DETAILED ACTION
Responsive to the claims filed November 30, 2023. Claims 1-10 are presented. 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 § 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 1-10 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claimed invention is directed to the concept of facial shape classification method. This judicial exception is not integrated into a practical application. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception and do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
The Examiner will further explain in view of the 2019 Revised Patent Subject Matter Eligibility Guidance using exemplary claim 1:
1. A facial shape classification method, which is performed using a denture design device, comprising:
in a denture design device, acquiring facial data of a patient;
extracting a plurality of landmarks from the acquired facial data;
classifying a facial shape of the patient using distances between the plurality of extracted landmarks; and
classifying and providing an artificial tooth shape of the patient according to the classified facial shape.
The claim recites a series of steps and therefore is directed to a process, which satisfies step 1 of the Section 101 analysis. Under the new two-prong inquiry, the claim is eligible at revised step 2A unless it: Prong One: the claim recites a judicial exception; and Prong Two: the exception is not integrated into a practical application of the exception.
The above claim steps are directed to the concept of facial shape classification method, which is an abstract idea that can be performed by a user mentally and falls within the Mental Processes grouping. (Prong one: YES, recites an abstract idea).
The October 2019 Update explains on pages 7-8 that claims do recite a mental process when the claim limitations can practically be performed in the human mind. Examples of claims that recite mental processes include Electric Power Group, LLC which was directed to collection information, analyzing it, and displaying certain results of the collection and analysis and Classen which was directed to collecting and comparing known information. The courts have also found that claims that require a generic computer may still recite a mental process even though the limitations are not performed entirely in the human mind (page 8 of the October 2019 Update).
The claim recites the use of a denture design device. The Applicant’s specification does not provide any indication that this additional element is anything other than a generic, off-the-shelf computer and can be any type of computing device (see page 6). The additional element is generic and is being used in its ordinary capacity. The use of this additional element amounts to generally linking the use of the judicial exception to a particular technological environment or field of use. Employing well-known computer functions to execute an abstract idea, even when limiting the use of the idea to one particular environment, does not add significantly more, similar to how limiting the abstract idea in Flook to petrochemical and oil-refining industries was insufficient. As explained by the Supreme Court, a claim directed to a judicial exception cannot be made eligible "simply by having the Appellant acquiesce to limiting the reach of the patent for the formula to a particular technological use." Diamond v. Diehr, 450 U.S. 175, 192 n.14, 209 USPQ 1, 10 n. 14 (1981). Thus, limitations that amount to merely indicating a field of use or technological environment in which to apply a judicial exception do not amount to significantly more than the exception itself. (MPEP 2106.05(h)).
The claim limitations do not include additional elements that are sufficient to amount to significantly more than the judicial exception and do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. (Prong Two: NO, does not recite additional elements that integrate the abstract idea into a practical application similar to that shown in MPEP 2106.05).
The remaining claims are rejected under similar grounds and do not recite any additional elements that amount to significantly more than the abstract idea except claim 10.
Claim 10 is directed to a denture design device that includes a data acquisition unit, a control unit, and an output unit to perform the steps of the method in claim 1. As explained above, the Applicant’s specification does not provide any indication that the denture design device is anything other than a generic, off-the-shelf computer and can be any type of computing device (see page 6). The various units appear to be merely programs/software. These additional elements are generic and are being used in their ordinary capacity. The use of these additional elements amount to generally linking the use of the judicial exception to a particular technological environment or field of use. Employing well-known computer functions to execute an abstract idea, even when limiting the use of the idea to one particular environment, does not add significantly more, similar to how limiting the abstract idea in Flook to petrochemical and oil-refining industries was insufficient. As explained by the Supreme Court, a claim directed to a judicial exception cannot be made eligible "simply by having the Appellant acquiesce to limiting the reach of the patent for the formula to a particular technological use." Diamond v. Diehr, 450 U.S. 175, 192 n.14, 209 USPQ 1, 10 n. 14 (1981). Thus, limitations that amount to merely indicating a field of use or technological environment in which to apply a judicial exception do not amount to significantly more than the exception itself. (MPEP 2106.05(h)).
Under step 2B, the claimed invention does not recite additional elements that are indicative of an inventive concept. The additional elements when considered both individually and as an ordered combination do not amount to significantly more than the abstract idea. Mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
Furthermore, it is noted that the implementation of the abstract idea on generic computers and/or generic computer components does not add significantly more, similar to how the recitation of the computer in Alice amounted to mere instructions to apply the abstract idea on a generic computer. The claims merely invoke the additional elements as tools that are being used in their ordinary capacity. Further, the courts have found that simply limiting the use of the abstract idea to a particular environment does not add significantly more. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improve any other technology. Their collective functions merely provide generic computer implementation.
Regarding computer functions, MPEP 2106.05(d)(II) states: The courts have recognized the following computer functions as well‐understood, routine, and conventional functions when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity:
i. Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014) ("Unlike the claims in Ultramercial, the claims at issue here specify how interactions with the Internet are manipulated to yield a desired result‐‐a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink." (emphasis added));
ii. Performing repetitive calculations, Flook, 437 U.S. at 594, 198 USPQ2d at 199 (recomputing or readjusting alarm limit values); Bancorp Services v. Sun Life, 687 F.3d 1266, 1278, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012) ("The computer required by some of Bancorp’s claims is employed only for its most basic function, the performance of repetitive calculations, and as such does not impose meaningful limits on the scope of those claims.");
iii. Electronic recordkeeping, Alice Corp., 134 S. Ct. at 2359, 110 USPQ2d at 1984 (creating and maintaining "shadow accounts"); Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755 (updating an activity log);
iv. Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93;
v. Electronically scanning or extracting data from a physical document, Content Extraction and Transmission, LLC v. Wells Fargo Bank, 776 F.3d 1343, 1348, 113 USPQ2d 1354, 1358 (Fed. Cir. 2014) (optical character recognition); and
vi. A web browser’s back and forward button functionality, Internet Patent Corp. v. Active Network, Inc., 790 F.3d 1343, 1348, 115 USPQ2d 1414, 1418 (Fed. Cir. 2015).
Below are examples of other types of activity that the courts have found to be well-understood, routine, conventional activity when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity.
i. Recording a customer’s order, Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1244, 120 USPQ2d 1844, 1856 (Fed. Cir. 2016);
ii. Shuffling and dealing a standard deck of cards, In re Smith, 815 F.3d 816, 819, 118 USPQ2d 1245, 1247 (Fed. Cir. 2016);
iii. Restricting public access to media by requiring a consumer to view an advertisement, Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716-17, 112 USPQ2d 1750, 1755-56 (Fed. Cir. 2014);
iv. Identifying undeliverable mail items, decoding data on those mail items, and creating output data, Return Mail, Inc. v. U.S. Postal Service, -- F.3d --, -- USPQ2d --, slip op. at 32 (Fed. Cir. August 28, 2017);
v. Presenting offers and gathering statistics, OIP Techs., 788 F.3d at 1362-63, 115 USPQ2d at 1092-93;
vi. Determining an estimated outcome and setting a price, OIP Techs., 788 F.3d at 1362-63, 115 USPQ2d at 1092-93; and
vii. Arranging a hierarchy of groups, sorting information, eliminating less restrictive pricing information and determining the price, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1331, 115 USPQ2d 1681, 1699 (Fed. Cir. 2015).
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.
Claims 1-2, 4, and 6-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Malfliet et al (US 2010/0145898).
As per claim 1, Malfliet et al teach a facial shape classification method, which is performed using a denture design device, comprising:
in a denture design device, acquiring facial data of a patient (see at least paragraph [0030]; image of patient);
extracting a plurality of landmarks from the acquired facial data (see at least paragraphs [0020, 0041]);
classifying a facial shape of the patient using distances between the plurality of extracted landmarks; and classifying (see at least paragraph [0049], in table; the shape of the patient’s face is classified as square, rectangle, etc.); and
providing an artificial tooth shape of the patient according to the classified facial shape (see at least paragraph [0049], in table; the shape of the patient’s tooth is based on face shape classification).
As per claim 2, Malfliet et al teach wherein the plurality of landmarks comprise at least one of endpoints on both sides of the one-third portion of a forehead area, tragus points on both sides of a face, or gonion points on both sides of the face in the facial data shape (see at least paragraph [0049], in table; forehead).
As per claim 4, Malfliet et al teach wherein in the classifying and providing of the artificial tooth shape of a patient, the artificial tooth shape is classified as at least one of square, tapering, or ovoid, or a combination of at least two thereof according to the facial shape (see at least paragraph [0049]).
As per claim 6, Malfliet et al teach when there are multiple classified artificial tooth shapes, providing the multiple artificial tooth shapes, receiving a specific artificial tooth shape selected from among the multiple provided artificial tooth shapes through a user action, and providing the selected artificial tooth shape (see at least paragraphs [0059-0061]).
As per claim 7, Malfliet et al teach receiving a manipulation signal based on a user action for the provided artificial tooth shape, and modifying and providing the artificial tooth shape (see at least paragraphs [0059-0061]).
As per claim 8, Malfliet et al teach wherein the modifying and providing of the artificial tooth shape comprises, when providing a first artificial tooth shape, vertically dividing the first artificial tooth shape into right and left halves while displaying a dividing line, and in response to selecting either the left half or the right half through a manipulation signal based on a user action, providing a modified artificial tooth shape in which, when the right half is selected, the right half is modified to a second artificial tooth shape, or, when the left half is selected, the left half is modified to a third artificial tooth shape (see at least paragraphs [0060-0062]).
As per claim 9, Malfliet et al teach wherein the modifying and providing of the artificial tooth shape comprises, in response to selecting a specific artificial tooth shape through a user manipulation, displaying an artificial tooth replacement list on a screen and in response to selecting a specific artificial tooth shape from the artificial tooth replacement list through a user manipulation, modifying the artificial tooth shape to the selected artificial tooth shape and providing the modified artificial tooth shape (see at least paragraphs [0059-0062]).
.
As per claim 10, Malfliet et al teach a denture design device comprising:
a data acquisition unit configured to acquire facial data of a patient; a control unit configured to (see at least fig 1)
extract a plurality of landmarks from the acquired facial data (see at least paragraphs [0020, 0041]),
classify a facial shape of the patient using distances between the plurality of extracted landmarks (see at least paragraph [0049], in table; the shape of the patient’s face is classified as square, rectangle, etc.), and
classify an artificial tooth shape of the patient according to the classified facial shape; and an output unit configured to provide the classified artificial tooth shape (see at least paragraph [0049], in table; the shape of the patient’s tooth is based on face shape classification).
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.
Claims 3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Malfliet et al (US 2010/0145898) in view of Design Choice.
As per claim 3, Malfliet et al teach aesthetical analysis of the patient and patients face including measuring distances between landmarks on the face and classifying the shape of the patient’s face using these measurements (see at least paragraph [0049]), figs 1-6) but fails to explicitly teach wherein in the extracting of the plurality of landmarks, at least one of endpoints on both sides of the one-third portion of a forehead area, tragus points on both sides of a face, or gonion points on both sides of the face in the facial data may be extracted, and the classifying of the facial shape of a patient comprises: calculating a first distance of a first line segment connecting endpoints on both sides of the one-third portion of the forehead area in the facial data, a second distance of a second line segment connecting the tragus points on both sides, and a third distance of a third line segment connecting the gonion points on both sides; and classifying the facial shape of the patient based on a comparison of the calculated first, second, and third distances.
However, it would have been an obvious matter of design choice to use these methods since the Applicant has not disclosed that doing so would solve any stated problem or is for any particular purpose and it appears that the invention would perform equally well if any specific type of measurements and classification was used.
As per claim 5, Malfliet et al teach aesthetical analysis of the patient and patients face including measuring distances between landmarks on the face and classifying the shape of the patient’s face using these measurements (see at least paragraph [0049]), figs 1-6) but fails to explicitly teach classifying and providing of the artificial tooth shape of a patient, when the facial shape is such that first distance=second distance=third distance, or first distance<second distance=third distance, or first distance>second distance=third distance, or first distance=second distance<third distance, the artificial tooth shape is classified as square; when the facial shape is such that first distance>second distance>third distance, or first distance<second distance<third distance, or first distance>second distance<third distance, the artificial tooth shape is classified as tapering; and when the facial form is such that first distance<second distance>third distance, the artificial tooth shape may be classified as avoid, wherein the first distance is a distance of the first line segment connecting the endpoints on both sides of the one-third portion of the forehead area in the facial data, the second distance may be a distance of the second line segment connecting the tragus points on both sides, and the third distance may be a distance of the third line segment connecting the gonion points on both sides.
However, it would have been an obvious matter of design choice to use these methods since the Applicant has not disclosed that doing so would solve any stated problem or is for any particular purpose and it appears that the invention would perform equally well if any specific type of measurements and classification was used.
Conclusion
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RAMSEY REFAI
Primary Examiner
Art Unit 3664
/RAMSEY REFAI/Primary Examiner, Art Unit 3664