Ex Parte HallDownload PDFPatent Trial and Appeal BoardFeb 13, 201510582919 (P.T.A.B. Feb. 13, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JAN HALL ____________ Appeal 2012-008654 Application 10/582,919 Technology Center 3700 ____________ 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. Appeal 2012-008654 Application 10/582,919 2 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. Appeal 2012-008654 Application 10/582,919 3 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 Appeal 2012-008654 Application 10/582,919 4 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 Appeal 2012-008654 Application 10/582,919 5 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. Appeal 2012-008654 Application 10/582,919 6 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 7 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 cdc Copy with citationCopy as parenthetical citation