SmileDirectClub LLC

Patent Trials and Appeals Board

Sep 23, 2021

2021002976 (P.T.A.B. Sep. 23, 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.
15/725,430 10/05/2017 Jordan Katzman 116515-0119 1608
26371 7590 09/23/2021
FOLEY & LARDNER LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
EXAMINER
SAUNDERS, MATTHEW P
ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
09/23/2021 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):
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JORDAN KATZMAN, ALEX FENKELL, DAVID KATZMAN,
CHRISTOPHER YANCEY, and JOSH CHAPMAN
Appeal 2021-002976
Application 15/725,430
Technology Center 3700
Before STEFAN STAICOVICI, MICHAEL L. HOELTER, and
BRETT C. MARTIN, Administrative Patent Judges.
MARTIN, 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 1–3, 5, 8–10, 12, 21–30, and 32–46.
Claims 4, 6, 7, 11, 13–20, and 31 were canceled during prosecution. Appeal
Br. 29–31, 33 (Claims App.). Oral arguments were heard in this case on
August 10, 2021. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter NEW GROUNDS OF REJECTION.

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 SmileDirectClub,
LLC. Appeal Br. 2.
Appeal 2021-002976
Application 15/725,430
2
CLAIMED SUBJECT MATTER
The claims are directed “to a system and method for application of a
dental impression kit at home.” Spec. ¶ 2. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method of administering the contents of a dental
impression kit, the method comprising:
sending a dental impression kit to a user, the dental
impression kit including a container containing an initial dental
assembly, a redundant dental assembly, and a dental appliance,
the initial dental assembly and the redundant dental assembly
including respective initial and redundant dental trays and putty,
the putty provided in an amount to be positioned in the initial
dental tray for creating an initial dental impression and in the
redundant dental tray for creating a redundant dental impression,
the dental appliance configured to hold open the user's upper and
lower lips simultaneously to permit visualization of the user's
teeth and further configured to continue holding open the user's
upper and lower lips in a hands-free manner after being
positioned at least partially within the user's mouth,
receiving one or more photos of the user's mouth, the one
or more photos having been taken while the dental appliance is
positioned at least partially within the user's mouth,
receiving the initial dental impression created by the user
by administering the initial dental assembly, and
receiving the redundant dental impression created by the
user by administering the redundant dental assembly,
wherein the initial dental impression and the redundant
dental impression provide information necessary to manufacture
a plurality of dental aligners specific to the user and being
configured to reposition one or more teeth of the user.
REFERENCES
The prior art relied upon by the Examiner is:
Appeal 2021-002976
Application 15/725,430
3
Name Reference Date
Fisher US 2009/0081604 A1 March 26, 2009
Tchouangang US 2011/0183293 A1 July 28, 2011
Carrier US 2018/0125610 A1 May 10, 2018
Meyer US 2018/0228359 A1 Aug. 16, 2018
Smile Direct Club Evaluation Kit Instruction Guide, May 2, 2016 (“Smile
Direct Club”).

REJECTIONS
Claims 1–3, 5, 8–10, 12, 21–30, and 32–46 stand rejected under 35
U.S.C. § 103 as being unpatentable over Smile Direct Club and Meyer.
Final Act. 3.
Claims 1–3, 5, 8–10, 12, 21–28, 32–38, and 40 – 46 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Tchouangang and Meyer.
Final Act. 11.
Claims 1–3, 5, 8–10, 12, 21–28, and 32–46 stand rejected under 35
U.S.C. § 103 as being unpatentable over Fischer and Meyer. Final Act. 14.
Claims 29 and 30 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Fischer, Meyer, and Smile Direct Club. Final Act. 18.
Claims 29, 30, and 39 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Tchouangang, Meyer, and Smile Direct Club. Final Act.
19 – 20.
OPINION
Meyer
Appellant presents no argument as to the rejections themselves, other
than to assert that the Examiner erred in using Meyer as prior art to reject the
claims. All of the Examiner’s rejections rely on Meyer and so the status of
Meyer as prior art is dispositive of this case. We agree with Appellant that
Appeal 2021-002976
Application 15/725,430
4
the Examiner erred in qualifying Meyer as proper prior art, at least for the
subject matter applicable to the claims.
As background, we note that the basis for disqualifying certain
disclosures in Meyer relates to the fact that aspects of the subject matter
found in Meyer was actually disclosed to Meyer by Appellant. See Decl. of
Josh Chapman, filed May 14, 2020 (hereinafter “Declaration”). As such, it
was incumbent upon the Examiner to analyze Meyer and the content of the
disclosure made to Meyer by Appellant to determine what content within
Meyer was and was not available as prior art. The Examiner failed to
perform this analysis mainly due to his reliance upon the assertion that the
Declaration was insufficient in properly explaining the relevance of the
disclosure to Meyer.
Appellant first argues that the Examiner improperly discounted the
Declaration of Josh Chapman, which explains why Meyer should be
disqualified as prior art as to the claimed subject matter. According to
Appellant, the Examiner improperly required Appellant to explain the
content of Meyer as it applies to the claims to a level beyond what is actually
required. See, e.g., Reply Br. 3. Appellant points out that the Examiner has
imposed certain burdens based on language in the MPEP that actually
dictates the Examiner’s responsibility in assessing the prior art. Reply Br. 5.
The Examiner points to MPEP 717.01(b)(1)(B)(1–4) as laying out
Appellant’s responsibilities vis-à-vis Meyer (Ans. 3), but Appellant is
correct that these responsibilities are actually the Examiner’s (i.e., Office
Personnel) and not Appellant’s. Reply Br. 5. Appellant is correct that the
Declaration could “simply make additional facts of record” and does not
require additional analysis. Reply Br. 4. We find the Declaration to be
sufficient and that the Examiner improperly discounted the same.
Appeal 2021-002976
Application 15/725,430
5
Appellant next asserts that the Examiner improperly disregarded the
claim language in assessing Meyer. Reply Br. 8. As Appellant correctly
states, “the proper comparison is between the subject matter disclosed by the
Applicant and the subject matter disclosed in the intervening reference.” Id.
Curiously, the Examiner states that the Declaration should “not merely
[have] asserted that the previous public disclosure supported the claim
language.” Ans. 4. It was incumbent upon the Examiner to analyze Meyer
and the disclosure made to Meyer in relation to the claim language to
determine what portions of Meyer were actually original and what was
derived from the disclosure to Meyer by Appellant. It is clear that
Appellant’s Figure 8 was almost identically disclosed to Meyer in the form
of a photograph that appears to be the basis for the drawing found in Figure
8. Given this disclosure to Meyer, Meyer would not have been proper prior
art for any claim language reading on Figure 8. Contrary to the Examiner’s
assertion, the Examiner was responsible for assessing Figure 8 in relation to
the claims and determining what was properly derived from Appellant’s
disclosure.
Regarding the Examiner’s genus/species discussion, Appellant argues
that “[t]he reasoning in the Examiner’s Answer does not make any sense.”
Reply Br. 14. We agree. The Examiner appears to be confused as to the
proper analysis of a genus and species or of competing species. Appellant is
correct that “if an intervening disclosure describes only elements A, B, and
C, then it is not available as prior art in connection with claims that only
recite elements A, B, and C.” Id. Here, the intervening disclosure to Meyer,
i.e., Figure 8, fully discloses all of the limitations found in claim 1. As such,
Meyer is inapplicable for anything disclosed in Figure 8. Meyer includes
many other features and variations of a lip retractor, which are all usable as
Appeal 2021-002976
Application 15/725,430
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prior art, but the basic concept depicted in Figure 8, which was disclosed by
Appellant to Meyer cannot be properly used as prior art.
In sum, the Examiner improperly discounted the Chapman
Declaration and did not properly analyze the intervening disclosure in
relation to the claims to determine what properly could or could not be
asserted as prior art from Meyer. Accordingly, the Examiner committed
reversible error. As such, we do not sustain the Examiner’s rejections.
New Grounds of Rejection
In this case, the Examiner found the Meyer reference and relied upon
it without taking into consideration the knowledge of what was disclosed by
Appellant to Meyer. We note that the claim language at issue is extremely
broad in that all that is required essentially is a retractor that holds open the
patient’s lips to provide a full view of the teeth in a hands-free manner. A
quick search of “lip retractor” patents showed that there were a number of
patents and prior art publications available to the Examiner that disclosed
this broad subject matter. For Example, published application US
2006/0019216 A1 to Priluck et al. (“Priluck”), on Jan. 26, 2006, discloses a
dental retractor that sufficiently meets all of the requirements of the claim in
that it retracts the upper lips allowing a full view of the teeth and mouth and
does so in a hands-free manner.
As such, we enter a new ground of rejection rejecting claim 1 over
Priluck and Smile Direct Club. We essentially adopt the Examiner’s
analysis as to Smile Direct Club and merely replace Meyer with Priluck
under the same basis as the Examiner originally rejected claim 1 over Smile
Direct Club and Meyer. We leave it to the Examiner to address the
remaining claims and/or to perform an additional search to find other
Appeal 2021-002976
Application 15/725,430
7
suitable lip retractors that are not derived from Appellant’s disclosure as is
the case with Meyer.
CONCLUSION
The Examiner’s rejections are REVERSED and we enter a NEW
GROUND OF REJECTION.
DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed New
Ground
1–3, 5,
8– 10,
12, 21–
30, 32–
46
103 Smile Direct Club,
Meyer
1–3, 5,
8– 10,
12, 21–
30, 32–
46

1–3, 5,
8– 10,
12, 21–
28, 32–
38, 40–
46
103 Tchouangang,
Meyer
1–3, 5,
8– 10,
12, 21–
28, 32–
38, 40–
46

1–3, 5,
8– 10,
12, 21–
28, 32–
46
103 Fischer, Meyer 1–3, 5,
8– 10,
12, 21–
28, 32–
46

29, 30 103 Fischer, Meyer,
Smile Direct Club
29, 30
29, 30,
39
103 Tchouangang,
Meyer, Smile
Direct Club
29, 30,
39

1 103 Priluck, Smile
Direct Club
1
Appeal 2021-002976
Application 15/725,430
8
Overall
Outcome
1–3, 5,
8–10, 12,
21–30,
32–46
1

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).
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (2011). 37 C.F.R. § 41.50(b) provides “[a] new ground
of rejection pursuant to this paragraph shall not be considered final for
judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the Examiner, in which event the proceeding will be
remanded to the Examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed
Appeal 2021-002976
Application 15/725,430
9
rejection2, the effective date of the affirmance is deferred until conclusion of
the prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome. If Appellant elects
prosecution before the Examiner and this does not result in allowance of the
application, abandonment or a second appeal, this case should be returned to
the Patent Trial and Appeal Board for final action on the affirmed rejection,
including any timely request for rehearing thereof.
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).

REVERSED; 37 C.F.R. § 41.50(b)

2 37 C.F.R. § 41.52(a)(1) provides “Appellant may file a single request for
rehearing within two months from the date of the original decision of the
Board.”