Ex Parte D

Board of Patent Appeals and Interferences

May 22, 2012

11255846 (B.P.A.I. May. 22, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID D. D’ALISE
____________

Appeal 2011-002843
Application 11/255,846
Technology Center 3700
____________

Before DONALD E. ADAMS, FRANCISCO C. PRATS, and
JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
1

This appeal under 35 U.S.C. § 134 involves claims 1-4, 7, 10, 19, and
22-26 (App. Br. 4).
2
We have jurisdiction under 35 U.S.C. § 6(b).

1
Oral Hearing held May 10, 2012.
2
Appellant “does not contest the Examiner’s rejection of Claim 5 based on
Bulard in view of Palti” (App. Br. 28). Accordingly, we treat this claim as
canceled. Manual of Patent Examining Procedure § 1214.05 (“Where an
appellant withdraws some of the appealed claims . . . the withdrawal is
treated as an authorization to cancel the withdrawn claims”).
Appeal 2011-002843
Application 11/255,846

2
STATEMENT OF THE CASE
The claims are directed to a dental implant, which may be generally
cylindrical, for placement in a jaw bone (claims 1-4, 7, 19, and 22-26) and a
method for placing a dental implant (claim 10). Claims 1, 5, and 23 are
representative and are reproduced in the “Claims Appendix” of Appellant’s
Brief.
Claims 1-4 and 19 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Niznick.
3

Claims 7, 10, 22, and 24-26 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over the combination of Bulard
4
and Palti.
5

Claim 23 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Bulard, Palti, and Carmichael.
6

We reverse.

Anticipation:
ISSUE
Do the D’Alise Declarations
7,8
establish that Appellant’s claimed
subject matter was reduced to practice prior to Niznick’s effective filing
date?

3
Niznick, US 2006/0199150 A1, published September 7, 2006.
4
Bulard et al., US 2005/0037319 A1, published February 17, 2005.
5
Palti et al., US 6,402,515 B1, issued June 11, 2002.
6
Carmichael et al., US 2003/0165796 A1, published September 4, 2003.
7
Declaration of David D. D’Alise, executed January 25, 2009.
8
Declaration of David D. D’Alise, executed March 29, 2009.
Appeal 2011-002843
Application 11/255,846

3
FACTUAL FINDINGS (FF)
FF 1. Both D’Alise Declarations establish that the Executive Editor of the
Dental Products Report received an advertisement, which described and
illustrated Appellant’s claimed dental implant on February 8, 2005 and
published that advertisement in the March 2005 edition of the Dental
Products Report (see D’Alise Declarations).
FF 2. Examiner finds that the D’Alise Declarations did “not provide
evidence of the claimed placement of the implant in the jawbone and the
artificial crown, denture or prosthesis that may be attached to the implant”
(Ans. 8).
ANALYSIS
Appellant’s claims 1-4 and 19 are directed to a product, a dental
implant. The D’Alise Declarations depict or describe all elements recited in
the claims. Thus, the Declarations establish that the claimed dental implant
was reduced to practice prior to the effective filing date of Niznick (FF 1).
We recognize Examiner’s concern that the D’Alise Declarations fail to
illustrate the “placement of the implant in the jawbone and the artificial
crown, denture or prosthesis that may be attached to the implant” (FF 2).
Examiner, however, failed to explain why this additional evidence, directed
toward the use of the claimed product, is necessary to show a reduction to
practice regarding the product itself.
CONCLUSION OF LAW
The D’Alise Declarations establish that Appellant’s claimed subject
matter was reduced to practice prior to Niznick’s effective filing date. The
rejection of claims 1-4 and 19 under 35 U.S.C. § 102(e) as being anticipated
by Niznick is reversed.
Appeal 2011-002843
Application 11/255,846

4
Obviousness:
The combination of Bulard and Palti:
ISSUE
Does the preponderance of evidence on this record support a
conclusion that (i) Bulard’s tip is capable of compacting bone and (ii) Palti’s
thread is capable of performing according to the requirements of Appellant’s
claimed invention?
FACTUAL FINDINGS (FF)
FF 3. For clarity, Bulard’s FIG. 1 is reproduced below:

“FIG. 1 is a side view of . . . [Bulard’s] implant” (Bulard 2: ¶ [0026]).
FF 4. Examiner finds that “Bulard does not specifically teach the apical
end comprises a tip that is adapted to condense the medullar bone, however,
as illustrated in [Bulard’s] fig. 1, the tip 25 is capable of condensing the
medullar bone” (Ans. 7).
FF 5. Examiner finds that “Palti does not specifically teach the thread
being adapted to pull up on the bone around the tip, however, it is capable of
functioning as claimed and therefore . . . [Appellant’s] claimed limitations
are met” (id.).

Appeal 2011-002843
Application 11/255,846

5
ANALYSIS
“[E]xaminer bears the initial burden, on review of the prior art or on
any other ground, of presenting a prima facie case of unpatentability.” In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). On this record, the
foundation of Examiner’s prima facie case is built upon unsupported
conclusions (see FF 4-5; see, e.g., App. Br. 29 (“The mere fact that the
Examiner thinks that Bulard’s tip is capable of condensing bone is an invalid
basis for jumping to the conclusion that it can”)). “[R]ejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006).
CONCLUSION OF LAW
The preponderance of evidence on this record fails to support a
conclusion that (i) Bulard’s tip is capable of compacting bone and (ii) Palti’s
thread is capable of performing according to the requirements of Appellant’s
claimed invention. The rejection of claims 7, 10, 22, and 24-26 under 35
U.S.C. § 103(a) as unpatentable over the combination of Bulard and Palti is
reversed.

The combination of Bulard, Palti, and Carmichael:
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 6. Examiner relies on Bulard and Palti as discussed above (Ans. 8).
Appeal 2011-002843
Application 11/255,846

6
FF 7. Examiner relies on Carmichael to suggest an auger thread, which is
not suggested by the combination of Bulard and Palti (id.).
ANALYSIS
Notwithstanding Appellant’s contention that Carmichael fails to
suggest an auger thread, Examiner failed to explain how Carmichael makes
up for the deficiencies in the combination of Bulard and Palti discussed
above (see generally App. Br. 39-40).
CONCLUSION OF LAW
The preponderance of evidence on this record fails to support a
conclusion of obviousness. The rejection of claim 23 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Bulard, Palti, and
Carmichael is reversed.

REVERSED

cdc