Ex Parte Rompen et al

Patent Trial and Appeal Board

Feb 28, 2014

11495119 (P.T.A.B. Feb. 28, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ERIC ROMPEN, BERNARD TOUATI, ERIC VAN DOOREN,
and SANEL DURIC
____________

Appeal 2012-003361
Application 11/495,119
Technology Center 3700
____________

Before DONALD E. ADAMS, ERICA A. FRANKLIN, and
SUSAN L. C. MITCHELL, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL1
This appeal under 35 U.S.C. § 134 involves claim 24 (App. Br. 3).
Examiner entered a rejection under 35 U.S.C. § 103(a). We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 The Real Party in Interest is Nobel Biocare Services AG (App. Br. 3).
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STATEMENT OF THE CASE
Claims 1 and 6-31 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Reiss2 and Straumann3 (Ans. 4).
Appellants “appeal[] . . . from the decision of the Examiner dated
March 28, 2011 rejecting Claims 1 and 6-31” (see Notice of Appeal; Ans.
3). While Appellants recognize that “[c]laims 1 and 6-31 are currently
pending in the application,” they expressly limit their appeal to “[c]laim 24”
(App. Br. 3; Ans. 3). Therefore, the rejection of claims 1, 6-23, and 25-31 is
summarily affirmed and the rejection of these claims 1, 6-23, and 25-31 will
not be discussed further. See Manual of Patent Examining Procedure §
1205.02 (Rev. 8, July 2010) (“If a ground of rejection stated by the examiner
is not addressed in appellant’s brief, that ground of rejection will be
summarily sustained by the Board”); see also Ans. 6 (“The rejection of
claims 1, 6-23, and 25-31 have not been argued and therefore . . . should be
upheld”).
Claim 24 is directed to a dental implant system. Claim 24, however,
depends from claim 21, which is directed to a dental implant system that
comprises, inter alia, the trans-mucosal abutment of claim 1. Therefore, for
clarity, we address the requirements of Appellants’ claim 24 in the context
of the subject matter set forth in claims 1 and 21 with reference to
Appellants’ Figure 1 and annotated Figure 1a reproduce below.4

2 Riess et al., US 4,178,686, issued December 18, 1979.
3 Straumann, FR 2317904A, published February 11, 1977, as translated at
“http://translationgateway.epo.org/emtp/gw/?ACTION=d...,” accessed
March 11, 2011.
4 Appellants withdrew claims 1 and 21 from this Appeal (App. Br. 3).
Therefore, we have considered claim 24 as if it was presented as an
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Figure 1 is a vertical view showing an implant in the form of a
bone anchoring element and an associated trans-mucosal
component in the form of a spacer sleeve (a), a one-piece
implant in the form of a bone-anchoring element and a spacer
trans-mucosal component part integrated with the latter (b), and
an implant with a prosthetic installation (c).
(Spec. 4: ¶ [0012].)

Appellants’ annotated Fig. 1a illustrates the location of the
complementary surfaces of the implant (1) and the lower surface of the
lower base portion (2d) of abutment (2) (see App. Br. 4).

independent claim that included all of the subject matter set forth in claims 1
and 21.
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The dental implant system of Appellants’ claim 24, viewed together
with claims 1 and 21, comprises a trans-mucosal abutment in combination
with a dental implant (15).
As set forth in Appellants’ claim 1, the trans-mucosal abutment (2)
comprises an upper part (2a) and a lower base portion (2d) with an inwardly
narrowed part (2c) interposed between the upper part (2a) and the lower base
portion (2d).
The lower base portion (2d) defines a lower surface configured to
mate with a complementary surface of the dental implant (1).
The inwardly narrowed part (2c) is formed on the trans-mucosal
abutment (2) by a continuous surface that extends from the upper part (2a) to
the lower base portion (2d). The surface of the inwardly narrowed part (2c)
first narrows at the lower base portion (2d) adjacent to the lower surface
thereof by extending towards a longitudinal axis (7) of the trans-mucosal
abutment (2) and then widens by extending away from the longitudinal axis
(7) of the trans-mucosal abutment (2).
As set forth in Appellants’ claim 21, the dental implant (1) has a
complementary surface configured to mate with the lower surface of the
abutment.

5 Appellants characterize the term “dental implant” or “implant,” as it is used
in Appellants’ claim 24, as representing element “1” illustrated in
Appellants’ Fig. 1 (see App. Br. 3-4). As Appellants’ Specification makes
clear, however, Figure 1 illustrates “an implant in the form of a bone
anchoring element and an associated trans-mucosal component” (Spec. 4:
¶ [0012]). In this regard, Appellants’ Specification discloses that “[i]n
Figure 1, a bone-anchoring element, or so-called fixture, is indicated by 1
. . ., [which is] provided with an upper flange 1a” (Spec. 4: ¶ [0015]).
Therefore, we interpret the “dental implant” or “implant” of Appellants’ 24
to represent a “bone-anchoring element.”
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As set forth in Appellants’ claim 24, the lower surface of the lower
base portion (2d) forms an interface with the complementary surface of the
implant (1), and the inwardly narrowed part of the abutment first narrows at
the interface of the abutment and the implant (1).
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Riess’ “invention relates to an artificial tooth with an implantable
tooth root” (Riess, col. 1, ll. 5-6).
FF 2. Examiner’s annotated version of Riess’ Figure 1 is reproduced
below:

“FIG. 1 is an enlarged illustration, in an axial section, of the principal
construction of an embodiment of the artificial tooth pursuant to . . . [Riess’]
invention” (id. at col. 4, ll. 14-16). Examiner annotated Riess’ Figure 1 to
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identify features in the figure that correspond to Appellants’ claimed
invention (see Ans. 5).
FF 3. Riess’ device “is essentially constituted of the enossal root 1, the
core 2, the intermediate member 3 which is to be encompassed by the
gingiva, and the superstructure 4 . . . a jacket crown (facing crown)” (id. at
ll. 26-29; see also id. at ll. 31-33 (“the facing or jacket crown 4 is mounted
on a sleeve 5 which contains a filling constituted of silicon rubber 6”)).
FF 4. Riess suggests that “[i]n order to attain a good degree of growing on
the gingiva (gum skin) and a closely or sealingly encompassing tooth neck
. . . the intermediate member [3] is constructed in the form of a disclike
member having a concavely curved annular edge” (id. at ll. 2-7).
FF 5. Examiner finds that Reiss fails to disclose that the intermediate
member 3 narrows and then “widens by extending away from the
longitudinal axis of the abutment” and relies on Straumann to make up for
this deficiency in Reiss (Ans. 5-6).
FF 6. Straumann Figure 5 and Examiner’s annotated version of
Straumann’s Figure 9 are reproduced below:

Figure 5 illustrates one form of implant within the scope of Straumann’s
invention and Figure 9 illustrates the placement of Straumann’s implant in
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the mouth (see Straumann 1: 33-34). Examiner annotated Straumann’s
Figure 9 to identify the location of the “abutment,” “gum tissues,” “inwardly
narrowed part,” and “implant” (Ans. 8).
FF 7. Examiner finds that Straumann suggests “a dental implant . . . having
an inwardly narrowed part [4] that first narrows by extending towards a
longitudinal axis of the transmucosal abutment then widens by extending
away from the axis” (Ans. 6; see also id. at 8 (as illustrated in Straumann’s
Fig. 9, gum tissue is in contact with the inwardly narrowed part 4 of
Straumann’s device)).
ANALYSIS
Examiner and Appellants agree that “Reiss does not indicate or
otherwise teach that the intermediate member 3 narrows from its widest
point and then widens again” (App. Br. 6; see FF 5). Examiner and
Appellants also agree that “the collar portion 4 [of Straumann’s device] has
an hourglass shape that narrows inwardly from the root portion 2 and then
widens until reaching the post portion 5” (App. Br. 6; FF 6-7).
Based on the combination of Reiss and Straumann, Examiner
concludes that, at the time Appellants’ invention was made, it would have
been prima facie obvious to “modify the implant of Reiss by providing an
inwardly narrowed part as taught by Straumann in order to allow tissues to
grow within for effectively securing the implant in the jawbone” (Ans. 6; see
also id. at 8). Stated differently, Reiss suggests a device wherein the lower
portion of the intermediate member 3 mates with a complementary surface
of the implant 1 and begins to narrow inwardly at the interface of the two
complementary surfaces (see FF 2). While Reiss suggests that the
intermediate member 3 has a concavely curved annular edge, Straumann
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suggests that this intermediate member, or collar, may be hour-glass shaped
(FF 4, 6, and 7; see also App. Br. 6). Thus, the combination of Reiss and
Straumann suggests an inwardly narrowed part (e.g., Straumann’s collar
portion 4) formed on the trans-mucosal abutment by a continuous surface
that extends from the upper part to the lower base portion. Therefore, we are
not persuaded by Appellants’ contention to the contrary (see App. Br. 7).
Although Appellants’ claimed invention does not concern itself with a
facing or crown, Appellants contend that when Reiss’ “facing or jacket
crown 4[, which] is mounted on a sleeve 5 . . . contain[ing] a filling
constituted of silicon rubber 6” and placed on Reiss’ device a seam is
created “between the intermediate member 3 and the rubber portion 6 of the
sleeve 5” and Reiss “does not provide any teaching regarding alternative
locations for the seam” (see App. Br. 6; FF 3). Similarly, Appellants
contend that “Straumann does not teach or otherwise disclose that a seam
could be located between the root portion 2, the collar portion 4, or the post
portion 5, much less where the seam could be located relative to its tapered
collar 4” (App. Br. 6). We are not persuaded.
Appellants’ claimed invention does not: (1) require the mounting of a
crown to the implant or (2) define a particular location for any seam that
may be created between the crown and implant, when a crown is mounted to
the implant (see Claim 24). Therefore, we are not persuaded by Appellants’
contention that “neither reference necessarily indicates where the seam
between the intermediate member 3 and the rubber portion 6 of the sleeve 5
in Reiss should be positioned” (App. Br. 7; see also id. (“the combination of
Reiss and Straumann would likely result in the creation of an abutment
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wherein the seam between the intermediate member 3 and the rubber portion
6 of the sleeve 5 lies somewhere along an inwardly narrowed portion”)).
The same is true of Appellants’ contention that “if the location of the
seam between the abutment and intermediate member 3 were unchanged
from what is illustrated in Figure 1 of Reiss . . . the seam would lie . . . at the
narrowest location of the inwardly narrow part” (Reply Br. 1). Appellants
appear to assert that, at the time of Appellants’ claimed invention, a person
of ordinary skill in this art would not realize that if Reiss’ intermediate
member was hour-glass shaped, as suggested by Straumann, that Reiss’
crown 4, sleeve 5, and rubber 6 filling would have to be adjusted to
accommodate the width of the upper part of the abutment. We are not
persuaded. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (It is
proper to “take account of the inferences and creative steps that a person of
ordinary skill in the art would employ”); see also id. at 421 (“A person of
ordinary skill is also a person of ordinary creativity, not an automaton”).
We recognize, but are not persuaded by, Appellants’ contention that
their claimed device is advantageous over the device suggested by the
combination of Reiss and Straumann, such that, inter alia, “the continuous
surface along the inwardly narrowed portion prevents agglomeration of
bacteria, which can cause inflammation in the soft tissue and negatively
affect maintenance and preservation of the marginal bone at the interface
(App. Br. 9; Cf. FF 4 (“[i]n order to attain a good degree of growing on the
gingiva (gum skin) and a closely or sealingly encompassing tooth neck . . .
the intermediate member [3] is constructed in the form of a disclike member
having a concavely curved annular edge”); see also FF 6-7 (wherein
Straumann’s Fig. 9 illustrates gum tissue filling in the hour-glass shaped
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intermediate, or collar, portion of the device)). In sum, Appellants failed to
establish an evidentiary basis on this record to support a conclusion that
Appellants’ claimed subject matter provides “advantages” that were not
appreciated, or innate to the device suggested, by Reiss and Straumann alone
or in combination.
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness. The rejection of claim 24 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Reiss and Straumann is
affirmed.
TIME PERIOD FOR RESPONSE
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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