Ex Parte RABY et al

Patent Trial and Appeal Board

Apr 26, 2013

11777350 (P.T.A.B. Apr. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte RICHARD E. RABY, OLIVER L. PUTTLER, and
NICHOLAS A. STARK
____________________

Appeal 2011-002510
Application 11/777,350
Technology Center 3700
____________________

Before EDWARD A. BROWN, MICHAEL L. HOELTER, and
RICHARD E. RICE, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL
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Application 11/777,350

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STATEMENT OF THE CASE
Richard E. Raby et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the decision of the Examiner rejecting claims 1-34. App. Br. 3, 6. We
have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

CLAIMED SUBJECT MATTER
Claims 1, 22, and 31 are independent. Claim 1 is illustrative and
reproduced below:
1. A computer-implemented method
comprising:
rendering a digital representation of at least
a portion of a tooth within a three-dimensional
(3D) environment;
determining a position of a digital
representation of at least a portion of an
orthodontic appliance relative to the digital
representation of the tooth within the 3D
environment;
determining a thickness of at least a portion
of a coupling matrix; and
rendering a digital representation of the
coupling matrix within the 3D environment based
on the position of the orthodontic appliance,
wherein rendering the digital representation of the
coupling matrix within the 3D environment
comprises presenting a user interface that visually
displays the digital representation of the coupling
matrix within the 3D environment.

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REJECTIONS
Appellants request review of the following rejections:
Claims 1-8, 15, 18-25, and 28-34 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Sachdeva ‘450 (US 2005/0208450 A1;
pub. Sep. 22, 2005) and Sachdeva ‘842 (US 2006/0078842 A1; pub. Apr.
13, 2006).
Claims 9-14, 16, 17, 26, and 27 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Sachdeva ‘450, Sachdeva ‘842, and Lee
(US 6,224,373 B1; iss. May 1, 2001).

ANALYSIS
Claims 1-8, 15, 18-25, and 28-34 – Sachdeva ‘450 and Sachdeva ‘842
Claims 1-7, 15, and 18-21
Appellants argue claims 1-7, 15, and 18-21 as a group, and present
specific arguments only for claim 1. App. Br. 6-13. We select claim 1 as
representative of the group, and claims 2-7, 15, and 18-21 stand or fall with
claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Claim 1 is directed to a computer-implemented method comprising
“rendering a digital representation of at least a portion of a tooth within a
three-dimensional (3D) environment” and “rendering a digital representation
of [a] coupling matrix within [a] 3D environment” that includes “presenting
a user interface that visually displays the digital representation of the
coupling matrix within the 3D environment.” The Examiner found that
Sachdeva ‘450 discloses a digital representation of an orthodontic appliance
(bracket 50) fixed by a coupling matrix (bonding agent 52) to a tooth (Ans.
3-4), but fails to disclose a user interface that visually displays and renders
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the digital representation within a 3D environment (id. at 5). The Examiner
found that Sachdeva ‘842 teaches an orthodontic user interface where digital
representations of components are displayed and rendered within a 3D
environment. Id. at 5-6. The Examiner concluded that it would have been
obvious to one having ordinary skill in the art to modify the computer-
implemented method of Sachdeva ‘450 by including the user interface and
rendering of orthodontic components of Sachdeva ‘842 to allow a clinician
to better evaluate a proposed orthodontic set-up and to make desired changes
to positions of the components within the user interface. Id. at 6.
Appellants contend that the combination of Sachdeva ‘450 and
Sachdeva ‘842 fails to disclose or suggest “rendering a digital representation
of at least a portion of a tooth within a 3D environment.” App. Br. 7.
Appellants contend that Sachdeva ‘450 merely discloses a 3D model of a
tooth that is used to simulate desired tooth movement “within the server,”
and that this 3D model is not disclosed as being rendered (i.e., visually
displayed). Id. at 7-8. However, the Examiner relied on Sachdeva ‘842, not
Sachdeva ‘450, for teaching rendering of at least a portion of a tooth. Ans.
5-6, 8. Appellants appear to be analyzing the applied references
individually, and non-obviousness cannot be established by attacking
references individually where the rejection is based upon the combined
teachings of a combination of references. In re Keller, 642 F.2d 413, 425
(CCPA 1981). Thus, Appellants’ contentions are not persuasive.
Appellants also contend that Sachdeva ‘450 and Sachdeva ‘842 fail to
disclose or suggest “rendering the digital representation of the coupling
matrix within a 3D environment based on a position of an orthodontic
appliance within a 3D environment.” App. Br. 8. First, Appellants contend
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that the Examiner relied on Sachdeva ‘842 for teaching this feature, but that
Sachdeva ‘842 fails to describe any techniques for visually displaying
representations of a coupling matrix. App. Br. 8-9. However, the Examiner
relied on the combined teachings of Sachdeva ‘450 and Sachdeva ‘842 for
suggesting rendering of a coupling matrix. Ans. 8. As noted supra, non-
obviousness cannot be established by attacking these references individually.
Appellants’ contention does not address the Examiner’s combination and,
thus, is not persuasive.
Second, Appellants contend that the Examiner’s combination of
Sachdeva ‘450 and Sachdeva ‘842 lacks rational underpinnings because
neither of these references provides any reason for rendering a digital
representation of a coupling matrix. App. Br. 9-13; Reply. Br. 5-9.
Appellants further contend that Sachdeva ‘450 discloses using the thickness
of a coupling agent (bonding agent 52) in a 3D model for the purpose of
determining the force systems on a patient’s teeth, and there is no suggestion
that rendering the coupling agent would be useful to serve this purpose.
App. Br. 11; Reply Br. 7-8. Appellants further contend that: Sachdeva ‘842
suggests rendering orthodontic appliances; a coupling matrix is not an
orthodontic appliance; and Sachdeva ‘842 does not otherwise disclose that
its rendering techniques could be applied to a coupling matrix. App. Br. 11;
Reply Br. 5-7. For the reasons discussed infra, Appellants’ contentions are
unpersuasive.
Appellants are interpreting Sachdeva ‘842’s teachings too narrowly.
Sachdeva ‘450 discloses a 3D model of a tooth 56 having a bracket 50
mounted to it via a bonding agent 52 shown having a bonding agent
thickness 54. Sachdeva ‘450, p. 4, para [0037]. The 3D model is generated
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digitally within a server 14 to simulate desired tooth movement. Id.
Sachdeva ‘842 discloses an orthodontic workstation that allows a user to
interact with a treatment planning program that displays a virtual bracket
placed on a virtual tooth. Sachdeva ‘842, Abstract; figs. 3-6.
The Examiner relied on Sachdeva ‘842 for teaching that it is generally
useful to render 3D digital orthodontic representations. See Ans. 8-9. While
the Examiner did not find that Sachdeva ‘842 explicitly discloses rendering a
coupling matrix, Appellants have provided no persuasive argument or
evidence as to why the teachings of Sachdeva ‘842 are limited to digital
representations that only include a bracket and teeth. Appellants state that
rendering a digital representation of a coupling matrix is “a non-trivial task,”
but present no persuasive argument or evidence as to why rendering this
component of the digital representation of Sachdeva ‘450 would be more
difficult than rendering any other orthodontic component. See App. Br. 9.
Appellants have not shown that the Examiner’s modification of Sachdeva
‘450 would have been beyond the level of ordinary skill in the art.
Appellants also contend that Sachdeva ‘450 does not itself contain a
suggestion to render its digital representations. App. Br. 11; Reply Br. 7-8.
However, the Examiner relied on Sachdeva ‘842 for suggesting this feature.
Ans. 8-9. Further, the U.S. Supreme Court has rejected a rigid requirement
that cited references contain a teaching, suggestion, or motivation to
combine known elements in order to establish obviousness. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418-419 (2007). Appellants provide no
persuasive argument or evidence that the Examiner’s rationale for
combining the teachings of Sachdeva ‘450 and Sachdeva ‘842 – to allow a
clinician to better evaluate a proposed orthodontic set-up and make desired
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changes to positions of the components within a user interface – lacks
rational underpinnings. Accordingly, we find Appellants’ contentions
unpersuasive, and sustain the rejection of claims 1-7, 15, 18-21.
Claims 22, 23, 25, 28-31, and 34
Regarding claim 22, Appellants rely on the arguments discussed supra
in regard to claim 1 for its patentability. App. Br. 13. As we find no
deficiency in the Examiner’s rejection of claim 1, we also sustain the
rejection of claim 22, and its dependent claims 23, 25, and 28-30 for similar
reasons.
Regarding claim 31, Appellants also rely on the arguments discussed
supra in regard to claim 1 for its patentability. Id. at 13-14. Accordingly,
we also sustain the rejection of claim 31, and its dependent claim 34 for
similar reasons.
Claims 8, 24, and 32
Appellants argue claims 8, 24, and 32 as a group, and present specific
arguments only for claim 8. App. Br. 14-15. We select claim 8 as
representative of the group, and claims 24 and 32 stand or fall with claim 8.
Claim 8 recites, in part, “rendering at least one element within the 3D
environment to visually represent the thickness of at least the portion of the
coupling matrix.” Appellants contend that Sachdeva ‘450 fails to disclose or
suggest rendering a coupling matrix, and thus, cannot disclose or suggest
rendering an element that visually represents a coupling matrix thickness.
App. Br. 14. This contention attacks Sachdeva ‘450 individually, and fails
to address the Examiner’s rejection, which is based upon the combined
teachings of references. Thus, we affirm the rejection of claims 8, 24, and
32 for reasons similar to those discussed supra for claim 1.
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Claim 33
Claim 33 recites, in part, “wherein the digital representation of the
coupling matrix illustrates a thickness distribution of the coupling matrix
along a mesial-distal direction of the digital representations of the tooth.”
Appellants contend that Sachdeva ‘842 fails to disclose or suggest a display
that could illustrate showing a thickness distribution of a coupling matrix
along a mesial-distal direction. App. Br. 15. Appellants also contend that
even if Sachdeva ‘842 discloses a user interface that is capable of showing a
view of the coupling matrix along this direction, the Examiner failed to show
why it would be obvious to render such a view of the coupling matrix. Id. at
16. Appellants’ contentions are unpersuasive.
The Examiner found that Sachdeva ‘842 discloses a user interface in a
CAD/CAM environment, and that it is well known in such an environment
to allow a user to view a rendered 3D environment at any angle. Ans. 9.
The Examiner also found that a view capable of showing a coupling matrix
along a mesial-distal direction is disclosed in Figure 3 of Sachdeva ‘842. Id.
Appellants do not apprise us of any error in these these findings of the
Examiner. Additionally, Appellants fail to provide any persuasive argument
or evidence as to why the Examiner’s stated rationale for combining
Sachdeva ‘450 and Sachdeva ‘842 – to allow a clinician to better evaluate a
proposed set up – does not support modifying the method of Sachdeva ‘450
to include the feature of claim 33 as suggested by Sachdeva ‘842. Thus,
Appellants’ contentions are unpersuasive and we sustain the rejection of
claim 33.

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Claims 9-14, 16, 17, 26, and 27 – Sachdeva ’450, Sachdeva ‘842, and Lee
Claims 9-14, 26, and 27
Claim 9 recites, in part, “wherein rendering the coupling matrix
includes rendering a color-coded thickness map based on the determined
thickness.” The Examiner relied on Lee for teaching a computer-
implemented method of rendering a dental element in the form of a color
map that is subdivided, and concluded that it would have been obvious to
modify the method of Sachdeva ‘450/‘842 to include a subdivided color map
technique in order to quickly view and determine the properties of an
element within the user interface. Ans. 7. Appellants contend that Lee fails
to disclose or suggest a color-coded thickness map, and only discloses a
color map corresponding to a density distribution of a jawbone. App. Br.
17-18; Reply Br. 9-11. As discussed infra, Appellants’ contentions are
persuasive.
Lee discloses forming a 3D image of a jawbone, the jawbone image
including a color map corresponding to the density distribution of the
jawbone. Lee, Abstract. A virtual implant screw is modeled by a plurality
of brick elements and inserted into the virtual jawbone. Id. Each brick
element of the screw is then colored according to where each brick element
of the implant screw contacts the jawbone. Id. We agree with Appellants
that Lee fails to disclose or suggest a color-coded thickness-map. The
Examiner’s reasoning that Lee’s “general teaching” of “the desirability of
color coding data” (Ans. 9) would suggest providing a color-coded thickness
map for the coupling matrix in the method of Sachdeva ‘450/‘842 lacks
sufficient “articulated reasoning with some rational underpinning to support
the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed.
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Cir. 2006) (quoted in KSR, 550 U.S. at 418). Thus, we do not sustain the
rejection of claim 9 and its dependent claims 10-14. Claims 26 and 27 recite
features similar to claim 9. Thus, we also do not sustain the rejection of
claims 26 and 27.
Claims 16 and 17
Claim 16 recites in part “subdividing the digital representation of the
coupling matrix into a plurality of substantially equal-sized columns,” and
“determining a volume of each of the plurality of columns based on a
thickness of each of the columns.” The Examiner relied on Lee for teaching
a computer-implemented method of rendering a dental element in the form
of a color map that is subdivided, and found that it would have been an
obvious matter of design choice to modify the method of Sachdeva
‘450/‘842 to determine a volume of the coupling matrix via subdividing the
coupling matrix in order to utilize calculus to easily determine the volume of
an object. Ans. 7. Appellants contend that the Examiner failed to show why
one having ordinary skill in the art would have combined Sachdeva
‘450/‘842 and Lee to subdivide the digital representation of the coupling
matrix. App. Br. 19. We agree.
The Examiner failed to adequately explain why one of ordinary skill
in the art would have predictably: (a) subdivided the digital representation
of the coupling matrix of Sachdeva ‘450/‘842 into equal-sized columns, on
the basis of Lee’s “general teaching” of “the desirability of color coding data
and subdividing data into a color map” (Ans. 9); and (b) determined the
volume of each of the columns based on a thickness of each of the columns,
as a matter of mere “design choice” (id. at 7). Thus, we do not sustain the
rejection of claim 16 and its dependent claim 17.
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DECISION
The Examiner’s decision rejecting claims 1-8, 15, 18-25, and 28-34 is
AFFIRMED, and rejecting claims 9-14, 16, 17, 26, and 27 is REVERSED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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