Ex Parte Bergersen

Board of Patent Appeals and Interferences

Jun 27, 2012

10348719 (B.P.A.I. Jun. 27, 2012)

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.
10/348,719 01/22/2003 Earl O. Bergersen BER-P-03-001 7950
29013 7590 06/27/2012
PATENTS+TMS, P.C.
2849 W. ARMITAGE AVE.
CHICAGO, IL 60647
EXAMINER
MAI, HAO D
ART UNIT PAPER NUMBER
3732
MAIL DATE DELIVERY MODE
06/27/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte EARL O. BERGERSEN
____________

Appeal 2010-009116
Application 10/348,719
Technology Center 3700
____________

Before LINDA E. HORNER, EDWARD A. BROWN, and
WILLIAM V. SAINDON, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Earl O. Bergersen (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s decision rejecting claims 1-20. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2010-009116
Application 10/348,719

2
THE INVENTION
Appellant’s claimed invention relates to “a method that provides a
dental diagnosis and/or a dental appliance to a user.” Spec. 1, ll. 11-12.
Claim 1, reproduced below, is representative of the subject matter on appeal.
1. A method for diagnosing an orthodontic condition of a
plurality of teeth of a mouth of a patient wherein the plurality of
teeth have sizes, the method comprising the steps of:
providing a wafer which fits inside the mouth wherein
the wafer has a labial side and a lingual side wherein the labial
side is located in a position opposite to the lingual side and
further wherein the wafer is made from a material capable of
being bitten creating a deformation of the wafer wherein the
deformation corresponds to one tooth of the plurality of teeth
and further wherein the one tooth has a size wherein the wafer
retains the deformation following removal from the mouth;
generating an image of the deformation;
transmitting the image of the deformation to a remote
location without sending the wafer to the remote location; and
determining the sizes of the plurality of teeth based on
the deformation wherein a central processing unit programmed
with dental standards that are statistics regarding standard sizes
of teeth determines the sizes of the plurality of teeth using the
size of the one tooth indicated to the central processing unit by
the image of the deformation and further wherein the plurality
of teeth that are not the one tooth are not used to determine the
sizes of the plurality of teeth wherein the central processing unit
is located at the remote location.
Independent claim 8 is directed to a method for diagnosing an
orthodontic condition of upper teeth and lower teeth of a mouth of a patient,
where the method includes the step of “determining a size of the upper teeth
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Application 10/348,719

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and a size of the lower teeth based on the mesio-distal width of the upper
front incisor, the mesio-distal width of the lower front incisor and dental
standards that are statistics regarding standard sizes of teeth without using
any other measurements associated with the patient.” Independent claim 16
is directed to a method for diagnosing an orthodontic condition of upper
teeth and lower teeth of a mouth of a patient, where the method includes the
step of “diagnosing the orthodontic condition of the upper teeth and the
lower teeth . . . wherein the diagnosis is based on only [a] first deformation
[that corresponds to a single tooth] and dental standards that are statistics
regarding standard sizes of teeth.”
THE EVIDENCE
The Examiner relies upon the following evidence:
Adams US 2,752,689 Jul. 3, 1956
Lustig US 4,472,140 Sep. 18, 1984
Millstein US 4,786,254 Nov. 22, 1988
Bergersen US 5,882,192 Mar. 16, 1999
Hultgren US 6,200,135 B1 Mar. 13, 2001
THE REJECTIONS
Appellant seeks review of the following rejections:
1. Claims 1-5, 8-13, and 16-20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Bergersen, Hultgren, and Adams.
2. Claims 6 and 15 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Bergersen, Hultgren, Adams, and Lustig.
3. Claims 7 and 14 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Bergersen, Hultgren, Adams, and Millstein.
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Application 10/348,719

4
CONTENTIONS AND ISSUE
In each of the rejections on appeal, the Examiner relies on Adams to
show that it was known in the art at the time of Appellant’s invention “that
by knowing the measurement of the central incisor, a plurality of teeth can
be determined because they will be proportional.” Ans. 4 (citing Adams,
col. 6, ll. 25-44). The Examiner determined that it would have been obvious
to modify the method of Bergersen, as modified with the wafer of Hultgren,
“to include using size data of a tooth, a central incisor, to determine the size
of a plurality of other related teeth as shown by Adams in order to reduce the
measurements needed.” Ans. 4.
Appellant argues the Examiner erred in relying on Adams because:
Adams et al. merely teach determining the size of a suitable
artificial anterior tooth based on proportionality and do not
teach determining the sizes of other teeth based on statistical
data as shown in Appendix A of the present application. The
teaching of Adams et al. regarding an artificial tooth is not
applicable to determination of sizes of natural teeth of the
patient as required by the present invention.
Reply Br. 6-7.
The issue presented by this appeal is whether the Examiner articulated
adequate reasoning based on rational underpinnings to explain how one of
ordinary skill in the art would have been led to modify the method of
Bergersen to use the size data of a tooth and statistics regarding standard
sizes of teeth to determine the size of a plurality of other teeth in light of
Adams.
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ANALYSIS
Bergersen relates to “an apparatus for diagnosing orthodontic
requirements and dispensing an orthodontic applicant to suit the diagnosed
requirements.” Bergersen, col. 1, ll. 6-9. Adams relates to a guide for use
by a dentist to determine the most suitable size and most pleasing form or
shape of an artificial tooth to be used in a partial or complete denture for an
individual patient. Col. 1, ll. 17-21. Adams’s guide is based on the distinct
relationship between the form and size of a person’s face and the form and
size of the upper central teeth of a person. Col. 1, ll. 23-26. Adams
discloses that the dentist uses the guide to determine the size and shape of
the patient’s face, and based on this information, the guide determines the
length and width of the upper central tooth most suitable for the patient.
Col. 3, l. 46 – col. 6, l. 24. Adams discloses:
Knowing the width and length measurements of the
central incisor teeth best suited for any individual patient, as
well as the shape or form of the patient’s face, any suitable
anterior tooth may be determined since artificial anterior teeth
are made in sets and the size of the lateral and cuspid teeth are
proportioned to the upper central teeth in precise relationship.
Col. 6, ll. 25-31. Thus, while Adams teaches using the width and length
measurements of a suitable artificial central incisor tooth and the shape or
form of a patient’s face to determine the size of other suitable artificial teeth,
Adams does not indicate that such a technique would work for determining
the orthodontic condition of natural teeth in a patient’s mouth. We have
insufficient evidence in the record before us to determine whether the
teaching of the proportionality among sets of artificial teeth would have
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Application 10/348,719

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suggested to one of ordinary skill in the art the predictability of the size of
natural teeth based on the measurement of a single tooth.
CONCLUSION
Based on the above findings as to the disclosure in Adams, we find
that the Examiner failed to articulate adequate reasoning based on rational
underpinnings to explain how one of ordinary skill in the art would have
been led to modify the method of Bergersen to use the size data of a tooth
and statistics regarding standard sizes of teeth to determine the size of a
plurality of other teeth in light of Adams.
DECISION
We REVERSE the decision of the Examiner to reject claims 1-20.

REVERSED

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