Ex Parte Kuo

Board of Patent Appeals and Interferences

May 6, 2009

10612239 (B.P.A.I. May. 6, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ERIC KUO,
Appellant
____________________

Appeal 2009-2294
Application 10/612,2391
Technology Center 3700
____________________

Decided2: May 6, 2009
____________________

Before CAROL A. SPIEGEL, LORA M. GREEN, and
RICHARD M. LEBOVITZ, Administrative Patent Judges.

SPIEGEL, Administrative Patent Judge.

DECISION ON APPEAL

1 Application 10/612,239 ("the 239 application"), Dental Appliance
Sequence Ordering System and Method, was filed 1 July 2003. The real
party in interest is ALIGN TECHNOLOGY, INC. (Appellant's Brief Under
37 C.F.R. § 41.37, filed 13 December 2007 ("App. Br."), at 3).
2 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. It does not run from the Mail Date
(paper delivery) or Notification Date (electronic delivery).
Appeal 2009-2294
Application 10/612,239

I. Statement of the Case
Appellant appeals under 35 U.S.C. § 134 from an Examiner's final
rejection of claims 19-21, 27-29, and 38-48.3 Claims 1 and 37, the only
other pending claims, have been indicated as allowable (App. Br. 4; Ans.4
2). We have jurisdiction under 35 U.S.C. §§ 6(b) and 134. We AFFIRM.
The subject matter on appeal is directed to a system comprising a
plurality of dental appliances for repositioning teeth, such as clear polymeric
braces, which are marked in a non-numeric manner, on the appliances and/or
on packaging therefore, to indicate the order in which the appliances are
used. Claims 19, 27, and 44 are illustrative and read (App. Br. 27-30):
19. A system of dental appliances comprising:
a plurality of dental appliances to be worn
by a patient to provide dental treatment, each of
the plurality of dental appliances having cavities
shaped to receive and resiliently reposition teeth
from one arrangement to a successive
arrangement;
a framework, wherein each of the plurality
of dental appliances are removably attached to a
portion of the framework; and
a non-numeric indicia designating an order
in which each of the plurality of dental appliances
are to be worn by a patient to provide dental
treatment.

27. A package of dental appliances comprising:
a package containing a plurality of
geometrically distinct dental appliances positioned
in an arrangement within the package which

3 In an Advisory Action mailed 7 August 2007, the Examiner entered an
amendment, filed 24 July 2007, canceling claims 14-16 and 30-36.
4 Examiner's Answer mailed 10 March 2008 ("Ans.").

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indicates an order of usage, the plurality of dental
appliances comprising a plurality of geometrically
distinct successive appliances having cavities and
wherein the cavities of successive appliances have
different geometries shaped to receive and
reposition teeth from an initial arrangement toward
a successive arrangement.

44. A system of dental appliances comprising:
a plurality of dental appliances comprising
color indicia designating an order in which each of
the plurality are to be worn by a patient to provide
dental treatment, each of the plurality of dental
appliances having cavities shaped to receive and
resiliently reposition teeth from one arrangement
to a successive arrangement, wherein the color
indicia comprises a dissolvable dye.

The non-numeric indicia may comprise a pattern of one or more cutouts
(claim 38) or a computer readable element (claim 40), e.g., a barcode (claim
41) or a radiofrequency tag (claim 43), marked on the appliance itself. In
other embodiments, non-numeric indicia, e.g., as color, may be marked on a
peel-away wrapper removably attached to the appliance (claim 47).
Alternatively, the non-numeric indicia may comprise a packaging that
dispenses the appliances in order of use, e.g., a packaged stack of appliances
which dispenses the appliances one by one (claim 29) or a plastic frame to
which the appliances are removably attached in order of use (claim 48).
The Examiner has rejected the pending claims as unpatentable under
35 U.S.C. § 103(a) as follows:5
(i) claims 19-21 and 48 over Chishti6 in view of Klein7;

5 The Examiner withdrew the rejection of claims 45 and 46 under 35 U.S.C.
§ 112, first paragraph (enablement) (Ans. 2).
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Application 10/612,239

(ii) claims 27-29 over Chishti in view of Klatt8;
(iii) claims 38 and 39 over Chishti in view of Wong9 and Rohlcke10;
(iv) claims 40 and 41 over Chishti in view of Wong and Martin11;
(v) claims 42 and 43 over Chishti in view of Wong, Martin, and
Morris12;
(vi) claims 44 and 47 over Chishti in view of Wong; and,
(vii) claims 45 and 46 over Chishti in view of Wong and Bates13
(Ans. 3-7).
The Examiner found that Chishti discloses appliances marked or
associated with non-numeric indicia, rather than the claimed numeric
indicia, to indicate the order in which the appliances are used (Ans. 3-7).
The Examiner contends that it would have been obvious to substitute
functionally equivalent non-numeric indicia, including packaging which
6 U.S. Patent 5,975,893 C1, Method and System for Incrementally Moving
Teeth, issued 2 November 1999, to Chishti et al. and reissued 26 August
2008 ("Chishti").
7 U.S. Patent 4,038,753, Orthodontic Apparatus Including Unitary Dispenser
and Dispensed Articles, issued 2 August 1977, to Paul E. Klein ("Klein").
8 U.S. Patent Application Publication 2003/0136698 A1, Medicinal Product
Package for Eradication Therapy, published 24 July 2003, based on
application 10/297,257, filed 23 June 2001, by Andreas Klatt ("Klatt").
9 U.S. Patent 6,206,695 B1, Step-Back Eliminating Tapered Dental Cutting
Instruments for Improved Root Canal Treatment and Method, issued 27
March 2001, to Wong et al. ("Wong").
10 U.S. Patent 5,326,259, Marked Orthodontic Aid and Method of
Manufacturing, issued 5 July 1994, to Röhlcke et al. ("Rohlcke").
11 U.S. Patent 6,884,071 B2, Mixing Capsule, issued 26 April 2005, to
Mathias Martin ("Martin").
12 U.S. Patent 5,923,001, Automatic Surgical Sponge Counter and Blood
Loss Determination System, issued 13 July 1999, to Morris et al. ("Morris").
13 U.S. Patent 5,411,295, Tamper-Evident Label, issued 2 May 1995, to Bates
et al. ("Bates").
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Application 10/612,239

dispenses items in a sequential fashion, for the numeric indicia used by
Chishti to indicate the order of use of the dental appliances.
Appellant argues that although non-numeric indicia is known in the
prior art, such as Wong, the prior art does not teach or suggest using non-
numeric indicia to convey information regarding the order of use of anything
(App. Br. 17-25), that Klein discloses alpha-numeric indicia, not non-
numeric indicia (App. Br. 12-16), and that Klatt does not disclose dispensing
a stack of geometrically distinct dental appliances (App. Br. 15-17).
Thus, the issues before us are whether Appellant has shown the
Examiner erred in concluding (1) that non-numeric indicia is functionally
equivalent to numeric indicia for purposes of indicating the order of use of
dental appliances as disclosed by Chishti; (2) that the alpha-numeric indicia
of Klein suggests the functional equivalence of numeric and non-numeric
indicia; and (3) that packaging which dispenses identical articles in order as
taught by Klatt suggests packaging which dispenses dental appliances in the
order of their use as claimed.
II. Findings of Fact ("FF")
The following findings of fact are supported by a preponderance of
the evidence of record.
[1] Chishti discloses a system comprising a series of dental appliances
having cavities configured to receive and incrementally reposition
individual teeth from an initial position to a final position (Chishti
2:62-3:17).
[2] According to Chishti, "[t]he appliances will be marked in some
manner, typically by sequential numbering directly on the appliances
or on tags, pouches, or other items which are affixed to or which
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Application 10/612,239

enclose each appliance, to indicate their order of use" (Chishti 15:1-
5).
[3] Klein discloses forming a framework, i.e., a dispensing carrier, on
which orthodontic appliances may remain until time for their use,
formed by introducing a path or trough in a mold through which resin
is introduced to form the appliances (Klein 1:14-20; 4:3-8).
[4] According to Klein, while a given framework will ordinarily carry
only devices of one specific type and size, different types of devices
may also be provided on the framework, along with appropriate
markings, e.g., "A-1-REG.," identifying the types and sizes of the
devices (Klein 2:26-33; 4:9-19; fig. 1).
[5] Further according to Klein, as successive devices are removed from
the framework, it may be desirable to cut off the remaining portion of
the framework which projects beyond any remaining devices (Klein
4:47-52).
[6] Klatt discloses a medicinal product package comprising (a) a
multiplicity of blister cards disposed in a stack and arranged in the
order of their use and (b) a container having an access for removing
the blister card lying at the bottom of the stack (Klatt ¶ 6).
[7] Wong teaches that endodontic files or "reamers" used for root canals
are identified by an ISO (International Standard Organization) color
code according to the diameter of the reamer (Wong 2:5-66).
[8] According to Wong, a dentist typically begins a root canal using a size
10 "purple" reamer, then removes additional material using a size 15
"white" reamer, followed by the next larger size, e.g., a size 20
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"yellow" reamer, a size 25 "red" reamer, etc. until the root tip is
reached (Wong 2:7-13, 41-53).
[9] According to Rohlcke, it is known to mark individual orthodontic
aids, e.g., brackets or bands, using color or mechanical markings, e.g.,
notchings, in order to identify their orientation and allocation to
individual types of teeth (Rohlcke 1:13-24).
[10] According to Martin, mixing capsules for dental materials may be
coded with one or more color markings, e.g., a color label, or
electronically legible markings, e.g., a bar code, to provide various
information about the capsule, including the mixing time, the material,
the manufacturer and/or the expiration date (Martin 1:7-11; 7:24-29).
[11] According to Morris, radio frequency tags operate by proximity, as
opposed to bar codes which operate by optics, and, therefore, may be
read in harsh environments, submerged in liquids, and from any
direction through most materials, including tissue, bone, etc. (Morris
2:39-56).
[12] In particular, Morris uses radio frequency identification tags on
surgical sponges (Morris 2:65-3:3:1).
[13] Bates discloses applying water-soluble indicia to the surface of a
substrate to provide identifying information, e.g., the label or product
manufacturer (Bates 2:5-10).
III. Discussion
A. Legal principles
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
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invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406,
127 S. Ct. 1727 (2007). The question of obviousness is resolved on the
basis of underlying factual determinations including (1) the scope and
content of the prior art, (2) any differences between the claimed subject
matter and the prior art, (3) the level of skill in the art, and (4) where in
evidence, so-called secondary considerations. Graham v. John Deere Co.,
383 U.S. 1, 17-18 (1966). In KSR, the Supreme Court reaffirmed principles
based on its precedent that “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR, 550 U.S. at 416. The Court
emphasized that “rejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness” id. at 418. (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)). However, “the analysis need not seek out precise teachings directed
to the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.” Id. Thus, "[i]n considering motivation in an
obviousness analysis, we ask 'whether a person of ordinary skill in the art,
possessed with the understandings and knowledge reflected in the prior art,
and motivated by the general problem facing the inventor, would have been
led to make the combination recited in the claims.'" Optivus Tech., Inc. v.
Ion Beam Applications S.A., 469 F.3d 978, 990 (Fed. Cir. 2006) (citing In re
Kahn, 441 F.3d at 988). "Non-obviousness cannot be established by
attacking references individually where the rejection is based upon the
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teachings of a combination of references." In re Merck & Co., Inc., 800
F.2d 1091, 1097 (Fed. Cir. 1986).
B. Analysis
The question common to all of the Examiner's rejections is whether it
would have been obvious to substitute non-numeric indicia for the numeric
indicia used by Chishti to indicate the order of use of the dental appliances.
Appellant's patentability arguments fall into three main groups, essentially
based on the type of non-numeric indicia disclosed by the secondary
references Klein (framework with alpha-numeric indicia), Klatt (stacked
dispenser), and Wong (color coded indicia and functional equivalents
thereof).
1. Rejection based on Chishti and Klein
Appellant argues that neither Chishti nor Klein teach non-numeric
indicia designating an order of use as recited in claim 19 (App. Br. 10-14).
In particular, Appellant argues that Klein's disclosure of an "A-1-REG"
coding is "non-numeric" and fails to convey any information designating
order of use and, therefore, the rejection of claims 19-21 and 48 should be
reversed (App. Br. 13-14).
Chishti teaches that either the appliances or their packaging "will be
marked in some manner, typically by sequential numbering" to indicate their
order of use (FF 2). Thus, while Chishti apparently prefers numbering, its
disclosure is not limited to it. The disclosure of Klein is not limited to
numeric markings either, but rather discloses "appropriate" markings (FF 4).
Moreover, Klein suggests removing and using successive devices from its
disclosed framework which carries the devices (FF 5). Therefore, persons of
ordinary skill in the art would have reasonably understood that non-
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numerical markings could be utilized to indicate the order of use of the
dental appliances as suggested by Klein. The salient inquiry is what the
combination of Chishti and Klein would have suggested to one of ordinary
skill in the art. Thus, it is of no moment that the markings of Klein do not
carry the precise information claimed, i.e., the order of use of the individual
dental appliances, because the motivation to provide that information is
taught by Chishti and the rejection is based on the combination of Chishti
and Klein, not Chishti or Klein in isolation. In re Merck & Co., Inc., 800
F.2d at 1097.
Therefore, we will sustain the rejection of claims 19-21 and 48 under
§ 103 based on the combined teachings of Chishti and Klein. Appellant has
not provided any evidence of so-called secondary considerations which
would lead us to a contrary conclusion.
2. Rejection based on Chishti and Klatt
Appellant argues that neither Chishti nor Klatt teach non-numeric
indicia of order of use comprising "a package including a plurality of
geometrically distinct dental appliances positioned in an arrangement within
the package which indicates an order of usage," as recited in claim 27 and,
therefore, the rejection of claims 27-29 should be reversed (App. Br. 14-17).
In particular, Appellant argues that
[w]hile a particular order of use might be
incidental once the blister cards are stacked and
then consistently drawn from the bottom of the
stack, no particular ordering or staking [sic,
stacking] is taught by Klatt. In fact, as the blister
cards of Klatt are identical, order of usage would
be irrelevant to the system of Klatt. … Thus, Klatt
fails to teach geometrically distinct
articles/appliances positioned in an arrangement
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within the package, the positioning having
information which indicates an order of usage.
[App. Br. 15-16.]
Once again, Appellant focuses on the individual references rather than
on what their combined teachings would have suggested to one of ordinary
skill in the art, possessed with the understandings and knowledge reflected
in the prior art and motivated by the general problem facing the inventor.
Thus, we agree with the thrust of the Examiner's rejection that Klatt fairly
suggests stacking items in the order of their use (FF 6) and that Chishti
teaches indicating the order of use of geometrically distinct dental
appliances by marking the appliances or their packaging (FF 1-2). In other
words, it would have been obvious to use a package comprising (a) a
plurality of geometrically distinct dental appliances disposed in a stack and
arranged in order of their use and (b) a container having an access for
removing the appliance lying at the bottom of the stack as suggested by Klatt
based on the combined teachings of Chishti and Klatt motivated by Chishti's
stated need to indicate the order of use of the appliances.
Therefore, we will sustain the rejection of claims 27-29 under § 103
based on the combined teachings of Chishti and Klatt. Appellant has not
provided any evidence of so-called secondary considerations which would
lead us to a contrary conclusion.
3. Rejections based on Chishti and Wong, alone or in
further combination with Rohlcke, Martin, Morris and/or
Bates

In essence, Appellant argues that Wong fails to teach or suggest using
non-numeric indicia, i.e., color to indicate order of usage of items, i.e.,
orthodontic reamers, and none of Rohlcke, Martin, Morris, or Bates makes
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Application 10/612,239

up for this deficiency (App. Br. 17-25). In particular, Appellant argues that
"[t]he mere fact that a practitioner may use progressively larger sized
reamers in performing a root canal does not provide the teaching of using a
color scheme as an indication for the order of usage" (App. Br. 18).
Appellant further argues that merely providing alternative "indicia," such as
the notches of Rohlcke, the bar codes of Martin, the radio frequency tags of
Morris or the dissolvable dye of Bates remedy the deficiency in Wong (App.
Br. 19-20, 22-23, 25). According to Appellant, the indicia of Wong,
Rohlcke, Martin, Morris, and Bates provide unrelated information and fail to
including any information whatsoever about order of use of anything (App.
Br. 19-25).
Appellant does not disagree that non-numeric indicia is used to
provide a breadth of different types of information. Rather, Appellant's
arguments focus on the specific type of information provided by the
individual indicia of Wong, Rohlcke, Martin, Morris, and Bates. However,
it is well established that non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references. In re Merck & Co., Inc., 800 F.2d at 1097. Here,
the Examiner contends that it is well within ordinary skill in the art to use
colors, numbers, bar codes, etc. as known functional equivalents to convey a
desired type of information, i.e., order of usage (Ans. 9-11). Appellant has
not provided evidence or arguments to the contrary under the facts of this
case. Once again, Appellant fails to recognize that Chishti explicitly
suggests using some type of marking, on either the distinct, individual dental
appliances or their packaging, to indicate their order of use.
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Therefore, we will sustain the rejections of claims 38-47 under § 103
based on the combined teachings of Chishti and Wong, alone or in further
combination with Rohlcke, Martin, Morris and/or Bates. Appellant has not
provided any evidence of so-called secondary considerations which would
lead us to a contrary conclusion.
C. Conclusion
Appellant has failed to show that the Examiner erred in concluding (1)
that non-numeric indicia is functionally equivalent to numeric indicia for
purposes of indicating the order of use of dental appliances as disclosed by
Chishti; (2) that the alpha-numeric indicia of Klein suggests the functional
equivalence of numeric and non-numeric indicia; and (3) that packaging
which dispenses identical articles in order as taught by Klatt suggests
packaging which dispensing dental appliances in the order of their use as
claimed.
IV. Order
Upon consideration of the record, and for the reasons given, it is
ORDERED that the decision of the Examiner rejecting claims 19-21
and 48 as unpatentable under 35 U.S.C. § 103(a) over Chishti
in view of Klein is AFFIRMED;
FURTHER ORDERED that the decision of the Examiner rejecting
claims 27-29 as unpatentable under 35 U.S.C. § 103(a) over Chishti in view
of Klatt is AFFIRMED;
FURTHER ORDERED that the decision of the Examiner rejecting
claims 38 and 39 as unpatentable under 35 U.S.C. § 103(a) over Chishti in
view of Wong and Rohlcke is AFFIRMED;
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FURTHER ORDERED that the decision of the Examiner rejecting
claims 40 and 41 as unpatentable under 35 U.S.C. § 103(a) over Chishti in
view of Wong and Martin is AFFIRMED;
FURTHER ORDERED that the decision of the Examiner rejecting
claims 42 and 43 as unpatentable under 35 U.S.C. § 103(a) over Chishti in
view of Wong, Martin, and Morris is AFFIRMED;
FURTHER ORDERED that the decision of the Examiner rejecting
claims 44 and 47 as unpatentable under 35 U.S.C. § 103(a) over Chishti in
view of Wong is AFFIRMED;
FURTHER ORDERED that the decision of the Examiner rejecting
claims 45 and 46 as unpatentable under 35 U.S.C. § 103(a) over Chishti in
view of Wong and Bates is AFFIRMED; and,
FURTHER ORDERED that 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

sss

TOWNSEND AND TOWNSEND AND CREW, LLP
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San Francisco, CA 94111-3834

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