Ex Parte Bergersen

Board of Patent Appeals and Interferences

Aug 28, 2012

10447099 (B.P.A.I. Aug. 28, 2012)

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.
10/447,099 05/28/2003 Earl O. Bergersen BER-P-03-041 3343
29013 7590 08/29/2012
PATENTS+TMS, P.C.
2849 W. ARMITAGE AVE.
CHICAGO, IL 60647
EXAMINER
EIDE, HEIDI MARIE
ART UNIT PAPER NUMBER
3732
MAIL DATE DELIVERY MODE
08/29/2012 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 2010-002795
Application 10/447,099
Technology Center 3700
________________

Before STEVEN D.A. McCARTHY, PHILLIP J. KAUFFMAN and
MICHELLE R. OSINSKI, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE 1
The Appellant1 appeals under 35 U.S.C. § 134 from the Examiner’s 2
final decision rejecting claims 1-5, 30-32, 44, 46-51, 53-62, 69-71, 73, 74, 3
76-88 and 93-110. The Examiner has withdrawn claims 6-29, 33-43, 45, 52, 4
63-68, 72, 75 and 89-92 from consideration. We have jurisdiction under 355

1 The Appellant identifies the real party in interest as Ortho-Tain, Inc.
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2
U.S.C. § 6(b). 1
We sustain the rejections of: 2
claims 1, 2 and 4 under 35 U.S.C. § 102(b) as anticipated 3
by Martz (US 4,793,803, iss. Dec. 27, 1988); 4
claims 30-32, 77-79 and 93-97 under § 102(b) as 5
anticipated by Bergersen (US 4,139,944, iss. Feb. 20, 1979); 6
claims 44, 46-51, 58-61, 69-71, 73, 74 and 77-80 under 7
§ 102(b) as anticipated by Chishti (US 5,975,893, iss. Nov. 2, 8
1999); and 9
claims 81 and 84 under 35 U.S.C. § 102(e) as anticipated 10
by Chott (US 6,302,686 B1, iss. Oct. 16, 2001). 11
We do not sustain the rejections of: 12
claims 3 and 5 under § 102(b) as anticipated by Martz; 13
claims 44, 46-51, 58-62, 69-71, 73, 74, 76 and 80 under 14
§ 102(b) as anticipated by Bergersen; 15
claims 30-32, 62, 76 and 93-97 under § 102(b) as 16
anticipated by Chishti; and 17
claims 53-57, 82, 83, 85-88 and 98-110 under § 102(e) 18
as anticipated by Chott. 2 19

2 The Examiner in the Answer withdrew a rejection of claims 81-88
under 35 U.S.C. § 112, second paragraph. (Ans. 3). Although the rejection
of claims 105-110 under § 102(e) as anticipated by Chott was designated a
new ground of rejection in the Answer (Ans. 3), the Appellant discussed the
rejection in the Appeal Brief (see App. Br. 39-40).
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Claim 1 is illustrative of the claims on appeal: 1
1. A generally U-shaped orthodontic appliance 2
worn on teeth in a mouth of a patient wherein at 3
least one of the teeth require correcting and further 4
wherein the orthodontic appliance has a plurality 5
of layers of material, the orthodontic appliance 6
comprising: 7
a base sized to fit the teeth of the patient 8
wherein the base has an interior layer constructed 9
from a first material and an exterior layer formed 10
around the interior layer wherein the exterior layer 11
encloses the interior layer wherein the exterior 12
layer is constructed from a second material 13
wherein the first material is harder than the second 14
material; and 15
a first socket formed within the exterior 16
layer wherein the first socket is sized to receive 17
one or more teeth of the patient wherein the 18
exterior layer surrounds at least one of the teeth of 19
the patient wherein the first socket causes 20
movement of a position of at least one of the teeth. 21
Only issues and findings of fact contested by the Appellant will be 22
addressed. See Ex Parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI 2010). 23
Nevertheless, the opinion will address each rejection of an independent 24
claim and each separately-argued rejection of a claim dependent from an 25
independent claim subject to an affirmed rejection. 26
27
Rejection of Claims 1-5 under § 102(b) as Anticipated by Martz 28
The Appellant separately argues the rejections of claims 1, 2, 3 and 5. 29
(App. Br. 15-17). Claim 4 stands or falls with independent claim 1. 30
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Claim 1 1
The Appellant contends that Martz fails to describe an orthodontic 2
appliance including several limitations recited in the body of claim 1. (See 3
App. Br. 15-16; Reply Br. 2-3). The Examiner makes specific findings as to 4
which passages and drawing figures of Martz describe the limitations of 5
claim 1 which the Appellant asserts to be missing from Martz’s disclosure. 6
(See Ans. 4 and 5-6). 7
The Appellant fails to provide a persuasive explanation why the 8
Appellant believes the specific findings made by the Examiner to be in error. 9
(See App. Br. 15-18; Reply Br. 2-4). The Appellant’s quotations from the 10
language of claim 1, prefaced by the bald assertion that “[n]owhere does 11
Martz disclose” the quoted limitations (see, e.g., App. Br. 15), do not explain 12
persuasively how the Examiner’s findings might be erroneous. Cf. In re 13
Lovin, 652 F.3d 1349, 1356 n.8 (Fed. Cir. 2011)(quoting Fleming et al., 14
Effective Appellate Advocacy in Ex Parte Appeals Before the Board of 15
Patent Appeals & Interferences 4-5 (Apr. 2010)). Furthermore, the 16
Appellant fails to explain adequately how the passages at column 4, lines 56-17
58 and 61-63, might imply error in the Examiner’s findings. (See App. Br. 18
16; Reply Br. 3). The Examiner finds that Martz’s hard plastic clasp portion 19
37 (see Martz, col. 4, ll. 30-33) and flexible intermediate portion 39 (see 20
Martz, col. 4, ll. 35-36) correspond respectively to the interior and exterior 21
layers recited in claim 1. (Ans. 4). The passages of Martz at column 4, lines 22
56-58 and 61-63, which the Appellant quotes at page 16 of the Appeal Brief, 23
describe the occlusal surface 42 defined by the relatively rigid backbone 24
portion 41 rather than the clasp portion 37 or the flexible intermediate 25
portion 39. 26
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Therefore, we adopt and incorporate by reference the Examiner’s 1
findings and reasoning set forth in the Answer at page 4, lines 3-8. In 2
addition we adopt and incorporate by reference the Examiner’s findings and 3
reasoning starting at page 5, line 12 (“Appellant argues that Martz does not 4
disclose . . .”) through page 6, line 2 (“. . . from having such additional 5
structure.”). In view of those findings and that reasoning, we sustain the 6
Examiner’s rejection of claims 1 and 4 under § 102(b) as anticipated by 7
Martz. 8
9
Claim 2 10
Claim 2 recites the “orthodontic appliance of Claim 1 further 11
comprising: a second socket formed within the interior layer wherein the 12
second socket maintains the position of at least one of the teeth.” The 13
Appellant asserts that “Martz merely discloses a single tooth clasp portion 14
formed within the intermediate portion 39.” (App. Br. 16). Martz describes 15
“a tooth clasp portion having individual clasps [that is, sockets] shaped to 16
grip individual teeth,” however. (Martz, col. 9, ll. 27-29 (claim 1)). Figures 17
2 and 3 indicate that these individual clasps or sockets are formed within the 18
interior and exterior layers. The Appellant provides no persuasive 19
explanation as to why the description of Martz, including claim 1 of Martz, 20
fails to anticipate the subject matter of claim 2. 21
Therefore, we adopt and incorporate by reference the Examiner’s 22
findings and reasoning on page 6, lines 3-10 of the Answer (“Appellant 23
further argues that Martz does not disclose a second socket . . . Ex parte 24
Masham, 2 USPQ2d 1647 (1987).”). In view of those findings and that 25
reasoning, we sustain the Examiner’s rejection of claim 2 under 26
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§ 102(b) as anticipated by Martz. 1
2
Claims 3 and 5 3
Claim 3 recites the “orthodontic appliance of Claim 1 further 4
comprising: walls extending from the exterior layer.” Claim 5 recites the 5
“orthodontic appliance of Claim 1 further comprising: walls extending from 6
the interior layer.” The Appellant points out that Martz fails to show any 7
walls extending from either the clasp portion 37 or the flexible intermediate 8
portion 39. (App. Br. 17). The Examiner responds by finding that Figure 19 9
of Martz “clearly” shows that both the clasp portion 37 and the flexible 10
intermediate portion 39 include walls which extend downwardly along the 11
sides of the teeth. (Ans. 6). Even assuming the truth of these findings for 12
purposes of this appeal only, neither finding demonstrates that Martz 13
discloses walls extending from an interior or exterior layer. We do not 14
sustain the rejection of claims 3 and 5 under § 102(b) as anticipated by 15
Martz. 16
17
Rejection of Claims 30-32, 44, 46-51, 58-62, 69-71, 73, 74, 76-80 and 93-97 18
under § 102(b) as Anticipated by Bergersen or Chishti 19
The Appellant separately argues the rejections of claims 30-32, 44, 20
49, 58, 69, 73, 77, 80 and 93 as anticipated by Bergersen. (App. Br. 18-25). 21
The remaining claims rejected as anticipated by Bergersen stand or fall with 22
the independent claims from which they ultimately depend. 23
The Appellant separately argues the rejections of claims 30, 44, 49,24
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58, 62, 69, 73, 76, 77 and 93 as anticipated by Chishti.3 (App. Br. 26-32). 1
The remaining claims rejected as anticipated by Chishti stand or fall with the 2
independent claims from which they ultimately depend. 3
4
Claims 30 and 93 as Anticipated by Bergersen 5
Claim 30 recites an orthodontic appliance including: 6
a first socket in the base wherein the first socket 7
receives a first tooth and a second tooth of the 8
patient wherein the first socket is sized to receive 9
two or more teeth of the patient . . . wherein the 10
base causes the correction of the first tooth from 11
the incorrect position to the correct position . . . . 12
Claim 93 recites a dental appliance including “sockets within the base 13
wherein one of the sockets are preformed to receive more than one tooth of 14
the patient wherein the sockets receive the dentition of the patient.” 15
The Examiner finds that Bergersen “discloses a generally U-shaped 16
orthodontic appliance 20 having a base formed of a single material and a 17
first socket therein 22a-22b sized to receive two or more teeth of a patient 18
(see figures 2 and 6-8).” (Ans. 4). Bergersen itself describes “a 19
conventional orthodontic positioner” (Bergersen, col. 5, ll. 20-22) in which 20
[b]oth the upper and lower tooth receiving surfaces 21
22 and 24 are provided with a plurality of tooth 22
receiving depressions or sockets such as 22a, 22b, 23
22c, 22d, 22e, and 22f, of different configurations 24
for receiving the different permanent teeth of the 25
mouth from the central incisors through the 26
cuspids and bicuspids, into the first molar, and half 27
of the second molar area. 28

3 The Appellant argues rejections of claims 90 and 100 under § 102(b)
as anticipated by Chishti. (App. Br. 28.) As presently advised, the
Examiner has not rejected claim 90 or claim 100 as anticipated by Chishti.
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(Bergersen, col. 5, ll. 39-45). The Appellant asserts that “Bergersen merely 1
discloses that each socket receives a single tooth” (App. Br. 21) and that 2
“Bergersen merely discloses a single socket shaped to correspond to a single 3
tooth in an incorrect position” (App. Br. 24). 4
We find by a preponderance of the evidence that the socket 22a of the 5
conventional orthodontic positioner depicted in Figures 2 and 6-8 of 6
Bergersen is sized to receive both of a patient’s upper central incisors. 7
Neither Figure 2 nor any of Figures 6-8 shows any contour line interrupting 8
the continuity between the left and right sides of the socket 22a which would 9
receive the upper left and right central incisors, respectively. Although 10
Bergersen refers to the structures identified by reference numerals 22a, 22b 11
as separate sockets (see, e.g., Bergersen, col. 5, ll. 39-45), Bergersen draws 12
no similar distinction between the left and right sides of socket 22a. The 13
Appellant provides no persuasive explanation as to why one of ordinary skill 14
in the art might interpret Figures 2 and 6-8 as depicting a plurality of sockets 15
for receiving the upper central incisors. Since the Examiner correctly finds 16
that Bergersen describes an orthodontic appliance including a first socket 17
sized to receive two or more teeth of the patient, we sustain the rejection of 18
claims 30 and 93-97 under § 102(b) as anticipated by Bergersen. 19
20
Claims 31 and 32 as Anticipated by Bergersen 21
Claim 31 recites the “orthodontic appliance of Claim 30 further 22
comprising: a second socket in the base to receive one of the teeth in the 23
correct position.” Claim 32 recites the “orthodontic appliance of Claim 30 24
wherein the first socket is shaped to correspond to a plurality of the teeth in 25
the incorrect position.” The Examiner correctly finds that, the appliance 26
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described by Bergersen “being an orthodontic positioner[,] is designed to 1
move the teeth of the patient.” (Ans. 6-7). More specifically, we find that 2
Bergersen describes the use of an orthodontic positioner “for depressing the 3
incisor teeth while concurrently guiding the permanent bicuspids and 4
permanent canine teeth to their proper positions.” (Bergersen, col. 2, ll. 16-5
21; see also id., col. 3, l. 66 – col. 4, l. 2). Bergersen also describes the 6
orthodontic positioner as including “tooth receiving depressions for teeth 7
which do not even exist, namely[,] the permanent canine and bicuspid 8
teeth.” (Bergersen, col. 3, ll. 13-18). These findings imply that the socket 9
22a of Bergersen’s orthodontic positioner is designed to receive the patient’s 10
upper central incisors in an incorrect position and to depress the incisors 11
toward the correct position. The findings also imply that Bergersen’s 12
orthodontic positioner includes a socket for receiving at least one permanent 13
bicuspid or permanent canine tooth in the correct position once the 14
permanent bicuspid or permanent canine tooth erupts. Therefore, we sustain 15
the rejection of claims 31 and 32 under § 102(b) as anticipated by Bergersen. 16
17
Claims 30 and 93 as Anticipated by Chishti 18
The Examiner fails to provide a factual basis for the ultimate finding 19
that Chishti describes an orthodontic appliance wherein a first socket is sized 20
to receive two or more teeth of the patient. (See, e.g., Ans. 4-5 and 13-17 21
see also App. Br. 26-27). We do not sustain the rejection of claims 30-32 22
and 93-97 under § 102(b) as anticipated by Chishti. 23
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Claim 77 as Anticipated by Bergersen 1
Claim 77 recites a dental appliance including “sockets within the base 2
wherein the sockets are customized to receive one or more teeth of the 3
patient.” The Appellant seeks to distinguish Bergersen on the basis that 4
“Bergersen merely discloses that each socket receives a single tooth.” (App. 5
Br. 21).4 The alternative term “one or more teeth” is sufficiently broad to 6
encompass a socket capable of receiving one tooth, however.5 Pursuant to 7
this interpretation of claim 77, we sustain the rejection of claims 77-79 under 8
§ 102(b) as anticipated by Bergersen. 9
10
Claim 77 as Anticipated by Chishti 11
In addition, claim 77 recites a dental appliance “wherein one of the 12
sockets moves one of the teeth of the patient from the incorrect position to a 13
predicted position in the dentition of the patient wherein the predicted 14
position corrects the incorrect position of one of the teeth of the patient.” 15
We adopt and incorporate by reference the Examiner’s findings as set forth 16

4 The Appellant does not appear to argue that Bergersen fails to
describe a dental appliance including the limitation “wherein the sockets are
customized to receive one or more teeth of the patient” as recited in claim 77
other than to merely point out what the claim recites. (Emphasis added.)
Given the detail in which the Appellant has framed the arguments in the
Appeal Brief and Reply Brief; and the separate argument directed to the
rejection of dependent claim 80, we find that the Appellant must have
waived this argument intentionally with respect to claim 77. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).

5 Anticipation may be found if “the claims under attack, as construed by
the court, ‘read on’ something disclosed in” a prior art reference. Kalman v.
Kimberly-Clark Corp., 713 F.2d 760, 772 (Fed. Cir. 1983). Where a claim
uses alternative language, anticipation may be found where either recited
alternative “reads on” a structure described by the prior art reference.
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in the Answer at page 5, lines 1-3 and at page 13, lines 17-22. These 1
findings are supported by the disclosure of Chishti at column 2, line 64 2
through column 3, line 4; column 3, lines 7-11 and 39-42; and Figure 1C. In 3
particular, the passage of Chishti at column 3, lines 39-42 supports the 4
Examiner’s finding that the final positioner satisfies the limitation quoted at 5
the beginning of this paragraph. 6
The passages of Chishti quoted by the Appellant on page 28 of the 7
Appeal Brief are consistent with the Examiner’s findings. We sustain the 8
rejection of claims 77-80 under § 102(b) as anticipated by Chishti. 9
10
Claims 44, 49, 58, 69, 73 and 80 as Anticipated by Bergersen 11
Claim 44 recites a dental appliance including a first socket, “wherein 12
the first socket is customized to a shape of at least one of the teeth of the 13
patient.” Claim 49 recites a dental appliance including “first sockets within 14
the base wherein the first sockets are duplications of one or more teeth of the 15
patient.” Claim 73 recites a dental appliance including “first sockets within 16
the base wherein the first sockets are customized to receive one or more 17
teeth of the patient.” Claim 80 recites the “dental appliance of claim 77 18
wherein the sockets are duplications of the teeth of the patient.” 19
The Examiner fails to provide a factual basis for the ultimate finding 20
that Bergersen anticipates claims 44, 49, 73 and 80. In particular, the 21
Examiner has not found sufficient facts to establish that Bergersen describes 22
an orthodontic positioner including sockets customized either to receive one 23
or more teeth of a patient or to a shape of at least one of the teeth of the 24
patient. Neither has the Examiner found sufficient facts to establish that 25
Bergersen describes an orthodontic positioner including sockets that are 26
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duplications, that is, copies, of the teeth of the patient. (See WEBSTER’S 1
THIRD NEW INT’L DICTIONARY (G&C Merriam Co. 1971) (“duplication,” 2
def. 2)(defining a “duplication” as a “copy”). The Examiner finds that 3
Bergersen discloses preforming a socket within a base “based on a predicted 4
size of unerupted teeth of the patient.” (Ans. 4, citing Bergersen, col. 3, ll. 5
13-18 and col. 6, ll. 45-64). This finding does not provide a basis for an 6
additional finding that Bergersen’s orthodontic positioner includes each and 7
every limitation of claim 44, claim 49, claim 73 or claim 80, however. 8
Claim 58 recites a dental appliance including sockets, 9
wherein at least one of the sockets is at a predicted 10
position wherein the predicted position is based on 11
sizes of existing teeth of the patient and on 12
standards of teeth and mean differences of teeth 13
wherein the standards of teeth and the means of 14
teeth are calculated manually or computer 15
programs utilizing data wherein the data is 16
collected manually, is collected from charts or is 17
collected from laser images. 18
Claim 69 recites a dental appliance including second sockets, “wherein the 19
second sockets are determined by crooked teeth manually re-arranged from a 20
model of the mouth of the patient or a computer from a digital three-21
dimensional image of the mouth of the patient.” 22
Since the Examiner has not found sufficient facts to establish that 23
Bergersen describes an orthodontic positioner including sockets customized 24
to a shape of at least one of the teeth of the patient, the Examiner lacks a 25
sound basis for finding that second sockets of Bergersen’s orthodontic 26
positioner are determined by crooked teeth manually re-arranged from a 27
model of the mouth of the patient or a computer from a digital three-28
dimensional image of the mouth of the patient as recited in claim 69. 29
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Neither has the Examiner provided a sound basis for finding that predicted 1
positions of sockets of the preformed positioner disclosed by Bergersen are 2
based on standards of teeth and mean distances of teeth calculated as recited 3
in claim 58. 4
The Examiner correctly states the law concerning the patentability of 5
claims including product-by-process limitations. (Ans. 7-8). In particular, 6
the Examiner correctly states that, 7
[o]nce the Examiner provides a rationale tending 8
to show that the claimed product appears to be the 9
same or similar to that of the prior art, although 10
produced by a different process, the burden shifts 11
to applicant to come forward with evidence 12
establishing an unobvious difference between the 13
claimed product and the prior art product. In re 14
Marosi, 710 F.2d 798, 802 (Fed. Cir. 1983). 15
(E.g., Ans. 7-8 (dual citation omitted)). The Examiner has not articulated a 16
persuasive rationale tending to show that the dental appliances with 17
customized sockets recited in claims 44 and 73, or that the dental appliance 18
wherein the sockets are duplications of the teeth of the patient as recited in 19
claim 80, are the same or similar to Bergersen’s preformed orthodontic 20
positioners, however. Since the Examiner has not articulated such a 21
rationale, the Appellant need not meet a burden of production to avoid 22
rejection of claims 44, 49, 58, 69, 73 and 80 for anticipation. 23
The Examiner has not proven that Bergersen anticipates claims 44, 49, 24
58, 69, 73 and 80. Therefore, we do not sustain the rejection of claims 44, 25
46-51, 58-62, 69-71, 73, 74, 76 and 80 under § 102(b) as anticipated by 26
Bergersen. 27
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Claims 44, 49 and 73 as Anticipated by Chishti 1
The ordinary usage of the term “customized” is sufficiently broad to 2
encompass structure built, fit or altered according to individual 3
specifications. (See WEBSTER’S THIRD NEW INT’L DICTIONARY (G&C 4
Merriam Co. 1971) (“customize”)). We adopt the Examiner’s finding that 5
the sockets of Chishti’s positioners “are made from scans of either the teeth 6
of the patient or of a cast of the patient’s teeth and thus are duplicates of the 7
patient’s teeth.” (Ans. 14). This finding is supported by the disclosure of 8
Chishti at column 9, lines 18-35 and at column 14, lines 37-48. Since 9
sockets of Chishti’s positioners are made from scans of either the teeth of the 10
patient or of a cast of the patient’s teeth, each such socket is customized to a 11
shape of at least one of the teeth, e.g., one tooth, of the patient so as to 12
receive one or more teeth of the patient. The conclusory arguments on page 13
12 of the Reply Brief are not persuasive of a structural difference between 14
Chishti’s positioners and the subject matter of claims 44, 49 and 73. We 15
sustain the rejection of claims 44, 46-51, 73 and 74 under § 102(b) as 16
anticipated by Chishti. 17
18
Claims 58 and 69 as Anticipated by Chishti 19
We adopt and incorporate by reference the Examiner’s findings in the 20
Answer at page 14, lines 12-14 (starting with “It is noted that the position 21
. . .” and ending with “. . . from the digital scans of the existing teeth.”); and 22
at page 14, line 17 through page 15, line 2 (starting with “First it is to be 23
noted . . .” and ending with “. . . would be determined by such movement.”). 24
These findings are supported by passages at column 5, lines 25-67 and 25
column 6, lines 12-37. These findings imply that Chishti’s intermediate and 26
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final positioners have second sockets determined by crooked teeth re-1
arranged by a computer from a digital three-dimensional image of the mouth 2
of the patient as recited in claim 69. 3
Furthermore, these findings imply that at least one of the sockets in 4
the intermediate or final positioner is at a predicted position. The findings 5
tend to show that the predicted positions of the socket would be the same or 6
similar to the positions that would be predicted based on sizes of existing 7
teeth of the patient and on standards of teeth and mean differences of teeth 8
as recited in claim 58. The findings also tend to show that the predicted 9
positions of the socket would be the same or similar to the positions that 10
would be predicted based on race-based anatomical standards for teeth or 11
mesio-distal standards for teeth, since the patient from whom the 12
measurements on which the predictions are based may be presumed to 13
conform to racial and ethnic standards. 14
The Appellant has not rebutted the Examiner’s findings with evidence 15
as set forth in Marosi. We sustain the rejection of claims 58-61 and 69-71 16
under § 102(b) as anticipated by Chishti. 17
18
Claims 62 and 76 as Anticipated by Chishti 19
The Appellant separately argues claims 62 and 76. (App. Br. 31-32). 20
Claim 62 recites the “dental appliance of Claim 58 wherein the sockets are 21
based on race-based anatomical standards for teeth or mesio-distal standards 22
for teeth.” Claim 76 recites the “dental appliance of Claim 73 wherein the 23
second sockets are based on standard shapes and standard sizes for teeth.” 24
The Examiner fails to provide a factual basis for the ultimate finding 25
that Chishti describes a dental appliance satisfying either recited limitation. 26
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Furthermore, the Examiner has not articulated persuasive reasoning tending 1
to show that any dental appliance satisfying the limitations recited in claims 2
62 and 76 are the same or similar to Bergersen’s preformed orthodontic 3
positioners. Since the Examiner has not articulated such reasoning, the 4
Appellant need not meet a burden of production to avoid rejection of claims 5
62 and 76 for anticipation. Therefore, we do not sustain the rejection of 6
claims 62 and 76 under § 102(b) as anticipated by Chishti. 7
8
Rejection of Claims 53-57, 81-88 and 98-110 under § 102(b) as Anticipated 9
by Chott 10
The Appellant separately argues the rejections of claims 53, 81-85, 98 11
and 104 as anticipated by Chott. (App. Br. 33-40). The remaining claims 12
rejected as anticipated by Chott stand or fall with the independent claims 13
from which they ultimately depend. 14
15
Claims 53 and 85 16
Claim 53 recites a dental appliance including a base, “wherein the 17
base has an interior made of a first material and an exterior formed around 18
the interior . . . wherein the exterior is made of a second material . . . and 19
further wherein the first material is harder than the second material.” Claim 20
85 recites a dental appliance including sockets within a base, “wherein at 21
least one of the sockets has an exterior made of a first material and an 22
interior made of a second material wherein the exterior is formed around the 23
interior wherein the first material is softer than the second material.” Chott 24
instead describes an interocclusal appliance or splint “made up of a liner 3 of 25
relatively soft material, and an outer shell 5 of a harder material.” (See 26
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Chott, col. 2, ll. 16-19; see also App. Br. 37). Figure 3 of Chott indicates 1
that the outer shell 5 is exterior to the liner 3. The Examiner provides no 2
factual basis for finding that Chott describes a dental appliance satisfying the 3
limitations of independent clams 53 and 85. We do not sustain the rejection 4
of claims 53-57 and 85-88 under §102(e) as anticipated by Chott. 5
6
Claim 81 7
Claim 81 recites a dental appliance including “sockets within the base 8
wherein at least one of the sockets receives one or more teeth of the patient.” 9
The Appellant appears to seek to distinguish Chott on the basis that Chott 10
does not describe a dental appliance satisfying this limitation. (See App. Br. 11
35-36). 6 The alternative term “one or more teeth” is sufficiently broad to 12
encompass a socket capable of receiving one tooth, however. (See Ans. 18). 13
Pursuant to this interpretation of claim 81, we sustain the rejection of claim 14
81 under § 102(e) as anticipated by Chott. 15
16
Claims 82, 98 and 104 17
Claim 82 recites the “dental appliance of Claim 81 wherein the base 18
automatically straightens the teeth of the patient.” Claim 98 recites an 19

6 The Appellant does not appear to argue that Chott fails to describe a
dental appliance including the limitation “wherein at least one of the sockets
has an exterior made of a first material and an interior made of a second
material wherein the exterior is formed around the interior wherein the first
material is softer than the second material” as recited in claim 81. Given the
detail in which the Appellant has framed the arguments in the Appeal Brief
and Reply Brief, we find that the Appellant must have waived this argument
intentionally with respect to claim 81. See 37 C.F.R. § 41.37(c)(1)(vii)
(2011).

Appeal No. 2010-002795
Application No. 10/447,099

18
orthodontic appliance including a base and “a slot formed in the base . . . 1
wherein the slot guides one of the teeth having the incorrect position into the 2
correct position.” Claim 104 recites a dental appliance including a base and 3
“a socket formed in the exterior layer of the base . . . wherein the exterior 4
layer of the base contacts the teeth to move one or more of the teeth to a 5
correct position.” 6
A claim reciting an apparatus may be anticipated by a reference 7
disclosing a device which includes each and every structural limitation in the 8
claim and which is capable of performing each and every functional 9
limitation in the claim. E.g., In re Schreiber, 128 F.3d 1473, 1478-79 (Fed. 10
Cir. 1997)(upholding the Board’s affirmance of a rejection under section 11
102(b) on the basis of a finding that a device disclosed in a prior art 12
reference was capable of performing a function which the appellant alleged 13
to distinguish the appellant’s apparatus from the prior art device). Where the 14
Examiner articulates a reason to believe that a prior art structure is 15
inherently capable of performing a functional limitation, the burden shifts to 16
the Appellant to produce evidence indicating that the prior art does not 17
possess that capacity. See In re Best, 562 F.2d 1252, 1254-55 (CCPA 1977). 18
In the present case, however, the Appellant points out that Chott 19
describes a splint for treating bruxism and temporomandibular joint 20
dysfunction syndrome. (See App. Br. 37 (citing Chott, col. 1, ll. 13-15)). 21
The Examiner has not articulated a persuasive reason to believe that Chott’s 22
splint must be capable of automatically straightening, guiding or moving 23
teeth toward a different position. Therefore, we do not sustain the rejection 24
of claims 82 and 98-110 under § 102(e) as anticipated by Chott. 25
26
Appeal No. 2010-002795
Application No. 10/447,099

19
Claim 83 1
Claim 83 recites the “dental appliance of Claim 81 wherein the 2
sockets are based on standard shapes and standard sizes for teeth.” The 3
Examiner fails to provide a factual basis for the ultimate finding that Chott 4
describes a dental appliance satisfying this limitation. Chott teaches 5
molding the liner 3 of the splint from a model of a patient’s teeth. (; see 6
Chott, col. 1, ll. 57-62 and col. 3, ll. 1-23; see also App. Br. 39). 7
Furthermore, the Examiner has not articulated a reason tending to show that 8
a dental appliance satisfying the limitations recited in claim 83 is the same or 9
similar to Chott’s splint. Since the Examiner has not articulated such a 10
rationale, the Appellant need not meet a burden of production to avoid 11
rejection of claim 83 for anticipation. Therefore, we do not sustain the 12
rejection of claim 83 under § 102(b) as anticipated by Chott. 13
14
Claim 84 15
Claim 84 recites the “dental appliance of Claim 81 wherein the 16
sockets are duplications of the teeth of the patient.” Chott teaches molding 17
the liner 3 of the splint from a model of a patient’s teeth. (App. Br. 39; see 18
Chott, col. 1, ll. 57-62 and col. 3, ll. 1-23). Therefore, we sustain the 19
rejection of claims 84 under § 102(e) as anticipated by Chott. 20
21
DECISION 22
We AFFIRM the Examiner’s decision rejecting claims 1, 2, 4, 30-32, 23
44, 46-51, 58-61, 69-71, 73, 74, 77-81, 84 and 93-97. 24
We REVERSE the Examiner’s decision rejecting claims 3, 5, 53-57, 25
62, 76, 82, 83, 85-88 and 98-110. 26
Appeal No. 2010-002795
Application No. 10/447,099

20
No time period for taking any subsequent action in connection with 1
this appeal may be extended under 37 C.F.R. § 1.136(a) (2007). 2
3
AFFIRMED-IN-PART 4
5
6
7
Klh 8