Ex Parte Chapoulaud et al

Patent Trial and Appeal Board

Mar 6, 2013

09941151 (P.T.A.B. Mar. 6, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ERIC CHAPOULAUD, CRAIG A. ANDREIKO, and
MARK A. PAYNE
____________

Appeal 2011-005333
Application 09/941,151
Technology Center 3700
____________

Before TONI R. SCHEINER, LORA M. GREEN, and ULRIKE W. JENKS,
Administrative Patent Judges.

JENKS, Administrative Patent Judge

DECISION ON REQUEST FOR REHEARING
Appellants request rehearing of the Decision on Appeal entered
December 4, 2012, which affirmed an obviousness rejection of the claims
directed to a method of providing a custom orthodontic appliance, and
request reversal of the Examiner‟s rejection with respect to independent
claim 129. (Req. Reh‟g 1.)

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GROUNDS PRESENTED
Appellants request rehearing on the grounds that the Board
overlooked “Appellants arguments supporting the patentability of
independent claim 129.” (Req. Reh‟g 1.) Appellants contend:
1. “In affirming the Examiner, the Board incorrectly concluded
that the Appellants did not argue the independent claims separately and
overlooked the specific substantive evidence presented by the Appellants
demonstrating the patentability of independent claim 129” (id.); and
2. “The Board did not address the patentability of claims 120-132
over Chisti
1
[sic] in view U.S. Patent No. 6,575,751 („Lehmann‟
2
)” (id.).

DISCUSSION
We have carefully reviewed the original Decision in light of
Appellants request. However, we find that Appellants in their Appeal Brief
did not provide separate and distinct arguments with respect to each of the
independent claims, including claim 129, other than setting out the different
wording for each of the independent claims (App. Br. 7-9). Appellants
presented the same argument for all independent claims, with no distinctions
between any of the independent claims. Although, Appellants provided
further arguments during the Oral Hearing (Hr‟g Transcript, 11, ll. 12-14)
the decision of the Board is made on the record. 37 C.F.R. § 41.47(e). Our
reviewing court has found that “the Board [has] reasonably interpreted Rule
41.37 to require more substantive arguments in an appeal brief than a mere
recitation of the claim elements and a naked assertion that the corresponding

1
Muhammad Chishti et al., US 5,975,893, issued Nov. 2, 1999.
2
Maryann Lehmann et al., US 6,575,751 B1, issued Jun. 10, 2003.
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elements were not found in the prior art.” In re Lovin, 652 F.3d 1349, 1357
(Fed. Cir. 2011). Based on our review of the record, we find that there is no
legitimate basis for granting a rehearing on the grounds that the Board
allegedly overlooked substantive arguments with respect to claim 129,
because no separate argument was set forth for this claim.
Nevertheless, we point out that the limitations Appellants assert as
separately argued have been fully addressed in the Decision of December 4,
2012. Appellants‟ arguments are that the treating orthodontist, the one that
writes the prescription, is the same orthodontist that provides the final
approval of the images before the manufacturing of the dental appliance
commences (Req. Reh‟g 3; App. Br. 8; Hr‟g Transcript, 11, ll. 12-14). This
argument is unpersuasive because none of the claims, including claim 129,
recite this limitation. As stated by our reviewing court in In re Hiniker Co.,
150 F.3d 1362, 1369 (Fed. Cir. 1998), “the name of the game is the claim.”
It is well established that limitations not appearing in the claims cannot be
relied upon for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Claim 129 recites, in pertinent part:
providing images of teeth of the patient from the digital
data, for display on at least one computer screen to an
orthodontic practitioner in the suggested post treatment tooth
positions and orientations for either (a approval for use in
creating a custom orthodontic appliance for the patient or (b
revision;
receiving from an orthodontic practitioner, who has
interactively viewed on a computer screen a display of the
provided images, feedback information approving the suggested
post-treatment positions and orientations;
. . . .

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(emphasis added). The “orthodontic practitioner” limitation is broad, and is
not limited to the orthodontist but can include the appliance maker, or the
assistant at the orthodontist office. In the Decision, claim 120 was
interpreted to require that the “image is viewed by a person other than the
operator, preferably a dental professional” (Dec. 10). A dental professional
would encompass the limitation of an orthodontic practitioner. Because we
found that Chishti disclosed that an orthodontist can override the computer
software to manipulate the tooth arrangement on the computer (Dec. 5, 11),
we found that Chishti meets the limitation of approving or revising the
image on the screen by a dental practitioner, which encompasses an
orthodontic practitioner, as required by claim 129.
Therefore, Appellants request has been granted to the extent that the
decision has been reconsidered, but the request is denied with respect to
making any modifications to the decision affirming the Examiner‟s
rejections.
With respect to Appellants assertion that “[t]he Board did not address
the patentability of claims 120-132 over Chisti [sic] in view U.S. Patent No.
6,575,751 („Lehmann‟)” (Req. Reh‟g 1). We reiterate that we did not reach
the merits of this obviousness rejection based on Chishti and Lehmann,
because we find the combination with Lehmann is cumulative to the
combination of Chishti, Hultgren
3
and Peltz
4
which also addressed all
pending claims before us on appeal. “The affirmance of the rejection of a
claim on any of the grounds specified constitutes a general affirmance of the
decision of the examiner on that claim.” See 37 C.F.R. § 41.50(a)(1).

3
Bruce W. Hultgren, US 6,217,334 B1, issued Apr. 17, 2001.
4
Diane P. Peltz, US 6,205,716 B1, issued Mar. 27, 2001.
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SUMMARY
We have considered the evidence and arguments, but deny the
requested relief.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

DENIED

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