Ex Parte Jana et al

Patent Trial and Appeal Board

May 25, 2016

13128280 (P.T.A.B. May. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/128,280 08/01/2011
32692 7590 05/27/2016
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
FIRST NAMED INVENTOR
Carsten Jana
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
64837US005 8983
EXAMINER
KEMMERLE III, RUSSELL J
ART UNIT PAPER NUMBER
1741
NOTIFICATION DATE DELIVERY MODE
05/27/2016 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CARSTEN JANA, HOLGER HAUPTMANN, and
BERND K. BURGER1
Appeal2014-008575
Application 13/128,280
Technology Center 1700
Before TERRY J. OWENS, WESLEY B. DERRICK, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
decision rejecting claims 1-8 in the above-identified application. We have
jurisdiction pursuant to 35 U.S.C. § 6(b ).
We REVERSE.
1 According to Appellants, the real parties in interest are 3M Company and
3M Innovative Properties Company. Appeal Br. 2.
Appeal2014-008575
Application 13/128,280
BACKGROUND
Appellants' invention relates to "dental restorations comprising a
metallic frame and a facing." Spec. 1:10-12. Independent claim 1, the sole
independent claim, is representative:
1. A method of producing a dental restoration, the
method comprising the steps of
• providing a metallic frame having an inner and an
outer surface,
• applying one or more opaque layer(s) on the outer
surface of the metallic frame,
• providing a facing precursor having a volume A, the
facing precursor having a 3-dimensional shape, an
inner and an outer surface, the inner surface
corresponding to a proportionally dimensioned
counter-surface of the outer surface of the metallic
frame,
• mating the facing precursor on the outer surface of the
metallic frame applied with the opaque layer using a
mating composition to obtain a dental restoration
intermediate, the mating composition comprising a
glass or glass ceramic material and a liquid,
• firing the dental restoration intermediate to a
temperature where the facing precursor sinters to
obtain a sintered facing having a volume R, and
wherein volume A of the facing precursor is larger than
volume B of the sintered facing.
Appeal Br. 6 (emphasis added).
The Examiner maintains the following ground of rejection: claims 1-
8 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Int'l Pub.
2
Appeal2014-008575
Application 13/128,280
No. WO 2008/009495 Al [hereinafter Dierkes2] (published Mar. 6, 2008) in
view of U.S. Patent No. 4,461,618 (issued July 24, 1984). Final Action 2-3;
Answer 2.
DISCUSSION
Claim 1 is directed to a method of producing a dental restoration,
involving a "facing precursor" that is mated to a metallic frame and then
fired in order to sinter the facing, so that there is a volume reduction in the
sintered facing. See Appeal Br. 6.
The Examiner finds that Dierkes teaches making a dental restoration
that is "hot pressed." Final Action 2. According to the Examiner, "[w]hile
Dierkes does not specifically disclose the currently claimed change in
volume of the veneer material, one skilled in the art would understand that
such a reduction of volume would occur as a result of the disclosed hot
pressing step." Id. As evidence that a "hot pressing step" would have been
understood to result in a reduction in volume, the Examiner cites U.S. Patent
Nos. 8,568,649 Bl [hereinafter Balistreri] (issued Oct. 29, 2013), 8,409,491
Bl [hereinafter Stackpoole] (issued Apr. 2, 2013), and 8,211,356 Bl
[hereinafter Hartnett] (issued July 3, 2012). Answer 2 (citing Balistreri
1: 12-17; Stackpoole 4:54---67; Hartnett 6:61-7: 12).
Appellants argue that the "hot pressing" method disclosed in Dierkes
refers to a casting process that uses a liquid ceramic material. Appeal Br. 4
(citing Dierkes i-fi-f 11, 33, 43--44, 116-17). According to Appellants, a
2 The Examiner's citations to Dierkes are to the corresponding U.S. national
stage entry Pub. No. US 2010/0015572 Al (published Jan. 21, 2010). Final
Action 2. Appellants do not object to this use of the U.S. document, and we
also rely upon and cite to the U.S. document.
3
Appeal2014-008575
Application 13/128,280
change in volume during a hot pressing step may occur if the ceramic
material is porous, such that the pores disappear during the sintering step,
thus reducing the volume of the material. See id. However, if the material is
not porous, "one ordinarily skilled in the art would understand-in exact
opposite of the Examiner's assumption-that the volume of the veneering
material would not change." Id. In response to the Examiner's citation to
Balistreri, Stackpoole, and Hartnett, Appellants argue that all of these
references relate to hot pressing of a porous material, and none of them
relate to pressing ceramics in a "plastic state" into a mold, as disclosed by
Dierkes. See Reply Br. 2 (citing Dierkes i-f 50).
We agree with Appellants that one of ordinary skill in the art would
not have understood Dierkes to teach the pressing of a material that, upon
sintering, would result in a volume reduction. Therefore, the Examiner has
not established a prima facie case of obviousness with respect to claim 1.
Because the Examiner's additional findings regarding dependent claims 2-8
do not address the deficiencies addressed above, we determine that the
Examiner reversibly erred in rejecting claims 1-8.
DECISION
The Examiner's decision is reversed.
REVERSED
4