Biomet 3i, LLC

Patent Trials and Appeals Board

Aug 21, 2020

14932156 - (D) (P.T.A.B. Aug. 21, 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.
14/932,156 11/04/2015 Zachary B. Suttin 5394.C87US1 4757
104326 7590 08/21/2020
Schwegman Lundberg & Woessner / Zimmer
P.O. Box 2938
Minneapolis, MN 55402
EXAMINER
FOLGMANN, DREW S
ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
08/21/2020 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 2019-006264
Application 14/932,156
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 17–32. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies “BIOMET 3I, LLC,” as the real party
in interest. Appeal Br. 3.
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According to Appellant, the “disclosure relates to using a robotic
system to . . . automatically perform a variety of dental procedures
and/or . . . monitor a manually performed dental procedure, thereby
generating positional data of the robotic system that is usable in creating a
modified three-dimensional model.” Spec. ¶ 2. Claims 17, 29, and 30 are
the independent claims on appeal. Below, we reproduce claim 17 as
illustrative of the appealed claims.
17. A method of creating a post-operative virtual
model of at least a portion of a mouth of a patient, the mouth
including a dental implant installed using a robotic system
during a dental surgical procedure, the method comprising:
attaching a rigid grounding member to a fixed position
within the mouth of the patient;
obtaining a pre-operative virtual model of the mouth of
the patient with the rigid grounding member therein;
coupling a grounding arm of the robotic system to the
rigid grounding member in the mouth of the patient, thereby
establishing an origin for the mouth of the patient;
moving, as part of the dental surgical procedure, at least a
portion of a working arm of the robotic system coupled to a
dental-implant-driving tool to install the dental implant in the
mouth of the patient;
monitoring, during the dental surgical procedure, a
position of the grounding arm and the working arm to generate
positional data related to the location of the dental-implant-
driving tool relative to the established origin; and
creating, without scanning, a post-operative virtual model
of the at least a portion of the mouth of the patient based on the
obtained pre-operative virtual model and the generated
positional data, 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.
Appeal Br., Claims App.
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REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows:
I. Claims 17–28 under 35 U.S.C. § 112(b) as indefinite;
II. Claims 17–22, 24–26, and 29–32 under 35 U.S.C. § 103 as
unpatentable over Mushabac (US 2002/0133095 A1, published
Sept. 19, 2002) (“Mushabac’095”), Akeel et al.
(US 2015/0057675 A1, published Feb. 26, 2015) (“Akeel”),
and Choi et al. (US 2014/0178832 A1, published June 26,
2014) (“Choi”);2
III. Claim 23 under 35 U.S.C. § 103 as unpatentable over
Mushabac’095, Akeel, Choi, and Berckmans, III, et al.
(US 2009/0263764 A1, published Oct. 22, 2009)
(“Berckmans”);
IV. Claim 27 under 35 U.S.C. § 103 as unpatentable over
Mushabac’095, Akeel, Choi, and Kamer
(US 2010/0137881 A1, published June 3, 2010); and
V. Claim 28 under 35 U.S.C. § 103 as unpatentable over
Mushabac’095, Akeel, Choi, Kamer, and Mushabac
(US 4,182,312, issued Jan.8, 1980) (“Mushabac’312”).
ANALYSIS
Rejection I—Indefiniteness rejection of claims 17–28
The Examiner rejects independent claim 17 as indefinite. Answer 3.
Specifically, the Examiner states that claim 17’s
preamble . . . is indefinite. The preamble recites ‘a method of
creating a post-operative virtual model’ but comprises steps ‘as

2 Here, we combine two rejections from the Final Office Action.
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part of the dental surgical procedure’ and ‘during the dental
surgical procedure.’ Furthermore, it is unclear if the method is
directed to a surgical procedure or modeling. Therefore, it is
unclear what is encompassed therein.
Id. We disagree with the Examiner, however, and agree with Appellant that
the claim is definite. Appeal Br. 9–10. In particular, we agree with
Appellant that the claim is clear in reciting a “‘method of creating a post-
operative virtual model’ [that] includes the [recited] surgical steps.” Id.
Consequently, we do not sustain claim 17’s indefiniteness rejection.
The Examiner rejects dependent claim 263 as indefinite, stating that
“the limitation ‘wherein the origin for the mouth is a single origin’ is
indefinite. It is unclear what is encompassed therein.” Answer 15.
Appellant argues that the claim is definite, as it recites that “the origin (i.e.,
the reference point) defined in claim 17 [(from which claim 26 depends)] is
further define[d] as a single origin or point of reference compared to having
multiple reference points within the mouth.” Appeal Br. 10. Conversely, the
Examiner provides no reasoning in either the Final Office Action or the
Answer, and thus the Examiner does not support adequately that claim 26 is
indefinite. See Final Action 2; see Answer 3, 15. Therefore, we do not
sustain claim 26’s indefiniteness rejection.
The Examiner rejects dependent claim 28 as indefinite, stating that
this claim “recites the limitation ‘the ground probe.’ There is insufficient
antecedent basis for this limitation in the claim. For examination purposes
the limitation is construed to be dependent from claim 27 rather than

3 We note that the Examiner corrects the error in identifying the claim
number from the Final Office Action. See Final Action 2; see, e.g.,
Answer 15.
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claim 26.” Answer 3. Appellant does not argue against the indefiniteness
rejection. However, the Claims Appendix that Appellant filed with the
Appeal Brief indicates that claim 28 depends from claim 27, such that
claim 28 does not appear to lack antecedent basis.
Based on our review of the prosecution history, it appears that on
April 25, 2018, Appellant filed an Amendment adding new claim 28
depending from claim 26, such that claim 28’s recitation “the grounding
probed” did not have antecedent basis. Amendment filed April 25, 2018, 3–
4. On December 7, 2018, after the Examiner issued a Final Office Action,
Appellant filed an Amendment changing the dependency of claim 28 from
claim 26 to claim 27. See Amendment file December 7, 2018, 4. In an
Advisory Action mailed January 28, 2019, however, the Examiner expressly
indicates that the amendment is not entered, because “[t]he change in
dependency of claim 28 requires further search and consideration.”
Advisory Action 1. Thus, Appellant improperly indicates in the Appeal
Brief’s Claim Appendix that claim 28 depends from claim 27.
Consequently, we sustain the Examiner’s indefiniteness rejection of
claim 28.
Also, Appellant also does not address the Examiner’s second reason
for determining that claim 28 is indefinite—because “the limitation ‘biased
outward away from a second central axis of the grounding probe’ is
indefinite. It is unclear what is encompassed therein.” Answer 3.
Appellant’s failure to address the Examiner’s determination provides a
further basis for our sustaining claim 28’s indefiniteness rejection.

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Rejection II—Obviousness rejection of claims 17–22, 24–26,
and 29–32
Independent claim 17 and its dependent claims 18–22
and 24–26
Independent claim 17 recites, in relevant part,
[a] method of creating a post-operative virtual model of
at least a portion of a mouth of a patient, the mouth including a
dental implant installed using a robotic system during a dental
surgical procedure, the method comprising . . .
monitoring, during the dental surgical procedure, a
position of the grounding arm and the working arm to generate
positional data related to the location of the dental-implant-
driving tool relative to the established origin; and
creating, without scanning, a post-operative virtual model
of the at least a portion of the mouth of the patient based on the
obtained pre-operative virtual model and the generated
positional data, 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.
Appeal Br., Claims App. Restated, claim 17 recites creating, without
scanning, the post-operative virtual model of a portion of the patient’s mouth
based on the pre-operative virtual model and the positional data that is
generated during the dental procedure.
Appellant argues that the Examiner’s obviousness rejection of
claim 17 is in error because no reference or combination of references
discloses creating the post-operative virtual model based on positional data
generated during the dental procedure. Appeal Br. 15–17. The Examiner
determines that although
Mushabac[’095]/Akeel discloses the invention
substantially as claimed including taking preoperative scans and
making a preoperative model . . . , they fail to disclose creating
without scanning, a post-operative virtual model of the at least a
portion of the mouth of the patient based on the obtained pre-
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operative virtual model and the generated positional data, 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.
Id. at 7. Thus, the Examiner appears to rely on Choi to disclose this
recitation. See Final Action 8.
In the Appeal Brief, Appellant argue that “Choi, on the other hand,
creates a virtual treatment plan including virtual implants before any
drilling/implanting of the actual patient has occurred and creates a surgical
drilling guide”—i.e., Choi does not disclose creating, without scanning, the
post-operative virtual model of a portion of the patient’s mouth based on the
pre-operative virtual model and the positional data that is generated during
the dental procedure, as claim 17 recites. Appeal Br. 16. In response, the
Examiner states that this argument is unpersuasive because “Appellant’s
arguments [are] against the references individually,” and that
Appellant has failed to address the combination of
Mushabac/Akeel and Choi. The language of ‘combine any pre-
operative models with generated positional data’ is not
consistent with claim terminology as currently presented. Choi
was only relied upon to teach generating a post-operative model
based on pre-operative data. Choi discloses a system for
producing a model . . . based on pre-obtained scan/3d image
data (pre-operative models) . . . which allows to place virtual
implant in the patients mouth . . . and would thus produce a
post-operative model based on pre-operative model data.
Therefore, Appellant’s argument is not found to be persuasive
and the grounds of rejection is upheld.
Answer 19–20 (citations omitted). It is not clear from this portion, or any
other portion of the record, however, why it would have been obvious to
create, without scanning, the post-operative virtual model of a portion of the
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patient’s mouth based on the pre-operative virtual model and the positional
data that is generated during the dental procedure.
Consequently, we do not sustain the Examiner’s obviousness rejection
of independent claim 17, or of claims 18–22 and 24–26 that depend from,
and the Examiner rejects with, claim 17. Further, each of independent
claims 29 and 30 recites a similar recitation as that discussed above.
Therefore, we do not sustain the Examiner’s obviousness rejection of
independent claims 29 and 30, or of claims 31 and 32 that depend from
claim 30, for the same reasons we do not sustain claim 17’s rejection.
Rejections III–V—Obviousness rejections of claims 23, 27, and 28
Claims 23, 27, and 28 depend from independent claim 17. Above, we
reverse claim 17’s obviousness rejection. Inasmuch as the Examiner does
not rely on Berckmans, Kamer, or Muchabac’312 to disclose anything that
would remedy the above deficiency in claim 17’s rejection, we do not
sustain any of the Examiner’s obviousness rejections of claims 23, 27,
and 28.
CONCLUSION
We AFFIRM the Examiner’s indefiniteness rejection of claim 28.
We REVERSE the Examiner’s indefiniteness rejection of claims 17–
27.
We REVERSE the Examiner’s obviousness rejection of each of the
claims.

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In summary:

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.
§ 41.50(f).
AFFIRMED IN PART

Claims
Rejected
35 U.S.C. § Basis/Reference(s) Affirmed Reversed
17–28 112(b) Indefiniteness 28 17–27
17–22, 24–
26, 29–32
103 Mushabac’095, Akeel,
Choi
17–22, 24–
26, 29–32
23 103 Mushabac’095, Akeel,
Choi, Berckmans
23
27 103 Mushabac’095, Akeel,
Choi, Kamer
27
28 103 Mushabac’095, Akeel,
Choi, Kamer,
Mushabac’312
28
Overall
Outcome:
28 17–27, 29–32