Ex Parte Valoir

Patent Trial and Appeal Board

Nov 30, 2017

14031832 (P.T.A.B. Nov. 30, 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.
14/031,832 09/19/2013 Tamsen VALOIR OA:014002US 9448
11132 7590 12/04/2017
Rmilware Rr Valnir
EXAMINER
Three Riverway, Suite 950
Houston, TX 77056
MORAN, EDWARD JOHN
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
12/04/2017 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 TAMSEN VALOIR
Appeal 2016-002737
Application 14/031,832
Technology Center 3700
Before BRETT C. MARTIN, GEORGE R. HOSKINS,
and JEFFREY A. STEPHENS, Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1, 4—8, and 11—13. Claims 2, 3, 9, 10, 14, and 15 were
withdrawn from consideration, with the caveat that the withdrawal was
based upon a species election and these claims should be reinstated if linking
claims 1 and 8 are allowed. App. Br. 3. Claim 16 was canceled. Adv.
Act. 2. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was
held on November 1, 2017. We REVERSE.
Appeal 2016-002737
Application 14/031,832
THE INVENTION
Appellant’s claims are directed generally “to shapeable bite plates that
can be used with any device used for orthodontic remodeling.” Spec. 13.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1) An orthodontic remodeling device, comprising a bite plate
and an extraoral driver, said bite plate comprising:
i) a shapeable metal core having a flat U-shape in outline
to fit between occlusal surfaces of teeth;
ii) said metal core covered with a flexible biocompatible
polymer;
iii) said flexible biocompatible polymer shaped to have an
outside edge having upper and lower rims to contact an upper
and lower facial surfaces of teeth;
iv) said flexible biocompatible polymer having an inside
edge having optional upper and lower rims to contact at least a
portion of an upper and lower lingual surfaces of teeth;
v) said metal core and flexible biocompatible polymer
being sufficiently flexible to bend such that a molar end of said
bite plate can move at least one cm towards or away from a
midline of said bite plate; and,
vi) wherein the bite plate has a connector thereon for
reversibly coupling to said extra-oral driver.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Syrop US 2009/0165805 A1 July 2,2009
Spaulding US 2010/0055634 A1 Mar. 4,2010
2
Appeal 2016-002737
Application 14/031,832
REJECTIONS
The Examiner made the following rejections:
Claim 1, 5—8, 12, and 13 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Spaulding. Final Act. 3.
Claims 4 and 11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Spaulding and Syrop. Final Act. 6.
ANALYSIS
The Examiner bases the rejections of independent claims 1 and 8 over
Spaulding upon the finding that “the thin flexible core [in Spaulding] could
be expanded by pulling the device outwards or could be heated and made
more malleable [at] which point it could be bent or shaped into a desired
shape by hand, prior to the coating being put on the core.” Final Act. 4.
This finding, however, ignores that the claims do not simply require “a
shapeable metal core” as a stand-alone element, as the Examiner seems to
suggest, but that the orthodontic device comprises a flexible core such that
“said metal core and flexible biocompatible polymer [are] sufficiently
flexible to bend such that a molar end of said bite plate can move at least
one cm.” Accordingly, a finding that the core in Spaulding alone may be
heated and/or manipulated at some other stage of manufacturing is
insufficient. The final device, including the core and polymer coating
together, must be flexible in a sufficient manner to meet the claims.
As such, the Examiner’s finding regarding heating the core to make it
flexible prior to the application of the coating is insufficient on its face.
3
Appeal 2016-002737
Application 14/031,832
Furthermore, the Examiner also ignores the explicit requirement that the
core be “shapeable,” which as defined in the Specification requires being
“shaped with the force applied by an average adult human hand.”
Spec. 148. We do not agree that the use of tools, which the Examiner still
only applies to the core during a manufacturing step prior to the device’s
completion, falls within this definition. We also agree that this is further
supported by Appellant’s characterization of Spaulding in the Specification
as “not allowing] any significant amount of flex,” which evidences that the
device in Spaulding is one that Appellant specifically has noted as not being
shapeable as defined and which Appellant was attempting to improve upon.
Spec. H20-23, 64. As such, the Examiner’s interpretation of Spaulding is
in direct contradiction with the claims, Appellant’s Specification, and the
understanding of one of ordinary skill of the prior art at issue. Accordingly,
we do not sustain the Examiner’s rejection of claims 1 and 8 nor of the
claims dependent therefrom.
DECISION
For the above reasons, we REVERSE the Examiner’s decision to
reject claims 1, 4—8, and 11—13.
REVERSED
4