Ex Parte Eriksson et al

Patent Trial and Appeal Board

Oct 19, 2017

14069224 (P.T.A.B. Oct. 19, 2017)

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.
14/069,224 10/31/2013 Thomas Eriksson NOBELB.360C1 7567
20995 7590 10/23/2017
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
EXAMINER
MAI, HAO D
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
10/23/2017 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):
jayna.cartee@knobbe.com
efiling @ knobbe. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS ERIKSSON and MAGNUS OTTSJO
Appeal 2016-000233
Application 14/069,2241
Technology Center 3700
Before MICHAEL C. ASTORINO, BRADLEY B. BAYAT, and
AMEE A. SHAH, Administrative Patent Judges.
BAYAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1, 3—7, and 18—20.2 We have jurisdiction
under 35 U.S.C. § 6(b). Appellants’ counsel appeared for oral hearing on
October 10, 2017.
SUMMARY OF DECISION
We AFFIRM-IN-PART.
1 According to Appellants, “[t]he real party in interest is Nobel Biocare
Services AG”. Appeal Brief 3 (“Appeal Br.,” filed May 4, 2015).
2 Independent “claim 21 is withdrawn from consideration as being directed
to a non-elected invention.” Final Office Action 2 (“Final Act.,” mailed
Dec. 10, 2014); see also Answer 8 (“Ans.,” mailed July 31, 2015).
Appeal 2016-000233
Application 14/069,224
STATEMENT OF THE CASE
Claimed Subject Matter
Appellants’ “invention pertains in general to the field of oral, dental or
maxillofacial restorative medical procedures, and products related thereto.
More particularly the invention relates to devices and methods for
facilitating determination of a position and orientation of components, like
surgical implants, involved in such procedures.” Spec. 12. Claim 1, the
sole independent claim, is representative of the subject matter on appeal and
reads as follows:
1. A method of manufacturing a position locator device for
a system of planning and producing oral or maxillofacial
restorative products, said device being of an optically opaque
material, and having at least one outer surface detectable by an
optical scanner apparatus for determining at least one of a
position and orientation of said outer surface, which method
comprises:
providing a metal oxide layer, by anodic oxidation,
onto said position locator device to form said outer surface
of said position locator device.
Appeal Br. 21, Claims App.
Rejections
I. Claims 1, 4—7, and 18—20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Nilsson (WO 2008/041943 Al, pub. Apr. 10, 2008)
and Hall (US 2004/0236338 Al, pub. Nov. 25, 2004). Final Act. 3.
II. Claim 3 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Nilsson, Hall, and Ohtani (US 6,184,068 Bl, iss. Feb. 6, 2001). Id.
at 4.
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Application 14/069,224
ANALYSIS
Rejection I
Independent claim 1 and dependent claims 4—7, 18, and 20
Appellants argue claims 1, 4—7, 18, and 20 as a group. See Appeal
Br. 7. We select independent claim 1 as the representative claim for this
group, and, thus, claims 4—7, 18, and 20 stand or fall with claim 1.
37 C.F.R. § 41.37(c)(l)(iv).
Appellants contend that the combination of Nilsson and Hall is
improper because there is no motivation for a person of ordinary skill in the
art to combine these references. Appeal Br. 6; Reply Brief 4 (“Reply Br.,”
filed Sept. 29, 2015) (“There is no motivation from these references or
provided by the Examiner”). According to Appellants, “Hall provides
absolutely no indication that anodic oxidation would result in a ‘matt
surface’ which is, presumably, the desired result for a person of ordinary
skill in the art seeking to modify Nilsson. Hall is not concerned or related to
the production of a ‘matt surface.’” Appeal Br. 6. Appellants contend that
“Hall is improper to use in a rejection under 35 U.S.C. 103(a).” Id. at 7. We
disagree with this contention at least because it does not address the
Examiner’s actual articulated rationale in support of the conclusion of
obviousness, and thus, fails to apprise us of error in the rejection.
Appellants’ argument is based on the assumption that demonstrating a
motivation to combine in the references is required to establish a prima facie
case of obviousness. See Appeal Br. 7 (“The burden shifts to the
Appellants] if, and only if, the Examiner produces a prima facie case. Here,
such a prima facie case has not yet been established.”). But the Supreme
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Application 14/069,224
Court has rejected the rigid requirement of demonstrating a teaching,
suggestion, or motivation in the references to show obviousness. See KSR
Inti. Co., v. Teleflex Co., 550 U.S. 398, 419 (2007). For example, the Court
has instructed that an obviousness rejection can be sustained when “a
structure already known in the prior art” is “altered by the mere substitution
of one element for another known in the field” and the combination “yield[s]
a predictable result.” Id. at 416. As our reviewing court recently explained:
KSR directs that an explicit teaching, suggestion, or
motivation in the references is not necessary to support a
conclusion of obviousness. 550 U.S. at 415—16. The Supreme
Court has instructed that “a court must ask whether the
improvement is more than the predictable use of prior art
elements according to their established functions,'” id. at 417,
and apply “an expansive and flexible approach” to
obviousness, id. at 415.
In re Ethicon, Inc., 844 F,3d 1344, 1350 (Fed, Cir. 2017).
Here, the Examiner found Nilsson discloses all the claimed elements,
including providing a titanium dioxide layer onto the surface of Nilsson’s
measuring device, but fails to disclose providing this layer onto the surface
of the device by anodic oxidation. See Final Act. 3. In the same field of
endeavor,3 the Examiner found “Hall discloses a dental implant having an
outer layer of titanium dioxide provided by an anodic oxidation process”.
See id. (citing Hall 121). The Examiner concluded that “[i]t would have
been obvious to one having ordinary skill in the art at the time the invention
was made to modify Nilsson by providing the titanium dioxide layer by the
3 “Generally, a skilled artisan would only have been motivated to combine
analogous art.” In re Ethicon, 844 F.3d at 1349.
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Application 14/069,224
method of anodic oxidation as taught by Hall as an alternative suitable
known method yielding the same and/or predictable results.” Final Act. 3;
see also Ans. 5.
Appellants’ contention that the Examiner has not provided sufficient
rationale to establish a prima facie case of obviousness is ineffective to show
error without addressing the Examiner’s actual rationale supra. For
example, Appellants’ assertion that “the Final Office Action is leaping to the
conclusion that a teaching of anodic oxidation would be useful for
preparing a surface that is intended to be imaged” (Appeal Br. 6—7) fails
to address the Examiner’s articulated rationale—or explain why one of
ordinary skill in the art could not have modified Nilsson’s device by Hall’s
anodic oxidation method, which the Examiner found to be an alternative
suitable known method at the time the invention was made. Such a
combination, as proffered by the Examiner, provides sufficiently adequate
reasoning with rational underpinning to support a conclusion of obviousness.
Because the Examiner’s rationale for the proposed combination does not
require demonstrating a motivation to combine from the references,
Appellants’ argument based on a lack of motivation to combine fails to show
error in the rejection thereof.
We also are unpersuaded of error by Appellants’ contention “that the
Final Office Action has not provided all the requisite findings required under
the M.P.E.P. for supporting such a rejection and therefore this rejection is
improper.” Appeal Br. 8. Contrary' to Appellants’ assertion, “a finding that
‘the titanium dioxide layer by the method of anodic oxidation as taught by
Hall’ would predictably provide the same surface as indicated by Nilsson”
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Application 14/069,224
(id.) is not required under the Examiner’s rationale to support the conclusion
that claim 1 would have been obvious. Instead, the Examiner found that
Hall’s method of providing a titanium oxide layer by the process of anodic
oxidation to form the outer surface of a similar device was already well
known, and applying this known process to modify Nilsson’s device would
have yielded the predictable result of forming “a metal dioxide surface layer
on a metal substrate.” Ans. 6; Hall 12 (“It is already known to produce
implants with oxide layers with substantial thicknesses and porosities. . . It is
thus known to form the porous and thick layers by using various methods,
for example the Ti plasma method, shot-peening, etching, anodic oxidation,
etc.”). Appellants do not explain why the Examiner’s proposed modification
is not a predictable variation that can be implemented by a person of
ordinary skill in the art. Therefore, we find unpersuasive Appellants’
contention that the combin ation of Nilsson and Hall is improper.
In view of the foregoing, we sustain the Examiner’s rejection of
independent claim 1, including dependent claims 4—7, 18, and 20, which fall
with independent claim 1.
Dependent claim 19
Claim 19 recites “the step of machining the position locator to a
dimension which has a thickness of said metal oxide layer subtracted.”
Appeal Br. 21, Claims App. Appellants’ argument as to claim 19 (Appeal
Br. 18—19; Reply Br. 5—6) is unpersuasive of error because it’s not
commensurate with the scope of the claim, which merely requires the
machined position locator to have a thickness. As such, the Examiner’s
finding “that both Nilsson’s and Hall’s devices are machined (i.e. without
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Application 14/069,224
the added oxide layer) to a dimension with the metal oxide layer subtracted”
meets the language of the claim. Final Act. 4; see also Ans. 8. Thus, we
sustain the rejection of claim 19.
Rejection II
Dependent claim 3
We are persuaded by Appellants’ argument that the combination of
Nilsson, Hall, and Ohtani is improper because Ohtani is not analogous art4 to
the claimed invention. Appeal Br. 14—16; Reply Br. 5. Appellants argue
that Ohtani is neither from the same field of endeavor as the claimed
invention nor reasonably pertinent to the problem faced by the inventor. Id.
at 15. Responding to Appellants’ argument, the Examiner ostensibly agreed
that Ohtani is not from the same field of endeavor as the claimed invention.
Ans. 7. Instead, the Examiner found that “Ohtani’s disclosure of a process
of forming a homogenous layer of titanium dioxide onto a substrate (column
26 lines 59—64) is maintained to be pertinent to the problem with which
Applicant was concerned, i.e. forming a surface layer of titanium oxide with
homogenous layer thickness.” Id.
4 A reference is analogous art to the claimed invention if: (1) the reference is
from the same field of endeavor as the claimed invention (even if it
addresses a different problem); or (2) the reference is reasonably pertinent to
the problem faced by the inventor (even if it is not in the same field of
endeavor as the claimed invention). See In re Bigio, 381 F.3d 1320, 1325
(Fed. Cir. 2004). And a reference is reasonably pertinent if, because of the
matter with which it deals, it logically would have commended itself to an
inventor’s attention in considering his or her problem. See In re Clay, 966
F.2d 656, 659 (Fed. Cir. 1992).
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Ohtani is directed to a process for fabricating a semiconductor device
using crystalline semiconductor (Ohtani, 1:9-11). In particular, Ohtani
teaches the use of metal catalysts to speed nucleation and crystallization of
silicon semiconductor films (id. at Abstract, 4:19—64). As part of its
disclosure of its semiconductor device fabrication method, Ohtani teaches
the use of spin-coating an organometallic compound on the semiconductor
surface to form a metal oxide layer (id. at 26:39-58). This metal oxide layer
is used as a starting material for the crystallization of the silicon film (id.
at 6:2—14; 26:43 45). Ohtani explains that the technique forms a “uniform
and continuous layer on the semiconductor surface without creating nuclei
out of metal particles used for crystallization [of the semiconductor]” (id.
at 26:59-64).
Appellants’ Specification is directed to a position locator for oral,
dental, or maxillofacial restorative medical procedures that has a surface
detectable by optical scanning for position and orientation determination
(Spec. 12). The Specification explains that glossy surfaces of prior position
locators reflect too much light causing less light to reach the detector making
correct measurements more difficult (id. 145). Appellants further note that
many processes that yield a dull surface result in an uneven surface, which
does not have the tolerances necessary for a surgical positioning device (id.
46—50). Appellants’ solution to these problems is to oxidize the surface
of the metal probe using an anodic oxidation process (id. H 51—52). The
Specification explains that metal oxides on the surface can provide good
optical properties for the probe (id. H 59-63), and that oxidizing processes
have good tolerances for the necessary dimensional control (id. H 51—58).
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Application 14/069,224
We agree with Appellants that the Examiner has failed to explain
adequately why Ohtani “logically have commended itself to an inventor’s
attention in considering his or her problem.” In re Clay, 966 F.2d at 659.
Ohtani deals broadly with fabrication of semiconductor devices using
crystalline semiconductor materials. In particular, Ohtani focuses on the use
of metal catalysts to speed the crystallization process in silicon films. The
metal oxide in Ohtani, on which the Examiner relies, is applied to a
semiconductor substrate and is used simply as a way of putting the metal
catalyst in contact with the semiconductor material that Ohtani wants to
crystallize. Ohtani has no discussion of applying its metal oxide to the
surface of a metal part, let alone a surgical probe. Ohtani further does not
discuss any of the optical properties of the metal oxide film, nor does Ohtani
appear to discuss the tolerance control that the process may provide. We
find that a disclosure related to applying a metal oxide to a semiconductor
substrate for purposes of catalyzing the crystallization of the semiconductor
would not have logically commended itself to the inventor’s attention in
considering the problem of treating the surface of a metal surgical probe for
optimizing optical properties and tolerance control.
Accordingly, we are persuaded that the Examiner erred in finding that
Ohtani is analogous art. Thus, we do not sustain the rejection of claim 3 as
obvious over the combination of Nilsson, Hall, and Ohtani.
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DECISION
The decision of the Examiner to reject claims 1, 4—7, and 18—20 is
affirmed.
The decision of the Examiner to reject claim 3 is reversed.
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-IN-PART
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