Ex Parte DeSimone et alDownload PDFPatent Trial and Appeal BoardFeb 12, 201511947172 (P.T.A.B. Feb. 12, 2015) 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. 11/947,172 11/29/2007 Joseph M. DeSimone 9488-2DV 1428 7590 02/12/2015 Needham James Boddie, II Myers Bigel Sibley & Sajovec, P.A. P.O. Box 37428 Raleigh, NC 27627 EXAMINER PATEL, YOGESH P ART UNIT PAPER NUMBER 3732 MAIL DATE DELIVERY MODE 02/12/2015 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 2012-008631 Application 11/947,172 Technology Center 3700 __________ Before ULRIKE W. JENKS, CHRISTOPHER G. PAULRAJ, and KENNETH G. SCHOPFER, Administrative Patent Judges. PAULRAJ, Administrative Patent Judge. DECISION ON APPEAL This is an appeal1 under 35 U.S.C. § 134 involving claims to a removable dental positioning appliance. The Examiner rejected the claims on obviousness grounds. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Background “The present invention relates generally to orthodontics and, more particularly, to orthodontic appliances for incrementally moving teeth from 1 Appellants identify the Real Party in Interest as Align Technology, Inc. (see App. Br. 1). Appeal 2012-008631 Application 11/947,172 2 an initial tooth arrangement to a final tooth arrangement.” (Spec. 1 ll. 3–5). The Specification asserts that “polymeric materials currently utilized in the production of these positioning appliances may undergo stress relaxation and creep, which can seriously degrade the ability of an appliance to reposition teeth as desired,” and further “may be susceptible to degradation as a result of exposure to saliva and other chemicals present within a patient’s mouth” (id. at 2 ll. 14–19). The Claims Claims 36 and 39–49 are under appeal. Independent claim 36 is representative, and reads as follows: 36. 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 is formed from laminates and/or blends of transparent polymeric material comprising thermoplastic polyurethanes, wherein the transparent 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 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 Rejection The Examiner rejected the claims as under U.S.C. § 103(a) as being unpatentable over the combination of Tadros2 and Hydex.3 2 Tadros et al., US 2005/0100853 A1, May 12, 2005. Appeal 2012-008631 Application 11/947,172 3 FINDINGS OF FACT FF1. Tadros teaches “an appliance made from a sheet comprising a polymeric mixture that may be advantageously used for repositioning teeth from an initial tooth arrangement to a final tooth arrangement,” wherein “the appliance displays properties of optical clarity, stain resistance, and transparency, which makes the appliance invisible when used in the oral cavity” (Tadros, ¶ 15). FF2. Tadros teaches that the appliance contains at least one layer manufactured from a sheet of a polymeric mixture, and lists polyurethanes among other thermoplastic polymers suitable for the mixture (id., ¶¶ 22, 72). FF3. Tadros teaches: It is generally desirable for the polymeric mixture to have a tensile strength and modulus effective to reposition the teeth in the oral cavity over a period of time. The tensile modulus of the material should be adjusted so that the appliance can be installed and removed without causing damage to the patient's oral cavity. It is preferred for the polymeric mixture to have an elastic modulus of about 1,500 Newton/square millimeter (N/mm2) to about 2,500 N/mm2 when measured in tensile deformation at a rate of 2 millimeters/minute at room temperature prior to insertion in the oral cavity. In general, a tensile strength of greater than or equal to about 1,600 N/mm2, preferably greater than or equal to about 1,650 N/mm2, and more preferably greater than or equal to about 1,700 N/mm2 is suitable. 3 Hydex Technical Data Sheet for HYDEX 301, 202 [online] [cited by appellant on 06/28/2011] Retrieved from the internet:< URL: www.plasticsintl.com/datasheets/HYDEX301.pdf> Appeal 2012-008631 Application 11/947,172 4 (Id., ¶ 68). FF4. Tadro further teaches: It is also generally desirable for the polymeric mixture to display stress retention for purposes of successfully repositioning the teeth in the oral cavity. It is generally desirable for the polymeric mixture to have a percent stress retention of greater than or equal to about 50%, preferably greater than or equal to about 60%, more preferably greater than or equal to about 70%, and even more preferably greater than or equal to about 75% of the applied stress, when stressed for a period of 12 hours, prior to use in the oral cavity. (Id., ¶ 69). FF5. Example 3 of Tadros provides a comparison of stress retention and stain resistance test results for a polycarbonate-PCCD mixture and a polyester urethane sheet commercially available as ISOPLAST 2530 from Dow Chemical. The following results are reported in Table 14: (Id., ¶ 122). Tadros concludes that “[f]rom the table it may be seen that both the stress retention and the stain resistance of the polycarbonate-PCCD mixture are superior to the polyester urethane mixture” (id., ¶ 123). Appeal 2012-008631 Application 11/947,172 5 FF6. Hydex 301® is “made from a rigid polyurethane resin, which was developed in the late 1980’s by Dow Chemical Company, who now markets it under the trade name, Isoplast” (Hydex Spec. Sheet). Hydex 301® is identified as having a broad range of chemical resistance, exceptional clarity, good temperature resistance, superior practical impact, excellent mechanical properties, and being easily machined with superior dimensional stability (id.). FF7. The following properties are reported for Hydex 301®: Tensile Strength, Yield: 10,000 psi Tensile Elongation, Yield: 7% Tensile Elongation, Break: 140% Tensile Modulus: 310,000 psi Flexural Modulus: 340,000 Light Transmission, 0.125”: 90% (Id.). ANALYSIS Appellants do not argue the claims separately, so we focus our analysis and discussion on representative claim 36. The Examiner finds that Tadros discloses a removable dental positioning appliance having a polymeric shell that may include thermoplastic polyurethanes, but acknowledges that Tadros fails to disclose the specific properties listed in claim 36 (Ans. 5). The Examiner thus, relies upon Hydex 301® as a prior art rigid polyurethane possessing the claimed properties, and asserts that it would have been obvious to select that material for the dental appliance of Tadros “since the selection of a known material based on its suitability for Appeal 2012-008631 Application 11/947,172 6 its intended use support[s] a prima facie obviousness determination” (id., citing Sinclair & Carroll co. v. International Corp., 325 U.S. 327 (1945)). Based on the cited teachings of the prior art (FF1–7), we determine that a prima facie case of obviousness has been made. Appellants argue that [a]lthough Tadros briefly mentions polyurethanes generically in a listing of over 75 polymers in ¶ 0022, the remaining application is directed specifically to polycarbonate mixtures” (App. Br. 6–7). Appellants assert that “only some polyurethanes have the recited properties of Claim 36,” and in support provide a printout from the IDES website as Appendix E, which lists typical properties for thermoplastic polyurethanes (id. at 7). Appellants note that “some thermoplastic polyurethanes may have a flexural modulus that is well below the flexural modulus of 200,000 psi recited in Claim 36” (id.). Appellants further assert that “[n]othing in Hydex suggests that the polyurethane material having the properties described therein would be suitable for use as an oral cavity appliance” (id. at 8). We are unpersuaded by these arguments. Tadros teaches that the desirable properties for the dental appliance include optical clarity and transparency, and further teaches that it is desirable to utilize a polymeric mixture with an elastic modulus of about 1,500 N/mm2 to about 2,500 N/mm2 (about 217,556 psi to 362,594 psi), a tensile strength of greater than 1,600 N/mm2 (about 232,060 psi), and percent stress retention of greater than 50% (FF1, 3–4; Ans. 6). There is no dispute that Hydex 301® is a prior art polyurethane that possesses the properties considered desirable by Tadros, as well as all the other claimed properties (FF6–7). Moreover, although Tadros generically lists polyurethanes among several other possible Appeal 2012-008631 Application 11/947,172 7 thermoplastic polymers (FF2), it also includes a comparative example specifically testing the properties of ISOPLAST 2530 (FF5), which is the trade name for Hydex polyurethanes (FF6). To be sure, Tadros states that the stress retention and the stain resistance of the polycarbonate-PCCD mixture are superior to the polyester urethane mixture (id.). Nonetheless, “a finding that the prior art as a whole suggests the desirability of a particular combination need not be supported by a finding that the prior art suggests that the combination claimed by the patent applicant is the preferred, or most desirable, combination.” In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004) (emphasis added). Here, there is sufficient motivation to utilize Hydex 301® as it was a known thermoplastic polymer possessing the properties considered desirable for the dental appliance of Tadros. Cf. In re Leshin, 277 F.2d 197, 199 (CCPA 1960) (“Mere selection of known plastics to make a container- dispenser of a type made of plastics prior to the invention, the selection of the plastics being on the basis of suitability for the intended use, would be entirely obvious . . . .”). The fact that other claimed properties may also naturally flow from utilizing Hydex 301® does not otherwise negate the obviousness of the claimed invention. The “[m]ere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention.” In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991); see also In re Wiseman, 596 F.2d 1019, 1023 (CCPA 1979) (Appellants “are, in effect, arguing that a structure suggested by the prior art, and, hence, potentially in the possession of the public, is patentable to them because it also possesses an Inherent, but hitherto unknown, function which they claim to have discovered. This is not the law.”). Appeal 2012-008631 Application 11/947,172 8 We thus affirm the obviousness rejection of claim 36. Claims 39–49 fall with claim 36. 37 C.F.R. § 41.37(c)(1)(vii). SUMMARY We affirm the claim rejection under 35 U.S.C. § 103(a). 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 lp Copy with citationCopy as parenthetical citation