Permatooth Inc.

Patent Trials and Appeals Board

Apr 1, 2022

2021005138 (P.T.A.B. Apr. 1, 2022)

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. 14/353,794 04/24/2014 Erik Siegmund 87807-1US/KRS 9865 23529 7590 04/01/2022 ADE & COMPANY INC. 2157 Henderson Highway WINNIPEG, MANITOBA R2G1P9 CANADA EXAMINER FOLGMANN, DREW S ART UNIT PAPER NUMBER 3772 NOTIFICATION DATE DELIVERY MODE 04/01/2022 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): djones@adeco.com uspto@adeco.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ERIK SIEGMUND ____________ Appeal 2021-005138 Application 14/353,794 Technology Center 3700 ____________ Before JENNIFER D. BAHR, STEFAN STAICOVICI, and CHARLES N. GREENHUT, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE. Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision in the Final Office Action (dated June 5, 2020, hereinafter “Final Act.”) rejecting claims 1, 25, 49, 53, 58-62, 64-68, and 71-76.2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Preferred Dental Implant Corp. is identified as the real parties in interest in Appellant’s Appeal Brief (filed Feb. 5, 2021, hereinafter “Appeal Br.”). Appeal Br. 1. 2 Claims 2-24, 26-48, 50-52, 54-57, 63, 69, and 70 are canceled. Appeal Br. 18-20 (Claims App.). Appeal 2021-005138 Application 14/353,794 2 SUMMARY OF DECISION We REVERSE. INVENTION Appellant’s invention is directed to a “mounting system for supporting an abutment on a dental implant.” Spec. 2, ll. 32-33. Claims 1, 49, and 73 are independent. Claim 1 is illustrative of the claimed invention and reads as follows: 1. A dental implant abutment mounting system for supporting an abutment on a dental implant, the system comprising: a transmucosal collar comprising a lower portion configured to engage an upper end of the dental implant, a cylindrical upper portion having external threading thereon, and an axial bore passing fully through the transmucosal collar from an upper end of the upper portion to a lower end of the lower portion; a fixation screw comprising an externally threaded shaft for threaded engagement into the implant via the axial bore of the transmucosal collar to secure the transmucosal collar to the implant; a mounting head having a threaded blind-hole extending thereinto from a bottom end thereof and an upper portion located above the bottom end, the threaded blind-hole being configured to thread onto the cylindrical upper portion of the transmucosal collar to position a closed end of the blind hole over the upper end of the upper portion of the transmucosal collar when threaded thereonto; and an abutment member attachable to the upper portion of the mounting head; wherein the mounting head comprises a first piece made of a first material and a second piece made of a different second material; the first piece defines the threaded-blind hole for engagement to the transmucosal collar; the second piece defines the upper portion of the mounting head, including an uppermost Appeal 2021-005138 Application 14/353,794 3 surface of the mounting head that is occupied by said different second material and resides furthest from the bottom end of the mounting head in an orientation facing away therefrom; the second piece is rotationally locked to the first piece for rotation therewith as a singular unit during threaded engagement of the first piece with the cylindrical upper portion of the transmucosal collar]; and both the second piece of the mounting head and the abutment member are castable to the first piece of the mounting head. Appeal Br. 17-18 (Claims App.). REJECTIONS I. The Examiner rejects claims 1, 49, 60, and 66 under 35 U.S.C. § 103(a) as being unpatentable over Siegmund3 and Hurson.4 II. The Examiner rejects claims 25 and 53 under 35 U.S.C. § 103(a) as being unpatentable over Siegmund, Hurson, and Worthington.5 III. The Examiner rejects claims 58, 59, 64, and 65 under 35 U.S.C. § 103(a) as being unpatentable over Siegmund, Hurson, and Hale.6 3 Siegmund, US 5,571,015, issued Nov. 5, 1996. 4 Hurson, US 2004/0241610 Al, published Dec. 2, 2004. 5 Worthington, US 2010/0112520 Al, published May 6, 2010. 6 Hale et al., US 8,845,959 B2, issued Sept. 30, 2014. Appeal 2021-005138 Application 14/353,794 4 IV. The Examiner rejects claims 61, 62, 67, and 68 under 35 U.S.C. § 103(a) as being unpatentable over Siegmund, Hurson, and Carlton.7,8 V. The Examiner rejects claims 71-76 under 35 U.S.C. § 103(a) as being unpatentable over Siegmund, Hurson, and Bostrom.9,10 ANALYSIS Rejection I Claims 1 and 60 The Examiner finds that Siegmund discloses a dental implant abutment mounting system including, inter alia, transmucosal collar 14, fixation bolt 20, mounting base 16, and abutment member 38. See Final Act. 2-3 (citing Siegmund, Fig. 2). The Examiner further finds that Siegmund fails to disclose that mounting base 16 includes “a first piece made of a first material and a second piece made of a different second material” such that “the second piece defines the upper portion of the mounting head, including an uppermost surface of the mounting head that is occupied by said different second material and resides furthest from the bottom end of the mounting head in an orientation facing away therefrom,” as recited in independent claim 1. Id. at 3-4. Nonetheless, the Examiner finds that Hurson discloses a 7 Carlton, US 2007/0298374 Al, published Dec. 27, 2007. 8 We consider the inclusion of claims 73-76 in the heading of this rejection a typographical error because these claims are not discussed in the body of the rejection. See Final Act. 6-7. 9 Bostrom, US 3,732,621, issued May 15, 1973. 10 We consider the omission of claims 73-76 in the heading of this rejection a typographical error because these claims are discussed in the body of the rejection. See Final Act. 7-13. Appeal 2021-005138 Application 14/353,794 5 dental implant with a mounting head having a first piece 16 (collar) made from a first material (titanium alloy) and a second piece made from a second material (ceramic coating), wherein the second piece (ceramic coating) covers upper portion 35 of first piece 16 (collar). Id. at 4 (citing Hurson paras. 43, 48, Figs. 1A, 1B). Thus, the Examiner concludes that it would have been obvious for a person of ordinary skill in the art “to modify Siegmund, by requiring a second piece made of a different second material, as taught by Hurson, for the purpose of having a different material be on the exterior surface to present a different interaction with the gingiva to increase biocompatibility.” Id. Appellant argues that because the purpose of Hurson’s ceramic covering is “‘to promote, enhance or maintain soft-tissue attachment’” or to “‘change[] the color of the collar 16,’” a skilled artisan would not modify “Siegmund’s mounting head 16 to apply Hurson’s coating to the mounting head’s uppermost surface 26” because such a modification “would render Hurson’s coating entirely inoperable for its intended purpose.” Appeal Br. 9 (quoting Hurson para. 48), 13 (italics and underlining omitted). According to Appellant, the Examiner’s modification is similar to Hurson’s situation where abutment 38 is affixed to collar 16 after ceramic coating has been applied to upper portion 35 of collar 16. See Appeal Br. 12, 13 (“Clearly the same result would occur if one were to apply Hurson’s coating to the ‘uppermost surface’ of Siegmund’s mounting head.”). In such a situation, Appellant contends that “the coating becomes subsequently covered by the affixed abutment, thus rendering the coating functionally obsolete for its intended purpose of either promoting soft-tissue attachment or simulating the white color of a tooth.” Id. at 12 (italics and underlining omitted). Appeal 2021-005138 Application 14/353,794 6 The Examiner responds that because in “Siegmund the uppermost surface of the mounting head (16) is shown to be disposed in gingival soft tissue (50) and Hurson explicitly discloses that the coating of a second material can be used to ‘promote, enhance or maintain soft-tissue attachment’,” a skilled artisan would provide Hurson’s coating as a “second material” to the uppermost surface of Siegmund’s mounting head. Examiner’s Answer (dated May 13, 2021, hereinafter “Ans.”) 15. According to the Examiner, a person “of ordinary skill would realize such coating could be used on all soft-tissue contacting surfaces as the recognized effect [in Hurson] is for soft tissue treatment interaction.” Id. at 16. We do not agree with the Examiner’s position because Appellant is correct that “[t]he uppermost surface 26 of the mounting head 16 [of Siegmund] is not disposed in the gingival soft tissue 50, but rather is disposed at a slightly raised elevation out of the gingival soft tissue 50.” Reply Brief (filed July 13, 2021, hereinafter “Reply Br.”) 2 (emphasis added). To better understand, we reproduce below Appellant’s annotated Figure 2 of Siegmund: Appeal 2021-005138 Application 14/353,794 7 Appellant’s annotated Figure 2 of Siegmund illustrates an offset between uppermost surface 26 of mounting head 16 (uppermost surface elevation) and uppermost surface of gingival tissue 50 (gumline elevation). Id. Furthermore, Appellant is correct that “uppermost surface 26 must remain exposed and unencumbered by the soft gingival tissue” so that a dentist can make an imprint of mounting head 16 in order to install an abutment or a prosthetic device. Id. at 3 (citing Siegmund, col. 5, ll. 36-67). We agree with Appellant that: The Examiner’s proposed modification of Siegmund to apply Hurson’s coating to the uppermost surface 26 of Siegmund’s mounting head 16 to “promote, enhance or maintain soft-tissue attachment” is therefore entirely contradictory and defeatist to Siegmund’s explicit teaching that the uppermost surface 26 of the mounting head must remain exposed and accessible to facilitate an imprint of the installed mounting head, and subsequent removal of the mounting head when placing an abutment for the intended prosthetic. Reply Br. 3 (italics and underlining omitted). Consequently, Siegmund’s uppermost surface 26 of mounting head 16 is not disposed in gingival soft tissue 50. Therefore, the Examiner’s reasoning to modify Siegmund’s mounting head 16 to apply Hurson’s coating to the mounting head’s uppermost surface 26 “to ‘promote, enhance or maintain soft-tissue attachment’” (see Ans. 15) lacks rational underpinnings, and, as such, the Examiner’s conclusion of obviousness is not adequately supported by the Examiner’s findings. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (the examiner has the initial duty of supplying the requisite factual basis and may not, because of doubts that the invention is patentable, resort to Appeal 2021-005138 Application 14/353,794 8 speculation, unfounded assumptions, or hindsight reconstruction to supply deficiencies in the factual basis). In conclusion, for the foregoing reasons, we do not sustain the rejection under 35 U.S.C. § 103(a) of independent claim 1, and its dependent claim 60, as unpatentable over Siegmund and Hurson. Claims 49 and 66 Independent claim 49 recites, inter alia, [a] dental implant mounting head . . . comprising a first piece composed of a first material . . . and a second piece comprising a different second material . . . and the outer surfaces presented by the different second material of said second piece include an uppermost surface of the mounting head that is occupied by said different second material and resides furthest from the bottom end of the mounting head in an orientation facing away therefrom. Appeal Br. 18 (Claims App.). The Examiner employs the same combination of Siegmund and Hurson to disclose the above noted limitation. See Final Act. 2-5. In response, Appellant relies on the same arguments discussed supra in the rejection of independent claim 1. See Appeal Br. 15-16 (“Accordingly, for the same reasons set forth above in relation to independent Claim 1, Examiner's rejection of Claim 49 should be overturned.”). Therefore, for the same reasons discussed above, we do not sustain the rejection of independent claim 49, and its dependent claim 66, as unpatentable over the combined teachings of Siegmund and Hurson. Appeal 2021-005138 Application 14/353,794 9 Rejections II-IV The Examiner’s use of the Worthington, Hale, and Carlton disclosures does not remedy the deficiency of the Siegmund and Hurson combination discussed supra in the rejection of independent claims 1 and 49. See Final Act. 5-7. Therefore, for the same reasons discussed above, we do not sustain Rejections II-IV. Rejection V Claims 71, 72, and 76 The Examiner’s use of the Bostrom disclosure does not remedy the deficiency of the Siegmund and Hurson combination discussed supra in the rejection of independent claims 1 and 49. See Final Act. 7-9. Therefore, for the same reasons discussed above, we do not sustain the rejection under 35 U.S.C. § 103(a) of claims 71, 72, and 76 as unpatentable over Siegmund, Hurson, and Bostrom. Claims 73-75 Independent claim 73 recites, inter alia, [a] dental implant abutment mounting system . . . comprising . . . a mounting head . . . wherein the mounting head comprises a first piece made of a first material and a second piece made of a different second material . . . and a topside of the upper portion of the mounting head . . . is formed of said second material and defines an uppermost apex of the mounting head situated furthest from, and facing away from, said bottom end of the mounting head. Appeal Br. 18 (Claims App.). The Examiner employs the same combination of Siegmund and Hurson discussed supra to disclose the above noted Appeal 2021-005138 Application 14/353,794 10 limitation. See Final Act. 9-12. In response, Appellant relies on the same arguments discussed above in the rejection of independent claims 1 and 49. See Appeal Br. 16 (“Therefore, for the same reasons set forth above in relation to independent Claims 1 and 49, the Examiner's obviousness rejection of Claim 73 should be overturned.”). Accordingly, for the same reasons discussed above in the rejection of claims 1 and 49, and because the Examiner does not employ the disclosure of Bostrom to rectify the deficiency of the Siegmund and Hurson combination (see Final Act. 13), we do not sustain the rejection under 35 U.S.C. § 103(a) of independent claim 73, and its dependent claims 74 and 75, as unpatentable over Siegmund, Hurson, and Bostrom. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 49, 60, 66 103(a) Siegmund, Hurson 1, 49, 60, 66 25, 53 103(a) Siegmund, Hurson, Worthington 25, 53 58, 59, 64, 65 103(a) Siegmund, Hurson, Hale 58, 59, 64, 65 61, 62, 67, 68 103(a) Siegmund, Hurson, Carlton 61, 62, 67, 68 71-76 103(a) Siegmund, Hurson, Bostrom 71-76 Overall Outcome 1, 25, 49, 53, 58-62, 64-68, 71-76 Appeal 2021-005138 Application 14/353,794 11 REVERSED