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 .
Applicant’s Response to the Non-Final Office Action
Illustration of Prior Art
The non-final Office action (“NFOA”) stated that Fig. 5 illustrated only prior art and should be marked as such. NFOA at 2-3. In response, the applicant has shown that while the figure itself is taken from the prior art, it is used in this application to illustrate features of the invention. See Remarks at 7-8. This is persuasive and this requirement is withdrawn.
§ 101 Rejection
Claims 1-20 were rejected in the NFOA under § 101 as being drawn to an abstract idea without significantly more. NFOA at 3-6. The applicant traverses, and argues that the claims as amended are either not directed to an abstract idea, or are eligible “because the claims improve computer functionality or another technology or technical field by improving computer processing of prosthetic shade determination, improving dental modeling, and improving computer-assisted dental treatment.” Remarks at 8-9. This is not entirely persuasive.
Claim 1 now recites that the shade that results from placing the prosthetic on a prepared tooth is modeled “by three-dimensional simulation of a model of the prosthetic placed on the digital model of the tooth of interest after preparation using the first shade and the second shade.” Claim 10 includes similar language. These claims are now eligible under § 101.
It is maintained, contrary to the applicant’s recent remarks (see Remarks at 8-9), that the claims recite steps that could practically be performed mentally. See NFOA at 3-4 for a discussion of why this is so. However, the amended claims integrate this abstract idea into a practical application. The limitation that is quoted above falls outside of the abstract idea. Based on this limitation, the claims are now “more than a drafting effort designed to monopolize the judicial exception.” MPEP 2106.04(d). Stated differently, it cannot be said that claims 1 and 10 are efforts to monopolize the abstract idea of determining a prosthetic shade based on the shade of the tooth before and after preparation. Instead, the claims now include meaningful limitations beyond this abstract idea that provide a practical use of the abstract idea steps. See id.
However, claim 16 remains drawn to ineligible subject matter. Unlike claims 1 and 10, claim 16 does not include limitations beyond abstract ideas that show that the claim as a whole is integrated into a practical application, or is significantly more than the abstract idea. See the § 101 rejection below.
Official notice was taken in the NFOA that certain limitations outside of the abstract idea were well known. See NFOA at 4-5. The applicant states that this was improper because official notice was relied upon “without providing documentary evidence or any technical line of reasoning underlying” the assertion. Remarks at 9. This is not persuasive. “Official notice unsupported by documentary evidence may be taken by the examiner where the facts asserted to be well-known, or to be common knowledge in the art, are ‘capable of such instant and unquestionable demonstration as to defy dispute.’” MPEP 2144.03(A) (emphasis mine). Such is the case here, where it was submitted that the “general purpose computing tools” that are recited in claim 1 were well known. NFOA at 4-5. While the rejection of claim 1 is withdrawn, the rejection of claims 16-20 relied on this same assertion. NFOA at 4-5. This position is maintained.
In addition, a technical line of reasoning was provided in the NFOA in the paragraph spanning pages 4 and 5. This discussion, which was referred to in the assertion of official notice on pg. 5, provided a “clear an unmistakable” line of reasoning as to why the noticed facts were stated to be well known. See MPEP 2144.03(B). Therefore the examiner maintains that the assertion of official notice was proper. The applicant has not substantively traversed this finding. “To adequately traverse a finding based on official notice, an applicant must specifically point out the supposed errors in the examiner’s action, which would include stating why the noticed fact is not considered to be common knowledge or well-known in the art.” MPEP 2144.03(C). No such statement has been provided.
§ 112 Rejections
All § 112 rejections that were made in the NFOA have been overcome by the recent amendment.
§103 Rejections
The amended claims overcome the prior art rejections that were described in the NFOA. New grounds of rejection are presented below addressing claims 1-15. Claims 16-18, while rejected under § 101, are allowable over the prior art.
Official notice was taken in the rejection of claims 4, 5, and 7 and not traversed by the applicant, rendering the noticed fact admitted prior art. See MPEP 2144.03(C).
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 16-18 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claims 16-18 recite “receive scan data”, “determine that the tooth of interest for shade capture is within a field of view”, “determine a location of one or more shade reference aids”, “capture a first shade of the tooth of interest along with one or more second shades of the one or more shade reference aids” and “adjust the first shade based on the one or more second shades.” These steps amount to an abstract idea of adjusting an unknown tooth shade based on a known shade reference aid. This is analogous to the mental process of calibrating the color of an image based on a known color that is captured in the same image. These steps could reasonably be performed in the human mind, such as by observing teeth in a scan image, and mentally judging that the apparent shade of a tooth in an image needs to be adjusted based on the appearance of the known shade tab in the image. As such these claims recite the abstract idea of observation, evaluation, and judgement, which falls under the “mental processes” category of abstract ideas. See MPEP 2106.04(a)(2)(III).
Claim 16 recites another, different abstract idea, including the steps of: “determine a first distance” between the capture device and a shade reference, “determine a second distance” between the capture device and the tooth, and if the two distances vary by more than a threshold, “provide feedback.” This amounts to a further “mental concept” abstract idea. These steps merely recite a process that a dental professional might undertake when scanning a patient – i.e., monitoring the relative distances from the scanner to the tooth and the shade reference tab. The claim only recites “’collecting information, analyzing it, and displaying certain results of the collection and analysis,’ where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind.” See MPEP 2106.04(a)(2)(III) and Electric Power Group v. Alstom, S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016).
Limitations outside of the “mental processes” abstract ideas include that the steps are performed by a processor executing instructions; using a “shade capture device”; and that the location of the shade reference is determined “automatically.” For reasons given in the NFOA (see pp. 3-5), these limitations are insufficient to amount to a practical application of, or significantly more than, the abstract idea. These additional features only use generic computing devices and technology to implement the abstract idea, and as such as insufficient to amount to an abstract idea. See MPEP 2106.04(d). In addition, as described in the NFOA pp. 4-5, official notice is taken (and was untraversed by the applicant: see above) that these features are well known in the art, and as such provide nothing more than what was well understood and conventional in the field. See MPEP 2106.05. Accordingly, these additional limitations do not amount to significantly more than the abstract idea.
Claims 16-18 are allowable over the prior art. However, the claim limitations that differentiate over the prior art are themselves a part of the abstract ideas. “An inventive concept cannot be furnished by the abstract idea itself.” MPEP 2106.05(I) (citation modified). Instead, for a claim to be eligible under § 101, there must exist claim elements outside of the abstract idea that provide such an inventive concept. As described above, claims 16-18 do not include any such elements. While these claims are not rejected §§ 102 or 103, they remain ineligible under § 101.
Claim Objections
Claim 14 is objected to because of the following informalities: claim 14 is drawn to “The system of any one of claims 10.” Appropriate correction is required. It will be assumed that this claim depends from claim 10 only.
Claim 16 was not amended in according with 37 CFR 1.121(b), which requires amendments to be made with “markings to indicate the changes that have been made relative to the immediate prior version of the claim.” Claim 16 shows the “adjust” limitation underlined, indicating that this limitation is new in this amendment. But this limitation was present in the prior version of the claims.
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.
Claims 1-5 and 10-14 are rejected under 35 U.S.C. 103 as being unpatentable over Derzapf, US 20230165666 in view of Durbin, US 20090133260.
Claim 1: Derzapf discloses a system for tooth shade imaging in dental treatment, the system comprising: one or more processors and memory comprising instructions that when executed by the one or more processors (Fig. 1 and its description) cause the system to:
receive scan data of a patient’s dentition (¶22);
determine that a tooth of interest for shade capture is within a field of view of a shade capture device (¶35 – a scan of the tooth to be restored is obtained. The POSITA would understand this to implicitly disclose determining that the tooth of interest is within the scan data. See e.g. ¶20. The scan data includes shade information, thus is a shade capture device.);
capture a second shade of the tooth of interest after tooth preparation (¶¶ 35 and 58-59 – the color of the tooth stump (i.e. the tooth after preparation) is obtained by the scanner as data that influences a final tooth color);
generate a digital model of the tooth of interest after tooth preparation (¶59 – a model of the prepared tooth is generated);
model a third shade resulting from placing a prosthetic on the tooth of interest after tooth preparation [based on] the digital model of the tooth of interest after preparation and the second shade (¶59 – using ML and 3D models, the color (shade) of the final prosthetic when placed on the treated tooth is modeled. This modeled color takes into account properties of the prosthetic (e.g. thickness, translucency, transparency, and reflection), as well as the color (i.e., the second shade) of the treated tooth).
Derzapf does not disclose that the third shade is modeled “by three dimensional simulation of a model of the prosthetic placed on the digital model of the tooth of interest after tooth preparation using the first shade and the second shade.” But this is suggested by Durbin.
Durbin discloses a 3D simulation of model of a prosthetic being placed on a digital model of a prepared tooth. Durbin ¶¶ 7, 16, 18, 26, and 30. The final color of the prosthetic is determined (that is, it is modeled) in this simulation based on the color and translucency of the prepared tooth (i.e. a second shade) and the properties of the prosthetic. Id. ¶¶ 19-21, 25, and 34. An initial color (i.e., first shade) of the tooth before preparation is captured, and this shade is also referenced to determine the final color (third shade) of the prosthetic. Id. ¶ 24.
It would have been obvious to the POSITA before the effective filing date of the claimed invention to modify Derzapf with these teachings in Durbin to arrive at the invention that is recited in this claim. The POSITA would have recognized that using Durbin’s 3D model simulation would have provided the user with an improved system that more accurately models the shade of the prosthetic. See e.g. Durbin ¶¶ 2-6.
Claim 2: Derzapf-Durbin discloses: determine a shade of the prosthetic so that the third shade matches the first shade (Durbin ¶ 24).
Claim 3: Derzapf-Durbin discloses: model the volume of the restoration and to model light characteristics of a material of the volume of the restoration (Derzapf ¶59 – the shape and thickness (therefore volume) of the restoration is modeled, as are the material’s light characteristics).
Claim 4: Derzapf-Durbin discloses that the light characteristics include transparency of the material of the volume of the restoration (¶59). Durbin also discloses capturing light scattering properties of a tooth (¶23).
Derzapf discloses determining refraction of light and “reflection behavior” of the material (¶¶ 20 and 59) but fails to disclose modeling light scattering of the material. But official notice is taken that this was well known in the art at the relevant time. Therefore it would have been obvious to the POSITA to modify Derzapf-Durbin to include this, the rationale being to provide an improved model, thereby providing a more accurate estimate of final tooth color.
Claim 5: Derzapf-Durbin discloses model the third shade when a plurality of wavelengths of light illuminate the prosthetic on the tooth of interest after tooth preparation (Derzapf ¶59 – the behavior of the material based on “light shining” through the veneer is modeled. The POSITA would understand this to describe a plurality of wavelengths, rather than a single wavelength).
In case it is argued that Derzapf-Durbin does not disclose modeling when a plurality of wavelengths illuminate the veneer, official notice is taken that this was well known. For example, to model the appearance of an object under standard lighting conditions, the POSITA would recognize that it was widely practiced to model natural daylight, which comprises a plurality of wavelengths. Therefore it would have been obvious to the POSITA to modify Derzapf-Saphier to include this, the rationale being to provide improved accuracy in the color estimates.
Claim 10: Derzapf discloses a system for tooth shade imaging in dental treatment, the system comprising: one or more processors and memory that when executed by the one or more processors (Fig. 1 and its description) cause the system to:
receive scan data of a patient’s dentition (¶22);
determine a tooth for restoration and a tooth of interest for shade capture; determine that the tooth of interest for shade capture is within a field of view of a shade capture device (¶35 – a scan of the tooth to be restored is obtained. The POSITA would understand this to implicitly disclose determining that the tooth of interest is within the scan data. See e.g. ¶20. The scan data includes shade information, thus is a shade capture device. The scope of this claim does not specify that the “tooth for restoration” is different from, or the same as, the “tooth of interest for shade capture.”);
capture a second shade of the tooth for restoration after tooth preparation (¶¶ 35 and 58-59 – the color of the tooth stump (i.e. the tooth after preparation) is obtained by the scanner as data that influences a final tooth color);
generate a digital model of the tooth for restoration after tooth preparation (¶59 – a model of the prepared tooth is generated);
model a third shade resulting from the application of a prosthetic on the tooth for restoration after tooth preparation using the digital model of the tooth for restoration after tooth preparation [based on] the digital model of the tooth of interest after preparation and the second shade (¶59 – using ML and 3D models, the color (shade) of the final prosthetic when placed on the treated tooth is modeled. This modeled color takes into account properties of the prosthetic (e.g. thickness, translucency, transparency, and reflection), as well as the color of the treated tooth).
Derzapf does not disclose that the third shade is modeled “by three dimensional simulation of a model of the prosthetic placed on the digital model of the tooth of interest after tooth preparation using the first shade and the second shade.” But this is suggested by Durbin.
Durbin discloses a 3D simulation of model of a prosthetic being placed on a digital model of a prepared tooth. Durbin ¶¶ 7, 16, 18, 26, and 30. The final color of the prosthetic is determined (that is, it is modeled) in this simulation based on the color and translucency of the prepared tooth (i.e. a second shade) and the properties of the prosthetic. Id. ¶¶ 19-21, 25, and 34. An initial color (i.e., first shade) of the tooth before preparation is captured, and this shade is also referenced to determine the final color (third shade) of the prosthetic. Id. ¶ 24.
It would have been obvious to the POSITA before the effective filing date of the claimed invention to modify Derzapf with these teachings in Durbin. The POSITA would have recognized that using Durbin’s 3D model simulation would have provided the user with an improved system that more accurately models the shade of the prosthetic. See e.g. Durbin ¶¶ 2-6.
Claims 11-14 see rejection of claims 2-5.
Claims 6-7 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Derzapf-Durbin in view of Kopelman, US 20150320320.
Claim 6: Derzapf-Durbin fails to disclose that the instructions that determine that a tooth of interest for shade capture is within a field of view of a shade capture device includes instructions to: receive data from the shade capture device; compare the data from the shade capture device to the scan data of the patient’s dentition; and identify that the tooth of interest for shade capture is within the field of view of the shade capture device based on the comparison.
Kopelman discloses receive data from a first scanner; compare the data from the first scanner to scan data of the patient’s dentition; and identify the tooth of interest for is within the field of view of the first scanner device based on the comparison (¶¶71-74).
It would have been obvious to a skilled artisan before the effective filing date of the claimed invention to modify Derzapf-Durbin with Kopelman, the rationale being to automate, and therefore simplify, identification of the tooth of interest.
Claim 7: Derzapf-Durbin-Kopelman discloses that the instructions that determine that a tooth of interest for shade capture is within a field of view of a shade capture device includes instructions to: receive data from the shade capture device; compare the data from the shade capture device to the scan data of the patient’s dentition; and identify the teeth within the field of view of the shade capture device based on the comparison (Kopelman ¶¶ 71-74).
Derzapf-Durbin-Kopelman fails to disclose determine whether or not the tooth of interest is identified within the field of view; provide feedback to a user based on the determination. Official notice is taken that this was well known in the art at the relevant time. Therefore it would have been obvious to the POSITA to modify Derzapf-Durbin-Kopelman to include this, the rationale being to hasten identification of the tooth of interest.
Claim 15: see rejection of claims 6-7.
Claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Derzapf- Durbin in view of Pesach, US 20200205942.
Claim 8: Derzapf-Durbin fails to disclose: determine an angle between the shade capture device and the tooth of interest; provide feedback to a user of the shade capture device based on the angle.
Pesach discloses determine an angle between a scanning device and a patient’s teeth; provide feedback to a user of the device based on the angle (¶¶ 215-216 and 218 – the angle of a scanning device relative to a patient’s tooth is determined. If adjustment is necessary, feedback is provided to the operator).
It would have been obvious to a skilled artisan before the effective filing date of the claimed invention to modify Derzapf-Durbin with Pesach, the rationale being to ensure that scan data of optimal quality is gathered.
Claim 9: Derzapf-Durbin-Pesach discloses that the feedback includes an indication of how to adjust the position or orientation of the shade capture device is within an angle range of the normal of a surface of the tooth of interest for shade capture (This is suggested in Pesach ¶¶ 216 and 218).
Allowable Subject Matter
Claims 16-18 are allowable over the prior art for reasons given previously. See NFOA at 16. However, these claims are rejected under § 101 above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT J HANCE whose telephone number is (571)270-5319. The examiner can normally be reached M-F 11:00am-7:00pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Fuelling can be reached at (571) 270-1367. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT J HANCE/Reexamination Specialist, Art Unit 3992
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