BIOMET 3I, LLC

Patent Trials and Appeals Board

Jun 25, 2020

15170190 - (D) (P.T.A.B. Jun. 25, 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.
15/170,190 06/01/2016 Zachary B. Suttin 5394.C88US1 7989
104326 7590 06/25/2020
Schwegman Lundberg & Woessner / Zimmer
P.O. Box 2938
Minneapolis, MN 55402
EXAMINER
FOLGMANN, DREW S
ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
06/25/2020 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):
SLW@blackhillsip.com
USPTO@slwip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ZACHARY B. SUTTIN and STEPHEN S. PORTER
____________________

Appeal 2019-006804
Application 15/170,190
Technology Center 3700
____________________

Before BIBHU R. MOHANTY, PHILIP J. HOFFMANN, and
CYNTHIA L. MURPHY, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s rejection of claims 1–16 and 21–23. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
According to Appellant, the “disclosure relates to using a robotic
system to (i) automatically perform a variety of dental procedures and/or (ii)
monitor a manually performed dental procedure, thereby generating

1 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
“BIOMET 3I, LLC.” Appeal Br. 3.
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positional data . . . usable in creating a modified three-dimensional model for
use in developing a final and/or temporary dental prosthesis.” Spec. ¶ 2.
Claims 1, 8, and 21 are the independent claims on appeal. Below, we
reproduce independent claim 1 as illustrative of the appealed claims.
1. A robotic system for use during a dental surgical
procedure including installation of a dental implant in a mouth
of a patient, the robotic system comprising:
a base;
a grounding arm having a first end and a second end, the
first end of the grounding arm being coupled to the base, the
second end of the grounding arm being configured to be
coupled to a fixed structure within the mouth of the patient for
establishing an origin for the robotic system relative to the
mouth of the patient, the second end of the grounding arm
having at least six degrees of freedom relative to the base;
a working arm having a first end and a second end, the
first end of the working arm extending from the base, the
second end of the working arm being configured to be coupled
with one or more tools for use during the dental surgical
procedure, a portion of the working arm having at least six
degrees of freedom relative to the base and being moveable to
(i) form an opening in bone within the mouth of the patient and
(ii) install the dental implant in the formed opening; and
one or more sensors to monitor positions of the
grounding arm and the working arm relative to the origin, the
one or more sensors generating positional data that is used to
create a post-operative virtual three-dimensional implant level
model of at least a portion of the mouth of the patient, the post-
operative virtual model including a virtual dental implant that
corresponds to a location and orientation of the dental implant
in the mouth of the patient, and the post-operative virtual model
is created without scanning.
Appeal 2019-006804
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REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows:
I. Claims 1–16 and 21–23 under 35 U.S.C. § 103 as unpatentable
over Mushabac’0952, Mushabac’3913, Akeel4, and Choi5; and
II. Claims 1–16 and 21–23, provisionally, on the ground of non-
statutory double patenting as unpatentable over claims 16–32 of copending
Application no. 14/932,156.
ANALYSIS
Rejection I—Obviousness rejection of claims 1–16 and 21–23
Initially, we note that in the Final Office Action6, the Examiner rejects
each of pending claims 1–16 and 21–23—that is, 19 claims total—together.
More particularly, without reference to any specific claim numbers, first the
Examiner lists all of the recitations of claims 1–16 and 21–23 which,
according to the Examiner, Mushabac’095 discloses. Final Action 2–4. This
single paragraph spans more than a page and a half. Id. Then, without
reference to any specific claim numbers, the Examiner lists all of the
recitations of claims 1–16 and 21–23 that Mushabac’095 does not disclose.
Id. at 4–5. This single paragraph spans more than a page. Thereafter,
without reference to any specific claim numbers, the Examiner lists
recitations that Mushabac’391 discloses, and reasons that it would have been
obvious to modify Mushabac’095 based on Mushabac’391. Id. at 5.

2 Mushabac, US 2002/0133095 A1, published Sept. 19, 2002
(“Mushabac’095”).
3 Mushabac, US 5,343,391, issued Aug. 30, 1994 (“Mushabac’391”).
4 Akeel et al., US 2015/0057675 A1, published Feb. 26, 2015 (“Akeel”).
5 Choi et al., US 2014/0178832 A1, published June 26, 2014 (“Choi”).
6 Our discussion is equally applicable to the Examiner’s statements in the
Answer. See Answer 3–10.
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Application 15/170,190
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Similarly, the Examiner lists all of the recitations of claims 1–16
and 21–23 that Mushabac’095 modified by Mushabac’391 does not disclose.
Id. at 5–6. This single paragraph is more than a page in total length. Then,
the Examiner lists all of the claim recitations that Akeel discloses (in a single
paragraph), and provides reasons it would have been obvious to modify
Mushabac’095 and on Mushabac’391 based on Akeel (in a single
paragraph). Id. at 6–8. Again, the Examiner does not identify any claim by
number.
Likewise, the Examiner lists all of the recitations of claims 1–16
and 21–23 that Mushabac’095 modified by Mushabac’391 and Akeel does
not disclose, in a single paragraph that does not reference any claim by
number. Id. at 8. Next, the Examiner lists all of the claim recitations that
Choi discloses, and provides reasons it would have been obvious to modify
Mushabac’095, Mushabac’391, and Akeel based on Choi. Id. 8–9. Again,
the Examiner does not identify any claim by number. As such, we are
unable to evaluate the viability of the Examiner’s rejection.
Also, the Examiner seems to erroneously relies on Mushabac’095
(see, e.g., Answer 3–5) to disclose at least the below-discussed recitation of
independent claim 1. As set forth above, independent claim 1 recites, in
relevant part, a robotic system for use during a dental surgical procedure
including installation of a dental implant in a mouth of a patient, the robotic
system comprising
a base:
a grounding arm having a first end and a second end, the
first end of the grounding arm being coupled to the base, the
second end of the grounding arm being configured to be
coupled to a fixed structure within the mouth of the patient for
establishing an origin for the robotic system relative to the
mouth of the patient . . . ;
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a working arm having a first end and a second end, the
first end of the working arm extending from the base, the
second end of the working arm being configured to be coupled
with one or more tools for use during the dental surgical
procedure . . . ; and
one or more sensors to monitor positions of the
grounding arm and the working arm relative to the origin.
Appeal Br., Claims App. (emphases added).
According to the Examiner, Mushabac’095’s multipods 46 and 48
disclose the claimed grounding arm and working arm, respectively.
Answer 3–4. Mushabac’095 discloses that each multipod 46 and 48
includes U-shaped bracket 24. Mushabac’095, Figs. 1, 2; ¶¶ 22, 28. The
Examiner relies on multipod 46’s U-shaped bracket 24 to disclose the
claimed fixed structure with which the grounding arm establishes an origin.
Answer 3–4. According to Appellant, the Examiner errs because
Mushabac’095 does not disclose that one or more sensors monitor positions
of multipods 46 and 48 relative to an origin that multipod 46 establishes—
i.e., multipod 46’s U-shaped bracket 24. Appeal Br. 11–12. Based on our
review of the record, we agree with Appellant.
The Examiner relies on Mushabac’095’s paragraph 13 to disclose this
claim recitation. Answer 4. This portion of Mushabac’095 discloses, in full:
A dental instrument assembly comprises, in accordance
with the present invention, a first frame, a second frame, a
plurality of telescoping members each connected at one end to
the first frame and at an opposite end to the second frame, a
plurality of linear transducers each operatively coupled to a
respective one of the telescoping members for generating a
signal indicative of a degree of extension of the respective one
of the telescoping members, a generally U-shaped bracket
connected to the first frame for mounting the first frame to a
row of teeth in a patient’s mouth, and a dental instrument or
probe mounted to the second frame.
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Mushabac’095. It is not clear to us that, here, Mushabac’095 discloses
monitoring a position of either multipod 46 or 48 relative to its own U-
shaped bracket, let alone monitoring positions of both multipods 46 and 48
relative to one of the U-shaped brackets—i.e., claim 1’s recitation of “one or
more sensors to monitor positions of the grounding arm and the working arm
relative to the origin [established by the grounding arm].”
Each of independent claims 8 and 21 includes a similar recitation, and
each of claims 2–7, 9–16, 22, and 23 depend from one of independent
claims 1, 8, and 21. Appeal Br., Claims App. Thus, the Examiner errs in
relying on Mushabac’095 to disclose the discussed claim recitations present
in each of the pending claims.
Rejection II—Provisional double-patenting rejection
We do not reach the Examiner’s provisional double-patenting
rejection. See Ex parte Moncla, 95 USPQ2d 1884 (BPAI 2010)
(precedential).
CONCLUSION
We REVERSE the Examiner’s obviousness rejection of claims 1–16
and 21–23.

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In summary:
Claims
Rejected
35 U.S.C. § Basis/Reference(s) Affirmed Reversed
1–16, 21–23 103 Mushabac’095,
Mushabac’391, Akeel,
Choi
1–16, 21–23
REVERSED