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 .
Specification
The amendment filed 05 February 2024 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
The incorporation by reference of the international patent application PCT/TR2021/051268 and of the foreign patent applications TR2020/018758 and TR2021/018150 is ineffective as it was added on the date of entry into the national phase, which is after the filing date of the instant application. The filing date of this national stage application is the filing date of associated PCT, in this case 22 November 2021, see MPEP 1893.03(b). Therefore, the specification amendment of 05 February 2024 to include the incorporation by reference is new matter, per MPEP 608.01(p).
Applicant is required to cancel the new matter in the reply to this Office Action.
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 – 7 are rejected under 35 U.S.C. 101 because
Step 1:
Claims 1 – 7 recite a system, and therefore is a product. Therefore, the claims fall within the statutory categories.
Step 2A, Prong 1:
Claim 1 recites limitations of “capture a diagnosis image seen from the side of a face…”, “determine a mandible area and a maxillary area in the diagnosis image…”, “calculate an area ratio…”, and “produce a signal related to skeleton syndromes … in accordance with a deviation of the calculated area ratio from a predetermined threshold.” The limitations, as drafted, describe a process that, under its broadest reasonable interpretation, includes performance of the limitation in the mind except for the recitation of “a camera” and “a processing unit.” The camera is a generic device that is only used to produce an image of the patient’s face. Other than reciting that a processing unit is performing the other tasks, nothing in the claim precludes the steps from practically being performed in the human mind. MPEP 2106.04(a)(2)(III) states that the courts consider a mental process (thinking) that "can be performed in the human mind, or by a human using a pen and paper" to be an abstract idea. For example, aside from the recitation of “a processing unit” language, the claim encompasses the user determining mathematic areas and ratios of those areas based on an image. These limitations can be considered a mathematical relationship or a mental process.
Step 2A Prong 2:
The claims recite “a processing unit” to perform the abstract steps. These components read on a computer implemented system and are recited at a high level of generality, i.e., as a generic processor, performing a generic computer function of processing data. This generic processor limitation is no more than mere instructions to apply the exception using a generic computer component. Accordingly, this additional limitation does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Step 2B:
As discussed with respect to Step 2A Prong Two, the additional elements in the claim amount to no more than mere instructions to apply the exception using a generic computer component. The same analysis applies here in 2B, i.e., mere instructions to apply an exception on a generic computer cannot integrate a judicial except into a practical application at Step 2A or provide an inventive concept in Step 2B.
Under 2019 PEG, a conclusion that an additional element is insignificant extra-solution activity in Step 2A should be re-evaluated in Step 2B to determine if it is more than what is well-understood, routine, conventional activity in the field. The specification in at least ¶ 28 does not provide any indication that the computer is anything other than a generic, off-the-shelf computer component. Court decisions cited in MPEP 2106.05(d)(II) indicate that computer‐implemented processes not to be significantly more than an abstract idea (and thus ineligible) where the claim, as a whole, amounts to nothing more than generic computer functions merely used to implement an abstract idea, such as an idea that could be done by a human analog (i.e., by hand or by merely thinking). Accordingly, a conclusion that the generic computer functions merely being used to implement an abstract idea is well-understood, routine, conventional activity is supported under Berkheimer Option 2.
Independent claim 4, recites the limitations of independent claim 1 described above. It also adds the limitation that the processing unit is also configured to produce the signal by means of a machine learning model trained with side profile images. The specification teaches at least in ¶ 37 that the machine learning model is trained with the side profile views whose area ratio, H angle and point distance are known. This doesn’t explain how the machine learning software operates any more than comparing the image to a known template. Therefore, independent claim 4 does not anything significantly more and is also rejected under 35 U.S.C. § 101.
Dependent claims 2, 3, and 5 – 7 further limit the abstract idea already indicated in independent claims 1 and 4 and they are ineligible for the same reasons provided for claims 1 and 4 above.
For these reasons, there is no inventive concept in the claims and thus they are ineligible.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 4 – 8 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Independent claim 4 recites the processing unit is also configured to produce the signal by means of a machine learning model trained with side profile images. The specification teaches at least in ¶ 37 that the machine learning model is trained with the side profile views whose area ratio, H angle and point distance are known. This doesn’t explain how the machine learning software operates any more than comparing the image to a known template. The specification does not include any instructions, flowcharts, etc. that explain how the machine learning works.
Dependent claims 5 – 7 do not appear to cure the deficiencies of independent claim 4.
Independent claim 8 has similar limitations reciting using a deep machine learning model trained with the side profile images. This doesn’t explain how the machine learning software operates any more than comparing the image to a known template. The specification does not include any instructions, flowcharts, etc. that explain how the machine learning works.
If applicant believes the specification enables one skilled in the art to use the invention, citations are requested.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1 – 8 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation "the jaw area" in line 9. There is insufficient antecedent basis for this limitation in the claim.
Claims 2 and 5 recite the limitation "the nose" in line 4. There is insufficient antecedent basis for this limitation in the claim.
Claims 2 and 5 recite the limitation "the wall between the nostrils" in lines 4-5. There is insufficient antecedent basis for this limitation in the claim.
Claims 2 and 5 recite the limitation "the upper lip" in line 6. There is insufficient antecedent basis for this limitation in the claim.
Claims 2 and 5 recite the limitation "the lower lip" in line 7. There is insufficient antecedent basis for this limitation in the claim.
Claims 2 and 5 recite the limitation "the peak point of the jaw" in lines 6 - 7. There is insufficient antecedent basis for this limitation in the claim.
Claims 2 and 5 recite the limitation "the middle of the nasal bridge" in line 10. There is insufficient antecedent basis for this limitation in the claim.
Claims 2 and 5 recite the limitation "the ear" in line 15. There is insufficient antecedent basis for this limitation in the claim.
Claims 2 and 5 recite the limitation "the face" in line 15. There is insufficient antecedent basis for this limitation in the claim.
Claim 4 recites the limitation "the jaw area" in line 10. There is insufficient antecedent basis for this limitation in the claim.
Claim 5 recites the limitation "the peak point of the nose" in line 4. There is insufficient antecedent basis for this limitation in the claim.
Claim 7 recites the limitation "the training data" in line 4. There is insufficient antecedent basis for this limitation in the claim.
Claim 8 recites the limitation "the side of the face" in lines 4 – 5. There is insufficient antecedent basis for this limitation in the claim.
Claim 8 recites the limitation "the side profile images" in line 10. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 102
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 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(s) 1 - 3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bojana et al. (“Diagnosis of Class III malocclusion in 7 to 8 year old children…” – in IDS).
Regarding claim 1, Bojana discloses a system for diagnosis of skeleton syndromes (e.g. Title), wherein the skeleton characteristics of a person to be diagnosed are visible from a profile; comprising a user terminal (e.g. laptop computer, page 380), wherein the user terminal comprises a camera (e.g. camera, page 380) to capture a diagnosis image (e.g. Figure 1) seen from the side of a face of the person to be diagnosed and a processing unit (e.g. laptop would necessarily contain a processor, page 380) associated with the camera; the processing unit is configured to determine a mandible area (e.g. Table 3) and a maxillary area (e.g. Table 3) in the diagnosis image (e.g. Figure 1(c)) received from the camera, calculate an area ratio that is the ratio of one of the surface area ratio of the maxillary area and the surface area of the mandible area to the other, produce a signal related to the skeleton syndromes of the person to be diagnosed in accordance with a deviation of the calculated area ratio from a predetermined threshold value. (e.g. Figure 1; Discussion section last paragraph; Table 3; and Conclusion section).
Regarding claim 3, Bojana discloses view an information related to the identity of the matched person on a user interface if the determined area ratio matches with one of the area ratios that belong to recorded persons in the memory unit (e.g. page 384, column 1, lines 20 – 21).
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.
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.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bojana et al. in view of Arnett (USPN 6,200,278 – in IDS).
Regarding claim 2, Bojana discloses determining a number of the claimed points (i.e. N, Sn, Pg, etc.) on the diagnosis image and the distances between the points and associated areas of regions such as the mandible and maxillary areas (e.g. Table 1, Fig. 1C and page 382). Bojana is silent as to some of the points (i.e. G, Pn, Ls).
Arnett teaches it is known to diagnose a patient based on facial imbalance by determining distances, angle ranges, and areas of known facial landmarks (e.g. ABSTRACT). These facial landmarks include all of the claimed points (e.g. Fig. 6, 8; column 8, lines 1 – 17 and column 9, lines 19 – 31). It would have been obvious to one having ordinary skill in the art to modify the determined points as taught by Bojana with the determined points as taught by Arnett, since such a modification would provide the predictable results of giving a more complete image of the entire face to better diagnose the patient.
Claim(s) 4 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bojana et al. in view of Tran (US PGPUB 2018/0253840).
Regarding claims 4 and 8, the independent claims recite the same limitations as independent claim 1. They also require the limitations of an acceleration sensor and a machine learning model. Bojana discloses the claimed invention as described above, but fails to teach an acceleration sensor and a machine learning model.
Tran teaches it is known to use a machine learning model receiving data from one or more cameras (e.g. ABSTRACT; ¶ 195); and an accelerometer for detecting data (e.g. ¶ 541). The camera may provide skeletal and depth tracking (e.g. ¶ 19) and is used for diagnosis (e.g. ¶ 173). Tran also teaches it is known to analyze the image based on silhouette imaging (e.g. ¶ 89). It would have been obvious to one having ordinary skill in the art to modify the camera and processing unit as taught by Bojana with the accelerometer and machine learning as taught by Tran, since such a modification would provide the predictable results of providing more information to the processor and allowing a closed loop, and ever improving system to better diagnose the patient.
Claim(s) 5 – 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bojana et al. in view of Tran as applied to claim 4 above, and further in view of Arnett.
Regarding claims 5 – 7, Bojana in view of Tran discloses determining a number of the claimed points (i.e. N, Sn, Pg, etc.) on the diagnosis image and the distances between the points and associated areas of regions such as the mandible and maxillary areas (e.g. Bojana Table 1, Fig. 1C and page 382). Bojana in view of Tran is silent as to some of the points (i.e. G, Pn, Ls).
Arnett teaches it is known to diagnose a patient based on facial imbalance by determining distances, angle ranges, and areas of known facial landmarks (e.g. ABSTRACT). These facial landmarks include all of the claimed points (e.g. Fig. 6, 8; column 8, lines 1 – 17 and column 9, lines 19 – 31). It would have been obvious to one having ordinary skill in the art to modify the determined points as taught by Bojana with the determined points as taught by Arnett, since such a modification would provide the predictable results of giving a more complete image of the entire face to better diagnose the patient.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH M DIETRICH whose telephone number is (571)270-1895. The examiner can normally be reached Mon - Fri 8:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer McDonald can be reached at 571-270-3061. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSEPH M DIETRICH/Primary Examiner, Art Unit 3796