Ex Parte Patel

Patent Trial and Appeal Board

Jan 29, 2016

12739140 (P.T.A.B. Jan. 29, 2016)

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.
12/739,140 04/21/2010 Vishnu Jagdishbhai Patel P030-4010 8344
48162 7590 01/29/2016
The Patel Law Firm, P.C.
22952 Mill Creek Drive, Suite A
Laguna Hills, CA 92653-1214
EXAMINER
SAUNDERS, MATTHEW P
ART UNIT PAPER NUMBER
3732
MAIL DATE DELIVERY MODE
01/29/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte VISHNU JAGDISHBHAI PATEL
____________________

Appeal 2013-009399
Application 12/739,140
Technology Center 3700
____________________

Before JENNIFER D. BAHR, LINDA E. HORNER, and
BRANDON J. WARNER, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Vishnu Jagdishbhai Patel (Appellant) appeals under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 1–20. Appeal Br. 1. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A five segment orthodontic arch wire to provide a track for
movement of teeth for correcting misalignment of teeth, said
arch wire generally having ‘U’ shape and same longitudinal
axis throughout the length, said arch wire comprising:
a first segment for a posterior, 2nd premolar and molar
region in left side of a jaw having a rectangular cross section;
a second segment followed by said first segment for a
canine and first premolar region in left side of the jaw having a
modified rectangular cross section with rounded off corners;
a third segment followed by said second segment for an
anterior, incisor region having a rectangular cross section;
a fourth segment followed by said third segment for the
canine and 1st premolar region in right side of the jaw having a
modified rectangular cross section with rounded off corners;
and
a fifth segment followed by said fourth segment for the
posterior, 2nd premolar and molar region in right side of the jaw
having a rectangular cross section, wherein said arch wire is a
single piece and continuous in construction.

REJECTIONS
I. Claims 3, 19, and 20 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement.
II. Claims 7 and 14 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
III. Claims 1–9 and 12–20 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Kelly (US 6,095,809, iss. Aug. 1, 2000),
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Orikasa (US 5,259,760, iss. Nov. 9, 1993), and Hill (US
2007/0172788 A1, pub. July 26, 2007).
IV. Claim 10 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Kelly, Orikasa, Hill, and Wittman (US
3,504,438, iss. Apr. 7, 1970).
V. Claim 11 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Kelly, Orikasa, Hill, and Andreasen (US
4,037,324, iss. July 26, 1977).

OPINION
Rejections I and II — Written Description and Indefiniteness
Appellant does not present any substantive arguments contesting the
Examiner’s rejections of claims 3, 19, and 20 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement, or
of claims 7 and 14 under 35 U.S.C. § 112, second paragraph, as being
indefinite. See Appeal Br. 5–19; Reply Br. 6–16. Consequently, Appellant
has waived any argument of error, and we summarily sustain the rejection of
claims 3, 19, and 20 under 35 U.S.C. § 112, first paragraph, and the rejection
of claims 7 and 14 under 35 U.S.C. § 112, second paragraph. See In re
Berger, 279 F.3d 975, 984, 985 (Fed. Cir. 2002) (holding that the Board did
not err in sustaining a rejection under 35 U.S.C. § 112, second paragraph,
when the applicant failed to contest the rejection on appeal); see also 37
C.F.R. § 41.31(c) (2015) (“An appeal, when taken, is presumed to be taken
from the rejection of all claims under rejection unless cancelled by an
amendment filed by the applicant and entered by the Office.”).

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Rejection III – Obviousness based on Kelly, Orikasa, and Hill
Appellant relies on the same arguments for patentability of
independent claim 1 in contesting the rejection of independent claims 12 and
19. Appeal Br. 11–12, 19. Appellant does not assert any separate arguments
for patentability of dependent claims 2–9, 13–18, and 20 apart from their
dependence directly or indirectly from one of claims 1, 12, and 19. Id. We
select claim 1 as representative, with claims 2–9 and 12–20 standing or
falling therewith. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner found that Kelly discloses a U-shaped orthodontic arch
wire having multiple segments, but that “Kelly fails to explicitly disclose
wherein the arch wire has five segments with two segments for a posterior
second premolar and molar regions, two segments for a canine and first
premolar region, and a single segment for an anterior incisor region.” Final
Act. 4–5; see Kelly, Fig. 11. However, the Examiner found that
[t]hese parameters are deemed matters of design choice, well
within the skill of the ordinary artisan, obtained through routine
experimentation in determining optimum results. As an
example[,] Orikasa discloses an orthodontic arch wire having
five segments (Fig. 3, with a single front segment 102, two side
segments 104’s, and two rear/anchor segments 106’s) for
applying varying corrective forces to the segments.
Id. at 5; see also Orikasa, Fig. 10. The Examiner clarifies, in the Answer,
that “[b]oth Kelly and Orikasa disclose that the different cross section exact
lengths and locations are capable of being modified by patient needs” and
that it would have been obvious to a person having ordinary skill in the art of
orthodontics where to locate segments with different properties “as obtained
through routine experimentation in determining optimum results” for a
patient. Ans. 3. In particular, the Examiner points out that Kelly discloses
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an arch wire having less resistance in certain sections and teaches “using
more segments depending upon a patient[’]s need.” Id. at 2 (citing Kelly,
col. 11, ll. 12–14, 45–54). According to the Examiner, this establishes “that
it was known in the art to place various segments with various
characteristics over different sections of an orthodontic patient[’]s teeth
depending upon [the] specific patient[’]s need.” Id.
The Examiner also found that Kelly fails to disclose a rectangular first
front section, and relies on Orikasa for teaching this feature. Final Act. 5
(citing Orikasa, Figs. 10, 11). The Examiner determined that it would have
been obvious to modify the front arch wire segment of Kelly to have a
rectangular cross section as taught by Orikasa “for the purpose of providing
reliable direction control to the front teeth as taught by Orikasa (Column 5
lines 13-16).” Id.
The Examiner further found that the combination of Kelly and
Orikasa does not disclose that the second and fourth segments of the arch
wire have a modified rectangular cross section with rounded off corners.
Final Act. 6. However, the Examiner found that Hill teaches an arch wire
having such a cross section “to allow for reduced resistance to sliding
movement of orthodontic brackets along the arch wire (abstract) and
orthodontic brackets having a shape and size that properly fit the arch wire
(Fig. 5).” Id. (citing Hill, Fig. 3, element 10; para. 39). The Examiner
determined that it would have been obvious to one of ordinary skill in the art
at the time of invention to combine the rounded off corner cross section of
Hill with a segment of the arch wire from the combination of Kelly and
Orikasa
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since the elements could have been combined in a single arch
wire through known metal forming techniques with the
combined elements merely performing the same functions as
they did separately and it had been taught in Hill that an arch
wire could have various cross sectional shapes from one portion
of an arch wire to another.
Id. (citing Hill, para. 37).
Appellant argues that the combination of Kelly, Orikasa, and Hill does
not teach or suggest second and fourth segments for canine and first
premolar regions having a modified rectangular cross section with rounded
off corners. Appeal Br. 6. In particular, Appellant asserts that “Orikasa
does discuss an arch wire having five segments which are positioned
adjacent the patient’s front teeth, bicuspids and molars, respectively,” but
“Orikasa does not disclose the same parameters obtained through
experimentation in determining optimum results.” Appeal Br. 9.
Appellant’s argument is not persuasive because it mischaracterizes the
Examiner’s rejection. As the Examiner explains, Orikasa was used in the
rejection “as an example that it was known to those in the art to use five
segments.” Ans. 3. Orikasa was not used for its specific teachings as to the
particular cross sections used in each of those five sections. Appellant’s
argument does not specifically address the Examiner’s reasoning that the
particular location of segments having different cross sections in an arch
wire is patient-dependent and would have been obvious to one of ordinary
skill in the art of orthodontics as obtained through routine experimentation.
See id. (explaining that the effects of different arch wire cross section
properties on teeth movement would be within the level of ordinary skill in
the art of orthodontics).
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Appellant also asserts that “Hill does not disclose [that the] ‘arch wire
could have various cross sectional shapes [including a rectangular cross
section] from one portion of an arch wire to another’ as alleged by the
Examiner in the final office action.” Appeal Br. 10–11. We do not find this
argument persuasive because Appellant essentially addresses Hill in
isolation, rather than considering the combined teachings of the cited
references. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures). The Examiner did not rely on Hill for teaching a rectangular
arch wire cross section, but, rather, relied on Orikasa for teaching this
feature. See Final Act. 5. The Examiner relied on Hill only for teaching a
modified rectangular cross section having rounded off corners to reduce
sliding resistance between an arch wire and an orthodontic bracket. Id. at 6
(citing Hill, Fig. 3, para. 39).
Appellant argues that the proposed combination of Kelly and Orikasa
is improper because the Examiner’s articulated reason for incorporating
Orikasa’s rectangular front section into the arch wire of Kelly lacks a
rational underpinning. Appeal Br. 13 (citing Final Act. 5). This argument is
misplaced, as the Examiner does provide articulated reasoning with rational
underpinnings to support the proposed combination of Kelly and Orikasa.
Specifically, the Examiner reasons that it would have been obvious to
modify the front segment of Kelly’s arch wire to have a rectangular cross
section, as taught by Orikasa “for the purpose of providing reliable direction
control to the front teeth.” Final Act. 5 (citing Orikasa, col. 5, ll. 13–16).
Orikasa specifically discloses that “an angular sectional shape at the front
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section 302 enables the arch wire 300 to provide reliable directional
correction of the front teeth.” Orikasa, col. 5, ll. 13–16. Thus, the
Examiner’s articulated reason for modifying the front segment of Kelly’s
arch wire to have a rectangular cross section, as taught by Orikasa, has
rational underpinnings.
Appellant also argues that modifying the front segment of Kelly’s
arch wire to have a solid rectangular cross section, as proposed by the
Examiner, would render Kelly unsatisfactory for its intended purpose and
change its principle of operation. Appeal Br. 12–14. In particular,
Appellant asserts that such a modification would increase the stiffness of the
front segment of the arch wire, which is contrary to the principle of
operation of Kelly’s arch wire. Id. at 14. We do not agree with Appellant,
as we find no evidence in the record before us that Kelly’s arch wire would
no longer operate satisfactorily if the front segment were modified to have a
rectangular cross section. Regardless of whether a solid rectangular cross
section would increase stiffness in the front segment of Kelly’s arch wire,
the arch wire would appear to serve the same purpose as before, using the
same principles of operation. Namely, the arch wire would continue to serve
as a track to guide the movement of brackets and associated teeth to desired
positions. See Kelly, col. 1, ll. 18–19. Thus, we do not agree with Appellant
that the proposed modification would render Kelly’s arch wire unsuitable for
its intended purpose or change its principle of operation.
Appellant contends that “Kelly teaches away from having a solid
rectangular cross-section at least in the front section as it would not enable a
smaller moment of inertia and thus a reduced stiffness unlike the recesses
32, 34, 36 which enable them.” Appeal Br. 14 (citing Kelly, col. 5, ll. 27–
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30). Appellant also asserts that “Hill teaches away from having any other
cross section shape other than curved surfaces along the arch wire” because
the reference discloses only cross sections having curved shapes. Reply Br.
12–13. We do not agree with Appellant.
A reference teaches away from a claimed invention or a proposed
modification if “a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant.” In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009) (citing In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). Prior art does not teach away
from claimed subject matter merely by disclosing a different solution to a
similar problem unless the prior art also criticizes, discredits or otherwise
discourages the solution claimed. See In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004).
Appellant does not point to, and we do not find, any disclosure in
Kelly or Hill criticizing, discrediting, or otherwise discouraging use of a
rectangular cross section in the front segment of an orthodontic arch
wire. Although Kelly recognizes that the recesses 32, 34, 36 allow for a
relatively low stiffness arch wire “suitable for use in earlier treatment stages
in comparison to a conventional rectangular archwire having a solid cross-
sectional construction” (col. 5, ll. 33–36), this disclosure merely explains the
advantage of a less stiff arch wire under certain circumstances (i.e., early
treatment stages). See also Kelly, col. 1, ll. 40–42 (describing that a higher
stiffness arch wire is often used in later treatment stages). Similarly, the fact
that Hill discloses a particular arch embodiment having only curved cross
sections does not constitute a teaching away from arch wires having other
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cross section shapes. Thus, we are not persuaded that Kelly or Hill teaches
away from the modification proposed by the Examiner.
Appellant further argues that the proposed combination of teachings
from Kelly, Orikasa, and Hill is improper because it is based on
impermissible hindsight and the Examiner’s articulated reasoning lacks
rational underpinnings. Appeal Br. 15–19. In particular, Appellant asserts
that “[b]ecause the reason articulated by the Examiner is not found in Hill,
Appellant respectfully submits that the reason lacks the rational
underpinning required to properly combine the references.” Id. at 18. This
argument is not convincing because it appears to insist upon an explicit
teaching, suggestion, or motivation in Hill to establish obviousness. The
Supreme Court has stated that a rigid insistence on teaching, suggestion, or
motivation is incompatible with its precedent concerning obviousness. KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). The Court noted that an
obviousness analysis “need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for [an examiner] can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.” Id. at 418. Instead, the relevant inquiry is whether
the Examiner has set forth “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) (citation omitted) (cited with approval in
KSR, 550 U.S. at 418).
Here, the Examiner reasoned that it would have been obvious to one
of ordinary skill in the art at the time of invention to modify the multi-
segment arch wire of Kelly and Orikasa to have a rectangular cross section
with rounded off corners as taught by Hill “since the elements could have
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been combined in a single arch wire through known metal forming
techniques with the combined elements merely performing the same
functions as they did separately.” Final Act. 6. We must look to “whether
the improvement is more than the predictable use of prior art elements
according to their established functions.” KSR, 550 U.S. at 417. Given that
the solid rectangular cross section segment of Orikasa and the rounded
corner rectangular cross section segment of Hill would perform the same
teeth-moving functions together in combination with Kelly’s multi-segment
arch wire as they did apart, one of ordinary skill in the orthodontic art would
be able to modify readily and predictably Kelly’s arch wire according to
patient need as proposed by the Examiner. We find no evidence in the
record before us that combining the teachings of Orikasa and Hill with
Kelly’s arch wire would be beyond the level of ordinary skill in the art. See
id. (“if a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill”). Moreover, Appellant does not
identify any knowledge relied upon by the Examiner that was gleaned only
from Appellant’s disclosure and that was not otherwise within the level of
ordinary skill at the time of the invention, thereby obviating Appellant’s
assertion of hindsight. See In re McLaughlin, 443 F.2d 1392 (CCPA 1971).
For the above reasons, Appellant’s arguments do not apprise us of
error in the Examiner’s determination that the subject matter of claim 1
would have been obvious. Accordingly, we sustain the rejection of claim 1,
and of claims 2–9 and 12–20 falling therewith, under 35 U.S.C. § 103(a) as
unpatentable over Kelly, Orikasa, and Hill.
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Rejections IV and V — Obviousness based on Kelly, Orikasa, Hill, and one
of Wittman and Andreasen
Appellant does not contest the rejections of claims 10 and 11. See
Appeal Br. 1, 5; Reply Br. 4–5. As such, we summarily sustain the rejection
of claim 10 as unpatentable over Kelly, Orikasa, Hill, and Wittman, and the
rejection of claim 11 as unpatentable over Kelly, Orikasa, Hill, and
Andreasen. See Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008)
(explaining that summary affirmance without consideration of the
substantive merits is appropriate where an appellant fails to contest a ground
of rejection); see also 37 C.F.R. § 41.31(c).

DECISION
The Examiner’s decision rejecting claims 1–20 is affirmed.
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

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