Ex Parte Massad

Board of Patent Appeals and Interferences

Mar 2, 2011

10720608 (B.P.A.I. Mar. 2, 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.
10/720,608 11/24/2003 Joseph J. Massad M3330.003 4237
24118 7590 03/03/2011
HEAD, JOHNSON & KACHIGIAN
228 W 17TH PLACE
TULSA, OK 74119
EXAMINER
WILSON, JOHN J
ART UNIT PAPER NUMBER
3732
MAIL DATE DELIVERY MODE
03/03/2011 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 JOSEPH J. MASSAD
____________________

Appeal 2009-008104
Application 10/720,608
Technology Center 3700
____________________

Before LINDA E. HORNER, STEVEN D.A. McCARTHY and
KEN B. BARRETT, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL1

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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STATEMENT OF THE CASE 1
The Appellant appeals under 35 U.S.C. § 134 from the decision of the 2
Examiner finally rejecting claims 6 and 9-18. The Examiner rejects claims 3
6, 10 and 12 under 35 U.S.C. § 102(b) as being anticipated by, or, in the 4
alternative, under 35 U.S.C. § 103(a) as being unpatentable over, Laszlo (US 5
4,608,020, issued Aug. 26, 1986). The Examiner also rejects under § 103(a) 6
claims 9, 11, 13, 16 and 18 as being unpatentable over Opotow (US 7
2,309,270, issued Jan. 26, 1943) and Laszlo; claim 14 as being unpatentable 8
over Laszlo and Faust (US 3,826,002, issued Jul. 30, 1974); claim 15 as 9
being unpatentable over Opotow, Laszlo and Faust; and claim 17 as being 10
unpatentable over Opotow, Laszlo and Lüth (US 5,188,529, issued Feb. 23, 11
1993). The Examiner has withdrawn claims 1-5, 7 and 8 from consideration. 12
We have jurisdiction under 35 U.S.C. § 6(b). 13
We AFFIRM. 14
Claim 9 is illustrative of the claimed subject matter: 15
9. A removable dental prosthesis, 16
comprising: 17
a special denture tooth housing for insertion 18
into the removable dental prosthesis, said tooth 19
housing provided with sides and a bottom forming 20
a receptacle located centrally between the sides 21
and above the bottom, and at least one undercut 22
notch on the sides of the receptacle in the tooth 23
housing; and 24
a central bearing device removably attached 25
by an adhesive material to said tooth housing, said 26
central bearing device receivable in a mouth of a 27
patient to maintain a proper relative vertical 28
spacing relationship between a maxillary and an 29
opposing mandibular of said dental prosthesis 30
through all eccentric movements such that the 31
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contour of an occlusal surface of said special tooth 1
conforms to and is molded by interaction with 2
opposing teeth of the patient. 3
4
ISSUES 5
Only issues and findings of fact contested by the Appellant have been 6
considered. See Ex Parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI 2010). 7
Two issues raised in this appeal are: 8
First, does Laszlo describe a method which necessarily 9
produces a denture including a special denture tooth provided 10
with sides and a bottom forming a receptacle and at least one 11
undercut notch in the receptacle, the contour of an occlusal 12
surface of the denture tooth being identical to an occlusal 13
surface conforming to and having been molded by interaction 14
with opposing teeth? (See App. Br. 11.) 15
Second, do the evidence and technical reasoning 16
underlying the rejection of independent claim 9 adequately 17
support the conclusion that the subject matter of claim 9 would 18
have been obvious? (See App. Br. 17.) 19
20
FINDINGS OF FACT 21
The record supports the following findings of fact (“FF”) by a 22
preponderance of the evidence. 23
1. We adopt and incorporate by reference the findings of the 24
Examiner at page 3, line 15 (“Laszlo teaches . . .”) through line 19 (“. . . 25
provides a notch.”). These findings are supported by column 3, lines 16-23 26
of Laszlo and by Figures 1-3 of Laszlo. 27
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2. Laszlo describes a method for manufacturing an artificial 1
denture. The method starts with a denture baseplate 1 of wax containing six 2
frontal teeth 2 and four lateral teeth 3, 3' on each side. Laszlo describes the 3
teeth 2, 3, 3' as being embedded in the wax material of the dental baseplate 1 4
to a certain depth so as to be held firmly in the baseplate 1. (Laszlo, col. 3, 5
ll. 16-20.) 6
3. Laszlo describes the four lateral teeth 3, 3' on each side as being 7
provided with an anatomically true outer contour. The lateral teeth 3, 3' are 8
hollowed out to define receptacles 30 surrounded by relatively thin walls or 9
sides 31. (Laszlo, col. 3, ll. 20-23.) 10
4. Figures 2 and 3 of Laszlo depict the receptacle 30 in each of the 11
lateral teeth 3, 3' as being hourglass-shaped. Figures 2 and 3 depict the 12
lower portions of the receptacles 30 as flaring downwardly and outwardly. 13
This downward and outward flare of each receptacle 30 defines an undercut 14
notch extending circumferentially about the inner surfaces of the relatively 15
thin wall 31 surrounding the receptacle 30. This downwardly and outwardly 16
flared lower portion of the receptacle 30 necessarily would tend to retain 17
hardened wax or resin in the receptacle due to the undercut nature of the 18
lower portion, even though Laszlo does not expressly disclose the 19
performance of this function. (Cf. Ans. 6 (finding that “the show bottom of 20
the hourglass shape of [Laszlo’s receptacles 30] will inherently function as 21
an undercut notch.”).) 22
5. Laszlo’s method includes the steps of positioning the dental 23
baseplate 1 on the bed of a dental articulator. An upper denture having solid 24
teeth is placed onto the movable upper portion of the articulator. (Laszlo, 25
col. 3, ll. 23-28.) The receptacles of the lateral teeth 3, 3' are filled with wax 26
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4. The articulator is closed. The upper portion of the articulator is moved to 1
stimulate the masticating motion of the jaws. Laszlo teaches that this 2
movement serves to remove superfluous wax from the top of the teeth by 3
rubbing action of the solid teeth in the upper denture. (Laszlo, col. 3, ll. 34-4
42.) 5
6. After the upper denture and the dental baseplate 1 are removed 6
from the articulator, both the upper denture and the baseplate 1 are placed in 7
the mouth of a patient. The patient’s chewing movements remove additional 8
wax from the teeth 3, 3'. Laszlo teaches that this step yields a remaining 9
tooth surface on each lateral tooth 3, 3' corresponding to the final shape of 10
the ideal denture. (Laszlo, col. 3, ll. 45-51.) 11
7. Laszlo teaches enclosing the dental baseplate 1 in a mold and 12
heating the mold. The heating melts the wax and leaves a cavity 13
corresponding to the shape of the baseplate 1 and the hollow portions of the 14
tubular teeth. (Laszlo, col. 3, ll. 52-59.) 15
8. Laszlo teaches casting the denture in two steps. A tooth-16
colored plastic, that is, resin material is initially poured to fill the hollow 17
teeth. Subsequently, a gum-colored material is poured to fill the baseplate 18
cavity. (Laszlo, col. 3, ll. 60-63.) 19
9. We adopt the Examiner’s finding that the final plastic forming 20
the bottom of each lateral tooth, that is, the interface between the tooth-21
colored and gum-colored materials, will constitute the bottom of each lateral 22
tooth. (Ans. 6.) Each lateral tooth will have sides and a bottom. 23
10. Implicit in the Examiner’s finding that the product of Laszlo’s 24
method anticipates the subject matter of claim 6 is a finding that the contour 25
of the occlusal surfaces of the lateral teeth of a denture fabricated by 26
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Laszlo’s method would be identical to the contour of an occlusal surface 1
“conforming to and having been molded by interaction with opposing teeth.” 2
We adopt this finding. 3
11. As the Examiner points out, the method disclosed by the 4
Appellant’s Specification for forming the subject matter of claims 6 and 9 5
“fills a hollow pre-tooth with resin and before the resin hardens, shapes the 6
resin by occluding the tooth with the opposing tooth to shape the occlusal 7
surface forming the final tooth.” (Ans. 6; see also Spec. 14, l. 21 – Spec. 15, 8
l. 6.) Similarly, Laszlo “fills a hollow pre-tooth with wax, shapes the wax 9
against the opposing tooth and then melts the wax forming a cast in which is 10
cast the final tooth.” (Ans. 7; see also FF 5-8.) The similarity between the 11
method disclosed by the Specification and the method described by Laszlo 12
provides a sound basis for the Examiner to infer that the occlusal surfaces of 13
wax fillings formed by Laszlo’s method prior to the casting of the denture 14
are identical to surfaces molded by interaction with opposing teeth in 15
accordance with the method disclosed in the Specification. It follows that 16
the Examiner has a sound basis for inferring that the occlusal surfaces of the 17
resinous teeth formed by casting in the mold formed around the wax fillings 18
are identical to surfaces molded by interaction with opposing teeth in 19
accordance with the method disclosed in the Specification. Since the 20
Appellant provides no persuasive evidence to the contrary, we adopt the 21
inference as fact. 22
12. We adopt and incorporate by reference the Examiner’s findings 23
at page 4, line 7 (“Opotow shows . . .”) through line 12 (“. . . a tooth housing 24
with a receptacle.”). 25
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13. Opotow discloses a device and method capable of determining 1
the proper relationship of plates of completed dentures as regard the bite or 2
occlusion of the patient. (Opotow 1, first column, ll. 34-39.) Opotow 3
describes the method as one to determine whether the occlusion of the 4
dentures is balanced under biting pressure. “Any variation of gum tissue not 5
accounted for in the construction of the dentures will now become apparent, 6
inasmuch as softened tissue will give in response to the pressure of the 7
dental plate thereagainst and there will be no balanced occlusion of teeth 8
under biting stress.” (Opotow 2, first column, ll. 30-35.) 9
10
ANALYSIS 11
First Issue 12
Claim 6 recites a 13
special denture tooth for use in a removable dental 14
prosthesis, comprising: a special denture tooth for 15
insertion into a removable dental prosthesis, said 16
denture tooth provided with sides and a bottom 17
forming a receptacle located centrally between the 18
sides and atop the bottom, at least one undercut 19
notch in the receptacle to retain a resin filling the 20
receptacle and the undercut notch to form the 21
occlusal surface of the denture tooth, the contour 22
of said occlusal surface conforming to and having 23
been molded by interaction with opposing teeth. 24
(Emphasis added.) 25
Laszlo describes a method which necessarily produces a denture 26
including a special denture tooth provided with sides and a bottom forming a 27
receptacle. (FF 3 and 9.) In addition, the contours of the occlusal surfaces 28
of the lateral teeth of dentures formed by Laszlo’s method are identical to 29
occlusal surfaces conforming to and having been molded by interaction with 30
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opposing teeth. (FF 10 and 11.) Since claim 6 recites a structure, namely, a 1
removable dental prosthesis, and since the recitation limiting the contour of 2
the occlusal surface to that “having been molded by interaction with 3
opposing teeth” is in product-by-process form, the latter finding implies that 4
any denture formed by Laszlo’s method meets the last italicized limitation of 5
claim 6. See SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 6
1318 (Fed. Cir. 2006)(“[A]nticipation by an earlier product patent cannot be 7
avoided by claiming the same product more narrowly in a product-by-8
process claim.”). 9
Laszlo’s method also necessarily produces a denture having at least 10
one undercut notch in the receptacle. More precisely, the ordinary usage of 11
the term “notch” is sufficiently broad to include a V-shaped indentation or 12
hollow in a surface (WEBSTER’S THIRD NEW INT’L DICTIONARY (G&C 13
Merriam 1971)(“notch, entry 1, def. 1a)) or, more generally, an undercut (id. 14
(“notch,” entry 1, def. 1c)). The ordinary usage of the term “undercut” is 15
sufficiently broad to include cutting away material from the underside of an 16
object so as to leave an overhanging portion in relief (id. (“undercut,” entry 17
1, def. 2) or the result of cutting away the underside of anything (id., 18
(“undercut,” entry 2, def. 1)). The Appellant does not identify any passage 19
of the Specification formally defining the term “undercut notch” more 20
narrowly than its ordinary usage. Neither does the Appellant present any 21
persuasive evidence that the term “undercut notch” would be understood 22
more narrowly in the pertinent art. 23
This ordinary usage is sufficiently broad to include the downwardly 24
and outwardly flared lower portions of the receptacle 30 of the lateral teeth 25
of dentures made by Laszlo’s method. In addition, the downwardly and 26
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outwardly flared lower portions are at least capable of retaining a resin 1
filling the receptacle and the undercut notch. Therefore, the lateral teeth 2
formed by Laszlo’s method necessarily have undercut notches. (FF 4.) 3
4
Second Issue 5
The Examiner correctly finds that Laszlo describes a method which 6
necessarily produces a denture including a special denture tooth housing 7
meeting the limitations of the first indented clause of claim 9. (FF 1.) 8
Although the special denture tooth housings disclosed in Laszlo are filled 9
with resin during the course of Laszlo’s method, the finished denture 10
includes the tooth housings. (See FF 8.) The Examiner also correctly finds 11
that Opotow describes a method in which a central bearing device meeting 12
the limitations of the second indented clause of claim 9 is removably 13
attached to a completed denture. (FF 12.) 14
The Examiner is correct in concluding that it would have been 15
obvious “to modify Opotow to include a tooth housing as shown by Laszlo 16
in order to better obtain the desired occlusion by an art known alternative 17
method.” (Ans. 4.) Recently, the Supreme Court reaffirmed that, if a claim 18
which “’simply arranges old elements with each performing the same 19
function it had been known to perform’ and yields no more than one would 20
expect from such an arrangement, the combination is obvious.” KSR Int’l 21
Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007)(quoting Sakraida v. Ag Pro, 22
Inc., 425 U.S. 273, 282 (1976)). Here, it would have been obvious to 23
perform Opotow’s method for determining the proper relationship of dental 24
plates using as a starting material a completed denture fabricated by Laszlo’s 25
method. The removable attachment of the central bearing device to Laszlo’s 26
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denture during the course of performing Opotow’s method would have 1
produced a denture meeting all limitations of claim 9. 2
Laszlo’s method would produce a denture having the same special 3
denture tooth housings regardless whether Opotow’s method were 4
subsequently applied to the denture. The Appellant does not appear to allege 5
that Opotow’s method would function differently if applied to a denture 6
made by Laszlo’s method than if applied to a denture made by another 7
method. In view of this, the results of the combination would have been 8
predictable and combination itself would have been obvious. The Appellant 9
provides no persuasive evidence or argument suggesting that one of ordinary 10
skill could not have performed Opotow’s method on a denture fabricated by 11
Laszlo’s method. 12
13
CONCLUSIONS 14
Laszlo describes a method which necessarily produces a denture 15
including a special denture tooth provided with sides and a bottom forming a 16
receptacle and at least one undercut notch in the receptacle, the contour of an 17
occlusal surface of the denture tooth being identical to an occlusal surface 18
conforming to and having been molded by interaction with opposing teeth. 19
We sustain the rejections of claims 6, 10 and 12 under § 102(b) as being 20
anticipated by, or, in the alternative, under § 103(a) as being unpatentable 21
over, Laszlo. 22
The evidence and technical reasoning underlying the rejection of 23
independent claim 9 adequately support the conclusion that the subject 24
matter of claim 9 would have been obvious. We sustain the rejections of 25
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claims 9, 11, 13, 16 and 18 under § 103(a) as being unpatentable over 1
Opotow and Laszlo. 2
The Appellant provides no arguments suggesting that claim 14 might 3
be patentable over Laszlo and Faust if claim 6 is anticipated by Laszlo. 4
Neither does the Appellant provide any argument suggesting that claim 15 5
might be unpatentable over Opotow, Laszlo and Faust; or that claim 17 6
might be patentable over Opotow, Laszlo and Lüth, if claim 9 is 7
unpatentable over Opotow and Laszlo. We sustain the rejection of claim 14 8
under § 103(a) as being unpatentable over Laszlo and Faust; the rejection of 9
claim 15 under § 103(a) as being unpatentable over Opotow, Laszlo and 10
Faust; and the rejection of claim 17 under § 103(a) as being unpatentable 11
over Opotow, Laszlo and Lüth. 12
13
DECISION 14
We AFFIRM the Examiner’s decision rejecting claims 6 and 9-18. 15
No time period for taking any subsequent action in connection with 16
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 17
§ 1.136(a)(1)(iv). 18
19
AFFIRMED 20
21
22
Klh 23
24
25
HEAD, JOHNSON & KACHIGIAN 26
228 W 17TH PLACE 27
TULSA, OK 74119 28