DETAILED ACTION
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 08/05/2026 was filed after the mailing date of the Non-Final Office Action on 03/31/2026. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Response to Arguments
Applicant’s arguments filed on 08/30/2026 with respect to claims 1-17 have been considered but are moot because the new grounds of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Note that the new grounds of rejection are necessitated by the IDS filed on 08/05/2026.
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 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of co-pending Application No. 18/875,411 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are encompassed by the co-pending application claims. The only difference between the instant claims and co-pending claims is the terminology of “characterized in that” recited in the instant independent claims 1 and 13. Please refer to the following table for corresponding claims of the two applications.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Instant Claims (18/875,766)
Co-pending Claims (18/875,411)
1. A handheld intraoral scanning device for acquiring intraoral scan data from a three-dimensional dental object during a scanning session, the handheld intraoral scanning device comprising: a processing unit configured to process intraoral scan data of a patient and provide 3D image data; a wireless interface configured to transmit the 3D image data; and a memory wherein the processing unit is configured to: receive a mode request via the wireless interface when no 3D image data is transmitted, wherein the mode request is one or more of a service mode request for a service mode, a customization mode request for customizing a user interface of the handheld intraoral scanning device; an upgrade mode request for upgrading the handheld intraoral scanning device, and a debug mode request, wherein the service mode is characterized in that a firmware part of the memory is writable; authenticate the mode request to confirm that the mode request is valid for the handheld intraoral scanning device; and place the handheld intraoral scanning device into the requested mode if authentication of the mode request succeeds.
2. A handheld intraoral scanning device according to claim 1, wherein the processing unit is configured to place the intraoral scanning device into a default mode if authentication of the mode request fails.
3. A handheld intraoral scanning device according to claim 2, wherein the default mode comprises booting the handheld intraoral scanning device and operating the handheld intraoral scanning device according to operating parameters set during booting.
4. A handheld intraoral scanning device according claim 1, wherein the processing unit is configured to authenticate the mode request by authenticating the sender of the mode request.
5. A handheld intraoral scanning device according to claim 1, wherein the processing unit is configured to authenticate the mode request by verifying integrity of the mode request.
6. A handheld intraoral scanning device according to claim 1, wherein to place the handheld intraoral scanning device into the requested mode if authentication of the mode request succeeds comprises sending a mode response.
7. A handheld intraoral scanning device according to claim 1, wherein the mode request is received in a session and the processing unit is configured to terminate the session if authentication of the mode request fails.
8. A handheld intraoral scanning device according to claim 1, wherein the mode request comprises a signature, and wherein to authenticate the mode request comprises to verify the signature of the mode request.
9. A handheld intraoral scanning device according to claim 1, wherein when the handheld intraoral scanning device is in a service mode, the processing unit is configured to generate a session identifier, to transmit the session identifier via the wireless interface and to store the session identifier in the handheld intraoral scanning device.
10. A handheld intraoral scanning device according to claim 1, wherein when the handheld intraoral scanning device is in a service mode, the processing unit is configured to receive data via the wireless interface, wherein the processing unit is configured to authenticate the received data and store intraoral scanning device data in a part of the memory based on the received data if authentication of the data succeeds.
11. handheld intraoral scanning device according to claim 10, wherein the data comprises a session identifier, and wherein to authenticate the data comprises to compare the received session identifier with the session identifier stored in the handheld intraoral scanning device.
12. A handheld intraoral scanning device according to claim 10, wherein the data is received in a session and the processing unit is configured to terminate the session if authentication of the received data fails.
13. Method for configuration of a handheld intraoral scanning device comprising a processing unit configured to process intraoral scan data of a patient and provide 3D image data, a memory, and a wireless interface configured to transmit the 3D image data, the method comprising: receiving a mode request via the wireless interface when no 3D image data is being transmitted, wherein the mode request is one or more of a service mode request for updating firmware data, a customization mode request for customizing a user interface of the handheld intraoral scanning device, an upgrade mode request for upgrading the handheld intraoral scanning device, and a debug mode request, and wherein the service mode is characterized in that a firmware part of the memory is writable; authenticating the mode request to confirm that the mode request is valid for the handheld intraoral scanning device; and placing the handheld intraoral scanning device into the requested mode if authentication of the mode request succeeds.
14. Method according to claim 13, the method comprising placing the handheld intraoral scanning device into a default mode if authentication of the mode request fails.
15. Method according to claim 13, wherein authenticating the mode request comprises authenticating the sender of the mode request.
16. Method according to claim 13, wherein authenticating the mode request comprises verifying integrity of the mode request.
17. Method according to claim 13, wherein when the handheld intraoral scanning device is in a service mode, the method comprises: receiving data via the wireless interface, authenticating the received data; and storing intraoral scanning device data in a part of the memory based on the received data if authentication of the data succeeds.
1. A handheld intraoral scanning device for acquiring intraoral scan data from a three-dimensional dental object during a scanning session, the handheld intraoral scanning device comprising: a processing unit configured to process intraoral scan data of a patient and provide 3D image data; a wireless interface configured to transmit the 3D image data; and a memory wherein the processing unit is configured to: receive a mode request via the wireless interface when no 3D image data is transmitted, wherein the mode request is one or more of a service mode request for a service mode, a customization mode request for customizing a user interface of the handheld intraoral scanning device; an upgrade mode request for upgrading the handheld intraoral scanning device, and a debug mode request, wherein the service mode is firmware part of the memory is writable; authenticate the mode request to confirm that the mode request is valid for the handheld intraoral scanning device; and place the handheld intraoral scanning device into the requested mode if authentication of the mode request succeeds.
2. The handheld intraoral scanning device according to claim 1, wherein the processing unit is configured to place the intraoral scanning device into a default mode if authentication of the mode request fails.
3. The handheld intraoral scanning device according to claim 2, wherein the default mode comprises booting the handheld intraoral scanning device and operating the handheld intraoral scanning device according to operating parameters set during booting.
4. The handheld intraoral scanning device according to claim 1, wherein the processing unit is configured to authenticate the mode request by authenticating the sender of the mode request.
5. The handheld intraoral scanning device according to claim 1, wherein the processing unit is configured to authenticate the mode request by verifying integrity of the mode request.
6. The handheld intraoral scanning device according to claim 1, wherein to place the handheld intraoral scanning device into the requested mode if authentication of the mode request succeeds comprises sending a mode response.
7. The handheld intraoral scanning device according to claim 1, wherein the mode request is received in a session and the processing unit is configured to terminate the session if authentication of the mode request fails.
8. A handheld intraoral scanning device according to claim 1, wherein the mode request comprises a signature, and wherein to authenticate the mode request comprises to verify the signature of the mode request.
9. The handheld intraoral scanning device according to claim 1, wherein when the handheld intraoral scanning device is in a service mode, the processing unit is configured to generate a session identifier, to transmit the session identifier via the wireless interface and to store the session identifier in the handheld intraoral scanning device.
10. The handheld intraoral scanning device according to claim 9, wherein when the handheld intraoral scanning device is in a service mode, the processing unit is configured to receive data via the wireless interface, wherein the processing unit is configured to authenticate the received data and store intraoral scanning device data in a part of the memory based on the received data if authentication of the data succeeds.
11. The handheld intraoral scanning device according to claim 10, wherein the data comprises a session identifier, and wherein to authenticate the data comprises comparing the received session identifier with the session identifier stored in the handheld intraoral scanning device.
12. The handheld intraoral scanning device according to claim 10, wherein the data is received in a session and the processing unit is configured to terminate the session if authentication of the received data fails.
13. A method for configuration of a handheld intraoral scanning device comprising a processing unit configured to process intraoral scan data of a patient and provide 3D image data, a memory, and a wireless interface configured to transmit the 3D image data, the method comprising: receiving a mode request via the wireless interface when no 3D image data is being transmitted, wherein the mode request is one or more of a service mode request for updating firmware data, a customization mode request for customizing a user interface of the handheld intraoral scanning device, an upgrade mode request for upgrading the handheld intraoral scanning device, and a debug mode request, and wherein the service mode is a firmware part of the memory is writable; authenticating the mode request to confirm that the mode request is valid for the handheld intraoral scanning device; and placing the handheld intraoral scanning device into the requested mode if authentication of the mode request succeeds.
14. The method according to claim 13, the method comprising placing the handheld intraoral scanning device into a default mode if authentication of the mode request fails.
15. The method according to claim 13, wherein authenticating the mode request comprises authenticating the sender of the mode request.
16. The method according to claim 13, wherein authenticating the mode request comprises verifying integrity of the mode request.
17. The method according to claim 13, wherein when the handheld intraoral scanning device is in a service mode, the method comprises: receiving data via the wireless interface, authenticating the received data; and storing intraoral scanning device data in a part of the memory based on the received data if authentication of the data succeeds.
Claim Rejections - 35 USC § 102/103
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.
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 1-17 are rejected under 35 U.S.C. 102(a)(2) as anticipated by Lee et al. (US 2024/0129447 A1, hereinafter “Lee”) or, in the alternative, under 35 U.S.C. 103 as obvious over Lee in view of Pedersen et al. (US 2016/0173997 A1, hereinafter “Pedersen”).
Regarding claim 1, Lee discloses a handheld intraoral scanning device for acquiring intraoral scan data from a three-dimensional dental object during a scanning session (Figs. 1-5 and par. [0040]), the handheld intraoral scanning device comprising:
a processing unit (511) configured to process intraoral scan data of a patient and provide 3D image data; a wireless interface (515) configured to transmit the 3D image data; and
a memory (512) (Fig. 5 and par. [0154]-[0156] & [0160]);
wherein the processing unit is configured to:
receive a mode request via the wireless interface when no 3D image data is transmitted (see par. [0106] & [0063], wherein no 3D image is transmitted in the standby mode by inherency, and the processor can receive a remote control mode request from the user via the wireless interface during the standby mode in which the wireless communication is in an active state to receive a control signal from the external processing device 520), wherein the mode request is one or more of a service mode request for a service mode, a customization mode request for customizing a user interface of the handheld intraoral scanning device, an upgrade mode request for upgrading the handheld intraoral scanning device, and a debug mode request, wherein the service mode is characterized in that a firmware part of the memory is writable (see par. [0073]-[0074], [0119]-[0121], [0148], wherein the mode request includes a custom setting of the device desired by the user, hence encompassing a service mode and/or a customization mode. It should be noted that a firmware part of the memory is inherently writable during the settings by the user in order to write the set values into the memory prior to scanning/operating. Due to alternative limitations recited in the claim by “one or more of….”, not all limitations are necessarily considered in this claim);
authenticate the mode request to confirm that the mode request is valid for the handheld intraoral scanning device; and place the handheld intraoral scanning device into the requested mode if authentication of the mode request succeeds (see par. [0062]-[0063], [0073]-[0074], [0119]-[0121]. Note that the authentication for mode request is inherent in the system of Lee as the remote control request is granted by the scanning device, and thereafter, the user may operate and change the setting of the device through an external processing device 520).
In an alternative rejection, the Examiner would like to submit that, even in a case where Lee is silent regarding “an upgrade mode request for upgrading the handheld intraoral scanning device, and a debug mode request, wherein the service mode is characterized in that a firmware part of the memory is writable; authenticate the mode request to confirm that the mode request is valid for the handheld intraoral scanning device; and place the handheld intraoral scanning device into the requested mode if authentication of the mode request succeeds.”, this feature is well taught by Pedersen. According to Pedersen, a processing unit of a medical device (101) to be configured to receive a mode request via a wireless interface, wherein the mode request is one or more of a service mode request for a service mode, a customization mode request for customizing a user interface of a device, an upgrade mode request for upgrading the device, and a debug mode request, wherein the service mode is characterized in that a firmware part of a memory is writable; authenticate the mode request to confirm that the mode request is valid for the device; and place the device into the requested mode if authentication of the mode request succeeds (see Pedersen, Figs. 1-5 and par. [0082]-[0083] & [0072]-[0074]).
Therefore, it would have been obvious to one of ordinary skill in the art to combine the teachings of Lee and Pedersen to obtain one or more mode request(s) for servicing, updating/upgrading the firmware of the device as claimed so that the handheld intraoral scanning device would be always up-to-date for optimal security and performance.
Regarding claim 2, the combined teaching of Lee and Pedersen also clearly discloses that the processing unit is configured to place the intraoral scanning device into a default mode of authentication of the mode request fails (see Lee, par. [0124], and Pedersen, Fig. 5 and par. [0083]).
Regarding claim 3, as clearly taught by the combined teaching of Lee and Pedersen, the default mode comprises booting the handheld intraoral scanning device and operating the handheld intraoral scanning device according to operating parameters set during booting (Lee, par. [0124], and Pedersen, par. [0076] & claim 3).
Regarding claim 4, further disclosed by the combination of Lee and Pedersen is that the processing unit is configured to authenticate the mode request by authenticating the sender of the mode request (note discussion regarding disclosure in Lee, and also Pedersen, par. [0047], [0051] & claim 4).
Regarding claim 5, the combination of Lee and Pedersen also discloses that the processing unit is configured to authenticate the mode request by verifying integrity of the mode request (Pedersen, par. [0052] & claim 5).
Regarding claim 6, further clearly seen in the combination of Lee and Pedersen is placing the handheld intraoral scanning device into the requested mode if authentication of the mode request succeeds comprises sending a mode response (Pedersen, par. [0054], [0076] & claim 7).
Regarding claim 7, as further disclosed by Lee and Pedersen, the mode request is received in a session and the processing unit is configured to terminate the session if authentication of the mode request fails (Pedersen, par. [0083] & [0085]).
Regarding claim 8, it is also seen in the combination of Lee and Pedersen that the mode request comprises a signature, and wherein to authenticate the mode request comprises to verify the signature of the mode request (Pedersen, par. [0083] & claim 9).
Regarding claim 9, as also disclosed by Lee and Pedersen, when the handheld intraoral scanning device is in a service mode, the processing unit is configured to generate a session identifier, to transmit the session identifier via the wireless interface and to store the session identifier in the handheld intraoral scanning device (Pedersen, par. [0083] & claim 10).
Regarding claim 10, the combination of Lee and Pederson further discloses that when the handheld intraoral scanning device is in a service mode, the processing unit is configured to receive data via the wireless interface, wherein the processing unit is configured to authenticate the received data and store intraoral scanning device data in a part of the memory based on the received data if authentication of the data succeeds (Lee, par. [0119]-[0121] and Pedersen, par. [0083] & claim 11).
Regarding claim 11, it is disclosed in the combination of Lee and Pedersen that the data comprises a session identifier, and wherein to authenticate the data comprises to compare the received session identifier with the session identifier stored in the handheld intraoral scanning device (Pedersen, par. [0083] & claim 12).
Regarding claim 12, it is clearly disclosed in the combination of Lee and Pedersen that the data is received in a session and the processing unit is configured to terminate the session if authentication of the received data fails (Pedersen, par. [0083] & claim 13).
Regarding claims 13-17, the limitations of these claims are also met by the combined teaching of Lee and Pedersen as discussed in claims 1-5 and 10 above, respectively.
Conclusion
Applicant's submission of an information disclosure statement (IDS) under 37 CFR 1.97(c) with the timing fee set forth in 37 CFR 1.17(p) on 08/05/2026 prompted the new ground(s) of rejection presented in this Office action.
Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 609.04(b). 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 NHAN T TRAN whose telephone number is (571)272-7371. The examiner can normally be reached Monday - Friday, 9:00am - 5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lin Ye can be reached at 571-272-7372. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NHAN T TRAN/Primary Examiner, Art Unit 2638
