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 .
Election/Restrictions
Applicant’s election without traverse of the restriction requirement dated 12/1/2025 in the reply filed on 1/25/2026 is acknowledged.
Claims 10-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected process, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 1/25/2026.
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 1-9 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 written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1, the applicant’s originally filed specification fails to provide support for a system for displaying to a user a focus image of a sample and a plurality of other images. Further, the applicant’s specification does not contemplate “a system which can display said focus image, and a composite with a thumbnail image of each of said plurality of images, each image capturing a different perspective of the same sample, whereby the system displaying said focus image along with the composite image and a panorama comprising at least two of said plurality of images combined; a server which receives said composite image, and which provides the focus image and the composite image to the system, and an input device connected to the system whereby a user can select one of the thumbnails thereby sending a signal to the server indicating which of the plurality of images should be sent to the system as the focus stream” (please see MPEP § 2163, subsection I.A and MPEP § 2163, subsection II.A.3(a) for further discussion of rebutting the presumption of adequate written description for originally presented claims).
The limitations of claims 2-9 are not disclosed or contemplated by the applicant’s originally filed specification.
Claims 2-9 are rejected based on their respective dependencies upon claim 1.
The following is a quotation of 35 U.S.C. 112(a):
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 pre-AIA 35 U.S.C. 112, 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 1-9 are rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. After reviewing the specification there appears to be no corresponding structure for “a system” and “an input device”.
Claim limitations “a system” and “an input device” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. After reviewing the specification there appears to be no corresponding structure for “a system” and “an input device”. Therefore, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
In response to this rejection, applicant must clarify whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Mere assertion regarding applicant’s intent to invoke or not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph is insufficient. Applicant may:
(a) Amend the claim to clearly invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by reciting “means” or a generic placeholder for means, or by reciting “step.” The “means,” generic placeholder, or “step” must be modified by functional language, and must not be modified by sufficient structure, material, or acts for performing the claimed function;
(b) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, should apply because the claim limitation recites a function to be performed and does not recite sufficient structure, material, or acts to perform that function;
(c) Amend the claim to clearly avoid invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by deleting the function or by reciting sufficient structure, material or acts to perform the recited function; or
(d) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, does not apply because the limitation does not recite a function or does recite a function along with sufficient structure, material or acts to perform that function.
Claims 2-9 are rejected based on their respective dependencies upon claim 1.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Elbaz et al. (Elbaz) (US 2021/0128282) (FIG. 17 and 38A-38G, 43C, 44B, [0008], a display comprising thumbnails of images of a person’s teeth and a panoramic image of the person’s teeth; [0433], the displayed scans may be composite scans; FIG. 27C, [0325], images of teeth are captured at different angles).
Urakabe (US 2013/0286174) (FIG. 7F, [0025], [0155], selectable thumbnails and composite images are displayed).
Lim et al. (Lim) (US 2022/0108787) (FIGs. 3-5, [0053], [0061], medical image thumbnails and panoramic images are displayed).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFERY A WILLIAMS whose telephone number is (571)270-7579. The examiner can normally be reached M-F 8:00-5:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sath Perungavoor can be reached at 571-272-7455. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFERY A WILLIAMS/Primary Examiner, Art Unit 2488
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