DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . It is responsive to the submission dated 07/19/2024. Claims 1-15 are presented for examination.
Claim Objections
2. Claims 1-15 are objected to because of the following informalities: to make clear the claimed invention, the applicant is suggested to make the following amendments.
At lines 1-2 in the preamble of the claim, replace “non-transitory computer medium storing computer-program instructions for executing a method, performed by computer” with - non-transitory computer-readable storage medium storing computer-program instructions for executing a method, performed by a processor of a computing device-.
At line 5 in the preamble of the claim, replace “a treatment plan” with -the treatment plan-.
At line 7 in the preamble of the claim, replace “end at the treatment” with – end of the treatment-.
At line 3 of step 4) of the claim, replace “performed at step 3)” with - performed at step 2)-.
Furthermore, the applicant is suggested to replace or amend step 2) of claim 1 in the following manner.
2) (i) detecting for non-conforming teeth;
(ii) searching, in at least one of update images, an update image for one or more representations of teeth that is not in conformity with the treatment plan, if one or more not conforming teeth are detected,
wherein the non-conformity being measured by comparing said at least one of the update images with a view of the active intermediate model, and the at least one of the update images being acquired during the treatment with a mobile phone, by the patient himself, each of the update images being an aligner image representing an active aligner attached to the dental arch, or an image of bare teeth representing the dental arch without aligner.
In each of claims 2-15, the applicant is suggested to replace “computer medium” with – computer-readable storage medium-.
Additionally, in claim 2 line 1, replace “in step 3)”, with -in step 2)-.
Appropriate corrections are required.
Claim Rejections - 35 USC § 112
3. 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.
4. Claims 5, and 14-15 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 pre-AIA the applicant regards as the invention.
In claim 5, the limitation reciting “the representation of the conforming teeth is superposable in register...” renders the claim indefinite because it is unclear as to what is being encompassed by “superposable in register”. There is no detailed explanation, in either the claim or the original disclosure, that describes exactly what is meant by “superposable in register”, because said term does not have a clear-cut definition in the art related to the scope of the subject matter in question. The specification (see at least end of page 9 to the first line of page 10) only recites the limitations in question and then follows to describe how the the deformation update image is evaluated. However, no clear-cut indication of the scope of the subject matter covered by the “superposable in register” is provided.
Also, in claim 5, the limitation which includes the term “superposable” renders the claim indefinite because said term does not definitely and positively infer that the function to be performed following said term in the claim is actually being performed. Instead, it only suggests that the limitation of the claim may be capable of being performed. Thus, the limitation following such term may not be given any patentable weight.
At present, claim 5 merely attempts to define the subject matter in the terms of the result to be achieved, but in so doing merely states the problem to be solved, without indicating the technical features necessary for achieving the result. Thus, the one of ordinary skill in the art would not know from the claim terms what structure or steps are encompassed by the limitations in the claims.
In claim 14, the limitation reciting “when the update image is superposed in register...” renders the claim indefinite because it is unclear as to what is being encompassed by the term “superposed in register”. There is no detailed explanation, in either the claim or the original disclosure, that describes exactly what is meant by said term, because “superposed in register” does not have a well-known defined meaning in the art. Thus, the metes and bounds of the claim are lacking.
In claim 15, the limitation which includes the term “suitable” renders the claim indefinite because said term does not definitely and positively infer that the function to be performed following said term in the claim is actually being performed. Instead, it only suggests that the limitation of the claim may be capable of being performed. Thus, the limitation following such term may not be given any patentable weight.
Double Patenting
5. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/forms/. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
6. Claims 1-15 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12076204, hereinafter the ’04 patent in view of US Patent No. 11850113, hereinafter the ’13 patent.
Although the two claim sets at issue are not verbatim identical, they are not patentably distinct from each other because each of the limitations of the application’s claims when compared to the limitations of the claims in the ’04 patent appear to share analogous features. Thus, the claim sets are obvious variation of one another as they have the same structural and functional features.
For example, claim 1 of the ’04 patent, similar to claim 1 of the application, recites all the following limitations, including: A non-transitory computer medium storing computer-program instructions for executing a method, performed by computer, for generating an updated three-dimensional digital model of a dental arch of a patient, during a treatment with orthodontic aligners of said dental arch, the treatment implementing a treatment plan generated before the start of the treatment, a treatment plan comprising a sequence of models, representing successive expected intermediate and final configurations of the dental arch at intermediate times during the treatment and at the end at the treatment,” and generating the method performing each of steps 1) to step 4) in the same manner as claim 1 of the application:
The only distinction between the instant application’s claim 1 and claim 1 of the ’04 patent is that the patent’s claim 1 not specific as to a patient using a mobile phone to acquire the update images being acquired during the treatment.
However, such a distinction could have been easily devised by a person skilled in the art based on the invention described in the ‘04 patent, because claim 6 of said patent, which is a continuation of claim 1 of said patent, further describes that the update images are photos or images extracted from a film and are acquired with a mobile phone.
Additionally, the ‘13 patent already implemented such a technique by disclosing “The user may capture a first image 106 …, a second image 106 …, and a third image 106 of an upper, open view of the user's mouth by aiming a camera from a lower angle up toward the upper teeth (shown in FIG. 2C) …. After capturing the images 106, the user may upload the images 106 to the pre-trained image detector 102 (e.g., to a website or internet-based portal associated with the pre-trained image detector 102 or model generation system 100. ….. The pre-trained image detector 102 may be configured to receive one or more images 106 of a mouth of a user and retrieve the images 106 from a storage device (e.g., where the mobile device stored the images 106 on the storage device….. the pre-trained image detector 102 is configured to process the image(s) 106 to generate an image feature map 300. Specifically, FIG. 3 is a block diagram of an image feature map 300 corresponding to one of the images 106 received by the pre-trained image detector 102. The pre-trained image detector 102 may be configured to process images 106 received from the mobile device of the user to generate the image feature map 300." See col. 5 lines 8-66.
The claimed feature, particularly the searching step of step 2) of the claim 1 of the ’04 patent, is taught to integrate the step 2) of the application when the pre-trained image detector 102 of the ’13 patent retrieves the images 106 from a storage device of the mobile device for further processing and to cause system 100 to generate the 3D model of a user's dental arch from one or more images 106 of the user's dentition. Thus, the teachings of the ’04 patent and ’13 patent, together, contribute to performing a patient using a mobile phone to acquire the update images being acquired during the treatment, as claimed in claim 1 of the application.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the instant applications’ claim 1 to include: a patient using a mobile phone to acquire the update images being acquired during the treatment, in the same conventional manner as thought by the ’04 patent claim 1, as modified by the ’13 patent. The advantage to yield the instant claim 1 by combining the ’04 patent’s claim 1 with the ’13 patent would have been to allow the patient to re-take one or more of the images of the arch dental treatment when he or she is not satisfied with the model generated by the orthodontist for application prior to finalizing the treatment. See col. 5 lines 30-37 of the ’13 patent.
It is to be noted that: a claim containing a recitation with respect to the manner in which a claimed method is intended to be employed does not differentiate the claimed method from a prior art if the prior art method teaches all the functional limitations of the claim. In the present case, the instant application’s claim 1 is not functionally distinguishable from the claim 1 of the ‘04 patent. Further, the extent that the instant application claims are broaden and therefore generic to instant claimed invention, In re Goodman 29 USPQ 2d 2010 CAFC 1993, states that a generic claim cannot be issued without a terminal disclaimer, if a species claim has been previously been claimed in a patent. Therefore, the granting of the current application’s claim would infringe with the claimed invention found in claim 1 of the ‘04 patent.
The limitations in each of claims 2-15 of the instant application are considered analogous to those limitations recited in the patent’s claims 2-15, because each and every limitation in the application’s claims 2-15, respectively, can be found basically word-for-word in each of respective claims 2-15 of the ’04 Patent. Accordingly, claims 2-15 of the application are unpatentable for obvious-type double patenting over claims 2-15 in the ’04 patent. Therefore, the granting of the current application’s claims 1-15 would infringe with the claimed invention found in claims 1-15 of the ‘04 patent.
Conclusion
8. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kuo et al. (US 20190080029) discloses a System and method for developing a treatment plan for achieving a treatment goal including creating a virtual model of a dental patient's dentition; transforming the virtual model of the dentition using virtual prosthodontics to facilitate achievement of the treatment goal; transforming the virtual model of the dentition using virtual orthodontics to facilitate achievement of the treatment goal; iterating on the transforming steps until substantially achieving the treatment goal; and generating an orthodontic treatment plan and a prosthodontic treatment plan based upon the substantially achieved treatment goal
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to WESNER SAJOUS whose telephone number is (571) 272-7791. The examiner can normally be reached on M-F 10:00 TO 7:30 (ET).
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/WESNER SAJOUS/Primary Examiner, Art Unit 2612
WS
03/06/2026