Ex Parte Harima

Board of Patent Appeals and Interferences

Sep 21, 2007

10625531 (B.P.A.I. Sep. 21, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte TOSHIO HARIMA
____________________

Appeal 2007-4070
Application 10/625,5311
Technology Center 3700
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Decided: September 21, 2007
____________________

Before CAROL A. SPIEGEL, SALLY C. MEDLEY and MARK
NAGUMO, Administrative Patent Judges.

SPIEGEL, Administrative Patent Judge.

DECISION ON APPEAL
I. Introduction
Toshio Harima (hereinafter "Appellant") seeks review under 35
U.S.C. § 134(a) of the Examiner's final rejection of claims 1-10, all of the

1 Application on appeal filed 24 July 2003. According to the Patent
Assignment Abstract of Title (Reel/Frame 013925/0310, 014112/0891 and
014120/0063), the real party-in-interest is K.O.L. ISLAND RETAINER,
LLC.
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Application 10/625,531

claims pending in this application. We have jurisdiction under 35 U.S.C.
§ 6(b). We AFFIRM.
Appellant's invention is directed to an orthodontic wire retainer.
Claims 1, 5 and 6 are illustrative and read as follows (emphasis added):
1. An orthodontic wire retainer, comprising
a first metal wire for conforming to the
posterior surface of a dental arch;
a second metal wire for conforming to the
anterior surface of the dental arch;
a pair of third metal wires extending
between the first metal wire and second metal
wire;
said third metal wires attached to said first
and second metal wires to form an annular bridge
providing a resilient support for teeth along the
dental arch;
a wire rest extending from said first wire for
resting upon the top surface of the dental arch,
said wire rest spaced from the end of the first wire.
5. The orthodontic wire retainer of claim 1,
wherein said wire rest has a first section attached
to said first wire and extending toward said second
wire.
6. The orthodontic wire retainer of claim 5,
wherein said wire rest has a second section
attached to said first section and extending toward
said third wire.
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The Examiner has rejected claims 1-5, 7-8 and 10 under 35 U.S.C. §
102(b) and claims 6 and 9 under 35 U.S.C. § 103(a).2 The Examiner relies
on the following prior art of record:
Harima US 4,725,230 Feb. 16, 1988
Harima qualifies as prior art under 35 U.S.C. § 102(b). Claims 1-5, 7-8 and
10 stand rejected under 35 U.S.C. § 102(b) as anticipated by Harima.
Claims 6 and 9 stand rejected under 35 U.S.C. § 103(a) as obvious over
Harima.
II. Findings of Fact ("FF")
The following findings of fact are supported by a preponderance of
the evidence of record.
A. Appellant's Specification3
[1] Use of an orthodontic retainer for some time after orthodontic
treatment is said to be commonplace to prevent the teeth from
relapsing into their pretreatment condition (Specification ¶ 2).
[2] According to Appellant's specification, one object of the invention is
"to provide a retainer having a clasp and rest to prevent sinking of the
wire" (Specification ¶ 4).
[3] Figure 2 of the specification illustrates a preferred retainer having a
first wire 11, extending along the posterior surface of the dental arch
10, a second wire 12, extending in a loop along the anterior surface of

2 The Examiner has withdrawn the final rejection of claims 1-10 under 35
U.S.C. § 112, second paragraph (Examiner's Answer ("Answer"), mailed 4
May 2006, at 2).
3 In this decision, the specification as originally filed on 24 July 2003 is
referred to as the "Specification." The specification as amended on 9
November 2004 is referred to as the "Amended Specification ('Am.
Specification')."
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the dental arch 10, and a third wire 13, fitting between a bicuspid
tooth 20 and a premolar 13 and attached to the first and second wires
11, 12. Figure 2 is shown below:

{Figure 2 is said to show a retainer in a front perspective view}4

[4] Figure 2 is said to depict the first, second and third wires 11, 12, 13 as
joined to form an integral annular bridge 14 said to provide resilient
support for the dental arch (Specification ¶ 13).
[5] Figure 2 is said to also depict both terminal ends of the first, second
and third wires 11, 12, 13 curving along the surfaces of the molar 40,
premolar 30 and bicuspid 20, respectively, on both sides of the dental
arch 10 in a manner said to prevent sinking of the wire with respect to
the dental arch 10 (Am. Specification ¶ 14).

4 The text in curly brackets following the Figures is provided to ensure
compliance with section 508 of the U.S. Rehabilitation Act for publication
of this Decision on the USPTO website pursuant to the Freedom of
Information Act. It is not part of the Decision.
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[6] Figure 4 of the specification depicts a section of the retainer having a
wire rest 17 and is shown below:

{Figure 4 is said to show top view of retainer section having a wire clasp
and wire rest}

[7] The section of the retainer illustrated in Figure 4 is said to show wire
rest 17 as having an L-shape with a first section extending between
premolar 30 and molar 40 and a second section resting on top of
premolar 30 (Am. Specification ¶ 15). However, "if the third wire 13
were [sic] positioned between the premolar 30 and molar 40, . . ., the
wire rest would rest upon the molar 40" (Am. Specification ¶ 15).
[8] Wire rest 17 is said to be attached to first metal wire 11 and to prevent
"elongation of the molar and sinking of the wire retainer" (Am.
Specification ¶ 15.
B. Harima
[9] Figure 1 of Harima depicts an orthodontic wire retainer comprising a
first metal wire (11) conforming to the posterior surface of a dental
arch, a second metal wire (12) conforming to the anterior surface of a
dental arch, and a pair of third metal wires (13), wherein the first (11)
and second (12) metal wires are fused to the third metal wires (13) to
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form an annular bridge (14) which provides a resilient support for the
dental arch (10) (Harima at col. 1, l. 60 through col. 2, l. 2; Figure 1).
Figure 1 is show below:

{Figure 1 of Harima is said to show a retainer in a front perspective view.}
[10] According to Harima,
for the purpose of preventing sinking of the wire
retainer with respect to the dental arch (10), the
terminal ends of said first stainless steel wire (11),
second stainless steel wire (12) and third stainless
steel wire (13) are curved along the surfaces of the
molar (40), premolar (30) and canine (20),
respectively, to form rests (15). In this
embodiment, the third stainless steel wire (13) is
disposed between canine (20) and premolar (30) or
between premolar (20) [sic, 30] and molar (40) but
in order to maintain the fitting and retention
function of the wire retainer at a predetermined
level, the position of said third stainless steel wire
(13) is selected so that said rest (15) may exhibit
the anti-sinking effect with respect to at least one
premolar (30) or molar (40) externally of said
annular bridge (14) (Harima at col. 2, l. 59 through
col. 3, l. 5).
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[11] The upper left hand section of Figure 1, enlarged below for ease of
viewing, depicts a hook-shaped rest (second 15 from the back of the
dental arch) which is spaced apart from the end of the first wire (top
15) and with a small "hook" extending externally of annular bridge 14
at the first molar (40) of the dental arch (10) toward the second wire
12 (id.).

{Enlargement of the upper left-hand portion of Harima Figure 1.}
C. Rejections over the Prior Art and Rebuttal
[12] The Examiner found, as to claims 1-5, 7-8 and 10, that
Harima discloses an orthodontic wire retainer
comprising a first metal wire 11, a second metal
wire 12, a pair of third metal wires 13 (figure 1,
column 1 line 62), the third metal wires attached to
the first and second metal wires to form an annular
bridge 14, and a wire rest 15, as circled below,
extending from the first wire, the wire rest spaced
apart from the end of the first wire. Figure 1
shows a wire clasp that is W-shaped and the wire
rest is L-shaped. Figure 1 shows the wire rest
having a first section attached to the first wire and
extending toward the second wire. Figure 1 shows
a second wire rest on the opposite side of the
retainer from the (first) wire rest with the same
configuration. [Answer at 3.]
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[13] The Examiner's reproduction of Harima Figure 1, with the second of
the four pair of wire rests 15 depicted in the figure in a clockwise
manner is shown below:

{Harima Figure 1 as annotated by the Examiner by circling a
pair of wire rests 15.}
[Answer at 3.]
[14] As to claims 6 and 9, the Examiner found that Harima discloses an
orthodontic wire retainer comprising a wire rest having a second
section attached to the first section, but does not show that the second
section extending toward the third wire (Answer at 3).
[15] The Examiner concluded that it would have been obvious to orient the
second section of the wire rest as claimed to further exhibit anti-
sinking effect because Harima states that "'said rest (15) may exhibit
the anti-sinking effect with respect to at least one premolar (30) or
molar (40) externally of said annular bridge (14).[']" (Answer at 3-4,
closed inner quotation mark added).
[16] According to the Examiner,
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if the first metal wire is laid along the posterior
surface of a dental arch (column 1 line 64) and the
wire rest extends from the first wire and rests on a
top surface of the dental arch as shown in figure 1,
the wire rest would have to exhibit a change in
dimensional direction (i.e., extending upward from
the back of a tooth and curving forward to the top
of the tooth) which may be described as "L-
shaped" (Answer at 4).
[17] As to claims 1-5, 7-8 and 10, Appellant argued that "[n]o reference
numerals are provided in the rejection and no such structure [i.e., a
wire rest spaced from the end of the first wire, having a first section
attached to the first wire and extending toward the second wire and
being L-shaped] is seen by Applicant" (Br. at 3-4).
[18] As to claims 6 and 9, Appellant argued that not only was the structure
which the Examiner considered as the wire rest unclear in Harima
Figure 1, but also that Harima did not support the modification
proposed by the Examiner (Br. at 4).
Other findings of fact are cited as necessary below.
III. Anticipation
Anticipation requires disclosure of each and every claim limitation in
a single prior art reference, either explicitly or inherently. MEHL/Biophile
Int'l Corp. v. Milgraum, 192 F.3d 1362, 1365, 52 USPQ2d 1303, 1305 (Fed.
Cir. 1999). Here, we agree with the Examiner that Harima explicitly
discloses each and every limitation of claim 1 (FF 9–13). Appellant argues
that the Examiner did not identify by reference numeral(s) where Figure 1 of
Harima showed the pair of wire rests recited in claim 1 and Appellant could
not see such structures (FF 17). In response, the Examiner annotated
Harima Figure 1 by circling the structures found to satisfy the wire rest
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limitation of claim 1 (Answer at 3; FF 12–13). Appellant did not dispute the
Examiner's findings based on annotated Harima Figure 1. There is no
apparent reason why Appellant could not have presented rebuttal arguments
as to why the circled structure in annotated Harima Figure 1 did not meet the
limitation of the wire rest component of the retainer of claim 1. Having
failed to do so, we deem such arguments waived. Accordingly, we affirm
the rejection of claim 1 under 35 U.S.C. § 102(b) over Harima. Since
Appellant has not offered independent arguments against the rejection of
claims 2-5, 7-8 and 10 under 35 U.S.C. § 102(b) as anticipated by Harima,
we affirm that rejection without further discussion. 37 C.F.R. §
41.37(c)(1)(vii).
IV. Obviousness
A claimed invention is not patentable if the differences between what
is claimed and the prior art are such that the claimed invention as a whole
would have been obvious to one of ordinary skill in the art. 35 U.S.C. §
103(a). The legal conclusion of obviousness must be based on factual
findings concerning the scope and content of the prior art, the differences
between the prior art and the claimed invention, and the level of ordinary
skill in the art. So-called secondary considerations, including evidence of
unexpected results, may provide indicia of nonobviousness or obviousness.
KSR Int'l Co. v. Teleflex, Inc., 127 S.Ct. 1727, 1734, 82 USPQ2d 1385, 1389
(2007); Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18, 148
USPQ 459, 467 (1966). The inquiry into obviousness is "expansive and
flexible" and not governed by rigid rules. KSR, 127 S.Ct. at 1739, 82
USPQ2d at 1389. On appeal, the procedural burden is on Appellant to
demonstrate reversible error by the Examiner.
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The Examiner found that Harima discloses the invention of claims 6
and 9 but for showing the second section of the wire rest extending toward
the third wire (FF 14). The Examiner concluded that it would have been
obvious to orient the second section of the wire rest toward the third wire,
i.e., to extend externally of the annular bridge, to further exhibit anti-sinking
effect (FF 15). Appellant argued (prior to the Examiner submitting the
annotated Harima Figure 1 in the Answer) that not only was the structure
which the Examiner considered as the wire rest unclear in Harima Figure 1,
but also that Harima did not support the modification proposed by the
Examiner (FF 18).
First, as discussed above, Appellant has not disputed the Examiner's
finding that the circled structures in annotated Harima Figure 1 discloses the
wire rests recited in any of claims 1-5 or 7-8. Second, the Examiner
explicitly identified the teaching in Harima relied upon to support her
position (FF 15). We observe that the Examiner's finding corresponds to
Appellant's disclosure of the function of wire rest 17 (FF8). The burden then
shifted to Appellant to explain why the Examiner's prima facie case of
obviousness is in error, e.g., why the explicitly identified teaching in Harima
did not support the Examiner's conclusion of obviousness or why positioning
the second section of the wire rest of the claimed retainer external of the
annular bridge was outside of ordinary skill in the art or contrary to the
teachings of the art. Thus, Appellant's unsupported assertion that "there is
no teaching reference to support the modification proposed by the
Examiner" (Br. at 4; FF 18) is contradicted by the teachings of Harima. On
this record, Appellant has failed to demonstrate reversible error by the
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Examiner. Therefore, we affirm the rejection of claims 6 and 8 under 35
U.S.C. § 103(a) as obvious over Harima.
V. Summary
In view of the record and for the reasons given, it is
ORDERED that the rejection of claims 1-5, 7-8 and 10 under 35
U.S.C. § 102(b) as anticipated by Harima is AFFIRMED;
FURTHER ORDERED that the rejection of claims 6 and 9 under 35
U.S.C. § 103(a) as obvious over Harima is AFFIRMED; and,
FURTHER ORDERED that the time for taking further action is not
extendable under the provisions of 37 C.F.R. § 1.136(a).
AFFIRMED

VW

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