Rolf Foerster

Patent Trials and Appeals Board

Oct 27, 2021

2021001040 (P.T.A.B. Oct. 27, 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.
13/378,633 01/30/2012 Rolf Foerster TWEL-4234-US 7581
26822 7590 10/27/2021
Hackler Daghighian Martino & Novak
10900 Wilshire Blvd.
Suite 300
Los Angeles, CA 90024
EXAMINER
LEWIS, RALPH A
ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
10/27/2021 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):
jcf@hdmnlaw.com
marc@hdmnlaw.com
uspto@dockettrak.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte ROLF FOERSTER
__________

Appeal 2021-001040
Application 13/378,633
Technology Center 3700
__________

Before JEFFREY N. FREDMAN, ULRIKE W. JENKS, and
DEVON ZASTROW NEWMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to a set of
self-ligating brackets for orthodontics. The Examiner rejected the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the Real Party in Interest as
BERNHARD FOERSTER GMBH (see Appeal Br. 3). We previously
addressed this Application in Appeal 2016-007816 and affirmed the
rejection of the claims presented at that time.
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Application 13/378,633

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Statement of the Case
Background
“Passive brackets and active brackets both [are used] . . . in the
orthodontic treatment of malpositions of teeth” (Spec. 2).
By passive bracket is meant a bracket in which the archwires,
which are inserted into the slot of the brackets for orthodontic
treatment, cannot be subjected to pressure by the labial leg of
the clip as long as the archwire lies on the base area of the slot.
By active bracket is meant a bracket in which at least the
archwires with the largest cross section occurring in orthodontic
practice are subjected to pressure by the labial leg of the
resilient clip even when they lie on the base area of the slot.
(id.). “Clips for self-ligating brackets can be manufactured with reproducible
resilient properties and dimensions only with difficulty as the brackets and
the resilient clips have very small dimensions” (Id. at 3).
The Claims
Claims 1–8 and 13–21 are on appeal. Claim 1 is representative and
reads as follows:
1. A set of self-ligating brackets for orthodontics, each of
the brackets comprising:
a base;
a block arranged on the base;
an occlusal wall extending from the block and having at
least one occlusal ligature wing;
a gingival wall extending from the block and having at
least one gingival ligature wing;
a slot separating the occlusal wall and the gingival wall
from one another, said slot having a minimum clear width
which is the same for each of the brackets of the set and extends
continuously in a direction from mesial to distal, and having a
base area on which a given orthodontic archwire lies during
orthodontic treatment, the given orthodontic archwire having a
rectangular or square cross section defined by a given width and
a given height;
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a passage extending in a gingival-occlusal direction
through the block and being delimited by a lingually located
surface and by a labially located surface;
a resilient clip for each of the brackets with a labial leg
and with a lingual leg interconnected by an occlusally arranged
portion;
wherein the lingual leg can be inserted into the passage
and can be displaced therein only in the gingival-occlusal
direction between a closed position in which a tip of the labial
leg extends into a recess in the gingival wall, said recess
providing at least in a lingual direction a lingual stop for the
extension of the labial leg from which lingual stop the labial leg
of the clip can be raised by the given orthodontic archwire
inserted into the slot, and an open position of the clip in which
the tip of the labial leg is situated above the occlusal wall,
wherein the tip has a smaller width in the mesial to distal
direction in comparison to a width of the labial leg in the mesial
to distal direction;
including a labial stop in the gingival wall wherein the
labial stop provides at least in a labial direction the labial stop
for the labial leg of the resilient clip, wherein the recess is
further delimited by at least one rim formed in the gingival
wall, the at least one rim connecting the labial stop to the
lingual stop, wherein a width of the recess as measured from
the at least one rim in the mesial to distal direction is less than a
distance of the ends of the gingival wall in the mesial to distal
direction and is greater than the width of the tip in the mesial to
distal direction such that the tip can be disposed within the
recess;
the set comprising at least one bracket which, in
combination with the given archwire, is a passive bracket and at
least one other bracket which, in combination with the given
archwire, is an active bracket, where the passive and active
brackets differ only in the depth of the slot and thus differ in
terms of the distance of their lingual stop from the base area of
the slot, said distance of the lingual stop from the base area of
the slot being larger for the passive bracket than for the active
bracket.

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The Issues
The Examiner rejected claims 1–8 and 13–21 under 35 U.S.C.
§ 103(a) as obvious over Forster,2 Chester,3 and Allesee4 (Final Act. 2–5).
The Examiner rejected claims 1–8 and 13–21 under 35 U.S.C.
§ 103(a) as obvious over Forster, Chester, Allesee, and Abels5 (Final Act. 5).
Because the same issues and substantially the same prior art are
relevant to both of these rejections, we will consider these rejections
together.
The Examiner finds the
Forster orthodontic bracket meets all the limitations of the
present claims with the exception of those directed to a “set
comprising at least one passive bracket and at least one active
bracket, where the passive and active brackets differ only in the
depth of the slot and thus differ in terms of distance of their
lingual stop from the base area of the slot.”
(Final Act. 3). The Examiner finds that archwires used with the brackets
“come in a variety of conventional sizes including sizes with the same width,
but of different depth as is evidenced for example by Allesee et al who in the
first column of Figures 8-17 list numerous conventionally sized arch wire
sizes that have the same width, but different depths” (id.). As to the set
recitation, the Examiner finds Chester teaches “that many orthodontists
‘prefer to retain a variety of orthodontic brackets on hand for making a
customized patient “kit” or set of brackets’ to meet the needs of particular

2 Forster et al., US 2007/0281269 A1, published Dec. 6, 2007.
3 Chester et al., US 5,350,059, issued Sept. 27, 1994.
4 Allesee et al., US 5,820,370, issued Oct. 13, 1998.
5 Abels et al., US 2006/0199137 A1, published Sept. 7, 2006.
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patients” (id.). The Examiner finds Abels teaches “it may be desirable to use
a combination of active and passive brackets” (id. at 5; citing Abels ¶ 30).
The Examiner finds:
To have provided a supply kit of Forster brackets having
different slot sizes to accommodate conventionally sized arch
wires (including brackets having slot sizes of the same width,
but different depth) in order for the orthodontist to meet the
needs of their patients would have been obvious to one of
ordinary skill in the art at the time of applicant's invention in
view of the teaching by Chester et al.
(Final Act. 3–4).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner’s conclusion that Forster, Allesee, Chester, and
Abels render claim 1 obvious?
Findings of Fact
1. Forster teaches a
self-ligating bracket for use in orthodontics having
a base;
a support arranged on the base;
an occlusal wall with at least one occlusal ligature wing
extending from the support;
a gingival wall with at least one gingival ligature wing
extending from the support;
a slot separating the occlusal wall and the gingival wall
one from the other and extending continuously in the mesial-to-
distal direction;
a passage which extends through the support in the
gingival-to-occlusal direction; and
a resilient clip having a labial leg and a lingual leg that
are connected one to the other by an occlusal section;
the lingual leg being received in the slot and being
arranged for displacement in the slot in the gingival-to-occlusal
direction between a closed position in which the labial leg
extends into a cutout in the gingival wall and an open position
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of the clip in which the tip of the labial leg is located above the
occlusal wall.
As the clip is moved from its open position into its closed
position, the labial leg springs into the slot, and its tip comes to
rest at an initial stress against a lingual stop that forms a lingual
boundary of the cutout in the gingival wall of the bracket.
(Forster ¶¶ 1–10).
2. Forster teaches the “slot 7 serves to receive an arch wire 10
which, specifically, has a rectangular cross-section” (Forster 56).
3. Allesee teaches “modern bracket systems include brackets
having slots aligned at angles and inclinations, varying base thicknesses, and
incorporated anti-rotations, thus greatly reducing or eliminating the need for
bending wires” (Allesee 6:14–17).
4. Figure 8 of Allesee is reproduced below:

FIGS. 8-10 are charts which presume perfectly square or
rectangular archwires and list actual torque forces generated
using, respectively, a 0.020 inch bracket slot width, a 0.018
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inch slot width and a 0.022 inch slot width. The torque angle
manufactured into the bracket is listed at the top of each
column, and the different rows illustrate various wire sizes
which may potentially be selected for use with the respective
slot system.
(Allesee 7:54–61).
5. Chester teaches: “Orthodontists who prefer to retain a variety of
orthodontic brackets on hand for making a customized patient ‘kit’ or set of
brackets are thus faced with the problem of keeping a sufficient number and
variety of brackets on hand to meet the foreseen needs of each patient”
(Chester 2:10–15).
6. Abels teaches “the present invention contemplates use of both
‘passive’ and ‘active’ self-ligating orthodontic brackets . . . In some cases, it
may be desirable to use a combination of active and passive brackets”
(Abels ¶ 30).
Principles of Law
“[A]pparatus claims cover what a device is, not what a device does.”
Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed.
Cir. 1990). However, a prima facie case for obviousness “requires a
suggestion of all limitations in a claim,” CFMT, Inc. v. Yieldup Int’l Corp.,
349 F.3d 1333, 1342 (Fed. Cir. 2003) and “a reason that would have
prompted a person of ordinary skill in the relevant field to combine the
elements in the way the claimed new invention does.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007).

Analysis
Appellant contends:
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the first area of novelty of the Appellant’s invention is that
the same archwire (10) is shown in both figures 3 and 4.
This given orthodontic archwire (10) has a rectangular cross
section defined by a given width and a given height. The
cross section, i.e. width and height, of the archwire is
constant throughout the whole length of the archwire (10).
. . . The passive and active brackets of the Appellant’s
invention utilize the same archwire.
(Appeal Br. 22–23). Appellant contends the “second area of novelty is that
the resilient clips (25) are identical for all of the brackets whether the
brackets are active brackets or passive brackets” (id. at 23). Appellant
further contends “[m]ost importantly, the third area of novelty is that an
active bracket (40) and a passive bracket (41) are identically shaped except
for the depth (height) of the slot (7)” (id.).
Appellant contends “the Examiner has still failed to explain the leap
from an arch wire of different depths to then creating active and passive
brackets that only differ in the depth of their slots, considering none of the
brackets in Allesee were active brackets” (Reply Br. 3). Appellant also
contends the “Examiner has failed to explain why it would be obvious for an
orthodontist to have on hand a ‘set’ comprising at least one passive bracket
and at least one active bracket, where the passive and active brackets differ
only in the depth of the slot” (Appeal Br. 31).
The Examiner responds that:
To have constructed Forster brackets with slot sizes to
accommodate conventionally sized arch wires, including arch
wires having the same width, but different depths would have
been obvious to one of ordinary skill in the art at the time of
applicant’s invention in view of the Allesee et al teaching arch
wires come in sizes of the same width, but different depth sizes.
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(Ans. 4–5). The Examiner finds that Allesee “clearly teaches that it was
well known at the time of applicant’s invention that orthodontic arch wires
were commercially available in a multitude of different standard sizes
including common widths, but different depths as evidenced by Figures 8-
17” (id. at 5).
As we balance these arguments, we find Appellant has the more
persuasive position on the instant claims. We continue to agree with the
Examiner that forming sets of orthodontic brackets would have been obvious
(FF 5), that Abels evidences that such sets may include both active and
passive brackets (FF 6), and that archwires of different depths were known
(FF 3–4).
Unlike the claim at issue in our previous decision that encompassed
sets of any archwires with any brackets and required no relationship between
a single archwire and two brackets, one passive and one active, we
understand instant claim 1 to require such a relationship. In particular, we
interpret the newly added language in claim 1 to require a relationship
between particular active brackets and particular passive brackets, such that
a single archwire designed for a single slot depth would properly engage
with both the active and passive bracket being employed together, but could
not be used with brackets requiring other slot depths.
The Examiner provides no reason based in the prior art to make a kit
of such an archwire and set of brackets. And we are not persuaded that it
would have been obvious to ensure or create a set of archwires, active
brackets, and passive brackets that necessarily included at least one set
where a single archwire with a single slot depth properly engaged both an
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active bracket and a passive bracket that “differed only in the depth of the
slot” as required by claim 1.
We therefore agree with Appellant that this rejection relies on
hindsight. “We must still be careful not to allow hindsight reconstruction of
references to reach the claimed invention without any explanation as to how
or why the references would be combined to produce the claimed
invention.” Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 n.3
(Fed. Cir. 2008).
Conclusions of Law
The evidence of record does not support the Examiner’s conclusion
that Forster, Allesee, Chester, and Abels render claim 1 obvious.

DECISION SUMMARY
In summary:
Claim(s)
Rejected
35
U.S.C. § 
Reference(s)/Basis Affirmed Reversed
1–8, 13–
21
103 Forster, Allesee, Chester 1–8, 13–21
1–8, 13–
21
103 Forster, Allesee, Chester,
Abels
1–8, 13–21
Overall
Outcome
1–8, 13–21

REVERSED