Ormco Corporation

Patent Trials and Appeals Board

Jul 20, 2021

2020002094 (P.T.A.B. Jul. 20, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/209,487 03/13/2014 Craig A. ANDREIKO ORM-542US 1075
83571 7590 07/20/2021
Wood, Herron & Evans, LLP (Sybron)
441 Vine Street
2700 Carew Tower
Cincinnati, OH 45202
EXAMINER
BEG, SAMAH A
ART UNIT PAPER NUMBER
2668
NOTIFICATION DATE DELIVERY MODE
07/20/2021 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time 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):
ABilton@whe-law.com
usptodock@whe-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CRAIG A. ANDREIKO, ROBERT F. DILLON, and
ANDREW F. VESPER
Appeal 2020-002094
Application 14/209,487
Technology Center 2600
Before JOSEPH L. DIXON, MAHSHID D. SAADAT, and
JAMES W. DEJMEK, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 4, 16, 19, and 23.2 We have
jurisdiction under 35 U.S.C. § 6(b).

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a) (2018). Appellant identifies the real party in interest as Ormco
Corporation. Appeal Br. 3.
2 Claims 2 and 17 have been canceled and claims 3, 5–15, 18, 20–22, and
24–26 have been withdrawn from consideration. See Final Act. 2.
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We REVERSE, and enter a new ground of rejection for claims 1 and
16 pursuant to our authority under 37 C.F.R. § 41.50(b).
CLAIMED SUBJECT MATTER
The claims are directed to “a diagnostic equipment that allows a
dental practitioner to see the inside of a patient’s mouth and display the
topographical characteristics of teeth on a display unit.” Spec. ¶ 2. Claim 1,
reproduced below, illustrates the claimed subject matter:
1. A method for using a dental imaging system, the
method comprising:
receiving image data from the dental imaging system;
analyzing, via a processor, the received image data to
measure one or more image properties;
determining a tracking error by comparing the one or
more measured image properties with a target value for each of
the one or more image properties;
while the tracking error is greater than a predetermined
value,
adjusting one or more imaging parameters corresponding
to the one or more image properties to reduce the tracking error;
receiving adjusted image data corresponding to the
adjusted one or more imaging parameters from the dental
imaging system;
measuring one or more adjusted image properties of the
adjusted image data; and iterating one or more times of at least
determining the tracking error.
Appeal Br. 19 (Claims App.).
REFERENCES
The prior art relied upon by the Examiner is:
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Name Reference Date
Rubner US 2009/0040364 A1 Feb. 12, 2009
Fisker US 2012/0092461 A1 Apr. 19, 2012
Pillman US 2012/0177352 A1 July 12, 2012
REJECTION
Claims 1, 4, 16, 19, and 23 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Fisker, Pillman, and Rubner.3 Final Act. 6.
OPINION
REJECTION UNDER 35 U.S.C. § 103(a)
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions in the Appeal Brief and the Reply Brief that the Examiner has
erred, as well as the Examiner’s response to Appellant’s arguments in the
Appeal Brief. As discussed below, we are persuaded by Appellant’s
contentions of Examiner error.
For the recited steps of “receiving image data” and “analyzing, . . .,
the received image data” limitations, the Examiner relies on Fisker’s
disclosure of recording images and determining in-focus information. Non-
Final Act. 7 (citing Fisker ¶¶ 63, 74, 93–96, 292, Fig. 20); see also Ans. 4
(citing Fisker ¶¶ 63, 74). The Examiner further finds Pillman teaches
methods for determining a tracking error, comparing the error with a
predetermined value, and adjusting an imaging parameter that results in
receiving the adjusted image data. Non-Final Act. 7–8 (citing Pillman

3 The Examiner refers to the previous Office Action for the detailed analysis
of the rejection. See Final Act. 6. We therefore refer to the Non-Final
Action, mailed Mar. 13, 2013, for the Examiner’s findings with respect to
this rejection.

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¶¶ 124, 125). As to the reason for modifying Fisker with the teachings of
Pillman, the Examiner states:
Pillman is considered analogous art because it pertains to
reducing effects of motion blur in captured images. Therefore,
it would have been obvious to one of ordinary skill in the art at
the time of the invention to substitute the focal plane
adjustments of Fisker with the exposure time update based on
the calculated image motion blur, as taught by Pillman, to
produce the best image quality with the maximum desired
magnitude of motion blur (Pillman, ¶0124).
Non-Final Act. 8. Lastly, the Examiner relies on Rubner as disclosing
measuring the adjusted image properties and iterating the step of
determining the tracking error. Non-Final Act. 8–9 (citing Rubner ¶¶ 56, 57,
Fig. 1A). According to the Examiner, the reasoning for the proposed
combination includes:
Rubner is considered analogous art because it pertains to
reducing deficiencies through camera exposure control.
Therefore, it would have been obvious to one of ordinary skill
in the art at the time of the invention to modify the exposure
parameter updating step taught by the combination of Fisker in
view of Pillman with the iterative image analysis and adaptive
exposure control process taught by Rubner to effectively
ameliorate image quality deficiencies related to motion blur
(Rubner, ¶¶0057–0058).
Non-Final Act. 9.
Appellant contends that the Examiner erred in combining Fisker with
Pillman because the record does not support the reasoning that one of
ordinary skill in the art would have made the proposed substitution of
exposure time update calculation of Pillman for the focal plane adjustments
of Fisker. Appeal Br. 6. According to Appellant, “the function of the focal
plane adjustment differs from the function of the exposure time update
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calculation.” Id. With respect to Fisker, Appellant argues that the disclosed
image capturing system is based on capturing images of the object as the
focal plane is moved, which results in images having in-focus and out of
focus pixels depending on the topography of the surface. See Id. at 7–8.
Appellant asserts that in a process for capturing an archival image on a
digital camera, Pillman is concerned with motion velocity and scene
brightness, which are reduced based on the calculated motion blur
parameter. See id. at 8–9. Based on these operational differences, Appellant
argues that the Examiner’s proposed combination is improper and
unsupported by a rational underpinning because it changes the principle of
operation of Fisker and is counterproductive to the objective of Fisker. See
id. at 10–14.4
In response, the Examiner reiterates the findings with respect to Fisker
and asserts “compensating for the relative movement between the probe and
teeth during dental imaging is a problem to be solved,” which is further
addressed by Pillman’s disclosure of “exposure control technique” for
solving “motion-related blur.” Ans. 4 (citing Fisker ¶ 63, Pillman ¶¶ 68, 71).
The Examiner does not add any further findings regarding the reasoning for
combining the two references and explains “substituting the focal plane
adjustment of Fisker with Pillman’s exposure control method to obtain a
high quality image would not improperly change the principle operation of
Fisker, as both focal adjustment and exposure control are encompassed by
Pillman’s method.” Ans. 5. The Examiner adds that the proposed
modification would benefit Fisker because “Fisker recognizes that his

4 We do not address Appellant’s other contentions because the above-stated
arguments are dispositive of the appealed rejection.
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method requires a large amount of data, and provides a solution of having
the data processing components within the scanner housing in order to
decrease the overall scanning and processing time required.” See Ans. 5–6
(citing Fisker ¶ 74)).
Based on our review of the references, we agree with Appellant’s
contention that the references’ teachings concern different aspects of
improving the captured image related to different image capturing
techniques. The cited portions of Fisker disclose a process for capturing
images of an object involving confocal microscopy using “the variation, i.e.
scanning, of the focal plane without moving the scanner in relation to the
object being scanned” which, although benefits from reduced amount of
shaking, does not involve using the types of lens adjustments discussed in
Pillman. See Fisker ¶¶ 2–4, 63. The only reference made in Fisker to
“motion” and “motion blur” is in the context of tracing the object at a
suitable scanning speed or motion sensors for capturing 3D images. See id.
¶¶ 135, 175. Pillman, on the other hand, discloses capturing image using a
digital camera and improving the image quality by adjusting different
camera settings. See Pillman ¶¶ 5, 71–73, 109.
We therefore agree with Appellant’s assertion that the Examiner has
not sufficiently explained how combining the motion blur calculations of
Pillman with the image capturing process disclosed by Fisker based on
pattern projection onto the object surface would have taught or suggested the
recited claim features. In fact, the Examiner has not identified any teachings
in Fisker or Pillman to support the reasoning that reducing motion blur
would justify the combination or even result in the recited imaging process.
See Ans. 5–6. In the absence of such an explanation, we decline to speculate
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as to whether an ordinarily skilled artisan would have been motivated to
modify Fisker with Pillman. See In re Warner, 379 F.2d 1011, 1017 (CCPA
1967) (declining to resort to impermissible speculation or unfounded
assumptions or hindsight reconstruction to supply deficiencies in the
Examiner’s factual basis).
Accordingly, we do not sustain the 35 U.S.C. § 103(a) rejection of
claim 1, independent claims 16 and 23 which recite limitations similar in
scope with claim 1, as well as claims 4 and 19 dependent therefrom.
NEW GROUND OF REJECTION UNDER 35 U.S.C. § 101
During prosecution, the Examiner had rejected claims 1 and 16 under
35 U.S.C. § 101 as directed to a judicial exception, which the Examiner
described as “the abstract idea of receiving and analyzing image data during
dental imaging,” whereas the additional elements “amount(s) to no more
than well-understood, routine and conventional activities” and “do not
provide meaningful limitation(s) to transform the abstract idea into a patent
eligible application of the abstract idea.” Office Act. mailed Mar. 9, 2017,
pp. 7–8. Appellant responded by amending claims 1 and 16 with some of
the subject matter recited in claims 2 and 17, which were not subject to the
rejection under § 101. Response 11–12 (May 4, 2018). Although the
amended claims did not include the exact language of claims 2 and 17, the
Examiner withdrew the rejection, but provided no explanation or
determination of patent eligibility of the amended claims. Final Act. 2 (Sept.
6, 2018). We have reconsidered claims 1 and 16 in view of the Eligibility
Guidance published in 20195 and the October 2019 Guidance Update after

5 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
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the Examiner withdrew the rejection and have determined that a rejection
under 35 U.S.C. § 101 is appropriate under this Guidance. This is a new
ground of rejection pursuant to 37 C.F.R. § 41.50(b). Pursuant to our
authority under 37 C.F.R. § 41.50(b), we reject independent claims 1 and 16
under 35 U.S.C. § 101.
Principles of Law
Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the
Patent Act, which recites:
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.
There is, however, an implicit, longstanding exception to patent-
eligible subject matter in 35 U.S.C. § 101: “[l]aws of nature, natural
phenomena, and abstract ideas are not patentable.” Alice Corp. v. CLS Bank
Int’l, 573 U.S. 208, 216 (2014) (citation omitted). This exception precludes
patenting of “the basic tools of scientific and technological work” from
which all inventions spring. Id. at 216–17 (quotation marks and citation
omitted). Invention or discovery under § 101 is distinguished as being the
application of such tools to an end otherwise satisfying the requirements of
the patent statutes. See Gottschalk v. Benson, 409 U.S. 63, 67 (1972).
The Supreme Court has established a framework for this eligibility
determination. Where a claim is directed towards a law of nature, natural
phenomena, or abstract idea, the elements of the claim as a whole must
ensure that the claim, in practice, amounts to significantly more than a patent

(Jan. 7, 2019) (“Eligibility Guidance”) (throughout this decision, we cite to
the Federal Register where the Eligibility Guidance is published).
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on the law of nature, natural phenomena, or abstract idea itself. Alice, 573
U.S. at 217–18. In applying this eligibility analysis, our reviewing court has
stated, “the decisional mechanism courts now apply is to examine earlier
cases in which a similar or parallel descriptive nature can be seen[,] . . . the
classic common law methodology for creating law when a single governing
definitional context is not available.” Amdocs (Isr.) Ltd. v. Openet Telecom,
Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (citation omitted).
USPTO Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (“USPTO”)
published revised guidance on the application of 35 U.S.C. § 101. See
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“2019 Guidance”), updated by USPTO, October 2019
Update: Subject Matter Eligibility (available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf) (“October 2019
Guidance Update”); see also October 2019 Patent Eligibility Guidance
Update, 84 Fed. Reg. 55942 (Oct. 18, 2019) (notifying the public of the
availability of the October 2019 Guidance Update). “All USPTO personnel
are, as a matter of internal agency management, expected to follow the
guidance.” 2019 Guidance, 84 Fed. Reg. at 51; see also October 2019
Guidance Update at 1. The Manual of Patent Examining Procedure
(“MPEP”) now incorporates this revised guidance and subsequent updates at
Section 2106 (9th ed. Rev. 10.2019, rev. June 2020).6
Under MPEP § 2106, we first look to whether the claim recites the
following:

6 All references to the MPEP are to the Ninth Edition, Revision 10.2019
(Last Revised June 2020), unless otherwise indicated.
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(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activities such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application.7
MPEP § 2106.04(a), (d).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, [and] conventional activity” in the field; or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
MPEP § 2106.05(d).
Analysis
Independent claim 1 is reproduced below with paragraph letters and
with emphasis added to the claim language that recites one or more abstract
ideas:
1. A method for using a dental imaging system, the
method comprising:
(a) receiving image data from the dental imaging system;

7 “Examiners evaluate integration into a practical application by
(1) identifying whether there are any additional elements recited in the claim
beyond the judicial exception(s), and (2) evaluating those additional
elements individually and in combination to determine whether the claim as
a whole integrates the exception into a practical application.” MPEP
§ 2106.04(d)II.
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(b) analyzing, via a processor, the received image data to
measure one or more image properties;
(c) determining a tracking error by comparing the one or
more measured image properties with a target value for each of
the one or more image properties;
(d) while the tracking error is greater than a
predetermined value,
(e) adjusting one or more imaging parameters
corresponding to the one or more image properties to reduce
the tracking error;
(f) receiving adjusted image data corresponding to the
adjusted one or more imaging parameters from the dental
imaging system;
(g) measuring one or more adjusted image properties of
the adjusted image data; and iterating one or more times of at
least determining the tracking error.
Step 2A, Prong 1:
Under step 2A, prong 1, of the 2019 Guidance, we first look to
whether claim 1 recites any judicial exceptions, including certain groupings
of abstract ideas (i.e., mathematical concepts, certain methods of organizing
human activities such as a fundamental economic practice, or mental
processes). MPEP § 2106.04(a).
Limitations (b)–(e) recite limitations related to analyzing an image
data and measuring its properties, determining a tracking error, and adjusting
a parameter when the error is greater than a threshold. Limitation (g) recites
limitations related to measuring the properties associated with the adjusted
image and repeating the step of determining the tracking error recited in
limitation (c). Analyzing images, determining tracking error, adjusting
image properties constitute functions that are in the category of mental
processes, such as an observation, evaluation, judgment, or opinion that can
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be performed in the human mind. The 2019 Guidance expressly recognizes
such mental processes as constituting patent-ineligible abstract ideas. MPEP
§ 2106.04(a).
Claim 1 recites an act of judgment and evaluation in the form of the
above-cited limitations, which allows a user to adjust the imaging
parameters based on determining how the adjustment affects the resulting
image by comparing the measures property with a predetermined target
property. Such acts are characteristic of mental processes, which comprise a
category of abstract ideas. October 2019 Update to the Guidance, 7–9;
Cybersource v. Retail Decisions, 654 F.3d 1366, 1372 (Fed. Cir. 2011)
(finding steps extending to “essentially any method of detecting credit card
fraud based on information relating past transactions,” to be an unpatentable
mental process); FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d
1089, 1093–94 (Fed. Cir. 2016) (finding claims to “detecting fraud and/or
misuse in a computer environment based on analyzing data such as in log
files, or other similar records, including user identifier data” to be an
ineligible mental process).
Accordingly, each of limitations (b)–(e) and (g) recite a patent-
ineligible abstract idea. See RecogniCorp, LLC v. Nintendo Co., 855 F.3d
1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea . . . to another
abstract idea . . . does not render the claim non-abstract.”)
Pursuant to the 2019 Guidance, such limitations are the abstract concept of
“[c]ertain methods of organizing human activity.” Id.
Moreover, limitations (a) and (f) recite limitations related to receiving
an image data or an adjusted image data from a dental imaging system. As
such, these steps describe functions related to receiving and presenting data.
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See Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l
Ass’n, 776 F.3d 1343 (Fed. Cir. 2014) (discussing that merely presenting the
results of abstract processes of collecting and analyzing information, without
more (such as identifying a particular tool for presentation), is abstract as an
ancillary part of such collection and analysis.)); see also 2019 Guidance, 84
Fed. Reg. at 52.
Claim 16 recites “[a] non-transitory computer readable storage
medium for using a dental imaging system, wherein code stored in the non-
transitory computer readable storage medium when executed by a processor
causes operations” that include the function recited in claim 1.
The Guidance states that the abstract idea exception includes
mathematical concepts, certain methods of organizing human activity, and
mental processes. Guidance, 84 Fed. Reg. at 52. The 2019 Guidance
describes mental processes as observations, evaluations, judgements, and
opinions, where such can be practically performed in the human mind.
October 2019 Update: Subject Matter Eligibility 7, accessible at
https://www.uspto.gov/
sites/default/files/documents/peg_oct_2019_update.pdf. Cases reciting steps
of collecting, comparing, and analyzing known information, which are
practically performed in the human mind, are provided as examples of such
mental processes. Id. at 7–8 (citing Classen,8 Electric Power9).

8 Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057 (Fed. Cir.
2011).
9 Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016).
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Step 2A, Prong 2
Under step 2A, prong 2, of the 2019 Guidance, we next analyze
whether claim 1 recites additional elements that individually or in
combination integrate the judicial exception into a practical application.
2019 Guidance, 84 Fed. Reg. at 53–55. The 2019 Guidance identifies
considerations indicative of whether an additional element or combination of
elements integrate the judicial exception into a practical application, such as
an additional element reflecting an improvement in the functioning of a
computer or an improvement to other technology or technical field. Id. at
55; MPEP § 2106.05(a).
Limitation (a) of claim 1 recites, “receiving image data from the
dental imaging system.” This step merely constitutes insignificant pre-
solution activity:
An example of pre-solution activity is a step of gathering data for
use in a claimed process, e.g., a step of obtaining information
about credit card transactions, which is recited as part of a
claimed process of analyzing and manipulating the gathered
information by a series of steps in order to detect whether the
transactions were fraudulent.
MPEP § 2106.05(g).
Similarly, claim 1’s step (f) recites “receiving adjusted image data
corresponding to the adjusted one or more imaging parameters from the
dental imaging system.” This step does not add any meaningful limitations
to the abstract idea because it merely constitutes the insignificant post-
solution activity of transmitting data. E.g., Apple, Inc. v. Ameranth, Inc., 842
F.3d 1229, 1241–42 (Fed. Cir. 2016) (holding that printing or downloading
generated menus constituted insignificant extra-solution activity). As our
reviewing court has stated, a claim “focused on providing information . . . in
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a way that helps [a human] process information more quickly,” or
analogously, with less ambiguity, does not recite some manner of
“improving computers or technology.” Trading Techs. Int’l, Inc. v. IBG
LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019).
Claim 1’s preamble additionally recites that the method is for “using a
dental imaging system” and step (b) of the claim recites “analyzing, via a
processor, the received image data.” However, these recitations only
describe an application of a generic imaging system in a manner that
amounts to mere instructions to implement the abstract idea on a
computer/processor, and, therefore, is insufficient to make the claim patent
eligible. See Alice, 573 U.S. at 226 (determining that the claim limitations
“data processing system,” “communications controller,” and “data storage
unit” were generic computer components that amounted to mere instructions
to implement the abstract idea on a computer); October 2019 Guidance
Update at 11–12 (recitation of generic computer limitations for
implementing the abstract idea “would not be sufficient to demonstrate
integration of a judicial exception into a practical application”). Claim 16
also recites elements in its preamble that are directed to generic computer
components for performing the recited steps. We observe that Appellant’s
disclosure describes a problem (i.e., improving an image by adjusting the
imaging properties) that could be performed by a person. In fact,
Appellant’s disclosure includes no description of how the solution to the
stated problem in conventional methods of manipulating the imaging device
to adjust one or more parameter for obtaining a clear image improves the
computer technology. The recited steps involve functions that do not
improve the computer or its components’ functionality or efficiency, or
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otherwise change the way those devices function, at least in the sense
contemplated by the Federal Circuit in Enfish, LLC v. Microsoft Corp., 822
F.3d 1327 (Fed. Cir. 2016). The claimed self-referential table in Enfish was
a specific type of data structure designed to improve the way a computer
stores and retrieves data in memory. Enfish, 822 F.3d at 1339.
Additionally, “merely adding computer functionality to increase the
speed or efficiency of the process does not confer patent eligibility on an
otherwise abstract idea.” Intellectual Ventures I LLC v. Capital One Bank
(USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015). Moreover, the recited
functions of analyzing the image data using a processor is still an abstract
concept under the 2019 Guidance. See Synopsys, Inc. v. Mentor Graphics
Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (holding that “a claim for a new
abstract idea is still an abstract idea”) (emphasis omitted). That is,
monitoring and recognizing manual activities by retrieving, checking, and
comparing information, even performed on a computer, are parts of the
recited abstract idea, as discussed above.
The holding in Core Wireless Licensing S.A.R.L. v. LG Elec., Inc., 880
F.3d 1356 (Fed. Cir. 2018) also shows why the abstract ideas in this case are
not integrated into a practical application. Unlike claim 1, the claims in
Core Wireless recited an improved user interface. 880 F.3d at 1362. The
claimed “application summary” specified a particular manner to access a
summary window, a particular type of data to be displayed in the summary
window, and a particular time to display the summary window when an
application is in an un-launched state. Id. at 1362–63. The claims thus
recited a specific improvement to user interfaces that displayed a limited set
of information using unconventional user interface methods. Id. at 1363.
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For these reasons, we determine that claim 1 is not directed to an
improvement in the function of a computer or to any other technology or
technical field. MPEP § 2106.05(a). Nor do the claims recite any feature
that is directed to a particular machine or transformation, or that the claims
add any other meaningful limitations for the purposes of the analysis under
Section 101. MPEP §§ 2106.05(b), (c), (e). As the above-identified
elements are part of the abstract idea, they are not additional elements that
integrate the identified abstract idea into a practical application. See
Guidance, 84 Fed. Reg. 54–55 (“[E]valuate integration into a practical
application by: (a) Identifying whether there are any additional elements
recited in the claim beyond the judicial exception(s)”). Accordingly, we
determine the claim does not integrate the judicial exception into a practical
application within the meaning of the 2019 Guidance.
Step 2B
Having determined that claims 1 and 16 are directed to an abstract
idea, we next determine, under Step 2B of the 2019 Guidance, whether the
claims amount to significantly more than the abstract idea itself. 84 Fed.
Reg. at 56. A determination that the claims are significantly more may be
indicated where additional limitations, either alone or in combination, are
not well-understood, routine, conventional activity in the field. Id.
We determine that the additional elements, including the recited
dental imaging system, processor, non-transitory computer readable storage
medium, and code stored in the storage medium, are generic computer
components that serve to perform generic computer functions that are well-
understood, routine, and conventional. These components are described in
Appellant’s Specification as generic elements: dental imaging system: Spec.
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¶¶ 40, 45, Fig. 4; processor: Spec. ¶ 87; computer readable storage medium:
Spec. ¶¶ 83, 84; code: Spec. ¶ 85. Regarding the additional elements, we
observe that the claimed components merely amount to the application or
instructions to apply the abstract idea (i.e., a series of steps for collecting and
processing information for analysis of image data to determine the changes
after adjustments are made), which amount to nothing more than requiring a
generic computer system, including a processor, memory, databases and
electronic devices, to merely carry out the abstract idea itself. Using generic
computer components to perform abstract ideas does not provide the
necessary inventive concept. See Alice, 573 U.S. at 223 (“[T]he mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention.”). Thus, these elements, taken
individually or together, do not amount to “significantly more” than the
abstract ideas themselves. Therefore, the claims are not “significantly more”
than the abstract idea.
Furthermore, Appellant’s Specification does not indicate that the steps
performed by this conventional computer, when considered as an ordered
combination, add any significance beyond the additional elements, as
considered individually. Rather, Appellant’s Specification indicates that the
invention is directed to an abstract idea that is made more efficient with the
assistance of generic computer components—“the feedback control
application 104 adjusts the imaging parameters 108 to reduce tracking error
between targeted and measured values of the output.” See Spec. ¶ 31.
For these reasons, we determine that claims 1 and 16 do not recite
additional elements that, either individually or as an ordered combination,
amount to significantly more than the judicial exception within the meaning
Appeal 2020-002094
Application 14/209,487

19
of the 2019 Guidance. 2019 Guidance, 84 Fed. Reg. at 52–55; MPEP
§ 2106.05(d).
Remaining claims
Although we have rejected independent claims 1 and 16 under
37 C.F.R. § 41.50(b), we have not reviewed the remaining claims to the
extent necessary to determine whether these claims are unpatentable under
35 U.S.C. § 101. We leave it to the Examiner to determine the
appropriateness of any further rejections based thereon.
CONCLUSION
We reverse the Examiner’s rejection of claims 1, 4, 16, 19, and 23
under 35 U.S.C. § 103(a) over Fisker, Pillman, and Rubner.
Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), we
newly reject claims 1 and 16 under 35 U.S.C. § 101 as being directed to a
judicial exception to patent-eligible subject matter, i.e., an abstract idea,
without significantly more.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed New
Grounds
1, 4, 16,
19, 23
103(a) Fisker,
Pillman,
Rubner
1, 4, 16,
19, 23

1, 16 101 Patent
eligibility
1, 16
Overall
Outcome
1, 4, 16,
19, 23
1, 16

Appeal 2020-002094
Application 14/209,487

20
TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
Rule 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the proceeding will be remanded
to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. . . .
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

REVERSED;
37 C.F.R. § 41.50(b)