Ex Parte Kobashigawa et al

Patent Trial and Appeal Board

Feb 12, 2016

13527861 (P.T.A.B. Feb. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/527,861 06/20/2012
83571 7590 02/17/2016
Wood, Herron & Evans, LLP (Sybron)
441 Vine Street
2700 Carew Tower
Cincinnati, OH 45202
FIRST NAMED INVENTOR
Alvin I. Kobashigawa
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.
KMC-342US 7360
EXAMINER
CHRISTENSEN, CHELSEA MULLANEY
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
02/17/2016 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):
usptodock@whe-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AL VIN I. KOBASHIGAWA, VY PHUONG BUI,
DAVID A. TOBIA, and HECTOR G. GARZA
Appeal2014-006246
Application 13/527,861
Technology Center 1700
Before TERRY J. O\VENS, 1\1ICHi\~EL P. COLiUi\J'Jl'H, and
BRIAND. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-006246
Application 13/527,861
SUMMARY
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF CASE
Appellants 1 describe the present invention as "material useful for
dental restoration ... a universal composite resin material which provides
high strength, improved wear resistance and high gloss retention in clinical
use." Spec. ,-i 2. Claim 1, reproduced below, is illustrative:
1. A dental composite, comprising:
a resin base;
a short-cut fiber filler; and
a particulate filler ranging from about 10% by volume to
about 80% by volume based on the total volume of the dental
composite, the particulate filler consisting essentially of:
a ground structural filler ranging from about 10% by volume
to about 70% by volume based on the total volume of the
composite and consisting of ground particles having a mean
particle size between about 0.05 µm and about 0.50 µm, wherein
the ground structural filler comprises less than 50% by volume
of particles above 0.5 µmin diameter; and
a microfiller present in an amount up to about 10.0% by
volume based on the total volume of the dental composite and
consisting of particles having a mean particle size of about 0.04
µm or less.
Br. 15 (Claims Appendix).
REJECTIONS
The Examiner made the following rejections:
1 According to the Appellants, the Real Party in Interest is Kerr Corporation.
Br. 3.
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Application 13/527,861
Rejection 1. The Examiner rejects claims 1-5 and 20 pursuant to
35 U.S.C. § 103(a) as unpatentable over the combination of Angeletakis, et
al., U.S. Patent No. 6,121,344, issued September 19, 2000 (hereinafter,
"Angeletakis") and Karmaker, et al., U.S. Patent No. 6,381,989 Bl issued
May 7, 2002 (hereinafter, "Karmaker").
Rejection 2. The Examiner rejects claims 1, 2, 4, 5, and 11-19
pursuant to 35 U.S.C. § 103(a) as unpatentable over the combination of
Angeletakis and Petersen, U.S. Patent No. 6,270,348 Bl, issued August 7,
2001 (hereinafter, "Petersen").
Rejection 3. The Examiner rejects claims 1, 6-8, and 20 pursuant to
35 U.S.C. § 103(a) as unpatentable over the combination of Goldberg, et al.,
U.S. Publication No. 2004/0241614 Al, published December 2, 2004
(hereinafter, "Goldberg") and Angeletakis.
Rejection 4. The Examiner rejects claims 9 andlO pursuant to
35 U.S.C. § 103(a) as unpatentable over the combination of Goldberg,
Angeletakis, and Daskalon, et al., US 6,533,969 Bl, issued March 18, 2003
(hereinafter, "Daskalon").
ANALYSIS
Appellants' arguments with respect to each of the Examiner's four
rejections are discussed below.
Rejection 1. The Appellants do not separately argue dependent claims
2-5 or 20. Rather, Appellants' arguments are directed to the subject matter
of claim 1. We therefore limit our discussion to claim 1. Claims 2-5 and 20
stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv) (2013).
For this rejection, the Examiner finds that Angeletakis discloses all
limitations of claim 1 except for use of short cut fiber filler. Final Act. 3.
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The Examiner finds that Karmaker teaches using short cut fiber filler in a
dental composite. Id. Based upon the teachings of these references and
because the references are in the same field of endeavor, the Examiner
concludes that it would have been obvious to combine Karmaker' s fibers
with Angeletakis's dental composition to improve strength of the dental
composite. Id.
Appellants present two arguments as to why the Examiner's first
rejection is improper, but for the reasons explained below, neither argument
is persuasive. First, the Appellants argue the claimed invention is not
obvious because a person of ordinary skill in the art could not have
reasonably expected success in combining the teachings of Angeletakis and
Karmaker. This argument is premised on both strength and aesthetics being
necessary for a dental composite's success. See, e.g., Br. 7 (arguing that a
reasonable expectation of success would require "improve[ d] structural
properties without a significant negative impact on the optical properties").
Appellants argue that Angeletakis focuses on using small particles so that its
composite "maintains a glossy appearance, even after substantial wear" and
that there would be no expectation of success in combining with Karmaker' s
larger fibers because such a combination might destroy Angeletakis' s
favorable "optical properties." Br. 7.
For 35 U.S.C. § 103 all that is required is a reasonable expectation of
success, not absolute predictability of success. In re 0 'Farrell, 853 F.2d 894,
903-04 (Fed. Cir. 1988). See also, PAR Pharm., Inc. v. TWI Pharm., Inc.,
773 F.3d 1186, 1198 (Fed. Cir. 2014). ("The reasonable expectation of
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Application 13/527,861
success requirement for obviousness does not necessitate an absolute
certainty for success.").
Here, the Specification acknowledges the usefulness and success of a
composition using "Belle glass TM Opaceaous Dentin Resin" even though this
composition "is not readily polishable and therefore, is generally only
suitable for use in a sublayer of dental restoration." Spec. ,-i,-i 57-58. Based
on the record before us, we find by a preponderance of the evidence that a
person of skill in the art would consider creation of a stronger composition
successful even if the aesthetic result were uncertain. Cf Medichem, S.A. v.
Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) ("a given course of action
often has simultaneous advantages and disadvantages, and this does not
necessarily obviate motivation to combine").
Even if aesthetics were critical, Appellants admit Angeletakis is
ultimately silent as to effect short cut filler will have on optics. Br. 7.
Meanwhile, Karmaker suggests that its fibers may be used in an aesthetic
manner. In particular, Karmaker teaches that it may be used for "bridge
manufacture" and "bridges must be aesthetic as well as strong." Karmaker
2:5; 7:49-52. Thus, a preponderance of evidence establishes that a person of
skill could expect the combination of Angeletakis and Karmaker to be
aesthetic as well as strong.
The Examiner concluded that it would have been obvious of a person
of ordinary skill in the art to add the glass fibers of Karmaker to the
composition of Angeletakis because the two references are analogous art
regarding the same field of endeavor and because Karmaker teaches that
adding its fibers to composite materials increases strength and stiffness.
Ans. 3. We agree with and adopt this reason for the combination of
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teachings of Angeletakis and Kannaker. A preponderance of the evidence
establishes that a person of ordinary skill in the art would recognize that the
glass fibers of Karmaker could be used to improve the composite of
Angeletakis in a predictable way and according to established functions (i.e.,
providing a strengthening of the resin). Cf KSR Int'!, Co. v. Teleflex Inc.,
550 U.S. 398, 417 (2007) .
As its second argument, Appellants argue that the invention provides
two unexpected results: "markedly increased fracture resistance" and
"unexpectedly good optical properties." Br. 7-8. To establish unexpected
results, the "objective evidence of non-obviousness must be commensurate
in scope with the claims which the evidence is offered to support." In re
Clemens, 622 F.2d 1029, 1035 (CCPA 1980).
With respect to "increased facture resistance," the Examiner finds that
the unexpected results are not commensurate with the scope of the claimed
invention. Ans. 7. We agree with this finding. Claim 1 broadly
encompasses use of any resin base, any short-cut fiber filler, and a fairly
broad range of particulate filler. The specification, in contrast, only
addresses fracture resistance with respect to two resins (Belleglass TM
Translucent Dentin and Premiseâ„¢), limited types of fiber filler, and limited
ranges of particulate filler. Spec ,-i,-i 49-56, 59-60. (The specification's fifth
example appears to fall outside of the scope of claim 1 because of large filler
size. Spec. ,-i 57.)
While the Appellant states the fracture resistance results are
"unexpected," it appears conventional and expected that additional structural
fiber would add fracture resistance. Appellants' data shows that addition of
a small amount of short fibers results in very little added fracture resistance;
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an expected result. Spec. Table 3. Additionally, Angeletakis cites its "high
fracture toughness" as an advantage. Angeletakis 3 :21-28. Karmaker
teaches that addition of structural fibers will provide "increased strength and
stiffness." Karmaker 1 :48--49. Thus, the prior art references teach that
addition of fibers will lead to increased fracture strength, and a
preponderance of the evidence establishes that increased fracture strength is
an expected result. The record lacks persuasive evidence that "increased
fracture resistance" is an unexpected result commensurate with the scope of
Claim 1.
With respect to "unexpectedly good optical properties," the Examiner
again finds that the examples Appellant provides are not commensurate with
claim scope. Ans. 7. We again agree with the Examiner's finding. The
specification discusses limited resin bases, particulate filler, and fiber
combinations. Appellants' evidence to a few select materials is insufficient
to demonstrate unexpected results over the entire scope of the claim.
Moreover, as explained herein, the cited references each suggest good
aesthetics. Thus, the record lacks persuasive evidence that "good optical
properties" are an unexpected result commensurate with scope of Claim 1.
Because the Examiner properly established a prima facie case of
obviousness of Claim 1 in light of Angeletakis and Karmaker and because
we do not find the cited evidence of unexpected results sufficient when
consider with the evidence of obviousness, we affirm the Examiner's§
103rejection over Angeletakis and Karmaker.
Rejection 2. The Appellants do not separately argue dependent claims
2, 4, 5, 11-13, and 19. Appellants' arguments focus on the subject matter of
claim 1. We therefore limit our discussion of those claims to claim 1.
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Claims 2, 4, 5, 11-13, and 19 stand or fall with claim 1. See 37 C.F.R. §
41.37(c)(l)(iv) (2013). We also address Appellants arguments specific to
claims 14-18 separately.
The Examiner's second rejection is similar to the first. The Examiner
concludes that it would be obvious to combine the fibers disclosed by
Petersen with the filler of Angeletakis in order to, for example, increase
strength. Final Act. 3-4.
Appellants respond to the Examiner's second rejection with largely
the same arguments as the first rejection. Appellants argue that "Petersen
provides no teaching or suggestion as to what effect inclusion of short cut
fibers has on sustained luster and/or translucency performance in dental
composites." Br. 9 (emphasis original). As we found above, however,
favorable aesthetic properties are not necessary for an expectation of success
in the field. Here, a person of ordinary skill would be motivated to combine
Petersen and Angeletakis because, for example, Petersen teaches that its
fibers "substantially address the difficulties in reestablishing interproximal
contact, proximal voids, finishing, postoperative sensitivity and insufficient
mechanical strengths associated with known composite materials." Petersen
1 :9-12. It provides data showing higher fracture strength when quartz fiber
is added. Id. at Fig. l; 3:28-30. And even if aesthetics were critical,
Petersen also acknowledges its use in composites for "an esthetic-orientated
patient population." Id. at 1: 14-16. Thus, a preponderance of the evidence
establishes that a person of ordinary skill in the art would recognize that the
fibers of Petersen could be used to improve the composite of Angeletakis in
a predictable way and according to established functions (i.e., enhancing the
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strength of the composite). Thus, we affirm the Examiner's second rejection
as to claims 1, 2, 4, 5, 11-13, and 19.
With respect to claims 14-18, Appellants also argue that the recited
increases in fracture toughness and "Equilibrium Gloss" values are not
established in the combination of Petersen because that combination is only
a "hypothetical composite." Br. 9-10. We disagree with Appellants'
argument.
Here, for the reasons explained by the Examiner, a preponderance of
the evidence establishes that Angeletakis and Petersen teach a composition
which would necessarily have the claimed properties as taught by the
Specification based on the identity of the composition. Ans. 8; Final Act. 4.
In other words, once Petersen's short cut fiber filler is combined with
Angeletakis' dental composition to enhance the strength of the dental
composite the resulting properties (i.e., fracture toughness and Equilibrium
Gloss) would flow naturally therefrom based upon the identity of the
composition. Ex parte Obiaya, 227 USPQ 58, 59 (BPAI 1985) ("The fact
that appellant has recognized another advantage which would flow naturally
from following the suggestion of the prior art cannot be the basis for
patentability when the differences would otherwise be obvious."). New
recognition of properties does not make an otherwise obvious composition
patentable. See Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347 (Fed.
Cir. 1999) ("[T]he discovery of a previously unappreciated property of a
prior art composition, or of a scientific explanation for the prior art's
functioning, does not render the old composition patentably new to the
discoverer.") Thus, we also affirm the Examiner's rejection with respect to
claims 14-18.
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Rejection 3. For the third rejection, the Examiner concludes that it
would have been obvious to combine the polymeric matrix impregnated with
fibers of Goldberg with the dental composition of Angeletakis to, for
example, increase strength. Final Act. 5-6. Appellants reassert their
arguments concerning the impact of Angeletakis's "optical properties" when
addressing the combination of Angeletakis and Goldberg. Br. 11-12.
The arguments again fail for the reasons addressed above. We agree
with the Examiner that Goldberg and Angeletakis are analogous art
regarding the same dental composition field of endeavor. Final Act. 5.
Angeletakis explains that structural filler and microfill particles both provide
increased strength. Id. at 6 (citing Angeletakis at 3:55-60, 4:39--49).
Goldberg explains that it accomplishes the "objects" of maintaining strength
"without sacrificing aesthetic and light transmission properties." Goldberg
,-i,-i 6-7; see also id. at ,-i 57 (explaining that disclosed filler can impart
compressive strength while enhancing translucency and "better blending of
the restorative material with the adjacent teeth"), ,-i 70 (explaining that
disclosed components enhance longevity and shock absorption). Thus, a
preponderance of the evidence establishes that a person of ordinary skill in
the art would have recognized that the fillers of Goldberg could be used to
improve the composite of Angeletakis in a predictable way and according to
established functions. Thus, we affirm the Examiner's third rejection as to
claims 1, 6-8, and 20.
Rejection 4. The Examiner finds that Daskalon teaches Y-
methacryloxy-proplytrimethoxysilane as a silane coupling agent for treating
reinforcing polyester fibers. Final Act. 6-7. The Examiner concludes that it
would be obvious to combine Daskalon with Goldberg to promote
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fiber/resin bonding. Id. Appellants rely on the same arguments as those
presented for Rejection 3 and makes no separate arguments for the
patentability of dependent claims 9 and 10. Thus, we affirm the Examiner's
third rejection as to claims 9 and 10 for the reasons explained above.
DECISION
For the above reasons, the Examiner's rejection of claims 1-20 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a).
AFFIRMED
KRH
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