Ex Parte Chun et al

Patent Trial and Appeal Board

Dec 17, 2018

12878039 (P.T.A.B. Dec. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
12/878,039
7590
Ashok Tamma
36 Greenleigh Drive
Sewell, NJ 08080
FILING DATE FIRST NAMED INVENTOR
09/09/2010 James Jiwen Chun
12/17/2018
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
Chun_06NP 4268
EXAMINER
APONTE, MIRA YDA ARLENE
ART UNIT PAPER NUMBER
3772
MAIL DATE DELIVERY MODE
12/17/2018 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 PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES JIWEN CHUN,
ANGELA SOYOUNG CHUN,
ANDREW YOUNGHO CHUN, and
JENNIFER MISEONG CHUN
Appeal2017-011737
Application 12/878,039 1
Technology Center 3700
Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner's rejection of claims 1, 4, 6-10, 30, 32, and 33. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellants, the real party in interest is Hankookin, LLC.
Appeal Br. 3.
Appeal 2017-011737
Application 12/878,039
According to Appellants, the invention relates to "a method and
system for fabricating and installing a dental implant that allows
preservation of the supporting periodontal tissue and the supporting bone
while maximizing retention and stability of the dental implant." Spec. 1,
11. 17-20. Claims 1, 30, 32, and 33 are the independent claims on appeal.
Below, we reproduce claim 1 as illustrative of the appealed claims.
1. A dental implant, comprising:
an implant member adapted for insertion into a periodontal
bone socket of an extracted natural tooth, said implant
member comprising a coronal section and a root section
comprising a coronal end and a conical apical end, said
coronal section axially extending from said coronal end of
said root section, said implant member further comprising:
a plurality of concentric retentive grooves disposed
along an outer surface of a mid-portion of said root
section, wherein adjacent retentive grooves define
ridges formed therebetween;
a plurality of hook-shaped micro-extensions
integrally formed on a circumference of each of said
ridges in said mid-portion of said root section,
wherein each of said hook-shaped micro-extensions
are bent upwards, wherein each of said hook-shaped
micro-extensions are about 300 microns in length,
about 100 microns in width, and about 60 microns
in height, and wherein said hook-shaped micro-
extensions are configured to impede coronal
movement of an inserted implant member within
said periodontal bone socket;
an anchoring assembly positioned within a hollow
axial cavity of said implant member, said anchoring
assembly comprising:
a fastening element engaged with said
implant member, said fastening element
positioned within said hollow axial cavity,
2
Appeal 2017-011737
Application 12/878,039
wherein said fastening element comprises an
apical section comprising a conical shaft and
a truncated end, wherein said fastening
element is threaded to screwably engage said
hollow axial cavity of said implant member,
wherein said fastening element further
comprises a coronal screw head for one of
tightening and releasing said fastening
element within said hollow axial cavity, and
wherein said fastening element apically
advances within said hollow axial cavity
when said fastening element is tightened by
turning said coronal screw head; and
one or more radial and equidistant cylindrical
members positioned in said mid-portion of
said root section, wherein said mid-portion of
said root section of said implant member
further comprises one or more through-holes
for radially and forcibly sliding said
cylindrical members through said one or
more through-holes, wherein each of said
cylindrical members comprises a first end
that interfaces with said conical shaft of said
fastening element, and a second end that
abuts against an inner wall of said periodontal
bone socket without penetrating said inner
wall of said periodontal bone socket, wherein
said conical shaft of said fastening element
radially and outwardly pushes said
cylindrical members through said through-
holes when said fastening element is apically
advanced within said hollow axial cavity, and
wherein said second end of each of said
cylindrical members evenly presses against
said inner wall of said periodontal bone
socket to generate an anchoring force to
anchor said implant member within said
periodontal bone socket.
3
Appeal 2017-011737
Application 12/878,039
REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows 2,3:
I. Claims 1 and 30 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written-description requirement;
II. Claims 1, 6, 8, 10, and 30 under 35 U.S.C. § I03(a) as
unpatentable over Kiernan, Jr. (US 2,857,670, iss. Oct. 28,
1958) ("Kiernan"), Sapian (US 5,890,902, iss. Apr. 6, 1999),
Ashuckian (US 2,721,387, iss. Oct. 25, 1955), and Wahlstrom
et al. (US 7,463,933 B2, iss. Dec. 9, 2008) ("Wahlstrom");
III. Claim 4 under 35 U.S.C. § I03(a) as unpatentable over
Kiernan, Sapian, Ashuckian, Wahlstrom, and Rybicki et al.
(US 4,011,602, iss. Mar. 15, 1977) ("Rybicki");
IV. Claim 7 under 35 U.S.C. § I03(a) as unpatentable over
Kiernan, Sapian, Ashuckian, Wahlstrom, and Soler et al.
(US 7,827,694 B2, iss. Nov. 9, 2010) ("Soler");
V. Claim 9 under 35 U.S.C. § I03(a) as unpatentable over
Kiernan, Sapian, Ashuckian, Wahlstrom, and Liebschner
(US 7,361,369 B2, iss. Apr. 22, 2008);
VI. Claim 32 under 35 U.S.C. § I03(a) as unpatentable over
Rubbert (US 2008/0090207 Al, pub Apr. 17, 2008), Kelly
Misch and Hom-Lay Wang (Implant Surgery Complications:
2 Appellants argue (see Appeal Br. 20-22) that the Examiner's errs by
objecting to the drawings (see Non-Final Action 2). Appellants may not
appeal the objection to the Board, however. See In re Berger, 279 F.3d 975,
984 (Fed. Cir. 2002). Instead, the Patent Office may review the objection, if
at all, only upon Appellants' filing of a petition.
3 The Examiner withdraws previous written-description and indefiniteness
rejections to claim 33. Non-Final Action 3--4; Answer 2.
4
Appeal 2017-011737
Application 12/878,039
Etiology and Treatment, 17 Implant Dentistry 159---68 (2008))
("Misch"), Kiernan, Mount (US 2007/0264612 Al, pub.
Nov. 15, 2007), Ashuckian, Wahlstrom, and Berckmans, III, et
al. (US 2008/0286722 Al, pub. Nov. 20, 2008) ("Berckmans");
and
VII. Claim 33 under 35 U.S.C. § I03(a) as unpatentable over
Rubbert, Sers (US 2008/0287953 Al, pub. Nov. 20, 2008),
Berckmans, Kiernan, and Ashuckian.
ANALYSIS
Reiection I
With respect to each of independent claims 1 and 30, the Examiner
finds that Appellants' Specification fails to describe the claim recitation
"without penetrating said inner wall of said periodontal bone socket" in such
a way as to reasonably convey to one skilled in the relevant art that, at the
time the application was filed, Appellants had possession of the claimed
invention. Non-Final Action 3. Appellants argue that the Examiner errs:
F[igure] IF is a schematic drawing showing that when an
anchoring force is applied, . . . cylindrical members 102b
push ... inner wall 103b of ... periodontal bone socket 103a
outwards. . . . Since ... second end 102g of ... cylindrical
member 102b is flat, it presses evenly against ... inner wall 103b
of ... periodontal bone socket I03a[,] and ... second end 102g
of ... cylindrical member 102b does not penetrate into ... inner
wall 103b of ... periodontal bone socket 103a.
Appeal Br. 21-22 ( emphasis omitted).
Based on our review of the record, Appellants' argument is
persuasive. Appellants' argument is consistent with their Specification,
which describes that "second end 102g of each of the cylindrical
5
Appeal 2017-011737
Application 12/878,039
members 102b abuts and evenly presses against ... periodontal bone
surface 103b." Spec. 10, 11. 14--21 (emphases omitted); see also id. at 12,
11. 1-3 ("second end 102g of three equidistant cylindrical members 102b ...
abut against and substantially uniformly contact ... periodontal bone
surface 103b on ... periodontal bone structure 103c.") (emphases omitted).
Appellants' Specification does not define "penetrate." Thus, we rely on the
ordinary and customary meaning, which is "to pass into or through."
MERRIAM-WEBSTER ONLINE DICTIONARY (last retrieved from
https://www.merriam-webster.com/dictionary/penetrate on December 12,
2018).
Because cylindrical member 102b "presses against," "abuts," and
"contacts," but does not pass into or through, bone surface 103b, and does
not reach bone structure 103c, Appellants had possession of the claim
recitation "without penetrating said inner wall of said periodontal bone
socket." Thus, we do not sustain the Examiner's written-description
rejection of claims 1 and 30.
Rei ection II
With respect to independent claims 1 and 30, the Examiner finds that
Wahlstrom discloses the claimed hook-shaped micro-extension that is
about 100 microns in width, citing Wahlstrom's Figure 2A and column 3,
lines 3-13. Non-Final Action 14. Appellants argue that the Examiner's
finding is erroneous, because Wahlstrom does not disclose the claimed
width. Appeal Br. 27.
6
Appeal 2017-011737
Application 12/878,039
Based on our review of the record, Appellants' argument is
persuasive. Wahlstrom's Figure 2A is not dimensioned. See Wahlstrom
Fig. 2A. Wahlstrom discusses, in Figure 2A's description, that
each of the plurality of projections 385 include[s] a length Land
extend[ s] laterally from . . . lead body 3 12 toward ... proximal
end 321 at ... angle 33, which, according to some embodiments,
is less than approximately 45 degrees. According to this
embodiment of the present invention and various other
embodiments illustrated herein[,] length L is greater than
approximately 100 microns.
Id. at col. 3, lines 4--13 (emphases omitted). Thus, although Wahlstrom,
explicitly discloses certain dimensions including length and height,
Wahlstrom does not explicitly disclose width. Because the drawings are
dimensionless, and no width is stated explicitly, the Examiner's finding that
Wahlstrom discloses the claimed width is based solely on speculation. By
way of further example, although the Examiner calculates the width in
Wahlstrom, the calculation is based on multiple assumptions, and, therefore,
the calculation does not have an adequate factual basis. See, e.g., Answer 7-
8. For these reasons, the Examiner has not met the burden to provide a
factual basis for the finding upon which the rejection rests. See In re
Warner, 379 F.2d 1011, 1016 (CCPA 1967).
Consequently, we do not sustain the Examiner's obviousness rejection
of independent claims 1 and 30. Further, we do not sustain the Examiner's
obviousness rejection of claims 6, 8, and 10 that depend from claim 1.
Reiections III-V
Claims 4, 7, and 9 depend from independent claim 1. The Examiner
does not rely on either Rybicki, Soler, or Liebschner to remedy the above-
7
Appeal 2017-011737
Application 12/878,039
discussed deficiency in claim 1 's obviousness rejection. Thus, for the same
reasons we do not sustain claim 1 's obviousness rejection, we do not sustain
the obviousness rejections of claims 4, 7, and 9.
Rei ection VI
With respect to independent claim 32, the Examiner finds that
Wahlstrom discloses the claimed hook-shaped micro-extension about 100
microns in width, citing Wahlstrom's Figure 3 and column 3, lines 3-13.
Non-Final Action 23-24. Appellants argue that the Examiner's finding is
erroneous, because the width dimension is not disclosed by any reference.
Appeal Br. 36. Thus, we do not sustain claim 32's rejection for substantially
the same reasons that we do not sustain claim 1 's rejection, as discussed
supra.
Rei ection VII
Independent claim 33 recites, in relevant part, the following:
pre-determining an anchoring force for anchoring said designed
dental implant to an inner wall of said periodontal socket, by said
digital simulator, based on said captured three dimensional X-ray
images; [ and]
anchoring said inserted dental implant within said periodontal
bone socket, wherein a plurality of radial and equidistant
cylindrical members disposed in said mid-portion of said root
section of said fabricated dental implant abut and evenly press
against said inner wall of said periodontal bone socket, wherein
said anchoring force between said plurality of radial and
equidistant cylindrical members and said inner wall of said
periodontal bone socket is set to said predetermined anchoring
force.
8
Appeal 2017-011737
Application 12/878,039
Appellants argue that the Examiner's obviousness rejection of
claim 33 is in error because no reference discloses either pre-determining the
anchoring force, or setting the implant using the pre-determined anchoring
force value, as claimed. Appeal Br. 34--35. Based on our review, the
Examiner does not support adequately that any reference discloses these
claim recitations.
More specifically, the Examiner addresses neither pre-determining of
a setting force, nor the use of that determined force when setting an implant,
as claimed, in the Non-Final Action or Answer. For example, after finding
that Rubbert and Sers do not disclose these claim recitations (see, e.g., Non-
Final Action 17-19), the Examiner relies on Berckmans to disclose
"determining the stress and strain on the interface of [a] 3D virtual bone and
[an] implant" (id. at 19). It is not apparent, however, that stress and strain
determinations disclose or otherwise relate to the claimed anchoring force.
Further, the Examiner does not respond specifically to Appellants' argument
related to the anchoring force. See Appeal Br. 34--35; see Answer 10-12.
Thus, we do not sustain the Examiner's obviousness rejection of claim 33.
DECISION
We REVERSE the Examiner's rejection of claims 1 and 30 under
35 U.S.C. § 112, first paragraph.
9
Appeal 2017-011737
Application 12/878,039
We REVERSE the Examiner's obviousness rejections of claims 1, 4,
6-10, 30, 32, and 33.
REVERSED
10