Ex Parte Suter et al

Patent Trial and Appeal Board

Dec 27, 2018

12674035 (P.T.A.B. Dec. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/674,035 09/07/2010
21127 7590
POLSINELLI PC
One International Place
Suite 3900
BOSTON, MA 02110
12/31/2018
FIRST NAMED INVENTOR
Edmund Suter
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.
S0004/7044USO 3521
EXAMINER
NELSON,MATTHEWM
ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
12/31/2018 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):
thendricks@polsinelli.com
DC-IPDocketing@polsinelli.com
mswannichols@polsinelli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDMUND SUTER, PA TRICK STREFF, and STEFFEN KUEHNE
Appeal2017-002919
Application 12/674,035 1
Technology Center 3700
Before WILLIAM A. CAPP, BRANDON J. WARNER, and
ERIC C. JESCHKE, Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Edmund Suter et al. ("Appellants") seek review under 35 U.S.C.
§ 134(a) of the Examiner's decision, as set forth in the Final Office Action
dated November 5, 2015 ("Final Act."), rejecting claims 1 and 5-18. The
record includes a transcript of the oral hearing held on November 29, 2018
("Tr."). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm in part.
1 Appellants identify Straumann Holding AG as the real party in
interest. Appeal Br. 2.
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BACKGROUND
The disclosed subject matter "relates to a drill guide having a limit
stop for use in the dental field." Spec. 1:3--4.2 Claim 1, the sole
independent claim on appeal, is reproduced below, with bracketed letters
added to identify each clause:
1. A drill guide for use with a drill jig in the
dental field, comprising:
[a] an elongated grip having opposite ends,
the grip configured to be held in a hand outside an
oral cavity of a patient during drilling;
[ b] two drill guide sleeves, each fixed to the
grip, one at each end of the grip;
[ c] the grip having an underside and a top
face, the underside having a bearing part adjacent
each guide sleeve configured to bear against a drill
jig to stabilize the drill guide;
[ d] each guide sleeve extending a same fixed
distance from the underside of the grip;
[ e] each guide sleeve extending a different
distance from the top face of the grip to form a limit
stop of a different height to provide a different
drilling depth limit when the guide sleeve is inserted
in a bore of a drill jig.
2 Citations to the Specification refer to the version filed on September
7, 2010.
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REJECTIONS
1. Claims 1 and 5-18 stand provisionally rejected under the
doctrine of obviousness-type double patenting as unpatentable over claims
1-22 of Application No. 12/636,944. 3
2. Claims 1, 5, 6, 8, 9, and 11-17 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Brajnovic '668 (US 7,942,668 B2, issued May
17, 2011), Kameli (US 2005/0100860 Al, published May 12, 2005) and
Weinstein (US 2006/0240379 Al, published Oct. 26, 2006).
3. Claims 6 and 10 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Brajnovic '668, Kameli, Weinstein, and Brajnovic '270
(US 2007 /0281270 Al, published Dec. 6, 2007).
4. Claims 7 and 18 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Brajnovic '668, Kameli, Weinstein, and Mortimer (US
2006/0225235 Al, published Oct. 12, 2006).
DISCUSSION
Rejection 1 - Provisional Double Patenting
The Examiner first entered the provisional rejection in the Final
Office Action (dated November 5, 2015), which mailed after Application
No. 12/636,944 had already issued as U.S. Patent No. 8,708,699 (on April
29, 2014). See Application No. 12/636,944, Issue Notification (dated April
3 The Examiner also provisionally rejected claims 1 and 5-18 under
the doctrine of obviousness-type double patenting as unpatentable over
claims 1-16 of Application No. 12/673,257 in view of Weinstein. See Final
Act. 2--4. As noted by Appellants, the '257 application has been abandoned,
thereby rendering moot this portion of the provisional double patenting
rejection. See Appeal Br. 21.
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9, 2014). In the briefing here, neither Appellants nor the Examiner address
the merits of this provisional rejection. 4 See Appeal Br. 21 ( stating that this
provisional rejection "can be addressed once allowable subject matters
found, by the filing of a terminal disclaimer" and that "[i]t is not believed
that further consideration of this rejection is required during the appeal").
Given the record here, we do not reach this provisional rejection;
instead, we leave it to the Examiner to assess whether the provisional
obviousness-type double patenting rejection should be converted to a non-
provisional obviousness-type double patenting rejection based on the issued
claims of U.S. Patent No. 8,708,699. See Ex parte Jerg, Appeal 2011-
000044, 2012 WL 1375142, at *3 (BPAI 2012) (informative) ("Panels have
the flexibility to reach or not reach provisional obviousness-type double-
patenting rejections.") (citing Ex parte Monda, 95 USPQ2d 1884 (BPAI
2010) (precedential)).
Rejection 2 - The Rejection of Claims 1, 5, 6, 8, 9, and 11-17
Based on Brajnovic '668, Kameli, and Weinstein
A. Claims 1, 5, 9, and 11-13
Appellants present certain arguments asserting the patentability of all
claims in this Rejection as a group based on language in sole independent
claim 1. Appeal Br. 7-20; Reply Br. 1-10. Because Appellants also provide
additional arguments for (1) claim 6 (see Rejection 1 § B), (2) claim 8 (see
Rejection 1 § C), and (3) claims 14--17 (see Rejection 1 § D), the analysis of
the arguments directed at the Rejection overall determines the outcome for
4 We note that, in the Answer, the Examiner repeats Rejections 2
through 4 listed above (see Ans. 2-5), but does not repeat either provisional
double patenting rejection from the Final Office Action.
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claims 1, 5, 9, and 11-13. For this group, we select claim 1 as
representative, with claims 5, 9, and 11-13 standing or falling with claim 1.
See 37 C.F.R. § 4I.37(c)(l)(iv).
For claim 1, the Examiner relied on Brajnovic '668 for certain
limitations (Final Act. 4--5), but stated that "Brajnovic '668 fails to show the
grips attached to one another so that a guide sleeve is at each end" (id. at 5).
The Examiner found, however, that "Kameli teaches a one piece dental
instrument with an elongated grip and an extension at one end or
alternatively both ends ([0005] for instance[)]." Id. According to the
Examiner, it would have been obvious for one of ordinary skill in the art at
the time of the invention "to modify Brajnovic '668' s guide by incorporating
extensions on both sides of a single grip as taught by [Kameli] in order to
take advantage of alternative arrangements known in the art and for reducing
the number of instruments." Id.
The Examiner stated that "Brajnovic '668/Kameli fails to show each
of the guide sleeves extend a different distance from the top face." Final
Act. 5. The Examiner found, however, that "Weinstein teaches a drilling
guide wherein sleeves are provided with different stop heights and same
internal diameters or different internal diameters ([0092] for instance)." Id.
at 6. According to the Examiner, it would have been obvious for one of
ordinary skill in the art at the time of the invention "to modify Brajnovic
'668/Kameli' s guide by including the different stop heights and same
internal diameters or different internal diameters as taught by Weinstein in
order to allow further choice and control over drilling depths for different
stages of treatment." Id.
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Based on the number of arguments presented by Appellants, we
address the arguments in the numbered subsections below, with the
arguments grouped generally in the same manner as by Appellants.
1.
In the first group of arguments, Appellants present six alleged "clear
errors in the Examiner's cited combination of Brajnovic '668/Kameli/
Weinstein against claim 1." Appeal Br. 8. First, Appellants argue that
"[ n Jone of the cited references teaches an elongated grip with drill guide
sleeves on opposite ends." Appeal Br. 8.
The Examiner responds that "it was acknowledged that the references
individually do not show this" claim language. Ans. 6.
We are not apprised of error based on this argument because
nonobviousness cannot be established by attacking references individually
when the rejection is based on the teachings of a combination of prior art
references. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir.
1986). By arguing that none of the references alone teaches all aspects of
the identified limitations in clauses a and b, Appellants do not address the
rejection as articulated, in which the Examiner relies on certain combined
teachings of the prior art. See Final Act. 4---6. Specifically, the Examiner
relies on the combined teachings of Brajnovic '668 and Kameli to address
the claim language at issue. Id. at 4--5.
Second, Appellants argue that "[ n Jone of the cited references teaches
an elongated hand held grip that is held during drilling." Appeal Br. 8.
The Examiner responds that Brajnovic '668 discloses "a grip capable
of being gripped outside the mouth, which can be seen in ... Fig. 6 at 11 b
and 12b for instance." Ans. 6.
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With this argument, Appellants again argue the references
individually. See Merck, 800 F .2d at 1097. The Examiner relies on the
combined teachings of Brajnovic '668 and Kameli to address the claim
language at issue in clause a. See Final Act. 4--5.
Third, Appellants argue that "[i]t is only by impermissible hindsight
reconstruction that the Examiner can combine the cited references to create a
hypothetical drill guide with drill guide sleeves on opposite ends, and an
elongated hand grip that is held during drilling." Appeal Br. 8.
The Examiner responds that "each reference has been provided with a
motivation for combination." Ans. 6.
Although Appellants contend that the Examiner has engaged in
hindsight reconstruction, Appellants do not address the reasoning provided
by the Examiner to modify Brajnovic '668 with Kameli and with Weinstein
(Final Act. 4--6). See Appeal Br. 8; see also In re Cree, Inc., 818 F .3d 694,
702 n.3 (Fed. Cir. 2016) (viewing an "impermissible hindsight" argument as
"essentially a repackaging of the argument that there was insufficient
evidence of a motivation to combine the references"). We determine that the
Examiner's reasoning supports a prima facie case of obviousness for claim
I. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). By not
addressing the reasoning provided, Appellants have not shown error in the
relevant findings or the conclusion as to obviousness, which we determine to
be supported by rational underpinnings.
Fourth, Appellants argue that "[e]ven assuming the cited combination
of references is proper, which [Appellants] contest[], there are still missing
claim elements not taught by any of the references." Appeal Br. 8.
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For the reasons discussed throughout this section (i.e., Rejection 2
§ A), we do not agree that any limitations are not present in the modified
device proposed by the Examiner.
Fifth, Appellants argue that "[ n Jone of the cited references teaches a
bearing part (35 in Fig. 1) adjacent a guide sleeve to abut a drill jig, distinct
from a grip part that is held during drilling." Appeal Br. 8.
The Examiner responds that claim 1 "the claim explicitly states that
the bearing part is part of the underside of the grip." Ans. 6.
With this argument, Appellants again argue the references
individually. See Merck, 800 F .2d at 1097. The Examiner relies on the
combined teachings of Brajnovic '668 and Kameli to address the claim
language at issue (in clauses a and c). Final Act. 4--5. Moreover, as noted
by the Examiner, claim 1 does not require that the "grip" is "distinct" from
the "bearing part," as argued by Appellants. See Appeal Br. 8; see also In re
Self, 671 F.2d 1344, 1348 (CCPA 1982) (rejecting arguments "not based on
limitations appearing in the claims"). Instead, clause c indicates that the
"bearing part" is part of the "underside" of the "grip." See Appeal Br. 23
(Claims App.). In the Reply, Appellants do not address the Examiner's
finding that "the underside of the grip of Brajnovic '668 is capable of
bearing on a drilling jig when fully inserted." Ans. 6. We see no error in
that finding.
Sixth, Appellants argue that "none of the references teaches two guide
sleeves that extend different distances/heights (hl and h2 in Figs. 3a-3b) and
serve as limit stops when the drill guide (10) is inserted in a drill jig (50)."
Appeal Br. 8.
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The Examiner responds that "Weinstein was included explicitly show
this wherein different stop heights are provided to allow for different drilling
depths." Ans. 6-7.
With this argument, Appellants again argue the references
individually. See Merck, 800 F .2d at 1097. The Examiner relies on the
combined teachings of Brajnovic '668, Kameli, and Weinstein to address the
claim language at issue. Final Act. 4--6.
2.
In the second group of arguments, Appellants address Brajnovic '668.
See Appeal Br. 9-12 (§ A). First, Appellants assert that Brajnovic '668
"simply provides two separate drill guide sleeves" and "fails to provide any
structure for connecting the drill guide sleeves and thus entirely misses the
point of [the] invention." Id. at 9 ( emphasis omitted).
With this argument, Appellants again argue the references
individually. See Merck, 800 F.2d at 1097; see Ans. 7 (stating that "it was
acknowledged that Brajnovic [' 668] individually does not show" these
aspects). The Examiner relies on the combined teachings of Brajnovic '668
and Kameli to address the claim language at issue. Final Act. 4--5.
Second, Appellants contend that Brajnovic '668 lacks "any disclosure
of holding the drill guide unit by hand during drilling." Appeal Br. 9.
Claim 1 recites "the grip configured to be held in a hand outside an
oral cavity of a patient during drilling." Id. at 23 (Claims App.). As noted
above in the context of the second argument in subsection 1, the Examiner
found that Brajnovic '668 discloses "a grip capable of being gripped outside
the mouth, which can be seen in ... Fig. 6 at 11 band 12b for instance."
Ans. 6. Addressing this language in the Final Office Action, the Examiner
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stated that elements "1 lb, 12b [in Brajnovic '668] are explicitly noted as
handles" and that "this language is very broad and encompasses any part of a
guide that is capable of being gripped [ and] are of a length that allow
gripping while drilling as seen in Fig. 1." Final Act. 4. Appellants have not
adequately identified the error in these statements or that the modified
device-including the guide units of Brajnovic '668 modified by the grip of
Kameli-would fail to satisfy the claim language at issue in the context of
the drilling disclosed in Brajnovic '668. See, e.g., Brajnovic '668, 4:7-20
(discussing Fig. 12); see Merck, 800 F.2d at 1097.
Third, Appellants argue that Brajnovic '668 lacks "any disclosure of
connecting the individual drill guide units in a separate assembly to facilitate
handling during drilling." Appeal Br. 9
For the same reasons discussed in the two prior arguments in this
subsection, this argument does not apprise us of error.
Fourth Appellants argue that Brajnovic '668 lacks "any disclosure of a
bearing part for engaging (stabilizing) the drill jig, distinct from a grip part
that is held by the operator during the drilling procedure." Appeal Br. 9.
For the same reasons discussed in the fifth argument in subsection 1
above, this argument does not apprise us of error.
Appellants also provide a "Table 1" that, according to Appellants,
shows that "Brajnovic '668 is missing at least six elements of claim 1."
Appeal Br. 12; see also id. at 11 (Table 1 ).
The Examiner addresses individually each of the rows in Appellants'
Table 1. See Ans. 7-9. For the reasons provided by the Examiner (id.), we
are not apprised of error by the arguments in Table 1. As noted by the
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Examiner, with Table 1, Appellants attack Brajnovic '668 individually for
not disclosing the entirety of claim 1. See id.; Merck, 800 F .2d at 1097.
3.
In the third group of arguments, Appellants address Kameli. See
Appeal Br. 12-13 (§ B). Appellants argues that "Kameli fails as a secondary
reference because it has no teaching or relevance in the field of the claimed
invention for at least ... three reasons." Id. at 12.
As the first and second reasons, Appellants argue that "there is no
precision requirement in Kameli" and "there is no drilling in Kameli." Id.
According to Appellants, "Kameli has nothing to do with drilling" and one
of ordinary skill in the art "cannot learn [ from Kameli] anything relevant to
creating a drill guide for precision drilling that provides bearing surfaces
against a drill jig and limit stops to prevent nerve damage during drilling."
Id. at 13. As the third reason, Appellants argue that "there are no guide
sleeves in Kameli." Id. at 12. According to Appellants, Kameli does not
teach the skilled person anything about guide sleeves, how to
position guide sleeves in a drill jig, how to fix multiple guide
sleeves on an elongated grip, and how to accomplish precision
drilling utilizing multiple guide sleeves (fixed to an elongated
grip) each positionable in a drill jig where the result of
imprecision is nerve damage.
Id. at 13.
As to the first reason, we note that claim 1 does not recite a "precision
requirement." Appeal Br. 12. Further, even if Kameli generally relates to
less "precise" activities than Brajnovic '668, Appellants have not shown that
the differences identified undermine the factual findings or reasoning relied
on to support the conclusion of obviousness, when considering the modified
device proposed by the Examiner. See Final Act. 4---6; see also KSR Int 'l
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Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007) ("[F]amiliar items may have
obvious uses beyond their primary purposes, and in many cases a person of
ordinary skill will be able to fit the teachings of multiple patents together
like pieces of a puzzle.").
As to the second and third reasons, as noted by the Examiner,
Brajnovic '668 is relied on-rather than Kameli-to address the "during
drilling" aspect of clause a and the "guide sleeves" in clause b. See Ans. 10
("Appellant[ s] argue[] that Kameli has nothing to do with drilling or guide
sleeves. This has already been shown in Brajnovic. "); Merck, 800 F .2d at
1097.
4.
In the fourth group of arguments, Appellants address Weinstein. See
Appeal Br. 13-16 (§ C).
First, Appellants argue that Weinstein "fails to teach the skilled
person how to construct [the] claimed limit stops in the form" as recited in
clause e (Appeal Br. 13 (emphasis omitted)) and argues that, "even if the
skilled person somehow consulted Weinstein in an attempt to modify
Brajnovic '668 or Kameli, there is no teaching how to accomplish the
combination" (id. at 15). According to Appellants, "[a]t best, Weinstein
teaches an unrelated structure" that "cannot be incorporated into either the
primary or secondary references." Id. at 13.
The Examiner responds that "[t]aking Brajnovic ['668] and simply
incorporating the different stop heights as taught by Weinstein would result
in the claimed structure." Ans. 10.
We understand the Examiner to propose modifying the identified
"guide sleeves" (elements 11-15 from Brajnovic '668) based on the
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teachings in paragraph 92 of Weinstein5 such that, in the context of the
modified device, each "guide sleeve" would "form a limit stop of a different
height" as recited in clause e. See Final Act. 6; Ans. 10.
Because the prior art need not explicitly disclose or suggest the
proposed modification (as discussed in the prior paragraph), the absence of
express teachings regarding the proposed modification does not undermine
the rejection. See KSR, 550 U.S. at 418 (stating that the obviousness
analysis "need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ");
see also In re Jacoby, 309 F.2d 513, 516 (CCPA 1962) (discussing how "the
problem cannot be approached on the basis that workers in the art would
know only what they could read in the references").
As to Appellants' argument that the "structure" of Weinstein "cannot
be incorporated into either the primary or secondary references" (Appeal
Br. 13), we first note that "[t]he test for obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference." In re Keller, 642 F.2d 413, 425 (CCPA
1981 ). "Rather, the test is what the combined teachings of the references
would have suggested to those of ordinary skill in the art." Id. Further,
Appellants' "incorporation" argument raises certain aspects in Weinstein not
5 Paragraph 92 of Weinstein discusses Figure 5B and discloses, for
example: "Penetration depth into jaw bone is optionally set by selecting a
suitable penetration stop 522. This depth is optionally measured on a CT
image or by measuring an X-ray image. Alternatively or additionally, to
selecting a stop 522 from a set of stops, stop 522 may be threaded to allow
selectable depth by rotation."
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relied on in the context of the modified device, such as tube 510, capsule
512, sleeve 514, and nuts 516 and 518. See Appeal Br. 13 (§ C); see also id.
at 15 ( discussing elements of Weinstein not relied on). Here, the Examiner
relies on teachings related to stop 522. See Final Act. 6; Ans. 10.
Second, Appellants argue that, in Weinstein, "there is no elongated
grip having opposite ends with two drill guide sleeves, one fixed to each end
of the grip, which grip is held in a hand outside an oral cavity of a patient
during drilling." Appeal Br. 14. According to Appellants, "in Weinstein[,]
the drill guide 506 is locked in position in a base tube 510" and "[t]here is no
disclosure of anything being held by hand during drilling." Id. at 14--15.
We are not apprised of error based on this argument because, as noted
by the Examiner, Weinstein is not relied on for all the aspects of clauses a
and b highlighted by Appellants. See Ans. 10 (stating that "Appellant[s]
argue[] no elongated grip, among other limitations, in Weinstein that have
already been disclosed by the other references"). Instead, the Examiner
relies on Brajnovic '668 and Kameli for clauses a and b. Final Act. 4--6;
Ans. 6-10; see Merck, 800 F.2d at 1097.
Third, Appellants argue that "[ e ]ven if the limit stop of Weinstein
were somehow utilized in Brajnovic '668, it would not produce [the]
claimed limit stops" as recited in clause e. Appeal Br. 15. 6 According to
Appellants, the claimed "fixed structural arrangement is designed to simplify
the construction and use of [the] claimed invention" and is "specifically
designed to avoid providing a rotatable adjustable limit stop, such is
provided in Weinstein." Id. (citing Spec. 6:24--27).
6 By "limit stop of Weinstein," we understand Appellants to refer to
element 522. See Weinstein ,r 92.
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This argument does not address the rejection as articulated. Here, the
Examiner does not rely on the embodiment in Weinstein with rotatably
adjustable stops 7 but, rather, on the alternative embodiment with
interchangeable stops. 8 See Ans. 10 ("Appellant[ s] argue[] that Weinstein
only teaches rotatably adjustable stops, however this is only one
embodiment and it is the interchangeable stops with different heights from
previously cited [0092] of Weinstein that is relied upon.").
Appellants also provide a "Table 2" that, according to Appellants,
"summarizes the elements of ... claim [ 1] that are not disclosed in any of
Brajnovic '668, Kameli, and Weinstein." Appeal Br. 16. 9
The Examiner addresses individually each of the rows in Appellants'
Table 2. See Ans. 11-14. For the reasons provided by the Examiner (id.),
we are not apprised of error by the arguments in Table 2. As noted by the
Examiner, with Table 2, Appellants attack each reference individually for
not disclosing the entirety of claim 1. See id.; Merck, 800 F .2d at 1097.
5.
In the fifth group of arguments, Appellants contend that "[ e ]ven if
combined, the references fail to teach or suggest" clause e. Appeal Br. 19
7 See Weinstein ,r 92 ( discussing an embodiment in which "stops 522
may be threaded to allow selectable depth by rotation").
8 See Weinstein ,r 92 ("Penetration depth into jaw bone is optionally
set by selecting a suitable penetration stop 522 .... Alternatively or
additionally[] to selecting a stop 522 from a set of stops, stop 522 may be
threaded to allow selectable depth by rotation." (emphasis added)).
9 To create Table 2, Appellants appear to have started with Table 1
and added two columns to the right side: one column listing aspects that
Appellants allege "Kameli Does Not Disclose" and one column listing
aspects that Appellants allege "Weinstein Does Not Disclose." Compare
Appeal Br. 11 (Table 1), with id. at 17-18 (Table 2).
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(§ D) (emphasis omitted). First, Appellants argue that, "[e]ven if the
references are combined as the Examiner asserts, the combination still fails
to teach two guide sleeves" in which the guide sleeves satisfy clause e and
argue that "Weinstein fails to disclose this structure." Id.; see also id.
("None of the references disclose limit stops of differing heights.").
According to Appellants, "[t]he Examiner's stated reliance on Weinstein
fails to account for the specifics of [the] claim language regarding providing
two drill guide sleeves" in which the guide sleeves satisfy clause e.
We are not apprised of error based on this argument because
Weinstein alone is not relied on for all the aspects of clauses b and e
highlighted by Appellants. Instead, the Examiner relies on the combination
of references. Final Act. 4--6; Ans. 14; see Merck, 800 F .2d at 1097.
Second, Appellants contend that "Weinstein does not disclose a grip
at all ... and can therefore certainly not disclose a sleeve extending from the
top side of an absent(!) grip." Appeal Br. 19 (referencing the fourth set of
arguments above).
We are not apprised of error based on this argument because, as noted
by the Examiner, Weinstein is not relied on for all the aspects of clauses a,
b, and e highlighted by Appellants. See Ans. 14 (stating that "a stop height
would have to extend from the top of the grip of Brajnovic in the
combination"). Instead, the Examiner relies on the combination of
references to address the claimed aspects. Final Act. 4--6; Ans. 14; see
Merck, 800 F .2d at 1097.
Third, Appellants argue that "[n]one of the references teach a bearing
part adjacent each sleeve ( engaging a drill jig), distinct from an elongated
grip (held by the operator during drilling)." Appeal Br. 19.
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For the same reasons discussed in the fifth argument in subsection 1
above, this argument does not apprise us of error.
6.
We tum now to arguments in the Reply Brief. First, Appellants cite
disclosures at column 3, lines 34 to 35 and lines 39 to 41 of Brajnovic '668
and argue ( 1) that "Brajnovic' s drill guide units intentionally include short
handles such that space remains within the patient's mouth for the drill guide
unit to be screwed into a guide sleeve" and (2) that "[t]his explicitly
precludes any modification to connect two drill guide units" as proposed.
Reply Br. 3 ( emphasis omitted). According to Appellants, "[ c ]onnecting
two of Brajnovic' s drill guide units would compromise the basic
functionality of his invention" because "each drill guide unit of Brajnovic is
required to have a separate handle 'which allow the units to be turned about
the[ir] longitudinal axes' and secured into template (1)" and is "also required
to have a short handle such that space exists within the patient's mouth for
the drill guide unit to be secured into a guide sleeve." Id. ( quoting
Brajnovic '668, 3:34--35). Appellants contend that "[a]s such, one of
ordinary skill in the art would never be motivated to modify Brajnovic as
the Examiner has speculated." Id. at 3--4.
Appellants did not provide this argument until the Reply Brief.
Compare Appeal Br. 8-20, with Reply Br. 3--4. At the hearing, Appellants
acknowledged that, in the Appeal Brief, the argument "was only stated in
terms that [ the identified 'drill guide sleeves' are] separate" rather than
"about [them] rotating." Tr. 8:3-12. We address the argument that the
identified "drill guide sleeves" in Brajnovic '668 are separate in the context
of, for example, the first argument in subsection 2 above. We need not
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address the untimely argument as to the allegedly necessary rotation of the
identified "drill guide sleeves" in Brajnovic '668. See 37 C.F.R.
§ 41.41 (b )(2). Appellants have not shown good cause for failing to provide
this argument in the Appeal Brief. See id.
Even if this argument had been timely presented, it is not clear that the
disclosures relied on-providing ( 1) that drill guide units 11 and 12 include
handle parts that "allow the units to be turned about the longitudinal axes of
the parts I la and I2a" and (2) that "units 13, 14 and 15 can be applied
directly to the guide sleeve ( e.g. guide sleeve 2) in the drill template"
(Brajnovic '668, 3:34--35, 3:39--41}-would necessarily indicate to one of
ordinary skill in the art that the identified "drill guide sleeves" in Brajnovic
'668 must screw in (rather than, for example, slide in) to the remaining
relied-on structures. Regardless, because Appellants raised this argument
for the first time in the Reply Brief, we do not have findings from the
Examiner on the issue.
Second, Appellants argue that "there is no reasonable motivation to
combine Kameli' s tool for placing a filling in a tooth ( a low risk, easily
visible procedure) with Brajnovic's drill guide for drilling into a patient's
zygoma, or cheek bone (a high risk, inaccessible procedure)." Reply Br. 4.
According to Appellants, "Kameli' s dental instrument for placing a filling in
a tooth would never be used in conjunction with Brajnovic's drill guide, for
at least the reason that Brajnovic's drill template (1; FIG. 1, previous page)
completely blocks access to the teeth." Id. Appellants assert that the
Examiner's position is that, because "Brajnovic and Kameli are both dental
tools, a person of ordinary skill in the art would have looked at these two
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references and been inspired to combine them as claimed." Id. at 5
( discussing Ans. 9-10).
Although Appellants contend that the Examiner has failed to provide
sufficient articulated reasoning and engaged in "quintessential improper
hindsight" (Reply Br. 5 ( emphasis omitted)) as to modifying Brajnovic '668
based on Kameli, Appellants do not address the reasoning provided by the
Examiner (Final Act. 5). As discussed above, according to the Examiner, it
would have been obvious for one of ordinary skill in the art at the time of the
invention "to modify Brajnovic '668' s guide by incorporating extensions on
both sides of a single grip as taught by [Kameli] in order to take advantage
of alternative arrangements known in the art and for reducing the number of
instruments." Final Act. 5. As also discussed above, we determine that the
Examiner's reasoning (both to modify Brajnovic '668 based on Kameli (at
issue here) and based on Weinstein) supports a prima facie case of
obviousness for claim 1. See Oetiker, 977 F.2d at 1445. By not addressing
the reasoning provided, Appellants have not shown error in the relevant
findings or the conclusion as to obviousness, which we determine to be
supported by rational underpinnings. See id.
Moreover, the fact that, with the modified device, a person may not be
able to perform the function disclosed in Kameli (i.e., placing a filling in a
tooth) does not undermine the rejection as articulated. Cf In re Gordon, 733
F.2d 900, 902 (Fed. Cir. 1984) (reversing a rejection because modifying the
prior art by turning a filter upside down would render it incapable of
filtering, and thus, inoperable for its intended purpose). In the rejection,
Kameli as well as Weinstein are relied on to modify Brajnovic '668.
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Further, for the reasons discussed in subsection 3 above, Appellants
have not shown that the alleged differences identified----e.g., "low risk"
versus "high risk" activities (Reply Br. 4}-undermine the factual findings
or reasoning relied on to support the conclusion of obviousness, when
considering the modified device proposed.
Third, Appellants argue that the Examiner improperly relies on
Weinstein's teachings of "varying the height of penetration stop 5 22 in order
to vary the depth of drilling" in order to modified Brajnovic' 668/Kameli
because "this is a teaching already contemplated by Brajnovic, who teaches
that the effective height of the drilling guide units 13, 14, 15 can be adjusted
in order to adjust drilling depth." Reply Br. 7. According to Appellants,
"Brajnovic teaches that the drill guide units 13, 14, 15 can be: provided
'with different dimensions' (3:38) or 'applied in either the [extension] units
5, 6."' Id. Appellants contend that "[t]here is no motivation for such a
combination, and one of ordinary skill in the art would understand that such
a modification would in fact complicate the manufacture of Brajnovic' s drill
guide unit while offering no improvement to its disclosed functionality." Id.
at 8; see also id. at 9 ("The Examiner imposes Weinstein as a solution to a
problem that quite simply does not exist in Brajnovic." ( emphasis omitted)).
This argument does not apprise us of error. As an initial matter,
Appellants did not provide this argument until the Reply Brief. Compare
Appeal Br. 8-20, with Reply Br. 6-8. Again, we need not address this
untimely argument. See 37 C.F.R. § 4I.41(b)(2). Appellants have not
shown good cause for failing to provide this argument in the Appeal Brief.
See id.
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Even if this argument had been timely presented, it is not clear that the
disclosures relied on-providing ( 1) that Figure 7 "shows exemplary
embodiments of second drill guide units 13, 14, 15, with a corresponding
structure to that of the drill guide units 11 and 12, but with different
dimensions" (Brajnovic '668, 3:36-38 (emphasis added)) (2) that Figure 6
"shows exemplary embodiments of drill guide units 11 and 12 with cylinder
parts I la and 12a via which the drill guide units can be applied in either the
units 5, 6" (id. at 3:28-30 (emphasis added)}-would necessarily indicate to
one of ordinary skill in the art that the identified "drill guide sleeves" in
Brajnovic '668 provide varied depth of the drilling. Regardless, because
Appellants raised this argument for the first time in the Reply Brief, we do
not have findings from the Examiner on the issue.
For the reasons above, we sustain the rejection of independent
claim 1. Claims 5, 9, and 11-13 fall with claim 1.
B. Claim 6
The Examiner discussed claim 6 in the body of Rejection 2 (Final
Act. 5; Ans. 3) but did not list that claim in the lead paragraph for the
Rejection (Final Act. 4; Ans. 2). Because the Examiner addressed claim 6 in
the body of the Rejection (Final Act. 5) and maintained that discussion in the
Answer (Ans. 3), we view the Examiner as having intended to reject claim 6
as part of Rejection 2 (as well as Rejection 3, as discussed below).
Because we affirm the rejection of claim 6 in Rejection 3, however,
we do not reach this alternative rejection of claim 6. See 37 C.F.R.
§ 4I.50(a)(l) ("The affirmance of the rejection of a claim on any of the
grounds specified constitutes a general affirmance of the decision of the
examiner on that claim, except as to any ground specifically reversed.").
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C. Claim 8
Claim 8 depends directly from claim 1 and adds: "wherein the grip
can be bent by hand." Appeal Br. 23 (Claims App.). The Examiner found
that "the grip is capable of being bent by hand." Final Act. 5.
Appellants argue that "there is no support for this conjecture." Appeal
Br. 20.
The Examiner responds that "the size of the guide sleeve alone (for
use in the mouth) would allow any conventional tool material to be bent by
hand." Ans. 15.
We agree with Appellants that the record does not support the finding
that the "elongated grip" in the modified device-body portion 12 from
Kameli (see, e.g., Kameli, Fig. 1}-is "capable of being bent by hand" as
required by claim 8. As to the comments in the Answer (Ans. 15), as an
initial matter, the Examiner addresses the "guide sleeves" recited in clause b
of claim 1 rather than the "elongated grip" recited in clause a of claim 1 ( and
at issue in claim 8). Moreover, even assuming the Examiner intended to
reference body portion 12 in Kameli in the Answer, the Examiner has not
provided an adequate basis in fact or technical reasoning to reasonably
support a determination that the allegedly inherent characteristic-being
capable of being bent by hand-necessarily flows from the teachings. See
Ex parte Whalen, 89 USPQ2d 1078, 1083 (BP AI 2008) (precedential).
For these reasons, we do not sustain the rejection of claim 8.
D. Claims 14--1 7
The Examiner addresses claims 14--17 as part of this rejection. See
Final Act. 5-6.
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Appellants argue that the rejection of claims 14--1 7 should be reversed
because, "[i]n rejecting claim 1 [,] the Examiner equates the claimed 'guide
sleeve' with the Brajnovic '668 cylinder parts I la, I2a" whereas "in
rejecting claims 14--16[,] the Examiner equates the claimed guide sleeve
with the Brajnovic '668 guide sleeve 2, a different component." Appeal Br.
19-20 ( citing Final Act. 5). According to Appellants, in rejecting claim 17,
"the Examiner reverts back to equating the claimed guide sleeve with the
cylinder parts I la, I2a," which "compounds the confusion." Id. at 20.
As an initial matter, we first note that in the rejection of claim 1, the
Examiner identified cylinder parts 11a/12a (see Brajnovic '668, Fig. 6) as
well as the corresponding cylindrical portions of elements 13-15 (see id.,
Fig. 7) as the "drill guide sleeves" recited in claim 1. See Final Act. 4 ( citing
Figures 6 and 7 regarding clause b ).
We tum now to claims 14--1 7, each of which depends from claim 1.
The Examiner addressed claims 14 and 15 together, stating: "a set with a
drill jig and a guide with standard sleeves as above that match one another
(Fig. 11-12 for instance)." Final Act. 5. Claims 14 and 15 each recites
certain similar features. Given that each of claims 14 and 15 depends
directly from claim 1, and given the understanding of the rejection of claim
1 discussed in the prior paragraph, we understand the Examiner to have
identified portions of elements 11-15 as the "guide sleeves" recited in
claims 14 and 15. In addition, we understand the Examiner to have
identified template 1 in Brajnovic '668 as the "drill jig" recited in claims 14
and 15. See, e.g., Final Act. 4--5 (addressing clause c of claim 1 and stating
"Fig. 12 [of Brajnovic '668] for instance shows where the underside would
abut the jig when fully inserted").
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As to claim 15 specifically, we understand the Examiner to have
identified guide sleeve 2 in, for example, Figure 12 of Brajnovic '668, as the
recited "standard drill sleeve[]." With this understanding and those
discussed above, we do not agree with the premise of Appellants'
argument-i.e., that in rejecting claim 15, "the Examiner equates the
claimed guide sleeve with the Brajnovic '668 guide sleeve 2, a different
component." Appeal Br. 19-20 (citing Final Act. 5). As discussed above, in
the context of claim 15, we understand the Examiner to have identified ( 1)
element 2 in Brajnovic '668 as the recited "standard guide sleeve[]" and (2)
portions of elements 11-15 in Brajnovic '668 as the recited "guide sleeves."
Because Appellants do not apprise us of error as to the rejection of claim 15,
we sustain that rejection.
We now tum back to claim 14, which recites, among other aspects,
that "the external diameters of the guide sleeves match the diameters of the
drill holes in the drill jig." Appeal Br. 24 (Claims App.). Given the
understanding of the rejection as discussed above, the limitation at issue
would require that the external diameters of the cylindrical portions of
elements 11-15 match the diameters of the drill holes in element 1. Neither
Figure 11 nor Figure 12 relied on by the Examiner as to claim 14, discloses
this feature; instead, Figure 12, for example, discloses guide sleeve 2
intervening between element 13 and element 1. To Appellants' argument
regarding claim 14, the Examiner responds that element 2 in Brajnovic '668
is not identified as the recited "guide sleeve[]" in claim 14. See Ans. 14.
Although that appears correct, element 2 in Brajnovic '668 is the only
element shown in Figure 12 with an external diameter that matches the
diameter of the drill holes of the identified "drill jig"----element 1. For these
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reasons, we view Appellants' argument as having identified an error in the
rejection of claim 14. Thus, we do not sustain the rejection of that claim.
We tum now to claim 16. In rejecting claim 16, the Examiner stated
"the drill guides have guide sleeves of different internal diameters ( col. 3,
lines 23-2 7 [ of Brajnovic '668] for instance)." Final Act. 5. In contrast to
claims 14 and 15, claim 16 does not recite a requirement as to the "external
diameters" of the "guide sleeves." On the record here, Appellants have not
adequately explained how the issue identified----element 2 intervening
between elements 13 and 1 in Figure 12 of Brajnovic '668-arises in the
context of the rejection of claim 16. Thus, we sustain this rejection.
As to claim 17, Appellants acknowledge that the Examiner identified
cylinder parts 11a/12a (see Brajnovic '668, Fig. 6) as the "drill guide
sleeves" recited in claim 1. See Appeal Br. 20 (stating that "the Examiner
reverts back to equating the claimed guide sleeve with the cylinder parts 11 a,
12a (in rejecting claim 17)[, which] compounds the confusion"). As
discussed above, the Examiner also identifies the corresponding cylindrical
portions of elements 13-15 (see id., Fig. 7) as the "drill guide sleeves."
Regardless, in the context of the rejection of claim 17 alone, Appellants
have not identified any inconsistency or error. Thus, we sustain the rejection
of claim 17.
Rejection 3 - The Rejection of Claims 6 and 10 Based on
Brajnovic '668, Kameli, Weinstein, and Brajnovic '270
The Examiner addressed claims 6 and 10 in the same discussion,
stating that "Brajnovic '668/Kameli/W einstein discloses the device as
previously described above [regarding claim 1], but fails to show the grip is
several pieces and the sleeves are angled to one another." Final Act. 6. The
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Examiner found, however, that "Brajnovic '270 teaches a drill guide for use
with a drilling jig wherein the grip has is [sic] several pieces ( at 9 and 11 in
Fig. 1; therefore the sleeves at either end of the combination would be
angled to one another)." Id. According to the Examiner, it would have been
obvious for one of ordinary skill in the art at the time of the invention "to
modify Brajnovic '668/Kameli/W einstein' s guide by utilizing the several
pieces and resulting angle as taught by Brajnovic '270 in order to allow
better access to specific areas of the mouth." Id. at 6-7 ( citing
Brajnovic '270 ,r 24).
A. Claim 6
As to claim 6, Appellants argue that "Brajnovic '270 does show 2
concentric parts 14, 15 of a lengthwise adjustable handle part (see Figs. 2-5)
but this handle part cannot by design accommodate 2 guide sleeves at
opposite ends, as screw 14 must be threaded into the bore of 15 to provide
the length adjustment." Appeal Br. 20.
With this argument, Appellants do not address the rejection as
articulated. As the "elongated grip having opposite ends" in clause a of
claim 1, the Examiner relies on body portion 12 from Kameli, not parts 14
and 15 of Brajnovic '270. Because Appellants have not shown error in the
rejection as articulated, we sustain the rejection of claim 6 as unpatentable
based on Brajnovic '668, Kameli, Weinstein, and Brajnovic '270.
B. Claim 10
Following the discussion as to claim 6 summarized above, Appellants
state, "[ s ]imilarly[,] claim 10 requires guide sleeves at opposite ends of the
elongated grip, not at one end." Appeal Br. 20.
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With this argument, Appellants do not address the rejection as
articulated. To address clauses a and b of claim I-which includes the
features argued by Appellants-the Examiner relied on the combination of
Brajnovic '668 and Kameli, not Brajnovic '270. See Ans. 15 (stating that
"Appellant[s] argue[] that Brajnovic ['270] does not show the tools at either
end of a grip, however this has already been shown in Kameli and Brajnovic
['668]"). Because Appellants have not shown error in the rejection as
articulated, we sustain the rejection of claim 10.
Rejection 4 - The Rejection of Claims 7 and 18 Based on
Brajnovic '668, Kameli, Weinstein, and Mortimer
Claims 7 and 18 depend from claim 1. See Appeal Br. 23, 25 ( Claims
App.). The Examiner addressed claims 7 and 18 in the same discussion,
stating that "Brajnovic '668/Kameli/W einstein discloses the device as
previously described above [regarding claim 1], but fails to show a curved S-
shaped portion near the guide sleeve." Final Act. 7. The Examiner found,
however, that "Mortimer teaches a dental instrument with a grip (58) having
a curved S-shaped portion (68; [0072]) at the end near an implement (52) in
alternative to a straight grip (Fig. 1-2; such as in the present prior art)." Id.
According to the Examiner, it would have been obvious for one of ordinary
skill in the art at the time of the invention
to modify Brajnovic '668/Kameli/W einstein' s guide by utilizing
the curved portion as taught by Mortimer in order to avoid
interference between the handle and one of the user's upper and
lower jaws when placed in the mouth ([0028], [0031] for instance
teach the advantages of an S-shaped curve near the end to prevent
interference in the mouth at different locations).
Final Act. 7.
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First, Appellants argue that this rejection is "again impermissible
picking and choosing, and hindsight reconstruction" because "Mortimer is a
tooth brush," which "has nothing to do with a drill jig, drill guide sleeves
and precision drilling." Appeal Br. 21.
The Examiner responds that "motivation was provided from within
Mortimer to show the benefit of including the s-shaped configuration" and
that "[b ]oth Mortimer and the other prior art are directed to the use of a
dental tool within the mouth having a handle." Ans. 15.
Although Appellants contend that the Examiner has engaged in
hindsight reconstruction, Appellants do not address the reasoning provided
by the Examiner to modify Brajnovic '668/Kameli/W einstein based on
Mortimer (Final Act. 7). See Appeal Br. 21; see also Cree, 818 F.3d at 702
n.3 (viewing an "impermissible hindsight" argument as "essentially a
repackaging of the argument that there was insufficient evidence of a
motivation to combine the references"). We determine that the Examiner's
reasoning supports a prima facie case of obviousness for claims 7 and 18.
See Oetiker, 977 F.2d at 1445. By not addressing the reasoning provided,
Appellants have not shown error in the relevant findings or the conclusion as
to obviousness, which we determine to be supported by rational
underpinnings.
Moreover, Appellants have not shown that the identified differences
between the references undermine the factual findings or reasoning relied on
to support the conclusion of obviousness. See KSR, 550 U.S. at 420
("[F]amiliar items may have obvious uses beyond their primary purposes,
and in many cases a person of ordinary skill will be able to fit the teachings
of multiple patents together like pieces of a puzzle.").
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Second, Appellants argue that the rejection "fails to address [the
recited] s-shaped configuration[,] which serves as a bearing part that engages
a drill jig during drilling." Appeal Br. 21.
This argument does not apprise us of error. In the context of this
rejection, the Examiner clearly identified an "S-shaped portion" in Mortimer
(see Final Act. 7 (citing Mortimer ,r 72 and element 68 (shown in Figure 3)))
and proposed reasoning as to why one of ordinary skill in the art at the time
of the invention would have "modif[ied] Brajnovic '668/Kameli/Weinstein's
guide by utilizing the curved portion as taught by Mortimer." Final Act. 7.
Neither claim 7 nor claim 18 recites that the "S-shaped portion" serves as a
"bearing part." See Appeal Br. 23, 25 (Claims App.). To the extent
Appellants contend that the "S-shaped portion" in claims 7 and 18 must
coincide with the "bearing part" recited in clause c of claim 1, we disagree.
Although clause c recites that the "bearing part" is "adjacent each guide
sleeve" and claim 7 recites that the "S-shaped portion [is] near the guide
sleeve," Appellants have not adequately explained why the "bearing part"
would necessarily be included in ( or would overlap with) the "S-shaped
portion."
For these reasons, we sustain the rejection of claims 7 and 18.
DECISION
We affirm the decision to reject claims 1, 5, 9, and 11-17 as
unpatentable over Brajnovic '668, Kameli, and Weinstein; we reverse the
decision to reject claims 8 and 14 as unpatentable over Brajnovic '668,
Kameli, and Weinstein; we affirm the decision to reject claims 6 and 10 as
unpatentable over Brajnovic '668, Kameli, Weinstein, and Brajnovic '270;
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and we affirm the decision to reject claims 7 and 18 as unpatentable over
Brajnovic '668, Kameli, Weinstein, and Mortimer.
We do not reach the decision to provisionally reject claims 1 and 5-18
under the doctrine of obviousness-type double patenting as unpatentable
over claims 1-22 of Application No. 12/636,944. We also do not reach the
additional issues raised regarding the cumulative rejection of claim 6 as
unpatentable over Brajnovic '668, Kameli, and Weinstein.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§ 1.136(a)(l )(iv); 37 C.F.R. § 41.50(±).
AFFIRMED-IN-PART
30