Ex Parte Andersson et al

Board of Patent Appeals and Interferences

Jan 18, 2012

11140532 (B.P.A.I. Jan. 18, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MATTS ANDERSSON, IZIDOR BRAJINOVIC and
ULF JOHANSSON
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Appeal 2010-000098
Application 11/140,532
Technology Center 3700
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Before KEN B. BARRETT, EDWARD A. BROWN and
MICHAEL L. HOELTER, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
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Application No. 11/140,532

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STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134(a) from a final
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

The Claimed Subject Matter
The claimed subject matter is directed to a monolithic dental implant
having an anchoring part embedded in a jaw bone and a projecting or
preparable part supporting the tooth replacement. Independent claim 1 is
illustrative of the claims on appeal and is reproduced below.
1. A dental implant assembly for replacing a front tooth, the
assembly comprising a dental implant, the dental implant comprising:
an anchoring part that is configured to fit within a recess
formed in the jaw bone at a site of a lost or extracted tooth;
a spacer sleeve part configured to extend through a gum of the
jaw bone when the anchoring part is fitted within the recess in the jaw
bone; and
a prepared or preparable part which adjoins the spacer sleeve
part and is configured to support a tooth replacement, wherein the
anchoring part, the spacer sleeve part and the prepared or preparable
part are a monolithic unit and in which the prepared or preparable part
has an outer surface that includes a convex portion that is convex with
respect to a longitudinal axis of the dental implant, the convex portion
configured to abut against a corresponding concave surface of the
tooth replacement, the prepared or preparable part further including an
arc-shaped surface extending through the longitudinal axis and being
oriented at an oblique angle relative to the longitudinal axis, the
prepared or preparable part further including a central bore extending
from the arc-shaped surface into the implant generally parallel relative
to the longitudinal axis of the implant.

References Relied on by the Examiner
Chanavaz US 5,205,746 Apr. 27, 1993
Osorio US 2001/0021498 A1 Sep. 13, 2001
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Application No. 11/140,532

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Morgan US 6,290,500 B1 Sep 18, 2001
Poirier US 6,382,975 B1 May 7, 2002
Engman WO 00/27300 May 18, 2000

The Rejections on Appeal
1. Claims 1-4, 6, 8, 9, 13, 14 and 16-20 are rejected as being
unpatentable under 35 U.S.C. § 103(a) over Chanavaz and Osorio (Ans. 3).
2. Claim 15 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Poirier and Osorio (Ans. 5).
3. Claim 5 is rejected as being unpatentable under 35 U.S.C. § 103(a)
over Chanavaz, Osorio and Engman (Ans. 6).
4. Claim 7 is rejected as being unpatentable under 35 U.S.C. § 103(a)
over Chanavaz, Osorio and Poirier (Ans. 6).
5. Claims 10-12 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Chanavaz, Osorio and Morgan (Ans. 7).

ISSUE
Has the Examiner provided sufficient evidence and technical
reasoning to show that a monolithic dental implant having the configuration
as set forth in claim 1 is obvious in view of Chanavaz and Osorio?
Has the Examiner provided sufficient evidence and technical
reasoning to show the step of implementing a one-piece implant having the
configuration as set forth in claim 15 is obvious in view of Poirier and
Osorio?

ANALYSIS
Appellants argue claims 1-4, 6, 8, 13, 14 and 16-20 together (App. Br.
20). We select claim 1 for review. Appellants further separately argue
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claim 15 which will be addressed below (App. Br. 27). Appellants rely on
the dependency of claims 5, 7 and 10-12 from allowable claim 1 and thus
claims 5, 7 and 10-12 will stand or fall with claim 1 (App. Br. 28-29).
Remaining claim 9 depends directly from claim 1 and will stand or fall with
claim 1.
The rejection of claim 1 as being unpatentable over Chanavaz and Osorio
Claim 1 requires “a monolithic unit” in which the preparable part
projecting from the jaw bone has “an arc-shaped surface” that is “oriented at
an oblique angle relative to the longitudinal axis” of the monolithic unit.
The Examiner relies on the combination of Chanavaz and Osorio, each of
which discloses a two-piece implant having an embedded portion and a
separable preparable part (Ans. 3-4; Chanavaz 4:24-28; Osorio ¶ [0024]).
The Examiner concludes that it would have been obvious to combine
Chanavaz’s embedded portion with Osorio’s projecting preparable part in
view of Osorio’s teaching that the abutment (i.e. preparable part) underlying
the replacement tooth should “be fabricated to match the size, shape and
contour of the replaced tooth” (Ans. 4 citing Osorio ¶ [0024]). However,
despite the Examiner’s combination of Chanavaz and Osorio, the Examiner
acknowledges that “Chanavaz/Osorio fail to disclose a monolithic implant”
(Ans. 4-5). Nevertheless, the Examiner states that it would have been
obvious “to form Chanavaz/Osorio’s device into a single-piece monolithic
element” (Ans. 5). The first reason provided by the Examiner is a reliance
on Howard v. Detroit Stove Works, 150 U.S. 164, 170 (1893) (“it involves
no invention to cast in one piece an article which has formerly been cast in
two pieces, and put together”)(Ans. 5). Another reason provided by the
Examiner is that “a monolithic implant will eliminate the step of inserting an
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abutment after placement of the implant body in the patient’s jawbone thus
allowing the patient to receive a final dental restoration (i.e. crown, bridge)
in a more efficient time period” (Ans. 9).
Appellants contend that “Howard does not stand for the per se rule
suggested by the Examiner” and that the Examiner needs to explain “the
desirability of combining multiple articles into one article” (App. Br. 21).
Assuming arguendo that the Examiner employed Howard as a per se rule as
Appellants assert, the Examiner also identified the goal of efficiency as the
reason or desire one skilled in the art would combine two articles into one
(Ans. 8-9). We disagree with Appellants’ contention in view of the
Examiner’s stated reason based on a desire for greater efficiency.
Appellants further contend that “the modification suggested by the
Examiner would destroy the principle of operation of Osorio” (App. Br. 22,
see also 24 and 26). Appellants are improperly “attacking references
individually where the rejection is based upon the teachings of a
combination of references” (In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986)). Further, Osorio is relied on for its teaching of an arc-shaped
abutment surface, not its operation (Ans. 4).
Appellants also contend that making Chanavaz's implant monolithic
would “destroy the principle of operation of Chanavaz” and is not “the aim
of Chanavaz” (App. Br. 22, Reply Br. 3-4 and 7). Appellants contend that
Chanavaz requires a “two-stage surgery” to allow “the implant to
ossointegrate with the jawbone before the superstructure is attached to the
implant” (App. Br. 22, see also 23, 24 and 26; Reply Br. 2, 5, 6). Because
attorney arguments in a brief cannot take the place of evidence, we are not
persuaded at the outset because Appellants have not provided any credible
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evidence, declaration or affidavit that Chanavaz requires ossointegration of
the implant with the jawbone before installing the superstructure (i.e., the
preparable part)(see In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
Appellants’ basis for this contention is Chanavaz’s statement that once “the
implant has been put into position and integrated in the osseous plate” the
preparable part or superstructure can be attached (App. Br. 22 and 23
referencing Chanavaz 4:24-28, see also Reply Br. 6). Appellants
acknowledge Chanavaz’s prior step of “tapping and screwing the body 1 into
the bone socket” but do not persuasively explain how a tapped and screwed
implant is not “integrated in the osseous plate” as taught thereby allowing
the preparable part to be installed during the same operation (Reply Br. 5
referencing Chanavaz 3:6-12; Chanavaz 4:24-28). Further, Chanavaz
teaches attaching the preparable part once “the implant has been put into
position” and Appellants have not persuaded us that Chanavaz dissuades one
skilled in the art from making the components monolithic in order to make
the surgery more efficient as stated by the Examiner (Chanavaz 4:24-28;
Ans. 9).
Appellants also reference the same statement in Chanavaz as relied
upon above (i.e., Chanavaz 4:24-28) as the basis for the contention that
Chanavaz “necessarily teaches away from a monolithic implant” (App. Br.
24). A teaching away requires a reference to actually criticize, discredit, or
otherwise discourage investigation into the claimed solution and we are not
persuaded that this recitation in Chanavaz criticizes, discredits, or otherwise
discourages investigation into a monolithic component (In re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004)).
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Paragraphs [0007] and [0014] in Appellants’ Specification are
identified as addressing the “benefits of a one-stage implant that can be used
in the anterior region of the mouth, especially the front teeth” (App. Br. 25).
Claim 1 is not directed solely to front teeth. Further, Appellants’ beneficial
structure identified in these and adjacent paragraphs is to configure the
preparation part to substantially have “the anatomy of the lost or extracted
tooth” (Spec ¶ [0008]). This is similar to Osorio’s teaching (relied upon by
the Examiner) of the preparation part being “fabricated to match the size,
shape and contour of the replaced tooth” (Osorio ¶ [0024]; Ans. 4). “The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” KSR Int’l Co.
v. Teleflex, Inc., 550 U.S. 398, 416 (2007). Here, the beneficial elements
addressed by Appellants are known and Appellants are not asserting that
their claimed subject matter yields an unpredictable result but instead that
“[t]hese features and advantages are not disclosed in either Chanavaz or
Osorio” (App. Br. 25). We are not persuaded by Appellants’ contentions.
Appellants’ additional contentions presented throughout the briefs are
reiterations of those already addressed and we do not find them persuasive
for the reasons stated above. Accordingly, we sustain the Examiner’s
rejection of claims 1-4, 6, 8, 9, 13, 14 and 16-20.
The rejection of claim 15 as being unpatentable over Poirier and Osorio
Independent method claim 15 requires the step of inserting “a one-
piece implant” into the jawbone and rotating the implant until its “arc-
shaped” surface is properly positioned. The Examiner relies primarily on
Poirier for the teachings of claim 15 but acknowledges that “Poirier fails to
disclose a method where the implant is monolithic” and where the implant
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has the desired “arc-shaped’ surface (Ans. 5). As above, the Examiner relies
on Osorio for teaching a support or preparable part (12) having the desired
“arc-shaped” configuration and relies on the same reason or rational
underpinning (i.e., “to provide a part that matches the size, shape and
contour of the replaced tooth”) for combining Osorio’s preparable part with
Poirier’s implant (Ans. 5-6, see also App. Br. 27 and Reply Br. 8 and 10).
Again, however, the Examiner acknowledges that “Poirier/Osorio fails to
disclose an implant that is monolithic” and relies on the same reason
previously set forth as to why a monolithic implant is obvious (Ans. 6, see
also 9).
Appellants contend that the combination of Poirier and Osorio “fails
to teach or provide any reason to provide each of the features recited in
Claim 15” (App. Br. 27, Reply Br. 8). More specifically, Appellants agree
that “Poirier fails to teach a one-piece or monolithic implant” but contends
that “as discussed extensively above, Osorio also fails to teach or provide
any reason to provide a one-piece or monolithic implant” (App. Br. 27, see
also Reply Br. 9). The Examiner reiterates that “the Examiner is again not
modifying Osorio to be monolithic but is rather only using Osorio to teach
the specific shape of the abutment (preparable/support part) that is being
claimed. The Examiner is modifying the main structure of Poirier’s implant
to be monolithic” (Ans. 9). Accordingly, this contention by Appellants is
not persuasive.
Appellants rely on the discussions above and present no new
arguments addressing the Examiner’s stated reason for the rejection (App.
Br. 28, Reply Br. 8-9). In view of the record presented, we sustain the
Examiner’s rejection of claim 15.
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The rejection of claim 5 over Chanavaz, Osorio and Engman, the rejection
of claim 7 over Chanavaz, Osorio and Poirier, and the rejection of claims
10-12 over Chanavaz, Osorio and Morgan
In each instance, “Appellants respectfully traverse” the Examiner’s
rejection for the reason that the claim “depends from an allowable
independent based claim” (App. Br. 28-29). As no new arguments are
presented, we sustain the Examiner’s rejection of claims 5, 7 and 10-12.

CONCLUSION OF LAW
The Examiner has provided sufficient evidence and technical
reasoning to show that a monolithic dental implant having the configuration
as set forth in claim 1 is obvious in view of Chanavaz and Osorio.
The Examiner has provided sufficient evidence and technical
reasoning to show that a one-piece implant having the configuration as set
forth in claim 15 is obvious in view of Poirier and Osorio.

DECISION
In view of the foregoing, the decision of the Examiner to reject claims
1-20 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

MP