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 .
Claim Objections
Claim 10 is objected to because of the following informalities: Claim 10 recites “The method as claimed in claim 10” which depend on itself. Examiner suggests replacing “The method as claimed in claim 10” with --The method as claimed in claim 1--. Appropriate correction is required.
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 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of U.S. Patent No. 12,159,398. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claims is substantially similar and recites similar limitations. It is because the claims in the continuation application are broader than the ones in the patent application, In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982).
For example, claim 1 of the present application recites the steps which are similar to the patented claim 13. Furthermore, the cited patent has more limitations, thereby encompassing the present application's limitations.
Therefore, claim 1 of the present invention is broader than claim 13 of the patented application.
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 11-12 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 12-13 of prior U.S. Patent No. 12,159,398. This is a statutory double patenting rejection.
The prior art does not appear to teach or make obvious the subject matter of the claims.
However, the nonstatutory double patenting and the statutory type (35 U.S.C. 101) double patenting rejections must be overcome.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
The prior art made of record and considered pertinent to the applicant's disclosure, taken individually or in combination, does not teach the claimed invention having the following limitations, in combination with the remaining claimed limitations.
Regarding independent claims 1, 11, and 12, the closest prior art does not teach or suggest the claimed invention having “submission, to the trained second neural network, of the photo to be analyzed, so as to obtain a descriptor of said photo, said second neural network being trained by means of a historical learning base comprising more than 1000 created historical records added in said historical learning base, said historical record consisting of a final image and of a created descriptor of said final image called “final descriptor”, said final image representing, hyper-realistically, the source dental scene after a simulation of a dental event, and being obtained by submitting, a source photo representing a source dental scene in a dental context, to a first neural network trained to transform first photos of first dental scenes into first hyper-realistic images to simulate the effect of a dental event on said first dental scenes”, and a combination of other limitations thereof as recited in the claims.
Regarding dependent claims 2-10, the claims have been found allowable due to its dependencies to claim 1 above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VAN D HUYNH whose telephone number is (571)270-1937. The examiner can normally be reached 8AM-6PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Stephen R Koziol can be reached at (408) 918-7630. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VAN D HUYNH/Primary Examiner, Art Unit 2665
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