Ex Parte Miller

Board of Patent Appeals and Interferences

Jan 13, 2006

09751577 (B.P.A.I. Jan. 13, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROSS MILLER
____________

Appeal No. 2005-2188
Application No. 09/751,577
____________

ON BRIEF
____________

Before FRANKFORT, NASE, and BAHR, Administrative Patent Judges.
NASE, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection (mailed August
20, 2002) of claims 1 to 38, which are all of the claims pending in this application.

We REVERSE.
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BACKGROUND
The appellant's invention is related generally to the field of orthodontics. More
particularly, the appellant's invention is related to a method and system for repositioning
teeth from an initial tooth arrangement to a final tooth arrangement (specification, p. 1).
A copy of the claims under appeal is set forth in the appendix to the appellant's brief.

The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Bergersen 3,950,851 Apr. 20, 1976
Kurz 4,348,178 Sept. 7, 1982
Andrews 4,591,341 May 27, 1986
Andreiko et al. (Andreiko) 5,454,717 Oct. 3, 1995
Chishti et al. (Chishti) 5,975,893 Nov. 2, 1999

Claims 1 to 5 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Andrews in view of Bergersen, Kurz and Andreiko.

Claims 12 to 31 and 33 to 38 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Andrews in view of Bergersen and Kurz.

Claims 6 to 11 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Andrews in view of Kurz.
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Claim 32 stands rejected under 35 U.S.C. § 103 as being unpatentable over
Andrews in view of Bergersen, Kurz and Andreiko.

Claims 1 to 32 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Andrews in view of Chishti.

Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejections, we make reference to the final
rejection and the answer (mailed November 29, 2004) for the examiner's complete
reasoning in support of the rejections, and to the brief (filed October 20, 2003) for the
appellant's arguments thereagainst.

OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. Upon evaluation of
all the evidence before us, it is our conclusion that the evidence adduced by the
examiner is insufficient to establish a prima facie case of obviousness with respect to
the claims under appeal. Accordingly, we will not sustain the examiner's rejection of
claims 1 to 32 under 35 U.S.C. § 103. Our reasoning for this determination follows.
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In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden
of presenting a prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531,
1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of obviousness is
established by presenting evidence that would have led one of ordinary skill in the art to
combine the relevant teachings of the references to arrive at the claimed invention. See
In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988) and In re
Lintner, 458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972).

The obviousness rejections utilizing Andrews and Kurz
We will not sustain the following rejections under 35 U.S.C. § 103: (1) claims 1 to
5 and 32 as being unpatentable over Andrews in view of Bergersen, Kurz and Andreiko;
(2) claims 12 to 31 and 33 to 38 as being unpatentable over Andrews in view of
Bergersen and Kurz; and (3) claims 6 to 11 as being unpatentable over Andrews in view
of Kurz.

In these rejections, the examiner (final rejection, pp. 2-6) first determined that
Andrews teaches that it is known to use a bracket and wire system (i.e., braces)
followed in series by using a mouthpiece (i.e., positioner). Next, the examiner
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ascertained1 that Andrews does not disclose "the use of successive appliances, other
than a wire and bracket system." The examiner then determined that Kurz teaches
using successive shells including intermediate appliances. Lastly, the examiner
concluded that it would have been obvious to one of ordinary skill in the art to have
modified Andrews to have used successive appliances as taught by Kurz in order to
make use of known methods of moving teeth in series to obtain the desired results.

The appellant argues that the applied prior art does not suggest the claimed
subject matter. We agree.

1 After the scope and content of the prior art are determined, the differences between the prior art
and the claims at issue are to be ascertained. Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ
459, 467 (1966).
All the claims under appeal require, in one manner or another, that both a wire
and bracket system and a plurality of appliances be deployed in seriatim to reposition
teeth from an initial tooth arrangement to a final tooth arrangement. Such a
combination is not suggested by the applied prior art. In that regard, Kurz teaches
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(column 3, lines 22-52) that his successive appliances are used without any other
orthodontic appliances to fully translate teeth from an initial malocclusion position to an
ideal occlusion position. As such, Kurz teaches and suggests replacing the entire
Andrews system of first using a bracket and wire system and then using a mouthpiece
with Kurz's successive appliances. It is our opinion, that Kurz would not have made it
obvious at the time the invention was made to a person having ordinary skill in the art to
have first used Andrew's bracket and wire system and then to have used Kurz's
successive appliances.

In our view, the only suggestion for modifying Andrews in the manner proposed
by the examiner to meet the above-noted limitation stems from hindsight knowledge
derived from the appellant's own disclosure. The use of such hindsight knowledge to
support an obviousness rejection under 35 U.S.C. § 103 is, of course, impermissible.
See, for example, W. L. Gore and Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553,
220 USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).

For the reasons set forth above, the decision of the examiner to reject claims 1 to
38 under 35 U.S.C. § 103 as set forth above is reversed.2

2 We have reviewed the references to Bergersen and Andreiko but find nothing therein which
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The obviousness rejection utilizing Andrews and Chishti
We will not sustain the rejection of claims 1 to 32 under 35 U.S.C. § 103 as being
unpatentable over Andrews in view of Chishti.

makes up for the deficiencies of Andrews and Kurz discussed above.
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In this rejection, the examiner (final rejection, p. 6) first determined that Andrews
teaches that it is known to use a bracket and wire system (i.e., braces) followed in
series by using a mouthpiece (i.e., positioner). Next, the examiner ascertained that
Andrews does not disclose "a mouthpiece made from a polymeric shell."3 Chishti
teaches that it is known to form mouthpieces in shells 13 from polymers and to use a
plurality of shells to move teeth. Lastly, the examiner concluded that it would have been
obvious to one of ordinary skill in the art to have modified Andrews to include using a
plurality of successive polymeric shell as taught by Chishti in order to make use of well
known mouthpiece structures for moving teeth in a desired manner.

The appellant argues that the applied prior art does not suggest the claimed
subject matter. We agree.

3 This ascertainment of the differences is incomplete and conflicts with the differences found by
the examiner in the previously treated rejections. Andrews does not disclose the use of successive
appliances following the use of a wire and bracket system.
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All the claims under appeal require, in one manner or another, that both a wire
and bracket system and a plurality of appliances be deployed in seriatim to reposition
teeth from an initial tooth arrangement to a final tooth arrangement. Such a
combination is not suggested by the applied prior art. In that regard, Chishti teaches
that his successive appliances replace braces to fully translate teeth from an initial tooth
arrangement to a final tooth arrangement. As such, Chishti teaches and suggests
replacing the entire Andrews system of first using a bracket and wire system and then
using a mouthpiece with Chishti's successive appliances. It is our opinion, that Chishti
would not have made it obvious at the time the invention was made to a person having
ordinary skill in the art to have first used Andrew's bracket and wire system and then to
have used Chishti's successive appliances. As in the previous rejections, it is our view
that the only suggestion for modifying Andrews in the manner proposed by the examiner
to arrive at the claimed invention stems from impermissible hindsight knowledge derived
from the appellant's own disclosure.

For the reasons set forth above, the decision of the examiner to reject claims 1 to
32 under 35 U.S.C. § 103 as being unpatentable over Andrews in view of Chishti is
reversed.
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CONCLUSION
To summarize, the decision of the examiner to reject claims 1 to 38 under
35 U.S.C. § 103 is reversed.
REVERSED

CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
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TOWNSEND AND TOWNSEND AND CREW, LLP (018563)
TWO EMBARCADERO CENTER, EIGHTH FLOOR
SAN FRANCISCO, CA 94111-3834

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