Hurson, Steve

Patent Trials and Appeals Board

Nov 29, 2019

13572476 - (R) (P.T.A.B. Nov. 29, 2019)

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.
13/572,476 08/10/2012 Steve Hurson NOBELB.264C2 2546
20995 7590 11/29/2019
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
EXAMINER
SAUNDERS, MATTHEW P
ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
11/29/2019 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):
efiling@knobbe.com
jayna.cartee@knobbe.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STEVE HURSON
____________

Appeal 2017-004710
Application 13/572,476
Technology Center 3700
____________

Before BRADLEY B. BAYAT, FREDERICK C. LANEY, and
PAUL J. KORNICZKY, Administrative Patent Judges.

BAYAT, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Steve Hurson (Appellant) filed a Request for Rehearing on August 5,
2019 (“Request”) pursuant to 37 C.F.R. § 41.52 for reconsideration of our
Decision on Appeal mailed June 3, 2019 (“Decision”). The Decision
affirmed the Examiner’s § 103 rejection of claims 1–8 as unpatentable over
Bassett and Purga. See Decision 7. We have jurisdiction over the Request
under 35 U.S.C. § 6(b).
Turning to the Request, Appellant contends that the Board, by
agreeing with the Examiner’s statements on page 7 of the Decision,
misapprehended and/or overlooked several points in rendering the Decision.
Request 2. In particular, Appellant argues that if the rationale for combining
Purga with Bassett “is to improve guidance, one skilled in the art would
Appeal 2017-004710
Application 13/572,476

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have modified Bassett to include Purga’s guiding portion and thus, Bassett’s
interlock portion would not extend all the way to the apical end as required
in independent Claim 1.” Id. According to Appellant, “if the motivation to
use Purga’s teachings is to provide for ‘improved guidance,’ then it would
be unreasonable to eliminate the very feature (i.e., the guiding portion) of
Purga that is disclosed as providing the guidance.” Id. at 2–3.
We could not have apprehended an argument that was never presented
in Appellant’s briefs. Arguments not raised in the briefs before the Board
and evidence not previously relied on in the briefs are not permitted in a
request for rehearing except in limited circumstances set forth in 37 C.F.R.
§§ 41.52(a)(2) through (a)(4), none of which apply here. As we indicated in
our Decision, “Appellant’s argument emphasizes the distinction between the
shape of Purga’s cylindrical section 22 and the hexagonal shape of the
claimed interlock portion, but the Examiner relied on Bassett for disclosing a
hexagonal interlock portion.” Decision 7.
In rejecting claim 1, the Examiner found Bassett discloses all the
limitations of the claim, “‘but fails to explicitly disclose where the ratio of
the length of the conical portion and the length of the interlock portion is
about 1:1.’” Id. at 5. (quoting Final Act. 5). According to the Examiner,
“‘Bassett provides for both the claimed conical portion and the interlocking
portion. The only limitation not provided for by Bassett was the claimed
ratio between the conical portion and the interlocking portion.’” Id. at 6
(quoting Answer 4). “The Examiner relied on Purga for teaching the
advantage of a longer insertion path by providing ‘a conical portion of an
abutment having a one to one ratio with a portion below a conical portion.’”
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Application 13/572,476

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Id. at 6–7 (quoting Answer 4). In combining the teaching of the references,
the Examiner concluded:
it would have been obvious to one having ordinary skill in the
art at the time of the invention to incorporate the ratio of the
lengths of the conical portion and the interlocking portion being
1:1 as taught by Purga into the abutment portions as taught by
Bassett for the purpose of providing the conical portion and the
interlocking portion with a longer insertion path and better
feedback when assembling a dental implant and avoiding
wedging when assembling the abutment with an implant as
taught by Purga (column 4 lines 50-58).

Id. at 5–6 (quoting Final Act. 5). As such, the Examiner has made it
clear that the rejection is not based upon bodily incorporation of
Purga’s guiding portion into Bassett, such that one skilled in the art
would have modified Bassett to include Purga’s guiding portion, as
Appellant suggests. This argument is ineffective because it fails to
address the rationale provided by the Examiner. See In re Keller, 642
F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not whether
the features of a secondary reference may be bodily incorporated into
the structure of the primary reference. . . . Rather, the test is what the
combined teachings of those references would have suggested to those
of ordinary skill in the art.”); In re Nievelt, 482 F.2d 965, 968 (CCPA
1973) (“Combining the teachings of references does not involve an
ability to combine their specific structures.”).
Accordingly, Appellant’s request to reverse the rejection of claims 1–
8 under § 103 is denied.

Appeal 2017-004710
Application 13/572,476

4
CONCLUSION
Appellant’s Request has been granted to the extent that we have
reconsidered our Decision in light of Appellant’s Request, but is denied in
all other respects.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
Outcome of Decision on Rehearing:
Claims 35 U.S.C § Reference(s)/Basis Denied Granted
1–8 103(a) Bassett, Purga 1–8

DENIED