12384538 - (D) (P.T.A.B. Jan. 8, 2020)

Butscher, Werner et al.

Patent Trials and Appeals BoardJan 8, 2020

12384538 - (D) (P.T.A.B. Jan. 8, 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. 12/384,538 04/06/2009 Werner Butscher 01-036-H 4515 20306 7590 01/08/2020 MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP 300 S. WACKER DRIVE 32ND FLOOR CHICAGO, IL 60606 EXAMINER PATEL, YOGESH P ART UNIT PAPER NUMBER 3772 MAIL DATE DELIVERY MODE 01/08/2020 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WERNER BUTSCHER, FRIEDRICH RIEMEIER, RUDGER RUBBERT, THOMAS WEISE, and ROHIT SACHDEVA Appeal 2018-003926 Application 12/384,538 Technology Center 3700 BEFORE MICHAEL J. FITZPATRICK, MICHELLE R. OSINSKI, and JEREMY M. PLENZLER, Administrative Patent Judges. PLENZLER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–14. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held on December 5, 2019.2 We REVERSE and enter a NEW GROUND OF REJECTION in accordance with 37 C.F.R. § 41.50(b). 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as OraMetrix, Inc. Appeal Br. 1. 2 A transcript is included in the record. Appeal 2018-003926 Application 12/384,538 2 CLAIMED SUBJECT MATTER The claims are directed to an orthodontic archwire. Claim 1, reproduced below with emphasis added, is illustrative of the claimed subject matter: 1. A manufactured orthodontic archwire, comprising: a wire, wherein the wire is customized for a particular patient; wherein the wire, in a relaxed state, has a generally arcuate configuration corresponding to an archform for the particular patient to receive the wire; wherein the wire comprises a series of straight segments having precision lengths, each of the straight segments (a) designated for placement into a slot of a particular bracket bonded to a tooth of the particular patient and (b) capable of sliding along the bracket slot as needed; and wherein the straight segments adjacent to each other are inter-connected by a connecting segment, wherein each connecting segment has a curved shape, comprising bends and/or twists, customized for the particular patient; wherein each connecting segment forms a precision geometrical relationship in three dimensions between adjacent straight segments of the wire. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Brader US 3,593,421 July 20, 1971 Schudy US 3,916,526 Nov. 4, 1975 Miura US 5,017,133 May 21, 1991 Lemchen US 6,056,545 May 2, 2000 White US 6,431,861 B1 Aug. 13, 2002 REJECTIONS Claims 1, 2, 3, 4, 7, 9, and 12 are rejected under 35 U.S.C. § 102(b) as being anticipated by Brader. Appeal 2018-003926 Application 12/384,538 3 Claims 5, 6, 8 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Brader and White. Claims 5, 6, and 13 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Brader and Miura. Claims 10 and 11 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Brader and Lemchen. Claim 14 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Brader and Schudy. OPINION Claim 1 is the sole independent claim on appeal, and requires a “wire compris[ing] a series of straight segments having precision lengths” that are each “inter-connected by a connecting segment” that “forms a precision geometrical relationship in three dimensions between adjacent straight segments of the wire.” That is, the claim requires “precision lengths” and “a precision geometrical relationship.” The Examiner finds that Brader discloses these “precision” features, without discussing what structure the term “precision” adds to the claim. Non-Final Act. 3; see also Ans. 7–8 (the Examiner appears to imply that the term “precision” does not add any structure to the claim). Appellant’s main dispute concerns whether Brader teaches that “each connecting segment forms a precision geometrical relationship in three dimensions between adjacent straight segments of the wire” as recited in claim 1. Appeal Br. 2–7. Appellant never explains what structure is required by the limitation. Appellant contends, for example, that [t]he archwire of claim 1 has the precise geometrical relationship because once the wire is inserted onto the patient dentition, under some tension the forces of the wire will act on Appeal 2018-003926 Application 12/384,538 4 the teeth/brackets to move the teeth and the wire can be customized and robotically manufactured based on any arbitrary bracket location between adjacent teeth (id. at 5), but does not explain what structure is required by the “precise geometrical relationship.” Similarly, when attempting to distinguish the recited arrangement from Brader, Appellant “disagrees that Brader is capable of forming ‘a precision geometrical relationship in three dimensions between adjacent straight segments of the wire’” (id. at 6 (emphasis omitted)), again, without explaining what structure is missing from Brader. Appellant does not identify, nor do we find, anything in the Specification that provides clarification on the structure required by the term “precision” (whether applied to the “length” or the “geometrical relationship” recited in claim 1). At oral hearing, Appellant acknowledged that “if you have a wire that has some given length, it may or may not be a precision length” because “[i]t depends on whether that length has been designed into the wire intentionally in the process.” Tr. 7:11–14. Appellant acknowledged that to know if something meets the claim, “you would have to investigate how is this wire designed and manufactured” and “if you were looking at a wire, you wanted to know if it was precise or not or bended, has a precision length, you would investigate the design of that wire, just like you’d want to know the design of the bends and twists, how has that been designed.” Tr. 8:3–5, 12–16. Appellant also acknowledged that “just looking at it without getting any information about the wire, other than having a wire in front of you, you probably couldn’t tell” if it meets the claim because “[y]ou would have to know more about how that wire was designed and manufactured.” Tr. 9:12–17. That is, Appellant contends that Appeal 2018-003926 Application 12/384,538 5 some unspecified feature, dependent on what the designer was thinking, is required by the claim. Based on the record before us, we determine that the term “precision” adds an unacceptable level of ambiguity into the claim because we are unable to determine what structure is required for the “precision length” or “precision geometrical relationship” recited in claim 1. Rather than guess or render the term “precision” essentially meaningless, we determine that the most appropriate course of action is to enter a new ground of rejection under 35 U.S.C. § 112, second paragraph. See In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014) (per curiam) (A claim is properly rejected as indefinite if, after applying the broadest reasonable interpretation in light of the specification, the metes and bounds of a claim are not clear because the claim contains words or phrases whose meaning is unclear.); see also Ex parte McAward, Appeal No. 2015-006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential) (adopting the approach for assessing indefiniteness approved by the Federal Circuit in Packard). Because we determine the claims to be indefinite, and addressing the term “precision” would require speculation on our part, we do not reach the merits of the anticipation and obviousness rejections. Instead, we reverse those rejections pro forma. See In re Aoyama, 656 F.3d 1293, 1300 (Fed. Cir. 2011) (holding that the Board erred in affirming an anticipation rejection of indefinite claims); In re Steele, 305 F.2d 859, 862 (CCPA 1962) (holding that the Board erred in affirming a rejection of indefinite claims under 35 U.S.C. § 103(a), because the rejection was based on speculative assumptions as to the meaning of the claims). Appeal 2018-003926 Application 12/384,538 6 CONCLUSION The Examiner’s rejections are reversed. For the reasons stated above, a new ground of rejection is entered for claims 1–14 under 35 U.S.C. § 112, second paragraph. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 1, 2, 3, 4, 7, 9, 12 102(b) Brader 1, 2, 3, 4, 7, 9, 12 5, 6, 8 103(a) Brader, White 5, 6, 8 5, 6, 13 103(a) Brader, Miura 5, 6, 13 10, 11 103(a) Brader, Lemchen 10, 11 14 103(a) Brader, Schudy 14 1–14 112, ¶ 2 Indefiniteness 1–14 Overall Outcome 1–14 1–14 TIME PERIOD FOR RESPONSE Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or Appeal 2018-003926 Application 12/384,538 7 both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. 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). REVERSED; 37 C.F.R. § 41.50(b)