Ex Parte Gogarnoiu

Board of Patent Appeals and Interferences

Jul 17, 2009

11282929 (B.P.A.I. Jul. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte DUMITRU GOGARNOIU
__________

Appeal 2009-001584
Application 11/282,929
Technology Center 3700
__________

Decided1: July 17, 2009
__________

Before DEMETRA J. MILLS, LORA M. GREEN, 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 a claim to an
implant fixture. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 The two-month time period for filing an appeal or commencing a
civil action, as recited in 37 C.F.R. § 1.304, begins to run from the
decided date shown on this page of the decision. The time period
does not run from the Mail Date (paper delivery) or Notification
Date (electronic delivery).
Appeal 2009-001584
Application 11/282,929

Statement of the Case
The Claims
Claims 1-26 are on appeal. Independent claims 1, 13, and 19 are
representative and read as follows:
1. An implant fixture comprising an elongated body
extending along a longitudinal axis, wherein the body has a
first end and a second end, the first end comprising a top
face having:
a first portion forming a mesiodistal face having a
first angle extending obliquely with respect to the
longitudinal axis and extending the length of a mesial side
and a distal side; and
a second portion forming a facial face having a second
angle extending obliquely with respect to the longitudinal
axis from a facial side partially toward a lingual side and at
an angle relative to the first portion.

13. An implant fixture comprising an elongated body
extending along a longitudinal axis, wherein the body has a
first end and a second end, and the first end comprises a top
face having a compound slant relative to the longitudinal
axis, wherein the compound slant comprises a first plane
extending obliquely to the longitudinal axis along both a
mesiodistal plane and also in a facial plane.

19. An implant fixture comprising an elongated body
extending along a longitudinal axis, the body having a first
end and a second end, wherein the first end comprises a top
face extending in a plurality of planes, and each of the
plurality of planes extends obliquely relative to the
longitudinal axis, wherein the plurality of planes comprise a
first plane extending along at least a portion of the top face
oblique to the longitudinal axis and a second plane
extending along at least a portion of the top face oblique to
the longitudinal axis, wherein an intersection of the first
2
Appeal 2009-001584
Application 11/282,929

plane and the second plane forms a line oblique to the
longitudinal axis.

The prior art
The Examiner relies on the following prior art references to show
unpatentability:
Fukuda US 5,174,755 Dec. 29, 1992
Hollister US 5,549,690 Aug. 27, 1996
Vitale US 5,683,466 Nov. 4, 1997
Elian US 6,854,972 B1 Feb. 15, 2005

Schulter et al. US 2004/0185418 A1 Sep. 23, 2004
The issues
A. The Examiner rejected claims 1, 2, 4-10, 13-18, 24, and 25 under 35
U.S.C. § 102(b) as anticipated by Elian (Ans. 3-4).
B. The Examiner rejected claims 1-3, 5, 6, 13, 14, 19, 20, and 24-26
under 35 U.S.C. § 102(b) as anticipated by Hollister (Ans. 4).
C. The Examiner rejected claim 3 under 35 U.S.C. § 103(a) as obvious
over Elian and Schulter (Ans. 4).
D. The Examiner rejected claims 11 and 12 under 35 U.S.C. § 103(a) as
obvious over Elian and Fukuda (Ans. 5).
E. The Examiner rejected claims 4 and 15 under 35 U.S.C. § 103(a) as
obvious over Hollister and Vitale (Ans. 5).
F. The Examiner rejected claims 7-9, 16-18, and 21-23 under 35 U.S.C.
§ 103(a) as obvious over Hollister (Ans. 5).

3
Appeal 2009-001584
Application 11/282,929

A. 35 U.S.C. § 102(b) over Elian
The Examiner rejected claims 1, 2, 4-10, 13-18, 24, and 25 under 35
U.S.C. § 102(b) as anticipated by Elian (Ans. 3-4).
The Examiner finds that “Elian shows an implant Fig. 11A having a
first portion extending an entire side as shown in Fig. 11A and as shown is at
an angle with respect to the longitudinal axis of the implant” (Ans. 3). The
Examiner finds that Elian “shows a second portion shown in Fig. 11 B, see
first half of top of implant as seen from left to right, that has a surface having
an oblique angel with respect to the longitudinal axis and is at an angle with
respect to the first portion as can be seen in Fig. 11B” (Ans. 3).
Appellant contends that “the terminology of mesiodistal and facial as
used in each of independent claims 1 and 13 provides relative locations of
the recited faces, planes and angles with respect to each other as well as the
locations within the patient's mouth into which the implant is intended to be
inserted” (App. Br. 6). Appellant contends that “FIG. 11B shows that
Elian’s implant does not disclose a mesiodistal face having an oblique angle
that extends from the mesial face, across the longitudinal center line, and
extends the length of the distal face, as is recited in claim 1” (App. Br. 7).
In view of these conflicting positions, we frame the anticipation issue
before us as follows:
Has Appellant demonstrated that the Examiner erred in finding that
Elian teaches an implant fixture as required by claims 1 and 13?
4
Appeal 2009-001584
Application 11/282,929

Findings of Fact (FF)
1. The Specification teaches that the “term ‘facial’ is defined to
mean a direction closer to the lips and cheek of the user” (Spec. 4, ll. 9-10).
2. The Specification teaches that the “term ‘lingual’ is defined to
mean a direction closer to the tongue of the user” (Spec. 4, l. 11).
3. The Specification teaches that the “term ‘mesial’ is defined to
mean a direction closer to an imaginary centerline of the mouth of the user”
(Spec. 4, ll. 11-13).
4. Elian teaches the implant of figures 11A and 11B, reproduced
below:

“FIGS. 11a and 11b are side views of the buccal and proximal sides,
respectively, of a dental implant” (Elian, col. 4, ll. 22-23).
5
Appeal 2009-001584
Application 11/282,929

5. Elian teaches a “one-piece dental implant . . . having a
longitudinal axis comprising a head portion at a first end of the implant”
(Elian, col. 2, ll. 61-63).
6. The term “oblique angle” is defined as “an acute or obtuse
angle”2
7. Elian teaches, as shown in Figures 11a and 11b, a first end of
the implant with a top face which has a first face having an oblique angle
and a second portion with a second face that also extends at an oblique angle
(see FF 4, Ans. 10-11).
Principles of Law
“A rejection for anticipation under section 102 requires that each and
every limitation of the claimed invention be disclosed in a single prior art
reference.” In re Paulsen, 30 F.3d 1475, 1478-79 (Fed. Cir. 1994); see
Karsten Manufacturing Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383
(Fed. Cir. 2001) (“Invalidity on the ground of ‘anticipation’ requires lack of
novelty of the invention as claimed … that is, all of the elements and
limitations of the claim must be shown in a single prior reference, arranged
as in the claim.”).
“It is well settled that the recitation of a new intended use for an old
product does not make a claim to that old product patentable.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). See In re Spada, 911 F.2d
705, 708, (Fed.Cir.1990) (“The discovery of a new property or use of a
previously known composition, even when that property and use are

2 Merriam-Webster Online Dictionary. Retrieved June 17, 2009,
http://www.merriam-webster.com/dictionary/oblique angle.
6
Appeal 2009-001584
Application 11/282,929

unobvious from prior art, can not impart patentability to claims to the known
composition.”)
“[T]he PTO gives a disputed claim term its broadest reasonable
interpretation during patent prosecution”. In re Bigio, 381 F.3d 1320, 1324
(Fed. Cir. 2004). The court recognizes the fairness of reading claims broadly
“before a patent is granted [since] the claims are readily amended as part of
the examination process.” Burlington Indus. v. Quigg, 822 F.2d 1581, 1583
(Fed. Cir. 1987). “Thus, a patent applicant has the opportunity and
responsibility to remove any ambiguity in claim term meaning by amending
the application”. Bigio, 381 F.3d at 1324. Applying the broadest reasonable
interpretation to claims also “serves the public interest by reducing the
possibility that claims, finally allowed, will be given broader scope than is
justified.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364
(Fed.Cir.2004).
Analysis
Claim 1
Elian teaches a dental implant which comprises an elongated body
along a longitudinal axis (FF 4-5). Elian also teaches, as shown in Figures
11a and 11b, a first end of the implant with a top face which has a first face
having an oblique angle and a second portion with a second face that also
extends at an oblique angle (FF 6-7).
While the Specification defines the terms “facial”, “lingual”, and
“mesial”, the use of these terms in claim 1 represents a type of intended use
regarding the implant fixture (FF 1-3). For example, when claim 1 recites “a
first portion forming a mesiodistal face”, we agree with the Examiner that
7
Appeal 2009-001584
Application 11/282,929

the broadest reasonable interpretation of this language represents “the
intended orientation of the claimed structure, when implanted in a patient’s
mouth” (Ans. 7).
The only structural requirement imposed by the description regarding
the faces is a requirement that the faces extend “obliquely with respect to the
longitudinal axis” (Claim 1). Since an oblique angle is any angle other than
a right angle (FF 6) and the faces of Elian do not extend at right angles and
do extend at oblique angles (FF 4-5), Elian is reasonably interpreted to
satisfy this claim requirement.
We appreciate Appellant’s argument that “the use of terms such as
‘mesiodistal’ or ‘facial’ is not merely terminology . . . but instructs one
having skills in the field of dentistry which portion or face of a tooth or
implant is being described with respect to the patient’s mouth” (App. Br. 5-
6). However, in the context of a device claim, where the device may be
implanted in multiple different orientations in multiple different locations in
the mouth, the orientation terms do not impose any structural requirements
on the device itself3. Instead, at best, these orientation terms indicate how
the device will be implanted into the patient’s mouth. This intended use of
the implant of claim 1 does not structurally distinguish the implant from the
dental implant disclosed by Elian.
We have carefully considered Dr. Gogarnoiu’s Declaration, but this
Declaration is entirely focused on the faces of the implant after implant

3 In fact, since claim 1 is simply drawn to an implant and is not
even limited to a dental implant, the implant may reasonably be
implanted at any appropriate location.
8
Appeal 2009-001584
Application 11/282,929

insertion. In order to demonstrate the “mesiodistal” and “facial” slants, even
the Declarant required recourse to describing the implant as inserted into a
patient’s mouth. As the Gogarnoiu Declaration notes, the “claimed implant,
as implanted into a patient’s mouth, is sketched in attached FIG. 5”
(Gogarnoiu Declaration ¶ 31). While in this situation we are not persuaded
by the Gogarnoiu Declaration, Appellant correctly notes that declarations
under 37 C.F.R. § 1.132 may overcome statutory bar type references (see
Reply Br. 7).
We also are not persuaded by Appellant’s argument that “FIG. 11B
shows that Elian’s implant does not disclose a mesiodistal face having an
oblique angle that extends from the mesial face, across the longitudinal
center line, and extends the length of the distal face, as is recited in claim 1”
(App. Br. 7). This argument reads functional limitations into the structure of
the Elian device, by requiring that the Elian device be implanted in a specific
way into a patient’s mouth. However, as the Examiner has found, the Elian
device can be oriented to satisfy the requirements of claim 1, and therefore
the Elian device structurally anticipates claim 1 (see Ans. 7-9).
In the Reply Brief, Appellant again argues the orientation of the Elian
device (see Reply Br. 2-3). However, this argument is not found persuasive
since when the device is outside a patient, the designation of faces is
arbitrary, since depending upon the specific physiology of the mouth
receiving the implant, the implant may be placed in different orientations.
Claim 13
Appellant separately argues that “Elian FIGS. 11A and 11B show that
Elian fails to disclose a plane extending obliquely to the longitudinal axis
9
Appeal 2009-001584
Application 11/282,929

along both a mesiodistal plane and a facial plane, as is recited in claim 13”
(App. Br. 9). We agree with the Examiner that “Elian shows an elongated
body extending along a longitudinal axis having ends and a top face having a
compound slant . . . relative to the longitudinal axis of the implant, the
compound slant comprises a first plane . . . extending obliquely to the
longitudinal axis along both a mesiodistal plane and also in a facial plane”
(Ans. 10).
As already mentioned, the issue is whether the Elian implant
structurally satisfies the requirements of claim 13. Elian teaches a
“compound slant” on a top face and the relative orientations of the implant
regarding mesiodistal and facial plane depends upon the intended use of the
implant in a patient’s mouth.
Conclusion of Law
Appellant has not demonstrated that the Examiner erred in finding that
Elian teachs an implant fixture as required by claims 1 and 13.
We affirm the rejection of claims 1 and 13 under 35 U.S.C. § 102(b)
as anticipated by Elian. Pursuant to 37 C.F.R.
§ 41.37(c)(1)(vii)(2006), we also affirm the rejection of claims 2, 4-10, 14-
18, 24, and 25, as these claims were not argued separately.
B. 35 U.S.C. § 102(b) over Hollister
The Examiner rejected claims 1-3, 5, 6, 13, 14, 19, 20, and 24-26
under 35 U.S.C. § 102(b) as anticipated by Hollister (Ans. 4).
The Examiner finds that “Hollister shows a compound oblique angled
top surface Fig. 12 along at least two different directions as shown. To call
10
Appeal 2009-001584
Application 11/282,929

the sides mesiodistal or facial is merely terminology and/or intended use”
(Ans. 4).
Appellant contends that “Hollister discloses surfaces 110, 136 that are
curved, saddle-shaped surfaces, with no mesiodistal face that has a first
angle or that extends the length of a mesial side and a distal side, as is
recited in claim 1” (App. Br. 10).
In view of these conflicting positions, we frame the anticipation issue
before us as follows:
Has Appellant demonstrated that the Examiner erred in finding that
Hollister teachs an implant fixture as required by claims 1, 13, and 19?
Findings of Fact
8. Hollister teaches an implanted prosthetic device which “is
attached and anchored to the proximal bone of the original joint. The other
member of the joint is then attached and anchored to the distal bone, or
bones, of the original joint” (Hollister, col. 4, ll. 38-41).
9. Hollister teaches the prosthesis as shown in Figure 12,
reproduced below:
11
Appeal 2009-001584
Application 11/282,929

“FIG. 12 is an isometric view of the CMC joint of the present invention with
an alternate embodiment of the metacarpal member” (Hollister, col. 6, ll. 1-
3).
10. The Examiner finds that “Hollister shows a compound oblique
angled top surface Fig. 12 along at least two different directions as shown”
(Ans. 4).
Principles of Law
“In examining the term ‘hair brush,’ the Board correctly declined to
import from the specification a limitation that would apply the term only to
hairbrushes for the scalp.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).
12
Appeal 2009-001584
Application 11/282,929

“[T]his court counsels the PTO to avoid the temptation to limit broad claim
terms solely on the basis of specification passages . . . Absent claim
language carrying a narrow meaning, the PTO should only limit the claim
based on the specification or prosecution history when those sources
expressly disclaim the broader definition.” Id.
Analysis
Claim 1
Hollister teaches a prosthetic device designed for implant which
comprises an elongated body along a longitudinal axis (see FF 8-9).
Hollister also teaches, as shown in Figure 12, a device with a compound
oblique angled top surface (FF 9-10).
Appellant argues that “terminology such as ‘mesiodistal’ and ‘facial’
in the dental field is used to locate the portion or face of a tooth or implant
that is being described with respect to the patient’s mouth” (App. Br. 10).
However, claim 1 does not require that the implant is a dental implant (see
Claim 1). Further, the terminology of “forming a mesiodistal face” and
“forming a facial face” do not impose any specific structural requirements
upon the implant as discussed above. Therefore, in accord with Bigio, we
interpret the claim based upon the structure expressly required by the claim,
and not based upon limitations not found within the claim.
We also do not find persuasive Appellant’s argument that “Hollister
discloses surfaces 110, 136 that are curved, saddle-shaped surfaces, with no
mesiodistal face that has a first angle or that extends the length of a mesial
side and a distal side, as is recited in claim 1” (App. Br. 10). We agree with
the Examiner that “the claims are not limited to surfaces being flat and
13
Appeal 2009-001584
Application 11/282,929

angled or surfaces that are planar” but “are directed to the mathematical
constructs of angle and plane” (Ans. 11). Hollister’s curved, saddle shaped
implant surfaces form faces which necessarily form oblique angles with
respect to the longitudinal axis (see FF 9). Further, with regard to the issue
of “extending the length of a mesial side”, since no specific length is
imposed on the device, any length to which the surface extends may
reasonably be interpreted as satisfying this claim limitation.
Claim 13
We are not persuaded by Appellant’s argument that “Hollister fails to
disclose or suggest a plane that extends in both a mesiodistal plane and a
facial plane, as is recited in claim 13” (App. Br. 11). Since Hollister
discloses a saddle shaped structure which is curved, and the curved structure
comprises the compound slant required by claim 13 (FF 9-10), along that
entire curved saddle shaped structure are planes which extend in both
mesiodistal and facial planes which are oblique to the longitudinal axis as
required by claim 13.
Claim 19
We are not persuaded by Appellant’s argument that “Hollister fails to
disclose or suggest the intersection of a first plane and a second plane
forming a line oblique to a longitudinal axis, as is recited in claim 19” (App.
Br. 11). As discussed above, Hollister teaches a curved saddle shaped
structure which comprises a plurality of planes (FF 9-10). Within this
plurality of planes, the Examiner finds that planes can be drawn which will
satisfy the intersection requirement of claim 19 (see Ans. 11). We agree that
given the absence of specific structural requirements for these planes, the
14
Appeal 2009-001584
Application 11/282,929

prosthetic device of Hollister inherently comprises first and second planes
which form a line oblique to a longitudinal axis (see FF 9).
Conclusion of Law
Appellant has not demonstrated that the Examiner erred in finding that
Hollister teachs an implant fixture as required by claims 1, 13, and 19.
We affirm the rejection of claims 1, 13, and 19 under 35 U.S.C. §
102(b) as anticipated by Hollister. Pursuant to 37 C.F.R.
§ 41.37(c)(1)(vii)(2006), we also affirm the rejection of claims 2, 3, 5, 6, 14,
20, and 24-26, as these claims were not argued separately.
C. 35 U.S.C. § 103(a) over Elian and Schulter
The Examiner rejected claim 3 under 35 U.S.C. § 103(a) as obvious
over Elian and Schulter (Ans. 4).
The Examiner finds that “Elian shows the structure as described
above, however, does not show an internal connection. Schulter teaches
using an internal connection, Figs. 40, 43” (Ans. 4). The Examiner finds
that “[i]t would be obvious to one of ordinary skill in the art to modify Elian
to include an internal connection as shown by Schulter in order to make use
of a well known alternative in the art for providing a prosthesis connection”
(Ans. 4).
The Examiner provides sound fact-based reasoning for combining
Elian and Schulter. As Appellant does not identify any material defect in the
Examiner's reasoning, and we find none, we affirm the rejection of claim 3
for the reasons stated by the Examiner.
15
Appeal 2009-001584
Application 11/282,929

D. 35 U.S.C. § 103(a) over Elian and Fukuda
The Examiner rejected claims 11 and 12 under 35 U.S.C. § 103(a) as
obvious over Elian and Fukuda (Ans. 5).
The Examiner finds that “Elian shows the structure as described
above, however, does not show the dental prosthesis. Fukuda teaches a
dental prosthesis 8 connected by a threaded coupling 7, 11 and a hole
through the prosthesis for the screw” (Ans. 5). The Examiner finds that “[i]t
would be obvious to one of ordinary skill in the art to modify Elian to
include a coupling as shown by Fukuda in order to better attach the
prosthesis” (Ans. 5).
The Examiner provides sound fact-based reasoning for combining
Elian and Fukuda. As Appellant does not identify any material defect in the
Examiner's reasoning, and we find none, we affirm the rejection of claims 11
and 12 for the reasons stated by the Examiner.
E. 35 U.S.C. § 103(a) over Hollister and Vitale
The Examiner rejected claims 4 and 15 under 35 U.S.C. § 103(a) as
obvious over Hollister and Vitale (Ans. 5).
The Examiner finds that “Hollister shows the structure as described
above, however, does not show a threaded connection. Vitale teaches using a
threaded connection at 32” (Ans. 5). The Examiner finds that “[i]t would be
obvious to one of ordinary skill in the art to modify Hollister to include the
threaded connection as shown by Vitale in order to better hold the implant in
bone” (Ans. 5).
The Examiner provides sound fact-based reasoning for combining
Hollister and Vitale. As Appellants do not identify any material defect in the
16
Appeal 2009-001584
Application 11/282,929

Examiner's reasoning, and we find none, we affirm the rejection of claims 4
and 15 for the reasons stated by the Examiner.
F. 35 U.S.C. § 103(a) over Hollister
The Examiner rejected claims 7-9, 16-18, and 21-23 under 35 U.S.C.
§ 103(a) as obvious over Hollister (Ans. 5).
The Examiner finds that “[t]o include polished and roughened
surfaces is an obvious matter of choice in known implant surface techniques
to interface with bone in the desired manner at the desired location” (Ans.
5).
Appellant does not challenge the Examiner’s finding with regard to
these dependent claims (see App. Br. 13), but argues that claims “7-9, 16-18,
and 21-23 are all patentable over Hollister for at least the same reasons as set
forth above with respect to claims 1, 13, and 19” (App. Br. 13).
Since we have affirmed claims 1, 13, and 19 for the reasons set for
above, we also affirm the rejection of claims 7-9, 16-18, and 21-23.
SUMMARY
In summary, we affirm the rejection of claims 1 and 13 under 35
U.S.C. § 102(b) as anticipated by Elian. Pursuant to 37 C.F.R.
§ 41.37(c)(1)(vii)(2006), we also affirm the rejection of claims 2, 4-10, 14-
18, 24, and 25, as these claims were not argued separately.
We affirm the rejection of claims 1, 13, and 19 under 35 U.S.C. §
102(b) as anticipated by Hollister. Pursuant to 37 C.F.R.
§ 41.37(c)(1)(vii)(2006), we also affirm the rejection of claims 2, 3, 5, 6, 14,
20, and 24-26, as these claims were not argued separately.
17
Appeal 2009-001584
Application 11/282,929

We affirm the rejection of claim 3 under 35 U.S.C. § 103(a) as
obvious over Elian and Schulter. We affirm the rejection of claims 11 and
12 under 35 U.S.C. § 103(a) as obvious over Elian and Fukuda. We affirm
the rejection of claims 4 and 15 under 35 U.S.C. § 103(a) as obvious over
Hollister and Vitale. We affirm the rejection of claims 7-9, 16-18, and 21-
23 under 35 U.S.C. § 103(a) as obvious over Hollister.
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)(2006).
AFFIRMED

Ssc:

RATNERPRESTIA
P.O. BOX 980
VALLEY FORGE, PA 19482
18