Ex Parte Johnson et al

Patent Trial and Appeal Board

Nov 30, 2017

13394844 (P.T.A.B. Nov. 30, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/394,844 03/08/2012 Ryan E. Johnson 66811US004 7123
32692 7590 12/04/2017
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
MAI, HAO D
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
12/04/2017 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 RYAN E. JOHNSON, NAIMUL KARIM, and
ROGER K. DAWSON
Appeal 2017-000843
Application 13/3 94,8441
Technology Center 3700
Before TAWEN CHANG, JOHN E. SCHNEIDER and DAVID COTTA,
Administrative Patent Judges.
COTTA, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
preassembled dental implant. The Examiner rejected the claims on appeal
obvious under 35 U.S.C. § 103(a).
We affirm-in-part.
1 According to Appellants, the real party in interest is 3M Company and its
affiliate 3M Innovative Properties Company. App. Br. 2.
Appeal 2017-000843
Application 13/394,844
STATEMENT OF THE CASE
Claims 1—17, 19, 20, and 32—36 are on appeal. Claim 1 is illustrative
and reads as follows (with emphasis added to highlight disputed limitation):
1. A preassembled dental implant article comprising a
preformed dental implant abutment comprising a subgingival
implant anchor-receiving end and an opposing end wherein the
opposing end is permanently bonded to a healing cap, the
healing cap optionally further comprising tooth-shaped
supragingival exterior surfaces, wherein the healing cap
consists of a hardenable sufficiently malleable dental material
comprising one or more monomers, oligomers, and/or
polymerizable polymers and the dental abutment is a different
material than the hardenable sufficiently malleable material.
App. Br. 10.
The claims stand rejected as follows:
Claims 1—8, 12, 16, 17, 19, 20, 32, 35, and 36 were rejected
under 35 U.S.C. § 103(a) as obvious over the combination of Hinds2
and Freilich.3
Claims 9—11 were rejected under 35 U.S.C. § 103(a) as obvious
over the combination of Hinds, Freilich, and Karim ’018.4
Claims 13—15, 21, and 34 were rejected under 35 U.S.C.
§ 103(a) as obvious over the combination of Hinds, Freilich, and
Karim ’868.5
2 Hinds, US Patent No. 5,759,036, issued June 2, 1998 (“Hinds”).
3 Freilich, US Patent No. 6,599,125 Bl, issued July 29, 2003 (“Freilich”).
4 Karim, US Patent Publication No. 2008/0293018 Al, published Nov. 27,
2008 (“Karim ’018”).
5 Karim, US Patent Publication No. 2005/0100868 Al, published May 12,
2005 (“Karim ’868”).
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Application 13/394,844
OBVIOUSNESS OVER HINDS AND FREILICH
Claims 1—8, 12, 16, 17, 19, 20, and 35
In rejecting claims 1—8, 12, 16, 17, 19, 20, and 35 as obvious, the
Examiner found that Hinds disclosed a preassembled dental implant. Final
Act. 2.6 With reference to Figures 13—15 (reproduced below), the Examiner
found that Hinds disclosed a dental implant article (101) comprising an
“abutment 105/107” with an “anchor-receiving end 105 and an opposing end
107” and a “healing cap 103.” Id.
Figures 13—15 provide an exploded view (Figure 13), a sectional view
(Figure 14), and a bottom view (Figure 15) of Hinds’ healing abutment.
Hinds, col. 5,11. 5—15. The Examiner found that the healing cap was made
of “a hardenable sufficiently malleable dental material 103 that is either light
or chemical cured,” and that the “dental abutment 105 is disclosed to be
metal, i.e. titanium, and therefore is a different material than the sufficiently
malleable composite material 103.” Final Act. 2.
The Examiner acknowledged that Hinds does not explicitly state that
“the dental material 103 is hardenable and sufficiently malleable as a
6 Office Action mailed August 7, 2015 (“Final Act.”).
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Application 13/394,844
preassembled dental implant.” Id. at 3. The Examiner found, however, that
Freilich disclosed “a prefabricated dental material that is partially cured and
therefore is hardenable and sufficiently malleable in order to optimize
bonding to the dental restoration.” Id. Based on the combined teachings of
Hinds and Freilich, the Examiner concluded that the skilled artisan would
have found it obvious to “modify Hinds by substituting Hinds material 103
with the partially cured material of Freilich in order to optimize bonding to
the dental restoration as explicitly taught by Freilich.” Id.
We adopt the Examiner’s findings of fact and reasoning regarding the
scope and content of the prior art as applied to claims 1—8, 12, 16, 17, 19,
20, and 35 and agree that these claims are obvious over Hinds and Freilich.
We address Appellants’ arguments below.
Appellants argue that, at the time of implant, Hinds’ preassembled
dental implant is already cured and, since it is cured, it is no longer
hardenable as required by the claims. App. Br. 5. Appellants further argue
that since Hinds teaches a composite resin that is cured, there is “no
motivation to use a hardenable or in other words uncured dental material, as
presently claimed.” Id. at 6. We are not persuaded.
One cannot show nonobviousness by attacking references individually
when the rejection is based on a combination of references. In re Keller,
642 F.2d 413, 425 (CCPA 1981). Here, the Examiner relies upon the
combination of Hinds and Freilich as providing the motivation to use a
hardenable material. Hinds discloses that the healing cap can be “[a]ny
material which is easily adjustable, bondable to or capable of being added
to” and notes that “other composite-like resin materials, plastic materials,
acrylic materials, whether firm or hard are included.” Hinds, col. 10,11. 1—4.
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Application 13/394,844
Freilich discloses prefabricated hybrid components of dental appliances that
are “cured at the point of insertion in the patient’s mouth” and that
“provid[e] ease of application due to the flexibility and adaptability of the
uncured/slightly partially cured sections and optimum bonding of the
uncured/slightly partially cured component to the patient’s existing teeth
and/or other cured, partially cured or uncured components.” Freilich col. 2,
11. 38-44. Accordingly, we agree with the Examiner that it would have been
obvious to use Freilich’s hybrid components in Hinds’ dental implants in
order “provide ease of application” and “optimum bonding.” Ans. 8.
Appellants argue that the hybrid component of Freilich necessarily
includes a cured section and this is excluded be the claim requirement that
the healing cap “consists of a hardenable sufficiently malleable dental
material.” We are not persuaded.
Freilich’s hybrid material consists of a “combination of a cured or
partially cured section or sections with an uncured or slightly partially cured
section or sections.” Id. at col. 2,11. 34—36. The cured/partially cured
sections are “substantially hard” while the “uncured/slightly partially cured
sections of the hybrid components are very soft and flexible.” Id. at col. 2,
11. 44—51. While the use of the transitional term “consisting” in the pending
claims does preclude the presence of materials in the healing cap other than
the “hardenable sufficiently malleable dental material,” it does not require
that the claimed dental material have uniform malleability. Accordingly, the
claims do not exclude a material like that disclosed in Freilich, that has
portions that are “very soft and flexible” and portions that are “substantially
hard,” particularly where the overall material is designed to take advantage
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Application 13/394,844
of the malleable properties provided by the soft and flexible portions. See,
id. at col. 2,11. 36-44.
Moreover, the Specification defines the term “sufficient malleability”
to mean that “the material or self-supporting structure formed from the
material is capable of being custom shaped and fitted, for example, to a
patient’s mouth, under a moderate force (i.e., a force that ranges from light
finger pressure to that applied with manual operation of a small hand tool,
such as a dental composite instrument).” Spec. 14. Notwithstanding the
presence of portions of cured and partially cured material, Freilich’s hybrid
material meets this definition. See, Freilich, col. 2,11. 36-44; see also, id. at
col. 6,11. 50—53 (“In instances where the components comprise uncured or
partially cured sections, those sections may be modified by forming, shaping
and contouring by hand or by using hand instruments.”)
Claim 36
Claim 36 depends from claim 1 and further requires that “the
sufficiently malleable dental material of the healing cap is uncured.”
Appellants argue that “[t]his claim language precludes the inclusion of a
cured section and thus is clearly distinguished from the hybrid component of
Freilich.” App. Br. 7. We agree. Because Freilich’s hybrid material
includes cured or partially cured portions, we reverse the Examiner’s
rejection of claim 36.
OBVIOUSNESS OVER HINDS, FREILICH, AND KARIM ’018
In addition to the arguments Appellants offered with respect to the
rejection over the combination of Hinds and Freilich, which we find
unpersuasive for the reasons discussed above, Appellants argue that Karim
’018 “concerns preformed dental crowns” and “does not teach implant
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Application 13/394,844
articles, preassembled dental implant article comprising a subgingival
implant anchor-receiving end, or healing caps.” App. Br. 8. Appellants thus
argue that “utilizing the sufficiently malleable dental material for implant
articles, preassembled dental implant articles, and healing caps is also not
contemplated by [] Karim.” App. Br. 8. We are not persuaded.
As discussed above, one cannot show nonobviousness by attacking
references individually when the rejection is based on a combination of
references. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Here, the
Examiner relied upon Hinds as disclosing implant articles and healing caps
and upon Karim ’018 as disclosing limitations relating to “the range of
temperature when the sufficiently malleable dental material has sufficient
malleability, the percentage of filler, and the flexural strength.” Final Act.7
4—5. That Karim ’018 may not disclose elements disclosed by Hinds thus
does show the claimed implant article to be nonobvious.
Claim 9
Claim 9 depends from claim 1 and further requires that “the
hardenable sufficiently malleable dental material has sufficient malleability
to be formed in shape at a temperature of about 15°C to 38°C with a force
applied with a manual operation small hand tool.” Appellants argue that
claim 9 is independently patentable because Freilich discloses an
embodiment in which “the composite material in middle section 161 is cured
or partially cured to sufficient hardness to withstand cutting, carving,
grinding or machining.” App. Br. 7. We are not persuaded because this
disclosure is consistent with Freilich’s teaching of a material that is
composed of cured and uncured portions. Moreover, Freilich expressly
7 Office Action mailed August 7, 2015 (“Final Act.”).
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Application 13/394,844
teaches that uncured or partially cured sections can be modified by hand.
Freilich, col. 6,11. 50—53 (“In instances where the components comprise
uncured or partially cured sections, those sections may be modified by
forming, shaping and contouring by hand or by using hand instruments.”)
OBVIOUSNESS OVER HINDS, FREILICH, AND KARIM ’868
In addition to the arguments Appellants offered with respect to the
rejection over the combination of Hinds and Freilich, which we find
unpersuasive for the reasons discussed above, Appellants argue that Karim
’868 “concerns packaged hardeneable dental articles” and “does not teach
impant articles, preassembled dental implant article comprising a
subgingival implant anchor-receiving end, or healing caps.” Appellants thus
argue that “utilizing the sufficiently malleable dental material for implant
articles, preassembled dental implant articles, and healing caps is also not
contemplated by of Karim.” App. Br. 8. We are not persuaded.
As discussed above, one cannot show nonobviousness by attacking
references individually when the rejection is based on a combination of
references. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Here, the
Examiner relied upon Hinds as disclosing implant articles and healing caps
and upon Karim ’868 as disclosing limitations relating to “the dental
material lacking a self-supporting shape.” Final Act. 5. That Karim ’868
may not disclose elements disclosed by Hinds thus does show the claimed
implant article to be nonobvious.
SUMMARY
For the reasons set forth herein, and those set forth in the Examiner’s
Answer and Final Office Action, we affirm the Examiner’s rejection of
claims 1—8, 12, 16, 17, 19, 20, 32, and 35 as obvious over the combination
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Application 13/394,844
of Hinds and Freilich, claims 9—11 as obvious over the combination of
Hinds, Freilich, and Karim ’018, and claims 13—15, 21, and 34 as obvious
over the combination of Hinds, Freilich, and Karim ’868.
For the reasons set forth herein, we reverse the Examiner’s rejection
of claim 36 as obvious over the combination of Hinds and Freilich.
TIME PERIOD FOR RESPONSE
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-IN-PART
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