Ex Parte Kilcher et al

Board of Patent Appeals and Interferences

Jan 5, 2009

10393119 (B.P.A.I. Jan. 5, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte BEAT KILCHER, MARCO DA ROLD,
and FELIX ASCHMANN
__________

Appeal 2008-5631
Application 10/393,119
Technology Center 3700
__________

Decided: January 5, 2009
__________

Before ERIC GRIMES, RICHARD M. LEBOVITZ, and JEFFREY N.
FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving a claim to a dental
treatment device, specifically, a rubber dam with covering foil. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.

Appeal 2008-5631
Application 10/393,119

Statement of the Case
Background
“A rubber dam is an auxiliary device used in dental treatments for
separating the teeth under treatment from the remainder of the oral cavity”
(Spec. 1:6-8). The Specification teaches that the rubber dam “allows the
working area to be kept dry and relatively sterile while the patient is
protected from swallowing or aspirating cooling water, drilling residues or,
as the case may be, from the impact of instruments” (Spec. 1:8-12).
The Claim
Claims 1-14 are on appeal. We will focus on claims 1 and 14, which
are representative and read as follows:
1. Rubber dam, comprising a covering foil, wherein the
locations of the foil situated above teeth when applied in the
mouth are provided with projections or depressions that are
intended to be cut off to define apertures for receiving teeth
therethrough, the covering foil having portions that will be
positioned outwardly of a patient's dental arch relative to the
projections or depressions, which portions have substantially
uniform radii of curvature laterally of the dental arch, the
projections or depressions each having a closed end and at
least one sidewall extending therefrom, between the closed
end and the covering foil, to define an interior cavity, the
closed ends extending away from the covering foil.

14. A rubber dam, comprising:
a covering foil; and
a plurality of projections or depressions formed on
said covering foil, said projections or depressions arranged
at locations corresponding to the location of teeth in a
human mouth;
said projections or depressions each having a closed
end extending away from said covering foil and at least one
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sidewall extending therefrom, between said closed end and
said covering foil, to define an interior cavity that forms an
aperture for receiving a tooth therethrough when said closed
end is cut off;
said covering foil defining a substantially uniformly
flat surface or a substantially uniformly convex surface
except for said projections or depressions.

The prior art
The Examiner relies on the following prior art references to show
unpatentability:
Craigie US 741,890 Oct. 20, 1903
Shanel US 4,512,742 Apr. 23, 1985
Malmin US 5,078,604 Jan. 7, 1992
Heasley US 2003/0190584 A1 Oct. 9, 2003

The issues

A. The Examiner rejected claims 1-13 under 35 U.S.C. § 112, first
paragraph as failing to satisfy the enablement requirement (Ans. 3-4).
B. The Examiner rejected claims 1-13 under 35 U.S.C. § 112, first
paragraph as failing to satisfy the written description requirement (Ans. 4).
C. The Examiner rejected claims 1-4, 6, and 14 under 35 U.S.C. § 103(a)
as obvious over Craigie and Malmin (Ans. 4-5).
D. The Examiner rejected claims 5, 7, 12, and 13 under 35 U.S.C. §
103(a) as obvious over Craigie, Malmin, and Heasley (Ans. 5).
E. The Examiner rejected claims 8-11 under 35 U.S.C. § 103(a) as
obvious over Craigie, Malmin, Heasley, and Shanel (Ans. 5-6).
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A. 35 U.S.C. § 112, first paragraph rejection – Enablement
The Examiner rejected claims 1-13 under 35 U.S.C. § 112, first
paragraph as failing to satisfy the enablement requirement (Ans. 3-4).
The Examiner found that “[i]n claim 1, portions that will be
positioned outwardly of a patient's dental arch "have substantially uniform
radii of curvature laterally of the dental arch" is not described in a manner
that would enable one of ordinary skill in the art” (Ans. 3).
Appellants “assert that persons skilled in such art would clearly
understand how to make and use the rubber dams of the claimed invention,
at least by examination of the drawing figures alone” (App. Br. 8).
In view of these conflicting positions, we frame the enablement issue
before us as follows:
Did the Examiner err in finding that the disclosure of the Specification
and figures failed to enable a rubber dam with “substantially uniform radii of
curvature laterally of the dental arch”?
Principles of Law
When rejecting a claim under the enablement
requirement of section 112, the PTO bears an initial
burden of setting forth a reasonable explanation as to
why it believes that the scope of protection provided
by that claim is not adequately enabled by the
description of the invention provided in the
specification of the application; this includes, of
course, providing sufficient reasons for doubting any
assertions in the specification as to the scope of
enablement. If the PTO meets this burden, the burden
then shifts to the applicant to provide suitable proofs
indicating that the specification is indeed enabling.
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In re Wright, 999 F.2d 1557, 1561-62 (Fed. Cir. 1993) (citing In re
Marzocchi, 439 F.2d 220, 223-24 (CCPA 1971)).
“Although the legal criteria of enablement and written description are
related and are often met by the same disclosure, they serve discrete legal
requirements.” Capon v. Eshhar, 418 F.3d 1349, 1360 (Fed. Cir. 2005).
“[A]n invention may be enabled even though it has not been described.”
Univ. of Rochester v. G.D. Searle & Co., Inc., 358 F.3d 916, 921 (Fed. Cir.
2004).
Analysis
There is no evidence on this record to support the Examiner's position
regarding enablement. We agree with the Examiner that “many different
curvatures are shown, and as shown, these different curvatures do not appear
to be uniform” (Ans. 4). However, this simply supports the written
description rejection, but does not provide any evidence or reasoning as to
why a dam with a “uniform radii of curvature” could not be made.
Conclusion of Law
The Examiner erred in finding that the disclosure of the Specification
and figures failed to enable a rubber dam with “substantially uniform radii of
curvature laterally of the dental arch.”
B. 35 U.S.C. § 112, first paragraph rejection – Written Description
The Examiner rejected claims 1-13 under 35 U.S.C. § 112, first
paragraph as failing to satisfy the written description requirement (Ans. 4).
The Examiner found that in “claim 1, portions that will be positioned
outwardly of a patient's dental arch [which] ‘have substantially uniform radii
of curvature laterally of the dental arch’ [are] not described” (Ans. 3). The
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Examiner found that “the shown smoothly curving surfaces of Figs. 5-10 do
not show a uniform radii of curvature because the curvature differs
depending on the outward direction taken from the dental arch” (Ans. 6).
Appellants “assert that persons skilled in such art would clearly
understand how to make and use the rubber dams of the claimed invention,
at least by examination of the drawing figures alone” (App. Br. 8).
Appellants further contend that “persons skilled in the art would understand,
at least from the information contained in the drawings, that Appellants had
possession of the claimed invention” (id.).
In view of these conflicting positions, we frame the written
description issue before us as follows:
Did the Examiner err in finding that the disclosure of the Specification
and figures failed to provide written description support for a rubber dam
with “substantially uniform radii of curvature laterally of the dental arch”?
Findings of Fact (FF)
1. The Specification states that “the projections 11 on rubber dam
10 are arranged anatomically . . . [t]he same applies to bag 12 of the rubber
dam, which is not arranged and shaped symmetrically with respect to the
essentially plane rim 13, but eccentrically and obliquely” (Spec. 6:12-14).
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2. Figure 5 of the Specification is reproduced below:

“Fig. 5 shows cut projections in another rubber dam according to the
invention” (Spec. 3:9-10).
3. The Examiner found that “[t]he newly added claim language,
‘have substantially uniform radii of curvature laterally of the dental arch’ is
not supported by the disclosure as originally filed” (Ans. 4).
4. The Examiner found that “[i]n the embodiment of Figs. 2-4, no
curvature is shown, and in the embodiments of Figs. 5-10, many different
curvatures are shown, and as shown, these different curvatures do not appear
to be uniform” (Ans. 3-4).
Principles of Law
It is the Examiner's “initial burden [to] present [ ] evidence or reasons
why persons skilled in the art would not recognize in the disclosure a
description of the invention defined by the claims.” In re Wertheim, 541
F.2d 257, 263 (CCPA 1976).
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To satisfy the written description requirement, the inventor must
“convey with reasonable clarity to those skilled in the art that, as of the filing
date sought, he or she was in possession of the invention.” Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). “One shows that one is
‘in possession’ of the invention by describing the invention, with all its
claimed limitations.” Lockwood v. American Airlines, Inc., 107 F.3d 1565,
1572 (Fed. Cir. 1997).
“Although [the inventor] does not have to describe exactly the subject
matter claimed . . . the description must clearly allow persons of ordinary
skill in the art to recognize that [the inventor] invented what is claimed.” In
re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989).
Analysis
The Examiner has found that the Specification does not provide
descriptive support for the newly added claim language that portions of the
rubber dam “have substantially uniform radii of curvature laterally of the
dental arch” (Claim 1). The Examiner specifically reviewed to the figures
and found that they did not provide descriptive support (FF 4).
We agree. The Specification, to the extent that it discusses
projections arranged around the dental arch, notes that the projections are
arranged anatomically, which would not necessarily or likely have uniform
radii (FF 1). This teaching by the Specification tends to teach away from the
limitation at issue in claim 1. Our careful review of the figures of this
Specification fails to identify any clear showing in any of the figures that
“portions have substantially uniform radii of curvature laterally of the dental
arch” as required by claim 1. Using figure 5 as exemplary, we find no clear
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indication that the radii of curvature are “substantially uniform” lateral of the
dental arch (FF 2).
We do not find convincing Appellants’ argument that “the portions of
the covering foil . . . are disposed laterally of . . . the arch are clearly defined
by the smoothly curving wall of the covering foil, and hence have
substantially uniform radii of curvature” (App. Br. 8). Appellants do not
specifically identify which portions of which figures show the “smoothly
curving wall”. Additionally, it is not clear how the walls shown in figures
1-13 demonstrate “substantially uniform radii” as required by the claim.
While a sphere would presumably have a uniform radius of curvature, the
non-spherical shapes shown in figures 1-13 do not clearly evidence uniform
radii of curvature.
In our opinion, this Specification and claims do not reasonably permit
persons of ordinary skill to recognize that these inventors invented the
claimed subject matter where portions of the rubber dam “have substantially
uniform radii of curvature laterally of the dental arch” (Claim 1).
Conclusion of Law
The Examiner did not err in finding that the disclosure of the
Specification and figures failed to demonstrate possession of a rubber dam
with “substantially uniform radii of curvature laterally of the dental arch.”
C. 35 U.S.C. § 103(a) over Craigie and Malmin
The Examiner found that “Craigie shows a rubber dam comprising a
foil 2 having projections ‘A’ provided at the locations of teeth . . . and that
are intended to be perforated” (Ans. 4). The Examiner further found that
“Craigie shows uniform flat regions on both sides of the projections, and
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therefore, “shows the same radius of curvature as shown in the embodiment
of Fig. 2 of the present invention” (Ans. 4). The Examiner found that “[i]t
would be obvious to one of ordinary skill in the art to modify Craigie to
include sidewalls as shown by Malmin as an art known equivalent way of
making structures to be cut for holes for teeth” (id. at 4-5).
Appellants contend that “Craigie ‘890 does not teach or suggest each
and every element recited in these claims, and . . . the combination of
Craigie ‘890 with Malmin ‘604 teaches away from the claimed invention
and therefore fails to cure these deficiencies” (App. Br. 10). Appellants
further contend that
[I]f a person skilled in the art were led to modify Craigie
‘890 in view of Malmin ‘604, they would be led by Malmin
‘604 to add the special contours disclosed therein to the
rubber dam of Craigie ‘890. The addition of these grooves
would result in a dam which does not have portions
positioned outwardly of a patient's dental arch with
“substantially uniform radii of curvature laterally of the
dental arch

(App. Br. 12-13).
In view of these conflicting positions, we frame the obviousness issue
before us as follows:
Did the Examiner err in finding that it would have been obvious to
combine the flat sheet rubber dam of Craigie with the sidewalls of Malmin?
Findings of Fact
5. Craigie teaches to use “a thin sheet of rubber perforated at
intervals and force it around a tooth to exclude the saliva from the cavity
under treatment” (Craigie, col. 1, ll. 21-24).
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6. Craigie teaches “a series of annular ridges or projections A . . .
disposed at suitable intervals corresponding to the teeth over which the dam
is to be fitted. The projections may be round, oval, square or any other
suitable configuration” (Craigie, col. 1, ll. 36-43).
7. The Examiner found that “Craigie shows uniform flat regions
on both sides of the projections, and therefore, shows the same radius of
curvature as shown in the embodiment of Fig. 2 of the present invention”
(Ans. 4).
8. The Examiner acknowledged that “Craigie does not show
sidewalls on the closed projections” (Ans. 4).
9. Malmin teaches “preformed, contoured dental oral barrier drape
devices for isolating particular portions of a patient’s mouth and teeth”
(Malmin, col. 1, ll. 7-9).
10. Malmin teaches that in the device, the “upper alveolar ridge 1 is
formed with convex tooth perforation guides 3, for example” (Malmin, col.
7, ll. 23-25).
11. The Examiner found that in figure 2, “Malmin shows sidewalls
on markings 3, the closed top portions are for being cut off, and the
sidewalls extend down from the closed tops” (Ans. 4).
12. Malmin teaches that “U.S. Pat. No. 741,890 issued . . . to Henry
Craigie discloses a rubber dental dam having annular rings . . . [t]he annular
rings are cumbersome to fit, tend to ride up over the teeth and place too
much dam material in the interproximal regions. The device prevents full
preparation of the crown portion of the tooth” (Malmin, col. 1, l. 64 to col. 2,
l. 5).
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13. Malmin teaches that “[f]lat sheet dental rubber dams are
difficult to place due to the resilient nature of the materials utilized. A flat
sheet does not easily adapt to the complexities and varieties of curvatures
and contours of the human oral cavity” (Malmin, col. 2, ll. 30-34).
14. Malmin teaches that “the resilient nature of the rubber dam
material exerts a tension in the material when stretched over a tooth . . . and
requires the use of strong, spring steel clamps to retain the rubber dam in
position over a tooth” (Malmin, col. 2, ll. 36-40).
15. Malmin teaches that “[i]n addition to the tendency of the rubber
dam to slip off of a tooth, the use of an external peripheral frame creates
additional tension in the dam material which also tends to lift the clamping
device off of the tooth thereby releasing the dam” (Malmin, col. 2, ll. 40-45).
16. Malmin teaches that clamps used to hold flat sheet rubber dams
in place “are often painful to the patient due to sensitive root surfaces. The
clamps can incise the gingival tissues and chip or cut the surface of the root
thus damaging the tooth” (Malmin, col. 2, ll. 56-60).
17. Malmin teaches that a “likelihood exists that the clamps may
become detached and inadvertently be ejected from the mouth or into the
throat of the patients where they have been known to lodge in the trachea
and lungs or the alimentary canal and stomach” (Malmin, col. 2, ll. 60-64).
Principles of Law
As the Court in KSR stated,
[o]ften, it will be necessary for a court to look to
interrelated teachings of multiple patents; the effects
of demands known to the design community or
present in the marketplace; and the background
knowledge possessed by a person having ordinary
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skill in the art, all in order to determine whether there
was an apparent reason to combine the known
elements in the fashion claimed by the patent at issue.
To facilitate review, this analysis should be made
explicit. See In re Kahn, 441 F.3d 977, 988
(CA.Fed.2006) (“[R]ejections on obviousness grounds
cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with
some rational underpinning to support the legal
conclusion of obviousness”).

KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1740-41 (2007).
A reference is not limited to the disclosed preferred embodiments. See
Merck & Co., Inc v. Biocraft Laboratories, Inc., 874 F.2d 804 (Fed. Cir.),
cert. denied, 493 U.S. 975 (1989). Also see In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994) (“A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction
divergent from the path that was taken by the applicant.”).
Analysis
Claim 1
Craigie teaches a flat rubber dam with projections that are intended to
be cut off to define apertures for teeth (FF 5-7). While Craigie does not
teach sidewalls (FF 8), Malmin teaches a rubber dam which reasonably
contains sidewalls (FF 9-11).
Applying the KSR standard of obviousness to the findings of fact, we
conclude that the use of the Malmin sidewalls in the flat rubber dam of
Craigie represents a combination of known elements which yield the
predictable “way of making structures to be cut for holes for teeth” (Ans. 5).
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Such a combination is merely a “predictable use of prior art elements
according to their established functions.” KSR, 127 S. Ct. at 1740.
Appellants argue that Malmin teaches away from the use of flat
rubber dams such as those of Craigie (see FF 12-17). Appellants correctly
point out that Malmin notes that flat rubber dams not only prevent proper
exposure of teeth (FF 12), but require steel clamps to fit the contours of a
mouth (FF 13-14). Malmin further teaches that clamps used to secure the
flat rubber dams slip off teeth (FF 15), may cause pain to the patient (FF 16)
and may enter the patient’s lungs or alimentary canal (FF 17).
We are not persuaded, however, that Malmin teaches away from the
combination. “A known or obvious composition does not become
patentable simply because it has been described as somewhat inferior to
some other product for the same use.” In re Gurley, 27 F.3d 551, 553
(Fed.Cir.1994). “Thus, a finding that the prior art as a whole suggests the
desirability of a particular combination need not be supported by a finding
that the prior art suggests that the combination claimed by the patent
applicant is the preferred, or most desirable, combination.” In re Fulton
391 F.3d 1195, 1200 (Fed. Cir. 2004).
In fact, in Gurley, the court found that “[e]ven reading Yamaguchi's
description as discouraging use of epoxy for this purpose, Gurley asserted no
discovery beyond what was known to the art.” Gurley, 27 F.3d at 553.
Similarly, Appellants have asserted no discovery beyond what was known to
Malmin and Craigie.
In the instant case, it is predictable that inclusion of the Malmin
sidewalls into the Craigie rubber dam would enhance the function of the
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Craigie rubber dam. “The combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.” KSR, 127 S. Ct. at 1739.
Claim 14
The Examiner finds that claim 14 is obvious because “Craigie shows a
uniformly flat surface” (Ans. 5). The Examiner relies upon the flat surface
of Craigie in order to satisfy the limitation in claim 14 that the rubber dam
comprises a “covering foil defining a substantially uniformly flat surface or
a substantially uniformly convex surface except for said projections or
depressions.” However, as we have discussed above, the combination of
Malmin and Craigie teaches the claimed limitations.
Conclusions of Law
The Examiner did not err in finding that it would have been obvious
to combine the flat sheet rubber dam of Craigie with the sidewalls of
Malmin.
D. 35 U.S.C. § 103(a) over Craigie, Malmin, and Heasley
The Examiner rejected claims 5, 7, 12, and 13 under 35 U.S.C. §
103(a) as obvious over Craigie, Malmin, and Heasley (Ans. 5).
Claims 5, 7, 12, and 13 either directly or indirectly depend from claim
1. As we have affirmed the rejection of claim 1 over Craigie and Malmin,
and Appellants do not identify how Heasley fails to teach the dependent
claim limitations, we also affirm the rejections of these claims as well.
E. 35 U.S.C. § 103(a) over Craigie, Malmin, Heasley, and Shanel
The Examiner rejected claims 8-11 under 35 U.S.C. § 103(a) as
obvious over Craigie, Malmin, Heasley, and Shanel (Ans. 5-6).
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Claims 8-11 either directly or indirectly depend from claim 1. As we
have affirmed the rejection of claims 1 over Craigie and Malmin, and
Appellants do not identify how either Heasley nor Shanel fail to teach the
dependent claim limitations, we also affirm the rejections of these claims as
well.
SUMMARY
In summary, we reverse the rejection of claims 1-13 under 35 U.S.C.
§ 112, first paragraph, enablement. We affirm the rejection of claim 1 under
35 U.S.C. § 112, first paragraph, written description. Pursuant to 37 C.F.R. §
41.37(c)(1)(vii)(2006), we also affirm the rejection of claims 2-13 as these
claims were not argued separately. We affirm the rejection of claims 1-4, 6,
and 14 under 35 U.S.C. § 103(a) as obvious over Craigie and Malmin. We
also affirm the rejections of claims 5 and 7-13 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2006).
AFFIRMED

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