Ex Parte Guy

Patent Trial and Appeal Board

Sep 26, 2016

13295248 (P.T.A.B. Sep. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/295,248 11/14/2011 Frederick R. Guy
16375 7590 09/28/2016
Medley, Behrens & Lewis, LLC
6100 Rockside Woods Blvd.
Suite 440
Independence, OH 44131
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.
RGUP-0004 9535
EXAMINER
EIDE, HEIDI MARIE
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
09/28/2016 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):
tbehrens@medleybehrens.com
nlewis@medleybehrens.com
admin-docketing@medleybehrens.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FREDERICK R. GUY
Appeal2014-008730
Application 13/295,248
Technology Center 3700
Before JOHN C. KERINS, STEP AN ST AI CO VICI, and LEE L. STEPINA,
Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Frederick R. Guy (Appellant) appeals under 35 U.S.C. § 134(a) from
the Examiner's final decision to reject claims 1-7, 20, 21, 29-36, and 43 1•
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM and enter NEW GROUNDS OF REJECTION pursuant
to our authority under 37 C.F.R. § 41.50(b).
Claims 8-19 and 22-28 are cancelled and claims 37--42 are
withdrawn from consideration. Appeal Br. 2 (filed June 11, 2014).
Appeal2014-008730
Application 13/295,248
CLAIMED SUBJECT MATTER
Appellant's invention relates to "dental devices or appliances having
chewing surfaces comprising naturally derived materials obtained from
sustainable resources." Spec. 1, 11. 7-8.
Claim 1, reproduced below, is the sole independent claim on appeal
and is representative of the claimed subject matter:
1. A dental device comprising a chewing surface:
the chewing surface comprising a naturally derived
material;
wherein the naturally derived material is derived from a
vegetable nut;
wherein the chewing surface includes a crown chewing
surface;
wherein the naturally derived material is the vegetable nut
in a dehydrated or desiccated state.
REFERENCES RELIED ON BY THE EXAMINER
Vit
Rabiei
Rubbert
Hunger
Armstrong
us 4,693,986
US 2006/0210494 Al
US 7,708,557 B2
Lathes and Turning
Techniques, The Best of Fine
Wood Working, 49
Vegetable Ivory, Noteworthy
Plants, 1-10
2
Sept. 15, 1987
Sept. 21, 2006
May4, 2010
July 1990
Jan. 1999
Appeal2014-008730
Application 13/295,248
EVIDENCE RELIED ON BY APPELLANT
Declaration under 37 C.F.R. § 1.132 of Robert Ingrassio, dated
February 19, 2014 ("Ingrassio Declaration").
THE REJECTIONS ON APPEAL 2
(I) Claim 43 is rejected under 35 U.S.C. § 112, second paragraph, as
indefinite.
(II) Claims 1-3, 5-7, 20, 33, 34, and 43 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Hunger, as evidenced by Vegetable Ivory. 3'4
(III) Claims 4, 21, 29, 35, and 36 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Hunger, as evidenced by Vegetable Ivory, and Vit. 5
(IV) Claim 30 is rejected under U.S.C. § 103(a) as unpatentable over
Hunger, as evidenced by Vegetable Ivory, Vit, and Rabiei.
(V) Claims 31 and 32 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Hunger, as evidenced by Vegetable Ivory, and Rubbert.
(VI) The Examiner has also provisionally rejected claims 1-7, 20, 21, 29,
and 31-36 under the judicially-created doctrine of obviousness-type double
2 The Examiner has withdrawn a rejection of claims 1-7, 20, 21, 29-36,
and 43 under 35 U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement. Ans. 2 (mailed July 11, 2014).
3 Although Armstrong is the author of the article titled Vegetable Ivory
(see Vegetable Ivory 10), for consistency with the Examiner's and
Appellant's usage, we use the title, Vegetable Ivory, to refer to this article.
4 The omission of claim 34 from the heading is understood to be a
typographical error because claim 34 is discussed in the body of the
rejection. See Final Act. 6.
5 Although Vegetable Ivory is not included in the heading of Rejections
(III}-(V), because claims 4, 21, 2 9-3 2, 3 5, and 3 6 depend from claim 1, we
understand this to be a typographical error.
3
Appeal2014-008730
Application 13/295,248
patenting as unpatentable over claims 11-16, 19, and 22 of co-pending U.S.
Application No. 13/341,584.6
ANALYSIS
Rejection(!)
Claim 43 recites, in part, "with the proviso that the dental device is
not removable dentures." Appeal Br. 26 (Claims App.).
The Examiner finds that because "the term 'proviso' means a
stipulation or condition ... it is not clear from the claim language what
condition or stipulation needs to be met for the dental device to be a non-
removable denture." Ans. 2.
We agree that the term "proviso" means a stipulation or condition.
Here, the stipulation is that the dental device is not a removable denture. We
are satisfied that one of ordinary skill in the dental art would understand
whether or not a denture is removable, and therefore the Examiner's position
that it is not clear what condition or stipulation needs to be met is in error.
As such, the claim is not indefinite under 35 U.S.C. § 112, second
paragraph. Accordingly, we do not sustain Rejection (I).
6 Appellant has not traversed the merits of this rejection and rather, has
requested that this "rejection be held in abeyance until claims are indicated
allowable in this case." Appeal Br. 22. Since the rejection is provisional
and no patent has issued from the application, we conclude that it is
premature for the Board to address the rejection, and thus do not reach the
issue presented by the rejection. See Ex parte Monda, 95 USPQ2d 1884,
1885 (BP AI 2010).
4
Appeal2014-008730
Application 13/295,248
Claims 1, 2, 5, and 20
Rejection (II)
Claim 1 recites, in part, that a dental device has a chewing surface that
"includes a crown chewing surface." Appeal Br. 23 (Claims App.).
The Examiner finds that Hunger discloses most of the limitations of
claim 1 including a vegetable nut "used in dentures, which would include a
chewing surface." Final Act. 4. The Examiner notes that Hunger "does not
specifically teach the chewing surface is a crown," but the Examiner takes
the position that "it was well known in the art at the time of the invention
that dentures comprise[] crown surfaces depending on what teeth of the
patient need to be replaced." Id. at 5. The Examiner concludes that "it
would have been obvious to one having ordinary skill in the art at the time of
the invention to modify the dentures taught by Hunger with a crown surface
in order to provide a patient, dentures for replacing a missing crown." Id.
Appellant asserts that Hunger "is an article in a woodworking hobby
magazine that merely discloses that there are 'stories' of 'one man' who
made replacement dentures for himself." Appeal Br. 5. Appellant argues
that Hunger "would not be consulted by someone operating in the field of
dental devices," as evidenced by the Ingrassio Declaration. Id. at 7-8.
Appellant asserts that the Examiner must "consider the reference as a whole
to determine what field it is in," and thus argues that "when the present case
is analyzed as a whole ... Hunger cannot be considered to be analogous
prior art and is thus disqualified from the obviousness consideration,"
because Hunger "does not deal with, nor is it reasonably pertinent to the
problem which the inventor was concerned." Id. at 8-10.
5
Appeal2014-008730
Application 13/295,248
The Examiner responds that Hunger meets both prongs of the
analogous art test because Hunger is from the same field of endeavor by
being "directed towards carving of Tagua nut, which [sic] the current
invention is directed towards the carving, milling, of a tagua nut for a dental
device," and also pertinent to the problem faced by the inventor because
Hunger "solves the same problem presented by the inventor," namely,
"making a dental device from a 'green material.'" Ans. 2-3. The Examiner
notes that in making a determination as to whether Hunger is analogous art,
"the [Ingrassio] declaration was given consideration, however, it was found
not persuasive." Id. at 3 (citing Final Act. 11).
In reply, Appellant argues that "the Examiner cannot isolate only the
art-relevant disclosure from the entire reference to determine analogous art,"
and that "a review of the entirety of the reference, the subject matter sought
to be patented, and the evidence of record, under a common sense approach,
firmly shows that the Hunger reference is not analogous art." Reply Br. 2.
Appellant asserts that "the Declaration, which the Examiner seems to have
given very little consideration to," supports this argument. Id. at 3.
Although we appreciate that Hunger discloses dentures on one page of
a woodworking magazine, "[i]f a reference disclosure has the same purpose
as the claimed invention, the reference relates to the same problem, ....
[a Jn inventor may well have been motivated to consider the reference when
making his invention." In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
Here, we agree with the Examiner that the structure and function of Hunger
would be considered by a person of ordinary skill in the art because of the
similarity to the structure and function of the claimed invention as disclosed
6
Appeal2014-008730
Application 13/295,248
in the Specification. In particular, the structure of Hunger is a replacement
denture 7 carved from dried tagua nuts, as compared to the dental device of
claim 1, which comprises "dehydrated and hardened endosperm of the nut of
the Tagua palm," that is milled to form "a cap, crown, bridge, partial, or
complete denture set." Compare Hunger 49 with Spec. 2-3. Thus, we are
not apprised of error in the Examiner's finding that Hunger is in the same
field of endeavor, namely, "a dental device made from a dried tagua palm
nut," as the claimed invention. Accordingly, Hunger is properly relied on by
the Examiner for establishing obviousness under 35 U.S.C. § 103(a).
Further, we find that the lack of factual support in the Ingrassio
Declaration restricts the evidentiary weight we can accord the content of the
Declaration. See In re Beattie, 974 F.2d 1309, 1313 (Fed. Cir. 1992)
(opinion evidence in declarations has little value without factual support);
see also In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir.
2004) ("The Board has broad discretion as to the weight to give to
declarations offered in the course of prosecution"). Although there is "no
reason why opinion evidence relating to a fact issue should not be
considered by an examiner" (In re Alton, 7 6 F .3 d 1168, 117 5 n.10 (Fed. Cir.
1996)), the Board is entitled to weigh the declarations and conclude that the
lack of factual corroboration warrants discounting the opinions expressed in
the declarations (see Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir.
2003)).
The Ingrassio Declaration states:
7 An ordinary definition of the term "denture," consistent with the
Specification is "an artificial replacement for one or more teeth." MERRIAM-
WEBSTER's COLLEGIATE DICTIONARY (11th ed. 2005).
7
Appeal2014-008730
Application 13/295,248
3. It was surprising to me that a useful dental device could be
made with a vegetable nut material.
4. I would not think to look in a woodworking journal for any
relevant teachings on dental devices.
5. I do not consider the woodworking art to be analogous to the
dental device art.
6. According to scientific literature the Tagua Nut is known to
dissolve in water, as explained in the The Encyclopedia of Fruit
& Nuts edited by Jules Janick, Robert E. Paul. See document
attached at Exhibit A.
7. Based on the water solubility information contained in
scientific horticultural treatises and journals and the Hunger
reference, it is my opinion there is insufficient information in
Hunger to teach any details at all about how to make any kind of
denture from the Tagua material. The words used in the article,
"replacement dentures", are far too abstract to define any manner
of technically using the tagua material as any part or all of a
denture. Dentures are compound devices typically so I cannot
interpret just what the anecdotal reference to a story about a man
using tagua for a replacement denture in a woodworking
magazine means by a replacement denture? It might be one part,
mouthpiece, or tooth elements, but one could only speculate
ambiguously. However, I certainly would not consider a
modification to make a permanent device such as a crown, cap,
bridge or permanent full or partial denture, or combinations
thereof to have a reasonable chance of success based on Hunger's
disclosure. The Hunger article is about artistic carving of tagua
as an alternative to wood and in no way related to dental matters.
8. In general, considering the source of the Hunger article (a
woodworking journal) and the fact that it only reports a "story"
about one man's dentures that he made for himself, paired with
Tagua's solubility characteristics, I would not consider this a
reliable source for attempting modifications thereupon with
8
Appeal2014-008730
Application 13/295,248
features that are known in the dental industry with conventional
materials.
Ingrassio Declaration i-fi-1 3-8 (emphasis added). The Ingrassio Declaration
does not set forth the factual basis for concluding that the term "replacement
dentures" in Hunger is "far too abstract to define any manner of technically
using the tagua material as any part or all of a denture," much less that
Hunger is "in no way related to dental matters." As noted supra, the
Specification discloses that a dental device can be a prosthesis "of any type,
without limitation, to a cap, crown, bridge, partial, or complete denture set."
Spec. 3. Whether Hunger's "replacement dentures" refer to a partial denture
or a full denture, they would still be a dental device as claimed.
As for the comments in the Ingrassio Declaration on the water
solubility of the tagua material, both Hunger and Vegetable Ivory disclose
that the tagua nut is initially soft, but that the dried nut is hard, dense, and
moisture resistant. By contrast, The Encyclopedia of Fruit & Nuts literature
(152), relied on in the Ingrassio Declaration, provides that the tagua nut will
"dissolve if immersed for long periods of time," but "re-hardens when
allowed to dry." However, the Ingrassio Declaration does not establish
persuasively that a person's mouth contains sufficient water to immerse the
teeth for long periods of time as described in The Encyclopedia of Fruit &
Nuts. Moreover, Appellant does not explain persuasively that it would have
been beyond the ordinary level of skill in the art to provide tagua material of
a sufficient hardness, durability, and water insolubility to serve as dentures.
Rather, the discussions of drying the tagua nut in Hunger (seep. 49) and in
Vegetable Ivory (see pp. 2-3) are consistent with the process described in
9
Appeal2014-008730
Application 13/295,248
Appellant's Specification regarding processing the tagua nut. See Spec. 2,
Section B (with emphasis added) stating:
Processing the dental device material derived from the Tagua
nuts includes the steps of shelling, and curing the nuts by
dehydration or desiccation. Dehydration or desiccation may be
achieved wherein the nuts are dried at ambient conditions or
accelerated using industrial equipment to rapidly drive off water
to a desired level of dryness. Such equipment is well known in
the foods industry.
Accordingly, we are not persuaded that a denture based on Hunger's
disclosure would not "have a reasonable chance of success."
Additionally, regardless of the source of the disclosure, as discussed
supra, we agree with the Examiner that the dentures taught by Hunger would
be considered by a person of ordinary skill in the art because of the
similarity to the structure and function of the claimed invention as disclosed
in the Specification. See Ans. 3. Hunger discloses a dental device (denture)
made of tagua nut, and the disclosure of Hunger cannot be ignored solely
based on its publication source and, likewise, cannot be ignored because it is
based on a single instance. Accordingly, after weighing all of the evidence
presented, and in light of the above-noted deficiencies in the Ingrassio
Declaration, we agree with the Examiner that a person of ordinary skill in
the art would have found it obvious to modify the denture of Hunger using
conventional dentistry practices to include a crown surface.
Appellant also argues that Hunger is not enabling, because "a person
skilled in the art of dental materials and prosthetic design and manufacture"
would dismiss Hunger "as unrealistic fiction because of the constantly
10
Appeal2014-008730
Application 13/295,248
reported water solubility of Tagua in the scientific literature." Appeal Br.
12.
The Examiner responds that Hunger "teaches the nut being [ ] hard
and dried (see pg. 49, col. 2, lines 1-3) and further on lines 19-21 that the
dentures being made of the dried nut is 'an indication that the dried, carved
nut is moisture resistant.'" Ans. 4 (emphasis added). The Examiner
concludes that "Hunger is enabled such that it teaches the use of the dried
nut which is moisture resistant." Id.
The Federal Circuit has held that publications used as prior art by the
PTO are presumed enabled. In re Antor Media Corp., 689 F.3d 1282, 1288
(Fed. Cir. 2012). Thus, Hunger is presumed enabled. Moreover, Hunger
(seep. 49) teaches that tagua nut has been engraved since at least 1982, was
used in Victorian times for jewelry, and used for buttons until the mid-
1900s. Hunger further states, "[i]n past decades, craftsmen have found tagua
nut ivory quite suitable for turned and carved needle boxes, dice, cane
handles, scrimshaw, and other applications for durable, attractive items." Id.
Thus, craftsmen have used tagua nut to manufacture small, detailed items for
decades. Appellant does not identify any particular difficulty in making
dentures relative to making any other small, detailed item. Moreover, as
noted above, Appellant does not establish persuasively in the Ingrassio
Declaration that a person's mouth contains sufficient water to immerse the
teeth for long periods of time as described in The Encyclopedia of Fruit &
Nuts. In light of the above-noted presumption of enablement, Appellant's
argument, including the Ingrassio Declaration, fails to persuade us that a
11
Appeal2014-008730
Application 13/295,248
person of ordinary skill in the art would not have been able to produce
dentures, as explicitly taught by Hunger, without undue experimentation.
Appellant further argues that "[i]t is not explicit or inherent that the
replacement denture mentioned in Hunger was of a desiccated or dehydrated
vegetable nut." Appeal Br. 13.
As the Examiner correctly notes, "Hunger teaches the harvested nut,
before being dried, is soft, edible and sweet," that the dry and hard nut can
be carved, and, based on this, one having ordinary skill in the art would
readily understand that "the nut is dried in order to create the hard material
needed for dentures." Ans. 5 (citing Hunger 49, 11. 1-9 and 19-21). What a
reference teaches or suggests must be examined in the context of the
knowledge, skill, and reasoning ability of a skilled artisan. Syntex (U.S.A.)
LLC v. Apotex, Inc. 407 F.3d 1371, 1380 (Fed. Cir. 2005). Thus, the
Examiner has established by a preponderance of the evidence that the nut of
Hunger is dried or dehydrated. Accordingly, we are not persuaded by
Appellant's argument.
Appellant further argues that "the evidence in the prior art suggests
that Tagua is not suitable for a crown chewing surface-a chewing surface
should not be soft or dissolve in water," and therefore, "it is asserted that this
modification is not obvious." Appeal Br. 14; see also Ingrassio Declaration
10.
As discussed above, one of ordinary skill in the art would understand
that a dried nut would be used in order to have a material that is sufficiently
hard for use as a denture. Moreover, as discussed supra in the analysis of
Rejection (II), a denture is an artificial replacement for one or more teeth,
12
Appeal2014-008730
Application 13/295,248
and as the Examiner correctly notes, one having ordinary skill in the art
would understand that replacement is "based on the needs of the specific
patient." Ans. 6. Specifically, if a molar having a crown chewing surface
that needs to be replaced as opposed to an incisor, one of ordinary skill in
the art would produce the type of tooth that is needed. As such, we are not
persuaded by Appellant's argument on this point.
Appellant further argues that the Examiner has not "provide[ d] a
reason why one of skill in the art of dental devices would look to a
woodworking reference and combine it with the cited references from the
dental industry," and has not established that the combination would have "a
reasonable expectation of success given the nature of Hunger's disclosure of
'stories' of 'one man's' dentures." Appeal Br. 14--15.
We do not find these assertions to be persuasive inasmuch as they
amount to unsupported allegations without adequate explanation. As
discussed above, because Hunger is analogous art based on the structure and
function of Hunger's denture being similar to the claimed invention, one of
ordinary skill in the art would consider Hunger. The Examiner then
modifies the device in Hunger to include a crown chewing surface
"depending on what teeth of the patient need to be replaced." Final Act. 5.
Appellant provides no persuasive evidence or technical reasoning explaining
why, in the art of dental device manufacturing, there would be any difficulty
in implementing the Examiner's proposed combination.
We have reviewed all of Appellant's arguments for the patentability
of claim 1, but we find them to be unpersuasive. The rejection of claim 1,
and of claims 2, 5, and 20 depending from claim 1 is sustained.
13
Appeal2014-008730
Application 13/295,248
Claim 3
Claim 3 recites, in part, that the hardness of the naturally derived
material in the dehydrated or desiccated state is from about 2.5 to about 4 on
the Mohs Hardness Scale. Appeal Br. 23 (Claims App.).
The Examiner relies on Vegetable Ivory as evidentiary support for this
feature and determines that "the dried/dehydrated Tagua used by Hunger
inherently has the claimed hardness." Final Act. 5 (citing Vegetable Ivory 3,
last para.). The Examiner notes that "appellant does not discuss treating the
nut, other than drying it, in order to achieve the claimed hardness, therefore,
it is noted that the dried nut would have the same hardness as claimed."
Ans. 7.
Appellant argues that "the teachings of the secondary 'Vegetable
Ivory' reference is also not helpful for showing inherency of the hardness in
Hunger, because it does nothing to indicate that carved Tagua dentures
necessarily (i.e. always present, and not possibilities or even probabilities)
have the claimed range of hardness." Appeal Br. 16 (citing In re Spormann,
363 F.2d 444, 448 (CCPA 1966)).
Spormann is relevant to inherent features that are undisclosed. In
contrast, in Vegetable Ivory, the hardness oftagua is expressly disclosed to
be "roughly 2.5." Vegetable Ivory 3. Appellant provides no persuasive
evidence or technical reasoning supporting a finding that this explicit
disclosure in Vegetable Ivory regarding tagua nut material does not apply to
the tagua nut denture taught in Hunger. Thus, we do not agree with
Appellant's argument and sustain the rejection of claim 3.
14
Appeal2014-008730
Application 13/295,248
Claims 6 and 7
Claim 6 recites, in part, that the device is a crown. Appeal Br. 23
(Claims App.).
The Examiner finds that it would have been obvious to modify the
dentures taught by Hunger's denture to provide "dentures for replacing a
missing crown." Final Act. 5.
Appellant asserts that "[ c ]rowns are permanently affixed to a part of
tooth," and by contrast, "[ d]entures are often removable and may not be set
on a portion of any tooth," and thus, "define two different structures."
Appeal Br. 16. Appellant argues that "[a] crown is a different structure from
a replacement denture that includes a crown chewing surface" and that "use
of a material for a denture, does not necessarily indicate its suitability for a
crown, much less inherency." Id. at 16-17.
We agree with Appellant that there is a structural difference between a
crown8 and a removable denture, and the Examiner does not adequately
explain why attaching a crown to a tooth would have been an obvious
modification of placing a denture into the mouth. Nonetheless, making a
crown, rather than an entire denture, from tagua nut would have been
obvious to a person of skill in the art because making a crown by applying
the same method used to make the denture would have been the application
8 An ordinary definition of the term "crown," consistent with the
Specification is "the part of a tooth external to the gum or an artificial
substitute for this." MERRIAM-WEBSTER' s COLLEGIATE DICTIONARY (11th
ed. 2005).
15
Appeal2014-008730
Application 13/295,248
of a known technique to improve a similar device in the same way. See KSR
Int'!. Co. v. Teleflex, Inc., 550 U.S. 398, 417. There is no dispute that
crowns for teeth are known. The denture taught by Hunger is comparable to
a crown because it relates to repair or replacement of teeth, inside a patient's
mouth, the same way a crown does.
The use of tagua nut for a crown would have been within the level of
ordinary skill in the art inasmuch as both a crown and a denture are used
within a patient's mouth (exposed to a similar environment), both are shaped
to correspond to part of a tooth, or the entire tooth, and both are employed as
replacements of tooth structures. Thus, as Hunger enables construction of a
denture from tagua nut, Hunger also enables a person of ordinary skill in the
art to construct a crown from tagua nut. An artisan must be presumed to
know something about the art apart from what the references disclose. See
In re Jacoby, 309 F.2d 513, 516 (CCPA 1962). Appellant provides no
persuasive evidence or technical reasoning that, in the art of dental device
manufacturing, there would be any difficulty in implementing a crown as
claimed. Rather, Appellant's Specification discloses that "[r]eplacements
for teeth and the method for making such replacements are well known to
those skilled in the art and include devices selected from the group
consisting of bridges, full dentures, partial dentures, crowns, caps and
combinations thereof." Spec. 1. Nor does Appellant provide persuasive
evidence that any particular adhesive is required for use with a crown as
claimed that would not be readily accessible by one of ordinary skill in the
art. Therefore, we sustain the rejection of claim 6 and of claim 7 depending
therefrom. As our reasoning in rejecting claim 6 differs from the
16
Appeal2014-008730
Application 13/295,248
Examiner's, we designate our affirmance of the Examiner's rejection of
claims 6 and 7 as a NEW GROUND OF REJECTION so as to provide
Appellant with a full and fair opportunity to respond to the thrust of the
rejection.
Claim 33
Claim 33 recites, in part, that the crown chewing surface is free of
naturally occurring gaps or crevices in the naturally derived material.
Appeal Br. 24 (Claims App.).
The Examiner takes the position that "it would have been obvious to
one having ordinary skill in the art to provide a replacement tooth without
gaps and crevices in order to provide the user with anesthetic prosthesis."
Final Act. 5-6.
Appellant argues that "[t]here is no indication from the allegations in
the Final Office Action that one of skill in the dental device art would know
how to 'provide a replacement tooth without gaps and crevices in order to
provide the user with an esthetic prosthesis."' Appeal Br. 17 (emphases
added).
Claim 33 does not require adding additional material to fill the gaps
and crevices, and one of ordinary skill in the dental art would choose the
best possible nut. See Ans. 7. Moreover, as the Examiner correctly notes,
"gaps and crevices are not wanted in teeth in order to prevent food from
getting lodged within the prosthetic" (Ans. 8), and Appellant has not
provided any persuasive technical reasoning or evidence that making the
17
Appeal2014-008730
Application 13/295,248
crown chewing surface to achieve this would have presented any particular
difficulty. In view of this, we sustain the rejection of claim 33.
Claim 34
Claim 34 recites, in part, that the dental device is configured for
attachment to a dental implant mount. Appeal Br. 24 (Claims App.)
The Examiner takes the position that "the dental device [of Hunger] is
capable of being configured for attachment to a dental implant mount (it is
capable of being glued to an implant mount)." Final Act. 6 (emphasis
added).
Appellant argues that the Examiner's rejection is deficient in several
respects:
(1) no motivation was provided to make this modification, (2)
there is no evidence that Hunger's device was structured in a
manner that made it conducive to attachment to an implant
mount, and (3) the Examiner is alleging that an unspecified glue
would be able to successfully bond vegetable nut material to an
implant mount without any support for such a proposition.
Appeal Br. 1 7.
As discussed supra, Appellant's Specification discloses that
replacements for teeth and methods for making replacements are well known
in the art. See Spec. 1. Appellant also discloses implants as a known
alternative to replacing a tooth. See id. at 3. To the extent a denture, as
disclosed in Hunger, is not already configured for attachment to a dental
implant mount, it would have been obvious to a person of ordinary skill in
the art to configure the denture this way in order to (i) allow the denture to
be removed from the mouth for cleaning or replacement, even when the
18
Appeal2014-008730
Application 13/295,248
implant mount is permanently attached inside the patient's mouth, and (ii)
allow the denture to be more easily separately manufactured from the
implant mount, facilitating the use of different materials in the implant
mount and denture. For these reasons, we sustain the rejection of claim 34.
As our reasoning differs significantly from the Examiner's, we designate our
affirmance of the Examiner's rejection of claim 34 as a NEW GROUND OF
REJECTION.
Claim 43
Claim 43 recites, in part, "with the proviso that the dental device is
not removable dentures." Appeal Br. 26 (Claims App.)
The Examiner finds that "the dental device [of Hunger] is capable of
being non-removable dentures (it is noted that the structure is capable of
being permanently secured in the mouth by an adhesive)." Final Act. 6. The
Examiner further explains that the recitation that the dentures are not
removable is a recitation of intended use. Ans. 8.
Appellant argues that "just because something is capable of a
modification does not make it obvious," "the evidence of record indicates
that it would be non-obvious to provide a permanent denture made out of a
material that is known to be water soluble," and "no prior art [is] cited that
would indicate what glue would appropriately bond to vegetable nut material
for a denture that is not removable." Appeal Br. 18.
We are not persuaded by Appellant's arguments on this point. As
discussed supra in Rejection (I), one of ordinary skill in the dental art would
understand whether or not a denture is removable. By the same token, it is
19
Appeal2014-008730
Application 13/295,248
not beyond the abilities of one of ordinary skill in the dental art to ascertain
what type of adhesive to use to install a denture permanently. We must
attribute skill to the hypothetical person described in 35 U.S.C. § 103(a). In
re Sovish, 769 F.2d 738, 742 (Fed. Cir. 1985). Appellant has not persuaded
us that the structure of the device taught by Hunger is not capable (in its
unmodified state) of the recited intended use, i.e., capable of being installed
in such a way as to be permanently affixed. Therefore, we sustain the
rejection of claim 43.
Rejection (111)
Each of claims 4, 21, 29, 35, and 36 requires a coating on the crown
chewing surface. Appeal Br. 23-26 (Claims App.). The Examiner relies on
Vit as teaching a coating. Final Act. 7 (citing Vit col. 1, 11. 51-55, col. 5, 11.
48---68, and col. 8, 11. 30-40).
Appellant argues that because Vit requires "a preliminary heat
treatment at a temperature sufficient to eliminate the binder from the
agglomerate without producing a carbonized residue, with temperatures
preferably below 650°C," and also requires "[s]intering of the particles of
hydroxylapatite . . . conducted at a temperature of about 1100°C to 1300°C,
for about 1 to about 5 hours," such treatment "does not provide any
indication to one of ordinary skill in the art that it will work as a coating on
Tagua nut material." Appeal Br. 19. Appellant argues that moreover "there
is [no] reasonable expectation of success in making such a combination,"
because the "temperature( s) utilized for either the preliminary heat treatment
and/ or the sintering operation are of sufficient magnitude to cause (a)
20
Appeal2014-008730
Application 13/295,248
carbonization of the Tagua nut material and/or (b) destruction of the Tagua
nut material." Id.; see also Reply Br. 4.
In response, the Examiner takes the position that "Vit is not being
used to teach the process of coating the HA layer, but only the HA layer as
claimed." Ans. 8. The Examiner concludes that "it would have been
obvious to one having ordinary skill in the art to modify the dentures of
Hunger with the coating taught by Vit in order to provide the dentures with a
natural enamel like coating." Id.
We do not agree with Appellant's arguments for the patentability of
claims 4, 21, 29, 35, and 36. Although Vit teaches using a heat treatment to
eliminate binder from an agglomerate of fine particles (see, e.g., Vit, col. 2,
11. 50-55, col. 3, 11. 56---61)), this is only one example of a dental product Vit
produces. In another example, Vit discloses using ceramic particles (that
were previously created by sintering) with an orally compatible binder to
provide tooth filling material or a dental liner. See Vit, col. 8, 11. 25--40. Vit
further discloses casting or molding ceramic particles, with a biocompatible
binder, into the shape of a tooth. See Vit, col. 8, 1. 64---col. 9, 1. 2. Vit does
not describe the above-noted processes as using any form of heating.
Accordingly, we do not agree with Appellant that application of Vit's
ceramic coating to a tagua nut crown would necessarily require the
application of elevated temperatures detrimental to tagua nut material. We
find unpersuasive Appellant's contention that "[t]he Examiner has not
provided any explanation or reasoning as to what would reasonably be
expected to occur when the proposed process of Vit is combined with
Hunger's Tagua nut," and "Vit is silent with regard to forming a
21
Appeal2014-008730
Application 13/295,248
hydroxylapatite layer over a nut material" (Appeal Br. 20). Rather, aside
from arguments based on the negative effects of the elevated temperature
process allegedly required by Vit, Appellant provides no technical
reasoning, much less persuasive evidence, as to why the Examiner's
proposal to coat a tagua nut crown with the material taught by Vit would be
beyond the level of a person of ordinary skill in the art. Thus, we sustain the
rejection of claims 4, 21, 29, 35, and 36.
Rejection (IV)
Claim 30 recites, in part, "the crown chewing surface is plasma
treated." Appeal Br. 24 (Claims App.).
Appellant contends:
Rabiei is directed to the dental arts, and, as argued above,
there is no reason to combine or modify Hunger with references
in the dental arts. The Examiner must provide a reason why one
of skill in the art of dental devices would look to a woodworking
reference and combine it with the cited references from the dental
industry. Woodworking and dentistry are significantly different
areas of art that a person of skill in either art would have little
knowledge of the other. This is supported by the Declaration.
Appeal Br. 21.
We addressed Appellant's arguments relating to the alleged
differences between the teachings in Hunger and the dental arts above with
respect to Rejection (II), and we sustain the rejection of claim 30 for the
same reasons discussed above regarding Rejection (II).
22
Appeal2014-008730
Application 13/295,248
Rejection (V)
Claims 31 and 32 require the dental device to be shaped based on a
particular patient's data. Appeal Br. 24 (Claims App.).
The Examiner relies on Rubbert for this teaching and concludes that it
would have been obvious for a person of ordinary skill in the art "to [further]
modify Hunger with the method of making the replacement tooth/teeth in
order to provide a customized prosthesis." Final Act. 8 (citing Rubbert col.
18, 11. 60-67, col. 19, 11. 1-8, and Abstract).
Appellant asserts that Rubbert "is directed to the dental arts, and, as
argued above, there is no reason to combine or modify Hunger with
references in the dental arts." Appellant argues that because "Vit includes
carbonizing the Tagua material indicates that it would be difficult if not
impossible to make fine adjustments to shape, size and color to match a
patient's tooth," and that a "vegetable nut would not be conducive to such
operations." Id. at 21-22.
As discussed supra, because Hunger discloses a dental device made of
tagua nut material, the disclosure of Hunger cannot be ignored solely based
on its source, and Appellant has not presented arguments or evidence that
the modification of Hunger's tagua nut denture to a particular shape, size,
texture, or color would adversely affect the tagua nut material. Accordingly,
Appellant does not apprise us of Examiner error as to this point. With
respect to Appellant's arguments based on Vit, we note that Vit was not
applied as part of Rejection (V), and thus, these arguments are moot as not
relevant to the rejection. In view of the above, we sustain the rejection of
claims 31 and 32.
23
Appeal2014-008730
Application 13/295,248
DECISION
(I) The Examiner's rejection of claim 43 as indefinite is reversed.
(II) The Examiner's rejection of claims 1-3, 5-7, 20, 33, 34, and 43 as
unpatentable over Hunger, as evidenced by Vegetable Ivory, is affirmed, and
we designate our affirmance of the rejection of claims 6 and claim 7
depending therefrom, as well as the rejection of claim 34, as NEW
GROUNDS OF REJECTION.
(III) The Examiner's rejection of claims 4, 21, 29, 35, and 36 as
unpatentable over Hunger, as evidenced by Vegetable Ivory, and Vit is
affirmed.
(VI) The Examiner's rejection of claim 30 as unpatentable over
Hunger, as evidenced by Vegetable Ivory, Vit, and Rabiei is affirmed.
(V) The Examiner's rejection of claims 31 and 32 as unpatentable
over Hunger, as evidenced by Vegetable Ivory, and Rubbert is affirmed.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides "[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review." Section
41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new
Evidence relating to the claims so rejected, or both,
24
Appeal2014-008730
Application 13/295,248
and have the matter reconsidered by the examiner,
in which event the prosecution will be remanded to
the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or
new Evidence not previously of Record is made
which, in the opinion of the examiner, overcomes
the new ground of rejection designated in the
decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to
this subpart.
(2) Request rehearing. Request that the proceeding
be reheard under § 41.52 by the Board upon the
same Record. The request for rehearing must
address any new ground of rejection and state with
particularity the points believed to have been
misapprehended or overlooked in entering the new
ground of rejection and also state all other grounds
upon which rehearing is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure (MPEP) § 1214.01.
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; 37 C.F.R. § 41.50(b)
25