Ex Parte Gantes

Patent Trial and Appeal Board

Aug 19, 2016

12789359 (P.T.A.B. Aug. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121789,359 05/27/2010 Bernard Gantes
34284 7590 08/23/2016
Rutan & Tucker, LLP
611 ANTON BL VD
SUITE 1400
COST A MESA, CA 92626
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.
1Ol835-0006P2 8472
EXAMINER
HOUSTON, ELIZABETH
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
08/23/2016 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):
patents@rutan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BERNARD GANTES
Appeal2014-007790
Application 12/789,359
Technology Center 3700
Before JOHN C. KERINS, BRANDON J. WARNER, and
SEAN P. O'HANLON, Administrative Patent Judges.
O'HANLON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Bernard Gantes (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner's decision rejecting claims 1-12 and 22-30. 1 We have
jurisdiction over this appeal under 35 U.S.C. § 6(b ).
SUMMARY OF DECISION
We AFFIRM.
1 Claims 13-21 are canceled. App. Br. 17 (Claims Appendix).
Appeal2014-007790
Application 12/789,359
SUMMARY OF INVENTION
Appellant's invention "relate[s] to systems and methods for use in the
production and/or delivery of dental prostheses." Spec. 1. Claim 1,
reproduced below from page 16 (Claims Appendix) of the Appeal Brief, is
illustrative of the claimed subject matter:
1. A system, for planning an oral or facial endosseous
implantation in a patient, comprising:
a locator having a plurality of openings thereon in a
known reference configuration prior to use whereby the locator
is used in a CT scan to take a digital impression of the patient's
Jaw;
a patient surface scanner to produce an intra oral digital . .
1mpress10n;
a treatment planning algorithm executed by a computer
to produce a machined model replica by merging the intra oral
digital impression and the digital impression of the individual's
Jaw;
a fabricator to manufactures at least a surgical guide and
a prosthesis; and
a robotic implant device to place an implant in the
patient's jaw.
Independent claim 30 is also directed to a system and includes similar
limitations.
REFERENCES
The Examiner relies on the following prior art references in rejecting
the claims on appeal:
So go
Powell
Schmitt
US 2006/0127848 Al
US 2007/0092854 Al
US 2008/0064008 Al
2
June 15, 2006
Apr. 26, 2007
Mar. 13, 2008
Appeal2014-007790
Application 12/789,359
REJECTIONS 2
Claim 2 is rejected under 35 U.S.C. § 112, first paragraph, as failing
to comply with the written description requirement. 3
Claims 2, 6, and 23 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
Claims 1-12 and 22-30 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Sogo, Schmitt, and Powell.
ANALYSIS
Written Description Rejection
Claim 2 depends directly from claim 1 and further requires that "the
plurality of openings are configured in a grid on the locator to act as
reference points during the CT scan." App. Br. 16 (Claims Appendix). The
Examiner finds that "the [S]pecification is silent regarding the plurality of
openings [being] configured in a grid. The drawings appears to show the
plurality of openings in a random distribution on the locator." Final Act. 4.
The Examiner concludes that claim 2, therefore, fails to comply with the
written description requirement of 35 U.S.C. § 112, first paragraph.
2 We note that claim 25 contains a typographical error in that the claim
depends from itself. We assume that it was intended that claim 25 depend
from claim 1 (see March 28, 2013 Amendment, 10) and consider this
oversight to be harmless error. In the event of further prosecution of this
application, Appellant and the Examiner may wish to consider taking
appropriate action to correct this informality.
3 The rejections of claims 1, 3-12, and 22-30 under 35 U.S.C. § 112, first
paragraph, have been withdrawn in the Answer. See Ans. 2.
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Appeal2014-007790
Application 12/789,359
Appellant responds by partially reciting the language of claims 1 and
2. App. Br. 10. This is not persuasive because "[a] statement which merely
points out what a claim recites will not be considered an argument for
separate patentability of the claim." 37 C.F.R. § 41.37(c)(iv).
In the Reply Brief, Appellant discusses the disclosed mouthpiece and
the use thereof. Reply Br. 4 (citing Spec. Fig. 17). Appellant does not,
however, set forth where in the Specification the recited grid is disclosed.
Appellant has failed to apprise us of any error, and, accordingly, we
sustain the rejection.
Indefiniteness Rejections
Claim 2
The Examiner determines that "it is unclear what is meant by
'configured in a grid,"' and because Appellant's "drawings appear to show
the plurality of openings in a random distribution," "it is unclear what
orientations would serve as being configured in a grid." Final Act. 5.
Appellant responds by partially reciting the language of claims 1 and
2. App. Br. 12. However, "[a] statement which merely points out what a
claim recites will not be considered an argument for separate patentability of
the claim." 37 C.F.R. § 41.37(c)(iv). Thus, Appellant has failed to apprise
us of any error, and we summarily sustain the rejection of claim 2. See
Hyattv. Dudas, 551F.3d1307, 1314 (Fed. Cir. 2008) (explaining that
summary affirmance without consideration of the substantive merits is
appropriate where an appellant fails to contest a ground of rejection).
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Appeal2014-007790
Application 12/789,359
Claim 6
Claim 6 depends indirectly from claim 1, and further requires that "a
treatment planning algorithm exports coordinates of the implant in order to
fabricate a template referred to as a surgical guide." App. Br. 17 (Claims
Appendix). The Examiner determines that "[i]t is unclear if the treatment
planning algorithm is being positively claimed as a part of the system or
not." Final Act. 5. In response to Appellant's arguments in the Appeal
Brief, the Examiner further determines that "it is unclear how [the recitation
of claim 6] further modifies the claim( s) from which claim 6 depends." Ans.
3.
We find that the Examiner has not reasonably conveyed the rationale
for the rejection. For example, it is not clear whether the Examiner opposes
the use of "wherein" rather than "further comprising," or the use of "a
treatment planning algorithm" rather than "the treatment planning
algorithm," or finds the claim scope unclear for some other reason. The
Examiner has not provided the Appellant a fair opportunity to understand
and counter the rejection, which we, therefore, reverse.
Claim 23
Claim 23 depends indirectly from claim 1, and further requires that
"the processor is coupled to the CT scanner and directly receives data
associated with the digital impression of the patient's jaw." App. Br. 17
(Claims Appendix). The Examiner determines that "[t]here is insufficient
antecedent basis for ['the CT scanner']." Final Act. 5.
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Appeal2014-007790
Application 12/789,359
Appellant does not challenge this rejection. See Reply Br. 5.
Therefore, we summarily sustain the rejection of claim 23. See Hyatt, 551
F.3d at 1314.
Obviousness Rejections
Claim 1
The Examiner finds that Sogo discloses the invention substantially as
claimed, including, inter alia, a locator (compound 100). 4 Final Act. 5---6.
The Examiner relies on Schmitt to teach a locator (bite plate assembly 10)
having a plurality of holes (indentations 30) therein, configured in a grid,
and concludes that it would have been obvious to a skilled artisan to use
such a locator having holes therein with the Sogo system "for the purpose of
ensuring the upper and lower jaw[ s] remain in fixed relative positions during
scans." Id. at 8-9 (citing Schmitt i-fi-143--45, Fig. 3). The Examiner relies on
Powell to teach a robotic implant device, and concludes that it would have
been obvious to a skilled artisan to use such a robotic implant device in the
system of So go/Schmitt "for the purpose of more easily and accurately
implanting the implant in a desired location." Id. at 9-10 (citing Powell
i-fi-f 102---03; Sogo, Abstract).
Appellant argues that the indentations of the Schmitt locator "are
created at the time it is inserted into the patient's mouth. Even assuming
arguendo that the 'use' is after the patient has bitten into the registration
material and created the indentations, those indentations are not in any
4 Parentheticals refer to the terminology of the cited references.
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Appeal2014-007790
Application 12/789,359
known pattern until after being scanned and removed (i.e. used)." App. Br.
14.
We find this argument to be unpersuasive. Initially, we note that the
"use" recited in claim 1 is "in a CT scan to take a digital impression of the
patient's jaw." App. Br. 16 (Claims Appendix). Therefore the use (i.e., CT
scan) necessarily takes place after the indentations have been made. See
Schmitt i-f 44. Additionally, as noted by the Examiner, Schmitt's bite plate
assembly 10 can also be used after being "removed from the patient's mouth
and attached to upper 6 and lower 5 dental casts on the imaging system."
Schmitt i-f 45; see also Ans. 4. Furthermore, Appellant has not persuasively
explained the assertion that the pattern of indentations are unknown prior to
removing the bite plate assembly from the patient's mouth. To the contrary,
it would seem that because the pattern corresponds to the patient's teeth, the
pattern is "known" as soon as it is created. Appellant's arguments fail to
apprise us of error, and are, therefore, unpersuasive.
Appellant also argues that Powell only discloses "securing an implant
analog into a securing material such as epoxy located on a modified stone
cast," which, Appellant asserts, "is substantially different from implanting
into a patient's jaw." App. Br. 14 (citing Powell i-f 102). We find this
argument unpersuasive for the reasons stated by the Examiner-namely, that
Powell is only used to teach robotic placement of a component as a
substitute for manual placement of an implant in a patient's jaw. See Ans. 5.
As set forth by the Examiner, Powell's robot manipulator is used to perform
the recited use on a casting of the patient's mouth, similar to Appellant's
machined model replica. Appellant has not convincingly explained why
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Application 12/789,359
Powell's robot manipulator would not also be able to perform the same
function on the patient, or set forth any difference between Powell's robot
manipulator and the recited robot implant device that would preclude such
use. Appellant has failed to apprise us of any error.
Claim 2
Appellant argues that "[ t ]he Examiner also disregards the recitation of
dependent Claim 2 in which the openings are configured in a grid to act as
reference points during the CT scan." App. Br. 14. 5
The Examiner finds that the plurality of openings on the Schmitt
locator "are configured in a grid on the locator to act as reference points
during the CT scan." Final Act. 9. Appellant's conclusory statement fails to
apprise us of any error, and is therefore unpersuasive.
Claims 3-12 and 22-30
Appellant does not make any other substantive argument regarding
the rejection of claims 3-12 and 22-29, each of which depends, directly or
indirectly, from claim 1, or of independent claim 30. See App. Br. 14.
Therefore, we likewise sustain the rejection of these claims for the reasons
set forth above.
5 Although Appellant did not present the argument for claim 2 under a
separate subheading from the arguments regarding claim 1 as required by
our rules (see 37 C.F.R. § 41.37(c)(iv)), we nonetheless consider the merits
of Appellant's argument.
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Appeal2014-007790
Application 12/789,359
DECISION
The rejection of claim 2 under 35 U.S.C. § 112, first paragraph, is
affirmed.
The rejection of claims 2 and 23 under 35 U.S.C. § 112, second
paragraph, is affirmed.
The rejection of claim 6 under 35 U.S.C. § 112, second paragraph, is
reversed.
The rejection of claims 1-12 and 22-30 under 35 U.S.C. § 103(a) is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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