Ex Parte Carlton

Patent Trial and Appeal Board

Oct 30, 2012

12155581 (P.T.A.B. Oct. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte DANA ALAN CARLTON
__________

Appeal 2011-013498
Application 12/155,581
Technology Center 3700
__________

Before DEMETRA J. MILLS, ERIC GRIMES, and MELANIE L.
McCOLLUM, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a dental
implant positioning device. The Examiner has rejected the claims as
indefinite, anticipated, and obvious. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm the prior art rejections.
STATEMENT OF THE CASE
The Specification states that a “critical aspect of the dental implant
procedure is proper vertical positioning of the implant with respect to depth
in the hole in the jawbone” (Spec. 4, ¶ 6). The Specification discloses an
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Application 12/155,581

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implant positioning device in which the “lower portion has the same external
geometric shape and dimensions as those of the implant lower portion but
without external screw threads” (id. at 8, ¶ 14). After a hole for the implant
is drilled and countersunk, the positioning device is inserted into the hole;
the device can then be removed and the hole drilled deeper, and this process
is “repeated until the positioning device margin is properly located within
the gum tissue” (id. at 10, ¶ 18). The implant can then be installed in the
properly sized hole (id. at 10, ¶ 19).
Claims 12-28 are on appeal. Claims 12 and 28 are representative and
read as follows:
12. A positioning device comprising:
a first portion comprising a first collar having a downward taper with
a cross section at a bottom of the first portion;
a second portion:
having a vertically elongate shape compared to the first portion, and
having an exposed surface devoid of external screw threads or
other mechanical features for anchoring the positioning device in the
jawbone, and sufficiently smooth to be easily inserted in and removed from
an implant hole;
wherein the first portion and the second portion together have an
external geometric shape and dimensions substantially the same as an
external geometric shape and dimensions of a lower portion of a dental
implant.

28. The positioning device of claim 12 wherein the lower portion of the
dental implant comprises:
a cylindrical bottom portion having mechanical features for anchoring
the implant in the jawbone, and
a conically tapered top portion.

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The claims stand rejected as follows:
• Claim 28 under 35 U.S.C. § 112, second paragraph, as indefinite
(Answer 10);1
• Claims 12-15, 18, 21-22, 24, and 26-28 under 35 U.S.C. § 102(b) as
anticipated by Gelb2 (Answer 4);
• Claims 16 and 17 under 35 U.S.C. § 103(a) as obvious based on
Gelb and Gittleman3 (Answer 6);
• Claims 19, 20, and 23 under 35 U.S.C. § 103(a) as obvious based on
Gelb and Gittleson4 (Answer 7); and
• Claim 25 under 35 U.S.C. § 103(a) as obvious based on Gelb and
Day5 (Answer 8).
I.
The Examiner has rejected claim 28 as indefinite, on the basis that
“the recitation that the dental implant has mechanical features and a
conically tapered top portion is unclear because such a recitation is
inconsistent with the preamble, which is claming [sic] a positioning device”
(Office action mailed Oct. 26, 2010, page 2).

1 The Examiner did not set out the rejection under 35 U.S.C. § 112, second
paragraph, in the Answer but also did not indicate that the rejection, which
was set out in the Office action mailed Oct. 26, 2010, had been withdrawn.
The Examiner did address the rejection in the “Response to Arguments”
section of the Answer, in explaining why she found Appellants’ arguments
unpersuasive. We therefore understand the rejection under 35 U.S.C. § 112,
second paragraph, to be an issue on appeal.
2 Gelb, US 5,538,424, Jul. 23, 1996.
3 Gittleman, US 2005/0019730 A1, Jan. 27, 2005.
4 Gittelson, US 2007/0111156 A1, May 17, 2007.
5 Day et al., US 5,876,204, Mar. 2, 1999.
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Application 12/155,581

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Appellant argues that claim 12, from which claim 28 depends, is
directed to a positioning device having portions that “‘. . . together have an
external geometric shape and dimensions substantially the same as an
external geometric shape and dimensions of a lower portion of a dental
implant’. When reading this limitation of claim 12 as a necessary structural
limitation, the claimed limitation is consistent with the preamble and claim
28 is not unclear.” (Appeal Br. 10.)
We agree with Appellant that the Examiner has not shown that the
scope of claim 28 would be unclear to those of ordinary skill in the art.
Claim 12 states that the two portions of the claimed device together have a
shape and dimensions that are substantially the same as the shape and
dimensions of a dental implant, and claim 28 adds the limitation that the
dental implant has a cylindrical bottom portion and a conically tapered top
portion. Thus, claim 28 further defines the shape that is substantially
matched by the claimed positioning device, and therefore the shape of the
claimed device itself.
II.
The Examiner has rejected claims 12-15, 18, 21-22, 24, and 26-28 as
anticipated by Gelb (Answer 4). The Examiner finds that Gelb discloses a
device meeting all of the structural limitations of claim 12 (id. at 4-5, citing
Gelb’s Figures 1 and 2).
Appellant argues that Gelb does not disclose a device in which the
first and second portions recited in claim 12 have an external shape and
dimensions that are substantially the same as the external shape and
dimensions of a lower portion of a dental implant (Appeal Br. 4-7).
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Application 12/155,581

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We agree with the Examiner that Gelb’s device meets the limitations
of claim 12. Specifically, element 52 of Gelb’s device is “a first portion
comprising a first collar having a downward taper with a cross section at a
bottom of the first portion” and element 44 is a second portion having a
vertically elongate shape compared to the first portion and a smooth exposed
surface without screw threads or other anchoring features (see claim 12). In
addition, these two portions of Gelb’s device have an external shape and
dimensions that are substantially the same as the external shape and
dimensions of the implant shown in Gelb’s Figure 1 (compare elements 16
plus 22 in Gelb’s Figure 1 with elements 44 plus 52 in Gelb’s Figure 2). In
fact, Gelb expressly describes its device as “correspond[ing] to the shape
and dimensions of a commercially available implant” (id. at col. 1, l. 67 to
col. 2, l. 1).
Appellant asserts that Gelb’s device does not have first and second
portions that together have a shape and dimensions that are substantially the
same as those of a lower portion of a dental implant (Appeal Br. 6-7), but
provides no reasoned analysis to support this position. To the extent that
Appellant’s point is that there are some differences in shape or dimension
between Gelb’s device and the dental implant shown in its Figure 1, we note
that the claim only requires the shapes and dimensions to be substantially
the same, and therefore allows for some variation. Appellant has pointed to
no definition or description in the Specification that would limit the amount
of such variation to less than that shown in Gelb.
Appellant also argues that the Examiner has treated the disputed
limitation as merely an intended use, rather than a structural feature (Answer
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Application 12/155,581

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4, 7). We disagree. The Examiner expressly identified elements of Gelb’s
device that correspond to the first and second portions of claim 12 (Answer
4-5) and found that “the supra boney [first] portion and the jawbone
[second] portion together have an external geometric shape and dimensions
substantially the same as an external biometric [sic, geometric] shape and
dimensions of a lower portion of a dental implant (figs. 1-2, see abstract)”
(id. at 5). The Examiner’s rejection therefore does not treat these limitations
merely as an intended use.
We affirm the rejection of claim 12 as anticipated by Gelb. Claims
13-15, 18, 21-22, 24, and 26-28 were not argued separately (see Appeal Br.
8) and therefore fall with claim 12. 37 C.F.R. § 41.37(c)(1)(vii).
III.
The Examiner has rejected claims 16 and 17 as obvious based on Gelb
and Gittleman (Answer 6); claims 19, 20, and 23 as obvious based on Gelb
and Gittleson (Answer 7); and claim 25 as obvious based on Gelb and Day
(Answer 8). All of these claims depend on claim 12, and the Examiner
concludes that the secondary references would have made obvious the
limitations of the dependent claims (Answer 7-9).
Appellant argues that Gelb does not disclose all the limitations of
claim 12 (Appeal Br. 8-9). This argument is unpersuasive for the reasons
discussed above. Appellant has waived the opportunity to present additional
arguments based on Gittleman, Gittleson, or Day. We therefore adopt the
Examiner’s fact-finding and conclusions with regard to the rejections based
on § 103 (Answer 6-9).
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Application 12/155,581

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SUMMARY
We reverse the rejection of claim 28 as indefinite.
We affirm the rejection of claims 12-15, 18, 21-22, 24 and 26-28 as
anticipated by Gelb, and the rejection of claims 16, 17, 19, 20, 23, and 25 as
obvious based on Gelb and the other cited references.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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