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 1-3, 5, 6 and 14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 11,160,642. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are an obvious variation of the patented claims.
Instant Application
U.S. Patent 11,160,642
1. A method of designing a virtual 3D model of a dental restoration, said method comprising: obtaining a digital 3D representation of a set of teeth of a patient, said digital 3D representation comprising a section corresponding to a target site; determining an insertion path for the dental restoration to the target site; determining a limiting volume of the digital 3D representation, where the limiting volume comprises a boundary that provides an indication of a space available for the dental restoration when moving along the insertion path; and designing the virtual 3D model of the dental restoration such that the virtual 3D model is confined within the limiting volume.
1. A method of designing a 3D digital model of a dental restoration, the dental restoration configured for positioning on a target site of a patient's set of teeth, said method comprising: obtaining a digital 3D representation of the set of teeth, said digital 3D representation comprising a section corresponding to the target site, the target site comprising a prepared tooth or an implant abutment, and a neighbor section corresponding to at least part of one adjacent tooth surrounding the target site; determining an insertion path for the dental restoration to the target site; and designing the 3D digital model of the dental restoration based on the digital 3D representation of the set of teeth…
2. The method according to claim 1, wherein the method comprises determining a limiting volume of the digital 3D representation, said limiting volume comprising a boundary.
4. The method according to claim 2, wherein designing the 3D digital model of the dental restoration comprises shaping the generated outer surface such that the modified outer surface is confined within the limiting volume or within a predetermined offset from the limiting volume.
2. The method according to claim 1, further comprising designing the virtual 3D model of the dental restoration based on the digital 3D representation of the set of teeth, comprising generating an outer surface of the virtual 3D model; where the determined insertion path and the outer surface of the designed virtual 3D model provide that a dental restoration manufactured from the designed virtual 3D model can be moved along the insertion path to the target site.
1. …where the designing comprises generating an outer surface of the 3D digital model of the dental restoration, wherein the outer surface is adjacent to the adjacent tooth in the neighbor section, wherein the designing comprises evaluating the generated outer surface with respect to collision(s) with the neighbor section, wherein the collision is defined as an overlap with the neighbor section, the overlap being defined as a threshold value at a position along the insertion path, and modifying the generated outer surface in response to a collision during a virtual movement of the 3D digital model of the dental restoration along the insertion path such that the determined insertion path and the modified outer surface of the designed 3D digital model provide that a dental restoration manufactured from the designed 3D digital model can be moved along the insertion path to the target site.
3. The method according to claim 2, further comprising shaping or modifying the generated outer surface such that the outer surface is confined within the limiting volume or within a predetermined offset from the limiting volume.
4. The method according to claim 2, wherein designing the 3D digital model of the dental restoration comprises shaping the generated outer surface such that the modified outer surface is confined within the limiting volume or within a predetermined offset from the limiting volume.
5. The method according to claim 2, wherein the designing comprises virtually cutting away portions of the generated outer surface of the virtual 3D model of the dental restoration which extend outside the limiting volume such that the outer surface is confined within the limiting volume.
6. The method according to claim 4, wherein the shaping comprises virtually cutting away portions of the generated outer surface which extends outside the limiting volume such that the modified outer surface is confined within the limiting volume.
6. The method according to claim 2, wherein the designing comprises projecting portions of the generated outer surface of the virtual 3D model which extends further than a predetermined threshold distance away from the boundary of the limiting volume onto a virtual surface arranged at the predetermined threshold distance from the limiting surface or virtually cutting away said portions such that no parts of the virtual 3D model extends further away from the boundary of the limiting volume than the predetermined threshold distance.
7. The method according to claim 4, wherein the shaping comprises projecting portions of the generated outer surface which extend further than a predetermined threshold distance away from the boundary of the limiting volume onto a virtual surface arranged at the predetermined threshold distance from the limiting surface or virtually cutting away said portions such that no parts of the 3D digital model extends further away from the boundary of the limiting volume than the predetermined threshold distance.
14. A non-transitory computer readable medium storing thereon a computer program, where said computer program is configured to cause a data processing system to: obtain a digital 3D representation of a set of teeth of a patient, said digital 3D representation comprising a section corresponding to a target site; determine an insertion path for a dental restoration to the target site; determine a limiting volume of the digital 3D representation, where the limiting volume comprises a boundary that provides an indication of a space available for the dental restoration when moving along the insertion path; and design a virtual 3D model of the dental restoration such that the virtual 3D model is confined within the limiting volume.
1. A method of designing a 3D digital model of a dental restoration, the dental restoration configured for positioning on a target site of a patient's set of teeth, said method comprising: obtaining a digital 3D representation of the set of teeth, said digital 3D representation comprising a section corresponding to the target site, the target site comprising a prepared tooth or an implant abutment, and a neighbor section corresponding to at least part of one adjacent tooth surrounding the target site; determining an insertion path for the dental restoration to the target site; and designing the 3D digital model of the dental restoration based on the digital 3D representation of the set of teeth…
2. The method according to claim 1, wherein the method comprises determining a limiting volume of the digital 3D representation, said limiting volume comprising a boundary.
4. The method according to claim 2, wherein designing the 3D digital model of the dental restoration comprises shaping the generated outer surface such that the modified outer surface is confined within the limiting volume or within a predetermined offset from the limiting volume.
Applicant is advised that should claim 10 be found allowable, claim 15 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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 9-13 and 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 9 recites the limitation "the offset line" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 10 and 15 recites the limitation "the line defined by the offset" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim.
Claim 13 recites the limitation "the offset line on the other neighbor tooth" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claim(s) 1-4 and 14 is/are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Kopelman et al. U.S. PGPub 2006/0115793 (hereinafter “Kopelman”).
Regarding claims 1 and 14, Kopelman discloses a method of designing a virtual 3D model (e.g. virtual crown) of a dental restoration, said method comprising: obtaining a digital 3D representation of a set of teeth of a patient, said digital 3D representation comprising a section corresponding to a target site (e.g. ¶11, 83 and 91); determining an insertion path for the dental restoration to the target site (e.g. ¶25 and 137-140; Fig. 4-9); determining a limiting volume of the digital 3D representation, where the limiting volume comprises a boundary (e.g. external surface of stump) that provides an indication of a space available for the dental restoration when moving along the insertion path (e.g. ¶139 and 144; Fig. 4-9); and designing the virtual 3D model of the dental restoration such that the virtual 3D model is confined within the limiting volume (e.g. ¶139 and 144; Fig. 4-9).
Regarding claim 2, Kopelman discloses the method according to claim 1, further comprising designing the virtual 3D model of the dental restoration based on the digital 3D representation of the set of teeth, comprising generating an outer surface of the virtual 3D model (e.g. ¶137-144; Fig. 4-9); where the determined insertion path and the outer surface of the designed virtual 3D model provide that a dental restoration manufactured from the designed virtual 3D model can be moved along the insertion path to the target site (e.g. ¶25 and 137-140; Fig. 4-9).
Regarding claim 3, Kopelman discloses the method according to claim 2, further comprising shaping or modifying the generated outer surface such that the outer surface is confined within the limiting volume or within a predetermined offset from the limiting volume (e.g. ¶139 and 144; Fig. 4-9).
Regarding claim 4, Kopelman discloses the method according to claim 1, wherein the designing comprises projecting portions of the virtual 3D model which extends outside the limiting volume onto the boundary of the limiting volume such that the outer surface is confined within the limiting volume (e.g. ¶139 and 144; Fig. 4-9).
Allowable Subject Matter
Claims 5 and 6 would be allowable with a timely filed terminal disclaimer, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claims 7 and 8 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.
Claims 9-13 and 15 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is an examiner’s statement of reasons for allowance: Regarding claim 5, the prior art of record does not disclose a method, wherein the designing comprises virtually cutting away portions of the generated outer surface of the virtual 3D model of the dental restoration which extend outside the limiting volume such that the outer surface is confined within the limiting volume.
Regarding claim 6, the prior art of record does not disclose a method wherein the designing comprises projecting portions of the generated outer surface of the virtual 3D model which extends further than a predetermined threshold distance away from the boundary of the limiting volume onto a virtual surface arranged at the predetermined threshold distance from the limiting surface or virtually cutting away said portions such that no parts of the virtual 3D model extends further away from the boundary of the limiting volume than the predetermined threshold distance.
Regarding claim 7, the prior art of record does not disclose a method wherein the limiting volume is determined from a circumference segment of a neighbor section corresponding to one or more teeth surrounding the target site.
Regarding claim 8, the prior art of record does not disclose a method wherein the limiting volume is determined from a line defined by an offset of the circumference segment of the neighbor section.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHARLES R KASENGE whose telephone number is (571)272-3743. The examiner can normally be reached Monday - Friday 7:30am to 4pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kenneth Lo can be reached at (571) 272-9774. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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CK
September 5, 2026
/CHARLES R KASENGE/Primary Examiner, Art Unit 2116
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