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 .
Examiner’s Note
There are four Claims listings filed. Two dated 07/01/2026 and two dated 12/30/2024. One of the 2026 is in French and the other of the 2026 appears to be a translation of the foreign priority documents and does not take into account amendments made in one of the 2024 amended claims listing. Therefore, the claims filed on 12/30/2024 which state “This listing of claims will replace all prior versions, and listing, of claims in the application” will be examined.
Information Disclosure Statement
Non-Patent Literature documents 3 and 4 in the IDS dated 07/01/2026 were not found in the Application and therefore not considered.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “cover” of claim 13 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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: “an image acquisition apparatus” in claim 1.
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.
Regarding the image acquisition apparatus, paragraph [0021] discloses at least one camera. Therefore, the structure determine sufficient to take image is a camera or functional 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 Objections
Claim 1 is objected to because of the following informalities:
Claim 1, line 4, “mouthpiece opening, the surface” should read “mouthpiece opening, a surface”.
Claim 1, “the volume” should read “a volume”.
Appropriate correction is required.
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 3 – 8, 10, 12, 14 and 15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 3 recites the limitation “a camera less than 15 cm, preferably less than 7 cm”. It is unclear if the claimed range is less than 15 cm or 7 cm. For purposes of examination the claimed range is assumed to be less than 15 cm.
Claim 4 recites the limitation “a focal length of between 25 mm and 90 mm, preferably between 30 mm and 45 mm”. It is unclear if the claimed range is 25 – 90 mm or 30 – 45 mm. For purposes of examination, it is assumed to be 25 – 90 mm.
Claim 5 recites the limitation “being spaced less than 6 cm, preferably between 2.5 cm and 6 cm”. It is unclear if the claimed range is less than 6 cm or between 2.5 cm and 6 cm. For purposes of examination, it is assumed to be less than 6 cm.
Claim 6 recites the limitation “preferably comprising a connection socket”. It is unclear if the connection socket is part of the claimed invention or is functionally recited. For purposes of examination the connection socket is assumed to be part of the claimed device will be read as “a connection module for transferring images acquired by the image acquisition apparatus, the connection module comprising a connection socket for a data transfer cable, for example…”.
Claim 7 recites the limitation “preferably arranged along different lines of sight”. It is unclear if the different lines of sight are required or not due to the term “preferably”. For purposes of examination the different lines of sight are required, and the claim will be read as “at least two cameras arranged along different lines of sight”.
Claim 8 recites the limitation “the mouthpiece extending the hollow”. There appears to be a missing term, making the phrase indefinite. For purposes of examination claim 8 will be read as “the mouthpiece extending along the hollow support portion”.
Claim 12 recites the term “preferably” which makes the associated limitations indefinite. It is unclear if the memory, computer program and processor are part of the claimed invention or functionally recited. For purposes of examination, the memory, computer program and process are assumed to be part of the claimed invention and claim 12 will be read as “a control module for controlling the acquisition images, the control module comprising a memory….”.
Claim 14 appears to have some grammatical errors which make determining the metes and bounds of the claim difficult. For example, “a battering controlling”. It is unclear if this meant to be “a battery” or “a battery controller” or “a battery for controlling”. Likewise, for “electrically powering”. For purposes of examination claim 14 will be read as “an electronic board with a printed circuit and/or a battery and/or electrical power for the image acquisition apparatus”.
Claim 15 is dependent upon claim 13 but recites elements from claim 14 such as the electronic board and battery in addition to the cavity of claim 13. Therefore, it is unclear if claim 15 should depend from claim 14 or if these elements should be re-introduced in claim 15. For purposes of examination claim 15 is assumed to depend from claim 13 and will be read as “The device according to claim 13, further comprising an electronic board and/or a battery housed in the cavity”.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 – 6 and 8 -- 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Salah et al. (US 2018/0303580 A1).
Regarding claim 1, Salah discloses a device (Fig. 1, ref. 10) for extra-oral image taking, comprising
- a support comprising a hollow support portion (refs. 12a, 12b),
- a mouthpiece (ref. 14) carried by the hollow support portion, the mouthpiece defining a mouthpiece opening (ref. 16),
- an image acquisition apparatus (ref. 19, paragraph [0080]) for taking images through the mouthpiece opening (paragraph [0146-147]), the hollow support portion delimiting an image taking chamber Fig. 2, ref. 18), the image acquisition apparatus being at least partially, preferably entirely, housed in the image taking chamber (Fig. 2),
the support further comprising a grippable support portion which is mounted on the hollow support portion (either of refs. 15 or 18 may be considered a greppable support portion), the hollow support portion being removably secured to the grippable support portion (paragraph [0103] is ref. 15 is chosen or Fig. 2 is ref. 18 is chosen).
Salah discloses a mouthpiece having an opening (Fig. 1), but is silent that the a surface area covered by the opening is greater than 2 cm2. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the surface area covered by the opening to be greater than 2 cm2 to best fit oral openings of patients and since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 2, Salah discloses the device according to claim 1, except where the volume occupied by the image acquisition apparatus being less than 40 cm3. However paragraph [0147] discloses a variety of possible cameras with a variety of weights. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the volume occupied by the image acquisition apparatus being less than 40 cm3 to prevent undue stress on the mouth of the patient and since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 3, Salah discloses the device according to claim 1, the image acquisition apparatus being attached to the support (Fig. 1), preferably to the hollow support portion (Fig. 1), and comprising a camera (paragraph [0147]), but is silent that the camera is less than 15 cm, preferably less than 7 cm, away from the mouthpiece. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the camera to be less than 15 cm, preferably less than 7 cm, away from the mouthpiece to better provide appropriate distance for usable imaging and since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 4, Salah discloses the device according to claim 1, except wherein the camera has a focal length of between 25 mm and 90 mm, preferable between 30 mm and 45 mm. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the camera to have a focal length of between 25 mm and 90 mm, preferable between 30 mm and 45 mm for the purpose of enabling a full frame span and since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 5, Salah discloses the device according to claim 1, the image acquisition apparatus being spaced less than 6 cm, preferably between 2.5 cm and 6 cm, from the mouthpiece. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the camera to have a focal length of between 25 mm and 90 mm, preferable between 30 mm and 45 mm for the purpose of enabling a full frame span and since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 6, Salah discloses the device according to claim 1, comprising a connection module for transferring images acquired by the image acquisition apparatus, preferably comprising a connection socket for a data transfer cable, for example a USB® cable, or such a data transfer cable, or being a remote data transfer module, for example implementing the Wifi® or Bluetooth® data transfer protocol (Fig. 2 shows a standard cell phone which has sockets for connecting to power, computers or other devices that are fully capable of transferring data).
Regarding claim 8, Salah discloses the device according to claim 1, the hollow support portion extending longitudinally and the mouthpiece extending (“along”) the hollow support portion (Fig. 1).
Regarding claim 9, Salah discloses the device according to claim 1, the mouthpiece being a flange, in particular annular or in the form of part of a ring, extending radially outwards from one end of the hollow support portion (Fig. 4c).
Regarding claim 10, Salah discloses the device according to claim 8, the mouthpiece being integral with the hollow support portion (the mouthpiece is considered integral because it is required for completeness, or in other words for the device to work as intended).
Regarding claim 11, Salah discloses the device according to claim 1, the hollow support portion being arranged between the mouthpiece and the grippable support portion (when viewed along the “Y” access as shown in Fig. 1, the hollow support is between the greppable support ref. 15/44 and the mouthpiece ref. 14).
Regarding claim 12, Salah discloses the device according to claim 1, comprising a control module for controlling the acquisition of images, preferably comprising a memory storing a computer program and a processor for executing the computer program (paragraph [0042]), the computer program comprising instructions for guiding the user, for example by issuing a voice message, to position the device relative to the patient's teeth to a predetermined acquisition position and/or orientation (paragraph [0042]).
Regarding claim 13, Salah discloses the device according to claim 1, the grippable support portion (ref. 18) defining a cavity (the hollow portion as defined by ref. 18) and comprising a cover closing the cavity (the cover is considered the portion of ref. 18 that covers ref. 19 and the cavity).
Regarding claim 14, Salah discloses the device according to claim 1, comprising an electronic board with a printed circuit and/or a battery controlling and/or electrically powering the image acquisition apparatus (Fig. 2 shows a cell phone, thus having an electronic board with circuitry and batteries).
Regarding claim 15, Salah discloses the device according to claim 13, with the electronic board and/or battery housed in the cavity (the electronic board and/or battery are considered to be part of the cell phone and are shown to be housed in the cavity in Fig. 2).
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Salah et al. (US 2018/0303580 A1) in view of Marshall et al. (US 2023/0035538 A1).
Regarding claim 7, Salah discloses the device according to claim 1, except wherein the image acquisition apparatus comprising, or even consisting of, at least two cameras, preferably arranged along different lines of sight, and each for acquiring different views of the same dental scene.
Marshall teaches a dental system (Abstract) comprising at least two cameras (paragraph [0075]), each fully capable of acquiring different view of the same dental scene (due to the individual cameras). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Salah to include at least two cameras, as taught by Marshall, for the purpose of producing 3D images of the dental scene (paragraph [0075]).
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Salah et al. (US 2018/0303580 A1) in view of Stegall et al. (US 2016/0191901 A1).
Regarding claim 16, Salah discloses the device according to claim 13, except the cavity being made watertight, in particular by means of one or more seals. It is noted that Salah discloses that the cover is held “fast” (paragraph [0094], Fig. 7), but does not explicitly disclose a watertight fit by means of one or more seals.
Stegall teaches a 3D imaging apparatus for intra-oral scanning (Abstract, paragraph [0023]) comprising a watertight seal (paragraph [0037]). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Salah to have a watertight seal over the cavity, as taught by Stegall, for the purpose of permitting frequent submersion into disinfecting solution (paragraph [0037]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892 for prior art used in the current rejection and related oral imager and retractors.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TESSA M MATTHEWS whose telephone number is (571)272-8817. The examiner can normally be reached M - F 8am - 1pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eduardo Robert can be reached at (571) 272-4719. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TESSA M MATTHEWS/Examiner, Art Unit 3773
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