Nobel Biocare Services AG

Patent Trials and Appeals Board

Apr 14, 2021

2020005898 (P.T.A.B. Apr. 14, 2021)

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.
14/954,918 11/30/2015 Ophir Fromovich NOBELB.328C5 1040
20995 7590 04/14/2021
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
EXAMINER
MAI, HAO D
ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
04/14/2021 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 OPHIR FROMOVICH, YUVAL JACOBY,
NITZAN BICHACHO, and BEN-ZION KARMON
____________

Appeal 2020-0058981
Application 14/954,918
Technology Center 3700
____________

Before MICHAEL C. ASTORINO, BRADLEY B. BAYAT, and
AMEE A. SHAH, Administrative Patent Judges.

SHAH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant2 appeals from the
Examiner’s final decision to reject claims 21, 23–32, 34, 36, 38, 39, 41, and
43–49. We have jurisdiction under 35 U.S.C. § 6(b). The Appellant
appeared for oral hearing in this appeal on March 12, 2021.
We REVERSE.

1 We note the related cases as listed in the Appeal Brief at page 3.
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Nobel
Biocare Services AG. Appeal Br. 3.
Appeal 2020-005898
Application 14/954,918

2
CLAIMED SUBJECT MATTER
The Appellant’s invention relates “generally to bone anchorage
implants and more particularly to a screw form dental implant having a
combination of features designed to produce bone condensation while
insertion is easy.” Spec. ¶ 2.
Independent claim 21 is representative of the subject matter on appeal
and is reproduced below (with added lettered bracketing for reference and
paragraphing):
21. A dental implant comprising:
[(a)] a body; the body comprising:
[(b)] a coronal region at a coronal end of the body,
the coronal region being coronally tapered from a coronal
end of the coronal region to an apical end of the coronal
region, such that a diameter of the apical end of the coronal
region is larger than a diameter of the coronal end of the
coronal region, the coronal region having a frustoconical
shape with a height that is equal to or greater than 1 mm
and less than or equal to 4 mm, the coronal end of the
coronal region corresponding to a coronal end of the body,
the coronal end of the coronal region defining an outer
diameter;
[(c)] an apical region of the body comprising a
tapered core wherein a diameter of an apical end of the
tapered core is smaller than a diameter of a coronal end of
the core[; and]
[(d)] a pair of helical threads extending from the
body along at least a portion of the apical region, each of
the threads comprising an apical side, a coronal side, and
a lateral edge connecting the apical side and the coronal
side, a base connecting the threads to the core, a thread
height defined between the lateral edge and the base, the
lateral edge of the threads defining an outer diameter of
the threads, the threads extending to an apical end of the
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Application 14/954,918

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body and the outer diameter of the threads at the apical end
of the body being less than the outer diameter of the
coronal end of the coronal region;
[(e)] wherein each of the helical threads has a thread
step that is defined as a distance along a longitudinal axis
of the dental implant covered by a complete rotation of the
dental implant, the thread step is between 1.5-2.5 mm.
Appeal Br. 12 (Claims App.).

REFERENCES
The prior art references relied upon by the Examiner are:
Name Reference Date
Grafelmann US 4,863,383 Sept. 5, 1989
Talaber et al. (“Talaber”) US 6,261,291 B1 July 17, 2001
Morgan US 2002/0127517 A1 Sept. 12, 2002
Choi et al. (“Choi”) US 2004/0219488 A1 Nov. 4, 2004

REJECTIONS
Claims 21, 23–32, 34, 36, 38, 39, 41, and 43–49 stand rejected under
pre-AIA 35 U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement.
Claims 21, 23–27, 29, 32, 34, 36, 38–41, and 43–49 stand rejected
under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Morgan, Choi, and
Talaber.
Claims 28, 30, and 31 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Morgan, Choi, Talaber, and Grafelmann.

Appeal 2020-005898
Application 14/954,918

4
OPINION
35 U.S.C. § 112, First Paragraph – Written Description
The Examiner rejects independent claim 21, and thus all of the claims,
because the feature recited in limitation (d) of “‘the outer diameter of the
threads at the apical end of the body being less than the outer diameter of the
coronal end of the coronal region’ . . . lacks support from the originally filed
application.” Final Act. 3; see also Ans. 8.
Conversely, the Appellant directs attention to Figure 5 and argues that
it “clearly shows, to a person of ordinary skill in the art, that the Appellant
was in possession” of the contested feature. Appeal Br. 6–7. Figure 5 is
reproduced below.
Figure 5 depicts a cross-sectional view of the claimed implant. See
Spec. ¶ 64; Appeal Br. 5, 6.
Although the Examiner is correct that “the drawing is not indicated as
being drawn to scale” (Ans. 8), we agree with the Appellant that one of
ordinary skill in the art would understand Figure 5 as depicting a tapered
implant with threads so that the diameter of the implant and thus also the
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Application 14/954,918

5
diameter of the threads at the apical end (toward reference number 23 in
Figure 5) are less than the outer diameter at the coronal end or the coronal
region (the very top line in Figure 5). See also Spec. ¶ 109 (“The fact that
the width of the apical region of the implant is smaller than the coronal
region allows the use of a small drill therefore preserving the bone.”).
Thus, we do not sustain the Examiner’s rejection of the claims under
35 U.S.C. § 112, first paragraph.

35 U.S.C. § 103(a) – Obviousness
The Appellant argues the pending claims as a group. See Appeal
Br. 7. Independent claim 21 is representative of the group and the remaining
claims stand or fall therewith. See 37 C.F.R. § 41.37(c)(1)(iv).
We find persuasive the Appellant’s argument that the Examiner’s
rejection has not adequately established that the combination of Morgan,
Choi, and Talaber renders obvious each of the pair of helical threads having
a thread step between 1.5–2.5 mm, as recited in limitation (e) of claim 21.
See Appeal Br. 9.
The Examiner finds, in relevant part, that Morgan teaches one helical
thread extending from the body comprising an apical side, a coronal side, a
lateral edge, a base, a thread height, and an outer diameter as recited in
limitation (d). Final Act. 4. Acknowledging that Morgan does not teach a
pair of such threads, the Examiner relies on Choi to correct that deficiency.
Id. (citing Choi ¶¶ 41, 91, Fig. 6). The Examiner also acknowledges that the
combination of Morgan and Choi
fails [to] disclose . . . the coronal region having a height that
equal to or greater than 1 mm[,] . . . the outer diameter of the
threads at the apical end of the body being less than the outer
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diameter of the coronal end of the coronal region, [and] . . . the
helical thread having a thread step of 1.5 - 2.5mm.
Id. at 4–5. However, the Examiner notes:
Choi discloses that the dimensions of the implant and the ratios
of the lengths and diameters of various portions of the implant
can be various depending on the conditions to which the implant
is subjected (paragraph 66); and Talaber et al. teaches that one of
ordinary skill in the art may optimize such implants for use in
particular orthopedic environment (column 7 lines 41-46).
Id. at 5. The Examiner determines:
Therefore such claimed ranges for the coronal region’s height
and the thread step and radios of the lengths and diameters of
various portions of the implant would have been obvious to one
having ordinary skill in art at the time the invention was made
since it has been held that discovering an optimum or workable
ranges is well within the skill of an artisan via routine
experimentation in order to improve upon what is already
generally known. See MPEP []§ 2144.05.[3]
Id.

3 Manual of Patent Examining Procedure (9th ed., rev. 10.2019, June 2020).
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Application 14/954,918

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Choi discloses a “dental implant, which includes a fixture and an
abutment in a body, and the head for a compaction drill for implanting an
implant.” Choi Abstr. One embodiment is depicted in Figures 5 and 6. See
id. ¶ 63. Figure 6 is illustrative and is reproduced below.
Choi’s Figure 6 depicts an enlarged side view of dental implant 200
according to one embodiment. Id. ¶¶ 63–64.
For the embodiment depicted in Figure 6, Choi discloses specific
lengths for (1) implant 200 of about 18.0 mm, (2) abutment portion 210 of
about 6 mm, (3) settling portion 230 of about 10 mm, and (4) fixture portion
220 of about 10 mm. Id. ¶ 66. Also disclosed are specific diameters for
(1) the abutment portion of about 5 mm, (2) the settling portion of about 4.2
mm, and (3) the fixture portion of about 4.0 mm. Id. “However, the
dimension of the implant 200 and the ratios of the lengths and diameters of
those portions 210, 220 and 230 can be various depending on the conditions
to which the implant 200 is subjected.” Id.
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Another embodiment is depicted in Figure 13. Id. ¶ 87. “[E]xcept for
the double threads formed on the surface of the fixture portion 420
[corresponding to 220 above] with different pitch intervals, the abutment
portion 410 [corresponding to 210 above] and the settling portion 430
[corresponding to 230 above] are identical to those of the above-described
embodiment” of Figures 5 and 6. Id. ¶ 89. The double threads have a depth
of about 400 µm and a pitch of about 500 µm. Id. ¶ 91.
Talaber discloses an orthopedic implant assembly (Talaber Abstr.)
and
[o]ne skilled in the art will recognize that a variety of suitable
securing elements may be used, which may be optimized for use
in a particular orthopedic environment, as is well known in the
art. For example, a high thread pitch may be used to limit screw
back out from bone.
Id. at col. 7, ll. 41–46.
Section 2144.05 of the MPEP discusses the “Obviousness of Similar
and Overlapping Ranges, Amounts, and Proportions.”
Generally, differences in concentration or temperature will not
support the patentability of subject matter encompassed by the
prior art unless there is evidence indicating such concentration or
temperature is critical. “[W]here the general conditions of a
claim are disclosed in the prior art, it is not inventive to discover
the optimum or workable ranges by routine experimentation.” In
re Aller, 220 F.2d 454, 456. . . (CCPA 1955).
Id. at § 2144.05(II)(A). The court in Aller established two conditions for a
conclusion of obviousness based on optimization of ranges: one, the general
conditions of the claim must be disclosed in the prior art; and two, discovery
of the optimum value or workable range must be a matter of routine
experimentation for a person of ordinary skill in the art. See Aller, 220 F.2d
at 456.
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Application 14/954,918

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“[W]here the general conditions of a claim are disclosed in the
prior art, it is not inventive to discover the optimum or workable
ranges by routine experimentation.” Aller, 220 F.2d at 456. This
rule is limited to cases in which the optimized variable is a
“result-effective variable.” In re Antonie, 559 F.2d 618, 620
(CCPA 1977); see Boesch, 617 F.2d at 276 (“[D]iscovery of an
optimum value of a result effective variable . . . is ordinarily
within the skill of the art.”).
In re Applied Materials, Inc., 692 F.3d 1289, 1295 (Fed. Cir. 2012) (brackets
in original).
Here, Choi teaches a double thread on the fixture portion with a pitch,
i.e., thread step, of 500 µm (0.5 mm) that is outside the claimed thread step
range of 1.5–2.5 mm. See Hearing Transcript 12 (“Tr.”) (confirming Choi’s
pitch corresponds to the thread step). However, the Examiner has not
adequately established that the thread step was known to be a result-effective
variable.
The Examiner provides no evidence to establish that the pitch/thread
step is known to be a result-effective variable rendering its optimization
within the ordinary skill in the art. As noted above, Choi discloses that the
ratios of the lengths and diameters of the abutment, settling, and fixture
portions 210, 220, and 230 can vary based on conditions. Choi ¶ 66.
However, Choi is silent as to whether the pitch of 0.5 mm can vary. “[T]he
controlling question is simply whether the differences (namely the value of
[the pitch/thread step] and its property) between the prior art and appellant’s
invention as a whole are such that appellant’s invention as a whole would
have been obvious.” In re Antonie, 559 F.2d 618, 620 (CCPA 1977). We
agree with the Appellant that the Examiner has not shown that it would have
been obvious. See Appeal Br. 9.
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Application 14/954,918

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The Examiner has not adequately explained how or where Choi and/or
Talaber teaches that the pitch/thread step affects a property of the implant to
effect a particular result. The Specification discusses a high thread step of
1.5–2.5 mm, as opposed to the common thread step of 0.6 mm, allowing for
an expansion to avoid crushing of the bone. Spec. ¶ 117; see also Tr. 15. At
best, Choi and Talaber show that ratios and dimensions are known to vary to
achieve a particular result based on a condition (see Final Act. 5; Ans. 9),
but the Examiner has not shown how Choi and Talaber discuss how the
ratios and dimensions of a pitch/thread step effect, or are relevant to achieve,
that particular, desired result. Cf. Applied Materials, 692 F.2d at 1296
(finding that prior art showed that the width and depth of grooves affected
the desired polishing pad properties and were thus result-effective variables).
One of ordinary skill in the art would not recognize, from Choi’s description
of a pitch of 0.5 mm, that a particular property of the implant is a function of
that recited pitch.
For the above reasons, we are persuaded of Examiner error, and we do
not sustain the Examiner’s rejection under 35 U.S.C. § 103(a) of
independent claim 21 and thus also the rejections of claims 23–32, 34, 36,
38, 39, 41, and 43–49 that fall with that of claim 21.
CONCLUSION
The Examiner’s decision to reject claims 21, 23–32, 34, 36, 38, 39,
41, and 43–49 is not sustained.
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Application 14/954,918

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In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/
Basis 
Affirmed Reversed
21, 23–32, 34,
36, 38, 39, 41,
43–49
112, first
paragraph
Written
Description
21, 23–32, 34,
36, 38, 39, 41,
43–49
21, 23–27, 29,
32, 34, 36,
38–41, 43–49
103(a) Morgan, Choi,
Talaber
21, 23–27, 29,
32, 34, 36,
38–41, 43–49
28, 30, 31 103(a) Morgan, Choi,
Talaber,
Grafelmann
28, 30, 31
Overall
Outcome
21, 23–32, 34,
36, 38, 39, 41,
43–49

REVERSED