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 without traverse of Group I (claims 1-13 and 19-20) in the reply filed on 07/17/26 is acknowledged.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 02/24/25 has been acknowledged and considered. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
a means for generating light in claim 1 (a light source 28 for emitting light and paragraph [0039] and figure 1).
a means for measuring one or characteristics of incident light returning in claim 1 (68 @ figure 1 and paragraph [0067]: e.g., the returning light beams 54 are reflected by the surface of the structure and each correspond to one of the incident light beams 36 produced by the optical device 22. Any suitable device can be used to measure the characteristics of the returning light beams, such as the sensor array 68).
a means for generating data representative of a topography of the patient’s teeth in claim 1 (24 @ figure 1B and paragraphs [0068] and [0085]: e.g., data representative of topography of the structure is generated based on the measured characteristics, as previously described herein. Any suitable device can be used to receive and generate the data, such as the processor 24 depicted in FIG. 1B).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1-13 and 19-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,156,785. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-20 of U.S. Patent No. 12,156,785 is anticipated the claims 1-13 and 19-20 of claimed invention of the present invention.
Regarding claim 1; Claim 1 in lines 1-26 of U.S. Patent No. 12,156,785 discloses all of feature of claimed invention.
Regarding claim 2; Claim 2 in lines 1-3 of U.S. Patent No. 12,156,785 discloses all of feature of claimed invention.
Regarding claim 3; Claim 3 in lines 1-3 of U.S. Patent No. 12,156,785 discloses all of feature of claimed invention.
Regarding claim 4; Claim 4 in lines 1-4 of U.S. Patent No. 12,156,785 discloses all of feature of claimed invention.
Regarding claim 5; Claim 5 in lines 1-2 of U.S. Patent No. 12,156,785 discloses all of feature of claimed invention.
Regarding claim 6; Claim 6 in lines 1-2 of U.S. Patent No. 12,156,785 discloses all of feature of claimed invention.
Regarding claim 7; Claim 7 in lines 1-4 of U.S. Patent No. 12,156,785 discloses all of feature of claimed invention.
Regarding claim 8; Claim 8 in lines 1-6 of U.S. Patent No. 12,156,785 discloses all of feature of claimed invention.
Regarding claim 9; Claim 9 in lines 1-3 of U.S. Patent No. 12,156,785 discloses all of feature of claimed invention.
Regarding claim 10; Claim 10 in lines 1-3 of U.S. Patent No. 12,156,785 discloses all of feature of claimed invention.
Regarding claim 11; Claim 15 in lines 1-3 of U.S. Patent No. 12,156,785 discloses all of feature of claimed invention.
Regarding claim 12; Claim 17 in lines 1-3 of U.S. Patent No. 12,156,785 discloses all of feature of claimed invention.
Regarding claim 13; Claim 19 in lines 1-3 of U.S. Patent No. 12,156,785 discloses all of feature of claimed invention.
Regarding claim 19; Claims 1 in lines 1-26 and claim 15 in lines 1-2 of U.S. Patent No. 12,156,785 discloses all of feature of claimed invention.
Regarding claim 20; Claim 2 in lines 1-2 and Claim 7 in lines 1-4 of U.S. Patent No. 12,156,785 discloses all of feature of claimed invention.
Allowable Subject Matter
Claims 1-13 and 19-20 would be allowable if Applicant files a Terminal Disclaimer to overcome the rejection(s) under nonstatutory double patenting, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art of record, taken alone or in combination, fails discloses or render obvious an apparatus for determining surface topography of a patient's teeth comprising all the specific elements with the specific combination including a light focusing assembly comprising a first lens, a second lens and a focus changing assembly comprising one or more additional lenses that shares an optical axis with the first lens and the second lens and being configured to focus the light to a plurality of external focal planes to illuminate the patient's teeth, wherein the focus changing assembly has a movement gain factor, and wherein as a result of the movement gain factor a change in position of at least one lens of the one or more additional lenses along the optical axis by a first distance results in a change in a focus setting by a second distance that is 2-10 times greater than the first distance in set forth of claim 1.
The prior art of record, taken alone or in combination, fails discloses or render obvious an apparatus for determining surface topography of a patient's teeth comprising all the specific elements with the specific combination including a light focusing assembly comprising a first lens, a second lens and a focus changing assembly comprising one or more additional lenses that shares an optical axis with the first lens and the second lens and being configured to focus the light to a plurality of external focal planes to illuminate the patient's teeth, wherein the focus changing assembly has a movement gain factor, and wherein as a result of the movement gain factor a change in position of at least one lens of the one or more additional lenses along the optical axis by a first distance results in a change in a focus setting by a second distance that is 3-7.5 times greater than the first distance in set forth of claim 19.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
1) Kasenbacher (US 2011/0300504) discloses a method and a laser processing device for processing tissue, and more particularly to a method for instantaneous diagnosis and processing of biological tissue, and to a laser processing device for automatic and objective diagnosis and processing of biological tissue.
2) Babayoff et al (US 2004/0090638) discloses imaging techniques and relates to a method and an apparatus for non-contact imaging of three-dimensional structures, particularly useful for direct surveying of teeth.
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/SN/
September 1, 2026
/SANG H NGUYEN/ Primary Examiner, Art Unit 2877
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