15367543 - (D) (P.T.A.B. Jun. 1, 2020)

Craig Andreiko

Patent Trials and Appeals BoardJun 1, 2020

15367543 - (D) (P.T.A.B. Jun. 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. 15/367,543 12/02/2016 Craig A. Andreiko ORM 273DV 4837 83571 7590 06/01/2020 Wood, Herron & Evans, LLP (Sybron) 441 Vine Street 2700 Carew Tower Cincinnati, OH 45202 EXAMINER EIDE, HEIDI MARIE ART UNIT PAPER NUMBER 3772 NOTIFICATION DATE DELIVERY MODE 06/01/2020 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): ABilton@whe-law.com usptodock@whe-law.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte CRAIG A. ANDREIKO _________________ Appeal 2019-006085 Application 15/367,543 Technology Center 3700 __________________ Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and BRADLEY B. BAYAT, Administrative Patent Judges. BAYAT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Craig A. Andreiko (Appellant)1 appeals under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1–12 and 15–21, which constitute all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies “Ormco Corporation” as the real party in interest. Appeal Br. 2. Appeal 2019-006085 Application 15/367,543 2 CLAIMED SUBJECT MATTER “The invention relates generally to the field of orthodontics and, more particularly, to computer-automated development of an orthodontic treatment plan and appliance.” Spec. ¶ 2. Independent claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A computer-implemented method to identify an orthodontic treatment plan applicable to teeth of a human patient, the method comprising: displaying a three dimensional perspective representation of the teeth of the patient on a computer screen to a user; receiving from the user a selection of an element of the orthodontic treatment plan; displaying a graphical representation of at least one direction of movement of the element, the graphical representation presented in a three-dimensional perspective consistent with the three dimensional perspective representation of the one or more teeth; receiving from the user an adjustment of the selected element of the orthodontic treatment plan along one of the plural possible directions of movement; and moving at least one tooth of the teeth of the patient to a new position on the display corresponding to the adjustment. REFERENCES AND REJECTIONS ON APPEAL2 I. Claims 1–4, 6–10, and 15–21 are rejected under Pre-AIA 35 U.S.C. § 103(a) as unpatentable over Rubbert3 and Abolfathi.4 2 The Examiner withdrew the rejection under 35 U.S.C. § 101. See Ans. 3. 3 Rubbert et al., US 2004/0073417 A1, pub. Apr. 15, 2004. 4 Abolfathi, US 2005/0208449 A1, pub. Sept. 22, 2005. Appeal 2019-006085 Application 15/367,543 3 II. Claims 1–4, 6–10, and 15–21 are rejected under Pre-AIA 35 U.S.C. § 103(a) as unpatentable over Rubbert and Chishti.5 III. Claim 5 is rejected under Pre-AIA 35 U.S.C. § 103(a) as unpatentable over Rubbert, Abolfathi, and Chapoulaud.6 IV. Claim 5 is rejected under Pre-AIA 35 U.S.C. § 103(a) as unpatentable over Rubbert, Abolfathi, and Sachdeva.7 V. Claims 11–12 are rejected under Pre-AIA 35 U.S.C. § 103(a) as unpatentable over Rubbert, Abolfathi, and Davis.8 VI. Claim 5 is rejected under Pre-AIA 35 U.S.C. § 103(a) as unpatentable over Rubbert, Chishti, and Chapoulaud. VII. Claim 5 is rejected under Pre-AIA 35 U.S.C. § 103(a) as unpatentable over Rubbert, Chishti, and Sachdeva. VIII. Claims 11–12 are rejected under Pre-AIA 35 U.S.C. § 103(a) as unpatentable over Rubbert, Chishti, and Davis. OPINION As set forth below, pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new ground of rejection of claims 1–12 and 15–21 under pre-AIA 35 U.S.C. § 112, second paragraph, as being indefinite. In light of this new rejection, it would be premature to reach the merits of the rejections under 35 U.S.C. § 103(a) at this time. 5 Chishti et al., US 6,406,292 B1, iss. June 18, 2002. 6 Chapoulaud et al., US 2002/0025503 A1, pub. Feb. 28, 2002. 7 Sachdeva et al., US 2004/0029068 A1, pub. Feb. 12, 2004. 8 Davis et al., US 2005/0244791 A1, pub. Nov. 3, 2005. Appeal 2019-006085 Application 15/367,543 4 Before a proper review of the rejections under § 103(a) can be made, the subject matter encompassed by the claims on appeal must be reasonably understood without resort to speculation. Because the claims fail to satisfy the requirements under 35 U.S.C. § 112, second paragraph, we are constrained to reverse, pro forma, the Examiner’s rejections under 35 U.S.C. § 103(a). See In re Steele, 305 F.2d 859, 862 (CCPA 1962) (A prior art rejection cannot be sustained if the hypothetical person of ordinary skill in the art would have to make speculative assumptions concerning the meaning of claim language). It should be understood that our decision to reverse the rejections of claims 1–12 and 15–21 under 35 U.S.C. § 103(a) is based solely on the indefiniteness of the claims, and does not reflect on the merits of the underlying rejections. New Ground of Rejection––Indefiniteness In determining whether a claim is definite under 35 U.S.C. § 112, second paragraph, “[t]he USPTO, in examining an application, is obliged to test the claims for reasonable precision.” In re Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014). “[A] claim is indefinite when it contains words or phrases whose meaning is unclear.” Id. at 1322; Ex parte McAward, No. 2015-006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential) (quoting In re Packard, 751 F.3d at 1314). The USPTO “determines the scope of claims . . . not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction ‘in light of the specification as it would be interpreted by one of ordinary skill in the art.’” Phillips v. A WH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (quoting In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Appeal 2019-006085 Application 15/367,543 5 Cir. 2004)). During examination, an applicant must “clearly and precisely set out the metes and bounds of the claimed [subject matter].” See Ex parte Miyazaki, 89 USPQ2d 1207, 1211–13 (BPAI 2008) (precedential) (holding that “if a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite.”). Here, independent claim 1 recites a “computer-implemented method to identify an orthodontic treatment plan applicable to teeth of a human patient.” See claim 1 supra. The step of “displaying a graphical representation of at least one direction of movement of the element, the graphical representation presented in a three-dimensional perspective consistent with the three dimensional perspective representation of the one or more teeth,” as recited in claim 1, appears central to Appellant’s arguments against the art rejections (see Appeal Br. 4–9; see also Reply Br. 1–3). Prior to performing that step, “a selection of an element of the orthodontic treatment plan” is received from the user; it is based on this selection that “a graphical representation of at least one direction of movement of the element” (emphasis added) is displayed. From our review of the record, it is unclear whether the term “element” is referring to a control point on a curve or a tooth. We initially note that the term “element” is neither defined nor discussed in Appellant’s written disclosure. However, the dependent claims specify that “the selected element of the orthodontic treatment plan is a control point on a curve.” Appeal Br. 10, 15; Claim App. Appellant’s Appeal 2019-006085 Application 15/367,543 6 written disclosure mentions control points only in paragraphs 64–71, which describe adjustments of the smile arc (Spec., Figs. 1–3) and mantrough curve (Spec., Figs. 4–6). For example, in the embodiment showing the adjustment of the smile arc, the smile arc 52 in the software contains several control points 54 located between the anchor points 56; these “control points 54 allow the user to adjust the smile arc 52 by moving the control points 54 in a vertical direction. As the control points 54 are moved the front four upper teeth move as well following the adjustments to the smile arc 52.” Spec. ¶ 65; see also Figs. 1–3. But, a direction of movement of the control points is not graphically displayed, as required by claim 1. Rather, the text under the term “Help” provides: “Click and drag one of the center control points to modify that curve.” See Spec., Figs. 1–3. Similarly, in the embodiment showing the adjustment of the mantrough, a direction of movement of control point 67 is not graphically displayed; instead, the text under “Help” directs the user: “To change the shape of the mantrough curve, click and drag the green control points.” See id., Figs. 4–6. As such, the embodiments that describe an element as a control point on a curve do not display a graphical representation of a direction of movement of the selected element, as required by claim 1. In support of the claimed subject matter, Appellant directs us to Figures 14–23 and paragraphs 77–78 of the Specification. Appeal Br. 2. As seen in Figs. 14 through 23, the teeth are presented in a three-dimensional perspective representation, and upon the selection of a tooth or teeth, a three dimensional perspective representation of six degrees of freedom of movement is presented upon the selected tooth/teeth, with each degree of freedom represented by a graphical direction of adjustment. Appeal 2019-006085 Application 15/367,543 7 Id. (emphasis added). According to Appellant, “[a]n advantage of the claimed invention is that tooth movement functionality is available at any time by double clicking on a tooth.” Id. at 3. If we interpret the “element” of claim 1 as a tooth, as argued by Appellant, the remaining claims, which define the element as “a control point on a curve” would be rendered indefinite. The language of the claims include substantial ambiguity regarding the scope of the claims as one of ordinary skill in the art would not understand precisely what “element” is claimed. Such ambiguity is not permitted, and renders the claim indefinite, because a person of ordinary skill in the art would be unable to determine the metes and bounds of the claim so as to understand how to avoid infringement. See Morton Int’l, Inc. v. Cardinal Chem. Co., 5 F.3d 1464, 1470 (Fed. Cir. 1993). Section 112 places the burden of precise claim drafting on applicants. See Packard, 751 F.3d at 1313 (“Given the role of the applicant in the process, it is a reasonable implementation of the examination responsibility, as applied to § 112[, second paragraph], for the USPTO, upon providing the applicant a well-grounded identification of clarity problems, to demand persuasive responses on pain of rejection.”). Independent claim 19 suffers from the same ambiguity. Accordingly, we enter a New Ground of Rejection of independent claims 1 and 19 as indefinite under 35 U.S.C. § 112, second paragraph, including claims 2–12, 15–18, 20, and 21 dependent thereon. Appeal 2019-006085 Application 15/367,543 8 DECISION The Examiner’s rejections I–VIII under 35 U.S.C. § 103(a) are reversed pro forma. A NEW GROUND OF REJECTION is entered for claims 1–12 and 15–21 as indefinite under 35 U.S.C. § 112, second paragraph. Section 41.50(b) provides that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Thus, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, Appellant must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the newly rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner; or (2) Request rehearing. Request that the proceeding be reheard under §41.52 by the Board upon the same record. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 1–4, 6– 10,15–21 103(a) Rubbert, Abolfathi 1–4, 6– 10,15–21 1–4, 6– 10,15–21 103(a) Rubbert, Chishti 1–4, 6– 10,15–21 5 103(a) Rubbert, Abolfathi, Chapoulaud 5 Appeal 2019-006085 Application 15/367,543 9 5 103(a) Rubbert, Abolfathi, Sachdeva 5 11, 12 103(a) Rubbert, Abolfathi, Davis 11, 12 5 103(a) Rubbert, Chishti, Chapoulaud 5 5 103(a) Rubbert, Chishti, Sachdeva 5 11, 12 103(a) Rubbert, Chishti, Davis 11, 12 1–12, 15–21 112, second paragraph Indefiniteness 1–12, 15– 21 Overall Outcome 1–12, 15–21 1–12, 15– 21 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). REVERSED; 37 C.F.R. § 41.50(b)