6, 9, 10, 13-16, 18-31, the claimed inventions are directed to an abstract idea(MPEP 2106.04(a)) without reciting additional elements that amount to significantly more than the judicial exception (MPEP 2106.05). The claimed inventions are directed to a mental process — concepts that are capable of being performed in the human mind or with paper and pencil— including observations, evaluations and judgements and generation of information. More particularly the generating and receiving of data, generation of data(treatment plans), receiving of inputs, displaying of models, receiving of selections are capable of being done mentally (a dentist views a patient’s dentition envisioning treatment plans within their mind or by use of pencil and paper and the receiving and transmitting could be done via paper and pencil, or by writing out a descriptive arrangement), and generating data that is intend to cause other processes to occur but does not actually include those processes to occur (similarly to how “a step of "prescribing a topical steroid to a patient with eczema" is not a positive limitation because it does not require that the steroid actually be used by or on the patient”).
It is further noted that orthodontists have long practiced their trade/art of mentally determining the creation of treatment plans, the mental trade of information with a patient by talking and drawing—well before the advent of computers — and are most certainly capable of envisioning and mentally generating treatment plans and transmitting drawing or descriptions of treatment plans and receiving selections by discussions with patients from two drawings done using a generic computer.
Step 2B — In regard to claims 2, 3, 4, 6, 9, 10, 13-16, 18-31, the claimed method steps are capable of being performed mentally and represent nothing more than concepts related to performing mental modeling steps which fall within the judicial exception. Implicit in the claimed invention is the intended use of a computing or data processing device, however, there is no disclosure in the written description that the processing units are anything more than a generic component, nor is there any disclosure that the method of receiving, generating, transmitting, displaying, or selecting plans improves the manner in which the processing unit operates. The mere recitation in the claims of the intention to operate a generic conventional processing unit that is 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 general data manipulation and displaying based on mathematical algorithms with mental image generation and comparisons. Further claim 2, recites the limitation of “causing a manufacturing “ of appliances associated with the desired treatment plan, however this is not the administration of the treatment and does not actually recite the active manufacturing of any particular appliance only the intention for some other method to occur. Claims 13 and 23 recite generic limitations of “providing, to a patient” an appliance associated with the desired treatment however this is not the administering of the treatment but only a generic “associated” provision.
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 instructions of analyzing 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 which a person would use in a digital manner of paper and pencil. The claimed method thus falls 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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 2-4, 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Manemann et al. (US 2003/0027098 A1) in view of Hultgren et al. (US 2005/0010450 A1).
Regarding claims 2, and 6, Manemann discloses a system and method for comparative orthodontic treatment planning (Fig. 1 showing system, Title and abstract), comprising:
A computer coupled to a server (paragraph [0103] lines 4-7, disclosing a computer used by the practitioner for the method is connected by a modem to a server), the computer comprising a processor with a memory and a computer readable medium comprising instructions which, if executed, cause the computer to (paragraph [0050] all disclosing the system operating by reading by a computer and thus processor of the computer readable medium that reads from a memory):
receiving at the computer an initial tooth data set comprising an initial tooth arrangement of a three-dimensional model (Fig. 1 elements 31,34,35);
generate a plurality of different treatment plan for a patient based on an initial tooth data set received by the computer the at least one treatment plan comprising a plurality of planned successive tooth arrangements for moving teeth along a treatment path from an initial arrangement toward a selected final/target arrangement for a patient based on the initial tooth data (Fig. 1 element 38-41 first plan, Fig. 1 element 42-47 second different plan both using the initial data set and having different tooth paths/routes and thus one having first tooth path and the other having a second tooth path, paragraph [0086] lines 1-7 disclosing a first treatment plan with at least two teeth arrangement of the initial and final, paragraph [0088] lines 8-11 disclosing the plan can include intermediate stage of tooth positions, paragraph [0100] disclosing the second plan for element 42-47 occurs in the same manner as for 38-41 and thus has several treatment stages with a plurality of successive planned tooth arrangements)
the treatment plans each comprising a series of treatment stages to move teeth along the treatment path corresponding to a plurality of respective dental appliances (paragraph [0030] disclosing the at least two different treatments having different corresponding appliances for the prescription of treatment stages, paragraph [0088] lines 9-11 disclosing the different plans having a series of stages to move to each tooth position);
after the different plans are generated, outputting the target arrangements of the at least two different plans to display tooth arrangements for each of the one or more treatment stages (Fig. 1 element 50);
allow a user to compare tooth arrangements for at least two different treatment stages (Fig. 1 element 50 allows for a user to compare the arrangement for the different stages on the display; and
and receiving from a client device a user selection of a treatment plan after comparing the tooth arrangements based on the displayed target arrangements (Fig. 1 element 52), and cause manufacturing of the one or more of the plurality of respective dental appliances associated with the desired treatment plan (Fig. 1 element 54 which places an order that would cause the appliance to be manufactured if the inventory of the appliance was low, paragraph [0103] all).
Further regarding claim 2, Manemann discloses structure and methods substantially identical to the instant application as discussed above but fails to explicitly disclose where the number of treatment stages in the first and second treatment plans are different.
However, Hultgren further discloses wherein each treatment plan comprises a plurality of treatment stages that includes an initial, a final and a plurality of intermediate treatment stages (Fig. 8 and Fig. 9 are two intermediate steps of a one treatment plan from the initial stage of Fig. 6 to the intermediate stage of the removal and then movement of teeth, thus multiple intermediate stages, Fig. 10 and 11 showing s different treatment plan and showing different removal and movement of teeth thus intermediate steps, paragraphs [0056] and [0057] making clear they are different intermediate steps to be compared by the patient, Fig. 19 vs Fig. 20 are different treatment plans with various stages, paragraph [0063] lines 1-6 disclosing they are different treatment plans, lines 6-10 disclosing the generation of plans having “various steps in a treatment plan”).
Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate the provision of the number of stages being different as taught by Hultgren into the system and method of orthodontic treatment as taught by Manemann for the purpose of providing to a practitioner as well as a client that cost and ability to obtain a treatment in relation to what result that treatment would as an essential factor in peoples deciding to have procedures performed based of their budgets and resources and taught by Hultgren (paragraph [0063] lines 6-10).
Regarding claim 3, Manemann/Hultgren as combined further discloses where the computer allows the user to compare tooth arrangements by superimposing a first tooth target arrangement for a first treatment stage over a second tooth target arrangement from a second treatment stage (Manemann Fig. 1 element 50 showing the simultaneously displaying of the two different tooth positions from two different treatments, Figs. 3 and 4 showing that the two different positions are superimposed over each other, paragraph [0093] all).
Regarding claim 4, Manemann/Hultgren as combined further discloses where the first tooth arrangement is displayed in a first color (Manemann Figs. 3/4 element 66a being white/clear and the second tooth arrangement is displayed in a second color Figs. 3/4 element 66b being a stippled gray, paragraph [0093] lines 14-17 explicitly disclosing the use of different colors).
Regarding claims 9, Manemann/Hultgren as combined further discloses where the first and second treatment plans include prescriptions for treatment using aligners/trays with different material between the first and second aligners and that the aligners have different geometries shaped to receive and reposition teeth to a successive position (Manemann paragraph [0011] all and [0084]-[0085] disclosing orthodontic aligners/tray that move through successive positions with different material stiffness’s).
Regarding claim 10, Manemann/Hultgren as combined above discloses structure and methods substantially identical to the instant application as discussed above but fails to explicitly disclose a step of providing and displaying a relative pricing of the treatment plans compared by the user, though Manemann does disclose the issue of purchasing orthodontic appliances based on the different treatment plans (paragraph [0103] lines 1-4).
However, Hultgren further discloses a method of orthodontic treatment planning (title and abstract) with a comparative orthodontic treatment planning tool being a processor and memory (Fig. 2 element 200 showing processors and memory storage and ram) the method comprising:
receiving at the treatment planning tool an initial tooth data set comprising an initial tooth arrangement of a three-dimensional model (Fig. 3 elements 102 and 103 are 3d scanned models paragraph [0037] all disclosing plaster models being scanned and thus being 3d models, paragraph [0038] lines 1-5 disclosing the digital model is made of a collection of polygons with vertices at particular locations in space and thus is a 3-D model, Fig. 6 showing the receive data set of the pre-treatment tooth arrangement);
generating by the treatment planning tool a plurality of treatment plans each having different routes, a first and second, to tooth movement ( Figs. 8/9 vs Fig. 10/11 and Fig. 19 elements 1902 vs 1903 are different treatment plans, Fig. 24 element 2412 is the generation of the first plan and element 2415 is the generation of a second plan) to move teeth from the initial treatment arrangement stage to a final treatment stage based on the initial tooth data set and a final (Fig. 24 element 2411 is the receiving of the initial positions, element 2418 the implementation of the chosen plan to the final step in the plan being based of the initial conditions and goal conditions), and the providing of relative cost of the different treatment plans to be available for comparison by the patient (paragraph [0063] lines 8-16 disclosing what costs and sharing the cost with the user).
Therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate the provision for displaying of relative pricing/cost of treatments for comparison by the user as taught by Hultgren into the system and method of orthodontic treatment including selecting and purchasing appliances for the selected treatment as taught by Manemann/Hultgren for the purpose of providing to a practitioner as well as a client that cost of a treatment in relation to what result that treatment would be able to provide as cost of orthodontic treatments are an essential factor in peoples deciding to have procedures performed based of their budgets and resources.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 2, 13, and 23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,850,111. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of U.S. Patent No. 11,850,111 is a species to claims 2, 13 and 17.
Claims 3, 14, and 24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 11,850,111. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 7 of U.S. Patent No. 11,850,111 is a species to claims 3, 14, and 24.
Claims 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 11,850,111 in view of Manemann et al. (US 2003/0027098 A1). Although the claims at issue are not identical as claim 7 fails to provide for the superimposed images to have different color, Manemann discloses a where the first tooth arrangement is displayed in a first color (Manemann Figs. 3/4 element 66a being white/clear and the second tooth arrangement is displayed in a second color Figs. 3/4 element 66b being a stippled gray, paragraph [0093] lines 14-17 explicitly disclosing the use of different colors) and therefore it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate the different color from Manemann into the superimposed image of claim 7 to provide for ready comparison as taught by Manemann ( paragraph [0089] all).
Claims 6, 18, and 27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 11,850,111. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 3 of U.S. Patent No. 11,850,111 is a species to claims 6, 18, and 27.
Claims 9, 21 , and 30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No. 11,850,111. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 6 of U.S. Patent No. 11,850,111 is a species to claims 9, 21, and 30.
Claims 19 and 28 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 11,850,111. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 4 of U.S. Patent No. 11,850,111 is a species to claims 19 and 28.
Claims 20 and 29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 11,850,111. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 5 of U.S. Patent No. 11,850,111 is a species to claims 20 and 29.
Claims 10, 15, and 25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 11,850,111. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 2 of U.S. Patent No. 11,850,111 is a species to claims 10 ,15, and 25.
Claims 16 and 26 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 11,850,111. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 8 of U.S. Patent No. 11,850,111 is a species to claims 16 and 26.
Claims 22 and 31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No. 11,850,111. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 12 of U.S. Patent No. 11,850,111 is a species to claims 22 and 31
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 MATTHEW P SAUNDERS whose telephone number is (571)270-3250. The examiner can normally be reached M-F 9am-5pm.
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/M.P.S/Examiner, Art Unit 3772 12/23/2025
/EDELMIRA BOSQUES/Supervisory Patent Examiner, Art Unit 3772
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