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 .
Response to Amendment
The amendment filed on 06/10/2026 has been entered.
Response to Terminal Disclaimer
The terminal disclaimer filed on 06/10/2026 has been approved and overcomes the non-statutory double patenting rejection set forth in the office action having notification date of 03/11/2026.
Response to Remarks/Arguments
Applicant's remarks/arguments filed 06/10/2026 have been fully considered and the amendments are persuasive to overcome the 102 and 103 rejections set forth in the office action having notification date of 03/11/2026 and the terminal disclaimer overcomes the non-statutory double patenting rejection set forth in the office action having notification date of 03/11/2026.
The amended claims raise indefinite, priority, and written description issues which are set forth in detail below.
CLAIM INTERPRETATION
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
Claims 2-21 have been interpreted under 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) to not invoke 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) claim interpretation.
Claim Rejections - 35 USC § 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.
Claims 2-21 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.
Claims 2-9:
Independent claim 2 was amended to claim in the first determining step: “determining, from the dental treatment plan, locations at which one or more attachments should be attached to one or more teeth of the patient” (emphasis added).
Independent claim 2 was amended to claim alternatively in the second determining step: “determining, based on comparison of the image data to at least one of the dental treatment plan or prior image data of the dental arch of the patient, that at least one attachment of the one or more attachments has moved out of position or is no longer present;” (emphasis added).
Independent claim 2 claims in the third determining step and the generating step:
“determining, for the at least one attachment of the one or more attachments, an area in the image data corresponding to a location at which the attachment is to be placed on a tooth of the one or more teeth;
generating a visual overlay comprising an indication of the location to place the attachment; and” (emphasis added).
Independent claim 2 is indefinite for many reasons:
the temporal aspect of the “should be”, received actual, and “to be” locations of the attachments is unclear;
in the second determining step the alternatively claimed “prior image data of the dental arch of the patient,” was not set forth previously in the claim and a correlation between the claimed “receiving image data of a dental arch of a patient;” and the claimed “prior image data of the dental arch of the patient,” is absent;
in the second determining step determining based on the alternatively claimed “based on comparison of the image data to at least one of the dental treatment plan … of the patient” is unclear as to how the determination is determined since no corresponding “image data to at least one of the dental treatment plan” has been set forth in the claim;
in the third determining step the claimed “image data” does not clearly refer to one of the two previously claimed “image data”; and
in the generating step the location is unclear in view of the above discussed the “should be”, received actual, and “to be” locations of the attachments.
The dependent claims inherit and do not correct these indefinite issues.
Dependent claim 3 claims in the determining step “to be placed on the tooth” and in the generating step “to place … attachment” both of which are unclear in view of the above discussed the “should be”, received actual, and “to be” locations of the attachments.
Claims 10-14:
Claim 10 is a method claim version of non-transitory computer readable medium 2. Claim 10 was amended similar to claim 2 and has the same indefinite issues present in claim 2, thus, claim 10 is indefinite for the same reasons given for claim 2.
The dependent claims inherit and do not correct these indefinite issues.
Dependent claim 11 claims in the determining step “to be placed on the tooth” and in the generating step “to place … attachment” both of which are unclear in view of the above discussed the “should be”, received actual, and “to be” locations of the attachments.
Additionally these method claims lack an actor of the claimed steps which renders the actor speculative and ambiguous as well as unclear as to the scope of the claimed method.
Claims 15-21:
Claim 15 is a system claim version of non-transitory computer readable medium 2 claiming functions in the place of steps. Claim 15 was amended similar to claim 2 and has the same indefinite issues present in claim 2, thus, claim 15 is indefinite for the same reasons given for claim 2.
The dependent claims inherit and do not correct these indefinite issues.
Dependent claim 16 claims in the determine function “to be placed on the tooth” and in the generate function “to place … attachment” both of which are unclear in view of the above discussed the “should be”, received actual, and “to be” locations of the attachments.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 and 119(e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application Nos. 18/151,260; 17/344,858; 17/142,081; 16/851,035; and 15/841,196 and 62/435,565, fail to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
Claims 2-9:
Independent claim 2 was amended to claim in the first determining step: “determining, from the dental treatment plan, locations at which one or more attachments should be attached to one or more teeth of the patient” (emphasis added).
Independent claim 2 was amended to claim alternatively in the second determining step: “determining, based on comparison of the image data to at least one of the dental treatment plan or prior image data of the dental arch of the patient, that at least one attachment of the one or more attachments has moved out of position or is no longer present;” (emphasis added).
Independent claim 2 claims in the third determining step and the generating step:
“determining, for the at least one attachment of the one or more attachments, an area in the image data corresponding to a location at which the attachment is to be placed on a tooth of the one or more teeth;
generating a visual overlay comprising an indication of the location to place the attachment; and” (emphasis added).
The claims are generally directed to FIG. 21 and paragraphs [0030] and [00230]-[00231] and from the remarks on page 7 filed on 06/10/2026 paragraphs [00102], [00108], and [00117].
Independent claim 2 is not supported by the priority Application Nos. 18/151,260; 17/344,858; 17/142,081; 16/851,035; and 15/841,196 and 62/435,565, for several reasons (note the following reference to paragraph numbers is to paragraphs of this application which have the same or similar paragraph numbers to the prior Applications):
the temporal aspect of the “should be”, received actual, and “to be” locations of the attachments is not supported by Applicant’s written description, refer to FIG. 21 and paragraphs [0030] and [00230]-[00231] and from the remarks on page 7 filed on 06/10/2026 paragraphs [00102], [00108], and [00117];
in the second determining step the alternatively claimed “prior image data of the dental arch of the patient,” was not set forth previously in the claim and a correlation between the claimed “receiving image data of a dental arch of a patient;” and the claimed “prior image data of the dental arch of the patient,” and is not supported by Applicant’s written description, refer to FIG. 21 and paragraphs [0030] and [00230]-[00231] and from the remarks on page 7 filed on 06/10/2026 paragraphs [00102], [00108], and [00117];
in the second determining step determining based on the alternatively claimed “based on comparison of the image data to at least one of the dental treatment plan … of the patient” is unclear as to how the determination is determined since no corresponding “image data to at least one of the dental treatment plan” has been set forth in the claim and is not supported by Applicant’s written description, refer to FIG. 21 and paragraphs [0030] and [00230]-[00231] and from the remarks on page 7 filed on 06/10/2026 paragraphs [00102], [00108], and [00117];
in the third determining step the claimed “image data” does not clearly refer to one of the two previously claimed “image data” and is not supported by Applicant’s written description, refer to FIG. 21 and paragraphs [0030] and [00230]-[00231] and from the remarks on page 7 filed on 06/10/2026 paragraphs [00102], [00108], and [00117]; and
in the generating step the location is unclear in view of the above discussed the “should be”, received actual, and “to be” locations of the attachments and is not supported by Applicant’s written description, refer to FIG. 21 and paragraphs [0030] and [00230]-[00231] and from the remarks on page 7 filed on 06/10/2026 paragraphs [00102], [00108], and [00117].
The dependent claims inherit and do not correct these written description issues.
Dependent claim 3 claims in the determining step “to be placed on the tooth” and in the generating step “to place … attachment” both of which are unclear in view of the above discussed the “should be”, received actual, and “to be” locations of the attachments and are not supported by Applicant’s written description, refer to FIG. 21 and paragraphs [0030] and [00230]-[00231] and from the remarks on page 7 filed on 06/10/2026 paragraphs [00102], [00108], and [00117].
Claims 10-14:
Claim 10 is a method claim version of non-transitory computer readable medium 2. Claim 10 was amended similar to claim 2 and has the same written description issues present in claim 2, thus, claim 10 lacks adequate written description for the same reasons given for claim 2.
The dependent claims inherit and do not correct these written description issues.
Dependent claim 11 claims in the determining step “to be placed on the tooth” and in the generating step “to place … attachment” both of which are unclear in view of the above discussed the “should be”, received actual, and “to be” locations of the attachments and are not supported by Applicant’s written description, refer to FIG. 21 and paragraphs [0030] and [00230]-[00231] and from the remarks on page 7 filed on 06/10/2026 paragraphs [00102], [00108], and [00117].
Additionally these method claims lack an actor of the claimed steps which renders the actor speculative and ambiguous as well as unclear as to the scope of the claimed method and without a disclosed actor renders these claim claims not supported by Applicant’s written description, refer to FIG. 21 and paragraphs [0030] and [00230]-[00231] and from the remarks on page 7 filed on 06/10/2026 paragraphs [00102], [00108], and [00117].
Claims 15-21:
Claim 15 is a system claim version of non-transitory computer readable medium 2 claiming functions in the place of steps. Claim 15 was amended similar to claim 2 and has the same written description issues present in claim 2, thus, claim 15 lacks adequate written description for the same reasons given for claim 2.
The dependent claims inherit and do not correct these written description issues.
Dependent claim 16 claims in the determine function “to be placed on the tooth” and in the generate function “to place … attachment” both of which are unclear in view of the above discussed the “should be”, received actual, and “to be” locations of the attachments and are not supported by Applicant’s written description, refer to FIG. 21 and paragraphs [0030] and [00230]-[00231] and from the remarks on page 7 filed on 06/10/2026 paragraphs [00102], [00108], and [00117].
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 2-21 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 for the same reasons given in the above priority discussion.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFERY A BRIER whose telephone number is (571)272-7656. The examiner can normally be reached on Mon-Fri from 8:30am-3:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Xiao M Wu, can be reached at telephone number 571-272-7761. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JEFFERY A. BRIER
Primary Examiner
Art Unit 2613
/JEFFERY A BRIER/Primary Examiner, Art Unit 2613
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