Ex Parte AndreikoDownload PDFPatent Trial and Appeal BoardMay 26, 201611464909 (P.T.A.B. May. 26, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111464,909 08/16/2006 83571 7590 05/31/2016 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-211CP 9389 EXAMINER PATEL, YOGESH P ART UNIT PAPER NUMBER 3732 NOTIFICATION DATE DELIVERY MODE 05/31/2016 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 PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CRAIG A. ANDREIKO Appeal2013-010483 Application 11/464,909 Technology Center 3700 Before LYNNE H. BROWNE, LEE L. STEPINA, and ERIC C. JESCHKE, Administrative Patent Judges. STEPINA, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Craig A. Andreiko (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner's decision rejecting claims 6-11, 13, and 19-30. 1'2 We have jurisdiction over the appeal under 35 U.S.C. § 6(b ). We AFFIRM-IN-PART. 1 Claims 1-5, 12, and 14--18 are canceled. Appeal Br. 12-20 (Claims App.). 2 An oral hearing was conducted on May 10, 2016. Appeal2013-010483 Application 11/464,909 THE CLAIMED SUBJECT MATTER The claimed invention is directed to a custom orthodontic bracket placement jig. Spec. 1 (Title). Claim 6 is illustrative of the claims on appeal and is reproduced below. 6. A combination of an orthodontic appliance and jig compnsmg: the jig for placing one or more orthodontic appliances on one or more teeth of a group of at least two, but not more than six, adjacent teeth of a patient, comprising: a rigid jig body having at least two jig-locating, tooth-contact areas each shaped to respectively conform to a corresponding jig-contact area on respective occlusal surfaces of different teeth of the group, the at least two tooth-contact areas having the same geometric relationship to each other on the jig body as the corresponding jig-contact areas have to each other on the teeth of the group when the teeth of the patient are in initial, pretreatment positions; and appliance receiving structure on the jig body configured for holding at least one orthodontic appliance of a predefined configuration in a fixed position and orientation relative to the jig body to bring a mounting surface of the appliance into contact with a mounting area on a facial or lingual surface of a tooth of the group when the body is registered on the teeth of the group with the at least two jig-locating areas of the body in conforming contact with said areas of the occlusal surfaces of the teeth; and an orthodontic appliance having a bonding base configured to be bonded to the crown of the tooth, the appliance being removably connected by the connecting structure to the body of the jig and positioned relative to the jig-locating areas for locating the bonding base at a bonding position on the crown of the tooth. Appeal Br. 12. 2 Appeal2013-010483 Application 11/464,909 REFERENCES RELIED ON BY THE EXAMINER Andreiko Doyle Tatsu us 5,683,243 us 5,863,198 JP 10-258070A Nov. 4, 1997 Jan. 26, 1999 Sept. 29, 1998 THE REJECTIONS ON APPEAL (I) Claims 6 and 7 are rejected under 35 U.S.C. § 102(b) as anticipated by Tatsu. 3 (II) Claims 8-10, 19, 21, 22, and 23 are rejected under 35 U.S.C. § 103(a) as unpatentable over Tatsu and Doyle. (III) Claim 11 is rejected under 35 U.S.C. § 103(a) as unpatentable over Tatsu, Doyle, and Andreiko. (IV) Claim 13 is rejected under 35 U.S.C. § 103(a) as unpatentable over Tatsu and Doyle. (V) Claim 20 is rejected under 35 U.S.C. § 103(a) as unpatentable over Tatsu. (VI) Claims 24--30 are rejected under 35 U.S.C. § 103(a) as unpatentable over Tatsu and Andreiko. ANALYSIS Rejection(!) The Examiner finds that Tatsu discloses all the features recited in claim 6, and in particular, finds that core 11 of Tatsu corresponds to the jig (and jig body). Final Act. 4. The Examiner states that Tatsu discloses "a 3 Both the Examiner and Appellant refer to the English machine-translation of Tatsu dated December 25, 2009, and entered into the record on January 6, 2010. 3 Appeal2013-010483 Application 11/464,909 rigid jig body having at least two jig-locating, tooth-contact areas each shaped to respectively conform to a corresponding jig-contact area on respective occlusal surfaces of different teeth of the group (see translation page 3, para [0005])." Final Act. 3--4. Appellant contends "Tatsu does not show two tooth-contacting surfaces in one jig." Appeal Br. 8. In this regard, Appellant contends that (i) Tatsu continually refers to core 11 as contacting a tooth (as opposed to teeth); (ii) reference number 11 refers to a "single tooth core" in Tatsu's Figure 2, and this number is also used in Figure 7 of Tatsu (therefore suggesting Figure 7 also refers to a "single tooth core"); and (iii) paragraph 16 of Tatsu merely establishes that Tatsu may attach more than one bracket to a single core, "not that the core has tooth-conforming surfaces for more than one bracket." Appeal Br. 9. With respect to Tatsu's Figure 7, Appellant asserts that this figure depicts three "rotation arms" 21, but this drawing does not show a tooth or teeth, nor does it indicate whether the "core" 11 shown in Fig. 7 engages more than one tooth, or if so, how it engages those teeth (i.e., specifically, whether the core 11 it includes a plurality of tooth conforming surfaces). The specification, in fact, only references "a tooth" being engaged by the core, even in the context of Fig. 7 of Tatsu. Appeal Br. 9. Referring to Figures 2, 7, and 8 of Tatsu, the Examiner states, "Tatsu's objective is to position dental brackets on patient's teeth in a 'predetermined position,'" and "it is clear that the jig [has] conforming surfaces. The jig in figure 2 and in figure 7 is the same jig and made from model work. It is further noted that Tatsu shows side view of the jig in figure 2 and a top view in figure 7." Ans. 9. 4 Appeal2013-010483 Application 11/464,909 In reply, Appellant states, "[t]he Examiner's rejection is based only upon the Examiner's guess that the core 11 shown by Tatsu might engage to multiple teeth. But a rejection for anticipation may not be based on probabilities and possibilities." Reply Br. 1. Appellant further contends, "[t]he Examiner's rejection is specifically premised upon the assertion that the 'core' 11 shown by Tatsu has tooth conforming surfaces for more than one tooth. However, this is not taught or suggested in Tatsu. Rather, Tatsu clearly states that the 'core 11' engages 'a tooth 5'[] not multiple teeth." Reply Br. 1. Appellant notes that Tatsu repeatedly uses the word tooth rather than the word teeth, and Appellant states "there is no figure showing the core 11 engaging more than one tooth; the drawings that show core 11 engaging a tooth, show only one tooth." Reply Br. 1-3. "[The] preponderance of the evidence is the standard that must be met by the PTO in making rejections." In re Caveney, 761F.2d671, 674 (Fed. Cir. 1985); see also Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988). "An anticipatory reference ... need not duplicate word for word what is in the claims. Anticipation can occur when a claimed limitation is 'inherent' or otherwise implicit in the relevant reference." Standard Havens Prods., Inc. v. Gencor Indus., Inc., 953 F.2d 1360, 1369 (Fed. Cir. 1991). In a paragraph labeled Description of the Prior Art, Tatsu describes conventional bonding of orthodontics in relation to Figures 10 and 11. Tatsu i-f 2. We produce below Tatsu's prior art drawings 10 and 11. 5 Appeal2013-010483 Application 11/464,909 Figure 10 is a perspective view of a conventional transfer apparatus with multiple brackets 1 disposed in core 3, and Figure 11 is a side view depicting the use of the apparatus shown in Figure 10. See Tatsu 6 (Brief Description of the Drawings), i-f 2. In a paragraph labeled Problem to be solved by the invention, Tatsu indicates that, in a conventional apparatus, a flexible section of core 3 is "forced in the direction of a tooth axis" in order to attach bracket 1 to tooth 5. Tatsu i-f 3. When this occurs, according to Tatsu, "the bottom la of the bracket 1 will be worn to a tooth flank at the time of attachment of the core 3. Therefore, there is a possibility that the adhesives with which the bottom 1 a of the bracket 1 was plastered may separate." Tatsu i-f 3. In a paragraph under the label "Means for solving problem," Tatsu discusses [A] core provided with the shape corresponding to a patient's tooth by the model for work which reproduced the patient's tooth correctly is formed[.] The bracket provided the holding mechanism of an arch wire is attached to this core so that it may become movable to the direction which attaches and detaches to a tooth flank[.] A transfer apparatus of the bracket in the indirect bonding of orthodontics characterized by making it this bracket touch the predetermined position in a tooth flank 6 Appeal2013-010483 Application 11/464,909 when moving this bracket in the direction of a tooth flank (direction which tends toward a tooth flank) (Claim 1). Tatsu i-f 5 (emphasis added). Thus, Tatsu characterizes its means for solving the problem as including a transfer apparatus that moves the bracket. In the rejection of claim 6, the Examiner refers to Figures 2, 7, and 8 of Tatsu. See Final Act. 2-3. We reproduce Figures 2 and 7 below. Figure 2 of Tatsu depicts a side view of core 11 closely fit onto tooth 5 with bracket 17 in a position ready for attachment via movable arm 21, and Figure 7 is a top view with multiple brackets 17 on corresponding movable arms 21 disposed on core 11, wherein core 11 is depicted as an elongated body. See Tatsu 6 (Brief Description of Drawings). Tatsu discloses placing one bracket on each of multiple teeth. See Tatsu, Fig. 1. In a discussion of the background art, Tatsu states, "[a]s especially shown in drawing 10, when many brackets 1 are attached to the core 3, it is very difficult to stick each bracket 1 to the predetermined position in each tooth flank correctly, respectively. This invention tends to solve the problem like the above and is made." Tatsu i-f 3. Thus, Tatsu 7 Appeal2013-010483 Application 11/464,909 intends to address the ditliculties associated with attaching many brackets to a predetermined position on each tooth. Discussing Tatsu's disclosed invention, Tatsu states, "[t]wo or more brackets may be attached to [the] core." Tatsu i-f 10. Tatsu explains, "[i]n the example shown in drawing 7, two or more rotation arms 21 and 21--- were attached to the hinge 19 with which the core 11 was made to be equipped, and the bracket 1 7 is attached to each rotation arm 21." Tatsu i-f 21. Thus, Tatsu attaches multiple brackets to the core. The Examiner finds, "there is nothing in Tatsu that suggests multiple brackets be attached to a single tooth." Final Act. 2. None of Tatsu's Figures depicts more than one bracket 1 7 on a single tooth, and Appellant does not direct our attention to any portion of Tatsu persuading us that Tatsu applies multiple brackets to a single tooth. Considering the problem solved by Tatsu and reviewing the side view depicted in Tatsu's Figure 2 and top view depicted in Figure 7, a person of ordinary skill in the art would understand that Tatsu teaches surfaces on core 11 that fit on each of multiple teeth. As Figure 2 is a side view, core 11 is shown on only one tooth in this figure. However, given the shape of core 11 and the depiction of multiple brackets 17 on arms 21 in Figure 7, it is evident that Tatsu places core 11 on multiple teeth and places one bracket 17 on each tooth. Considering that Tatsu places core 11 on multiple teeth, and the side view of core 11 in Figure 2 shows a contoured tooth contacting surface, a person of ordinary skill in the art would understand that core 11 in Tatsu provides this kind of contoured surface for the numerous teeth touched by core 11, but not depicted in the side view shown in Figure 2. This finding is further supported by Tatsu's discussion of the problems found in 8 Appeal2013-010483 Application 11/464,909 conventional orthodontics (which were also applied to multiple teeth as shown in Figure 10 of Tatsu) and Tatsu's solution to provide a movable holding mechanism for the bracket. See Tatsu i-fi-12-5. In other words, the difference between Tatsu and the conventional apparatus discussed by Tatsu is the inclusion of a movable arm, not a reduction in the number of tooth contact areas. Accordingly, the Examiner's finding that Tatsu discloses at least two jig-locating, tooth-contact areas each shaped to respectively conform to a corresponding jig-contact area on respective occlusal surfaces of different teeth is supported by a preponderance of the evidence. Consequently, we sustain the Examiner's rejection of claim 6, and claim 7 depending therefrom, as anticipated by Tatsu. Rejection (II) Claims 8-10 Appellant does not make separate arguments for any of dependent claims 8-10. See Appeal Br. 8-10. Accordingly, we sustain the rejection of these claims for the reasons discussed above regarding the rejection of independent claim 6. Claims 21 and 23 Appellant contends: As to claims 21-24, Tatsu does not disclose a jig positioning an intermediate tooth Claims 21-24 each recite a jig which contacts two teeth to positions an appliance, but positions only one appliance, for example on a tooth which is not one of the teeth for which the jig has a conforming surface. This concept is not found anywhere in Tatsu, who shows three brackets put in place by one jig; if the Examiner is correct and Fig. 7 is interpreted to show three tooth-contacting surfaces, there still would be no evidence that on[ e] jig contacts two teeth and positions an 9 Appeal2013-010483 Application 11/464,909 appliance on a tooth that is not being touched. Nothing in the prior art suggests it. Appeal Br. 9. At oral argument, Appellant argues that claims 20, 22, and 24 were intended to be the subject of this argument rather than claims 21-24.4 We agree that Appellant's argument is not commensurate with the scope of claims 21 and 23, and we sustain the Examiner's rejection of these claims. Claim 22 Independent claim 22 recites, in part, the appliance receiving structure including at least one receiver on the jig body configured to hold an orthodontic appliance in a fixed position on and relative to the jig body to bring a mounting surface of the appliance, when the body is so registered on the teeth, into contact with a mounting area on a surface of a corresponding tooth of the group that is not contacted by the tooth-contact areas of the jig body. Emphasis added. The Examiner states, "[i]n response to the [A]ppellant's argument regarding claims 21-24 that a jig contacts two teeth but positions only one tooth, it is noted that the jig of Tatus as in figure 7 is capable of positioning only one tooth. The appellant's argument is based on intended use." Ans. 9-10. Appellant's argument against the rejection of claim 22 is persuasive. The Examiner does not explain how core 11 in Tatsu may position any of 4 JUDGE STEPINA: Page nine of your brief. Does that argument not apply to claims 21 and 23? MR. HUMPHREY: I may have misread it when I was studying here this morning, sorry. Yes, so it's 20, 22 and 24. I apologize for that. The brief had the range of numbers wrong in that section B you're talking about. That language is in 20 and 22 and 24, yes. Oral Hearing Transcript 11, 11. 6- 11. 10 Appeal2013-010483 Application 11/464,909 brackets 17 on a tooth without core 11 also being placed in contact with that tooth. In other words, core 11 in Tatsu touches all the teeth to which Tatsu adds a bracket. Accordingly, we do not sustain the Examiner's rejection of claim 22. Claim 19 Independent claim 19 recites, in part, "no tooth-contact areas being configured to contact any other than the corresponding endmost tooth of the group, when said teeth are in the initial, pretreatment positions, and the appliance receiving structure including three receivers on the jig body." Thus, claim 19 recites similar features to those discussed above regarding claim 22, and for the same reasons, we do not sustain the Examiner's rejection of claim 19. Rejections (III-IV) Appellant makes no separate argument for claims 11 and 13. Accordingly, we sustain the rejection of these claims for the reasons discussed above regarding the rejection of independent claim 6. Rejection (V) Claim 20 recites substantially similar features to those discussed above regarding claim 22, and for the same reasons discussed above, we do not sustain the Examiner's rejection of claim 20. Rejection (VI) Claim 24 Appellant's argument that there is "no evidence that [one] jig [taught by Tatsu] contacts two teeth and positions an appliance on a tooth that is not being touched. Nothing in the prior art suggests it" (Appeal Br. 9) is not persuasive. 11 Appeal2013-010483 Application 11/464,909 Claim 24 requires "a first cavity configured to conform to the shape of a first tooth of the patient and a second cavity configured to conform to a second tooth of the patient." Claim 24 further requires, "at least one orthodontic bracket removeably supported in a fixed position on the jig body ... the at least one orthodontic bracket including a first orthodontic bracket custom configured for bonding to a third and still different tooth on said dental arch of the patient." Unlike claim 22, claim 24 does not preclude contact between the jig body and the "third and still different tooth on said dental arch of the patient." The device disclosed in Tatsu is capable of being positioned on multiple teeth and placing brackets on any of those teeth without also placing brackets on others. Accordingly, we sustain the Examiner's rejection of claim 24 as unpatentable over Tatsu and Andreiko. Appellant makes no separate arguments for any of claims 25-30, which depend from claim 24. Therefore, these claims fall with independent claim 24. DECISION (I) The rejection of claims 6 and 7 as anticipated by Tatsu is affirmed. (II) The rejection of claims 8-10, 19, 21, 22, and 23 as unpatentable over Tatsu and Doyle is affirmed as to claims 8-10, 21, and 23, but is reversed with respect to claims 19 and 22. (III) The rejection of claim 11 as unpatentable over Tatsu, Doyle, and Andreiko is affirmed. (IV) The rejection of claim 13 as unpatentable over Tatsu and Doyle is affirmed. (V) The rejection of claim 20 as unpatentable over Tatsu is reversed. 12 Appeal2013-010483 Application 11/464,909 (VI) The rejection of claims 24--30 as unpatentable over Tatsu and Andreiko 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)(l )(iv). AFFIRMED-IN-PART 13 Copy with citationCopy as parenthetical citation