Ex Parte Foerster

Patent Trial and Appeal Board

Oct 23, 2017

13378633 (P.T.A.B. Oct. 23, 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.
13/378,633 01/30/2012 Rolf Foerster TWEL4234US 7581
26822 7590 10/25/2017
Hackler Daghighian Martino & Novak
433 North Camden Drive, Fourth Floor
Beverly Hills, CA 90210
EXAMINER
LEWIS, RALPH A
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
10/25/2017 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):
marc@hdmnlaw.com
jcf@hdmnlaw.com
uspto@dockettrak.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROLF FOERSTER
Appeal 2016-007816
Application 13/378,633
Technology Center 3700
Before JEFFREY N. FREDMAN, ULRIKE W. JENKS, and
DEVON ZASTROW NEWMAN, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134(a) involving claims to a set
of self-ligating brackets for orthodontics. The Examiner rejected the claims
as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
Statement of the Case
Background
“Passive brackets and active brackets both [are used] ... in the
orthodontic treatment of malpositions of teeth” (Spec. 2). “Clips for self-
ligating brackets can be manufactured with reproducible resilient properties
and dimensions only with difficulty as the brackets and the resilient clips
have very small dimensions” {Id. at 3).
1 Appellant identifies the Real Party in Interest as BERNHARD
FOERSTER GMBH {see App. Br. 3).
Appeal 2016-007816
Application 13/378,633
The Claims
Claims 1—10 and 13—18 are on appeal. Claim 1 is representative and
reads as follows:
1. A set of self-ligating brackets for orthodontics, each of
the brackets comprising:
a base;
a block arranged on the base;
an occlusal wall extending from the block and having at
least one occlusal ligature wing;
a gingival wall extending from the block and having at
least one gingival ligature wing;
a slot separating the occlusal wall and the gingival wall
from one another, said slot having a minimum clear width
which is the same for each of the brackets of the set and extends
continuously in a direction from mesial to distal, and having a
base area on which an archwire lies during orthodontic
treatment;
a passage extending in a gingival-occlusal direction
through the block and being delimited by a lingually located
surface and by a labially located surface;
a resilient clip for each of the brackets with a labial leg
and with a lingual leg interconnected by an occlusally arranged
portion;
wherein the lingual leg can be inserted into the passage
and can be displaced therein only in the gingival-occlusal
direction between a closed position in which the labial leg
extends into a recess in the gingival wall, said recess providing
at least in a lingual direction a stop for the labial leg from which
stop the labial leg of the clip can be raised by the archwire
inserted into the slot, and an open position of the clip, in which
a tip of the labial leg is situated above the occlusal wall;
the set comprising at least one passive bracket and at
least one active bracket, where the passive and active brackets
differ only in the depth of the slot and thus differ in terms of the
distance of their lingual stop from the base area of the slot.
2
Appeal 2016-007816
Application 13/378,633
The Issue
The Examiner rejected claims 1—10 and 13—18 under 35 U.S.C.
§ 103(a) as obvious over Wool,2 Chester,3 and Allesee4 (Final Act. 2—5).
The Examiner finds the “Wool brackets meet all the limitations of the
present claims with the exception of those limitations directed to a set of at
least one passive bracket and at least one active bracket wherein the brackets
differ only in the depth of the slot” (Final Act. 3—4). The Examiner finds
Wool teaches “the arch wire slot may be sized (both in depth and width) to
accommodate different sized arch wires . . . but does not expressly teach at
least two brackets that differ only in slot depth” (Id. at 4).
The Examiner finds the ordinary artisan
would have readily recognized that archwires come in a variety
of conventional sizes including sizes with the same width, but
of different depth as is evidenced for example by Allesee et al
who in the first column of Figures 8-17 list numerous
conventionally sized arch wire sizes that have the same width,
but different depths.
(Final Act. 4). The Examiner also finds Chester teaches that “orthodontists
desire to keep a supply or kit of a variety of different brackets on hand to
meet the needs of different patients” (Id.). The Examiner concludes that
using “brackets having different slot sizes to accommodate conventionally
sized arch wires (including arch wires having the same width, but different
depth) in order for the orthodontist to meet the needs of their patients would
have been obvious” (Id.).
2 Wool, US 2009/0061376 Al, published Mar. 5, 2009 (“Wool”).
3 Chester et al., US 5,350,059, issued Sept. 27, 1994 (“Chester”).
4 Allesee et al., US 5,820,370, issued Oct. 13, 1998 (“Allesee”).
3
Appeal 2016-007816
Application 13/378,633
The issue with respect to this rejection is: Does the evidence of
record support the Examiner’s conclusion that Wool, Allesee, and Chester
render claim 1 obvious?
Findings of Fact
1. The Specification teaches: “By passive bracket is meant a
bracket in which the archwires, which are inserted into the slot of the
brackets for orthodontic treatment, cannot be subjected to pressure by the
labial leg of the clip as long as the archwire lies on the base area of the slot”
(Spec. 2).
2. The Specification teaches: “By active bracket is meant a
bracket in which at least the archwires with the largest cross section
occurring in orthodontic practice are subjected to pressure by the labial leg
of the resilient clip even when they lie on the base area of the slot” (Spec. 2).
3. Figures 3 and 4 of the Specification are reproduced below:
Figure 3 depicts an active bracket and Figure 4 depicts a passive bracket
showing
4
Appeal 2016-007816
Application 13/378,633
the significant difference between both brackets consists in the
fact that the distance between the lingual stop 37 and the base
area 11 with a passive bracket 41 is larger than with an active
bracket 40, namely so large that even the arch wire 10 having
the largest cross section occurring in orthodontic practice from
the clip 25 is not subjected to pressure.
(Spec. 12).
4. Figure 1 of Wool is reproduced below:
34
FIG. 1
Figure 1 shows the “bracket 10 of the present invention includes a bracket
body 12 that can be attached to a pad 14 that is bonded to a tooth in use . . .
the bracket body 12 is shown to have . . . gingival 12c, occlusal 12d. . .
surface portions” (Wool 125).
5
Appeal 2016-007816
Application 13/378,633
5. Wool teaches an “archwire 18 is shown in the archwire slot 16”
(Wool 125).
6. Wool teaches a “spring clip 20 of resilient material having
labial 20a and lingual 20b portions in embracing sliding engagement with
corresponding labial 12b and lingual 12a surface portions of the bracket
body 12” (Wool 126).
7. Wool teaches:
the bracket body 12 includes a mesial-distally extending groove
26 provided adjacent the archwire slot 16 in a portion of the
bracket body 12 labially and gingivally of the archwire slot 16,
the groove opening in an occlusal direction. ... the labial
portion 20a of the spring clip 20 terminates in a free end 28
that, in the closed position, is retained in the groove 26 in the
bracket body 12. The groove 26 substantially prevents
movement of the spring clip 20 in the labial direction when in
the closed position.
(Wool 127).
8. Wool teaches variations on the size of slot 16, specifically
explaining that:
For example, when the arch wire slot 16 has a height h . . .
in the occlusal-gingival direction of 0.019”, it has a depth d of
at least 0.026” such that the occlusally facing opening of the
groove 26 is spaced at least 0.026” from the lingual surface 16a
of the arch wire slot 16.
In another example, when the archwire slot 16 has a
height h in the occlusal-gingival direction of 0.023”, it has a
depth d of at least 0.029” such that the occlusally facing
opening of the groove 26 is spaced at least 0.029” from the
lingual surface 16 a of the arch wire slot 16.
(Wool 1128-29).
6
Appeal 2016-007816
Application 13/378,633
9. Allesee teaches that “modem bracket systems include brackets
having slots aligned at angles and inclinations, varying base thicknesses, and
incorporated anti-rotations, thus greatly reducing or eliminating the need for
bending wires” (Allesee 6:14—17).
10. Figure 8 of Allesee is reproduced below:
TORQUE ARQLE FORMED JR BRACKET - 0.20 SLOT
DEV.
W:R£ S12E ANGLE : 1® '; "•jo 3° 6® 7® 10s : 12® 14® is® : 17®
l.\n:-j.....\& \., j%>\Mi 30-'
014 x014 NTH - j - | - : - j - ■ ’ -- [ -
014x0} 8 25 4145 0 00 0 00 0 00 0 QQ C 01 9 :.:0 0 00' 0,00: 0.50: 0.90; 0.00 0 00 0 00 0 00 0 00 158 3 58 6 63
014 x 022 17.61-30 0.00: o.oq: 00L 0 09 0 03 a 00 000 0,00: O.QO: 0.93 ooo 0.00 0.05 2 39 4 33 7 39 9.39 12,39
014 x025 15.0183 0.00! 0 00 0 00 UtO 0 00 3 00 0 00 0,00: 0.00: 0 03 0 00 0 00 1 93 4 98 6,98 8 US 11 93 14.98
014 x028 13 143 0.00 i 0 00 0 00 0 CO 0 00 0:00; 0.00; o.oo! 0.00; 0.00 0 85 i 85 3.85 5 85 S 85 = = 85 13 55 18.85
016x015 25 5238 o.oo; 0 90 0.00 £3 CO 0 03 000 0 00 0.00: 0,00 0.05: 0,00 000
COO
0 00 0.00: 0.00; 0.00: 1.47 4 47
015x 015 18 ’078 0.00: 000 0.00 0 00 0.03: 000 coo 006; 0.00 0.00 6.00 0.00 1 23 3 20 0 20 8 20 11 20
015 x 0S2 14 4032 0,00: 0 00 0 00 0 00 0.00: 3QO C 00 O..0Q: 0.00 0 03 0 00 0.60 2 00 5.60 ’.50 1Q.60 1260'15.CO
765 885 12 65 1465 1705015X025 12 3531 0.00: 6,00. 0.00 000 0,00:
TOT
9,00- 0.00:
0.00: 0.00;
0.00! 0.00: 0.00: 1 66 2 66 4,66
015x028 1C 8441 0 00 0 00 0 00 0 00 0.00: 0 16 1 J3 3.15 4 16 0 16 St 16 11 ?5 14 15 16 15 19 ?5
OiS x 018 iS.siiSHISS: 0.001 0.00 0 00 0.00: 6,06: 6,661 0.00: 6.00: O.U0; 0,01* TO? 2 45 5 40 -40 10 49 12 49 15 4S
018 x 016 17.1144 0.00: 0 00 0.00 0.00 0.00! 6.66! 0.66: 0.50: 0,90; 0,00! 0,00 000 0 00 2 36 4.66 7.68 9 68 1266
018 x 022 11298 0.09 0 0C 0.00 0 00 0.00! 0 no 0 00 0 00: 0 00: 6.70! 2 70 3 70 5 70 ?79 10 70 13 "0 15 70 18 70
016x025 S.74312 0,00: 0 00 SCO TO O'.SK}: TO: 0.30! 0.25: 1.25: 2.2$l 4.26 5,26; 7,25; 10,25:; 12.25] 15,25; 17.25 20 26
■016 x 028 8,58394 0.00: 0 00 SCO 0 00 0.00: 0 00 , 04- 1.41 2 41 3.41] 5.41: 6.41: 8.41 11 45 194? 1641 1841 21 4?
017x017 11.2934 0.00: o.oo: 0.00 0.0C! 0.09: 6,001 6,66: O.55; C,90| 9,70; 2 7Q 3 7C 5.7Q 0.701:10.70 13.70 15.70 13.70
017 x 022 8.3086 0.09] e.ooi 0 00 0.00! Q.Q0! 0 00 0 09 1 89: 2 09 3.69: SIS S69 5 69 11 63 13 63 16 63 16 53 21.63
017 x 02.5 7.23182 0.00; 0.00: 0.00 0.00: 0.00: 0 60 1 60 2 80 3 80: 4 50 6 SO 7 80 9 60 12.89f14.80 17.80.19.80j.22.8O
017 x 02 8 6,33846 0 00! 0 00 0 00 0 00 0.63: 1.63: 2.63 3.S3: 4.S3 5 83 7 £2 8.63.10.83 isjsns.aa 1-&.&3 2o m 2J1:.'
0178x0175 8 91285 0.00: GOO 0,00 0.0-0: 0.66: 0,09:: 0.08; 1.08; 2.OS 3.03 6 08 6,06. 3.08 11.06513.08 16.06 ISOS 2106
0175x022 6.85281 0.00: 0.00 0.00 0.00: 0.14: 1 14 2 14 ? '4 4 14 5.14 7.14 8.14 *0. i4:'?3-.‘!4!15.1:4. 18.14:40.14:4Jl.14
0175 x 025 6,65687 6.00 j 0.00: 0.00 0,00! 1.04: 2,94; 3.04: 4 04 5 04 6 04 8-04 904 11 04 14 04 18 04 19 04 21 04 24 04
0175 x.G2S 5.27479 0,00: 0 00: 0 00 0.00: 172: 2 72 3 72 4 72 5.72 6.72 3.72 9.72:11.72 14 12 16 72 19 72 21 72 74
0:18x018 6,78308 6,00: 0.00: 0 03 0.00! 0,21: TO 2M 3.21 : 4 6 21 tI-t 8 21 1021 132? 1671 1871 702? 2321
018x022 0.00: 0.00: 0 03 0.00! 157! 2 57 3,57: 4.57: 5,57 6 57 8.57 9,57:1167 14.67 S 10,67519.57)21.57 524,67
018x025 4,72449 0.00; 0.00 0.00 0 27: 2.27 3.2.7. 4?" 5 27 6,27 72’ 927 10.27; 12 27 15 2? 17 27 20 27 22 27 25 27
018X028 4.19490 0,00: 0.00 0.0a 0.80: 2.80: 3.80! 4.80: 5.30: 6.80 7 80 9.80 1080:12.80:15.89 17.8&j20.80j 22.80; 25.80
019 X 019 3.10098 6.66:
TO:
0 00: 000 1,90! 3 90 4,30! fl.SOj 6 90 7 00 3 90 10 90 11 SO 13 SO 16 &0 1 S 90 21 96 73 00 26 30
019x026 2 32342 0.00: 0 07 2 07 4 07 S.«7: 8.67: 7 67 8,87 S6> 1 * 07 = 2 07:14 07 17,67 19,67 22,07 24 07 27.67
019X028 2,07215 0.00: 0.00! 0.95 2 93 4 $3 5,93 : 6.93: 7.93 8 93 9.93 1193 12 93:14 33 17 93 19 93 22 93 24 93 27 83
0195x0185 1.48803 0.00 i 0.51: 1.51 3,51 5.51: 6 81 7 51 8.51 8.51; 10.61; 12 5* 13 61 15 61 13,51:520.51 ;23,5t 525,51: 20 51
"0195x025 1.11508 9 99 0 64 1.84 3 84 5 S4 6 34 '? 34 5,34 9 34 10.84112.84; 13,84115,84 i 16-84|20.84; 23-84:25,84;23.84
0195 x 028 i, 02954 0,001 667: 1 97 3,37: 5 9’ 0 97 ' 97 9 07 10 O’ 12 97 ! 'J 97 15 97 16.07 20 07 23.37 26 07 26 97
FIGS. 8-10 are charts which presume perfectly square or
rectangular archwires and list actual torque forces generated
using, respectively, a 0.020 inch bracket slot width, a 0.018
inch slot width and a 0.022 inch slot width. The torque angle
manufactured into the bracket is listed at the top of each
column, and the different rows illustrate various wire sizes
which may potentially be selected for use with the respective
slot system.
7
Appeal 2016-007816
Application 13/378,633
(Allesee 7:54—61).
11. Chester teaches: “Orthodontists who prefer to retain a variety of
orthodontic brackets on hand for making a customized patient ‘kit’ or set of
brackets are thus faced with the problem of keeping a sufficient number and
variety of brackets on hand to meet the foreseen needs of each patient”
(Chester 2:10-15).
Principles of Law
“[Apparatus claims cover what a device is, not what a device does.'”
Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed.
Cir. 1990). Merely stating an intended use for an apparatus is not sufficient
to distinguish the apparatus from the prior art. In re Sinex, 309 F.2d 488,
492 (CCPA 1962).
Analysis
We adopt the Examiner’s findings of fact and reasoning regarding the
scope and content of the prior art (Final Act. 2—5; FF 1—11) and agree that
the claims are obvious over Wool, Allesee, and Chester. We address
Appellant’s arguments below.
Appellant contends:
The Examiner’s rationale has left out a critical step that is
fatal to its logic. Nothing in Wool or Allesee would suggest,
hint or teach that the accommodation of Wool’s structure to
accept Allesee’s arch wires of same width but different
depth would then result in a structural difference of
providing both an active bracket and a passive bracket.
(App. Br. 20). Appellant further contends “the ‘intended use’ of the
practitioner has no effect on whether the same type of bracket functions as a
passive or active bracket. Rather, the practitioner has to actually select
8
Appeal 2016-007816
Application 13/378,633
either a passive bracket or an active bracket to then function as a passive
bracket or an active bracket” {Id. at 22). Appellant contends a “passive
bracket will not function as [an] active bracket no matter the intent of the
practitioner. Rather, the slot depth must be different such that the clip either
engages against the archwire (10) or it engages against the lingual stop (37)
as taught in the introduction” {Id. at 22).
We do not find these arguments persuasive because, as Appellant
acknowledges in both these arguments and Claim 1 itself, “the passive and
active brackets differ only in the depth of the slot” (Claim 1). Therefore, as
Appellant states, the difference between a passive and an active bracket is
not based on a structural difference between the brackets themselves, or
even the archwires themselves, but rather results from the particular
archwire and bracket combination as selected by an orthodontist {see App.
Br. 22).
This difference is “intended use”, not structural. The set of brackets
with different arch wires is rendered obvious by the combination of Wool,
Allesee, and Chester because Wool teaches a bracket that satisfies the
structural requirements of claim 1, other than the size of the archwire, an
element not required by claim 1 (FF 1—8). In particular, Wool teaches
different slot depths for the bracket (FF 8) and therefore teaches a “set” of
brackets. Allesee teaches a variety of different archwires may be used with
brackets having a variety of different slot sizes (FF 9-10), including wires
whose 0.014”, 0.018”, 0.022” and 0.025” dimensions (FF 9) would result in
a passive bracket in Wool’s 0.026” archwire slot 16 (FF 8) and wires whose
9
Appeal 2016-007816
Application 13/378,633
0.028” dimensions (FF 9) would result in active brackets in Wool’s 0.026”
archwire slot 16 (FF 8).
Chester confirms that the ordinary orthodontist would have had reason
to keep a variety of brackets and wires on hand in order to customize patient
treatment (FF 11). As the Examiner notes “one of ordinary skill in the art
would have reasonably found it obvious for an orthodontist to have kept a
‘set’ of Wool brackets on hand wherein at least one Wool bracket differed
from another Wool bracket only in the archwire depth dimension” (Ans. 6).
Thus, we agree with the Examiner that the ordinary artisan would
have maintained sets of Wool’s brackets and Allesee’s archwires, as
suggested by Chester, and these obvious sets would have satisfied each of
the structural requirements of claim 1, including the “intended use”
requirement for active and passive brackets because the difference between
these brackets solely revolves around the particular Allesee archwire
selected by the orthodontist for use in one of the brackets disclosed by Wool
(FF 1-11).
Appellant contends that
Wool explicitly states that his clip is not in contact with the
archwire, which necessarily means it is a passive bracket.
Wool states in paragraph 0027: “The groove (26) is provided
in relation to the archwire slot 16 such that, when an
archwire (18) is provided in the archwire slot (16) and is in
contact with a lingual surface (16a) of the archwire slot (16),
the spring clip (20) is not in contact with the archwire
(18).” It is clear that Wool never taught an active bracket
design and for the Office Action to suggest otherwise cannot
be supported. Wool’s structure taught away from it being
used as an active bracket.
10
Appeal 2016-007816
Application 13/378,633
(App. Br. 23). Appellant also contends “Allesee teaches to not vary the size
of the slot but rather just vary the size of the arch wire used therein. For
example, figure 8 of Allesee teaches a variety of differently sized archwires
(33 different sizes to be exact) that all fit within a slot width of 0.020 inches”
(App. Br. 25).
We are not persuaded. A teaching away requires a reference to
actually criticize, discredit, or otherwise discourage the claimed solution.
See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior art’s
mere disclosure of more than one alternative does not constitute a teaching
away from any of these alternatives because such disclosure does not
criticize, discredit, or otherwise discourage the solution claimed”).
Appellant does not identify any specific teaching in Wool that discourages
or discredits the use of an active bracket. Appellant does not even identify a
teaching in Wool that suggests a passive bracket is preferred to an active
bracket. Similarly, Appellant does not identify any teaching in Allesee that
discredits or discourages the use of different slot depths whatsoever as
taught by Wool (FF 8).
Appellant contends that the “size of the groove (26) is simply not big
enough to be both an active and a passive bracket because Wool never
contemplated that the bracket would ever be an active bracket” (App. Br.
24).
We find this argument unpersuasive because Appellant provides no
evidence, as opposed to attorney argument, supporting their position that the
bracket size in Wool would be unable to function as an active bracket when
used with a larger archwire (cf. Ans. 13; “If the arch wire with which a Wool
11
Appeal 2016-007816
Application 13/378,633
bracket is used is large enough to contact both the bottom of the archwire
slot and the labial leg of the resilient clip so that the resilient clip can apply
pressure, then it is an ‘active bracket’, but if the arch wire is too small to
contact both the bottom of the archwire slot and the labial leg of the resilient
clip, then the Wool bracket is a ‘passive bracket.’”). Indeed, Appellant
provides no evidence regarding the relative size of the brackets or archwires
that would or would not satisfy this “intend use” recitation. See In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a
brief cannot take the place of evidence.”). See also In re De Blauwe, 736
F.2d 699, 705 (Fed. Cir. 1984) (Arguments and conclusions unsupported by
factual evidence carry no evidentiary weight.)
Appellant contends
Allesee teaches that for the treatment of the patient one
single archwire has to be selected. That means the
practitioner has to choose one of the different archwires
disclosed in Allesee. As a consequence, each of the
identical brackets applies a force which is predetermined by
the misalignment of the respective tooth and cannot be
altered.
(App. Br. 27).
We find this argument unpersuasive because it does not relate to
either the prior art or the claims. Just as the claims are to a “set of self-
ligating brackets” (see Claim 1), the Examiner’s position does not rely on a
particular bracket and archwire set but rather relies upon the multiple
different brackets with different depths disclosed by Wool (FF 8) being
combined with the many different archwires disclosed by Allesee (FF 9) for
the orthodontist to keep available (FF 11), thereby rendering the set of
12
Appeal 2016-007816
Application 13/378,633
brackets obvious. Appellant’s use of the term “choice” implies method
steps, but the claims are drawn to a particular set of products, not a method
of orthodontia. Because a “mere statement of a new use for an otherwise old
or obvious composition cannot render a claim to the composition
patentable,” (In re Zierden, 411 F.2d 1325, 1328 (CCPA 1969)), Appellant’s
claims are obvious.
We recognize, but find unpersuasive, Appellant’s argument that
“Allesee teaches active-only brackets and Wool teaches passive-only
brackets. One skilled in the art when reviewing Wool and Allesee would not
find it obvious to then somehow create a structure that switches between
active and passive brackets by varying only the depth of the slot” (App. Br.
28). As already discussed above, the claims encompass brackets with
multiple depths (FF 8) and multiple archwires (FF 9), that will necessarily
result in structures that function both as passive and as active brackets (see
Ans. 13).
Appellant concludes “even if the teachings of Allesee and Chester are
combined with Wool using the unfair advantage of hindsight, nothing in any
of the references suggest creating both an active bracket and a passive
bracket by only varying the depth of the slot” (App. Br. 30).
We find this argument unpersuasive. While we are fully aware that
hindsight bias may plague determinations of obviousness, Graham v. John
Deere Co., 383 U.S. 1, 36 (1966), we are also mindful that the Supreme
Court has clearly stated that the “combination of familiar elements according
to known methods is likely to be obvious when it does no more than yield
13
Appeal 2016-007816
Application 13/378,633
predictable results.” KSRInt’l. Co. v. Teleflex Inc., 550 U.S. 398, 416
(2007).
As discussed extensively above, Wool teaches a bracket that satisfies
the structural limitations of claim 1 (FF 1—8) and Allesee teaches archwires
(FF 9-10) that, when combined into an orthodontic set as suggested by
Chester (FF 11), predictably result in a set of brackets that may be both
active or passive depending upon the specific combination of brackets and
archwires chosen by the orthodontist.
Conclusions of Law
The evidence of record supports the Examiner’s conclusion that Wool,
Allesee, and Chester render claim 1 obvious.
SUMMARY
In summary, we affirm the rejection of claim 1 under 35 U.S.C.
§ 103(a) as obvious over Wool, Chester, and Allesee. Claims 2—10 and 13—
18 fall with claim 1.
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
14