Ex Parte Fletcher

Patent Trial and Appeal Board

May 11, 2017

12693575 (P.T.A.B. May. 11, 2017)

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.
12/693,575 01/26/2010 Gayle J. Fletcher 1640-00101 4355
62763 7590 05/12/2017
Tod T. Tumey
Tumey LLP
P.O. BOX 22188
HOUSTON, TX 77227-2188
EXAMINER
SAUNDERS, MATTHEW P
ART UNIT PAPER NUMBER
3732
MAIL DATE DELIVERY MODE
05/12/2017 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 GAYLE J. FLETCHER
__________________

Appeal 2015-006732
Application 12/693,575
Technology Center 3700
____________________

Before JAMES P. CALVE, BRANDON J. WARNER, and
FREDERICK C. LANEY, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the final rejection of
claims 7, 9, 10, 12–14, and 16–26. Appeal Br. 6. Claims 1–6, 8, 11, and 15
are cancelled. Id. at 23–24 (Claims App.). We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
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CLAIMED SUBJECT MATTER
Claims 7, 16, and 21 are independent. Claim 7 is reproduced below.
7. An apparatus for use in recording a maxillary-arch
relationship of a patient’s teeth, comprising:
a bite fork;
an impressionable material coupled to a top surface
of the bite fork; and
an elastically deformable bite fork stabilizer
coupled to a bottom surface of the bite fork, wherein the
elastically deformable bite fork stabilizer has a thickness
of about 4 mm to about 13 mm and a width of about 3 mm
to about 65 mm, wherein the bite fork stabilizer is
generally u-shaped having a first leg and a second leg, and
wherein the elastically deformable bite fork stabilizer
comprises:
an elastically deformable foam layer; and
an adhesive layer disposed between the
elastically deformable foam layer and the bite fork; and
wherein the adhesive layer comprises
adhesive tape and the adhesive tape adheres the bite fork
stabilizer to the bite fork.

REJECTIONS
Claims 7, 9, 10, and 12–14 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Minneman (US 5,235,991, iss. Aug. 17, 1993) and
Lee (US 5,059,120, iss. Oct. 22, 1991).
Claims 7, 12–14, and 16–20 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Wieland (GB 2,014,456 A, pub. Aug. 30, 1979) and
Minneman.
Claims 21–26 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kois (US 6,582,931 B1, iss. June 24, 2003), Wieland, and
Minneman.

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ANALYSIS
Claims 7, 9, 10, and 12–14
as unpatentable over Minneman and Lee
Appellant argues claims 7, 9, 10, and 12–14 as a group. Appeal Br.
6–13. We select claim 7 as the representative claim, with claims 9, 10, and
12–14 standing or falling with claim 7. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner found that Minneman discloses an apparatus as recited
in independent claim 7, except for a u-shaped stabilizer and impressionable
material coupled to the top surface of the bite fork. Final Act. 2–3. The
Examiner determined that a u-shaped stabilizer would have been an obvious
matter of design choice “to make the different portions of the bite stabilizer
of whatever form or shape was desired or expedient” and a change in form
or shape is generally recognized as being within the level of ordinary skill in
the art absent unexpected results. Id. at 3. The Examiner found that Lee
discloses a bite fork with an impressionable material coupled to a top surface
and determined that it would have been obvious to incorporate this material
into the top surface of Minneman’s bite tray to provide a bite impression of a
patient as taught by Lee. Id.
Appellant raises a number of arguments. First, Appellant argues that
there is no motivation to combine Minneman and Lee because Minneman is
directed to devices used for electro-convulsive therapy and Lee already has
an apparatus for making an impression. Appeal Br. 8–9. Appellant argues
that the combination merely performs the exact purpose already performed
by Lee. Id. at 9. Appellant also argues that the Examiner is engaging in
hindsight reconstruction because there is no deficiency in Lee to correct or
improvement to be gained and Minneman is not for dental use. Id. at 11–12.
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These arguments are not persuasive because the Examiner is adding
Lee’s bite impression features to Minneman to allow Minneman’s device to
take a bite impression as taught by Lee. See Final Act. 3. The Examiner’s
reasoning is supported by a rational underpinning. Minneman’s mouth
guard can be used for many procedures such as positioning the maxilla and
mandible for a period of time, film studies, and magnetic resonance studies.
Minneman, 2:15–20; Final Act. 2. These procedures relate to recording
maxillary-mandible relationships of a patient’s teeth as claimed. Ans. 2–3.
Minneman uses compressible portion 24 on the bottom surface of the
device in varied thicknesses and widths to stabilize the device with different
mouth sizes and teeth arrangements including edentulous ridges in Figure 7.
Minneman, 6:7–38. The combined teachings of Minneman and Lee provide
an improved way to stabilize a bite fork in a patient’s mouth to take dental
impressions more accurately and do not merely replicate Lee’s teachings as
Appellant alleges. We find that Minneman’s teaching of a device that fixes
the position of the maxilla and mandible for a period of time would have
motivated a skilled artisan to use that device to take impressions as taught by
Lee or x-rays of teeth for dental work. See Appeal Br. 11–12; Ans. 2–3.
We also are unpersuaded by Appellant’s arguments that Minneman’s
shape cannot be modified to a u-shape as claimed. Appeal Br. 10. In this
regard, Minneman discloses its device as extending in a v- or y-shape along
a patient’s teeth in the same manner as Appellant discloses its u-shaped bite
fork extending along the maxillary and mandibular rows of teeth of a patient.
Minneman, 3:17–37; Spec. ¶¶ 31–33.

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Minneman’s device 20 includes a rounded cutout area 32 (Figs. 1, 5)
that makes device 20 “generally u-shaped” as claimed. If handle 26, which
extends from the base of device, is not considered as part of the “bite fork,”
device 20 has even more of a u-shape as claimed. In this regard, Lee’s bite
fork 10 has a u-shaped configuration if handle 20 and the extension (base 14)
from bite fork 10 to handle 20 are not considered to be part of bite fork 10.
Appellant discloses a similar shape of bite fork 22 in Figure 8 of the
present application. Bite fork 22 is u-shaped only if base 24 and handle 30
are not considered to be part of the bite fork. Moreover, v-shape and y-
shape configurations accomplish the same function by placing rows/arms
containing impressions and stabilizers between the patient’s maxillary and
mandibular teeth. We are not persuaded of error in the determination of the
Examiner that a u-shape is an obvious design choice in view of Minneman’s
disclosure of device 20 with a similar configuration and purpose as Lee’s
bite fork 10, and Appellant’s disclosure of bite fork 22 of similar shape.
A related argument is Appellant’s argument that Minneman does not
disclose a “bite fork.” Appeal Br. 12. This argument is not persuasive for
several reasons. First, claim 7 does not recite any particular structural
features of the claimed bite fork and, indeed, Appellant does not explain
what features of the claimed “bite fork” are missing from Minneman’s
device 20, particularly when device 20 has a generally u-shape and handle
26. Minneman discloses device 20 as being clamped between a person’s
teeth. Minneman, Figs. 4, 7. Appellant similarly discloses that bite fork 22
may be in the general shape of a row of teeth and may include handle 30 to
support bite fork 22 in use. Spec. ¶¶ 38–40. Thus, Appellant distinguishes
between the bite fork and an additional handle.
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We also determine that Minneman is analogous art at least because it
is reasonably pertinent to the problem addressed by Appellant. Appellant’s
device is directed to stabilizers and is “focused on the stabilization of bite
forks for use in modeling a more accurate relationship of the patient’s teeth
to the cranial base.” Appeal Br. 13. Minneman’s device uses stabilizers in
the form of compressible portions 24 to position a planar mouth guard in a
patient’s mouth and between the maxillary and mandibular teeth for periods
of time for film studies and other procedures. Minneman, 2:15–25, 2:37–59.
We find that Minneman’s teachings relate to Appellant’s need for a device
that can be positioned in a person’s mouth for long periods to fix a patient’s
teeth in a stable position for impressions and other studies. See Spec. ¶ 3.
Secondary Evidence
Because the Examiner’s findings and determination of obviousness
are supported by a preponderance of evidence and rational underpinnings,
we next consider Appellant’s evidence of long felt need and commercial
success. Appellant argues that declarations of colleagues attest to a long felt
need for the claimed invention and its commercial success. Appeal Br. 13.
The evidence of commercial success is Dr. Fletcher’s statement that
Panadent Corporation ordered over 6500 units as of May 17, 2012, the date
of his declaration. Declaration of Gayle Fletcher under 37 C.F.R. § 132,
dated May 17, 2012, ¶ 12; see Appeal Br. 13. Sales of 6500 units between
January 2010 when Dr. Fletcher developed the claimed bite fork stabilizer
and May 17, 2012, is weak evidence of commercial success because there is
no sales data after that date and no evidence of the market share held by this
product. See In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (units sold
without any market share is a very weak showing of commercial success).
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Declarations of other dentists that stabilization of the bite fork is an
important need that was unmet for over 20 years until introduction of the
Bite Fork Stabilizer by Dr. Fletcher provide evidence of an unmet need.
Their declarations describe other devices that were used to stabilize a bite
fork with less than satisfactory results. These materials included cotton
rolls, denture wax, modeling compound, fingers, and “just about anything
else normally found in a dental office.” Declaration of Gayle Fletcher ¶ 7.
Their declarations further describe their use of the device as an improvement
over these other prior art solutions and thereby indicate some commercial
success in their purchase and use of the Bite Fork Stabilizer. However, these
dentists do not provide any indication of unit sales, price, or market share
enjoyed by the Bite Fork Stabilizer.
Their declarations thus provide evidence of a need in the art that was
unmet for 20 years by their account. They describe the Bite Fork Stabilizer
as being attached to a bottom surface of a bite fork while an impressionable
material is coupled to the top surface. They do not indicate the dimensions
of the Bite Fork Stabilizer or any particular dimensions as being relevant to
the success of the device. Thus, it is not clear how close the nexus is to any
success of this device and the claimed device and method with elastically
deformable bite fork stabilizer that has a thickness of about 4 mm to about
13 mm and a width of about 3 mm to about 65 mm as claimed.
The Examiner explains persuasively that Wieland’s pressure cushions
provided stabilizing structures for use with a bite fork placed in a person’s
mouth to take dental impressions. Ans. 8. Minneman also taught the use of
such stabilizing structures with devices that fix the position of jaws and teeth
during procedures like dental impressions. Id.
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Weighing all of the evidence anew, we find that the evidence of
commercial success and long felt need does not outweigh the evidence of
obviousness. Minneman taught that elastically deformable compressible
portions 24 may be added to planar devices 20 to stabilize a patient’s jaws in
relationship to one another irrespective of the different sizes and shapes of
patients’ mouths and different tooth patterns. Minneman, 2:15–25, 6:7–51,
Fig. 7. Minneman used compressible portions 24 in different sizes and
thicknesses to fix the position of a patient’s jaws for periods of time for film
studies and numerous procedures that could include dental impressions of
Lee. Id. at 2:15–20. Minneman issued on August 17, 1993, so its teachings
were available as of that date to meet the need identified by Appellant.
Wieland, discussed in the next rejection, also teaches the use of dental
pressure cushion 10 to stabilize impression tray 14 in a patient’s mouth long
enough to take accurate impressions of a patient’s teeth. Wieland, 1:5–33,
1:94–117, 2:66–76, 2:96–100. Wieland’s pressure cushion 10 met the same
need identified by Appellant and the declarants of stabilizing an impression
tray in a patient’s mouth long enough to take an accurate impression without
the need for inadequate cotton rolls or a dentist’s fingers. Id. at 1:46–55,
94–109, Fig. 1. Wieland’s teachings were published on August 30, 1979.
Accordingly, we sustain the rejection of 7, 9, 10, and 12–14.
Claims 7, 12–14, and 16–20
as unpatentable over Wieland and Minneman
Appellant argues claims 7, 12–14, and 16–20 as a group. Appeal Br.
14–17. We select claim 7 as representative, with claims 12–14 and 16–20
standing or falling with claim 7. See 37 C.F.R. § 41.37(c)(1)(iv).
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The Examiner found that Wieland discloses an apparatus substantially
as recited in independent claims 7 and 16 except for the claimed thicknesses
and widths. Final Act. 4. The Examiner found that Minneman discloses an
oral apparatus that has an elastically deformable bite fork stabilizer with the
claimed thickness and width ranges. Id. at 5. The Examiner determined it
would have been obvious to make the thickness and width of the elastically
deformable layer of Wieland of a thickness and width taught by Minneman
to provide trays that can be used by patient’s with different mouth sizes and
teeth arrangements as Minneman teaches. Id. The Examiner determined
that it would have been obvious to make the elastically deformable layer of
Wieland of polyethylene foam as taught by Minneman to provide a durable
compression material for such a stabilizer. Id.
Appellant’s argument that there is no motivation to combine teachings
of Wieland and Minneman does not address the Examiner’s determination
that it would have been obvious to modify Wieland’s bite impression device
to make the elastically deformable stabilizer in the dimensions taught by
Minneman so that the tray can be used with a wide range of mouth sizes and
teeth arrangements. Final Act. 5; see Appeal Br. 14–15. Therefore, we are
not persuaded of error in the Examiner’s determination. Moreover, we find
that the Examiner’s reasoning is supported by a rational underpinning for the
reasons discussed above in that Minneman teaches the use of its device in
procedures that, like a dental impression in Wieland, require positioning of
the maxilla and mandible for a period of time and for film studies and many
other procedures. Minneman, 2:15–20; Wieland, 1:17–33, 1:94–103.

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Appellant’s argument that Wieland does not disclose a bite fork does
not apprise us of error in the Examiner’s finding that Wieland discloses such
a device. Final Act. 4; Appeal Br. 15. A patient bites down onto Wieland’s
u-shaped device to make a dental impression. Wieland, 1:110–128, 2:23–
39. Appellant’s reference to “Clinical Removable Partial Prosthodontics” as
evidence of a bite fork and its use as a specific dental instrument (Appeal Br.
16) does not apprise us of reasons why Wieland’s (or Minneman’s) device is
not a bite fork. We are not apprised of any features of the claimed “bite
fork” that are not disclosed by Wieland or Minneman. Even if we read such
features into “bite fork” as a handle, the devices of Wieland and Minneman
include handles. Wieland, Fig. 2 (tab 12); Minneman, Fig. 1 (handle 26).
The strong evidence of obviousness outweighs the weak evidence of
commercial success and relatively weak evidence of long felt need in view
of Wieland’s disclosure of a device with all of the features of claim 7 except
the stabilizer dimensions, which Minneman teaches. Nor are we persuaded
that Appellant’s stabilizer met a long-felt need when Wieland’s teachings
were published in August 30, 1979, and Minneman issued as a patent on
August 17, 1993. Ans. 8. Their teachings address the same need as the
claimed apparatus that stabilizes a device that a patient bites to record the
relationship of a patient’s teeth and jaws.
Thus, we sustain the rejection of claims 7, 12–14, and 16–20.
Claims 21–26 as unpatentable
over Kois, Wieland, and Minneman
Appellant argues claims 21–26 as a group. Appeal Br. 17–21. We
select claim 21 as representative, with claims 22–26 standing or falling with
claim 21. See 37 C.F.R. § 41.37(c)(1)(iv).
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The Examiner found that Kois teaches a method of stabilizing a bite
fork as recited in independent claim 21 except for impressionable material
on only one side (Kois discloses impression material coupled on two sides),
but determined it would have been obvious to replace the impressionable
material on one side of Kois’s bite fork with Wieland’s bite fork stabilizer to
improve the stability of the bite fork and impression procedure as taught by
Wieland. Final Act. 6–7. The Examiner relied on Minneman to teach the
claimed dimensions of the elastically deformable layer. Id. at 7–8.
Appellant’s argument that there is no motivation to combine teachings
of Minneman and Wieland, that Minneman is non-analogous art, and that the
Examiner engaged in impermissible hindsight in combining the teachings of
Minneman’s with those of Wieland and Kois (Appeal Br. 17–21) have been
considered in the previous rejections and are not persuasive for the reasons
set forth in our discussion of those rejections.
Appellant also argues that it would not have been obvious to remove
impression material from one side of the bite fork of Kois because removal
would destabilize the bite fork during a facebow/earbow procedure. Appeal
Br. 19. This argument is not persuasive because the Examiner proposes to
improve Kois’s bite fork 14 and dual impression trays 34, 36 by replacing
one impression tray with Wieland’s bite fork stabilizer 10 to improve the
stability and outcome of impression procedures of Kois’s device as taught by
Wieland. Minneman further teaches that deformable bite fork stabilizers
coupled to a bottom surface of a bite fork improve the stability of the device.
Final Act. 8. The Examiner’s reasons for modifying Kois are supported by
rational underpinnings based on teachings of Wieland and Minneman of the
benefits of their stabilizers on bite fork devices.
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Appellant argues that Kois “merely describes the problems that
Appellant’s claimed invention [is] addressing.” Appeal Br. 19. Appellant
also asserts that “Kois is simply describing stabilization methods that do not
work.” Id. This argument is not persuasive because the Examiner proposes
to improve the stability of Kois’s device by replacing one impression tray
with the stabilizer of Wieland in dimensions taught by Minneman to thereby
position the maxillary and mandibular teeth in fixed positions for a sufficient
period of time to take accurate dental impressions in patients with different
dental situations. Minneman, 2:15–25. A skilled artisan would understand
Minneman’s teaching to use its device in procedures that fix a patient’s jaws
to include taking impressions, particularly where Minneman and Wieland
teach bite forks that patients clamp between their teeth. See Ans. 2–3. The
absence of the term “bite fork” in either reference is not determinative. A
reference does not have to disclose claimed subject matter in the same terms
and Appellant has not identified any claimed feature of the bite fork that is
not disclosed by Minneman or Wieland. See Appeal Br. 19–20. Minneman
and Wieland teach generally u-shaped devices that patients clamp between
their teeth to fix the positions of the jaws and teeth as discussed above.1

1 For these reasons, Appellant’s reference to “Clinical Removable Partial
Prosthodontics” in this and the previous rejections is not persuasive of error
in the Examiner’s findings that Wieland and Minneman teach bite forks as
claimed. The photographs in that reference are barely legible. The bite fork
is obscured by a “red molding plastic” that is placed on top of the bite fork.
Clinical Removable Partial Prosthodontics, 161–162, Figs. 6-7B, 6-8B, 6-
9A. The bite fork shown in Figure 6-3 (page 160) is attached to a handle. It
has a different shape than the bite fork that Lee and Appellant disclose. The
term “bite fork” apparently is used to describe devices with different shapes
that can be positioned between a patient’s jaws and teeth.
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Weighing all the evidence anew, the strong evidence of obviousness
outweighs the weak evidence of commercial success and the relatively weak
evidence of long felt need in view of Wieland’s disclosure of a device with
all of the features of claim 21 except for the stabilizer dimensions, which
Minneman teaches. Kois teaches the use of such devices with a facebow or
earbow as claimed. Nor are we persuaded that Appellant’s stabilizer met a
long-felt need because Wieland and Minneman address the same need as the
claimed method of stabilizing a device that a patient bites to fix the position
of the patient’s teeth and jaws as discussed above. Wieland was published
in August 30, 1979. Minneman issued on August 17, 1993. Ans. 8.
Thus, we sustain the rejection of claims 21–26.2
DECISION
We affirm the rejections of claims 7, 9, 10, 12–14, and 16–26.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

2 Appellant’s argument that Minneman’s compressible portions 24 do not
extend beyond the molars (Reply Br. 2) is raised for the first time in the
Reply Brief and not in response to arguments raised in the Answer. Thus, it
is untimely. 37 C.F.R. § 41.41. Moreover, we are not persuaded that
Minneman would be unsuitable for use as a bite fork when Minneman
teaches that its configuration provides stability for procedures that require
positioning of the maxilla and mandible for a period of time. Minneman,
2:15–25; Ans. 2–3. There is no evidence that Minneman’s device 20 is
unsuitable for impressions. Even so, a skilled artisan is a person of ordinary
creativity who could modify compressible portions 24 to provide the
requisite stability, particularly in view of Wieland’s teachings that u-shaped
compressible portion 10 is effective to stabilize impression tray 14.