Ex Parte Ofir

Patent Trial and Appeal Board

Jul 1, 2014

11837414 (P.T.A.B. Jul. 1, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte ALON OFIR

Appeal 2012-004621
Application 11/837,414
Technology Center 3700
__________

Before JEFFREY N. FREDMAN, ULRIKE W. JENKS, and
CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.

PAULRAJ, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims drawn to an
orthodontic arch wire. The Examiner rejected the claims on the grounds of
anticipation and obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 According to Appellant, the Real Party in Interest is Dr. Alon Ofir (App.
Br. 2.).
Appeal 2012-004621
Application 11/837,414

2
STATEMENT OF THE CASE
Background
The embodiments of the invention described in the Specification
“relate, generally, to orthodontic arch wires,” and “more particularly, to a
novel orthodontic arch wire having an oval cross-sectional shape” (Spec.
¶ 1).
In the art of orthodontic procedures, orthodontic arch
wires (“arch wires”) are commonly used in conjunction with
brackets in order to adjust the position of maloccluded teeth.
Various cross-sectional shapes and thicknesses of arch wires
are known in the art in order to achieve different results
depending on the particular goals of the treating orthodontist

(id. ¶ 2). The Specification states that there “remains a long felt need in the
art for an orthodontic arch wire that combines the benefit of various prior art
wires in order that the wire may supply stiffness, low friction, minimizes
rotational forces to the molar, ease of engagements with brackets currently
used in the art, and further such advantages” (id. ¶ 12).
The Claims
Claims 1-4, 6-10, 21-24, and 26-30 are on appeal. Independent
claim 1 is representative, and reads as follows:
1. An orthodontic arch wire, comprising:
a generally U-shaped orthodontic arch wire,
said orthodontic arch wire having a solid and permanently elliptical
cross sectional shape along the entire arch wire and said elliptical cross
sectional shape having a major axis and a minor axis, said major axis being
longer than said minor axis,
said orthodontic arch wire being configured such that that, when said
orthodontic arch wire is fit to a patient's mouth, said major axis lies
Appeal 2012-004621
Application 11/837,414

3
generally perpendicularly to the face of a patient's teeth along the entire arch
wire; and
said orthodontic arch wire being configured such that, when engaged
with orthodontic brackets, said orthodontic arch wire substantially eliminates
torquing forces to said orthodontic brackets.

The Issues

The Examiner has rejected the claims as follows:
I. Claims 1-3, 9, 10, 21-23, 29, and 30 under 35 U.S.C. § 102(b)
as being anticipated by Schudy.2
II. Claims 4, 6-8, 24, and 26-28 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Schudy and Orikasa.3
Appellant only presents arguments related to anticipation rejection of
independent claim 1. Accordingly, claims 2, 3, 9, 10, 21-23, 29, and 30
stand or fall with claim 1. 37 C.F.R § 41.37(c)(1)(vii). Appellant does not
present any separate arguments for the obviousness rejection of dependent
claims 4, 6-8, 24, and 26-28.
FINDINGS OF FACT
FF1. Schudy discloses an orthodontic arch wire having a cross-sectional
dimension of 0.0016 inch by 0.022 inch, which “can initially be
secured to the dental arch with its 0.016 inch dimension being
vertical” (Schudy, Abstract).
FF2. Schudy further discloses:
Then the arch wire may be twisted 90° at the junctures of the
anterior and posterior teeth and be secured to the dental arch by
inserting the vertical 0.016 dimension of the arch wire into the

2 Schudy, US 3,916,526, issued Nov. 4, 1975.
3 Orikasa, US 5,259,760, issued Nov. 9, 1993.
App
App

FF3.
eal 2012-0
lication 11
0.016
dime
brack

(Id.)
FIG.
“FIG
at col
04621
/837,414
slot of th
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ets.
8 of Schud
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. 4, ll. 43-
e labial bra
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44).
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ckets and
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ists” (id.

App
App

FF4.
FF5.
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lication 11
FIG.
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FIG.

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04621
/837,414
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Appeal 2012-004621
Application 11/837,414

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FF6. Schudy discloses:
To secure arch wire 120 to arch 10, brackets 124 shown in FIG. 1
include labial brackets 140 having a vertical slot dimension of
0.016 inches and buccal brackets 142 having a vertical slot
dimension of 0.022 inches. Arch wire 120 is anchored by two-way
buccal tubes 190, hereinafter described in detail, having a vertical
and a horizontal slot dimension of 0.016 inches (see FIG. 11).

(Id. at col. 7, ll. 1-8.)
FF7. Schudy discloses:
Arch wire 120 is installed on dental arch 10 with the 0.016 inch
dimension in the vertical position (occlusalgingival) and the 0.022
inch dimension in the horizontal position (labial-lingual) around
the anterior teeth and the posterior teeth. Since the 0.016
dimension is vertical, the 0.016 inch slot 122 of labial brackets 140
will be completely filled providing a precision fit between labial
brackets 140 and arch wire 120. There will be a 0.006 inch gap or
clearance in the 0.022 inch slot 122 of buccal brackets 142. Arch
wire 120 will also fit snugly within the 0.016 inch slot of two-way
tube 190.

(Id., col. 7, ll. 9-19.)
FF8. Schudy discloses:
To obtain parallel roots and to coordinate the lower dental arch
with the upper dental arch, arch wire 120 is removed and is either
reformed as hereinafter described or replaced by a preformed arch
wire as hereinafter described. It is preferred that a preformed arch
wire be used because of the convenience and because of the time
saved. . . .
. . .
In the reformed arch wire 120 twists 172 are made in wire 120
at the junctures 168 between the cuspids 18 and first bicuspids 20.

(Id. at col. 7, ll. 39-45, col. 8, ll. 26-28.)
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Application 11/837,414

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FF9. Schudy discloses that “[b]y decreasing the width of the slot of the
labial brackets 140 to 0.016 inches, greater torque may be placed
on an individual tooth and a lighter force is required providing
obvious advantages” (Schudy, col. 7, ll. 30-34).
ANALYSIS
The Examiner finds that “Schudy discloses a generally u-shaped
orthodontic arch wire,” which “may have an elliptical cross-section with a
‘longest’ major axis (e.g. 0.022 inches) and a minor axis (e.g. 0.016
inches),” and which “is installed in orthodontic brackets such that the major
axis (e.g. 0.022 inches) is perpendicular to the tooth surface (i.e. the
horizontal position, labial-lingual) in both the anterior teeth (front, labial
(lips)) and the posterior teeth (back, buccal (cheeks))” (Ans. 5). We concur
with the Examiner’s findings that Schudy teaches an orthodontic arch wire
that satisfies the requirements of claim 1 (see FF1-8). We have considered
Appellant’s arguments, but are not persuaded otherwise.
Appellant’s primary argument on appeal is that the arch wire of
Schudy “always includes a twist,” and therefore Schudy does not teach an
“arch wire having a permanently elliptical cross sectional shape along the
entire arch wire were the major axis lies perpendicular to the teeth” (App.
Br. 10). Appellant asserts that the embodiment in Schudy that is relied upon
by the Examiner refers to Figures 8 and 9, which “clearly illustrate twist
172” (id.). Appellant does not accurately characterize the teachings of
Schudy in presenting this argument.
As recognized by the Examiner, Schudy teaches an arch wire that can
initially be secured to the dental arch with its 0.016 inch dimension (i.e.,
Appeal 2012-004621
Application 11/837,414

8
minor axis) being in a vertical position around both the anterior teeth and
posterior teeth (FF1, FF5-7). Thus, at the time of initial installation, we find
that the arch wire of Schudy satisfies the requirement that the major axis of
the arch wire (i.e., the 0.022 inch dimension) lies perpendicular to the teeth
along its entire length. To be sure, we acknowledge that Schudy teaches, in
the same embodiment, that this initially installed arch wire may thereafter be
removed and either “reformed” or replaced by another “preformed” arch
wire (FF8). However, the “twists” identified by Appellant are only present
in the “reformed arch wire,” not in the initially installed arch wire (id.). This
reformed arch wire is what is depicted in Figures 8 and 9. Even though
Schudy does not depict an untwisted arch wire in the drawings that are
referenced in the embodiment, one of ordinary skill in the art would
recognize that Schudy teaches the initial installation of an arch wire that
meets the claim requirements. The fact that the initially installed arch wire
may subsequently undergo further modification that would take it out of the
scope of the claim does not negate anticipation. An “intermediate structure”
that was both “intended and appreciated” in the prior art may nonetheless
anticipate. In re Mullin, 481 F.2d 1333, 1336 (CCPA 1973). “It matters not
one whit that it was intended to be and appreciated as being an intermediate
structure rather than an end use item.” Id.
Appellant further asserts that “an elliptical arch wire cannot be used as
Schudy is suggesting” based on the disclosure in Schudy that “[s]ince the
0.016 dimension is vertical, the 0.016 inch slot 122 of labial brackets 140
will be completely filled providing a precision fit between labial brackets
140 and arch wire 120” (App. Br. 11). Appellant argues that “[a]n elliptical
Appeal 2012-004621
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arch wire cannot ‘completely fill’ the bracket and provide a ‘precision fit’”
(id.). However, Schudy explicitly teaches that the arch wire may have an
elliptical cross section (FF5). We therefore do not read the language
“completely filled” and “precision fit” to preclude any spacing whatsoever
in the brackets. Moreover, Schudy explicitly recognizes that “[t]here will be
a 0.006 inch gap or clearance in the 0.022 inch slot 122 of buccal brackets
142” (FF7). Contrary to Appellant’s argument, this statement further
supports a finding of anticipation (App. Br. 12). That is because a 0.006
inch gap in the buccal bracket can only be possible if the arch wire is
initially positioned such that the minor axis is parallel and the major axis is
perpendicular to the posterior teeth.
We are also not convinced by Appellant’s argument that “[e]ven if an
elliptical arch wire with the dimensions of 0.016 and 0.022 was placed
within a square slot of 0.022 and 0.022, it is impossible for an elliptical arch
wire to exert any torquing forces” (App. Br. 12). Indeed, this would also
further support a finding of anticipation because Appellant’s claim requires
that the “orthodontic arch wire substantially eliminates torquing forces to
said orthodontic brackets” (cl. 1 (emphasis added)). Moreover, Schudy only
discloses exerting greater torque in the labial brackets, and there is no
suggestion that the initially installed arch must also exert a certain amount of
torque in the buccal brackets (FF9).
We therefore find that Schudy anticipates claim 1. Claims 2, 3, 9, 10,
21-23, 29, and 30 fall with claim 1. Because Appellant does not present any
separate arguments for the obviousness rejection of dependent claims 4, 6-8,
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24, and 26-28, which also relies upon the teachings of Schudy, we affirm
that rejection as well.
SUMMARY
The rejection under 35 U.S.C. § 102(b) is affirmed.
The rejection under 35 U.S.C. § 103(a) is affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

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