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 .
Claim Objections
Claims 1-13 are objected to because of the following informalities:
In each of the claims 1-2, 5-8, 12-13 amend each instance of “the optical image” to “the first optical image”.
Claim 1, lines 9-10 it states that the soft tissue landmark is in the fused image but it does not state where the hard tissue landmark is located.
Claim 11, line 1-2 recites “computer program code means” and it is not clear in the Specification what the broadest reasonable interpretation of the “means” is. There is no structural definition of this “means” in the Specification.
Claim 12, lines 9-10 it states that the soft tissue landmark is in the fused image but it does not state where the hard tissue landmark is located.
Claims 3-4, 9-10 are objected based on dependencies to objected claims. Appropriate correction 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 USPTO “Interim Guidelines for Examination of Patent Applications for Patent Subject Matter Eligibility” (Official Gazette notice of 22 November 2005), Annex IV, reads as follows (see also MPEP 2106):
In contrast, a claimed computer-readable medium encoded with a computer program is a computer element which defines structural and functional interrelationships between the computer program and the rest of the computer which permit the computer program's functionality to be realized, and is thus statutory. See Lowry, 32 F.3d at 1583-84, 32 USPQ2d at 1035.
Claims that recite nothing but the physical characteristics of a form of energy, such as a frequency, voltage, or the strength of a magnetic field, define energy or magnetism, per se, and as such are nonstatutory natural phenomena. O'Reilly, 56 U.S. (15 How.) at 112-14. Moreover, it does not appear that a claim reciting a signal encoded with functional descriptive material falls within any of the categories of patentable subject matter set forth in Sec. 101.
… a signal does not fall within one of the four statutory classes of Sec. 101.
… signal claims are ineligible for patent protection because they do not fall within any of the four
statutory classes of Sec. 101.
Claim(s) 11 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter as follows. Claim 11 is drawn to functional descriptive material recorded on a computer program product. Normally, the claim would be statutory. However, the specification, at page 10, lines 18-21 defines or exemplifies the claimed computer program product as encompassing statutory media such as optical storage medium or solid state medium etc, as well as non-statutory subject matter such as a “other forms” including wireless communication which can be a “signal”.
“A transitory, propagating signal … is not a “process, machine, manufacture, or composition of matter.” Those four categories define the explicit scope and reach of subject matter patentable under 35 U.S.C. § 101; thus, such a signal cannot be patentable subject matter.” (In re Nuijten, 84 USPQ2d 1495 (Fed. Cir. 2007)).
Because the full scope of the claim as properly read in light of the disclosure appears to encompass non-statutory subject matter (i.e., because the specification defines/exemplifies a computer readable medium as a non-statutory signal, carrier waver, etc.) the claim as a whole is non-statutory. The examiner suggests amending the claim to include the disclosed tangible computer readable storage media, while at the same time excluding the intangible transitory media such as signals, carrier waves, etc. Any amendment to the claim should be commensurate with its corresponding disclosure.
Examiner suggests amending claim 11 as follows:
11. A non-transitory computer program product comprising computer program code means which
Allowable Subject Matter
Claims 1-10, 12-13 are allowable if the objections to claims 1-10, 12-13 are overcome.
The following is an examiner’s statement of reasons for allowance:
With regards to independent claim 1, the closest prior art of JP 2019063040 to Kaibuki discloses a method for performing a periodontal examination on a subject (paragraph 9, 20; examining periodontal disease), the method comprising:
obtaining a first optical image of the surface of an intra-oral area of the subject, the intra-oral area containing at least one tooth and a corresponding gum (paragraph 23-24, 77, 87; steps s51-s53 generate optical image of the dental arch including tooth, gum)
obtaining a second image of the intra-oral area of the subject, wherein the second image contains an image of the hard tissue covered by the soft tissue and wherein the hard tissue includes bone and teeth (paragraph 20, 31, 78; in s54 X-ray image (second image) showing inside of the gum to reveal bone/teeth (hard tissue) under gum);
merging the optical image and the second image into a fused image such that a soft tissue landmark in the fused image is based on the optical image and a hard tissue landmark is based on the second image (paragraph 23, 79; the optical image and the X-ray image are fused; paragraph 80; optical image displays the gum (soft tissue landmark region) while the X-ray image IMPA contains hard tissue landmarks such as bone/teeth).
EP 2452652 to SCHNAPPAUF discloses estimating the distance between landmarks (paragraph 19).
With regards to independent claim 12, see above Statement on Reasons for Allowance for claim 1 since claim 12 discloses limitations similar to claim 1.
In addition to the teachings of the claims 1, 12 as a whole, the closest prior art of record failed to teach or suggest,
“a method for performing non-invasive periodontal examination on a subject, the method comprising:
“obtaining the hard tissue landmark based on at least one pixel in the fused image or the second image where a tooth and bone meet;
obtaining the soft tissue landmark based on at least one pixel in the fused image and/or the optical image where a tooth and gum meet; and
estimating the periodontal distance between the soft tissue landmark and the hard tissue landmark for each tooth in the intra-oral area”
Therefore, claims 2-11, 13 are allowable for depending on claims 1, 12 respectively and if the objections to claims 1-10, 12-13 are overcome.
Other Prior Art Cited
14. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 20150348320 to Pesach.
US 20180078347 to FALKEL.
US 20230117097 to YOSHIHASHI.
EP 2452652 to SCHNAPPAUF.
JP 2019063040 to Kaibuki.
Conclusion
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Patent Examiner
Beniyam Menberu
/BENIYAM MENBERU/Primary Examiner, Art Unit 2681
11/26/2025