Ex parte Mottate et al.

Board of Patent Appeals and Interferences

May 27, 1998

08054927 (B.P.A.I. May. 27, 1998)

Application for patent filed April 28, 1993. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the
Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MIKIO MOTTATE,
MASAAKI ORIKASA
and
KIKUO NISHI
____________
Appeal No. 95-2721
Application No. 08/054,9271
____________
HEARD: May 5, 1998
____________
Before CALVERT, PATE, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 16. Claim 17 has been allowed.
Appeal No. 95-2721
Application No. 08/054,927
We REVERSE.
Appeal No. 95-2721 Page 3
Application No. 08/054,927
BACKGROUND
The appellants' invention relates to a titanium
orthodontic appliance. An understanding of the invention can
be derived from a reading of exemplary claim 1, which appears
in the appendix to the appellants' brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Takahashi et al. 5,068,003 Nov. 26,
1991
(Takahashi)
Hilgers et al. 5,131,843 July
21, 1992
(Hilgers) (filed May 6,
1991)
Sachdeva et al. 5,232,361 Aug. 3,
1993
(Sachdeva) (filed Apr. 6,
1992)
Claims 1 and 2 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Hilgers.
Claims 1 through 16 stand rejected under 35 U.S.C. § 103
as being unpatentable over Sachdeva in view of Takahashi.
Appeal No. 95-2721 Page 4
Application No. 08/054,927
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellants regarding the above-noted
rejections, we make reference to the final rejection (Paper
No. 6, mailed March 21, 1994) and the examiner's answer (Paper
No. 13, mailed December 22, 1994) for the examiner's complete
reasoning in support of the rejections, and to the appellants'
brief (Paper No. 11, filed September 30, 1994) for the
appellants' arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the
examiner. As a consequence of our review, we make the
determinations which follow.
The anticipation issue
The decision of the examiner to reject claims 1 and 2
under 35 U.S.C. § 102(e) is reversed.
Appeal No. 95-2721 Page 5
Application No. 08/054,927
To support a rejection of a claim under 35 U.S.C. §
102(b), it must be shown that each element of the claim is
found, either expressly described or under principles of
inherency, in a single prior art reference. See Kalman v.
Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789
(Fed. Cir. 1983), cert. denied, 465 U.S. 1026 (1984).
Independent claim 1 is drawn to an orthodontic appliance
formed of a titanium alloy. The titanium alloy comprises a $-
stabilizing element including at least 12 wt% molybdenum to
produce a $-monophase that is stable at body temperature.
Hilgers discloses an orthodontic archwire made of a
titanium molybdenum alloy. Hilgers teaches that they
have found that an orthodontic wire made out of a
titanium molybdenum alloy is capable of providing the
desired physical properties. U.S. Pat. No. 4,197,643
disclose some alloys of the general type suitable for the
present invention. In order to maintain the appropriate
ductility required for an archwire made in accordance
with the present invention, the wire should be made of a
material having a body centered cubic structure having a
maximum of 30% alpha phase form.
Hilgers then discloses that they have found the following
alloy composition to be suitable:
Appeal No. 95-2721 Page 6
Application No. 08/054,927
% By Weight
Mo (Molybelenum) 11.5% ± 2%
Zr (Zirconium) 6.0% ± 2%
Sn (Tin) 4.5% ± 2%
Ti (Titanium) balance

The appellants argue (brief, pp. 4-5) that Hilgers does
not either expressly or under principles of inherency teach a
titanium alloy including "at least 12 wt% molybdenum to
produce a $-monophase that is stable at body temperature." We
agree. While Hilgers does teach a titanium alloy including
"at least 12 wt% molybdenum," Hilgers does not, either
expressly or inherently, teach to produce that alloy as a $-
monophase that is stable at body temperature. Hilgers is
silent as to whether his titanium alloy is produced as a $-
monophase that is stable at body temperature or not. Since a
titanium alloy can be produced as other than a $-monophase
that is stable at body temperature (e.g., mixed " and $
phases, a $-monophase that is not stable at body temperature,
an "-monophase, etc.), Hilgers does not inherently disclose a
$-monophase that is stable at body temperature.
Appeal No. 95-2721 Page 7
Application No. 08/054,927
Since all the limitations of independent claim 1 are not
found in Hilgers, the decision of the examiner to reject
independent claim 1, as well as dependent claim 2, under
35 U.S.C. § 102(e) is reversed.
The obviousness issue
The decision of the examiner to reject claims 1 through
16 under 35 U.S.C. § 103 is reversed.
The test for obviousness is what the combined teachings
of the references would have suggested to one of ordinary
skill in the art. See In re Young, 927 F.2d 588, 591, 18
USPQ2d 1089, 1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d
413, 425, 208 USPQ 871, 881 (CCPA 1981). Furthermore, the
conclusion that the claimed subject matter is obvious must be
supported by evidence, as shown by some objective teaching in
the prior art or by knowledge generally available to one of
ordinary skill in the art that would have led that individual
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). Rejections based
Appeal No. 95-2721 Page 8
Application No. 08/054,927
on § 103 must rest on a factual basis with these facts being
interpreted without hindsight reconstruction of the invention
from the prior art. The examiner may not, because of doubt
that the invention is patentable, resort to speculation,
unfounded assumption or hindsight reconstruction to supply
deficiencies in the factual basis for the rejection. See In
re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177 (CCPA 1967),
cert. denied, 389 U.S. 1057 (1968).
With this as background, we analyze the prior art applied
by the examiner in this rejection of the claims on appeal.
Sachdeva discloses an orthodontic bracket. Sachdeva
teaches (column 4, lines 50-52) that the material for the
orthodontic bracket is not limited to commercially pure
titanium, but may comprise any titanium based alloy.
Takahashi discloses (column 2, lines 16-17) that $-type
titanium alloys such as Ti-15Mo-5Zr and Ti-15Mo-5Zr-3Al have
been used as as an erosion-shielding material for steam
turbine blades made of a Ti-6Al-4V alloy.
Appeal No. 95-2721 Page 9
Application No. 08/054,927
Independent claim 1 is drawn to as an orthodontic
appliance formed of a titanium alloy. Independent claim 7 is
drawn to as an orthodontic appliance comprising a bracket
means formed of a titanium alloy. Independent claim 14 is
drawn to as an orthodontic bracket formed of a titanium alloy.
The titanium alloy recited in claims 1, 7 and 14 comprises a
$-stabilizing element including at least 12 wt% molybdenum to
produce a $-monophase that is stable at body temperature.
The combined teachings of the applied prior art (i.e.,
Sachdeva and Takahashi) do not teach or suggest as an
orthodontic appliance/bracket made from a titanium alloy
including "at least 12 wt% molybdenum to produce a $-monophase
that is stable at body temperature." While the combined
teachings of the applied prior art may suggest a titanium
alloy including "at least 12 wt% molybdenum," the combined
teachings of the applied prior art do not teach or suggest to
produce that alloy as a $-monophase that is stable at body
temperature.
Appeal No. 95-2721 Page 10
Application No. 08/054,927
Since the subject matter of independent claims 1, 7 and
14, as well as dependent claims 2 through 6, 8 through 13, 15
and 16, are not taught or suggested by the applied prior art,
the decision of the examiner to reject claims 1 through 16
under
35 U.S.C. § 103 is reversed.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1 and 2 under 35 U.S.C. § 102(e) is reversed and the
decision of the examiner to reject claims 1 through 16 under
35 U.S.C. § 103 is reversed.
Appeal No. 95-2721 Page 11
Application No. 08/054,927
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
WILLIAM F. PATE, III ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 95-2721 Page 12
Application No. 08/054,927
ALBERT J. BRENEISEN
KENYON & KENYON
ONE BROADWAY
NEW YORK, NY 10004
APPEAL NO. 95-2721 - JUDGE NASE
APPLICATION NO. 08/054,927
APJ NASE
APJ PATE
APJ CALVERT
DECISION: REVERSED
Prepared By: Delores A. Lowe
DRAFT TYPED: 18 May 98
FINAL TYPED:
Heard: May 5, 1998
3 Man Conf