Ex Parte 6709694 et alDownload PDFBoard of Patent Appeals and InterferencesMay 20, 201195000390 (B.P.A.I. May. 20, 2011) Copy Citation 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 2 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.” Appeal 2011-005021 Reexamination Control 95/000,390 Patent 6,709,694 C1 3 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. Appeal 2011-005021 Reexamination Control 95/000,390 Patent 6,709,694 C1 4 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 Appeal 2011-005021 Reexamination Control 95/000,390 Patent 6,709,694 C1 5 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). Appeal 2011-005021 Reexamination Control 95/000,390 Patent 6,709,694 C1 6 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 Appeal 2011-005021 Reexamination Control 95/000,390 Patent 6,709,694 C1 7 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 Appeal 2011-005021 Reexamination Control 95/000,390 Patent 6,709,694 C1 8 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 Appeal 2011-005021 Reexamination Control 95/000,390 Patent 6,709,694 C1 9 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? Appeal 2011-005021 Reexamination Control 95/000,390 Patent 6,709,694 C1 10 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). Appeal 2011-005021 Reexamination Control 95/000,390 Patent 6,709,694 C1 11 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). Appeal 2011-005021 Reexamination Control 95/000,390 Patent 6,709,694 C1 12 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; Appeal 2011-005021 Reexamination Control 95/000,390 Patent 6,709,694 C1 13 (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). Appeal 2011-005021 Reexamination Control 95/000,390 Patent 6,709,694 C1 14 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 Appeal 2011-005021 Reexamination Control 95/000,390 Patent 6,709,694 C1 15 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 Appeal 2011-005021 Reexamination Control 95/000,390 Patent 6,709,694 C1 16 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 Appeal 2011-005021 Reexamination Control 95/000,390 Patent 6,709,694 C1 17 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 Appeal 2011-005021 Reexamination Control 95/000,390 Patent 6,709,694 C1 18 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. Appeal 2011-005021 Reexamination Control 95/000,390 Patent 6,709,694 C1 19 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 Copy with citationCopy as parenthetical citation