Ex Parte Karlsson et al

Patent Trial and Appeal Board

Nov 20, 2013

11576451 (P.T.A.B. Nov. 20, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte PER-OLOF KARLSSON and URBAN NILSSON
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Appeal 2011-011567
Application 11/576,451
Technology Center 3700
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Before: JOHN C. KERINS, NEIL T. POWELL, and
JEREMY M. PLENZLER, Administrative Patent Judges.

PLENZLER, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
decision rejecting claims 15-28 and 36-42. Claims 1-14 are cancelled and
claims 29-35 are withdrawn. Appellants presented oral argument at a
Hearing held on November 5, 2013. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
Claims 15 and 36 are independent. Claim 15, reproduced below, is
illustrative of the claimed subject matter:
15. A method for producing a porcelain coated dental
prosthesis, the method comprising:
displaying a CAD model of the dental prosthesis on a
computer screen in a CAD environment;
simulating the application of at least one of a coloring
and a tint to the CAD model of the dental prosthesis in the CAD
environment;
selecting and specifying at least one of a coloring and a
tint in the CAD environment to determine at least one selected
coloring and tint for application to the prosthesis;
providing data to a printer that is representative of the at
least one selected coloring and tint;
providing a component, exposing a surface on the
component;
applying a powder to the exposed surface of the
component using the printer in order to provide an aesthetic
coating comprising at least one of a coloring and a tint that is
visible from outside the dental prosthesis;
drying the powder of the aesthetic coating; and
applying porcelain material to the surface of the
component.

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REJECTIONS
1. Claims 15-28 and 36-42 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
2. Claims 15-17, 19-24, 28, and 36-41 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Schomann (US 2004/0067465 A1; pub.
Apr. 8, 2004);
3. Claim 18 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Schomann and Brodkin (US 2004/0232576 A1; pub. Nov. 25, 2004);
and
4. Claims 25-27 and 42 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Schomann and Emmons (US 5,308,243; iss. May 3,
1994).

OPINION
Written Description – Claims 15-28 and 36-42
The Examiner asserts that the language “simulating the application of
at least one of a coloring and a tint to the CAD model of the dental
prosthesis in the CAD environment” of claims 15 and 36 is not supported by
the Specification as originally filed. Ans. 7. Appellants contend that
paragraph [0037] of the originally-filed Specification supports the claim
language. Reply Br. 4. We agree. As noted by Appellants, paragraph
[0037] of the Specification states that “the dental technician/person placing
the order paints or colors the crown in a CAD environment.” Id. Appellants
explain that a person of skill in the art would understand that this painting or
coloring includes simulating the application of a coloring or a tint because a
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Application 11/576,451

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CAD environment is a virtual environment where objects and steps are
simulated. Id.
We do not sustain the rejection of claims 15-28 and 36-42 as failing to
comply with the written description requirement.

Anticipation – Claims 15-17, 19-24, 28, and 36-41 – Schomann
Appellants contend that Schomann does not disclose the claimed
displaying, simulating, and selecting and specifying recited in claims 15 and
36 because the claims require these steps to be performed “in a CAD
environment.” App. Br. 11-12; Reply Br. 7-9. Appellants argue that a
“CAD environment” requires an environment in which a computer system
having a display screen and a product design program enables a user to
manipulate and modify a given product using the display. App. Br. 13;
Reply Br. 7.
Initially, we note that Appellants never define the acronym “CAD” or
the claimed “CAD environment” in the Specification. Instead, Appellants
explain that their proffered definition of “CAD environment” is consistent
with the Specification. App. Br. 14-15 (citing Spec. paras. [0014], [0029]-
[0030], [0035], [0037]). Even if Appellants’ proffered definition is
consistent with the Specification, it does not necessarily follow that the
proffered definition is the broadest reasonable interpretation of “CAD
environment.” We are not convinced that the broadest reasonable
interpretation of “CAD environment” requires anything more than some
form of computer-aided design, as explained by the Examiner, which is also
consistent with Appellants’ Specification. Ans. 8. As acknowledged by
Appellants, Schomann discloses a processor selecting digital image data for
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a tooth and generating a three-dimensional image of the tooth. App. Br. 13
(citing Schomann, para. [0012]). Thus, Schomann discloses an environment
including tooth design aided by a computer (i.e., computer-aided design).
To the extent that Appellants allege that the Specification provides
some special meaning for “CAD environment,” we note that the
Specification simply provides an exemplary process for coloring and tinting
a prosthesis and does not define a special meaning for “CAD environment.”
See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (an inventor must
define specific terms with “reasonable clarity, deliberateness, and precision”
in order to be his own lexicographer, as opposed to merely describing “in a
general fashion certain features”).
Appellants further argue that Schomann does not disclose the claimed
selecting and specifying coloring or tint for the prosthesis in a CAD
environment because the data regarding the digital image and coloration of
the restoration in Schomann is obtained by a scan and sent to a fabrication
station without any selection or specification in a CAD environment. App.
Br. 12-13. Appellants contend that rather than selecting and specifying as
claimed, Schomann simply discloses detecting and basing coloration based
on existing teeth and sending the data to a fabrication station. Reply Br. 5.
As explained by the Examiner, the claims do not specify who or what
performs the claimed selecting and specifying and do not preclude the
computer from doing the selecting and specifying. See Ans. 7. Further, the
claims do not require that the selecting and specifying occurs in any
particular order relative to the displaying and simulating (i.e., the selecting
and specifying could occur before the displaying and simulating).
Appellants have not persuasively explained why the computer in Schomann
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does not perform the claimed selecting by determining coloration based on
existing teeth or the claimed specifying by supplying the data to the
fabrication station.
Appellants additionally argue that Schomann does not disclose the
claimed simulating because the processor in Schomann selects digital image
data of the tooth and generates three dimensional image data of the tooth.
App. Br. 13. Appellants argue that the claimed simulating is described in
the Specification as virtually applying a coloring or tint to a computer
generated model and that interpreting the claimed simulating as including
the generation of a digital image, as in Schomann, would be inconsistent
with the Specification. Reply Br. 6. This argument is not persuasive, as
Appellants have failed to identify anything in the Specification that is
inconsistent with the interpretation of simulating applied by the Examiner.
For these reasons, we are not apprised of Examiner error and we
sustain the rejection of claims 15 and 36. Claims 16, 17, 19-24, 28, and 37-
41 depend from claim 15 or 36. Appellants do not provide separate
arguments for claims 16, 17, 19-24, 28, and 37-41 and, therefore, these
claims fall with claims 15 and 36.

Obviousness – Claim 18 – Schomann/Brodkin
Claim 18 depends from claim 15 and Appellants rely on the
unpersuasive arguments presented regarding claim 15 for the patentability of
claim 18. App. Br. 16; Reply Br. 10.

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Obviousness – Claims 25-27 and 42 – Schomann/Emmons
Claims 25-27 depend from claim 15 and claim 42 depends from claim
36. Appellants rely on the unpersuasive arguments presented regarding
claims 15 and 36 for the patentability of claims 25-27 and 42. App. Br. 16;
Reply Br. 10.

DECISION
We REVERSE the Examiner’s decision to reject claims 15-28 and 36-
42 under 35 U.S.C. § 112, first paragraph.
We AFFIRM the Examiner’s decision to reject claims 15-17, 19-24,
28, and 36-41 under 35 U.S.C. § 102(b).
We AFFIRM the Examiner’s decision to reject claims 18, 25-27, and
42 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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