Ex Parte Guy

Patent Trial and Appeal Board

Feb 16, 2017

13295248 (P.T.A.B. Feb. 16, 2017)

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.
13/295,248 11/14/2011 Frederick R. Guy RGUP-0004 9535
16375 7590 02/21/2017
Medley, Behrens & Lewis, LLC
6100 Rockside Woods Blvd.
Suite 440
Independence, OH 44131
EXAMINER
EIDE, HEIDI MARIE
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
02/21/2017 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
Appeal 2014-008730
Application 13/295,248
Technology Center 3700
Before JOHN C. KERINS, STEFAN STAICOVICI, and LEE L. STEPINA,
Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
Frederick R. Guy (Appellant) has filed a Request for Rehearing
(“Request”) of the Decision on Appeal entered September 28, 2016
(“Decision”), in this Application. The Request seeks reconsideration of the
Board’s affirmance of the rejection of claims 1—7, 20, 21, 29—36, and 43.1
1 The rejection of claims 6, 7, and 34 was designated as a NEW
GROUND OF REJECTION. See Decision 24.
Appeal 2014-008730
Application 13/295,248
(I): claims 6, 7, and 34
Claim 6
Traversing the rejection of claim 6 as unpatentable over Hunger as
evidenced by Vegetable Ivory, Appellant asserts that, because dentures are
more robust structures than dental crowns are, the use of a material for a
denture, as taught by Hunger, is not indicative of the suitability of the
material for a crown. Req. 2.2 Appellant also asserts that, from the
Declaration under 37 C.F.R. § 1.132 of Robert Ingrassio, dated February 19,
2014, (“Ingrassio Declaration”) and The Encyclopedia of Fruit Appeal &
Nuts, “One can very reasonably surmise from the relevant documentation
that the tagua material softens when moistened.” Req. 3.
As discussed in the Decision, “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.” Decision 16. Hunger teaches the use of tagua
nut material for dentures and that dried tagua nut material is moisture
resistant. Hunger 49. Weighing the evidence regarding the characteristics
of tagua nut material, including its solubility (see, e.g., Ingrassio Declaration
1—3 and Jules Janick and Robert E. Pauli, The Encyclopedia of Fruit & Nuts
152), against the disclosure, in Hunger, relating to the moisture resistance of
tagua nut material, we do not agree with Appellant’s arguments.
Appellant’s arguments on this point fail for an additional reason.
Under the broadest reasonable interpretation, claims 6, 7, and 34 do not
2 The Request provides no page numbers, and our reference to page numbers
counts the title page of the Request as page 1.
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Application 13/295,248
require direct exposure of untreated vegetable nut material to the interior of
the mouth. For example, claim 29, which depends from claim 1, recites “a
chemical treatment on the crown chewing surface that affects a property of
the naturally derived material.” Claim 30, which depends from claim 1,
recites “wherein the crown chewing surface is plasma treated.” Claim 35,
which depends from claim 1, recites “wherein the crown chewing surface is
sealed by a layer of a naturally occurring mineral.” Emphasis added.
Claims 6, 7, and 34 do not further limit the device recited in claim 1 in any
way that precludes the treatments recited in claims 29 and 30 or the layer of
mineral that seals the crown chewing surface recited in claim 35. Thus,
Appellant’s argument relating to the softening of tagua nut material assumes
a condition not required by the claim.
Additionally, Appellant asserts that by stating “Appellant [does not]
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,” the Board improperly placed a burden of proving
patentability on Appellant. Req. 3 (quoting Decision 16).
We do not agree with Appellant’s argument on this point because the
above-noted statement in the Decision relates to whether making a crown
from a tagua nut would have been within the level of ordinary skill in the art,
not whether Appellant established patentability. Specifically, the paragraph
in the Decision before the one quoted by Appellant discusses the rationale
for the new ground of rejection, namely, that the proposed use of tagua nut
in a crown “would have been the application of a known technique to
improve a similar device [a device similar to a denture] in the same way.”
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Application 13/295,248
Decision 15—16 (citing KSR Int 7. Co. v. Teleflex, Inc., 550 U.S. 398, 417
(2007). One of the elements of this rationale is that the modification would
have been within the ability of a person of ordinary skill in the art. See KSR,
550 U.S. at 417 (stating, “if a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill.'1'’). Emphasis added.
The above-noted discussion in the Decision relating to adhesive merely
addresses the issue of whether there would have been any particular
difficulty in implementing the proposed modification—it does not require
Appellant to prove patentability.
Appellant also asserts, without citation to any objective evidence, that
“typically used dental adhesives are used to bind inorganic ceramic or metals
to teeth—not organic nut material.” Req. 3. This assertion attempting to
limit the use of “typical” dental adhesives is merely attorney argument
unsupported by any evidence having probative value. Additionally,
Appellant provides no adequate reasoning that would lead a person of
ordinary skill in the art to suspect that dental adhesives used for binding
ceramic and metals to teeth would not work with tagua nut material. Indeed,
claim 6 does not require any bonded surface to consist of, or even comprise
tagua nut (or vegetable nut) material. Rather, claim 6 requires a crown with
a “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.” We do not modify our
decision affirming the rejection of claim 6.
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Claims 7 and 34
Appellant relies on the arguments for claim 6 above for the
patentability of claim 7. Req. 3. Appellant asserts that a person of skill in
the art would have had no reason to expect tagua nut material to be suitable
for use as the device recited in claim 34, which is configured for attachment
to a dental implant mount. Req. 3. For the same reasons discussed above
regarding the rejection of claim 6, we do not modify our decision as to the
affirmance of the rejection of claims 7 and 34.
(II): claims 1—7, 20, 21, 29—36, and 43 (all appealed claims)
Appellant asserts “The Examiner provided no particular legal
response to the Appellant’s arguments and supporting case law that Hunger
was not analogous art, thus the Board’s reliance on In re Clay, 966 F.2d 656,
659 (Fed. Cir. 1992), should be considered a new ground of rejection.” Req.
4. Appellant reasserts that Hunger is non-analogous art and is therefore
unavailable for use as a reference. Req. 4.
For multiple reasons, we do not agree that the Board’s reliance on In
re Clay should be considered a new ground of rejection. First, the Examiner
addressed Appellant’s argument alleging that Hunger is non-analogous art.
See, e.g., Ans. 2—3. Second, the standard applied by the Board regarding the
determination of whether a reference is analogous art is not different than
that which the Examiner applied. See, e.g., Decision 6—7 (agreeing with the
Examiner’s finding that Hunger is the same field of endeavor as Appellant’s
invention). Thus, the citation to In re Clay by the Board did not change the
thrust of the Examiner’s rejection. Third, the standard set forth in In re
Clay, is still applicable to the question of whether a reference is analogous
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Application 13/295,248
art, i.e., the Board applied the proper rule in finding Hunger is analogous art.
In this regard, we note that Appellant, in discussing the proper standard for
determining whether a reference is analogous art, explicitly refers to In re
Clay in support of Appellant’s arguments. See Appeal Br. 9. As for
Appellant’s reiteration that Hunger is non-analogous art (see Req. 4), this
issue has already been addressed (see, e.g., Decision 5—7).
(Ill): claims 4, 21, 29, 35, and 363
Appellant argues that the rejection of claims 4, 21, 29, 35, and 36
should be designated a new ground of rejection because the Examiner stated
that Vit was relied upon only for its coating, not for its process, and the
Board’s affirmance of the rejection, referring to Vit’s sintering, casting, and
molding process “directly opposes the Examiner’s reasoning.” Req. 4—5.
The Final Office Action refers to Vit’s process as well as its coating.
See Final Act. 7 (stating “It would have been obvious to one having ordinary
skill in the art at the time of the invention to modify Hunger with the coating
and process taught by Vit in order to provide the replacement teeth with a
coating that is similar to natural teeth.”). However, we agree with Appellant
that the Answer relies on the coating of Vit, but not the process. See, e.g.,
Ans. 8 (stating, “it is noted that Vit is not being used to teach the process of
coating the HA layer, but only the HA layer as claimed.”). We further agree
that the Decision addresses Appellant’s argument regarding the alleged use
of high temperatures in Vit’s process by referring to processes used by Vit
without heating. See Decision 21. Accordingly, we designate our
3 Beginning here, our section numbering differs from that in the Request.
See Req. 4, 6.
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affirmance of the rejection of claims 4, 21, 29, 35, and 36 a NEW GROUND
OF REJECTION.
Regarding claims 4, 21, 29, 35, and 36, Appellant asserts that bone,
teeth, ceramic and metal compositions have “different origins and chemical
compositions” than vegetable nut material, and “There is still nothing in the
prior art that teaches or provides any suggestion on the effects of coating an
organic vegetable nut material with an inorganic material such as
hydroxyapatite.” Req. 5. Quoting portions of column 8 of Vit, Appellant
also argues:
Furthermore, what is stated to make the hydroxyapatite of
Vit a preferred material for such uses disclosed in Col. 8, lines
25-40, is that it has a “substantially identical” “thermal
coefficient of expansion” to “natural tooth enamel.” Id. Nothing
indicates that this is the case with organic vegetable nut material.
In fact, one would expect the opposite given the substantially
different chemical composition of the two materials.
Req. 5.
We agree with the Examiner’s rationale; that it would have been
obvious to modify the dentures taught by Hunger to have the coating taught
by Vit in order to provide the dentures with a natural enamel-like coating.
See Final Act. 7; Ans. 8; and Decision 21. This reasoning does not depend
on the coefficient of thermal expansion of the materials involved, and is
supported by rational underpinnings inasmuch as it would be desirable to
make a coating for a dental device such as a crown to have a coating similar
to what naturally exists in the surrounding teeth, i.e., “enamel-like.”
Furthermore, a more complete portion of the text in column 8 of Vit, cited
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and partially quoted by Appellant, explicitly supports this rationale.
Specifically, Vit states:
The spheroidal ceramic particles of this invention which employ
pure hydroxylapatite are preferred for use in such dental
restorative compositions because hydroxylapatite possesses a
thermal coefficient of expansion substantially identical to that of
natural tooth enamel, the hardness of hydroxylapatite is similar
to the hardness of natural tooth, and in addition natural tooth
and hydroxylapatite stain in a similar way.
Vit, 8:33—45 (emphasis added). Thus, we disagree with Appellant’s
arguments above relating to the “coefficient of thermal expansion” of
hydroxylapatite and otherwise attacking the reasoning in the Decision.
Appellant next asserts:
When faced with combining two totally different materials
with no evidence of those materials ever being combined before,
the USPTO should provide some evidence or reasoning why one
of ordinary skill in the art would expect those materials to result
in a successful combination. Even though it is not Appellant's
burden to provide that such a combination would not be obvious,
the significant difference in the chemical composition of the
organic vegetable nut and the hydroxyapatite (as well as the
materials that hydroxyapatite is known to be applied to) should
weigh heavily in favor of non-obviousness. Furthermore, the
Declaration by an expert in the field also supports Appellant's
position, whereas there is no evidence weighing against
patentability on this matter.
Req. 5—6 (emphasis added).
Vit teaches a variety of binders may be used with hydroxylapatite.
See, e.g., Vit, 8:46—63. Vit does not indicate that the list of suitable binders
is particularly restricted, and in view of Vit’s teaching of a multitude of
compatible binders, we find that a person of ordinary skill in the art would
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have had a reasonable expectation of success in coating the tagua nut
material taught by Hunger with hydroxylapatite as taught by Vit.
The Ingrassio Declaration states:
It was unexpected to me that [hydroxylapatite] or plasma
treatment would have any beneficial effect relevant to a dental
device on a vegetable nut material, including Tagua nut. I
understand that hydroxylapatite has been used as a bone
regrowth agent to bond metal dental implants to bone, but that
does not provide me with any reason to think it would be
beneficial if used on a chewing surface of a dental device or on
a vegetable nut material.
Ingrassio Deck 19.
Weighing Vit’s teaching of using hydroxylapatite as a material that “is
similar to the hardness of natural tooth” and that stains in a way to similar to
natural teeth against Appellant’s arguments and evidence, we do not change
our Decision that claims 4, 21, 29, 35, and 36 are unpatentable. The explicit
teachings of Vit support the Examiner’s finding that hydroxylapatite, as a
coating, would provide a beneficial effect to a tagua nut dental device, as
articulated by the Examiner.
DECISION
We GRANT the Request to the extent we designate our affirmance of
the rejection of claims 4, 21, 29, 35, and 36 a NEW GROUND OF
REJECTION. We DENY the Request as to changing our affirmance of the
rejections as set forth in the Decision.
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
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Application 13/295,248
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, 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 § 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
GRANTED-IN-PART: 37 C.F.R, $ 41.50(b)
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