Ex Parte BABAYOFF et al

Patent Trial and Appeal Board

Mar 18, 2016

13082630 (P.T.A.B. Mar. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/082,630 04/08/2011 Noam BABAYOFF
107046 7590 03/22/2016
WSGR I Align Technology , Inc.
650 Page Mill Road
Palo Alto, CA 94304
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
22773-794.302 6453
EXAMINER
EIDE, HEIDI MARIE
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
03/22/2016 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):
patentdocket@wsgr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NOAM BABA YOPP, ELDAD TAUB, and
A VI KOPELMAN
Appeal2014-002398
Application 13/082,630
Technology Center 3700
Before LYNNE H. BROWNE, MICHELLE R. OSINSKI, and
MARK A. GEIER, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
STATEMENT OF THE CASE
Noam Babayoff et al. (Appellants) appeal under 35 U.S.C. § 134 from
the Examiner's decision rejecting claims 1-18. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to a dental imaging instrument having an air
stream auxiliary. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
Appeal2014-002398
Application 13/082,630
1. A dental instrument for determining three dimensional (3D)
topography of one or more teeth, said instrument including a
probe for scanning the one or more teeth so as to capture an
image of surfaces of the one or more teeth so that 3D topography
of the surfaces of the one or more teeth can be determined by
processing the image, and an auxiliary coupled to the probe so as
to direct only a stream of gas over the teeth surfaces, the auxiliary
being coupled to the probe such that gas hits the one or more
teeth while scanning to clear material from the teeth surfaces and
dry the teeth surfaces, so as to improve or enhance the quality of
the image.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hatakeyama
Franetzki
Kawamura
Rubbert
Durbin
us 4, 725,232
us 5,484,283
US 2001/0012605 Al
US 2002/0015934 Al
US 6,386,867B1
REJECTIONS
Feb. 16, 1988
Jan. 16, 1996
Aug. 9, 2001
Feb. 7,2002
May 14, 2002
I. Claims 1-3, 6-8, 10-12, 15, 17, and 18 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Kawamura and Rubbert.
II. Claims 5 and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kawamura, Rubbert, and Hatakeyama.
III. Claims 4, 9, and 13 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kawamura, Rubbert, and Franetzki.
IV. Claim 16 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kawamura, Rubbert, and Durbin.
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Application 13/082,630
V. Claims 1-18 stand rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claims
1-3, 6-8, 11, 12, and 16-18 of U.S. Patent No. 7,946,846.
VI. Claims 1-18 stand rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claims
1-3, 6-9, 11, and 16 of U.S. Patent No. 7,255,558.
DISCUSSION
Rejection I
Appellants rely on the arguments presented for independent claim 1
for independent claims 10 and 17. See Appeal Br. 12-13. Appellants do not
present separate arguments for dependent claims 2, 3, 6-8, 11, 12, 15, and
18. Id. at 13. We select claim 1 as the illustrative claim, and claims 2, 3, 6-
8, 10-12, 15, 17, and 18, stand or fall with claim 1.
The Examiner finds that the combined teachings of Kawamura and
Rubbert disclose or suggest all of the limitations of independent claim 1. In
particular, the Examiner finds that Kawamura "does not specifically teach
[that] the image is obtained by three-dimensional scanning and the 3D
topography of the surfaces of the teeth can be determined by processing the
image," but that "Rubbert teaches a dental instrument and method for
obtaining an image wherein the image is obtained by three dimensional
scanning and the 3D topography of the surfaces of the teeth can be
determined by processing the image (see pars. 174-175, 178, 184)." Final
Act. 3. Based on these findings, the Examiner determines it would have
been obvious "to modify the method of obtaining images taught by
Kawamura with the three dimensional method taught by Rubbert so as to
provide the user with a 3D image during use of the instrument." Id. at 4.
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Application 13/082,630
Arguing that the proposed combination "appears to be the result of
improper hindsight reconstruction as there is no rationale for one of ordinary
skill in the art to modify the 2D imaging device of Kawamura for 3D
imaging," Appellants contend that "there is no obvious benefit to the user for
utilizing 3D imaging with the oral cavity washer of Kawamura," because
"2D imaging is clearly sufficient for a simple verification of the washing
operation, whereas 3D imaging would increase the cost and complexity of
the device with no apparent improvement in function." Appeal Br. 9-10;
see also Reply Br. 7 (arguing that hindsight is the only plausible explanation
of the selection of Kawamura as the primary reference).
"Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it takes into
account only knowledge which was within the level of ordinary skill at the
time the claimed invention was made and does not include knowledge
gleaned only from applicant's disclosure, such a reconstruction is proper."
In reklcLaughlin, 443 F.2d 1392 1313-1314 (CCPA 1971). Appellants do
not identify where the rejection improperly relies on knowledge gleaned
from Appellants' Specification. Thus, Appellants fail to apprise us of error.
Furthermore, Appellants' argument is not responsive to the rejection,
because it does not address the reasons for the proposed combination
articulated by the Examiner. The Examiner reasons that the "user will
benefit by being provided with a 3D image such that the area of the mouth
that is being treated with the instrument will be more quickly and easily
recognized by the user than if a 2D image were provided [] to the user."
Final Act. 10. Appellants do not explain why this reasoning lacks the
required rational underpinnings. Accordingly, Appellants do not apprise us
of error.
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Application 13/082,630
In addition, a given course of action often has simultaneous
advantages and disadvantages, and this does not necessarily obviate any or
all reasons to combine teachings. See Winner Int'! Royalty Corp. v. Wang,
202 F.3d 1340, 1349 n. 8 (Fed. Cir. 2000) ("The fact that the motivating
benefit comes at the expense of another benefit, however, should not nullify
its use as a basis to modify the disclosure of one reference with the teachings
of another. Instead, the benefits, both lost and gained, should be weighed
against one another."). In this case we find that the Examiner has identified
the plausible benefit of being able to more quickly identify the area being
treated. Appellants' provide no evidence or persuasive argument in support
of their contention, that using 3D imaging is sufficiently more expensive and
complex to preclude its use in Kawamura's device.
Using the example of advances in ultrasound technology, the
Examiner explains "2D imaging in the medical arts is an old method of
obtaining images and the old method has been updated with 3D imaging
which provides the advantage of a more complete image of the area being
[imaged]." Ans. 3. In other words, the Examiner determines that using 3D
imaging is a technique that has improved other medical devices that used 2D
imaging. "[I]f a technique has been used to improve one device, and person
of ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill." KSR Int'!, Co. v. Teleflex Inc., 550
U.S. 398, 417. Appellants do not provide evidence or persuasively argue
that using 3D imaging is a technique that is beyond the skill of a person of
ordinary skill in the art. Thus, Appellants do not apprise us of error.
In addition, Appellants argue that "in the proposed combination of
Rubbert and Kawamura, the 3D data would still be presented to the user as a
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Application 13/082,630
2D image on a screen, thus obviating any advantages provided by 3D
imaging." Appeal Br. 10. Responding to this argument, the Examiner finds
that
both 2D and 3D ultrasound images are provided to users on a 2D
screen, however, more detail and a more real life imag[ing] is
provided by the 3D image on the screen than the 2D image. The
same would be true for a 2D image of the oral cavity and a 3D
image of an oral cavity.
Ans. 3. Appellants object to the Examiner's ultrasound analogy arguing that
"conventional 3D ultrasound generates images which, while better quality
than the 2D ultrasound images and can be manipulated, are nevertheless
frozen in time." Reply Br. 5. However, Appellants mischaracterize the
teaching of Rubbert which, as noted by the Examiner, explicitly discloses
real-time 3D imaging. Ans. 4 (citing Rubbert i-f 184, "The scanning work
station 16 also includes the monitor 20 for displaying the scanning results as
a three-dimensional model 18 of the dentition in real time as the scanning is
occurring."). Accordingly, Appellants' argument is unconvincing.
Arguing that "even if providing the user with a 3D image were
desirable, the 3D scanner as described by Rubbert would still be
unsatisfactory for the Kawamura device," Appellants contend that "in
Rubbert, 'a lack of data will always occur in the space between teeth since
the scanner cannot usually capture images of the gaps between teeth
effectively' (paragraph [0385])." App. Br. 10.
Noting "that the imaging device of Kawamura presents the same
problem [i.e. lack of data corresponding to the space between the teeth]," the
Examiner explains that "the gaps can be view[ ed] from the surrounding
space which is sufficient in the case of Kawamura because any debris stuck
between the teeth can be viewed from the sides." Ans. 3--4.
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Responding to the Examiner's explanation, Appellants contend that
Lack of data in a 3D image creates a "hole" in the resulting 3D
image, not a poor image. In contrast, so long as there is sufficient
light for illuminating the teeth, a 2D optical camera will provide
a 2D image of every part of the teeth that is within the field of
view of the camera, and thus will provide a fuller image than a
3D device.
Reply Br. 6.
Again, Appellants fail to weigh the advantages and disadvantages of
3D versus 2D imaging. Although, 2D imaging may have some advantages
over 3D imaging, Appellants provide no evidence or persuasive argument
supporting the conclusion that 2D imaging is better. Thus, Appellants'
argument is unconvincing.
Appellants further argue that it is
unreasonable to incorporate 3D imaging into the Kawamura
washer simply for the sake of providing additional user options
when the resultant device would be significantly more expensive
(due to the higher cost of 3D scanning equipment) and more
difficult to use (due to the increased complexity of operating such
equipment as described by Rubbert).
Appeal Br. 10.
As discussed supra, this argument is not responsive to the rejection as
articulated by the Examiner and does not properly weigh the advantages
provided with 3D imaging and the alleged disadvantages of the proposed
modification. Accordingly, Appellants' argument is unconvincing.
Contending that "[t]he principle of operation of the Kawamura device
requires displaying an image of the washing site immediately as the washing
occurs," Appellants argue that "the proposed device would be unlikely to
produce an accurate image of the teeth at a rate acceptable to the user."
Appeal Br. 11. In support of this argument, Appellants contend that Rubbert
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paragraph 184 "only states that the scanning results are displayed in real
time, not that an image is acquired and displayed in real time." Id.
Appellants try to further distinguish Rubbert's three-dimensional model, by
contending that it is not a "full" 3D model. See Reply Br. 6.
Appellants' mischaracterize Rub bert' s teaching. As discussed supra,
in paragraph 184 Rubbert states, "The scanning work station 16 also
includes the monitor 20 for displaying the scanning results as a three-
dimensional model 18 of the dentition in real time as the scanning is
occurring." Rubbert i-f 184 (emphasis added). Further, claim 1 does not
preclude Rubbert's three-dimensional model 18 or require a "full" 3D
model. Evening assuming that Appellants' Specification describes a "full"
3D model, "limitations from the specification are not read into the claims."
In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Accordingly,
Appellant's argument is unconvincing.
Contending that Kawamura's device is "a hand-held washing device
intended for use at home," Appellants argue that the Examiner fails to
explain how Kawamura would be modified to incorporate Rubbert's
workstation. Appeal Br. 11.
states:
Again, Appellants mischaracterize Kawamura's device. Kawamura
a video scope using a CCD capable of picking up an image
of a limited part while illuminating has been used for medical
examination for a diseased part within the oral cavity in density,
oral surgery and the like, and further for an operator to observe
conditions of his own teeth or gums. In addition, in homes, there
have become popular oral cavity washers for jetting water onto
the teeth or gums with the aim of washing the interior of the oral
cavity.
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Application 13/082,630
Kawamura i-f 4. Thus, Kawamura's device is not limited to a hand-held
washing device. Moreover, "it is not necessary that the inventions of the
references be physically combinable to render obvious the invention under
review." In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (citation
omitted). The relevant inquiry is whether the claimed subject matter would
have been obvious to those of ordinary skill in the art in light of the
combined teachings of those references. See In re Keller, 642 F.2d 413, 425
(CCP A 1981 ). "Combining the teachings of references does not involve an
ability to combine their specific structures." In re Nievelt, 482 F.2d 965, 968
(CCPA 1973). Accordingly, Appellants do not apprise us of error.
In the Reply Brief, Appellants disagree with the Examiner's
characterization of 3D imaging as an alternative to 2D imaging. See Reply
Br. 5. As the rejection does not rely upon a finding that 3D imaging is an
alternative to 2D imaging, Appellants do not apprise us of error.
Appellants further argue that "Rubbert requires the scanner to be
moved relative to the teeth surface in order to be able to generate a 3D
image." Id. Although Appellants have identified a difference between how
2D images and 3D images are created, Appellants do not apprise us of error,
as the claims do not preclude movement of the scanner.
In addition, Appellants argue that "[a]ccording to [Rubberts's]
paragraph [0027], it can take one or two minutes to do a full scan - a lifetime
when washing the teeth." Reply Br. 6. Again, Appellants are arguing the
physical combination of Rubbert's 3D imaging with Kawamura's device,
rather than considering what these references would suggest to one skilled in
the art. Moreover, we note that two minutes of brushing (i.e. washing) is the
amount of time recommended by the American Dental Association. See,
e.g., MouthHealthy.org., © 2016, accessed at
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http://www.mouthhealthy.org/en/az-topics/b/brushing-your-teeth (last
visited March 10, 2016. Thus, Appellants' argument that two minutes for
washing teeth is a lifetime is unconvincing.
For these reasons, we sustain the Examiner's decision rejecting claim
1, and claims 2, 3, 6-8, 10-12, 15, 17, and 18, which fall therewith.
Rejection II
Appellants do not provide separate arguments for the patentability of
claims 5 and 14. Rather, Appellants argue that Hatakeyama "fails to remedy
the deficiencies of Kawamura and Rubbert." Appeal Br. 13. Appellants'
argument is unconvincing, as we find no deficiencies in Kawamura and
Rubbert.
Accordingly, we sustain the Examiner's decision rejecting claims 5
and 14.
Rejection III
Appellants do not provide separate arguments for the patentability of
claims 4, 9, and 13. Rather, Appellants argue that Franetzki "fails to remedy
the deficiencies of Kawamura and Rubbert." Appeal Br. 14. Again,
Appellant's argument is unconvincing, as we find no deficiencies in
Kawamura and Rubbert.
Accordingly, we sustain the Examiner's decision rejecting claims 4, 9,
and 13.
Rejection IV
Appellants do not provide separate arguments for the patentability of
claim 16. Rather, Appellants argue that Durbin "fails to remedy the
deficiencies of Kawamura and Rubbert." Appeal Br. 15. Once more,
Appellants' argument is unconvincing, as we find no deficiencies in
Kawamura and Rubbert.
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Application 13/082,630
Accordingly, we sustain the Examiner's decision rejecting claim 16.
Rejections V and VI
Appellants do not mention the double patenting rejections in the
Appeal Br. Appellants acknowledge the double patenting rejections in the
Reply Br., but do not contest the rejections. Reply Br. 3.
Accordingly, we summarily sustain these rejections.
DECISION
The Examiner's rejections of claims 1-18 are AFFIRMED.
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)(l )(iv).
AFFIRMED
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