Ex Parte Pumphrey et al

Patent Trial and Appeal Board

Aug 31, 2017

13092136 (P.T.A.B. Aug. 31, 2017)

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.
13/092,136 04/21/2011 Willis Pumphrey 5936
50947 7590 09/01/2017
GILBRETH & ASSOCIATES, P.C.
PO BOX 2428
BELLAIRE, TX 77402-2428
EXAMINER
EIDE, HEIDI MARIE
ART UNIT PAPER NUMBER
3732
MAIL DATE DELIVERY MODE
09/01/2017 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 PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIS PUMPHREY, JARRETT PUMPHREY, and PAUL DINH
Appeal 2016-000968
Application 13/092,136
Technology Center 3700
Before STEFAN STAICOVICI, BRANDON J. WARNER, and
SEAN P. O’HANLON, Administrative Patent Judges.
O’HANLON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Willis Pumphrey et al. (Appellants)1 appeal under 35 U.S.C. § 134
from the Examiner’s final decision rejecting claims 1—36. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 The Appeal Brief identifies ClearCorrect, LLC as the real party in interest.
Br. 3.
Appeal 2016-000968
Application 13/092,136
SUMMARY OF THE INVENTION
Appellants’ disclosure is directed to “orthodontic apparatus and
methods.” Spec. 1 5. Claims 1, 5, 14, 15, 19, 27, 31, 35, and 36 are
independent. Claim 1, reproduced below from page 21 (Claims Appendix)
of the Appeal Brief, is illustrative of the claimed subject matter:
1. A system for repositioning teeth from an initial tooth
arrangement to a final tooth arrangement, said system
comprising a plurality of dental incremental position adjustment
appliances including:
(A) an introductory appliance having a tooth receiving
cavity geometry conforming to the initial tooth arrangement
selected to maintain the teeth in the initial tooth position; and,
(B) one or more appliances having different tooth
receiving cavity geometries, the geometries selected to
progressively reposition the teeth from the initial tooth
arrangement to the final tooth arrangement.
REJECTIONS2
Claims 1, 3—10, 12—15, 17—27, and 29-36 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Chishti (US 5,975,893, issued
Nov. 2, 1999) and Sachdeva (US 2007/0254257 Al, published Nov. 1,
2007).
Claims 2, 11, 16, and 28 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Chishti, Sachdeva, and O’Bryan (US 2006/0177789
Al, published Aug. 10, 2006).
2 We note that claim 31 appears to be missing one or more steps, as the
claim ends in a semicolon rather than a period. Br. 32 (Claims App.). The
Examiner and Appellants may wish to clarify claim 31 in the event of further
prosecution of this patent application.
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ANALYSIS
Rejection Based on Chishti and Sachdeva
The Examiner finds that Chishti discloses a system and method as
recited in the independent claims, including, inter alia, a set of a plurality of
dental incremental position adjustment appliances, each having a different
tooth receiving cavity geometry, and communicating data to effect
manufacture of the appliances. Final Act. 2—3. The Examiner finds that
Chishti
does not disclose an introductory appliance having a tooth
arrangement that maintains the teeth in the initial tooth position
and the step of gathering data regarding the fit or confirming
the fit of the introductory appliance and forming or obtaining
appliances with different tooth receiving cavity geometries only
after confirming the fit, using the information in the fabricating
and designing of the appliances.
Id. at 3. The Examiner finds that Sachdeva discloses a template representing
teeth in an original position, verifying that the template fit and placement on
the patient’s teeth is accurate, and using fit information to design and
fabricate additional templates. Id. at 4 (citing Sachdeva 12, 61). The
Examiner clarifies that the rejection relies on Sachdeva “to teach the use of
an appliance that represents the current shape and position of the teeth to
obtain data to inform the formation, design, or fabrication of successive
appliances,” but “do[es] not rely upon Sachdeva to teach the particular
geometry of appliances, which are disclosed by [Chishti], and are well-
known in the art.” Id. at 6; see also Ans. 2 (“Sachdeva is provided to teach
an introductory appliance, the template, of the teeth in the original
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position.”). The Examiner reasons that it would have been obvious to one of
ordinary skill
to modify the appliances of [Chishti] to include an introductory
appliance, as part of a set, with geometry conforming to the
initial tooth arrangement as well as the steps of gathering data
regarding the fit of the introductory appliance and using this
data to inform the forming, obtaining, or fabricating [of]
successive appliances as taught by the template and method of
Sachdeva, in order to verify the accuracy of the placement of
the appliance prior to the production of final appliances, as
suggested by Sachdeva.
Final Act. 4. The Examiner further reasons that “the production of a trial,
introductory, or test unit to verify the accuracy of a manufacturing practice is
very well known and well within the level of ordinary skill of one in the art
at the time of invention,” that “[a] reasonable practitioner exercising
common sense, would be motivated to verify the accuracy of a manufactured
appliance prior to committing to producing successive appliances in the
same manufacturing process,” that “[i]t is well within the level of ordinary
skill in the art to apply the teaching of Sachdeva to the appliance of [Chishti]
such that an introductory appliance is provided to the patient to ensure that
the final appliances fit as desired, or to give the patient the ability to become
accustomed to the device prior to the application of orthodontic force,” and
that “creating an introductory or ‘training’ form of a device is customary,
and amounts to applying a known technique to a known device ready for
improvement to yield predictable results.” Id. at 4—5, 7; see also Ans. 2—3.
Appellants traverse, arguing that the Examiner misinterprets the
disclosure of Sachdeva. Br. 10—15. Appellants characterize the rejection as
“reading Sachdeva [paragraph 61 as] verifying the placement of the
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template, and if the template is not placed correctly then using that
information in the ‘design and fabrication of further templates.’” Id. at 11.
Appellants assert that this paragraph of Sachdeva does not make such a
teaching, but, rather, “Sachdeva teaches that for a bad placement, one makes
adjustment in the placement (not in the design and fabrication of further
appliances).” Id. at 13. Appellants further characterize Sachdeva Figure 18
as showing that, “after an unacceptable [template] placement,” Sachdeva
“adjusts placement and then returns to step 106 [(i.e., apply orthodontic
template to surface of teeth)],” but “Sachdeva does not disclose or suggest
retum[ing] to step 102 (i.e., the template design step).” Id. at 14. Thus,
Appellants conclude, the Sachdeva template:
(1) only teaches better placement of the template, and has no
bearing on the orthodontic brackets to be applied;
(2) does not teach modification to the design of further
template[s] or brackets (or anything else for that matter);
(3) does not have “tooth receiving geometry conforming to the
initial tooth arrangement”;
(4) does not maintain the teeth in their “initial tooth
arrangement”; and
(5) does not move the teeth back to their initial tooth
arrangement.
Id. at 14—15.
Our review in this appeal is limited only to the above-listed rejections
and issues raised by Appellants. Arguments not made are waived. See 37
C.F.R. § 41.37(c)(l)(iv); see also MPEP § 1205.02. Accordingly, as
Appellants do not contest the Examiner’s findings regarding Chishti,
Appellants have waived any arguments regarding the same. We also note
that Appellants acknowledge that Chishti discloses a system for
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repositioning a patient’s teeth that comprises a plurality of individual
appliances that incrementally reposition the teeth from an initial tooth
arrangement, through a plurality of intermediate tooth arrangements, to a
final tooth arrangement. Spec. 111.
Claims 1, 3, and 4
As explained above, Appellants’ arguments concern the Examiner’s
interpretation of Sachdeva paragraph 61 as disclosing the steps of
confirming the fit of the introductory appliance and using information
regarding such fit in the design or fabrication of additional appliances.
These arguments are not persuasive of error in the Examiner’s rejection of
claim 1 because claim 1 does not include recitations directed to these
features, and limitations not appearing in the claims cannot be relied upon
for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). For the
same reason, Appellants’ argument that Sachdeva “does not move the teeth
back to their initial tooth arrangement” (Br. 15) is not persuasive of error.
Regarding Appellants’ arguments that Sachdeva’s template “does not
have ‘tooth receiving geometry conforming to the initial tooth arrangement’”
and “does not maintain the teeth in their ‘initial tooth arrangement’” (Br.
15), we note that “[njonobviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references.” In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986). The obviousness inquiry asks “whether the claimed
inventions are rendered obvious by the teachings of the prior art as a whole.”
In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc).
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Here, the Examiner relies on Chishti to disclose a set of dental
appliances with tooth receiving cavity geometries and communicating data
to effect manufacture of the appliances. Final Act. 2—3. The Examiner
relies on Sachdeva to disclose a template conforming to the initial position
of the teeth. Id. at 4. The Examiner reasons that one of ordinary skill, when
combining the teaching of Sachdeva with the disclosure of Chishti, would
include an introductory appliance similar to those disclosed by Chishti, but
conforming to the initial position of the teeth. Id. at 4—7. Given that
Sachdeva’s template is placed on the patient’s teeth in the initial position
and that the placement is verified and, if necessary, adjusted before applying
brackets to the teeth (see, e.g., Sachdeva H 12, 61), the Examiner’s
determination that “[a] practitioner of orthodontics . . . would readily
appreciate that the teaching of Sachdeva could be realized by forming one of
the trays of [Chishti] such that it does not apply orthodontic force” (Final
Act. 7)—that is, such that the tray conforms to the initial tooth
arrangement—is supported by a rational underpinning. Appellants’
arguments fail to persuade us of error. We note that Appellants do not
address this or the Examiner’s several other rationales for applying the
teachings of Sachdeva to Chishti.
Similarly, Appellants’ argument that Sachdeva “only teaches better
placement of the template, and has no bearing on the orthodontic brackets to
be applied” (Br. 14) fails to apprise us of error because, as explained above,
the Examiner does not rely on Sachdeva to teach placement of orthodontic
brackets.
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Accordingly, for the foregoing reasons, we sustain the rejection of
claim 1 and its dependent claims 3 and 4, which are not argued separately, as
being unpatentable over Chishti and Sachdeva.
Claims 5—10 and 12—14
Appellants argue independent claims 5 and 14 together. Br. 16. We
select claim 14 as representative, treating claim 5 as standing or falling with
representative claim 14. See 37 C.F.R. § 41.37(c)(l)(iv). Claim 14 recites:
14. An improved method for repositioning teeth using a set
of appliances comprising polymeric shells having cavities
shaped to receive and resiliently reposition teeth from an initial
tooth arrangement to a final tooth arrangement, wherein the
improvement comprises:
utilizing as an initial appliance of the set an introductory
appliance having a tooth receiving cavity geometry conforming
to the initial tooth arrangement.
Br. 26 (Claims App.). The Examiner rejects claim 14 in the same manner as
claim 1 (Final Act. 2—5), and Appellants rely on the arguments presented
above in regard to the rejection of claim 1 (Br. 16).
For the same reasons as discussed above, we sustain the rejection of
claim 5, its dependent claims 6—10, 12, and 13, which are not argued
separately, and claim 14 as being unpatentable over Chishti and Sachdeva.
Claims 19—26
Claim 19 recites:
19. A method for repositioning teeth residing in a mouth
from an initial tooth arrangement to a final tooth arrangement,
the method comprising:
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(A) placing an introductory appliance in the mouth,
wherein the introductory appliance has a tooth receiving cavity
geometry conforming to the initial tooth arrangement;
(B) confirming the fit of the introductory appliance is
adequate for treatment to proceed; and,
(C) obtaining, only after confirming the fit in step (B),
one or more appliances having different tooth receiving cavity
geometries, the geometries selected to progressively reposition
the teeth from the initial tooth arrangement to the final tooth
arrangement.
Br. 28—29 (Claims App.). The Examiner rejects claim 19 in the same
manner as claim 1 (Final Act. 2—5), and Appellants rely on the arguments
presented above in regard to the rejection of claim 1 (Br. 16).
Although claim 19 requires confirming the fit of the introductory
appliance and obtaining additional appliances after such confirmation, claim
19 does not require such additional appliances to be designed or fabricated
based on the fit confirmation. Thus, Appellants’ arguments regarding the
Examiner’s interpretation of Sachdeva paragraph 61 are not directed to
recitations of claim 19 and are, therefore, unpersuasive of error. For the
same reason, Appellants’ argument that Sachdeva “does not maintain the
teeth in their ‘initial tooth arrangement’” {id. at 15) is not persuasive of
error. Appellants’ other arguments are unpersuasive for the reason set forth
above.
Accordingly, for the foregoing reasons, we sustain the rejection of
claim 19 and its dependent claims 20-26, which are not argued separately,
as being unpatentable over Chishti and Sachdeva.
Claims 15, 17, and 18
Claim 15 recites:
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15. A method of making a set of dental incremental position
appliances comprising polymeric shells having cavities shaped
to receive and resiliently reposition teeth from an initial tooth
arrangement to a final tooth arrangement, the method
comprising:
(A) forming as part of the set, an introductory appliance
having a tooth receiving cavity geometry conforming to the
initial tooth arrangement; and,
(B) forming as part of the set, one or more appliances
having different tooth receiving cavity geometries, the
geometries selected to progressively reposition the teeth from
the initial tooth arrangement to the final tooth arrangement.
Br. 26 (Claims App.). The Examiner rejects claim 15 in the same manner as
claim 1 (Final Act. 2—5), and Appellants rely on the arguments presented
above in regard to the rejection of claim 1 (Br. 17).
For the same reasons as discussed above, we sustain the rejection of
claim 15 and its dependent claims 17 and 18, which are not argued
separately, as being unpatentable over Chishti and Sachdeva.
Claim 27, 29, and 30—34
Appellants argue independent claims 27 and 31 together. Br. 17. We
select claim 27 as representative, treating claim 31 as standing or falling
with representative claim 27. Claim 27 recites:
27. A method of making a set of dental incremental position
appliances comprising polymeric shells having cavities shaped
to receive and resiliently reposition teeth from an initial tooth
arrangement to a final tooth arrangement, the method
comprising:
(A) forming as part of the set, an introductory appliance
having a tooth receiving cavity geometry conforming to the
initial tooth arrangement;
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(B) receiving information regarding the fit of the
introductory appliance;
(C) forming after receiving the information, one or more
appliances of the set having different tooth receiving cavity
geometries, the geometries selected to progressively reposition
the teeth from the initial tooth arrangement to the final tooth
arrangement.
Br. 30—31 (Claims App.). The Examiner rejects claim 27 in the same
manner as claim 1 (Final Act. 2—5), and Appellants rely on the arguments
presented above in regard to the rejection of claim 1 (Br. 17).
Similarly to claim 19, claim 27 requires receiving information
regarding the fit of the introductory appliance and forming additional
appliances after receiving such information, but does not require such
additional appliances to be designed or fabricated based on the fit
confirmation. Thus, Appellants’ arguments regarding the Examiner’s
interpretation of Sachdeva paragraph 61 are not directed to recitations of
claim 27 and are, therefore, unpersuasive of error. Appellants’ other
arguments are unpersuasive for the reason set forth above.
Accordingly, for the foregoing reasons, we sustain the rejection of
claim 27, its dependent claims 29 and 30, which are not argued separately,
claim 31, and its dependent claims 32—34, which are not argued separately,
as being unpatentable over Chishti and Sachdeva.
Claims 35 and 36
Appellants argue independent claims 35 and 36 together. Br. 17. We
select claim 35 as representative, treating claim 36 as standing or falling
with representative claim 35. Claim 35 recites:
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35. A method of making a set of dental incremental position
appliances comprising polymeric shells having cavities shaped
to receive and resiliently reposition teeth from an initial tooth
arrangement to a final tooth arrangement, the method
comprising:
(A) forming as part of the set, an introductory appliance
having a tooth receiving cavity geometry conforming to the
initial tooth arrangement;
(B) receiving information regarding the fit of the
introductory appliance;
(C) using the information in the fabricating of one or
more appliances having different tooth receiving cavity
geometries, the geometries selected to progressively reposition
the teeth from the initial tooth arrangement to the final tooth
arrangement.
Br. 34—35 (Claims App.). The Examiner rejects claim 35 in the same
manner as claim 1 (Final Act. 2—5), and Appellants rely on the arguments
presented above in regard to the rejection of claim 1 (Br. 17).
Regarding Appellants’ additional argument that “Sachdeva teaches
that for a bad placement, one makes adjustment in the placement (not in the
design and fabrication of further appliances)” (Br. 13), Appellants’ again
target a single reference when the rejection relies on a combination of
references. Given that Sachdeva’s template is placed on the patient’s teeth
in the initial position and that the placement is verified and, if necessary,
adjusted before applying brackets to the teeth (see, e.g., Sachdeva H 12, 61),
the Examiner’s determination that “[a] practitioner of orthodontics . . .
would readily appreciate that the teaching of Sachdeva could be realized by
forming one of the trays of [Chishti] such that it does not apply orthodontic
force” (Final Act. 7)—that is, such that the tray conforms to the initial tooth
arrangement— is supported by a rational underpinning. For the same
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reasons, the Examiner’s determination that, once having such an
introductory appliance, “[a] reasonable practitioner exercising common
sense, would be motivated to verify the accuracy of a manufactured
appliance prior to committing to producing successive appliances in the
same manufacturing process” is supported by a rational underpinning. See
Final Act. 4—5.
Regarding Appellants’ argument that “Sachdeva does not disclose or
suggest retum[ing] to step 102 (i.e., the template design step)” (Br. 14), we
agree with the Examiner that claim 35 does require modifying the
introductory appliance, to which the Examiner finds Sachdeva’s template to
correspond. See Ans. 2. Thus, Appellants’ argument is not directed to a
limitation appearing in the claim, and, therefore, does not persuade us of
error. Appellants’ other arguments are unpersuasive for the reasons set forth
above.
Accordingly, for the foregoing reasons, we sustain the rejection of
claims 35 and 36 as being unpatentable over Chishti and Sachdeva.
Rejection Based on Chishti, Sachdeva, and O ’Bryan
With respect to the rejection of claims 2, 11, 16, and 28, Appellants
rely solely on the arguments presented above in regard to the rejection of
claim 1. Br. 18—19. Accordingly, for the same reasons as discussed above,
we sustain the rejection of claims 2, 11, 16, and 28 as being unpatentable
over Chishti, Sachdeva, and O’Bryan.
DECISION
The Examiner’s decision to reject claims 1—36 is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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