Ex Parte Vanini et al

Patent Trial and Appeal Board

May 4, 2018

12067418 (P.T.A.B. May. 4, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/067,418 08/14/2008
75628 7590 05/08/2018
RANKIN, HILL & CLARK LLP
23755 LORAIN ROAD, SUITE 200
NORTH OLMSTED, OH 44070
FIRST NAMED INVENTOR
Lorenzo Vanini
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.
LUS-18209 1685
EXAMINER
PEPITONE, MICHAEL F
ART UNIT PAPER NUMBER
1767
NOTIFICATION DATE DELIVERY MODE
05/08/2018 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):
7 5628@rankinhill.com
digges@rankinhill.com
shea@rankinhill.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LORENZO V ANINI, EUGENIO MICELI, and THOMAS NIEM
Appeal2017-006965
Application 12/067 ,418
Technology Center 1700
Before DONNA M. PRAISS, JULIA HEANEY, and
MICHAEL G. MCMANUS, Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
final decision to reject claims 1-3, 8-22, and 25-33. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 In explaining our Decision, we make reference to the Specification filed
August 14, 2008 ("Spec."), the Final Office Action entered May 9, 2016
("Final Act."), the Appeal Brief filed October 7, 2016 ("App. Br."), the
Examiner's Answer entered February 3, 2017 ("Ans."), and the Reply Brief
filed March 27, 2017 ("Reply Br.").
2 The real parties in interest are identified as GDF Gesellschaft fuer Dentale
Forschung und Innovation Gmbh, Micerium S.p.A., and Lorenzo Vanini.
App. Br. 3.
Appeal2017-006965
Application 12/067,418
BACKGROUND
The subject matter on appeal relates to dental materials, in particular
filling substances and dental enamels. Spec. 1: 1-3. According to the
Specification, known dental materials' indices of refraction do not match
those of natural teeth, resulting in an optical effect or aesthetic that is a
drawback. Id. at 1:5-7. Claim 1 is reproduced below (disputed limitations
italicized):
1. A material comprising:
a curable resin;
an amount of inorganic nano-scale solid particles having a
diameter of less than 100 nanometers;
glass particles having an index of refraction; and
accessory substances for autopolymerizing or light curing
the resin;
wherein the amount of inorganic nano-scale solid particles
present in the material is selected such that an exclusive
mixture consisting of said curable resin and said inorganic
nano-scale solid particles would exhibit an index of
refraction that deviates at most by 5% from the index of
refraction of the glass particles, and
wherein an index of refraction of the cured material is
within a range of 1.56 to 1. 70.
App. Br. 20 (Claims Appendix).
Claim 2 depends from claim 1 and further recites "the index of
refraction of the cured material is larger than 1.59." Id. Claim 15 also
depends from claim 1 and further recites "the glass particles have a mean
maximum diameter of 5 µm." Id. at 21. Claims 25-27 depend directly or
indirectly from claim 1 and require that the index of refraction of the resin
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and inorganic nano-scale solid particles deviates at most by 2%, 1 %, and
0.2%, respectfully. Id. at 22-23.
REJECTIONS ON APPEAL
1. Claims 1-3, 8, 9, 12-22, and 25-33 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Chadwick3 in view ofMichl. 4 Ans. 3; Final
Act. 2.
2. Claim 10 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Chadwick and Michl as applied to claim 1 in further view of Gander. 5
Ans. 6; Final Act. 6.
3. Claim 11 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Chadwick and Michl as applied to claim 1 in further view of Davy. 6
Ans. 7; Final Act. 7.
ANALYSIS
Rejection 1
For the reasons stated on pages 2--4 of the Final Office Action and
pages 2-3 of the Answer, the Examiner determines that claims 1-3, 8, 9,
12-22, and 25-33 are unpatentable under 35 U.S.C. § 103(a) over Chadwick
in view of Michl.
In the Appeal Brief, Appellants argue the rejection of claims 1, 3, 8, 9,
12-14, 16-22, and 28-33 as a group and claims 25-27 as a group. App. Br.
7-12. In accordance with 37 C.F.R. § 41.37( c )(1 )(iv), we select claims 1
3 Chadwick et al., US 2006/0014883 Al, pub. Jan. 19, 2006 ("Chadwick").
4 Michl et al., US 4,267,097, issued May 12, 1981 ("Michl").
5 Gander et al., US 3,835,090, issued Sept. 10, 1974 ("Gander").
6 Davy et al., US 5,679,710, issued Oct. 21, 1997 ("Davy").
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and 25 as representative of these groups, thus, claims 3, 8, 9, 12-14, 16-22,
and 28-33 will stand or fall with claim 1 and claims 26 and 27 will stand or
fall with claim 25. Appellants separately argue the rejection of claims 2 and
15, therefore, we discuss below the rejection of claims 1, 2, 15, and 25.
Claim 1
Appellants contend that the Examiner erred in rejecting claim 1
because ( 1) Chadwick fails to disclose the particle size of glass that should
be incorporated into dental composites as the disclosure in paragraph 40
merely grinds glass to a size for determining whether any glass phase is
present, (2) Chadwick fails to disclose the refractive index of the cured
material containing 33% quartz by weight and the refractive index cannot be
predicted with any degree of certainty, but would be lower than the claimed
range because quartz has a refractive index of 1.458, (3) Michl teaches away
from the use of glass particles having a larger particle size than micro-fine
inorganic particles, and ( 4) the claimed property of a refraction index that
deviates at most by 5% from the refraction index of the glass particles is not
necessarily achieved by a curable resin having inorganic nano-scale solid
particles, glass particles, and accessory substances for autopolymerizing or
light curing the resin as an amount of inorganic nano scale solid particles
must be selected. Id. at 8-15.
The Examiner responds that Chadwick discloses a dental composite
containing radiopaque glasses, a glass having a refractive index of 1.592, a
composite containing 45% by volume resin, 33% by volume quartz filler,
and 22% by volume glass, as well as the polymerized resin having a
refractive index of 1.564. Ans. 8-9 (citing Chadwick Abstr., i-fi-124, 35, 47).
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The Examiner concedes that "the dental composite [0035] does not
specifically recite the glass of Ex. 3 is 10-20 µm," but all that the reference
discloses must be considered, specifically, Chadwick's disclosure of
obtaining 10-20 µm glass particles by grinding. Id. at 9.
Regarding Michl, the Examiner responds that Michl teaches adding
micro fine fillers to dental materials for thickening of the monomer and
imparting thixotropic properties to the material so that the mixture can be
liquefied again by simple stirring, thereby preventing sedimentation. Id.
(citing Michl 2:39--57, 3:11-14). Modifying Chadwick with the teachings of
Michl such that the silica (at least 50%) has a particle size of 10 to 40 mµ
(10 to 40 nm) for preventing sedimentation, the Examiner finds that the
dental composition disclosed is substantially identical to the claimed
material and that the properties recited for the index of refraction of the
cured material and the index of refraction of the mixture of resin and
inorganic nano-scale particles deviating at most by 5% from the index of
refraction of the glass particles would be implicitly achieved. Id. at 9--10.
In the Reply Brief, Appellants assert that the index of refraction
required by claim 1 depends on the amount of inorganic nano-scale solid
particles present as shown by examples 7-16 in Appellants' Specification,
therefore, it is not the case that any amount of inorganic nano-scale solid
particles present necessarily results in the required index of refraction that
deviates at most by 5% from the index of refraction of the glass particles.
Reply Br. 4.
Appellants' arguments are not persuasive of reversible error by the
Examiner. Appellants do not dispute the Examiner's findings (Ans. 8-9)
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that (1) Chadwick discloses dental composites containing radiopaque
glasses, (2) Chadwick also discloses grinding glass particles to a size of
10-20 µm, (3) Chadwick discloses a composite containing 45 vol% resin, 33
vol% quartz filler, and 22 vol% glass (a weight ratio of resin to silica of
about 1.2), ( 4) Chadwick discloses quartz filler for preventing
sedimentation, and ( 5) Michl discloses polymerizable dental materials
comprising 10-90% micro fine filler having a particle size of less than 400
mµ, with at least 50% having a particle size of 10-40 mµ to impart
thixotropic properties and prevent sedimentation. Appellants' argument that
Michl' s disclosure of disadvantages caused by the addition of micro fine
solid particles teaches away from the combination with Chadwick (App. Br.
11; Michl 2:20-68) is not persuasive of error because Michl also evidences
that the addition of micro fine solid particles to a dental composition are
known to provide the benefit of preventing sedimentation and also imparting
thixotropic properties to the material (Ans. 9, 11-12; Michl 2:39-57,
3: 1-14 ). Therefore, Michl does not lead away from using an amount of
inorganic nano-scale solid particles having a diameter of less than 100 nm as
required by the claim. In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001)
("A reference may be said to teach away when a person of ordinary skill,
upon reading the reference, ... would be led in a direction divergent from
the path that was taken by the applicant") (internal quotations and citation
omitted).
A combination of references may be obvious even if the combination
eliminates a benefit of one of the references. In re Urbanski, 809 F.3d 1237,
1244 (Fed. Cir. 2016) ("the Board properly found that one of ordinary skill
would have been motivated to pursue the desirable properties taught by
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Wong, even at the expense of foregoing the benefit taught by Gross").
Based on the cited record in this Appeal, however, Michl discloses how to
minimize the known disadvantages by using an inorganic filler having a
particle size of less than about 400 mµ (Michl 3:63---68) while achieving the
stated advantage with a preferred particle size range of about 10-40 mµ
(Michl 3: 1-14). Therefore, based on the preponderance of the evidence,
Michl provides a rational underpinning for the modification of Chadwick
and does not teach away from the combination.
Appellants' argument that any amount of inorganic nano-scale solid
particles does not necessarily result in the curable resin and inorganic
nano-scale solid particles exhibiting an index of refraction that "deviates at
most by 5% from the index of refraction of the glass particles," as recited in
claim 1, does not adequately rebut the Examiner's finding (Ans. 9-10) that
Chadwick as modified with Michl discloses a substantially identical dental
composition and the disputed property is inseparable from the chemical
composition. Appellants do not dispute the Examiner's finding that the
combination of Chadwick and Michl discloses a substantially identical
dental composition. The Examiner finds (Ans. 9) that the glass of
Chadwick's Example 3 has a refractive index of 1.592 and is incorporated
into a polymerized resin containing ethoxylated bisphenol-A dimethacrylate
having a refractive index of 1.564, which is a deviation of 1.75% from the
refractive index of the glass.
The Examiner has provided the record with a preponderance of
evidence including commonalities shared by Chadwick and claim 1 which
justifies requiring Appellants to prove that Chadwick's product does not
necessarily or inherently possess the claimed characteristic of the mixture of
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curable resin and inorganic nano-scale solid particles exhibiting an index of
refraction that deviates at most by 5% from the index of refraction of the
glass particles. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) ("[T]he
PTO can require an applicant to prove that the prior art products do not
necessarily or inherently possess the characteristics of his claimed
product. ... Whether the rejection is based on 'inherency' under 35 U.S.C.
§ 102, on 'prima facie obviousness' under 35 U.S.C. § 103,jointly or
alternatively, [J the burden of proof is the same, and its fairness is evidenced
by the PTO's inability to manufacture products or to obtain and compare
prior art products" (internal footnote and citation omitted)). No such proof
has been provided by Appellants.
Moreover, Appellants only identify the amount of inorganic
nano-scale particles being determinative of the disputed property and assert
that "the amount selected is not an inherent physical property or claimed
effect" (Reply Br. 4) (emphasis omitted) without explaining why the amount
of inorganic nano-scale particles disclosed by Chadwick would not result in
the disputed property, let alone the amount disclosed by Chadwick in the
particle size taught by Michl. To the extent that Appellants discovered that
the amount of inorganic nano-scale particles correlates to the index of
refraction and that a minimum deviation from the index of refraction is
desirable (Reply Br. 4--5), the same effect would necessarily occur from
optimizing the prior art composition as suggested by Chadwick, because
both Appellants and the prior art use conventional methods to prepare the
glasses and the dental composites and Chadwick teaches that glasses can be
mixed with a resin and other fillers "such that the refractive index of the
resin and glass filler substantially match." Chadwick i-f 18; Spec. 1:3-12,
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9: 1-9, 10: 1-9; see also Chadwick i-f 47 ("The range of refractive indices for
these glasses corresponds well to the refractive indices of common dental
resins."); cf MEHL/Biophile Int'! Corp. v. Milgraum, 192 F.3d 1362, 1366
(Fed. Cir. 1999) ("Where, as here, the result is a necessary consequence of
what was deliberately intended [by the prior art], it is of no import that the
[prior art's] authors did not appreciate the results").
On this record, because Appellants have not identified reversible error
in the Examiner's rejection of claim 1, we affirm the Examiner's rejection.
See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t has long been the
Board's practice to require an applicant to identify the alleged error in the
[E]xaminer's rejections").
Claim 2
Appellants contend that the Examiner erred in not identifying "any
possible way one could arrive at a cured material using the information
provided by Chadwick et al. and Michl et al. that meets ... [the required
index of refraction larger than 1.59]." App. Br. 15. Appellants also argue
that Chadwick's teaching of grinding radiopaque glasses to a size of 10-20
µm for refractive index testing indicates the glasses are used in dental
composites at a larger size. Id. In addition, Appellants assert that
Chadwick's use of quartz as a filler would necessarily bring the refractive
index containing this material "to well below 1.59 as claimed in claim 2."
Id.
The Examiner responds that because the dental composition of the
prior art is substantially identical to the claimed material, the required index
of refraction of the cured material would implicitly be achieved by the
composition with all the claimed ingredients. Ans. 12.
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Appellants do not address claim 2 in the Reply Brief.
We are not persuaded by Appellants' arguments for essentially the
same reasons discussed above in connection with claim 1. Appellants do not
dispute the Examiner's finding (Final Act. 3; Ans. 9) that Chadwick
discloses an index of refraction of 1.564 for its polymerized resin. The
Examiner's finding is supported by the record. Chadwick i-f 47. Appellants
provide no explanation why Chadwick's disclosure of grinding each glass to
produce 10-20 µm particles (Chadwick i-f 40) suggests the particles used in
the composite would have been larger. Indeed, if Chadwick's disclosure of
grinding glasses to a certain size suggests to a skilled artisan other sizes may
be used in the composite, why wouldn't that also suggest smaller sizes?
Appellants also do not adequately rebut the Examiner's finding that
Chadwick as modified with Michl discloses compositions substantially
identical to the claimed composition and would be expected to have the
same chemical properties.
Claim 15
Appellants contend that the Examiner erred in not explaining why the
limitation that the glass particles have a mean maximum diameter of 5 µm
would have been obvious. App. Br. 17.
The Examiner responds that a change of size is generally recognized
as being within the level of ordinary skill in the art and would have been
obvious in view of Chadwick's disclosure of grinding glass particles. Ans.
14.
Appellants do not separately address claim 15 in the Reply Brief.
We are not persuaded by Appellants' arguments. As discussed in
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connection with claim 2, Appellants contend that a person skilled in the art
would not understand Chadwick's disclosure of grinding each glass to
produce 10-20 µm particles (Chadwick i-f 40) to mean that the particles used
in the composite are 10-20 µmin size. App. Br. 15. If Chadwick's
disclosure of grinding glasses to a certain size suggests to a skilled artisan
other sizes may be used in the composite, then Chadwick reasonably also
would suggest smaller sizes or that size of the glass particles as an obvious
variation.
Claim 25
Appellants contend that the Examiner erred because "[Appellants']
invention, which matches the refractive index of the mixture of resin and
inorganic nano-scale particles closely to that of the glass particles is
completely different ... [from the teachings of Chadwick and Michl]."
App. Br. 18. According to Appellants, Chadwick and Michl are directed to
different problems and provide different solutions and cannot be combined
without contradicting the teachings of Michl. Id.
The Examiner responds that because Chadwick as modified with
Michl discloses a dental composition substantially identical to the claimed
material, the claimed property of the chemical composition would
necessarily be present. Ans. 15.
In the Reply Brief, Appellants make the same arguments as presented
with respect to claim 1 and note that claim 25 recites an even smaller
deviation. Reply Br. 4.
We are not persuaded by Appellants' arguments for the same reasons
discussed above in connection with claim 1.
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Rejection 2
For the reasons stated on pages 6-7 of the Final Office Action and
pages 6-7 of the Answer, the Examiner determines that claim 10 is
unpatentable under 35 U.S.C. § 103(a) over Chadwick in view of Michl and
further in view of Gander.
In the Appeal Brief, Appellants argue that Gander does not cure the
defects in the base rejection of Chadwick and Michl. App. Br. 16.
Appellants' arguments are not persuasive of reversible error by the
Examiner for the same reasons we are not persuaded of error in the
Examiner's combination of Chadwick and Michl as discussed above in
connection with claim 1.
On this record, because Appellants have not identified reversible error
in the Examiner's rejection, we affirm the Examiner's rejection of claim 10
over Chadwick in view of Michl and further in view of Gander.
Rejection 3
For the reasons stated on pages 7-8 of the Final Office Action and
pages 7-8 of the Answer, the Examiner determines that claim 11 is
unpatentable under 35 U.S.C. § 103(a) over Chadwick in view of Michl and
further in view of Davy.
In the Appeal Brief, Appellants argue that Davy does not cure the
defects in the base rejection of Chadwick and Michl. App. Br. 16.
Appellants' arguments are not persuasive of reversible error by the
Examiner for the same reasons we are not persuaded of error in the
Examiner's combination of Chadwick and Michl as discussed above in
connection with claim 1.
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Based on the cited record in this Appeal, we affirm the Examiner's
rejection of claim 11 as unpatentable over Chadwick and Michl in further
view of Davy.
CONCLUSION
We AFFIRM all of the Examiner's rejections.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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