10643748 (B.P.A.I. Sep. 15, 2011)

Ex Parte Oxman et al

Board of Patent Appeals and InterferencesSep 15, 2011

10643748 (B.P.A.I. Sep. 15, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE ___________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ___________ Ex parte JOEL D. OXMAN, NAIMUL KARIM and STEVEN C. KECK1 ___________ Appeal 2010-002908 Application 10/643,748 Technology Center 3700 ___________ Before ROBERT A. CLARKE, CHARLES N. GREENHUT and MICHAEL C. ASTORINO, Administrative Patent Judges. CLARKE, Administrative Patent Judge. DECISION ON APPEAL 1 The real party in interest is the 3M Innovative Properties Company. App. Br. 1. Appeal 2010-002908 Application 10/643,748 3 STATEMENT OF THE CASE 1 Joel D. Oxman et al. (Appellants) seek our review under 35 U.S.C. 2 § 134 of the Examiner’s rejection of claims 39 and 42-71. App. Br. 2. We 3 have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) (2002). 4 We AFFIRM. 5 6 THE INVENTION 7 Claims 39 and 45 are the only independent claims on appeal. Claim 45, 8 reproduced below with emphasis added, is illustrative: 9 45. A method of preparing a dental article, the method 10 comprising: 11 selecting a dental article form having a self-supporting 12 structure comprising a first shape that includes a reservoir, 13 wherein the self-supporting structure is formed from an 14 organic composition having sufficient malleability to be 15 formed into a second shape, wherein the organic 16 composition gives the self-supporting structure its self-17 supporting and malleable characteristics; 18 filling the reservoir with one or more hardenable 19 dental materials; 20 placing the dental article form filled with one or more 21 hardenable dental materials on a subject's tooth structure; 22 at least partially hardening the hardenable material in 23 the reservoir to form the dental article; 24 optionally customizing the dental article outside of the 25 subject's mouth; 26 cementing the dental article to the subject's tooth 27 structure; and 28 removing the dental article form from the dental 29 article; 30 Appeal 2010-002908 Application 10/643,748 4 wherein the dental article form is reshaped while in 1 the subject's mouth after filling the reservoir with the 2 hardenable dental material. 3 Claim 39 recites a method of preparing a dental article including, 4 “removing the dental article form from the article; wherein the dental article 5 form is reshaped while in the subject's mouth after filling the reservoir with 6 the hardenable dental material.” 7 REFERENCES 8 The prior art relied upon by the Examiner in rejecting the claims on 9 appeal is: 10 Neustadter US 3,565,387 Feb. 23, 1971 Simor US 3,585,723 Jun. 22, 1971 Kahn US 3,949,476 Apr. 13, 1976 Ivanov US 4,113,499 Sep. 12, 1978 Wilson US 5,487,663 Jan. 30, 1996 Uthoff US 5,102,332 Apr. 7, 1992 11 REJECTIONS 12 A. Claims 45, 46, 48-55, 58, 60-66 and 68-71 stand rejected under 35 13 U.S.C. § 103(a) as being unpatentable over Simor Neustadter and 14 Wilson. Ans. 4. 15 B. Claims 39, 42-44, 47, 59 and 67 stand rejected under § 103(a) as 16 being unpatentable over Simor, Neustadter, Ivanov and Wilson. 17 (Ans. 3 and 6). 18 C. Claim 56 stands rejected under § 103(a) as being unpatentable over 19 Simor, Neustadter, Wilson and Uthoff. (Ans. 6). 20 Appeal 2010-002908 Application 10/643,748 5 D. Claim 57 stands rejected under § 103(a) as being unpatentable over 1 Simor, Neustadter, Wilson and Kahn. Id 2 E. Claims 39 and 42-71 were provisionally rejected on the ground of 3 nonstatutory obviousness-type double patenting as being 4 unpatentable over claims 2-15, 17, 19-25, 41, 44, 47-54, 56-60, 79-5 80 and 107-134 of Application Number 10/219,398. (Ans. 7).2 6 7 ISSUES 8 Independent claim 39 recites a method of preparing a dental article 9 including, “removing the dental article form from the article; wherein the 10 dental article form is reshaped while in the subject's mouth after filling the 11 reservoir with the hardenable dental material.” Independent claim 45 recites 12 a method of preparing a dental article including “removing the dental article 13 form from the dental article; wherein the dental article form is reshaped 14 while in the subject's mouth after filling the reservoir with the hardenable 15 dental material.” This appeal turns on the following issues. 16 Whether the Examiner’s rationale supporting the conclusion that to 17 add a step of removing the reshaped outer shell while retaining the step of 18 2 Since claims on which the provisional double patenting rejection was based have now issued (contra App. Br. 18), we do not consider this rejection “provisional.” As Appellants point out (App. Br. 18), some of the claims cited by the Examiner have been cancelled or withdrawn prior to this Appeal. Independent claims 47 and 54 of the 10/219,398 application have matured into claims 7 and 31 of U.S. Patent 7,674,850 B2 to Karim (“Karim ‘850”). Regarding the issues raised by Appellants in this Appeal, claims 7 and 31 of Karim ‘850 are exemplary. Appeal 2010-002908 Application 10/643,748 6 Simor of reshaping of the outer shell would have been obvious to one having 1 ordinary skill in the art has rational underpinnings? App. Br. 9, 11. 2 Whether the Examiner erred in concluding that providing the ‘398 3 application’s claims with the use of a form that is capable of being filled 4 would have been obvious to one having ordinary skill in the art? App. Br. 5 18. 6 7 ANALYSIS 8 Rejections under 35 U.S.C. § 103 9 A. Rejection of Claims 45, 46, 48-55, 58, 60-66 and 68-71 10 Simor discloses a crown 10 that is reshaped in the patient’s mouth to: 11 (1) bend the lower edge portion of the crown inwardly to provide 12 a feather edge at the cervix of the crown, providing a smooth 13 transition from the periphery of the tooth 21 to the exterior of 14 the crown, with no shoulder or sharp edge. This facilitates the 15 healing of the gingiva adjacent the tooth 21, and is more 16 comfortable to the patient 17 18 (col. 6, ll. 55-66) and (2) alter the occlusal surface by the opposing teeth “so 19 that a properly mating contour is produced” (col. 8, ll. 66-71). 20 The Examiner found that Wilson teaches that it is known to use a 21 crown form as part of the final crown as taught by Simor, or in the 22 alternative to remove the form, and concluded that to remove the form or 23 outer shell of Simor would have been obvious to one having ordinary skill in 24 order to make use of known alternatives in the art to obtain the desired final 25 dental article. Ans. 5. 26 Appellants argue that Simor teaches to reshape a crown per se and that 27 Simor does not teach using a crown form or to reshape a crown form. App. 28 Appeal 2010-002908 Application 10/643,748 7 Br. 9. We agree. Appellants also argue that Wilson teaches to reshape a 1 dental article after removal of a crown form. App. Br. 11, Reply. Br. 3. We 2 agree. 3 The reshaping of the outer surface of the shell of Simor is disclosed to 4 form a crown that facilitates healing and comfort and to provide a properly 5 mating surface in use. The Examiner proposes that one skilled in the art 6 would have found it obvious to remove the outer shell while retaining the 7 reshaping of the outer shell’s shape in the mouth of the patient step. Since 8 Simor teaches that reshaping of its outer shell is to promote healing and 9 comfort by providing a smooth transition from the outer shell to the tooth 10 surface and proper mating between the outer shell and the opposing teeth, it 11 is unclear what the rational basis is to retain the reshaping of the outer 12 surface of the crown steps of Simor while removing the outer shell including 13 its reshaped outer surface. 14 Wilson was relied upon merely to teach that retaining or removing an 15 outer shell were alternatives, and does not provide a basis for retaining the 16 reshaping step. The Examiner does not rely on Neustadter for any teaching 17 that would make up for the deficiency in Simor and Wilson discussed above. 18 Accordingly we find that the Examiner has not articulated a reasonable basis 19 with rational underpinnings as to how the Simor, Wilson and Nestradter 20 references could be combined to render the claimed subject matter prima 21 facie obvious. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). 22 Therefore, we are constrained to reverse the rejection of claims 45, 46, 48-23 55, 58, 60-66 and 68-71 under 35 U.S.C. § 103(a). 24 25 B. Rejection of Claims 39, 42-44, 47, 59 and 67 26 Appeal 2010-002908 Application 10/643,748 8 Turning to the rejection of claims 39, 42-44, 47, 59 and 67 under 1 § 103, the Examiner finds Ivanov teaches using a surfactant. Ans 3. The 2 Examiner’s finding does not remedy the deficiency as pointed out in 3 connection with rejection of claim 45. Therefore, we also do not sustain the 4 rejection of claims 39, 42-44, 47, 59 and 67 as being unpatentable over 5 Simor in view of Neustadter, Ivanov and Wilson. 6 7 C. Rejection of Claim 56 8 Turning to the rejection of claim 56 under § 103(a), the Examiner 9 finds Uthoff teaches using a package 2. Ans. 6. The Examiner’s finding 10 does not remedy the deficiency as pointed out in connection with the 11 rejection of claim 45. Therefore, we also do not sustain the rejection of 12 claim 56 as being unpatentable over Simor in view of Neustadter, Wilson 13 and Uthoff. 14 15 D. Rejection of Claim 57 16 Turning to the rejection of claim 57 under § 103(a), the Examiner 17 finds Khan teaches using a handle removed from the base. Ans. 6. The 18 Examiner’s finding does not remedy the deficiency as pointed out in 19 connection with the rejection of claim 45. Therefore, we also do not sustain 20 the rejection of claim 57 as being unpatentable over Simor in view of 21 Neustadter, Wilson and Kahn. 22 23 Rejection on the ground of Nonstatutory Obviousness Type Double 24 Patenting 25 Appeal 2010-002908 Application 10/643,748 9 E. Rejection of Claims 39 and 42-71 under Nonstatutory Obviousness-1 Type Double Patenting Rejection 2 The Examiner found that the claims of Karim ‘850 and Karim ‘423 3 teach using an organic composition that is self-supporting and malleable. 4 The Examiner also found that Neustadter teaches to use a form that is 5 capable of being filled. The Examiner concluded that it would have been 6 obvious to one having ordinary skill in the art to modify the claims of Karim 7 ‘850 and Karim ‘423 to include a form as shown by Neustadter in order to 8 obtain the desired size and shape. The Examiner further found that 9 including a reservoir, selecting of a specific material, use of a handle and 10 shaping in the mouth would have been obvious to one of ordinary skill in the 11 art in order to supply the needed filling material, as a routine matter of 12 choice, to better manipulate the form and in view of the well-known shaping 13 to make adjustments to reconstructive work in the mouth. Ans. 7. 14 Appellants argue that application ‘398 is pending and that each of the 15 independent claims under consideration in that application recite, inter alia, 16 a composition in the form of a hardenable self-supporting structure having a 17 first shape and sufficient malleability to be formed into a second shape. 18 App. Br. 18. Initially we note there is nothing intrinsically wrong with 19 relying on claims directed to a composition to support a double-patenting 20 rejection of a claim directed to the method of use of that composition. See 21 e.g., Geneva Pharmaceuticals v. GlaxoSmithKline, 349 F. 3d 1373, 1385-86 22 (Fed. Cir. 2003). 23 Appellants also argue that Neustadter teaches the use of materials that 24 may or may not be malleable and that it shows a form that requires a 25 physical means to change shape. App. Br. 18, 19. However, "[n]on-26 Appeal 2010-002908 Application 10/643,748 10 obviousness cannot be established by attacking references individually 1 where the rejection is based upon the teachings of a combination of 2 references." In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). 3 Since the Examiner relied upon claims 7 and 31 of Karim ‘850 for the user 4 of a malleable, self-supporting structure, and not Neustadter, Appellants 5 arguments are not persuasive. Lastly, any arguments not presented are 6 waived. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) 7 (informative). 8 For the foregoing reasons, Appellants have not persuaded us of error 9 in the rejection of claims 39 and 42-71 on the ground of obviousness-type 10 double patenting. 11 12 CONCLUSION 13 The Examiner’s rationale supporting the conclusion that to add a step 14 of removing the reshaped outer shell while retaining the step of Simor of 15 reshaping the outer shell would have been obvious to one having ordinary 16 skill in the art does not have rational underpinnings. We do not sustain the 17 rejection of (A) Claims 45, 46, 48-55, 58, 60-66 and 68-71 under § 103(a) as 18 being unpatentable over Simor in view of Neustadter, and Wilson; (B) 19 Claims 39, 42-44, 47, 59 and 67 under § 103(a) as being unpatentable over 20 Simor in view of Neustadter, Ivanov and Wilson; (C) Claim 56 under 21 § 103(a) as being unpatentable over Simor in view of Neustadter, Wilson 22 and Uthoff; and (D) Claim 57 under § 103(a) as being unpatentable over 23 Simor in view of Neustadter, Wilson and Kahn. 24 The Examiner did not err in rejecting claims 39 and 42-71 on the 25 ground of nonstatutory obviousness-type double patenting as being 26 Appeal 2010-002908 Application 10/643,748 11 unpatentable over claims 1-64 of Karim ‘850 and claims 1-26 of Karim ‘423 1 in view of Neustadter. We sustain the rejection rejection of claims 39 and 2 42-71 on the ground of nonstatutory obviousness-type double patenting as 3 being unpatentable over claims 1-64 of Karim ‘850 and claims 1-26 of 4 Karim ‘423 in view of Neustadter. 5 6 DECISION 7 The Examiner’s rejection of claims 39 and 42-71 is affirmed. 8 9 AFFIRMED 10 11 12 13 14 mls 15 9/15/2011, EAST Version: 3.0.0.6 9/15/2011, EAST Version: 3.0.0.6 9/15/2011, EAST Version: 3.0.0.6 9/15/2011, EAST Version: 3.0.0.6 9/15/2011, EAST Version: 3.0.0.6 9/15/2011, EAST Version: 3.0.0.6 9/15/2011, EAST Version: 3.0.0.6 9/15/2011, EAST Version: 3.0.0.6 9/15/2011, EAST Version: 3.0.0.6 9/15/2011, EAST Version: 3.0.0.6 9/15/2011, EAST Version: 3.0.0.6 9/15/2011, EAST Version: 3.0.0.6 9/15/2011, EAST Version: 3.0.0.6 9/15/2011, EAST Version: 3.0.0.6 9/15/2011, EAST Version: 3.0.0.6 9/15/2011, EAST Version: 3.0.0.6 9/15/2011, EAST Version: 3.0.0.6 9/15/2011, EAST Version: 3.0.0.6 9/15/2011, EAST Version: 3.0.0.6 9/15/2011, EAST Version: 3.0.0.6 9/15/2011, EAST Version: 3.0.0.6 9/15/2011, EAST Version: 3.0.0.6 9/15/2011, EAST Version: 3.0.0.6 9/15/2011, EAST Version: 3.0.0.6 9/15/2011, EAST Version: 3.0.0.6 9/15/2011, EAST Version: 3.0.0.6 9/15/2011, EAST Version: 3.0.0.6 9/15/2011, EAST Version: 3.0.0.6 9/15/2011, EAST Version: 3.0.0.6 9/15/2011, EAST Version: 3.0.0.6 9/15/2011, EAST Version: 3.0.0.6 9/15/2011, EAST Version: 3.0.0.6 9/15/2011, EAST Version: 3.0.0.6 9/15/2011, EAST Version: 3.0.0.6 9/15/2011, EAST Version: 3.0.0.6 9/15/2011, EAST Version: 3.0.0.6 9/15/2011, EAST Version: 3.0.0.6 9/15/2011, EAST Version: 3.0.0.6 9/15/2011, EAST Version: 3.0.0.6 9/15/2011, EAST Version: 3.0.0.6 9/15/2011, EAST Version: 3.0.0.6 9/15/2011, EAST Version: 3.0.0.6 9/15/2011, EAST Version: 3.0.0.6 9/15/2011, EAST Version: 3.0.0.6 9/15/2011, EAST Version: 3.0.0.6 9/15/2011, EAST Version: 3.0.0.6 9/15/2011, EAST Version: 3.0.0.6 9/15/2011, EAST Version: 3.0.0.6 9/15/2011, EAST Version: 3.0.0.6 9/15/2011, EAST Version: 3.0.0.6 9/15/2011, EAST Version: 3.0.0.6 9/15/2011, EAST Version: 3.0.0.6 9/15/2011, EAST Version: 3.0.0.6