Ex Parte Adell

Patent Trial and Appeal Board

Aug 23, 2016

13200004 (P.T.A.B. Aug. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/200,004 09/14/2011
25287 7590 08/23/2016
GEORGE LAWRENCE BOLLER
P.O. Box 530518
LIVONIA, MI 48153
FIRST NAMED INVENTOR
Loren S. Adell
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.
Adell09141 l 9565
EXAMINER
MORAN, EDWARD JOHN
ART UNIT PAPER NUMBER
3732
MAILDATE DELIVERY MODE
08/23/2016 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)
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LORENS. ADELL
Appeal2014-008016
Application 13/200,004
Technology Center 3700
Before: CHARLES N. GREENHUT, THOMAS F. SMEGAL, and
PAUL J. KORNICZKY, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claim 18.
We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appeal2014-008016
Application 13/200,004
CLAIMED SUBJECT MATTER
The claim is directed to a device for enabling a dental element to be
applied to a dental arch. Claim 18 is reproduced below with emphasis
added.
18 A device for use in a process of applying at least one dental
element to a patient's arch, the device comprising:
a support tray shaped to fit to at least a portion of a patient's
dental arch;
at least one dental element; and
a water-soluble starch which is supported by the support
tray and which holds the at least one dental element in a location
for enabling an exposed surface of the at least one dental element
to be applied to a patient's dental arch;
in which the water-soluble starch has a nominal thickness
less than 5. 0 mils.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Dellinger
Abolfathi
US 4,657,508 Apr. 14, 1987
US 2006/0068353 Al Mar. 30, 2006
REJECTION
Claim 18 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Dellinger and Abolfathi.
OPINION
The Examiner recognizes that the limitations disputed and italicized
above are not met by the primary reference Dellinger. To account for the
"starch" limitation, the Examiner cites paragraph 34 of Abolfathi and
concludes that it would have been obvious to substitute a starch for use as
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Appeal2014-008016
Application 13/200,004
Dellinger' s figure 20, because "such modification would further aid in
breakdown and degrade the appliance (see Abolfathi et al [0034]) and since
it has been held that a change of material is within the skill of the ordinary
artisan (see MPEP 2144)." Final Act. 3.
To account for the thickness limitation, the Examiner states, in
relevant part:
the exact thickness of the holding material is a result effective
variable dependent on the desired grip strength and length of time
the hold is applied to the mouth prior to dissolving, which
additionally varies based on the material used. For example a
thicker sheet would take longer to dissolve than a thinner one,
providing better holding of the device for a longer period of time.
Therefore, it would have been obvious to one of ordinary skill in
the art at the time the invention was made to modify the device
of Dellinger/ Abolfathi, as combined above, to include a
thickness of less than 5 mm for the holding material, since when
the general conditions of a claim are disclosed in the prior art, it
has been held that discovering the optimum or workable ranges
involves routine experimentation; well within the skill of the
ordinary artisan (see MPEP 2144)
Final Act. 4.
The fact that Abolfathi's starch is water soluble only demonstrates it
will also dissolve in the mouth. However, it does not indicate how the
material substitution would affect other necessary functions present in the
Dellinger fixture material (i.e., ability to support and grip). App. Br. 6;
Reply Br. 2. As the Examiner recognizes, Abolfathi employs the starch for a
completely different purpose. Ans. 2. The Examiner does not cite evidence
or articulate any reasoning to demonstrate that one skilled in the art would
have at least a reasonable expectation that the Examiner's proposed
modification of Dellinger to use a starch for fixture 20 would be successful.
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Appeal2014-008016
Application 13/200,004
See, e.g., Jn re O'Farrell 853 F.2d 894, 903-04 (Fed. Cir. 1988)(There must
be a reasonable expectation of success that a proposed substitution will be
successful.).
Regarding the proposed modification to Dellinger's fixture thickness,
the Examiner does not set forth a factual basis for the determination that the
proposed thickness modification would yield a predicable result. The
Examiner discusses an example of making the fixture thicker. Final Act. 4.
However, to satisfy claim 18, Dellinger's fixture thickness of 8-12 mils
would have to be made thinner. Even if, as the Examiner contends, thickness
affects dissolve time, the Examiner does not provide evidence or technical
reasoning to support the finding that thickness, or dissolve time, influences
grip strength. Thus, we are unable to ascertain on the record before us the
basis for the Examiner's conclusion that the proposed modification would
have been obvious to "provid[ e] better holding of the device" especially,
"for a longer period of time"-an attribute the Examiner associates with a
thicker, as opposed to a thinner, fixture.
The shortcomings discussed above render the Examiner's rejection
unsustainable on the record before us.
DECISION
The Examiner's rejection is reversed.
REVERSED
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