Hall, JanDownload PDFPatent Trials and Appeals BoardApr 1, 202010582919 - (D) (P.T.A.B. Apr. 1, 2020) Copy Citation 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. 10/582,919 04/12/2007 Jan Hall NOBELB.243NP 9222 20995 7590 04/01/2020 KNOBBE MARTENS OLSON & BEAR LLP 2040 MAIN STREET FOURTEENTH FLOOR IRVINE, CA 92614 EXAMINER MAI, HAO D ART UNIT PAPER NUMBER 3772 NOTIFICATION DATE DELIVERY MODE 04/01/2020 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): efiling@knobbe.com jayna.cartee@knobbe.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAN HALL Appeal 2018-001269 Application 10/582,919 Technology Center 3700 Before LISA M. GUIJT, BRADLEY B. BAYAT, and PAUL J. KORNICZKY, Administrative Patent Judges. KORNICZKY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2018-001269 Application 10/582,919 2 STATEMENT OF THE CASE1 Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 15, 17–19, 23, 24, and 26–36.3 See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held on October 22, 2019. We AFFIRM. CLAIMED SUBJECT MATTER The claimed subject matter relates to a method for placing a dental implant. Claim 15, the only independent claim on appeal, is reproduced below with added emphasis: 15. A method of placing a dental implant, the method comprising: providing an implant having an upper portion comprising at least one groove which extends in a closed track around a periphery of the implant and which extends substantially in a cross sectional plane at right angle to a longitudinal axis of the implant, said at least one groove having a cup-shaped cross section and having a depth of between about 50–100 μm and having a width of between about 70–160 μm, the implant further comprising an outer thread by which the implant can be screwed into a hole formed in jaw bone of a patient; installing the implant into the jaw bone of the patient; and 1 In this Decision, we refer to (1) the Examiner’s Final Office Action dated February 23, 2017 (“Final Act.”) and Answer dated September 26, 2017 (“Ans.”), and (2) Appellant’s Appeal Brief dated July 12, 2017 (“Appeal Br.”) and Reply Brief dated November 20, 2017 (“Reply Br.”). 2 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 Nobel Biocare Services AG, the Assignee of record. Appeal Br. 1. 3 Claims 1–14, 16, 20–22, and 25 are cancelled. Appeal Br. 9–10 (Claims App.). Appeal 2018-001269 Application 10/582,919 3 positioning the upper portion of the implant against an upper edge of the jaw bone. REFERENCES In rejecting the claims on appeal, the Examiner relied upon the following prior art: Name Reference Date Niznick Bergman Fukuyo Ricci Cottrell US 4,431,416 US 4,723,913 US 5,108,289 US 6,419,491 B1 US 2003/0104338 A1 Feb. 14, 1984 Feb. 9, 1988 Apr. 28, 1992 July 16, 2002 June 5, 2003 REJECTIONS The Examiner made the following rejections: 1. Claims 15, 17, 19, 26–29, and 30–36 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Bergman, Niznick, and Ricci. 2. Claim 18 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Bergman, Niznick, Ricci, and Cottrell. 3. Claims 23 and 24 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Bergman, Niznick, Ricci, and Fukuyo. Appellant seeks our review of these rejections. Appeal 2018-001269 Application 10/582,919 4 DISCUSSION Rejection 1: Claims 15, 17, 19, 26–29, and 30-36 as Unpatentable over Bergman, Niznick, and Ricci Appellant argues claims 15, 17, 19, 26–29, and 30-36 as a group. Appeal Br. 5–7. We select independent claim 15 as the representative claim, and claims 17, 19, 26–29, and 30-36 stand or fall with claim 15. 37 C.F.R. § 41.37(c)(1)(iv) (2019). The Examiner finds that the combined teachings of Bergman, Niznick, and Ricci disclose all of the limitations in claim 15. In particular, the Examiner finds that “Bergman discloses each groove 14 has a depth of about 10–120 microns and a width of about 10–100 microns . . . , which overlap the claimed ranges of the groove's depth of 50–100 microns and width of 70–160 microns.” Final Act. 2–3 (citing Bergman, Abstract; 1:61– 64; 2:47–48); see also Ans. 5–6. The Examiner reasons that the claimed range would have been obvious to one having ordinary skill in art because “discovering an optimum or workable ranges is well within the skill of an artisan via routine experimentation in order to improve upon what is already generally known.” Final Act. 3 (citing MPEP § 2144.05); Ans. 6. The Examiner relies on Ricci for its disclosure of a groove having “a cup-shaped cross section” as recited in claim 15. Final Act. 3 (citing Ricci, Figs. 7–14); Ans. 6. The Examiner reasons that it would have been obvious “to make Bergman’s grooves having a cross section with such claimed shapes or transition parts in the form of bevels (column 4 lines 42-50) in order to optimize osseointegration as explicitly taught by Ricci.” Final Act. 4; Ans. 6. Appeal 2018-001269 Application 10/582,919 5 Appellant argues that the Examiner’s rejection is erroneous for several reasons. First, Appellant argues that “Ricci teaches away from a groove ‘having a cup-shaped cross section and having a depth of between about 50– 100 μm and having a width of between about 70–160 μm,’ as recited in Claim 15.” Appeal Br. 6; see Reply Br. 2–3. Appellant argues that, in contrast to these claimed ranges, “Ricci teaches grooves ‘each having a fixed or established width in a range of about 2.0 to about 25 microns (micrometers) and a fixed or established depth in a range of about 2 to about 25 microns,’” and that “Ricci criticizes ranges . . . above or substantially smaller than” these cited ranges. Appeal Br. 5–6 (citing Ricci 4:27–49). Second, Appellant argues that “even if . . . Ricci were combined with Bergman, at most, the combination would result in an implant comprising a cup-shaped groove having a width in a range of about 2 to about 25 microns and depth in the range of about 2 to about 25 microns.” Appeal Br. 6. Appellant’s arguments are not persuasive because Appellant is attacking the teachings of Ricci individually. Nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Here, the Examiner finds that Bergman, not Ricci, discloses a groove having a depth of 50–100 microns and width of 70–160 microns, as recited in claim 15, and the Examiner’s reasoning that it is well within the skill of an artisan via routine experimentation to optimize the size of the groove’s width and depth. Final Act. 3; Ans. 5–6. Appellant also does not explain why Ricci teaches away from using Ricci’s cup-shaped cross section in the proposed combination. Appeal 2018-001269 Application 10/582,919 6 Because Appellant does not address the rejection as articulated by the Examiner, Appellant does not identify error in the Examiner’s rejection. For the reasons above, the rejection of claim 15 is sustained. Claims 17, 19, 26–29, and 30–36 stand with claim 15. Rejection 2: Claim 18 as Unpatentable over Bergman, Niznick, Ricci, and Cottrell Appellant argues that the rejection of claim 18 “is improper for at least the reasons set forth for Claim 15, and because of the additional features recited therein,” and the Examiner “has not identified any teaching from Cottrell that satisfies the deficiencies of Bergman, Niznick, and Ricci.” Appeal Br. 7. As discussed above, the rejection of claim 15 is sustained and there are no deficiencies in the combination of Bergman, Niznick, and Ricci. Thus, the rejection of claim 18 is also sustained. Rejection 3: Claims 23 and 24 as Unpatentable over Bergman, Niznick, Ricci, and Fukuyo Appellant argues that the rejection of claim 23 and 24 “is improper for at least the reasons set forth for Claim 15, and because of the additional features recited therein,” and the Examiner “has not identified any teaching from Fukuyo that satisfies the deficiencies of Bergman, Niznick, and Ricci.” Appeal Br. 7. As discussed above, the rejection of claim 15 is sustained and there are no deficiencies in the combination of Bergman, Niznick, and Ricci. Thus, the rejection of claims 23 and 24 is also sustained. Appeal 2018-001269 Application 10/582,919 7 CONCLUSION The Examiner’s rejections are AFFIRMED. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 15, 17, 19, 26–29, 30– 36 103(a) Bergman, Niznick, Ricci 15, 17, 19, 26–29, 30– 36 18 103(a) Bergman, Niznick, Ricci, Cottrell 18 23, 24 103(a) Bergman, Niznick, Ricci, Fukuyo 23, 24 Overall Outcome: 15, 17–19, 23, 24, 26– 29, 30–36 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). AFFIRMED Copy with citationCopy as parenthetical citation