Ex Parte Way et alDownload PDFPatent Trial and Appeal BoardMar 30, 201813828692 (P.T.A.B. Mar. 30, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/828,692 03/14/2013 Bryce A. WAY 22852 7590 04/03/2018 FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP 901 NEW YORK A VENUE, NW WASHINGTON, DC 20001-4413 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. 14234.0025-00000 2470 EXAMINER LOUIS,LATOYAM ART UNIT PAPER NUMBER 3771 NOTIFICATION DATE DELIVERY MODE 04/03/2018 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): regional-desk@finnegan.com PTOL-90A (Rev. 04/07) UNITED ST ATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD ExparteBRYCEA. WAY, CHRISTOPHERU. PHAN, DANA L. GELMAN KEILES, RICHARD JOHNSON, PHILLIP AB AT ELLI, and AMIN H. MIRZAAGHAEIAN Appeal2017-006687 Application 13/828,692 Technology Center 3700 Before BENJAMIN D. M. WOOD, BRETT C. MARTIN, and ANNETTE R. REIMERS, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2017-006687 Application 13/828,692 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's rejection of claims 15, 16, 18-20, 22, and24. Claims 1-14, 17, 21, and 23 were canceled. App. Br. 11-12. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE INVENTION Appellants' claims are directed generally to "dental devices used for increasing bone density in the mouth, such as for orthodontic retention." Spec. if 4. Claim 15, the sole independent claim, reproduced below, is illustrative of the claimed subject matter: 15. A method of growing bone, the method comprising: placing a mouthpiece configured to vibrate at a set frequency between 60 Hz and 130 Hz over occlusal surfaces of a patient's teeth that do not have an orthodontic appliance thereon after an orthodontic appliance has been removed from the patient's teeth; vibrating the mouthpiece against the occlusal surfaces at an actual frequency and an actual acceleration such that the mouthpiece places an axial vibratory force on the occlusal surfaces; and tightening periodontal ligament around the teeth for orthodontic retention after the orthodontic appliance has been removed from the teeth by repeating the placing and vibrating steps for less than 5 minutes per day for less than 180 days. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: 2 Appeal 2017-006687 Application 13/828,692 Liptowitz Lowe Rubin Levens us 5,083,552 US 2008/0227047 Al US 2011/0136070 Al US 2012/0040300 Al REJECTIONS The Examiner made the following rejections: Jan. 28, 1992 Sept. 18, 2008 June 9, 2011 Feb. 16,2012 Claims 15, 16, and 18-20 standrejectedunder35 U.S.C. § 103(a)as being unpatentable over Rubin. Ans. 2. Claim 20 standsrejectedunder35 U.S.C. § 103(a)as being unpatentable over Rubin and Lowe. Ans. 4. Claim 22 standsrejectedunder35 U.S.C. § 103(a)as being unpatentable over Rubin and Levens. Id. Claim 24 standsrejectedunder35 U.S.C. § 103(a)as being unpatentable over Rubin and Liptowitz. Ans. 5. ANALYSIS The Examiner finds that Rubin teaches all of the elements of claim 15, but "does not specifically disclose, inter ali a, placing the device on teeth after an orthodontic appliance has been removed." Ans. 3. Without citing any references, the Examiner concludes obviousness, stating that one of ordinary skill in the art would have known "to apply the device after an orthodontic appliance has been removed, for example, when the device must be removed after braces are found to be too uncomfortable or contradicted for a patient." Ans. 3. We agree with Appellants that this conclusion "is akin to taking official notice of the limitation," and that it is "not appropriate for the [E]xaminer to take official notice of facts without citing a prior art 3 Appeal 2017-006687 Application 13/828,692 reference where the facts asserted to be well known are not capable of instant and unquestionable demonstration as being well-known." Reply Br. 3 (citing MPEP § 2144.03(A)). The Examiner's findings as to the missing elements of claim 15 are pure speculation and do not amount to instant and unquestionable demonstration as being well known. Rubin specifically teaches that in most instances its device is to be used with orthodontics, the primary task of which is to enable movement of the teeth. See Reply Br. 3. Furthermore, although Rubin teaches that its device may be used without orthodontics, this is a treatment that is "instead of an orthodontic device." Id. In other words, Rubin teaches usage of the device only as an alternative treatment to using it with orthodontics. Accordingly, given that Rubin is generally concerned with enabling orthodontic repair, and usage of the device as disclosed in Appellants' invention is generally used for the opposite, i.e., orthodontic retention, we see no basis to conclude that the Examiner's conclusion is necessarily unquestionable as would be required. The Examiner also finds that Rubin discloses "repairing [the] periodontal ligament." Ans. 3 (citing Rubin if 33). Although Rubin discloses that it may be used to repair "ligaments" generally, nowhere does Rubin disclose that such repair could be directed at tightening (as opposed to mere repair) the periodontal ligament as claimed. As Appellants point out, although the Examiner is correct that Rubin teaches osteogenesis and maxiollofacial ligament repair, neither of these suggests anything "about necessarily tightening a ligament, let alone tightening the periodontal ligament." Reply Br. 4. Rubin also specifically teaches "that the device allows teeth to move up and down in a masticative/chewing motion," which 4 Appeal 2017-006687 Application 13/828,692 would actually "loosen the ligaments of the tooth to allow for movement of the teeth." Id. Accordingly, we are persuaded that the Examiner has not stated a sufficient basis for finding that Rubin teaches periodontal ligament tightening as claimed. Lastly, we are persuaded that, in addition to the Examiner's error in fmding that Rubin teaches tightening of the periodontal ligament, as noted above, the Examiner also erred in fmding that such periodontal ligament tightening is "for orthodontic retention as claimed." As Appellants point out, "orthodontic retention is aimed at minimizingunwanted dental movements and maintaining orthodontic correction during the period of time directly after removing the orthodontic appliance." Reply Br. 5. This is in contrast with Rubin's teachings that "describe orthodontic remodeling, i.e., movement of teeth." Id. In other words, Rubin appears to actually teach the opposite of what is claimed by being directed at promoting teeth movement rather than maintaining orthodontic retention. Taking these errors as a whole, we conclude thatthe Examiner's application of the claims to Rubin is improper and, therefore, do not sustain the Examiner's rejection of claim 15 and the claims dependent therefrom. The secondary references do not cure these deficiencies in Rubin. DECISION For the above reasons, we REVERSE the Examiner's decision to reject claims 15, 16, 18-20, 22, and24. REVERSED 5 Copy with citationCopy as parenthetical citation