DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-37 of U.S. Patent No. 8,562,338; claims 1-18 of U.S. Patent No. 8,899,978; claims 1-23 of U.S. Patent No. 9,017,072; claims 1-19 of U.S. Patent No. 10,052,174; claims 1-20 of U.S. Patent No. 10,517,696; and claims 1-12 of U.S. Patent No. 11,571,276 in view of Sachdeva et al. (US 2004/0197727). The above patents show the comparison of images/segmented models to track deviations from an orthodontic treatment plan, but fail to show setting a tracking schedule for the tracking of progress of the plan, with a series of progress checkpoints to check movement. Sachdeva shows setting a tracking schedule for the tracking of progress of the plan, with a series of progress checkpoints to check movement ([60] and [115] in particular, scheduling of patient appointments where imaging is done, that may later be adjusted based on progress). Therefore, 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 patent’s by including the scheduling steps of Sachdeva in order to provide the most productive scheduling of appointments for the patient ([115]).
Claims 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. 11,766,311 and claims 1-21 of U.S. Patent No. 12,150,830. Although the claims at issue are not identical, they are not patentably distinct from each other because the difference between claims of the application and claims of the patent lies in the fact that the patent claim includes many more elements and is thus much more specific. Thus the invention of the patent is in effect a “species” of the “generic” invention of the application. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since the claims are anticipated by the claims of the patent, it is not patentably distinct. Additionally, orthodontic stages of treatment are acquired by segmented teeth models so that the teeth may be moved to their positions for each stage, thus being equivalent to “a previously segmented 3D model”.
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 an abstract idea without significantly more. The claims recite setting, accessing, matching, detecting, generating, and outputting steps which are abstract ideas that could all be performed in the mind. 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 § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-3, 7-12, 14-20 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Sachdeva et al. (US 2004/0197727).
Sachdeva shows a method for orthodontic treatment progress tracking ([60] and [115] in particular), the method comprising tracking progress of an orthodontic treatment where the following is performed: accessing a previous three-dimensional (3D) segmented model of a patient’s teeth ([150] discusses the teeth separated into individually moveable tooth objects); accessing a current image of the patient’s teeth ([115] discusses progress scans of the current anatomy); matching teeth from the previous 3D segmented model with teeth of the current image of the patient’s teeth ([115] discusses evaluating movement of teeth to target positions in the last line); detecting a deviation between a current position of a tooth of the current image and an intended position of the tooth (evaluation of movement of teeth, so that any deviation will be detected); generating a report indicating the deviation (differences in tooth position will be reported in order to allow for adjustment of schedule based on progress); and outputting the report to an output device associated with displaying the report to a treating professional (the computer will display all of the above, otherwise the treating professional would not be able to make any changes; see also monitor 14 for instance). With respect to claim 2, further comprising, at the progress tracking, determining whether the orthodontic treatment is off-track and/or whether midcourse correction is needed ([115] discusses adjusting the schedule for more or less frequent visits if off-track). With respect to claim 3, wherein the report further includes an indication of the orthodontic treatment being off-track and/or an indication that midcourse correction is needed ([115] results in difference in tooth positions being displayed to show any off-track positions). With respect to claims 7-8, determining one or more recommended increments of time between checkpoints based on the patient wearing one or more sets of appliances ([115]; periodically rescanned during progress of treatment and therefore along the same time as appliances are worn). With respect to claim 9, wherein the orthodontic treatment includes a series of appliances that the patient is prescribed to sequentially wear over at least a portion of a duration of the treatment (removable aligning devices [61]). With respect to claim 10, wherein the report further includes a visualization of the deviation (deviation will be visualized on monitor when the two sets of data are compared, as in [115]).
System claims 11-12, 14-17 are rejected similarly to the above and additionally one or more processors, and a memory, including instructions executable by the one or more processors to cause the system to do the above (Fig. 1). With respect to claim 15, one or more server computers which would connect to one or more client computers (top of Fig. 1). With respect to claim 17, wherein the output device is associated with one or more client computers (top of Fig. 1 shows info output to client computers; it is also noted that the client could be using the base computer as well).
Method claims 18-20 are rejected similarly to the above, particularly with respect to claims 1-2 and 6.
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.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MATTHEW M NELSON/Primary Examiner, Art Unit 3772
