MEGAGEN IMPLANT CO., LTD.

Patent Trials and Appeals Board

Jan 26, 2022

2021004356 (P.T.A.B. Jan. 26, 2022)

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. 16/083,481 09/07/2018 Kwang Bum PARK 1842-056 9065 83219 7590 01/26/2022 Renaissance IP Law Group LLP (PIP) 17933 NW Evergreen Place, Suite 121 Beaverton, OR 97006 EXAMINER MORAN, EDWARD JOHN ART UNIT PAPER NUMBER 3772 NOTIFICATION DATE DELIVERY MODE 01/26/2022 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): dkt@renaissanceiplaw.com eofficeaction@appcoll.com pto@renaissanceiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KWANG BUM PARK, HYUN WOOK AN, and JUNG HO NAM Appeal 2021-004356 Application 16/083,481 Technology Center 3700 Before JENNIFER D. BAHR, DANIEL S. SONG, and LISA M. GUIJT, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 5, 7, 8, 11, and 14. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Megagen Implant Co., Ltd. Appeal Br. 3. Appeal 2021-004356 Application 16/083,481 2 THE CLAIMED SUBJECT MATTER Appellant’s invention relates to “a dental flattening drill.” Spec. 1:6- 7. Claim 1, reproduced below as the sole independent claim on appeal, is illustrative of the claimed subject matter, with disputed limitations italicized for emphasis.2 1. A dental flattening drill comprising: a drill lance comprising a drill blade that forms a placement hole by drilling an alveolar bone at a placement position where a fixture is to be placed by a preset depth; and a drill housing, to which the drill lance is detachably coupled, comprising a processing blade that flattens an area of the alveolar bone around the placement hole, wherein the drill housing comprises a housing body having an end portion where the processing blade is formed, wherein the housing body and processing blade are spaced apart from the drill blade to define an alveolar bone crushed powder storing space portion configured to receive crushed alveolar bone; wherein the drill blade is arranged radially inside the processing blade of the drill housing, wherein the drill blade of the drill lance protrudes more than the processing blade of the drill housing in a direction in which the drill lance is coupled to the drill housing, wherein the drill lance comprises: a unit shaft having one end portion where the drill blade is formed, a boss provided on one side of the unit shaft and caught and supported by the drill housing, 2 Notably, claim 1’s recitation of a guide groove formed in an inner wall of the drill housing where the ball accommodation portion is formed seems to presume that the ball accommodation portion is formed in the drill housing. This presents an internal inconsistency with the prior recitations of the ball plunger being providing in either the drill lance or the drill housing and the ball accommodation portion being provided in the other of the drill lance and the drill housing. Appeal 2021-004356 Application 16/083,481 3 a cylindrical insertion portion provided on a side surface of the boss toward the drill blade, and a tool mounting portion provided on the other end portion of the unit shaft, and wherein the processing blade is an end mill processing blade having blades on a bottom and lateral surfaces, and a boss catching step, by which the boss of the drill lance is caught and supported, is provided in the housing body, and an insertion hole into which the cylindrical insertion portion of the drill lance is inserted, is formed inside the boss catching step; wherein the drill lance is detachably coupled to the drill housing and comprises: a detachable coupling portion provided on the drill lance and the drill housing and detachably coupling the drill lance to the drill housing, wherein the detachable coupling portion comprises: a ball plunger provided in any one of the drill lance and the drill housing and comprising a ball and an elastic member elastically pressing the ball; and a ball accommodation portion provided in the other one of the drill lance and the drill housing and accommodating the ball plunger; and wherein a guide groove guiding the ball of the ball plunger is formed in an inner wall of the drill housing where the ball accommodation portion is formed. Appeal 2021-004356 Application 16/083,481 4 THE REJECTIONS The prior art relied upon by the Examiner is: Name Reference Date Chester US 1,333,388 Mar. 9, 1920 Kumar US 2003/0224325 A1 Dec. 4, 2003 Kim KR20130001046U Feb. 14, 2013 The rejections before us on appeal are: I. Claims 1, 7, 8, 11, and 14 stand rejected under 35 U.S.C. § 103 as being unpatentable over Chester and Kumar. II. Claim 5 stands rejected under 35 U.S.C. § 103 as being unpatentable over Chester, Kumar, and Kim. OPINION Rejection I Regarding independent claim 1, the Examiner finds that Chester discloses a dental flattening drill as claimed, including a drill housing (i.e., body portion 16 of Chester’s removable tool that resembles a trephine)3 and a drill lance (i.e., shank 6), except that Chester fails to teach a detachable coupling portion comprising a ball plunger, a ball accommodation portion, and guide groove, as claimed. Final Act. 3-7 (citing, e.g., Chester, Figs. 2, 4, 6, 7). The Examiner relies on Kumar for disclosing a detachable coupling comprised as claimed and reasons that it would have been obvious to modify Chester’s dental drilling tool to include Kumar’s detachable coupling, such that “the corresponding male member of Chester (e.g., drill lance [or shank 3 See, e.g., Chester 2:25-32 (“the tool used resembles a trephine, in being a thin cylinder of metal having a toothed edge 15 and a body portion 16”). Appeal 2021-004356 Application 16/083,481 5 6]) will contain the ball . . . , while the corresponding female member of Chester (e.g., drill housing [or body portion 16]) will contain the accommodation portion and guide groove,” because such a modification “would additionally retain the two components in the axial direction, preventing inadvertent axial separation between the components during use.” Id. at 7-8 (citing Kumar, Fig. 5). Appellant argues that “this rationale is insufficient to establish a prima facie case of obviousness because Chester explicitly teaches away from modification proposed by the [Examiner].” Appeal Br. 9. In support, Appellant submits that Chester discloses: “I have found that there is no need of retaining the trephine [i.e., body portion 16] against sliding endwise off the reset of the drill and that all that is necessary is to preset it against rotation or tipping.” Id. at 9 (quoting Chester 2:37-41, alteration in original). The Examiner responds that “Chester does not explicitly state or imply that the inclusion of such a retention would be detrimental to the operation of the Chester device, or that it would cause the device to be inoperable; instead merely stating that it is not required.” Ans. 4. The Examiner also responds that, although “not contemplated by Chester,” the Examiner’s proposed modification results in an axial retention between components that provides the additional benefits of “[preventing] inadvertent separation during use . . . reducing the risk of swallowing/choking” and “a more secure connection against tipping, or separation between components as the device is angled, which is an express concern of Chester.” Id. The Examiner relies on Chester’s teaching that the “fit” of the trephine (or drill housing) “on the shank [6] of the recess driller Appeal 2021-004356 Application 16/083,481 6 should be close” (quoting Chester 2:1-2) implies that “at least some degree of axial retention” is desirable. Id. Appellant replies that “Chester actively discourages investigation into the very modification that the Final Office Action proposes.” Reply Br. 2. Appellant also argues that the Examiner’s additional “benefits are merely speculative” and lack “any basis in fact or technical reasoning.” Id. at 3. Appellant further argues that “the Examiner’s Answer fails to establish that a ‘more secure’ connection ‘against tipping, or separation between components’ - beyond that which is already provided by Chester, unmodified - is even possible,” and further, that “Chester already provides some degree of axial retention,” via the “close fit,” as stipulated by the Examiner. Id. Prior art does not teach away from claimed subject matter merely by disclosing a different solution to a similar problem unless the prior art also criticizes, discredits or otherwise discourages the solution claimed. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). However, “[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). Chester discloses that the drill housing (or tool), as relied on by the Examiner, “resembles a trephine, in being a thin cylinder of metal having a toothed edge 15 and a body portion 16” (see, e.g., Chester, Figs. 2, 5-7), wherein “cutting of the outer groove around the walls of the countersunk recess can be done with a removable tool so that when this is not desired by the dentist, he need not employ this section of the tool at all” (Chester 2:25- Appeal 2021-004356 Application 16/083,481 7 32 (emphasis added)). In other words, Chester teaches that it is desirable that the components of the tool are separable, yet adequately assembled for use as a dental drilling tool. As relied on by Appellant, Chester further discloses that there is no need of retaining the trephine against sliding endwise off the rest of the drill and that all that is necessary to preserve it against rotation or tipping. Thus its fit on the shank of the recess driller should be close, and there should be a pin and slot connection of some kind. As shown in Fig. 6, the trephine is slipped on over the recess driller 7, 8, and held against rotation by means of extensions 18 that slide into shallow cuts 19 on the periphery of the said drill member, so as to be firmly clutched in place. Id. 2:27-50. We agree with the Examiner that although Chester suggests that axial displacement of the drill housing (i.e., body portion 16 of the trephine) is not of concern, Chester does not criticize, discredit or otherwise discourage adding the detachable coupling solution, as taught in Kumar, such that when assembling Chester’s dental drilling tool for use, the trephine would be less likely to slide endwise off the rest of drill, resulting in the risk of choking or swallowing the trephine by the patient or the separation of components at an inopportune moment in the dental procedure, as reasoned by the Examiner. Indeed, Kumar expressly identifies this problem with known dental driving tools that have an implant or fixture mount: “the implant can loosen from the driving tool and fall off,” such that “the implant can be ingested or contaminated”; thus, the Examiner’s motivation to combine is not merely speculative. Kumar ¶ 5. Contrary to the Appellant’s assertion, the Examiner’s additional articulated “benefits” are not “merely speculative,” Appeal 2021-004356 Application 16/083,481 8 and do not lack “any basis in fact or technical reasoning.” Reply Br. 3. Further, we are not apprised of error in the Examiner’s reasoning that, in addition to the “close fit” described in Chester, Kumar’s detachable coupling would guard against axial displacement of Chester’s trephine relative to the drill, as well as tipping, to the extent the coupling maintains the trephine in a stable position along the length of the drill. Accordingly, we sustain the Examiner’s rejection of independent claim 1. Appellant chose not to present arguments for the patentability of claims 7, 8, 11, and 14 apart from those presented for the patentability of claim 1. Appeal Br. 9. Thus, for essentially the same reasons as stated supra, we also sustain the Examiner’s rejection of claims 7, 8, 11, and 14. Rejection II Appellant chose not to present arguments for the patentability of claim 5 apart from those presented for the patentability of claim 1. Appeal Br. 9. Thus, for essentially the same reasons as stated supra, we also sustain the Examiner’s rejection of claim 5. Appeal 2021-004356 Application 16/083,481 9 CONCLUSION The Examiner’s rejections are affirmed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 7, 8, 11, 14 103 Chester, Kumar 1, 7, 8, 11, 14 5 103 Chester, Kumar, Kim 5 Overall Outcome 1, 5, 7, 8, 11, 14 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED