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 .
Status of Claims
This action is in response to application 18/912529 filled on 11/27/2024.
Claims 1-20 have been added new.
Claims 1-20 are currently pending.
Detailed Action
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. US 12169832 and 1-20 of US Patent NO. 10885521. Although the claims at issue are not identical, they are not patentably distinct from each other because: referring to MPEP 804 II.B.2. Anticipation Analysis, “The claim under examination is not patentably distinct from the reference claim(s) if the claim under examination is anticipated by 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, 1052, 29 USPQ2d 2010, 2015-16 (Fed. Cir. 1993). This type of nonstatutory double patenting situation arises when the claim being examined is, for example, generic to a species or sub-genus claimed in a conflicting patent or application, i.e., the entire scope of the reference claim falls within the scope of the examined claim.” Here, claim under examination is anticipated by the reference claim(s) since the claims recite substantially similar limitations. Particularly, the entire scope of independent claims of Patent US 12169832 and 10885521 falls within the scope of independent claims of the present application.
The following is a mapping of the claims of the Patent ‘832 against the claims of the present application:
Present Application
Patent 12169832
Identified differences and rationale as to why that does not amount to a patentable difference.
1.(New) A computer-implemented method using a system that includes a dental appliance laboratory in communication with a financing service, a dental practitioner, and a putative patient the method comprising:
updating a database of the financing service to indicate that the putative patient is pre- approved for a maximum financed amount of treatment loan for implementing a treatment plan; establishing master access to the database for the dental appliance laboratory, wherein the master access provides the dental appliance laboratory with an ability to monitor the database by receiving updates regarding payment status of the putative patient's financing and an ability to edit and search the database;
sending, from the financial service to the dental appliance laboratory, an indication of an acceptance from the putative patient of the treatment loan, or an indication that payment for at least a portion of the treatment loan from the putative patient has been received;
receiving, from the dental appliance laboratory to the financing service, an indication that an order for manufacturing one or more dental appliances for treating the putative patient according to the treatment plan has been fulfilled; and triggering a payment, from the financial service to the dental practitioner, in response to receiving the indication that the order has been fulfilled.
21. (Previously Presented) A computer-implemented method using a system that includes a financing server in communication with a putative patient, a dental appliance laboratory and a dental practitioner, the method comprising: updating a database of the financing server to indicate that the putative patient is pre- approved for a treatment loan;
establishing, by the financing server, different levels of access to the database for the dental appliance laboratory and the dental practitioner, wherein master access to the database is provided to the dental appliance laboratory, and client access to the database is provided to the dental practitioner, wherein the master access provides the dental appliance laboratory with an ability to monitor the database by receiving alerts from the financing server regarding different stages of the putative patient's financing;
receiving, from the dental practitioner, a treatment cost representing a cost of the dental practitioner to implement a treatment plan for treating the putative patient's dentition using a series of dental appliances; providing, to the dental appliance laboratory, a first alert indicating that the treatment cost from the dental practitioner was
received by the financing server; receiving, from the dental practitioner or the putative patient, an acceptance of a specific financing option; providing, to the dental appliance laboratory, a second alert indicating that funding for an actual financed amount for the putative patient has been received; and triggering payment to the dental practitioner and the dental appliance laboratory in response to receiving an indication from dental appliance laboratory that a treatment order has been fulfilled
This is not a patentable difference because the present the present claim is anticipated by the patented claim.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 1:
Claims 1-20 are drawn to a method and system, which is/are statutory categories of invention (Step 1: YES).
Step 2A Prong One:
Independent claims 1 and 11 recite updating a database of the financing service; sending an indication of an acceptance from the putative patient of the treatment loan; and receiving an indication that an order for manufacturing one or more dental appliances for treating the putative patient according to the treatment plan has been fulfilled.
The recited limitations, as drafted, under their broadest reasonable interpretation, cover certain methods of organizing human activity by identifying and reporting events preceding a pattern in a set of user data. If a claim limitation, under its broadest reasonable interpretation, covers managing personal behavior or relationships or interactions between people, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claims recite an abstract idea (Step 2A Prong One: YES).
Step 2A Prong Two:
This judicial exception is not integrated into a practical application. The claims are abstract but for the inclusion of the additional elements including a computer in claim 1 and processors in claim 11, which are additional elements that are recited at a high level of generality such that they amount to no more than mere instruction to apply the exception using generic computer components. See: MPEP 2106.05(f).
The claims recite the additional element of triggering a payment, which is considered limitation directed to insignificant extra-solution activity that does not amount to an inventive concept because the limitation does not impose meaningful limits on the claim such that is it not nominally or tangentially related to the invention. In the claimed context, the claimed triggering limitation is incidental to the performance of the recited abstract idea of identifying and reporting events preceding a pattern in a set of user data. See: MPEP 2106.05(g).
The combination of these additional elements is no more than mere instructions to apply the exception using generic computer components. Accordingly, even in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Hence, the additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Accordingly, the claims are directed to an abstract idea (Step 2A Prong Two: NO).
Step 2B:
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, using the additional elements to perform the abstract idea amounts to no more than mere instructions to apply the exception using generic components. Mere instructions to apply an exception using a generic components cannot provide an inventive concept. See: MPEP 2106.05(f).
Further, the claimed additional elements, identified above, are not sufficient to amount to significantly more than the judicial exception because they are generic components that are not integrated into the claim because they are merely incidental or token additions to the claim that do not alter or affect how the process steps or functions in the abstract idea are performed. Therefore, the claimed additional elements do not add meaningful limitations to the indicated claims beyond a general linking to a technological environment. See: MPEP 2106.05(h).
Further, the claimed additional elements, identified above, are not sufficient to amount to significantly more than the judicial exception because they are generic components that are configured to perform well-understood, routine, and conventional activities previously known to the industry. See: MPEP 2106.05(d). Said additional elements are recited at a high level of generality and provide conventional functions that do not add meaningful limits to practicing the abstract idea. The originally filed specification supports this conclusion at Figure 1, and
Paragraph 15, where “The putative patient may be presented with loan information and/or dental information (including payment plans) on a handheld device. For example, any of these methods may include presenting to the putative patient a user interface on the putative patient’s handheld mobile device (e.g., phone, smartphone, tablet, smartwatch, etc.) that is configured to receive the patient information and a request for financing of a series of dental aligners, wherein the user interface communicates with a remote processor.”
Paragraph 56, where “The computer-readable medium 1702 and other computer readable media discussed in this paper are intended to represent a variety of potentially applicable technologies. For example, the computer-readable medium 1702 can be used to form a network or part of a network. Where two components are co-located on a device, the computer-readable medium 1702 can include a bus or other data conduit or plane. Where a first component is co-located on one device and a second component is located on a different device, the computer-readable medium 1702 can include a wireless or wired back-end network or LAN. The computer-readable medium 1702 can also encompass a relevant portion of a WAN or other network, if applicable. As noted herein, the computer-readable medium 1702 may be configured to couple one or more of the elements of the coordinated aligner payment alert environment 1700 to one another. In this example, the computer-readable medium 1702 couples the putative patient system 1710, the dental aligner manufacturing system 1720 (alternatively referred to herein as a laboratory system), the aligner finance system(s) 1730, the dental practitioner system 1740, and the automated milestone management system 1760 to one another.”
Paragraph 63, where “The aligner manufacture trigger engine(s) 1722 may implement one or more automated agents configured to manage aligner manufacture triggers. An “aligner manufacture trigger,” as used herein, may include computer program instructions and/or code configured to trigger instructions to manage aligner manufacturing parameters. Aligner manufacture triggers may be based on or coordinated with achievement of a payment milestone. A “payment milestone,” as used herein, may include an event related to fulfillment of a condition to pay for aligners. Examples of payment milestones include achievement of pre-approval (e.g., pre-qualification or qualification for a loan for aligners) by a customer, satisfaction of an obligation to pay a portion of a debt related to aligners (e.g., payment of a down payment related to a loan for aligners), etc. As noted herein, payment milestones may be provided in the form of notification triggers from the automated milestone management system 1760.”
The claims recite the additional element of triggering a payment, which amounts to extra-solution activity concerning mere data displaying. The specification (e.g., as excerpted above) does not provide any indication that the additional elements are anything other than well‐understood, routine, and conventional functions when claimed in a merely generic manner (as they are here). See: MPEP 2106.05(g).
Viewing the limitations as an ordered combination, the claims simply instruct the additional elements to implement the concept described above in the identification of abstract idea with routine, conventional activity specified at a high level of generality in a particular technological environment.
Hence, the claims as a whole, considering the additional elements individually and as an ordered combination, do not amount to significantly more than the abstract idea (Step 2B: NO).
Dependent claim(s) 2-10 and 12-20 when analyzed as a whole, considering the additional elements individually and/or as an ordered combination, are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitation(s) fail(s) to establish that the claim(s) is/are not directed to an abstract idea without significantly more. These claims fail to remedy the deficiencies of their parent claims above, and are therefore rejected for at least the same rationale as applied to their parent claims above, and incorporated herein.
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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-5 and 7-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (US 2017/0046709 A1) in view of Dawson et al. (US 2015/0019252 A1).
In claim 1, a computer-implemented method using a system that includes a dental appliance laboratory in communication with a financing service, a dental practitioner, and a putative patient the method comprising:
Lee teaches:
updating a database of the financing service to indicate that the putative patient is pre- approved for a maximum financed amount of treatment loan for implementing a treatment plan (Para. 182 and 193 wherein approving a credit transaction for a merchant is taught. Lee does not explicitly teach wherein the treatment is for a patient however Dawson teaches in Para. 227 wherein financing options for a patient is taught);
Lee further teaches:
establishing master access to the database for the dental appliance laboratory (, wherein the master access provides the dental appliance laboratory with an ability to monitor the database by receiving updates regarding payment status of the putative patient's financing and an ability to edit and search the database (Para. 78, 82, and 91 wherein different levels of access is taught including a master access with the ability to modify data. Lee does not explicitly teach wherein the data is of a dental appliance laboratory, however Dawson teaches Parts supplier, Dental lap, doctors, and etc. have access to database for tracking treatment as seen in figure 1 and Para. 126);
Lee further teaches:
sending, from the financial service to the dental appliance laboratory, an indication of an acceptance from the putative patient of the treatment loan, or an indication that payment for at least a portion of the treatment loan from the putative patient has been received (Para. 193 wherein approving a transaction is taught);
receiving, from the dental appliance laboratory to the financing service, an indication that an order for manufacturing one or more dental appliances for treating the putative patient according to the treatment plan has been fulfilled (Para. 155 and 158 wherein confirmation of an event is taught); and
triggering a payment, from the financial service to the dental practitioner, in response to receiving the indication that the order has been fulfilled (Para. 158 and 189 wherein authorizing releasing funds or payments according to rules is taught).
It would have been obvious to one of ordinary skill in the art at the time of filling to combine the product tracking and control system as taught in Lee with the dental implant management system as taught in Dawson. The well-known elements described are merely a combination of old elements, and in combination, each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
As per claim 2, Lee in view of Dawson teach the computer-implemented method of claim 1. Lee does not explicitly teach however Dawson further comprising:
receiving, from the dental appliance laboratory to the financing service, a laboratory cost to provide the one or more dental appliances according to the treatment plan (Para. 12);
receiving, from the dental practitioner, a treatment cost for the dental practitioner to implement the treatment plan (12-13); and
providing the putative patient with one or more financing options to finance the treatment plan (Para. 227).
The motivation to combine references is the same as seen in claim 1.
As per claim 3, Lee teaches the computer-implemented method of claim 1, further comprising triggering a second payment, from the financial service to the dental appliance laboratory, in response to receiving the indication that the order has been fulfilled (Para. 169 and 189 wherein payments are triggered when the transaction is completed)
As per claim 4, Lee in view of Dawson teach the computer-implemented method of claim 1. Lee does not explicitly teach however Dawson teaches, wherein the master access to the database further provides the dental appliance laboratory an ability to contact the putative patient to request information regarding the treatment plan (Para. 190-195). The motivation to combine references is the same as seen in claim 1.
As per claim 5, Lee in view of Dawson teach the computer-implemented method of claim 1. Lee does not explicitly teach however Dawson teaches computer-implemented method of claim 1, further comprising:
receiving, from the dental appliance laboratory to the financing service, a request to adjust a maximum finance amount of the treatment loan; and
updating the database with the adjusted maximum finance amount (Para. 227 wherein financing options ). The motivation to combine references is the same as seen in claim 1.
As per claim 7, Lee teaches the computer-implemented method of claim 1, further comprising establishing client access to the database for the dental practitioner, wherein the master access has greater access to the database compared to the client access (Para. 78, 82, and 91 wherein different levels of access is taught including a master access with the ability to modify data).
As per claim 8, Lee in view of Dawson teach the computer-implemented method of claim 1. Lee does not explicitly teach however Dawson teaches computer-implemented method of claim 1, further comprising providing, from the dental appliance laboratory to the dental practitioner, one or more treatment product options for treating the putative patient (Para. 370-375). The motivation to combine references is the same as seen in claim 1.
As per claim 9, Lee in view of Dawson teach the computer-implemented method of claim 1. Lee does not explicitly teach however Dawson teaches computer-implemented method of claim 1, further comprising instructing the dental appliance laboratory, from the financial service, to manufacture a series of aligners in response to the acceptance from the putative patient of the treatment loan (Para. 295-296). The motivation to combine references is the same as seen in claim 1.
As per claim 10, Lee teaches the computer-implemented method of claim 1, further comprising establishing client access to the database for the dental practitioner, wherein the client access does not provide the dental practitioner the ability to receive updates regarding the payment status (Para. 47 and 48 wherein rules are established and modified for tracking information).
Claims 11-20 recite substantially similar limitations as seen above and hence are rejected for similar rationale as noted above.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (US 2017/0046709 A1) in view of Dawson et al. (US 2015/0019252 A1) as applied to claims above, and further in view of Capelli et al. (US 2008/0154637 A1).
As per claim 6, Lee in view of Dawson teach the computer-implemented method of claim 5. Lee and Dawson do not explicitly teach however Capelli teaches, wherein the maximum finance amount is adjusted based a treatment risk associated with treatment of the putative patient (Capelli, Para. 166 wherein adjusting treatment cost based on patient risk is taught).
It would have been obvious to one of ordinary skill in the art at the time of filling to combine the product tracking and control system as taught in Lee with the dental implant management system as taught in Dawson further with the methods for risk adjusted performance analysis as taught in Capelli. The well-known elements described are merely a combination of old elements, and in combination, each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAROUN P KANAAN whose telephone number is (571)270-1497. The examiner can normally be reached Monday-Friday 8:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mamon Obeid can be reached at (571) 270-1813. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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MAROUN P. KANAAN
Primary Examiner
Art Unit 3687
/MAROUN P KANAAN/Primary Examiner, Art Unit 3687
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