Ex Parte Hall

Patent Trials and Appeals Board

Feb 13, 2019

10582468 - (D) (P.T.A.B. Feb. 13, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/582,468 03/23/2007
20995 7590 02/15/2019
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
FIRST NAMED INVENTOR
Jan Hall
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
NOBELB.245NP 4924
EXAMINER
MAI,HAOD
ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
02/15/2019 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):
j ayna.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 JAN HALL
Appeal2017-003436 1
Application 10/582,4682
Technology Center 3700
Before PHILIP J. HOFFMANN, BRADLEY B. BAY AT, and
AMEE A. SHAH, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of
claims 1, 3-5, 7, 9, 10, 14--16, and 18-31, which are all the pending claims
in the application. We have jurisdiction under 35 U.S.C. § 6(b ). An oral
hearing was held on February 11, 2019.
We REVERSE.
1 Our Decision references Appellant's Appeal Brief ("Appeal Br.," filed
Apr. 7, 2016), the Reply Brief ("Reply Br.," filed Dec. 20, 2016), the
Examiner's Answer ("Ans.," mailed Oct. 24, 2016), and the Final Office
Action ("Final Act.," mailed Oct. 8, 2015).
2 According to Appellant, the real party in interest is "Nobel Biocare
Services AG." Appeal Br. 3.
Appeal2017-003436
Application 10/582,468
STATEMENT OF THE CASE
"The present invention relates to an arrangement with an implant
and/or a unit, e.g. spacer sleeve, belonging to said implant, which are
intended to extend through a hole formed in a jaw bone and through soft
tissue of the jaw bone and to comprise one or more outer layers of titanium
dioxide." Spec. 1:5-10.
Claimed Subject Matter
Claims 1, 19, and 22 are the independent claims on appeal. Claims 1
and 22, reproduced below with added emphasis, are illustrative of the
appealed claims, and recite:
1. A dental implant sized and configured to fit at least
partially in a hole formed in jaw bone and through soft tissue
belonging to the jaw bone, the dental implant comprising a
threadless upper portion configured to oppose soft tissue and a
threaded lower portion configured to oppose bone tissue, one or
more titanium dioxide layers applied on at least one outer
surface of the upper portion of the dental implant, wherein each
layer comprises crystalline titanium dioxide in the anatase
phase, and wherein the dental implant is configured to be
oriented generally vertically in the jaw bone.
22. A dental abutment configured to mate with a dental
implant extending generally vertically within a jawbone, the
dental abutment configured to extend through soft tissue and
support a superstructure, the dental abutment including an outer
surface configured to oppose soft tissue, the dental abutment
comprising one or more titanium dioxide layers applied on the
outer surface of the dental abutment, wherein each layer
comprises crystalline titanium dioxide in the anatase phase.
Appeal Br. 20, 21, Claims App.
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Appeal2017-003436
Application 10/582,468
Rejection
The Examiner maintains the rejection of claims 1, 3-5, 7, 9, 10, 14--
16, and 18-31 under pre-AIA 35 U.S.C. 103(a) as being unpatentable over
Sachdeva et al. (US 5,697,779, iss. Dec. 16, 1997) ("Sachdeva") in view of
Blanquaert (US 4,261,063, iss. Apr. 14, 1981). Ans. 3---6.
ANALYSIS
Independent claims 1 and 19, and dependent claims 3-5, 7, 9, 10, 14-16, 18,
20, 21, 23-26, 29, and 30
Independent claim 1 requires, in part, "wherein the dental implant is
configured to be oriented generally vertically in the jaw bone." Appeal
Br. 20, Claims App. ( emphasis added). Independent claim 19 similarly
requires "a dental implant sized and configured to extend at least partially in
a generally vertically oriented hole formed in jaw bone." Id. at 21 (emphasis
added).
In rejecting those limitations of claims 1 and 19, the Examiner
determines "that [each] such recitation is functional or intended use and does
not provide positive structural limitation(s)." Final Act. 3. Based on this
interpretation, the Examiner's position is that "Sachdeva's implant by itself
or with Blanquaert's anatase-phase titanium dioxide coating, is capable of
being oriented generally vertically in the jaw bone as claimed." Id. at 4
(emphasis added). In response to Appellant's argument (Appeal Br. 10-11),
the Examiner maintains this position. See Ans. 7-8.
However, the Federal Circuit has held that "configured to" language
requires that the specific element is not only capable of performing the
recited function but is also specifically designed to accomplish the function
claimed. See Aspex Eyewear, Inc. v. Marchan Eyewear, Inc., 672 F .3d
3
Appeal2017-003436
Application 10/582,468
1335, 1349 (Fed. Cir. 2012) (The claim phrase "configured to" is construed
more narrowly than "capable of' such that the structure must be "designed
or configured to accomplish the specified objective, not simply that [it] can
be made to serve that purpose."). In other words, claims 1 and 19 require a
dental implant structure that is more than just capable of performing the
claimed function, but is actually specifically designed to perform that
function. Because the Examiner simply relies on Sachdeva's temporary
implant as "capable of being oriented generally vertically in the jaw bone"
without showing that Sachdeva's implant is designed to be oriented
vertically in the jaw bone, the Examiner erroneously interpreted the
"configured to" language set forth in claims 1 and 19.
Accordingly, we do not sustain the rejection of independent claims 1
and 19 for failing to establish a prima facie case of obviousness over
Sachdeva and Blanquaert. For the same reasons, we also do not sustain the
rejection of dependent claims 3-5, 7, 9, 10, 14--16, 18, 20, 21, 23-26, 29,
and 30. Cf In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992)
("[D]ependent claims are nonobvious if the independent claims from which
they depend are nonobvious").
Independent claim 22 and dependent claims 27, 28, and 31
Independent claim 22 requires, in part, "[a] dental abutment
configured to mate with a dental implant extending generally vertically
within a jawbone." Appeal Br. 21, Claims App. (emphasis added). In
rejecting this limitation, the Examiner finds "Sachdeva et al. shows an
abutment 610 capable of mating with implant 601." Final Act. 4 ( emphasis
added). In response to Appellant's argument, the Examiner maintains that
the rejection is "proper as detailed above with respect to claim 1." Ans. 10.
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Appeal2017-003436
Application 10/582,468
Similar to claims 1 and 19 discussed previously, the Examiner has
misconstrued the "configured to" language of claim 22, and, thus, failed to
set forth a sufficient showing of obviousness in rejecting claim 22.
Accordingly, we do not sustain the rejection of independent claim 22
for failing to establish a prima facie case of obviousness over Sachdeva and
Blanquaert. We also do not sustain the rejection of claims 27, 28, and 31,
which depend from claim 22, for the same reasons.
DECISION
We REVERSE the Examiner's rejection of claims 1, 3-5, 7, 9, 10,
14--16, and 18-31.
REVERSED
5