Ex Parte Bergersen

Board of Patent Appeals and Interferences

Dec 21, 2010

10665441 (B.P.A.I. Dec. 21, 2010)

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.
10/665,441 09/18/2003 Earl O. Bergersen BER-P-03-054 7298
29013 7590 12/21/2010
PATENTS+TMS, P.C.
2849 W. ARMITAGE AVE.
CHICAGO, IL 60647
EXAMINER
LEWIS, RALPH A
ART UNIT PAPER NUMBER
3732
MAIL DATE DELIVERY MODE
12/21/2010 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
____________

Ex parte EARL O. BERGERSEN
____________

Appeal 2009-007487
Application 10/665,441
Technology Center 3700
____________

Before WILLIAM F. PATE III, STEVEN D.A. McCARTHY and
FRED A. SILVERBERG, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-007487
Application 10/665,441

1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
29
30
31
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 from the decision of the
Examiner finally rejecting claims 1-20 and 35-87. The Examiner rejects
claims 1-6, 8-12, 14, 16, 17, 19, 20, 35-39, 41, 42, 44-51, 58-66 and 68-87
under 35 U.S.C. § 102(b) as being anticipated by Bergersen (5,645,420,
issued Jul. 8, 1997); claims 7, 13, 43, 52-57 and 85-87 under 35 U.S.C.
§ 103(a) as being unpatentable over Bergersen; claims 15, 40 and 67 under
§ 103(a) as being unpatentable over Bergersen and Andrews (US 4,591,341,
issued May 27, 1986); and claims 6, 42 and 66 under § 103(a) as being
unpatentable over Bergersen and Watson (US 5,328,362, issued Jul. 12,
1994). The Examiner has identified no ground of rejection for claim 18.
The Examiner has withdrawn claims 21-34 from consideration. We have
jurisdiction under 35 U.S.C. § 6(b).
We sustain the rejections of claims 8-13, 63-67 and 74-84. We do not
sustain the rejections of claims 1-7, 14-20, 35-62, 68-73 and 85-87.
Claim 8 is illustrative of the claimed subject matter:
8. A method for correcting a dentition in a
mouth of a user having one or more types of teeth
wherein one of the types of teeth is canine teeth,
the method comprising the steps of:
providing a generally U-shaped base having
a first socket that receives the canine teeth;
contacting the canine teeth with the
generally U-shaped base
wherein the generally U-shaped base
contacts the canine teeth on an outer side of
the canine teeth and on an inner side of the
canine teeth
wherein the inner side of the canine
teeth is opposite in position to the outer side

2
Appeal 2009-007487
Application 10/665,441

1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
29
30
31
32
33
34
wherein the socket has an occlusal
surface;
forming wedges within the first socket
wherein each of the wedges extend
outward with respect to the occlusal surface
of the first socket to form an apex shaped to
extend toward a canine tooth that is one of
the canine teeth and to contact the canine
tooth
wherein the wedges contact an
interproximal area of the canine tooth
wherein the interproximal area is
located between the canine tooth and a
second tooth and
further wherein the wedge does not
contact any area of the canine tooth other
than the interproximal area; and
moving the canine tooth with the wedge
when the base is worn by the user.

OPINION
Rejections Sustained
The Rejections of Claims 8-13, 63-66 and 74-84 under § 102(b) as being
anticipated by Bergersen; the Rejections of Claims 52-57 under § 103(a) as
being unpatentable over Bergersen; the Rejection of Claim 67 under
§ 103(a) as being unpatentable over Bergersen and Andrews; and the
Rejections of Claim 66 under § 103(a) as being unpatentable over
Bergersen and Watson
ISSUES
The Appellant separately argues only the independent claims. The
identification of issues in this appeal is made more difficult by the
Appellant’s choice to present the arguments addressed to specific claims by
quoting claim language without further explanation. (See App. Br. 19-22).
The quotation of claim language, and, in particular, the quotation of the
3
Appeal 2009-007487
Application 10/665,441

1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
entire body of a claim, without further explanation provides no guidance as
to how the Examiner might have erred in rejecting the claim. Cf. 37 C.F.R.
§ 41.37(c)(1)(vii) (“A statement which merely points out what a claim
recites will not be considered an argument for separate patentability of the
claim.”).
Only issues and findings of fact contested by the Appellant have been
considered. See Ex Parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI 2010). In
view of the Examiner’s findings and conclusions, and the Appellant’s
arguments, this appeal raises the following issues:
Does Bergersen disclose a dental appliance wherein a
first portion of the dental appliance constructed from a first
material contacts a different set of teeth than does a second
portion of the dental appliance constructed from a second
material harder than the first material? (See App. Br. 18; Reply
Br. 4-5).
Does Bergersen disclose forming a slot in a base and
continuously increasing the width of the slot from a first portion
sized to receive an incisor type of tooth to a fourth portion sized
to receive a molar type of tooth? (See App. Br. 18).
Does Bergersen disclose wedges as recited in claims 8,
63 and 74? (App. Br. 19)

FINDINGS OF FACT
The record supports the following findings of fact (“FF”) by a
preponderance of the evidence.
4
Appeal 2009-007487
Application 10/665,441

1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
1. Bergersen describes a “preformed appliance for straightening
and guiding teeth and providing jaw shaping functions for the permanent
dentition. (Bergersen, col. 3, l. 66 – col. 4, l. 1).
2. Bergersen’s appliance includes a U-shaped base. The base
includes an upper or superior tooth receiving trough 22 and a lower or
inferior tooth receiving trough 24. (Bergersen, col. 4, ll. 15-19).
3. Both the superior and inferior tooth receiving troughs 22, 24 are
provided with a plurality of tooth receiving depressions or sockets 22a-22g.
These sockets may be divided into first, second, third and fourth sections of
different shape. The sockets of the first through fourth sections are sized to
receive incisors, cuspids, bi-cuspids and molars, respectively. (Bergersen,
col. 4, ll. 25-31).
4. We adopt the Examiner’s finding that each of the troughs 22,
24 are slots. (See Ans. 11). We also adopt the Examiner’s finding that the
width of the trough or slot 22 “increases from the front (Figure 3, a cross
section of Figure 2 on line III-III) to the rear (Figure 5).” (Ans. 4).
5. We also adopt the Examiner’s finding that Bergersen discloses
“that a harder or softer liner material may be added to the base at ‘selected
tooth depressions’ (column 7, lines 61-62) in order to help reposition a
particular tooth.” (Ans. 5).
6. Bergersen discloses reshaping selected tooth depressions
exactly to the outer contour of the respective teeth to firmly hold the selected
teeth in precise position. Bergersen discloses accomplishing this reshaping
by introducing into the selected depressions a soft moldable material which
has the property of hardening at body temperature after a short period of
time. The body or base with the moldable material introduced into the
5
Appeal 2009-007487
Application 10/665,441

1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
selected depressions is placed into the patient’s mouth. The moldable
material hardens in the patient’s mouth. Once the moldable material
hardens, the material is trimmed at the margins of the tooth depressions.
(Bergersen, col. 7, ll. 43-58). Bergersen describes the liner material formed
from the moldable material as being “within selected tooth depressions.”
(Bergersen, col. 7, ll. 58-65).
7. Bergersen discloses that the base has wedge-shaped projections
100 provided between the canines and lateral incisors. (Bergersen, col. 9, ll.
44-47). Bergersen reports that the wedge shaped projection 100 moves the
canine tooth. That is, the projection 100 causes the canines to drift distally
along a distal surface of the wedge. (Bergersen, col. 9, ll. 63-66).

ANALYSIS
The Appellant contends that Bergersen fails to disclose a dental
appliance wherein a first portion of the dental appliance constructed from a
first material contacts a different set of teeth than does a second portion of
the dental appliance constructed from a second material harder than the first
material? (See App. Br. 18; Reply Br. 4-5). Bergersen discloses introducing
a “soft moldable material” to selected tooth depressions of a dental appliance
formed from a different material. (FF 5 and 6). The Appellant does not
appear to contest that one of the two materials will be harder than the other.
(See App. Br. 18; Reply Br. 4-5).
Since the soft moldable material is introduced only into selected tooth
depressions, the soft moldable material will not contact all of the teeth.
Those teeth not contacted by the soft moldable material will be contacted by
the material from which the appliance was originally made. Since the
6
Appeal 2009-007487
Application 10/665,441

1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
material from which the appliance was originally made contacts some teeth
which are not contacted by the soft moldable material, the material from
which the appliance was originally made and the soft moldable material
necessarily contact different sets of teeth. This is true even if the sets of
teeth contacted by the two materials overlap. Neither claim 52 nor claim 79
require a dental appliance in which the first and second materials contact
different teeth.
The Appellant contends that Bergersen fails to disclose forming a slot
in a base and continuously increasing the width of the slot from a first
portion sized to receive an incisor type of tooth to a fourth portion sized to
receive a molar type of tooth. The ordinary usage of the term slot is
sufficiently broad to encompass “a hollow or depression,” “a long and
narrow opening or groove” or “a narrow passage, enclosure or space.”
(WEBSTER’S THIRD NEW INT’L DICTIONARY ( 1971)(“slot,” entry 2, defs. 1,
2a and 2b). Any of these dictionary definitions fits Bergersen’s troughs 22,
24.
The Appellants’ Specification neither expressly defines the term
“slot” nor clearly disclaims an interpretation of that term sufficiently broad
to encompass Bergersen’s troughs 22, 24. See In re ICON Health & Fitness,
Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007); In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997)(in the absence of an express definition of a claim term
in the specification or a clear disclaimer of scope, the claim term is
interpreted as broadly as the ordinary usage of the term by one of ordinary
skill in the art reasonably permits). Neither does the Appellant provide
evidence or reasoning to suggest that the term “slot” has a specialized
meaning in the pertinent art. Bergersen’s troughs 22, 24 are slots. (FF 4).
7
Appeal 2009-007487
Application 10/665,441

1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
The Examiner finds that the width of the trough or slot 22 “increases
from the front . . . to the rear (Figure 5).” (FF 4, citing Ans. 4). This finding
is supported by the disclosure of Bergersen (FF4, comparing Bergersen, fig.
3 with id., fig. 5) and is not persuasively contested by the Appellant.
Bergersen’s slot or trough 22 continuously increases in width from a first
portion sized to receive an incisor type of tooth to a fourth portion sized to
receive a molar type of tooth. (FF 4).
The Appellant contends that Bergersen fails to disclose wedges as
recited in claim 8. The Examiner finds that such wedges are disclosed by
Bergersen in the paragraph beginning at column 9, line 63 and ending at
column 10, line 3. (Ans. 11). The paragraph beginning at column 9, line 63
and ending at column 10, line 3 describes wedge shaped projections 100.
(FF 7). The Appellant does not appear to contest the Examiner’s finding
that the wedge shaped projections 100 are wedges as recited in claims 8, 63
and 74.

CONCLUSIONS
Bergersen discloses a dental appliance wherein a first portion of the
dental appliance constructed from a first material contacts a different set of
teeth than does a second portion of the dental appliance constructed from a
second material harder than the first material.
Bergersen discloses forming a slot in a base and continuously
increasing the width of the slot from a first portion sized to receive an
incisor type of tooth to a fourth portion sized to receive a molar type of
tooth.
8
Appeal 2009-007487
Application 10/665,441

1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
29
Bergersen discloses wedges as recited in claims 8, 63 and 74.
We sustain the rejections of claims 8-13, 63-66 and 74-84 under
§ 102(b) as being anticipated by Bergersen. The Appellant does not contest
the Examiner’s reasoning in support of the conclusions that the subject
matter of claims 52-57 would have been obvious from the teachings of
Bergersen; that the subject matter of claim 67 would have been obvious
from the teachings of Bergersen and Andrews; or that the subject matter of
claim 66 would have been obvious from the teachings of Bergersen and
Watson. We also sustain the rejections of claims 52-57 under § 103(a) as
being unpatentable over Bergersen; the rejection of claim 67 under
§ 103(a) as being unpatentable over Bergersen and Andrews; and the
rejections of claim 66 under § 103(a) as being unpatentable over
Bergersen and Watson.

Rejections Not Sustained
The Rejections of Claims 1-6, 14, 16, 17, 19, 20, 35-39, 41, 58-62 and 68-73
under § 102(b) as being anticipated by Bergersen; the Rejections of Claims
7 and 43 under § 103(a) as being unpatentable over Bergersen; the
Rejection of Claim 40 under § 103(a) as being unpatentable over Bergersen
and Andrews; and the Rejections of Claims 6 and 42 under § 103(a) as
being unpatentable over Bergersen and Watson
Claim 1 recites a dental appliance. The dental appliance includes “a
wire embedded within the base . . . wherein the wire extends vertically from
the base adjacent to the first side of the tooth and does not extend from the
base adjacent to the second side of the tooth.” The Examiner finds that:
In regard to the “wire embedded in the base”
limitation of claim 1, Bergersen ′420 discloses in
Figures 13 and 14 a wire member 104 (note
column 10, lines 4-10) which is embedded within
9
Appeal 2009-007487
Application 10/665,441

1
2
3
4
5
6
7
8
9
10
the base and extends from the base vertically (in a
“serpentine shape”) into the outer wall (i.e. second
wall 28) on one side of a tooth and not on the
opposite side of the same tooth (i.e. in the first
inner wall 26). For purposes of the present
rejection the “base” is considered to be that portion
between the two roughly horizontal lines in the
reproduced Figure 5 below and the first and second
walls are considered to extend upward from the
base.
11
12
13
14
15
16
17
18
19
20
21
22
23
(Ans. 4-5). Figure 5 is a sectional view of an orthodontic appliance
including flanges 26, 28 connected by an isthmus 50 to
define tooth receiving troughs 22, 24.
The Appellant correctly points out that the Examiner’s interpretation
of the term “base” as used in claim 1 is unreasonable. (See Reply Br. 2-3).
For example, claim 1 recites “a slot in the base wherein the slot is defined
between the first wall and the second wall.” The slot defined between the
first and second walls can be in the base only if the first and second walls are
part of the base.
Bergersen describes the wire member 104 as being “molded into the
interior of the appliance.” (Bergersen, col. 10, ll. 4-7). When the term
“base” is properly interpreted as including the buccal flange 94 (see
10
Appeal 2009-007487
Application 10/665,441

1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
Bergersen, figs. 13 and 14), the wire member 104 does not extend vertically
from (that is, out of) the base. The Examiner identifies no other structure
disclosed by Bergersen which might correspond to the wire recited in claim
1.
Claim 14 recites a method for correcting a dentition. The method
includes the step of “applying pressure to one side of the tooth with a wire
embedded within the base wherein the wire extends vertically from the base
and contacts the first tooth only on one side of the first tooth.” Claim 58
recites a dental appliance. The dental appliance includes “a wire embedded
within the base wherein the wire extends vertically from the exterior surface
of the generally U-shaped base toward a tooth when the base is worn by a
user.” Claim 68 recites a method for treating a malocclusion in a mouth of a
user. The method includes the step of “contacting the canine type tooth with
a wire embedded in the base wherein the wire extends from the base and
contacts the canine type tooth only on one side of the canine type tooth.”
Interpreting the term “base” as used in claims 14, 58 and 68
consistently with the usage of the term in claim 1, see Rexnord Corp. v.
Laitram Corp., 274 F.3d 1336, 1342 (Fed. Cir. 2001)(“[A] claim term
should be construed consistently with its appearance . . . in other claims of
the same patent.”), the wire member 104 does not extend vertically from the
base. The Examiner identifies no other structure disclosed by Bergersen
which might correspond to the wire recited in claim 14, claim 58 or claim
68.
Claim 35 recites a dental appliance. The dental appliance includes “a
wire embedded within the base wherein the wire extends vertically from a
top surface of the second wall toward the teeth when the base is worn by the
11
Appeal 2009-007487
Application 10/665,441

1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
user wherein the wire is shaped to contact a labial side of the first tooth.”
The wire member 104 does not extend vertically from (that is, out of) either
the buccal flange 94 or the opposite, lingual flange. The Examiner identifies
no other structure disclosed by Bergersen which might correspond to the
wire recited in claim 35.
Bergersen does not disclose each and every limitation of independent
claims 1, 14, 35, 58 and 68. Since claims 2-6 depend from claim 1; claims
16, 17, 19 and 20 depend from claim 14; claims 36-39, 41 and 42 depend
from claim 35; claims 59-62 depend from claim 58; and claims 69-73
depend from claim 68, we do not sustain the rejections of claims 1-6, 14, 16,
17, 19, 20, 35-39, 41, 42, 58-62 and 68-73 under § 102(b) as being
anticipated by Bergersen.
Claim 7 depends from claim 1. In rejecting claim 7 under § 103(a),
the Examiner concludes that it would have been obvious “to have embedded
the wire in the internal wall of the appliance in order to push the inner side
of the patient’s teeth.” (Ans. 8). Bergersen fails to disclose any wire
extending vertically from the base. The Examiner’s reasoning does not
persuasively explain why one of ordinary skill in the art might have had
reason to provide such a wire in the absence of evidence that the use of such
a wire to apply pressure to a patient’s teeth was known. We do not sustain
the rejection of claim 7 under § 103(a) as being unpatentable over
Bergersen.
Claim 43 depends from claim 35. The Examiner concludes that it
would have been obvious to provide an appliance with a vertical slit on the
exterior surface as recited in claim 43. (See Ans. 8). The Examiner’s
reasoning does not remedy the deficiencies in the disclosure of Bergersen
12
Appeal 2009-007487
Application 10/665,441

1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
identified in connection with the rejections of claim 35. We do not sustain
the rejections of claim 43 under § 103(a) as being unpatentable over
Bergersen.
Claim 15 depends from claim 14. Claim 40 also depends from claim
35. Andrews discloses an orthodontic positioner 10 with molded
depressions 12a-12c. Figure 3 of Andrews depicts strips of suction devices
14, 16 located to confront inner and outer surfaces of a row of teeth when
the positioner is worn. (See Andrews, col. 2, ll. 59-67). The Examiner fails
to explain persuasively how the teachings of Andrews remedy the
deficiencies in the disclosure of Bergersen identified in connection with the
rejections of claim 14 and 35. (See Ans. 9). We do not sustain the rejection
of claims 15 and 40 under § 103(a) as being unpatentable over Bergersen
and Andrews.
Claim 6 depends from claim 1. Claim 42 depends from claim 35.
Watson discloses an interocclusal dental appliance including a relatively
hard occlusal layer which is formed from a first material and joined to a
jacketing section formed from a second material. (Watson, col. 3, ll. 45-48
and col. 3, l. 60 – col. 4, l. 2). The Examiner fails to explain persuasively
how the teachings of Watson remedy the deficiencies in the disclosure of
Bergersen identified in connection with the rejections of claims 1 and 35.
(See Ans. 10). We do not sustain the rejections of claims 6 and 42 under
§ 103(a) as being unpatentable over Bergersen and Watson.
13
Appeal 2009-007487
Application 10/665,441

1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
The Rejections of Claims 44-51 and 85-87 under § 102(b) as being
anticipated by Bergersen; and the Rejections of Claims 85-87 under
§ 103(a) as being unpatentable over Bergersen
Claims 44 and 85 recite dental appliances. The dental appliance of
claim 44 includes “a wire embedded within the base wherein the wire is
shaped to contact only a labial side of one of the teeth.” The dental
appliance of claim 85 includes “a wire embedded in the base wherein the
wire extends from the outer surface of one of the sockets wherein the wire
contacts the first tooth and further wherein the wire extends from only one
side of the socket.” The Examiner finds that the limitations requiring the
wires to “contact” one of the teeth are met “by the wire 104 of Bergersen
′420, which runs immediately adjacent the tooth sockets (Figure 13) and
contacts at least a first tooth through an apparent thin layer of plastic.” (Ans.
10-11).
The ordinary usage of the term “contact” is limited to “union or
junction of body surfaces: a touching or meeting.” (WEBSTER’S THIRD NEW
INT’L DICTIONARY (1971)(“contact,” entry 1, def. 1a). The Examiner points
to no broader usage in the Specification. Bergersen describes the wire
member 104 as being “molded into the interior of the appliance.”
(Bergersen, col. 10, ll. 4-7). The Examiner provides no sound basis for
belief that Bergersen’s wire member 104 contacts any tooth in the sense of
touching or meeting the tooth. Neither does the Examiner identify another
structure disclosed by Bergersen which might correspond to the wire recited
in claim 44 or claim 85.
Bergersen does not disclose each and every limitation of claims 44
and 85. Since claims 45-51 depend from claim 44 and claims 86 and 87
depend from claim 85, we do not sustain the rejections of claims 44-51 and
14
Appeal 2009-007487
Application 10/665,441

1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
85-87 under § 102(b) as being anticipated by Bergersen. Although the
Examiner has entered a hybrid 102(b)/103(a) rejection against claims 85-87
over Bergersen, the Examiner fails to explain how the subject matter of
claims 85-87 might have been obvious if the claims are not anticipated by
Bergersen. We do not sustain the rejections of claims 85-87 under § 103(a)
as being unpatentable over Bergersen.

DECISION
We AFFIRM the Examiner’s decision rejecting claims 8-13, 52-57,
63-67 and 74-84.
We REVERSE the Examiner’s decision rejecting claims 1-7, 14-20,
35-51, 58-62, 68-73 and 85-87.
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).

17
18
19
20
21
22
23
24
AFFIRMED-IN-PART

Klh

PATENTS+TMS, P.C.
2849 ARMITAGE AVE.
CHICAGO, IL 60647
15