Ex Parte Herman

Board of Patent Appeals and Interferences

Aug 31, 2009

11293064 (B.P.A.I. Aug. 31, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte DANIEL HERMAN
__________

Appeal 2009-0043561
Application 11/293,064
Technology Center 3700
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Decided: August 31, 2009
__________

Before DONALD E. ADAMS, FRANCISCO C. PRATS, and
MELANIE L. McCOLLUM, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
for making an orthodontic band. The Examiner has rejected the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 American Orthodontics Corporation is the real party in interest (App. Br.
1).
Appeal 2009-004356
Application 11/293,064

STATEMENT OF THE CASE
Claims 1-10 are pending and on appeal (App. Br. 2). Claim 1 is
representative and reads as follows:
1. A method for making an orthodontic band configured
for mounting on a human tooth, comprising:
die pressing a metal blank into an orthodontic crown
having a cylindrical sidewall, an open bottom and a round top
wall; and
then die punching the crown through the top wall using a
die having a diameter less than that of the cylindrical sidewall,
thereby removing a round central portion of the top wall to
form an inwardly directed annular flange which can be press-fit
into conformity with a tooth surface when the band is mounted
on the tooth.

The Examiner cites the following documents as evidence of
unpatentability:
Dillberg et al. US 3,343,247 Sep. 26, 1967
Tuneberg US 5,441,409 Aug. 15, 1995
Butler US 6,283,162 B1 Sep. 4, 2001

Disclosure of admitted prior art in the present Specification, page 1, line 24
through page 2, line 9.

The following rejections are before us for review:
Claims 1-3 and 5-10 stand rejected under 35 U.S.C. § 103(a) as being
obvious in view of admitted prior art, Dillberg, and Butler (Ans. 4-5).
Claim 4 stands rejected under 35 U.S.C. § 103(a) as being obvious in
view of admitted prior art, Dillberg, Butler, and Tuneberg (Ans. 5-6).
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OBVIOUSNESS
ISSUE
The Examiner finds an admission in Appellant’s Specification that it
was known in the art “to produce an orthodontic band that includes the step
of forming a crown flange by drilling the crown” (Ans. 4). The Examiner
concedes that claim 1 differs from that prior art in that the method does not
“include[] the step of die pressing and punching,” and cites Dillberg to meet
that limitation (id. at 4-5).
The Examiner finds that Dillberg “teaches forming a cylindrical
closed ring shape 12 from a flat piece 10 which inherently comprises
pressing and then punching out the bottom wall 20, column 2, lines 60-65”
(id. at 5). The Examiner further finds that Butler “teaches that it is known in
the metal working art that there is an[] advantage to punching over drilling,
column 3, lines 5-12” (id.).
Based on these teachings the Examiner concludes that an ordinary
artisan would have considered it obvious “to modify the [admitted] prior art
[method] to include pressing and punching as shown by Dillberg in order to
make use of known methods in the art for removing material. It would be
further obvious to choose punching in view of the known advantage as
shown by Butler” (id.).
Appellant contends that Dillberg teaches away from the claimed
method because it discloses punching out the bottom wall rather than the top
wall of the cup-shaped precursor to the orthodontic band, and then trimming
the edge of the punched out bottom wall to give the band gingival edge
(App. Br. 4-5). Thus, Appellant argues, “[r]egardless of which end is up
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(gingival) in Dillberg, the reference does not teach forming an annular
inwardly extending flange as recited in claims 1 and 5 on appeal” (id. at 5).
Appellant contends that “Dillberg does not contemplate use of die
stamping as a means of forming an inwardly directed annular flange on the
top (incisal) end, but only as a means of profiling a gingival edge” (id.).
Appellant reasons that Dillberg’s discussion of the undesirable orange peel
effect that can occur during fabrication of the bands would not have
encouraged an ordinary artisan “to experiment with die stamping in ways
Dillberg does not contemplate, namely at the upper wall rather than the
bottom wall, and for a different purpose, that is to form an inwardly directed
flange at the top wall, rather than a profiled edge at the bottom wall” (id.).
Appellant further contends that because Butler’s disclosure is directed
to fabricating automobile exhausts, Butler is non-analogous art with respect
to the claimed subject matter, as evidenced by its classification in a
significantly different class (id.). Thus, Appellant argues, a person of
ordinary skill “in the orthodontic manufacturing art would not have reason to
even look at Butler, and even if he did, the teaching quoted by the examiner
is not a general statement about the merits of punching versus drilling, but
one limited to the context of a boom tube exhaust pipe” (id. at 6). Moreover,
Appellant urges, “[i]t has not been established that metalworking techniques
involved in metalworking auto parts are the same as those for working very
small objects such as orthodontic bands. Dillberg's discussion of the orange
peel effect suggests the considerations are different when forming very thin
metal” (id.).
In view of the positions advanced by Appellant and the Examiner, the
issue with respect to this rejection is whether the Examiner erred in
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concluding that an ordinary artisan would have found it obvious to use a die
punch to remove a portion of the top wall of a cylindrical metal blank to be
used as an orthodontic band, when the prior art discloses that the same
portion of the cylindrical metal blank has been previously removed by
drilling, and when the prior art also discloses that it was suitable to use a die
punch to remove a portion of the bottom wall of a cylinder blank.
FINDINGS OF FACT (“FF”)
1. The “Background of the Invention” section of Appellant’s
Specification states:
Conventional orthodontic bands are generally tubular in
shape and do not extend over the top of the tooth. Recently,
however, there has emerged a desire for modified orthodontic
bands having an inwardly directed flange at the top of the band
referred to as an occlusal rollover. Orthodontic labs have
custom-made crowns into bands with an occlusal rollover by
taking a can-shaped crown closed at one end and drilling out
the center using a Dremel tool or a laser. The flange is then
pressed-fit into conformity with the top of the molar at the time
of installation.

(Spec. 1-2.)
2. Dillberg discloses a “method of forming a[n orthodontic] band to the
proper tooth configuration, and with an externally expanded central girth
area” (Dillberg, col. 1, ll. 12-14).
3. Dillberg describes the initial steps of forming the band as follows:
A blank metal disc 10 is drawn by conventional methods
to produce a cup 12. This cup is trimmed, and a portion of the
bottom wall is stamped out and removed. Thereafter the
remainder of the bottom is folded out and becomes an extension
of the side wall. These operations produce the seamless sleeve
or band 14 having a festoon gingival edge 15 and straight
incisal edge 16.
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(Id. at col. 2, ll. 62-68.)
4. Dillberg discloses that, to give orthodontic bands the desired barrel
shape with curved walls, prior art methods used expansion dies to expand
the central girth portion of the bands (id. at col. 3, ll. 4-20).
However, the use of expansion dies suffered from “a phenomen[on]
referred to in manufacturing parlance as ‘orange peel.’ The top surface
tends to break away from the metal beneath. This is a phenomen[on] well
known by metallurgists, but nonetheless requires that the band be polished to
remove such orange peel surface after the expansion has taken place” (id. at
col. 3, ll. 31-36).
Dillberg solved this problem by placing the bands on a barrel-shaped
mandrel that mates with a rollable concave die (id. at col. 3, ll. 37-62).
5. Butler discloses “exhaust systems for automobiles, and more
specifically thin exhaust pipes for increased ground clearance on racing cars
used on oval tracks such as stock cars” (Butler, col. 1, ll. 10-13).
6. Butler discloses that one type of prior art exhaust system includes a
plurality of rectangular or square tubes welded together side-by-side “to
form a thin profile, generally flattened tubular body of greater width than
using a single rectangular tube. A plurality of exhaust crossover holes are
typically drilled or milled through the walls of the tubes to allow crossover
flow of exhaust gasses between the elongate passageways” (id. at col. 2, l.
64, through col. 3, l. 2).
7. Butler discloses, however, that “[w]hile such boom tube exhaust pipe
is more fatigue resistant than the sheet metal, the weight thereof is greater,
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[and] the exhaust gas crossover tubes must typically be drilled or milled
rather than less expensive punching thereof” (id. at col. 3, ll. 6-9).
PRINCIPLES OF LAW
As the Supreme Court pointed out in KSR Int' l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007), “a patent composed of several elements is
not proved obvious merely by demonstrating that each of its elements was,
independently, known in the prior art.” Rather, the Court stated:
[I]t can be important to identify a reason that would have
prompted a person of ordinary skill in the relevant field to
combine the elements in the way the claimed new invention
does . . . because inventions in most, if not all, instances rely
upon building blocks long since uncovered, and claimed
discoveries almost of necessity will be combinations of what, in
some sense, is already known.

Id. at 418-419 (emphasis added).
While it recognized the importance of pointing to some rationale for
practicing the claimed subject matter, the Court also reaffirmed that “when a
patent ‘simply arranges old elements with each performing the same
function it had been known to perform’ and yields no more than one would
expect from such an arrangement, the combination is obvious.” Id. at 417
(quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)). The Court
reasoned that:
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that
instance the fact that a combination was obvious to try might
show that it was obvious under § 103.
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Id. at 421.
Thus, as our reviewing court’s predecessor has stated, “[e]xpress
suggestion to substitute one equivalent for another need not be present to
render such substitution obvious.” In re Fout, 675 F.2d 297, 301 (CCPA
1982); see also In re Mayne, 104 F.3d 1339, 1340 (Fed. Cir. 1997)
(“Because the applicants merely substituted one element known in the art for
a known equivalent, this court affirms [the rejection for obviousness].”).
Regarding the use of analogous art in obviousness rejections, our
reviewing court has stated:
Two separate tests define the scope of analogous prior art: (1)
whether the art is from the same field of endeavor, regardless of
the problem addressed and, (2) if the reference is not within the
field of the inventor’s endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the
inventor is involved.

In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).
ANALYSIS
Appellant’s arguments do not persuade us that the Examiner erred in
concluding that the claimed methods would have been obvious to an
ordinary artisan.
Claim 1 recites a method for making an orthodontic band. The
method has two steps. In the first step a metal blank is die-pressed into an
orthodontic crown having a cylindrical sidewall, an open bottom and a round
top wall. Thus, the die press forms the metal blank into an orthodontic
crown having the shape of an inverted cup.
In the second step the top wall of the inverted cup-shaped crown is
die-punched with a die that has a diameter less than that of the cylindrical
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sidewall. The die punch removes a round central portion of the top wall to
form an inwardly directed annular flange which can be press-fit into
conformity with a tooth surface when the band is mounted on the tooth.
As Appellant admits, “[o]rthodontic labs have custom-made crowns
into bands with an occlusal rollover by taking a can-shaped crown closed at
one end and drilling out the center using a Dremel tool or a laser. The flange
is then pressed-fit into conformity with the top of the molar at the time of
installation” (FF 1). Thus, claim 1 differs from known prior art methods
only in that the desired portion of the flat piece of the cup is removed by
die-punching, rather than drilling.
As the Examiner points out, Dillberg discloses that orthodontic bands
can be formed by drawing a metal blank disc into a cup shape, after which,
“[t]his cup is trimmed, and a portion of the bottom wall is stamped out and
removed” (FF 3 (emphasis added)). Thus, Dillberg discloses that when
making orthodontic bands, a portion of the flat part of a cup-shaped blank
can be removed by die-punching, as recited in claim 1.
Given these disclosures, that a portion of essentially the same flat
section of a cup-shaped blank can be removed by either drilling or
die-punching, an ordinary artisan would have reasoned that these methods
were equivalent in the art of making orthodontic bands. We therefore agree
with the Examiner that a person of ordinary skill in the art, aware of the
prior art methods of drilling, and Dillberg’s method of removing material by
die-punching, would have considered it obvious to substitute Dillberg’s
technique for the prior art drilling method when making orthodontic bands
having an inwardly directed annular flange.
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Moreover, because Dillberg explicitly states that only a portion of the
flat part of the cup is removed (see FF 3), which would necessarily leave a
portion of the flat part of the cup attached to the cylinder, we are not
persuaded that Dillberg’s method fails to create, or is incapable of creating,
an inwardly directed annular flange. Also, while we acknowledge Dillberg’s
disclosure of the orange peel problem inherent in metallurgy (see FF 4),
given Dillberg’s disclosure that the same section of a cup-shaped blank
known to be removed drilling can also be removed by die-punching, we are
not persuaded that an ordinary artisan would have failed to reason that these
methods were in fact equivalent.
We acknowledge that Butler is directed to making auto exhausts
rather than orthodontic bands (FF 5-7). However, both Butler and the
claimed process are concerned with techniques of removing excess material
when fabricating objects from sheet metal. Thus, we agree with the
Examiner that an ordinary artisan would have recognized that the concern
with fabricating costs described in Butler would be reasonably pertinent to
the claimed process.
Moreover, even assuming for argument’s sake that an ordinary artisan
would not have looked to Butler when considering the costs of drilling
versus die-punching when making orthodontic bands, as discussed above,
the artisan would have considered those methods equivalent. We therefore
agree with the Examiner that an ordinary artisan would have found it
obvious to use a die punch to remove a portion of the top wall of a
cylindrical metal blank to be used as an orthodontic band, when the prior art
discloses that the same portion of the cylindrical metal blank has been
previously removed by drilling, and when the prior art also discloses that it
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was suitable to use a die punch to remove a portion of the bottom wall of a
cylinder blank.
Accordingly, we affirm the Examiner’s rejection of claim 1 as being
obvious. Because they were not argued separately, claims 2, 3, and 5-10 fall
with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).
Claim 4 stands rejected under 35 U.S.C. § 103(a) as being obvious in
view of admitted prior art, Dillberg, Butler, and Tuneberg (Ans. 5-6). Claim
4 recites “[t]he method of claim 1, further comprising die forming the metal
blank to a circular shape from a metal ribbon.”
The Examiner concedes that Appellant’s admitted prior art, Dillberg,
and Butler do not meet that limitation, and cites Tuneberg for that premise
(Ans. 5-6). Based on the references’ disclosures, the Examiner concludes
that an ordinary artisan would have considered it obvious “to include a sheet
as shown by Tuneberg in order to best provide stock material. To call this a
ribbon is merely terminology” (id. at 6).
Appellant does not contest the Examiner’s rationale for combining
Tuneberg with the other prior art. Rather, Appellant states only that claim 4
“is a dependent claim and thus the arguments set forth above for claim 1 are
applicable” (App. Br. 6).
For the reasons discussed above, we are not persuaded by this
argument. Thus, because we detect no deficiency in the Examiner’s prima
facie case with respect to claim 4, we affirm the Examiner’s obviousness
rejection of that claim.

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SUMMARY
We affirm the Examiner’s rejection of claims 1-3 and 5-10 under 35
U.S.C. § 103(a) as being obvious in view of admitted prior art, Dillberg, and
Butler.
We also affirm the Examiner’ rejection of claim 4 under 35 U.S.C. §
103(a) as being obvious in view of admitted prior art, Dillberg, Butler, and
Tuneberg.

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

AFFIRMED

cdc

PHILIP G. MEYERS
PHILIP G. MEYERS LAW OFFICE
SUITE 300
1009 LONG PRAIRIE ROAD
FLOWER MOUND TX 75022

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