Ex Parte Kuo

Patent Trial and Appeal Board

Aug 21, 2017

12277191 (P.T.A.B. Aug. 21, 2017)

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.
12/277,191 11/24/2008 Eric Kuo 22773-771.201 5564
107046 7590 08/23/2017
WSOR / Alian TWTinnlnav Tno
EXAMINER
650 Page Mill Road
Palo Alto, CA 94304
MORAN, EDWARD JOHN
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
08/23/2017 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):
patentdocket @ wsgr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIC KUO
Appeal 2016-0051841
Application 12/277,191
Technology Center 3700
Before FRANCISCO C. PRATS, RICHARD J. SMITH, and
RYAN H. FLAX, Administrative Patent Judges.
PRATS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134(a) involves claims to a removable
dental appliance. The Examiner rejected the claims for obviousness.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
The following rejections are before us for review:
(1) Claims 1, 2, 6, 7, 43, 49—52, 55, and 57, under 35 U.S.C. § 103(a),
as unpatentable over Bergersen,2 Phan,3 and Chishti II4 (Non-Final Act. 3—
10 (entered May 4, 2015));5
1 Appellant identifies Align Technology, Inc., as the real party in interest.
Appeal Br. 3.
2 US 5,037,294 (issued Aug. 6, 1991).
Appeal 2016-005184
Application 12/277,191
(2) Claim 4, under 35 U.S.C. § 103(a), as unpatentable over
Bergersen, Phan, and Farrell3 4 5 6 (Non-Final Act. 10-11);
(3) Claims 5 and 53, under 35 U.S.C. § 103(a), as unpatentable over
Bergersen, Phan, and Farrell 37 {id. at 11—12);
(4) Claims 1, 2, 6, 7, and 56, under 35 U.S.C. § 103(a), as
unpatentable over Bergersen and Chishti I8 {id. at 12—15);
(5) Claim 4, under 35 U.S.C. § 103(a), as unpatentable over
Bergersen, Chishti I, and Farrell {id. at 15);
(6) Claim 5, under 35 U.S.C. § 103(a), as unpatentable over
Bergersen, Phan, and Farrell 3 {id. at 16);
(7) Claims 43, 49—52, and 58, under 35 U.S.C. § 103(a), as
unpatentable over Bergersen, Chishti I, Phan, and Chishti II {id. at 16—20);
and
(8) Claim 53, under 35 U.S.C. § 103(a), as unpatentable over
Bergersen, Chishti I, Phan, and Farrell 3 {id. at 21).
Claims 1 and 43, the sole independent claims on appeal, are
representative and read as follows (Appeal Br. 27, 28 (emphasis added to
show argued limitation)):
3 US 2002/0187451 A1 (published Dec. 12, 2002).
4 US 5,975,893 (issued Nov. 2, 1999).
5 The Non-Final Rejection entered May 4, 2015, also included a number of
rejections of claims 59 and 60. See Non-Final Act. 2, 4, 12, 16. Claims 59
and 60 have been canceled, however. See Appeal Br. 30 (Claims App’x).
6 US 5,624,257 (issued Apr. 29, 1997).
7 US 2004/0103905 A1 (published June 3, 2004).
8 US 6,705,861 B2 (issued Mar. 16, 2004).
2
Appeal 2016-005184
Application 12/277,191
1. A removable dental appliance for repositioning a
patient’s teeth and providing protection against impact-induced
injuries, the appliance comprising:
a shell comprising teeth receiving cavities shaped to
receive and resiliently reposition teeth of a first arch of the
patient’s teeth from a first arrangement toward a planned
second arrangement; and
a u-shaped tray coupled to the shell and configured to
receive a majority of teeth of a second arch of the patient’s teeth
opposing the first arch, the u-shaped tray comprising:
an occlusal pad portion disposed between the first
arch and the second arch and spanning a majority of the
teeth of the second arch when the appliance is worn by
the patient, the occlusal pad portion having a shape and
material selected to provide protection against impact-
induced injury involving an impact forcing the teeth of
the first arch into the teeth of the second arch;
a buccal wall extending from the occlusal pad
portion; and
a lingual wall extending from the occlusal pad
portion.
43. A system for providing protection against impact-
induced injuries during orthodontic treatment, the system
comprising:
a first set of patient wearable appliances shaped to
resiliently reposition a patient’s teeth from a first arrangement
to a planned second arrangement during a stage of treatment;
and
a mouth guard appliance for use during the stage of
treatment, the mouth guard appliance comprising:
a shell comprising teeth receiving cavities shaped
to directly receive and resiliently reposition teeth of a
first arch of the patient’s teeth toward the planned second
arrangement; and
a u-shaped tray coupled to the shell and configured
to receive a majority of teeth of a second arch of the
patient's teeth opposing the first arch, the u-shaped tray
comprising:
3
Appeal 2016-005184
Application 12/277,191
an occlusal pad portion disposed the first
arch and the second arch and spanning a majority
of the teeth of the second arch when the mouth
guard appliance is worn by the patient, the
occlusal pad portion having a shape and material
selected to provide protection against impact-
induced injury involving an impact forcing the
teeth of the first arch into the teeth of the second
arch;
a buccal wall extending from the occlusal
pad portion; and
a lingual wall extending from the occlusal
pad portion.
OBVIOUSNESS—
BERGERSEN, PHAN, AND CHISHTIII
The Examiner’s Prima Facie Case
The Examiner found that Bergersen described a removable
orthodontic appliance having all of the features of the device recited in
independent claim 1, including the claimed teeth-receiving cavities, but
conceded that Bergersen did not expressly disclose that its teeth-receiving
cavities were “formed to resiliently reposition teeth from a first arrangement
toward a planned second arrangement.” Non-Final Act. 5.
To address that deficiency, the Examiner cited Phan as evidence that it
was known in the art to include, in orthodontic devices, teeth-receiving
cavities formed to resiliently reposition teeth. Id. at 6. Based on the
references’ combined teachings, the Examiner reasoned that an ordinary
artisan would have considered it obvious to modify Bergersen’s orthodontic
device to include Phan’s teeth-positioning cavities, “as such modification
would provide for more efficient and controlled orthodontic treatment.” Id.
at 6—7.
4
Appeal 2016-005184
Application 12/277,191
As to independent claim 43, the Examiner concluded, for similar
reasons, that it would have been obvious to modify Bergersen’s device to
include Phan’s multiple appliances having teeth-positioning cavities. Id. at
7—10. The Examiner cited Chishti II as further evidence of the obviousness
of teeth-repositioning cavities in orthodontic appliances. See id. at 9 (citing
Chishti II, 3:45-50).
Analysis
As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden ... of presenting a
prima facie case of unpatentability. . . .
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
In the present case, we agree with the Examiner’s findings of fact and
ultimate conclusion of obviousness, and adopt them as our own. Appellant
does not persuade us that a preponderance of the evidence fails to support
the Examiner’s prima facie case of obviousness as to claims 1 and 43.
In particular, Appellant does not persuade us (see Appeal Br. 10—13,
14—15; Reply Br. 5—6) that the Examiner erred in finding that Bergersen
teaches or suggests a device with an “occlusal pad portion having a shape
and material selected to provide protection against impact-induced injury
involving an impact forcing the teeth of the first arch into the teeth of the
second arch” as claims 1 and 43 require (Appeal Br. 27, 28).
Contrary to Appellant’s contention that the Examiner failed to identify
the element in Bergersen’s device corresponding to an occlusal pad having a
shape that would provide the protection required by claims 1 and 43, the
Examiner provided an annotated drawing identifying each of the elements
5
Appeal 2016-005184
Application 12/277,191
corresponding to the structural features recited in the claims, including the
rejected claims’ occlusal pad. See Non-Final Act. 6 (Examiner’s annotated
Fig. 3 of Bergersen); see also id. at 4, 7 (identifying element C of the
annotated drawing as corresponding to the occlusal pad at issue, noting that
element C is “disposed between the first and second arch and spanning a
majority (e.g. all) of the teeth of the second arch when the appliance is worn
by the patient”).
Contrary to Appellant’s contention that the Examiner failed to identify
in Bergersen materials that would impart to the occlusal pad the protection
required by claims 1 and 43, the Examiner cited column 2, lines 25—30 of
Bergersen as disclosing such materials. Non-Final Act. 4, 7. The following
passage includes the portion of Bergersen cited by the Examiner:
The invention is particularly related to dentition appliances
which are injection molded from thermoplastic materials rather
than from powdered self-curing acrylic. Thus, the dentition
appliance illustrated in FIGS. i—\ is one made by injection
molding or heat forming of a sheet from a thermoplastic
material which include the silicone resins, polyurethane resins,
polyvinyl chloride, latex rubber, water blush polyvinyl chloride,
polypropylene resins, and polyethylene resins and such other
thermoplastic materials as lend themselves to injection molding
and heat forming techniques in the fabrication of orthodontic
appliances or human dentition appliances. Other molding
processes using thermoplastic materials such as rotary molding
and blow molding could also be used.
Bergersen, 2:22—36 (emphasis added).
As to suitable materials, moreover, Bergersen discloses expressly that
its invention relates to “any soft or hard plastics or rubber used in fabricating
custom positioners and other appliances made by vacuum and/or heat
forming or injection molding or by other molding processes such as rotary
6
Appeal 2016-005184
Application 12/277,191
molding and blow molding.” Id. at 1:17—21
Further, it is well settled that during examination, the PTO must
interpret terms in a claim using “the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
In the present case, as the Examiner determined (see Ans. 2—3), claims
1 and 43 do not specify any particular degree of protection, nor do the claims
specify any degree of impact, or any particular type of injury resulting from
said impact, against which protection must be provided. Appellant does not
direct us to any definitions or specific exemplary materials in the
Specification that might limit or illustrate the scope of the language at issue.
Indeed, claims 1 and 43 do not require the material forming the occlusal pad
at issue to have any particular physical properties, for example elasticity or
hardness, or lack thereof. Thus, Appellant does not persuade us (see Reply
Br. 5) that the Examiner was unreasonable in interpreting the language at
issue as encompassing the protective absorption of any amount of the force
generated by any type of injury-causing impact that drives the two tooth
arches together. See Ans. 2—3.
Given the breadth of the language at issue in claims 1 and 43, and
further given Bergersen’s disclosure of forming its devices from “any soft or
hard plastics or rubber used in fabricating custom positioners” (Bergersen,
1:17—18), which, as the Examiner noted, include a variety of thermoplastic
materials (see id. at 2:25—36) that reasonably would have been expected to
7
Appeal 2016-005184
Application 12/277,191
have at least some degree of force-absorbing resiliency, Appellant does not
persuade us that the Examiner failed to provide a sufficient evidentiary basis
for concluding that Bergersen’s device, including the occlusal pad portion,
would provide a degree of protection encompassed by claims 1 and 43.
Appellant also does not persuade us (see Appeal Br. 13—14; Reply Br.
5—6) that the Examiner failed to identify a sufficient reason for modifying
Bergersen’s orthodontic device to include Phan’s teeth-positioning cavities.
Bergersen discloses incorporating fluoridating material into an
injection-molded “human detention appliance or pacifier device or anti­
thumb sucking device”, such that “when used, the fluoridating material will
leach out of the appliance and become mixed with fluids in the mouth at the
buccal, labial, lingual and occlusal surfaces of the teeth which come in
contact with the appliance.” Bergersen, Abstract.
As Appellant contends, Bergersen discloses that “the term
‘appliances’ [is understood] to include anti-thumb sucking and pacifier-type
devices.” Id. at 2:20—21. Bergersen, nonetheless, also repeatedly refers to
its devices as either “appliances for correcting human dentition” {id. at 1:7—
8), an “orthodontic or human dentition appliance” {id. at 3:60), or an
“orthodontic appliance” {id. at 4:58). Bergersen, moreover, discloses that
“the principles of the present invention are applicable to all human dentition
appliances, including preformed and/or custom-made appliances.” Id. at
2:17-19.
Bergersen’s exemplary device includes u-shaped trays for receiving
the bottom and top arches of the subject’s teeth, with the top arch including
“various pockets such as 22a through 22h in the appliance [which] are made
so that the teeth are snugly embraced.” Id. at 3:4—6; see also id. at Figs. 1—4
8
Appeal 2016-005184
Application 12/277,191
(showing various views of appliance). As the Examiner found, Bergersen
does not appear to expressly describe the teeth-receiving cavities of its
exemplary device as being shaped to reposition teeth, as recited in
Appellant’s independent claims 1 and 43.
As the Examiner found, however, Phan discloses that such teeth-
receiving cavities were known in the art to be useful teeth-repositioning
devices. Phan 14 (“A particularly promising approach relies on the use of
elastic positioning appliances for realigning teeth. Such appliances comprise
a thin shell of elastic material that generally conforms to a patient’s teeth but
is slightly out of alignment with the initial tooth configuration.”).
Given Phan’s teaching that teeth-repositioning cavities were known in
the art to be useful in orthodontic devices, we agree with the Examiner that
an ordinary artisan had good reason for, and a reasonable expectation of
success in, modifying Bergersen’s device so that the teeth-receiving cavities
were configured to reposition teeth, as required by Appellant’s claims 1 and
43, particularly given Bergersen’s disclosure that its teachings are applicable
to orthodontic devices. See, e.g., Bergersen claims. Appellant does not
persuade us, therefore, that the Examiner erred in finding that an ordinary
artisan would have combined the cited references in the manner posited in
the rejection.
Appellant repeatedly contends that there is a “fundamental
contradiction” between the properties of materials capable of protecting
against injury encompassed by claims 1 and 43, and the properties of
materials capable of providing the teeth-repositioning function recited in
those claims. Appeal Br. 9, 13; Reply Br. 5. Appellant argues that the “fact
that these two functionalities call for conflicting material properties
9
Appeal 2016-005184
Application 12/277,191
(hardness and stiffness for repositioning, softness and compliance for
protection) naturally leads away from the combination of the two.” Appeal
Br. 13.
We are not persuaded. Appellant does not identify any specific
objective evidence of record supporting the contention that the properties of
materials capable of teeth-repositioning, and the properties of materials
capable of injury protection, are mutually exclusive. Appellant’s argument,
therefore, is entitled to little probative weight. See In re Geisler, 116 F.3d
1465, 1470 (Fed. Cir. 1997) (“An assertion of what seems to follow from
common experience is just attorney argument and not the kind of factual
evidence that is required to rebut a prima facie case of obviousness.”).
Moreover, contrary to Appellant’s assertion, both Bergersen and Phan
include teachings that relatively compliant materials, which Appellant
asserts provide the protective functionality of claims 1 and 43, are also
useful for providing teeth-repositioning. See, e.g., Bergersen, 1:16—17
(describing “soft or hard plastics or rubber used in fabricating custom
positioners”) (emphasis added); Phan 14 (describing “elastic positioning
appliances for realigning teeth”) (emphasis added); id. 1 5 (describing
drawbacks of overly stiff positioning devices); id. 120 (describing the use of
relatively flexible teeth-repositioning devices).
In sum, for the reasons discussed, Appellant does not persuade us that
the preponderance of the evidence fails to support the Examiner’s prima
facie case that the device of Appellant’s claims 1 and 43 would have been
obvious over Bergersen, Phan, and Chishti II. We also note that Appellant
does not advance secondary evidence of nonobviousness that outweighs the
evidence of prima facie obviousness. Therefore, for the reasons above, we
10
Appeal 2016-005184
Application 12/277,191
affirm the Examiner’s rejection. Because they were not argued separately,
claims 2, 6, 7, 49—52, 55, and 57 fall with claims 1 and 43. 37 C.F.R.
§ 41.37(c)(l)(iv).
OBVIOUSNESS—
BERGERSEN, PHAN, AND FARRELL
In rejecting claim 4, which depends from claim 1 discussed above,
over Bergersen, Phan, and Farrell, the Examiner cited Bergersen and Phan
for the disclosures discussed above, and cited Farrell as evidence of the
obviousness of including on Bergersen’s device the leash tab recited in claim
4. Non-Final Act 10—11.
Appellant contends only that “Farrell fails to cure the deficiencies of
Bergersen and Phan” discussed above as to claim 1. Appeal Br. 16.
As discussed above, however, Appellant does not persuade us that the
teachings of Bergersen and Phan are deficient as to claim 1. Because
Appellant does not identify, nor do we discern, error as to the Examiner’s
rejection of claim 4 over Bergersen, Phan, and Farrell, we affirm the
Examiner’s rejection of that claim over those references.
OBVIOUSNESS—
BERGERSEN, PHAN, AND FARRELL 3
In rejecting claims 5 and 53, which depend, respectively, from claims
1 and 43 discussed above, over Bergersen, Phan, and Farrell 3, the Examiner
cited Bergersen and Phan for the disclosures discussed above, and cited
Farrell 3 as evidence of the obviousness of including in Bergersen’s device
the air passages recited in claims 5 and 53. Non-Final Act 11—12.
Appellant contends only that “Farrell 3 fails to cure the deficiencies of
Bergersen and Phan” discussed above as to claims 1 and 43. Appeal Br. 16.
11
Appeal 2016-005184
Application 12/277,191
As discussed above, however, Appellant does not persuade us that the
teachings of Bergersen and Phan are deficient as to claims 1 and 43.
Because Appellant therefore does not identify, nor do we discern, error as to
the Examiner’s rejection of claims 5 and 53 over Bergersen, Phan, and
Farrell 3, we affirm the Examiner’s rejection of those claims over those
references.
OBVIOUSNESS—
BERGERSEN AND CHISHTII
The Examiner’s Prima Facie Case
In rejecting claims 1, 2, 6, 7, and 56 over Bergersen and Chishti I, the
Examiner concluded, similar to the rejection discussed above over
Bergersen, Phan, and Chishti II, that an ordinary artisan would have
considered it obvious to modify Bergersen’s orthodontic device to include
Chishti I’s teeth-positioning cavities and multi-layered structure, “as such
modification would provide for more efficient and controlled orthodontic
treatment, and provide improved strength, durability, force application and
flexibility of the device.” Non-Final Act. 15.
Analysis
Appellant does not persuade us that a preponderance of the evidence
fails to support the Examiner’s prima facie case of obviousness as to claim
1. To the contrary, we agree with the Examiner’s findings of fact and
ultimate conclusion of obviousness, and adopt them as our own.
Specifically, Appellant does not persuade us (see Appeal Br. 17—19;
Reply Br. 5—6) that the Examiner erred in finding that the combination of
Bergersen and Chishti I teaches or suggests a device with an “occlusal pad
portion having a shape and material selected to provide protection against
12
Appeal 2016-005184
Application 12/277,191
impact-induced injury involving an impact forcing the teeth of the first arch
into the teeth of the second arch” as claim 1 requires (Appeal Br. 27).
As discussed above, we agree with the Examiner that, when given its
broadest reasonable interpretation consistent with the Specification, the
language at issue in claim 1 encompasses the protective absorption of any
amount of the force generated by any type of injury-causing impact that
drives the two tooth arches together. See Ans. 2—3. As discussed above,
moreover, Bergersen discloses forming its devices from “any soft or hard
plastics or rubber used in fabricating custom positioners” (Bergersen, 1:17—
18), which, as the Examiner noted, include a variety of thermoplastic
materials (see id. at 2:25—36) that reasonably would have been expected to
have at least some degree of force-absorbing resiliency.
Turning to Chishti I, we acknowledge the disclosure that teeth-
repositioning devices “must be relatively stiff (i.e. possess a high strength or
high modulus) to provide a sufficient grip on the teeth. The stiffness both
ensures that the dental appliance remains firmly in position on the patient’s
teeth and provides the repositioning force necessary to move the teeth.”
Chishti I, 1:52—56. Chishti I, nonetheless, refers to such teeth-repositioning
devices, in general, as “elastic positioners [which] comprise a thin shell of
elastic material that general conforms to a patient’s teeth but is slightly out
of alignment with the initial tooth configuration.” Id. at 1:34—37 (emphasis
added).
Given the breadth of the language at issue in claim 1, and further
given the disclosures in Chishti I and Bergersen of forming their devices
from compliant or elastic materials that reasonably would have been
expected to have at least some degree of force-absorbing resiliency,
13
Appeal 2016-005184
Application 12/277,191
Appellant does not persuade us that the Examiner failed to provide a
sufficiently specific evidentiary basis for concluding that Bergersen and
Chishti I teach or suggest a teeth-repositioning device having an occlusal
pad portion that would provide a degree of protection encompassed by claim
1.
Appellant again contends that there is a “fundamental contradiction”
between the properties of materials capable of protecting against injury
encompassed by claim 1, and the properties of materials capable of
providing the teeth-repositioning recited in the claims, and that, the “fact that
these two functionalities call for conflicting material properties (hardness
and stiffness for repositioning, softness and compliance for protection)
naturally leads away from the combination of the two.” Appeal Br. 18.
As discussed above, however, because Appellant does not identify
any specific objective evidence of record supporting the contention that the
properties of materials capable of teeth-repositioning and injury protection
are mutually exclusive, Appellant’s argument is entitled little probative
weight. See In re Geisler, 116 F.3d at 1470—71.
Moreover, contrary to Appellant’s assertion, both Bergersen and
Chishti I include teachings that relatively compliant materials, which
Appellant asserts are required to provide the protective functionality of
claim 1, are also useful for providing teeth-repositioning. See, e.g.,
Bergersen, 1:16—17 (describing “soft or hard plastics or rubber used in
fabricating custom positioners”) (emphasis added); Chishti I, 1:34—37
(referring to teeth-repositioning devices, in general, as “elastic positioners
[which] comprise a thin shell of elastic material that general conforms to a
patient’s teeth but is slightly out of alignment with the initial tooth
14
Appeal 2016-005184
Application 12/277,191
configuration”) (emphasis added).
In sum, for the reasons discussed, Appellant does not persuade us that
the preponderance of the evidence fails to support the Examiner’s prima
facie case that the appliance of claim 1 would have been obvious in view of
Bergersen and Chishti I. We note, again, that Appellant does not advance
secondary evidence of nonobviousness that outweighs the evidence of prima
facie obviousness. Therefore, for the reasons above, we affirm the
Examiner’s rejection. Because they were not argued separately, claims 2, 6,
and 7 fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
Appellant presents separate argument as to claim 56. Appeal Br. 19—
22. Claim 56 reads as follows {id. at 29—30; emphasis added):
56. The appliance of claim 1, further comprising:
an outer layer forming an outer surface of the appliance
away from the patient’s teeth;
an inner layer forming an inner surface of the appliance
adjacent to the patient’s teeth; and
a middle layer disposed between the outer and inner
layers, the middle layer forming at least part of the occlusal
pad portion and being softer than each of the outer and inner
layers for increased impact protection.
Chishti I is directed to providing a degree of flexibility to teeth-
repositioning devices, so as to render them more easy to remove, particularly
by the user. See Chishti I, 1:61—2:15. In the embodiment cited by the
Examiner as meeting the limitations of Appellant’s claim 56, Chishti I’s
device has inner, outer, and middle layers (as required by claim 56), with the
middle layers composed of a material having a lower glass transition
temperature than the inner and outer layers of the device. See Chishti I,
9:59—66; see also id. at Figs. 4A-4C (showing inner/outer layers 134 and
middle layers 132). Chishti explains that, when the device is heated to a
15
Appeal 2016-005184
Application 12/277,191
(relatively low) glass transition temperature, the middle layers, but not the
inner and outer layers, “lose stiffness, thus removing their contribution to the
stiffness of’ the overall device, allowing the device to be “removed from the
teeth.” Chishti I, 10:13-16.
Because the middle layers of Chishti I’s device are less stiff, that is,
more flexible, than the device’s outer layers at or above the glass transition
temperature, Appellant does not persuade us (Appeal Br. 20-21) that the
Examiner erred in finding that Chishti I discloses a multilayer device that
meets the requirement in claim 56 of having a middle layer which is “softer
than each of the outer and inner layers for increased impact protection.” Id.
at 30 (claim 56). Although Appellant suggests (id. at 21) that an ordinary
artisan would not have considered less stiff material to be “softer” (id.), the
term “soft” may be defined as “not hard or stiff.”9
As to Appellant’s contention, regarding Chishti’s disclosure, that the
temperature that induces the softer state is preferably above body
temperature and not one normally encountered in daily life (Appeal Br. 20
(citing Chishti I, 8:21—25 and 3:43—48)), we note that claim 56 does not
exclude materials that are softer only under certain circumstances.
Appellant does not persuade us, moreover (see Appeal Br. 21—22), that the
Examiner posited changing Chishti I’s multilayer arrangement to provide
flexible middle layers at physiological temperatures or during normal wear.
See Non-Final Act. 12—15. Appellant does not persuade us, therefore, that
the Examiner’s rationale for the rejection changes the principle of operation
of Chishti I’s invention. See Appeal Br. 21—22.
9 See, e.g., Dictionary.com, soft, http://www.dictionary.com/browse/soft?s=t
(last accessed August 14, 2017).
16
Appeal 2016-005184
Application 12/277,191
In sum, for the reasons discussed, Appellant does not persuade us that
the preponderance of the evidence fails to support the Examiner’s prima
facie case that the appliance of claim 56 would have been obvious in view of
Bergersen and Chishti I. Again, we note Appellant does not advance
secondary evidence of nonobviousness that might outweigh evidence of
prima facie obviousness. Therefore, we affirm the Examiner’s rejection.
OBVIOUSNESS—
BERGERSEN, CHISHTI I, AND FARRELL
In rejecting claim 4, which depends from claim 1 discussed above,
over Bergersen, Phan, and Farrell, the Examiner cited Bergersen and Chishti
I for the disclosures discussed above, and cited Farrell as evidence of the
obviousness of including on Bergersen’s device the leash tab recited in claim
4. Non-Final Act 15—16.
Appellant contends only that “Farrell fails to cure the deficiencies of
Bergersen and Chishti I” discussed above as to claim 1. Appeal Br. 22.
As discussed above, however, Appellant does not persuade us that the
teachings of Bergersen and Chishti I are deficient as to claim 1. Because
Appellant therefore does not identify, nor do we discern, error as to the
Examiner’s rejection of claim 4 over Bergersen, Chishti I, and Farrell, we
affirm the Examiner’s rejection of that claim over those references.
OBVIOUSNESS—
BERGERSEN, CHISHTI I, AND FARRELL 3
In rejecting claim 5, which depends from claim 1 discussed above,
over Bergersen, Chishti I, and Farrell 3, the Examiner cited Bergersen and
Chishti I for the disclosures discussed above, and cited Farrell 3 as evidence
of the obviousness of including in Bergersen’s device the air passages
recited in claim 5. Non-Final Act 16.
17
Appeal 2016-005184
Application 12/277,191
Appellant contends only that “Farrell 3 fails to cure the deficiencies of
Bergersen and Chishti I” discussed above as to claim 1. Appeal Br. 23.
As discussed above, however, Appellant does not persuade us that the
teachings of Bergersen and Chishti I are deficient as to claim 1. Because
Appellant therefore does not identify, nor do we discern, error as to the
Examiner’s rejection of claim 5 over Bergersen, Chishti I, and Farrell 3, we
affirm the Examiner’s rejection of those claims over those references.
OBVIOUSNESS—
BERGERSEN, CHISHT I, PHAN, AND CHISHTI II
The Examiner’s Prima Facie Case
In rejecting claims 43, 49—52, and 58 over Bergersen, Chishti I, Phan,
and Chishti II, the Examiner relied on the combination of Bergersen and
Chishti I, discussed above in relation to claim 1, as teaching all of the
features of the system recited in independent claim 43, except for the
requirement for the claimed system to comprise “a set of patient wearable
appliances shaped to resiliently reposition a patient’s teeth from a first
arrangement to a second arrangement during a stage of treatment.” Non-
Final Act. 18.
To address that deficiency, the Examiner cited Phan as evidence that it
would have been obvious to “modify the system of Bergersen/Chishti I to
include Phan's treatment planning with treatment steps, and multiple
appliances with teeth positioning cavities.” Id. at 19. The Examiner
reasoned that “such modification would provide for more efficient and
controlled orthodontic treatment, and provide improved force application
and flexibility of the device and treatment and additionally would merely
involve a duplication of parts which has been held to be within the skill of
18
Appeal 2016-005184
Application 12/277,191
the ordinary artisan.” Id. at 19—20. The Examiner cited Chishti II as further
evidence of the obviousness of using multiple appliances with teeth-
repositioning cavities in orthodontic systems. See id. at 19 (citing Chishti II,
3:45-50).
Analysis
Appellant does not persuade us that a preponderance of the evidence
fails to support the Examiner’s prima facie case of obviousness as to claim
43. To the contrary, we agree with the Examiner’s findings of fact and
ultimate conclusion of obviousness, and adopt them as our own.
Appellant reiterates the arguments, discussed above, that the cited
combination of references does not teach or suggest a system having an
occlusal pad with the protective functionality required by claim 43. Appeal
Br. 23—24. For the reasons discussed above as to the combination of
Bergersen and Chishti I, as well as the combination of Bergersen and Phan,
we do not find these arguments persuasive.
Accordingly, we affirm the Examiner’s rejection of claim 43 over
Bergersen, Chishti I, Phan, and Chishti II. Claims 49—52 were not argued
separately and therefore fall with claim 43. 37 C.F.R. § 41.37(c)(l)(iv).
As to claim 58, Appellant reiterates the arguments advanced as to
claim 56, discussed above, that the cited references, in particular Chishti I,
do not teach or suggest an occlusal pad with middle layers that are softer
than the inner and outer layers. Appeal Br. 24—25. For the reasons
discussed above as to the same limitation in claim 56, we do not find these
arguments persuasive. We therefore affirm the Examiner’s rejection of
claim 58 over Bergersen, Chishti I, Phan, and Chishti II.
19
Appeal 2016-005184
Application 12/277,191
OBVIOUSNESS—
BERGERSEN, CHISHT I, PHAN, AND FARRELL 3
In rejecting claim 53, which depends from claim 43 discussed above,
over Bergersen, Chishti I, Phan, and Farrell 3, the Examiner cited Bergersen,
Chishti I, and Phan for the disclosures discussed above, and cited Farrell 3 as
evidence of the obviousness of including in Bergersen’s device the air
passages recited in claim 53. Non-Final Act 21.
Appellant contends only that “Farrell 3 fails to cure the deficiencies of
Bergersen, Chishti I, and Phan” discussed above as to claim 43. Appeal Br.
25.
As discussed above, however, Appellant does not persuade us that the
teachings of Bergersen, Chishti I, and Phan are deficient as to claim 43.
Because Appellant therefore does not identify, nor do we discern, error as to
the Examiner’s rejection of claim 53 over Bergersen, Chishti I, Phan and
Farrell 3, we affirm the Examiner’s rejection of that claim over those
references.
SUMMARY
For the reasons discussed, we affirm each of the Examiner’s
rejections.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
20