Ex Parte DeSimone et alDownload PDFPatent Trial and Appeal BoardDec 9, 201410963147 (P.T.A.B. Dec. 9, 2014) 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. 10/963,147 10/12/2004 Joseph M. DeSimone 9488-2 8701 20792 7590 12/09/2014 MYERS BIGEL SIBLEY & SAJOVEC PO BOX 37428 RALEIGH, NC 27627 EXAMINER PATEL, YOGESH P ART UNIT PAPER NUMBER 3732 MAIL DATE DELIVERY MODE 12/09/2014 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 JOSEPH M. DESIMONE and ROBERT E. TRICCA ____________ Appeal 2012-006926 Application 10/963,1471 Technology Center 3700 ____________ Before ERIC B. GRIMES, JEFFREY N. FREDMAN, and AMANDA F. WIEKER, Administrative Patent Judges. WIEKER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) involving claims directed to a removable dental positioning appliance. The Examiner rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Claims 20 and 23–34 are pending and on appeal. Independent claim 20 is representative and reads as follows: 1 According to Appellants, the real party in interest is Align Technology, Inc. (App. Br. 1). Appeal 2012-006926 Application 10/963,147 2 20. A removable dental positioning appliance, comprising a polymeric shell having cavities shaped to receive and reposition teeth from a first orientation to a successive orientation, wherein the shell comprises transparent polymeric material comprising polysulfone and/or poly(arylene ether ketone)s, wherein the transparent polymeric material has a glass transition temperature of at least 155°C, a tensile strength at yield of greater than 6,000 psi, an elongation at yield of greater than 4%, an elongation at break of greater than 80%, a tensile modulus greater than 200,000 psi, a flexural modulus greater than 200,000 psi, stress relaxation over time of not more than 50%, and a transmissivity of light between 400nm and 800nm greater than 75%. THE ISSUE The Examiner rejected claims 20 and 23–34 under 35 U.S.C. § 103(a) as being obvious over Tadros2 and Solvay3 (Ans. 4–5).4 Appellants do not argue the claims separately, but rather rely on the arguments presented with respect to claim 20 for all dependent claims (App. Br. 7–8). Therefore, we focus our analysis on claim 20, and claims 23–34 stand or fall with that claim. 37 C.F.R. § 41.37(c)(1). The Examiner finds that Tadros discloses a removable dental positioning appliance having a polymeric shell with cavities shaped to receive and reposition teeth from a first orientation to a successive orientation, and wherein the shell comprises transparent polymeric material, such as polysulfone (Ans. 4–5). The Examiner acknowledges that Tadros 2 Tadros et al., US 2005/0100853 A1, published May 12, 2005. 3 Solvay Advanced Polymers Udel® M-2300 MR Polysulfone (PSU) Material Data Sheet, http://www.matweb.com (provided by Appellants, Dec. 7, 2010). 4 The Examiner withdrew rejections under 35 U.S.C. § 112, first paragraph, in the Examiner’s Answer (Ans. 4). Appeal 2012-006926 Application 10/963,147 3 does not disclose the specific properties of polysulfone as recited in claim 20 (id. at 5). The Examiner relies on Solvay to supply these limitations (id.). The Examiner concludes that it would have been obvious to modify the dental positioning appliance disclosed by Tadros by selecting the material taught by Solvay, since the selection of a known material based on its suitability for an intended use is prima facie obvious (id.). The issue with respect to this rejection is: Does the evidence of record support the Examiner’s conclusion that the combination of Tadros and Solvay renders the claims obvious? FINDINGS OF FACT FF1. Tadros discloses “an appliance for use in an oral cavity, wherein the appliance comprises a polymeric shell that comprises a polymeric mixture, and further wherein the polymeric shell has cavities designed to receive teeth” (Tadros Abstract). FF2. Tadros discloses that the appliance may be used “for repositioning teeth from an initial tooth arrangement to a final tooth arrangement . . . [and] displays properties of optical clarity, stain resistance, and transparency” (id. ¶ 15, ll. 3–6). FF3. Tadros discloses that the appliance “contains at least one layer manufactured from a sheet of a polymeric mixture. Polymeric mixtures used for such appliances, are generally physical mixtures of two or more thermoplastic polymers. Thermoplastic polymers that may be used in the polymeric mixture may be . . . polysulfones” (id. ¶ 22, ll. 1–6, 24). FF4. Solvay discloses Udel® M-2300 Polysulfone and presents a table of Mechanical, Thermal, and Optical Properties, reproduced below: Appeal 2012-006926 Application 10/963,147 4 (Solvay 1–2). Solvay’s table reflects values of tensile strength, elongation at break, elongation at yield, tensile modulus, flexural modulus, glass transition temperature, and optical transmission (id.). PRINCIPLES OF LAW “An examiner bears the initial burden of presenting a prima facie case of obviousness.” In re Huai-Hung Kao, 639 F.3d 1057, 1066 (Fed. Cir. 2011) (citation omitted). “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). ANALYSIS We find that Tadros discloses a removable dental positioning appliance comprising a polymeric shell having cavities shaped to receive and reposition teeth from a first orientation to a successive orientation (FF1, FF2). We find that Tadros discloses that the shell may comprise polysulfone (FF3). We also find, and Appellants admit, that Solvay discloses a Appeal 2012-006926 Application 10/963,147 5 polysulfone material with a glass transition temperature of 185°C, a tensile strength of 11,000 psi, an elongation at yield of 5.9%, an elongation at break of 40–100%, a tensile modulus of 360,000 psi, a flexural modulus of 400,000 psi and transmissivity of 80% (FF4; App. Br. 4). We find, based on Appellants’ admission, that Solvay discloses a stress relaxation over time of not more than 50% (App. Br. 4). Applying the KSR standard of obviousness to these findings of fact, we agree with the Examiner that a person of ordinary skill in the art would have found it obvious to utilize Solvay’s specific polysulfone material in the polysulfone dental appliance disclosed by Tadros, because Solvay’s material is a known equivalent of the polysulfone taught by Tadros for the same purpose. Appellants contend that the Examiner erred in rejecting the claims because only some polysulfones include the recited properties (App. Br. 7; see also id. at Appendix G). We understand that fact. Solvay, however, is admitted to disclose a polysulfone that includes the recited properties (id. at 4). Appellants also argue that Tadros only mentions polysulfone as one of over 75 possible polymers (id. at 8), and does not teach, or suggest the desirability of, the claimed properties (id.; Reply Br. 2). First, we are not persuaded by the large number of disclosed polymers, which does not detract from Tadros’s undisputed disclosure of polysulfone (FF3). See Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That the ‘813 patent discloses a multitude of effective combinations does not render any particular formulation less obvious.”); In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985) (obviousness rejection affirmed in light of prior Appeal 2012-006926 Application 10/963,147 6 art teaching that “hydrated zeolites will work” in detergent formulations, even though “the inventors selected the zeolites of the claims from among ‘thousands’ of compounds”). Second, although Tadros does not disclose the claimed properties, Tadros is not alleged to anticipate the claims. Solvay teaches these properties, and it is the combination that renders the claims obvious. Finally, Appellants argue that there is no reason to combine Tadros and Solvay, absent hindsight (Reply Br. 3). We disagree. Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper. In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Here, the Examiner provides sound fact-based reasoning for combining these references, and one of ordinary skill in the art need not resort to Appellants’ Specification to find the claims obvious. Specifically, Tadros discloses a dental appliance and suggests that it can be made from polysulfone. Solvay discloses a specific polysulfone material that would be useful for Tadros’s purposes. Therefore, we agree that it would have been obvious to one skilled in the art at the time the invention was made to have utilized Solvay’s polysulfone material with Tadros’s device, because Solvay’s material is a known equivalent of the polysulfone of Tadros and usable by Tadros for the same purpose. We thus affirm the rejection of claim 20 under 35 U.S.C. § 103(a) as obvious. Because claims 23–34 fall with that claim, we affirm the rejection as to those claims as well. 37 C.F.R. § 41.37(c)(1). Appeal 2012-006926 Application 10/963,147 7 SUMMARY We affirm the rejection of claims 20 and 23–34 on appeal. 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 llw Copy with citationCopy as parenthetical citation