Ex Parte Bowman et alDownload PDFPatent Trial and Appeal BoardNov 17, 201713850151 (P.T.A.B. Nov. 17, 2017) Copy Citation 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. 13/850,151 03/25/2013 Steven J. BOWMAN OA:008002 5821 11132 7590 11/21/2017 Rmilware Rr Valnir EXAMINER Three Riverway, Suite 950 Houston, TX 77056 APONTE, MIRAYDA ARLENE ART UNIT PAPER NUMBER 3732 NOTIFICATION DATE DELIVERY MODE 11/21/2017 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): patent @ boulwarevaloir.com nseigel @ boulwarevaloir.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEVEN J. BOWMAN and MICHAEL K. LOWE Appeal 2016-000781 Application 13/850,151 Technology Center 3700 Before BRETT C. MARTIN, GEORGE R. HOSKINS, and JEFFREY A. STEPHENS, Administrative Patent Judges. STEPHENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Applicant OrthoAccel Technologies, Inc. (“Appellant”)1 seeks our review under 35 U.S.C. § 134(a) of the Examiner’s decision rejecting claims 1—16, 21, 22, 27, and 28, as set forth in the Final Office Action (dated Nov. 6, 2014) (“Final Act.”) and further explained in the Advisory Action (dated Apr. 16, 2015).2 We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held on November 1, 2017. 1 Appellant is also identified as the real party in interest. App. Br. 1. 2 Appellant states that claims 23—26 are withdrawn and that claims 1—28 were rejected in the Final Action. App. Br. 3. The Final Action, however, Appeal 2016-000781 Application 13/850,151 We AFFIRM-IN-PART. Claimed Subject Matter Claims 1,16, and 21 are independent. Claims 1 and 16, reproduced below, illustrate the claimed subject matter. 1. An orthodontic remodeling device comprising: an extra-oral vibrator comprising a waterproof housing containing a power source operably coupled to a vibrator operably coupled to a processor for controlling said vibrator and for storing compliance usage data operably coupled to a data port for transmitting said data; said housing also having a connector protruding therefrom; a tooth positioner shaped to closely fit a patient’s dentition and apply a straightening force to at least one of said patient’s teeth, said tooth positioner being molded of a resilient material that contacts labial, lingual and occlusal surfaces of said patient[’]s dentition, and having an inner rigid core shaped to accept said connector, such that said tooth positioner can be operably and removably coupled to said extra-oral vibrator, said vibrator being able to vibrate at 1-1200 Hz at a force of 0.1-5 Newtons and thus vibrating said tooth positioner when coupled to said extra-oral vibrator. indicates that claims 17—20 and 23—25 are withdrawn. Final Act. 1. We understand the Final Action to consider claim 26 withdrawn also, as the Final Action includes rejections only for claims 1—16, 21, 22, 27, and 28, with no indication of allowable claims. Final Act. 3—10. Consistent with the rejections in the Final Action, the Examiner’s Non-Final Office Action indicates that Appellant’s elected species relates to claims 1—16, 21, 22, 27, and 28, and states that claims 17—20 and 23—26 are withdrawn from consideration as directed to a non-elected species. Non-Final Action (dated May 27, 2014), at 2—3. We consider claims 17—20 and 23—26 withdrawn. 2 Appeal 2016-000781 Application 13/850,151 16. An orthodontic remodeling device comprising: a tooth positioner shaped to closely fit a patient’s dentition and apply a straightening force to at least one of said patient’s teeth, said tooth positioner contacting labial, lingual and occlusal surfaces of said patient’s dentition, said tooth positioner operably connected to a housing enclosing a power source operably connected to a vibratory source, said vibratory source being able to vibrate at 10-1200 Hz at a force of 0.1-5 Newtons and thus vibrating said tooth positioner. Rejections3 I. Claims 1—6, 8, 10, 11, 13—16, 21, 22, 27, and 28 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Spaulding et al. (US 2010/0055634 Al, published Mar. 4, 2010) (“Spaulding”). Final Act. 3—9. II. Claims 7, 9, and 12 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Spaulding and David et al. (US 6,450,167 Bl, issued Sept. 17, 2002) (“David”). Final Act. 10. DISCUSSION Appellant argues the obviousness rejections of all claims as a group. App. Br. 14—17. We consider independent claim 1 and independent claims 16 and 21 separately. Claims 1—15 Appellant argues Spaulding teaches a simple bite plate that is used together with a separate positioner, aligner, or braces but is not itself a positioner. Id. at 14. Appellant also contends the Examiner admits 3 The Examiner’s Answer withdraws the rejection of claims 1—16, 21, 22, 27, and 28 as indefinite under 35 U.S.C. § 112, second paragraph. Ans. 2—3. 3 Appeal 2016-000781 Application 13/850,151 Spaulding is silent regarding claim 1 ’s limitation that the tooth positioner is shaped to “closely fit a patient’s dentition,” and that, on this basis alone, the rejections are reversible. App. Br. 15. Appellant acknowledges the Examiner’s finding that Spaulding teaches using the bite plate with an aligner, but Appellant argues “[t]he aligner closely fits the patient’s dentition, not the device of Spaulding.” Id. Appellant also contends the “device of Spaulding does not apply a straightening force,” and is meant to be used with a separate device that provides the straightening force. App. Br. 16. Regarding the meaning of the term “tooth positioner,” Appellant’s Specification provides: As used herein, “tooth positioner” means a custom made intra-oral bite plate that contacts occlusal, facial and lingual surfaces of the teeth, preferably both arches with a single bite plate, but wherein the imprint for one or more teeth has been adjusted in position, so as apply a corrective pressure to one or more teeth and allowing orthodontic correction. The term is intended to include tooth positioners used only for finishing, as well a total treatment aligners, and such. It does not include traditional archwire and brace orthodontics. Spec. para. 56 (emphasis added). Claim 1 also expressly recites that the tooth positioner is “shaped to closely fit a patient’s dentition and apply a straightening force to at least one of said patient’s teeth.” The Examiner has not shown that in Spaulding’s bite plate an “imprint for one or more teeth has been adjusted in position, so as apply a corrective pressure to one or more teeth.” Spec. para. 56. We agree with Appellant that Spaulding’s teaching that the bite plate is to be used with a second orthodontic device indicates that the bite plate itself is not what applies a straightening force. App. Br. 14—15. Thus, we agree with Appellant that the 4 Appeal 2016-000781 Application 13/850,151 Examiner has not shown that Spaulding’s bite plate is a “tooth positioner” as recited in claim 1. The Examiner finds that Spaulding also teaches an aligner-based treatment, which implies a close fit with the patient’s dentition. Ans. 5. We agree with Appellant, however, that the aligner taught in Spaulding is not shaped to accept a connector protruding from the vibrator housing, and, thus, fails to meet other limitations as to the “tooth positioner” in claim 1. See App. Br. 16. The Examiner’s Answer indicates that the combination of the bite plate and aligner taught in Spaulding could be the “tooth positioner” recited in claim 1. Ans. 5. The Examiner finds “the combination disclosed by Spaulding . . . includes a bite plate, where the bite plate in conjunction with an aligner provides the straightening force to at least a tooth.” Id. Appellant’s arguments in response do not directly address the issue of whether the combination of Spaulding’s bite plate and aligner meets the claimed “tooth positioner” limitation, and continue to argue that the bite plate does not provide the straightening force or contact the surfaces of the teeth. Reply Br. 3. We agree, however, with Appellant’s implicit argument that claim 1 ’s recited “tooth positioner” is not broad enough to encompass an aligner and a separate bite plate that does not directly contact the teeth. And the Examiner has not provided findings or reasoning as to whether or why one of ordinary skill in the art would have wanted to form Spaulding’s bite plate and aligner as an integral unit. For the foregoing reasons, we do not sustain the Examiner’s rejection of claim 1 as obvious over Spaulding. We also do not sustain the rejection of claims 2—6, 8, 10, 11, and 13—15, which depend from claim 1 and are 5 Appeal 2016-000781 Application 13/850,151 rejected on the same basis. For the same reasons, we do not sustain the Examiner’s rejection of claims 7, 9, and 12 as set forth in Rejection II. We need not reach additional arguments presented by Appellant as to claims 1— 15. Claims 16, 21, 22, 27, and28 Appellant’s arguments do not inform us of error as to independent claims 16 or 21. Claim 16 recites, in part, a tooth positioner that is “operably connected to a housing enclosing a power source operably connected to a vibratory source,” and claim 21 similarly recites a tooth positioner that is “operably and reversably connected to a waterproof housing enclosing a power source operably connected to a vibratory source.” Unlike with claim 1, we agree with the Examiner that the aligner taught in Spaulding meets the “tooth positioner” limitations of claims 16 and 21. Appellant does not persuasively challenge the Examiner’s finding that an aligner provides a close fit to a patient’s dentition, Final Act. 7, and Appellant admits that an aligner is a type of positioner, App. Br. 5. Appellant argues, however, that “[t]he aligners of Spaulding are normal aligners and lack an inner core or connector and cannot be coupled to the extraoral driver of Spaulding.” Id. at 16. Claims 16 and 21, however, do not recite a protruding connector or that the aligner is shaped to accept the connector. Rather, these claims require that the tooth positioner be “operably connected” (claim 16) or “operably and reversably connected” (claim 21) to the housing with the vibratory power source. Appellant states that “the bite plate and driver of Spaulding are wholly separate from the positioner/aligner and the two are never coupled.” App. Br. 16. Spaulding’s 6 Appeal 2016-000781 Application 13/850,151 aligner is operably connected to the vibrator, however, in that vibrations are transferred from Spaulding’s vibrator to the aligner via the bite plate, thereby speeding boney remodeling. See Spaulding para. 37. Accordingly, for the reasons discussed above and by the Examiner, we are not informed of error in the Examiner’s rejection of claims 16 and 21 under 35 U.S.C. § 103(a) as unpatentable over Spaulding. For the same reasons, we sustain the rejection of claims 22, 27, and 28, which depend from claims 16 or 21 and are not argued separately. DECISION We reverse the Examiner’s rejections under 35 U.S.C. § 103(a) of (I) claims 1—6, 8, 10, 11, and 13—15 as unpatentable over Spaulding, and (II) claims 7, 9, and 12 as unpatentable over Spaulding and David. We affirm the Examiner’s rejection of claims 16, 21, 22, 27, and 28 under 35 U.S.C. § 103(a) as unpatentable over Spaulding. 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-IN-PART 7 Copy with citationCopy as parenthetical citation