Ex Parte Knopp et al

Patent Trial and Appeal Board

Dec 30, 2015

13019219 (P.T.A.B. Dec. 30, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/019,219 02/01/2011 Peter G. Knopp
107046 7590 01/04/2016
WSGR I Align Technology , Inc.
650 Page Mill Road
Palo Alto, CA 94304
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.
22773-752.302 1041
EXAMINER
SINGH, SUNIL K
ART UNIT PAPER NUMBER
3722
NOTIFICATION DATE DELIVERY MODE
01/04/2016 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):
patentdocket@wsgr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte PETERG. KNOPP, AARON J. MILLER, and
ROB VAN DEN BERG
Appeal2013-007500
Application 13/019 ,219
Technology Center 3700
Before ANNETTE R. REIMERS, GEORGE R. HOSKINS, and
BRANDON J. WARNER, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1'2
Peter G. Knopp et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the Examiner's decision to reject: (1) claims 2-25 on the ground of
1 The subject application is a continuation of Application No. 10/958,710
(filed Oct. 4, 2004), now Patent No. 7,901,207 B2, which is a continuation
of Application No. 10/126,105 (filed Apr. 18, 2002), now Patent No.
6,830,450 B2. See Spec. para. 1; see also Bib Data Sheet.
2 The Examiner indicates: (1) "[ c ]laims 13 and 25 would be allowable if
rewritten to overcome the Double Patenting rejection, set forth in this Office
action and to include all of the limitations of the base claim and any
intervening claims"; and (2) "[ c ]laim 34 is allowed." Final Act. 5 (mailed
Aug. 27, 2012). Claim 34 is not before us for review.
Appeal2013-007500
Application 13/019,219
nonstatutory obviousness-type double patenting as unpatentable over claims
23--43 of Knopp (US 6,830,450 B2, iss. Dec. 14, 2004); (2) claims 2, 3,
6-12, 14, 15, 18-24, and 35 under 35 U.S.C. § 102(b) as anticipated by
Chishti (US 6,183,248 Bl, iss. Feb. 6, 2001); and (3) claims 4, 5, 16, and 17
under 35 U.S.C. § 103(a) as unpatentable over Chishti. Claims 1 and 26-33
have been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
THE CLAIMED SUBJECT MATTER
The claimed subject matter relates to "improved systems ... for
removably attaching a dental positioning appliance to the dental features of a
patient during orthodontic treatment." Spec. para. 2; see Figs. 4A, 4B.
Claims 2, 14, and 35 are independent.
Claim 2 is illustrative of the claimed subject matter and recites:
2. A system for repositioning teeth, comprising:
a force-receiving component for bonding to at least one
of a patient's teeth; and
a polymeric shell repositioning appliance, having at least
one force-transmitting component, for placement over the
patient's teeth, the force-transmitting component structured so
that the force-transmitting component engages the force-
receiving component on the at least one tooth at a contact point
within a locus of engagement, wherein a position of the contact
point adjusts within the locus of engagement as the tooth is
repositioned so that the force transmitted to said tooth increases
if the tooth lags its intended position.
2
Appeal2013-007500
Application 13/019,219
ANALYSIS
Obviousness-Type Double Patenting
Claims 2-25
The Examiner rejects claims 2-25 of the subject application on the
ground of nonstatutory obviousness-type double patenting as unpatentable
over claims 23--43 of Knopp. In the Appeal Brief, Appellants state that they
"have previously agreed to provide a terminal disclaimer to overcome the
obviousness-type double patenting rejection based on claims 23-43 of
related U.S. Patent No. 6,830,450 in order to expedite prosecution." Appeal
Br. 6 (filed Feb. 15, 2013). Having made no arguments traversing the
Examiner's rejection, Appellants have waived any such arguments that may
have been made. 37 C.F.R. § 41.37(c)(l)(iv). The Examiner's double
patenting rejection of claims 2-25 is therefore sustained.
Anticipation by Chishti
Claims 2, 3, 6-12, 14, 15, 18-24, and 35
Independent claim 2 calls for a system for repositioning teeth
including a force-transmitting component and a force-receiving component,
the force-transmitting component engaging the force-receiving component
on at least one tooth at a contact point within a locus of engagement,
"wherein a position of the contact point adjusts within the locus of
engagement as the tooth is repositioned so that the force transmitted to said
tooth increases if the tooth lags its intended position." Appeal Br. 18,
Claims App. The Examiner finds that Chishti discloses the system of claim
2 substantially as claimed including a force-receiving component 128 and a
force-transmitting component (inner surface of appliance 102), the force-
3
Appeal2013-007500
Application 13/019,219
transmitting component engaging the force-receiving component on at least
one tooth at a contact point within a "locus of engagement" (Fig. 3a shows
the two components engaging), "wherein a position of the contact point is
capable of adjusting within the locus of engagement as the tooth is
repositioned so that the force transmitted to said tooth increases if tooth lags
its intended position." Final Act. 3--4; Ans. 6 (both citing Chishti, col. 3, 11.
11-35); see also Ans. 8.
The Examiner acknowledges that "Chishti's orthodontic device works
differently from the present invention." Ans. 8. However, the Examiner
takes the position:
[T]he claims, as written, does not distinguish the present
invention from the prior art. The claims are directed to an
apparatus claim so the intended function is not given full
patentable weight. As long as the prior art meets the limitation
and is capable of performing the function, then the prior art
meets the limitations as claimed. The [E]xaminer notes that
[Appellants] do[] not specify to when in the repositioning
process that the contact point adjusts. Therefore, it is the
Examiner's position that Chisti's device is capable of
performing the functional limitation. Chishti is capable of
performing the function during the placement process of
Chishti's device onto the user's mouth. Once an individual
(having tooth/teeth that is originally lagged from its intended
position) puts on Chishti's aligner, the force transmitting
component (102) will have an initial engagement with the force
receiving component (128) as soon as the two components
touch creating the "contact point." As the user continues to
slide the force transmitting component onto force-receiving
component (before locking the two components in place), the
position of the "contact point" is then being adjusted within a
"locus of engagement." As the force transmitting component is
being slid onto the force receiving component[] the force
transmitting component will apply an increasing force to the
4
Appeal2013-007500
Application 13/019,219
individual's teeth/tooth that 1s originally lagged from its
intended position.
Id. at 8-9 (italics added); see also Final Act. 5-6.
Appellants contend: "Chishti teaches a 'one-way' engagement that
'substantially locks' the polymeric shell appliance into a position. Chishti,
col. 7, lines 39-45. Moreover, the cited portions concern an anchor that
changes shape or material property in response to an environmental switch
or stimulus so as to facilitate removal of the appliance." Appeal Br. 8.
According to Appellants:
The teachings of Chishti do not necessarily provide "wherein a
position of the contact point adjusts within the locus of
engagement as the tooth is repositioned so that the force
transmitted to said tooth increases if the tooth lags its intended
position" as recited in claim 2. Chishti teaches one-way
engagement in which the shell is "locked in position" with the
anchor and has not been shown to teach placement of the shell
on the lagging tooth with the contact point that adjusts within
the locus of engagement as recited in claim 2, such that
inherency has not been established and Chishti does not
anticipate claim 2 even with the Examiner's improper
construction of claim 2.
Reply Br. 1 O; see also Appeal Br. 9-10. Appellants further contend:
The Board's prior decision 3 makes clear that Chishti does not
teach or suggest the ability of the locus of engagement to permit
relative motion between the shell appliance and the attachment,
and transmitting force from the appliance to the attachment and
tooth over a range of motion. Although the [Decision] is
directed to method claims, "the ability of the locus of
engagement to permit relative motion between the shell
appliance and the attachment and transmitting force from the
appliance to the attachment and tooth over a range of motion"
are structural limitations not found in Chishti, such that "the
3 Appeal No. 2009-011946 in Application No. 10/958,710, Decision on
Appeal dated Oct. 5, 2010 (hereafter "Decision").
5
Appeal2013-007500
Application 13/019,219
force-transmitting component structured so that the force-
transmitting component engages the force-receiving component
on the at least one tooth at a contact point within a locus of
engagement" and "wherein a position of the contact point
adjusts within the locus of engagement as the tooth is
repositioned so that the force transmitted to said tooth" are
clearly structural limitations not found in Chishti.
Reply Br. 11; see also Appeal Br. 10.
At the outset, claim 2 explicitly requires that "a position of the contact
point adjusts within the locus of engagement as the tooth is repositioned so
that the force transmitted to said tooth increases if the tooth lags its intended
position." Appeal Br. 18, Claims App. (emphasis added). This is a
functional claim limitation, not a statement of intended use.
The law governing functional limitations is well-settled:
[W]here the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty of the
claimed subject matter may, in fact, be an inherent
characteristic of the prior art, it possesses the authority to
require the applicant to prove that the subject matter shown to
be in the prior art does not possess the characteristic relied on.
In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). Nevertheless, before an
applicant can be put to this burdensome task, an examiner must provide
sufficient evidence or scientific reasoning to establish the reasonableness of
the examiner's belief that the functional limitation is an inherent
characteristic of the prior art. The fact that a certain result or characteristic
may occur or be present in the prior art is not sufficient to establish the
inherency of that result or characteristic. In re Rijckaert, 9 F .3d 1531, 1534
(Fed. Cir. 1993).
In this case, the Examiner's contention with respect to a position of
the contact point of the apparatus of Chishti being "capable of' adjusting
6
Appeal2013-007500
Application 13/019,219
within the locus of engagement as the tooth is repositioned appears to
overlook the explicit requirement in claim 2 that "a position of the contact
point adjusts within the locus of engagement as the tooth is repositioned."
Appeal Br. 18, Claims App. (emphasis added); see also Final Act. 3--4, 6;
Ans. 6, 8-9. The mere capability of a position of the contact point of the
apparatus of Chishti to adjust within the locus of engagement as the tooth is
repositioned is not sufficient to satisfy the positive claim limitation that a
position of the contact point adjusts within the locus of engagement as the
tooth is repositioned, as is required here.
Chishti discloses an improvement in polymeric shell appliances. The
improvement is configuring the appliance with a removal mechanism. See
Chishti, Abstract. Chishti discloses the removal mechanism as a "state
change" that reduces the stiffness or shape of the shell appliance such that
the engagement forces between the shell and the teeth or other interface are
reduced or eliminated. Id. at col. 3, 11. 12-15. The "state change" can be
either a change in material property that affects the stiffness or shape of the
appliance, or a change in shape that will reduce engagement forces. Id. at
col. 3, 11. 15-28. It is desired that the "state change" is induced by an
environmental change that can be easily effected within a patient's mouth
and would not be normally encountered during daily life. Id. at col. 3, 11.
28-37. While the change in state can occur throughout the shell, the change
needs to occur at the undercut, see Fig. 2A, since that is the area where the
largest amount of force is applied to the teeth. Id. at col. 6, 11. 43--4 7. In
application, as shell 102 is forced onto teeth T, inner surface 126 of shell
cavity 120 slidingly contacts engagement surface 130 until indentation
feature 128 engages engagement surface 130. At that time, indentation 128
7
Appeal2013-007500
Application 13/019,219
conforms around the shape of anchor 124 with a snug fit to hold shell 102 in
position. Based on the geometric shape of anchor 124 as illustrated in
Figures 3, 3A, and 3B, the engagement between anchor 124 and shell 102 is
a "one-way" engagement, "which means shell 102 is substantially locked in
position." Id. at col. 7, 11. 36-45.
Appellants' Specification describes the ability of the locus of
engagement to permit relative motion between the shell appliance and the
attachment and to transmit force from the appliance to the attachment and
tooth over a range of motion. See Spec. para. 16. Chishti' s appliance offers
no such ability. Chishti only discloses the capability to substantially lock
the appliance onto the anchor as explained above. Moreover, the Examiner
does not articulate sufficient technical reasoning to support a determination
that a position of the contact point of Chishti's apparatus necessarily adjusts
within the locus of engagement as the tooth is repositioned. See Ans. 10.
Consequently, based on the foregoing reasons, the Examiner fails to
establish by a preponderance of the evidence that Chishti anticipates the
system called for in independent claim 2.
Independent claims 14 and 3 5 include the same "wherein" limitation
discussed above for claim 2. See Appeal Br. 19, 21, Claims App. The
Examiner relies on the same unsupported findings for claims 14 and 3 5 as
discussed above for claim 2. See Final Act. 3--4; Ans. 6. Thus, the
Examiner's findings with respect to Chishti are deficient for claims 14 and
35 as well.
Accordingly, for the foregoing reasons, we do not sustain the
Examiner's rejection of independent claims 1, 14, and 3 5 and their
respective dependent claims 3, 6-12, 15, 18-24 as anticipated by Chishti.
8
Appeal2013-007500
Application 13/019,219
Claims 4, 5, 16, and 17
Obviousness over Chishti
The Examiner's rejection of claims 4, 5, 16, and 17 as unpatentable
over Chishti is based on the same unsupported findings discussed above with
respect to independent claim 2. See Final Act. 4--5; Ans. 7. The Examiner's
proposed modifications of Chishti do not remedy the deficiencies of Chishti.
For similar reasons set forth above for independent claim 2, we likewise do
not sustain the Examiner's rejection of claims 4, 5, 16, and 17 as
unpatentable over Chishti.
DECISION
We AFFIRM the decision of the Examiner to reject claims 2-25 on
the ground of nonstatutory obviousness-type double patenting as
unpatentable over claims 23--43 of Knopp.
We REVERSE the decision of the Examiner to reject claims 2, 3,
6-12, 14, 15, 18-24, and 35 as anticipated by Chishti.
We REVERSE the decision of the Examiner to reject claims 4, 5, 16,
and 17 as unpatentable over Chishti.
AFFIRMED-IN-PART
msc
9