Ex Parte Love

Board of Patent Appeals and Interferences

Jan 31, 2011

11457173 (B.P.A.I. Jan. 31, 2011)

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.
11/457,173 07/13/2006 Philip Love 06057 6750
34111 7590 02/01/2011
Maxey Law Offices, PLLC
15500 Roosevelt Blvd.
SUITE 305
CLEARWATER, FL 33760
EXAMINER
SINGH, SUNIL K
ART UNIT PAPER NUMBER
3732
MAIL DATE DELIVERY MODE
02/01/2011 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 PHILIP LOVE
____________________

Appeal 2009-009365
Application 11/457,173
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, STEFAN STAICOVICI, and FRED A.
SILVERBERG, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-009365
Application 11/457,173
2
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 5-24. Claims 1-4 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
Claim 17, reproduced below, is illustrative of the claimed subject
matter:
17. A dental combination for attaching a dental restoration, the dental
combination comprising:
a dental restoration having a surface to be bonded to a tooth and an
outward facing surface which becomes a surface of the tooth;
an optical fiber; and
a dental adhesive connecting a proximal end of said optical fiber to
said outward facing surface of said dental restoration with said optical fiber
extending generally perpendicular from said outward facing surface and
terminating at a distal end.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Oliva
Foser
US 5,040,981
US 5,782,632
Aug. 20, 1991
Jul. 21, 1998
Fischer
McLaren
US 2004/0214131 A1
US 2006/0115783 A1
Oct. 28, 2004
Jun. 1, 2006

REJECTIONS
I. Claims 5-13 and 21-23 are rejected under 35 U.S.C. § 103(a) as
unpatentable over McLaren and Fischer.
II. Claim 14 is rejected under § 103(a) as unpatentable over McLaren,
Fischer, and Oliva.
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III. Claims 17, 19, and 20 are rejected under § 103(a) as unpatentable
over McLaren and Oliva.
IV. Claims 15, 16, and 24 are rejected under § 103(a) as unpatentable
over McLaren, Fischer, Oliva, and Foser.
V. Claim 18 is rejected under § 103(a) as unpatentable over McLaren,
Oliva, and Foser.

SUMMARY OF DECISION
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION.

OPINION
REJECTION I: Claims 5-13 and 21-23
With respect to rejection I, Appellant argues that the Examiner's
proposed combination of McLaren and Fischer does not address the
limitation requiring a step of "attaching a light transmissive member" to the
"outward facing surface of the dental restoration," as required by claims 5
and 21. Appeal Br. 8, 10. The Examiner's position is that the light
transmissive members of both McLaren and Fischer "abut[] against the
dental restoration" and are thus "temporarily joined/connected to that dental
restoration." Ans. 8.
Thus, the first issue is whether the abutting of the light transmissive
members of McLaren and/or Fischer satisfies the limitation of claims 5 and
21 requiring a step of "attaching a light transmissive member" to the
"outward facing surface of the dental restoration."
The Examiner notes that "attach" means "to join or connect." Ans. 8.
The Examiner then finds that McLaren and Fischer describe light
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Application 11/457,173
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transmissive members that attach to the dental restorations "at that moment
when the members abut against the restorations." Id. The Examiner's
position is unreasonable. One of ordinary skill in the art would not consider
"attaching" to read on mere surface contact. There is no evidence set forth in
the record before us indicating that the light transmissive member of
McLaren or Fischer attaches to the dental restoration as claimed. As such,
we are persuaded that the Examiner erred in finding that McLaren and
Fischer, in combination, describe a step of attaching a light transmissive
member to the dental restoration as required by independent claims 5 and 21
and dependent claims 6-13, 22, and 23. We do not sustain the rejection.

REJECTION II: Claim 14
Claim 14 depends from claim 5 and further adds a step of "applying a
dental adhesive" to facilitate the "attaching" step of claim 5. The Examiner
found that McLaren and Fischer fail to describe the step of "applying a
dental adhesive" to facilitate the attaching step of claim 5, but that Oliva
describes a device attaching an outward surface of a dental restoration to a
tool using a dental adhesive. Ans. 5. The Examiner concluded that it would
have been obvious to adhere the tip of the transmissive member of McLaren,
as modified by Fischer, to the dental restoration using a dental adhesive, as
taught in Oliva, "in order to more easily maneuver and place the dental
restoration on a dental surface." Ans. 5.
Appellant argues that the Examiner does not provide a reason why a
person of ordinary skill in the art would look to Oliva for the use of an
adhesive. Appeal Br. 11. However, as we have identified above, the
Examiner did give a reason: to easily maneuver and place the dental
restoration. Ans. 5. Appellant provides no argument against this reason,
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which is explicitly supported by Oliva. See, e.g., col. 2, ll. 25-31 (noting it
would be "desirable to provide a device for holding and manipulating a
ceramic veneer, especially during the placement of the veneer"), col. 3, ll.
36-41 (noting a "tacky substance provides sufficient adherence"). Thus, we
are not apprised of error in the Examiner's rejection of claim 14 as
unpatentable over McLaren, Fischer, and Oliva. We sustain the rejection.

REJECTION III: Claims 17, 19, and 20
The Examiner rejected independent claim 17 as unpatentable over a
proposed modification of the device of McLaren in view of the teachings of
Oliva to include a dental adhesive connecting the dental restoration to a
proximal end of an optical fiber. Ans. 6. The Examiner concluded that it
would have been obvious to adhere the tip of the transmissive member of
McLaren to the dental restoration using a dental adhesive "in order to more
easily maneuver and place the dental restoration on a dental surface," as
taught in Oliva. Id.
Appellant argues that "the proposed combination is improper because
to combine in the manner proposed would frustrate the operation of
McLaren." Appeal Br. 13. In particular, Appellant argues that it would be
difficult for a dentist to properly position the veneer, and to remove the
excess adhesive once the veneer is attached to the tooth, because the veneer
would still be attached to the light producing device, which would be
awkward. Appeal Br. 13-14; Reply Br. 3. It appears that Appellant considers
this awkwardness to be a teaching away from the combination. Id. However,
teaching away requires a reference to actually criticize, discredit, or
otherwise discourage the claimed solution. See In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004) (prior art does not teach away from claimed subject
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matter merely by disclosing a different solution to a similar problem unless
the prior art also criticizes, discredits, or otherwise discourages the solution
claimed). There is no teaching away apparent to us in McLaren, nor has
Appellant identified any such teaching away.
Further, if there are tradeoffs involved regarding features, costs,
manufacturability, or the like, such things do not necessarily prevent the
proposed combination. See 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."); Winner Int'l Royalty Corp. v. Wang, 202 F.3d
1340, 1349 n.8 (Fed. Cir. 2000) ("The fact that the motivating benefit comes
at the expense of another benefit, however, should not nullify its use as a
basis to modify the disclosure of one reference with the teachings of another.
Instead, the benefits, both lost and gained, should be weighed against one
another."). Even assuming the proposed combination of the devices would
indeed be "awkward" to a user, Appellant has not proffered evidence or a
line of reasoning tending to show that the alleged awkwardness would have
discouraged a person of ordinary skill in the art from making the
combination to attain the potential advantage of performing the procedure
without a dental assistant, as taught by Oliva (col. 6, ll. 49-52).
Consequently, we are not persuaded that the Examiner's conclusion that the
subject matter of clam 17 is obvious in view of the teachings of McLaren
and Oliva was in error. We sustain the rejection.
Appellant separately argues dependent claims 19 and 20. Appeal Br.
14-16. However, Appellant merely states for each that the "features of [the
claims] are not found." Id. Given that Appellant has not identified any faults
in the Examiner's findings, which indeed identify where the features of
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claims 19 and 20 are discussed in the references (Ans. 11), we are not
apprised of error in the Examiner's conclusion that claims 19 and 20 are
unpatentable over the proposed combination of McLaren and Oliva. We
sustain the rejection.

REJECTION IV: Claims 15, 16, and 24
Claim 15 depends from claim 14, further requiring that the adhesive is
a wax. The Examiner found that Foser teaches a dental wax adhesive. Ans.
6. Appellant argues that Foser does not teach how the wax could be used to
attach a light transmissive member to a dental restoration. Appeal Br. 18.
Such an argument appears to be holding the Examiner to the old TSM
standard; such a standard is not required. KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 415 (2007) ("We begin by rejecting [TSM]"). The Examiner relies
on Foser to teach an adhesive dental wax. See, e.g., Foser, col. 1, ll. 24-33.
The Examiner reasons that it would have been obvious to use Foser's
adhesive dental wax as the particular adhesive in the McLaren/Fischer/Oliva
combination because such a wax is commonly used. Ans. 6-7. Appellant
alleges that this reasoning is "conclusionary at best" but provides no reason
as to why it is deficient. Appeal Br. 18. It seems highly logical to select a
known dental wax adhesive for use as a dental adhesive. See, e.g., KSR, 550
U.S. at 421 ("a person of ordinary skill has good reason to pursue the known
options within his or her technical grasp"). Appellant gives no reason to
believe otherwise. Further, the application of a dental wax adhesive to a light
transmissive member so as to adhere the light transmissive member to a
dental restoration is so simple as to belie any notion that this would be
beyond the technical grasp of a person of ordinary skill in the art. Thus, we
are not persuaded that the Examiner's conclusion that the subject matter of
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claim 15 is obvious in view of the teachings of McLaren, Fischer, Oliva, and
Foser was in error. We sustain the rejection.
Claim 16 depends from claim 15 and further requires that the wax is a
light transmissive wax. The Examiner concluded that it would have been
obvious to one of ordinary skill in the art to select a "light transmitting" (sic:
light-transmissive) wax, on the basis of selecting "a known material on the
basis of its suitability for intended use." Ans. 7. Appellant argues that
McLaren, Fischer, and Oliva are absent a teaching of wax as an adhesive.
Appeal Br. 20. Thus, Appellant reasons, one of ordinary skill would not
select transparent wax. Id. Appellant's argument fails to consider, however,
that Oliva teaches selecting a dental adhesive (col. 5, l. 39-66) and Foser
teaches a particular dental adhesive, namely, a dental wax adhesive (col. 1,
ll. 24-33). Thus, it is readily apparent that wax is a known dental adhesive.
Given that light has to penetrate the adhesive in order to operate in this
context, it would have been obvious, as the Examiner concludes, to select a
light transmissive wax. Appellant's Specification does not suggest that
Appellant invented a light transmissive adhesive wax. See Spec., para. 27
"adhesive 16 is similar to that of orthodontic wax, a commonly available
dental product" [emphasis added]. As such, we are not persuaded that the
Examiner's conclusion that the subject matter of claim 16 is obvious in view
of the teachings of McLaren, Fischer, Oliva, and Foser was in error. We
sustain the rejection.
Claim 24 depends from claim 21. As in the rejection of claim 14, the
Examiner found that it would have been obvious to select the dental wax of
Foser as the adhesive in a combination of the teachings of McLaren, Fischer,
and Oliva. Ans. 6-7. Appellant first argues that Foser does not provide a
teaching or suggestion. Appeal Br. 21. As we addressed above, this is no
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longer the appropriate legal standard in obviousness rejections. Appellant
next argues that the Examiner's reason for "modifying
McLaren/Fischer/Oliva" is "conclusionary at best and does not provide an
articulated reasoning … to support the modification." Id. However, the
Examiner has provided reasoning: it would have been obvious to use Foser's
adhesive dental wax as the particular adhesive in the McLaren/Fischer/Oliva
combination because such a wax is commonly used (as an adhesive). Ans. 7.
Appellant's argument sets forth no reason why the Examiner's stated reason
is insufficient to support the conclusion of obviousness. Thus, we are not
persuaded that the Examiner's conclusion that the subject matter of claim 24
is obvious in view of the teachings of McLaren, Fischer, Oliva, and Foser
was in error. We sustain the rejection.

REJECTION V: Claim 18
Claim 18 depends from claim 17 and further specifies that the
adhesive is wax. The Examiner found that it would have been obvious to
select the dental wax of Foser as the adhesive in a combination of the
teachings of McLaren and Oliva. Ans. 7-8. Appellant first argues that Foser
does not provide a teaching or suggestion. Appeal Br. 23. As we addressed
above, this is no longer the appropriate legal standard in obviousness
rejections. Appellant next argues that the Examiner's reason for "modifying
McLaren/Fischer[sic]/Oliva" is "conclusionary at best and does not provide
an articulated reasoning … to support the modification." Id. However, the
Examiner has provided reasoning: it would have been obvious to use Foser's
adhesive dental wax as the particular adhesive in the McLaren/Oliva
combination because such a wax is commonly used (as an adhesive). Ans. 7.
See KSR, 550 U.S. at 421 ("a person of ordinary skill has good reason to
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pursue the known options within his or her technical grasp"). Appellant's
argument sets forth no reason why the Examiner's stated reason is
insufficient to support the conclusion of obviousness. Thus, we are not
persuaded that the Examiner's conclusion that the subject matter of claim 18
is obvious in view of the teachings of McLaren, Oliva, and Foser was in
error. We sustain the rejection.

NEW GROUND OF REJECTION
Claims 5-13 and 21-23 are unpatentable over McLaren, Fischer, and Oliva
Pursuant to 37 C.F.R. § 41.50(b), we reject claims 5-13 and 21-23
under 35 U.S.C. § 103(a) as unpatentable over McLaren, Fischer, and Oliva.
As discussed above, we are persuaded of error in the Examiner's
rejection of independent claims 5 and 21 as unpatentable over McLaren and
Fischer (Rejection I), but we have sustained rejections of claims 14 and 24,
which depend from claims 5 and 21, respectively, as unpatentable over
McLaren, Fischer, and Oliva, and over McLaren, Fischer, Oliva, and Foser
(Rejections II and IV, respectively). The conclusion that the subject matter
of dependent claims 14 and 24 would have been obvious is also a conclusion
that the subject matter of independent claims 5 and 21, from which they
depend, would have been obvious. See Ormco v. Align Tech., 498 F.3d 1307,
1319 (Fed. Cir. 2007) (when a dependent claim is "found to have been
obvious, the broader claims . . . must also have been obvious"). Therefore,
we enter a new ground of rejection of independent claims 5 and 21 under 35
U.S. C. § 103(a) as unpatentable over McLaren, Fischer, and Oliva pursuant
to our authority under 37 C.F.R. § 41.50(b). While the rejection of claim 24
(Rejection IV) relied on the additional teachings of Foser to address the
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additional limitation in claim 24 that the adhesive is a dental wax, claim 21
does not specifically require a dental wax adhesive.
The deficiency in Rejection I is that McLaren and Fischer do not
describe a step of "attaching a light transmissive member... [to] the dental
restoration" as recited in claims 5 and 21. As we discussed with respect to
Rejections II and IV, however, Oliva describes attaching an outward surface
of a dental restoration to a positioning tool using a dental adhesive. Oliva,
col. 6, ll. 21-25. It would have been obvious to adhere the tip of the
transmissive member of McLaren as modified by Fischer, which acts as a
positioning tool (Fischer, para. 54, fig. 7B), to the dental restoration using a
dental adhesive as taught in Oliva, in order to more easily maneuver and
place the dental restoration on a dental surface. See, e.g., Oliva, col. 3, ll. 41-
47; see also KSR, 550 U.S. at 417 ("if a technique has been used to improve
one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill"). Therefore,
we reject claims 5 and 21 under 35 U.S.C. § 103(a) as unpatentable over
McLaren, Fischer, and Oliva.
With respect to the additional limitations recited in dependent claims
6-13, 22, and 23, we adopt the Examiner's findings, analysis, and
conclusions (Ans. 3-5), which have not been challenged by Appellant, as our
own. Consequently, we reject claims 6-13, 22, and 23 under 35 U.S.C. §
103(a) as unpatentable over McLaren, Fischer, and Oliva.

DECISION
For the above reasons, the Examiner's decision is affirmed as to
claims 14-20 and 24 and reversed as to claims 5-13 and 21-23. We enter a
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new ground of rejection for claims 5-13 and 21-23 under 35 U.S.C. § 103(a)
as unpatentable over McLaren, Fischer, and Oliva.
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).

FINALITY OF DECISION
Regarding the affirmed rejections, 37 C.F.R. § 41.52(a)(1) provides
"Appellant may file a single request for rehearing within two months of the
date of the original decision of the Board."
In addition to affirming the Examiner's rejections of one or more
claims, this decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to the
examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
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review under 35 U.S.C. § 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

mls

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