Ex Parte Savic et al

Board of Patent Appeals and Interferences

Sep 15, 2011

11343584 (B.P.A.I. Sep. 15, 2011)

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.
11/343,584 01/31/2006 Novica Savic 100727-95-WCG 5409
7590 09/16/2011
Norris, McLaughlin & Marcus P.A.
18th Floor
875 Third Avenue
New York, NY 10022
EXAMINER
MAI, HAO D
ART UNIT PAPER NUMBER
3732
MAIL DATE DELIVERY MODE
09/16/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte NOVICA SAVIC, OLAF MROTZEK,
and DIETER EHRET
____________

Appeal 2009-013884
Application 11/343,584
Technology Center 3700
____________

Before WILLIAM F. PATE III, MICHAEL W. O’NEILL, and
KEN B. BARRETT, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Novica Savic et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-3 and 5-13. We have jurisdiction
under 35 U.S.C. § 6(b). We AFFIRM.
Appeal 2009-013884
Application 11/343,584

2
The Invention
The claimed invention is to a device for positioning teeth.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. Positioning aid for positioning teeth in the
production of a prosthesis, comprising a tooth
positioning guide having movable tooth blocks,
wherein the tooth blocks are arranged pivotably
and/or displaceably and have dental impressions
for receiving teeth.

The Rejection
Claim 1-3 and 5-13 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Kois (US 6,582,931 B1, iss. Jun. 24, 2003).

OPINION
The Examiner found that the face bow 12 in combination with the U-
shaped bite plate 14 disclosed in Kois satisfies the claimed tooth positioning
guide, while the upper and lower index trays 34 and 36 disclosed in Kois
satisfy the movable tooth blocks. The Examiner further found that the index
trays 34 and 36 “also include dental impressions for receiving teeth (Figs. 1-
2; column 4[,] lines 54-55).” Ans. 3.
Appellants do not separately argue claims 1-3 and 5-13 in the Appeal
Brief. App. Br. 2-5. Appellants present arguments pertaining to claim 13
for the first time in the Reply Brief. Reply Br. 2. As such, we select claim 1
as representative, and claims 2, 3, and 5-12 stand or fall with claim 1. Since
claim 13 was not separately argued in the Appeal Brief, we treat claim 13 as
standing or falling with claim 1.
Appeal 2009-013884
Application 11/343,584

3
Appellants explain their invention, explain Kois’ invention, and
contend Kois “has absolutely nothing whatsoever to do with the positioning
of an artificial tooth in a prosthesis.” App. Br. 3 and see also Id. at 5. In
addition, Appellants argue the different intended uses of their invention and
Kois. Reply Br. 1 and see also App. Br. 4. Appellants contend that since
index trays 34 and 36 are held in place by pins 35 which engage holes 37,
the trays are not displaceable. App. Br. 4. Appellants also take issue with
the Examiner’s finding that Kois’ disclosure of impression compound
satisfies the claimed dental impressions for receiving teeth feature. Id.
The Examiner responds to Appellants with the explanation that any
functional or intended use claim language must result in a structural
difference between the claimed invention and the prior art in order to
patentably distinguish the claimed invention from the prior art. Ans. 4. The
Examiner explains that if the prior art structure is capable of performing the
intended use, “then it meets the claim.” Id.
In response to Appellants’ displaceable contention noted above, the
Examiner explains that “displaceably” is not explicitly defined in the
Specification and a person having ordinary skill in the art would understand
the term as meaning “to move or put out of the usual or proper place.” Id.
Given this meaning, the Examiner essentially explains that since index trays
34 and 36 are moved in and out of the usual or proper place within the bite
plate 14, the trays satisfy the function claimed feature of being displaceably
arranged. Id.
Turning to the Appellants’ contentions concerning dental impression
material satisfying the claimed feature of dental impressions for receiving
teeth, the Examiner aptly notes that the Specification does not clearly define
Appeal 2009-013884
Application 11/343,584

4
what constitutes dental impressions for receiving teeth. Id. 4-5. The
Examiner reasons, since there is no explicit disclosure within the
Specification, dental impressions 16 depicted in Figure 2 of the Specification
could very well be dental registration impression material/compound which
the Examiner finds, and which is undisputed by Appellants, is well known in
the dentistry field for the use of making dental prostheses. Id. at 5.
Accordingly, the Examiner determines that the broadest reasonable
interpretation from the viewpoint of a person having ordinary skill in the art
for the claimed feature of “dental impressions for receiving teeth”
encompasses dental registration impression material/compound. Id.
Given the limited disclosure provided by the Appellants’
Specification, as the Examiner aptly noted, our review of the record and
arguments finds no reversible error in the Examiner’s manner of construing
the claim language and comparing the construed claim language to Kois. As
such, we concur with the Examiner’s findings and align ourselves with the
Examiner’s responses that demonstrate the unpersuasiveness of the
Appellants’ arguments for patentability. Given our concurrence and
alignment with the Examiner’s positions, we find that the claimed subject
matter lacks novelty. Accordingly, we sustain the Examiner’s rejection of
anticipation against claim 1. Claims 2, 3, and 5-13 fall with claim 1.

DECISION
The Examiner’s decision to reject claims 1-3 and 5-13 under 35
U.S.C. § 102(b) as anticipated by Kois is affirmed.
Appeal 2009-013884
Application 11/343,584

5
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) (2010).

AFFIRMED

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