DETAILED ACTION
Response to Amendment
The preliminary amendment filed October 2, 2024, has been entered in full. Claims 1-8 are pending.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on October 16, 2024, is being considered by the examiner.
Claim Objections
Claim(s) 1 and 8 is/are objected to because of the following informalities:
In claim 1, twelfth line, “a bridges” should be “a bridge”
In claim 8, first line, “the an image acquisition device” should be “the image acquisition device”
Appropriate correction is required.
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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: the “image acquisition device” in claim 7.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claim 8 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 8 recites the limitation "The dentistry system" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 8 is presented as an independent claim, but it appears that claim 8 should depend from claim 7. Claim 8 is interpreted as depending from claim 7 for the purpose of practicing compact prosecution. MPEP 2173.06.
Claim Rejections - 35 USC § 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 1-8 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
The patent Subject Matter Eligibility (SME) test is described in MPEP 2106. It includes multiple steps, sub-steps, and prongs.
Step 1
Claims 1-5 are to a process, and claims 6-8 are to a machine and/or manufacture, so all of the claims fall within at least one statutory category.
Step 2A, Prong One
The claims recite a mental process of collecting information, analyzing it, and displaying certain results of the collection and analysis, which is an abstract idea judicial exception. MPEP 2106.04(a)(2), Subsection III. Specifically, the claims require collecting data including digital data of a patient and criteria for various treatments, analyzing the data to determine whether it meets the criteria, has deficiencies and is applicable to a dental procedure, and outputting the determination.
Claim 1 can be taken as a representative claim.
Claim 1 requires providing patient-specific digital data of a patient. This can be performed mentally by, for example, displaying the digital data on a computer screen or printing it on a piece of paper.
Claim 1 further requires providing a database comprising a plurality of dental procedures and associated criteria. This can be performed mentally by using a person’s domain knowledge and experience to set rules. For example, a person can mentally determine that dental data must not have large noise artifacts when planning a crown because the noise could cause a poor fit. In another example, the person could mentally determine that a full jaw scan is required to diagnose jaw tumors because a partial jaw scan would potentially miss a tumor. The set of rules could be remembered purely mentally or, alternatively, using a physical aid such as by writing them down with pen and paper.
Claim 1 further requires analyzing the data to generate information on the data meeting the criteria or not and the data having deficiencies. This can also be performed mentally by applying the rules defined in the criteria and using judgement regarding whether the data is deficient. For example, the data may be displayed or printed on a piece of paper and a human can use their judgement to determine whether it has any deficiencies. Examiner notes that several of the cited prior art references describe such human/manual analysis of dental data quality, which demonstrates that such analysis can be performed mentally. For example, see par. [0004] of ‘Popov’ (US 2024/0122677 A1), par. [0005] of ‘Lee’ (US 2023/0290093 A1), and par. [0189] of ‘Boerjes’ (US 2012/0231421 A1).
Claim 1 further requires determining a level of applicability of the dental procedure to the provided data based on the analyzing. This can also be performed mentally by making a judgement.
Claim 1 further requires outputting the determined level. This could be performed mentally by speaking, writing the determined level on a piece of paper, etc.
Claims 6 and 7 recite substantially the same limitations as claim 1.
Claim 2 recites selecting a dental procedure from among applicable dental procedures and initiating the selected dental procedure. This can also be performed mentally, such as by mentally making a selection and beginning a mental planning process for the selected procedure. Claim 2 also recites initiating a procedure for repairing, which can be performed mentally by, for example, starting to mentally plan for how to repair the data.
Claim 3 requires that the analyzing is performed while the digital dental impression is being acquired from a patient. This can be performed mentally. For example, by viewing scan data as it is generated and mentally evaluating that scan data.
Claim 4 recites terminating an acquisition, which can also be performed mentally by, for example, deciding to discontinue scanning the patient.
Claim 5 recites various forms of digital dental data that can be considered mentally. For example, humans can view pictures and videos or printed renderings of surface or volumetric data.
Step 2A, Prong Two
None of the additional elements recited in the claims integrate the abstract idea into a practical application because none go beyond
Merely reciting the words "apply it" (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, as discussed in MPEP § 2106.05(f);
Adding insignificant extra-solution activity to the judicial exception, as discussed in MPEP § 2106.05(g); and
Generally linking the use of a judicial exception to a particular technological environment or field of use, as discussed in MPEP § 2106.05(h).
Claim 1 is “computer-implemented”. Claim 6 requires computer implementation. Claim 7 requires a computerized system including a computing unit and a user interface. However, none of these additional elements amount to more than mere instructions to implement an abstract idea on a computer. The claims generally recite only the idea of a solution or outcome without reciting details of how that solution or outcome is accomplished. For example, claim 1 requires analyzing the data to generate information on the data meeting the criteria or not, but does not describe how that information is generated. Instead, the generation of the information (i.e., the determination whether the criteria are met) is simply a desired outcome. Similarly, the claims generally recite determining a level of applicability without explaining how that level of applicability is determined.
The claims require providing data of a patient, such as by using an intraoral scanner or an x-ray device (e.g., claims 1 and 8). This is insignificant extra-solution activity at least because it amounts to necessary data gathering – dental data cannot be analyzed if it is not first acquired.
The claims recite many limitations directed to the specific field of use and technological environment of dentistry. For example, the claims enumerate various types of dental diagnoses and treatments. The claims also recite many limitations directed to the specific format of the dental data (such as a mesh, point cloud, voxels, tetrahedrons, etc.) and specific aspects/flaws of such dental data (e.g., flipped triangles, noise, etc.), which seek to further limit the use of the claimed invention to the 3D digital dentistry field of use and technological environment. These limitations merely serve to indicate a field of use or technological environment in which to apply a judicial exception, which does not integrate an abstract idea into a practical application. This is similar to how “Limiting the abstract idea of collecting information, analyzing it, and displaying certain results of the collection and analysis to data related to the electric power grid” did not provide a practical application “because limiting application of the abstract idea to power-grid monitoring is simply an attempt to limit the use of the abstract idea to a particular technological environment.” MPEP § 2106.05(h), example vi, citing to Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016).
Step 2B
The identification of additional elements is carried over from Step 2A Prong Two. MPEP 2106.05, Subsection II.
The additional elements considered to be insignificant extra-solution activity are re-evaluated. Id. Acquisition of patient data, such as by using an intraoral scanner, was well-understood, routine, and conventional activity in the dental arts in view of at least the following evidence:
‘Lee’ (US 2023/0290093 A1) at pars. [0003]-[0006], [0052]
‘Boerjes’ (US 2012/0231421 A1) at pars. [0134]-[0137]
‘Yancey’ (US 2019/0164352 A1) at par. [0061]
As explained above at Step 2A, Prong Two, none of the other additional elements, individually or in combination, go beyond merely reciting the words "apply it" (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea; adding insignificant extra-solution activity to the judicial exception; and generally linking the use of a judicial exception to a particular technological environment or field of use.
For at least these reasons, none of the additional elements amount to significantly more than the abstract idea.
Conclusion
Claims 1-8 are patent-ineligible under 35 U.S.C. 101 because they are directed to an abstract idea without significantly more.
Effective Filing Date of the Claimed Invention
The instant application:
Claims foreign priority to European Patent Application no. 22166948.4, filed April 6, 2022. A certified copy of this application is present in the file wrapper.
Is a national stage entry of PCT Application no. PCT/EP2023/0055671, filed March 7, 2023.
By default, the effective filing date of a claimed invention is the actual filing date of the U.S. application. For national stage entry applications (such as the instant application), the actual filing date is the international filing date. However, “If the application properly claims foreign priority under 35 U.S.C. 119(a)-(d), 365(a) or (b), or 386(a) or (b), the effective filing date of a claimed invention is the filing date of the foreign priority document if the claim is adequately supported in the foreign priority document.” (emphasis added). MPEP 2152.01.
Examiner has reviewed the disclosure of the foreign priority document and finds that it does not adequate support the claimed invention for at least the following reasons.
First, claim 1 recites:
“providing a database comprising: a plurality of dental procedures and associated criteria that the data is to satisfy so that the dental procedure is applied to the data, wherein the dental procedure is either (i) a diagnosis procedure which relates to abrasion, caries, periodontitis, gingival atrophy, gingivitis, tooth surface loss, cracked tooth, pericoronititis, alveolar osteitis, jaw tumors and cysts, poor oral hygiene, temporomandibular joint disorders or combination thereof; or (ii) a treatment planning procedure which includes a dental application that relates to a crown, an inlay, an onlay, a veneer, an implant, an aligner, a bracket, a denture, a bridges, or an endodontic treatment or a combination thereof”
Claims 6 and 7 recite substantially the same limitation. All other claims apparently depend from one of claims 1, 6 and 7.
The most-relevant portions of the foreign priority document are:
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None of the dental procedures described in the foreign priority document are (i) diagnosis procedures, much less any of the specific types of diagnosis procedures delimited in the claim. Furthermore, at least some of the types of (ii) treatment planning procedures enumerated in the claim are not mentioned at all in the foreign priority document, such as an inlay, an onlay, a denture, or an endodontic treatment.
Second, claim 1 recites:
“wherein the criteria is described in terms of one or more of the following: consistency, watertightness, flipped triangles, flipped normals, normal sets, triangle size, number of components, self-intersections, scan bodies, noise, presence of prepared teeth, completeness of jaw, full jaw scan, or partial jaw scan, dental objects such as implants, abutments, brackets, and tooth misalignment” (emphasis added).
Claims 6 and 7 recite substantially the same limitation. All other claims apparently depend from one of claims 1, 6 and 7.
The portion of the foreign priority document most relevant to the underlined portion is pages 8-10. This section of the foreign priority document describes various criteria, but none of the criteria are described in terms of “dental objects such as implants, abutments, brackets, and tooth misalignment” as required by the claimed invention. For example, abutments are not mentioned anywhere in the foreign priority document and while implants and brackets are mentioned, they are not mentioned in the context of describing the criteria.
Third, claim 1 recites:
“determining based on the analyzing a level of applicability of the dental procedure to the provided data, wherein the level of the applicability is determined through the degree of criteria met by the provided data and the detected deficiencies, and wherein the level of applicability is classified into three levels according to which the dental procedure is either determined as being applicable when the criteria is met, not applicable when the criteria is not met, or applicable at the discretion of a user when one or more deficiencies are detected” (emphasis added).
Claims 6 and 7 recite substantially the same limitation. All other claims apparently depend from one of claims 1, 6 and 7.
The most-relevant portions of the foreign priority document are Fig. 1 and the following at pages 18-19:
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The foreign priority document does not discus a user’s discretion at all. The only example of a three-level classification is the traffic light at lines 19-21 of page 19. However, none of the green, yellow, or red levels is described as being “applicable at the discretion of a user when one or more deficiencies are detected” as claimed. For example, yellow is said to merely indicate “average or acceptable” quality.
The effective filing date of the claimed invention is March 7, 2023, because (a) this is the actual filing date of the instant application and (b) although the instant application claims foreign priority, none of the claims are adequately supported in the foreign priority document.
Claim Rejections - 35 USC § 102
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-8 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by ‘Popov’ (US 2024/0122677 A1)1.
Regarding claim 1, Popov discloses a computer-implemented method for digital dentistry (e.g., Figs. 1 and 2A-B), comprising:
providing patient-specific digital data of a patient, wherein the data comprises a digital dental impression of a craniofacial anatomy (e.g., Fig. 2B, step 252, virtual 3D model of patient’s dentition; see examples in Figs. 3-12), and wherein the data is described in terms of a mesh, point cloud, voxels, tetrahedrons or a combination thereof (e.g., [0086], virtual 3D model has vertices, edges, faces – i.e., it is a mesh);
providing a database comprising: a plurality of dental procedures and associated criteria that the data is to satisfy so that the dental procedure is applied to the data (e.g., [0068], Fig. 1, library of agents appropriate for identifying flaws pertinent to a specific treatment type; e.g., [0059], weighting and/or specific flaw detection models may be selected according to specific treatment type), wherein the dental procedure is either (i) a diagnosis procedure which relates to abrasion, caries, periodontitis, gingival atrophy, gingivitis, tooth surface loss, cracked tooth, pericoronititis, alveolar osteitis, jaw tumors and cysts, poor oral hygiene, temporomandibular joint disorders or combination thereof; or (ii) a treatment planning procedure (e.g., [0056] lists several different treatment types that may be planned for) which includes a dental application that relates to a crown, an inlay, an onlay, a veneer (e.g., [0056]), an implant (e.g., [0056]), an aligner (e.g., [0056]), a bracket, a denture, a bridges, or an endodontic treatment or a combination thereof, and
wherein the criteria is described in terms of one or more of the following: consistency, watertightness, flipped triangles, flipped normals, normal sets, triangle size, number of components, self-intersections, scan bodies, noise (e.g., [0058], [0090], Figs. 4A-B), presence of prepared teeth, completeness of jaw, full jaw scan, or partial jaw scan, dental objects such as implants, abutments, brackets, and tooth misalignment;
analyzing the data to generate information on the data meeting the criteria or not (e.g., [0070], Fig. 2A, model is analyzed to identify defects; e.g., [0059], [0071], the detected defects determine whether criteria for a certain dental procedure are met), and the data having deficiencies including one or more of inconsistencies and non-conformities in the meshes, point clouds, voxels, and tetrahedrons (e.g., [0086], defects are detected in the virtual 3D model; e.g., [0058], the defects correspond to various errors or flaws that can be considered one or more inconsistencies and non-conformities);
determining based on the analyzing a level of applicability of the dental procedure to the provided data (e.g., [0071], score from the analyzing determines how to process the dental model), wherein the level of the applicability is determined through the degree of criteria met by the provided data and the detected deficiencies (see above), and wherein the level of applicability is classified into three levels according to which the dental procedure is either determined as being applicable when the criteria is met ([0071], “pass” state where “the score indicates that the virtual 3D model is appropriate or adequate for use with a particular treatment”), not applicable when the criteria is not met ([0071], case where “the score may indicate that the virtual 3D model should be rejected and not used for treatment planning”), or applicable at the discretion of a user when one or more deficiencies are detected ([0071], “if the score is intermediate, indicating that the virtual 3D model
may be appropriate and/or may need further correction/processing it may output an annotated version of the virtual 3D model or other comments to this effect”); and
outputting the determined level of applicability to a practitioner (e.g., [0071], various outputs of the different levels of applicability mapped above).
Regarding claim 2, Popov discloses the method according to claim 1, further comprising
selecting a dental procedure from the applicable dental procedures (e.g., [0062], Fig. 1, user inputs a dental procedure), and initiating the selected dental procedure (e.g., [0071], passing score indicating that the treatment procedure is applicable results in the virtual 3D model being passed to treatment planning engine, thus initiating the selected dental procedure); or
initiating a procedure for repairing the detected deficiencies of said data in response to the analysis responsive to the dental procedure being applicable at a discretion of the practitioner (e.g., [0083], model may be routed for repair if risks are high enough).
Regarding claim 3, Popov discloses the computer-implemented method according to claim 1, wherein the analyzing is performed while the digital dental impression is being acquired from a patient (e.g., [0084], feedback – which is based on the analyzing – is “concurrent with” the scanning; also see, e.g., [0004]).
Regarding claim 4, Popov discloses the method according to claim 3, further comprising: terminating an acquisition of the digital impression in response to the analysis (e.g., [0084], user receives immediate feedback during scan that the scan is to be rejected).
Regarding claim 5, Popov discloses the computer-implemented method according to claim 1, wherein the digital dental impression is provided in the form one or more of the following data types: surface data, volumetric data, pictures (e.g., Figs. 3-12), videos, textures, articulator data and treatment data.
Regarding claim 6, Examiner notes that the claim recites a non-transitory computer-readable storage medium, the computer-readable storage medium including instructions that when executed by a computer, cause the computer to perform a method that is substantially the same as the method of claim 1.
Popov discloses the method of claim 1 (see above).
Popov further discloses implementing its method as a non-transitory computer-readable storage medium, the computer-readable storage medium including instructions that when executed by a computer, cause the computer to perform the method (e.g., [0022], [0034]-[0035]).
Accordingly, claim 6 is also rejected under 35 U.S.C. 102(a)(2) as being anticipated by Popov for substantially the same reasons as claim 1.
Regarding claim 7, Examiner notes that the claim recites a dentistry system comprising: a user interface; an image acquisition device configured to acquire a digital dental impression; and a computing unit for performing a method that is substantially the same as the method of claim 1.
Popov discloses the method of claim 1 (see above).
Popov further discloses implementing its method as a dentistry system (e.g., Fig. 1) comprising: a user interface (e.g., Fig. 1, input/selector module 103); an image acquisition device configured to acquire a digital dental impression (Note that this limitation invokes ‘112(f) – see Claim Interpretation above; The corresponding structure includes an intraoral scanner – e.g., [0036] of the published specification; Popov discloses an intraoral scanner – e.g., [0031]); and a computing unit for performing the method (e.g., [0020], processors).
Accordingly, claim 7 is also rejected under 35 U.S.C. 102(a)(2) as being anticipated by Popov for substantially the same reasons as claim 1.
Regarding claim 8, Popov discloses the dentistry system [of claim 7] (see ‘112(b) rejection above), wherein the image acquisition device is an intraoral scanner (e.g., [0031]) or an xray device.
Conclusion
The following prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
‘Lee’ (US 2023/0290093 A1)
Selects a particular analysis region for a specific dental treatment, then evaluates whether an acquired 3D dental model is sufficiently complete in that analysis region – e.g., Figs. 2 and 9-11
‘Boerjes’ (US 2012/0231421 A1)
Applies different types of quality control to a dental scan to determine whether it is satisfactory for use in preparing a treatment – e.g., Fig. 4
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GEOFFREY E SUMMERS whose telephone number is (571)272-9915. The examiner can normally be reached Monday-Friday, 7:00 AM to 3:30 PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Chan Park can be reached at (571) 272-7409. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GEOFFREY E SUMMERS/Examiner, Art Unit 2669
1 The Popov reference claims the benefit of U.S. Provisional Application no. 63/379,576 filed October 14, 2022, so it is effectively filed as of that date. MPEP 2154.01(b).
Prosecution Insights