Neurodontics-Stiftung

Patent Trials and Appeals Board

May 12, 2020

2019006091 (P.T.A.B. May. 12, 2020)

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.
15/334,904 10/26/2016 Wilhelm ENTRUP 885_471 7179
25191 7590 05/12/2020
BURR & BROWN, PLLC
PO BOX 869
FAYETTEVILLE, NY 13066
EXAMINER
SPARKS, STEPHEN R
ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
05/12/2020 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):
tpreston@burrandbrown.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte WILHELM ENTRUP
____________

Appeal 2019-006091
Application 15/334,904
Technology Center 3700
____________

Before JAMES P. CALVE, WILLIAM A. CAPP, and
JEREMY M. PLENZLER, Administrative Patent Judges.

CAPP, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1–2, 5–7, and 10–15 as unpatentable under 35 U.S.C.
§ 103 over Cassalia (US 2014/0302448 A1, pub. Oct. 9, 2014) and Foerster
(US 2012/0135367 A1, pub. May 31, 2012) and claims 17 and 18 over
Cassalia, Foerster, and Ariza (US 2015/0111166 A1, pub. Apr. 23, 2015).2
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 Neurodontics-Stiftung as the
Applicant and real party in interest. Appeal Br. 4.
2 Rejections under 35 U.S.C. § 112 have been withdrawn. Ans. 9.
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THE INVENTION
Appellant’s invention relates to dental retainers used in orthodontic
therapy. Spec. ¶ 2. Claim 1, reproduced below, is illustrative of the subject
matter on appeal.
1. A retainer for maintaining the front teeth positioning
achieved during orthodontic therapy, the retainer comprising:
at least two connection pieces for fastening the retainer on a
respective tooth surface, wherein at least one of the at least two
connection pieces is at least partly made of composite; and
a connection wire for establishing a connection between the
teeth and/or for forming a constraint to restrict the movement
capabilities of the connected teeth, wherein the connection wire
consists of polyether ether ketone; and
a stop provided on at least at one of two ends of the
connection wire, and not connected to the at least two
connection pieces of the at least at one of two ends of the
connection wire, to provide a one-sided limitation of the
relative movement between the at least two connection pieces
and the connection wire in a longitudinal direction of the
connection wire;
wherein the connection wire is movably mounted in at least
one of the connection pieces, and
wherein at least one of the at least two connection pieces at
least partially surrounds the connection wire perpendicular to
the longitudinal direction of the connection wire and/or lies
completely on the connection wire along its circumference via
an eyelet provided in the at least one connection piece for
mounting the connection wire, such that a relative movement
between the connection wire and the respective connection
piece in the longitudinal direction is allowed, and a relative
movement between the connection wire and the respective
connection piece perpendicular to the longitudinal direction is
permitted only within a specific area.
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OPINION
Unpatentability of Claims 1–2, 5–7, and 10–15
Over Cassalia and Foerster
Appellant argues claims 1–2, 5–7, and 10–15 as a group. Appeal
Br. 9–19. We select claim 1 as representative. 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Cassalia discloses the invention substantially
as claimed except for using polyether ether ketone (“PEEK”) wire, for which
the Examiner relies on Foerster. Final Act. 4–6. The Examiner concludes
that it would have been obvious to a person of ordinary skill in the art at the
time the invention was made to use PEEK wire in Cassalia. Id. at 6.
According to the Examiner, a person of ordinary skill in the art would have
done this because PEEK is well-suited for use in orthodontic appliances. Id.
Appellant argues that Foerster fails to disclose PEEK wire as claimed.
Appeal Br. 10–14. This singular argument is rephrased and restated in many
ways, but the essence of Appellant’s position is that Foerster’s PEEK wire
includes a covering or coating for aesthetic purposes. Id. Appellant argues,
from several different angles, that the “consists of” phrase that immediately
precedes “of polyether ether ketone” in claim 1 should be construed as
entirely precluding using a covering or coating on or over the PEEK wire.
Id.
In response, the Examiner takes the position that Foerster’s archwire
consists only of PEEK and has the properties of an orthodontic archwire.
Ans. 9. The Examiner explains that the shrink tube covering that overlays
the PEEK wire is a separate structure from the PEEK wire. Id. The
Examiner makes similar observations regarding embodiments of Foerster
that use a dye coating to achieve a desired color. Id. at 10. The Examiner
further explains:
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PEEK is a chemical compound (Polyether ether ketone), so
Foerster's disclosure of PEEK is made out ONLY of PEEK. It
does not have any alloys or is mixed with any other materials.
Therefore, it meets the limitation of the claim of “consist of”.
Id.
In reply, Appellant reiterates its position that Foerster’s use of
coatings or coverings over the PEEK patentably distinguishes Foerster from
the scope of claim 1 by virtue of the “consists of” language. Reply Br. 2.
According to Appellant, “Foerster does actually disclose that PEEK wires
are mixed with other materials.” Id.
Foerster is directed to a wire arch for use in orthodontics to correct
malpositioned teeth. Foerster ¶¶ 1, 13. Foerster explains that prior art
archwire is unpleasant due to its color. Id. ¶ 1. To alleviate this problem,
Foerster places a tooth-colored shrink tube over the archwire. Id. ¶ 3. In an
alternative embodiment, the archwire is provided with a tooth-colored
coating and then a transparent shrink tube is placed over the archwire. Id.
Foerster discloses that PEEK wires are advantageously used in the invention,
among other things, because of high temperature resistance, high modulus of
elasticity, high tensile strength, biocompatibility, chemical inertness, and
ability to be sterilized. Id. ¶ 16. However, Foerster also discloses that
PEEK wires are brown-grey in color, but are capable of being dyed. Id.
The Manual of Patent Examining Procedure provides, in pertinent
part, the following guidance with respect to using the phrase “consists of” in
the body of a claim.
When the phrase “consists of” appears in a clause of the body
of a claim, rather than immediately following the preamble,
there is an “exceptionally strong presumption that a claim term
set off with ‘consisting of’ is closed to unrecited elements.” . . .
However, the “consisting of” phrase limits only the element set
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forth in that clause; other elements are not excluded from the
claim as a whole.
MPEP § 2111.03.
The issue before us is whether a PEEK wire that is covered with a
shrink tube or coated with a dye falls outside of the scope of a claim to a
“connection wire” that “consists of” PEEK. Another way to phrase the issue
is whether a PEEK wire with a dye coating or sheath is only one element or
more than one element, i.e.,
(1) a coated connection wire; or
(2) (i) a connection wire; and
(ii) a coating or covering.
Foerster’s PEEK wire, prior to being sheathed or coated, is unquestionably
PEEK within the scope of the claim.3 The chemical composition and
material properties of the PEEK are not altered or affected by coverings or
coatings. It is clear from reading Foerster that the coating is merely added to
the exterior surface of the PEEK wire for aesthetic purposes, namely, to
match the color of teeth. Foerster, ¶ 2 (“The present invention enables
orthodontic archwires that are provided to be white or tooth-colored”). We
agree with the Examiner’s analysis that coating the PEEK wire with dye or a
shrink tube relates to a distinct, additional element to the “consists of” PEEK
element. Adding elements to the overall claim is permitted in view of
Appellant’s selection of a “comprising” transition in the preamble. See
Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997)

3 We reject Appellant’s assertion that Foerster’s (uncoated) wire may
include other materials. See Reply Br. 2. Such assertion is entirely
speculative in nature and lacks any evidentiary support in the record before
us. Id.
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(explaining that the “comprising” transition means that other elements may
be added and still form a construct within the scope of the claim).
It bears mention that Appellant added the “consists of” phrase by
amendment. Compare Appeal Br. Claims App., Original Spec., claim 1.
Appellant’s Specification teaches that embodiments of the invention may
use connection wire that is “partly” – made of “plastic.” Spec. ¶ 33. PEEK
is merely listed as an exemplary plastic material that may be used in the
invention. Id. The Specification expressly contemplates that “coatings”
may be applied to “the wire.” Id.4 A person of ordinary skill in the art
would understand that “the wire” is “the wire,” with or without a coating.
Even assuming, arguendo, that the claim requires an uncoated or
unsheathed PEEK wire,5 we are cognizant that the rejection before us is an
obviousness rejection under 35 U.S.C. § 103. Appellant presents no
evidence that using uncoated PEEK wire (as opposed to coated or sheathed
wire) is critical to the invention. Indeed, Appellant’s Specification expressly
teaches that coating the PEEK wire is contemplated. Spec. ¶ 33. It is well
settled that merely omitting an element and its function in a combination
where the remaining elements perform the same functions as before involves
only routine skill in the art. In re Karlson, 311 F.2d 581, 584 (CCPA 1963).
In other words, Appellant provides no basis for us to believe that either

4 In order to claim a coated wire in accordance with paragraph 33 of the
Specification we would have expected Appellant to claim two separate
elements: (1) a connection wire that consists of PEEK; and (2) said
connection wire is overlaid by a coating. Spec. ¶ 33.
5 Appellant could have claimed an uncoated or unsheathed connection wire
and apparently elected not to.
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adding or omitting a coating to the PEEK wire makes any patentable
difference vis-à-vis the prior art.
Appellant next argues against the proposed combination of prior art
references. Appellant argues that Cassalia is directed to an active
orthodontic treatment device, rather than merely a retainer. Appeal Br. 15.
Appellant contends that Cassalia uses a wire that tends to straighten over
time, thereby actively moving the teeth rather than merely maintaining them
in an existing position. Id.
Appellant respectfully submits that one skilled in the art
understands that the specific metal characteristics and elasticity
required to cause the arch wire to straighten over time to
thereby move the teeth according to Cassalia simply are not
present in plastic wires, such as those disclosed in Foerster,
which are instead understood to function in a passive capacity.
Accordingly, Appellant respectfully submits that one skilled in
the art understands that the straightening effect achieved by
virtue of the characteristics of the metal wire according to
Cassalia is necessary in connection with the active treatment
device of Cassalia which causes tooth movement.
Appellant respectfully submits that one skilled in the art
would correctly conclude that using a color-corrected plastic
wire according to Foerster would not be expected to provide the
lateral wire movement/wire straightening characteristics
otherwise attributable to the metal wires that are disclosed in
Cassalia in connection with providing the desired active tooth
movement.
Id. at 15–16 (emphasis added).
In response, the Examiner points out that retainer wires, like
orthodontic treatment archwires, apply forces. Ans. 11. “These forces can
actively move teeth and/or retain teeth in a desired position and are known to
one of ordinary skill.” Id.
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In reply, Appellant argues and reiterates that a person of ordinary skill
in the art would not have a reasonable expectation of success in achieving
the active movement aspects of Cassalia by using Foerster’s PEEK wire.
Reply Br. 5–6.
Appellant respectfully submits that one skilled in the art would
not have had a reasonable expectation of successfully using a
plastic wire, based on Foerster, in the specific context of the
device of Cassalia in the first place, regardless of Foerster’s
teaching that plastic wires may generally be well-suited to
orthodontic applications.
Id. at 6 (emphasis supplied by Appellant).
Appellant’s “reasonable expectation of success” argument is
unpersuasive. The obviousness inquiry requires a determination that a
skilled artisan would have been motivated to combine the teachings of the
prior art references to achieve the claimed invention, and that the skilled
artisan would have had a reasonable expectation of success in doing so.
Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1360 (Fed.
Cir. 2012). “The reasonable expectation of success requirement refers to the
likelihood of success in combining references to meet the limitations of the
claimed invention.” Intelligent Bio-Systems, Inc. v. Illumina Cambridge
Ltd., 821 F.3d 1359, 1367 (Fed. Cir. 2016). In other words, “one must have
a motivation to combine accompanied by a reasonable expectation of
achieving what is claimed in the patent-at-issue.” Id.
Appellant misapprehends the “success” that needs to be “reasonably
expected” in an obviousness analysis. Contrary to Appellant’s position,
there is no requirement to expect success in achieving the objectives and
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purpose of Cassalia while using PEEK.6 Rather, the issue is whether
modifying Cassalia with PEEK would have been reasonably expected to
lead to success in practicing the claimed invention, namely, a retainer. The
active movement capability of Cassalia is not required in the claimed
invention. Cassalia is relied on to teach, among other things, the connection
pieces, connection wire, and end stop elements of the invention. Final
Act. 4–6. It is common sense that familiar items may have obvious uses
beyond their primary purposes, and a person of ordinary skill often will be
able to fit the teachings of multiple patents together like pieces of a puzzle.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). Consequently, it is
well settled that “a reference may be read for all that it teaches, including
uses beyond its primary purpose.” In re Mouttet, 686 F.3d 1322, 1331 (Fed.
Cir. 2012), citing KSR, 550 U.S. at 418–421. A person of ordinary skill in
the art would understand that active orthodontic treatment devices and
retainers share a number of common features, such that certain features of
active orthodontic treatment devices could reasonably be expected to be
useful in retainers.
In view of the foregoing discussion, we determine the Examiner’s
findings of fact are supported by a preponderance of the evidence and that
the Examiner’s legal conclusion of unpatentability is well-founded.
Accordingly, we sustain the Examiner’s unpatentability rejection of
claims 1–2, 5–7, and 10–15.

6 Appellant’s argument, while unpersuasive for reasons discussed in the
body of our Decision, nevertheless appears to be contradicted by the
teachings of Foerster regarding the use of archwires to correct malpositioned
teeth. See Foerster ¶¶ 1, 13. Thus, Appellant’s argument is unpersuasive for
this additional reason.
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Unpatentability of Claims 17 and 18
over Cassalia, Foerster, and Ariza
Claims 17 and 18 each depend from claim 1. Claims App. Appellant
does not argue for the separate patentability of claims 17 and 18 apart from
arguments presented with respect to claim 1, which we have previously
considered. We sustain the Examiner’s rejection of claims 17 and 18.
See 37 C.F.R. § 41.37(c)(1)(iv) (failure to separately argue claims
constitutes a waiver of arguments for separate patentability).
CONCLUSION
In summary:
Claims
Rejected
§ Reference(s) Aff’d Rev’d
1, 2, 5-7, 10-15 103 Cassalia, Foerster 1, 2, 5-7, 10-15
17, 18 103 Cassalia, Foerster, Ariza 17, 18
Overall
Outcome
1, 2, 5-7, 10-15
17, 18

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