`
`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
`
`21839
`7590
`05/11/2020
`BUCHANAN, INGERSOLL & ROONEY PC
`POST OFFICE BOX 1404
`ALEXANDRIA, VA 22313-1404
`
`EXAMINER
`
`KE.PENG
`
`ART UNIT
`
`PAPER NUMBER
`
`3992
`
`DATE MAILED: 05/11/2020
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`16/526,281
`
`07/30/2019
`
`Henrik OJELUND
`
`0079124-000266
`
`9657
`
`TITLE OF INVENTION: SYSTEM WITH 3D USER INTERFACE INTEGRATION
`
`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
`
`$0.00
`
`$1000
`
`08/11/2020
`
`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.
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`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.
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`HOW TO REPLY TO THIS NOTICE:
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`I. Review the ENTITY STATUS shown above. If the ENTITY STATUS is shown as SMALL or MICRO, verify whether entitlement to that
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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
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`of Part B - Fee(s) Transmittal should be completed and an extra copy of the form should be submitted. If an equivalent of Part B is filed, a
`request to reapply a previously paid issue fee must be clearly made, and delays in processing may occur due to the difficulty in recognizing
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`Page 1 of 3
`
`PTOL-85 (Rev. 02/11)
`
`0001
`
`Exhibit 1038 page 1 of 9
`DENTAL IMAGING
`
`
`
`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
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`By fax, send to:
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`(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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`below or directed otherwise in Block 1, by (a) specifying a new correspondence address; and/or (b) indicating a separate "FEE ADDRESS" for maintenance fee notifications.
`Note: A certificate of mailing can only be used for domestic mailings of the
`Fee(s) Transmittal. This certificate cannot be used for any other accompanying
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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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`the USPTO via EFS-Web or by facsimile to (571) 273-2885, on the date below.
`
`21839
`7590
`05/11/2020
`BUCHANAN, INGERSOLL & ROONEY PC
`POST OFFICE BOX 1404
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`
`(Typed or printed name)
`
`(Signature)
`
`(Date)
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`16/526,281
`
`07/30/2019
`
`Henrik OJELUND
`
`0079124-000266
`
`9657
`
`TITLE OF INVENTION: SYSTEM WITH 3D USER INTERFACE INTEGRATION
`
`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
`
`$0.00
`
`$1000
`
`08/11/2020
`
`EXAMINER
`
`KE, PENG
`
`ART UNIT
`
`CLASS-SUBCLASS
`
`3992
`
`345-156000
`
`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
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`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
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`2 ______________ _
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`3 ______________ _
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`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.
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`(A) NAME OF ASSIGNEE
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`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
`□Issue Fee □Publication Fee (if required)
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`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.
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`NOTE: Absent a valid certification of Micro Entity Status (see forms PTO/SB/15A and 15B), issue
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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.
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`Authorized Signature _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _
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`Date _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _
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`Typed or printed name _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _
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`Registration No. _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _ _
`
`PTOL-85 Part B (08-18) Approved for use through 01/31/2020
`
`Page 2 of3
`0MB 0651-0033
`
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`
`0002
`
`Exhibit 1038 page 2 of 9
`DENTAL IMAGING
`
`
`
`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.
`
`16/526,281
`
`07/30/2019
`
`Henrik OJELUND
`
`0079124-000266
`
`9657
`
`21839
`7590
`05/11/2020
`BUCHANAN, INGERSOLL & ROONEY PC
`POST OFFICE BOX 1404
`ALEXANDRIA, VA 22313-1404
`
`EXAMINER
`
`KE.PENG
`
`ART UNIT
`
`PAPER NUMBER
`
`3992
`
`DATE MAILED: 05/11/2020
`
`Determination of Patent Term Extension or Adjustment under 35 U.S.C.154 (b)
`
`A reissue patent is for "the unexpired part of the term of the original patent." See 35 U.S.C. 251. Accordingly, the above(cid:173)
`identified reissue application is not eligible for Patent Term Extension or Adjustment under 35 U.S.C. 154(b).
`
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`PTOL-85 (Rev. 02/11)
`
`Page 3 of 3
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`0003
`
`Exhibit 1038 page 3 of 9
`DENTAL IMAGING
`
`
`
`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
`approval before requesting most types of information from the public. When 0MB approves an agency request to
`collect information from the public, 0MB (i) provides a valid 0MB Control Number and expiration date for the
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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
`governed by 35 U.S.C. 122 and 37 CFR 1.14. This collection is estimated to take 30 minutes to complete, including
`gathering, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon
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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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`Privacy Act Statement
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`The Privacy Act of 1974 (P.L. 93-579) requires that you be given certain information in connection with your
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`records may be disclosed, as a routine use, to the International Bureau of the World Intellectual Property
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`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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`7. A record from this system of records may be disclosed, as a routine use, to the Administrator, General Services,
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`2904 and 2906. Such disclosure shall be made in accordance with the GSA regulations governing inspection
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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
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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
`enforcement agency, if the USPTO becomes aware of a violation or potential violation of law or regulation.
`
`0004
`
`Exhibit 1038 page 4 of 9
`DENTAL IMAGING
`
`
`
`Notice of Allowability
`
`Application No.
`16/526,281
`Examiner
`PENG KE
`
`Applicant(s)
`OJELUND et al.
`I AIA (FITF) Status
`Art Unit
`3992
`No
`
`-- 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 10/28/19.
`DA 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 1-3 and 5-44. 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.~ Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`*c) D None of the:
`a) ~All
`b) 0 Some
`1. D Certified copies of the priority documents have been received.
`2. ~ Certified copies of the priority documents have been received in Application No. 13/991,513 .
`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. ~ Notice of References Cited (PTO-892)
`2.~ Information Disclosure Statements (PTO/SB/08),
`Paper No./Mail Date 4/28/20, 10/28/19 and 2/13/20.
`3. D Examiner's Comment Regarding Requirement for Deposit
`of Biological Material __ .
`4.0 Interview Summary (PTO-413),
`Paper No./Mail Date. __ .
`/PENG KE/
`Primary Examiner, Art Unit 3992
`
`5. D Examiner's Amendment/Comment
`6. ~ Examiner's Statement of Reasons for Allowance
`
`7. □ Other __
`
`U.S. Patent and Trademark Office
`PTOL-37 (Rev. 08-13)
`
`Notice of Allowability
`
`Part of Paper No./Mail Date 20200421
`
`0005
`
`Exhibit 1038 page 5 of 9
`DENTAL IMAGING
`
`
`
`Application/Control Number: 16/526,281
`Art Unit: 3992
`
`Page 2
`
`Notice of Pre-AJA or AJA Status
`
`1.
`
`The present application is being examined under the pre-AIA first to invent provisions.
`
`Detail Action
`
`2.
`
`For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251
`
`and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012.
`
`Where specifically designated, these are "pre-AIA" provisions.
`
`3.
`
`For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C.
`
`251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
`
`4.
`
`The application 16/526,281 is a reissue of 9,329,675 patent, which was filed as the
`
`application 13/991,513.
`
`5.
`
`Claims 1-3, and 5-44 are pending. The preliminary amendment filed on 10/28/19, claims
`
`1-3, and 5-13 were amended, claims 20-44 are added; and claim 4 is cancelled.
`
`Information Disclosure Statement
`
`6.
`
`The information disclosure statement (IDS) submitted on 10/28/19 and 2/13/20 are in
`
`compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure
`
`statement is being considered by the examiner to the extend explained in the IDS.
`
`Priority
`
`7.
`
`Acknowledgment is made of applicant's claim for foreign priority under 35 U.S.C. 119
`
`(a)-(d). The certified copy has been filed in parent Application No. 13/991,513, filed on 5/4/19.
`
`Allowable Subject Matter
`
`8.
`
`9.
`
`Claims 1-3, and 5-44 are allowed.
`
`The following is an examiner's statement ofreasons for allowance:
`
`0006
`
`Exhibit 1038 page 6 of 9
`DENTAL IMAGING
`
`
`
`Application/Control Number: 16/526,281
`Art Unit: 3992
`
`Page 3
`
`10.
`
`Kopelman US 2013/0110469, teaches modifying a virtual model of physical structure
`
`with additional 3D data obtained from the physical structure to provide a modified virtual model.
`
`11.
`
`12.
`
`Dillon US 2012/0062557 teaches generating and displaying intra-oral measurement data.
`
`Cinader, Jr US 2007 /003177 4, teaches registering a three-dimensional coordinate system
`
`of a physical model of a patient's tooth structure to a 3D coordinate system of a virtual model of
`
`the same tooth structure.
`
`13.
`
`The prior arts fail to teach individually or in combination: "a handheld device including
`
`an optical scanner, wherein the 3D environment to be scanned is selected by pointing the optical
`
`scanner at the 3D environment; and at least one display remotely connected to the handheld
`
`device, wherein the handheld device is adapted for performing at least one scanning action in a
`
`physical 3D environment, and the at least one display is adopted for visually representing the
`
`physical 3D environment; and the handheld device includes a user interface for remotely
`
`controlling the display to adjust the view with which the 3D environment is represented on the
`
`display."
`
`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."
`
`Contact Information
`
`14.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to PENG KE whose telephone number is (571)272-4062. The
`
`examiner can normally be reached on M-F 6:30-5:00.
`
`0007
`
`Exhibit 1038 page 7 of 9
`DENTAL IMAGING
`
`
`
`Application/Control Number: 16/526,281
`Art Unit: 3992
`
`Page 4
`
`Examiner interviews are available via telephone, in-person, and video conferencing using
`
`a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is
`
`encouraged to use the USPTO Automated Interview Request (AIR) at
`
`http://www.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Alexander Kosowski can be reached on 5712723744. The fax phone number for the
`
`organization where this application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of an application may be obtained from the Patent
`
`Application Information Retrieval (PAIR) system. Status information for published applications
`
`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
`
`applications is available through Private PAIR only. For more information about the PAIR
`
`system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to
`
`the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll(cid:173)
`
`free ). If you would like assistance from a USPTO Customer Service Representative or access to
`
`the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-
`
`1000.
`
`PENG. KE
`Examiner
`Art Unit 3992
`
`/PENG KE/
`Primary Examiner, Art Unit 3992
`
`Conferees:
`
`/RSD/
`
`0008
`
`Exhibit 1038 page 8 of 9
`DENTAL IMAGING
`
`
`
`Application/Control Number: 16/526,281
`Art Unit: 3992
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`/ ALEXANDER J KOSOWSKI/
`Supervisory Patent Examiner, Art Unit 3992
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`Page 5
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`0009
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`Exhibit 1038 page 9 of 9
`DENTAL IMAGING
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