Ex Parte 6709694 et al

Board of Patent Appeals and Interferences

May 20, 2011

95000390 (B.P.A.I. May. 20, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/000,390 08/13/2008 6709694 62636/S1328 4725
32692 7590 05/20/2011
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
STEIN, STEPHEN J
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
05/20/2011 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

SIRONA DENTAL SYSTEMS, INC.
Requester, Respondent, and Cross-Appellant

v.

3M ESPE AG
Patent Owner, Appellant, and Cross-Respondent
____________

Appeal 2011-005021
Reexamination Control 95/000,390
Patent 6,709,694 C1
Technology Center 3900
____________

Before ROMULO H. DELMENDO, JEFFREY B. ROBERTSON, and
DANIEL S. SONG, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-005021
Reexamination Control 95/000,390
Patent 6,709,694 C1
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3M ESPE AG, the Patent Owner,1 appeals from a final rejection of
claims 1-38 in this inter partes reexamination of United States Patent
6,709,694 C1 (hereinafter the “‘694 Patent”).2 Sirona Dental Systems, Inc.,
the Requester, is a party to the Patent Owner’s appeal under 35 U.S.C.
§ 315(b)(2) and disputes the Patent Owner’s contentions.3
Additionally, the Requester appeals from the Examiner’s decision not
to maintain a proposed rejection of claims 1-30.4 The Patent Owner is a
party to the Requester’s cross-appeal under 35 U.S.C. § 315(a)(2).5
We have jurisdiction under 35 U.S.C. §§ 6, 134, and 315. We
AFFIRM-IN-PART and REVERSE-IN-PART as to both appeals. For

1 The Patent Owner identifies the real party in interest as 3M Innovative
Properties Co., Inc. (Patent Owner’s Appeal Brief filed March 15, 2010,
hereinafter “PO App. Br.,” 1). The assignment record, however, indicates
3M ESPE AG as the owner. See Reel 012431, Frame 0298.
2 See PO App. Br. 2-3; Examiner’s Answer mailed September 3, 2010,
hereinafter “Ans.”; Right of Appeal Notice mailed December 16, 2009,
hereinafter “RAN.”
3 See Third-Party Requester’s Respondent Brief filed April 12, 2010,
hereinafter “TPR Resp. Br.”
4 See Third-Party Requester’s Cross-Appeal Brief filed March 22, 2010,
hereinafter “TPR App. Br.”; RAN 17. While the Requester states that
claims 31-38 should also have been included (TPR App. Br. 4, n. 3), the
Requester did not file a timely petition to overturn the Examiner’s
determination (RAN 17) that claims 31-38 were not included in the proposed
ground of rejection. Accordingly, the cross-appeal of claims 31-38 is not
before us. See 37 C.F.R. § 41.61(d) (“An appeal or cross-appeal, when
taken, must be taken from . . . all the determinations favorable to
patentability, including any final determination not to make a proposed
rejection, in a Right of Appeal Notice which a requester proposes to
contest.”).
5 See Patent Owner’s Respondent Brief filed April 21, 2010, hereinafter
“PO Resp. Br.”
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reasons discussed more fully below, we do not reach the Requester’s appeal
as to claims 1-3, 5-11, 13, 15-20, 22-24, and 26-29.

STATEMENT OF THE CASE
The ‘694 Patent has been the subject of a prior reexamination
proceeding (Control 90/007,990 filed April 3, 2006) from which a
reexamination certificate with claims 1-30 issued on March 11, 2008. In
2005, 3M asserted the ‘694 Patent against multiple defendants in a civil
action captioned 3M and 3M Innovative Properties Co. v. Vita Zahnfabrik
H. Rauter GmbH & Co. KG and Vident, Inc., Civil Action No.
0:05cv1875ADM/JJG (D. Minn.), but the parties have since settled (PO
App. Br. 1).
We heard oral arguments from both parties on May 4, 2011, a written
transcript of which will be entered into the electronic record in due course.
The invention relates to a process for coloring dental ceramics (col. 1,
ll. 11-14). Claims 1, 4, 12, and 15 are reproduced below:
1. A process for coloring translucent dental ceramics
which comprises:
providing a pre-sintered dental ceramic workpiece;
applying at least one of a metal ion coloring solution or
metal complex coloring solution to the pre-sintered ceramic
workpiece to form an intermediate product; and
sintering the intermediate product to form a translucent,
colored dental ceramic workpiece.

4. The process according to claim 1, wherein the
solutions contain at least one of Pr, Er, Fe, Co, Ni or Cu.

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12. The process according to claim 1, wherein the
ceramics to be colored have a diameter of 10 mm and a height
of 7 mm.

15. A process for coloring translucent dental ceramics
which comprises:
providing a pre-sintered dental ceramic selected from the
group consisting of a dental workpiece useful for preparation of
a dental prosthesis, a dental framework for a crown or bridge,
and a dental prosthetic article;
applying at least one of metal ion coloring solution or
metal complex coloring solution to the pre-sintered ceramic to
form an intermediate product; and
sintering the intermediate product to form a translucent,
colored dental ceramic, wherein the color of the translucent,
colored dental ceramic matches a desired tooth color.
(Claims App’x, PO App. Br. 16-18; original italics in the reexamination
certificate removed).
The Examiner relied upon the following as evidence of
unpatentability (RAN 7, 20):
Hechler 5,618,585 Apr. 8, 1997
Ikushima 5,869,548 Feb. 9, 1999
Takeshita 3[1991]-198841 Aug. 30, 1991
(translated from Japanese)
Yoshidome JP 9[1997]-142966 June 3, 1997
(translated from Japanese)

The Requester relies on the following additional document as further
evidence of unpatentability (TPR App. Br. 3-4):
Yoshida 5,219,805 June 15, 1993
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The Patent Owner contests the Examiner’s decision to maintain the
following rejections (PO App. Br. 2):
I. Claim 15 under 35 U.S.C. § 112, ¶ 2, as indefinite (RAN
38);
II. Claims 1-3, 5-11, 13, 15-20, 22-24, and 26-29 under 35
U.S.C. § 102(b) as anticipated by Takeshita (JP ‘841)
(RAN 7-15); and
III. Claims 1-38 under 35 U.S.C. § 103(a) as unpatentable
over Yoshidome (JP ‘966) in view of Hechler (US ‘585)
and Ikushima (US ‘548) (RAN 20-38).
The Requester contests the Examiner’s refusal to maintain the
following proposed rejection (TPR App. Br. 3):
IV. Claims 1-30 under 35 U.S.C. § 103(a) as unpatentable
over Takeshita (JP ‘841) in view of Yoshida (US ‘805)
(RAN 17).

ISSUES
I.
The Examiner asserts that the Markush group recited in claim 15
renders the claim indefinite because “it is unclear how the limitations ‘dental
prosthesis’ and ‘dental prosthetic article’ differ” (RAN 38).
The Requester argues that claim 15 “uses two confusingly similar
terms, ‘dental prosthetic article’ and ‘dental prosthesis,’ and the specification
provides no guidance to help the skilled person understand how the former
differs from the latter” (TPR Resp. Br. 17).
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The Patent Owner contends that “the claim covers (1) a dental
workpiece useful for the preparation of a dental prosthesis, (2) a dental
framework for a crown or bridge, and (3) a dental prosthetic article” (PO
App. Br. 14). According to the Patent Owner, “[i]t is clear that the dental
workpiece ‘useful for the preparation of a dental prosthesis’ is an
intermediate structure, while the dental prosthetic article is a shaped article
prepared, e.g., from a dental workpiece” (id.).
Thus, the relevant issue is:
Did the Examiner satisfy the initial burden of establishing a prima
facie case of indefiniteness under 35 U.S.C. § 112, ¶ 2?

II.
The Examiner found that JP ‘841 describes, either explicitly or
inherently, every limitation of claim 1, including the recited step of
“applying at least one of a metal ion coloring solution or metal complex
coloring solution to the pre-sintered ceramic workpiece to form an
intermediate product” (emphases added; RAN 8, 14-15). Specifically, the
Examiner found that JP ‘841 discloses a pre-sintered dental ceramic
workpiece that “should preferably exhibit white coloration” (emphasis
added), on which a solution of the same metal salts recited in claim 1 (e.g.,
calcium chloride) is applied to impart white coloration after sintering (RAN
8).
The Requester agrees with the Examiner’s findings, asserting that
common sense dictates the color of the pre-sintered dental workpiece “will
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have a different appearance or shade before and after it has been
impregnated with a salt solution” (TPR Resp. Br. 5).
The Patent Owner contends that JP ‘841 does not anticipate because it
“fails to describe a ‘coloring’ process that involves ‘coloring’ a pre-sintered
article using a metal ion or metal complex ‘coloring solution’” (PO App. Br.
7). According to the Patent Owner, “the metal salt solution [of JP ‘841] is
designed to produce white oxide particles that match the white color of the
dental ceramic material” and therefore would not change the color of the
dental ceramic material (id. at 7-8).
Thus, based on these contentions, the dispositive issue is:
Did the Patent Owner demonstrate that the Examiner erred in finding
that JP ‘841 describes the application of a “metal ion coloring solution or
metal complex coloring solution to the pre-sintered ceramic workpiece,” as
recited in claim 1?

III.
The Examiner found that JP ‘966 discloses a method for preparing
colored ceramic materials using metal salt solutions, but acknowledged that
the reference “fails to disclose that the colored article is a pre-sintered dental
ceramic workpiece” (RAN 20). Nevertheless, the Examiner relied on US
‘585 and US ‘548 to arrive at a conclusion of obviousness (RAN 21).
Specifically, the Examiner concluded that “[i]t would have been obvious to a
person of ordinary skill in the art at the time of the invention to use the
process taught by JP ‘966 to make a translucent, colored dental ceramic
workpiece, as disclosed in US ‘548 in view of the teachings of US ‘585
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because of the close similarity between the processes disclosed in JP ‘966
and US ‘548 . . . .” (id.).
The Requester agrees with the Examiner (Req. Resp. Br. 7).
The Patent Owner contends that “[n]either US ‘585 nor US ‘548
remedies the fundamental deficiency of JP ‘966 – namely that JP ‘966 is
completely unrelated to dental applications” (PO App. Br. 9). The Patent
Owner further asserts that US ‘585 and US ‘548 describe coloring processes
that differ significantly from that of the appealed claims or JP ‘966 and
therefore may not be combined with JP ‘966 in the manner as proposed (PO
App. Br. 10-13).

IV.
The Requester asserts that claims 1-3, 5-11, 13, 15-20, 22-24, and 26-
29 are unpatentable under 35 U.S.C. § 103(a) in view of JP ‘841 and US
‘805 because these claims are anticipated by JP ‘841 (TPR App. Br. 5).
Regarding claims 12 and 14, the Requester asserts that a person of ordinary
skill in the art would have found it obvious to arrive at the recited
dimensions for the ceramics to be colored because “it was well within the
general knowledge and skill to select the physical dimensions of ceramics
used to make dental prosthetics based on the desired shape of the finished
prosthetic” (TPR App. Br. 9). As to claim 4, 21, 25, and 30, which recite
specific metal salt solutions, the Requester asserts that these specific metal
salt solutions are disclosed in US ‘805 (TPR App. Br. 9-11).
The Examiner withdrew the rejection of claims 1-30 in view of the
combined teachings of JP ‘841 and US ‘805 (RAN 6, 17; Action Closing
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Prosecution mailed July 28, 2009, hereinafter “ACP,” 17-18). Specifically,
the Examiner found that the “application of the white metal salt solutions to
the porous pre-sintered dental ceramic as disclosed in JP ‘841 is not
performed to provide a particular coloring to the dental ceramic, but rather
it’s [sic] primary goal is to create white oxide particle that prevent
contraction during sintering” and that “JP ‘841 actually teaches a second
coloring step after sintering to adjust the color” (ACP 17-18). Thus, the
Examiner concluded that a person of ordinary skill in the art would not have
“look[ed] to substitute the coloring solution of US ‘805 to the pre-sintered
dental ceramic described in JP ‘841, because the US ‘805 reference does not
disclose that coloring solutions described therein prevent contraction during
sintering” (ACP 18).
In addition to agreeing with the Examiner, the Patent Owner advances
the same arguments made against JP ‘841 in section II above (PO Resp. Br.
3-5).
Thus, the issues arising from these contentions are:
(A) Did the Requester demonstrate error in the Examiner’s refusal
to reject claims 1-3, 5-11, 13, 15-20, 22-24, and 26-29 as unpatentable under
35 U.S.C. § 103(a) in view of JP ‘841 and US ‘805?
(B) Did the Requester demonstrate error in the Examiner’s refusal
to reject claims 12 and 14, which recite specific dimensions for the ceramics
to be colored?
(C) Did the Requester demonstrate error in the Examiner’s refusal
to reject claims 4, 21, 25, and 30, which recite specific metal solutions?

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Patent 6,709,694 C1
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FINDINGS OF FACT (“FF”)
I.
1. On appeal, neither the Examiner nor the Requester identified
any evidence (e.g., expert testimony) establishing that one
skilled in the relevant art would not be able to ascertain the
scope of the terms “dental prosthesis” and “dental prosthetic
article,” both recited in claim 15.

II.
2. JP ‘841 describes a process for manufacturing a ceramic crown
that has a natural tooth-like appearance (p. 2, ll. 12-13).
3. According to JP ‘841, the process is “characterized in that a
ceramic porous body formed into a crown shape is impregnated
with a solution of a heat decomposable metal salt, and after
voids in said porous body are filled with a heat decomposed
compound of said metal salt by heating, said porous body and
said filler are integrally sintered and densified” (p. 2, ll. 2-5).
4. JP ‘841 states that the ceramic porous body may be obtained by
molding a slurry and then calcining (Application Example 1,
pp. 5-6).
5. JP ‘841 discloses that the ceramic porous body “should
preferably exhibit a white coloration from the aspect of
aesthetics” (emphasis added; p. 4, ll. 15-16).
6. JP ‘841 further discloses that “it is preferable that the coloration
after heat decomposition [of the metal salt] be close to white”
(emphasis added; p. 4, ll. 17-18).
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7. JP ‘841 teaches that salts such as Mg or Ca salts (e.g., calcium
chloride) may be used as the heat decomposable metal salt (p.
4, ll. 18-19; p. 7, ll. 10-11).
8. The ‘694 Patent Specification informs one skilled in the
relevant art that a Mg or Ca salt solution falls within the scope
of “metal ion coloring solution or metal complex coloring
solution,” as recited in claim 1 (see dependent claims 2 and 3).

III.
9. The disclosure of JP ‘966 relates to “[p]orcelain art products
and decorative products prepared using ceramics” (p. 3, ¶
[0004]).
10. JP ‘966 teaches coloring ceramics by impregnating the ceramics
with a coloring solution and then firing (p. 4, ¶ [0008]).
11. JP ‘966 does not disclose any dental product.
12. US ‘585 discloses the use of metal oxide sols to coat relatively
small substrates such as jewelry or ceramic dental prosthesis
(col. 1, l. 47 - col. 2, l. 47).
13. US ‘585 does not disclose applying metal salt solutions to a
pre-sintered dental ceramic workpiece for imparting color upon
sintering.
14. US ‘548 describes impregnating communicating holes of dental
porous ceramics with a resin (col. 3, ll. 23-28).
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15. US ‘548 further teaches that metal oxide compounds such as
Fe2O3 may be added “to reproduce a color tone close to that of
natural teeth or ceramic teeth” (col. 4, ll. 53-55).
16. US ‘548 does not disclose applying a metal salt coloring
solution to pre-sintered dental ceramic workpiece and then
sintering.

IV.
17. The ‘694 Patent under reexamination states: “In particular in
the dental field, dimensions of 10 mm, preferably 7 mm, for the
diameter of a workpiece and 7mm, preferably 5 mm, for the
height of a workpiece are possible in the preparation of crowns
and bridges” (col. 3, ll. 42-45).
18. JP ‘841 teaches that a feature of the disclosed process is that the
metal salt solution is impregnated into the ceramic porous body
to deter significant dimensional contraction during sintering (p.
4, ll. 6-11).
19. US ‘805 discloses a process for making an ivory-colored
zirconia sintered body useful as a bracket for orthodontic
application (col. 2, ll. 5-10).
20. US ‘805 teaches that Er2O3, Pr6O11, and Fe2O3 are colorants that
impart a natural ivory color to the zirconia sintered body (col. 2,
ll. 63-65).
21. According to US ‘805, a powder containing : (1) a zirconium
compound that becomes zirconia after calcination and sintering;
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(2) a compound that becomes a stabilizer after calcination and
sintering; and (3) an Er compound and Pr compound that
become Er2O3 and Pr6O11 after calcination and sintering is first
prepared from a solution of these compounds (col. 3, ll. 21-45).
22. US ‘805 further teaches that the powder is then calcined (col. 3,
l. 62 to col. 4, l. 6).
23. US ‘805 discloses that a Fe compound and a Zn compound are
then mixed with the calcined powder and the resultant mixture
is shaped and sintered to obtain a zirconia sintered body (col. 4,
ll. 8-11).

PRINCIPLES OF LAW
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability.” In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
“The legal standard for definiteness is whether a claim reasonably
apprises those of skill in the art of its scope.” In re Warmerdam, 33 F.3d
1354, 1361 (Fed. Cir. 1994).
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). When the PTO has reason
to believe that a functional limitation asserted to be critical may in fact be an
inherent characteristic of the prior art, it possesses the authority to shift the
burden of proof to applicant or patent owner to prove otherwise. Id.; accord
In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990).
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The Supreme Court of the Unites States explained that “[w]hen a
work is available in one field of endeavor, design incentives and other
market forces can prompt variations of it, either in the same field or a
different one.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007).
But the Supreme Court also explained that “a patent composed of several
elements is not proved obvious merely by demonstrating that each of its
elements was, independently, known in the prior art.” Id. at 418. “Although
common sense directs one to look with care at a patent application that
claims . . . the combination of two known devices according to their
established functions, it can be important to identify a reason that would
have prompted a person of ordinary skill . . . to combine the elements in the
way the claimed new invention does.” Id. While warning against “[r]igid
preventative rules that deny factfinders recourse to common sense,” it stated
that the “factfinder should be aware . . . of the distortion caused by hindsight
bias and must be cautious of arguments reliant upon ex post reasoning.” Id.
at 421.

ANALYSIS
I.
We are in complete agreement with the Patent Owner that the
Examiner’s rejection under 35 U.S.C. § 112, ¶ 2, of claim 15 is not well
founded. While the Examiner argues that “it is unclear how the limitations
‘dental prosthesis’ and ‘dental prosthetic article’ differ,” the Examiner has
not articulated a sufficient reason on why a difference (or lack thereof)
would affect the definiteness of the claim. In addition, neither the Examiner
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nor the Patent Owner directed us to any evidence (e.g., expert testimony)
establishing that one skilled in the relevant art would not be able to ascertain
the scope of the terms “dental prosthesis” and “dental prosthetic article.” As
pointed out by the Patent Owner, claim 15 plainly recites a Markush group
that “covers (1) a dental workpiece useful for the preparation of a dental
prosthesis, (2) a dental framework for a crown or bridge, and (3) a dental
prosthetic article” (PO App. Br. 14). Thus, as stated by the Patent Owner,
“[i]t is clear that the dental workpiece ‘useful for the preparation of a dental
prosthesis’ is an intermediate structure, while the dental prosthetic article is
a shaped article prepared, e.g., from a dental workpiece” (id.).
Because the Examiner failed to satisfy the initial burden of
establishing a prima facie case of indefiniteness, we cannot affirm.

II.
The Patent Owner’s only argument is that JP ‘841 does not describe
the use of “a metal ion coloring solution or metal complex coloring
solution,” as recited in claim 1, because the metal salt solution disclosed in
the prior art imparts a white color on a white pre-sintered ceramic porous
body and therefore does not change the color of the workpiece, as required
by claim 1 (PO App. Br. 7-8; FF 2-8). We disagree.
JP ‘841 explicitly discloses that the ceramic porous body “should
preferably exhibit a white coloration” (emphasis added; FF 5). A person of
ordinary skill in the art would have drawn a reasonable inference from this
explicit teaching that while a white ceramic porous body is preferred, JP
‘841 also discloses non-white ceramic porous bodies. That inference
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supports a finding that JP ‘841 describes – with sufficient specificity – the
use of a metal salt solution to impart a white color on a non-white pre-
sintered ceramic porous body upon sintering. In re Preda, 401 F.2d 825,
826-27 (CCPA 1968).
Moreover, we agree with the Requester that it would reasonably
appear that the metal salts disclosed in JP ‘841 (e.g., calcium chloride),
which may be the same metals described as suitable in the ‘694 Patent,
would inherently or necessarily change the color or shade of the pre-sintered
ceramic porous body, which is made from a different material relative to the
metal salt. The Patent Owner did not direct us to any persuasive evidence to
the contrary. Spada, 911 F.2d at 708.
Therefore, we uphold the Examiner’s anticipation rejection.

III.
We reverse the Examiner’s rejection based on the combined teachings
of JP ‘966, US ‘585, and US ‘548 for the reasons well stated in the Patent
Owner’s brief (PO App. Br. 9-13).
The Supreme Court stated that “a patent composed of several
elements is not proved obvious merely by demonstrating that each of its
elements was, independently, known in the prior art.” KSR at 418.
Applying this principle, we find that neither the Examiner nor the
Requester has articulated sufficient reasoning with some rational
underpinning to support the legal conclusion of obviousness. JP ‘966 is
directed to a method for coloring decorative porcelain, which is wholly
unrelated to the art of coloring dental products (FF 9-11). While US ‘585
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discloses substrates such as jewelry and dental prosthesis, it teaches a
coloring process involving metal oxide sols, not metal solutions as described
in JP ‘966 (FF 12, 13). Thus, US ‘585 may demonstrate that a ceramic
treated with metal oxide sol may be suitable as both a decorative product and
a dental product, but its relied upon teachings fall short of demonstrating that
the product of JP ‘966 would also be suitable as a dental product. Neither
the Examiner nor the Patent Owner has adequately explained why a person
of ordinary would have found it obvious to modify the decorative porcelain
of JP ‘966 into a dental product in view of US ‘585, yet omit the metal oxide
sol required in US ‘585. US ‘548 fails to cure the deficiency in the proposed
combination of references, because it also requires a metal oxide (FF 14-16).

IV.
(A)
As indicated above, the Requester argued that claims 1-3, 5-11, 13,
15-20, 22-24, and 26-29 are necessarily unpatentable over the combined
teachings over JP ‘841 and US ‘805 because these claims are anticipated by
JP ‘841. Connell v. Sears Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir.
1983) (a prior art disclosure that anticipates a claim also renders the claim
invalid under §103).
We need not reach the obviousness issue of claims 1-3, 5-11, 13, 15-
20, 22-24, and 26-29 in view of JP ‘841 and US ‘805 because we have
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already affirmed the rejection of these claims based on anticipation over JP
‘841.6
(B)
We agree with the Requester that the Examiner erred in refusing to
maintain the rejection of claims 12 and 14. As found by the Examiner, JP
‘841 describes, either explicitly or inherently, every limitation of claim 1.
Claims 12 and 14 depend from claim 1. Thus, claims 12 and 14 differ from
JP ‘841 only in terms of the dimensions (diameter and height) of the
ceramics to be colored.
The Requester asserted that the determination of the particular
dimensions of the dental ceramic workpiece required to make a particular
dental prosthesis of a desired shape would have been within the ordinary
skill in the art (TPR App. Br. 9). Neither the Examiner nor the Patent
Owner has refuted the Requester’s reasonable position. Accordingly, we
conclude that a person of ordinary skill in the art would have found it
obvious to arrive at optimum or workable dimensions for the dental ceramics
to be colored for a given dental application as a matter within the level of the
ordinary skill. Indeed, our conclusion is consistent with the description
found in the ‘694 Patent itself, which acknowledges that “in the dental field,
dimensions of 10 mm, preferably 7 mm, for the diameter of a workpiece and
7mm, preferably 5 mm, for the height of a workpiece are possible in the
preparation of crowns and bridges” (FF 17).

6 At oral argument, counsel for Requester agreed that our affirmance of the
Examiner’s rejection of claims 1-3, 5-11, 13, 15-20, 22-24, and 26-29 as
anticipated by JP ‘841 would render the obviousness issue as to these claims
in view of JP ‘841 and US 805 moot.
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By operation of rule, our reversal of the Examiner’s refusal to reject
claims 12 and 14 on this ground constitutes a new ground of rejection as to
these claims, as set forth below. See 37 C.F.R. § 41.77(b).

(C)
Regarding claims 4, 21, 25, and 30, which recite that the coloring
solutions contain specific metals (e.g., Pr, Er, or Fe), the Requester relies on
the teachings of US ‘805 to account for the lack of a disclosure in JP ‘841 of
the specified metals (TPR App. Br. 9-11).
We find no error in the Examiner’s refusal to maintain the rejection as
to these claims. As pointed out by both the Examiner and the Patent Owner,
JP ‘841 requires a metal solution that is impregnated into the ceramic porous
body to deter significant dimensional contraction during sintering (FF 18).
By contrast, the relied upon disclosures of US ‘805 lack any indication that
the disclosed Er, Pr, or Fe compounds would perform substantially the same
function (deterrence of significant dimensional contraction) required in JP
‘841 (FF 19-23). Thus, the Requester has not shown that a person of
ordinary skill in the art would have considered the metal compounds
described in JP ‘841 to be interchangeable with the Er, Pr, and/or Fe
compounds of US ‘805. Absent such indication, we find no factual basis
upon which to conclude that a person of ordinary skill in the art would have
combined the teachings of JP ‘841 with US ‘805 in the manner as proposed
by the Requester.

Appeal 2011-005021
Reexamination Control 95/000,390
Patent 6,709,694 C1
20
DECISION
The Examiner’s decision to reject claims 1-38 is affirmed-in-part and
reversed-in-part.
The Examiner’s decision not to maintain the rejection of claims 4, 21,
25, and 30 as unpatentable over JP ‘841 in view of US ‘805 is affirmed.
The Examiner’s decision not to maintain the rejection of claims 12
and 14 as unpatentable over JP ‘841 in view of US ‘805 is reversed.
37 C.F.R. § 41.77(a) states that “[t]he reversal of the [E]xaminer’s
determination not to make a rejection proposed by the third party requester
constitutes a decision adverse to the patentability of the claims which are
subject to that proposed rejection which will be set forth in the decision of
the Board of Patent Appeals and Interferences as a new ground of rejection .
. . .” Accordingly, for the reasons given above, we enter the following new
grounds of rejection:
Claims 12 and 14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over JP ‘841.
37 C.F.R. § 41.77(b) states:
(b) Should the Board reverse the examiner’s determination not
to make a rejection proposed by a requester, the Board shall set
forth in the opinion in support of its decision a new ground of
rejection; or should the Board have knowledge of any grounds
not raised in the appeal for rejecting any pending claim, it may
include in its opinion a statement to that effect with its reasons
for so holding, which statement shall constitute a new ground of
rejection of the claim. Any decision which includes a new
ground of rejection pursuant to this paragraph shall not be
considered final for judicial review. When the Board makes a
new ground of rejection, the owner, within one month from the
date of the decision, must exercise one of the following two
Appeal 2011-005021
Reexamination Control 95/000,390
Patent 6,709,694 C1
21
options with respect to the new ground of rejection to avoid
termination of the appeal proceeding as to the rejected claim:

(1) Reopen prosecution. The owner may file a response
requesting reopening of prosecution before the examiner. Such
a response must be either an amendment of the claims so
rejected or new evidence relating to the claims so rejected, or
both.

(2) Request rehearing. The owner may request that the
proceeding be reheard under § 41.79 by the Board upon the
same record. The request for rehearing must address any new
ground of rejection and state with particularity the points
believed to have been misapprehended or overlooked in
entering the new ground of rejection and also state all other
grounds upon which rehearing is sought.

Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.
AFFIRMED-IN-PART & REVERSED IN PART
37 C.F.R. § 41.77(b)

rvb

PATENT OWNER:
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL MN 55133-3427

THIRD-PARTY REQUESTER:
JOHN D. CARPENTER, ESQ.
CHRISTIE PARKER & HALE, LLP
POST OFFICE BOX 7068
PASADENA, CA 91109-7068