Ex Parte Schulman et al

Board of Patent Appeals and Interferences

Jan 12, 2009

10871993 (B.P.A.I. Jan. 12, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MARTIN L. SCHULMAN and CARLINO PANZERA
____________

Appeal 2008-3940
Application 10/871,993
Technology Center 1700
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Decided: January 12, 2009
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Before DONALD E. ADAMS, LORA M. GREEN, and
RICHARD M. LEBOVITZ, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL

This appeal under 35 U.S.C. § 134 involves claims 10-12, the only
claims pending in this application. We have jurisdiction under 35 U.S.C.
§ 6(b).
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STATEMENT OF THE CASE
The claims are directed to a process for manufacturing a dental
restoration. Claim 10 is representative and is reproduced below:
10. A process for manufacturing a dental restoration comprising:
manufacturing a shell by rapid prototyping, wherein the shell is a
replica of a coping;
wherein the coping is in the shape of denture teeth, a bridge crown,
tooth replacement appliance, denture, post, jacket, inlay, onlay, facing,
veneer, facet, splint, partial crown, cylinder, pin, or connector;
covering the shell with refractory material;
burning out the shell to provide a space in the refractory material;
filling the space with ceramic, metal or composite material to form the
dental restoration;
wherein the ceramic material comprises mullite, silica, spinel,
tricalcium phosphate or mixtures thereof; and
wherein the metal comprises powder of one or more precious metals,
non-precious metals or alloys thereof.

The Examiner relies on the following prior art references to show
unpatentability:
Bowman US 3,229,003 Jan. 11, 1966
Quinn et al. US 5,176,188 Jan. 5, 1993

The rejections as presented by the Examiner are as follows:
1. Claims 10 and 11 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Quinn.
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2. Claim 12 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Quinn and Bowman.
We reverse.

ISSUE

Does Quinn alone or in combination with Bowman teach a process for
manufacturing a dental restoration comprising the manufacture of a shell by
rapid prototyping?

FINDINGS OF FACT
1. In CAD/CAM “processes, a three-dimensional image of a tooth to be
restored is created along with the teeth surrounding the tooth in an effort to
create a dental restoration which is to be placed over a tooth” (Spec. 1: 27-
30).
Based on the tooth and surrounding teeth, the dental technician
may then select a tooth from a plurality of tooth forms stored in
the computer to best fit the tooth to be restored. The selected
tooth is projected onto the tooth to be restored until an optimum
positioning and fit of the dental restoration is achieved. The
digital data concerning the dental restoration thus formed are
supplied to a numerically controlled milling machine operating
in three dimensions. The milling machine cuts a blank of metal
or porcelain material into the dental restoration design based on
the data supplied.

(Spec. 2: 1-7.)
2. Solid free-form (SFF) fabrication also known as rapid prototyping is
“used for net-shape manufacturing of advanced materials (ceramics,
polymer) into small and complex shapes” (Spec. 4: 1-6). According to
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Appellants’ Specification, solid free-form or rapid prototyping “techniques
are similar to CAD/CAM techniques in that the digital representation of the
final shape and its implementation is designed and controlled by a computer.
However, “the machining step in these techniques is substituted by other
computer assisted net-shaping techniques” (Spec. 4: 8-9). According to
Appellants’ Specification, the invention, i.e., rapid-prototyping as in claim
10, uses solid free-form techniques similar to CAD/CAM methods to design
a restoration, wherein
the design of the restoration is carried by a CAD device which
uses at least two inputs: (1) the digital image taken optically
directly from a mouth of the patient (optical impression) or
created by digitizing the impression/die by contact or by an
optical digitizer; and (2) a library of teeth shapes and forms.

(Spec. 4: 28 - 5: 2).
3. Quinn teaches a method “for forming investment casting patterns,
wherein thermally-collapsible microspheres are incorporated into the pattern
composition” (Quinn, Abstract). Quinn teaches that “[t]he patterns can be
made either by conventional pattern forming techniques or by solid imaging
techniques” (id.). Quinn teaches that solid imaging is “the direct production
of objects or mold patterns from computer aided design data” (Quinn, col. 1,
ll. 61-62). Quinn teaches that “[a]fter investing the microsphere containing
pattern in the ceramic shell, the pattern and shell are heated, causing a
collapse of the microspheres and thereby preventing cracking of the shell.
The shell is then heated to burn-out the remaining pattern material and fire
the shell, thereby creating a mold” (Quinn, Abstract).
4. Quinn teaches that
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U.K Patent Application GB 2207 682 A (published Jun.
8, 1989) discloses a photosensitive composition, for use as a
pattern for dental braces, in which one component of the pattern
softens prior to burn-out of the pattern thereby preventing the
build up of pressures that might cause shell cracking.

(Quinn, col. 2, ll. 30-35.)
5. Quinn teaches that the disclosed “invention relates to production of
investment casting patterns comprising expanded thermally-collapsible
microspheres and more particularly to a method of reducing ceramic shell
mold failures due to cracking from pattern expansion during pattern melt-out
or burn-out and firing of the mold” (Quinn, col. 1, ll. 6-11).
6. The Examiner finds that Bowman “teaches a process of making a dental
restoration including pouring material in the form of a suspension (or slurry)
into a mold space” (Ans. 6).

PRINCIPLES OF LAW
In proceedings before the Patent and Trademark Office, the Examiner
bears the burden of establishing a prima facie case of obviousness based
upon the prior art. On appeal to this Board, Appellants must show that the
Examiner has not sustained the required burden.1

1 See (1) Ex parte Yamaguchi, Appeal 2007-4412, slip op. at 5 and 23 (Bd.
Pat. App. & Int. Aug. 29, 2008); (2) Ex parte Fu, Appeal 2008-0601, slip op.
at 5 and 20 (Bd. Pat. App. & Int. Mr. 31, 2008); (3) Ex parte Catan, Appeal
2007-0820, slip op. at 3 and 21 (Bd. Pat. App. & Int. Jul. 3, 2007) and (4) Ex
parte Smith, Appeal 2007-1925, slip op. at 4, 9 and 23 (Bd. Pat. App. & Int.
Jun. 25, 2007). Opinions in support of the decisions in these four appeals
are (a) precedential opinions of the Board and (b) available on the USPTO
website.
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“In determining whether obviousness is established by combining the
teachings of the prior art, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.” In re
GPAC Inc., 57 F.3d 1573, 1581 (Fed. Cir. 1995) (internal quotations
omitted).

ANALYSIS
Quinn:
The Examiner finds that Quinn “teaches a process of making a
product by rapid prototyping and investment casting” (Ans. 5). More
specifically, the Examiner finds that “Quinn et al. (see col. 2, lines 30-35)
teaches using a composition in a rapid prototyping process to form a pattern
for use in the field of dentistry” (Ans. 7). Col. 2, lines 30-35 of Quinn does
not speak of a rapid prototyping process (see FF 4). Further, Quinn
expressly discloses that the disclosed invention relates to the production “of
investment casting patterns” (FF 5). The Examiner has failed to explain why
Quinn’s reference to U.K. Patent Application GB 2207 682 A would be
interpreted by those of ordinary skill in this art as teaching a rapid
prototyping process (see FF 4). As Appellants’ explain, Quinn “is
concerned with investment casting of molds using thermally-collapsible
microspheres” and the “rapid prototyping of shells . . . is not taught or
suggested in Quinn” (App. Br. 4). We agree (FF 4 and 5).

Quinn and Bowman:
The Examiner relies on Quinn to teach, inter alia, a rapid prototyping
process (Ans. 5-6). The Examiner relies on Bowman to teach “a process of
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making a dental restoration including pouring material in the form of a
suspension (or slurry) into a mold space” (FF 6). Based on the combined
teachings of Quinn and Bowman the Examiner concludes that it would have
been prima facie at the time the invention was made to combine Bowman’s
teaching of pouring material in the form of a suspension (or slurry) into a
mold space with the process taught by Quinn “in order to manufacture a
dental restoration that is durable and strong, and can be accurately shaped
and dimensioned with a minimum of labor” (Ans. 6). However, as
Appellants’ explain, Bowman “does not cure the deficiencies of Quinn . . .
[which] does not teach the manufacture of dental restoration by rapid
prototyping” (App. Br. 5). We agree.

CONCLUSION OF LAW
The Examiner has failed to provide the evidence necessary to
establish that Quinn, alone or in combination with Bowman, teaches a
process for manufacturing a dental restoration comprising the manufacture
of a shell by rapid prototyping.
The rejection of claims 10 and 11 under 35 U.S.C. § 103(a) as
unpatentable over Quinn is reversed.
The rejection of claim 12 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Quinn and Bowman is reversed.

REVERSED

lp
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Application 10/871,993

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