Ex Parte Freilich et al

Patent Trial and Appeal Board

Nov 20, 2012

11078600 (P.T.A.B. Nov. 20, 2012)

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.
11/078,600 03/11/2005 Martin A. Freilich 81279(49384) 2925
21874 7590 11/20/2012
EDWARDS WILDMAN PALMER LLP
P.O. BOX 55874
BOSTON, MA 02205
EXAMINER
EIDE, HEIDI MARIE
ART UNIT PAPER NUMBER
3732
MAIL DATE DELIVERY MODE
11/20/2012 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 MARTIN A. FREILICH, A. JON GOLDBERG,
and JONATHAN C. MEIERS
__________

Appeal 2011-012367
Application 11/078,600
Technology Center 3700
__________

Before TONI R. SCHEINER, DONALD E. ADAMS, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
of making a dental implant system. The Examiner rejected the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.

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Statement of the Case
Background
“The present invention relates generally to an implant system and . . .
the method of making the suprastructure and incorporating it into the
implant system” (Spec. 1 ¶ 001). According to the Specification, “this
process differs from standard procedures used to manufacture implant
prostheses. Instead of inserting the abutments in the patient’s mouth,
fabricating the substructure that attaches to the abutments, followed by
fabricating the suprastructure that attaches to the substructure, this invention
first begins with the step of suprastructure fabrication” (Spec. 4-5 ¶ 0022).
The Claims
Claims 22-33 are on appeal. Claim 22 is representative and
is reproduced below:
22. A method of making an implant system comprising:
making a suprastructure;
fitting the suprastructure in the patient’s mouth to
make a bite registration between the suprastructure and the
opposing arch;
using the suprastructure as an impression tray to
record the position of implants in a patient’s mouth and to
provide an impression of the implants;
using the impression to make a master cast having
implant analogs;
making a substructure using the master cast;
positioning the suprastructure on the substructure; and
applying adhesive resin between the suprastructure
and the substructure to bond the suprastructure to the
substructure.

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The Issues

A. The Examiner rejected claims 22, 23, 25, 26, and 33 under 35 U.S.C.
§ 103(a) as obvious over Kennard,1 Oshida,2 and Gillard3 (Ans. 4-7).
B. The Examiner rejected claims 24, 27, 28, and 30 under 35 U.S.C. §
103(a) as obvious over Kennard, Oshida, Gillard, and Names4 (Ans. 7-8).
C. The Examiner rejected claim 29 under 35 U.S.C. § 103(a) as obvious
over Kennard, Oshida, Gillard, and Allred5 (Ans. 8).
D. The Examiner rejected claim 31 under 35 U.S.C. § 103(a) as obvious
over Kennard, Oshida, Gillard, Names, and Hozumi6 (Ans. 9).
E. The Examiner rejected claim 32 under 35 U.S.C. § 103(a) as obvious
over Kennard, Oshida, Gillard, and Boettcher7 (Ans. 9-10).
A. 35 U.S.C. § 103(a) over Kennard, Oshida, and Gillard
The Examiner finds that “Kennard teaches a method of making an
implant system comprising making a suprastructure, using the suprastructure
as an impression tray to record the position of implants in a patient's mouth
and to provide an impression of the implants, and making a master
cast/substructure from the impression having implant analogs” (Ans. 4-5).
The Examiner finds that Oshida “teaches the step of making a master cast
from an impression and making the substructure from the master cast and

1 Kennard, D., US 6,655,962 B1, issued Dec. 2, 2003.
2 Oshida et al., US 6,322,364 B1, issued Nov. 27, 2001.
3 Gillard, F. B., US 3,464,111, issued Sep. 2, 1969.
4 Names, C., US 6,666,684 B1, issued Dec. 23, 2003.
5 Allred et al., US 2003/0186197 A1, published Oct. 2, 2003.
6 Hozumi et al., US 6,402,517 B1, issued Jun. 11, 2002.
7 Boettcher, R. US 4,479,527, issued Oct. 30, 1984.
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applying an adhesive between the suprastructure and the substructure to
bond the suprastructure to the substructure” (Ans. 5). The Examiner finds it
obvious “to modify the step of making the substructure taught by Kennard
with the step of making it from a master cast taught by Oshida in order to
provide the substructure with higher strength, superior corrosion resistance
and excellent dimensional accuracy and stability” (Ans. 5).
The Examiner finds that Gillard teaches “the step of making a bite
registration between the suprastructure and the opposing arch” (Ans. 6). The
Examiner finds it obvious to “modify the method taught by Kennard/Oshida
with the step of making a bite registration between the opposing arch and
suprastructure in order to ensure the proper alignment” (Ans. 6).
Appellants contend that Kennard’s acrylic method “does not include
providing an impression of implants, especially in the context of making a
master cast from the impression, despite the Examiner’s assertion” (App. Br.
13). Appellants contend that:
To the contrary, the hardened acrylic in the acrylic shell
cannot be used as an impression for making a master cast,
since it would have to be broken off of the copings. See,
Kennard Fig. 9D. Moreover, to even make a master cast
after the acrylic is hardened would be nonsensical, since the
prosthesis is complete and ready for refinement once the
acrylic is hardened. This Kennard method altogether skips
taking an impression and making a master cast therefrom.

(App. Br. 13).
Appellants contend that there “is no need in this Kennard method for
using an impression tray to take an impression or a need for making a master
cast from an impression, as the terms are understood in the art, since the
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completed acrylic structure is formed in situ, not on a master cast outside the
mouth” (App. Br. 14). Appellants contend that in “Kennard, the structure
shown in Fig. 9C is not a master cast or impression, but is instead the actual
tissue of the patient’s mouth!” (App. Br. 15).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that the cited prior art teaches or suggests
“using the suprastructure as an impression tray to record the position of
implants in a patient’s mouth and to provide an impression of the implants”
as required by claim 22?
Findings of Fact
1. Figure 8E of Kennard is reproduced below:

Fig. “8E illustrate[s] initial steps for implanting immediate provisional
implants” (Kennard, col. 6, ll. 39-40).
2. Figures 9C-E of Kennard are reproduced below:

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FIGS. 9C to “9E illustrate further steps for providing temporary fixed
prostheses over the immediate provisional implants of FIG. 8E” (Kennard,
col. 6, ll. 43-45).
3. Figure 10 of Kennard are reproduced below:

“FIG. 10 illustrates a further step for providing temporary fixed prostheses
over the immediate provisional implants of FIG. 9C” (Kennard, col. 6, ll.
46-49).
4. Kennard teaches forming an implant:
As shown in FIG. 9C (step 8), copings 26 are then placed
over the implants. In step 9 (not shown), any exposed
undercuts on the implant are blocked out. The soft tissue and
sutures are lubricated with petroleum jelly. As shown in
FIG. 9D, in step 10, autopolymerizing, tooth-colored acrylic,
mixed to a pliable consistency, is placed into a processed
acrylic shell 52 and placed over the copings 26. Desirably,
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the acrylic is moderately viscous so as to avoid being forced
under the tissue onto the implant 10, hardening preferably
only over the coping 26. The patient is instructed to close in
40centric relation occlusion. A prosthesis 54 is thereby
formed, as shown in FIG. 9E.

(Kennard, col. 9, ll. 31-42).
5. Kennard teaches that:
As shown in Figure 9E, after the acrylic has hardened, the
provisional prosthesis 54 is removed with the copings 26
secured in the prosthesis (step 11). If desired, excess acrylic
can be removed from the prosthesis and the underside
checked and cleared of any soft tissue impingements. The
occlusion may also need to be refined and the provisional
restoration removed, shaped and polished prior to affixation.
Once suitably refined the restoration or provisional
prosthesis 54 is preferably cemented into place using a
suitable temporary adhesive

(Kennard, col. 9, ll. 43-52).
6. Kennard teaches that:
In another embodiment, a direct technique is provided using
a patient’s existing denture 56. Steps 1 to 9 are completed as
described above with respect to FIGS. 8A-9C. Then . . .
flanges are removed from the patient’s existing denture. The
denture 50 is hollowed from second pre-molar to second
pre-molar. In step 11a, autopolymerizing acrylic is placed in
the hollowed out denture 56 and placed over the copings 26,
as shown in FIG. 10. The patient is instructed to close in
centric relation occlusion. After the material has set, the
denture is removed and cleaned, trimming excess material,
and polishing the denture and removing any soft tissue
impingements. The denture 56 is then cemented in place
using a temporary cement.

(Kennard, col. 9, ll. 55-67).
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7. Oshida teaches that “[a]rticle 21 includes a dental stone cast 22.
Replicates of underlying components of the overall system are mounted on
the cast 22 . . . It will be understood that the presence of all such elements is
preferred, but will not be absolutely required in all instances, with the
important feature being that the die present a three-dimensional
configuration replicating that which will exist in the patient” (Oshida, col.
10, ll. 1-11).
8. Oshida teaches “an article 21 which can be employed as a die in
a superplastic forming process” (Oshida, col. 9, ll. 66-67).
9. Oshida teaches that the “completed article 21 is then used as a
die in a superplastic forming process. Accordingly, a thin sheet 22 of a
superplastically-formable metal is superplastically formed over article 21 . . .
providing a structure as illustrated in FIG. 3” (Oshida, col. 10, ll. 12-17).
10. Oshida teaches that the “superplastically-formed denture base
17 is cut from the sheet. Patrices 17 are soldered to the undersurface of the
base in locations corresponding to the matrices 16 of the underlying
superstructure. An acrylic resin base 19 having artificial teeth 20 mounted
thereon is prepared, and is bonded to the superplastically-formed element”
(Oshida, col. 14, ll. 14-19).
11. Gillard teaches that “the dentures are set in centric registry to
the opposite sides of an alignment plate 20. . . . Small daubs of non-
hardening glue 22 releasably retain the tooth structures in proper registry to
the alignment plate 20. Preferably the alignment plate 20 is constructed of
transparent material to provide visual access to the first attached denture to
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assist in the alignment of the secondly attached denture” (Gillard, col. 3, ll.
9-20).
Principles of Law
The Examiner has the initial burden of establishing a prima facie
case obviousness under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443,
1445 (Fed. Cir. 1992).
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Analysis
The Examiner acknowledges that Kennard’s implant system “does not
specifically teach making a master cast from the impression and making the
substructure from the master case [sic cast]” (Ans. 5). The Examiner relies
upon combining Oshida to teach “the step of making a master cast from an
impression and making the substructure from the master cast” (Ans. 5). The
Examiner reasons that combining Kennard and Oshida will “provide the
substructure with higher strength, superior corrosion resistance and excellent
dimensional accuracy and stability” (Ans. 5).
While Appellants address Kennard, they do not address the
deficiencies of the combination of Kennard with Oshida, the point which the
Examiner is making in citing Keller (see Ans. 11-12). However, we review
the entire record on Appeal, and we are not persuaded that the rejection
provides a satisfactory reason to make a master cast from an impression in
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Kennard to form the substructure of Oshida. Gillard is not cited to address
this issue (FF 11).
When Oshida makes a cast at either portion identified by the
Examiner, the cast is not formed from a suprastructure which is capable of
making a bite registration as required by claim 22. At columns 9 and 10 of
Oshida, the cast is formed from an “article 21 which can be employed as a
die in a superplastic forming process” (Oshida, col. 9, ll. 66-67; FF 8-9).
The article 21 is not, however, a suprastructure consistent with the
requirements of claim 22 or Kennard, since it lacks the teeth necessary to
make a bite registration. At column 14 of Oshida, the denture base 17 also
does not serve as a die, but rather is bonded to an acrylic resin base 19
having artificial teeth 20, and is not used as a suprastructure consistent with
the requirements of claim 22 (FF 10).
The reasons for combining Oshida with Kennard given in the
rejection, “higher strength, superior corrosion resistance and excellent
dimensional accuracy and stability” (Ans. 5) are likely based in Oshida at
column 4, ll. 55-58. These may be reasons to use the materials taught in
Oshida, but the Examiner has not established that these are reasons to
modify Kennard’s method of fabrication of the implant and incorporate a
step of “using the suprastructure as an impression tray to record the position
of implants in a patient’s mouth and to provide an impression of the
implants” as required by claim 22.
Therefore, in the absence of any teaching, suggestion, or reason in the
prior art for “using the suprastructure as an impression tray to record the
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position of implants in a patient’s mouth and to provide an impression of the
implants” as required by claim 22, we necessarily reverse this rejection.
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that the cited prior art teaches or suggests “using the suprastructure as an
impression tray to record the position of implants in a patient’s mouth and to
provide an impression of the implants” as required by claim 22.
B.-E. 35 U.S.C. § 103(a)
Each of these rejections relies upon the underlying obviousness
rejection including Kennard, Oshida, and Gillard. The Examiner failed to
establish that Names, Allred, Names and Hozumi, or Boettcher make up for
the foregoing deficiencies in the combination of Kennard, Oshida, and
Gillard. Having reversed the rejection of claim 1 over Kennard, Oshida, and
Gillard, we necessarily reverse these obviousness rejections, which do not
teach “using the suprastructure as an impression tray to record the position
of implants in a patient’s mouth and to provide an impression of the
implants” as required by claim 22.
SUMMARY
In summary, we reverse the rejection of claims 22, 23, 25, 26, and 33
under 35 U.S.C. § 103(a) as obvious over Kennard, Oshida, and Gillard.
We reverse the rejection of claims 24, 27, 28, and 30 under 35 U.S.C.
§ 103(a) as obvious over Kennard, Oshida, Gillard, and Names.
We reverse the rejection of claim 29 under 35 U.S.C. § 103(a) as
obvious over Kennard, Oshida, Gillard, and Allred.
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We reverse the rejection of claim 31 under 35 U.S.C. § 103(a) as
obvious over Kennard, Oshida, Gillard, Names, and Hozumi.
We reverse the rejection of claim 32 under 35 U.S.C. § 103(a) as
obvious over Kennard, Oshida, Gillard, and Boettcher.

REVERSED
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