Ex Parte Liu et al

Patent Trial and Appeal Board

Sep 17, 2012

11258465 (P.T.A.B. Sep. 17, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/258,465 10/24/2005 Frank Zhenhuan Liu 8061.ALG.US.P 2627
70410 7590 09/17/2012
ALIGN TECHNOLOGY C/O WAGNER BLECHER LLP
123 WESTRIDGE DRIVE
WATSONVILLE, CA 95076
EXAMINER
MAI, HAO D
ART UNIT PAPER NUMBER
3732
MAIL DATE DELIVERY MODE
09/17/2012 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte FRANK ZHENHUAN LIU, GANG LIU,
WENJIA LIANG, WAHAB WAQAS and HUAFENG WEN
____________

Appeal 2011-006003
Application 11/258,465
Technology Center 3700
____________

Before DONALD E. ADAMS, FRANCISCO C. PRATS, and JEFFREY N.
FREDMAN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims 1, 4, 8-14, 16-18,
and 21-35 (App. Br. 3; Ans. 2). We have jurisdiction under 35 U.S.C.
§ 6(b).
STATEMENT OF THE CASE
The claims are directed to a method of making a layered dental model
(claims 4, 8-13, 26-31, and 32-35); a method of making a dental model
(claims 16-18); and a dental model (claims 22-24). Claims 1, 8, 10, 12, 21,
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24, 30, and 33 are representative and are reproduced in the Claims Appendix
of Appellants’ Brief.
Claims 1, 13, 32, and 35 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Severy.1
Claims 8 and 34 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Severy and Stephan.2
Claim 33 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Severy and Sharp.3
Claims 1, 4, 8, 9, 13, 14, 16, 17, 25, 28, 29, 31-33, and 35 stand
rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of
Brennan4 and Severy.
Claims 10, 11, 18, 26, and 27 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Brennan, Severy, and Bryan.5
Claim 12 stand rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Brennan, Severy, and Jermyn.6
Claims 30 and 34 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Brennan, Severy, and Stephan.
Claims 21-23 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Brennan, Bryan, and Severy.

1 Severy, US 4,529,384, issued July 16, 1985.
2 Stephan et al., US 4,374,076, issued February 15, 1983.
3 Sharp et al., US 5,911,580, issued June 15, 1999.
4 Brennan et al., US 4,657,992, issued April 14, 1987.
5 Bryan, US 4,943,237, issued July 24, 1990.
6 A. C. Jermyn, US 3,436,829, issued April 8, 1969.
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Claim 24 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Brennan, Bryan, Severy, and Rudo.7
We affirm.
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Examiner’s findings concerning the scope and content of the prior art
are set forth in the Answer (Ans. 4-9). We provide the following for
emphasis.
FF 2. Appellants disclose that “[t]he methods and devices described herein
may be used to create accurate dental models … [that] may be generated
from a subject’s actual dentation or another model” (Spec. 8: ¶ [0034]
(emphasis added)).
FF 3. Severy suggests “[m]ethods for performing operations on a die or
dental model” (Severy, Abstract).
FF 4. Examiner finds that Severy suggests a method of making a layered
dental model, as set forth in Appellants’ claim 1, wherein the method
comprises, inter alia, the steps of applying a first-layer of model forming
material to a cast, allowing the first layer to cure, applying a second layer of
model-forming material, allowing the second layer to cure, applying a third
layer of model-forming material, and allowing the third layer to cure (Ans.
4).
FF 5. Examiner finds that each of Severy’s layers “inherently shrink after
curing” (Ans. 5).

7 Rudo, US 7,186,760 B2, issued March 6, 2007.
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FF 6. Severy’s “invention provides an inexpensive material … which does
not exhibit an unacceptable degree of shrinkage” (Severy, col. 2, l. 66 – col.
3, l. 4).
FF 7. Severy fails to suggest the application of a fourth layer of model-
forming material to the cast (see generally Ans. 4-5).
FF 8. Brennan’s “invention relates to a method for making cast epoxy resin
bodies to close tolerances … for use in making … tooth models for the
preparation of dental crowns” (Brennan, col. 1, ll. 5-10).
FF 9. Examiner finds that Brennan suggests a method of making a layered
dental model, as set forth in Appellants’ claim 1, wherein the method
comprises, inter alia, the steps of brushing a first layer onto a dental model
and then pouring a second layer onto the first layer that was applied to the
dental model, wherein the poured layer is inherently “horizontally adjacent
to the vertical component of the first layer” (Ans. 6).
FF 10. Examiner finds that Brennan fails to suggest applying a “second
layer, or a third layer, after at least partially curing the first layer” and relies
on Severy to make up for this deficiency in Brennan (id.; FF 3-6).
ANALYSIS
The rejection over Severy:
Based on Severy Examiner concludes that, at the time Appellants’
claimed invention was made, it would have been prima facie obvious to a
person of ordinary skill in this art to “modify Severy by adding a fourth
layer or more layers of model-forming material to the cast as required by a
bigger cast or as desired in order to make the layers thinner and therefore of
higher quality” (Ans. 5). Examiner reasons that the addition of “more than
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three layers is merely a duplication of parts which has been held to be within
the skill of an artisan. … In re Harza, 275 F.2d 669 … (CCPA 1960)” (id.).
Appellants contend that Severy fails to suggest “a method of making a
layered dental model” (App. Br. 13). We are not persuaded (FF 3-4; Cf. FF
2).
Appellants contend that Severy fails to suggest a method of making a
layered dental model wherein “a fourth layer of model-forming material [is
applied] horizontally adjacent to the third layer, after at least partially curing
the third layer” (App. Br. 13). We are not persuaded for the reasons set forth
by Examiner (Ans. 5). For the same reasons we are not persuaded by
Appellants’ contention that Severy teaches away from Appellants’ claimed
invention (App. Br. 13).
Appellants contend that Severy fails to suggest a method wherein the
first, second, third, and forth layers are allowed to shrink (App. Br. 13). We
are not persuaded. Appellants fail to establish that Severy’s layers do not
shrink when cured (see FF 5-6). In this regard, we find that Severy’s
suggestion that the materials do “not exhibit an unacceptable degree of
shrinkage,” suggests that the materials do shrink to some extent (FF 6).

The combination of Severy and Stephan:
Having found no deficiency in Severy, we are not persuaded by
Appellants’ contention that Stephan fails to make up for the deficiencies in
Severy discussed above (App. Br. 16).

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The combination of Severy and Sharp:
Having found no deficiency in Severy, we are not persuaded by
Appellants’ contention that Sharp fails to make up for the deficiencies in
Severy discussed above (App. Br. 17).

The combination of Brennan and Severy:
Based on the combination of Brennan and Severy Examiner concludes
that, at the time Appellants’ claimed invention was made, it would have
been prima facie obvious to a person of ordinary skill in this art to “modify
Brennan to include applying the second layer, and a third layer, after curing
the first and second layers as taught by Severy in order to make use of a
known method of forming a multilayered model in the art” (Ans. 6).
For the foregoing reasons we are not persuaded by Appellants’
contentions regarding Severy (App. Br. 18-19). For the same reasons we are
not persuaded by Appellants’ contention that “Brennan does [not] overcome
the shortcomings of Severy” (id. at 19; see FF 8-10).
Notwithstanding Appellants’ contention to the contrary, Brennan’s
“invention relates to a method for making cast epoxy resin bodies to close
tolerances … for use in making … tooth models for the preparation of dental
crowns” (FF 8; Cf. App. Br. 20). As Examiner explains, methods of
preparing layered dental models were known to those of ordinary skill in this
art and the combination of Brennan with Severy is nothing more than the
combination of familiar elements according to known methods with an
expectation of yielding predictable results (see Ans. 13). See KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar
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elements according to known methods is likely to be obvious when it does
no more than yield predictable results.”).

The combination of Brennan, Severy, and Bryan:
For the reasons set forth above, we are not persuaded by Appellants’
contentions regarding Brennan and Severy alone or in combination (App.
Br. 21-23 and 28-30). Having found no deficiency in the combination of
Brennan and Severy, we are not persuaded by Appellants’ contention that
Bryan fails to “overcome the shortcomings of Brennan and Severy” (id. at
22 and 29).

The combination of Brennan, Severy, and Jermyn:
For the reasons set forth above, we are not persuaded by Appellants’
contentions regarding Brennan and Severy alone or in combination (App.
Br. 23-25). Having found no deficiency in the combination of Brennan and
Severy, we are not persuaded by Appellants’ contention that Jermyn fails to
“overcome the shortcomings of Brennan and Severy” (id. at 24).

The combination of Brennan, Severy, and Stephan:
For the reasons set forth above, we are not persuaded by Appellants’
contentions regarding Brennan and Severy alone or in combination (App.
Br. 25-27). Having found no deficiency in the combination of Brennan and
Severy, we are not persuaded by Appellants’ contention that Jermyn fails to
“overcome the shortcomings of Brennan and Severy” (id. at 27).

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The combination of Brennan, Bryan, Severy, and Rudo:
For the reasons set forth above, we are not persuaded by Appellants’
contentions regarding Brennan and Severy alone or in combination (App.
Br. 30-32). Having found no deficiency in the combination of Brennan and
Severy, we are not persuaded by Appellants’ contention that Jermyn fails to
“overcome the shortcomings of Brennan and Severy” (id. at 31).

CONCLUSION OF LAW
The preponderance of evidence on this record supports a conclusion
of obviousness.
The rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable
over Severy is affirmed. Claims 13, 32, and 35 are not separately argued
and fall together with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
The rejection of claim 8 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Severy and Stephan is affirmed. Claim 34 is not
separately argued and falls together with claim 8. 37 C.F.R.
§ 41.37(c)(1)(vii).
The rejection of claim 33 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Severy and Sharp is affirmed.
The rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Brennan and Severy is affirmed. Claims 4, 8, 9, 13,
14, 16, 17, 25, 28, 29, 31-33, and 35 are not separately argued and fall
together with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
The rejection of claim 10 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Brennan, Severy, and Bryan is affirmed. Claims 11,
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18, 26, and 27 are not separately argued and fall together with claim 10. 37
C.F.R. § 41.37(c)(1)(vii).
The rejection of claim 12 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Brennan, Severy, and Jermyn is affirmed.
The rejection of claim 30 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Brennan, Severy, and Stephan is affirmed. Claim
34 is not separately argued and fall together with claim 30. 37 C.F.R.
§ 41.37(c)(1)(vii).
The rejection of claim 21 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Brennan, Bryan, and Severy is affirmed. Claims 22
and 23 are not separately argued and fall together with claim 21. 37 C.F.R.
§ 41.37(c)(1)(vii).
The rejection of claim 24 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Brennan, Bryan, Severy, and Rudo is affirmed.

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED
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