Ex Parte Schnaitter

Patent Trial and Appeal Board

Nov 14, 2017

14275588 (P.T.A.B. Nov. 14, 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.
14/275,588 05/12/2014 Dwight SCHNAITTER OAc:016002 1043
11132 7590 11/16/2017
Rmilware Rr Valnir
EXAMINER
Three Riverway, Suite 950
Houston, TX 77056
NELSON, MATTHEW M
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
11/16/2017 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):
patent @ boulwarevaloir.com
nseigel @ boulwarevaloir.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DWIGHT SCHNAITTER
Appeal 2015-008043
Application 14/275,588
Technology Center 3700
Before BRETT C. MARTIN, GEORGE R. HOSKINS, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Applicant OrthoAccel Technologies, Inc. (“Appellant”)1 seeks our
review under 35 U.S.C. § 134(a) from the Examiner’s Final Office Action
(“Final Act.”) rejecting claims 1—20. We have jurisdiction under 35 U.S.C.
§ 6(b). An oral hearing was held on November 1, 2017.
We reverse and enter a new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b).
1 Appellant is also identified as the real party in interest. App. Br. 1.
Appeal 2015-008043
Application 14/275,588
Claimed Subject Matter
The “invention relates to bite plates that are specially shaped to allow
them to be used with Herbst appliances and other class II or class III
occlusion correctors, thus allowing vibration to [be] applied in such cases to
speed orthodontic remodeling.” Spec. para. 3.
Claims 1, 12, and 17 are independent. Claim 1, reproduced below,
illustrates the claimed subject matter.
1. An orthodontic remodeling device comprising an extra­
oral driver and a bite plate, said bite plate comprising:
i) an inner core in an U-shape adapted to indirectly contact
occlusal surfaces of a patient’s incisors, cuspids and premolars;
ii) said inner core covered with a flexible biocompatible
polymer;
iii) said flexible biocompatible polymer shaped to have an
outside edge having upper and lower rims adapted to contact
upper and lower facial surfaces of a patient’s incisors, but not
premolars or molars; and,
iv) wherein the bite plate has a connector at a median line
thereon for reversibly coupling to said driver.
Rejections2
I. Claims 1—5, 7—9, 12—15, and 17—20 stand rejected under 35
U.S.C. § 102(a)(1) as anticipated by Lowe et al. (US 2012/0322018 Al,
published Dec. 20, 2012). Final Act. 3^4.
II. Claims 6, 10, 11, and 16 stand rejected under 35 U.S.C. § 103
as unpatentable over Lowe and Spaulding et al. (US 2010/0055634 Al,
published Mar. 4, 2010). Final Act. 5—6.
2 The Final Action rejected claims 1—20 under 35 U.S.C. § 112(b) as
indefinite. Final Act. 2—3. In the Advisory Action, the Examiner withdraws
the rejection under § 112. Adv. Act. 1 (mailed May 6, 2015).
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Application 14/275,588
DISCUSSION
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments. App. Br. 8—12; Reply Br. 1—5. We agree with Appellant that the
Examiner has not shown Lowe discloses that the upper and lower rims are
“adapted to contact upper and lower facial surfaces of a patient’s incisors,
but not premolars or molars,” as recited in claim 1.
Relevant to claim 1, the Examiner finds:
Lowe shows an orthodontic remodeling device comprising an
extra-oral driver ([0034]) and a bite plate, said bite plate
comprising an inner core in an U-shape capable of contacting
occlusal surfaces of a patient’s incisors, cuspids and premolars
(Fig. 11 A—B); said inner core covered with a flexible
biocompatible polymer ([0132]); said flexible biocompatible
polymer shaped to have an outside edge having upper and lower
rims (1005, 1006 respectively) capable of contacting upper and
lower facial surfaces of the patient’s incisors, but not premolars
or molars ([0124]); and wherein the bite plate has a connector
(1008) at a median line thereon for reversibly coupling to said
driver (Fig. 13 A for instance).
Final Act. 3^4. Appellant does not dispute these findings, except to argue
Lowe does not disclose that the upper and lower rims are “adapted to contact
upper and lower facial surfaces of a patient’s incisors, but not premolars or
molars.” E.g., App. Br. 8—9.
Lowe discloses that “the lingual rims contact only the incisors and/or
canines, but not the molars.” Lowe para. 124. In the next sentence, Lowe
teaches that “the rims can be varied in length to contact all, or a portion, of
the teeth.” Id. As Appellant points out, however, see Reply Br. 2, Lowe
does not describe a specific embodiment in which the facial rims contact the
incisors but not the premolars or molars, as recited in claim 1.
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Application 14/275,588
In view of the foregoing, we do not sustain the rejection of claim 1 as
anticipated by Lowe. Independent claims 12 and 17 similarly recite “upper
and lower rims adapted to contact an upper and lower facial surfaces of said
patient’s incisors, but not premolars or molars” (claim 12) and a bite plate
that “contacts the facial surfaces of upper and lower incisors, but not the
upper and lower premolars or molars” (claim 17). Thus, for the same
reasons as claim 1, we do not sustain the rejection of independent claims 12
and 17. For the same reasons, we do not sustain the rejection of dependent
claims 2—5, 7—9, and 13—15, which depend from one of claims 1 or 12 and
are rejected on the same ground.
Appellant separately argues that Lowe does not disclose the “class II
or III corrector” recited in claims 18—20. App. Br. 9—12. We disagree. As
the Examiner finds, Ans. 6, Lowe describes the three classes of
malocclusions in paragraphs 5—15, and states in paragraph 122 that the
efficiency improvements from Lowe’s vibrating bite plate “can occur as part
of or as a result of any stage of orthodontic treatment of any malocclusion
classification, and with any archwire or appliance type.” In light of this
disclosure, one of ordinary skill in the art would understand that Lowe’s bite
plate is to be used by having a patient wearing a class II or III corrector bite
the bite plate. At most, Lowe fails to use the exact phrase “class II or III
corrector,” but Appellant’s arguments suggest that one of ordinary skill in
the art would have understood Lowe to disclose using the bite plate only
with a class I corrector, which is plainly contrary to Lowe’s disclosure.
“[A] reference can anticipate a claim even if it ‘d[oes] not expressly
spell out’ all the limitations arranged or combined as in the claim, if a person
of skill in the art, reading the reference, would ‘at once envisage’ the
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Application 14/275,588
claimed arrangement or combination.” Kennametal, Inc. v. Ingersoll Cutting
Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015) (quoting In re Petering, 301
F.2d 676, 681 (CCPA) (1962) (second alteration in original). As noted
above, Lowe discloses that its vibrating bite plate leads to “efficiency
improvements [that] can occur as a part of or as a result of any stage of
orthodontic treatment of any malocclusion classification, and with any
archwire or appliance type, including all wire sizes, shapes, and
compositions.” Lowe para. 122. Therefore, Lowe expressly contemplates
use of the bite plate with correctors that fit into any of the classifications.
The question here is whether the number of classifications is so large that it
would not be immediately apparent to one of skill in the art that Lowe’s bite
plate is to be used with a patient wearing a class II or III corrector as recited
in claims 18—20. See Kennametal, 780 F.3d at 1382 (“Because all the
limitations of Kennametal’s claim are specifically disclosed in Grab, the
question for the purposes of anticipation is ‘whether the number of
categories and components’ disclosed in Grab is so large that the
combination of ruthenium and PVD coatings ‘would not be immediately
apparent to one of ordinary skill in the art.’” (quoting Wm. Wrigley Jr. Co. v.
Cadbury Adams USALLC, 683 F3d 1356, 1361 (Fed. Cir. 2012))). As
expressly disclosed in Lowe, “[t]here are three classes of malocclusions,
Class I, II, and III.” Lowe para. 5. Claims 18—20 thus exclude only one out
of three classifications, and the two included classifications would be
immediately apparent to one of skill in the art based on Lowe’s reference to
“orthodontic treatment of any malocclusion classification, and with any
archwire or appliance type.” Lowe para. 122.
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Application 14/275,588
Because one of skill in the art considering Lowe would at once
envisage the use of Lowe’s device with a corrector treating each of the three
classifications, we agree with the Examiner’s finding that Lowe discloses “a
patient wearing a class II or III corrector” as recited in claims 18—20.
Nonetheless, because the rejection of dependent claims 18—20 relies on the
finding that Lowe discloses facial rims that contact the incisors, but not the
premolars or molars, as recited in independent claims 1, 12, and 17, we do
not sustain the rejection of claims 18—20 as anticipated by Lowe.
Rejection II relies on the same unsupported finding as the rejection of
claims 1 and 12 discussed supra. Accordingly, we do not sustain the
Examiner’s decision rejecting claims 6, 10, 11, and 16, as set forth in
Rejection II.
NEW GROUND OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection and reject independent claims 1, 12, and 17 under 35
U.S.C. § 103 as obvious over Lowe. We incorporate the Examiner’s
findings as to the teachings of Lowe, Final Act. 3—4, except we find Lowe
does not expressly teach that the upper and lower rims are “adapted to
contact upper and lower facial surfaces of a patient’s incisors, but not
premolars or molars,” as recited in claim 1 and similarly required by claims
12 and 17.3 As discussed below, we find one of ordinary skill in the art
3 Claim 12 recites “upper and lower rims adapted to contact an upper and
lower facial surfaces of said patient’s incisors, but not premolars or molars.”
Claim 17 recites an improvement “comprising a bite plate that contacts
occlusal surfaces of the incisors, cu[s]pids and premolars and contacts the
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Application 14/275,588
would have had reason to modify Lowe’s facial rims to contact the facial
surfaces of a patient’s incisors, but not premolars or molars.
Although “it can be important to identify a reason that would have
prompted a person of ordinary skill in the relevant field to combine the
elements in the way the claimed new invention does,” KSR International Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007), “[t]he obviousness analysis
cannot be confined by a formalistic conception of the words teaching,
suggestion, and motivation, or by overemphasis on the importance of
published articles and the explicit content of issued patents,” id. at 419. See
also Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed.
Cir. 2009) (“[W]hile an analysis of obviousness always depends on evidence
that supports the required Graham factual findings, it also may include
recourse to logic, judgment, and common sense available to the person of
ordinary skill that do not necessarily require explication in any reference or
expert opinion.”).
Here, Lowe expressly teaches that “the rims can be varied in length to
contact all, or a portion, of the teeth.” Lowe para. 124. In context, this
means that, not only might one want “lingual rims [that] contact only the
incisors and/or the canines, but not the molars,” id., as expressly disclosed in
Lowe, but both the facial and lingual rims could be varied in length to
contact different teeth or groups of teeth. For example, the facial and/or
lingual rims could be varied in length to contact the respective surfaces of
(1) incisors only, (2) incisors and canines only, (3) incisors, canines, and
premolars only, or (4) all teeth. Indeed, Lowe’s teaching of a lingual rim
facial surfaces of upper and lower incisors, but not the upper and lower
premolars or molars.”
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Application 14/275,588
that contacts the teeth recited in claim 1 strongly suggests the obvious
variation of facial rims that contact those same teeth.
In addition, “[w]hen there is a design need or market pressure to solve
a problem and there are a finite number of identified, predictable solutions, a
person of ordinary skill has good reason to pursue the known options within
his or her technical grasp.” KSR, 550 U.S. at 421. “If this leads to the
anticipated success, it is likely the product not of innovation but of ordinary
skill and common sense.” Id.
Here, one of ordinary skill in the art encountering problems with a
patient being able to fit Lowe’s bite plate rims around an appliance in any
area of the mouth would have had reason to modify the length or shape of
the rims accordingly. Indeed, as discussed above, Lowe expressly invites
such variations. See Lowe para. 124. There is no indication that avoiding
rims over the facial surfaces of the premolars or molars produces a result
that would have been unexpected to one of ordinary skill in the art. Rather,
one of ordinary skill in the art desiring to use Lowe’s bite plate with a large
appliance located on or near the facial surface of the molars or premolars
would naturally have modified Lowe’s bite plate not to extend the facial
rims to that point.
We recognize that one of ordinary skill in the art may have wanted to
use as much length of Lowe’s rims as practicable to transmit forces from the
vibrating bite plate to the teeth and to hold the bite plate in place. Indeed,
Lowe teaches that “[i]t is preferred that at least one rim contact each tooth.”
Lowe para. 124. As Lowe recognizes, however, this is “preferred,”
implying that other variations are possible, even beyond the expressly
recognized exception of “specially designed bite plates made to correct
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Application 14/275,588
extreme abnormalities.” Id. One of ordinary skill in the art would have
been able to balance the desire for contacting each tooth with the need to
allow the bite plate to fit with the patient’s orthodontic appliance in a way
that was both feasible and relatively comfortable.
In light of the foregoing, we conclude that what is claimed in claims
1, 12, and 17 would have been obvious before the effective filing date of the
claimed invention to a person having ordinary skill in the art.
We note the Patent Trial and Appeal Board is a review body, rather
than a place of initial examination. We have rejected independent claims 1,
12, and 17 based on our authority under 37 C.F.R. § 41.50(b). We have not,
however, reviewed the remaining claims to the extent necessary to determine
whether those claims are unpatentable under 35 U.S.C. § 103. We leave it to
the Examiner to ascertain whether the dependent claims should be rejected
based on similar grounds to those set forth herein or in combination with
additional prior art.
DECISION
We reverse the Examiner’s rejection of claims 1—5, 7—9, 12—15, and
17—20 under 35 U.S.C. § 102(a)(1) as anticipated by Lowe, and of claims 6,
10, 11, and 16 under 35 U.S.C. § 103 as unpatentable over Lowe and
Spaulding.
We enter a new ground of rejection and reject claims 1, 12, and 17
under 35 U.S.C. § 103 as obvious over Lowe, as set forth above.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). “A new ground of rejection pursuant to this paragraph
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Application 14/275,588
shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b).
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to the
examiner. The new ground of rejection is binding upon the
examiner unless an amendment or new Evidence not previously
of Record is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the
decision. Should the examiner reject the claims, appellant may
again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record. The request
for rehearing must address any new ground of rejection and state
with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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)(l)(iv).
REVERSED:
37 C.F.R, $ 41.50(b)
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