Ex Parte Wool

Patent Trial and Appeal Board

Jun 16, 2014

12169717 (P.T.A.B. Jun. 16, 2014)

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.
12/169,717 07/09/2008 Arthur L. Wool 133.47668X00 9806
20457 7590 06/16/2014
ANTONELLI, TERRY, STOUT & KRAUS, LLP
1300 NORTH SEVENTEENTH STREET
SUITE 1800
ARLINGTON, VA 22209-3873
EXAMINER
WALTERS, RYAN J
ART UNIT PAPER NUMBER
3726
MAIL DATE DELIVERY MODE
06/16/2014 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ARTHUR L. WOOL
____________

Appeal 2012-003150
Application 12/169,717
Technology Center 3700
____________

Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
LYNNE H. BROWNE, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Arthur L. Wool (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 5-9 and 11-19. Claims 1-4, 10, and 20
have been withdrawn by the Examiner. We have jurisdiction over this
appeal under 35 U.S.C. § 6(b).

INVENTION
Appellant’s invention “relates to a process of making a crimp stop.”
Spec. 2, l. 7.
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Claims 5 and 17 are independent claims. Claim 5 is illustrative of the
claimed invention and reads as follows:
5. A process for making a crimp stop, comprising forming a
metal material into a formed member having a U-shaped cross-
section and a size and shape configured to receive an
orthodontic archwire and to be crimped so as to maintain
position of the member on the orthodontic archwire, annealing
the entire formed member by heating, and cooling the annealed
member to soften the metal material.

REJECTIONS
The following rejections are before us for review1,2:
I. The Examiner rejected claims 5, 7, 9, 16, 17, and 19 under 35
U.S.C. § 102(b) as anticipated by Kupcak (US 4,226,550, iss.
Oct. 7, 1980).
II. The Examiner rejected claims 5-7, 9, and 11-19 under 35
U.S.C. § 102(b) as anticipated by Castner (US 2006/0228664
A1, pub. Oct. 12, 2006) or, in the alternative, under 35 U.S.C.
§ 103(a) as unpatentable over Castner and Dunn (US 2,993,980,
iss. Jul. 25, 1961).

1 The rejection of claims 9 and 19 under 35 U.S.C. § 112, second
paragraph, as being indefinite, has been withdrawn by the Examiner. See
Advisory Action, mailed April 6, 2011.
2 The Examiner instituted a new ground of rejection of claims 11-15 as
anticipated by Castner or, in the alternative, as unpatentable over Castner
and Dunn. See Ans. 4, 8. Accordingly, the rejection of claims 11-15 as
anticipated by Castner or, in the alternative, as unpatentable over Castner
and Dunn, as made in the Final Rejection, mailed December 21, 2010, is
considered to have been withdrawn by the Examiner. Compare Final Rej.
3-5 with Ans. 8-11.
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III. The Examiner rejected claim 8 under 35 U.S.C. § 103(a) as
unpatentable over Castner, Dunn, and Goldberg (US 4,717,341,
iss. Jan. 5, 1988).
IV. The Examiner rejected claim 8 under 35 U.S.C. § 103(a) as
unpatentable over Kupcak and Goldberg.

SUMMARY OF DECISION
We AFFIRM.

ANALYSIS
Rejections I and IV
Appellant argues that Kupcak fails to teach a “formed member having
. . . a size and shape configured to receive an orthodontic archwire and to be
crimped so as to maintain position of the member on the orthodontic
archwire,” as called for by each of independent claims 5 and 17. App. Br. 5.
The Examiner responds that, “the limitations for receiving an archwire
and crimping the member are NOT positively recited.” Ans. 12. Thus,
according to the Examiner, independent claims 5 and 17 merely require that
the formed member have a size and shape “capable of (i.e. configured)
receiving an orthodontic archwire and capable of (i.e. configured) being
crimped so as to maintain position of the member on the orthodontic wire.”
Ans. 12-13. As such, the Examiner finds that “the components in Kupcak
are of a size and shape configured to receive an orthodontic archwire and to
be crimped.” Ans. 13.
An ordinary and customary meaning of the term “crimp” is “to be an
inhibiting or restraining influence on.” Merriam Webster’s Collegiate
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Dictionary (10th Ed. 1997). Such an interpretation of the term “crimp” is
consistent with Appellant’s Specification, which describes a crimp stop as,
“hold[ing] very efficiently to an archwire.” Spec. 4, l. 22. As such, in a first
instance, we appreciate the Examiner’s position that the size and shape of
Kupcak’s U-shaped member 24 is capable of receiving an orthodontic wire
and of being crimped. However, the Examiner has not shown by a
preponderance of the evidence that Kupcak’s U-shaped member 24 is
capable of being “crimped so as to maintain position of the member on the
orthodontic wire,” as called for by each of independent claims 5 and 17.
More specifically, the Examiner has not provided any persuasive evidence or
technical reasoning to show that the size and shape of Kupcak’s U-shaped
member 24 is such as to receive an orthodontic archwire, yet not so large
that the archwire would have excess room to move around once crimped
(i.e., inhibit/restrain crimp stop with respect to orthodontic archwire).
Accordingly, because the Examiner does not establish a sound basis
that Kupcak teaches “a formed member having . . . a size and shape
configured . . . to be crimped so as to maintain position of the member on the
orthodontic archwire,” we do not sustain the rejection of independent claims
5 and 17, and their respective dependent claims 7, 9, 16, and 19 under 35
U.S.C. § 102(b) as anticipated by Kupcak.
With respect to Rejection IV, the Examiner’s use of Goldberg does
not remedy the deficiency of Kupcak, as described supra. See Ans. 83.
Therefore, we likewise do not sustain the rejection of claim 8 under 35
U.S.C. § 103(a) as unpatentable over Kupcak and Goldberg.

3 The Examiner finds that “Goldberg teaches using a metal material of a
NiCrCo alloy for orthodontic devices” (emphasis and citation omitted).
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Rejection II
The anticipation rejection based upon Castner
Appellant argues that Castner fails to disclose an annealing step, as
called for by independent claims 5 and 17. App. Br. 7; Reply Br. 2-3.
In response, the Examiner points to ¶ 43 of Castner, which describes a
“formed and heat treated clip,” and further states that “[a]nneal is defined as
‘[t]o subject (glass or metal to a process of heating and slow cooling in order
to toughen and reduce brittleness’ or ‘to strengthen or harden’ (from
Answer.com).” Ans. 15.
Although we appreciate that Castner teaches heat-treating clip 10,
nonetheless, we do not agree that a generic teaching of heat-treating
constitutes “annealing.” As defined by the Examiner, annealing constitutes
a process of “heating and slow cooling” (emphasis added). In contrast,
Castner’s generic teaching of heat treatment, which, although it constitutes a
process of heating and cooling, fails to teach slow cooling, which is
characteristic for an annealing process, as the Examiner has explained4.
As such, for the foregoing reasons, we do not sustain the rejection of
claims 5-7, 9, and 11-19 under 35 U.S.C. § 102(b) as anticipated by Castner.

The obviousness rejection based upon Castner and Dunn
Claims 5-7, 9, and 16-19
Appellant has not presented arguments for the patentability of claims
6, 7, 9, and 16–19 apart from claim 5. See App. Br. 8-9; see also Reply Br.

4 For example, the heat treatment of “quenching,” which is defined as
“to cool (as heated metal) suddenly by immersion (as in oil or water),”
includes heating and fast cooling. Merriam Webster’s Collegiate Dictionary
(10th Ed. 1997).
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1-2. Therefore, in accordance with 37 C.F.R. § 41.37(c)(1)(vii) (2011), we
select claim 5 as the representative claim to decide the appeal of the
rejection of these claims, with claims 6, 7, 9, and 16-19 standing or falling
with claim 5.
Appellant argues that the “self-ligating orthodontic bracket assembly”
of Castner “is completely different than a crimp stop.” App. Br. 6.
However, Appellant’s argument does not explain how clip 10 of Castner
fails to constitute a “crimp stop” and does not take into consideration the
Examiner’s finding that only clip 10 of Castner’s orthodontic bracket
assembly constitutes the recited “crimp stop.” Ans. 6 (“Castner discloses a
process for making a crimp stop 10 . . . ”). Furthermore, as the Examiner
notes, because the term “crimp stop” appears only in the preamble of
independent claim 5, the preamble does not limit the scope of a claim when
it simply states a purpose or intended use of the invention. See Ans. 13–14;
see also Loctite Corp. v. Ultraseal Ltd., 781 F.2d 861, 868 (Fed. Cir. 1985).
In this case, Appellant’s Specification does not provide a definition of a
“crimp stop,” but merely describes a crimp stop as, “hold[ing] very
efficiently to an archwire.” Spec. 4, l. 22. In similar fashion, Castner
describes clip 10 as retaining archwire 50 within archslot 52. See Castner,
¶ 92 and Fig. 6. As such, we agree with the Examiner that “the term ‘crimp
stop’ does not imply any specific structure which would restrict” clip 10
“from being relied on as a ‘crimp stop’.” Ans. 14.
Appellant further argues that Castner’s clip 10 “does not have a size
and shape configured to receive an orthodontic archwire” because “the
orthodontic archwire is received in the slot 52 of the bracket,” rather than
“into the crimp so as to maintain position of the member on the orthodontic
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archwire.” App. Br. 7 (citing Castner, Figs. 4 and 5); see also Reply Br. 2.
We are not persuaded by Appellant’s argument because it is well established
that limitations not appearing in the claims cannot be relied upon for
patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Here,
independent claim 5 does not require that the formed U-shaped member be
configured to directly receive an orthodontic archwire, that is, “into the
crimp,” as Appellant argues, but merely that it receives an orthodontic
archwire. Although we appreciate Appellant’s position that archwire 50 is
located in slot 52 of bracket 16, nonetheless, because clip 10 locks onto
bracket 16 to retain archwire 50 there between, we agree with the Examiner
that Castner’s clip 10 is configured to receive an orthodontic wire, as
broadly called for by independent claim 5. See Ans. 6 (citing Castner, ¶ 43
(“The metal clip is configured to hold the orthodontic wire into the bracket
archslot.”)).
Lastly, Appellant argues that because Castner fails to disclose an
annealing step and Dunn’s heat exchanger tubes are not crimp stops and are
not configured to receive an orthodontic archwire, “there would not have
been any reason to combine the teachings of [Castner] with [Dunn].” App.
Br. 7-9; Reply Br. 2-4. We are not persuaded by Appellant’s argument
because Appellant cannot show nonobviousness by attacking Castner and
Dunn individually when the rejection as articulated by the Examiner is based
on a combination of Castner and Dunn. See In re Keller, 642 F.2d 413, 425
(CCPA 1981). In this case, the Examiner uses the teachings of Dunn to
show “annealing an entire formed member by heating, and cooling the
annealed member to soften the metal material.” Ans. 7 (citing Dunn, col. 3,
ll. 37–55). Furthermore, the Supreme Court has rejected the rigid
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requirement that the rationale for the proposed combination come from
within the references. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007) (Rejecting the rigid requirement of a teaching, suggestion or
motivation to combine known elements in order to show obviousness).
Appellant’s conclusory assertion that, “there would not have been any
reason” ignores and fails to point out the error in the rationale provided by
the Examiner, namely, “for the purpose of . . . tailoring the mechanical
properties of the member and to strengthen the metal.” Ans. 7. Given that
the Examiner correctly found that the choice of metallurgical processing
(i.e., heat treatment) used to form Castner’s clip 10 “allow[s] for tailoring
the mechanical properties of the clip as needed,” the Examiner’s reasoning
has a rational underpinning. Id. (citing Castner, ¶ 90).
In conclusion, for the foregoing reasons, we sustain the rejection
under 35 U.S.C. § 103(a) of independent claim 5, and claims 6, 7, 9, and 16–
19 falling with claim 5, as unpatentable over of the combined teachings of
Castner and Dunn.

Claims 11-155
Appellant argues that Castner fails to disclose “a formed member
having a dimension parallel to a longitudinal length of an orthodontic
archwire of 0.08 to 0.10 inches.” Reply Br. 3. However, the rejection as
articulated by the Examiner is not based on Castner alone, but rather on a
modification of Castner and Dunn. See Ans. 9. More specifically, the

5 As the Examiner notes, Appellant’s arguments with respect to the
rejection of claims 11-15 over the combined teachings of Castner and Dunn,
as presented on pages 9-10 of the Appeal Brief, are moot in view of the
Examiner’s new ground of rejection. See Ans. 13; see id. 8-9.
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Examiner concludes that because Castner’s spine width 24 and spine
curvature 26 constitute controlled design parameters, “one of ordinary skill
in the art could adjust the width to provide optimal configuration offering an
optimal combination of flexibility and strength of the clip.” Id (citing In re
Aller, 220 F.2d 454, 456 (CCPA 1955)). Appellant does not come forth
with any persuasive evidence or technical reasoning to show error in the
Examiner’s reasoning.
Appellant also argues that Castner’s teachings “with respect to the
spine width and the thickness of the clip have no relation to the size and
shape of a crimp stop . . . configured to receive an orthodontic archwire into
the crimp stop so as to maintain position of the member on the orthodontic
archwire.” Reply Br. 3 (emphasis added). This argument is merely a
repetition of the argument presented supra with respect to the rejection of
independent claim 5 (see App. Br. 7; Reply Br. 2), and as such, we are not
persuaded for the reasons expressed above.
In conclusion, we likewise sustain the rejection of claims 11-15 under
35 U.S.C. § 103(a) as unpatentable over of the combined teachings of
Castner and Dunn.

Rejection III
Appellant argues that, “clearly nothing in [Goldberg] remedies the
basic deficiencies noted above with respect to [Castner] and [Dunn]” App.
Br. 11. However, because we do not find any deficiencies with the
Examiner’s rejection based upon the combined teachings of Castner and
Dunn, and for the reasons set forth supra, we also sustain the rejection of
claim 8 under over the combined teachings of Castner, Dunn, and Goldberg.
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SUMMARY
The Examiner’s decision to reject claims 5, 7, 9, 16, 17, and 19 under
35 U.S.C. § 102(b) as anticipated by Kupcak is reversed.
The Examiner’s decision to reject claims 5–7, 9, and 11–19 under 35
U.S.C. § 102(b) as anticipated by Castner is reversed.
The Examiner’s decision to reject claims 5–7, 9, and 11–19 under 35
U.S.C. § 103(a) as unpatentable over Castner and Dunn is affirmed.
The Examiner’s decision to reject claim 8 under 35 U.S.C. § 103(a) as
unpatentable over Castner, Dunn, and Goldberg is affirmed.
The Examiner’s decision to reject claim 8 under 35 U.S.C. § 103(a) as
unpatentable over Kupcak and Goldberg is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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