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 .
DETAILED ACTION
This action is in response to the application filed February 21, 2025. Claims 1-16 are pending and examined.
Specification
Applicant is required to update the status (pending, allowed, etc.) of all parent priority applications in the first line of the specification. The status of all citations of US filed applications in the specification should also be updated where appropriate.
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-16 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,254,447. Although the conflicting claims are not identical, they are not patentably distinct from each other because the only difference was the addition of a processor and memory in the independent claims 1 and 9 where the processor and memory were added to overcome a 101 rejection.
Information Disclosure Statement
An initialed and dated copy of Applicant’s IDS form 1449 filed February 21, 2025, is attached to the instant Office action.
Claim Rejections - 35 USC § 101 Utility
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 1-16 are rejected under 35 U.S.C. 101. Based upon consideration of all of the relevant factors with respect to the claim as a whole, these claims are held to claim an abstract idea, and is/are therefore rejected as ineligible subject matter under 35 U.S.C. 101. In light of the recent Supreme Court decision in Bilski v. Kappos, 561 U.S. ___ (2010), the Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos provides factors to consider in determining whether a claim is directed to an abstract idea and is therefore not patent-eligible under 35 U.S.C. 101. Factors weighing toward eligibility include:
Recitation of a machine or transformation (either express or inherent).
The claim is directed toward applying a law of nature.
The claim is more than a mere statement of concept.
Factors weighing against eligibility include:
No recitation of a machine or transformation (either express or inherent).
Insufficient recitation of a machine or transformation.
The claim is not directed to an application of a law of nature.
The claim is a mere statement of a general concept.
An example of a method claim that would not qualify as a statutory process would be a claim that recited purely mental steps. Thus, to qualify as a § 101 statutory process, the claim could positively recite the other statutory class (the thing or product) to which it is tied, for example by identifying the apparatus that accomplishes the method steps, or positively recite the subject matter that is being transformed, for example by identifying the material that is being changed to a different state. Furthermore, the use of a particular machine or transformation of a particular article must involve more than insignificant extra-solution activity.
In light of the factors in the Supreme Court decision, Applicant’s method steps do not meet the requirements of 35 U.S.C. 101. Both the method claims and the system claims lack any structural elements to implement the steps such as a processor and memory in both the independent and dependent claims.
Prior Art
The closest prior art was Finley et al. (U.S. 11,961,598 B1) which is for detecting errors in prescription claims data using machine learning. The details are just to divergent from Dental work where peoples tolerances of variances in dentures is rather limited.
Conclusion
Any inquiry concerning this communication from the examiner should be directed to Scott S. Trotter, whose telephone number is 571-272-7366. The examiner can normally be reached on 8:30 AM – 5:00 PM, M-F.
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, Matthew Gart, can be reached on 571-272-3955.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
The fax phone number for the organization where this application or proceeding is assigned are as follows:
(571) 273-8300 (Official Communications; including After Final Communications labeled “BOX AF”)
(571) 273-7366 (Draft Communications)
/SCOTT S TROTTER/Primary Examiner, Art Unit 3696