Ex Parte Kitching

Patent Trial and Appeal Board

Feb 25, 2019

13738513 (P.T.A.B. Feb. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/738,513 01/10/2013
83571 7590 02/27/2019
Wood, Herron & Evans, LLP (Sybron)
441 Vine Street
2700 Carew Tower
Cincinnati, OH 45202
FIRST NAMED INVENTOR
Ian Kitching
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.
ORM-381CP 8694
EXAMINER
SAUNDERS, MATTHEW P
ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
02/27/2019 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):
usptodock@whe-law.com
smeyer@whe-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IAN KITCHING
Appeal2017-007820
Application 13/73 8,513
Technology Center 3700
Before MICHELLE R. OSINSKI, JEREMY M. PLENZLER, and
GEORGE R. HOSKINS, Administrative Patent Judges.
HOSKINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Ian Kitching ("Appellant") 1 appeals under 35 U.S.C. § 134 from the
Examiner's decision rejecting all pending claims 1-13 in this application.
The Board has jurisdiction over the appeal under 35 U.S.C. § 6(b ).
An oral hearing was held on February 14, 2019. A transcript of the
hearing will be entered into the record at a later time.
We REVERSE.
1 Ormco Corporation is the applicant and is identified as the real party in
interest. 37 C.F.R. § 1.46; Appeal Br. (filed Oct. 13, 2015), 2.
Appeal2017-007820
Application 13/738,513
CLAIMED SUBJECT MATTER
Claim 1 is the sole independent claim on appeal. It recites, with
sub-heading markers [ i ]-[ v] and [ a ]-[b] added for reference below:
1. A method of orthodontically treating a patient's teeth,
compnsmg
[i] developing a digital model of the patient's teeth in their
present positions;
[ii] forming a polymeric material in a series of layers to
collectively form at least a portion of an appliance mold, the
appliance mold comprising plural cavities for encapsulating teeth
of the patient when repositioned from their present positions;
[iii] [a] filling the polymeric material [b] to form a positive
cast of the repositioned teeth of the patient;
[iv] forming a plastic over the positive cast to create the
appliance; and
[ v] placing the appliance on the patient's teeth.
Claims App. (filed Mar. 7, 2016), 3.
REJECTIONS ON APPEAL
Claims 1, 2, 5, and 13 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Chishti (US 5,975,893, iss. Nov. 2, 1999) and Puttler
(US 2010/0219546 Al, pub. Sept. 2, 2010).
Claims 3 and 4 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Chishti, Puttler, and O'Bryan (US 2006/0177789 Al, pub.
Aug. 10, 2006).
Claims 6 and 7 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Chishti, Puttler, and Hilliard (US 2008/0254402 Al, pub.
Oct. 16, 2008).
Claim 8 stands rejected under 35 U.S.C. § I03(a) as unpatentable over
Chishti, Puttler, and Li (US 2011/0165533 Al, pub. July 7, 2011).
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Appeal2017-007820
Application 13/738,513
Claim 9 stands rejected under 35 U.S.C. § I03(a) as unpatentable over
Chishti, Puttler, and Kuo (US 2008/0138767 Al, pub. June 12, 2008).
Claims 10 and 11 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Chishti, Puttler, and DeSimone (US 7,641,828 B2, iss.
Jan. 5, 2010).
Claim 12 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Chishti, Puttler, and Andreiko (US 6,616,444 B2, iss. Sept. 9, 2003).
ANALYSIS
A. Obviousness Over Chishti and Puttler
(claims 1, 2, 5, and 13)
In rejecting claim 1, the Examiner finds Chishti discloses a method of
orthodontically treating a patient's teeth, in which, as recited in
limitation [v], an appliance (i.e., adjustment appliance 100) is placed on the
patient's teeth. Final Act. 4. The Examiner finds Chishti discloses
appliance 100 is formed by [i] developing a digital model of the patient's
teeth in their present positions, [iii][b] forming a polymeric material positive
cast of the patient's repositioned teeth, and [iv] forming a plastic over the
positive cast to create appliance 100. Id. The Examiner finds Chishti does
not disclose, as claimed, [ii] forming a polymeric material appliance mold
comprising cavities for encapsulating the patient's repositioned teeth (i.e., a
"negative" appliance mold), and then [iii][a] filling the negative appliance
mold to form the positive cast. Id.
The Examiner cites Puttler as disclosing the subject matter of
limitations [ii] and [iii][a] that are missing from Chishti. Id. at 4--5. In
particular, the Examiner finds Puttler discloses a method of forming a dental
model for fabricating orthodontic laboratory appliances, including
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Application 13/738,513
[ii] forming a polymeric material negative appliance mold of the patient's
teeth, and then [iii][a] filling the negative appliance mold to form a positive
cast of the patient's teeth. 2 Id. The Examiner determines it would have been
obvious to form Chishti's positive cast of the patient's repositioned teeth by
filling a negative appliance mold, as disclosed by Puttler, "for the purpose of
providing for improved efficiency and reliability as taught by Puttler
(paragraph [0007] lines 4--7)." Id. at 5.
Appellant contends, in part, that the Examiner has not articulated a
rational underpinning for the proposed modification of Chishti, based on
Puttler. Appeal Br. 5-6. Appellant points out Chishti provides two methods
for manufacturing Chishti's appliance 100: a direct method, and an indirect
method. Id.; Reply Br. 2-3. According to Appellant, the Examiner's
proposed modification of those methods "adds clearly unnecessary steps" to
Chishti' s two methods, including two additional steps in Chishti' s direct
manufacturing method, and one additional step in Chishti' s indirect
manufacturing method. Appeal Br. 6; Reply Br. 2-3. Appellant asserts the
Examiner's reasoning is "circular" and "nonsensical," because there is no
2 It is not clear whether the Examiner finds Puttler's negative appliance
mold, and the positive cast formed directly therefrom, correspond to the
patient's teeth as presently positioned, or as repositioned. Compare Final
Act. 5 (finding Puttler's positive cast corresponds to patient's "repositioned
teeth") (emphasis added), with id. at 10-11 (indicating Examiner is not
relying on Puttler as disclosing the modeling of repositioned teeth). We
agree with Appellant's contention that Puttler's negative appliance mold and
positive cast correspond to the patient's teeth in their present positions. See
Appeal Br. 5; Puttler ,r,r 9, 30, 33 ("the negative mold 2 should ...
accurately replicate the contours of the original dental structure")
( emphasis added).
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Application 13/738,513
rational basis to modify Chishti to "use an appliance that has already been
fabricated, as a mold to make the same appliance." Reply Br. 3.
The Examiner's Answer responds that "the motivation for adding the
extra method steps is provided for by Puttler's teaching of the increased
efficiency and reliability of the molds which Appellant has not provided any
evidence against." Ans. 3. Although no citation to Puttler is provided (see
id.), we understand the Examiner to be relying on Puttler' s paragraph 7,
which was cited in the Final Office Action for the same motivation. Final
Act. 5.
We agree with Appellant's argument that the rejection presently
before us does not satisfy the Examiner's burden to provide a rational
underpinning sufficient to support the legal conclusion of obviousness. See
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007).
We find Chishti discloses two methods of manufacturing Chishti's
appliance 100. Chishti, Fig. 7, 14:35---65. In the first manufacturing method,
rapid prototyping machine 200 hardens a liquid resin into a three-
dimensional structure to be "used ... directly as the appliance [100]." Id. at
14:37--46 (emphasis added), Fig. 7 (branch to the right). In the second
manufacturing method, machine 200 hardens a liquid resin into "a mold for
producing" appliance 100, such that appliance 100 is "indirectly"
manufactured using machine 200. Id. at 14:37--46 (emphasis added), Fig. 7
(branch to the left). In particular, the mold is a "positive tooth model[]" of
the patient's repositioned teeth, and appliance 100 is made from the positive
mold using a pressure or vacuum molding machine 250. Id. at 14:48---65,
Fig. 7. Chishti indicates the indirect method is preferred over the direct
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Application 13/738,513
method, because "machine 200 may utilize a resin having non-optimum
mechanical properties and which may not be generally acceptable for patient
use," and the indirect method permits appliance 100 to be made from "a
more suitable material." Id. at 14:48-57.
The Examiner determines that it would have been obvious to modify
Chishti's second and preferred method of manufacturing appliance 100 such
that, rather than using machine 200 to form a positive mold of the
repositioned teeth directly ( as disclosed by Chishti), one would instead use
machine 200 to form a negative mold of the repositioned teeth directly, and
then use that negative mold to form a positive mold of the repositioned teeth.
Final Act. 4--5. According to the Examiner, this modification would
"provid[ e] for improved efficiency and reliability as taught by Puttler." Id.
at 5.
The Puttler disclosure cited by the Examiner provides:
The preparation of impressions followed by the casting of
stone models and the shipment of stone models to an orthodontic
or dental laboratory to manufacture a laboratory appliance
remains a largely manual process. A method which improves
upon the efficiency and reliability of current methods would be
welcome by both orthodontic professionals and appliance
fabricators.
Puttler ,r 7 ( emphasis added). This disclosure reflects that Puttler' s
manufacturing methods improve upon the efficiency and reliability of other
methods that include preparing positive stone models from negative
impressions of the patient's teeth in their present positions, or require
shipping a model of the patient's teeth in their present positions from the
doctor's office to a laboratory to manufacture a dental appliance, or
otherwise employ a largely manual process. See Puttler ,r,r 6-8.
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However, neither of Chishti's two manufacturing methods involves
any of those aspects. Thus, it is not readily apparent, and the Examiner does
not explain, why incorporating aspects of Puttler's manufacturing methods
into Chishti's manufacturing methods would improve upon the efficiency
and reliability of Chishti' s manufacturing methods. We therefore determine
the record does not provide a rational underpinning sufficient to support the
legal conclusion of the obviousness of claim 1 over Chishti and Puttler.
For the foregoing reasons, we do not sustain the rejection of claim 1
as having been obvious over Chishti and Puttler. The Examiner's additional
consideration of dependent claims 2, 5, and 13 does not overcome the
deficiency identified above as to their parent claim 1. See Final Act. 4--5.
We, therefore, likewise do not sustain the rejection of claims 2, 5, and 13.
B. Obviousness Over Chishti, Puttler, and
0 'Bryan, Hilliard, Li, Kuo, DeSimone, or Andreiko
(claims 3, 4, and 6-12)
The Examiner's additional consideration of dependent claims 3, 4,
and 6-12, and of O'Bryan, Hilliard, Li, Kuo, DeSimone, and Andreiko, does
not address the deficiency identified above as to their parent claim 1. See
Final Act. 5-10. Therefore, for the reasons provided above, we do not
sustain the rejections of claims 3, 4, and 6-12, as having been obvious over
Chishti, Puttler, and O'Bryan, Hilliard, Li, Kuo, DeSimone, or Andreiko.
DECISION
The Examiner's decision to reject claims 1-13 is reversed.
REVERSED
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