Ex Parte Soo et alDownload PDFPatent Trial and Appeal BoardMay 3, 201612212440 (P.T.A.B. May. 3, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/212,440 09/17/2008 ChiaSoo 29585 7590 05/05/2016 DLA PIPER US LLP 555 MISSION STREET SUITE 2400 SAN FRANCISCO, CA 94105-2933 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 385068-991101 1339 EXAMINER MORAN, EDWARD JOHN ART UNIT PAPER NUMBER 3732 NOTIFICATION DATE DELIVERY MODE 05/05/2016 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): PatentDocketing US-PaloAlto@dlapiper.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHIA SOO and KANG TING Appeal2014-000731 Application 12/212,440 Technology Center 3700 Before: CHARLES N. GREENHUT, MARK A. GEIER, and JASON W. MELVIN, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON i\.PPEi\L STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1- 5, 7-22, 25, and 26. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm. The claims are directed to methods and systems for moving teeth. Spec. 1, Title. Claim 1, reproduced below, is illustrative of the claimed subject matter: Appeal2014-000731 Application 12/212,440 1. A system for repositioning teeth from an initial tooth arrangement to a final tooth arrangement, comprising one or more cycle of successive appliances, the system including: (a) at least two identical first appliances having a geometry selected to reposition the teeth from the initial tooth arrangement to a first intermediate arrangement or the final tooth arrangement; (b) one or more intermediate appliances having geometries selected to progressively reposition the teeth from the first intermediate arrangement to successive intermediate arrangements including a last intermediate tooth arrangement, each of the one or more intermediate appliances having at least one duplicate of itself; and ( c) at least two identical final appliances having a geometry selected to progressively reposition the teeth from the initial tooth arrangement or the last intermediate arrangement to the final tooth arrangement, wherein the appliances comprise successive locks having different geometries shaped to receive and allow the appliances to reposition teeth from one arrangement to a successive arrangement, and wherein the system provides specifications of the appliances such that an orthodontic doctor can prescribe the order to use the appliances based on the specifications. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Chishti Rogers Phan (hereinafter "Phan Patent") Phan (hereinafter "Phan") us 5,975,893 US 6,394,809 B2 US 6,309,215 Bl US 2006/0008760 Al 2 Nov. 2, 1999 May 28, 2002 Oct. 30, 2001 Jan. 12,2006 Appeal2014-000731 Application 12/212,440 REJECTIONS Claims 1-5, 7-14, 16-19, 22, 25, and 26 are rejected under 35 U.S.C. § 102(b) as being anticipated by Phan as evidenced by Chishti. Final Act. 2.1 Claim 15 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Phan. Final Act. 7. Claim 20 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Phan and Phan Patent. Final Act. 7. Claim 21 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Phan and Phan Patent and Rogers. Final Act. 8. OPINION Regarding claim 1, the Examiner interpreted the term "duplicate of itself' to require appliances having the same geometry or geometries. Final Act. 4. The Examiner relied upon Appellants' Specification which identified "identical appliances" as referring to identical geometry or identical geometries and indicated the terms "duplicates" and "duplicate appliances" were used interchangeably with "identical appliances." Ans. 3 (citing Spec. 12, 11. 12-17). Appellants agreed that the terms "identical" and "duplicate" should be considered equal based on the Specification, but argued "duplicate of itself' is different from those terms and can only mean an appliance with identical geometry or geometries and other identical material properties. Reply Br. 3, Appeal Br. 6. 1 We note the After Final Amendment dated June 13, 2012, was entered by the Examiner on August 31, 2012, with the Request for Continued Examination dated July 13, 2012. Final Act. 2. Appellants' arguments with regard to refusal to enter the amendment are moot. Appeal Br. 4. 3 Appeal2014-000731 Application 12/212,440 We fail to see how the addition of the phrase "of itself" changes the meaning of the term "duplicate." The phrase "of itself' merely refers back to "the one or more intermediate appliances" recited earlier in the claim. Appellants have not provided sufficient evidence that the term "duplicate of itself' changes the meaning of the term "duplicate" as opposed to just defining the object of that term. Appellants additionally argued the term "duplicate of itself' does not preclude embodiments where identical copies have identical geometries as well as identical mechanical, chemical, biological, and other physical properties. Appeal Br. 5, Reply Br. 3. We do not disagree. However, the fact that other, more restrictive, embodiments are not precluded is not, without more, reason to limit the claim to those embodiments. Claims before the PTO are given their broadest reasonable construction. Although alternative embodiments may be present in the Specification, such embodiments may not be read into the claim where the claim language is broader. As discussed previously, the term "duplicate of itself' merely requires identical geometries and to read a narrower embodiment into the claim (such as the embodiment described by Appellants including identical geometries and other identical properties) would be improper. For the reasons discussed above, the Examiner's interpretation of the term "duplicate of itself' as requiring only that the appliances have the "same geometry" is reasonable. The Examiner found Phan disclosed duplicate appliances having the same geometry. Final Act. 4 (citing Phan para. 56). Appellants acknowledge Phan teaches appliances with identical geometry. Appeal Br. 6. As Appellants do not contest the teachings of 4 Appeal2014-000731 Application 12/212,440 Phan, the issue of claim construction discussed above is dispositive as to the rejection of claim 1. Dependent claims 2-5, 7-22, 25, and 26 are argued based only on dependency from claim 1. Appeal Br. 7-8. We affirm the rejection of these claims as well. DECISION The Examiner's rejections of claims 1-5, 7-22, 25, and 26 are affirmed. 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). AFFIRMED 5 Copy with citationCopy as parenthetical citation