10574313 (B.P.A.I. Jan. 24, 2012)

Ex Parte Jorneus et al

Board of Patent Appeals and InterferencesJan 24, 2012

10574313 (B.P.A.I. Jan. 24, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte LARS JORNEUS and SANEL DURIC ____________________ Appeal 2010-000679 Application 10/574,313 Technology Center 3700 ____________________ Before KEN B. BARRETT, PHILLIP J. KAUFFMAN, and WILLIAM V. SAINDON, Administrative Patent Judges. BARRETT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Lars Jorneus and Sanel Duric (Appellants) seek our review under 35 U.S.C. § 134 of the final rejection of claims 1, 3-7, 10, and 12-20. Claims 2, 8, 9, and 11 have been canceled. An oral hearing was held on January 5, 2012. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2010-000679 Application 10/574,313 2 THE INVENTION Appellants’ invention pertains to a dental implant having an internal socket and a corresponding turning instrument for tightening the implant. Spec. 1:4-11. Claim 1, reproduced below with emphasis added, is representative of the subject matter on appeal. 1. A dental implant assembly for counteracting stress in a portion of the dental implant assembly, the assembly comprising: a dental implant comprising an upper portion with an internal socket formed on a top surface of the upper portion, the internal socket comprising a first portion and a second portion spaced along a longitudinal axis of the dental implant, the first portion disposed adjacent the top surface of the dental implant and defining first lateral surfaces, the second portion spaced further from the top surface and defining a lateral guide surface; and a turning instrument configured to engage the internal socket and to turn the dental implant, the turning instrument comprising a drive part and a guide pin part, the drive part comprising second lateral surfaces that cooperate with the first lateral surfaces in the internal socket, the guide pin part extending longitudinally beyond the drive part of the turning instrument such that the guide pin part is configured to be received within the second portion of the socket of the dental implant with the guide pin part corresponding to the lateral guide surface of the socket; wherein at least one of the first and second lateral surfaces comprises a friction-enhancing coating comprising at least one of titanium nitride and chromium carbide for enhancing friction between the turning instrument and the internal socket. Appeal 2010-000679 Application 10/574,313 3 THE REJECTIONS The following rejections are before us for review: 1. Claims 1, 3-7, 10, and 12-16 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which Appellants regard as the invention. 2. Claims 1, 3-7, 10, and 12-20 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Engman (US 2002/0177105 A1, pub. Nov. 28, 2002) and Snaper (US 4,681,541, iss. July 21, 1987). OPINION The Indefiniteness Rejection Independent claim 1 recites a dental implant having an internal socket and a turning instrument configured to engage the internal socket. The drive part of the turning instrument comprises “second lateral surfaces that cooperate with the first lateral surfaces in the internal socket.” The Examiner’s indefiniteness rejection is based on a perceived ambiguity in the recited “second lateral surfaces.” See Ans. 3 (“In claim 1, it is not clear what applicant intends to say by ‘the drive part comprising second lateral surfaces.’ How many lateral surfaces are being discussed?”); id. at 5 (“It appears that the Applicant is missing the first lateral surfaces of the drive tool.”). Appellants argue, and we agree, that the meaning of the claim language is clear enough. See App. Br. 8; Reply Br. 4. One of ordinary skill in the art reading the claim in light of the Specification would understand, as Appellants assert, that “the implant and the [d]rive tool each have lateral surfaces that interact with each other.” Reply Br. 4. We do not sustain the rejection of claims 1, 3-7, 10, and 12-16 as being indefinite. Appeal 2010-000679 Application 10/574,313 4 The Obviousness Rejection Appellants argue the rejected claims as a group. App. Br. 8-10. We select claim 1 as representative, and claims 3-7, 10, and 12-20 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii). As discussed above, claim 1 calls for a turning instrument having second lateral surfaces on the drive part that cooperate with the first lateral surfaces in the internal socket of the dental implant. Claim 1 recites, in pertinent part, “at least one of the first and second lateral surfaces comprises a friction-enhancing coating comprising at least one of titanium nitride and chromium carbide for enhancing friction between the turning instrument and the internal socket.” The Examiner found that Engman discloses the dental implant and insertion tool, but does not disclose the coating. Ans. 3-4. The Examiner further found that Snaper teaches a dental bur having the claimed titanium nitride coating. Id. at 4. The Examiner also made the uncontested finding that “usage of titanium nitride for its hardness, corrosion-resistant and biocompatibility and improving surface properties is well-known in the art.” Id. at 5; see also id. at 4 (“titanium nitride is well-known for its hardness, corrosion- resistant and biocompatible coating”); App. Br. 9 (Appellants acknowledging that Snaper discloses that nitrides are harder and more wear- resistant than carbides.) The Examiner concluded that it would have been obvious to utilize a titanium nitride coating on Engman’s turning tool so as to have these well-known properties and to allow the turning tool to tolerate more torque when turning the implant. Ans. 4. Appellants argue that the Examiner failed to present a sufficient reason to combine the “elements” of the references. App. Br. 9. We Appeal 2010-000679 Application 10/574,313 5 disagree. The Examiner adequately supported the conclusion of obvious with the logical reasoning that it would have been obvious to enhance a turning tool’s hardness (and to provide other known desirable properties) via the use of a known titanium nitride coating so that the tool could tolerate more torque. Contrary to Appellants’ apparent position (App. Br. 9-10; Reply Br. 4), the Examiner’s proffered reason to combine the references’ teachings need not be the same as Appellants’, i.e., to enhance friction. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007) (“In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls.”) We sustain the Examiner’s rejection of claims 1, 3-7, 10, and 12-20 as being obvious. DECISION The rejection of claims 1, 3-7, 10, and 10-20 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED nlk