Biomet 3i, LLC

Patent Trials and Appeals Board

Feb 9, 2021

2020004208 (P.T.A.B. Feb. 9, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/248,667 04/09/2014 Ross W. Towse 5394.D06US1 7593
104326 7590 02/09/2021
Schwegman Lundberg & Woessner / Zimmer
P.O. Box 2938
Minneapolis, MN 55402
EXAMINER
NELSON, MATTHEW M
ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
02/09/2021 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
SLW@blackhillsip.com
USPTO@slwip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ROSS W. TOWSE and ZACHARY B. SUTTIN
____________

Appeal 2020-004208
Application 14/248,667
Technology Center 3700
____________

Before CHARLES N. GREENHUT, WILLIAM A. CAPP, and
JEREMY M. PLENZLER, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1–3, 6–13, 15, 17, 18, 20, and 21. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Biomet 3i, LLC as the applicant and
real party in interest. Appeal Br. 3.
Appeal 2020-004208
Application 14/248,667
2
THE INVENTION
Appellant’s invention relates to dental implants. Spec. ¶ 2. Claim 1,
reproduced below with paragraph indentation added, is illustrative of the
subject matter on appeal.
1. A dental implant for insertion into bone within a patient's
mouth, comprising:
a body having a bone-engaging exterior surface, an anti-
rotational feature for non-rotationally mating with a healing
abutment during a gingival-healing period, and an upper region,
the upper region including an upper surface for engaging the
healing abutment; and
a scannable code on the upper surface for providing
information of at least two features of the dental implant, the
scannable code including:
a circumferentially extending marker having a first length
and having a radius of curvature that is centered around a
central axis of the dental implant, wherein the radius of
curvature provides a position of the central axis, and wherein
the first length extends less than 360 degrees around the
circumference of the dental implant and corresponds to a first
size dimension of the dental implant, wherein the scannable
code is scanned in response to the healing abutment being
removed from the dental implant.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
NAME REFERENCE DATE
Chan US 2002/0061701 A1 May 23, 2002
Mahler US 6,406,295 June 18, 2002
Laizure US 2011/0200968 A1 Aug. 18, 2011
Powell US 2012/0189982 A1 July 26, 2012
Philibin US 2012/0264081 A1 Oct. 18, 2012
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The following rejections are before us for review:
1. Claims 1–3, 7–9, 11–13, 15, and 17 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Mahler, Philibin, Powell, and Chan.
2. Claims 6, 10, 18, 20, and 21 are rejected under 35 U.S.C. § 103 as
being unpatentable over Mahler, Philibin, Powell, Chan, and Laizure.
OPINION
Unpatentability of Claims 1–3, 7–9, 11–13, 15, and 17
over Mahler, Philibin, Powell, and Chan
Claim 1
The Examiner finds that Mahler discloses dental implants with a
scannable code that provides information regarding features of the implant.
Final Act. 2. The Examiner relies on Philibin as disclosing an anti-rotational
feature that mates with a healing abutment. Id. at 3. The Examiner relies on
Powell as teaching the use of radial and circumferential markers that
surround a central axis of the implant component. Id. at 4.
The Examiner concedes that the combination of Mahler, Philibin, and
Powell does not explicitly show that the radius of curvature of a
circumferential mark provides the position of the central axis of a dental
implant body. Id. The Examiner then finds that Chan teaches a device with
a marker comprising concentric rings that surrounds a central axis of a
receptacle. Id. The Examiner concludes that it would have been obvious to
a person of ordinary skill in the art at the time of the invention to combine
the teachings of the prior art to achieve the claimed invention. Id.
According to the Examiner, a person of ordinary skill in the art would have
done this to stabilize the implant, to provide information about the implant,
and improve readability by a scanner. Id. at 5.
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Appellant first argues that Mahler fails to disclose a marker with a
radius of curvature centered around a central axis of the implant, a point that
is already conceded by the Examiner. Appeal Br. 13; Final Act. 4. In the
rejection under review, the Examiner relies on Powell and Chan as
disclosing circumferentially extending markers centered about an axis.
Ans. 7. Thus, Appellant’s argument is not persuasive. As correctly pointed
out by the Examiner in the Answer, non-obviousness cannot be established
by attacking references individually where the rejection is based upon the
teachings of a combination of references. Ans. 6–7; In re Merck & Co., 800
F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425
(CCPA 1981).
Appellant next argues that the Examiner errs in relying on Chan
because Chan is non-analogous art. Appeal Br. 15. Appellant argues that
Chan “bears no relationship” to dental implants. Id. at 16. Appellant further
argues that Chan is not related to the particular problem facing the inventor.
Id. According to Appellant, the problem facing the inventor relates to
positioning the dental implant in three-dimensional space and Appellant’s
circumferentially extending markers help define the coordinate system used
for the prosthetic restoration. Id. (citing Spec. ¶ 25); Reply Br. 4.
A reference qualifies as prior art for an obviousness determination
when it is analogous to the claimed invention. Innovention Toys, LLC. v.
MGA Ent., Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011). “Two separate tests
define the scope of analogous art: (1) whether the art is from the same field
of endeavor, regardless of the problem addressed, and (2) if the reference is
not within the field of the inventor’s endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the inventor is
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involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). The “field of
endeavor” test asks if the structure and function of the prior art is such that it
would be considered by a person of ordinary skill in the art because of
similarity to the structure and function of the claimed invention as disclosed
in the application. Id. at 1325–26. “A reference is reasonably pertinent . . .
if it is one which, because of the matter with which it deals, logically would
have commended itself to an inventor’s attention in considering his
problem.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). “If a reference
disclosure has the same purpose as the claimed invention, the reference
relates to the same problem, and that fact supports use of that reference in an
obviousness rejection.” Id.
Chan relates to toys, such as a toy oven. Chan ¶ 32. Chan’s toys have
an active part and an inactive part. Id. ¶ 33. Chan uses a pattern of
concentric rings in connection with a sensor, such as an infrared sensor, to
achieve a desired juxtaposition of the active part relative to the inactive part.
Id. ¶¶ 33–40. Chan also uses a pin and receptacle arrangement to locate a
second part relative to a first part. Id. ¶ 42.
The Examiner’s response to Appellant’s non-analogous art argument
comprises a single paragraph in the Answer. Ans. 7. The Examiner seems
to acknowledge that Chan does not come from same field of Appellant’s
endeavor, but then appears to take the position that Chan is reasonably
pertinent to the problem to be solved by the inventor. Id. However, the
Examiner never actually explains what the inventor’s “problem” is supposed
to be. Id. The Examiner vaguely alludes to the prospect that the shape of a
marker relative to a center axis may improve the “readability” of the marker
by the scanner. Id.
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Claim 1 recites that the radius of curvature of the marker “provides a
position of the central axis.” Claims App. Dental practitioners understand
that, when a dental implant restoration is complete, it generally consists of
three main components: (1) a screw like fixture or post that fits into a bore
that is drilled into, for example, the jaw bone; (2) an abutment device that
serves as a mechanical interface between the fixture and a crown; and (3) a
crown that replicates the appearance and function of that portion of a natural
tooth that appears above the gum line. The fixture typically has a
mechanical interface, such as screw threads, disposed in an interior bore of
the fixture. The abutment is mechanically joined to the interior mechanical
interface of the fixture. After the abutment is secured to the fixture, the
crown is secured to the abutment by dental adhesive. Thus, the orientation
of the central axis of the bore affects the orientation of the abutment and,
eventually, the crown. We understand the need to achieve accuracy in
orienting a crown in three dimensional space as the crown fits into a row of
teeth where spacing and alignment is critical to both the appearance and
function of the patient’s teeth.
Before a bore is drilled into bone tissue to accommodate a fixture, an
incision is made in the gum tissue overlying the bone. After the fixture is
initially placed into the bore of the bone, a “healing abutment” or “healing
cap” is fitted and secured to the fixture for a period of time to allow for the
fixture to osseointegrate with the bone tissue and also allow the gum to heal.
The healing abutment covers the interior mechanical interface in the bore of
the fixture to keep out food particles, etc. during the healing process.
As we understand Appellant’s invention, Appellant uses scanning
technology to assist in manufacturing the final mechanical abutment and
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crown. To that end, Appellant desires to obtain information as to the
orientation of the central axis of the bore within the fixture. This is done by
a scanning process. This scanning takes place after the fixture has
osseointegrated with the surrounding bone tissue and, therefore, has
achieved a relatively stable position within the patient’s mouth. Thus,
claim 1 recites that the scannable code on the upper surface of the dental
implant body is scanned after the healing abutment has been removed.
Claims App.
Claim 1 recites that two different types of information code are
imparted to the upper surface of the implant body. Id. (“at least two
features”). For purposes of the instant analysis, we are not concerned with
coded information that relates to, for example, a size dimension of the
implant.2 We focus our concern on the curvilinear marker that provides a
radius of curvature that determines the position of the central axis of the
implant body. Id. This limitation provides the key to the “problem to be
solved” by Appellant. This “problem” relates to determining the location
and orientation of the central axis of the implant fixture (body) so that the
final abutment and crown can be sized, shaped, and oriented to fit accurately
in the patient’s mouth.
Turning now to the Chan reference. Although it is true that Chan
teaches concentric rings that surround a pin (15) and receptacle (17)
arrangement, the size and shape and orientation of Chan’s pin and receptacle

2 Such information is properly treated as non-functional descriptive matter
that is not entitled to patentable weight. See Praxair Distribution, Inc. v.
Mallinckrodt Hospital Products IP Ltd., 890 F.3d 1024, 1031 (Fed.
Cir. 2018) (explaining that claim limitations directed to printed matter are
not entitled to patentable weight unless the printed matter is functionally
related to the substrate on which the printed matter is applied).
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are already predetermined and merely fit together like pieces of a puzzle.
Chan, Figs. 2A, 2B. The concentric ring and sensor pattern of Chan may
facilitate the fitting of the pin into the receptacle, however, there is no
underlying factual basis to support a finding that Chan’s concentric pattern
helps to solve a problem related to how either the pin or the receptacle
should be manufactured to ensure an accurate fit with each other or with
surrounding objects. In other words, Chan is directed to a two dimensional
problem, not a three dimensional problem. The Examiner’s Answer focuses
on Chan’s markers and how they reside in a set position “to improve
readability by a scanner.” Ans. 7. In that regard, the Examiner discusses
“the desirability of having a marker always in a set position from a reference
point for providing consistent reading and identification of the item.” Id.
Nevertheless, however desirable it may be to have markers in a set position
from a reference point to facilitate reading information coded thereon, such
is not reasonably pertinent to the problem facing the Appellant.
The Examiner’s findings and related analysis fail to persuade us that
Chan is reasonably pertinent to the problem facing the inventor in the instant
application. Consequently, Chan does not qualify as analogous art for
purposes of the instant obviousness analysis. The Examiner’s reliance on
Chan as prior art constitutes reversible error.
Accordingly, we do not sustain the Examiner’s unpatentability
rejection of claim 1.
Claim 2, 3, 7–9, 11–13, 15, and 17
Claim 13 is an independent claim that, like claim 1, contains a
limitation directed to the position of the central axis of a dental implant
body. Claims App. Claims 2, 3, 7–9, 11, 12, 15, and 17 depend, directly or
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Application 14/248,667
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indirectly, from either of independent claims 1 or 13. Id. The Examiner’s
rejection of these claims suffers from the same infirmity that was identified
above with respect to claim 1. Thus, we do not sustain the rejection of these
claims for essentially the same reason expressed above in connection with
claim 1.
Unpatentability of Claims 6, 10, 18, 20, and 21
over Mahler, Philibin, Powell, Chan, and Laizure
These claims depend, directly or indirectly, from either of claims 1
or 13. Claims App. The Examiner’s rejection of these claims suffers from
the same infirmity that was identified above with respect to claims 1 and 13,
which infirmity is not cured by any finding of fact based on the Laizure
reference. Final Act. 5. Thus, for essentially the same reason expressed
above in connection with claims 1 and 13, we do not sustain the rejection of
claims 6, 10, 18, 20, and 21.
CONCLUSION
Claims
Rejected
§ References Affirmed Reversed
1-3, 7-9, 11-13,
15, 17
103 Mahler, Philibin, Powell,
Chan,
1-3, 7-9, 11-
13, 15, 17
6, 10, 18, 20,
21
103 Mahler, Philibin, Powell,
Chan, Laizure
6, 10, 18, 20,
21
Overall
Outcome
1-3, 6-13, 15,
17, 18, 20, 21
REVERSED