Ex Parte D

Patent Trial and Appeal Board

Feb 27, 2013

12143479 (P.T.A.B. Feb. 27, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID D. D‟ALISE
____________

Appeal 2011-013500
1

Application 12/143,479
Technology Center 3700
____________

Before DONALD E. ADAMS, FRANCISCO C. PRATS, and
JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims 1-13 (App. Br. 5;
Reply Br. 2; Ans. 3). We have jurisdiction under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
The claims are directed to a method of placing a dental implant having
exterior threads, a divergent collar, and a flat tip (claims 1-3 and 12); a
dental implant for placement in a jaw bone (claims 4-8); and a method of

1
This Appeal is related to Appeal No. 2011-002843, Application No.
11/255,846, decision reversing all grounds of rejection entered May 24,
2012.
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Application 12/143,479

2
placing a dental implant having at least one exterior thread, a divergent
collar, a microthread section adjacent to said divergent collar, and a flat tip
(claims 9-11 and 13). Claims 1, 4, 9, 10, and 13 are representative and are
reproduced in the Claims Appendix of Appellant‟s Brief.
Claim 13 stands rejected under the written description provision of 35
U.S.C. § 112, first paragraph.
Claims 10 and 11 stand rejected under the enablement provision of 35
U.S.C. § 112, first paragraph.
Claims 1, 3, and 12
2
stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Bulard
3
and Weissman.
4

Claims 9-11 and 13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Bulard, Weissman, and Niznick.
5

Claim 2 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Bulard, Weissman, and Haessler.
6

Claims 4, 6, and 7 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bulard.
Claim 5 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Bulard and Wagner.
7

2
See Supplemental Examiner‟s Answer noting that claim 12 is included in
this ground of rejection (Office Action, mailed June 15, 2011; Reply Br. 8-
9).
3
Bulard et al., US 2005/0037319 A1, published February 17, 2005.
4
Weissman, US 5,785,525, issued July 28, 1998.

5
Niznick, US 2006/0003290 A1, published January 5, 2006.

6
Haessler, US 2004/0146834 A1, published July 29, 2004.

7
Wagner et al., US 5,897,319, issued April 27, 1999.

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Claim 8 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Bulard in combination with Choi
8
or Niznick.
We reverse.

Written Description:
ISSUE
Does the preponderance of evidence on this record support
Examiner‟s finding that Appellant‟s Specification fails to provide written
descriptive support for the claimed invention?
FACTUAL FINDINGS (FF)
FF 1. Examiner finds that Appellant‟s “originally filed specification does
not provide support for the additional rotation being up to specifically 180
degrees” (Ans. 5).
FF 2. Appellant‟s Specification discloses that
[W]hen [the] dental implant . . . is placed at the predetermined
seating depth … and [the] blunt tip … is touching the bottom of
the hole, a few more turns of [the] dental implant …, but not
necessarily a full rotation of [the] dental implant …, will cause
[the] external threads … to engage and move [the] dental
implant … a little further down and pull up the surrounding
bone, thus condensing the surrounding bone at [the] apical end
… of [the] implant.

(Spec. 14: ¶ [00033].)
ANALYSIS
Examiner finds that Appellant‟s Specification does not provide
written descriptive support “for the specific range of „up to 180 degrees‟”
(Ans. 14; FF 1; Cf. FF 2). We are not persuaded. Appellant‟s Specification

8
Choi et al., US 2004/0219488 A1, published November 4, 2004.
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discloses that a dental implant is positioned and rotated, or turned, “a few
more turns … but not necessarily a full rotation” (FF 2; App. Br. 10). Thus,
Appellant‟s Specification discloses rotating to some degree more than 0, but
not necessarily 360 degrees. Therefore, on this record, we find that by
describing the whole, Appellants have “necessarily described the part
remaining,” i.e., up to 180 degrees. In re Johnson, 558 F.2d 1008, 1019
(CCPA 1977).
CONCLUSION OF LAW
The preponderance of evidence on this record fails to support
Examiner‟s finding that Appellant‟s Specification fails to provide written
descriptive support for the claimed invention. The rejection of claim 13
under the written description provision of 35 U.S.C. § 112, first paragraph is
reversed.

Enablement:
Does the evidence of record support Examiner‟s conclusion that
undue experimentation would be required to practice the claimed invention?
FACTUAL FINDINGS (FF)
FF 3. Examiner finds that Appellant‟s Specification “does not provide a[]
disclosure of fulcrum points, therefore it is unclear how fulcrum points are
being eliminated” (Ans. 5).
FF 4. Appellant‟s Specification discloses:
The depth of the implant should be established so that a portion
of the collar is wedged into the outer cortical layer of bone.
The rest of the tapered collar penetrates through the hole in the
gum tissue above the bone. The abutment of the implant is
preferably above the gum tissue. In this preferred manner, a
dual stabilization effect is created by the tip condensing the
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bone around it and the collar wedging into the bone around it
that maintains and gives the implant greater biomechanical
support and stabilization until final natural healing or
osseointegration occurs which, with prior art devices, is usually
at a period of three to six months after the implant is placed.

(Spec. 8: ¶ [00024].)
ANALYSIS
The method of Appellant‟s claim 10 requires, inter alia, the step of
eliminating implant fulcrum points when the dental implant is placed by
affixing the implant at multiple points along the length of the implant at a
level of securement significantly greater than the level of securement along
the remainder of the length of the implant (Appellant‟s Claim 10; see FF 4).
Examiner finds that Appellant‟s Specification “does not provide a[]
disclosure of fulcrum points, therefore it is unclear how fulcrum points are
being eliminated” (FF 3). We are not persuaded.
Appellant‟s Specification discloses “a dual stabilization effect,”
which “is created by the tip condensing the bone around it and the collar
wedging into the bone around it that maintains and gives the implant greater
biomechanical support and stabilization until final natural healing or
osseointegration occurs” (FF 4). As Appellant explains, this dual
stabilization effect “operates on the basic physical principles of a lever,”
wherein the placement of “a single load on one end of a lever having a
fulcrum point results in th[e] load swinging around the fulcrum point,”
whereas a support placed on either side of a load eliminates a fulcrum point
(Reply Br. 6-7). Therefore, notwithstanding Examiner‟s contention to the
contrary, Appellant‟s disclosure of a dual stabilization effect provides an
enabling disclosure of eliminating fulcrum points, as required by Appellant‟s
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claim 10, wherein the dental implant is placed by affixing the implant at
multiple points along the length of the implant at a level of securement
significantly greater than the level of securement along the remainder of the
length of the implant (see FF 4; Appellant‟s Claim 10).
CONCLUSION OF LAW
The evidence of record fails to support Examiner‟s conclusion that
undue experimentation would be required to practice the claimed invention.
The rejection of claims 10 and 11 under the enablement provision of 35
U.S.C. § 112, first paragraph is reversed.

The combination of Bulard and Weissman with or without Niznick and
Haessler:
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 5. Examiner finds that Bulard suggests Appellant‟s claimed invention
with the exception of, inter alia, “rotation of the implant until the exterior
thread further engage and pull up on the bone around and underneath the flat
tip thereby causing the dental implant to condense the bone at the flat tip”
(Ans. 6).
FF 6. Weissman suggests an implant with threads that are self-
tapping,
[S]uch that the implant, as it is threaded into the hole … in the
jawbone and nears its full penetration, will … penetrate the
bottom of the hole … and make further engagement with the
jawbone so as to preclude distal wobbling during the extended
period when osseointegration takes place.
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(Weissman, col. 6, ll. 29-36; Ans. 7.)
FF 7. Examiner relies on Niznick to suggest “an implant with a divergent
collar” (Ans. 10).
FF 8. Examiner relies on Haessler to suggest that “the drilling of the pilot
hole sets the predetermined seating depth” of the implant (id. at 11).
ANALYSIS
Based on the combination of Bulard and Weissman, Examiner
concludes that, at the time Appellant‟s invention was made, it would have
been prima facie obvious to “modify the method taught by Bulard with the
method of additionally threading the implant in the bore in order to further
engage the implant in the jaw bone to prevent wobbling” (Ans. 7).
According to Examiner, “the tip [of the implant] condenses the bone at the
flat tip since, the implant is extended beyond the bore and thread pull up on
the bone around the tip since the implant, including the threads is being
pressed into the bore” (id.). We are not persuaded.
Bulard lacks a tip adapted to condense bone (App. Br. 14; FF 5).
Weissman suggests an implant with a self-tapping thread that penetrates the
bottom of the pilot hole (App. Br. 15-16; FF 6). Examiner failed to identify
an evidentiary basis on this record to support a conclusion that the implant
suggested by the combination of Bulard and Weissman would be capable of
causing the dental implant to condense bone as required by Appellant‟s
claimed invention (see App. Br. 15-16). “[R]ejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
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support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006).
Examiner‟s reliance on Niznick or Haessler fails to make up for the
foregoing deficiency in the combination of Bulard and Weissman (see FF 7-
8).
CONCLUSION OF LAW
The preponderance of evidence on this record fails to support a
conclusion of obviousness. The rejection of claims 1, 3, and 12 under 35
U.S.C. § 103(a) as unpatentable over the combination of Bulard and
Weissman is reversed. The rejection of claims 9-11 and 13 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Bulard, Weissman, and
Niznick is reversed. The rejection of claim 2 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Bulard, Weissman, and Haessler is
reversed.

The rejection over Bulard alone or in combination with Wagner, Choi, or
Niznick:
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 9. Examiner finds that Bulard suggests Appellant‟s claimed implant
with the exception of an angle between the leading edge and outer edge of a
thread that falls in a range of about sixty to ninety degrees (Ans. 12; Cf.
Appellant‟s Claim 4).
FF 10. Examiner finds that the selection of an angle of about sixty to ninety
degrees is a matter “of design choice well within the skill of the ordinary
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artisan obtained through routine experimentation in determining optimum
results” (id.).
FF 11. Examiner relies on Wagner to suggest a thread that “functions as an
auger thread” (id.).
FF 12. Examiner relies on Choi to suggest “a microthread … capable of
interacting with the cortical bone of a jaw when the implant is placed in the
jaw” (id. at 13).
FF 13. Examiner relies on Niznick to suggest “an implant with a divergent
collar” (id. at 14).
ANALYSIS
Examiner finds that the selection of an angle of about sixty to ninety
degrees is a matter “of design choice well within the skill of the ordinary
artisan obtained through routine experimentation in determining optimum
results” (FF 10). We are not persuaded.
“[W]hile it may ordinarily be the case that the determination of
optimum values for the parameters of a prior art process would be at least
prima facie obvious, that conclusion depends upon what the prior art
discloses with respect to those parameters.” In re Sebek, 465 F.2d 904, 907
(CCPA 1972). Examiner failed to establish an evidentiary basis on this
record to support a conclusion that a person of ordinary skill in this art, at
the time of Appellant‟s claimed invention, would have been concerned about
the angle between the leading edge and outer edge of a thread or the
optimization of this angle through routine experimentation (see App. Br. 24
(“Examiner‟s argument that the angle limitations are obvious as part of
experimentation and optimum results [is] without citation to any authority or
support”)).
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Examiner‟s reliance on Wagner, Choi, and Niznick fails to make up
for the foregoing deficiency in Bulard (see FF 11-13).
CONCLUSION OF LAW
The preponderance of evidence on this record fails to support a
conclusion of obviousness. The rejection of claims 4, 6, and 7 under 35
U.S.C. § 103(a) as unpatentable over Bulard is reversed. The rejection of
claim 5 under 35 U.S.C. § 103(a) as unpatentable over the combination of
Bulard and Wagner is reversed. The rejection of claim 8 under 35 U.S.C.
§ 103(a) as unpatentable over Bulard in combination with Choi or Niznick is
reversed.

REVERSED

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