Status under America Invents Act
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
Objection to the Drawings
The drawings (Figures 3a, 3b, 4, 5, 6, 7, 8a, 8b, 9, 10a, and 10b) filed May 15, 2024 and August 6, 2024 are objected to under 37 CFR 1.84 (b)(1) because black and white photographs are not ordinarily permitted in utility applications because they reproduce poorly. Conventional drawings are a practical medium for illustrating the claimed invention.
The drawings (Figures 3a, 3b, 4, 5, 6, 7, 8a, 8b, 9, 10a, and 10b) filed May 15, 2024 and August 6, 2024 are objected to under 37 CFR 1.84(m) because solid shading is not permitted.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Rejection based on 35 U.S.C. 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 1-20 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 determining patent subject matter eligibility under 35 U.S.C. 101 the U.S. Patent Office issued guidance on January 7, 2019 that was then updated in October 2019. That guidance has since been incorporated into the Ninth Edition, Revision R-01.2024 of the Manual of Patent Examination Procedure (MPEP), particularly Sections 2103 through 2106.07(c). The Step 1, Step 2A Prong One, Step 2A Prong Two, and Step 2B determinations set forth in the Patent Office guidance and MPEP are addressed below.
35 U.S.C. 101 – Step 1 – Determination as to whether claims are directed to a statutory category specified in 35 U.S.C. 101 (MPEP 2106.03) - Claims 1-7 are directed to a “computer implemented method for dental bridge reconstructions” and are interpreted as falling within the “process” statutory class of 35 U.S.C. 101. Claims 8-13 are directed to a “non-transitory computer readable medium storing executable computer program instructions” and claims 14-20 are directed to a “system to provide one or more dental bridge reconstructions”; both sets of claims are interpreted as requiring a physical device that falls within “machine” and/or article of “manufacture” statutory classes of 35 U.S.C. 101.
35 U.S.C. 101 – Step 2A Prong One - Determination as to whether the claims recite a Judicial Exception including an abstract idea, law of nature, or natural phenomenon (MPEP 2106.04). Claims 1-20, as a whole, are directed to the Judicial Exception (MPEP 2106.04) of an abstract idea (MPEP 2106.04(a)). The claimed invention is directed to a mental process – concepts that are capable of being performed in the human mind – including observations, evaluations and judgements (MPEP 2106.04(a)(2)). More particularly with respect to independent claims 1, 8 and 14 the computer instruction steps of “receiving an order for a plurality of single dental units for reconstruction” may be performed mentally (e.g. a dentist or lab technician audibly or visually receives an order); of “receiving a 3D virtual model of each jaw of a patient’s dentition” may be performed mentally (e.g. a dentist or lab technician visually receives a 3D image/model of a patient’s jaw); and of “providing virtual reconstructions of the plurality of single dental units as part of a virtual dental bridge” may be performed mentally (e.g. a dentist or lab technician provides an oral description or pencil produced drawings of reconstructions of dental units as part of a dental bridge). In regard to claims 2 and 15, the use of “trained neural networks” may be performed mentally (e.g. a dentist or lab technician bases the design of the dental unit reconstructions on a plurality of earlier designed dental unit reconstructions). In regard to claims 3, 4, 9, 10, 15 and 15, the providing of virtual reconstructions based on the tooth occlusion and/or alignment may be performed mentally (e.g. a dentist or lab technician bases the design of the dental unit reconstructions on the occlusion and alignment of the patient’s teeth). In regard to claims 5-7, 11-13, and 18-20 the virtual reconstructions may mentally include the design of a pontic, pontic position and virtual hats (e.g. a dentist or lab technician bases the design of the dental unit reconstructions to include a pontic, the pontic’s position and virtual hats).
35 U.S.C. 101 – Step 2A Prong Two requires a determination as to whether the claims as a whole integrates the Judicial Exception into a Practical Application of that exception (MPEP 2106.04(d)). In claims 1-7 the limitation requiring “a computer-implemented method”; the limitation in claims 8-20 requiring “non-transitory computer readable medium” and claims 14-20 requiring a “processor” amount to an “additional element” beyond the abstract idea, however, the performance of a mental process on a generic computer/computer readable medium fails to integrate the Judicial Exception into a Practical Application of the exception (see MPEP 2106.04(a)(2)(III)(C)). There is no disclosure that the method steps/computer instructions improve the manner in which the computer (or computer readable medium) operates (see MPEP 2106.04(d)(1)). The claims do not go beyond generally linking the judicial exception to a computer environment. The claims do not require that the method be implemented by a particular machine (see MPEP 2106.05(b)), nor do the claims require the method to particularly transform a particular article (see MPEP2106.05(c)). The claims as whole fail to integrate the abstract idea (the “judicial exception”) into a practical application of that abstract idea. It further being noted that applicant’s disclosure indicates the claimed processor maybe a generic prior art computer (paragraph [0109]) and the claimed non-transitory computer readable memory maybe a generic prior art memory (paragraph [0110]).
The claims are directed solely to a digital virtual environment where data is input (“receiving”) and processed (“providing”) on a prior art generic computer – there are no additional elements integrating the judicial exception into a practical solution – the computer method is not used to operate a manufacturing device, the computer method is not used to improve the functioning of a computer, the computer method is not used to transform a particular article into a different state or thing – there is no meaningful limitation beyond generally linking the use of the judicial exception to a particular technological environment.
Additionally, it is noted that dentists have long practiced their trade/art of examining/viewing a patient’s teeth and mentally determining the appropriate bridges and crowns necessary for reconstructing the patient’s teeth – well before the advent of computer use in the medical and dental fields.
35 U.S.C. 101 – Step 2B requires a determination as to whether the claims amount to Significantly More than the Judicial Exception (MPEP 2106.05). As set forth above with respect to Step 2A Pong One the claimed computer steps/instructions on the “non-transitory computer readable medium” of claims 1=20 are all capable of being performed mentally and represent nothing more than concepts related to performing observations, evaluations and judgements which fall within the judicial exception. The “non-transitory computer readable medium” requires a most a generic general purpose computer memory. There is no disclosure in the written description that the computer memory device is anything more than a generic component (see paragraphs [0109] and [0110]), nor is there any disclosure that the instructions improve the manner in which the computer device operates. The mere recitation in the claims of a generic conventional computer memory that is intended to be 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 inputting (“receiving”), and processing data with a standard generic computer.
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 a process of presenting 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. The claimed system and method fall 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.
Additionally, it is noted with respect to dependent claims 2 and 15 relating to the use of “trained neural networks” the Federal Circuit has recently held -
Machine learning is a burgeoning and increasingly important field and may lead to patent-eligible improvements in technology. Today, we hold only that patents that do no more than claim the application of generic machine learning to new data environments, without disclosing improvements to the machine learning models to be applied, are patent ineligible under § 101.
RECENTIVE ANALYTICS, INC. v. FOX CORP., No. 23-2437 (Fed. Cir. 2025)
Rejections based on Prior Art
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 1, 3-14 and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Fisker et al (US 9,767,223).
Initially it is noted that the unusual “single dental units” language is interpreted as referring to individual tooth restorations of a patient based on the disclosure at paragraph [0001] (“Dental bridges can include two or more dental unit to help restore the appearance of two or more teeth in a patient’s dentition.”).
Fisker et al disclose a computer implement method for dental bridge reconstructions comprised of receiving a 3D virtual model of a patient’s dentition (e.g. Figure 10a; column 24, line 3) and then providing virtual reconstructions of the plurality of single dental units as part of a virtual dental bridge (e.g. Figure 10C, bridge 1010, single dental units 1001, 1006; column 24, lines 17-18). In regard to the “receiving an order” limitation, Fisker et al doesn’t explicitly disclose such an initial step, however, the step is inherent/obvious to one of ordinary skill in the art before the effective filing date of the claimed invention when one enters instructions for a bridge to be designed and manufactured. In regard to the ”each jaw of a patient’s dentition” limitation, it would have been obvious to one of ordinary skill in the art to receive/provide virtual models of the upper and lower jaws in order to provide reconstructions for both the upper and lower jaw.
In regard to claims 3, 9, and 16, Fisker et al inherently determines an occlusal direction in positioning the occlusal surfaces of the teeth at the upper surface of the model in Figure 10c. In regard to claim 4, 10, and 17, Fisker et al illustrates the virtual model of the reconstruction aligned with the model of the patient’s teeth in Figure 10c. In regard to claims 5, 11, and 18, Fisker et al disclose the positioning of pontic 1006 in Figure 10c. In regard to claims 6, 12 and 19, note the Fisker et al virtual hats 1007 generated in Figure 10c. In regard to claims 7, 13 and 20, note the Fisker et al determination of pontic 1006 position corresponding to the hat positions 1007 illustrated in Figure 10c.
Claims 2 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Fisker et al (US 9,767,223) in view of Azernikov et al (US 11,007,040).
Azernikov et al teach the use of a trained neural network for generating a 3D dental prosthesis/restoration model based on received patient scan data (note the abstract). To have used a trained neural network (i.e. artificial intelligence) for helping to design the 3D virtual bridge model in Fisker et al in view of the teaching by Azernikov et al would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ralph Lewis whose telephone number is (571)272-4712. The examiner can normally be reached Monday-Friday from 9AM-4PM.
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/RALPH A LEWIS/Primary Examiner, Art Unit 3772 (571) 272-4712
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