Ex Parte Chen et al

Patent Trial and Appeal Board

Dec 18, 2015

12795424 (P.T.A.B. Dec. 18, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121795,424 06/07/2010
83571 7590 12/22/2015
Wood, Herron & Evans, LLP (Sybron)
441 Vine Street
2700 Carew Tower
Cincinnati, OH 45202
FIRST NAMED INVENTOR
Xiangxu Chen
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.
KMC-337CP 1895
EXAMINER
HOUSTON, ELIZABETH
ART UNIT PAPER NUMBER
3773
NOTIFICATION DATE DELIVERY MODE
12/22/2015 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):
usptodock@whe-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte XIANGXU CHEN and XUEJUN QIAN
Appeal2013-007219
Application 12/795,424
Technology Center 3700
Before: JAMES P. CALVE, WILLIAM A. CAPP and LEE L. STEPINA,
Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1-22. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Appeal2013-007219
Application 12/795,424
THE rt.rVENTION
Appellants' invention relates to a method for gingival retraction.
Spec. i1i12, 9. Claim 1, reproduced below, is illustrative of the subject
matter on appeal.
1. A method for temporarily widening a gingival sulcus, the
method comprising
inserting an uncured composition within a gingival sulcus
to be widened, the composition comprising:
a polymerizable monomer having at least one
ethylenically unsaturated group in an amount ranging
from about 0.05 weight percent to about 80 weight
percent,
a photo polymerization initiator in an amount
ranging from about 0.001 weight percent to about 5
weight percent,
a fine inorganic powder in an amount ranging from
about 0 .1 weight percent to about 90 weight percent, and
an astringent in an amount ranging from about 3
weight percent to about 40 weight percent with the
proviso that the uncured composition is substantially free
of iron (III),
wherein the weight percents are based on the total weight of the
uncured composition, and wherein the uncured composition has
a viscosity that is higher than about 13,000 Pascals second and
is consistent with penetration into the uncured composition to a
range of between about 0.05 mm to about 3 mm, inclusive,
using ASTM D-5 with total weight of a plunger and needle of
50 grams, test duration of 10 seconds, and a sample size of 10
mm in diameter and 8 mm in depth;
maintaining the uncured composition in the gingival
sulcus from about one second to about fifteen minutes before
curing; and
photo curing the uncured composition to provide a cured
composition having a cure depth of about 0.5 mm or greater,
the method temporarily widening the gingival sulcus.
- 2 -
Appeal2013-007219
Application 12/795,424
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Lesage
Kato
Jensen
Yang
Klee
us 5,362,495
us 5,520,725
US RE38,722 E
US 2005/0287 494 Al
US 2007/0010597 Al
Nov. 8, 1994
May 28, 1996
Apr. 12, 2005
Dec. 29, 2005
Jan. 11, 2007
The following rejections are before us for review:
1. Claims 1--4, 6-13, and 15-20 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Yang, Jensen, and Klee.
2. Claims 1--4, 6-12, and 14--20 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Yang, Jensen, and Kato.
3. Claims 5, 21, and 22 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Yang, Jensen, Klee, and Lesage.
4. Claims 5, 21, and 22 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Yang, Jensen, Kato, and Lesage
OPINION
Unpatentability of Claims 1-4, 6-13, and 15-20
over Yang, Jensen, and Klee
Appellants argue claims 1--4, 6-13, and 15-20 as a group. Appeal
Br. 5-9. We select claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(l)(iv) (2012).
The Examiner finds that Yang discloses a method for inserting a
composition for widening a gingival sulcus substantially as claimed except
for the limitations directed to photo polymerization and curing, and using a
filler in the form of a fine powder. Final Action 2--4. The Examiner relies
- 3 -
Appeal2013-007219
Application 12/795,424
on Jensen as teaching using a polymerizable monomer, photo initiator, photo
curing, and waiting one second to about fifteen minutes before photo curing.
Id. at 3. The Examiner concludes that it would have been obvious to a
person of ordinary skill in the art at the time of the invention to combine the
teachings of Yang and Jensen so that Yang's composition could be photo
cured. Id. at 4. The Examiner relies on Klee as disclosing an inorganic filler
in a dental composition that is in the form of a fine powder. Id. at 4. The
Examiner concludes that it would have been obvious to further modify Yang
by including a fine inorganic filler as taught by Klee for the purpose of
providing a filler that would effectively increase the viscosity of the
material. Id. at 4--5.
Appellants traverse the Examiner's rejection by arguing that Yang
does not teach excluding iron (III) from a retraction paste. Appeal Br. 7.
This argument is without merit. Claim 1 is a method claim that includes a
step of inserting an uncured composition that is substantially free of
iron (III) into a gingival sulcus. Claims App. Table 1 of Yang lists 10
examples, none of which include iron (III) as an ingredient. Yang i-f 24,
Table 1. The table lists the percent weights for the constituent ingredients in
each example. Id. In each case, the sum of all the listed ingredients is 100
percent. Id. Thus, Table I discloses 10 examples of compositions that are
substantially free of iron (III). Id. The Examiner's fact finding that Yang
teaches a composition that is substantially free of iron (III) is supported by a
preponderance of the evidence.
Appellants next argue that Jensen and Klee are silent as to the
inclusion or exclusion of iron (III). Appeal Br. 9. Appellants also argue that
Jensen fails to disclose the use of an astringent in a polymerizable
- 4 -
Appeal2013-007219
Application 12/795,424
composition and thus fails to suggest the combination of a polymerizable
monomer and astringent and fails to appreciate the problem with an iron (III)
compound as an astringent in combination with a polymerizable monomer
and photo curing step. Id.
In response, the Examiner states that Yang is relied as disclosing a
gingival retraction composition that is substantially free of iron (III).
Ans. 22. The Examiner further states that none of the proposed
modifications contemplate adding iron (III) to Yang's gingival retraction
material. Id. With respect to Appellants' argument that Jensen fails to
suggest the combination of a polymerizable monomer and astringent, the
Examiner reiterates that Yang discloses an astringent and Jensen teaches a
polymerizable monomer and a photo curing step and that it would have been
obvious to combine the teachings of the two references.
We are not persuaded that the Examiner's proposed combination fails
to appreciate the problem with an iron (III) astringent in combination with a
polymerizable monomer as the Examiner's proposed combination
contemplates, in the first instance, using an astringent that is free of
iron (III), thereby avoiding the alleged problem. Appellants present no
evidence or persuasive technical reasoning that tends to show that
combining Yang's composition and iron (III)-free astringent with Jensen's
iron (III)-free monomer requires more than ordinary skill.
Furthermore, Appellants have not rebutted the Examiner's position
that Yang discloses an astringent that is substantially free of iron (III) and
that the Examiner's proposed modification will not introduce iron (III) into
the modified Yang composition. Essentially, Appellants want us to infer the
presence of iron (III) in Yang and/ or Jensen based on nothing more than
- 5 -
Appeal2013-007219
Application 12/795,424
silence regarding the absence of iron (III) in either of the two references.
Appellants have not provided a sound evidentiary basis for us to draw such
an inference and we decline to do so on the record before us.
In view of the foregoing, we sustain the Examiner's unpatentability
rejection of claims 1--4, 6-13, and 15-20 over Yang, Jensen, and Klee.
Unpatentability of Claims 1-4, 6-12, and 14-20
over Yang, Jensen, and Kato
Appellants argue claims 1--4, 6-12, and 14--20 as a group. Appeal
Br. 9-10. We select claim 1 as representative.
The Examiner relies on Yang and Jensen as in the previous ground of
rejection. In this ground, the Examiner relies on Kato, in lieu of Klee, as
disclosing a filler in the form of a fine powder. Final Action 8-9. The
Examiner concludes that it would have been obvious to a person of ordinary
skill in the art at the time of the invention to combine Yang, Jensen, and
Kato for same reasons as in the previous ground of rejection over Yang,
Jensen, and Klee.
In traversing the rejection, Appellants rely on the same arguments that
we considered in connection with the previous ground of rejection and
which we find equally unpersuasive here. Appellants also argue that Kato
discloses the use of iron (III) and, thus, the proposed combination is not free
of iron (III). Appeal Br. 10.
The Examiner responds by stating that, although Kato discloses
providing iron and tin compounds in other forms, such would not result in
any iron (III) being present in the material of the proposed combination.
Ans. 23. Kato is directed to a dental cement composition. Kato, Abstract.
Kato discloses the use of kaolin at the particle size claimed in claim 1 and
- 6 -
Appeal2013-007219
Application 12/795,424
further describes kaolin as a conventional inorganic filler that is widely used
for dental composite resin. Kato, col. 6, 11. 51---65. As we understand the
Examiner's rejection, Kato is relied on solely for the "fine inorganic
powder" limitation of claim 1, which is met by the kaolin filler of Kato.
Thus, it does not appear to us that the Examiner's proposed combination
includes any iron (III) from Kato.
We sustain the rejection of claims 1--4, 6-12, and 14--20 over Yang,
Jens en, and Kato.
Unpatentability of Claims 5, 21 and 22
over Yang, Jensen, Klee, and Lesage
Appellants argue claims 5, 21, and 22 as a group. Appeal Br. 10-13.
We select claim 5 as representative.
Claim 5 depends from claim 1 and adds a limitation that the
composition is inserted into the gingival sulcus through a device with a
needle. Claims App. The Examiner relies on Yang, Jensen, and Klee as in
the first ground of rejection of claim 1. Final Action 10-12. The Examiner
relies on Lesage as disclosing the use of a needle to insert a dental
composition into the gingival sulcus. Id. at 13. The Examiner concludes
that it would have been obvious to a person of ordinary skill in the art at the
time of the invention to modify the method of Yang by inserting the dental
composition in the gingival sulcus using a device with a needle, as taught by
Lesage, for the purpose of penetrating easily into the gingival sulcus. Id.
In traversing the rejection, Appellants first argue that Lesage fails to
teach or suggest an uncured gingival retraction composition that is
substantially free from iron (III). Appeal Br. 10-11. This argument is
without merit. The Examiner relies on the combination of Yang, Jensen, and
- 7 -
Appeal2013-007219
Application 12/795,424
Klee for disclosure of the composition used in the method and relies on
Lesage only for disclosure of a device to insert the materials into the
gingival sulcus. Ans. 3. Non-obviousness cannot be established by
attacking references individually where the rejection is based upon the
teachings of a combination of references. In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Appellants next argue that Lesage suggests that iron (III) compounds
may be used as an astringent. Appeal Br. 11. In response, the Examiner
states that Lesage is cited for the sole purpose of teaching the use of the
claimed needle to insert dental compositions into the gingival sulcus.
Ans. 23. 1 The Examiner further states that Lesage discloses alternative
astringents that are not iron (III) compounds, such as aluminum chloride. Id.
The Examiner reiterates that Yang discloses that the astringent may be
aluminum acetate, aluminum chloride, aluminum sulfate or zinc chloride,
none of which are iron (III) compounds. Id.
Next, Appellants argue that Yang teaches away from the invention.
Appeal Br. 11. Appellants argue "Yang is submitted to teach/suggest the
exclusion of any polymerizable monomers, any photo initiators, and/or any
filler being in the form of a fine powder with an average particle size of less
than one micron, and thus Yang teaches away from Appellants' claimed
methods." Id. This argument is not persuasive. A reference does not teach
away by merely expressing a general preference for an alternative invention.
In re Fulton, 391F.3d1195, 1201 (Fed. Cir. 2004). Appellants do not direct
1 Also, we note that Jensen discloses the use of syringe 30 to insert a
composition into the gingival sulcus. Jensen, col. 10, 11. 39--49. We further
note that Yang discloses gingival retraction material for injection
application. Yang i-fi-f 16, 25, 3 0 ("hypodermic syringe"), claim 1.
- 8 -
Appeal2013-007219
Application 12/795,424
" 1 " 'T 1. " " " ,..I " ,..I " 1. " our attentwn to any ianguage m i ang tuat cnticizes, uiscreuits, or otuerwise
discourages the use of polymerizable monomers or photo initiators. Id.
Finally, Appellants' challenge the Examiner's finding that the
composition of Yang inherently possesses the viscosity properties and
characteristics recited in claim 1. Appeal Br. 12. However, Appellants
acknowledge that the Examiner can reject claims based on inherency where
the claims are to a composition in terms of a function, property, or
characteristic and the composition of the prior art is the same as that of the
claim, but the function, property, or characteristic is not explicitly disclosed
by the reference. Id. citing MPEP § 2112, III. Appellants further
acknowledge that the Examiner can then require an applicant to prove that
the prior art product does not inherently possess the characteristics of the
claimed product. Id. Appellants argue that the Examiner has failed to
adequately establish inherency because no underlying basis in fact or
technical reasoning has been presented in the rejection. Id. at 12-13.
In response, the Examiner states that Yang discloses a composition
that possesses the same viscosity as the composition disclosed in Appellants'
Specification. Ans. 24. Therefore, according to the Examiner, it would
inherently exhibit the same properties recited in the claims. Id. We think
that the Examiner has articulated a sufficiently sound basis for the finding of
inherency so as to shift the burden to Appellants to prove otherwise. Thus,
the burden shifts to Appellants to demonstrate that Yang does not possess
the claimed properties and characteristics. Appellants fail to present any
persuasive evidence on this issue and otherwise fail to carry their burden.
Accordingly, we sustain the rejection of claims 5, 21, and 22 over
Yang, Jensen, Klee, and Lesage.
- 9 -
Appeal2013-007219
Application 12/795,424
Unpatentability of Clairns 5, 21, and 22
over Yang, Jensen, Kato, and Lesage
The Examiner relies on Kato as teaching an inorganic filler in the
form of a fine powder. Final Action 16. The Examiner concludes that
claims 5, 21, and 22 are unpatentable over Yang, Jensen, Kato, and Lesage
for essentially the same reasons that claims 5, 21, and 22 are unpatentable
over Yang, Jensen, Klee, and Lesage in the preceding ground of rejection.
Id. at 16-17.
In traversing the rejection, Appellants rely on the same arguments that
we considered above with respect to the ground of rejection over Yang,
Jensen, Klee, and Lesage above. Appeal Br. 10-13. We find these
arguments equally unpersuasive here.
We sustain the rejection of claims 5, 21, and 22 over Yang, Jens en,
Kato, and Lesage.
DECISION
The decision of the Examiner to reject claims 1-22 is 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)(l)(iv).
AFFIRMED
rvb
- 10 -