Ex Parte Boghosian

Board of Patent Appeals and Interferences

Jun 13, 2012

11153132 (B.P.A.I. Jun. 13, 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.
11/153,132 06/15/2005 Alan Ara Boghosian LDC-993 (08563-0173) 8461
65074 7590 06/14/2012
MCNEES WALLACE & NURICK, LLC
100 PINE STREET
P.O. BOX 1166
HARRISBURG, PA 17108-1166
EXAMINER
SINGH, SUNIL K
ART UNIT PAPER NUMBER
3732
MAIL DATE DELIVERY MODE
06/14/2012 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 ALAN ARA BOGHOSIAN
__________

Appeal 2011-003216
Application 11/153,132
Technology Center 3700
__________

Before MELANIE L. McCOLLUM, JEFFREY N. FREDMAN, and
STEPHEN WALSH, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
for taking a dental impression. The Examiner rejected the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

Appeal 2011-003216
Application 11/153,132

2
Statement of the Case
Background
“It is known to apply a wetting agent to a tooth preparation prior to
the taking of an impression with hydrocolloid impression materials such as
polyethers” (Spec. 1 ¶ 0002). The Specification teaches that a “drawback to
the use of . . . dental impression materials has been their hydrophobicity,
making it difficult to take precise impressions of the details of the tooth
and/or hard tissue when it is wetted” (Spec. 1 ¶ 0002).
The Claims
Claims 1-5, 11-18, and 20-24 are on appeal. Claim 1 is representative
and reads as follows:
1. A method of taking a dental impression of
dentition comprising the steps of:
conditioning the dentition by the application
thereto of a wetting agent to form a wet film, wherein the
wet film is formed by brushing the wetting agent onto the
dentition;
contacting the film on the dentition with a dental
impression material selected from the group consisting of
hydrophilic and hydrophobic dental impression materials;
and
wherein said wetting agent comprises a surface
active agent and a carrier;
wherein the carrier is water or a water soluble
composition; and
wherein the conditioning comprises rendering the
surface of the dentition surface hydrophilic.
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Application 11/153,132

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The issue
The Examiner rejected claims 1-5, 11-18, and 20-24 under 35 U.S.C.
§ 103(a) as obvious over Millar,
1
Winston,
2
Fiedler,
3
and Hare
4
(Ans. 4-6).
The Examiner finds that
Millar et al. disclose a method of taking a dental impression
that includes the steps of: conditioning the surface
comprising one or more of dentition (Column 1, Line
4) and a dental appliance (Column 2, Lines 12-14 and Lines
19-23) by applying a polymerizable wetting agent that is
comprised of a surfactant and a carrier (Hydrosystem
surfactant) thereto; contacting the wetting agent on the
dentition with a dental impression material elected from the
group consisting of hydrophilic and hydrophobic dental
impression materials (Column 1, Lines 1-19); wherein the
dental impression material is an elastomer and vinyl
polysiloxane material (Column 1, Line 5); and wherein the
conditioning comprises rendering the surface hydrophilic.

(Ans. 4). The Examiner finds that Winston teaches “a method of brushing
the dentition in order to coat the teeth with a wet film” (Ans. 4). The
Examiner finds that “Fiedler teaches the use of nonionic surfactants such as
nonyl phenoxypoly(ethyleneoxy) ethanol in order to provide a surfactant that
is known for imparting properties that improve the surface wettability” (Ans.
5). The Examiner finds that “Hare teaches a surface active agent used to

1
Millar et al., An in vivo study of a clinical surfactant used with
poly(vinyl siloxane) impression materials, 27 QUINTESSENCE
INTERNATIONAL 707-709 (1996).
2
Winston et al., US 2005/0084460 A1, published Apr. 21, 2005.
3
Fiedler, J., US 5,830,951, issued Nov. 3, 1998.
4
Hare et al., US 5,554,028, issued Sep. 10, 1996.
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Application 11/153,132

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condition the teeth that has a carrier that is water (column 2, lines 37-41) and
thus rendering the dentition hydrophilic” (Ans. 6).
The Examiner finds it obvious to “modify Millar to include a method
of brushing the wetting agent to form a wet film, as taught by Winston, in
order to provide a method of coating the dentition that is common and well
known in the art” (Ans. 4-5).
Appellant contends that “Millar does not disclose a carrier, let alone a
carrier being water or a water soluble composition. Furthermore, the
polydimethyl siloxane of Millar is not water soluble and would be
inoperable due to a lack of compatibility with the material of Millar” (App.
Br. 6).
Appellant contends that “[n]othing in Winston discloses using a brush
to apply a wet film nor using a brush to form a hydrophilic surface. . . . The
desired effect in Winston is removing plaque/calculus. Thus, the Examiner’s
reliance upon Winston is improper and cannot support the Examiner’s
finding of obviousness” (App. Br. 6).
Appellant contends, regarding the Examiner’s reliance that a spray
coating inherently forms a film, that “the Examiner never provided rationale
or evidence tending to show the alleged inherency” (App. Br. 7). Appellant
also contends that the “Examiner’s argument that the brushing and spraying
would have the same result suggests that the results showed in the August
4
th
, 2008, Declaration are unexpected” (App. Br. 8).
Appellant contends that “the surfactants in Millar et al. and Fiedler are
not prior art recognized equivalents and it is, therefore, not obvious to
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Application 11/153,132

5
substitute the polydimethylsiloxane with nonyl phenoxy poly(ethyleneoxy)
ethanol” (App. Br. 10).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that Millar, Fiedler, Winston, and Hare
render obvious the method of claim 1?
Findings of Fact
1. Millar teaches
a topical surfactant designed to be applied to the teeth prior
to recording the impression (Hydrosystem: Firmadenta).
Hydrosystem is a modified poly(dimethyl siloxane) wetting
agent that can be sprayed on prepared tooth surfaces. It can
also be sprayed on the impression surface before dies or a
working cast is poured.

(Millar 707, col. 2).
2. Millar teaches that “Hydrosystem was applied prior to the
insertion of the impression tray to the left or right premolar teeth.
Hydrosystem was sprayed onto the occlusal aspects of the teeth and left for
about 20 seconds to allow the solvent to evaporate” (Millar 708, col. 1).
3. Millar teaches that “[l]ight-body material was applied to the
occlusal surfaces of the teeth with a disposable syringe and the heavy-body
material was loaded into the tray. A custom-made tray was fabricated for
each subject” (Millar 708, col. 1).
4. Millar teaches that “[i]mpressions were recorded with President
(Coltene) and Elite (Firmadenta), which were pad mixed (Millar 708, col. 1).
5. Millar teaches that to “overcome the problems associated with
the hydrophobic nature of these materials, manufacturers have made
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hydrophilic versions by incorporating a surfactant into the product” (Millar
707, col. 1-2).
6. Winston teaches that “water is often necessary to provide a
uniform mixing of the components of the dentifrice, provide the proper
viscosity for the dentifrice so it can flow from the tube or effectively coat the
teeth if used as a professional gel and the like, and/or provide a toothpaste
consistency that is pleasing when placed in the oral cavity during brushing”
(Winston 2 ¶ 0017).
7. Hare teaches “a method of preparing an impression of dentition
in the oral cavity” (Hare, col. 2, ll. 24-25).
8. Hare teaches “a dental composition is provided that consists
essentially of a carrier, peroxide and a surfactant. The preferred carrier is
water present in an amount of 90 to 97.5%” (Hare, col. 2, ll. 38-41).
9. Hare teaches that
eleven teeth were then recontaminated with the latex glove
and then each was treated according to a different respective
Example 2-12 by lightly rubbing with the respective
composition of the respective Example using a cotton swab.
One tooth was used for each example. After treatment each
tooth was rinsed with water applied from a lab squeeze
bottle for 30 seconds after which the tooth was dried with
gentle application of dry compressed air from a 25 psi tank.
Thereafter the vinyl siloxane impression material described
above was applied to each tooth.

(Hare, col. 6, ll. 53-63).
10. Fiedler teaches that a “key component of the composition of the
invention is the surfactant for imparting wettability, preferably comprising
an HLB of about 8-11 and a pH of about 6-8. A most preferred surfactant is
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Application 11/153,132

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a nonionic surfactant, nonylphenoxy poly(ethyleneoxy) ethanol having an
HLB of about 10.8” (Fiedler, col. 4, ll. 48-52).
Principles of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
“If a person of ordinary skill can implement a predictable variation, §
103 likely bars its patentability.” Id. at 417. As noted by the Court in KSR,
“[a] person of ordinary skill is also a person of ordinary creativity, not an
automaton.” 550 U.S. at 421.
Analysis
Millar teaches a method of taking a dental impression with
a topical surfactant designed to be applied to the teeth prior
to recording the impression (Hydrosystem: Firmadenta).
Hydrosystem is a modified poly(dimethyl siloxane) wetting
agent that can be sprayed on prepared tooth surfaces. It can
also be sprayed on the impression surface before dies or a
working cast is poured.

(Millar 707, col. 2; FF 1). Millar teaches that “[l]ight-body material was
applied to the occlusal surfaces of the teeth with a disposable syringe and the
heavy-body material was loaded into the tray. A custom-made tray was
fabricated for each subject” (Millar 708, col. 1; FF 3).
The Examiner acknowledges that Millar does not teach “a method
wherein the wet film is formed by brushing. Millar also fails to disclose a
surface active agent that has a carrier that is water” (Ans. 4).
Both Winston and Hare teach brushing/rubbing teeth to apply
compositions to the teeth (FF 6, 9). Both Winston and Hare also teach
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inclusion of water into a composition being brushed onto teeth (FF 6, 9) and
Hare teaches “a dental composition is provided that consists essentially of a
carrier, peroxide and a surfactant. The preferred carrier is water present in an
amount of 90 to 97.5%” (Hare, col. 2, ll. 38-41; FF 8).
Applying the KSR standard of obviousness to the findings of fact, we
conclude that an ordinary artisan would have reasonably found it obvious to
brush the wetting agent of Millar onto dentition, since both Winston and
Hare teach that brushing is a known alternative method for applying
compositions to dentition (FF 6, 9). We also agree with the Examiner that
inclusion of water as a carrier would have been obvious since both Winston
and Hare teach the use of water as a carrier (FF 6, 9). Such combinations are
merely a “predictable use of prior art elements according to their established
functions.” KSR, 550 U.S. at 417.
Appellant contends that “Millar does not disclose a carrier, let alone a
carrier being water or a water soluble composition. Furthermore, the
polydimethyl siloxane of Millar is not water soluble and would be
inoperable due to a lack of compatibility with the material of Millar” (App.
Br. 6).
We are not persuaded. Millar directly teaches the use of a carrier,
since Millar teaches that the “Hydrosystem was sprayed onto the occlusal
aspects of the teeth and left for about 20 seconds to allow the solvent to
evaporate” (Millar 708, col. 1; FF 2). The evaporated solvent is a carrier. In
addition, Millar teaches that to “overcome the problems associated with the
hydrophobic nature of these materials, manufacturers have made hydrophilic
versions by incorporating a surfactant into the product” (Millar 707, col. 1-2;
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Application 11/153,132

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FF 5). Millar’s suggestion that Hydrosystem, the modified polydimethyl
siloxane, is hydrophilic provides evidence supporting a finding of the water-
soluble nature of Millar’s composition. In addition, the Examiner relies
upon alternative water soluble wetting agents in Fielder as alternatives to the
wetting agent of Millar (FF 10). Appellant provides no evidence, only
argument, to suggest that Millar’s composition is not water soluble. We
recognize the statement in the Boghosian Declaration II
5
that polymethyl
siloxane is not water soluble (Boghosian Dec. II 2-3 ¶ 11), but Millar
teaches the use of a modified polydimethy siloxane about which the
Boghosian Declaration II makes no specific comment.
Appellant contends that “[n]othing in Winston discloses using a brush
to apply a wet film nor using a brush to form a hydrophilic surface. . . . The
desired effect in Winston is removing plaque/calculus. Thus, the Examiner’s
reliance upon Winston is improper and cannot support the Examiner’s
finding of obviousness” (App. Br. 6).
We are not persuaded. Winston and Hare apply compositions to
dentition using a brush or rubbing a cotton swab (FF 6, 9). We agree with
the Examiner that to “modify from a spraying technique to a brushing
technique is well within the skill of one having ordinary skill in the art”
(Ans. 7). That is, a “person of ordinary skill is also a person of ordinary
creativity, not an automaton.” KSR, 550 U.S. at 421. We agree with the
Examiner that the person of ordinary skill and creativity would have
reasonably recognized that brushing a composition onto teeth is a known
alternative to spraying a composition onto teeth.

5
Declaration of Alan Boghosian, filed Sep. 29, 2009.
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Application 11/153,132

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Appellant contends, regarding the Examiner’s reliance that a spray
coating inherently forms a film, that “the Examiner never provided rationale
or evidence tending to show the alleged inherency” (App. Br. 7).
We are not persuaded of error. Millar expressly teaches that
“Hydrosystem is a modified poly(dimethyl siloxane) wetting agent that can
be sprayed on prepared tooth surfaces. It can also be sprayed on the
impression surface before dies or a working cast is poured” (Millar 707, col.
2; FF 1). When a hydrophilic wetting agent is sprayed onto a surface, we
agree that it will inherently form a layer or coating, which the Examiner
finds is the definition of a “film” (see Ans. 7). Appellant has provided
neither an alternative definition nor persuasive reasoning or evidence that
such spraying will not result in a film. That is, Appellant does not allege
that Millar’s method did not inherently form a film, or even that it might not
have, but only that the Examiner didn’t prove it did. On this record, we find
no evidentiary basis to doubt the Examiner’s finding.
We have considered the Boghosian Declaration I
6
, which does state
that a “clinically un-acceptable application of time of the composition
according to the method recited in the present claims applied through
nebulization (30 seconds) rendered a surface that did not provide enough
saturation to establish a uniform wet film sufficient to produce an accurate
impression” (Boghosian Dec. I 22 ¶ 15). This evidence is not, however,
commensurate in scope with either the prior art or the claims. The
Boghosian Declaration I did not apply the wetting agents of either Millar,
Fiedler, or Hare, the closest cited prior art references. The Boghosian

6
Declaration of Alan Boghosian, filed Aug. 4, 2008.
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Declaration I does not state that a film did not form, only that a sufficiently
uniform wet film did not form (Boghosian Dec. I 7 ¶ 15; emphasis added).
The claims do not require a “uniform” wet film, so the evidence is not
commensurate in scope with claim 1. Claim 1 does not incorporate any
limitation regarding the amount of time for application of the wetting agent.
Finally, Millar directly rebuts the concern in the Boghosian Declaration I
that the composition will not function, since Millar teaches that the sprayed
hydrosystem “led to an overall improvement in the quality of reproduction
on the surface of addition-silicone impressions” (Millar 709, col. 1).
Appellant also contends that the “Examiner’s argument that the
brushing and spraying would have the same result suggests that the results
showed in the August 4
th
, 2008, Declaration are unexpected” (App. Br. 8).
We are not persuaded. The Boghosian Declaration I never states that
brushing yields any results unexpected to the ordinary artisan, but rather
simply identified advantages of brushing over nebulization, which would
have been known to the ordinary artisan (see Boghosian Dec. I 7 ¶¶ 17-19).
“Expected beneficial results are evidence of obviousness of a claimed
invention. Just as unexpected beneficial results are evidence of
unobviousness.” In re Skoner, 517 F.2d 947, 950 (CCPA 1975).
Appellant contends that “the surfactants in Millar et al. and Fiedler are
not prior art recognized equivalents and it is, therefore, not obvious to
substitute the polydimethylsiloxane with nonyl phenoxy poly(ethyleneoxy)
ethanol” (App. Br. 10).
We are not persuaded. Both Millar and Fiedler are directed towards
impression material for dentition including wettability agents (FF 1, 10) and
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Fiedler teaches that a “key component of the composition of the invention is
the surfactant for imparting wettability, preferably comprising an HLB of
about 8-11 and a pH of about 6-8. A most preferred surfactant is a nonionic
surfactant, nonylphenoxy poly(ethyleneoxy) ethanol having an HLB of
about 10.8” (Fiedler, col. 4, ll. 48-52; FF 10). The prior art is using these
agents for precisely the same purpose, to improve surface wettability for
dental impression materials (FF 1, 10). In Icon, the Court found that
an inventor considering a hinge and latch mechanism for
portable computers would naturally look to references
employing other “housings, hinges, latches, springs, etc.,”
which in that case came from areas such as “a desktop
telephone directory, a piano lid, a kitchen cabinet, a washing
machine cabinet, a wooden furniture cabinet, or a two-part
housing for storing audio cassettes.”

In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1380 (Fed. Cir. 2007)
(citing In re Paulsen, 30 F.3d 1475, 1481 (Fed.Cir. 1994). The instant
situation is similar to that of Icon and Paulsen, since in the instant case an
ordinary practitioner considering wettability agents for dental impressions
would look to both Millar and Fiedler, who teach such wettability agents (FF
1, 10).
Conclusion of Law
The evidence of record supports the Examiner’s conclusion that
Millar, Fiedler, Winston, and Hare render obvious the method of claim 1.

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SUMMARY
In summary, we affirm the rejection of claim 1 under 35 U.S.C. §
103(a) as obvious over Millar, Fiedler, Winston, and Hare. Pursuant to 37
C.F.R. § 41.37(c)(1), we also affirm the rejection of claims 2-5, 11-18, and
20-24 as these claims were not argued separately.

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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