DETAILED ACTION
Status of Claims
This action is in reply to the application filed on 12 March 2025.
Claims 20 – 25 and 27 - 68 have been cancelled.
Claims 1 - 19 and 26 are currently pending and have been examined.
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, 3 – 14, 16, 18, 19 and 26 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e. a law of nature, a natural phenomenon, or an abstract idea), and does not include additional elements that either: 1) integrate the abstract idea into a practical application, or 2) that provide an inventive concept – i.e. element that amount to significantly more than the abstract idea. The Claims are directed to an abstract idea because, when considered as a whole, the plain focus of the claims is on an abstract idea.
Claim 1 is representative. Claim 1 recites:
A method, the method comprising:
receiving a request to include passive aligners in an orthodontic treatment plan;
extracting settings related to passive aligners from treatment planning software code of a treatment planning software module;
accessing a treatment settings file and a product settings file, wherein the extracted settings are allocated between the treatment settings file and the product settings file, the treatment settings file including settings specific to the orthodontic treatment plan, and the product settings file including settings related to a particular product, wherein the treatment settings file and the product settings file have different updating privileges;
updating the product settings file based on passive aligner settings received from a product settings administrator, wherein the product settings file is updated to indicate inclusion of passive aligners and a maximum number of allowed passive aligners;
sending the updated product settings file to the treatment planning software module,
wherein the treatment planning software module updates the treatment planning software code to include the passive aligners and the maximum number of allowed passive aligners according to the updated product settings file; and
generating the orthodontic treatment plan via the treatment planning software module,
wherein the orthodontic treatment plan includes one or more stages that includes passive aligners, and
wherein a number of the one or more stages is not greater than the maximum number of allowed passive aligners.
Claim 26 recites medium with instructions executed by a processor, and Claim 16 recites a system that executes the steps of the method recited in Claim 1.
STEP 1
The claims are directed to a method, a system, and non-transitory computer readable medium which are included in the statutory categories of invention.
STEP 2A PRONG ONE
The claims, as illustrated by Claim 1, recite limitations that encompass an abstract idea including:
A method comprising:
receiving a request to include passive aligners in an orthodontic treatment plan;
generating the orthodontic treatment plan, wherein the orthodontic treatment plan includes one or more stages that includes passive aligners, and wherein a number of the one or more stages is not greater than the maximum number of allowed passive aligners.
The claims, as illustrated by Claim 1, recite limitations that encompass an abstract idea within the “mental processes” grouping – concepts performed in the human mind including observation, evaluation, judgment and opinion. The claims recite generating an orthodontic treatment plan that includes one or more stages that include passive aligners. The specification discloses that orthodontic treatment planning, including partitioning the treatment plan into stages corresponding to individual appliances (i.e. aligners), is typically performed by a dental professional. Once the treatment plan is finalized, a series of aligners may be manufactured/fabricated (@0003). Generating an orthodontic treatment plan, in accordance with the specification, is a process that, except for generic computer implementation steps, can be performed in the human mind. The specification further discloses that passive aligners, which are designed to keep teeth in place without movement, are known in the art. The claimed invention allow including passive aligners in a treatment plan to “help patient discomfort”, by “considering different factors related to passive aligners”. (@ 0006).
Collecting information, including when limited to particular content, is within the realm of abstract ideas, and analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, are mental processes within the abstract idea category (Electric Power Group v. Alstom S.A. (Fed Cir, 2015-1778, 8/1/2016).
As such, the claims recite an abstract idea within the mental process grouping.
The claims, as illustrated by Claim 1, recite limitations that encompass an abstract idea within the “certain methods of organizing human activity” grouping –
managing personal behavior or relationships or interactions between people including social activities, teaching, and following rules or instructions.
The claims recite generating an orthodontic treatment plan based on a request. This process is typical in dentistry, where a doctor determines a treatment plan for a patient based on the condition of the teeth and the treatment goal of the patient, and is process that merely organizes this human activity. (See MPEP 2016.04 (a)(2) II C finding that “a mental process that a neurologist should follow when testing a patient for nervous system malfunctions” is a method of organizing human activity, In re Meyer, 688 F.2d 789, 791-93, 215 USPQ 193, 194-96 (CCPA 1982).
The claims further recite the following limitations:
extracting settings related to passive aligners from treatment planning software code of a treatment planning software module;
accessing a treatment settings file and a product settings file, wherein the extracted settings are allocated between the treatment settings file and the product settings file, the treatment settings file including settings specific to the orthodontic treatment plan, and the product settings file including settings related to a particular product, wherein the treatment settings file and the product settings file have different updating privileges;
updating the product settings file based on passive aligner settings received from a product settings administrator, wherein the product settings file is updated to indicate inclusion of passive aligners and a maximum number of allowed passive aligners;
sending the updated product settings file to the treatment planning software module, wherein the treatment planning software module updates the treatment planning software code to include the passive aligners and the maximum number of allowed passive aligners according to the updated product settings file;
The claims recite extracting and accessing a product setting file, and updating the file based on human input. The updated file is sent to planning software to update the code. The specification discloses that if the product setting received from the administrator are different from the existing product settings, the settings are changed; otherwise no update occurs. Updating product settings in a database is process that merely organizes this human activity. As such, the claims recite an abstract idea within the certain methods of organizing human activity grouping.
STEP 2A PRONG TWO
The claims recite limitations that include additional elements beyond those that encompass the abstract idea above including:
treatment planning software module
However, these additional elements do not integrate the abstract idea into a practical application of that idea in accordance with the MPEP. (see MPEP 2106.05)
The software module is recited at a high level of generality such that it amounts to no more than instructions to apply the abstract idea using a generic computer component. These elements merely add instructions to implement the abstract idea on a computer, and generally link the abstract idea to a particular technological environment. Nothing in the claim recites specific limitations directed to a technological improvement. Similarly, the specification is silent with respect to these kinds of improvements. A general purpose computer that applies a judicial exception by use of conventional computer functions, as is the case here, does not qualify as a particular machine, nor does the recitation of a generic computer impose meaningful limits in the claimed process. (see Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716-17 (Fed. Cir. 2014)). As such, the additional elements recited in the claim do not integrate the abstract treatment planning and product setting file updating process into a practical application of that process.
STEP 2B
The additional elements identified above do not amount to significantly more than the abstract treatment planning and product setting file updating process.
The additional structural elements or combination of elements in the claims, other than the abstract idea per se, amount to no more than a recitation of generic computer structure (i.e. a processor and memory, computer-readable medium/treatment planning software). Each of the above components are disclosed in the specification as being purely conventional and/or known in the industry. Because the specification describes these additional elements in general terms, without describing particulars, Examiner concludes that the claim limitations may be broadly, but reasonably construed, as reciting well-understood, routine and conventional computer components and techniques. The specification describes the elements in a manner that indicates that they are sufficiently well-known that the specification does not need to describe the particulars in order to satisfy U.S.C. 112. Considered as an ordered combination the limitations recited in the claims add nothing that is not already present when the steps are considered individually. As such, the additional elements recited in the claim do not provide significantly more than the abstract treatment planning and product setting file updating process, or an inventive concept.
The dependent claims add additional features including:
those that merely serve to further narrow the abstract idea above such as:
further limiting the extracting to a prescription service module and APIs (Claim 4, 9);
further limiting the features of the prescription service module (Claims 5 - 8);
further limiting the request source (Claim 12);
further limiting the type of product settings (Claim 18);
further limiting the type of treatment settings (Claim 19);
or those that recite well-understood, routine and conventional activity or computer functions such as:
creating files (Claim 3);
opening a case file (Claims 10, 11);
presenting indication of allowance (Claim 13);
presenting the treatment plan on a display (Claim 14);
The limitations recited in the dependent claims, in combination with those recited in the independent claims add nothing that integrates the abstract idea into a practical application, or that amounts to significantly more. As such, the additional element do not integrate the abstract idea into a practical application, or provide an inventive concept that transforms the claims into a patent eligible invention.
The apparatus claims are no different from the method claims in substance. “The equivalence of the method, system and media claims is readily apparent.” “The only difference between the claims is the form in which they were drafted.” (Bancorp). The method claims recite the abstract idea implemented on a generic computer, while the apparatus claims recite generic computer components configured to implement the same idea. Specifically, Claims 16, 18, 19 and 26 merely add the generic hardware noted above that nearly every computer will include. The apparatus claim’s requirement that the same method be performed with a programmed computer does not alter the method’s patentability under U.S.C. 101 (In re Grams). Therefore, the claims are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Patent-Eligible Subject Matter
CLAIMS 2, 15 and 17 are not included in the rejection above. These claims recite limitations that integrate any abstract idea into a practical application. For example, Claim 2 recites: “applying orthodontic treatment plan to treat the patient” – i.e. applying a treatment or prophylaxis. Claims 15 and 17 recite “sending instructions to one or more manufacturing apparatuses to fabricate a set of aligners”.
Claim 1 recites a method for generating an orthodontic treatment plan, using treatment planning software, that includes one or more stages with passive aligners. The specification discloses that orthodontic treatment planning software is known in the art. The planning software is configured to generate a treatment plan, partitioned into stages corresponding to one or more individual appliances for each stage (i.e. aligners). Further, the specification discloses that passive aligners are known, but that the placement of a passive aligner in the treatment plan may not be customizable.
Boehlau et al.: (US PGPUB 2018/0092713 A1) discloses a dental treatment method that includes the following limitations:
receiving a request to include passive aligners in an orthodontic treatment plan; extracting settings related to passive aligners from treatment planning software code of a treatment planning software module; (Boehlau 0018, 0019);
generating the orthodontic treatment plan via the treatment planning software module, wherein the orthodontic treatment plan includes one or more stages that includes passive aligners, and wherein a number of the one or more stages is not greater than the maximum number of allowed passive aligners; (Boehlau 0004, 0005, 0013, 0016 – 0018, 0020 – 0025).
Boehlau discloses a dental treatment method that includes generating an orthodontic treatment plan using orthodontic modeling software (i.e. treatment planning software), to plan tooth movements in a multi-stage treatment method. Treatment planning is inherently performed in response to a request. Each stage includes the patient wearing one or more aligners configured to apply force to one or more teeth to move the teeth from a first position to a second position, (i.e. active aligners); or one or more tooth positioners that acts to retain the position or prevent the teeth from drifting back to old positions (i.e. passive aligner). The aligners may be assigned to the patient “as desired” – i.e. a design choice). In particular, Beohlau teaches “combining and alternating use of active individual arch aligners appliances, . . . and active or passive tooth positioners.” As such, Boehlau fairly teaches generating a treatment plan that includes stages with passive aligners.
With respect to the following limitations:
accessing a product settings file, the product settings file including settings related to a particular product; updating the product settings file based on passive aligner settings received from a product settings administrator, wherein the product settings file is updated to indicate inclusion of passive aligners and a maximum number of allowed passive aligners; accessing a treatment settings file, the treatment settings file including settings specific to the orthodontic treatment plan; wherein the treatment settings file and the product settings file have different updating privileges; (Alpern 0018, 0020, 0022 – 0025, 0043).
Boehlau discloses that aligners are created that are shaped to fit a 3D model. Boehlau does not disclose a product setting file or updating a product settings file. As described in the specification this updating feature provides a way to change passive aligner settings as requested by a doctor (@ 0007). Alpern et al.: (US PGPUB 2013/0275107 A1) discloses a system and method for analyzing a patient’s jaw and teeth configuration and determining a dental appliance for orthodontic repositioning of one or more teeth. Alpern teaches a database or library from which one or more various types of dental appliances may be chosen by the user (i.e. a product settings file). Appliances in the library includes, among others, a retainer, and or any other known prosthesis. A retainer is recognized in the present specification as a passive aligner. A chosen dental appliance may be altered as need and stored in the database. It would have been obvious to one of ordinary skill in the art, before the effective filing data of the claimed invention, to have modified the orthodontic treatment method of Boehlau so as to have included a database of aligners that can be updated, in accordance with the teaching of Alpern, in order to allow for selection and customization of dental appliances.
However, the claims further recite:
sending the updated product settings file to the treatment planning software module, wherein the treatment planning software module updates the treatment planning software code to include the passive aligners and the maximum number of allowed passive aligners according to the updated product settings file.
The prior art does not teach updating treatment planning software code to include passive aligners based on updated product information. The specification discloses that changes to the treatment planning software code typically requires a full software update release. Using an updated product settings file to update the treatment planning software code is not disclosed, or rendered obvious by the prior art. As such, Claims 1 – 19 and 26 are non-obvious over the prior art.
CONCLUSION
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US PGPUB 2003/0021453 A1 to Weise et al. discloses a system and method for managing a library of orthodontic treatment appliances, such as retainers and aligners, based on user input. The library is for use with orthodontic treatment planning software.
US PGPUB 2018/0116762 A1 to Kopelman (Common Assignee) discloses a system and method for generating digital models of orthodontic aligners and fabricating the aligners.
US PGPUB 2019/0175303 A1 to Akopov et al. (Common Assignee) discloses a system and method for automatic orthodontic treatment planning and manufacturing, including detailed staging information such as the type of aligner (active or passive).
US 11,432,907 B2 to Kuo (Common Assignee) discloses a system and method for creating a subsequent dental appliance including a passive aligner positioned at the middle of treatment between to stages, or at the end of treatment. Kuo discloses a library of appliances.
WO 2024/079567 A1 to Tong et al. discloses orthodontic treatment using dental appliance information in a database.
Any inquiry of a general nature or relating to the status of this application or concerning this communication or earlier communications from the Examiner should be directed to John A. Pauls whose telephone number is (571) 270-5557. The Examiner can normally be reached on Mon. - Fri. 8:00 - 5:00 Eastern. If attempts to reach the examiner by telephone are unsuccessful, the Examiner’s supervisor, Robert Morgan can be reached at (571) 272-6773.
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Alternatively, official replies to this Office action may still be submitted by any one of fax, mail, or hand delivery. Faxed replies should be directed to the central fax at (571) 273-8300. Mailed replies should be addressed to “Commissioner for Patents, PO Box 1450, Alexandria, VA 22313-1450.” Hand delivered replies should be delivered to the “Customer Service Window, Randolph Building, 401 Dulany Street, Alexandria, VA 22314.”
/JOHN A PAULS/Primary Examiner, Art Unit 3683
Date: 12 March, 2026