Ex Parte DeSimone et al

Patent Trial and Appeal Board

Nov 27, 2013

12951147 (P.T.A.B. Nov. 27, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/951,147 11/22/2010 Joseph M. DeSimone 9488-3DV2 9207
20792 7590 11/27/2013
MYERS BIGEL SIBLEY & SAJOVEC
PO BOX 37428
RALEIGH, NC 27627
EXAMINER
KEMMERLE III, RUSSELL J
ART UNIT PAPER NUMBER
1741
MAIL DATE DELIVERY MODE
11/27/2013 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 2012-004607
Application 12/951,147
Technology Center 1700
____________

Before PETER F. KRATZ, BEVERLY A. FRANKLIN, and
GEORGE C. BEST, Administrative Patent Judges.

BEST, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-004607
Application 12/951,147
2
On July 19, 2011, the Examiner finally rejected claims 21-30 and 55-
581 of Application 12/951,147 under 35 U.S.C. § 103(a) as obvious.
Appellants2 seek reversal of these rejections pursuant to 35 U.S.C. § 134(a).
We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we REVERSE.
BACKGROUND
The ’147 application describes methods for making orthodontic
appliances for the incremental movement of teeth from an initial
arrangement to a desired final arrangement. Spec. 1. In particular, the ’147
application is directed to methods for making repositioning devices
comprising polymeric materials with specific properties.
Claim 21 is representative of the ’147 application’s claims and is
reproduced below:
21. A method of making a removable dental positioning
appliance, comprising:
forming a sheet of transparent curable polymeric material into a
shell having cavities shaped to receive and reposition teeth from
a first orientation to a successive orientation; and
curing the transparent polymeric material, wherein the cured
polymeric material has 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

1 The Final Office Action also rejected claims 59-64. Office Action 2 (July
19, 2011). Appellants, however, had cancelled these claims in their May 5,
2011, Response to an earlier Office Action. (App. Br. 3.)
2 Align Technology, Inc., is identified as the real party in interest. (App.
Br. 1.)
Appeal 2012-004607
Application 12/951,147
3
200,000 psi, stress relaxation over time of not more than 50%,
and a transmissivity of light between 400nm and 800nm greater
than 75%.
(App. Br. 7 (Claims App’x).)
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. The Examiner rejected claims 21-30, 57, and 583 under 35 U.S.C.
§ 103(a) as obvious over the combination of Chishti4 and Tadros.5
(Ans. 4.)
2. The Examiner rejected claims 55 and 56 under 35 U.S.C. § 103(a)
as obvious over the combination of Chishti, Tadros, and Niino.6
(Ans. 6.)
DISCUSSION
Rejection 1. Appellants argue for reversal of the rejection of claims
21-30, 57, and 58 as a group. Accordingly, we will limit our discussion to
claims 21 and 26, which are the only independent claims in the ’147

3 As discussed earlier, Appellants had cancelled claims 59-64 prior to the
Final Rejection. (App. Br. 3.) We assume that the Examiner’s continued
discussion of these claims in the Answer (Ans. 6) is an inadvertent
oversight.
4 WO 00/32131, published June 8, 2000.
5 U.S. Patent Application Publication No. 2005/0100853 A1, published May
12, 2005.
6 U.S. Patent Application Publication No. 2002/0016395 A1, published
February 7, 2002.
Appeal 2012-004607
Application 12/951,147
4
application. Furthermore, we will focus on the claimed step of “curing the
transparent polymeric material,” which is common to both claims.
The Examiner finds that “Chishti discloses a method of making a
dental positioning device that involves forming a shell out of a mixture of
polymeric materials which is cured under UV light (page 19 line 11 - page
20 line 7).” Ans. 4. The Examiner relied on Tadros for its description of the
properties of a variety of materials. Id. at 4-5. Based on these findings, the
Examiner concluded that claims 21 and 26 would have been obvious to a
person of ordinary skill in the art. Id. at 5.
To evaluate the Examiner’s reasons for rejecting claims 21 and 26, we
must determine the broadest reasonable interpretation of the term “curing the
transparent polymeric material.” See In re Morris, 127 F.3d 1048, 1054
(Fed. Cir. 1997). During prosecution, the ’893 application’s claims are
given their broadest reasonable scope. In re Am. Acad. of Sci. Tech. Ctr.,
367 F.3d 1359, 1364 (Fed. Cir. 2004).
Our review of the Specification leads us to conclude that the phrase
“curing the transparent polymeric material” requires that a preformed
polymeric material be subjected to conditions that promote a chemical
reaction, such as crosslinking, within the polymeric material.7 Spec. 11-14,
Figs. 3, 4.
The portion of Chishti relied upon in the rejection does not describe a
curing step that results in a cured polymeric material having the properties

7 The general rule is that the steps in a method claim may be performed in
any order. See, e.g., Baldwin Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d
1338, 1345 (Fed. Cir. 2008). For the purpose of this appeal, we need not,
and have not, decided whether this general rule applies to claims 21 and 26.
Appeal 2012-004607
Application 12/951,147
5
specified in claim 21 or claim 26. Rather, it describes mixtures of
monomers that may be subjected to thermally or UV initiated
polymerization. See Chishti 19-20. Thus, the Examiner’s finding that
Chishti describes the step of curing a curable thermoplastic material is
erroneous. Furthermore, the Examiner does not identify any other portion of
the cited references that describes the claimed step.
We, therefore, reverse the Examiner’s rejection of claims 21 and 26 as
obvious over the combination of Chishti and Tadros. Because claims 22-25,
27-30, 57, and 58 depend from these claims, we also reverse the rejection of
these claims.
Rejection 2. Claim 55 depends from claim 21, and claim 56 depends
from claim 26. As discussed above, the Examiner erred in finding that the
combination of Chishti and Tadros described or suggested the step of curing
the transparent polymeric material. The Examiner does not find that Niino
remedies this error. Accordingly, we also reverse the rejection of claims 55
and 56 as obvious over the combination of Chishti, Tadros, and Niino.
CONCLUSION
Because the Examiner erred in finding that the combination of Chishti
and Tadros described or suggested the step of curing transparent polymeric
material, we reverse the rejection of claims 21-30 and 55-58 of the ’147
application.

REVERSED

cdc