Premier Orthodontic Designs, LLLP

Patent Trials and Appeals Board

Oct 14, 2020

2020000500 (P.T.A.B. Oct. 14, 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.
14/976,074 12/21/2015 Paul L. Damon ORM 590US 8131
83571 7590 10/14/2020
Wood, Herron & Evans, LLP (Sybron)
441 Vine Street
2700 Carew Tower
Cincinnati, OH 45202
EXAMINER
FOLGMANN, DREW S
ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
10/14/2020 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):
ABilton@whe-law.com
usptodock@whe-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PAUL L. DAMON and DWIGHT H. DAMON
____________

Appeal 2020-000500
Application 14/976,074
Technology Center 3700
____________

Before DANIEL S. SONG, BRETT C. MARTIN, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 36–59. We have jurisdiction over the appeal under
35 U.S.C. § 6(b). A telephonic oral hearing was held September 15, 2020.
We AFFIRM IN PART.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Ormco Corporation.
Appeal Br. 3.
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THE CLAIMED SUBJECT MATTER
Claims 36, 45, and 53 are independent. Claim 36 is reproduced
below.
36. An archwire for use with a passive ligation orthodontic
bracket system with a first self-ligating orthodontic bracket
having a first bracket body that defines a first archwire slot
including a first anterior surface and a first gate that is moveable
relative to the first bracket body between an opened position and
a closed position, in which the first anterior surface and the first
gate define a first slot width, the archwire comprising:
an elongated body having a first end, a second end
extending therefrom, and a cross-sectional configuration having
only two opposing curved surfaces and only two opposing planar
surfaces, the two opposing curved surfaces defining a diameter
dimension of the body and the two opposing planar surfaces
defining a thickness dimension of the body,
wherein each of the diameter dimension and the thickness
dimension is uniform from the first end to the second end with
the diameter dimension being less than or equal to the first slot
width.

EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Cosse US 2014/0272751 A1 Sept. 18, 2014
Patel WO 2009/078031 A1 June 25, 2009
REJECTIONS
I. Claims 45–59 stand rejected under 35 U.S.C. § 112(b) as being
indefinite. Final Act. 2–3.2

2 In the Final Action, the Examiner rejected claim 58 as being indefinite
because “[t]he term ‘high torque couple’ and ‘low torque couple’ in claim 58
are relative terms which renders the claim indefinite.” Final Act. 3. The
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II. Claims 36–52 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Patel. Id. at 3–5.
III. Claims 53–59 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Patel and Cosse. Id. at 6–12.
OPINION
Rejection I
The Examiner contends that the use of the term “substantially” in
claims 45, 50, 53, and 58 renders the claims indefinite because “[t]he term
‘substantially is not defined by the claim, the [S]pecification does not
provide a standard for ascertaining the requisite degree, and one of ordinary
skill in the art would not be reasonably apprised of the scope of the
invention.” Final Act. 3.
Appellant argues that “Appellant’s [S]pecification provides a standard
for determining the scope of the claims and that an ordinary skilled artisan
would be reasonably apprised of that scope.” Reply Br. 7. In particular,
Appellant explains that “[t]he claimed archwire . . . eliminat[es] the gap 64
seen when smaller rectangular archwires are used . . . without interfering
with the closure of gate 23 seen when larger rectangular archwires are used.”
Id. at 8 (citing Spec. Figs. 9A, 9B, 9C). According to Appellant, the claimed

Examiner issued an Advisory Action on February 8, 2019 entering an
Amendment after final rejection. Appellant indicates that the Amendment
moots this basis of the indefiniteness rejection. Reply Br. 13–15. Although
the Examiner repeats the basis of this ground of rejection in the Answer
(Ans. 3), we agree with Appellant that this basis of the indefiniteness
rejection is moot because the specific language identified by the Examiner as
rendering the claims indefinite has been removed via entry of the
Amendment after final rejection.
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archwire “allows torqueing couples to be established because the angular
edges 110 of the circular-square or circular-rectangle shaped archwire are
‘still able to make forcible contact with the superior surface 21 and inferior
surface 22, and to close the gate 23 because the convexly curved surfaces
107 and 108 do not impede such closure.’” Id. (citing Spec. ¶¶ 43, 44).
In light of the foregoing, we agree with Appellant that the
Specification provides some standard for measuring a word of degree,
namely, “substantially,” in that the largest cross-sectional dimension of the
archwire is designed to eliminate a gap that might otherwise be located
between the archwire and the gate defining the first slot width, without
impeding the closure of the gate. See Seattle Box Co. Inc. v. Indus. Crating
& Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984) (addressing whether the
claim term “substantially equal” is indefinite). Moreover, our reviewing
court has adopted a broad interpretation for the term “substantial” as used in
patent claims. The Court of Appeals for the Federal Circuit has repeatedly
reaffirmed that the term “substantial” implies “approximate.” Wilson
Sporting Good Co. v. Hillerich & Brads by Co., 442 F.3d 1322, 1329 (Fed.
Cir. 2006).
To the extent that the Examiner’s indefiniteness rejections stems from
the explanation in the Answer that “[a]s the claim is directed to the archwire
and is only recited as being ‘for use with a first self-ligating orthodontic
bracket[,]’ it is unclear what is encompassed of the archwire in and of itself
when not ‘for use with a first self-ligating orthodontic bracket” (Ans. 10),
we note as an initial matter that claim 53, and claim 58 which depends
therefrom, are directed to the combination of a bracket and archwire.
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Accordingly, in our view there can be no uncertainty as claims 53 and 58
themselves mandate a combination of the archwire with a bracket.
With respect to claim 45, and claim 50 which depends therefrom,
Appellant argues that “[t]he limitations of the bracket, and specifically the
slot width of the bracket, must be taken into account when understanding the
scope of the limitations pertaining to the archwire” and “the recitation of
purposes or intended use is limiting and must be taken into account in
evaluating the claim.” Reply Br. 13; see also id. at 9 (“The bracket
limitations are indeed necessary to understand the claimed invention, and,
therefore, are a part of the claimed invention.”), 12 (“[T]he bracket give[s]
life and meaning to the claimed archwire” and “the claimed archwire is, in
fact, defined in part by the bracket with which it is used.”), 13 (“The body of
the claims on appeal do not define a structurally complete device.”).
On the current record, we are persuaded by Appellant’s argument that
the recitation in the preamble of the archwire being for use with a bracket
having (i) an archwire slot including an anterior surface and (ii) a gate, in
which the anterior surface and the gate “define a first slot width” when the
gate is in a closed position, is limiting because it states necessary and
defining aspects of the invention embodied in claim 45. “When limitations
in the body of the claim rely upon and derive antecedent basis from the
preamble, then the preamble may act as a necessary component of the
claimed invention.” Eaton Corp. v. Rockwell Int’l Cor., 323 F.3d 1332,
1339 (2003) (citing e.g., Electro Sci. Indus. v. Dynamic Details, Inc., 307
F.3d 1343, 1348 (Fed. Cir. 2002)). Here, the recitation in the preamble of
claim 45 of the archwire being for use with a bracket having (i) an archwire
slot including an anterior surface and (ii) a gate, in which the anterior
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surface and the gate “define a first slot width” when the gate is in a closed
position, provides antecedent basis for the “first slot width” recited in the
body of the claim and permits the relative dimensions of the archwire and
the bracket to be determined.
In sum, we agree with Appellant’s arguments and construe
independent claim 45 such that the recitation in the preamble of the archwire
being for use with a “bracket . . . that defines a first archwire slot including
an anterior surface . . . and a first gate that is moveable to the first bracket
body between an opened position and a closed position in which the anterior
surface and the first gate define a first slot width” is limiting because the
aforementioned language is tied inextricably to the requirement recited in
the body of the claim that “the largest cross-sectional dimension [of the
archwire] is substantially equal to the first slot width.” Appeal Br. 23
(Claims App.). Because the preamble is limiting, we do not agree with the
Examiner that there is uncertainty as to what would be required by the
archwire when not for use with a bracket.
For the foregoing reasons, we do not sustain the rejection of claims
45–59 under 35 U.S.C. § 112(b) as being indefinite on the basis of the use of
the term “substantially.”
The Examiner also asserts that “[r]egarding claim 59, the claim as a
whole is indefinite” and “[i]t is unclear what structural limitations are
required by the claim.” Final Act. 3. Appellant responds that “[c]laim 59
defines a functional relationship between two orthodontic brackets of
differing torque couples with the recited archwire” and that “[i]t is not
improper to recite features of a claimed invention in terms of their function
rather than in terms of their structure.” Appeal Br. 8. The Examiner replies
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in the Answer that although “the claim can functionally recite use with a
bracket, it is unclear what structure is required of the archwire when the
claim is directed to the orthodontic brackets alone.” Ans. 10.
Appellant replies that “the claim is not directed to the orthodontic
brackets alone, as the Examiner contends.” Reply Br. 15. Appellant
explains that (i) “[c]laim 59 depends from claim 58, which depends from
claim 53”; (ii) “[c]laim 53 “recites structural limitations for both a bracket
and an archwire”; (iii) “[c]laim 58 recites a second bracket”; and
(iv) “[c]laim 59 recites a functional relationship between the two claimed
bracket and the claimed archwire.” Id. We agree with Appellant that
claim 59 is not directed to the orthodontic brackets alone and is directed to
their combination with an archwire by virtue of its dependency from
independent claim 53 which is directed to a “combination” that includes “an
archwire.” Appeal Br. 24 (Claims App.). Accordingly, in our view there
can be no uncertainty stemming from what would be required by the
archwire when not used in combination with a bracket, as the claims
mandate a combination of the archwire with a bracket.
For the foregoing reasons, we do not sustain the rejection of claim 59
under 35 U.S.C. § 112(b) as being indefinite on the second basis identified
by the Examiner.
Rejection II
The Examiner finds that Patel discloses an archwire in accordance
with the following claim limitations:
an elongated body having a first end, a second end extending
therefrom, and a cross-sectional configuration having only two
opposing curved surfaces and only two opposing planar surfaces,
the two opposing curved surfaces defining a diameter dimension
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of the body and the two opposing planar surfaces defining a
thickness dimension of the body.
Appeal Br. 21 (Claims App.); Final Act. 4 (citing Patel Figs. 1, 3B). As to
the diameter dimension and thickness dimension being uniform from the
first end to the second end as required by the claim, the Examiner takes the
position that the dimensions are uniform for section 3 of the archwire. Final
Act. 4; Patel Figs. 1, 3B. As to the claim requirement that “the diameter
dimension [is] less than or equal to the first slot width” (Appeal Br. 21
(Claims App.)), the Examiner takes the position that:
[a]s the archwire of the configuration of Patel contains all
the structural elements, as best understood by the patent
examiner, as claimed it is construed to be functionally capable of
cooperating with an orthodontic bracket as recited in the claims.
The claims are directed to an archwire and the limitations
directed towards the bracket are not positively recited, required,
nor part of the claimed archwire. The Examiner asserts that the
wire can be used with an appropriately sized and shaped bracket
to meet all functional limitations of the claims directed to the
interaction between the claimed wire and a presumed bracket.
Final Act. 5.3

3 We understand the Examiner’s reference to it being “obvious to optimize
the dimensions, particularly thickness, width dimension, radial dimension,
largest cross-sectional dimension, or diameter dimension of Patel to achieve
the desired shape/curve ratio to suit different types of intended treatment” to
refer to optimizing dimensions so as to achieve various requirements of the
dependent claims (such as the “largest cross-sectional dimension [being]
equal to twice the radial dimension”) as opposed to optimizing dimensions
so as to achieve the requirement that the thickness dimension be less than or
equal to the first slot width. Final Act. 5. To the extent that the Examiner is
taking the position that it would be obvious to optimize the diameter
dimension of an archwire to be less than or equal to the first slot width,
where the first slot width is defined by an anterior surface and a gate, the
Examiner does not explain adequately how Patel teaches the general
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For similar reasons to those described above in connection with the
indefiniteness rejection of independent claim 45, we also construe
independent claim 36 such that the recitation in the preamble of the archwire
being for use with a “bracket . . . that defines a first archwire slot including a
first anterior surface . . . and a first gate that is moveable relative to the first
bracket body between an opened position and a closed position in which the
first anterior surface and the first gate define a first slot width” is limiting
because the aforementioned language is tied inextricably to the requirement
recited in the body of the claim of “the diameter dimension [of the archwire]
being less than or equal to the first slot width.” Appeal Br. 21 (Claims
App.). In connection with the aforementioned claim construction of
claim 36, the recitation in the preamble of the archwire being for use with a
bracket defining an archwire slot including a first anterior surface and first
gate to define a first slot width must be given patentable weight.
Even assuming that the Examiner adequately explains how the
limiting functional limitation of the preamble (i.e., that the archwire be for
use with a bracket defining an archwire slot including a first anterior surface
and first gate defining a slot width) is met, the body of the claim further
requires that the diameter dimension of the archwire be less than or equal to
the first slot width of the bracket. Rather than considering the requirement
that the diameter dimension of the archwire be less than or equal to a first
slot width of the bracket as a structural limitation, the Examiner appears to
consider the requirement to be a functional limitation. The Examiner

conditions of an archwire relative to a gate or that the distance between an
archwire and a gate is a result-effective variable amenable to optimization.
See Appeal Br. 11–12.
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reasons that Patel’s archwire is capable of having a diameter dimension that
is less than or equal to a first slot width of a bracket when Patel’s archwire is
utilized with a particularly dimensioned and/or appropriately sized bracket
so as to achieve such relative dimensions. Final Act. 5.
Appellant argues that it was improper for the Examiner to consider
such a limitation as a functional limitation, rather than a structural limitation.
See Appeal Br. 9. Appellant continues that “[e]ven though this dimension is
with reference to the slot width of the bracket, the diameter dimension is a
recited dimension of the claimed archwire” and “cannot be ignored.” Id. at
10. We agree with Appellant that the Examiner improperly considered the
limitation within the body of the claim as a functional limitation, rather than
a structural limitation. The Examiner has not explained adequately how
Patel alone discloses or renders obvious the structural limitation of an
archwire having a diameter dimension that is less than or equal to a bracket’s
first slot width, in which the first slot width is defined by an anterior surface
and moveable gate of the bracket, merely by asserting that Patel’s archwire
would be capable of such relative dimensions when utilized with a
particularly dimensioned and/or appropriately sized bracket.
For the foregoing reasons, we find the Examiner’s rejection to be
insufficiently supported by the presented evidence and reasoning. We do
not sustain the rejection of independent claims 36 and 45, and claims 37–44
and 46–52 depending therefrom, under 35 U.S.C. § 103 as obvious over
Patel.
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Rejection III
The Examiner finds that Patel teaches a bracket including an archwire
slot including an anterior surface, inferior surface, and superior surface, as
well as an archwire for insertion into the archwire slot. Final Act. 6. The
Examiner finds that “the largest cross-sectional dimension [of the archwire]
is substantially equal to the first slot width.” Id. at 7 (citing Patel Fig. 5B).
The Examiner acknowledges that although Patel’s Figures show the
archwire being held with the help of ligature wire, “Patel teaches that the
archwire can be used with self-ligating brackets.” Id. at 8. The Examiner
further acknowledges that even though Patel references self-ligating
brackets, Patel “fail(s) to teach a self-ligating orthodontic bracket
comprising: a first gate that is moveable relative to the first bracket body
between an opened and a closed position in which the anterior surface and
the first gate define a first slot width.” Id.
The Examiner turns to Cosse, finding that it teaches a self-ligating
orthodontic bracket with a gate that is moveable relative to the bracket body
between an opened position and a closed position in which the anterior
surface of the archwire slot and the gate define a slot width. Final Act. 10.
(citing Cosse Figs. 4–5). The Examiner concludes that it would have been
obvious “to modify Patel, by requiring a self-ligating bracket which has
adjustable torque between the archwire and the bracket body as taught by
Cosse, for the purpose of controlling the amount of torque/force applied to a
patient[’]s teeth based on a desired treatment outcome.” Id. The Examiner
finds that “[t]he configuration of Patel/Cosse . . . would result in a structure
where a self-ligating orthodontic bracket comprising: a first gate that is
moveable relative to the first bracket body between an opened position and a
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closed position in which the anterior surface and the first gate define a first
slot width.” Id. at 10–11.
Appellant argues that “the Inventors discovered the problem with gate
closure with some self-ligating orthodontic brackets on a patient’s arch”;
“[t]hat gate closure problem led to use of smaller than expected archwires
that would permit gate closure on all self-ligating brackets on the patient’s
arch”; “[t]he undersized archwire then led to consistent movement
problems”; and the inventors “solved the problem by shaping and sizing the
archwire to allow all gates to be closed while also maintaining first, second,
and third order control.” Appeal Br. 15. Appellant argues that “[n]o reason
appears in the record that archwire interference with gate closure was known
nor was inconsistent first order, second order, and third order tooth
movement control known in the art” and “[t]hus, solving those problems is
nonobvious.” Id. at 15–16.
Although the Examiner’s stated reasoning for combining Patel and
Cosse to arrive at the claimed invention is not based on a recognition of
archwire interference with gate closure and/or inconsistent tooth movement
control, one of ordinary skill in the art may be prompted to do what the
inventor has done, but for a different purpose or to solve a different problem.
It is not necessary that the prior art suggest the modification to achieve the
same advantage or result discovered by an applicant. See, e.g., In re Kemps,
97 F.3d 1427, 1430 (Fed. Cir. 1996) (citing In re Dillon, 919 F.2d 688, 693
(Fed. Cir. 1990) (en banc) (“Although the motivation to combine here differs
from that of the applicant, the motivation in the prior art to combine the
references does not have to be identical to that of the applicant to establish
obviousness.”)).
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Here, the Examiner finds that Patel teaches an archwire having the
claimed shape and having a diameter dimension that is substantially equal to
the distance between a side of the bracket and ligature wire. Final Act. 6–7
(citing Patel Fig. 5B). The Examiner further reasons that one of skill in the
art would have been led to replace the bracket and ligature wire with a self-
ligating bracket in light of Patel’s disclosure that the present invention can
be used with self-ligating brackets. Id. at 8; Patel 21:9–12. The Examiner
further reasons that, although Patel does not teach a self-ligating bracket
with a gate, Cosse teaches a self-ligating bracket with a gate, and
modification of Patel’s bracket with ligature so as to instead encompass a
self-ligating bracket with a gate would result in an archwire shaped as
claimed and in which the diameter dimension is substantially equal to the
distance between an anterior surface of the slot and the gate. Final Act. 10–
11. The Examiner further explains that “[i]t is known in the art that
archwires can be dimensioned to cooperate with self-ligating brackets with
ligating members which slide, as evidenced by Lokar (US 8,029,276[; issued
Oct. 4, 2011]) which shows in Fig. 7 a self-ligating bracket which receives
an archwire.” Ans. 12; Lokar 4:25–54 (explaining that clip 14 can be
retained “against free unintentional sliding [when in a closed position as
shown in Fig. 7] but provide sliding motion when desired” such that the clip
is “allowed to slide to the open position as shown in FIGS. 1 and 8”). The
Examiner articulates adequate reasoning based on rational underpinnings to
support the conclusion of obviousness. See In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006) (requiring “some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness”).
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Appellant argues that “[b]ecause the gate defines the slot width, it
follows . . . that Patel also fails to disclose an archwire having a largest
cross-sectional dimension that is substantially equal to the slot width.”
Appeal Br. 18. Appellant also argues that “Cosse fails to disclose an
archwire in which the largest cross-sectional dimension substantially equals
a slot width defined by the gate” because “there is a large gap between the
gate 100 and the archwire 20.” Id.; see also Reply Br. 21–23. Appellant,
however, does not explain adequately how, once Patel is modified to
incorporate a self-ligating bracket having a gate as taught by Cosse,
modified Patel would lack an archwire having a largest cross-sectional
dimension that is substantially equal to the slot width (i.e., the distance
between an anterior surface of the slot and the gate).
In particular, we note that independent claim 53 does not recite that
the archwire is for use with a “passive ligation bracket” or otherwise make
any reference to “passive ligation” in any way. Appellant does not explain
adequately why modification of Patel to replace a bracket-wire configuration
with a self-ligating bracket with a clip that holds the wire as contemplated by
Patel (Patel 2:13–17), and then further modified so that the clip comprises a
gate that is moveable between opened and closed positions, would fail to
arrive at the claimed limitation of an archwire having a largest cross-
sectional dimension that is substantially equal to the first slot width defined
between the anterior surface of the slot and the gate. In other words, as
supported by the evidence of record, the gate would be located approximate
the same location of the bracket as the ligature wire of Patel’s Fig. 5B. See
Ans. 12 (“It is known in the art that archwires can be dimensioned to
cooperate with self-ligating brackets with ligating members which slide, as
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evidenced by Lokar.”). See also Lokar Fig. 7 (referenced on page 12 of
Answer) (in which diameter dimension of archwire 24 is substantially equal
to slot width defined between anterior surface of slot 22 and sliding clip 14);
see also Spec. Fig. 5B (“Prior Art”), ¶ 37 (depicting use of “a larger
dimensioned archwire 70” often used by clinicians and having a diameter
dimension that is substantially equal to slot width defined between anterior
surface of slot and moveable gate 23 in a “prior art passive, adjustable self-
ligation bracket 11 of conventional design”).
We have considered Appellant’s argument that “the relative fit of the
archwire shown is meaningless in active ligation (i.e., ligation with a ligature
as is shown in Patel).” Appeal Br. 15. Appellant argues that in Patel
“ligatures are applied so that there is neither a gap nor a possibility of
impeding.” Reply Br. 18. According to Appellant, “[i]n view of active
ligation, it is counterintuitive to arrive at the claimed invention, which is
utilized with passive self-ligating brackets.” Appeal Br. 15. Although we
appreciate that Appellant’s invention is contemplated for use with a passive
self-ligating bracket, we note that neither independent claim 53, nor claims
54–59 which depend therefrom, recite that the claimed self-ligating
orthodontic bracket is a passive self-ligating bracket. Appellant has not
explained adequately why the Examiner’s reasoning to combine the
teachings of Patel and Cosse to arrive at the claimed invention lacks rational
underpinnings.
As to Appellant’s arguments that “one of ordinary skill would not be
motivated to change any dimensions or the shape of the archwire based on
the record” (Appeal Br. 18), we do not find such an argument persuasive in
that the Examiner’s rejection is not based on modification of the dimensions
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or shape of the archwire because Patel already contemplates an appropriately
dimensioned and shaped archwire, and the Examiner’s modification simply
involves making Patel’s already-referenced self-ligating bracket comprise a
moveable gate. See Ans. 12 (“The [E]xaminer concluded that . . . Patel
discloses the archwire shape as claimed and is shown to cooperate with an
archwire slot and a ligating member” and “[i]t is known in the art that
archwires can be dimensioned to cooperate with self-ligating brackets with
ligating members which slide.”).
We have also considered Appellant’s argument raised for the first
time in the Reply Brief that “Patel does not support the modification
proposed by the Examiner wherein the rectangular cross-section with
rounded corners shown in two separate segments of a five-segment archwire
as described in Patel would be extended throughout the full length of the
archwire as recited in the claims on appeal.” Reply Br. 20; see also id. at 21
(“Patel does not motivate or suggest the modification proposed by the
Examiner of using a rectangular cross-section with rounded corners
throughout the entire length of the archwire as doing so would render Patel
inoperable for its intended purpose.”). Appellant argues that “Patel teaches
away from providing for an archwire, like the claims at issue, that has a
rectangular cross-section with rounded corners throughout the length of the
archwire” as “such a configuration is contra-indicated for canine retraction
because each region must be treated per its requirements and a rectangular
cross-section must be used to rapidly and effectively retract canine teeth
with minimum or no anchorage loss.” Id. at 20. We do not find such an
argument persuasive in that the Examiner’s articulated rejection is not based
on modifying Patel’s entire archwire to have the rectangular cross-section
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with rounded corners, but rather is based on the position that the ends of
Patel’s archwire are determined with respect to the “section 3 [portion] of
FIG. 1” in which the first end is the “end which abuts section 2” and the
second end is the “end which abuts section 1.” Final Act. 6. Appellant does
not address why such a stated position by the Examiner is in error.
For the foregoing reasons, we do not find the Examiner’s rejection to
be insufficiently supported by the presented evidence and reasoning. We
sustain the rejection of independent claim 53, and claims 54–57 for which
Appellant relies on the same arguments and reasoning (Appeal Br. 19),
under 35 U.S.C. § 103 as obvious over Patel and Cosse.
Dependent claim 58 recites that the “combination of claim 53 further
includ[es]: a second self-ligating orthodontic bracket comprising: a second
bracket body that includes a second archwire slot . . . and a second gate.”
Appeal Br. 25 (Claims App.). Dependent claim 58 further recites that “the
first self-ligating orthodontic bracket is configured to provide a first torque
couple, and the second self-ligating bracket is configured to provide a
different torque couple than the first self-ligating bracket.” Id. at 26 (Claims
App.). Dependent claim 58 further recites that “the archwire is configured
to provide the same degree of first order movement control to each of the
first self-ligating orthodontic bracket and the second self-ligating
orthodontic bracket.” Id. (Claims App.).
The Examiner finds that there is a second bracket including a second
slot because “two [brackets are] shown to engage sections 3/5.” Final
Act. 7; see also Patel Fig. 1 (illustrating sections 3 and 5 of an archwire in
accordance with a present invention). The Examiner further finds that “the
first self-ligating orthodontic bracket is configured to provide one of a high
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Application 14/976,074

18
torque couple, a neutral torque couple, and a low torque couple, and the
second self-ligating bracket is configured to provide a different torque
couple than the first self-ligating orthodontic bracket.” Final Act. 9. The
Examiner further finds that “the archwire is configured to provide the same
degree of first order movement control to each of the first self-ligating
orthodontic bracket and the second self-ligating orthodontic bracket.” Id.
Appellant argues that “Cosse discloses an orthodontic bracket capable
of different torque positions, but the alleged combination of Patel and Cosse
fails to disclose two self-ligating orthodontic brackets of different torque
couples on an archwire.” Appeal Br. 19. Appellant also argues that “Cosse
further fails to disclose an archwire that is configured to provide the same
degree of first order movement control to each of the two self-ligating
orthodontic brackets having different torque couples.” Id.
“Configured to” is normally construed more narrowly than “capable
of,” and generally, is equivalent to “made to” or “designed to.” See, e.g., In
re Giannelli, 739 F.3d 1375, 1379 (Fed. Cir. 2014); Aspex Eyewear, Inc. v.
Marchon Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012). Although
Appellant concedes that Cosse’s brackets would be capable of different
torque positions, Appellant is correct that the Examiner has not directed us
to any disclosure that the two brackets identified by the Examiner as
engaging archwire sections 3/5 in Patel, even as modified by the teachings of
Cosse, are configured to provide different torque couples. The mere fact
that that the two brackets of Patel as modified by Cosse might be capable of
different torque couples is not sufficient to satisfy the limitations.
For the foregoing reasons, we find the Examiner’s rejection of
dependent claim 58 to be insufficiently supported by the presented evidence
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Application 14/976,074

19
and reasoning. We do not sustain the rejection of dependent claim 58, or
claim 59 which depends therefrom, under 35 U.S.C. § 103 as obvious over
Patel and Cosse.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
45–59 112(b) Indefiniteness 45–59
36–52 103 Patel 36–52
53–59 103 Patel, Cosse 53–57 58, 59
Overall
Outcome
53–57 36–52,
58, 59

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 IN PART