Ex Parte Genest et al

Patent Trial and Appeal Board

Sep 11, 2017

12703601 (P.T.A.B. Sep. 11, 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.
12/703,601 02/10/2010 Dominic Genest NOBELB.382A 4448
20995 7590 09/25/2017
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
EXAMINER
OCHOA, JUAN CARLOS
ART UNIT PAPER NUMBER
2123
NOTIFICATION DATE DELIVERY MODE
09/25/2017 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):
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 DOMINIC GENEST and DAVID GIASSON
Appeal 2016-002328
Application 12/703,601
Technology Center 2100
Before MAHSHID D. SAADAT, NORMAN H. BEAMER,
and MICHAEL J. ENGLE, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1, 2, 4, 6, 10, 11, 13, 15, 19, and 20, which are all
the claims pending in this application. We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.
1 An oral hearing was held August 31, 2017.
2 Appellants identify Biocad Medical, Inc., as the real party in interest (App.
Br. 3).
Appeal 2016-002328
Application 12/703,601
STATEMENT OF THE CASE
Introduction
Appellants’ invention relates to “methods, systems, devices, and
computer-readable media for dental prosthetics manipulation, selection, and
planning” (Spec. 1 6).
Exemplary claim 1 under appeal reads as follows:
1. A method for dental prosthetics manipulation,
selection, and planning, comprising:
receiving, from an operator via a computer system, dental
data related to a desired dental plan for one or more tooth
positions;
presenting to the operator, using the computer system, an
overlapped electronic representation of two or more aspects of
the dental data;
presenting to the operator, using the computer system, a
non-overlapped abstract electronic representation of the two or
more aspects of the dental data, wherein the non-overlapped
abstract electronic representation comprises a single globalized
unit representation of the one or more tooth positions;
receiving at the computer system, relative to the single
globalized unit representation of the one or more tooth
positions, an indication of an operation to be performed
regarding one of the two or more aspects of the dental data; and
presenting, in the overlapped electronic representation,
said operation, whereby said one aspect is manipulated for each
of the one or more tooth positions, wherein said operation is
selected from the group consisting of make transparent, make
visible, and make invisible.
2
Appeal 2016-002328
Application 12/703,601
Rejections on Appeal
Claims 1, 2, 6, 10, 11, 15, 19, and 20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Rubbert (US 8,121,718 B2; Feb. 21, 2012)
and Wen (US 2006/0275736 Al; Dec. 7, 2006) {see Final Act. 5-18).3
Claims 4 and 13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Rubbert, Wen, and the facts taken as Official Notice (see
Final Act. 18—19).
ANALYSIS
We have reviewed Appellants’ contentions in the Briefs, the
Examiner’s rejection, the Examiner’s response to Appellants’ contentions,
and the evidence of record. We agree with Appellants’ contention that the
Examiner errs in finding Rubbert discloses
“an indication of an operation to be performed regarding one of
the two or more aspects of the dental data” that can be received
“at the computer system, relative to the single globalized unit
representation of the non-overlapped abstract electronic
representation” and “in the overlapped electronic
representation, said operation,” can be presented “whereby said
one aspect is manipulated for each of the one or more tooth
positions.”
(App. Br. 8—9).4
The Examiner finds the term “overlapped electronic representation” is
broad and defined in paragraphs 37 and 45 of Appellants’ Specification as
including a 3D rendering of the dental data (Ans. 4—5). The Examiner
3 The rejection of claims 1, 2, 4, 6, 10, 11, 13, and 15 under 35 U.S.C. § 112,
second paragraph, was withdrawn in the Answer (see Ans. 3; Final Act. 3).
4 Appellants present additional contentions, which we do not reach because
the identified issue is dispositive of the appeal.
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Appeal 2016-002328
Application 12/703,601
however finds no specific definition is provided in the Specification for the
claim term “non-overlapped abstract electronic representation” (Ans. 5).
Thus, the Examiner finds Rubberf s screen shots of a three-dimensional
model in Figures 71 and 72, showing two different types of representations
of the dental data in different panes, disclose the recited “overlapped
electronic representation” and “non-overlapped abstract electronic
representation” (Ans. 12—16).
Appellants argue switching between the different representation of the
dental data in Figures 71 and 72 of Rubbert does not result in any of the
representations showing a non-overlapped representation that “comprises a
single globalized unit representation of the one or more tooth positions”
(Reply Br. 4). Appellants point out that paragraphs 50-58 of their
Specification expressly define the claim term “non-overlapped abstract
electronic representation” as a representation without additional aspects of
the dental plan that is presented to the operator allowing interaction with the
dental data (Reply Br. 4—5).
We are persuaded by Appellants’ contentions. We further agree with
Appellants that the Examiner has not identified any teachings in Rubbert as
disclosing different representations of the dental data. The cited sections of
Rubbert describe separate viewing panes that include different views of the
three-dimensional model of the dental data from different angles (see
Rubbert, col. 64,11. 24-47). Although the representations in each pane is
from a different viewing angle, the Examiner has not established that
Rubbert explicitly or inherently discloses “a non-overlapped abstract
electronic representation of the two or more aspects of the dental data,
wherein the non-overlapped abstract electronic representation comprises a
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Appeal 2016-002328
Application 12/703,601
single globalized unit representation of the one or more tooth positions” that
is different from the “overlapped representation.”
For the reasons discussed above, Appellants’ contentions persuade us
the Examiner erred in finding the combination of Rubbert with Wen
discloses the disputed limitations recited in claim 1. The Examiner does not
rely on Official Notice or the additional references of record to teach or
suggest the disputed limitations (see Final Act. 18—19). Accordingly, we do
not sustain the 35 U.S.C. § 103(a) rejection of: (1) claim 1; (2) independent
claims 10 and 19, which recite limitations substantially similar to those of
claim 1; and (3) claims 2, 4, 6, 11, 13, 15, and 20, which depend from claims
1, 10, or 19.
DECISION
We reverse the Examiner’s decision to reject claims 1, 2, 4, 6, 10, 11,
13, 15, 19, and 20.
REVERSED
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