Ex Parte Andreiko

Patent Trial and Appeal Board

Jan 25, 2018

13631062 (P.T.A.B. Jan. 25, 2018)

United States Patent and Trademark Office
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.
13/631,062 09/28/2012 Craig A. Andreiko ORM-375US 7628
83571 7590 01/29/2018
Wood, Herron & Evans, LLP (Sybron)
441 Vine Street
2700 Carew Tower
Cincinnati, OH 45202
EXAMINER
SAUNDERS, MATTHEW P
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
01/29/2018 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
mhines @ 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
Appeal 2016-002877
Application 13/631,062
Technology Center 3700
Before: CHARLES N. GREENHUT, PATRICK R. SCANLON, and
MICHELLE R. OSINSKI, 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 claims 1—
16. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was
conducted on January 9, 2018.
We affirm.
Appeal 2016-002877
Application 13/631,062
CLAIMED SUBJECT MATTER
The claims are directed to an orthodontic appliance and method of
orthodontic treatment with same. Claim 1, reproduced below, is illustrative
of the claimed subject matter:
1. An orthodontic appliance for moving teeth of a polymeric
material having an initial shape which defines two or more three-
dimensional cavities, each said cavity corresponding to the shape
of a crown of an individual tooth of a patient’s mandible or
maxilla, wherein the polymeric material has the property that
after a day of use of the appliance in which it is deformed by
fitting the appliance to the patient’s teeth, the appliance will
generate a continuing return stress while fitted to the patients
teeth to return to a shape that is substantially similar to the initial
shape.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims is:
Choi US 2005/0003318 A1 Jan. 6, 2005
Chen US 2009/0246724 A1 Oct. 1,2009
Yong Chae Jung and Jae Whan Cho, Application of shape memory
polyurethane in orthodontic, J. Mater Sci: Mater Med, 21:2881—2886
(2010).
REJECTIONS
Claims 1—9 are rejected under 35 U.S.C. § 102(b) as being anticipated
by either Choi or Chen as evidenced by Jung.1
1 We understand the Examiner’s reliance on Jung to be in manner
contemplated by MPEP § 2131.01 (III). Appellant does not present
arguments concerning the specific point for which the Examiner cites Jung,
the “generation of] a continuing return stress.” See, e.g., Final Act. 3—4, 6.
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Application 13/631,062
Claims 10-16 are rejected under 35 U.S.C. § 102(b) as being
anticipated by either Choi or Chen.
OPINION
Appellant argues both rejections applicable to claims 1—9 as a group
and does not separately argue claims 10-16. App. Br. 4—5. Per 37 C.F.R.
§ 41.37(c)(l)(iv) we select claim 1 as representative for each rejection of
claims 1—9 and do not consider claims 10-16 as separately argued.
Accordingly, our analysis is limited to claim 1.
A determination of anticipation involves two steps. First is construing
the claim, followed by, a comparison of the construed claim to the prior art.
Key Pharm. v. Hereon Labs. Corp., 161 F.3d 709, 714 (Fed. Cir. 1998). The
Examiner’s analysis mainly focuses on the first step, advancing a claim
construction broader than that intended by the Appellant. Ans. 7—8.
Appellant’s arguments, which we will address first, primarily focus on the
second step, discussing the methods described by the cited prior art.
Appellant’s sole point of contention is that each of Choi, Chen, and
Jung contemplate a system whereby the aligner is thermoformed to the
initial position before being applied to the patient’s teeth. App. Br. 5; Reply.
Br. 1—2. According to the Appellant such a procedure cannot be regarded as
“deform[ing] by fitting the appliance to the patient’s teeth.” This is because
Appellant presumes, contrary to the Examiner’s interpretation, that the term
“fitting” implicitly refers to the process of installing the appliance on the
patient’s actual teeth.
First, claim 1 is anticipated even under Appellant’s proposed reading
of the quoted phrase. Appellant does not cite to any specific portion of Choi,
Chen, or Jung to support the assertion that the initial forming comes before
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Application 13/631,062
application of the device to the patient. Even if, as Appellant asserts,
thermoforming were a required prerequisite to assuming the initial shape in
the prior-art,2 Appellant does not present any evidence or technical
reasoning to demonstrate that forming must occur prior to, as opposed to
during, installation. None of the cited references expressly describe such a
constraint and Appellant does not offer any additional evidence to support
their assertion that the prior-art disclosures should be read so narrowly. As
claim 1 is directed to an appliance, as opposed to a method of its use, the
critical question is whether the prior-art discloses the appliance itself. That
finding is not necessarily defeated by the simple absence of an express
disclosure of the particular manner in which the appliance is used. When
functional language is employed to define a machine or apparatus claim, it is
well-settled that on the reasonable belief that the prior art discloses an
identical structure to that claimed, the Examiner may shift the burden to the
applicant to prove otherwise. See MPEP § 2112. Appellant is in the best
position to enter evidence to support Appellant’s own assertion as to how
one skilled in the art would understand Choi, Chen, and Jung. Appellant has
not done so. Instead, Appellant only contends that the prior-art devices are
shaped to the patient’s teeth by applying those device to a replica of the teeth
while the appliance is at a particular temperature. See Oral Hearing
Transcript. The apparatus of the prior art meets the recited functionally
defined limitation (e.g., having the property that after a day of use in which
the appliance is deformed by fitting it to the patient’s teeth, it will generate a
continuing return stress) if it can perform the recited function. The prior art
reference need not disclose the device actually performing the claimed
2 Choi alludes to this at paras. 63—67; Chen describes a variety of external
stimulus at paras. 39-40.
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Application 13/631,062
function. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
Appellant does not dispute that the prior-art aligners could not also assume
their initial shape during installation in a patient’s mouth. See Oral Hearing
Transcript. Thus, Appellant alleges only a distinction in the intended manner
of use and not a distinction between the structure claimed and that of the
prior art. Therefore, even under Appellant’s proposed reading of the claim,
where “by fitting the appliance to the patient’s teeth” implicitly means
during installation, Choi or Chen would still anticipate claim 1.
Second, and independent of the discussion above, instead of analyzing
the claim under the Appellant’s proposed construction, as we have done
above, the Examiner asserts there is no reason to construe the claim so
narrowly so as to implicitly require actual installation on the patent’s teeth
by reciting “fitting the appliance to the patient’s teeth.” Ans. 7—8. The
differing views of the Appellant and the Examiner on this point ultimately
relate to the interpretation of the term “fitting.” Appellant assumes the term
to require actual application or installation on the actual teeth of a patient.
Whereas the Examiner interprets the term to mean making something the
appropriate size and shape for the teeth without necessarily using the teeth
themselves to do so. Thus, under the Examiner’s construction “deformed by
fitting the appliance to the patient’s teeth” can be achieved by deforming the
appliance onto a replica of the patient’s teeth, i.e., a process that the
Examiner regards as “fitting.” Appellant admits such a process is taught by
the cited prior art. See Oral Hearing Transcript. As claim construction is a
mixed question involving both fact and law, our analysis of this issue would
benefit from remarks by Appellant as to the proper interpretation of the
limitation quoted above, and the term “fitting” in particular. However, no
such remarks are presented in this appeal. We will not scour the
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Specification nor seek extrinsic evidence to confirm or refute an issue
Appellant has failed to argue. Appellant presumes the Examiner to be
incorrect without providing any facts or analysis to controvert the position
articulated by the Examiner in this regard. As 37 C.F.R. § 41.37(c)(l)(iv)
requires arguments to “explain why the examiner erred as to each ground of
rejection contested by appellant,” we consider this issue waived for purposes
of this appeal.
Accordingly, under either of the possible claim constructions
discussed above, we agree with the Examiner that claim 1 is anticipated by
either Chen or Choi as evidenced by Jung.
DECISION
The Examiner’s rejections are 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
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