Ex Parte Way et al

Patent Trial and Appeal Board

Mar 30, 2018

13828692 (P.T.A.B. Mar. 30, 2018)

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:
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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
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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
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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
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