Ex Parte Fischer

Board of Patent Appeals and Interferences

Mar 1, 2012

11176839 (B.P.A.I. Mar. 1, 2012)

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.
11/176,839 07/07/2005 Dan E. Fischer 7678.848.1 7276
22913 7590 03/02/2012
Workman Nydegger
1000 Eagle Gate Tower
60 East South Temple
Salt Lake City, UT 84111
EXAMINER
SINGH, SUNIL K
ART UNIT PAPER NUMBER
3732
MAIL DATE DELIVERY MODE
03/02/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte DAN E. FISCHER
__________

Appeal 2010-009380
Application 11/176,839
Technology Center 3700
__________

Before DEMETRA J. MILLS, ERIC GRIMES, and LORA M. GREEN,
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
instrument, which the Examiner has rejected as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Claims 1-5, 11, 14, and 16-23 are on appeal. Claim 1 is representative
and reads as follows:
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1. A dental cutting instrument having high toughness, durability,
resistance to work hardening, and biocompatibility for use with a tooth,
comprising:
an instrument shaft or body having an abrading segment configured to
engage dental tissue, wherein the shaft or body is formed from:
a nickel-free titanium metal alloy having a composition in mole
percent of about 1Ti-12Ta-9Nb-3V-6Zr-1O or about 1Ti-23Nb-0.7Ta-
2Zr-1O and characterized as having increased tensile strength,
resistance to work hardening, and decreased elastic modulus of
elasticity upon being cold worked; and
wherein the dental instrument is formed in part by cold working
the metal alloy, thereby increasing the tensile strength, resistance to
work hardening, and decreasing the elastic modulus thereof compared
to a dental instrument formed from the metal alloy without being cold
worked,
wherein the dental instrument possesses higher toughness,
durability, resistance to work hardening, and biocompatibility
compared to a dental cutting instrument made of a nickel-titanium
alloy.

Issues
The Examiner has rejected all of the claims on appeal under 35 U.S.C.
§ 103(a) based on Brock
1
and Saito
2
(Answer 4). The Examiner finds that
Brock discloses dental cutting instruments but does not disclose making
them from a nickel-free metal alloy (id.). The Examiner finds that Saito
discloses the specific nickel-free alloys required by claim 1 as having
desirable properties (id. at 5). The Examiner concludes that it would have
been obvious to make an endodontic file, as taught by Brock, “with Saito‟s

1
Brock, US 2003/0077553 A1, issued Apr. 24, 2003.
2
Saito et al., Multifunctional Alloys Obtained via a Dislocation-Free Plastic
Deformation Mechanism, 300 SCIENCE 464-467 (2003).
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metal alloy in order to provide an endodontic file with super elasticity,
strength, and cold-workability” (id.).
Appellant contends that the Examiner has not provided an adequate
reason for combining the disclosures of the cited references (Appeal Br. 6-
11) or shown that doing so would result in the claimed product (id. at 8-9).
Appellant also contends that he has presented evidence of secondary
considerations that confirms the nonobviousness of the claims (id. at 13-16).
The issues presented are: Has the Examiner shown that the claimed
product would have been prima facie obvious based on Brock and Saito?
If so, has Appellant provided evidence of secondary considerations
that, when weighed with the evidence supporting the prima facie case, is
sufficient to support a conclusion of nonobviousness?
Findings of Fact – Prima facie Obviousness
1. Brock discloses an endodontic file for cleaning and enlarging a
root canal (Brock 1, ¶ 3).
2. Brock discloses that “the files or reamers must be able to withstand
the torsional load necessary to penetrate and enlarge the canal opening
without breaking the instrument” (id. at 3, ¶ 31).
3. Brock discloses that endodontic files are typically made from a
nickel-titanium alloy (id. at 3, ¶ 36) and that such files are highly flexible
(id. at 3, ¶ 32) and have superelastic properties (id. at 3, Table 1).
4. Brock discloses that “[w]hile nickel-titanium alloys are preferred,
the invention disclosed . . . may be practiced using a wide variety of other
suitable alloys, including other super-elastic alloys and conventional
medical-grade steel or nickel alloys” (id. at 3, ¶ 37).
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5. Saito discloses “a group of alloys that exhibit „super‟ properties,
such as ultralow elastic modulus, ultrahigh strength, super elasticity, and
super plasticity” (Saito 464, abstract).
6. Saito discloses that “[v]arious composition combinations meet
these criteria, such as Ti-12Ta-9Nb-3V-6Zr-O and Ti-23Nb-0.7Tn-2Zr-O”
(id. at 464, middle col.).
7. Saito discloses that “[i]n order to exhibit these properties, each
alloy system requires substantial cold working” (id.).
Analysis – Prima facie Obviousness
We agree with the Examiner that the claimed product would have
been obvious based on Brock and Saito. Brock discloses a dental cutting
instrument, and states that such instruments must be able to withstand
torsion without breaking; i.e., they must be made of a strong material. Brock
also discloses that such instruments are conventionally made from a
superelastic nickel-titanium alloy but suggests that “other super-elastic
alloys” can also be used. Saito discloses that the specific alloys recited in
claim 1 provide, among other things, ultrahigh strength and superelasticity
upon cold working. It would have been obvious to make Brock‟s dental
instrument from Saito‟s superelastic, ultrahigh strength cold worked alloys
because Brock expressly suggests making its instrument from superelastic
alloys other than nickel-titanium alloys.
Appellant argues that Brock and Saito are non-analogous art, because
“Saito is outside the dental arts” (Appeal Br. 9). For the same reason,
Appellant argues that it would not have been obvious to combine Saito‟s
alloy with Brock‟s dental instrument (id. at 6).
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This argument is not persuasive. Brock‟s express suggestion that its
invention “may be practiced using a wide variety of other suitable alloys,
including other super-elastic alloys” (FF 4) would have led a skilled worker
to references disclosing other superelastic alloys, including Saito.
Appellant also argues that it was not known whether one could
manufacture a dental cutting instrument from Saito‟s alloys (Appeal Br. 8).
This argument is also unpersuasive, because Brock suggests that superelastic
alloys other than the conventional nickel-titanium alloy are suitable for its
instruments, and Saito describes its alloys as superelastic and ultrahigh
strength. Appellant has provided no persuasive evidence to show that a
skilled worker would have doubted that Saito‟s alloy would have been
suitable for use in Brock‟s instrument.
Finally, with regard to the prima facie case, Appellant argues that the
Examiner has not shown that the cited references would have made obvious
an instrument having the properties recited in claim 1 (Appeal Br. 8-9).
Similarly, Appellant argues that he was the first to recognize the problems
with nickel-titanium endodontic files that are solved by using the alloys
having the properties recited in claim 1 (id. at 10-11).
This argument is also unpersuasive. Claim 1 itself makes clear that
the properties that are recited in the claim are the result of making the
claimed instrument from one of the recited alloys and cold working it: “a
nickel-free titanium metal alloy . . . characterized as having increased tensile
strength, resistance to work hardening, and decreased elastic modulus of
elasticity upon being cold worked; and wherein the dental instrument is
formed in part by cold working the metal alloy” (claim 1). Saito discloses
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the specific alloys recited in claim 1 and discloses that, after cold working,
the alloys provide desirable properties that include ultrahigh strength and
superelasticity. We therefore agree with the Examiner that the evidence
adequately shows that the properties recited in claim 1 would be inherent in
the instrument made obvious by the prior art.
Findings of Fact – Secondary Considerations
8. Appellant has provided a declaration under 37 C.F.R. § 1.132
dated March 7, 2008 (First Fischer Declaration).
9. Dr. Fischer states that nickel-titanium (NiTi) endodontic files were
first introduced in or around 1988 (First Fischer Declaration, ¶ 9).
10. Dr. Fischer states that patents covering methods of grinding a
cutting edge on an endodontic instrument have been vigorously enforced by
the patent owner (id. at ¶¶ 10-11).
11. Dr. Fischer states that, as a result, there has been a strong
economic incentive to identify materials other than NiTi that would be
useful for making endodontic instruments (id. at ¶ 12), and that “[t]his
economic incentive to design around the Heath patents has existed for
approximately 10-13 years” (id.).
12. Dr. Fischer concludes that, had it been obvious to substitute other
titanium-based alloys for the conventional NiTi in making endodontic
instruments, “the industry would certainly have done so during the period of
approximately 10-13 years since the issuance and beginning of enforcement
of the Heath patents” (id. at ¶ 14).
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13. Appellant has provided a declaration under 37 C.F.R. § 1.132
dated April 8, 2008
3
(Second Fischer Declaration).
14. Dr. Fischer states:
Notwithstanding the fact that the nickel-free, titanium-
based alloy used to make the claimed endodontic files is a
superelastic alloy, the resulting endodontic files possess greater
stiffness, hardness and toughness compared to similarly sized
endodontic files made from NiTi. The claimed endodontic files
provide a better feel to the practitioner, have a superior and
more durable cutting edge, result in superior cutting and
cleaning of a root canal, and are less likely to break during an
endodontic procedure compared to endodontic files made from
NiTi. Moreover, the claimed endodontic files are much less
prone to improperly collapse (or “noodle”) when inserted into a
root canal than endodontic files made from NiTi.
(Second Fischer Declaration, ¶ 9.)
15. Dr. Fischer states that “the claimed endodontic files provide
superior results” compared to endodontic files made from NiTi, “which
results were surprising, unexpected and unpredictable in view of the art of
record” (id. at ¶ 11).
Analysis – Secondary Considerations
After an examiner has presented a prima facie case of obviousness,
“[t]he patent applicant may then attack the Examiner‟s prima facie
determination as improperly made out, or the applicant may present
objective evidence tending to support a conclusion of nonobviousness.” In
re Fritch, 972 F.2d 1260, 1265 (Fed. Cir. 1992). “[O]bjective evidence of

3
Although the declaration states that it is “DATED this 8
th
day of April
2008,” it was actually received by the USPTO on April 10, 2009.
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nonobviousness includes copying, long felt but unsolved need, failure of
others, commercial success, [and] unexpected results created by the claimed
invention.” In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998) (citations
omitted).
Here, Appellant asserts that he has presented evidence of both long-
felt but unsatisfied need (Appeal Br. 13-14) and unexpectedly superior
results (id. at 14-16). Regarding long-felt need, Appellant argues that the
Heath patents, covering methods of grinding a cutting edge on an endodontic
instrument, have provided a strong incentive to identify alloys other than
NiTi for use in endodontic instruments, an incentive that has existed for 11-
14 years (id. at 14). Appellant argues that, despite this incentive, no one
before him made endodontic instruments from the nickel-free alloys recited
in the claims, and this evidence of long-felt but unmet need is evidence of
the nonobviousness of the claimed product (id.).
We find that Appellant‟s evidence of long-felt need is entitled to little
weight as evidence of nonobviousness. Saito, which discloses the alloys
required by claim 1, was published April 18, 2003 (Saito 464). The instant
patent application claims an effective filing date of July 9, 2004 (Spec. 1,
¶ 1). Thus, the claimed solution to the alleged economic disincentive to
using NiTi for endodontic instruments became available only 15 months, not
11-14 years, before the effective filing date of the claims. This relatively
short time period undercuts Appellant‟s argument that, if using alloys other
than NiTi for endodontic instruments would have been obvious, someone in
the industry would have done it earlier to avoid the Heath patents. See
Graham vs. John Deere Co., 383 U.S. 1, 36 (1966) (“At the latest, those
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differences [between the claimed and prior art products] were rendered
apparent in 1953 by the appearance of the Livingstone patent, and
unsuccessful attempts to reach a solution to the problems confronting [the
inventor] made before that time became wholly irrelevant.”).
Regarding unexpected results, Appellant argues that the nickel-free
alloys recited in the claims provide endodontic files with properties superior
to those made from NiTi, and that these results were surprising, unexpected,
and unpredictable (Appeal Br. 14-15, citing ¶¶ 9 and 11 of the Second
Fischer Declaration).
We find that Appellant‟s evidence of unexpected results is also
entitled to little weight as evidence of nonobviousness. The Second Fisher
Declaration states that a nickel-free titanium-based alloy results in
endodontic files with superior properties compared to endodontic files made
from NiTi (FF 14). However, the declaration provides no comparison of the
claimed product to the prior art NiTi files that would show the magnitude of
any differences. Nor does the Second Fischer Declaration provide any basis
in evidence or technical reasoning to support Dr. Fischer‟s statement that the
alloys required by the claims provide results that are unexpectedly superior
to those produced by NiTi. This omission is especially significant given
Saito‟s description of its alloys as exhibiting “a number of enhanced material
properties” including ultrahigh strength and super elasticity (Saito, abstract).
Thus, although the Second Fischer Declaration asserts that the
claimed products have unexpectedly superior properties, Appellant has not
provided evidence showing that results are a substantial improvement over
the prior art, nor has Appellant adequately addressed Saito‟s evidence
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tending to show that a skilled worker would have expected the claimed
alloys to be an improvement over NiTi. See In re Soni, 54 F.3d 746, 751
(Fed. Cir. 1995) (“Mere improvement in properties does not always suffice
to show unexpected results. In our view, however, when an applicant
demonstrates substantially improved results . . . and states that the results
were unexpected, this should suffice to establish unexpected results in the
absence of evidence to the contrary.”).
“If a prima facie case is made in the first instance, and if the applicant
comes forward with reasonable rebuttal, whether buttressed by experiment,
prior art references, or argument, the entire merits of the matter are to be
reweighed.” In re Hedges, 783 F.2d 1038, 1039 (Fed. Cir. 1986). When we
weigh the evidence cited by the Examiner together with the rebuttal
evidence provided by Appellant, we conclude that a preponderance of the
evidence of record supports a conclusion of obviousness.
Conclusions of Law
The Examiner has shown that the product of claim 1 would have been
prima facie obvious based on Brock and Saito. Appellant‟s evidence of
secondary considerations is at best weak evidence of nonobviousness, and
when weighed with the evidence supporting the prima facie case, does not
support a conclusion of nonobviousness.
Claims 2-5, 11, 14, and 16-23 were not argued separately and
therefore fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
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SUMMARY
We affirm the rejection of claims 1-5, 11, 14, and 16-23 as
unpatentable under 35 U.S.C. § 103(a) based on Brock and Saito.
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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