Ex Parte Bergersen

Board of Patent Appeals and Interferences

Sep 18, 2007

10348719 (B.P.A.I. Sep. 18, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte EARL O. BERGERSEN
____________

Appeal 2007-3494
Application 10/348,719
Technology Center 3700
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Decided: September 18, 2007
____________

Before TONI R. SCHEINER, DEMETRA J. MILLS, and
NANCY J. LINCK, Administrative Patent Judges.
MILLS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims 1-7. We have
jurisdiction under 35 U.S.C. § 6(b). Claims 8-20 are indicated by the
Examiner to contain allowable subject matter. (Answer 2.) Claims 21-23
have been withdrawn from consideration by the Examiner as directed to a
non-elected invention. (Id.)
Appeal 2007-3494
Application 10/348,719

Representative claim 1 follows.
1. A wafer for taking an impression of upper teeth and lower
teeth of a mouth, the wafer comprising:
a form which fits inside the mouth wherein the form is made
from a material capable of being bitten creating a deformation of
the form wherein the deformation corresponds to the upper teeth
and the lower teeth of the mouth wherein the form retains the
deformation following removal from the mouth wherein diagnostic
information is obtained from the deformation of the form wherein
a size of an orthodontic appliance is based on the diagnostic
information from the form.

Cited References:
Millstein US 4,786,254 Nov. 22, 1988
Diesso US 5,503,552 Apr. 2, 1996

Grounds of Rejection1
Claims 1-6 stand rejected under 35 U.S.C. § 102(b) as anticipated by
Diesso.
Claims 1 and 7 stand rejected under 35 U.S.C. § 102(b) as anticipated
by Millstein.

DISCUSSION
Background
"The present invention generally relates to an apparatus, a system and
a method that provides a dental diagnosis and/or a dental appliance to a user.
More specifically, the present invention provides an apparatus, a system and
a method that allows one or more users to have a portion of their mouths

1 A rejection of claims 8-20 under 35 U.S.C. § 103 has been withdrawn by
the Examiner. (Answer 3.)
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Application 10/348,719

examined and subsequently receive a diagnosis of their medical conditions.
The present invention further provides an apparatus, a system and a method
for one or more users to receive a corrective dental apparatus depending on
their medical conditions." (Specification 1.)

Anticipation
Diesso
Claims 1-6 stand rejected under 35 U.S.C. § 102(b) as anticipated by
Diesso. We select claim 1 as representative of the rejection before us since
Appellant has not separately argued the claims. 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner finds that

Diesso shows a form 10 for taking an impression of upper and
lower teeth (see Fig. 6) comprising a form, shaped to
correspond to the shape of the upper and lower teeth, which fits
inside the mouth and is made form [sic] a material capable of
being bitten to create a deformation of the form corresponding
to the upper and lower teeth, wherein the form retains the
deformation upon removal from the mouth. The form is flat in
an area which contacts the upper teeth. . . . As to claim 3, note
the wall 24 which contacts the upper teeth (Fig. 6). As to claim
6, note that the form is constructed of a pressure-sensitive film
26.

(Answer 3-4.)

The standard under § 102 is one of strict identity. "Under 35 U.S.C.
§ 102, every limitation of a claim must identically appear in a single prior art
reference for it to anticipate the claim." Gechter v. Davidson, 116 F.3d
1454, 1457, 43 USPQ2d 1030, 1032 (Fed. Cir. 1997). "Every element of the
claimed invention must be literally present, arranged as in the claim."
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Richardson v. Suzuki Motor Co., Ltd., 868 F.2d 1226, 1236, 9 USPQ2d
1913, 1920 (Fed. Cir. 1989). We agree that the Examiner has provided
sufficient evidence to support a prima facie case of anticipation, as the prior
art describes each claimed element.
Appellant contends that "[n]owhere does Diesso disclose that
diagnostic information is obtained from the deformation of the form." (Br.
8.) Appellant further argues that Diesso does not disclose that a size of an
orthodontic appliance is based on the diagnostic information from the form.
(Id.)
The Examiner, however, considers the claim clause, "wherein
diagnostic information is obtained from the deformation of the form wherein
a size of an orthodontic appliance is based on the diagnostic
information from the form" to be a recitation of the intended use of the
claimed wafer. (Answer 5.) We agree with the Examiner that a recitation of
the intended use of the claimed invention must result in a structural
difference between the claimed invention and the prior art in order to
patentably distinguish the claimed invention from the prior art. If the prior
art structure is capable of performing the intended use, then it meets the
claim. See In re Casey, 370 F.2d 576, 580, 152 USPQ 235, 238 (CCPA
1967) and In re Otto, 315 F.2d 937, 940,136 USPQ 458, 459 (CCPA 1963).
In the present case the prior art impression is capable of being used for
diagnosis of dental conditions and sizing of an orthodontic appliance.
Furthermore, Diesso actually discloses that its model or impression
material can be used for the purpose of appliance or dental prosthetic device
fabrication. (Diesso, col. 4, ll. 62-65.) Diesso further indicates that dental
impression techniques are used to make master models from which
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functional dental devices are designed. (Diesso, col. 2, ll. 17-30.) Thus, we
find that diagnostic information is obtained from the device of Diesso to
prepare and size dental prosthetic devices.
In view of the above, we affirm the anticipation rejection.

Millstein
Claims 1 and 7 stand rejected under 35 U.S.C. § 102(b) as anticipated
by Millstein.
The Examiner finds that

Millstein discloses a form for taking an impression of upper and
lower teeth (column 2, lines 21-25) comprising a form which
fits inside the mouth and is made form [sic] a material capable
of being bitten to create a deformation of the form
corresponding to the upper and lower teeth (column 2, lines 25-
26), wherein the form retains the deformation upon removal
from the mouth. As to claim 7, note that the form is constructed
from a photo-sensitive film (column 2, lines 20-21). . . . If the
prior art structure is capable of performing the intended use,
then it meets the claim

(Answer 4.)

We agree that the Examiner has provided sufficient evidence to
support a prima facie case of anticipation.
Appellant contends Millstein fails to disclose a form that retains the
deformation following removal from the mouth. (Br. 12.) The Examiner
responds that Millstein discloses the "strain pattern is caused by permanent
local deformations in the wafer." (Answer 7 (citing col. 2, ll. 25-26).) Thus,
it would reasonably appear that the form of Millstein retains the deformation
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following removal from the mouth, and we are not persuaded by Appellant’s
argument.
Appellant argues that Millstein fails to disclose a wafer wherein
diagnostic information is obtained from the deformation of the form wherein
a size of an orthodontic appliance is based on the diagnostic information
from the form. (Br. 12.)
Millstein, however, discloses that their invention provides a
permanent record of an occlusal position useful for the diagnosis and
treatment of various dental problems, such as for periodontics, orthodontics
and restorative dentistry. (Millstein, col. 1, ll. 25-30.) Other uses include
the fabrication of dental bridges and prosthetic replacements. (Id. at ll. 32-
38.) Therefore, the occlusal strips described in Millstein are used for
diagnostic information and for the sizing of orthodontic applicances, as
claimed.
Appellant essentially claims a benefit or characteristic of an invention
otherwise in the prior art, and it is well settled that “the new realization alone
does not render the old invention patentable.” Perricone v. Medicis Pharm.
Corp., 432 F.3d 1368, 1377, 77 USPQ2d 1321, 1327 (Fed. Cir. 2005).
In view of the above, we affirm the anticipation rejection.

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CONCLUSION
The anticipation 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).

AFFIRMED

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