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 .
The examiner acknowledges receipt of preliminary amendments dated March 17, 2025 in which, the applicants amended claim 1, and added new claims 2-29.
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 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of U.S. Patent No. 12,213,852. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of the current application is anticipated by claim 9 of the patent.
Claims 24 and 27 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,213,852. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 24 and 27 of the current application is anticipated by claim 1 of the patent. In particular, claims 24 and 27 of the current application and claim 1 of the patent recites determining depth of a periodontal pocket.
Allowable Subject Matter
Claims 1-29 would be allowable if rewritten or amended to overcome the Double Patenting rejection, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
In regards to claims 1-29, the applied art combination of US PgPub. No. 2015/0348320 by Pesach et al. (hereinafter ‘Pesach’) in view of US PgPub. No. 2016/0220105 by Duret (hereinafter ‘Duret’) teaches a system for measuring a depth of a periodontal pocket, the system comprising: (See Pesach Figure 2A, Pesach teaches a system for measuring depth of a periodontal pocket.)
capturing at least one 2D image of an intraoral target area, the at least one 2D image comprising a representation of at least: (See Pesach Figure 2A, element 230-232, Pesach teaches camera for capturing image of intraoral area.)
a part of the tooth, a gingiva margin defined by a section of the gingiva adjacent to the at least a part of the tooth, and a probe tip when the probe tip is inserted into the periodontal pocket; (See Pesach paragraphs [0150]-[0154], Pesach teaches capturing image comprising tooth and probe tip.)
However, Pesach and Duret do not teach or suggest “determining, in relation to the gingiva margin, an insertion length of the probe tip in the periodontal pocket by applying an image processing technique on information obtained about the probe tip in the captured at least one 2D image, wherein the determined insertion length represents the depth of the periodontal pocket.” (emphasis added).
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 UTPAL D SHAH whose telephone number is (571)272-5729. The examiner can normally be reached M-F: 7:30-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Vu Le can be reached on (571) 272-7332. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/UTPAL D SHAH/Primary Examiner, Art Unit 2668
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