Ex Parte Wen

Board of Patent Appeals and Interferences

Apr 23, 2012

11074300 (B.P.A.I. Apr. 23, 2012)

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.
11/074,300 03/07/2005 Huafeng Wen 8056.ALG.US.P 6504
70410 7590 04/23/2012
ALIGN TECHNOLOGY C/O WAGNER BLECHER LLP
123 WESTRIDGE DRIVE
WATSONVILLE, CA 95076
EXAMINER
PATEL, YOGESH P
ART UNIT PAPER NUMBER
3776
MAIL DATE DELIVERY MODE
04/23/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HUAFENG WEN
____________

Appeal 2010-010574
Application 11/074,300
Technology Center 3700
____________

Before DONALD E. ADAMS, FRANCISCO C. PRATS, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims 29-51 (App. Br.
3). We have jurisdiction under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
The claims are directed to a fluid-permeable dental aligner (claims 29-
35); a method for treating a patient’s teeth (claims 36-46); and a system for
treating a patient’s teeth (claims 47-49). Claims 29, 36, and 47 are
representative and are reproduced in “Appendix” of Appellant’s Brief (App.
Br. 25-29).
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Claims 29 and 30 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Kuo.1
Claims 36, 38-40, and 46 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Phan2 and Kuo.
Claims 29-35 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Kuo.
Claim 37 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Phan, Kuo, and Rubbert.3
Claim 41 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Phan, Kuo, and Chun.4
Claims 42-45 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Phan, Kuo, and Nur.5
Claims 47-51 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Chishti6 and Kuo.
We reverse.

Anticipation:
ISSUE
Does Kuo teach a dental appliance comprising one or more pores
passing from an inner surface to an outer surface, wherein one or more pores

1 Kuo et al., US 6,607,382 B1, issued Aug. 18, 2003.
2 Phan et al., US 2002/0187451 A1, issued Dec. 12, 2002.
3 Rubbert et al., US 2002/0015934 A1, issued Feb. 7, 2002.
4 Chun et al., US 6,423,252 B1, issued Jul. 23, 2002.
5 Nur, US 6,516,080 B1, issued Feb. 4, 2003.
6 Chishti et al., US 2001/0002310 A1, issued May, 31 2001.
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is configured to communicate air and saliva between one or more teeth and
the mouth cavity?
FACTUAL FINDINGS (FF)
FF 1. Appellant discloses that an “advantage of the present invention is
that it provides porous channels for saliva to pass through the dental
aligner[]” (Spec. 8).
FF 2. Kuo teaches a dental appliance that “may be porous” such than an
agent can be “absorb[ed] or adsorb[ed]” at a particular time (Kuo, col. 9, ll.
5-10).
FF 3. Kuo teaches that the appliance can be loaded with an agent by
“absorbing the agent into a porous material on or within the appliance
immediately prior to placing the appliance over the teeth” (Kuo, col. 8, ll.
14-16; see also id. at col. 33, Claim 33).
FF 4. Kuo teaches that the agent is released from the porous material “by
elution from pores” (Kuo, col. 16, Claims 13 and 17).
FF 5. Examiner relies on Kuo to teach a dental appliance that, inter alia,
“comprising pores passing from the inner surface to the outer surface, the
one or more pores being configured to communicate air and saliva between
the one or more teeth and said mouth cavity” (Ans. 4).
ANALYSIS
Appellant contends that Kuo fails to teach a device comprising one or
more pores passing from an inner surface to an outer surface, wherein one or
more pores is configured to communicate air and saliva between one or
more teeth and the mouth cavity (App. Br. 11-12; Reply Br. 2-3). Examiner
disagrees and “specifically points to the embodiment described at col. 9,
lines 5-10, where Kuo explicitly states that the appliance is porous and can
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Application 11/074,300

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be immersed in a solution for the agent, allowing the agent to absorb or
adsorb the agent at a particular time” (Ans. 9; see FF 2). From this
Examiner concludes that since Kuo’s appliance is porous it “has the
capability to communicate air/saliva between one or more teeth and the
mouth cavity” (id.). We are not persuaded.
At best, Examiner established that Kuo’s device is porous (see e.g.,
FF 2-4). Examiner, however, failed to establish that the pores of Kuo’s
device are configured in such a way as “to communicate air and saliva
between the one or more teeth and said mouth cavity” as is required by
Appellant’s claimed invention (see, e.g., Claim 29).
CONCLUSION OF LAW
Examiner failed to provide an evidentiary basis to support a
conclusion that Kuo teaches a device comprising one or more pores passing
from an inner surface to an outer surface, wherein one or more pores is
configured to communicate air and saliva between one or more teeth and the
mouth cavity. The rejection of claims 29 and 30 under 35 U.S.C. § 102(b)
as being anticipated by Kuo is reversed.

Obviousness:
ISSUE
Does the preponderance of evidence on this record support a
conclusion that Kuo alone, or in combination with other prior art, suggest a
dental appliance, or a method/system for using a dental appliance, that
comprises a porous portion comprising one or more pores passing from an
inner surface to an outer surface, wherein one or more pores is configured to
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communicate air and saliva between one or more teeth and the mouth
cavity?
FACTUAL FINDINGS (FF)
FF 6. We adopt the Examiner’s findings concerning the scope and content
of the prior art (Ans. 4-8).
FF 7. For each obviousness rejection on appeal Examiner relied on Kuo to
suggest “a dental aligner comprising a porous polymeric material” (Ans. 4;
see generally id. at 5-8).
ANALYSIS
Appellant contends that Kuo fails to suggest a dental appliance
comprising one or more pores passing from an inner surface to an outer
surface, wherein one or more pores is configured to communicate air and
saliva between one or more teeth and the mouth cavity and that Phan,
Rubbert, Chun, Nur, and Chishti fail to make up for this deficiency in Kuo
(see generally App. Br. 12-22; Reply Br. 3). For the reasons set forth above,
we are not persuaded by Examiner’s reliance on “col. 9, lines 5-10” of Kuo
to support a conclusion that Kuo suggests a porous portion comprising one
or more pores passing from an inner surface to an outer surface, wherein one
or more pores is configured to communicate air and saliva between one or
more teeth and the mouth cavity (see, e.g., Ans. 9).
CONCLUSION OF LAW
The preponderance of evidence on this record fails to support a
conclusion that Kuo alone, or in combination with other prior art, suggests a
dental appliance, or a method/system for treating a patient’s teeth that
utilizes a dental appliance, that comprises a porous portion comprising one
or more pores passing from an inner surface to an outer surface, wherein one
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or more pores is configured to communicate air and saliva between one or
more teeth and the mouth cavity.
The rejection of claims 36, 38-40, and 46 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Phan and Kuo is reversed.
The rejection of claims 29-35 under 35 U.S.C. § 103(a) as
unpatentable over Kuo is reversed.
The rejection of claim 37 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Phan, Kuo, and Rubbert is reversed.
The rejection of claim 41 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Phan, Kuo, and Chun is reversed.
The rejection of claims 42-45 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Phan, Kuo, and Nur is reversed.
The rejection of claims 47-51 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Chishti and Kuo is reversed.

REVERSED

cdc