Ex Parte Sabiston

Patent Trial and Appeal Board

Mar 17, 2017

12670840 (P.T.A.B. Mar. 17, 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.
12/670,840 01/26/2010 Robert Malcolm Sabiston SMTT.347 5341
23581 7590 03/21/2017
KOLISCH HARTWELL, P.C.
200 PACIFIC BUILDING
520 SW YAMHILL STREET
PORTLAND, OR 97204
EXAMINER
STEVENS, THOMAS H
ART UNIT PAPER NUMBER
2126
NOTIFICATION DATE DELIVERY MODE
03/21/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing @khpatent.com
veronica@khpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT MALCOLM SABISTON
Appeal 2016-004608
Application 12/670,8401
Technology Center 2100
Before ERIC S. FRAHM, NORMAN H. BEAMER,
and ALEX S. YAP, Administrative Patent Judges.
BEAMER, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s non-
final rejection of claims 87—96, 98—101, 103—108, 110, 111, 113—122, and
124—127. Claims 1-86, 97, 102, 109, 112, 123, and 128-131 are cancelled.
(Non-Final Act. 2.) We have jurisdiction over the pending rejected claims
under 35 U.S.C. § 6(b).
We reverse.
1 Appellant identifies Vorum Research Corporation as the real party in
interest. (Br. 4.)
Appeal 2016-004608
Application 12/670,840
THE INVENTION
Appellant’s disclosed and claimed invention is directed to producing a
representation of a mold for forming an appliance for a living body.
(Abstract.)
Claim 87, reproduced below, is illustrative of the claimed subject
matter:
87. A method for producing a representation of a mold for
forming an appliance for a living body, the method comprising:
causing a processor circuit to display a representation of a surface
of the mold, said surface being defined by an input plurality of
points stored in said processor circuit and representing a shape
of the mold;
receiving user input identifying a plurality of points representing
a line corresponding to an intended edge of the appliance on said
representation of said surface;
receiving user input of a desired outward flare of the shape of
said surface along said line, the outward flare having a variation
along said line and being operable to provide relief between the
edge of the appliance and the living body;
causing said processor circuit to:
identify regions extending away from said line along said
surface on opposite sides of said line;
determine points in said input plurality of points that fall
within said regions;
adjust at least one coordinate of points that fall within said
regions to outwardly flare the shape of said surface along
said line in accordance with said user input to produce a
modified surface representation; and
store said modified surface representation in a computer
memory to produce a modified representation of the mold.
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Appeal 2016-004608
Application 12/670,840
REJECTION
The Examiner rejected claims 87—96, 98—101, 103—108, 110, 111,
113—122, and 124—127 under 35 U.S.C. § 103(a) as being unpatentable over
Steingart et al. (US 2009/0248184 Al) and Schall et al. (US 5,824,111).
(Non-Final Act. 3—36.)
ISSUE ON APPEAL
Appellant’s arguments in the Appeal Brief present the following
dispositive issue.2
Whether the Examiner erred in finding the combination of Steingart
and Schall teaches or suggests the independent claim 87 limitations:
receiving user input identifying a plurality of points representing
a line corresponding to an intended edge of the appliance on said
representation of said surface;
. . . causing said processor circuit to:
identify regions extending away from said line along said
surface on opposite sides of said line;
determine points in said input plurality of points that fall
within said regions ....
A similar issue is presented with respect to the corresponding limitations
recited in independent claims 103, 104, and 113. (Br. 29—32.)
2 Rather than reiterate the arguments of Appellant and the findings of the
Examiner, we refer to the Appeal Brief (filed July 16, 2015, amended Oct. 1,
2015); the Non-Final Office Action (mailed Dec. 4, 2014); and the
Examiner’s Answer (mailed Jan. 21, 2016) for the respective details.
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Appeal 2016-004608
Application 12/670,840
ANALYSIS
For the limitations at issue, the Examiner relies on the disclosure in
Steingart of a computer-based technique for designing dental appliances in
which the user creates a model from a “scan of a stone or a patient
situation,” generates points and adjustment of points based on a virtual wax-
based mold, adds virtual block-out wax to the model to fill in an undercut
portion and/or a defective portion of the model, selects guide curves for one
or more cross-sectional profiles for the wax pattern, sets parameters for the
wax mesh and the relief wax edge, and fits grid points identified in a
specified region creating a smooth surface. (Non-Final Act. 5—6; Steingart
12, 13, 168, 172, 185.) The Examiner finds, “The ‘regions extending
away from said line along said surface’ is equivalent to the CAD
program, via the user in this case, creating curved loop images or
standard mesh patterns.” (Non-Final Act. 6.)
Steingart was filed January 23, 2009, after Appellant’s effective filing
date of July 27, 2007, but claims the benefit, inter alia, of provisional
application 60/861,589, filed on November 28, 2006 (hereafter,
“Steingart ‘589”). Appellant argues the Examiner errs because none of the
portions of Steingart on which the Examiner relies are supported by
Steingart ‘589, and therefore are not prior art to the subject matter of the
claims. (Br. 29-32.) Indeed, the portions of Steingart upon which the
Examiner relies are not in the Steingart ‘589 provisional application.
For the above “identifying a plurality of points representing a line”
limitation, the Examiner’s Answer continues to rely on Steingart as
published but also supplements the grounds for the rejection by citing
portions of Steingart ‘589 disclosing:
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Appeal 2016-004608
Application 12/670,840
[A] touch-enabled modeling system that allows the operator to
create complex, organic shapes faster and easier than with
traditional CAD systems. . . . providing the operator with true 30
navigation and the ability to use his/her sense of touch to model
quickly and accurately with virtual clay. . . . The operator can
create original 3D models .... Files can be exported for Rapid
Prototyping (RP) or milling, and CAD/CAM .... Other data
representations may be used, for example, point clouds,
polymeshes, NURBS surfaces, and others, but voxel
representation is preferred.
(Ans. 5—6, emphasis omitted; Steingart ‘589 Ull, 12.)
For the above “identify” and “determine” limitations, the Examiner in the
Answer finds:
One of ordinary skill in the art realizes that in order to construct
a 2-dimensional or 3-dimensional design, the user would have
the ability to manipulate various lines as clearly indicated in
paragraph 0012 of the provisional application '589 where
“Voxels are found herein to be superior for sculpting and carving
virtual objects with organic shapes, such as teeth, bridges,
implants, and the like. Other data representations may be used,
for example, point clouds, polymeshes, NURBS surfaces, and
others, but voxel representation is preferred” are items which
create said lines regardless of which direction extended in
specified directions are inherent features in creating CAD models
(see Hong below).3 Therefore there’s adequate support from said
provisional application to which was disclosed by ‘ 184.
(Ans. 7.) The Examiner in the Answer also continues to rely on Steingart as
published in support of the findings with respect to the “identify” and
“determine” limitations. (Ans. 7—8.)
3 The reference to “Hong” is to a published application, not relied on in the
non-final rejection, which provides general background but which does not
add additional persuasive weight to the rejection. (Ans. 8—9.)
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Appeal 2016-004608
Application 12/670,840
We are persuaded the Examiner errs. The portions of the published
Steingart application are not prior art to the subject matter of the claims on
Appeal. The portions of Steingart ‘589 relied on by the Examiner provide
general background as to computer assisted design of dental or medical
appliances, but do not teach or suggest the specific claim limitations at issue.
Accordingly, we agree with Appellant that the Examiner does not provide
prima facie support for the rejections. “[T]he examiner bears the initial
burden, on review of the prior art or on any other ground, of presenting a
prima facie case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992). Therefore, on the record before us, we are constrained to
find the Examiner errs in rejecting independent claims 87, 103, 104, and 113
as obvious.
CONCLUSION
For the reasons stated above, we do not sustain the obviousness
rejection of independent claims 87, 103, 104, and 113. We also do not
sustain the obviousness rejections of claims 88—96, 98—101, 105—108, 110,
111,114—122, and 124—127, which claims depend from either independent
claim 87, 104, or 113.
DECISION
We reverse the Examiner’s rejection of claims 87—96, 98—101, 103—
108, 110, 111, 113—122, and 124—127.
REVERSED
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