Ex Parte GantesDownload PDFPatent Trial and Appeal BoardDec 28, 201613356922 (P.T.A.B. Dec. 28, 2016) 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. 13/356,922 01/24/2012 Bernard Gantes 101836.0009P 2347 34284 7590 Rutan & Tucker, LLP 611 ANTON BLVD SUITE 1400 COSTA MESA, CA 92626 12/30/2016 EXAMINER HOUSTON, ELIZABETH ART UNIT PAPER NUMBER 3731 NOTIFICATION DATE DELIVERY MODE 12/30/2016 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 Appeal 2015-000174 Application 13/356,922 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—8 and 10—25.1 We have jurisdiction over this appeal under 35 U.S.C. § 6(b). SUMMARY OF DECISION We AFFIRM. 1 Claim 9 is canceled. App. Br. 16 (Claims Appendix). Appeal 2015-000174 Application 13/356,922 SUMMARY OF INVENTION Appellant’s claimed invention “relate[s] to systems and methods for use in the production and/or delivery of dental prostheses.” Spec. 1:11—12. Claim 1, reproduced below from page 15 (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 processor; a bone imager that communicates bone data to the processor, the bone data representative of at least a portion of a bone of the skull of the patient; a surface imager that communicates surface data to the processor, the surface data representative of at least a portion of a surface, of the patient, that is apart from the bone; wherein the processor processes the bone data and the surface data into an output comprising three-dimensional (3-D) representation data indicative of at least one of the group consisting of an oral structure and a facial structure of the patient; a fabricator that, based on the 3-D representation data, produces a physical model of the at least one of the patient’s oral structure and facial structure, the physical model indicating a planned location of an endosseous implant; and a replicator device which uses a non-metal custom shaped abutment created from the physical model and using drilling techniques, without specific computer programming, replicates a pattern of the non-metal custom shaped abutment onto a metal, permanent blank giving the blank the same physical characteristics as the non-metal custom shaped abutment. 2 Appeal 2015-000174 Application 13/356,922 REFERENCES The Examiner relies on the following prior art references in rejecting the claims on appeal: Pompa US 5,320,529 June 14, 1994 Poirier US 5,725,376 Mar. 10, 1998 Hajjar US 6,641,340 B1 Nov. 4, 2003 Sogo US 2006/0127848 A1 June 15, 2006 Wen US 2006/0275731 A1 Dec. 7, 2006 Takagi US 8,360,775 B2 Jan. 29, 2013 REJECTIONS2 Claims 1—8 and 10-25 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. Claims 1—8 and 10—22 are rejected under 35 U.S.C. § 102(b) as being anticipated by Sogo. Claim 23 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Sogo and Poirier. Claims 24 and 25 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Pompa, Takagi, and Hajjar. 2 We note that claim 11 depends from canceled claim 9. App. Br. 16—17 (Claims Appendix). We assume that it was intended that claim 11 depend from claim 1, and we treat the claim accordingly here. 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 Appeal 2015-000174 Application 13/356,922 Claims 24 and 25 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Pompa, Takagi, and Wen. Claims 1—8 and 10—22 are provisionally rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1—22 of copending U.S. Application No. 12/245,697 and Sogo. Claim 23 is provisionally rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1—22 of copending U.S. Application No. 12/245,697 and Poirier. Claim 24 is provisionally rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over claim 24 of copending U.S. Application No. 13/168,285, Takagi, and Hajjar. Claims 1—8 and 10—25 are provisionally rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1—25 of copending U.S. Application No. 13/096,608. ANALYSIS Claim Construction The Examiner determines that the term “fabricator” as used in the claims is a non-structural term modified by functional language without reciting structure to achieve the recited functions. Final Act. 4. Thus, the Examiner construes “fabricator” under 35 U.S.C. § 112, sixth paragraph, and determines that the term means “milling machine.” Id. at 5 (citing Spec. 5:16). Although Appellant does not address the Examiner’s construction of “fabricator,” Appellant defined the term to mean “milling machine” or a “multi-axis milling machine” in related Appeal No. 2015-003834. Thus, 4 Appeal 2015-000174 Application 13/356,922 there appears to be no dispute as to the meaning of the term “fabricator,” which we construe as a milling machine and equivalents thereof. Indefiniteness Rejection The Examiner determines that claims 1—8 and 10—25 are indefinite. Final Act. 8—10. Appellant has not addressed these rejections. See App. Br. 6—14. Appellant presents arguments in the Reply Brief, but such arguments are untimely and, therefore, not considered. See 37 C.F.R. § 41.41(b)(2). Accordingly, Appellant has waived any argument of error, and we summarily sustain the rejection of these claims. See Hyatt v. Dudas, 551 F.3d 1307, 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). Anticipation Rejection The Examiner finds that Sogo discloses all of the elements of independent claim 1, including, inter alia, a fabricator (member forming part 24) and a replicator (hole boring part 25). Final Act. 10—11 (citing Sogo 11 161, 162, 175, 184); see also Ans. 21—22. Appellant traverses, arguing that Sogo “does not show or describe the fabricator and replicator as claimed” because Sogo’s “boring device . . . does not replicate a pattern of the non-metal custom shaped abutment onto a metal permanent blank giving the same physical characteristics of the non-metal custom shaped abutment.” App. Br. 8—9. Appellant makes additional arguments in the Reply Brief, but such arguments are not in response to the Examiner’s Answer and, therefore, are untimely and not considered. 5 Appeal 2015-000174 Application 13/356,922 Appellant describes the recited “replicator device” as “[sjimilar to a key duplicator, the abutment replicator is used to mill a titanium blank from the hard acrylic pattern used as a template.” Spec. Fig. 18(b). Sogo discloses that guide member manufacturing device 2 includes hole boring part 25, which bores holes in accordance with instructions provided by control part 20 of the manufacturing device. Sogo 154, 162. However, notwithstanding the lack of detailed structural features for the claimed “replicator device,” the term implies a capability of replicating an article, and the Examiner has not persuasively explained or identified adequate teachings within Sogo to support, by a preponderance of evidence, the finding that Sogo’s hole boring part 25 (or any other component of Sogo’s system) is able to operate as a replicator device as disclosed and claimed by Appellant. Accordingly, we do not sustain the rejection of independent claim 1, as well as of its dependent claims 2—8 and 10-22, as being anticipated by Sogo. Obviousness Rejection Based on Sogo and Poirier The Examiner finds that Sogo discloses the system substantially as claimed in independent claim 23, but “is silent regarding a replicator device for replicating the machined master replica.” Final Act. 13—14. The Examiner finds that Poirier teaches this feature, and reasons that it would have been obvious to a skilled artisan to modify the Sogo system “by providing both a fabrication module and a replicator device as claimed, as taught by Poirier, for the purpose of using known tools for creating complicated three-dimensional objects.” Id. at 14. 6 Appeal 2015-000174 Application 13/356,922 Appellant traverses, relying only on the argument presented above with respect to independent claim 1. App. Br. 10. Appellant makes additional arguments in the Reply Brief, but such arguments are not in response to the Examiner’s Answer and, therefore, are untimely and not considered. Appellant’s arguments regarding claim 1 are unpersuasive because here the Examiner relied on Poirier, rather than Sogo, to teach the recited replicator device. Accordingly, we sustain the Examiner’s rejection of claim 23 as being unpatentable over Sogo and Poirier. Obviousness Rejection Based on Pompa, Takagi, and Hajjar The Examiner determines claims 24 and 25 to be unpatentable over Pompa, Takagi, and Hajjar. Final Act. 14—16. Appellant responds by summarizing the rejection and the cited references, but fails to assert any error in the Examiner’s findings or reasoning. App. Br. 11—12. Appellant makes additional arguments in the Reply Brief, but such arguments are not in response to the Examiner’s Answer and, therefore, are untimely and not considered. Accordingly, we sustain the rejection of these claims. Obviousness Rejection Based on Pompa, Takagi, and Wen The Examiner determines claims 24 and 25 to be unpatentable over Pompa, Takagi, and Wen. Final Act. 17—19. Appellant responds by summarizing the rejection and the cited references, but fails to assert any error in the Examiner’s findings or reasoning. App. Br. 12—14. (Appellant makes additional arguments in the Reply Brief, but such arguments are not 7 Appeal 2015-000174 Application 13/356,922 in response to the Examiner’s Answer and, therefore, are untimely and not considered.) Accordingly, we sustain the rejection of these claims. Double Patenting Rejections The Examiner provisionally rejects claims 1—8 and 10—25 on the ground of non-statutory obviousness-type double patenting. Final Act. 19- 24. Appellant has not addressed these rejections. See App. Br. 6—14. Appellant presents arguments in the Reply Brief, but such arguments are untimely and, therefore, not considered. We do not reach the merits of the Examiner’s provisional double patenting rejections based on U.S. Application No. 12/245,697 in view of Sogo, based on U.S. Application No. 12/245,697 in view of Poirier, and based on U.S. Application No. 13/168,285, in view of Takagi and Hajjar because those applications are still pending and, thus, it would be premature to do so at this time. See Ex Parte Moncla, 95 USPQ2d 1884, 1885 (BPAI 2010) (precedential). We do not reach the merits of the Examiner’s provisional double patenting rejection based on U.S. Application No. 13/096,608, in that the Examiner may wish to determine whether the rejection remains viable in view of the claims of the application as issued in U.S. Patent No. 9,259,291. DECISION The Examiner’s decision to reject claims 1—8 and 10—25 under 35 U.S.C. § 112, second paragraph, is affirmed. The Examiner’s decision to reject claims 1—8 and 10—22 under 35 U.S.C. § 102(b) as being anticipated by Sogo is reversed. 8 Appeal 2015-000174 Application 13/356,922 The Examiner’s decision to reject claim 23 under 35 U.S.C. § 103(a) as being unpatentable over Sogo and Poirier is affirmed. The Examiner’s decision to reject claims 24 and 25 under 35 U.S.C. § 103(a) as being unpatentable over Pompa, Takagi, and Hajjar is affirmed. The Examiner’s decision to reject claims 24 and 25 under 35 U.S.C. § 103(a) as being unpatentable over Pompa, Takagi, and Wen is affirmed. We do not reach the Examiner’s provisional obviousness-type double patenting rejections. 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 9 Copy with citationCopy as parenthetical citation