Ex Parte Yarovesky

Patent Trial and Appeal Board

Aug 8, 2014

12115967 (P.T.A.B. Aug. 8, 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.
12/115,967 05/06/2008 Uriel Yarovesky DENTAL-50748 6117
26252 7590 08/08/2014
KELLY & KELLEY, LLP
6320 CANOGA AVENUE
SUITE 1650
WOODLAND HILLS, CA 91367
EXAMINER
SZEKELY, PETER A
ART UNIT PAPER NUMBER
1766
MAIL DATE DELIVERY MODE
08/08/2014 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 URIEL YAROVESKY
________________

Appeal 2013-000263
Application 12/115,967
Technology Center 1700
________________

Before BRADLEY R. GARRIS, CHARLES F. WARREN, and
TERRY J. OWENS, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from Examiner’s
rejection of claims 31-42. We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
Appellant claims a dental restoration. Claim 31 is illustrative:
31. A dental restoration, comprising:
a dental restoration base attachable to a tooth of a patient or insertable
in a mouth of a patient;
a decal attached to the dental restoration base and having printed
thereon an image of a selected natural oral cavity characteristic of the patient
including tooth structure, enamel, dentin, crazing lines, stains, veins, blood
vessels, bony coloration, hyper-calcification, mucosal tissue or gum tissue so
as to be similar in appearance to at least a portion of a natural tooth or oral
cavity tissue; and
Appeal 2013-000263
Application 12/115,967

2
a sealant disposed over the decal and at least a portion of the dental
restoration base.

The Reference
Kim US 2005/0074721 A1 Apr. 7, 2005
The Rejections
Claims 31-42 stand rejected under 35 U.S.C. § 102(b) or, in the
alternative, under 35 U.S.C. § 103 over Kim.
OPINION
The rejection under 35 U.S.C. § 102(b) is reversed and the rejection
under 35 U.S.C. § 103 is affirmed as to claims 31-36 and 38-41 and reversed
as to claims 37 and 42.
Rejection under 35 U.S.C. § 102(b)
“Anticipation requires that every limitation of the claim in issue be
disclosed, either expressly or under principles of inherency, in a single prior
art reference.” Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868
F.2d 1251, 1255-56 (Fed. Cir. 1989).
Appellant’s independent claims (31 and 38) require a dental
restoration base to which is attached a decal having printed thereon an image
of a natural oral cavity characteristic so as to be similar in appearance to at
least a portion of a natural tooth or oral cavity tissue.
Kim teaches that “[l]ong endeavors have been made in the dentistry
and dental restoration area to improve the material, colors, and shapes of
artificial teeth or dentin structures, particularly, for making the artificial
teeth resembled to the natural teeth of a patient” (¶ 2) and that “[i]n addition,
certain efforts have also been made to apply ornaments onto the surface of
Appeal 2013-000263
Application 12/115,967

3
artificial teeth to obtain a particular fashion desired by the user” (¶ 3). Kim
applies a decal comprising an ornamental design, image and/or
informational media to the front or rear surface of a natural tooth or a dental
construct such as an artificial tooth, dental crown, veneer, inlay or onlay, and
forms thereon at least one layer having mechanical strength (¶¶ 1, 5, 7, 9,
23).
Appellant states that “the differences between Kim and the present
invention reside in the printed matter on the substrate decal” (App. Br. 16).
“Where printed matter is not functionally related to the substrate, the printed
matter will not distinguish the invention from the prior art in terms of
patentability.” In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983).
Appellant argues that Appellant’s printed matter “is functionally related to
the decal and dental restoration base in that it creates the appearance of at
least a portion of a natural tooth or oral cavity tissue, which is functional in
nature in the art of dental restoration” (Reply Br. 6-7) and that “[t]here is no
disclosure or suggestion whatsoever in Kim that the decal have printed
thereon an image of a selected natural oral cavity characteristic” (App.
Br. 11).
Examiner points out that “where the printed matter is not functionally
related to the substrate, the printed matter will not distinguish the invention
from the prior art in terms of patentability” (Ans. 3) and argues that “[i]t is
immaterial whether the image on the decal is the user’s natural tooth or the
Mona Lisa. It can be anything the user desires and for purposes of
patentability the user’s personal preferences are irrelevant.” Id.
Appeal 2013-000263
Application 12/115,967

4
Examiner has not established that in the dental art, printed matter on a
dental restoration decal is not functionally related to the decal and dental
restoration base. Examiner’s mere assertion that the appearance of the
printed matter is immaterial is insufficient for establishing lack of such
functional relationship.
Accordingly, we reverse the rejection under 35 U.S.C. § 102(b).
Rejection under 35 U.S.C. § 103
Claims 31-36 and 38-41
Although Appellant addresses claims 38-41 under a separate heading
(App. Br. 19-20), Appellant relies upon the same arguments with respect to
claims 31-36 and 38-41 (App. Br. 9-20). We therefore limit our discussion
to one claim among those claims, i.e., claim 31. Claims 32-36 and 38-41
stand or fall with that claim. See 37 C.F.R. § 41.37(c)(1)(vii) (2007).
Appellant argues that modifying Kim’s image such that it renders the
decal similar in appearance to at least a portion of a natural tooth or oral
cavity tissue would render Kim’s decal unsatisfactory for its intended
purpose (App. Br. 15).
Although Kim’s printed matter is limited to ornamental designs,
images and/or informational media (¶ 1), Kim’s disclosure that efforts have
been made in dentistry both to apply ornaments to the surface of artificial
teeth and to make artificial teeth resemble natural teeth (¶¶ 1, 2) would have
led one of ordinary skill in the art, through no more than ordinary creativity,
to use, as an alternative to Kim’s ornamental images, images including those
recited in Appellant’s claims which make artificial teeth resemble natural
teeth. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (in
Appeal 2013-000263
Application 12/115,967

5
making an obviousness determination one “can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ”).
Appellant argues, in reliance upon In re Nomiya, 509 F.2d 566 (CCPA
1975), that Appellant’s recognition of “the problems of fabricating dental
restorations to replicate the natural anatomical appearance in the oral cavity
without depending upon the artistic abilities of a relatively few dental
technicians” is strong evidence of non-obviousness of Appellant’s claimed
invention (App. Br. 14).
That argument is not well taken because Appellant has not established
that the problem of “relatively few dental technicians that have the artistic
ability or experience to artistically perform dental restorations to a level
necessary to achieve high aesthetic results” (Spec. ¶ 2) was unknown in the
prior art. As set forth in Nomiya, 509 F.2d at 572, “[t]he significance of
evidence that a problem was known in the prior art is, of course, that
knowledge of a problem provides a reason or motivation for workers in the
art to apply their skill to its solution.”
Thus, we are not persuaded of reversible error in the rejection of
claims 31-36 and 38-41under 35 U.S.C. § 103.
Claims 37 and 42
Dependent claims 37 and 42 require “a secondary decal attached to
the restoration base.”
Examiner argues that “[m]ultiple glazes and decals are shown in
[Kim’s] Figure 6” (Ans. 3).
Appeal 2013-000263
Application 12/115,967

6
That figure shows steps of providing a dental construct substrate,
providing a decal sheet containing desired images, applying a glaze onto the
dental construct, firing the glaze-applied dental construct, positioning a decal
sheet on the dental construct substrate, firing the dental construct substrate
and decal, applying glaze onto the dental construct, and firing the
glaze-applied dental construct. Although the figure says “providing a decal
sheet” and “positioning a decal sheet”, the decal sheet in the positioning step
is the decal sheet in the providing step (¶¶ 36, 40, 41, 59, 60). Figure 6 does
not include a step of providing and positioning a second decal sheet.
Examiner argues that it would have been prima facie obvious to one
of ordinary skill in the art to cover up Kim’s first decal with a second decal
if the image on the first decal is unsatisfactory (Ans. 3).
That argument is based upon pure speculation, and such speculation is
not a sufficient basis for a prima facie case of obviousness. See In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967); In re Sporck, 301 F.2d 686,
690 (CCPA 1962).
We therefore reverse the rejection under 35 U.S.C. § 103 of claims 37
and 42.
DECISION/ORDER
The rejection of claims 31-42 under 35 U.S.C. § 102(b) over Kim is
reversed. The rejection of claims 31-42 under 35 U.S.C. § 103 over Kim is
affirmed as to claims 31-36 and 38-41 and reversed as to claims 37 and 42.
It is ordered that Examiner’s decision is affirmed-in-part.

Appeal 2013-000263
Application 12/115,967

7
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-IN-PART

lp