Ex parte Jorgenson

Board of Patent Appeals and Interferences

Sep 3, 1999

08239700 (B.P.A.I. Sep. 3, 1999)

Application for patent filed May 9, 1994. According to appellant, this application is a1
continuation-in-part of Application 07/983,693, filed December 1, 1992, now U.S. Patent No.
5,326,262, granted July 5, 1994.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte H. GRANT JORGENSON
_____________
Appeal No. 1999-0090
Application 08/239,7001
______________
ON BRIEF
_______________
Before CALVERT, COHEN and GONZALES, Administrative Patent Judges.
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1 to 6, all the claims in the application.
The appealed claims are drawn to artificial cuspless posterior upper and lower teeth, and are
Appeal No. 1999-0090
Application 08/239,700
A translation of this reference is attached to the examiner's answer. All references herein to2
pages and lines of Heckhausen are to pages and lines of the translation.
2
reproduced in the appendix of appellant's brief.
The references applied in the final rejection are:
Dickson 2,416,983 Mar. 4, 1947
Heckhausen 1,230,521 Dec. 15, 19632
(German Patent)
Claims 1 to 6 stand finally rejected under 35 U.S.C. § 103 as unpatentable over Heckhausen in
view of Dickson.
The basis of the rejection, as set forth on page 3 of the examiner's answer, is:
Heckhausen shows upper and lower teeth configured to the average value of a
compensating curve (articulation curve, see page 2 of the translation). While
Heckhausen does not specifically state that the compensation curve is the curve of
Spee, it would have been obvious to one of ordinary skill in the art to modify
Heckhausen to include shaping the teeth with respect to the curves of Spee or medium
incline z-z as taught by Dickson in Fig. 2 and at col. 4 line 43 to col. 5 line 43 in order
to obtain a more effective bite. Since the curves referred to in the claims depend on the
individual, the possible resulting structure of the occlusal surface of the teeth as claimed
is a broad range depending on the range of shapes of different individuals. In view of
this, the specific shapes of the tooth as related to the existing curves of Spee and
Wilson are obvious in view of the teaching of Heckhausen and Dickson.
After fully considering the record in light of the arguments presented in appellant's brief and
reply brief, and in the examiner's answer and supplemental answer, we conclude that the rejection of
claims 1 to 6 should not be sustained, and that claims 4 to 6 should be rejected pursuant to 37 C.F.R. §
Appeal No. 1999-0090
Application 08/239,700
3
1.196(b).
Claims 1 to 3
Each of these claims recites that the functional occlusal surfaces of the artificial teeth are
configured to conform to certain curves. For example, claim 1 reads:
1. Artificial cuspless posterior upper and lower teeth comprising functional occlusal
surfaces configured to conform to the restored curves of Spee in an anterior posterior
direction.

Appellant and the examiner seem to be in agreement that these claims require that the functional
occlusal surfaces of the teeth form segments of the curve(s) in question; for example, as to claim 1, that
the functional occlusal surfaces are segments of a curve whose center of curvature is coincident with the
center of curvature of the restored curve of Spee. The examiner takes the position that since Dickson
discloses arranging the teeth along the curve of Spee, it would have been obvious "to modify
Heckhausen to include shaping the teeth with respect to the curves of Spee or medium incline z-z as
taught by Dickson" (answer, page 3). However, we do not agree, because it appears that Dickson's
teaching that his (cusped) artificial teeth should be set with their crowns 33 on the curve of Spee is in
essence a disclosure that they be set to replicate natural teeth (as shown in appellant's Fig. 1). In our
view, if this teaching of Dickson were applied to the teeth of Heckhausen by one of ordinary skill, the
Heckhausen teeth would, at most, be set so that the tips of their chewing surfaces ("crowns") followed
or were tangent to the curve of Spee, rather than rounding their chewing surfaces so that they would all
Appeal No. 1999-0090
Application 08/239,700
4
lie along the curve of Spee as segments thereof (similar to appellant's Fig. 2). We do not consider that
one of ordinary skill would regard Heckhausen's disclosure that the last few teeth be "set up
individually, although in one piece, in accordance with the average value of the compensating curve
(articulation curve)" (page 2, line 12 to 14) as suggesting that the chewing surfaces of the teeth, taken
together, form a continuous curve (as shown in appellant's Fig. 2). This is particularly the case since
Heckhausen shows in Fig. 2 two adjoining upper teeth 11, 12, each having at its lower end a radius
which is apparently about a center located on the centerline of the individual tooth, rather than the lower
ends both having a radius emanating from a common center of curvature.
Claims 4 to 6
These claims each recite that the teeth are "designed to function along" certain curves. For
example, claim 4 recites:
4. Artificial cuspless posterior upper and lower teeth designed to function along the
restored curves of Spee in an anterior posterior direction.
Unlike the expression "configured to conform to" in claims 1 to 3, we do not find any antecedent basis
in appellant's specification for the expression "designed to function along". See 37 C.F.R. § 1.75(d)(1).
In order to comply with the second paragraph of 35 U.S.C. § 112, the claim language, when
read by a person of ordinary skill in light of the specification, must describe the subject matter with
sufficient precision that the bounds of the claimed subject matter are distinct,
In re Merat, 519 F.2d 1390, 1396, 186 USPQ 471, 476 (CCPA 1975), i.e., a claim must reasonably
Appeal No. 1999-0090
Application 08/239,700
5
apprise those of skill in the art of its scope. In re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d
1754, 1759 (Fed. Cir. 1994). In the present case, the appellant and the examiner seem to have treated
claims 4 to 6 as being of the same scope as claims 1 to 3, respectively, but since the language of claims
4 to 6 is different from that of claims 1 to 3, respectively, the two sets of claims are presumably
intended to be of different scope. However, particularly in light of the lack of antecedent basis in the
specification, as noted supra, we do not consider that one of ordinary skill would reasonably be able to
determine what the scope of claims 4 to 6 is intended to be. In particular, it is not clear whether claims
4 to 6 are intended to be of such scope that claim 4, for example, is intended to cover artificial cuspless
posterior teeth other than those in which the occlusal surfaces of the teeth form segments of the restored
curve of Spee (as shown in Fig. 2), and if so, what other structure is intended to be covered thereby.
Accordingly, in view of the indistinctness of the scope of claims 4 to 6, they are rejected
pursuant to 37 C.F.R. § 1.196(b) for failure to comply with the second paragraph of 35 U.S.C.
§ 112.
When the language of a claim is such that in order to reject the claim under 35 U.S.C.
§ 103 it would require considerable speculation as to the meaning of terms therein and assumptions as
to its scope, the claim should be rejected under § 112, second paragraph, not
§ 103. In re Steele, 305 F.2d 859, 862, 134 USPQ 292, 295 (CCPA 1962). Therefore, since such
speculation and assumptions as to claims 4 to 6 would be required for the reasons discussed above, the
Appeal No. 1999-0090
Application 08/239,700
6
rejection of claims 4 to 6 under § 103 will not be sustained. This action is procedural in nature and
should not be taken as an indication that, if the § 112 rejection is overcome, claims 4 to 6 would
necessarily be patentable over the applied and/or other prior art.
Conclusion
The examiner's decision to reject claims 1 to 6 is reversed. Claims 4 to 6 are rejected pursuant
to 37 C.F.R. § 1.196(b).
This decision contains a new ground of rejection pursuant to 37 C.F.R.
§ 1.196(b)(amended effective Dec. 1, 1997, by final rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct.
10, 1997), 1203 Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)). 37 C.F.R.
§ 1.196(b) provides that, “A new ground of rejection shall not be considered final for purposes of
judicial review.”
37 C.F.R. § 1.196(b) also provides that the appellant, WITHIN TWO MONTHS FROM
THE DATE OF THE DECISION, must exercise one of the following two options with respect to the
new ground of rejection to avoid termination of proceedings (§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the claims so rejected or a showing of
facts relating to the claims so rejected, or both, and have the matter reconsidered by the
examiner, in which event the application will be remanded to the examiner. . . .
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Application 08/239,700
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(2) Request that the application be reheard under § 1.197(b) by the Board of
Patent Appeals and Interferences upon the same record. . . .
No time period for taking any subsequent action in connection with this appeal may be
extended under 37 C.F.R. § 1.136(a).
REVERSED
37 C.F.R. § 1.196(b)
IAN A. CALVERT )
Administrative Patent Judge )
)
) BOARD OF PATENT
) APPEALS AND
IRWIN CHARLES COHEN ) INTERFERENCES
Administrative Patent Judge )
)
)
)
JOHN F. GONZALES )
Administrative Patent Judge )
Appeal No. 1999-0090
Application 08/239,700
8
IAC/dal
JERRY KEARNS
P.O. BOX 4596
ENGLEWOOD, CO 80155-4596