Ex Parte Eriksson et al

Patent Trial and Appeal Board

Sep 30, 2016

13202761 (P.T.A.B. Sep. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/202,761 09/13/2011
20995 7590 10/04/2016
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
FIRST NAMED INVENTOR
Thomas Eriksson
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.
NOBELB.360NP 1634
EXAMINER
MAI,HAOD
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
10/04/2016 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):
j ayna.cartee@knobbe.com
efiling@knobbe.com
PTOL-90A (Rev. 04/07)
lJNITEu STATES PATENT ANu TRAuEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS ERIKSSON and MAGNUS OTTSJO
Appeal2014-007678 1
Application 13/202,761 2
Technology Center 37003
Before KEVIN W. CHERRY, BRADLEY B. BAY AT, and
AMEE A. SHAH, Administrative Patent Judges.
CHERRY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Thomas Eriksson and Magnus Ottsjo (Appellants) seek review under
35 U.S.C. § 134 of a final rejection of claims 1, 2, and 5-23, the only claims
pending in the application on appeal. We have jurisdiction over the appeal
1 Our decision references the Appellants' Appeal Brief ("Appeal Br."), filed
December 11, 2013, Appellants' Reply Brief ("Reply Br."), filed July 3,
2014, and the Examiner's Answer ("Ans."), mailed May 9, 2014.
2 Appellants' Appeal Brief identifies Nobel Biocare Services AG, as the real
party in interest for this appeal (Appeal Br. 3).
3 The record includes a transcript of the oral hearing held
September 20, 2016 ("Tr.").
Appeal2014-007678
Application 13/202,761
pursuant to 35 U.S.C. § 6(b). Appellants appeared for oral hearing on
September 20, 2016.
We REVERSE.
Appellants' claimed invention relates to position locators that can be
affixed to components, such as surgical implants for oral, dental, or
maxillofacial restorative medical procedures (Spec. i-f 2).
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below (with paragraphing added).
1. A position locator device for a system of planning and
producing oral or maxillofacial restorative products,
said device being of an optically opaque metal, and
having at least one outer surface detectable by an optical
scanner apparatus for determining at least one of a position
and orientation of said outer surface, and
a metal oxide layer with a substantially homogenous layer
thickness deposited onto said outer surface of said position
locator device.
(Appeal Br. 13, Claims App.).
Rejections
Claims 1, 2, 5-10, 16, 18, 19, and 21-23 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Nilsson (WO 2008/041943
Al, pub. Apr. 10, 2008) and Ohtani (US 6,184,068 Bl, iss. Feb. 6, 2001).
Claims 11-15 and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nilsson, Ohtani, and Marotta (US 2008/0124676 Al,
pub. May 29, 2008).
Claim 17 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nilsson, Ohtani, and Ernst (US 6,402,707 Bl,
iss. June 11, 2002).
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Application 13/202,761
ANALYSIS
Obviousness over Nilsson and Ohtani
Appellants argue that the combination of Nilsson and Ohtani is
improper because Ohtani is not analogous art to the claimed invention
(Appeal Br. 7-10; Reply Br. 6). Appellants argue that Ohtani is neither
from the same field of endeavor as the claimed invention nor is it reasonably
pertinent to the problem faced by the inventor (Appeal Br. 8-9). The
Examiner ostensibly agrees that Ohtani is not from the same field of
endeavor as the claimed invention (see, e.g., Ans. 8). Instead, the Examiner
found that "Ohtani' s disclosure of a process of forming a homogenous layer
of titanium dioxide onto a substrate (column 26 lines 59---64) is maintained
to be pertinent to the problem with which Appellant[ s] [were] concerned,
i.e., forming a surface layer of titanium oxide with homogenous layer
thickness" (Ans. 8).
A reference is analogous art to the claimed invention if: (1) the
reference is from the same field of endeavor as the claimed invention (even
if it addresses a different problem); or (2) the reference is reasonably
pertinent to the problem faced by the inventor (even if it is not in the same
field of endeavor as the claimed invention). See In re Bigio, 381F.3d1320,
1325 (Fed. Cir. 2004). And a reference is reasonably pertinent if, because of
the matter with which it deals, it logically would have commended itself to
an inventor's attention in considering his or her problem. See In re Clay,
966 F.2d 656, 659 (Fed. Cir. 1992).
Ohtani is directed to a process for fabricating a semiconductor device
using crystalline semiconductor (Ohtani, 1:9-11). In particular, Ohtani
teaches the use of metal catalysts to speed nucleation and crystallization of
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Application 13/202,761
silicon semiconductor films (id. at Abstract, 4: 19---64). As part of its
disclosure of its semiconductor device fabrication method, Ohtani teaches
the use of spin-coating an organometallic compound on the semiconductor
surface to form a metal oxide layer (id. at 26:39-58). This metal oxide layer
is used as a starting material for the crystallization of the silicon film (id. at
6:2-14; 26:43--45). Ohtani explains that the technique forms a "uniform and
continuous layer on the semiconductor surface without creating nuclei out of
metal particles used for crystallization [of the semiconductor]" (id. at 26:59-
64).
Appellants' Specification is directed to a position locator for oral,
dental, or maxillofacial restorative medical procedures that has a surface
detectable by optical scanning for position and orientation determination
(Spec. i-f 2). Appellants' Specification explains that glossy surfaces of prior
position locators reflect too much light causing less light to reach the
detector making correct measurements more difficult (id. i-f 45). Appellants
further note that many processes that yield a dull surface result in an uneven
surface, which does not have the tolerances necessary for a surgical
positioning device (id. i-fi-146-50). Appellants' solution to these problems is
to oxidize the surface of the metal probe using an anodic oxidation process
(id. i-fi-1 51-52). Appellants' Specification explains that metal oxides on the
surface can provide good optical properties for the probe (id. i-fi-159---63), and
that oxidizing processes have good tolerances for the necessary dimensional
control (id. i-fi-151-58).
We agree with Appellants that the Examiner has failed to explain
adequately why Ohtani "logically have commended itself to an inventor's
attention in considering his or her problem." As described above, Ohtani
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Application 13/202,761
deals broadly with fabrication of semiconductor devices using crystalline
semiconductor materials. In particular, Ohtani focuses on the use of metal
catalysts to speed the crystallization process in silicon films. The metal
oxide in Ohtani, on which the Examiner relies, is applied to a semiconductor
substrate and is used simply as a way of putting the metal catalyst in contact
with the semiconductor material that Ohtani wants to crystallize. Ohtani has
no discussion of applying its metal oxide to the surface of a metal part, let
alone a surgical probe. Ohtani does not discuss any of the optical properties
of the metal oxide film, nor does Ohtani appear to discuss the tolerance
control that the process may provide. We find that a disclosure related to
applying a metal oxide to a semiconductor substrate for purposes of
catalyzing the crystallization of the semiconductor would not have logically
commended itself to the inventor's attention in considering the problem of
treating the surface of a metal surgical probe for optimizing optical
properties and tolerance control.
As such, we find that Ohtani is not analogous art. Because the
Examiner's rejection of claims 1, 2, 5-10, 16, 18, 19, and 21-23 relies on
Ohtani to account for "a metal oxide layer with a substantially homogenous
layer thickness deposited onto said outer surface of said position locator
device," we reverse the rejection of claims 1, 2, 5-10, 16, 18, 19, and 21-23
as unpatentable as obvious over Nilsson and Ohtani.
Remaining Obviousness Rejections
As for the rejection of claims 11-15 and 20 over Nilsson, Ohtani, and
Marotta and claim 17 over Nilsson, Ohtani, and Ernst, neither Marotta nor
Ernst would have rendered obvious "a metal oxide layer with a substantially
homogenous layer thickness deposited onto said outer surface of said
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Application 13/202,761
position locator device," as claimed. As such, we reverse the rejections of
claims 11-15 and 20 over Nilsson, Ohtani, and Marotta and claim 17 over
Nilsson, Ohtani, and Ernst.
DECISION
The Examiner's decision to reject claims 1, 2, and 5-23 is reversed.
REVERSED
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