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
`
`NOTICE OF ALLOWANCE AND FEE(S) DUE
`
`107046
`7590
`10/22/2019
`WSGR I Align Technology , Inc.
`650 Page Mill Road
`Palo Alto, CA 94304
`
`EXAMINER
`
`VOLENTINE, REBECCA A
`
`ART UNIT
`
`PAPER NUMBER
`
`2483
`
`DATEMAILED: 10/22/2019
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`15/175,267
`
`06/07/2016
`
`Noam Babayoff
`
`22773-807.310
`
`3586
`
`TITLE OF INVENTION: METHOD AND APPARATUS FOR COLOUR IMAGING A THREE-DIMENSIONAL STRUCTURE
`
`APPLN. TYPE
`
`ENTITY STATUS
`
`ISSUE FEE DUE
`
`PUBLICATION FEE DUE PREY. PAID ISSUE FEE
`
`TOTAL FEE(S) DUE
`
`DATE DUE
`
`nonprovisional
`
`UNDISCOUNTED
`
`$1000
`
`$0.00
`
`$1000.00
`
`$0
`
`01/22/2020
`
`THE APPLICATION IDENTIFIED ABOVE HAS BEEN EXAMINED AND IS ALLOWED FOR ISSUANCE AS A PATENT.
`PROSECUTION ON THE MERITS IS CLOSED. THIS NOTICE OF ALLOWANCE IS NOT A GRANT OF PATENT RIGHTS.
`THIS APPLICATION IS SUBJECT TO WITHDRAWAL FROM ISSUE AT THE INITIATIVE OF THE OFFICE OR UPON
`PETITION BY THE APPLICANT. SEE 37 CFR 1.313 AND MPEP 1308.
`
`THE ISSUE FEE AND PUBLICATION FEE (IF REQUIRED) MUST BE PAID WITHIN THREE MONTHS FROM THE MAILING
`DATE OF THIS NOTICE OR THIS APPLICATION SHALL BE REGARDED AS ABANDONED. THIS STATUTORY PERIOD
`CANNOT BE EXTENDED. SEE 35 U.S.C. 151. THE ISSUE FEE DUE INDICATED ABOVE DOES NOT REFLECT A CREDIT
`FOR ANY PREVIOUSLY PAID ISSUE FEE IN THIS APPLICATION. IF AN ISSUE FEE HAS PREVIOUSLY BEEN PAID IN
`THIS APPLICATION (AS SHOWN ABOVE), THE RETURN OF PART B OF THIS FORM WILL BE CONSIDERED A REQUEST
`TO REAPPLY THE PREVIOUSLY PAID ISSUE FEE TOWARD THE ISSUE FEE NOW DUE.
`
`HOW TO REPLY TO THIS NOTICE:
`
`I. Review the ENTITY STATUS shown above. If the ENTITY STATUS is shown as SMALL or MICRO, verify whether entitlement to that
`entity status still applies.
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`If the ENTITY STATUS is the same as shown above, pay the TOTAL FEE(S) DUE shown above.
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`For purposes of this notice, small entity fees are 1/2 the amount of undiscounted fees, and micro entity fees are 1/2 the amount of small entity
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`
`II. PART B - FEE(S) TRANSMITTAL, or its equivalent, must be completed and returned to the United States Patent and Trademark Office
`(USPTO) with your ISSUE FEE and PUBLICATION FEE (if required). If you are charging the fee(s) to your deposit account, section "4b"
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`Page 1 of 3
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`PART B - FEE(S) TRANSMITTAL
`
`Complete and send this form, together with applicable fee(s), by mail or fax, or via EFS-Web.
`By mail, send to: Mail Stop ISSUE FEE
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`By fax, send to:
`
`(571)-273-2885
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`CURRENT CORRESPONDENCE ADDRESS (Note: Use Block 1 for any change of address)
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`INSTRUCTIONS: This form should be used for transmitting the ISSUE FEE and PUBLICATION FEE (if required). Blocks 1 through 5 should be completed where appropriate. All
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`Certificate of Mailing or Transmission
`I hereby certify that this Fee(s) Transmittal is being deposited with the United
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`addressed to the Mail Stop ISSUE FEE address above, or being transmitted to
`the USPTO via EFS-Web or by facsimile to (571) 273-2885, on the date below.
`
`107046
`7590
`10/22/2019
`WSGR I Align Technology , Inc.
`650 Page Mill Road
`Palo Alto, CA 94304
`
`(Typed or printed name)
`
`(Signature)
`
`(Date)
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`15/175,267
`
`06/07/2016
`
`Noam Babayoff
`
`22773-807.310
`
`3586
`
`TITLE OF INVENTION: METHOD AND APPARATUS FOR COLOUR IMAGING A THREE-DIMENSIONAL STRUCTURE
`
`APPLN. TYPE
`
`ENTITY STATUS
`
`ISSUE FEE DUE
`
`PUBLICATION FEE DUE PREY. PAID ISSUE FEE
`
`TOTAL FEE(S) DUE
`
`DATE DUE
`
`nonprovisional
`
`UNDISCOUNTED
`
`$1000
`
`$0.00
`
`$1000.00
`
`$0
`
`01/22/2020
`
`EXAMINER
`
`ART UNIT
`
`CLASS-SUBCLASS
`
`VOLENTINE, REBECCA A
`
`2483
`
`348-066000
`
`1. Change of correspondence address or indication of "Fee Address" (37
`CFR 1.363).
`0 Change of correspondence address ( or Change of Correspondence
`Address form PTO/SB/122) attached.
`0 "Fee Address" indication (or "Fee Address" Indication form PTO/
`SB/47; Rev 03-09 or more recent) attached. Use of a Customer
`Number is required.
`3. ASSIGNEE NAME AND RESIDENCE DATA TO BE PRINTED ON THE PATENT (print or type)
`
`2. For printing on the patent front page, list
`( 1) The names of up to 3 registered patent attorneys
`or agents OR, alternatively,
`(2) The name of a single firm (having as a member a
`registered attorney or agent) and the names of up to
`2 registered patent attorneys or agents. If no name is
`listed, no name will be printed.
`
`2 ______________ _
`
`3 ______________ _
`
`PLEASE NOTE: Unless an assignee is identified below, no assignee data will appear on the patent. If an assignee is identified below, the document must have been previously
`recorded, or filed for recordation, as set forth in 37 CFR 3.11 and 37 CFR 3.8l(a). Completion of this form is NOT a substitute for filing an assignment.
`
`(A) NAME OF ASSIGNEE
`
`(B) RESIDENCE: (CITY and STATE OR COUNTRY)
`
`Please check the appropriate assignee category or categories (will not be printed on the patent) : 0 Individual O Corporation or other private group entity O Government
`(cid:143) Advance Order - # of Copies _________ _
`4a. Fees submitted:
`Issue Fee
`Publication Fee (if required)
`4b. Method of Payment: (Please first reapply any previously paid fee shown above)
`0 Electronic Payment via EFS-Web
`0 Enclosed check
`0 Non-electronic payment by credit card (Attach form PTO-2038)
`0 The Director is hereby authorized to charge the required fee(s), any deficiency, or credit any overpayment to Deposit Account No. ____ _
`
`5. Change in Entity Status (from status indicated above)
`0 Applicant certifying micro entity status. See 37 CFR 1.29
`0 Applicant asserting small entity status. See 37 CFR 1.27
`0 Applicant changing to regular undiscounted fee status.
`
`NOTE: Absent a valid certification of Micro Entity Status (see forms PTO/SB/15A and 15B), issue
`fee payment in the micro entity amount will not be accepted at the risk of application abandonment.
`NOTE: If the application was previously under micro entity status, checking this box will be taken
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`NOTE: Checking this box will be taken to be a notification of loss of entitlement to small or micro
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`
`NOTE: This form must be signed in accordance with 37 CFR 1.31 and 1.33. See 37 CFR 1.4 for signature requirements and certifications.
`
`Authorized Signature _______________________ _
`
`Date ____________________ _
`
`Typed or printed name ______________________ _
`
`Registration No. ________________ _
`
`PTOL-85 Part B (08-18) Approved for use through 01/31/2020
`
`Page 2 of3
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`

`

`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.
`
`15/175,267
`
`06/07/2016
`
`Noam Babayoff
`
`22773-807.310
`
`3586
`
`107046
`7590
`10/22/2019
`WSGR I Align Technology , Inc.
`650 Page Mill Road
`Palo Alto, CA 94304
`
`EXAMINER
`
`VOLENTINE, REBECCA A
`
`ART UNIT
`
`PAPER NUMBER
`
`2483
`
`DATEMAILED: 10/22/2019
`
`Determination of Patent Term Adjustment under 35 U.S.C.154 (b)
`(Applications filed on or after May 29, 2000)
`
`The Office has discontinued providing a Patent Term Adjustment (PTA) calculation with the Notice of Allowance.
`
`Section l(h)(2) of the AIA Technical Corrections Act amended 35 U.S.C. 154(b)(3)(B)(i) to eliminate the requirement
`that the Office provide a patent term adjustment determination with the notice of allowance. See Revisions to Patent
`Term Adjustment, 78 Fed. Reg. 19416, 19417 (Apr. 1, 2013). Therefore, the Office is no longer providing an initial
`patent term adjustment determination with the notice of allowance. The Office will continue to provide a patent term
`adjustment determination with the Issue Notification Letter that is mailed to applicant approximately three weeks prior
`to the issue date of the patent, and will include the patent term adjustment on the patent. Any request for reconsideration
`of the patent term adjustment determination (or reinstatement of patent term adjustment) should follow the process
`outlined in 37 CFR 1.705.
`
`Any questions regarding the Patent Term Extension or Adjustment determination should be directed to the Office of
`Patent Legal Administration at (571)-272-7702. Questions relating to issue and publication fee payments should be
`directed to the Customer Service Center of the Office of Patent Publication at 1-(888)-786-0101 or (571 )-272-4200.
`
`PTOL-85 (Rev. 02/11)
`
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`0MB Clearance and PRA Burden Statement for PTOL-85 Part B
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`The Paperwork Reduction Act (PRA) of 1995 requires Federal agencies to obtain Office of Management and Budget
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`
`The information collected by PTOL-85 Part B is required by 37 CFR 1.311. The information is required to obtain
`or retain a benefit by the public which is to file (and by the USPTO to process) an application. Confidentiality is
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`gathering, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon
`the individual case. Any comments on the amount of time you require to complete this form and/or suggestions
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`U.S. Department of Commerce, P.O. Box 1450, Alexandria, Virginia 22313-1450. DO NOT SEND FEES OR
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`2. A record from this system of records may be disclosed, as a routine use, in the course of presenting evidence
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`5. A record related to an International Application filed under the Patent Cooperation Treaty in this system of
`records may be disclosed, as a routine use, to the International Bureau of the World Intellectual Property
`Organization, pursuant to the Patent Cooperation Treaty.
`6. A record in this system of records may be disclosed, as a routine use, to another federal agency for purposes of
`National Security review (35 U.S.C. 181) and for review pursuant to the Atomic Energy Act (42 U.S.C. 218(c)).
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`or his/her designee, during an inspection of records conducted by GSA as part of that agency's responsibility
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`8. A record from this system of records may be disclosed, as a routine use, to the public after either publication of
`the application pursuant to 35 U.S.C. 122(b) or issuance of a patent pursuant to 35 U.S.C. 151. Further, a record
`may be disclosed, subject to the limitations of 37 CFR 1.14, as a routine use, to the public if the record was filed
`in an application which became abandoned or in which the proceedings were terminated and which application
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`9. A record from this system of records may be disclosed, as a routine use, to a Federal, State, or local law
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`Notice of Allowability
`
`Application No.
`15/175,267
`Examiner
`REBECCA A VOLENTINE
`
`Applicant(s)
`Babayoff, Noam
`Art Unit
`2483
`
`No
`
`I AIA (FITF) Status
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address-(cid:173)
`All claims being allowable, PROSECUTION ON THE MERITS IS (OR REMAINS) CLOSED in this application. If not included
`herewith (or previously mailed), a Notice of Allowance (PTOL-85) or other appropriate communication will be mailed in due course. THIS
`NOTICE OF ALLOWABILITY IS NOT A GRANT OF PATENT RIGHTS. This application is subject to withdrawal from issue at the initiative
`of the Office or upon petition by the applicant. See 37 CFR 1.313 and MPEP 1308.
`
`1.~ This communication is responsive to a Request for Continued Examination filed 10/7/2019.
`D A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on __ .
`
`2.0 An election was made by the applicant in response to a restriction requirement set forth during the interview on __ ; the
`restriction requirement and election have been incorporated into this action.
`
`3.~ The allowed claim(s) is/are 1-7,9-17 and 19-32 . As a result of the allowed claim(s), you may be eligible to benefit from the Patent
`Prosecution Highway program at a participating intellectual property office for the corresponding application. For more information
`, please see http://www.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`4.0 Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a) (cid:143) All
`*c) D None of the:
`b) 0 Some
`1. D Certified copies of the priority documents have been received.
`2. D Certified copies of the priority documents have been received in Application No. __ .
`3. D Copies of the certified copies of the priority documents have been received in this national stage application from the
`International Bureau (PCT Rule 17.2(a)).
`
`* Certified copies not received: __ .
`
`Applicant has THREE MONTHS FROM THE "MAILING DATE" of this communication to file a reply complying with the requirements
`noted below. Failure to timely comply will result in ABANDONMENT of this application.
`THIS THREE-MONTH PERIOD IS NOT EXTENDABLE.
`
`5.0 CORRECTED DRAWINGS (as "replacement sheets") must be submitted.
`D including changes required by the attached Examiner's Amendment/ Comment or in the Office action of
`Paper No./Mail Date __ .
`Identifying indicia such as the application number {see 37 CFR 1.84{c)) should be written on the drawings in the front {not the back) of each
`sheet. Replacement sheet{s) should be labeled as such in the header according to 37 CFR 1.121{d).
`
`6.0 DEPOSIT OF and/or INFORMATION about the deposit of BIOLOGICAL MATERIAL must be submitted. Note the
`attached Examiner's comment regarding REQUIREMENT FOR THE DEPOSIT OF BIOLOGICAL MATERIAL.
`
`Attachment(s)
`1. D Notice of References Cited (PTO-892)
`2.~ Information Disclosure Statements (PTO/SB/08),
`Paper No./Mail Date 10/7/2019, 10/8/2019.
`3. D Examiner's Comment Regarding Requirement for Deposit
`of Biological Material
`.
`4.0 Interview Summary (PTO-413),
`Paper No./Mail Date.
`/REBECCA A VOLENTINE/
`Examiner, Art Unit 2483
`
`5. D Examiner's Amendment/Comment
`6. ~ Examiner's Statement of Reasons for Allowance
`
`7. (cid:143)
`
`Other __
`
`U.S. Patent and Trademark Office
`PTOL-37 (Rev. 08-13)
`
`Notice of Allowability
`
`Part of Paper No./Mail Date 20191016
`
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`Application/Control Number: 15/175,267
`Art Unit: 2483
`
`Page 2
`
`Information Disclosure Statement
`
`1.
`
`The information disclosure statements (IDS) were submitted on 10/7/2019 and 10/8/2019. The
`
`submissions are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information
`
`disclosure statements are being considered by the examiner.
`
`Reasons for Allowance
`
`2.
`
`A Terminal Disclaimer was filed rendering the prior double patenting rejections moot.
`
`The following is an examiner's statement of reasons for allowance: None of the prior art of record,
`
`alone or in combination, suggests, discloses, or renders obvious the system for determining surface
`
`topology and associated color of an intraoral structure of the instant invention.
`
`The instant invention is a system for determining surface topology and associated color of an
`
`intraoral structure. An imaging device includes an image sensor which captures depth image data by
`
`scanning a focal plane of the imaging device over a range of depths and color image data of the intraoral
`
`structure. A time interval between the capture of the depth image data and color image data is between 0
`
`and 100 milliseconds (the time interval is described in ~0030 of the specification. Incident light beams
`
`travel along a first path in a first direction through the imaging device and returned light beams returning
`
`from the intraoral structure propagate along the first path in a second direction through the imaging
`
`device. One or more processors coupled to the imaging device generate depth data of the intraoral
`
`structure portion using the depth image data from the imaging device corresponding to a first spatial
`
`disposition relative to the intraoral structure. The one or more processors additionally generate color data
`
`of the intraoral structure using the color image data from the imaging device corresponding to a second
`
`spatial disposition relative to the intraoral structure. The one or more processors associate the color data
`
`to the depth data.
`
`A notable prior art of record is Babayoff (WO00/008415). Babayoff, as cited in prior actions,
`
`discloses a confocal imaging array for capturing image data of an intraoral structure and changing the
`
`focal plane of the optics to capture images along a depth direction. Babayoff further discloses that surface
`
`topologies of adjacent portions from two or more different angular locations relative to the structure may
`
`be captured and then multiple surface topologies can be combined (page 7, likes 8-15). However
`
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`Application/Control Number: 15/175,267
`Art Unit: 2483
`
`Page 3
`
`Babayoff differs from the instant invention in several ways. Notably, Babayoff does not disclose capturing
`
`color data in addition to the depth image data like the instant invention. Babayoff makes no mention of
`
`generating depth data of the intraoral structure using depth image data from a first spatial disposition
`
`relative to the intraoral structure and separately generating color data of the intraoral structure using color
`
`image data from a second spatial disposition relative to the intraoral structure wherein the first spatial
`
`disposition differs from the second spatial disposition. Thus although Babayoff discloses capturing images
`
`of intraoral structures and scanning along the depth axis, Babayoff fails to disclose key features on the
`
`instant invention.
`
`Another notable prior art of record is Decker (US 2002/0057438). Decker, as cited in prior
`
`actions, also discloses generating surface topology information. In addition, Decker discloses capturing
`
`both color data and depth data. However, Decker fails to disclose several features of the instant
`
`invention. Primarily, Decker does not disclose generating the depth data separate from the color data and
`
`does not disclose any time interval between capturing the depth data and the color data. Instead, Decker
`
`acquires all image data (color and depth) in a single snapshot (~0031) wherein the color data is derived
`
`from the depth image data. This differs from the instant invention which generates depth data of the
`
`surface using depth data corresponding to a first spatial disposition and generates color data of the
`
`surface using color data corresponding to a second spatial disposition, wherein there is a time interval
`
`between the capturing of the depth data and the color image data. Additionally, Decker fails to disclose
`
`incident light beams travel along a first path in a first direction and returned light beams returning from the
`
`structure propagate along the same first path, but in a second direction. This difference is apparent in at
`
`least Fig.4 of Decker which shows an illumination system (82) generating beams at an angle relative to
`
`the camera (90). Decker uses triangulation to determine depth data (~0020, ~0034, ~0053) and thus
`
`system would be incompatible with a system that has incident light beams traveling on the same path as
`
`returned light beams, like Babayoff and the instant invention.
`
`Furthermore, the prior art of record does not provide a suggestion or disclosure that these
`
`components of the instant invention in combination would have been obvious. Therefore, the differences
`
`between the subject matter sought to be patented in the present application and the prior art are such that
`
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`Application/Control Number: 15/175,267
`Art Unit: 2483
`
`Page 4
`
`the subject matter as a whole would not have been obvious at the time the invention was made to a
`
`person having ordinary skill in the art to which said subject matter pertains.
`
`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."
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`Conclusion
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`3.
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`Any inquiry concerning this communication or earlier communications from the examiner should
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`be directed to REBECCA A VOLENTINE whose telephone number is (571 )270-7261. The examiner can
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`normally be reached on Monday-Friday 9am - 5pm.
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`Examiner interviews are available via telephone, in-person, and video conferencing using a
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`USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use
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`the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Joe
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`Ustaris can be reached on (571 )272-7383. The fax phone number for the organization where this
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`application or proceeding is assigned is 571-273-8300.
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`Information regarding the status of an application may be obtained from the Patent Application
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`Information Retrieval (PAIR) system. Status information for published applications may be obtained from
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`either Private PAIR or Public PAIR. Status information for unpublished applications is available through
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`Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
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`you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC)
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`at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative
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`or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-
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`1000.
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`/REBECCA A VOLENTINE/
`Examiner, Art Unit 2483
`October 17, 2019
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`Page 8 of 8
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