Craig A. Andreiko et al.

Patent Trials and Appeals Board

Nov 26, 2019

11748026 - (D) (P.T.A.B. Nov. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/748,026 05/14/2007
83571 7590 01/10/2020
Wood, Herron & Evans, LLP (Sybron)
441 Vine Street
2700 Carew Tower
Cincinnati, OH 45202
FIRST NAMED INVENTOR
Craig A. Andreiko
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
ORM-221CO 5668
EXAMINER
NELSON,MATTHEWM
ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
01/10/2020 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):
usptodock@whe-law.com
smeyer@whe-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CRAIG A. ANDREIKO
and DANIELE. EVEN
Appeal2017-009983
Application 11/748,026
Technology Center 3700
Before JAMES P. CALVE, MICHELLE R. OSINSKI, and
JEREMY M. PLENZLER, Administrative Patent Judges.
CAL VE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the decision
of the Examiner to reject claims 1-15. Appeal Br. 2. We have jurisdiction
under 35 U.S.C. § 6(b). Appellant appeared at an oral hearing conducted on
November 7, 2019.
We REVERSE.
1 "Appellant" refers to "applicant" as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as Ormco Corporation. Appeal Br. 2.
Appeal2017-009983
Application 11/748,026
CLAIMED SUBJECT MATTER
Claims 1, 2, and 12 are independent. Claim 1 is reproduced below
with emphasis added to identify disputed limitations.
1. A method of providing a custom orthodontic
appliance for an individual patient comprising:
obtaining digital information unique to the
individual patient by scanning dental anatomy of the individual
patient, or an impression thereof, wherein the digital
information comprises actual dental anatomy of the individual
patient;
designing with a computer, by processing the
digital information, a custom orthodontic appliance for the
individual patient using the shape of the patient's anatomy, the
geometry of the custom orthodontic appliance being calculated
without regard to the geometries of pre-manufactured
components, and including a custom orthodontic archwire and a
set of custom orthodontic brackets to be bonded to a plurality of
the teeth of the individual patient to support the archwire, the
appliance being designed to achieve an arrangement of the teeth
of the individual patient by orthodontic treatment;
determining geometric parameters of orthodontic
brackets for the designed custom orthodontic appliance; and
comparing the geometric parameters with
corresponding parameters of a plurality of pre-manufactured
orthodontic brackets and selecting one of the plurality based on
the comparison.
REJECTIONS
Claims 1-6, 9, 10, and 12-15 are rejected under 35 U.S.C. § 102(e) as
anticipated by Jordan (US 2003/0163291 Al, pub. Aug. 28, 2003) or, in the
alternative, under 35 U.S.C. § 103(a) as unpatentable over Jordan.
Claims 7, 8, and 11 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jordan and Rubbert (US 2002/0180760 Al, pub. Dec. 5,
2002).
2
Appeal2017-009983
Application 11/748,026
ANALYSIS
Claims 1-6, 9, 10, and 12-15
Anticipated by or Unpatentable over Jordan
Independent claims 1, 2, and 12 each involve designing "a custom
orthodontic appliance" "using the shape of the patient's anatomy" with "the
geometry of the custom orthodontic appliance being calculated without
regard to the geometries of pre-manufactured components." The patient
anatomy is digital information of "actual dental anatomy of the individual
patient" obtained by "scanning dental anatomy of the individual patient."
See Appeal Br. 9-11 (Claims App.).
Appellant argues that "using the shape of the patient's anatomy" in
"the claims now require[ s] the design of a custom appliance that uses the
patient's tooth shapes, and that the design proceed without using geometries
of pre-manufactured components." Reply Br. 2. Appellant argues that the
claims require a computer to design a "custom orthodontic appliance" using
"an accurate representation of the patient's teeth" and "construction of an
orthodontic appliance for ... [the] digital representations of the actual dental
anatomy of a patient" rather than for model teeth in Jordan. Appeal Br. 5-6.
Appellant further argues that
The present invention uses digital information of actual dental
anatomy of a patient - not a "model" of the same, as suggested
by Jordan. In the present claims, it is clearly and expressly
stated that digital information of dental anatomy is "unique to
an individual patient" and is obtained by "scanning" that
anatomy or an impression of it. . . . Specifically, as recited in
claims 1, 2 and 12, the digital information of the individual
patient's anatomy is used to design in a computer and generate
geometric parameters for a "custom orthodontic appliance".
Id. at 6.
3
Appeal2017-009983
Application 11/748,026
The Examiner argues that a prior Board decision interpreted claim 1
as "includ[ing] no requirement that the digital information to be processed
consist exclusively of the patient's dental anatomy." Ans. 5. However, the
Board decision interpreted a version of claim 1 that did not require "using
the shape of the patient's anatomy" as claim 1 and the other independent
claims now require. Previously, claim 1 recited in pertinent respect:
designing with a computer, by processing the digital
information [of the patient], a custom orthodontic appliance for
the individual patient that includes a custom orthodontic
archwire and a set of custom orthodontic brackets ...
See Ex Parte Andreiko, Appeal No. 2013-000658, slip op. at 3 (PTAB
May 19, 2015) (reproducing claim 1 ). The Board held that "the claim
does not recite any requirement that the appliance be designed from
an exact replica of the patient's dental anatomy." Id. at 9.
The phrase "using the shape of the patient's anatomy" was added to
the claims by amendment after the decision in Appeal No. 2013-000658.
See Arndt, filed Feb. 8, 2016, at 2, 4. This amendment also required the
"geometry of the custom orthodontic appliance [to be] calculated without
regard to the geometries of pre-manufactured components." Id.
We interpret "using the shape of the patient's anatomy" to require a
custom orthodontic appliance to be designed for a patient's actual dental
anatomy using the patient's actual dental anatomy obtained by scanning.
This interpretation is consistent with claim language for designing "a custom
orthodontic appliance [ or archwire] for the individual patient" "calculated
without regard to the geometries of pre-manufactured components," which
pre-manufactured components are not made custom for the patient's actual
dental anatomy. Appeal Br. 9-10, 11 (Claims App.).
4
Appeal2017-009983
Application 11/748,026
The Specification describes how custom and standard appliance
orthodontics both rely on each individual patient's anatomy to design an
orthodontic appliance. Spec. ,i,i 5, 7. However, thereafter, their design
processes differ. A custom orthodontic appliance design uses custom pieces
that usually are installed with custom jigs and other positioning devices or
techniques provided with the custom appliances to ensure proper placement.
Id. ,i 5. In contrast to custom appliances, "non-custom" appliances involve
an orthodontist selecting appliance components from an inventory or catalog
of available inventories of pre-manufactured components. Id. ,i,i 6, 7. This
latter practice is time consuming and unable to select the pre-manufactured
appliance components that best approximate features of custom orthodontic
appliances that are most suitable for treating an orthodontic patient. Id. ,i 8.
The invention's objective is to provide an orthodontic appliance of
pre-manufactured or standard components that conforms closely to a custom
orthodontic appliance that is configured to the patient's anatomy. Id. ,i 10.
This process takes advantage of custom orthodontic treatment and design
available to a degree but at a proportionally lower cost by selecting optimal,
existing orthodontic appliance components that closely carry out a custom
orthodontic treatment plan by comparing component geometries of a custom
appliance designed for a patient with the geometries of existing components
"according to best-fit criteria." Id. ,i,i 11-13. Computer appliance design
systems that can calculate custom appliances also can select standardized
components from which an appliance can be made of the pre-manufactured
components. Id. ,i,i 16, 29. A computer derives parameters, characteristics,
and properties of a custom orthodontic appliance and compares that data to
stored geometric or other physical data of available components. Id. ,i 19.
5
Appeal2017-009983
Application 11/748,026
In particular, the Specification describes how a patient's actual dental
anatomy is used to determine ideal positions of the patient's teeth. Id. ,i 31.
The ideal teeth positions are used to make a custom orthodontic appliance by
calculating the geometry of a custom appliance without regard
to the geometries of pre-manufactured components. The
appliance design calculation results in calculated geometries for
appliance components, including, for the more conventional
type of appliance, geometries of brackets and archwires.
Id. ,i 32. The Specification makes clear that the claimed method involves
designing geometries of custom brackets and archwires for a patient's actual
dental anatomy by "using the shape of the patient's anatomy" and "without
regard to the geometries of pre-manufactured components" as claimed.
The Specification also describes and illustrates physical geometries
and operative parameters of custom appliance components to include the
shape of an archwire and geometric characteristics of a bracket. Id. ,i 35.
For example, bracket 10 includes base or pad 11 that is bonded to tooth 12
with adhesive and to which archwire support structure is integrally formed.
Id. Archwire support structure 13 includes a pair of tie wings 14 forming a
rectangular archwire slot 15 as shown in Figures 1 and 2 reproduced below.
FIG. 2
Figures 1 and 2 illustrate bracket 10 mounted on tooth 12.
6
Appeal2017-009983
Application 11/748,026
Jordan does not design an actual custom orthodontic appliance "using
the shape of the patient's anatomy" as we have interpreted that phrase to
mean the actual dental anatomy of an individual patient being employed for
the purpose of designing a custom orthodontic appliance. See Ans. 5-6.
Instead, Jordan uses a predefined three-dimensional maloccluded tooth/arch
model of teeth to design an orthodontic appliance with pre-made brackets
and archwires selected to move the model teeth to the desired final positions
based on prescription data. Jordan ,i,i 19-22. Jordan may use a patient's
actual dental anatomy to select a model or to revise a model to represent a
patient's dental anatomy more closely. Id. ,i,i 23, 45, 50, 51. However,
Jordan emphasizes that "estimated models of teeth selected by the user ...
are sufficiently close to the patient's actual teeth such that an exact replica of
the patient's teeth is unnecessary in the bracket selection method." Id. ,i 70;
see Appeal Br. 5-7. Jordan explains that
generating exact replicas of teeth is complex and costly [ and]
designing and generating customized orthodontic products,
such as brackets, from the exact replicas of the patient's teeth is
also a complex and costly process. As such, digitization of a
patient's teeth to provide exact models thereof along with
production of customized orthodontic appliances may not
necessarily be the preferred solution to providing effective
orthodontic therapy.
Jordan ,i 15. Jordan explains that such complexity and cost of a customized
appliance is not justified if an orthodontist can select only predefined or pre-
existing brackets to move the teeth. Id. ,i 17.
Therefore, even if Jordan designs a custom orthodontic appliance, as
the Examiner finds, the appliance is designed for a model of a patient's teeth,
rather than for the actual dental anatomy of a patient as claimed.
7
Appeal2017-009983
Application 11/748,026
The Examiner is correct that the previous Board decision interpreted
former claim 1 as "including no requirement that the digital information to
be processed consist exclusively of the patient's dental anatomy." Ans. 5;
(quotingAndreiko, Appeal No. 2013-000658, slip op. at 9). However, claim
1 now requires a custom orthodontic appliance to be designed using patient
dental anatomy in digitized form so that the design is for the patient's dental
anatomy rather than a model dental anatomy as Jordan teaches. Crucial to
the previous Board decision was their interpretation that "the broader phrase
'designing with a computer, by processing the digital information, a custom
orthodontic appliance for the individual patient' [ does not require] that the
appliance be derived from the actual anatomy of the patient's teeth."
Andreiko, Appeal No. 2013-000658, slip op. at 9. Because claim 1 now
recites "using the shape of the patient's anatomy," which was added after the
Board's decision, claim 1 now requires a custom orthodontic appliance to be
designed for, and derived from, the actual anatomy of the patient's teeth.
We agree with the Examiner that Jordan defines parameters of an
appliance that is customized for the predefined three-dimensional tooth/arch
model of teeth. See Ans. 6 (citingAndreiko, Appeal No. 2013-000658, slip
op. at 13-16). In this regard, Jordan generates a custom prescription for the
model with bracket parameters for torque, angulation, rotation, in/out value,
archwire slot dimensions, and materials and archwire parameters for shape,
and dimensions as in the prior art. Jordan ,-J,-J 6, 7, 71, 72.
The Specification describes the calculation of similar parameters for
the brackets and archwire of the claimed custom appliance. Spec. ,-J,-J 35, 36.
The parameters include shape and cross-section of the archwire, and in-out
dimension, torque, slot angle, and tip angle of the individual brackets. Id.
8
Appeal2017-009983
Application 11/748,026
The claims also require a computer to design a custom orthodontic
appliance for the patient's actual dental anatomy. The design determines
geometric parameters of a custom orthodontic archwire and a set of custom
orthodontic brackets to be bonded to the patient's teeth. The claims thus
recite methods of designing actual dental orthodontic appliances to include
archwires and brackets for the patient's actual teeth as represented by the
scanned dental anatomy of the patient without regard to the geometries of
pre-made components. Then, the geometric parameters of the actual, custom
components are compared to geometric parameters of pre-made brackets and
components.
We are not persuaded by the Examiner's proofs that Jordan designs
actual orthodontic brackets and archwires. Instead, Jordan designs a custom
prescription to move the model teeth to a prescribed final position. Jordan
,-J,-J 21, 45, 51, 123. Jordan uses custom prescription data to select a bracket
whose parameters match most closely to a prescription without also creating
the actual custom components as claimed. Id. ,-i,-i 123, 124. Nor does Jordan
determine geometric parameters of actual custom components designed for a
patient's dental anatomy as claimed. The Examiner's finding that "bracket
selection criteria is assembled for a custom appliance before any search is
done on the standardized or existing appliances in Jordan" (Ans. 6) does not
explain adequately how Jordon teaches to calculate the geometry of an actual
custom dental orthodontic appliance (including the geometry of a custom
orthodontic archwire and custom orthodontic brackets) without considering
the geometries of pre-manufactured components.
Accordingly, for the foregoing reasons, we do not sustain the
rejections of 1-6, 9, 10, and 12-15 over Jordan.
9
Appeal2017-009983
Application 11/748,026
Claims 7, 8, and 11
Unpatentable over Jordan and Rubbert
The Examiner's reliance on Rubbert to teach features of claims 7, 8,
and 11 (Final Act. 4-5) does not cure the deficiency of Jordan as to claims 1
and 2 from which these claims depend respectively. Accordingly, we do not
sustain the rejection of these claims either.
CONCLUSION
We reverse the rejections of claims 1-15.
1-6, 9, 10, 102(e) Jordan
12-15
1-6, 9, 10, 103(a) Jordan
12-15
7, 8, 11 103 a Jordan, Rubbert
Overall
Outcome
REVERSED
10
1-6, 9, 10,
12-15
1-6, 9, 10,
12-15
7, 8, 11
1-15