Ex Parte SabistonDownload PDFPatent Trial and Appeal BoardMar 17, 201712670840 (P.T.A.B. Mar. 17, 2017) Copy Citation 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. 2 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. 3 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: 4 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.) 5 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 6 Copy with citationCopy as parenthetical citation