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 .
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.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
In the instant case Claim 22 uses multiple “means for” in the claim limitation.
Double Patenting
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 conflicting claims 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined 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 § 2146 et seq. 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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 www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16, 18-19 of U.S. Patent No. 12,097,009. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Using a hollow tip would allow improved high-frequency responses in a 3D scanning device, which improves the accuracy in scanning complex three-dimensional shapes.
Claims 19-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 of U.S. Patent No. 12,097,009. Although the claims at issue are not identical, they are not patentably distinct from each other because: The claims are anticipated by claim 1 of U.S. Patent No. 12,097,009.
Claims 21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 of U.S. Patent No. 12,097,009. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Using a hollow tip would allow improved high-frequency responses in a 3D scanning device, which improves the accuracy in scanning complex three-dimensional shapes.
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.
Claim(s) 1-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fisker et al. (9,769,455) in view of Levin (2014/0120493).
Claim 1
Fisker et al. (9,769,455) discloses an apparatus for intraoral three-dimensional (3D) scanning (See Abstract), the apparatus comprising: a light source (Fig. 10, Ref. 110, 111), comprising a light emitting diode (LED) (Col. 25, lines 58-62), to emit light defined by a wavelength (Col. 25, lines 58-62; red, green or blue light); a spatial pattern (Fig. 10, Ref. 130; pattern generation means) to be illuminated by the light (Fig. 10, Ref. 110, 111) and to output patterned light (Col. 22, lines 6-8); a beam splitter (Fig. 10, Ref. 140) to receive the patterned light (Fig. 10, Ref. 130) and to output the patterned light to an optical system (Fig. 10, Ref. 150); the optical system (Fig. 10, Ref. 150), comprising fewer than nine lenses (Fig. 10, Ref. 150 only shows two lenses) and having an optical axis, to focus (Fig. 10, Ref. 151; focusing element) the patterned light (Fig. 10, Ref. 130); a hollow front tip (Fig. 10, Ref. 170) comprising a mirror (Fig. 10, Ref. 171, 172) to redirect the patterned light (Fig. 10, Ref. 130) out of a side exit of the apparatus for imaging of teeth (Fig. 12, Ref. 1100; Para. 28, lines 13-23); an image sensor (Fig. 10, Ref. 180) to receive returning patterned light that has reflected off of the teeth (Fig. 12, Ref. 1100) and been redirected to the image sensor (Fig. 10, Ref. 180) by the beam splitter (Fig. 10, Ref. 140; Para. 22, lines 24-31); and a depth scanning module (Fig. 10, Ref. 150; adjusting focusing lens Ref. 151) to axially translate one or more lenses (Fig. 10, Ref. 151, focusing lens) of the optics system (Fig. 10, Ref. 150) in the optical axis to change a focus setting of the optics system (Fig. 10, Ref. 150; Para. 22, lines 9-14), wherein the depth scanning module (Fig. 10, Ref. 150) is configured to axially translate the one or more lenses by 0.1-5 mm (Col. 2, lines 32-39) to achieve a depth scanning range of 5-40 mm (Col. 2, lines 20-31).
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Fisker et al. (9,769,455) substantially teaches the claimed invention except that it does not show a scan speed of about 5-50 scans per second. Levin (2014/0120493) shows that a scan speed of about 5-50 scans per second (Para. 0051; at a rate of at least 10 3D scans per second) for a three-dimensional scanning device for teeth. It would have been obvious to combine the device of Fisker et al. (9,769,455) with the scanning speed of Levin (2014/0120493) before the effective filing date of the claimed invention for the purpose of providing a rate that allows the scanner to capture thousands of images which are then stitches together to create a 3D model, therefore providing a high-precision digital impression within a reasonable timeframe.
Claim 2
Fisker et al. (9,769,455) discloses the wavelength is a wavelength of visible light (Col. 25, lines 58-62; red, green or blue light).
Claim 3
Fisker et al. (9,769,455) and Levin (2014/0120493) discloses the claimed invention except for the optical system is non-telecentric. It would have been obvious to one having ordinary skill in the art at the effective filing date of the claimed invention was made to combine Fisker et al. (9,769,455) and Levin (2014/0120493) with a non-telecentric optical system since it was well known in the art that using non-telecentric optical systems will expand the field-of-view, therefore increase scanning flexibility and reduce cost.
Claim 4
Fisker et al. (9,769,455) and Levin (2014/0120493) discloses the claimed invention except for a fold mirror comprising a heater that is to defog the mirror. It would have been obvious to one having ordinary skill in the art at the effective filing date of the claimed invention was made to combine Fisker et al. (9,769,455) and Levin (2014/0120493) with a heater since it was well known in the art that using a heater prevents blurry images by preventing condensation from forming on the mirror, therefore providing clear, crisp reflection for the optical sensors.
Claim 5
Fisker et al. (9,769,455) discloses the optical system comprises five or fewer lenses (Fig. 10, Ref. 150 show two lenses).
Claim 6
Fisker et al. (9,769,455) and Levin (2014/0120493) discloses the claimed invention except for the apparatus has a horizontal field of view of 18 mm. It would have been obvious to one having ordinary skill in the art at the effective filing date of the claimed invention was made to combine Fisker et al. (9,769,455) and Levin (2014/0120493) with the apparatus with a horizontal field of view of 18 mm since it was well known in the art that using a 18mm FOV is designed to provide balance between high-precision detail and scanning speed, therefore optimizing resolution and coverage for ensuring enough detail is captured by the optical system.
Claim 7
Fisker et al. (9,769,455) discloses the beam splitter is a polarization sensitive beam splitter (Col. 22, lines 58-63).
Claim 8
Fisker et al. (9,769,455) discloses the beam splitter is a cube beam splitter (See Fig. 10, Ref. 140 shaped in a cube).
Claim 9
Fisker et al. (9,769,455) and Levin (2014/0120493) discloses the claimed invention except for the spatial pattern is disposed on a transparency. It would have been obvious to one having ordinary skill in the art at the effective filing date of the claimed invention was made to combine Fisker et al. (9,769,455) and Levin (2014/0120493) with the spatial pattern is disposed on a transparency since it was well known in the art that using a spatial pattern on a transparency helps the pattern to be projected onto the object for high-precision 3D measurement, therefore providing high-resolution 3D data capture with improved accuracy.
Claim 10, 11
Fisker et al. (9,769,455) and Levin (2014/0120493) discloses the claimed invention except for the transparency is disposed on a first surface of the beam splitter, and wherein the image sensor is disposed on a second surface of the beam splitter or bonded. It would have been obvious to one having ordinary skill in the art at the effective filing date of the claimed invention was made to combine Fisker et al. (9,769,455) and Levin (2014/0120493) with the above beamsplitter design since it was well known in the art that placing the transparency on a beamsplitter and an image sensor on another surface or bonding to the beamsplitter would create a compact, high-precision, and stable optical path, therefore providing an extremely compact and rigid construction for the device with high-precision alignment stability.
Claim 12
Fisker et al. (9,769,455) and Levin (2014/0120493) discloses the claimed invention except for the spatial pattern is not time varying. It would have been obvious to one having ordinary skill in the art at the effective filing date of the claimed invention was made to combine Fisker et al. (9,769,455) and Levin (2014/0120493) with the spatial pattern is not time varying since it was well known in the art that using a spatial pattern that is not time varying is that it provides higher accuracy and resolution, therefore allowing for detailed analysis of the deformation of the object’s surface.
Claim 13
Fisker et al. (9,769,455) and Levin (2014/0120493) discloses the claimed invention except for the optical system provides a magnification of between 4x and 40x. It would have been obvious to one having ordinary skill in the art at the effective filing date of the claimed invention was made to combine Fisker et al. (9,769,455) and Levin (2014/0120493) with above listed magnification since it was well known in the art that using the claimed magnification is designed to balance the need for both wide-area overview and high-resolution, therefore improving feature detection and optimal measurement precision in a 3D scanning device.
Claim 14
Fisker et al. (9,769,455) and Levin (2014/0120493) discloses the claimed invention except for the one or more lenses of the optical system have a diameter of about 5-15 mm. It would have been obvious to one having ordinary skill in the art at the effective filing date of the claimed invention was made to combine Fisker et al. (9,769,455) and Levin (2014/0120493) with the one or more lenses of the optical system have a diameter of about 5-15 mm since it was well known in the art that using the claimed diameter allows for high-precision, localized, and flexible measurement of complex geometries, therefore providing high-resolution of small or intricate surfaces.
Claim 15
Fisker et al. (9,769,455) and Levin (2014/0120493) discloses the claimed invention except for the spatial pattern comprises an array of segments that have a diameter of about 1 micron to about 2 mm. It would have been obvious to one having ordinary skill in the art at the effective filing date of the claimed invention was made to combine Fisker et al. (9,769,455) and Levin (2014/0120493) with the spatial pattern comprises an array of segments that have a diameter of about 1 micron to about 2 mm since it was well known in the art that using the claimed diameters is utilized to enable high-precision depth sensing, therefore improving the ultra-high-resolution imaging and maintaining a wider FOV and depth of view..
Claim 16
Fisker et al. (9,769,455) and Levin (2014/0120493) discloses the claimed invention except for the hollow front tip is removable and autoclavable. It would have been obvious to one having ordinary skill in the art at the effective filing date of the claimed invention was made to combine Fisker et al. (9,769,455) and Levin (2014/0120493) with the hollow front tip is removable and autoclavable since it was well known in the art that having the hollow tip as a removable autoclavable allows the tip to be reusable over multiple cycles vs. disposable sleeves, therefore reducing the long-term operational cost of the 3D scanning system.
Claim 17
Fisker et al. (9,769,455) and Levin (2014/0120493) discloses the claimed invention except for the hollow front tip has a height of 20 mm or less. It would have been obvious to one having ordinary skill in the art at the effective filing date of the claimed invention was made to combine Fisker et al. (9,769,455) and Levin (2014/0120493) with the hollow front tip has a height of 20 mm or less since it was well known in the art that is designed to allow optical precision in tight spaces, therefore allowing the device to enter narrow or shallow recessed areas.
Claim 18
Fisker et al. (9,769,455) and Levin (2014/0120493) discloses the claimed invention except for the intraoral 3D scanning has a weight of 300 grams or less. It would have been obvious to one having ordinary skill in the art at the effective filing date of the claimed invention was made to combine Fisker et al. (9,769,455) and Levin (2014/0120493) with the intraoral 3D scanning has a weight of 300 grams or less since it was well known in the art that having such parameters improves ergonomic usability by reducing fatigue of the operator, therefore reducing physical tiredness.
Claim 19
Fisker et al. (9,769,455) apparatus for intraoral three-dimensional (3D) scanning (See Abstract and Fig. 12), the apparatus comprising: a light source (Fig. 10, Ref. 110, 111) to emit light defined by a wavelength (Col. 25, lines 58-62; red, green or blue light); a beam splitter (Fig. 10, Ref. 140) to receive the light and to output the light to an optical system (Fig. 10, Ref. 150); the optical system (Fig. 10, Ref. 150), comprising nine lenses (Fig. 10, Ref. 150 has two lenses) and having an optical axis, to focus (Fig. 10, Ref. 151; focusing lens) the light; an optical component (Fig. 10, Ref. 170) to redirect the light out of a side exit of the apparatus for imaging of teeth (Fig. 12, Ref. 1100); an image sensor (Fig. 10, Ref. 180) to receive returning light that has reflected off of the teeth and been redirected to the image sensor (Fig. 10, Ref. 180) by the beam splitter (Fig. 10, Ref. 140); and a depth scanning module (Fig. 10, Ref. 150; adjusting focusing lens Ref. 151) to axially translate one or more lenses (Fig. 10, Ref. 151) of the optics system (Fig. 10, Ref. 150) in the optical axis to change a focus setting of the optics system (Fig. 10, Ref. 150; Para. 22, lines 9-14), wherein the depth scanning module (Fig. 10, Ref. 150) is configured to axially translate the one or more lenses by 0.1-5 mm (Col. 2, lines 32-39) to achieve a depth scanning range of 5-40 mm (Col. 2, lines 20-31).
Fisker et al. (9,769,455) substantially teaches the claimed invention except that it does not show a scan speed of about 5-50 scans per second. Levin (2014/0120493) shows that a scan speed of about 5-50 scans per second (Para. 0051; at a rate of at least 10 3D scans per second) for a three-dimensional scanning device for teeth. It would have been obvious to combine the device of Fisker et al. (9,769,455) with the scanning speed of Levin (2014/0120493) before the effective filing date of the claimed invention for the purpose of providing a rate that allows the scanner to capture thousands of images which are then stitches together to create a 3D model, therefore providing a high-precision digital impression within a reasonable timeframe.
Claim 20
Fisker et al. (9,769,455) discloses the optical component comprises a mirror (Fig. 10, Ref. 171, 172).
Claim 21
Fisker et al. (9,769,455) and Levin (2014/0120493) discloses the claimed invention except for light source is a laser diode. It would have been obvious to one having ordinary skill in the art at the effective filing date of the claimed invention was made to combine Fisker et al. (9,769,455) and Levin (2014/0120493) with laser diode since it was well known in the art that using a laser diode in a 3D optical device provides a high-intensity, monochromatic, and stable light source, therefore improving precision and resolution in capturing minute details of the scanned object. The examiner takes Official Notice that the elements listed above are well-known, or to be common knowledge in the art are capable of instant and unquestionable demonstration as being well-known.
Claim 22
Fisker et al. (9,769,455) discloses an apparatus for intraoral three-dimensional (3D) scanning (See Abstract), the apparatus comprising: a means for emitting light (Fig. 10, Ref. 110, 111); a means for receiving the light and outputting patterned light (Fig. 10, Ref. 130); a means for receiving the patterned light, outputting the patterned light (Fig. 10, Ref. 130) to an optical system (Fig. 10, Ref. 150), and redirecting returning patterned light; the optical system (Fig. 10, Ref. 150), comprising fewer than nine lenses (Fig. 10, Ref. 150 has two lenses) and having an optical axis, to focus (Fig. 10, Ref. 151; focusing lens) the patterned light (Fig. 10, Ref. 130); a hollow front tip (Fig. 10, Ref. 170) comprising a means (Fig. 10, Ref. 171, 172) for redirecting the patterned light (Fig. 10, Ref. 130) out of a side exit of the apparatus, for imaging of teeth (Fig. 12, Ref. 1100); a means for generating images (Fig. 10, Ref. 180) of the returning patterned light that has reflected off of the teeth (Fig. 12, Ref. 1100) and been redirected; and a means (Fig. 10, Ref. 150) for axially translating one or more lenses (Fig. 10, Ref. 151) of the optics system in the optical axis to change a focus setting of the optics system (Fig. 10, Ref. 150; Para. 22, lines 9-14), wherein the means (Fig. 10, Ref. 150) for axially translating the one or more lenses (Fig. 10, Ref. 151) of the optics system (Fig. 10, Ref. 150) is configured to axially translate the one or more lenses (Fig. 10, Ref. 151) by 0.1-5 mm (Col. 2, lines 32-39) to achieve a depth scanning range of 5-40 mm (Col. 2, lines 20-31).
Fisker et al. (9,769,455) substantially teaches the claimed invention except that it does not show a scan speed of about 5-50 scans per second. Levin (2014/0120493) shows that a scan speed of about 5-50 scans per second (Para. 0051; at a rate of at least 10 3D scans per second) for a three-dimensional scanning device for teeth. It would have been obvious to combine the device of Fisker et al. (9,769,455) with the scanning speed of Levin (2014/0120493) before the effective filing date of the claimed invention for the purpose of providing a rate that allows the scanner to capture thousands of images which are then stitches together to create a 3D model, therefore providing a high-precision digital impression within a reasonable timeframe.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL PATRICK STAFIRA whose telephone number is (571)272-2430. The examiner can normally be reached M-F 6:30am-3pm.
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/MICHAEL P STAFIRA/Primary Examiner, Art Unit 2877 January 21, 2026