Ex Parte Hall

Patent Trial and Appeal Board

Feb 13, 2015

10582919 (P.T.A.B. Feb. 13, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JAN HALL
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Appeal 2012-008654
Application 10/582,919
Technology Center 3700
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Before ERIC B. GRIMES, ULRIKE W. JENKS, and
ROBERT A. POLLOCK, Administrative Patent Judges.

JENKS, Administrative Patent Judge

DECISION ON REQUEST FOR REHEARING
Appellant has requested rehearing of the decision entered Nov. 25,
2014 (“Decision”), which affirmed Examiner’s rejections for obviousness.
A request for rehearing “must state with particularity the points [of law or
fact] believed to have been misapprehended or overlooked by the Board,”
and must comply with 37 C.F.R. § 41.52(a)(1).
Appellant’s Request for Rehearing is granted-in-part.

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DISCUSSION
Obviousness based on Ross, Bergman, and Ricci
With respect to the rejections relying on the teachings of Ross,1
Bergman,2 and Ricci3 Appellant contends we misapprehended or overlooked
that (1) the proposed modifications cannot change the principle of operation
of a reference (Req. Reh’g 3–4), (2) that the Examiner has not identified a
sufficient motivation to combine the references (id. at 4), and (3) that
combination would not meet limitations as claimed (id. at 5). These
arguments were made in the Appeal Brief (pages 6–8) but not all of them
were directly addressed in the Decision. We therefore address those
arguments below.
(1) We are not persuaded by Appellant’s contention that if “the
grooves in Ross were modified based on the teachings of Bergman, then the
proposed modification would change the principle of operation of Ross from
opposing bone tissue to promoting soft tissue growth” (Req. Reh’g 4).
This issue was fully addressed in our Decision (Dec. 7–9). To
reiterate our position, “[e]ven if the theories of how the grooves work as
disclosed in either Ross or Bergman differ, the structures function to prevent
the undesirable effect of epithelial growth along the length of the implant.
The observation that these structures work, regardless of the reason why, is
sufficient motivation to combine the teachings of the references.” (Dec. 8.)
Here, there is no change in the principle of operation of these implants as

1 Ross, US 4,744,754, issued May 17, 1988.
2 Bergman, US 4,723,913, issued Feb. 9, 1988.
3 Ricci et al., US 6,419,491 B1, issued July 16, 2002.
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both implants attach to the bone and prevent downward migration of the soft
tissue to prevent tunneling.
Appellant contends “because the Ross grooves extend deeply into the
bore of the jawbone, according to the teaching of Bergman the proposed
combination would result in soft tissue extending deeply into the jawbone
following the modified grooves.” (Req. Reh’g 4 (emphasis omitted).)
This argument is also not persuasive, as there is nothing in Bergman
to indicate that soft tissue grows into and along each and every groove
placed on the implant. Bergman disclosed that “epithelial and fibroblast cell
growth takes place along the grooves but not between them. Thus all
migration that tends to loosen the implant is prevented.” (Bergman, col. 2,
ll. 50–54 (emphasis added).) Because the tissue growth does not take place
between the grooves, we are not persuaded by Appellant’s contention that
placing Bergman’s grooves along the implant of Ross would result in soft
tissue extending deeply into the jaw bone as suggested Appellant.
(2) Appellant contends that “a motivation has not been identified for
making the macroscopic grooves of Ross significantly smaller (e.g., such
significant change would not simply be discovering an optimum or workable
range).” (Req. Reh’g 4.)
We concluded otherwise, however (Dec. 8), and Appellant has not
pointed to any issues of fact or law that we misapprehended or overlooked.
To elaborate on the reasoning in the Decision, other than disclosing that
Ross’s structures are intended for dental application, Ross is silent with
respect to any dimensions regarding the grooves and notches described in
the figures (Dec. 3; Ans. 8). Patent drawings are not necessarily intended to
show accurate relative dimensions and “arguments based on mere
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measurement of the drawings [are] of little value.” In re Chitayat, 408 F.2d
475, 478 (CCPA 1969). “[I]t is well established that patent drawings do not
define the precise proportions of the elements and may not be relied on to
show particular sizes if the specification is completely silent on the issue.”
Hockerson-Halbertstadt, Inc. v. Avia Group Int’l Inc., 222 F.3d 951, 956
(Fed. Cir. 2000). Here, the Examiner relies on the teachings of Bergman to
disclose an appropriate width and depth for grooves applicable in dental
implants (Dec. 3; Ans. 3). The Examiner’s motivation for the combination
is that preventing downward migration of soft tissue “would in turn support
bone growth and osseointegration between the implant and bone,
strengthening the implant's anchorage in the bone. . . . [Also] discovering
the optimum or workable ranges involves only routine skill in the art.”
(Ans. 4; Dec. 8.) We find no error with the Examiner’s reason and
motivation.
(3) We are also not persuaded by Appellant’s contention that “one of
skill in the art would not modify the grooves of Ross to meet the limitations
of Claims 1 and 15 as suggested by the Examiner but instead simply add the
grooves of Bergman above the grooves of Ross. However, such a
combination would not meet the limitations of Claims 1 and 15.” (Req.
Reh’g 5.)
Appellant’s contention that one of skill in the art would simply “add
the grooves of Bergman above the grooves of Ross,” was previously
addressed at pages 7–9 of the Decision. We are also not persuaded by
Appellant’s argument that placing Bergman’s grooves onto the upper portion
of Ross’s implant would not meet the limitations of claims 1 and 15. Here
the claims require “comprising at least one groove.” Thus, the limitation
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requires one groove but can encompass multiple grooves and reasonably
would also encompass grooves of different sizes so long as at least one
groove has the requisite dimension. Additionally, the result of the
combination as suggested by Appellant is not the combination proposed by
the Examiner, hence arguments directed to this hypothetical rejection are not
persuasive.
For these reasons, we find Appellant fails to identify any
misapprehension or overlooked point of fact or law with respect to the
Examiner’s rejections based on the combination of Ross, Bergman, and
Ricci (Ans. 3; Dec. 9); or Ross, Bergman, Ricci, and Cottrell4 (Ans. 5; Dec.
9) or Ross, Bergman, Ricci, and Fukuyo5 (Ans. 5; Dec. 9).

Obviousness based on Münch,6 Ross, and Bergman
Appellant contends we misapprehended or overlooked that “Munch
does not define closed loop grooves. . . . [T]he notches 5 are connected to
retention recesses 17 and thus Munch does not define closed loop grooves.”
(Req. Reh’g 6) (emphasis omitted.)
In making the rejection, the Examiner relies on Ross for the placement
of the implant against the upper edge of the jawbone and Bergman for
disclosing the width and depth of the grooves. (Ans. 6–7.) Thus, the
Examiner relies on Münch for teaching the remaining claimed structures.
The Examiner finds that Münch has at least “one closed loop groove 5
having a cup-shaped cross-section.” (Ans. 6; FF 11.) We agree with the

4 Cottrell, US 2004/0142304 A1, published July 22, 2004.
5 Fukuyo, US 5,108,289, issued Apr. 28, 1992.
6 Münch, US 4,468,200, issued Aug. 28, 1984.
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Examiner that Münch’s grooves 5 could be considered “closed loop” in that
they extend all around the outer surface of the implant as compared to a
helical grooves that forms a spiral along the length of the implant. (Ans. 6;
FF 10.) However, the claims also require that the groove forming the closed
loop has “a cup-shaped cross section and having” a depth and width falling
within the recited ranges. As Appellant points out, Münch’s device contains
recesses 17 (see also FF 1) and at those portions of the implant the groove 5
does not contain a cup-shaped cross section.
Upon review of Münch in light of Appellant’s argument we agree
with Appellant that we misapprehended Münch’s disclosure. Münch
provides that the “retention recesses are added to the annular notches and
expansion in another practical embodiment of the invention. They further
promote ingrowth of the implant and improve its anchoring in the
mandibular crest.” (Münch, col. 3, ll. 4–8.) What is missing from the
Examiner’s obviousness analysis is some explanation why one of ordinary
skill would want to remove the recesses 17 from Münch’s implant, that are
taught to promote bone growth, and instead use structures that do not
contains such recesses.
Appellant has satisfied the burden of showing that the Board
misapprehended the relevant evidence with respect to Münch such that the
Examiner has not established a prima facie case of obviousness based on the
combination of Münch, Ross, and Bergman.

Appeal 2012-008654
Application 10/582,919

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SUMMARY
We have granted Appellant’s request to the extent that we have
reconsidered our decision entered Nov. 25, 2014 .
We amend our decision to reverse the rejection of claims 1, 15, 22,
and 25 under 35 U.S.C. § 103(a) as obvious over Münch, Ross, and
Bergman.
We deny Appellant’s remaining requests.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

GRANTED-IN-PART

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