Hall, Jan

Patent Trials and Appeals Board

Apr 1, 2020

10582919 - (D) (P.T.A.B. Apr. 1, 2020)

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

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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

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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

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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

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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