Align Technology, Inc.

Patent Trials and Appeals Board

Jul 20, 2020

IPR2019-00134 (P.T.A.B. Jul. 20, 2020)

Trials@uspto.gov Paper 29
571-272-7822 Date: July 20, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

3SHAPE A/S and 3SHAPE INC.,
Petitioner,
v.
ALIGN TECHNOLOGY, INC.,
Patent Owner.

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Patent 9,299,192 B2

Before BRIAN J. McNAMARA, NEIL T. POWELL, and
ELIZABETH M. ROESEL, Administrative Patent Judges.
McNAMARA, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
35 U.S.C. § 318(a)

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I. BACKGROUND
On July 22, 2019, we instituted an inter partes review of claims 1–5
and 8–32 (the challenged claims) of U. S. Patent No. 9,299,192 B2 (“the
’192 Patent”). Paper 8 (“Dec. to Inst.”). Patent Owner filed a Patent Owner
Response (Paper 12, “PO Resp.”), Petitioner filed a Petitioner Reply (Paper
16, “Pet. Reply”), Patent Owner filed a Patent Owner Surreply (Paper 18,
“PO Surreply”) and a transcript of an oral hearing held on April 15, 2020
(Paper 27, “Hrg. Tr.”) has been entered into the record.
We have jurisdiction under 35 U.S.C. § 6. This Final Written
Decision is issued pursuant to 35 U.S.C. §318(a). We base our decision on
the preponderance of the evidence. 35 U.S.C. § 316(e); 37 C.F.R. § 42.1(d).
Having reviewed the arguments of the parties and the supporting
evidence, we conclude that Petitioner has demonstrated by a preponderance
of the evidence that the challenged claims are unpatentable.
II. THE ’192 PATENT
The ’192 patent concerns “modifying a virtual model of a physical
structure with additional 3D data obtained from the physical structure to
provide a modified virtual model.” Ex. 1001, Abstract. The method and
apparatus is described in the context of dental technology, where, for
example, a finish line (i.e., a transition boundary between a prosthesis and a
dental preparation) may be obscured by soft tissue, such that a virtual model
based on scanned data is incomplete or defective. Id. 1:30–2:24. One aspect
of the invention is modifying a virtual model of a physical structure, such as
a patient’s intraoral cavity or a physical part of a physical structure. Id. at
4:4–6, 16–24. A computer based method includes displaying an image of
the virtual model on a display connected to a computer system, interacting
with the displayed image to identify a portion of the virtual model to be
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modified, and modifying the virtual model by replacing in the computer
system the portion of the virtual model to be modified with additional 3D
data obtained from the physical structure. Id. at 4:5–15.

III. ILLUSTRATIVE CLAIM(S)
Claim 1 (drawn to a method), claim 28 (drawn to an apparatus), and
claim 30 (drawn to a non-transitory computer readable medium having a
program stored thereon) are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method for generating a modified virtual model
of a physical structure, comprising:
(A) displaying an image of a first virtual model on a
display operatively connected to a computer system,
wherein the first virtual model is generated from first
3D scan data of the physical structure, and wherein said
first virtual model fails to properly represent a first
physical part of the physical structure;
(B) receiving user input identifying at least a portion of the
first virtual model that is desired to be modified,
wherein the user input is generated by user interaction
with the image on the display;
(C) receiving a second virtual model of the physical
structure with the computer system, the second virtual
model generated from second 3D scan data of the
physical structure; and
(D) modifying the first virtual model with the computer
system by replacing at least said identified portion of
the first virtual model with a corresponding portion of
the second virtual model, thereby generating the
modified virtual model.

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IV. GROUNDS OF INSTITUTION
Trial was conducted on all of the grounds asserted in the Petition, as
summarized in the following table:
Claims Statutory Basis Challenge
1–5, 8–13, 15–23, 25–
32 35 U.S.C. § 103 Paley,
1 Kriveshko2
14 35 U.S.C. § 103 Paley, Kriveshko, and Babayoff3

24 35 U.S.C. § 103
Paley, Kriveshko and
Chishti4

V. CLAIM CONSTRUCTION
The filing date accorded the Petition is November 9, 2018. In the case
of petitions for inter partes review filed before November 13, 2018, we
interpret claims of an unexpired patent using the broadest reasonable
construction in light of the specification of the patent in which they
appear. See 37 C.F.R. § 42.100(b)(2018)5; Cuozzo Speed Techs. LLC v. Lee,
136 S. Ct. 2131, 2144–46 (2016). In applying a broadest reasonable
construction, claim terms generally are given their ordinary and customary
meaning, as would be understood by one of ordinary skill in the art in the

1 U.S. Patent Appl. Publ. No. 2007/0172112 A1, published Jul. 26, 2007
(Ex. 1006).
2 U.S. Patent Appl. Publ. No. 2007/0236494 A1, published Oct. 11, 2007
(Ex. 1007).
3 U.S. Patent Appl. Publ. No. 2003/0232302 A1, published Dec. 18, 2003
(Ex. 1008).
4 U. S. Patent No. 6,227,850, issued May 8, 2001 (Ex. 1009).
5 A recent amendment to this rule does not apply here. See Changes to the
Claim Construction Standard for Interpreting Claims in Trial Proceedings
Before the Patent Trial and Appeal Board, 83 Fed. Reg. 51,340 (Oct. 11,
2018) (amending 37 C.F.R. § 42.100(b) effective November 13, 2018).

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context of the entire disclosure. See In re Translogic Tech., Inc., 504 F.3d
1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term must
be set forth in the specification with reasonable clarity, deliberateness, and
precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
In our Decision to Institute, we applied Petitioner’s unopposed
proposal that each of the terms “virtual model,” “3D virtual model,” “second
virtual model,” and “second 3D virtual model” be construed to mean “virtual
representation in a computer environment of a real object.” Dec. to Inst. 7.
We also applied Petitioner’s unopposed assertions that “virtual model” and
“3D virtual model” are interchangeable terms and that “second virtual
model” and “second virtual 3D model,” be construed to mean “a singular
and collected virtual representation,” because “second virtual model” and
“second virtual 3D model” mean structurally more than additional data from
the physical structure. Id. Neither party proposed any other constructions
prior to institution. The Patent Owner Response filed after institution
proposes different constructions. PO Resp. 25–32. We address the
proposed claim constructions below.
A. Virtual model/3D virtual model
Patent Owner proposes “virtual model” and “3D virtual model” be
construed to mean “3D virtual representation.” PO Resp. 25. Patent Owner
states that Petitioner agreed to Patent Owner’s proposed construction in a
parallel ITC proceeding and that Patent Owner’s proposed construction is
“not meaningfully different in scope” from Petitioner’s proposed
construction, i.e., “virtual representation in a computer environment of a real
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object.”6 Id. at 25–26. Patent Owner argues Petitioner’s proposed language
“in a computer environment of a real object” is not necessary to the
construction, as that feature is already implied by the term “virtual
representation.” Id. at 26. Petitioner agrees the constructions are “not
meaningfully different.” Pet. Reply. 1. We agree that in the context of
the’192 Patent, a model is a representation of a real object and that a virtual
model is a representation of a real object in a computer environment.
Therefore, recognizing there is no meaningful difference between
Petitioner’s and Patent Owner’s proposed constructions, for purposes of this
Decision, we construe “virtual model” and “virtual 3D model” as a “virtual
representation in a computer environment of a real object.”
B. Second virtual model/second virtual 3D model
In our Decision to Institute, we applied Petitioner’s unopposed
proposed construction that all the virtual models should be construed to
mean “virtual representation in a computer environment.” Dec. to Inst. 7–8.
We also noted Petitioner’s assertion that the second virtual model and
second virtual 3D model refer to a “singular and collected virtual
representation.” Id. at 7. Petitioner contends the second virtual model and
second virtual 3D model are “singular and collected” to indicate the second
virtual model replaces a portion of the first virtual model and is more than
just additional data from the physical structure. Id.

6 See Ex. 2010, In the matter of Certain Dental and Orthodontic Scanners
and Software, Inv. No. 337-TA-1144, Order 36 (Oct. 1, 2019), referred to
herein as “the ITC Proceeding.” Subsequent to the oral hearing in this
proceeding, the ITC Proceeding was identified in a Mandatory Notice filed
by Patent Owner on May 19, 2020. Paper 28.
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The Patent Owner Response contends that the terms “singular” and
“collected” are not required, as “first” and “second” distinguish the first and
second virtual models. PO Resp. 27. Patent Owner contends there is no
basis for defining the second virtual model differently from the first virtual
model, arguing that “singular” and “collected” are not found in the intrinsic
record, that the meaning of this terminology and its effect on the claim scope
is unclear. Id. at 28.
We agree with Patent Owner. Claim 1 recites a “the first virtual
model is generated from first 3D scan data of the physical structure” and a
“the second virtual model [is] generated from second 3D scan of the
physical structure.” The claim language does not limit the second virtual
model to a “singular and collected” model. Thus, recognizing the claim
language distinguishes the first and second virtual models as being generated
from images taken in first and second scans, respectively, for purposes of
this Decision, we construe the second virtual model to be a “virtual
representation in a computer environment of a real object.”
C. Identifying at least a portion of the first virtual model that is
desired to be modified
Our Decision to Institute did not include a construction of the
limitation in claim 1 Step (B) that recites “identifying at least a portion of
the first virtual model that is desired to be modified” (“the Identifying
Term”). Neither the Petition nor the Patent Owner Preliminary Response
asserted this term required construction. Patent Owner now contends that in
the corresponding ITC proceeding both parties agreed the proper
construction of the Identifying Term is “identifying at least a portion on the
first virtual model that is desired to be replaced.” PO Resp. 29 (emphasis by
Patent Owner).
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Claim 1 Step (B) recites “receiving user input identifying at least a
portion of the first virtual model that is desired to be modified.” Thus, the
issue before us is the meaning of the “user input identifying a portion of the
first virtual model that is desired to be modified.” Claim 1 does not limit
that input to any particular form of identification, other than by reciting
“wherein the user input is generated by user interaction with the image on
the display.” For example, the user input is not limited to specifying a tooth
number, as the model can use any form of identification that suitably
specifies a portion of the model desired to be modified. See, e.g., Ex. 1001,
4:25–27 (“For example, step (B) comprises identifying on said first display
image a first display image portion thereof by interacting with said
display”); id. at 14:63–65 (“identifying surface data ID of second virtual
model VM2 may be useful as it may be aligned with corresponding parts of
modified virtual model VM1´”).
The expression “on the first model” proposed in Patent Owner’s
construction is not used in claim 1. Claim 1 Step (A) recites “displaying an
image of a first virtual model on a display.” Claim 1 Steps (B) and (D)
consistently refer to modification of the first virtual model. Step B recites
“at least a portion of the first virtual model” is “to be modified.” Step D
recites such “modifying” is accomplished “by replacing at least said
identified portion of the first virtual model.” (emphasis added). Step (B)
further recites that the user input is generated by “user interaction with the
image on the display.” As the claim language is clear that the user interacts
with the image on the display to generate user input identifying a portion of
the first virtual model to be modified, we decline as unnecessary Patent
Owner’s proposal to construe the claim to mean a “portion on the first
virtual model.”
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There is also no reason to re-write claim 1 Step (B) to use the
expression “that is desired to be replaced,” as proposed by Patent Owner.
Claim 1 step (B) recites “identifying at least a portion on the first virtual
model that is desired to be modified.” Claim 1 also recites “modifying the
first virtual model . . . by replacing at least said identified portion” in Step
(D), i.e., a step that is separate and distinct from “receiving user input
identifying a portion of the first virtual model” in Step (B). As claim 1 Step
(D) limits the “modifying” to “replacing,” there is no reason to incorporate
“replacing” into Step (B).
Patent Owner’s proposed construction is also inconsistent with the
scope of claim 1. Step (C) of claim 1 recites “receiving a second virtual
model of the physical structure . . . generated from a second 3D scan of the
physical structure.” Step (C) of claim 1 does not limit the second 3D scan to
the claimed “portion of the first virtual model that is desired to be modified”
in Step (B). The recitation in Step (D) of “replacing at least said identified
portion” encompasses replacing more than the identified portion, e.g.,
replacing the entire first virtual model with the second virtual model from
Step (C) in claim 1. Moreover, the “modifying” in claim 1 is distinguished
from that in claim 5 in several ways. In claim 5, which depends from claims
4, 3, and 1, the second virtual model is differentiated as limited to a “3D
model representative of a second physical part of said physical structure.”
As discussed further below in Section V.D concerning the construction of
“replacing,” claim 5 also recites “causing the computer system to at least one
of delete, remove or replace said identified portions of the first virtual
model.” Claim 1 is necessarily broader than dependent claims 3–5 and must
be construed as broadly enough to encompass the subject matter of the
dependent claims. 35 U.S.C. § 112, fourth paragraph. Because dependent
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claim 5 encompasses deleting, removing, or replacing the identified
portions, we do not interpret claim 1 as limited to replacing such portions.
For the reasons discussed above, we decline to decline to construe the
“Identifying Term,” as proposed by Patent Owner. Instead, recognizing that
the words of the Step (B) and Step (D) provide the necessary context, we
construe “input identifying” in Step (B) to mean information in any form
that specifies a portion of the first virtual model.
D. Replacing at least said identified portion of the first virtual
model with a corresponding portion of the second virtual model.
Petitioner refers to the expression “replacing at least said identified
portion of the first virtual model with a corresponding portion of the second
virtual model” as the “Replacing Term.” Pet. Reply. 2. Neither party
proposed a construction of the Replacing Term prior to institution.
Without proposing an express construction of the Replacing Term,
Patent Owner argues we should adopt its “proposed construction that
replacing a portion of a first virtual model with a corresponding portion of a
second virtual model involves deleting or removing a portion of the first
virtual model and replacing it with a portion of the second virtual model.”
PO Resp. 32. Petitioner replies that “the intrinsic evidence demonstrates that
‘replacing’ in the ’192 patent carries its plain and ordinary meaning and is
not limited to requiring deleting or removing.” Pet. Reply. 5.
In support of its construction, Petitioner argues that claim 5 recites
steps (C) and (D) comprise “causing the computer system to at least one of
delete, remove or replace said identified portion,” demonstrating that
“replacing,” “deleting,” and “removing” are alternatives, not intrinsic
requirements of the Replacing Term of claim 1. Id. at 4. Petitioner further
notes that the ’192 patent describes “deleting” as an alternative to removal or
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replacement where it states “part of the first virtual model VM1 is ‘deleted’
or otherwise removed or replaced on the display by the user.” Id. at 4 (citing
Ex. 1001, 21:1–3, 24:19–21). According to Petitioner, the word “otherwise”
is “significant because it requires that replacement include a type of virtual
model modification that is distinct from deletion.” Id.
We are persuaded by Petitioner’s arguments. As discussed above,
claim 1 Step (B) recites “modifying the first virtual model,” and Step (D)
recites “replacing at least a portion of the first virtual model.” Claim 5
recites deleting and removing the identified portion as alternatives to
replacing the identified portion, i.e., “causing the computer system to at least
one of delete, remove, or replace.” Ex. 1001, claim 5 (emphasis added).
Similarly, the Specification repeatedly describes delete, remove and replace
as alternatives. See, e.g., Ex. 1001, 18:58–60, 18:65, 21:1–45. For example,
the Specification states:
The deletion, removal or replacement of part DVM1 is
responsive to the application of a special corresponding
computer-implemented function (i.e. a corresponding deletion
function, removal function or replacement function) via the
computer system 32. The special computer-implemented
function is, for ease of reference referred to herein as the “delete”
function (and includes at least one of a remove function, remove
command, delete command, replace command, or replace
function) of the computer system 32, and operates to modify for
example the first virtual model VM1 by at least one of deleting,
removing or replacing a part thereof when “delete” function is
activated, i.e., when the "delete" function is applied to the
marked area of the image DI1.
Id. at 21:6–19; see also id. at 22:34–39 (stating “the part of DVM1 that was
previously deleted/removed is at least partially replaced”); id. at 24:34–36
(stating “the part DVM1 that was previously deleted/removed is at least
partially replaced with a corresponding part of the second 3D virtual model
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VM2.”). Thus, claim 5 and the above-quoted Specification passages
demonstrate that “delete,” “remove,” and “replace” are distinct steps, thus
refuting Patent Owner’s contention that “replacing” requires deleting or
removing.
More specifically, in view of the language of claim 5, which lists
“delete, remove, or replace,” as distinct alternatives, we consider the
meaning of “replacing” in claim 1 as distinct from the meaning of “deleting”
or “removing.” “Deleting” and “removing” part of a model do not require
addition of new model data. “Replacing” part of a model requires
substituting new model data in place of that part of the model being
modified. One way to accomplish such replacement is for the user or the
computer first to delete or remove the relevant part of the model and then
insert the new data, e.g., data from another scan. Ex. 1001, 22:34–39. The
’192 patent discloses other approaches that do not require deleting or
removing part of the model. One such approach is described as “a unified
replacement function” in which part of a model is replaced “in one
operation.” Id. at 24:36–39. Another such approach is shown in Figure 9,
which describes a sequence of steps that includes as Step 460´
Causing the computer system to modify the first virtual model,
to delete or remove or replace a first virtual model part of the
first 3D virtual model corresponding to the first image portion
by applying a corresponding function (i.e., a delete function or
a remove function or a replace function) to the first image
portion via interaction with said first image on said display, to
provide a modified first 3D virtual model, and concurrently or
subsequently replacing said first virtual model part with a
corresponding part of said second 3D virtual model to provide
a composite third 3D virtual model.
Id., Fig. 9 (emphasis added). Figure 9 articulates a separate “delete
function” “remove function,” and “replace function” as indicated by the
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alternative term “or” and describes “concurrently or subsequently replacing”
the first virtual model part with a corresponding part of second 3D virtual
model. Although the ’192 patent does not provide details of its unified
replacement function or concurrently replacing the first virtual model part
with a second virtual model part, Petitioner notes that overwriting existing
data of a portion of a model with new data effectively replaces the original
data for that portion of the model undergoing replacement. See, Hr’g Tr.
13:18–14:2.
In view of (i) its disclosure of a “unified replacement” function
performed in “one operation” (Ex. 1001, 24:36–39), (ii) its “for ease of
reference” description of the computer’s “delete” function as including
alternative commands and functions, i.e. “at least one of a remove function,
remove command, delete command, replace command or command
function” (id. 21:11–19), (iii) its description in Figure 9 of a “remove
function or a delete function or a replace function” (emphasis added) as
alternative functions, and (iv) Figure 9’s further articulation of “concurrently
or subsequently replacing said first virtual model part with a corresponding
part of said second 3D virtual mode,” (emphasis added), we decline to
construe “replacing” in claim 1 as requiring the user or the computer delete a
portion of the model and insert a second model, as urged by Patent Owner.
PO Resp. 30. We find “replacing” requires that new data be substituted for
the original data in the portion of the model undergoing replacement, but it
does not require the sequence of deleting and inserting as argued by Patent
Owner.
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VI. ANALYSIS OF PRIOR ART CHALLENGES
A. Claims 1–5, 8–13, 15–23, 25–32 As Obvious Under 35 U.S.C.
§ 103 over Paley and Kriveshko
1. Introduction
“In an [inter partes review], the petitioner has the burden from the
onset to show with particularity why the patent it challenges is
unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
Cir. 2016) (citing 35 U.S.C. § 312(a)(3) (requiring inter partes review
petitions to identify “with particularity . . . the evidence that supports the
grounds for the challenge to each claim”)). This burden of persuasion never
shifts to Patent Owner. See Dynamic Drinkware, LLC v. Nat’l Graphics,
Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) (discussing the burden of proof in
inter partes review).
As set forth in 35 U.S.C. § 103(a),
[a] patent may not be obtained . . . if the differences between the
subject matter sought to be patented and the prior art are such
that the subject matter as a whole would 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.
The question of obviousness is resolved on the basis of underlying factual
determinations including: (1) the scope and content of the prior art; (2) any
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) objective evidence of nonobviousness.
Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966). Additionally, the
obviousness inquiry typically requires an analysis of “whether there was an
apparent reason to combine the known elements in the fashion claimed by
the patent at issue.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring “articulated
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reasoning with some rational underpinning to support the legal conclusion of
obviousness”)); see In re Warsaw Orthopedic, Inc., 832 F.3d 1327, 1333
(Fed. Cir. 2016) (citing DyStar Textilfarben GmbH & Co. Deutschland KG
v. C. H. Patrick Co., 464 F.3d 1356, 1360 (Fed. Cir. 2006)).
In the ’192 patent, independent claim 1 is drawn to a method,
independent claim 28 is drawn to an apparatus, and independent claim 30 is
drawn to a non-transitory computer readable medium having a program
stored thereon are of similar scope. As claim 1 is illustrative of all the
independent claims, our analysis of claim 1 is applicable to independent
claims 28 and 30, as well.
2. Paley
By way of background, Paley discloses a scanning process that
includes the steps of incremental data capture, incremental derivation of
three dimensional data and registration of the incremental data to a common
coordinate system that brings the data together into a single three-
dimensional model of a scan subject. Ex. 1006 ¶ 6. Paley further discloses
that “[c]urrent techniques generally separate acquisition from registration,
with registration being performed in a separate post-processing step separate
from data acquisition.” Id. ¶ 7. According to Paley, this approach is
disadvantageous because accuracy and completeness of the scan cannot be
evaluated until after the scan is complete. Id.
In Figure 5, Paley shows a visual interface in which model errors,
such an as incomplete or inaccurate scan data, are recognized so that a user
can return to the data acquisition or scanning mode of Figure 4 either
automatically or manually to acquire additional data using, e.g., the scanning
hardware in Figure 1. See, Ex. 1006 ¶¶ 58–60. Paley notes that in a
continuous or incremental data acquisition system the fitting or stitch
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between two frames may fail. Id. ¶ 38. Paley describes a recovery mode in
which the system seeks to reacquire a previous scan by test fitting new scan
data to previously acquired data and providing visual feedback to the user to
assist in navigating back to a scan location where re-acquisition is being
attempted. Id. Paley also discloses a related “landing mode” in which a user
may attempt to initiate a new scan, registered to or connected to an existing
3D model, using similar visual feedback that notifies the user where the scan
has been reacquired. Id. Paley incorporates Kriveshko by reference, as
disclosing techniques to acquire such data and incorporate it into the model.
Id. ¶¶ 60, 73, 77 (citing U.S. Application No. 11/337,182, filed Jan. 20, 2006
and noting that a user control may permit a user to return to data acquisition
to acquire additional data at a specific point of a digital model where a void
or deviation is detected automatically or by the user’s visual inspection of
the model).
Although Paley discloses visual feedback techniques in the context of
continuous scanning in dental applications, it is not limited to the dental field
or continuous scanning and can be used with any imaging technology
capable of capturing three dimensional data with suitable precision. Id. ¶ 21.
3. Kriveshko
Kriveshko discloses a scanning system that acquires three-
dimensional images as an incremental series of three-dimensional data sets
and tests for successful incremental fits of the data in real time. Ex. 1007,
Abstract. Noting that, except for the first frame in a sequence, a reference
frame is always available, Kriveshko discloses “the incremental three-
dimensional image data may be fitted or stitched to the existing three-
dimension model.” Id. ¶¶ 65–66. Kriveshko provides visual user cues and
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modifies the process depending upon the relationship of newly acquired data
to previously acquired data. Id.
Kriveshko describes two operating modes; (i) acquisition mode
(normal acquisition) and (ii) recover mode. Ex. 1007 ¶¶ 58–59, 75. In
normal acquisition mode a scanner passed over a surface acquires and
forwards two dimensional image sets to a computer that derives three-
dimensional point clouds. Id. ¶ 58. “The three-dimensional data for each
newly acquired two-dimensional image set may be derived and fitted or
‘stitched’ to existing three-dimensional data using a number of different
techniques.” Id., see also, id. ¶¶ 60–72.
The system enters recover mode when an image set cannot be fit to
the three-dimensional surface data. Id. ¶ 59. Recover mode may include
acquiring at least one subsequent three-dimensional image and test fitting it
to one or more of the sequences of three-dimensional images. Id. ¶¶ 9, 59.
Recover mode may be entered manually or automatically in response to
detection of a lost acquisition. Id. ¶ 10.
Kriveshko discloses a stitch recover mode and a related landing mode.
Id. ¶ 59. Kriveshko enters the “stitch recover” mode when the computer is
unable to fit or stitch an existing three-dimensional data set to newly
acquired data. Id. ¶¶ 58–59, 74. In the recover (or landing) mode, the
computer may remove or stop rending the three-dimensional model, alerting
the user to an error. Id. ¶ 76. Kriveshko states:
newly derived three-dimensional data may be fitted to three-
dimensional data previously derived in the recover mode. In this
manner, a new three-dimensional model may be created within
the recover mode. When a successful test fit is made to the
original (acquisition mode) three-dimensional model, the entire
new three-dimensional model, or a selected portion thereof, may
be registered to the original three-dimensional model using a
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transformation based upon the successfully fitted frames or
three-dimensional images.
Ex. 1007 ¶ 86.
4. Claim 1 – Preamble
The preamble of claim 1 recites a method of generating a modified
virtual model of a physical structure. Petitioner cites Paley as directed to an
image capture system that acquires 3D data of a physical structure, resulting
in a virtual model of that physical structure. Pet. 14. Patent Owner does not
dispute Petitioner’s contentions concerning the preamble of claim 1. See PO
Resp. 13–15. Based on the evidence of record we agree with Petitioner that
Paley discloses the subject matter in the preamble of claim 1.
5. Claim Limitation 1.1
Petitioner identifies as claim limitation 1.1 the limitation that recites
“(A) displaying an image of a first virtual model on a display operatively
connected to a computer system, wherein the first virtual model is generated
from first 3D scan data of the physical structure, and wherein said first
virtual model fails to properly represent a first physical part of the physical
structure.” Pet. 15. Petitioner cites Paley as disclosing “displaying an image
of a first virtual model.” Id. at 15–16 (citing the two-dimensionally rendered
perspective view in Figure 5 as the claimed image and the digital surface
representation as the claimed virtual mode). Figure 5 of Paley is reproduced
below.

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Figure 5 of Paley depicts a two-dimensional perspective view rendering of a
stored digital surface representation 502 based upon a display of discrete
surface points. Paley ¶¶ 58, 61. Paley also states that other rendering
techniques may be used. Ex. 1006 ¶ 61.
Petitioner further states that the dental image capture system in Figure
1 and the accompanying text of Paley illustrates that the first virtual model is
generated from first 3D scan data. Id. at 16–17 (citing Ex. 1006 ¶¶ 29, 28).
Figure 1 of Paley is reproduced below.

Figure 1 shows Paley’s image capture system 100 includes a processor or
computer 108, scanner 102 and subject 104, which may be one or more
teeth, dental prostheses, or dental models. Ex. 1006, Fig. 1, ¶¶ 28–29, 32.
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Noting that Paley’s description of Figure 5 refers to “errors in a digital
model, such as a region 506 of omitted or missing scan data,” Petitioner
asserts Paley discloses the portion of limitation 1.1 that recites “wherein said
first virtual model fails to properly represent a first physical part of the
physical structure.” Pet. 16–17 (citing Ex. 1006 ¶ 59). The Patent Owner
Response does not dispute that Paley discloses claim limitation 1.1.
Based on the evidence of record, we are persuaded Petitioner has
demonstrated that Paley discloses “displaying an image of a first virtual
model on a display operatively connected to a computer system, wherein the
first virtual model is generated from first 3D scan data of the physical
structure, and wherein said first virtual model fails to properly represent a
first physical part of the physical structure,” as recited in claim limitation
1.1.
6. Claim Limitation 1.2
Petitioner identifies as claim limitation 1.2 the limitation that recites
“(B) receiving user input identifying at least a portion of the first virtual
model that is desired to be modified, wherein the user input is generated by
user interaction with the image on the display.” Pet. 18. As to this claim
element, Petitioner cites region 506 of Figure 5 of Paley as illustrating a
portion of the first virtual model to be modified and Paley’s disclosure of a
control that permits a user to select a point on the digital model and return to
the scanning mode for data acquisition. Id. at 19–20 (citing Ex. 1006 ¶ 60).
Petitioner notes that Paley refers to “this user initiated rescan mode” as a
“landing mode.” Id. at 20 (citing Ex. 1006 ¶ 38).
Patent Owner argues that Paley “does not disclose ‘receiving user
input identifying at least a portion of the first virtual model that is desired to
be modified’ or ‘receiving a second virtual model of the physical structure
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with the computer system, the second virtual model generated from second
3D scan data of the physical structure.’” PO Resp. 16. Patent Owner further
contends that Paley and Kriveshko fail to disclose “receiving user input
identifying at least a portion of the first virtual model that is desired to be
modified.” PO Resp. 32, 49–51; PO Surreply 17–18.
According to Patent Owner, because Paley and Kriveshko are
primarily concerned with voids from scan data, a user selects an area near a
deficiency and not the deficiency itself. Id. at 50. Pointing to Figure 5 of
Paley, Patent Owner argues that because the portion of the model to be
selected is a void where data is missing, the user selects a part of the model
near the void to orient the computer to register the new scan data as it comes
in and then uses the landing or recovery modes to acquire and incorporate
the new scan data to fill the void. Id. (citing Ex. 1006, Fig. 5, ¶¶ 60, 73, 77).
Claim 1 recites “input identifying a portion of the model” that the user
seeks to modify. Ex. 1001, claim 1 (emphasis added). We have construed
“input identifying” in Step (B) to mean information in any form that
specifies a portion of the first virtual model the input to mean information in
any form that specifies a portion of the first virtual model. Such information
includes, e.g., a tooth number, a custom designed coordinate system, or
physical descriptions that identified the boundaries of the region. See
Section V.C.
Petitioner provides persuasive argument and evidence that Paley
discloses “receiving user input identifying at least a portion of the first
virtual model that is desired to be modified, wherein the user input is
generated by user interaction with the image on the display,” as recited in
claim limitation 1.2. We agree with Petitioner that in Paley, the user
identifies a portion of the first virtual model where the model fails to
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represent properly a first physical part, in order to acquire missing data, e.g.,
where a void or deviation is detected. Pet. Reply. 19–20 (citing Pet. 18–20;
Ex. 1006, Fig. 5, ¶¶ 38, 53, 60, 73, 77). Petitioner emphasizes that in Paley
a user control “may permit a user to select a specific point on the surface of
the digital model.” Id., see also Ex. 1006 ¶¶ 70–73, Fig. 8 (describing
visualization techniques for model “holes,” i.e., digital surface
representations of areas with point density below a specified threshold that
are inadequate for fabricating physical dental models or performing dental
diagnosis or prosthetic fabrication, and can be selected for additional data
acquisition with a user control). Paley describes its embodiments in Figure 2
and Figure 3 as displaying a subject from a scanner’s point of view and
notes alternative models may be used including “an interface that renders
acquired data from a fixed point of view within a global coordinate system.”
Ex. 1006 ¶ 52. Controls allow the user to interact with the model to identify
the portion to be modified. Id. ¶ 73.
We are not persuaded by Patent Owner’s argument that Paley and
Kriveshko are primarily concerned with voids in scan data. PO Surreply 50.
Paley and Kriveshko are concerned with correcting defective results—a void
is just an example of a defect. See, e.g., Ex. 1006 ¶¶ 7, 55, 59 (“other errors
such as excessive variability of surface data may be intrinsically identified
by fuzziness or excessive random texture”); Ex. 1007 ¶ 5. Patent Owner
argues that “[y]ou can’t have a portion of a model be a void. A void is not a
portion of a model. It’s a part of the model that doesn’t exist. You can’t
identify it, and it means nothing to delete or remove it in order to replace it.”
Hr’g Tr. 37:6–9. We disagree. A “void” or missing data at a portion of the
model represents a defect in the model of the physical surface where the data
is missing; it is that portion of the model the user seeks to identify.
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Therefore, after considering both parties’ arguments and evidence, we find
that Petitioner has demonstrated Paley discloses “receiving user input
identifying at least a portion of the first virtual model that is desired to be
modified, wherein the user input is generated by user interaction with the
image on the display,” as recited in claim limitation 1.2.
7. Claim Limitation 1.3
Petitioner identifies as claim limitation 1.3 the limitation that recites
“(C) receiving a second virtual model of the physical structure with the
computer system, the second virtual model generated from second 3D scan
data of the physical structure.” Pet. 20. Petitioner cites Paley’s “landing
mode” as disclosing a return to the scanning mode to reacquire 3D scan data
from the physical part to be modified in the model. Id. (citing Ex. 1006 ¶
60). Petitioner acknowledges that Paley is not explicit about the way 3D
scan data is reacquired into a data structure and ultimately used to modify
the virtual model, but contends that Paley incorporates Kriveshko by
reference for the purpose of providing this information. Id. at 21.
Petitioner argues two features identified by Kriveshko as a stitch
recovery mode and a related user initiated landing mode provide the
disclosure not explicit in Paley. Id. at 22–23, see Ex. 1007 ¶¶ 59, 74, 86, 94,
95, 97. Petitioner cites Kriveshko’s “landing mode” (the same term used by
Paley) as disclosing that supplemental 3D scan data may be acquired and
then assembled into a singular and collected or supplemental three-
dimensional model. Id. at 22. Petitioner cites the following text from
Kriveshko concerning the user activated landing mode:
In other embodiments, a landing mode may be provided in
which a user attempts to initiate a new scan registered or
connected to an existing three-dimensional model. In the
landing mode, the system may optionally create a supplemental
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three-dimensional model by fitting sequential frames to one
another before a successful fit to the original three-dimensional
model. In various embodiments, the landing mode may also be
distinguished by a user's ability to select a point on the original
three-dimensional model for re-acquisition of a scan.
Pet. 22–23; Ex. 1007 ¶ 97.
Petitioner also cites Kriveshko’s disclosure of a stitch recover mode.
Id. at 23 (citing Ex. 1007 ¶ 74).
Patent Owner argues the combination of Paley and Kriveshko fails to
disclose claim limitation 1.3. PO Resp. 51. According to Patent Owner,
“Paley’s computer system receives scan image data from Paley’s scanner—
not a second virtual model.” Id. (citing Ex. 1006 ¶¶ 34–36; Ex. 2011,
Declaration of Dr. Chandrajit L. Bajaj In Support of Patent Owner’s
Response (“Bajaj Resp. Decl.”) ¶ 79; Ex. 2007, September 30, 2019
Transcript of Deposition of Dr. Eli Saber (“Saber Tr. II”), 54:12–60:3).
Petitioner replies to Patent Owner’s arguments by noting that claim
limitation 1.3 recites “receiving a second virtual model of the physical
structure with the computer system.” Pet. Reply 21. Petitioner emphasizes
that claim limitation 1.3 is not limited to receiving the second virtual model
at any particular interface and does not exclude further processing by the
computer system to arrive at the second virtual model. Id. Petitioner argues
that in Paley and the ’192 patent, it is the computer system that provides the
second virtual model and that Patent Owner’s experts agree. Pet. Reply 21–
22 (citing Ex. 1015, Transcript of Deposition of Dr. Chandrajit L. Bajaj
(“Bajaj Tr.”) 164:9–165:15 for the proposition that Figure 9 of the ’192
patent discloses the step of receiving the second virtual model is done with
the computer system; Ex. 1013, Transcript of Deposition of Dr. Maureen
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Valley (“Valley Tr.”), 100:2–21 as explaining that in the ’192 patent the
computer displays the first virtual model).
We find as follows regarding claim limitation 1.3. The ’192 patent
states that “any suitable scanner . . . is used by the practitioner to acquire the
3D data” that is used to generate the models. Ex. 1001, 18:5–13; see also,
id. at 21:56–22:12 (describing steps in generating second virtual model VM2
and noting that the scanning procedure includes scanning the additional part
P2 of the real dental surface in proximity to part DRM1, a real dental surface
that failed to be clearly represented in first virtual model VM1). Paley
discloses scanning includes incremental data capture, incremental derivation
of three-dimensional data, and registration of the incremental data to a
common coordinate system in which “[t]he final registration step brings
incremental data together into a single three dimensional model of a scan
subject.” Ex. 1006 ¶ 6. As discussed above, Petitioner explains how
Kriveshko processes scanned data to develop a second model that is fit to the
first model. Pet. 22 (citing Ex. 1007 ¶ 97 (disclosing “creating a
supplemental model by fitting sequential frames to one another before a
successful fit to the original three-dimensional model.”). Kriveshko
discloses two-dimensional image sets acquired by a scanner may be used by
a computer to derive three-dimensional point clouds that may be fitted or
stitched to existing three-dimensional data. Ex. 1007 ¶ 58. When such
fitting fails, the system test fits new scan data to previously acquired data to
reacquire or resume the scan. Id. ¶¶ 59, 74. The stitch recovery process
may also begin assembling a new three-dimensional model from sequential,
incremental three-dimensional data sets. Id. ¶ 74. If the original scan is
reacquired with a successful fit to the original three dimensional model, all
of the three-dimensional data acquired during stitch recovery may be
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immediately registered to the original three-dimensional model. Id. Thus,
we find Petitioner’s arguments that the combination of Paley and Kriveshko
disclose “receiving a second virtual model of the physical structure with the
computer system, the second virtual model generated from second 3D scan
data of the physical structure,” as recited in claim limitation 1.3 are
persuasive.
8. Claim Limitation 1.4
Petitioner identifies as claim limitation 1.4 the limitation that recites
“(D) modifying the first virtual model with the computer system by
replacing at least said identified portion of the first virtual model with a
corresponding portion of the second virtual model, thereby generating the
modified virtual model.” Pet. 24. Petitioner contends that Kriveshko
discloses this feature in two ways: (i) three-dimensional data acquired during
landing mode to form a supplemental three dimensional model may be
registered with an original model and (ii) “all of the three dimensional data
acquired during the [stitch] recover mode may immediately be registered to
the original three-dimensional model” once the original scan is reacquired
with a successful fit. Id. at 24–26 (quoting Ex. 1007 ¶ 74 and citing
Ex. 1007 ¶¶ 59, 77–79, 86, 97).
Patent Owner contends the combination of Paley, as modified by
Kriveshko, “fails to disclose modifying the first virtual model by replacing
at least a portion the model identified by the user, e.g. the point selected by
the user, with a corresponding portion of another model, e.g. a
corresponding point on another model.” PO Resp. 35 (citing Ex. 2011, Bajaj
Response Decl. ¶¶ 107–118). According to Patent Owner, Paley and
Kriveshko teach adding new scan data to an existing model, but not
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replacing a portion of a virtual model with a portion of a second virtual
model. Id. at 35.
Patent Owner argues that in Kriveshko “[w]here a rescan occurs in
order to address suspected inaccurate or deficient data, landing mode allows
a user to fill the void by adding remedial data to the 3D data set and update
the model.” PO Resp. 22 (citing Ex. 2011, Bajaj Resp. Decl. ¶¶ 95–96).
Patent Owner argues in the case of a stitching failure, a second virtual model
is generated because the computer is unable to register all the 3D data to a
single model, and “[t]he second virtual model is therefore wholesale
incorporated into the first virtual model upon a successful test fit.” Id.
According to Patent Owner, “[n]o portion of the first virtual model is
selected, deleted, removed or replaced with any portion of the second virtual
model” and “[n]o underlying data is deleted, removed, or replaced with new
data.” Id.
Characterizing Paley and Kriveshko both as generating a 3D virtual
model by compiling multiple scans, Patent Owner notes that when an
operator moves outside the proper scanning distance, scan data registration
and image stitching fail. Id. at 35 (citing Ex. 1006 ¶ 43). Upon recognizing
such failure, the practitioner can rescan the area of concern in either stitch
recover mode or in landing mode, as taught by Kriveshko. Id. (citing Ex.
1007 ¶¶ 75–76). Patent Owner summarizes Petitioner’s arguments
concerning Kriveshko as follows: in “landing mode” supplemental 3D scan
data of the physical structure may be acquired, assembled into a singular and
collected “second virtual model” or “supplemental three-dimensional
model” and “registered” with an “original three-dimensional model” or “first
virtual model,” resulting in a “modified virtual model.” Id. (citing Pet. 24–
25).
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According to Patent Owner, “Kriveshko’s second virtual model does
not replace a portion the first virtual model.” Instead, Kriveshko generates a
second virtual model when the computer has insufficient information to
register the rescanned data to the original model; but once the computer has
sufficient information to fit the two models together, all the scan data is
registered to the original virtual model. Id. at 36 (citing Ex. 1007 ¶¶ 59, 74).
Thus, according to Patent Owner “[t]he user does not select a portion of the
first virtual model to be replaced with a portion of the second virtual model.
Rather, the scan data underlying the second virtual model is merely
incorporated wholesale into the 3D point cloud of the original virtual model
immediately upon a successful fit.” Id.
Patent Owner expands its discussion of the replacement function in its
discussion of claim element 5.1, which differs from claim element 1.4 by its
recitation of “causing the computer system to at least one of delete, remove
or replace.” PO Resp. 52–55. Patent Owner argues that the combination of
Paley and Kriveshko does not provide the user appropriate controls to delete,
remove or replace a portion of the virtual model, but only to obtain
additional data, as opposed to replacement data. PO Resp. 52. Patent
Owner contends the illumination function Paley, as shown in Figure 9 of
Paley in the form of a flashlight visualization, exists merely “to assist the
user to navigate to a point of rescan” and “nothing in the model is deleted,
removed or replaced.” Id. at 54.
Patent Owner further argues Petitioner’s expert, Dr. Saber,
acknowledges Kriveshko “does not require deletion” of underlying data of
the first virtual model to achieve registration. PO Resp. 39 (citing Ex. 2007,
Saber Tr. II 124:6–126:16, 118:4–14, 122:9–126:16); see id. at 42 (citing
Ex. 2011, Bajaj Decl. ¶ 117).
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Petitioner replies that Patent Owner’s argument is irrelevant to the
claims (i) because “replacing” does not require deleting or removing and (ii)
because Patent Owner’s arguments that the prior art’s second virtual model
is limited as it is generated only when the computer does not have sufficient
information to register rescanned data to the original model “are directly
contrary to the actual statements in Kriveshko.” Pet. Reply 11.
Petitioner argues “replacing the inaccurate scan data in Paley’s model
with Kriveshko’s supplemental model does not require deletion (the
supplemental model may simply be stitched over the inaccurate data to hide
the inaccurate data), and in doing so the ‘replacing’ claim language of the
independent claims is met.” Id. at 17; see also, id. at 14 (discussing Dr. Saber’s
testimony and explaining that “a person of ordinary skill would have
understood that ‘replacing’ simply requires that the original data be replaced
by new data.” (citing Pet. 17–18; Ex. 1006 ¶ 59)).
We agree with Petitioner that the replacing term as used in the ’192
patent to include replacement “in one operation” does not require removing
or deleting. See Ex. 1001, 24:34–39. Our construction of “replacing” does
not require deleting as a separate step. See Section V.D above.
As we agree that it is not necessary for Petitioner to demonstrate the
references show deleting as a separate step, we turn our attention to whether
Paley and Kriveshko teach the replacing step recited in step 1.4. We are
persuaded by the following arguments and evidence presented by Petitioner.
In support of its positon that Patent Owner’s arguments concerning replacing
are contrary to Kriveshko, Petitioner emphasizes that Kriveshko
explain[s] the existence of a separate second virtual model,
which when complete, is used to modify the first virtual model
by replacement. See Pet., 22–23 (citing Ex.1007, ¶ 97 (citation
not acknowledged by PO) (“In the landing mode, the system
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may optionally create a supplemental three-dimensional model
by fitting sequential frames to one another before a successful
fit to the original three dimensional model.”).
Pet. Reply 11–12. Petitioner quotes Kriveshko’s disclosure that
the process may optionally begin assembling a new three-
dimensional model from sequential, incremental three-
dimensional data sets. In this manner, once the original scan
is reacquired with a successful fit to the original three-
dimensional model, all of the three-dimensional data acquired
during the recover mode may be immediately registered to the
original three-dimensional model.
Id. at 12 (quoting Ex. 1007 ¶ 74)(emphasis by Petitioner).
Petitioner’s citation to paragraph 74 concerns the stitch recover mode
in which the process “may attempt to reacquire a scan or resume a scan by
test fitting newly acquired data set to some portion of the three-dimensional
model.” Ex. 1007 ¶ 74. We find that Kriveshko’s reference to test fitting
the newly acquired data to “some portion of the three dimensional model”
indicates that the test fitting can be at a location on the model, e.g., any
location on the model where the user observes erroneous or unusable data.
The issue before us is whether Paley and Kriveshko teach modifying a
model by replacing a portion of the model with a portion of a second model,
e.g., by entering a recover mode after determining the 2D scan has not been
successfully converted into a 3D point cloud. To that end, Paley explains
that its Figure 5 illustrates an “evaluation mode” in which a model
containing errors is corrected using reacquisition techniques taught by (and
incorporated by reference to) Kriveshko. Ex. 1006, Figure 5, ¶¶ 53, 58–60.
Consistent with Petitioner’s arguments, Figure 5 of Paley illustrates a
user interface in an “evaluation mode” showing a location on the model
where the user display indicates errors exist. Ex. 1006 ¶¶ 54, 59. The errors
may be voids in the model where data is missing or “[o]ther errors such as
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excessive variability of surface data” that “may be identified by fuzziness or
excessive random texture.” Id. ¶ 59. Paley discloses that visualization of
scan quality may be augmented by explicit indicators, such as coloring or
shading that “visually indicate regions of incomplete scan data, inaccurate
scan data, insufficient detail (such as where a restoration may be fixed) and
the like.” Id. Navigation controls allow the user to rotate, pan, zoom in or
otherwise navigate around the digital model to more closely inspect areas of
interest to
permit a user return to data acquisition, e.g., the scanning mode
of Fig. 4, to acquire additional data where a void or deviation is
detected” by “select[ing] a specific point on the surface of the
digital model . . . where the continuous scan is to be reacquired
from the subject as described in [Kriveshko].
Id. ¶ 60; see also, id. ¶ 73 (describing the same technique for locating areas
of low data density for scan reacquisition), id. ¶ 77 (describing the same
technique in relation to an illumination beam to provide a user visual
feedback for locating areas for scan reacquisition).
Patent Owner argues that Paley’s superimposition of a visual effect
does not involve a process of test fitting or registrations in which a virtual
model is being manipulated. PO Resp. 7 (citing Ex. 1006 ¶ 75; Ex. 2011).
As discussed above, Paley discloses superimposing a visual effect to aid the
user in positioning the scanning device and using the scanning techniques
disclosed by Kriveshko to acquire and fit the data, i.e., the data that replaces
the inaccurate data at the locations where the user observed a void or
deviation, as highlighted by the visual effect. Ex. 1006 ¶¶ 60, 73, 77.
Patent Owner argues that where “inaccuracies,” such as areas of low
data density or voids appear in the virtual model, Paley and Kriveshko
remedy these inaccuracies by reacquiring and adding additional data, as
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opposed to replacing a portion of the model with a second model. PO
Surreply 15. Patent Owner’s arguments are not persuasive in light of the
discussion in paragraph 97 of Kriveshko. Although Kriveshko does not state
explicitly that the modification involves “replacing” subject matter
previously incorporated into the model, paragraph 97 of Kriveshko, cited by
Petitioner, describes the landing mode as one in which the system may
“create a supplemental 3D model by fitting sequential frames into one
another before successfully fitting to the original 3D model.” Ex. 1007 ¶ 97.
Kriveshko explicitly states “in various embodiments the landing mode may
be distinguished by a user’s ability to select a point on the original three-
dimensional model for re-acquisition of a scan.” Id. Kriveshko’s
description of these landing mode embodiments indicates the landing mode
is employed to reacquire a scan that failed while creating the original model.
Although Kriveshko does not refer explicitly to replacing existing subject
matter in the original or first model, Kriveshko teaches reacquiring a scan at
a point on a model, obtaining new scan data, creating a supplemental 3D
model and subsequently fitting the supplemental model data into the original
model, i.e., substituting the supplemental model for the defective portion of
the first model. Id. Thus, Kriveshko discloses techniques for replacing
model data at a location on the model selected by the user. Paley teaches
visual aids that assist the user in specifying the location on the model where
errors in the model require the data be replaced.
In consideration of the above, we find Petitioner has demonstrated
that the combination of Paley and Kriveshko discloses the features recited in
claim limitation 1.4.
We further agree with Petitioner, that even if the replacing step is
construed to require deleting the inaccurate data, Petitioner has shown that
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such deleting was well known and would have been obvious to a person of
ordinary skill in the art. Pet. Reply 15–16 (citing Ex. 2007). We address
deletion in more detail in our analysis of claim 5, which explicitly recites
deletion as one alternative to replacement. See Section VI.A.10 below.
9. Claims 2–4
Claim 2 depends from claim 1 and recites the “physical structure
comprises any one of an intraoral cavity of a patient or a physical dental
model representative of said intra-oral cavity.” As Petitioner notes, Paley
discloses inserting a scanner into a patient’s mouth and acquiring data from
a dental model. Pet. 26 (citing Ex. 1006 ¶ 30). Patent Owner does not
dispute that Paley discloses this limitation. We find that Petitioner has
demonstrated Paley discloses this limitation.
Claim 3 depends from claim 1 and recites “the first virtual model
includes a first 3D virtual model representative of said first physical part of
the physical structure, and step (A) comprises receiving said first 3D virtual
model at the computer system and displaying on said display a first display
image corresponding to said first 3D virtual model.” Petitioner cites
Figure 5 of Paley and the corresponding description as disclosing this
limitation. Pet. 27–28 (citing Ex. 1006, Fig. 6, ¶ 58; Ex. 1010, Saber Decl.
¶¶ 84–86).
Citing its discussion of claim limitation 1.3, Patent Owner contends
that the combination of Paley and Kriveshko fail to teach the similar
limitation of claim 3. PO Resp. 56. Patent Owner contends that Petitioner’s
expert acknowledged the virtual model is received from Paley’s scanner, but
instead Paley’s computer system receives scan image data, rather a virtual
model. Id. (citing Ex. 1006 ¶¶ 34–36; Ex. 2011, Bajaj Resp. Dec. ¶ 131).
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We addressed the parties’ arguments directed to this issue in our
discussion of claim limitation 1.3 and found the combined teachings of
Paley and Kriveshko supports Petitioner’s position. For the same reasons,
we find Petitioner has demonstrated that the combination of Paley and
Kriveshko discloses the limitations recited in claim 3.
Claim 4 depends from claim 3 and recites “step (B) comprises
receiving user input identifying on said first display image at least a first
display image portion thereof generated by user interaction with said
display, said first display image portion corresponding to said identified
portion of the first virtual model, and said identified portion of the first
virtual model being representative of a first physical portion of said first
physical part.” Petitioner again cites Figure 5 of Paley, arguing that the
claimed identified portion of the first virtual model, i.e., region 506 in Figure
5, selected by the user for correction “is representative of a first physical
portion of said first physical part (i.e. a physical sub-part of the actual
physical part of the full arch of the patient that is not represented properly in
the illustrated virtual model).” Pet. 30–31. Patent Owner does not dispute
that Paley discloses the limitation of claim 4. We find that Petitioner has
demonstrated Paley discloses this limitation.
10. Claim 5
Claim 5 depends from claim 1 and recites that steps (C) and (D)
comprise limitations subsequent to Step (B) that Petitioner identifies as
limitations 5.1 through 5.4.
a) [5.1]: causing the computer system to at least one
of delete, remove or replace said identified portion of the
first virtual model by applying a corresponding function
to said first display image portion via interaction with
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said first display image on said display, to provide a
modified first 3D virtual model
As discussed above, we find that the combination of Paley and
Kriveshko discloses the replacing step of claim limitation 1.4. See Section
VI.A.8. Claim limitation 5.1 includes replacing as an alternative (“at least
one of delete, remove or replace”); therefore we find Paley and Kriveshko
disclose this element of claim limitation 5.1(a). Petitioner cites Figure 9 and
the corresponding discussion in Paley as evidence that Paley and Kriveshko
teach “applying a corresponding function to said first display image portion
via interaction with said first display image on said display.” Pet. 31–32.
Patent Owner argues that Petitioner fails to show how Paley and
Kriveshko disclose the claimed removing, deleting, or replacing is done “by
applying a corresponding function to said first display image portion via
interaction with said first display image on said display, to provide a
modified first 3D virtual model.” PO Resp. 53. We address the interaction
with the display feature by way of the illumination function in Figure 9 of
Paley in our discussion of claim limitation 1.4. See Section VI.A.8 above.
Figure 9 depicts a visual technique using a simulated external visualization
beam, such as a flashlight or spotlight, to localize scanner 908 with respect
to the underlying physical model and serve as a navigation tool during a scan
by providing visual feedback. Ex. 1006 ¶¶ 74–76. The illuminated region
may correspond to a region from which data is being acquired. Id. ¶ 76. We
also extensively discussed the “replacing” function in our analysis of claim
limitation 1.4 (Step D). See Section VI.A.8 above. Thus, we agree with
Petitioner that Paley and Kriveshko disclose “applying a corresponding
function to said first display image portion via interaction with said first
display image on said display.”
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In arguing that Petitioner fails to show where the computer function
limitation appears in the prior art, Patent Owner reiterates its arguments (i)
that neither Paley nor Kriveshko expressly describes deleting, removing or
replacing, (ii) that such actions are not necessary for Kriveshko’s final
registration step, and (iii) that the visual cue in Paley is a dynamic object on
the display screen, separate from the model, to indicate where additional
scan data is acquired, but does not delete, remove, or replace any subject
matter. PO Resp. 53–55. We discuss Patent Owner’s arguments extensively
in our analysis of claim 1, particularly in the context of “replacing at least
said identified portion of the first virtual model” (claim limitation 1.4). See
Section VI.A.1.2–1.4. For the same reasons, we find that Paley and
Kriveshko teach at least the “replacing” alternative of claim limitation 5.1.
Petitioner’s also argues that the combination of Paley and Kriveshko
also teaches the “remove” or “delete” alternatives recited” in claim
limitation 5.1. For the reasons discussed below, we also find that the
combination of Paley and Kriveshko discloses the deleting and removing
alternatives.
Figure 2 of Kriveshko depicts a process for three-dimensional
scanning. Ex. 1007 ¶ 60. After acquiring an image and converting 2D scan
data to a 3D point cloud (id. ¶¶ 60–63), because of possible errors, step 208
“tests the recovery of incremental data for internal consistency, rather than
by comparison to the full three-dimensional model reconstructed from
incremental scans” (id. ¶ 64). Such errors may result, for example, from
“movement or the scanner laterally off the subject may result in an
insufficient amount of derived data,” or “rapid scanner motion may cause
blurring” Id. ¶¶ 60–63. If the 2D data has not been converted successfully
into 3D data (or if a user purposely interrupts the scan) the process advances
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to stitch recover mode where it resumes or reacquires a scan by testing
newly acquired data for fit with some portion of the 3D model. Id. ¶¶ 64,
73. In the case of resuming a scan interrupted by the user or by the
computer, the model is incomplete and, in the absence of rescanning a
previously scanned portion of the model, there arguably is no modification
of the model by replacing a portion of the model because the newly scanned
data is additional data, rather than substitute data.
As Petitioner notes, however, Figures 5 and 9 of Kriveshko concern
marking a portion of an existing model, e.g., using the visual cue of Figure 9
to highlight the inadequate portion of the model in Figure 5 to identify the
rescan area. Pet. 31–35. Petitioner is correct that Kriveshko not only
discloses replacing that portion of the model in the highlighted area with a
model generated from the rescan data (a rescan of a second physical part that
at least partially overlaps the first physical part), but the registration of the
replacement portion also discloses deleting or removing a portion of the
model. Id. at 34–35. We credit the testimony of Petitioner’s expert,
Dr. Saber, who explains that Kriveshko uses a partial overlap test fit method
to establish “known-good reference frame data” for its test fitting and that
Kriveshko explains to a person of ordinary skill that the data relating to the
identified portion of the first virtual model is deleted because it is not needed
for the test fitting, and is distorted or missing. Id.; Ex. 1010, Saber Decl.
¶ 99 (citing Ex. 1006 ¶ 60 as disclosing engaging the landing mode to
correct distorted or missing data; citing Ex. 1007 ¶¶ 68, 74, and 97 as
disclosing the use of periphery frames, and a supplemental three-
dimensional model registered with the original three dimensional model).
According to Dr. Saber, the result of this deletion is a modified first three
dimensional model. Ex. 1010 ¶ 99.
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We also credit Petitioner’s argument and Dr. Saber’s testimony that
deletion of the underlying data in the first virtual model during landing mode
would have been obvious, and there is no technical significance to when the
data is deleted before the ultimate registration of the assembled three
dimensional model (second virtual model) with the original three-
dimensional model. Pet. 35 (citing Ex. 1010, Saber Decl. ¶ 100); see also
Pet. Reply 14 (citing Ex. 2007, Saber Tr., 51:15–16, 120:11–14), 15 (citing
Ex. 1015, Bajaj Tr., 168:3–19, 170:2–172:8 for the proposition that Patent
Owner’s expert acknowledged deleting data to be replaced was well known;
Ex. 2007, Saber Tr., 80:2–4, 82:18–83:13, explaining that deleting
inaccurate data from models was well known). We agree with Petitioner
that the deleting and removing would have been obvious to a person of
ordinary skill given this evidence.
In consideration of the above, we agree with Petitioner that Paley and
Kriveshko discloses “causing the computer system to at least one of delete,
remove or replace said identified portion of the first virtual model by
applying a corresponding function to said first display image portion via
interaction with said first display image on said display, to provide a
modified first 3D virtual model,” as recited in claim limitation 5.1.
b) [5.2]: receiving the second virtual model in the
form of a second 3D virtual model representative of a
second physical part of said physical structure, wherein a
spatial disposition of said second physical part with
respect to said first physical part is known or
determinable
Petitioner cites Kriveshko as disclosing that the claimed spatial
distribution between the first physical part and the second physical part is
determined by testing the fit of the newly acquired data to an existing 3D
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model from a 3D scan of the second physical part, e,g., where the second
physical part physically overlaps the original physical part. Pet. 37 (citing
Ex. 1007 ¶¶ 65–66, 68, 74, 86, 97). Patent Owner does not address claim
limitation 5.2 explicitly.
Noting that the goal of Kriveshko’s landing mode is reacquiring data
to replace the originally scanned data from the first physical part with data
scanned from the second physical part, Petitioner notes that test fitting
involves determining the disposition of the second physical part relative to
the first physical part by test fitting the newly acquired data to the existing
3D model prior to full registration. Id. at 37–38 (citing Ex. 1007 ¶¶ 74, 97;
Ex. 1010, Saber Decl. ¶¶ 107-108). As we discussed previously in this
Decision, Kriveshko discloses “[i]n the landing mode, the system may
optionally create a supplemental three-dimensional model by fitting
sequential frames to one another before a successful fit to the original three-
dimensional model.” Ex. 1007 ¶ 97. In view of this evidence we find
Petitioner has demonstrated the combination of Paley and Kriveshko
disclose the features recited in claim limitation 5.2
c) [5.3]: virtually registering said second 3D virtual
model with respect to said modified first 3D virtual
model to provide said modified virtual model wherein
said identified portion of the first virtual model is
replaced with a corresponding part of said second 3D
virtual model representative of a second physical portion
of said second physical part
Petitioner argues that, using terminology similar to that used in Paley,
Kriveshko explains that in landing mode supplemental 3D scan data is
acquired and collected into a second 3D virtual model, and registered with
an original 3D model to produce a modified virtual model. Pet. 38–39
(citing Ex. 1007 ¶ 59 (reacquisition in landing mode), ¶ 97 (discussing
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assembly of a supplemental 3D model in landing model), ¶ 74 (discussing
fitting and registering a supplemental 3D model to an original 3D model),
¶ 86 (concerning the independent nature of the second virtual model and full
registration with the first virtual model); Ex. 1010, Saber Decl. ¶¶ 111–112).
Patent Owner does not address claim limitation 5.3 explicitly. We
discuss Paley and Kriveshko’s landing mode in detail above and find that
Petitioner has demonstrated the combination of Paley and Kriveshko
disclose the features recited in claim limitation 5.3.
d) [5.4]: outputting said modified virtual model from
said computer system
Petitioner argues that Paley discloses claim limitation 5.4 because it
discloses saving the modified virtual model from its computer system. Pet.
39. Patent Owner does not address claim limitation 5.4 explicitly. We
discuss Paley and Kriveshko’s landing mode in detail above and find that
Petitioner has demonstrated the combination of Paley and Kriveshko
disclose the features recited in claim limitation 5.4.
11. Claims 8–12
Claim 8 depends from claim 5 and recites “said second physical part
at least partially overlaps said first physical portion of said first physical part
of said physical structure to provide data on said spatial disposition of said
second physical part with respect to said first physical part.” Petitioner cites
Kriveshko as disclosing “a test fitting process that involves the
determination of the disposition of the second physical part with respect to
the first physical part when analyzing the overlap between the two, by
properly test fitting the newly acquired data to the existing three-
dimensional model prior to full registration.” Pet. 39 (citing Ex. 1007 ¶¶ 74,
97). Petitioner further notes that Kriveshko’s test fitting process uses data
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on spatial disposition of the second physical part with respect to the first
physical part provided in the assembled second 3D virtual model, allowing
for successful test fitting with reference frames of previously acquired data
from the first physical part.” Id. at 40 (citing Ex. 1007 ¶¶ 65–66; Ex. 1010,
Saber Decl., ¶¶ 115–116). Patent Owner does not respond explicitly to
Petitioner’s arguments concerning the additional limitations recited in claim
8.
Having reviewed the evidence and arguments of record, we are
persuaded that Petitioner has demonstrated Paley and Kriveshko teach the
additional limitations recited in claim 8.
Claim 9 depends from claim 5 and recites “said second physical
portion of said second physical part spatially corresponds to but is
topographically different from said first physical portion of said first
physical part.” Petitioner contends that all the elements of claim 9 are
disclosed by Paley. Pet. 40. Petitioner cites Paley as disclosing the use of a
scanning system in an iterative process to prepare a tooth surface by
removing tooth material and rescanning at least once, so that a second
physical portion of the second physical part spatially corresponds to, but is
topographically different from, the first physical portion of the first physical
part. Pet. 40–41 (citing Ex. 1006 ¶¶ 62–64; Ex. 1010, Saber Dec. ¶¶ 119–
120). Patent Owner does not respond explicitly to Petitioner’s arguments
concerning the additional limitations recited in claim 9.
Having reviewed the evidence and arguments of record, we are
persuaded that Petitioner has demonstrated Paley and Kriveshko teach the
additional limitations recited in claim 9.
Claim 10 depends from claim 5 and recites “corresponding part of
said second 3D virtual model spatially corresponds to but is topographically
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different from said portion of the first virtual model.” Petitioner argues that
Paley discloses preparing a tooth by removing tooth material, such that the
second physical portion of the second physical part spatially corresponds to,
but is topographically different from the first physical portion of the first
physical part. Pet. 41. According to Petitioner, the topological differences
will be reflected in the portion of the first virtual model and second 3D
virtual model. Id. Patent Owner does not respond explicitly to Petitioner’s
arguments concerning the additional limitations recited in claim 10.
Having reviewed the evidence and arguments of record, we are
persuaded that Petitioner has demonstrated Paley and Kriveshko teach the
additional limitations recited in claim 10.
Claim 11 depends from claim 5 and recites “said first virtual model
represents said first physical part of the physical structure, wherein said first
virtual model is considered to fail to comply with a predetermined
requirement.” Petitioner notes that region 506 of Paley’s Figure 5 fails to
properly represent the physical part of the physical structure, and thus
represents the claimed first physical part of the physical structure. Pet. 41.
As a result, the virtual model is a deficient one that Paley evaluates, e.g., by
evaluating for omitted or missing scan data or assessing topology. Id. at 42
(citing Ex. 1006 ¶¶ 55–57, 72; Ex. 1010, Saber Decl. ¶ 127). Patent Owner
does not respond explicitly to Petitioner’s arguments concerning the
additional limitations recited in claim 11.
Having reviewed the evidence and arguments of record, we are
persuaded that Petitioner has demonstrated Paley and Kriveshko teach the
additional limitations recited in claim 11.
Claim 12 depends from claim 11 and recites “said predetermined
requirement comprises providing high surface definition of a surface of
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interest in said first physical portion of said first physical part of the physical
structure.” Petitioner notes that among Paley’s predetermined requirements
is a point density threshold required for providing high surface definition
(i.e. high quality scanning data) of a surface of interest in the first physical
portion of the first physical part of the physical structure. Pet. 42-43 (citing
Ex. 1006 ¶¶ 32, 51, 72; Ex. 1010, Saber Decl. ¶¶ 128–129). Patent Owner
does not respond explicitly to Petitioner’s arguments concerning the
additional limitations recited in claim 12.
Having reviewed the evidence and arguments of record, we are
persuaded that Petitioner has demonstrated Paley and Kriveshko teach the
additional limitations recited in claim 12.
12. Claim 13
Claim 13 depends from claim 12 and recites “at least a part of said
surface of interest in said first physical portion of said first physical part was
obscured when the said first 3D virtual model was created, and wherein said
second physical portion of said second physical part corresponds to said first
physical portion of said first physical part wherein said at least a part of said
surface of interest is now obscured.”
Citing paragraph 26 of Paley as stating Paley’s dental objects include
dental implants and implant abutments, Petitioner argues that Paley’s
scanning and analysis methods apply equally to such implants and their
associated abutments. Pet. 43. Petitioner argues a person of ordinary skill
would evaluate an implant with its associated abutment using Paley’s
method by performing an initial scan with the abutment in place, thus
obscuring a portion of the dental implant (the first physical portion of the
first physical part). Id. (citing Ex. 1006 ¶ 68). Petitioner argues a person of
ordinary skill would then remove the abutment and perform a second scan,
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such that the portion of the dental implant is no longer obscured and is a
second physical portion of the second physical part that corresponds to the
first physical portion of the first physical part. Id. at 44 (citing Ex. 1006
¶ 68; Ex. 1010, Saber Decl. ¶ 133)
Patent Owner contends that Petitioner fails to support its assertion that
a practitioner would take these actions. PO Resp. 57–58 (citing Pet. 43–44;
Ex. 1006 ¶ 68); PO Surreply 21 (arguing Petitioner’s assertion is
speculative). Petitioner responds that Patent Owner fails to provide any
reasoning why Paley’s disclosure relating to dental implants does not lead a
person of ordinary skill to reason as Petitioner argues and the absence of
testimony from Petitioner’s dental expert, Dr. Valley, supports Petitioner’s
analysis. Pet. Reply 25–26.
We find as follows regarding claim 13. Paragraph 68 of Paley, cited
by Petitioner, explains that reviewing a crown surface preparation is only
one useful application of Paley’s analysis and vison tool and that the same
techniques can be applied to a variety of dental objects, including
restorations, hardware, appliances as well and any region of diagnostic or
other significance that objectively can be characterized for automated
analysis. Ex. 1006 ¶ 68; Ex. 1010, Saber Decl. ¶¶ 131–132. Paley discloses
preparing a tooth surface for a crown in paragraphs 63–67, describing “an
automated process may examine the surface preparation and surrounding
dentition to ensure adequate physical clearance, taper, appropriate shape,
and the like for the specific restoration type” (Ex. 1006 ¶ 63), “scanning the
tooth surface, and analyzing the tooth surface may be applied iteratively to
refine a surface preparation” (id. ¶ 65), “specifications for a particular
restoration may vary from dentist to dentist, from laboratory to laboratory,
from manufacturer to manufacturer, and from tooth to too . . . occlusion and
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clearance for incisal tooth surfaces may be analyzed differently from
occlusion and clearance for molar occlusal surface” (id. ¶ 66). Based on this
evidence and the uncontroverted testimony of Petitioner’s expert, we find
Petitioner has demonstrated the limitations of claim 13 would have been
obvious to a person of ordinary skill.
13. Claims 15–23, 25–32
Claim 15 depends from claim 13 and recites “said first physical
portion of said first physical part was obscured with an artifact, and wherein
said second physical portion of said second physical part corresponds to said
first physical portion of said first physical part wherein said artifact has been
removed.” Referencing its discussion of claim 13, Petitioner contends the
limitations of claim 15 are disclosed by Paley. Pet. 44. Petitioner notes that
Paley discusses a dental implant abutment as an “artifact” and the analysis of
a dental implant and its abutment using Paley’s disclosed scanning methods.
Id. (citing Ex. 1010, Saber Decl. ¶ 134). Patent Owner does not respond
explicitly to Petitioner’s arguments concerning the additional limitations
recited in claim 15.
Having reviewed the evidence and arguments of record, we are
persuaded that Petitioner has demonstrated Paley and Kriveshko teach the
additional limitations recited in claim 15.
Claim 16 depends from claim 15 and recites “said artifact comprises
an impression abutment or any other structure mounted onto a dental implant
that is embedded in said physical structure.” Petitioner cites Paley as
disclosing its scanning and analysis method is applicable to hardware such
as a dental implant with its associated abutment. Pet. 44 (citing Ex. 1006
¶ 68). Petitioner notes that in such applications the artifact is an abutment
that is a structure mounted onto the dental implant, which itself is embedded
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in the patient’s jaw bone or physical structure. Id. at 44-45 (citing Ex. 1010,
Saber Decl. ¶¶ 135–136). Patent Owner does not respond explicitly to
Petitioner’s arguments concerning the additional limitations recited in claim
16.
Having reviewed the evidence and arguments of record, we are
persuaded that Petitioner has demonstrated Paley and Kriveshko teach the
additional limitations recited in claim 16.
Claim 17 depends from claim 11 and recites “said predetermined
requirement comprises providing a surface of interest in said first physical
portion of said first physical part of the physical structure that is configured
for enabling a prosthesis to be mounted with respect thereto.” Referencing
its discussion of claim 11, Petitioner cites Paley as disclosing the use of its
scanning system to prepare a tooth surface iteratively by removing tooth
material and rescanning the tooth surface at least once. Pet. 45 (citing
Ex. 1006 ¶ 65; Ex. 1010, Saber Decl. ¶¶ 137–138). According to Petitioner
preparing a tooth surface involves providing a surface of interest in the first
physical portion of the first physical part of the physical structure that is
configured for enabling a prosthesis to be mounted when the tooth
preparation process is complete and the tooth is ready to accept a prosthesis
such as a crown. Id. (citing Ex. 1006 ¶¶ 62–64; Ex. 1010, Saber Decl. ¶
139). Patent Owner does not respond explicitly to Petitioner’s arguments
concerning the additional limitations recited in claim 17.
Having reviewed the evidence and arguments of record, we are
persuaded that Petitioner has demonstrated Paley and Kriveshko teach the
additional limitations recited in claim 17
Claim 18 depends from claim 17 and recites “at least a part of said
surface of interest in said first physical portion of said first physical part is
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inadequate for enabling a prosthesis to be mounted with respect thereto, and
wherein said second physical portion of said second physical part
corresponds to said first physical portion of said first physical part wherein
said at least a part of said surface of interest has been physically altered.”
Petitioner cites Paley as disclosing an iterative tooth surface preparation
process in which at least a part of the surface of interest in the first physical
portion of the first physical part is inadequate for enabling a prosthesis to be
mounted, and would be represented in the first virtual model. Pet. 46 (citing
Ex. 1006 ¶¶ 62–65; Ex. 1010, Saber Decl. ¶¶ 140–141). Tooth material that
would be physically removed during the preparation process, such that the
second physical portion of said second physical part corresponds to the first
physical portion of the first physical part and wherein said at least a part of
said surface of interest has been physically altered, would be represented in
the second 3D virtual model. Id. (citing Ex. 1006 ¶¶ 62–65; Ex. 1010, Saber
Decl. ¶ 142). Patent Owner does not respond explicitly to Petitioner’s
arguments concerning the additional limitations recited in claim 18.
Having reviewed the evidence and arguments of record, we are
persuaded that Petitioner has demonstrated Paley and Kriveshko teach the
additional limitations recited in claim 18.
Claim 19 depends from claim 18 and recites “wherein said at least a
part of said surface of interest has been physically altered via a material
removal operation to modify topology of said at least a part of said surface
of interest.” Petitioner cites Paley as disclosing that in its iterative tooth
preparation process some tooth material would be physically removed,
resulting in a modification of the topography of at least a part of the surface
of interest. Pet. 47 (citing Ex. 1006 ¶¶ 62–65; Ex. 1010, Saber Decl.
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¶¶ 143–144). Patent Owner does not respond explicitly to Petitioner’s
arguments concerning the additional limitations recited in claim 19.
Having reviewed the evidence and arguments of record, we are
persuaded that Petitioner has demonstrated Paley and Kriveshko teach the
additional limitations recited in claim 19.
Claim 20 depends from claim 19 and recites “at least a part of said
surface of interest comprises a finish line of a tooth onto which it is desired
to mount the prosthesis, wherein in said first physical portion of said first
physical part said finish line is inadequately defined, and wherein in said
second physical portion of said second physical part said finish line is
adequately defined.” Noting that the ’192 patent defines a “finish line” as
the transition boundary between a prosthesis and a dental preparation,
Petitioner cites Paley as disclosing an iterative process for tooth preparation
and scanning for a crown prosthesis. Pet. 47–48 (citing Ex. 1001, 1:53–56;
Ex. 1006 ¶¶ 62–65; Ex. 1010, Saber Decl. ¶¶ 145–146). Petitioner further
notes that the claimed “first physical portion of said first physical part said
finish line [that] is inadequately defined” would be represented by the first
virtual model. Id. (citing Ex. 1006 ¶¶ 62–65; Ex. 1010, Saber Decl. ¶ 147).
Petitioner further states that tooth material removed around the finish line
area to cure the inadequate definition, such that the claimed “second
physical portion of said second physical part said finish line is adequately
defined,” would be represented by the second 3D model. Id. (citing Ex.
1006 ¶¶ 62–65; Ex. 1010, Saber Decl. ¶ 148). Patent Owner does not
respond explicitly to Petitioner’s arguments concerning the additional
limitations recited in claim 20.
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Having reviewed the evidence and arguments of record, we are
persuaded that Petitioner has demonstrated Paley and Kriveshko teach the
additional limitations recited in claim 20.
Claim 21 depends from claim 19 and recites “said at least a part of
said surface of interest comprises a preparation surface of a preparation of a
tooth onto which it is desired to mount the prosthesis, wherein in said first
physical portion of said first physical part said preparation surface is
inadequate for mounting the prosthesis thereto, and wherein in said second
physical portion of said second physical part said preparation surface is
adequate for mounting the prosthesis thereto.” Petitioner cites Paley as
disclosing an iterative crown prosthesis preparation in which a portion of a
tooth onto which it is desired to mount the prosthesis is the claimed “at least
part of said surface of interest [that] comprises a preparation surface of a
preparation of a tooth onto which it is desired to mount the prosthesis,” but
is inadequate for mounting the prostheses and is represented by the first
virtual model. Pet. 48–49 (citing Ex. 1006 ¶¶ 62–65; Ex. 1010, Saber Decl.
¶ 151). Thus, continued preparation is required. Id. Petitioner notes that
some tooth material is removed from the preparation surface of the
preparation such that the claimed “second physical portion of said second
physical part said preparation surface is adequate for mounting the
prosthesis thereto” would be represented in the second 3D virtual model. Id.
Patent Owner does not respond explicitly to Petitioner’s arguments
concerning the additional limitations recited in claim 21.
Having reviewed the evidence and arguments of record, we are
persuaded that Petitioner has demonstrated Paley and Kriveshko teach the
additional limitations recited in claim 21.
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Claim 22 depends from claim 3 and recites “said first virtual model is
distorted or deficient.” Petitioner cites Paley as disclosing that its first
virtual model prior to correction is distorted or deficient, including with
respect to “region 506 of omitted or missing data.” Pet. 49-50 (citing Ex.
1006 ¶¶ 38, 55–57, 59–60, 72–73, 77; Ex. 1010, Saber Decl. ¶¶ 153–154).
Patent Owner does not respond explicitly to Petitioner’s arguments
concerning the additional limitations recited in claim 22.
Having reviewed the evidence and arguments of record, we are
persuaded that Petitioner has demonstrated Paley and Kriveshko teach the
additional limitations recited in claim 22.
Claim 23 depends from claim 1 and recites the method further
comprises “manufacturing a physical dental model of an intra-oral cavity
based on said modified virtual model.” Petitioner cites Paley as disclosing
manufacturing of “dental objects” from its scanned data. Pet. 50 (citing Ex.
1006 ¶¶ 26–27, 30, 72; Ex. 1010, Saber Decl. ¶¶ 155–157). Patent Owner
does not respond explicitly to Petitioner’s arguments concerning the
additional limitations recited in claim 23.
Having reviewed the evidence and arguments of record, we are
persuaded that Petitioner has demonstrated Paley and Kriveshko teach the
additional limitations recited in claim 23.
Claim 25 depends from claim 1 and recites the method further
comprises “manufacturing a dental aligner based on said modified virtual
model.” Petitioner cites Paley as disclosing “appliances” are “used to
correct, align, or otherwise temporarily or permanently adjust dentition,
such as removable orthodontic appliances.” Pet. 50 (quoting Ex. 1006,
¶ 26 (emphasis by Petitioner). Patent Owner does not respond explicitly to
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Petitioner’s arguments concerning the additional limitations recited in claim
25.
Having reviewed the evidence and arguments of record, we are
persuaded that Petitioner has demonstrated Paley and Kriveshko teach the
additional limitations recited in claim 25.
Claim 26 depends from claim 1 and recites the method further
comprises “manufacturing orthodontic appliances based on said modified
virtual model.” Petitioner cites Paley as explaining that “appliances” are
“used to correct, align, or otherwise temporarily or permanently adjust
dentition, such as removable orthodontic appliances.” Pet. 51 (quoting
Ex.1006, ¶ 26 (emphasis by Petitioner)). Petitioner notes that Paley explains
that its virtual model can be used to manufacture “appliances”. Id. (citing
Ex. 1006 ¶ 30; Ex. 1010, Saber Decl. ¶¶ 161–163). Patent Owner does not
respond explicitly to Petitioner’s arguments concerning the additional
limitations recited in claim 26.
Having reviewed the evidence and arguments of record, we are
persuaded that Petitioner has demonstrated Paley and Kriveshko teach the
additional limitations recited in claim 26.
Claim 27 depends from claim 27 and recites the method further
comprises “manufacturing a dental prostheses based on said modified
model.” Petitioner notes that Paley explains that its virtual model can be
used to manufacture “dental objects such as prosthetics.” Pet. 51 (citing Ex.
1006 ¶ 30). Patent Owner does not respond explicitly to Petitioner’s
arguments concerning the additional limitations recited in claim 27.
Having reviewed the evidence and arguments of record, we are
persuaded that Petitioner has demonstrated Paley and Kriveshko teach the
additional limitations recited in claim 27.
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Claim 28 is an independent claim drawn to a “system to generate a
modified virtual model of a physical structure.” The limitations of system
claim 28 correspond generally to the limitations of method claim 1. See
also, Pet. 51–54. We find that Petitioner has demonstrated Paley and
Kriveshko disclose the limitations of system claim 28 for the same reasons
Paley and Kriveshko disclose the limitations of method claim 1. Patent
Owner does not respond explicitly to Petitioner’s arguments concerning the
additional limitations recited in claim 28 and does not contend that claim 28
is patentably distinguishable from claim 1.
Having reviewed the evidence and arguments of record, we are
persuaded that Petitioner has demonstrated Paley and Kriveshko teach the
limitations recited in claim 28.
Claim 29 depends from system claim 28 and recites “at least said
identified portion of the first virtual model and the corresponding portion of
the second virtual model are each representative of a physical portion of the
physical structure, the first virtual model providing a deficient representation
of the physical portion and the second virtual model providing an adequate
representation of the physical portion.” Petitioner cites Paley’s disclosure of
region 506 as a first virtual model with a deficient representation of a
physical portion of the physical structure on the patient’s arch. Id.
Petitioner cites Paley’s second virtual model as a rescan providing an
adequate representation of the physical portion. Id. (citing Ex. 1010, Saber
Decl. ¶¶ 180–182). Patent Owner does not respond explicitly to Petitioner’s
arguments concerning the additional limitations recited in claim 29.
Having reviewed the evidence and arguments of record, we are
persuaded that Petitioner has demonstrated Paley and Kriveshko teach the
additional limitations recited in claim 29.
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Claim 30 is drawn to a non-transitory computer readable medium
having stored thereon a program that, when executed by a computer, causes
the computer to carry out steps the generally correspond to those recited in
method claim 1. The limitations of claim 30 correspond generally to the
limitations of method claim 1 and system claim 28. See also, Pet. 56–58.
We find that Petitioner has demonstrated Paley and Kriveshko disclose the
limitations of system claim 30 for the same reasons Paley and Kriveshko
disclose the limitations of method claim 1 and system claim 28. Patent
Owner does not respond explicitly to Petitioner’s arguments concerning the
additional limitations recited in claim 30 and does not contend that claim 30
is patentably distinguishable from claim 1.
Having reviewed the evidence and arguments of record, we are
persuaded that Petitioner has demonstrated Paley and Kriveshko teach the
limitations recited in claim 30.
Claim 31 depends from claim 30 and recites “at least said identified
portion of the first virtual model and the corresponding portion of the second
virtual model are each representative of a physical portion of the physical
structure, the first virtual model providing a deficient representation of the
physical portion and the second virtual model providing an adequate
representation of the physical portion.” Noting that claim 31 includes
language identical to claim 29, Petitioner contends, and we agree, that Paley
and Kriveshko disclose all the limitations of claim 31.
Claim 32 depends from claim 30 and recites “the medium comprises
one or more of optical discs, magnetic discs, magnetic tapes, or solid state
memory storage.” Petitioner contends, and we agree, that the recitation of a
magnetic disk as the computer readable medium does not patentably
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distinguish claim 32. Patent Owner does not respond explicitly to
Petitioner’s contentions concerning claim 31.
14. Motivation to Combine the teachings of Paley and
Kriveshko
As Petitioner points out, Paley incorporates Kriveshko by reference,
for the purpose of explaining the specific technical way in which 3D scan
data may be reacquired to modify Paley’s virtual model. Pet. 60 (citing Ex.
1006 ¶¶ 60, 73, 77, 38. As Paley incorporates Kriveshko by reference,
Kriveshko’s teachings are already present in Paley.
Patent Owner contends that Petitioner’s position requires modifying
both Paley and Kriveshko with no motivation or rational for doing so. PO
Resp. 44. Patent Owner argues that “[t]he solution to Paley and Kriveshko’s
problem is to acquire additional scan data and fill in the low density portions
of the model.” PO Resp. 47 (citing Ex. 2007, Saber Tr. 45:12–19 as
explaining that Paley and Kriveshko teach that the solution to fuzziness and
excessive texture is acquiring and adding more data). Thus, a fundamental
premise of Patent Owner’s argument that there is no motivation to combine
the teachings of Paley and Kriveshko is that the combination of Paley and
Kriveshko does not teach modifying the first virtual model by replacing at
least part of the identified portion of the first virtual model with a
corresponding portion of a second virtual model.
Patent Owner also contends that the mere fact Kriveshko characterizes
data as “inaccurate” does not teach a person of ordinary skill how to invent a
method of selecting and deleting such data. PO Resp. 44, 47–48. As an
initial matter, we have not construed the “replacing” step of clam limitation
1.4 to require “deleting.” See Section V.D. Nevertheless, even if the term
“replace” is construed to require the one “delete” our analysis of claim
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limitation 5.1 finds that the combination of Paley and Kriveshko discloses
this feature. See Section VI.10(a).
We address the premise of Patent Owner’s arguments in our
discussion of the individual limitations of claim 1. In our discussion of
claim limitation 1.1 we note that Paley’s description of Figure 5 refers to
“errors in a digital model, such as a region 506 of omitted or missing scan
data.” See Section VI.A.5 (citing Ex. 1006 ¶ 59)(emphasis added). As
discussed above for claim limitation 1.2, we are not persuaded by Patent
Owner’s argument that Paley and Kriveshko are primarily concerned with
voids in scan data. PO Resp. 50. See Section VI.A.6. Instead, we find that
Paley are Kriveshko are concerned with correcting defective results and that
a void is just an example of a defect. See Section VI.A.6 (citing Ex. 1006 ¶¶
7, 55, 59 (“other errors such as excessive variability of surface data may be
intrinsically identified by fuzziness or excessive random texture”)); Ex. 1007
¶ 5. In our discussion of claim limitation 1.3 we found Petitioner explains
how Kriveshko processes scanned data to develop a second model that is fit
to the first model. Pet. 22 (citing Ex. 1007 ¶ 97 (disclosing “creating a
supplemental model by fitting sequential frames to one another before a
successful fit to the original three-dimensional model.”). See Section VI.7.
As discussed above for claim element 1.4 we find that Paley explains its
Figure 5 illustrates an “evaluation mode” in which a model containing errors
is corrected using reacquisition techniques taught by (and incorporated by
reference to) Kriveshko. See Section V.A.8 (citing Ex. 1006, Figure 5, ¶¶
53, 58–60). We specifically note Kriveshko’s “landing mode” as an
example. Id. In view of these findings, and the express incorporation by
reference of Kriveshko into Paley, we are persuaded that a person of
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ordinary skill would have had reason to combine the teachings of Paley and
Kriveshko in the manner set forth in the challenged claims.
15. Conclusion as to claims 1–5, 8–13, 15–23, 25–32
In consideration of the above, we are persuaded that Petitioner has
demonstrated that Paley and Kriveshko disclose all the limitations of claims
1–5, 8–13, 15–23, and 25–32 and that a person of ordinary skill would have
had reason to combine the teachings of Paley and Kriveshko.
B. Claim 14 As Obvious Over Paley, Kriveshko and Babayoff
Claim 14 depends from claim 13 and recites “said first physical
portion of said first physical part was obscured with a material including one
or more of saliva, debris, or blood, and wherein said second physical portion
of said second physical part corresponds to said first physical portion of said
first physical part wherein said material has been removed from said surface
of interest.” Claim 14 depends from claim 13, which depends from claim
12, which depends from claim 11, which depends from claim 5 discussed
above.
Petitioner cites region 506 of Paley as disclosing the limitation in
claim 11, that the first virtual model represents a first physical part of the
physical structure and the first virtual model fails to comply with a
predetermined requirement. Pet. 41–42. The subject matter of claim 12
recites that the predetermined requirement comprises providing high surface
definition of a surface of interest in the first physical portion of the first
physical part of the physical structure. As to this feature, Petitioner cites
Paley’s disclosure that a point density may fall below a threshold. Id. at 42–
43. The subject matter of claim 13 further limits claim 12, reciting that at
least a part of the surface of interest is the first physical portion of the first
physical part was obscured when the 3D virtual model was created and the
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second physical portion of the second physical part corresponds to the first
physical portion where the surface of interest was obscured. Petitioner
argues that Paley states its scanning and analysis method is applicable to
dental implants and abutments, and that a practitioner would remove the
abutments and perform a second scan such that the portion of the dental
implant is no longer obscured. Id. at 43–44.
The subject matter of claim 14 further limits claim 13, reciting that the
obscured first physical portion is obscured with one or more of saliva, debris
or blood and the second physical portion corresponds to the first physical
part where the obscuring material has been removed from the surface of
interest. Petitioner cites Babayoff as disclosing recognizing that such
material impairs the ability of an imaging instrument and addresses the issue
with an auxiliary device that ejects gas to the area to be imaged and provides
suction to remove the material. Pet 62. Petitioner persuasively argues that,
as the teachings of Paley and Kriveshko all involve intraoral scanners, a
person of ordinary skill would have recognized the light reflectivity issues
presented by such fluids and material and reasonably expected to achieve
successful imaging by combining the teachings of the device in Babayoff
with the methods taught in Paley and Kriveshko. Id. at 63–65.
Patent Owner argues that Petitioner fails to demonstrate Paley,
Kriveshko, and Babayoff fail to disclose the limitations of claim 14 for the
same reasons Paley and Kriveshko fail to disclose the limitations of claims 1
and 5. PO Resp. 58–59. As discussed above, we have determined that that a
person of ordinary skill would have had reason to combine the teachings of
Paley and Kriveshko and that their combined teachings disclose the features
of claims 1 and 5. Patent Owner does not advance any arguments
concerning Babayoff. For the reasons presented by Petitioner and discussed
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above, we are persuaded that Petitioner has demonstrated a person of
ordinary skill would have had reason to combine the teachings of Babayoff
with those of Paley and Kriveshko to arrive at the limitations recited in claim
14.
C. Claim 24 As Obvious Over Paley, Kriveshko, and Chishti
Claim 24 depends from claim 1 and further comprises “designing an
orthodontic treatment plan based on said modified model.” Petitioner cites
Chishti as disclosing designing an orthodontic treatment plan based on a
three-dimensional model, such as that disclosed in Paley or Paley and
Kriveshko, and argues that a person of ordinary skill would have been
motivated to combine the teachings of Chishti with Paley, given Paley’s
discussion of using virtual models to produce orthodontic appliances. Pet.
65.
Patent Owner contends that Petitioner has failed to demonstrate that
the combined teachings of Kriveshko and Paley disclose the limitations of
claim 1 from which claim 24 depends. PO Resp. 59. As discussed above,
we have determined that that a person of ordinary skill would have had
reason to combine the teachings of Paley and Kriveshko and that their
combined teachings disclose the limitations of claim 1. Patent Owner does
not advance any arguments concerning Chishti. For the reasons presented
by Petitioner and discussed above, we are persuaded that Petitioner has
demonstrated a person of ordinary skill would have had reason to combine
the teachings of Chishti with those of Paley and Kriveshko to arrive at the
limitations recited in claim 24.
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VII. CONCLUSION7
Having considered the evidence and arguments of record we conclude
that Petitioner has demonstrated by a preponderance of the evidence (i) that
claims 1–5, 8–13, 15–23, 25–32 are unpatentable under 35 U.S.C. § 103(a)
as obvious over Paley and Kriveshko; (ii) that claim 14 is unpatentable
under 35 U.S.C. § 103(a) as obvious over Paley, Kriveshko, and Babayoff,
and (iii) that claim 24 is unpatentable under 35 U.S.C. § 103(a) as obvious
over Paley, Kriveshko and Chishti.
In summary:

7 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
Claims
35
U.S.C.
§
Basis
Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
1–5, 8–13,
15–23, 25–32
103(a) Paley,
Kriveshko
1–5, 8–13,
15–23, 25–32

14 103(a) Paley,
Kriveshko,
Babayoff
14
24 103(a) Paley,
Kriveshko,
Chishti
24
Overall
Outcome
103(a) 1–5, 8–32
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VIII. ORDER
In consideration of the above, it is
ORDERED that claims 1–5 and 8–32 are unpatentable;
FURTHER ORDERED that because this is a Final Written Decision,
parties to the proceeding seeking judicial review of the decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

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FOR PETITIONER:
Todd Walters
Roger Lee
Andrew Cheslock
Bryan Cannon
Todd.walters@bipc.com
Roger.lee@bipc.com
Andrew.cheslock@bipc.com
Bryan.cannon@bipc.com

FOR PATENT OWNER:
Roger Sterne
Rsterne-ptab@sternekessler.com

Jason Eisenberg
Jasone-ptab@sternekessler.com

Salvador Bezos
Sbezos-ptab@sternekessler.com

Kristina Caggiano Kelly
Kckelly-ptab@sternekessler.com

Keyur Parikh
Kparikh-ptab@sternekessler.com