www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/652,755
`
`04/01/2020
`
`Alexandra R. Cunliffe
`
`79959US005
`
`JA17
`
`3M INNOVATIVE PROPERTIES COMPANY
`PO BOX 33427
`ST. PAUL, MN 55133-3427
`
`LIN, JERRY
`
`PAPER NUMBER
`
`ART UNIT
`
`1671
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`10/12/2023
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`Thetime period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`LegalUSDocketing @ mmm.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Office Action Summary
`
`Application No.
`16/652,755
`Examiner
`JERRY LIN
`
`Applicant(s)
`Cunliffe etal.
`Art Unit
`1671
`
`AIA (FITF) Status
`Yes
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`
`
`1) Responsive to communication(s)filed on 01 April 2020.
`C) A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)() This action is FINAL. 2b)¥)This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4)\0) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`1-28 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`(J) Claim(s)__ is/are allowed.
`Claim(s) 1-5,10-16 and 19-28 is/are rejected.
`Claim(s) 6-9 and 17-18 is/are objected to.
`1) Claim(s
`are subject to restriction and/or election requirement
`)
`“If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http:/Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) ) ) )
`
`Application Papers
`10) The specification is objected to by the Examiner.
`11)() The drawing(s) filedon__ is/are: a)C) accepted or b)C) objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12). Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`cc) None ofthe:
`b)L) Some**
`a)D) All
`1.(.) Certified copies of the priority documents have been received.
`2.1) Certified copies of the priority documents have been received in Application No.
`3.2.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1) (5) Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date 6/2/20, 4/8/21, 5/4/21, 10/26/21, 1/31/23.
`U.S. Patent and Trademark Office
`
`3)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) (J Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20231002
`
`

`

`Application/Control Number: 16/652,755
`Art Unit: 1671
`
`Page2
`
`Notice of Pre-AlA or AIA Status
`
`1.
`
`The present application, filed on or after March 16, 2013, is being examined underthefirst
`
`inventor to file provisions of the AIA.
`
`Claims 1-28 are under examination.
`
`Status of the Claims
`
`Claim Objections
`
`2.
`
`Claims 6-9 and 17-18 are objected to under 37 CFR 1.75(c) as being in improper form because a
`
`multiple dependent claim cannot depend from other multiple dependent claim. See MPEP § 608.01 (n).
`
`Accordingly, the claims 6-9 and 17-18 have not beenfurther treated on the merits.
`
`3.
`
`35 U.S.C. 101 reads as follows:
`
`Claim Rejections - 35 USC § 101
`
`Whoever invents or discovers any new and useful process, machine, manufacture,or
`composition of matter, orany new and useful improvementthereof, may obtaina patent
`therefor, subjectto the conditions and requirementsofthis title.
`
`Claims 1-5, 10-16, and 19-28 are rejected under 35 U.S.C. 101 because the claimed inventionis
`
`directed to judicial exception without significantly more.
`
`Glaims 1-5, 10-16, and 19-28 are directedto method for generaling setups far an orthodontic
`
`lreaiment plan. As described in Alice Corp. Phy Lid VoCLS Bankinit, S73 U.5._, 1344S. Cr. 2347, 110
`
`US. P..2d 71976 (2074), a two-step analysis is required in considering ihe patent eligibily of the claimed
`
`subject matter. The first stem requires determining HT the claimed sublect matteris directed to a judicial
`
`exception. The instant claims requlre the steps of receiving a digital 3D maceof teeth, performing
`
`interproximal reduction UPR) on the model, generating an initial treatment path with stages that inclucle
`
`an litial setup, inal setup, and a plurality of internediaie setups, carnpuling IPR accessibility for each
`
`tooth al each stage, applying IPR throughout the initial treatment path, and civicing the infial treatraent
`
`path into steps of feasible motion of the teeth as inclaim 1. AHernatively, the instant claims reculre
`
`

`

`Application/Control Number: 16/652,755
`Art Unit: 1671
`
`Page3
`
`receiving a cigital model of ieeth in a firsi stale, receiving 2 digial mocel of teeth in a second siate, and
`
`divicing between the firsi and second states a set of states corresponding fa a feasible motion stens from
`
`the first ta second state as inclaim 23. These steps are drawn io a mathematioal algorithm. Deperdent
`
`claims 2-5, 10-16, 19-22, and 24-28 recite additional mathematical steps or the data used in the
`
`mathematical aigorthm., The couris have found mathematical algorithms to be drawn to the judicial
`
`exception of an abstract idea (in re Grams, 888 F.2d G35, 12 U.S.P..2d 1824 (Fed. Cir. 19893). Thus,
`
`the instant claims are drawn ta a fudicial excention.
`
`This judicial exception is not integrated into a practical application. The instant claims do not
`
`recite an elementthat reflects an improvementin the functioning of a computer or other technology, an
`
`elementthat applies the judicial exception to effect a particular treatment, an element that implements the
`
`judicial exception with a particular machine, or an elementthat effects a transformation of a particular
`
`article to a different state or thing.
`
`The second part of the analysis requires delermining if the claims include acditional elements
`
`that ere sullicient io amour to significantly more than the judicial exception. The inslant clains recite
`
`receiving digital models, user inputs, ancl reporting data. The steps of receiving digital madels, user
`
`inputs, and reoporing deta are well-understood, routing, and conventional dala gathering steps or
`
`computer outout stens. Recling such well-undersiood, routing, and conventional elements not transform
`
`a judicial excention into patent eligible subleci matter. in addition, the recitalian of the speaific iypes of
`
`data, to be used in the judicial exception does not transform the absiract idea into a nan-absiract idea.
`
`(See buvGSAFE, ine. v Google, inc. 765 F.3d 1350, 112 US.P.G.2d 1068 (Fed. Cir2014)}), Furthermore,
`
`the elemenis taken as a combination are aise well-understood, routing, and conventional, since the
`
`slements are merely specifying ihe Lypes of dala far a daia gathering step. Thus, the instant clairns do not
`
`inclucle additional elernenis that are sufficient io amount io significantly more than the judicial exception.
`
`Claim Rejections - 35 USC § 103
`
`4.
`
`In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and
`
`103 (or as subject to pre-AlA 35 U.S.C. 102 and 103)is incorrect, any correction of the statutory basis
`
`

`

`Application/Control Number: 16/652,755
`Art Unit: 1671
`
`Page 4
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`(i.e., changing from AIA to pre-AlA) for the rejection will not be considered a new groundofrejection if the
`
`prior art relied upon, and the rationale supporting the rejection, would be the same undereitherstatus.
`
`The following is a quotation of 35 U.S.C. 103 which forms the basisfor all obviousness rejections
`
`set forth in this Office action:
`
`Apatent fora claimed invention may notbe obtained, notwithstanding that the claimed
`invention is not identically disclosed as set forth in section 102, if the differences between the
`claimed invention and the prior artare suchthat the claimed invention as a whole would have
`been obvious beforethe effective filing date of the claimed inventionto a person having
`ordinaryskill in the art to which the claimed invention pertains. Patentability shall notbe
`negated by the mannerin whichthe invention was made.
`
`This application currently namesjoint inventors. In considering patentability of the claims the
`
`examiner presumesthat the subject matter of the various claims was commonly ownedasof the effective
`
`filing date of the claimed invention(s) absent any evidenceto the contrary. Applicantis advised of the
`
`obligation under 37 CFR 1.56 to point out the inventor and effectivefiling dates of each claim that was not
`
`commonly ownedasofthe effective filing date of the later invention in order for the examiner to consider
`
`the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art againstthe later
`
`invention.
`
`5.
`
`Claims 1-5, 10-16, and 19-28 are rejected under 35 U.S.C. 103 as being unpatentable over
`
`Chishti et al. (US 2015/0351871 A1) in view of Cheng et al. (US 2008/0057461 A1).
`
`Regarding claim 1, Chishti et al. teach a method that includes receiving a digital 3D modelof
`
`teeth (paragraph [0019]), generating aninitial treatment path with stagesincluding aninitial set up,final
`
`setup, and a plurality of intermediate setups (paragraphs [0057]-[0058], [0061], [0088] and [0089]) and
`
`dividingtheinitial treatment path into steps of feasible motion of the teeth (paragraphs [0153]-[0155]).
`
`However, Chishti et al. does not teach performing interproximal reduction (IPR) on the model.
`
`Cheng et al. teach a method that includes applying IPR on a model (paragraphs [0004] and
`
`[0005]), computing IPR accessibility for each tooth at each stageof the initial treatment path (paragraphs
`
`[0005] and [0016]-[0020]), applying IPR throughouttheinitial treatment path (paragraph [0037)).
`
`It would have beenobviousfor oneof ordinary skill in the art, at the timeoffiling, to integrate the
`
`method of Chengetal. in to the method of Chishti et al. Chishti et al. teach a method of creating a plan
`
`

`

`Application/Control Number: 16/652,755
`Art Unit: 1671
`
`Page 5
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`for prepositioning an orthodontic patient’s teeth using a 3D model (paragraph [0019]). Cheng et al. teach
`
`that a successful orthodontic treatment would require sufficient IPR (paragraph [0002]). Oneof ordinary
`
`skill in the art would have been motivated to incorporate the IPR methodsof Cheng et al. into the method
`
`of Chishti et al. to ensure the treatment plan sufficiently accounted for IPR. Furthermore, one of ordinary
`
`skill in the art would have a reasonable expectation of success of combining the methods, since the data
`
`of Cheng et al. could be readily incorporated into the mathematical 3D model of Chishti et al.
`
`Regarding claim 2, Chishti et al. teach wherethe treatment plan has key intermediate steps
`
`(paragraph [0155)).
`
`Regarding claim 3, Chishti et al. teach refining the trajectory of the initial treatment path based
`
`upon the numberof steps in the treatment path (paragraph [0133], [0141]-[0142], and [0147)).
`
`Regarding claim 4, Chishti et al. teach performing the refinement based upon an evaluation
`
`criteria that assigns scores to the setups (paragraph [0154]).
`
`Regarding claim 5, Chishti et al. teach where the refinementincludes adjusting the resolution of
`
`the treatment path (paragraph [0141]).
`
`Regarding claims 10 and 11, Cheng et al. teach applying IPR to a treatment path (paragraphs
`
`[0020] and [0023]).
`
`Regarding claim 12, Chenget al. teach minimizing the numberof IPR session (paragraph [0035)).
`
`Regarding claim 13, Chenget al. teach selecting the IPR algorithm by userinput (paragraphs
`
`[0035] and [0037]).
`
`Regarding claim 14, Chishti et al. teach generating the final treatment path based uponuserinput
`
`(paragraph [0141)),
`
`Regarding claim 15, Chishti et al. teach where the input comprises key setups (paragraph
`
`[0142]).
`
`Regarding claim 16, Chishti et al. teach where the userinput comprises intermediate setups
`
`(paragraph [0142)).
`
`Regarding claim 19, Chishti et al. teach dividing thefinal treatment path based on key frames
`
`(paragraphs [0143]-[0145]).
`
`

`

`Application/Control Number: 16/652,755
`Art Unit: 1671
`
`Page6
`
`Regarding claim 20, Chishti et al. teach generating multiple final treatment paths (paragraph
`
`[0146]).
`
`[0154]).
`
`Regarding claim 21, Chishti et al. teach reporting scores of multiple treatment paths (paragraph
`
`Regarding claim 22, Chishti et al. teach selecting a final treatment path based upon userinput
`
`(paragraph [0154)).
`
`Regarding claim 23, Chishti et al. teach receiving a first digital modelof teeth atafirst state
`
`(paragraph [0153)), receiving a second digital modelof teeth at a second state (paragraph [0153]), and
`
`dividing betweenthefirst and second states a set of states corresponding to the feasible motion steps
`
`from thefirst state to the second state (paragraphs [0153]-[0155)).
`
`Regarding claim 24, Chishti et al. teach where the digital models include a 3D representation of
`
`teeth (paragraph [0019]).
`
`Regarding claim 25, Chishti et al. teach where the key framestate in includes as a step between
`
`the first and second steps (paragraph [0142]).
`
`Regarding claim 26, Cheng et al. teach wherethe digital models include IPR (paragraph [0005]).
`
`Regarding claim 27, Chishti et al. teach where dividing step optimizes for the minimum numberof
`
`steps required (paragraphs [0146]-[0147]).
`
`Regarding claim 28, Chishti et al. teach wherethefirst stateis the initial state and the second
`
`state is the final state (paragraph [0146)).
`
`Double Patenting
`
`6.
`
`The nonstatutory double patenting rejection is based on a judicially created doctrine groundedin
`
`public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise
`
`extension ofthe “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 examinedapplication claim is either anticipated by, or would have been obviousover, the
`
`reference claim(s). See, e.g., /n re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re
`
`

`

`Application/Control Number: 16/652,755
`Art Unit: 1671
`
`Page 7
`
`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 timelyfiled terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to
`
`overcomeanactualor 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 madeas a result of activities undertaken within the scopeof a joint research
`
`agreement. See MPEP § 717.02 for applications subject to examination underthefirst inventor to file
`
`provisionsof the AIA as explained in MPEP § 2159. See MPEP§ 2146 etseq.for applications not subject
`
`to examination under the first inventorto file provisions of the AIA. A terminal disclaimer must be signed
`
`in compliance with 37 CFR 1.321(b).
`
`Thefiling of a terminal disclaimerbyitself 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 rejectionis 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). Fora 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 befiled after final for consideration. See
`
`MPEP §§ 706.07(e) and 714.13.
`
`The USPTOInternet website contains terminal disclaimer forms which may be used. Pleasevisit
`
`www.uspto.gov/patent/patents-forms.The actualfiling 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 meetsall requirements is auto-processed and approved immediately upon submission.
`
`For moreinformation about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-
`
`online/eterminal-disclaimer.
`
`7.
`
`Claims 1-5, 10, 14-16, 19-26 and 28 are provisionally rejected on the ground of nonstatutory
`
`double patenting as being unpatentable over claim 1 of copending Application No. 17/441,331 (reference
`
`

`

`Application/Control Number: 16/652,755
`Art Unit: 1671
`
`Page 8
`
`application). Although the claims at issue are notidentical, they are not patentably distinct from each
`
`other becausethe claims of the reference application teachall the limitations of the instant claim.
`
`Instant claim 1 differs from claim 1 of the reference application in that the instant claims include a
`
`step of performing IPR, computing IPR accessibility, and applying IPR throughouttheinitial treatment
`
`path. However, claim 19 which dependsfrom claim 1 of the reference application teachesthe steps of
`
`performing IPR, computing IPR accessibility, and applying IPR throughouttheinitial treatment path.
`
`Thus, the claims at issue are not patentably distinct from each other.
`
`Instant claim 2 recites the same limitations as claim 2 of the reference application. Thus, the
`
`claims at issue are not patentably distinct from each other.
`
`Instant claim 3 recites the same limitation as claim 3 of the reference application. Thus, the
`
`claims at issue are not patentably distinct from each other.
`
`Instant claim 4 recites the same limitations as claim 4 of the reference application. Thus, the
`
`claims at issue are not patentably distinct from each other.
`
`Instant claim 5 recites the same limitations as claim 5 of the reference application. Thus, the
`
`claims at issue are not patentably distinct from each other.
`
`Instant claim 10 recites the same limitations as claim 20 of the reference application. Thus, the
`
`claims at issue are not patentably distinct from each other.
`
`Instant claim 14 recites the same limitations as claim 10 of the reference application. Thus, the
`
`claims at issue are not patentably distinct from each other.
`
`Instant claim 15 recites the same limitations as claim 11 of the reference application. Thus, the
`
`claims at issue are not patentably distinct from each other.
`
`Instant claim 16 recites the same limitations as claim 12 of the reference application. Thus, the
`
`claims at issue are not patentably distinct from each other.
`
`Instant claim 19 recites the same limitations as claim 15 of the reference application. Thus, the
`
`claims at issue are not patentably distinct from each other.
`
`Instant claim 20 recites the same limitations as claim 16 of the reference application. Thus, the
`
`claims at issue are not patentably distinct from each other.
`
`

`

`Application/Control Number: 16/652,755
`Art Unit: 1671
`
`Page 9
`
`Instant claim 21 recites the same limitations as claim 17 of the reference application. Thus, the
`
`claims at issue are not patentably distinct from each other.
`
`Instant claim 22 recites the same limitations as claim 18 of the reference application. Thus, the
`
`claims at issue are not patentably distinct from each other.
`
`Instant claim 23 differs from the claim 1 of the reference application in that the instant claim refers
`
`to receiving a first state and secondstate and dividing thefirst and secondstates a set of states
`
`correspondingto feasible motion steps from thefirst state to the second state. However,a first and
`
`secondstate maybeinterpreted astheinitial setup and final setup as described in the reference
`
`application.
`
`In addition, dividing thefirst and second states maybe interpreted as dividing theinitial
`
`treatment path as described in the reference application. Thus, the claims at issue are not patentably
`
`distinct from each other.
`
`Instant claim 24 recites using a 3D modelfor the representation of teeth as in claim 1 of the
`
`reference application. Thus, the claims at issue are not patentably distinct from each other.
`
`Instant claim 25 recites there is a key frame state betweenthefirst and second states as in claim
`
`15 of the reference application. Thus, the claims at issue are not patentably distinct from each other.
`
`Instant claim 26 recites thereis information relating the IPR in the model as doesclaim 19 of the
`
`reference application. Thus, the claims at issue are not patentably distinct from each other.
`
`Instant claim 28 recites where the first state is the initial state and the second state is the final
`
`state in the treatment path as in claim 1 of the reference application. Thus, the claims at issue are not
`
`patentably distinct from each other.
`
`This is a provisional nonstatutory double patenting rejection because the patentablyindistinct
`
`claims have notin fact been patented.
`
`ContactInformation
`
`Anyinquiry concerning this communication or earlier communications from the examiner should
`
`be directed to JERRY LIN whose telephone numberis (571)272-2561. The examiner can normally be
`
`reached M, W-F 7am-5:30pm.
`
`

`

`Application/Control Number: 16/652,755
`Art Unit: 1671
`
`Page 10
`
`Examinerinterviews 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, Karl
`
`Skowronek canbe reached on (571) 272-4517. The fax phone numberfor the organization wherethis
`
`application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of published or unpublished applications may be obtained from
`
`Patent Center. Unpublished application information in Patent Centeris available to registered users. To
`
`file and manage patent submissions in Patent Center, visit: https://oatentcenter.uspto.gov. Visit
`
`https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and
`
`https://www.uspto.gov/patents/docx for information aboutfiling in DOCX format. For additional questions,
`
`contactthe Electronic Business Center (EBC) at 866-217-9197(toll-free). If you would like assistance
`
`from a USPTO CustomerService Representative, call 800-786-9199 (INUSA OR CANADA)or 571-272-
`
`1000.
`
`/JERRY LIN/
`Primary Examiner, Art Unit 1671
`
`