DETAILED ACTION
Status of Claims
This action is in reply to the communication filed on 4 September, 2025.
Applicant’s election without traverse of Invention II (Claims 4 – 6) in the reply is acknowledged.
Claims 4 - 6 are currently pending and are subject to a restriction requirement.
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 .
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.
Claim 4 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Claim 4 recites: “define a plurality of factors and a diagnosis support algorithm”. The claim further recites: “acquiring examination information on the shape, location or condition of a patient’s teeth”. The algorithm is executed to generate diagnosis support data.
Examiner cannot determine the metes and bounds of the claim. For example, it is unclear if the defined factors include the recited examination information. Additionally, it is unclear what information is used to execute the algorithm. Here, Examiner assumes that the factors include examination information including shape, location or condition of a patient’s teeth; and that the algorithm is executed by applying the algorithm to the examination information. Appropriate correction or clarification is required.
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.
The following rejection is formatted in accordance with MPEP 2106.
Claim 4 is independent. Claim 4 recites:
A method of providing, by a diagnosis support system included in a treatment system, a medical service for diagnosis support to a certain person, the method comprising:
receiving an input from a diagnostician terminal to define a plurality of factors and a diagnosis support algorithm;
acquiring examination information, the examination information being information on the shape, location or condition of a patient's teeth, from an examination device;
executing the defined diagnosis support algorithm to generate diagnosis support data; and
providing the diagnosis support data to the diagnostician terminal.
Claims 4 - 6 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), and does not include additional elements that either: 1) integrate the abstract idea into a practical application, or 2) that provide an inventive concept – i.e. element that amount to significantly more than the abstract idea. The Claims are directed to an abstract idea because, when considered as a whole, the plain focus of the claims is on an abstract idea.
STEP 1
The claims are directed to a method, which is included in the statutory categories of invention.
STEP 2A PRONG ONE
The claims, as illustrated by Claim 4, recite limitations that encompass an abstract idea including:
receiving an input to define a plurality of factors and a diagnosis support algorithm;
acquiring examination information, the examination information being information on the shape, location or condition of a patient's teeth;
executing the defined diagnosis support algorithm to generate diagnosis support data; and
providing the diagnosis support data.
The claims, as illustrated by Claim 4, recite limitations that encompass an abstract idea within the “mental processes” grouping – concepts performed in the human mind including observation, evaluation, judgment and opinion. The claims recite receiving input from the diagnostician to define factors and an diagnosis support algorithm to analyze the factors; acquires patient information, and analyzes the patient information using the defined algorithm to generate diagnosis support data, which is then provided to the diagnostician. The specification discloses that the factors and the support algorithm are defined and input by the diagnostician; and that the algorithm itself is composed of “rules”. The diagnostician determines important factors for analysis, and sets the rules to analyze the factors. These are a mental process, even according to the specification.
Similarly, executing the support algorithm involves using the defined rules to analyze the factors present in the patient information. Analyzing the patient information includes having the diagnostician make his own diagnosis using the acquired information. For example, the specification discloses that an experience diagnostician can readily diagnose patients, however, those “who lack experience and knowledge may have difficulty in making their own diagnosis.” (specification @ 0178) As such, the claims are limited to defining rules, collecting and analyzing patient information using the rules, and presenting certain results.
Collecting information, including when limited to particular content, is within the realm of abstract ideas, and analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, are mental processes within the abstract idea category (Electric Power Group v. Alstom S.A. (Fed Cir, 2015-1778, 8/1/2016).
As such, the claims recite an abstract idea within the mental process grouping.
The claims, as illustrated by Claim 1, recite limitations that encompass an abstract idea within the “certain methods of organizing human activity” grouping –
managing personal behavior or relationships or interactions between people including social activities, teaching, and following rules or instructions.
Testing a patient in an examination to acquire patient information, analyzing the information using a mental process to determine a diagnosis is process that merely organizes this human activity. See MPEP 2104.04(a)(2) II C referencing In re Meyer. As such, the claims recite an abstract idea within the certain methods of organizing human activity grouping.
STEP 2A PRONG TWO
The claims recite limitations that include additional elements beyond those that encompass the abstract idea above including:
a diagnostician terminal
an examination device.
However, these additional elements do not integrate the abstract idea into a practical application of that idea in accordance with the MPEP. (see MPEP 2106.05)
The diagnostician terminal is recited at a high level of generality such that it amounts to no more than instructions to apply the abstract idea using a generic computer component. These elements merely add instructions to implement the abstract idea on a computer, and generally link the abstract idea to a particular technological environment. The examination device is disclosed as “a device used to acquire identifiable information from a patient, and there is no limit to the type of device”; “any device provided for acquisition of information can be used”. (@ 0174) As such, the broadest reasonable interpretation of the examination device includes conventional devices operating in their normal capacity in an insignificant extra-solution activity – i.e. a data gathering step. Similarly, providing the results of the abstract process does not improve the computer itself, or any other technology, nor does the display of results provide a meaningful limitation beyond generally linking the abstract idea to a particular technological environment.
Nothing in the claim recites specific limitations directed to an improved computer system, processor, memory, network, database or Internet. Similarly, the specification is silent with respect to these kinds of improvements. A general purpose computer that applies a judicial exception by use of conventional computer functions, as is the case here, does not qualify as a particular machine, nor does the recitation of a generic computer impose meaningful limits in the claimed process. (see Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716-17 (Fed. Cir. 2014)). As such, the additional elements recited in the claim do not integrate the abstract diagnostic process into a practical application of that process.
STEP 2B
The additional elements identified above do not amount to significantly more than the abstract diagnostic process. Acquiring examination information on the shape, location or condition of a patient’s teeth from an examination device capture and processing is a conventional technique.
The additional structural elements or combination of elements in the claims, other than the abstract idea per se, amount to no more than a recitation of generic computer structure (i.e. a diagnostician terminal). Each of the above components are disclosed in the specification as being purely conventional and/or known in the industry. As such, the additional elements recited in the claim do not provide significantly more than the abstract diagnostic process, or an inventive concept.
The dependent claims add additional features including:
those that recite additional abstract ideas such as:
preprocessing/standardizing examination information (Claim 5);
analyzing examination information, removing unnecessary data, determining if minimum data requirement is met (Claim 6);
those that merely serve to further narrow the abstract idea above; those that recite well-understood, routine and conventional activity or computer functions; those that recite insignificant extra-solution activities; or those that are an ancillary part of the abstract idea.
The limitations recited in the dependent claims, in combination with those recited in the independent claims add nothing that integrates the abstract idea into a practical application, or that amounts to significantly more. These elements merely narrow the abstract idea, recite additional abstract ideas, or append conventional activity to the abstract process. As such, the additional element do not integrate the abstract idea into a practical application, or provide an inventive concept that transforms the claims into a patent eligible invention.
Therefore, the claims are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Claim Rejections - 35 USC § 102
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.
Claim 4 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Golay: (US PGPUB 2016/0038092 A1).
CLAIM 4
Golay discloses an algorithm for obtaining a dental diagnosis that includes the following limitations:
A method of providing, by a diagnosis support system included in a treatment system, a medical service for diagnosis support to a certain person, (Golay 0002); the method comprising:
receiving an input from a diagnostician terminal to define a plurality of factors and a diagnosis support algorithm; (Golay 0022, 0032);
acquiring examination information, the examination information being information on the shape, location or condition of a patient's teeth, from an examination device; (Golay 0019, 0021, 0032, 0036 - 0039
executing the defined diagnosis support algorithm to generate diagnosis support data; and providing the diagnosis support data to the diagnostician terminal; (Golay 0018, 0020 – 0022, 0032, 0036 – 0039, 0051).
Golay discloses an algorithm for obtaining a dental diagnosis. Golay teaches that it is known in the art to employ artificial intelligence algorithms to perform orthodontic diagnosis including creating neural networks, and selecting features for analysis (i.e. factors) based on user input. In particular Golay discloses collecting patient information from an oral health detection device, and applying an algorithm to determine a diagnosis of the dental condition of the patient. Patient information includes the arrangement of the patient’s teeth, the location, position, contours and size of the plurality of teeth. The algorithm is applied to the patient information and a diagnosis is presented.
Claim Rejections - 35 USC § 103
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.
Claims 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Golay: (US PGPUB 2016/0038092 A1) in view of Ravindran et al.: (US PGPUB 2024/0242131).
CLAIM 5
Golay discloses the limitations above relative to Claim 4. With respect to the following limitations:
wherein the executing of the diagnosis support algorithm comprises: preprocessing the examination information; standardizing the examination information; and generating diagnosis support data based on the standardized examination information; (Ravindran 0017 – 0019, 0051, 0053, 0058 – 0064).
Golay teaches generating diagnosis support information from examination information, but does not expressly disclose preprocessing and standardizing data. Ravindran discloses a classification system that includes preprocessing and standardizing data. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing data of the claimed invention, to have modified the diagnostic system of Golay so as to have included preprocessing and standardizing data, in accordance with the teaching of Ravindran, in order to reduce unnecessary computations.
CLAIM 6
The combination of Golay/Ravindran discloses the limitations above relative to Claim 5. Additionally, Golay discloses the following limitation:
determining whether the minimum examination information required to generate the diagnosis support data has been acquired; (Golay 0021, 0042).
Golay determines if enough data is available for rendering a diagnosis. With respect to the following limitations:
wherein the preprocessing of the examination information comprises: analyzing the examination information; removing the unnecessary data; (Ravindran 0062).
Golay teaches generating diagnosis support information from examination information, but does not expressly disclose preprocessing including analyzing and removing unnecessary data. Ravindran discloses a classification system that includes preprocessing and standardizing data including removing error, duplicates and unwanted data. Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing data of the claimed invention, to have modified the diagnostic system of Golay so as to have included preprocessing to remove unwanted data, in accordance with the teaching of Ravindran, in order to reduce unnecessary computations.
CONCLUSION
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US PGPUB 2018/0055495 A1 to Tehrani et al. discloses preprocessing training data to remove unnecessary items.
WO 2011/003232 A1 to Wang discloses preprocessing training data to remove unnecessary part of the data.
Any inquiry of a general nature or relating to the status of this application or concerning this communication or earlier communications from the Examiner should be directed to John A. Pauls whose telephone number is (571) 270-5557. The Examiner can normally be reached on Mon. - Fri. 8:00 - 5:00 Eastern. If attempts to reach the examiner by telephone are unsuccessful, the Examiner’s supervisor, Robert Morgan can be reached at (571) 272-6773.
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/JOHN A PAULS/Primary Examiner, Art Unit 3683
Date: 16 September, 2025