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 .
Election/Restrictions
Applicant's election with traverse of species a (Fig. 4; claims 1, 3-4, 8, 10-15) in the reply filed on 3/5/2026 is acknowledged. The traversal is on the grounds that the examiner will necessarily search the same prior-art field meaning no additional burden exists for the species-specific claims. This is not found persuasive because each species is mutually exclusive in how the volumes of the dental prosthesis base are determined and will therefore require different searches, potentially in different classifications.
The requirement is still deemed proper and is therefore made FINAL.
Claims 2, 5-7, 9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention (having differing volume determinations than species of Fig. 4 elected), there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 3/5/2026.
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 1, 3-4, 8-11, 13-15 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 1 recites the limitation "the direction" in line 9. Claim 10 recites “the particular sub-volume” in line 3. Claim 11 recites “the production” in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 3 recites “deducing at least one sub-volume”, however this limitation has already been recited in claim 1 and therefore it is unclear if this is referring to the same sub-volume or a different sub-volume.
Claim 10 recites “to the particular sub-volume which comprises the gum ridge line”, however in the case of claim 1, from which 10 depends, when “obtaining gum ridge line data which describe the gum ridge line”, it is unclear which particular sub-volume would comprise the gum ridge line. The surface separating the two volumes goes through the gum ridge line and therefore no particular sub-volume alone comprises the gum ridge line.
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 1-10 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims recite obtaining/identifying and defining/deducing limitations. This judicial exception is not integrated into a practical application because the generically recited computer elements do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because storing and retrieving information in memory is well-understood, routine, conventional computer function MPEP 2106.05(d).
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim 12 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Toyoda (US 2022/0142757).
Toyoda shows a dental prosthesis base (Fig. 1A with tooth 31 attached) comprising an outer shell (exterior of base) and an internal structure (interior thereof), wherein the internal structure is determined by the method as claimed in claim 1 (this is considered product-by-process where only the resulting structure is at issue, where the method of claim 1 does not impart any resulting structure since the sub-volumes determined by claim 1 impart no structural distinction between the volumes).
Allowable Subject Matter
Claims 1, 3-4, 8, 10-11, 12-15 would be allowable if rewritten or amended to overcome the rejections under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, and 101 set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art of Toyoda similarly shows a denture base with multiple volumes having different properties, however they are not determined in the same manner as the present method, nor do they structurally match the result of the present method when different materials are incorporated. The present invention is specific to how the volumes are determined in relation to a reference point and gum ridge line.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW NELSON whose telephone number is (571)270-5898. The examiner can normally be reached on Monday-Friday 7:30am-5:00pm EDT.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Eric Rosen, at (571) 270-7855. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW M NELSON/Primary Examiner, Art Unit 3772