11725790 (P.T.A.B. Mar. 26, 2013)

Ex Parte Kuo et al

Patent Trial and Appeal BoardMar 26, 2013

11725790 (P.T.A.B. Mar. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ERIC KUO and FUMING WU ____________ Appeal 2011-001002 Application 11/725,790 Technology Center 3700 ____________ Before GAY ANN SPAHN, MICHAEL C. ASTORINO, and ADAM V. FLOYD, Administrative Patent Judges. FLOYD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision finally rejecting claims 1-5 and 7-30. Claim 6 has been withdrawn from consideration. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. Appeal 2011-001002 Application 11/725,790 2 CLAIMED SUBJECT MATTER Claims 1, 9, 18, and 25 are the independent claims on appeal. Claim 1 is representative of the subject matter on appeal, and recites: 1. An attachment device for interacting with a polymeric shell dental appliance, said attachment device comprising: an anchoring attachment body; a bonding surface coupled to said anchoring attachment body, said bonding surface configured for anchoring said anchoring attachment body to a dental feature; a force-applying active mechanism coupled to said anchoring attachment body; and a polymeric shell dental appliance contact region coupled to said force applying active mechanism, said polymeric shell dental appliance contact region configured to contact said polymeric shell dental appliance and apply a force generated by said force applying active mechanism between said dental feature and said polymeric shell dental appliance when said polymeric shell dental appliance engages said force-applying active mechanism. REJECTIONS Claims 1, 2, 4, 5, 7-11, 13-23, and 25-30 are rejected under 35 U.S.C. § 102(b) as anticipated by Martz (US 5,145,364, issued Sep. 8, 1992). Claim 3 is rejected under 35 U.S.C. § 103(a) as unpatentable over Martz. Claim 12 is rejected under 35 U.S.C. § 103(a) as unpatentable over Martz and Hilliard (US 2003/0190575 A1, published Oct. 9, 2003). Claim 24 is rejected under 35 U.S.C. § 103(a) as unpatentable over Martz and Wen (US 2006/0199141 A1, published Sep. 7, 2006). Appeal 2011-001002 Application 11/725,790 3 ANALYSIS The rejection of claims 1, 2, 4, 5, 7-11, 13-23, and 25-30 as anticipated by Martz The Examiner and the Appellants dispute whether Martz discloses a “contact region configured to . . . apply a force generated by said force- applying active mechanism . . . when said polymeric shell dental appliance engages said force-applying active mechanism.” See Ans. 4 and App. Br. 11; see also App. Br., Clms. App’x. The Appellants specifically argue that “Martz fails to disclose that the engagement of Martz’s molded plastic appliance with the clasps causes a force to be generated, as is described in Appellants’ Claim 1 with regards to Appellants’ polymeric shell dental appliance and Appellants’ force-applying active mechanism.” Id. (emphasis omitted). We understand the Appellants’ argument to be that Martz does not disclose that “a force generated by said force-applying active mechanism” is applied by the contact region when said polymeric shell dental appliance is engaged. The Examiner finds that the polymeric shell dental appliance (appliance 54 in Figure 7A) disclosed in Martz applies a biasing force to the tooth when it is engaged with the force-applying active mechanism (clasp assembly 40 and Tees 62). Ans. 7 (citing Martz, col. 5, ll. 46-56). However, the Examiner’s finding is insufficient to satisfy the requirement of the claim because the contact region must be configured to “apply a force generated by said force-applying active mechanism . . . when said polymeric shell dental appliance engages said force-applying active mechanism.” In Martz, the “force-applying active mechanism” (the clasp assembly 40 and Tees 62) applies a force to the tooth prior to the polymeric shell dental appliance being engaged, and while the polymeric shell dental appliance (appliance Appeal 2011-001002 Application 11/725,790 4 54) itself applies an additional biasing force to the “force-applying active mechanism” (the clasp assembly 40 and Tees 62) when engaged, it does not apply a force “generated by said force-applying active mechanism” (the clasp assembly 40 and Tees 62) when engaged. Thus, the rejection of claims 1, 2, 4, 5, 7-11, 13-23, and 25-30 as anticipated by Martz is not sustained. The rejection of claim 3 as unpatentable over Martz With respect to the obviousness rejection of claim 3, the Examiner does not make any additional finding with respect to the contact region applying a force generated by the force-applying active mechanism when the polymeric shell dental appliance is engaged. See Ans. 5-6. Accordingly, for the reasons set forth supra, we likewise reverse the rejection under 35 U.S.C. § 103(a) of claim 3 as unpatentable over Martz. The rejection of claim 12 as unpatentable over Martz in view of Hilliard With respect to the obviousness rejection of claim 12, the Examiner does not find that Hilliard remedies the deficient disclosure of Martz with respect to the contact region applying a force generated by the force- applying active mechanism when the polymeric shell dental appliance is engaged. See Ans. 6. Accordingly, for the reasons set forth supra, we likewise reverse the rejection under 35 U.S.C. § 103(a) of claim 12 as unpatentable over Martz and Hilliard. The rejection of claim 24 as unpatentable over Martz in view of Wen With respect to the obviousness rejection of claim 24, the Examiner does not find that Wen remedies the deficient disclosure of Martz with Appeal 2011-001002 Application 11/725,790 5 respect to the contact region applying a force generated by the force- applying active mechanism when the polymeric shell dental appliance is engaged. See Ans. 6. Accordingly, for the reasons set forth supra, we likewise reverse the rejection under 35 U.S.C. § 103(a) of claim 24 as unpatentable over Martz and Wen. DECISION We REVERSE the rejection of claims 1-5 and 7-30 under 35 U.S.C. § 102(b) as anticipated by Martz. REVERSED mls