Lawrence Norman. Wallace

Patent Trials and Appeals Board

Aug 23, 2019

15605636 - (D) (P.T.A.B. Aug. 23, 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.
15/605,636 05/25/2017 Lawrence Norman Wallace LARSC.001P1C1 2169
20995 7590 08/23/2019
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
EXAMINER
HAUTH, GALEN H
ART UNIT PAPER NUMBER
1742
NOTIFICATION DATE DELIVERY MODE
08/23/2019 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 LAWRENCE NORMAN WALLACE
____________

Appeal 2019-003248
Application 15/605,6361
Technology Center 1700
____________

Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
JAMES C. HOUSEL, Administrative Patent Judges.

HOUSEL, Administrative Patent Judge.

DECISION ON APPEAL

Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 3–11, 13–20, and 24–31. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.3

1 The application from which this appeal has been taken has a granted
petition to make special. See Decision on the Petition to Make Special dated
May 22, 2018. Accordingly, this appeal has been advanced out of turn.
MPEP § 708.01.
2 Appellant is the Applicant, Larell Surgical Consultants, Inc., which is
identified in the Appeal Brief as the real party in interest (Appeal Br. 3).
3 Our Decision refers to the Specification (“Spec.”) filed May 25, 2017, the
Examiner’s Final Office Action (“Final Act.”) dated November 29, 2017,
Appellant’s Appeal Brief (“Appeal Br.”) filed November 29, 2018, the
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STATEMENT OF THE CASE
The invention relates to a method for forming a denture for a patient
in one dental office visit. Spec. ¶ 13. The method includes selecting a
denture template from a plurality of denture templates having different sizes,
each comprising a base portion with adjoining prosthetic teeth. Id. ¶ 14.
The base portion may be formed of a thermoplastic acrylic resin that
becomes malleable when heated to a range of 80–110˚C. Id. ¶ 43. The
method further includes heating the selected template to about 100˚C,
placing the heated template on a stone model of the patient’s jaw, forming
the template to the model, and reducing the flanges to about 2–3 mm from
the patient’s mucobuccal fold. Id. ¶¶ 43, 45. After the formed template has
cooled, a viscous material is applied thereto and the template is then seated
in the patient’s mouth, whereupon the viscous material is allowed to solidify.
Id. ¶ 14.
Claim 3, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the subject matter on appeal. The limitations at issue
are italicized.
3. A method of producing a denture, said method comprising:
selecting for a patient having at least one edentulous alveolar
ridge a pre-formed denture template from a plurality of pre-formed
denture templates, wherein the plurality of pre-formed denture
templates comprises pre-formed denture templates of at least four
different sizes, wherein each pre-formed denture template of the
plurality of pre-formed denture templates comprises:
a base portion formed out of a thermoplastic resin that
becomes malleable when heated to a range from about 80 °C to
about 110 °C, the base portion comprising a channel extending

Examiner’s Answer (“Ans.”) dated January 17, 2019, and Appellant’s Reply
Brief (“Reply Br.”) filed March 18, 2019.
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about a perimeter of the base portion and having an inner
surface and an outer surface, wherein a shape of the channel
generally corresponds to a shape of one edentulous alveolar
ridge of the at least one edentulous alveolar ridge and wherein
the channel is configured to at least partially accept the one
edentulous alveolar ridge of the at least one edentulous alveolar
ridge; and
prosthetic teeth attached to the base portion;
wherein the pre-formed denture template is selected from the pre-
formed denture templates of at least four different sizes to have a size
generally corresponding to a size of the one edentulous alveolar ridge
of the at least one edentulous alveolar ridge of the patient;
heating the base portion to a temperature of at least about 100
°C to render the thermoplastic resin of the base portion malleable
such that the base portion is a malleable base portion, wherein the
base portion may be reheated multiple times to the temperature of at
least about 100 °C at which it is the malleable base portion, and
wherein the malleable base portion has no memory and stays where
placed;
forming the malleable base portion to a stone model of a jaw of
the patient, the stone model comprising at least one of the one
edentulous alveolar ridge of the at least one edentulous alveolar ridge
and a palate vault, wherein forming the malleable base portion
comprises forming at least one of a flange of the channel of the
malleable base portion to at least a portion of the one edentulous
alveolar ridge of the at least one edentulous alveolar ridge of the stone
model and forming a palate vault of the malleable base portion to the
palate vault of the stone model;
reducing at least a portion the flange of the base portion until a
top surface of the flange is about 2–3 mm away from a mucobuccal
fold of the stone model;
after forming and reducing, cooling the base portion, placing
the base portion over the one edentulous alveolar ridge of the at least
one edentulous alveolar ridge of the patient, and evaluating a fit of the
base portion on the one edentulous alveolar ridge of the at least one
edentulous alveolar ridge;
after cooling the base portion, placing a viscous impression
material inside the channel of the base portion of the pre-formed
denture template;
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positioning the channel of the base portion of the pre-formed
denture template containing the viscous impression material over the
one edentulous alveolar ridge of the at least one edentulous alveolar
ridge of the patient;
seating the pre-formed denture template on the one edentulous
alveolar ridge of the at least one edentulous alveolar ridge such that
the one edentulous alveolar ridge of the at least one edentulous
alveolar ridge of the patient is pressed into the viscous impression
material and toward the inner surface of the channel of the base
portion, wherein the viscous impression material adheres to the base
portion of the pre-formed denture template, and wherein at least a
portion of the viscous impression material conforms to the one
edentulous alveolar ridge of the at least one edentulous alveolar ridge
of the patient; and
allowing the viscous impression material to solidify.

Independent claims 6 and 15 similarly recite methods of producing a
denture except that the selected template is heated to at least 80 ˚C (claim 6)
or greater than about 80 ˚C (claim 15).

REJECTIONS
The Examiner maintains, and Appellant requests review of, the
following grounds of rejection under 35 U.S.C. § 103:
1. Claims 3–8, 11, 13, and 14 as unpatentable over Wallace4 in
view of Ginsburg,5 Gettleman,6 and Huybrechts;7

4 Wallace, US 2010/0297581 A1, published November 25, 2010.
5 Ginsburg, et al., US 5,775,900, issued July 7, 1998 (“Ginsburg”).
6 Gettleman, et al., US 4,661,065, issued April 28, 1987 (“Gettleman”).
7 Huybrechts, US 5,431,563, issued July 11, 1995.
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2. Claims 9 and 10 as unpatentable over Wallace in view of
Ginsburg, Gettleman, and Huybrechts, and further in view of
Drummond;8
3. Claims 15–20, 24–26, and 29–31 as unpatentable over Wallace
in view of Ginsburg and Huybrechts; and
4. Claims 27 and 28 as unpatentable over Wallace in view of
Ginsburg and Huybrechts, and further in view of Drummond.

ANALYSIS
Unless separately argued pursuant to 37 C.F.R. § 41.37(c)(1)(iv), the
claims subject to Rejection 1 stand or fall with claim 3, which we select as
representative in our opinion below. As for the claims subject to Rejections
2–4, Appellant relies on the same arguments in support of claim 3.
Therefore, our ruling on claim 3 controls the outcome for the claims subject
to Rejections 2–4.
After review of Appellant’s and the Examiner’s opposing positions,
the applied prior art, and Appellant’s claims, we determine that Appellant’s
arguments are insufficient to identify reversible error in the Examiner’s
obviousness rejections. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
Accordingly, we affirm the stated obviousness rejections for substantially
the fact findings and the reasons set forth by the Examiner in the Final
Office Action and the Examiner’s Answer. We offer the following for
emphasis only.
The Examiner finds that Wallace teaches a method for producing a
denture substantially as recited in claim 3 except for teaching that the base
portion becomes malleable when heated to a range of 80–110˚C and forming

8 Drummond, et al., US 2007/0183572 A1, published August 9, 2007
(“Drummond”).
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the base to a stone model of a patient’s jaw after heating to at least 100˚C.9
Final Act. 3–4. However, the Examiner finds that Ginsburg teaches a
thermally deformable template for a fully or partially edentulous ridge
including prosthetic teeth similar to Wallace’s template. Id. at 4. The
Examiner further finds that Ginsburg teaches it was known in the art to heat
the template to a malleable temperature greater than 49˚C and shape the
template on a model of the patient’s mouth. Id. Therefore, the Examiner
concludes that it would have been obvious to heat Wallace’s template to a
malleable temperature and adjust its shape on a model of the patient’s mouth
as taught by Ginsburg with a reasonable expectation of success because both
Wallace’s and Ginsburg’s templates are acrylic denture bases with prosthetic
teeth. Id. The Examiner finds that doing so allows for increased adjustment
of the denture material to the patient’s specific anatomy and, “by shaping
against a model of the patient’s anatomy there is no danger of burning the
patient with heated materials.” Id. at 5 (emphasis removed).
The Examiner additionally finds that Huybrechts teaches a
polymethacrylate thermoplastic article suitable for use as a dental device that
may be heated, molded, reheated, and remolded multiple times, wherein the
material may be heated to a temperature between 50–95˚C or may be heated
in boiling water (100˚C). Final Act. 5. Therefore, the Examiner concludes
that it would have been obvious to heat Wallace’s template to a temperature

9 The Examiner also finds that Wallace does not expressly teach that viscous
material place inside a channel of the template adheres to the base portion of
the template. Final Act. 4. The Examiner relies on Gettleman to remedy
this apparent deficiency. Id. at 6. Appellant does not challenge this aspect
of the Examiner’s rejections. Accordingly, we need not discuss this aspect
of the rejection nor Gettleman further in our Decision.
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of 100˚C in view of Huybrechts given that there is no danger of harming a
patient’s mouth when shaping the template to a model of a patient’s mouth.
Id. In this regard, the Examiner determines that a template made of
polymethyl methacrylate as disclosed in Wallace, Ginsburg, and Huybrechts
would have been capable of being heated to a temperature in the claimed
range. Ans. 3–5.
Appellant argues that Ginsburg and Huybrechts teach away from use
of thermally deformable temperatures that are dangerous to oral tissues.
Appeal Br. 9–20. Appellant contends that Ginsburg teaches that its
thermoplastic material may be heated only to temperatures that are safe for
oral tissues. Id. at 11. Appellant cites portions of Ginsburg teach that the
thermoplastic template may be heated in water above 49˚C or between 49–
71˚C, and then formed in a patient’s mouth. Id. at 11–12. Appellant notes
that Ginsburg incorporates by reference US 4,361,528 which teaches a
method of making a thermoplastic dental impression tray which can be
heated and placed into a patient’s mouth where it can be molded to the
patient’s tissues. Id. at 12–13. Appellant cites portions from this
incorporated patent teaching that the tray can be heated to above 135˚F,
including about 165˚F, while also teaching that the tray becomes moldable at
temperatures low enough that the heated tray will not cause patient
discomfort during the in-mouth procedure. Id. at 13. Based on these
passages from Ginsburg and its incorporated by reference patent, Appellant
contends that one of ordinary skill in the art would understand that Ginsburg
teaches away from heating the thermoplastic material to a temperature of
over 80˚C, as such temperatures could burn the sensitive mucosa of the
patient’s mouth. Id. at 14. Moreover, though teaching forming to a model
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as an alternative, Appellant urges that Ginsburg is specifically configured for
use in a patient’s mouth. Id.
Appellant similarly contends that Huybrechts also teaches that its
denture is moldable within a patient’s mouth. Appeal Br. 18. Appellant
asserts that Huybrechts does not disclose heating the base template to 100˚C,
but instead teaches polymerizing the monomer at 100˚C to form the base
template. Id. at 17; Reply Br. 2–4. Further, Appellant asserts that although
Huybrechts teaches that the base template may be heated to 50–95˚C,
Huybrechts nonetheless teaches that the template may soften in the mouth
merely by rinsing with hot water and may be adjusted by immersing in warm
water. Id. at 18. Thus, Appellant contends that one of ordinary skill in the
art would understand that Huybrechts teaches away from heating a
thermoplastic material to a temperature of over 80˚C, much less to a
temperature of at least about 100˚C. Id. at 18–20.
Appellant’s arguments are not persuasive of reversible error. “A
reference may be said to teach away when a person of ordinary skill, upon
reading the reference, would be discouraged from following the path set out
in the reference, or would be led in a direction divergent from the path that
was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir.
1994). Further, references in a combination may be said to teach away
where their combined teachings would produce a “seemingly inoperative
device”. See In re Sponnoble, 405 F.2d 578, 587 (CCPA 1969). However,
teaching an alternative or equivalent method does not teach away from the
use of a claimed method. See In re Dunn, 349 F.2d 433, 438 (CCPA 1965).
Moreover, “[a] reference does not teach away, however, if it merely
expresses a general preference for an alternative invention but does not
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‘criticize, discredit, or otherwise discourage’ investigation into the invention
claimed.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d
1314, 1327 (Fed. Cir. 2009) (citing In re Fulton, 391 F.3d 1195, 1201 (Fed.
Cir. 2004)). Rather, teaching away requires “clear discouragement” from
implementing a technical feature. In re Ethicon, Inc., 844 F.3d 1344, 1351
(Fed. Cir. 2017).
Here, although Ginsburg and Huybrechts teach a general preference
for forming the thermoplastic material within a patient’s mouth, both
references recognize that a model of the patient’s mouth may be used as an
alternative. Further, both references teach the use of temperatures that the
ordinary artisan would have reasonably expected to not only cause a patient
discomfort, but also cause tissue damage. For example, Ginsburg teaches
temperatures up to 160˚F, Ginsburg’s incorporated by reference patent
teaches temperatures up to 165˚F, and Huybrechts teaches temperatures up
to 95˚C, all for heating the dental template to a moldable or malleable
temperature. Because the ordinary artisan would have expected that these
temperatures could cause patient discomfort and tissue damage, the ordinary
artisan would have reasonably understood that these temperatures would
have favored the alternative method disclosed by Ginsburg and Huybrechts,
i.e., forming the dental template on a model of the patient’s mouth rather
than directly within the patient’s mouth. Appellant has not directed our
attention to any disclosure in these references or elsewhere, that criticizes,
discredits, or otherwise discourages investigation into the use of this
disclosed alternative method, nor do we find any.
Turning to the use of a temperature of at least about 100˚C as recited
in claim 3, Appellant is correct that Huybrechts teaches polymerizing the
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monomer mixture at this temperature. Huybrechts 8:58–64. However,
Huybrechts teaches that the resulting polymer composition was used to mold
various articles at “temperatures over 50˚C, and usually temperatures
between 50˚C. and 95˚C.” Huybrechts 6:15–19. Huybrechts’ range,
temperatures over 50˚C, overlaps Appellant’s range for malleability of the
denture template, 80–110˚C. E.I. DuPont de Nemours & Co. v. Synvina
C.V., 904 F.3d 996 (Fed. Cir. 2018) (“A prima facie case of obviousness
typically exists when the ranges of a claimed composition overlap the ranges
disclosed in the prior art.” (quoting In re Peterson, 315 F.3d 1325, 1329
(Fed. Cir. 2003)).10 Moreover, Huybrechts’ teaching of temperatures over
50˚C, and usually temperatures between 50–95˚C, indicates that Huybrechts
contemplates temperatures over 95˚C, depending on the temperature at
which the material used becomes soft and moldable. We note that Wallace
and Appellant disclose use of the same methyl methacrylate polymers for the
templates. Compare Wallace ¶ 36 with Spec. ¶ 27. Thus, these materials

10 The upper limit of Huybrechts’ narrower range of 50–95˚C is also
sufficiently close to the recited “at least about 100˚C” that the ordinary
artisan would have reasonably expected that the polymer composition would
have become moldable or malleable at this temperature. Peterson, 315 F.3d
at 1329 (“a prima facie case of obviousness exists when the claimed range
and the prior art range do not overlap but are close enough such that one
skilled in the art would have expected them to have the same properties.”)
To begin, we note that the use of “about” in a claimed range can expand the
scope of a claim so as to sweep in the prior art. In re Ayers, 154 F.2d 182,
185 (CCPA 1946) (Court found at least about 10% anticipated by about 8%
because it permitted “some tolerance and the use of the words ‘at least’
before ‘about’ in the claim” was not viewed as a modification critical in
character). As the Examiner determines (Ans. 5), Appellant fails to direct
attention to any disclosure in the applied prior art that teaches the material of
the template ceases to be malleable when heated to at least about 100˚C
versus 95˚C of Huybrechts or 160˚F of Ginsburg.
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would have the same glass transition temperature and exhibit the same
softening and moldability at the same temperature. Also, as noted above,
neither Ginsburg nor Huybrechts teaches away from using higher
temperatures when forming the heated template to a model of a patient’s
mouth. Therefore, we conclude, as did the Examiner, that it would have
been obvious for the ordinary artisan to have heated a denture template in
Wallace’s process to a temperature of at least about 100˚C in view of the
teachings of Ginsburg and Huybrechts in order to form the template to a
model of the patient’s mouth with a reasonable expectation of success.
Because claim 6 merely requires heating the template to a temperature
of at least 80˚C and claim 15 merely requires heating the template to a
temperature greater than about 80˚C, which ranges clearly overlap
Huybrechts’ disclosed range of 50–95˚C, a prima facie case of obviousness
exists over the combination of Wallace in view of Ginsburg and Huybrechts.
Peterson, 315 F.3d at 1329.
Accordingly, we sustain the Examiner’s obviousness rejections.

DECISION
Upon consideration of the record, and for the reasons given above and
in the Final Office Action and the Answer, the decision of the Examiner
rejecting claims 3–11, 13–20, and 24–31 is affirmed.
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).

AFFIRMED