Ex Parte Kuo

Board of Patent Appeals and Interferences

Dec 7, 2010

10894555 (B.P.A.I. Dec. 7, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/894,555 07/20/2004 Eric E. Kuo 9074.ALG.US.P 7259
70410 7590 12/07/2010
ALIGN TECHNOLOGY C/O WAGNER BLECHER LLP
123 WESTRIDGE DRIVE
WATSONVILLE, CA 95076
EXAMINER
EIDE, HEIDI MARIE
ART UNIT PAPER NUMBER
3732
MAIL DATE DELIVERY MODE
12/07/2010 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ERIC E. KUO
__________

Appeal 2009-014080
Application 10/894,555
Technology Center 3700
__________

Before CAROL A. SPIEGEL, DONALD E. ADAMS, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL1
This is an appeal under 35 U.S.C. § 134 involving claims to a system
to perform interproximal reduction. The Examiner rejected the claims as
anticipated and as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 The two-month time period for filing an appeal or commencing a
civil action, as recited in 37 C.F.R. § 1.304, or for filing a request
for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from
the “MAIL DATE” (paper delivery mode) or the
“NOTIFICATION DATE” (electronic delivery mode) shown on
the PTOL-90A cover letter attached to this decision.
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Application 10/894,555

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Statement of the Case
The Specification teaches that one “problem experienced during
[orthodontic] treatment is a residual crowding of adjacent teeth due to
insufficient interproximal reduction (IPR)” (Spec. 1 ¶ 0003). According to
the Specification, the “IPR procedure is also referred to as stripping,
reproximation, and slenderizing. IPR is typically employed to create space
for orthodontic treatment in cases where the teeth should not be moved only
outwards (buccally of facially) or where the teeth are misshaped in the width
dimension” (Spec. 2 ¶ 0003).
The Claims
Claims 1-35 are on appeal. The claims have not been argued
separately and therefore stand or fall together. 37 C.F.R. §
41.37(c)(1)(vii). Claim 1 is representative and reads as follows:
1. A system to perform interproximal reduction,
comprising:
a. a series of discs with disc thicknesses calibrated
to preset increments; and
b. a shank coupled to each disc.

The issues
A. The Examiner rejected claims 1-3, 5-7, 9, 22, and 23 under 35 U.S.C.
§ 102(b) as anticipated by Wooster2 (Ans. 3).
B. The Examiner rejected3 claims 1-3, 5-7, 9, 22, and 23 under 35 U.S.C.
§ 103(a) as obvious over Wooster (Ans. 6).

2 Wooster, W.F., US 534,540, issued Feb. 19, 1895.
3 This is a New Grounds of rejection in the Answer.
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C. The Examiner rejected claim 4 under 35 U.S.C. § 103(a) as obvious
over Wooster and Von Weissenfluh4 (Ans. 4).
D. The Examiner rejected claims 8, 10, and 11 under 35 U.S.C. § 103(a)
as obvious over Wooster and Seal5 (Ans. 4).
E. The Examiner rejected claims 12, 13, 16-23 and 24-35 under 35
U.S.C. § 103(a) as obvious over Wooster and Starr6 (Ans. 4-5).
F. The Examiner rejected claims 14 and 15 under 35 U.S.C. § 103(a) as
obvious over Wooster and Abrams7 (Ans. 5).
A. 35 U.S.C. § 102(b) over Wooster
The Examiner finds that “Wooster discloses a system comprising a
series of discs 15 with disc thickness of preset increments, and a shank 1
coupled to each disc (page 2 line 3), the system is capable of performing
interproximal reduction” (Ans. 3). The Examiner finds that the “shank is to
be received by a handpiece. Each disc comprises an abrasive coating (page 1
line 73) on a disc surface, a top-sided coating, and a bottom-sided coating”
(Ans. 3).
Appellant “respectfully submits that Wooster does not disclose ‘a
series of discs… and ... a shank coupled to each disc’ as is recited in
Appellant’s Claim 1” (App. Br. 10)
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s finding that Wooster teaches a system comprising “a
series of discs” where there is a “shank coupled to each disc”?

4 Von Weissenfluh, Beat, US 4,889,489, issued Dec. 26, 1989.
5 Seal, H.R., US 2,842,844, issued Jul. 15, 1958.
6 Starr, E.T., US 207,079, issued Aug. 13, 1878.
7 Abrams, Steven, US 7,048,477 B2, issued May 23, 2006.
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Findings of Fact
1. Wooster teaches “improvements in means for clamping or
securing disks or other dental polishing and abrading instruments upon their
mandrels” (Wooster 1, ll. 14-17).
2. Figure 1 of Wooster is reproduced below:

“Figure 1 is a side elevation, on an exaggerated scale, so as to more clearly
illustrate the construction of a disk-holder” (Wooster 1, 25-28).
3. Wooster teaches that “disks of varying thickness can be
clamped between [the cup] and the head of the pin” (Wooster 2, ll. 3-5).
4. Wooster teaches that the disk “may be made of emery,
celluloid, or any other suitable material” (Wooster 1, ll. 73-74).
5. Wooster teaches that the “shank of the pin near its head is
flattened, so as to be rectangular in cross section, and the hole in the disk is
correspondingly shaped so as to prevent rotation of the disk on the pin”
(Wooster 1, l. 101 to 2, l. 1).
Principles of Law
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of California, 814
F.2d 628, 631 (Fed. Cir. 1987).
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Analysis
Wooster teaches that “disks of varying thickness can be clamped
between [the cup] and the head of the pin” (Wooster 2, ll. 3-5; FF 3). This is
an express teaching of a series of discs with different disc thicknesses.
Wooster also teaches attachment of a shank 1 coupled to a disc (see
Wooster, Fig. 1, FF 2).
However, we agree with Appellant that there is no teaching in
Wooster to couple each disc to its own shank, rather Wooster teaches the use
of a single shank to which different discs may be attached (FF 3).
Conclusion of Law
The evidence of record does not support the Examiner’s finding that
Wooster teaches a system comprising “a series of discs” where there is a
“shank coupled to each disc”.
B. 35 U.S.C. § 103(a) over Wooster
The Examiner finds that
Wooster discloses a system comprising a series of discs 15
with disc thickness of preset increments, and a shank 1
coupled to each disc (page 2 line 3), the system is capable of
performing interproximal reduction. The shank is to be
received by a handpiece. Each disc comprises an abrasive
coating (page 1 line 73) on a disc surface, a top-sided
coating, and a bottom-sided coating. The shank is coupled
perpendicularly to the plane of the disc and the center of
rotation of the disc.

(Ans. 6). The Examiner finds it obvious “to modify Wooster to include
multiple shafts to attach the different discs to in order to save time during the
procedure by not having to switch the shaft with the difference discs” (Ans.
6).
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Appellant “asserts that Wooster teaches away from Appellant's Claim
1. For example, whereas Appellant understands Wooster to specifically
focus upon a single disk that may be easily and quickly removed from a
mandrel, Appellant’s Claim 1 discloses a series of single discs coupled to
shanks” (Reply Br. 2). Appellant contends that the “invention
advantageously enables its system to avoid the inconvenience experienced
utilizing Wooster’s invention of applying the disc to the tooth, removing the
disc and measuring the gap using another tool, and reapplying the disc until
the desired gap is achieved” (Reply. Br. 2).
Appellant contends that “[b]ased on the teaching of Wooster, there
would be no reason to have a series of single discs of varying thicknesses
coupled to separate shanks, as in Appellant’s invention. Therefore,
Appellant again respectfully submits that Wooster teaches away from
Appellant’s invention” (Reply Br. 3).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner’s conclusion that the claimed invention is
obvious over Wooster?
Principles of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. at 417. Moreover, an “[e]xpress suggestion to substitute
one equivalent for another need not be present to render such substitution
obvious.” In re Fout, 675 F.2d 297, 301 (CCPA 1982). As noted by the
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Court in KSR, “[a] person of ordinary skill is also a person of ordinary
creativity, not an automaton.” 550 U.S. at 421.
Analysis
As we noted above, Wooster teaches that “disks of varying thickness
can be clamped between [the cup] and the head of the pin” (Wooster 2, ll. 3-
5; FF 3). This is an express teaching of a series of discs with different disc
thicknesses. Wooster also teaches attachment of a shank 1 coupled to a disc
(see Wooster, Fig. 1, FF 2).
We agree with the Examiner that it would have been obvious “to one
having ordinary skill in the art at the time of the invention to modify
Wooster to include multiple shafts to attach the different discs to in order to
save time during the procedure by not having to switch the shaft with the
difference discs” (Ans. 6). “If a person of ordinary skill can implement a
predictable variation, § 103 likely bars its patentability.” KSR, 550 U.S. at
417.
Appellant “asserts that Wooster teaches away from Appellant's Claim
1. For example, whereas Appellant understands Wooster to specifically
focus upon a single disk that may be easily and quickly removed from a
mandrel, Appellant’s Claim 1 discloses a series of single discs coupled to
shanks” (Reply Br. 2). Appellant contends that the “invention
advantageously enables its system to avoid the inconvenience experienced
utilizing Wooster’s invention of applying the disc to the tooth, removing the
disc and measuring the gap using another tool, and reapplying the disc until
the desired gap is achieved” (Reply. Br. 2).
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We are not persuaded. That Wooster teaches an alternative way of
making multiple different discs available for dental use is not a teaching
away from using multiple shafts with different discs. Appellants do not
identify, and we do not find, any teaching in Wooster which teaches that the
use of multiple shafts is undesirable or would not function. Like our
appellate reviewing court, “[w]e will not read into a reference a teaching
away from a process where no such language exists.” DyStar Textilfarben
GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006).
Appellant contends that “[b]ased on the teaching of Wooster, there
would be no reason to have a series of single discs of varying thicknesses
coupled to separate shanks, as in Appellant’s invention. Therefore,
Appellant again respectfully submits that Wooster teaches away from
Appellant’s invention” (Reply Br. 3).
We are not persuaded. Wooster expressly teaches a series of discs
with different thicknesses where at least one disc is coupled to a shaft (FF 3).
The Examiner has provided a specific reason to place each disc on its own
shaft, specifically suggesting “to modify Wooster to include multiple shafts
to attach the different discs to in order to save time during the procedure by
not having to switch the shaft with the difference discs” (Ans. 6). There is
no requirement that the reason to modify the invention must be found in
Wooster. A prima facie case of obviousness does not require an explicit
teaching, suggestion, or motivation in the prior art; rather, there must be an
articulated reason with rational underpinning to combine the known
elements in the fashion claimed. KSR, 550 U.S. at 418. The Examiner’s
reasoning satisfies this requirement.
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Conclusion of Law
The evidence of record supports the Examiner’s conclusion that the
claimed invention is obvious over Wooster.
C. 35 U.S.C. § 103(a) over Wooster and Von Weissenfluh
The Examiner finds it obvious “to modify the system of Wooster to
have the discs with thickness in the range of Von Weissenfluh and provide
increments of 0.1 mm in order to penetrate narrow spaces between two
teeth” (Ans. 4).
The Examiner provides sound fact-based reasoning for combining
discs with the thicknesses of Von Weissenfluh with Wooster (see Ans. 4).
We adopt the fact finding and analysis of the Examiner as our own.
Appellant argues the underlying obviousness rejection over Wooster, but
Appellant does not identify any material defect in the Examiner’s reasoning
for combining Wooster with Von Weissenfluh. Since Appellant only argues
the underlying rejection of Wooster which we affirmed above, we affirm this
rejection for the reasons stated by the Examiner.
D. 35 U.S.C. § 103(a) over Wooster and Seal
The Examiner finds it obvious “to modify the system of Wooster to
have a disc with the coating of Seal in order to provide easy insertion
between two teeth” (Ans. 4).
The Examiner provides sound fact-based reasoning for combining
discs with the coatings of Seal with Wooster (see Ans. 4). We adopt the fact
finding and analysis of the Examiner as our own. Appellant argues the
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underlying obviousness rejection over Wooster, but Appellant does not
identify any material defect in the Examiner’s reasoning for combining
Wooster with Seal. Since Appellant only argues the underlying rejection of
Wooster which we affirmed above, we affirm this rejection for the reasons
stated by the Examiner.
E. 35 U.S.C. § 103(a) over Wooster and Starr
The Examiner finds it obvious “to modify the system of Wooster with
the indicator of Starr in order to aid the dentist in saving time and preventing
mistakes in the selection of discs” (Ans. 5). We adopt the fact finding and
analysis of the Examiner as our own. The Examiner provides sound fact-
based reasoning for combining discs with the colors of Starr with Wooster
(see Ans. 5).
Appellant argues the underlying obviousness rejection over Wooster.
Appellant also makes one specific argument relating to Starr, that “the
proposed modification or combination of the Starr [reference] would change
the principle of operation of Starr” (App. Br. 17). Specifically, Appellant
argues that “the disks of Starr may not be color-coded as to thickness, as is
done in Appellant’s invention, because each of Starr’s disks does not have a
measurement of a single thickness” (App. Br. 18).
We are not persuaded. The Examiner relies upon Starr to address the
limitations of a thickness indicator which may be a color, and not for the
specific construction of the disk, as the Examiner notes “Starr is used to
teach a color coding system to indicate thickness” (Ans. 8). We agree with
the Examiner that simply adding a color coding to the disks of Wooster
would not change the basic principle of Wooster, but would simply “aid the
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dentist in saving time and preventing mistakes in the selection of discs”
(Ans. 5). As the Supreme Court noted, “[a] person of ordinary skill is also a
person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. We
think ordinary creativity would have permitted using Starr’s known method
of coloring discs for identification with the disks of Wooster.
F. 35 U.S.C. § 103(a) over Wooster and Abrams
The Examiner finds it obvious “to modify the system of Wooster with
the indicator of Abrams in order to aid the user in identification and not to
have the indicator on the working portion” (Ans. 6).
The Examiner provides sound fact-based reasoning for combining
indicator of Abrams with Wooster (see Ans. 6). We adopt the fact finding
and analysis of the Examiner as our own. Appellant argues the underlying
obviousness rejection over Wooster, but Appellant does not identify any
material defect in the Examiner’s reasoning for combining Wooster with
Abrams. Since Appellant only argues the underlying rejection of Wooster
which we affirmed above, we affirm this rejection for the reasons stated by
the Examiner.
SUMMARY
In summary, we reverse the rejection of claims 1-3, 5-7, 9, 22, and 23
under 35 U.S.C. § 102(b) as anticipated by Wooster.
We affirm the rejection of claim 1 under 35 U.S.C. § 103(a) as
obvious over Wooster. Pursuant to 37 C.F.R. § 41.37(c)(1)(vii)(2006), we
also affirm the rejection of claims 2, 3, 5-7, 9, 22, and 23 as these claims
were not argued separately.
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We affirm the rejection of claim 4 under 35 U.S.C. § 103(a) as
obvious over Wooster and Von Weissenfluh.
We affirm the rejection of claims 8, 10, and 11 under 35 U.S.C. §
103(a) as obvious over Wooster and Seal.
We affirm the rejection of claims 12, 13, 16-23 and 24-35 under 35
U.S.C. § 103(a) as obvious over Wooster and Starr.
We affirm the rejection of claims 14 and 15 under 35 U.S.C. § 103(a)
as obvious over Wooster and Abrams.
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)(2006).

AFFIRMED

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ALIGN TECHNOLOGY C/O WAGNER BLECHER LLP
123 WESTRIDGE DRIVE
WATSONVILLE, CA 95076