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 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, 5–7, 9–10 and 20 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more. The limitations, under their broadest reasonable interpretation, cover mental process (concept performed in a human mind, including as observation, evaluation, judgment, opinion, organizing human activity and mathematical concepts and calculations). The claims recite “receive a 3D model of the dentition of the patient from a dental treat plan,” “receive scan data of the detention of the patient,” “determine, while receiving the scan data, an area of illumination by the dental-material-curing light source with respect to a dentition of a patient, based on the received scan data” in claim 1; “determine that at least a first of the plurality of areas of illumination includes uncured dental material” in claim 5; “selectively illuminate the first of the plurality of areas of illumination includes uncured dental material” in claim 6; “determine that at least the first of the plurality of areas of illumination does not include uncured dental material” in claim 7; “scan the detention of the patient with the intraoral scanner to generate the scan data” in claim 9; “emit curing light from the dental-material-curing light source, while emitting curing light, receive the scan data, while emitting curing light, align the scan data with the 3D model of the dentition of the patient from the dental treatment plan, the dental treatment plan including information about curing locations and dosage” in claim 10; and “determine that the area of illumination is unknown” in claim 20. (emphasis added) This judicial exception is not integrated into a practical application because the steps do not add meaningful limitations to be considered specifically applied to a particular technological problem to be solved. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the steps of the claimed invention can be done mentally and no additional features in the claims would preclude them from being performed as such except for the generic computer elements at high level of generality (i.e., processor, memory).1 See Alice/Mayo test under MPEP § 2106, II. ESTABLISH BROADEST REASONABLE INTERPRETATION OF CLAIM AS A WHOLE.2
According to the USPTO guidelines, a claim is directed to non-statutory subject matter if:
STEP 1: the claim does not fall within one of the four statutory categories of invention (process, machine, manufacture or composition of matter), or
STEP 2: the claim recites a judicial exception, e.g., an abstract idea, without reciting additional elements that amount to significantly more than the judicial exception, as determined using the following analysis:
STEP 2A (PRONG 1): Does the claim recite an abstract idea, law of nature, or natural phenomenon?
STEP 2A (PRONG 2): Does the claim recite additional elements that integrate the judicial exception into a practical application?
STEP 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception?
Using the two-step inquiry, it is clear that claims 1, 5–7, 9–10 and 20 are directed to an abstract idea as shown below:
STEP 1: Do the claims fall within one of the statutory categories? Yes. Claims 1, 5–7, 9–10 and 20 are directed to a system.
STEP 2A (PRONG 1): Is the claim directed to a law of nature, a natural phenomenon or an abstract idea? Yes. The claims are directed toward a mental process (i.e., abstract idea).
With regard to STEP 2A (PRONG 1), the guidelines provide three groupings of subject matter that are considered abstract ideas:
Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations;
Certain methods of organizing human activity – fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions); and
Mental processes – concepts that are practicably performed in the human mind (including an observation, evaluation, judgment, opinion).
These limitations, as drafted, is a simple process that, under their broadest reasonable interpretation, covers performance of the limitations in the mind or by a human. Examiner notes that under MPEP 2106.04(a)(2)(III), the courts consider a mental process (thinking) that “can be performed in the human mind, or by a human using a pen and paper" to be an abstract idea. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372, 99 USPQ2d 1690, 1695 (Fed. Cir. 2011). As the Federal Circuit explained, "methods which can be performed mentally, or which are the equivalent of human mental work, are unpatentable abstract ideas the ‘basic tools of scientific and technological work’ that are open to all.’" 654 F.3d at 1371, 99 USPQ2d at 1694 (citing Gottschalk v. Benson, 409 U.S. 63, 175 USPQ 673 (1972)). See also Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 71, 101 USPQ2d 1961, 1965 ("‘[M]ental processes and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work’" (quoting Benson, 409 U.S. at 67, 175 USPQ at 675)); Parker v. Flook, 437 U.S. 584, 589, 198 USPQ 193, 197 (1978) (same). As such, a person could mentally analyze an image and determine a fill level, either mentally or using a pen and paper. The mere nominal recitation that the various steps are being executed by a device/in a device (e.g., processing unit) does not take the limitations out of the mental process grouping. Thus, the claims recite a mental process.
STEP 2A (PRONG 2): Does the claim recite additional elements that integrate the judicial exception into a practical application? No. The claims do not recite additional elements that integrate the judicial exception into a practical application.
With regard to STEP 2A (prong 2), whether the claim recites additional elements that integrate the judicial exception into a practical application, the guidelines provide the following exemplary considerations that are indicative that an additional element (or combination of elements) may have integrated the judicial exception into a practical application:
an additional element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field;
an additional element that applies or uses a judicial exception to affect a particular treatment or prophylaxis for a disease or medical condition;
an additional element implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim;
an additional element effects a transformation or reduction of a particular article to a different state or thing; and
an additional element applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.
While the guidelines further state that the exemplary considerations are not an exhaustive list and that there may be other examples of integrating the exception into a practical application, the guidelines also list examples in which a judicial exception has not been integrated into a practical application:
an additional element merely recites the words “apply it” (or an equivalent) with the judicial exception, or merely includes instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea;
an additional element adds insignificant extra-solution activity to the judicial exception; and
an additional element does no more than generally link the use of a judicial exception to a particular technological environment or field of use.
These limitations are recited at a high level of generality (i.e., as a general action or change being taken based on the results of the acquiring step) and amounts to mere post solution actions, which is a form of insignificant extra-solution activity. Further, the claims are claimed generically and are operating in their ordinary capacity such that they do not use the judicial exception in a manner that imposes a meaningful limit on the judicial exception. 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.
STEP 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No. The claims do not recite additional elements that amount to significantly more than the judicial exception.
With regard to STEP 2B, whether the claims recite additional elements that provide significantly more than the recited judicial exception, the guidelines specify that the pre-guideline procedure is still in effect. Specifically, examiners should continue to consider whether an additional element or combination of elements:
adds a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present; or
simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present.
Claims 1, 5–7, 9–10 and 20 do not recite any additional elements that are not well-understood, routine or conventional activity.
Regarding claims 1, 5–7, 9–10 and 20,3 the additional limitations do not integrate the mental process into practical application or add significantly more to the mental process—i.e., they do not recite any of the exemplary considerations discussed above that are indicative of an abstract idea having been integrated into a practical application.
Thus, since claims 1, 5–7, 9–10 and 20 are: (a) directed toward an abstract idea, (b) do not recite additional elements that integrate the judicial exception into a practical application, and (c) do not recite additional elements that amount to significantly more than the judicial exception, it is clear that claims 1, 5–7, 9–10 and 20 are not eligible subject matter under the 35 U.S.C. § 101.
Claim Rejections - 35 USC § 102
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 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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1–4, 8–10 and 15 are rejected under 35 U.S.C. § 102(a)(2) as being anticipated by Jeon et al. (U.S. 2025/0049312 A1).
Regarding claim 1, Jeon discloses a system for curing flowable dental material, the system comprising:
an intraoral scanner configured to capture 3D data (Per Fig. 1, Jeon’s intraoral scanning system 100 comprises an intraoral scanner 110 that analyzes a 3D structure of patient’s dentition. Jeon Spec. ¶40. [t]he intraoral scanning system 100 may include the intraoral scanner 110 that can scan a 3D structure of an oral cavity of a dental patient…) and having a probe at a distal end; (Per Fig. 1, Jeon discloses a controller 124 which adjusts an image sensor part to obtain images from a detected light. Ibid. ¶45. The controller 124 may control the image sensor part to obtain at least two or more stereo images from an image of the detected light.)
a dental-material-curing light source configured to emit curing light from the probe; and (Fig. 2, 220 a light source part, where the light source is capable of emitting a curing light)
a processor and memory comprising instructions that when executed by the processor cause the system to: (Fig. 1, 120 a server)
receive a 3D model of the dentition of the patient from a dental treatment plan; (Per Fig. 1, Jeon’s server 120 discloses 3D structure based on image data. Ibid. ¶44. The 3D modeling and visualization server 120 may perform 3D oral cavity structure modeling based on at least two pieces of 2D image data or stereo images obtained from the intraoral scanner 110. See also para. 0043 “The intraoral scanner 110 may transmit and receive information and/or data such as 2D image data and 3D oral cavity structure model data to and from the 3D modeling and visualization server 120.”)
receive scan data of the dentition of the patient; (Per Fig. 1, Jeon’s scanner 110 receives the image data. Ibid. ¶43. The intraoral scanner 110 may transmit and receive information and/or data such as 2D image data and 3D oral cavity structure model data to and from the 3D modeling and visualization server 120.)
determine, while receiving the scan data, an area of illumination (an area of illumination construed as reflective surfaces) by the dental-material-curing light source with respect to a dentition of a patient, based on the received scan data. (Per Fig. 2, Jeon’s image sensor part 270 detects reflective surfaces from images to evaluate the 3D oral structure. Ibid. ¶62. [t]he image sensor part 270 may simultaneously obtain two images of light reflected by the two reflective surfaces 262 and 264 of the fifth reflector 260 of the third optical systems 250 and 260.)
Regarding claim 2, Jeon discloses the system, wherein the intraoral scanner comprises a structured light scanner. (Per Fig. 1, Jeon’s controller 124 operates light parts. Jeon Spec. ¶45. [t]he controller 124 may control at least one or more light source parts (for example, 220 in FIG. 2) installed inside the intraoral scanner 110 to emit light toward at least one of a plurality of optical systems.)
Regarding claim 3, Jeon discloses the system, wherein the area of illumination of the dental-material-curing light source is in a known relationship (A known relationship construed either as a see-through lateral view and a see-through plan view. See Applicant’s Spec. ¶143.) with respect to a field of view of the intraoral scanner. (Per Fig. 3, Jeon discloses a see-through plan view of his scanner 200. Jeon Spec. ¶64. [a] see-through lateral view and a see-through plan view of the intraoral scanner 200 according to one embodiment of the present disclosure.)
Regarding claim 4, Jeon discloses the system, wherein the dental-material-curing light source is a plurality of light sources configured to selectively illuminate a plurality of areas of illumination. (Per Fig. 1, Jeon’s controller 124 operates light parts. Jeon Spec. ¶45. [t]he controller 124 may control at least one or more light source parts (for example, 220 in FIG. 2) installed inside the intraoral scanner 110 to emit light toward at least one of a plurality of optical systems.)
Regarding claim 8, Jeon discloses the system, wherein the dental-material-curing light source is used by the intraoral scanner to generate the scan data of the dentition of the patient. (Per Fig. 1, Jeon’s controller 124 operates light parts. Jeon Spec. ¶45. [t]he controller 124 may control at least one or more light source parts (for example, 220 in FIG. 2) installed inside the intraoral scanner 110 to emit light toward at least one of a plurality of optical systems.)
Regarding claim 9, Jeon discloses the system, wherein instructions that when executed by the processor further cause the system to:
scan the detection of the patient with the intraoral scanner to generate the scan data. (Per Fig. 2, Jeon’s image sensor part 270 detects reflective surfaces from images to evaluate the 3D oral structure. Jeon ¶62. [t]he image sensor part 270 may simultaneously obtain two images of light reflected by the two reflective surfaces 262 and 264 of the fifth reflector 260 of the third optical systems 250 and 260.)
Regarding claim 10, Jeon discloses the system, wherein instructions that when executed by the processor further cause the system to:
emit curing light from the dental-material-curing light source; (Per Fig. 1, Jeon’s controller 124 operates light parts. Jeon Spec. ¶45. [t]he controller 124 may control at least one or more light source parts (for example, 220 in FIG. 2) installed inside the intraoral scanner 110 to emit light toward at least one of a plurality of optical systems.)
while emitting curing light, receive the scan data; (Per Fig. 1, Jeon discloses a controller 124 which adjusts an image sensor part to obtain images from a detected light. Ibid. ¶45. The controller 124 may control the image sensor part to obtain at least two or more stereo images from an image of the detected light.)
while emitting curing light, align the scan data with the 3D model of the dentition of the patient from the dental treatment plan, the dental treatment plan including information about curing locations and dosage. (Per Fig. 2, Jeon’s image sensor part 270 detects reflective surfaces from images to evaluate the 3D oral structure. Ibid. ¶62. [t]he image sensor part 270 may simultaneously obtain two images of light reflected by the two reflective surfaces 262 and 264 of the fifth reflector 260 of the third optical systems 250 and 260.)
Regarding claim 15, Jeon discloses the system, wherein instructions that when executed by the processor further cause the system to: provide feedback to the user. (Per Fig. 1, Jeon’s communication device 122 discloses a command signal such that a user receives image information. Jeon Spec. ¶44. [t]he communication device 122 may transmit a command signal of the controller 124 to the intraoral scanner 110 and may receive image information of a target oral cavity structure from the intraoral scanner 110.)
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 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.
Claims 5–7 and 16–20 are rejected under 35 U.S.C. § 103 as being unpatentable over Jeon in view of Karazivan et al. (U.S. 9,675,435 B2).
Regarding claim 5, Jeon fails to specifically disclose the system, wherein the instructions that when executed by the processor further cause the system to: determine that at least a first of the plurality of areas of illuminations includes uncured dental material.
In related art, Karazivan discloses the system, wherein the instructions that when executed by the processor further cause the system to: determine that at least a first of the plurality of areas of illuminations includes uncured dental material. (Per Fig. 3, Karazivan discloses an uncured resin 330 using radiation source 40. Karazivan col. 11 line 60 – col. 12 line 6. [t]his causes the emission of blue light 25 in the vicinity of the coating 20 of printed luminescent particles, causing the resin layers 300 to cure at those locations to form a cured resin mass 400 in the desired three-dimensional shape, after which the remaining uncured resin 300 can be removed, leaving the cured resin mass 400.)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to incorporate the teachings of Karazivan into the teachings of Jeon to provide precise control of curing in regions where luminescent particles are placed. Ibid. col. 11 lines 50–59.
Regarding claim 6, Jeon as modified by Karazivan, discloses the system, wherein the instructions that when executed by the processor further cause the system to:
selectively illuminate the first of the plurality of areas of illumination when the system determines that the at least the first of the plurality of areas of illumination includes uncured dental material. (Per Fig. 3, Karazivan discloses an uncured resin 330 using radiation source 40. Karazivan col. 11 line 60 – col. 12 line 6. [t]his causes the emission of blue light 25 in the vicinity of the coating 20 of printed luminescent particles, causing the resin layers 300 to cure at those locations to form a cured resin mass 400 in the desired three-dimensional shape, after which the remaining uncured resin 300 can be removed, leaving the cured resin mass 400.)
Regarding claim 7, Jeon as modified by Karazivan, discloses the system, wherein the instructions that when executed by the processor further cause the system to: determine that at least the first of the plurality of areas of illumination does not include uncured dental material. (Per Fig. 3, Karazivan discloses an uncured resin 330 using radiation source 40. Karazivan col. 11 line 60 – col. 12 line 6. [t]his causes the emission of blue light 25 in the vicinity of the coating 20 of printed luminescent particles, causing the resin layers 300 to cure at those locations to form a cured resin mass 400 in the desired three-dimensional shape, after which the remaining uncured resin 300 can be removed, leaving the cured resin mass 400.)
Regarding claim 16, Jeon fails to specifically disclose the system, wherein the feedback includes feedback regarding the curing status of the dental material.
In related art, Karazivan discloses the system, wherein the feedback includes feedback regarding the curing status of the dental material. (Per Fig. 3, Karazivan discloses cured dental mass 400. Karazivan col. 14 lines 24–30. [w]ith the surface 310 left uncoated on those areas which are to be left uncured and removed from the cured dental mass 400 after curing.)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to incorporate the teachings of Karazivan into the teachings of Jeon to provide precise control of curing in regions where luminescent particles are placed. Ibid. col. 11 lines 50–59.
Regarding claim 17, Jeon as modified by Karazivan, discloses the system, wherein the feedback regarding the curing status of the dental material includes altering a displayed model of the dental material based on the curing status of the dental material. (Per Fig. 3, Karazivan discloses cured dental mass 400. Karazivan col. 14 lines 24–30. [w]ith the surface 310 left uncoated on those areas which are to be left uncured and removed from the cured dental mass 400 after curing.)
Regarding claim 18, Jeon as modified by Karazivan, discloses the system, wherein altering the displayed model of the dental material based on the curing status of the dental material includes modifying a color of the model at a location of the dental material based on the cured status of the dental material. (Per Fig. 3, Karazivan discloses cured dental mass 400. Karazivan col. 14 lines 24–30. [w]ith the surface 310 left uncoated on those areas which are to be left uncured and removed from the cured dental mass 400 after curing.)
Regarding claim 19, Jeon fails to specifically disclose the system, wherein the feedback includes feedback regarding visual, audio, or haptic feedback when the system estimates that the dental material is cured.
In related art, Karazivan discloses the system, wherein the feedback includes feedback regarding visual, audio, or haptic feedback when the system estimates that the dental material is cured. (Per Fig. 3, Karazivan discloses cured dental mass 400. Karazivan col. 14 lines 24–30. [w]ith the surface 310 left uncoated on those areas which are to be left uncured and removed from the cured dental mass 400 after curing.)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to incorporate the teachings of Karazivan into the teachings of Jeon to provide precise control of curing in regions where luminescent particles are placed. Ibid. col. 11 lines 50–59.
Regarding claim 20, Jeon fails to specifically disclose the system, wherein instructions that when executed by the processor further cause the system to: determine that the area of illumination is unknown.
In related art, Karazivan discloses the system, wherein instructions that when executed by the processor further cause the system to: determine that the area of illumination is unknown. (Per Fig. 3, Karazivan discloses an uncured resin 330 using radiation source 40. Karazivan col. 11 line 60 – col. 12 line 6. [t]his causes the emission of blue light 25 in the vicinity of the coating 20 of printed luminescent particles, causing the resin layers 300 to cure at those locations to form a cured resin mass 400 in the desired three-dimensional shape, after which the remaining uncured resin 300 can be removed, leaving the cured resin mass 400.)
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to incorporate the teachings of Karazivan into the teachings of Jeon to provide precise control of curing in regions where luminescent particles are placed. Ibid. col. 11 lines 50–59.
Allowable Subject Matter
Claims 11–14 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kilcher et al. (U.S. 8,992,224 B2) discloses a method of curing a dental composite.
Contact
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BENEDICT LEE whose telephone number is (571)270-0390. The examiner can normally be reached 10:00-17:00 (EST).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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/BENEDICT E LEE/Examiner, Art Unit 2665
/Stephen R Koziol/Supervisory Patent Examiner, Art Unit 2665
1 Particularly, claim 1 does not recite additional elements to integrate judicial exception into a practical application—i.e., no improvements of ordinary skill in the art. Examiner referred to Applicant’s Spec. ¶5 where he provides methods “to provide more accurate dosing of curing light and limiting user exposure to the curing light.” However, when Examiner construed the independent claim in light of the specification, it is a simple step where a dentist can review scanned data of a dentition of a patient without machine learning aid.
2 The court disagreed, because it interpreted the claims as encompassing nothing other than pure mental steps (and thus falling within an abstract idea grouping) because the claims did not include any limitations requiring computer implementation.
3 Examiner construed that these claims recite “insignificant extra-solution activity.” See MPEP § 2106.05(g). Examiners should carefully consider each claim on its own merits, as well as evaluate all other relevant considerations, before making a determination of whether an element (or combination of elements) is insignificant extra-solution activity. For example, a dentist determines whether specific regions of scan data are illuminated by applying lights to a patient’s mouth—i.e., a simple human’s practice in dentistry.
Prosecution Insights