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 1-4, filed June 21, 2024) are objected to under 37 CFR 1.84 (b)(1) and 37 CFR 1.84(m) because black and white photographs and/or solid shading are not ordinarily permitted in utility applications because they reproduce poorly. Conventional drawings are a practical medium for illustrating the claimed invention.
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.
Objection to Misnumbered Claims
In the claims filed June 21, 2024 there are two consecutive claims numbered as claim “1”. The numbering of claims is not in accordance with 37 CFR 1.126 which requires the claims to be numbered consecutively throughout the prosecution of the application.
Misnumbered claims 1 (second occurrence) through 12 have been renumbered 2-13, consecutively. Applicant is required present the claims as renumber in all future correspondence.
Rejection based on 35 U.S.C. 112
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.
Claim 12 is 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 12 (or claim 11 as originally numbered by applicant) is dependent on itself. For purposes of furthering prosecution claim 12 will be treated as being dependent upon claim 11 (or claim 10 as originally numbered by applicant). Additionally, in claim 12, the “typical” language is indefinite. The metes and bounds of what is “typical” is not defined.
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 1-13 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-07.2022 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 1-13 are directed to a “system (1) for visualizing at least on three-dimensional virtual model (2) of at least part of a dentition” comprising “at least one screen” and “at least one processor configured to generate an on-screen layout.” Applicant’s 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 1-13, 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, the processor configured to “generate an on-screen layout (3) on said screen” wherein “said on-screen layout (3) giving access to an operator to said virtual model (2) and having a plurality of graphical control elements (4, 5, 6, 7, 8), wherein the processor is configured to provide for an operator interaction with each of said plurality of graphical control elements (4, 5, 6, 7, 8), wherein said processor is configured such that said operator interaction leads to the invocation of an associated function” is capable of being performed mentally (e.g. a person mentally determines the layout of a display having a 3D dentition model and layout of buttons/control elements for altering the 3D model and then mentally envisioning how the 3D model would be altered when a particular button is selected). The claimed arrangement of “first and second category of individual control elements” wherein the two different categories are hidden, spaced and/or differently colored may be performed mentally (e.g. the operator mentally determines how the different buttons/(control elements) are to be arranged on the screen/display and how the buttons/control elements may be distinguished from one another by space or color). The claimed “configured to indicate availability of associated functions by a color of said function name and/or a color of each of said plurality of graphically control elements” may be performed mentally (e.g. a person mentally determines/envisions the control elements/buttons having different colors based on whether or not they are available to perform a desired function). The claims are directed solely to a computer system having a processor that generates an on-screen layout of a 3D image of a patient’s dentition and associated arrangement of buttons for controlling the manipulation of the image a concept that is capable of being performed in the human mind. Claims 2-13, that are further directed to the arrangement and layout of the display fail to provide for any additional limitations that could not be mentally determined by a person in the practice of image displays.
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)). The limitation of claims 1-13 requiring “at least one screen” and “at least one processor” amounts to an “additional element” beyond the abstract idea, however, the performance of a mental process on a generic computer with a generic computer display 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 computer instructions directed to the arrangement of the display on the screen improve the manner in which the computer/computer screen 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.
The claims are directed solely to a digital virtual environment where data is processed (“generate”, “provide for an operator interaction”) and displayed – 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.
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 of generating an on-screen display on a generic “at least one screen” with a generic “at least one processor” as set forth in claims 1-13 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 “at least one screen” and “at least one processor” limitations require at most a generic general-purpose computer and display. There is no disclosure in the written description that the computer processor and display are anything more than generic components, 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 processor and display that are 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 processing and displaying 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.
Applicant’s attention is further directed to Internet Patents Corp. v. Active Network, Inc., No. 14-1048 (Fed. Cir. 2015) wherein a method of providing for a computer display of a graphic user interface (GUI) similar to that claimed by applicant was determined to be an abstract idea and patent ineligible under 35 U.S.C. 101.
Rejections based on Prior Art
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 1-6, 10 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Markarenkova et al (US 2021/0333978).
Markarenkova et al disclose a system for visualizing a three-dimensional model of a patient’s dentition. The Markarenkova et al system includes a display and a computer processor that generates an on-screen layout/display (e.g. Figure 2A) that gives access to an operator to a virtual 3D model (e.g. 202) having a plurality of graphical control elements (note the tool bars with at the upper and lower ends of the display in Figure 2A) wherein the graphic control elements are categorized into at least first and second categories (upper and lower tool bars) and spatially separated. The Markarenkova et al processor is further configured to indicate the availability of functions associated with the graphic control elements (buttons) by the use of a color indicator (see paragraph [0099]).
In regard to claim 2, note the upper tool bar in Figure 2A that allows for the image to be rotated. In regrad to claim 3, note the upper tool bar in Figure 2A where the buttons include names relating to the function they perform. In regard to claim 4, note the upper and lower tool bars in Figure 2A that group the graphic control elements/buttons according to their different functions. In regard to claim 5, see Figure 5E with dialog boxes 508. In regard to claim 6, the use of a mouse or touch screen in the activation of the Markarenkova et al graphic control elements/buttons is inherent/implicit. In regard to claim 10, note paragraph [0099].
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 7, 8, 9, 11 and 13 are rejected under 35 U.S.C. 103 as being unpatentable Markarenkova et al (US 2021/0333978).
In regard to claim 7, the “blue glowing effect”; in claim 8, the “blue to black”; in claim 9, the “approaching a threshold value”; the in claim 11 the “hidden graphical control elements” and in claim 13 the “minimum number of characters” are all conventional features to typical computer user interfaces and would have been obvious to one of ordinary skill in the art practicing the Markarenkova et al invention 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