Ex Parte Kuo

Patent Trial and Appeal Board

May 4, 2016

12346719 (P.T.A.B. May. 4, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/346,719 12/30/2008 Eric Kuo
70410 7590 05/06/2016
ALIGN TECHNOLOGY C/O WAGNER BLECHER LLP
123 WESTRIDGE DRIVE
WATSONVILLE, CA 95076
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.
1065.ALG.US.P 9923
EXAMINER
JOHNSON, CEDRIC D
ART UNIT PAPER NUMBER
2123
NOTIFICATION DATE DELIVERY MODE
05/06/2016 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):
patents@wagnerblecher.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIC KUO
Appeal2014-008547
Application 12/346,719
Technology Center 2100
Before THU A. DANG, NATHAN A. ENGELS, and
JAMES W. DEJMEK, Administrative Patent Judges.
DANG, Administrative Patent Judge.
DECISION ON APPEAL
I. STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-7, 9-20, and 22-28. Claims 8 and 21 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
A. INVENTION
According to Appellant, the invention relates to "the field of virtual
orthodontic treatment planning and visualization" (Spec. 1, 11. 5-7).
Appeal2014-008547
Application 12/346,719
B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary:
1. A method, comprising:
receiving digital representations of initial teeth parameters of a
dentition, wherein the digital represenations comprise a digital set that
is digitally cut to represent individual tooth crowns;
simulating a first orthodontic treatment process on the digital
representations of the initial teeth parameters, wherein the simulating
the first orthodontic treatment process comprises:
virtually applying a first chosen treatment to the initial teeth
parameters of the dentition;
displaying a set of output results from the simulation of the first
orthodontic treatment process;
simulating a second orthodontic treatment process on the set of
output results from the simulation of the first orthodontic treatment
process, wherein the set of output results comprises supplementary
initials teeth parameters, and wherein the simulating the second
orthodontic treatment process comprises:
virtually applying a second chosen treatment to the
supplementary initial teeth parameters, wherein the first chosen
treatment is a different treatment type than the second chosen treatment,
wherein the first chosen treatment and second chosen treatment that are
virtually applied to, respectively, the initial teeth parameters of the
dentition and the supplementary initial teeth parameters of the
dentition, comprise virtual geometric representations of forces that are
applied to the dentition via the first and second chosen treatment; and
displaying a set of output results from the simulation of the
second orthodontic treatment process simultaneously with the
displaying of the set of output results from the simulation of the first
orthodontic treatment process.
2
Appeal2014-008547
Application 12/346,719
C. REJECTION
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Miller
Matov
US 7,074,038 Bl
US 2007/0168152 Al
July 11, 2006
July 19, 2007
Claims 1-7, 9-20, and 22-28 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over the teachings of Matov and Miller.
II. ISSUE
The principal issue before us is whether the Examiner erred in finding
the combination of Matov and Miller teaches or would have suggested
"simulating a first orthodontic treatment process" which comprises
"virtually applying a first chosen treatment"; "simulating a second
orthodontic treatment process" which comprises "virtually applying a
second chosen treatment" wherein the "first chosen treatment is a different
treatment type than the second chosen treatment"; and "displaying a set of
output results from the simulation treatment of the second orthodontic
treatment process simultaneously with the display of the set of output results
from the simulation of the first orthodontic treatment process" (claim 1)
(emphases added).
III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
3
Appeal2014-008547
Application 12/346,719
Matov
1. Matov discloses a process of specifying a course of treatment,
the process comprising: inputting an initial aligner shape, control
parameters and an end configuration for the teeth (i-f l 06); creating and
caching (for reuse) a finite element model of the initial configuration of the
teeth and tissue (i-f l 09); and computationally manipulating the model aligner
to place it over the modeled teeth in the model jaw to create a composite
model in an in-place aligner (i-f 110).
Miller
2. Miller discloses a system for repositioning teeth which
comprises a plurality of individual appliances used with braces, the
appliances being configured to be placed successively on the patient's teeth
and to incrementally reposition the teeth from an initial tooth arrangement,
through a plurality of intermediate tooth arrangements, and to a final tooth
arrangement (Abst.).
3. A hybrid treatment is possible, wherein alternative teeth
alignment devices are used in conjunction with the appliances to provide a
complete treatment (col. 14, 11. 21--43).
IV. ANALYSIS
Appellant contends "both of Appellant's orthodontic treatment
processes are virtually applied" whereas "Miller is unable to display the set
of output results from the simulation of the first orthodontic treatment
process because Miller's first orthodontic treatment process is real and not
virtually applied" (App. Br. 10). Thus, Appellant contends "neither Matov
nor Miller discloses, 'displaying a set of output results from the simulation
4
Appeal2014-008547
Application 12/346,719
of the second orthodontic treatment process simultaneously with the
displaying of the set of output results from the simulation of the first
orthodontic treatment process'" as claimed (App. Br. 9). Further, Appellant
contends "modifying Miller to comprise Appellant's virtual application of a
first chosen treatment instead of Miller's real-time application of the first
chosen treatment would change Miller's principle of operation" (App. Br.
10).
We have considered all of Appellant's arguments and evidence
presented. However, we disagree with Appellant's contentions regarding the
Examiner's rejections of the claims. We agree with the Examiner's findings,
and find no error with the Examiner's conclusion that the claims would have
been obvious over the combined teachings.
Although Appellant contends "Miller's first orthodontic treatment
process is real and not virtually applied" and that "neither Matov nor Miller
discloses" the contested limitation (App. Br. 9-10, emphasis added), the test
for obviousness is what the combined teachings would have suggested to one
of ordinary skill in the art. See In re Merck & Co., Inc., 800 F.2d 1091,
1097 (Fed. Cir. 1986). Here, we agree with the Examiner that the
combination of Matov and Miller teaches or would at least have suggested
the contested limitation.
Matov discloses creating a finite element model of the initial
configuration and computationally manipulating the model aligner to create
a composite model in an in-place aligner (FF 1 ). We find no error with the
Examiner's reliance on Matov for disclosing and suggesting "simulating a
first orthodontic treatment process" which comprises "virtually applying a
first chosen treatment"; and "displaying ... the set of output results from the
5
Appeal2014-008547
Application 12/346,719
simulation of the first orthodontic treatment process" (claim 1; Final Act. 6-
7). Although Appellant contends "Miller's first orthodontic treatment
process is real and not virtually applied" (App. Br. 10), we agree with the
Examiner's reliance on Matov instead for such teaching and suggestion
(Final Act. 6-7). Thus, we agree with the Examiner that the only contested
limitation missing from Matov is the explicit teaching of simulating a second
orthodontic treatment process that is a "different treatment type" from the
first wherein the set of output results therefrom is displayed
"simultaneously" with that of the first orthodontic treatment process (claim
1 ).
However, the Examiner finds, and we agree, Miller discloses and
suggests a "hybrid treatment plan that includes a first treatment appliance
and a second, different type of treatment appliance, along with providing
evaluations of the progress for each appliance" (Final Act. 2-3). In
particular, Miller discloses using a plurality appliances along with braces to
incrementally reposition the teeth (FF 2), wherein alternative teeth alignment
devices are used in conjunction with the appliances to provide a complete
hybrid treatment (FF 3). Thus, we find no error with the Examiner's
reliance on Miller for disclosing and suggesting adding a second orthodontic
treatment process that is a "different treatment type" from the first (Final
Act. 2-3).
Furthermore, Miller discloses incrementally repositioning the teeth
from an initial tooth arrangement, through a plurality of intermediate tooth
arrangements, to a final tooth arrangement (FF 2). That is, Miller discloses,
or at least suggests, determining the treatment processes that comprises
determining the tooth arrangement from the initial arrangement to the final
6
Appeal2014-008547
Application 12/346,719
arrangement (id.). As the Examiner points out, "[t]he Examiner is
interpreting the initial digital data sets used to obtain intermediate digital
data sets as correlating to the use of an appliance or aligned ... to move
teeth from its [sic] initial position to a new position" and "intermediate
digital data sets obtained that are used to arrive at the final digital data sets
are being interpreted as following the aligner with the use of braces to move
the teeth from the new position to its [sic] final position" (Ans. 16-17).
Thus, although Appellant contends "Miller's first orthodontic treatment
process is real and not virtually applied" (App. Br. 10), we find no error with
the Examiner's finding that Miller also discloses or at least suggests
"simulating" the treatment processes which comprises "virtually applying"
the treatments.
We also agree with the Examiner's finding that Matov "discloses the
ability to display four treatment options simultaneously" (Final Act. 2).
Accordingly, we agree with the Examiner's finding that the combination of
Matov and Miller teaches or at least suggests "the combined ability to
simultaneously display any portion of the progress of the hybrid treatment
plan, including the evaluation of the progress of each treatment appliance
and the re-evaluation of the entire treatment plan" (Final Act. 3). That is, we
find no error with the Examiner's conclusion that it would have been
obvious to one of ordinary skill in the art at the time the invention was made
"to combine the digital representation, orthodontic treatment and
simultaneously displaying four treatment options teaching of Matov with the
hybrid treatment option, which includes a first treatment appliance and an
alternative, different treatment appliance teaching of Miller" (Final Act. 11-
12). Accordingly, we agree with the Examiner that the combination of
7
Appeal2014-008547
Application 12/346,719
Matov and Miller discloses and suggests the contested limitations (Final Act.
3).
The Supreme Court guides that the conclusion of obviousness can be
based on the background knowledge possessed by a person having ordinary
skill in the art. KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007).
Although Appellant contends "modifying Miller to comprise Appellant's
virtual application of a first chosen treatment ... would change Miller's
principle of operation" (App. Br. 10), Appellant appears to be viewing the
combination from a different perspective than that of the Examiner. Here,
the issue is whether one of ordinary skill in the art, upon reviewing the
teachings and suggestions of Miller of adding alternative orthodontic
treatment processes that is of a different treatment type (FF 2-3), would
have found it obvious to add a second orthodontic treatment process to that
of Matov (FF 1 ), wherein the set of output results therefrom would then be
simultaneously displayed with that of the first treatment process.
Here, we conclude that it would have been well within the skill of one
skilled in the art in view of Miller's teachings and suggestions of simulating
a plurality of different types of treatments, to modify Matov' s teachings and
suggestions of simulating and virtually applying a treatment, and ultimately
displaying the output results therefrom. Such a modification would have
been well within the skill of the art. See KSR, 550 U.S. at 417. That is, we
find Appellant's invention is a modification of familiar prior art teachings
(as taught or suggested by the cited references) that would have realized a
predictable result. KSR, 550 U.S. at 421.
Additionally, Appellant has presented no evidence that simulating and
virtually applying a plurality of treatments, thus displaying the plurality of
8
Appeal2014-008547
Application 12/346,719
treatment results, would have been "uniquely challenging or difficult for one
of ordinary skill in the art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). The skilled
artisan is "[a] person of ordinary creativity, not an automaton." KSR, 550
U.S. at 421.
Based on this record, we find no error in the Examiner's rejection of
independent claim 1, independent claim 14 falling therewith (App. Br. 12),
and claims 2-7, 9-13, 15-20, and 22-28 respectively depending therefrom
over Matov and Miller.
V. CONCLUSION AND DECISION
We affirm the Examiner's rejections of claims 1-7, 9-20, and 22-28
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)(l )(iv).
AFFIRMED
9