Ex Parte KUO

Patent Trial and Appeal Board

Sep 25, 2018

13605949 (P.T.A.B. Sep. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/605,949 09/06/2012 Eric KUO
107046 7590 09/27/2018
WSGR I Align Technology , Inc.
650 Page Mill Road
Palo Alto, CA 94304
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.
22773-894.201 4150
EXAMINER
GEBRESILASSIE, KIBROM K
ART UNIT PAPER NUMBER
2128
NOTIFICATION DATE DELIVERY MODE
09/27/2018 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):
patentdocket@wsgr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIC KUO
Appeal2017-005675
Application 13/605,949
Technology Center 2100
Before JOHN A. JEFFERY, MICHAEL R. ZECHER, and JOYCE CRAIG,
Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1--49, which are all of the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellant, the real party in interest is Align Technology, Inc.
App. Br. 1.
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Application 13/605,949
INVENTION
Appellant's invention relates to creating a subsequent dental
appliance. Abstract. Claim 1 is illustrative and reads as follows:
1. A method usable in creating a subsequent dental
appliance prior to removal of a current dental appliance from a
set of physical teeth for a patient, the method comprising:
receiving a current digital dental model that includes a
representation of the set of physical teeth for the patient with the
current dental appliance attached to the physical teeth or oral
cavity, wherein the current digital dental model is a direct digital
scan of the set of physical teeth and the current dental appliance
and wherein the physical teeth are at a position in treatment when
all or a part of the current dental appliance is desired to be
removed from one or more of the set of physical teeth and it is
desired to use a subsequent appliance, wherein the position in the
treatment is an intermediate teeth arrangement that is not a final
teeth arrangement;
creating based on the current digital dental model, a new
digital dental model that includes the representation of the set of
physical teeth without including the current dental appliance; and
providing digital data suitable for use in manufacturing the
subsequent dental appliance based on electronic data included in
the new digital dental model prior to removal of all or part of the
current dental appliance from the set of physical teeth,
wherein the receiving and the creating are performed by
one or more computer processors.
REJECTIONS 2
Claims 1-3, 5, 8, 9, 12, 14, 15, 17-31, 34, 35, 37-39, and45--49 stand
rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over the
2 In the Final Action, the Examiner withdrew (1) the non-statutory subject
matter rejection of claims 26-33 under 35 U.S.C. § 101; and (2) the
indefiniteness rejection of claims 2, 6, and 32 under pre-AIA 35 U.S.C.
§ 112, second paragraph. Final Act. 2.
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combination of Cinader, Jr. et al. (US 2011/0004331 Al; published Jan. 6,
2011) ("Cinader") and Wen et al. (US 2010/0009308 Al; published Jan. 14,
2010) ("Wen").
Claims 4, 6, 7, 10, 11, 13, 16, 32, 33, and 36 stand rejected under pre-
AIA 35 U.S.C. § I03(a) as unpatentable over the combination of Cinader,
Wen, and Sporbert et al. (US 2006/0263740 Al; published Nov. 23, 2006)
("Sporbert").
Claims 40-44 stand rejected under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over the combination of Cinader, Wen, and Kuo (US
2009/0208897 Al; published Aug. 20, 2009).
ANALYSIS
We have reviewed the Examiner's obviousness rejections of claims 1-
49 in light of Appellant's arguments that the Examiner erred. We have
considered in this decision only those arguments Appellant actually raised in
the Briefs. Any other arguments Appellant could have made, but chose not
to make, in the Briefs are waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
Appellant's arguments are not persuasive of error. We agree with and
adopt as our own the Examiner's findings of facts and conclusions as set
forth in the Answer (Ans. 2---6) and in the Action from which this appeal was
taken (Final Act. 5--40). We provide the following explanation for
emphasis.
In rejecting claim 1, the Examiner found Cinader teaches all of the
recited limitations, except the limitation "wherein the position in the
treatment is an intermediate teeth arrangement that is not a final teeth
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Application 13/605,949
arrangement," for which the Examiner relied on Wen. Final Act. 6 (citing
Wen ,r 106).
Appellant contends the cited portions of Cinader do not teach or
suggest the limitation for which the Examiner relied on Wen. App. Br. 10.
Specifically, Appellant argues Cinader teaches away from the limitation
because "Cinader' s intended purpose is to provide a dental retainer for the
patient to wear to maintain their teeth in the final position that has been
achieved after treatment has completed." Id. ( citing Cinader Title, Abstract,
,r,r 7, 10, 53).
Appellant's "teaching away" argument is not persuasive because
Appellant has not identified where Cinader actually criticizes, discredits, or
otherwise discourages "the position in the treatment is an intermediate teeth
arrangement that is not a final teeth arrangement." See In re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004); DePuy Spine, Inc. v. Medtronic Sofamor
Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) ("A reference does not
teach away, however, if it merely expresses a general preference for an
alternative invention but does not 'criticize, discredit, or otherwise
discourage' investigation into the invention claimed") ( citing Fulton).
Here, not only does Cinader not criticize, discredit or discourage an
intermediate teeth arrangement that is not a final teeth arrangement, but
Cinander explicitly teaches teeth appearing in "near desired finished
positions," which the Examiner explained "could be interpreted as any
position before the 'final position."' See Ans. 4 ( citing Cinader ,r 50).
Appellant has not persuasively rebutted the Examiner's findings. In the
Reply Brief, Appellant argues that "near desired finished positions are not
and would never be understood to refer to as starting positions,
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Application 13/605,949
intermediate positions, etc." Reply Br. 5. Appellants do not provide any
basis for this argument, however. It is well settled that mere attorney
arguments and conclusory statements, which are unsupported by factual
evidence, are entitled to little probative value. In re Geisler, 116 F.3d 1465,
1470 (Fed. Cir. 1997); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA
197 4) ( attorney argument is not evidence).
Appellant next contends the combined teachings of Cinader and Wen
would change the principle of operation of the Cinader reference and render
Cinader unsuitable for its intended purpose. App. Br. 10-11. In particular,
Appellant argues combining Cinader and Wen as the Examiner proposed
would modify Cinader's principle of operation, which Appellant describes
as "creating a virtual dentition model 52 of the teeth 36 in finished or post-
treatment positions." App. Br. 11. Appellant further argues, "if Cinader's
intended purpose, e.g., principal of operation, is to maintain the teeth in the
final position (which is the most normal intended use of a retainer); then,
retaining them in an intermediate teeth arrangement would be, by definition,
a change in the principal of operation." Reply Br. 3 ( citing In re Ratti, 270
F.2d 810 (CCPA 1959)).
We are not persuaded that Cinader's principle of operation should be
unduly limited to maintaining teeth in a final position, as described by
Appellant. See App. Br. 11; Reply Br. 3. Instead, the principle of operation
that more accurately epitomizes Cinader is using digital data representing
the patient's oral structure to prepare a virtual dentition model and to
fabricate a dental retainer. See Cinader ,r,r 13-26.
Appellant has not identified or otherwise described how the digital
data representing the patient's oral structure, used to prepare a virtual
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dentition model and to fabricate a dental retainer, would be affected by
retaining the teeth in an intermediate, rather than final, arrangement.
Moreover, we agree with the Examiner that the principle of operation of
Cinader already accounts for non-final teeth arrangements. See Cinader
,r 50; Ans. 4.
Thus, Appellant has not persuaded us that modifying Cinader with the
teachings of Wen alters Cinader's operating principle. See In re Umbarger,
407 F.2d 425, 430-31 (CCPA 1969) (finding Ratti inapplicable where the
modified apparatus will operate "on the same principles as before").
For these reasons, we are not persuaded that the Examiner erred in
finding that the combination of Cinader and Wen teaches or suggests the
disputed limitations of claim 1.
Accordingly, we sustain the Examiner's§ 103(a) rejection of
independent claim 1, 3 as well as the Examiner's§ 103(a) rejection of
independent claims 25, 26, and 34, which Appellant argues are patentable
for similar reasons. App. Br. 11-16. We also sustain the Examiner's
rejection of dependent claims 2-24, 27-33, 35--49, not argued separately
with particularity. See 37 C.F.R. § 4I.37(c)(l)(iv).
3 In the event of further prosecution, we leave it to the Examiner to consider
whether the claimed subject matter is judicially-excepted from patent
eligibility under 35 U.S.C. § 101. Although the Board is authorized to reject
claims under 37 C.F.R. § 4I.50(b), no inference should be drawn when the
Board elects not to do so. See Manual of Patent Examining Procedure
§ 1213.02.
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DECISION
We affirm the Examiner's decision rejecting claims 1--49.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). See
37 C.F.R. § 4I.50(f).
AFFIRMED
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