Ex Parte Scommegna et al

Board of Patent Appeals and Interferences

May 8, 2012

11007818 (B.P.A.I. May. 8, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/007,818 12/08/2004 Gabriele Scommegna 71637RCE 9635
23872 7590 05/08/2012
MCGLEW & TUTTLE, PC
P.O. BOX 9227
SCARBOROUGH STATION
SCARBOROUGH, NY 10510-9227
EXAMINER
PATEL, YOGESH P
ART UNIT PAPER NUMBER
3776
MAIL DATE DELIVERY MODE
05/08/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte GABRIELE SCOMMEGNA and MAURIZIO DOLFI
__________

Appeal 2010-012447
Application 11/007,818
Technology Center 3700
__________

Before TONI. R. SCHEINER, JEFFREY N. FREDMAN, and
ERICA A. FRANKLIN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a dental
implant. The Examiner rejected the claims as obvious. We have jurisdiction
under 35 U.S.C. § 6(b). We reverse.

Appeal 2010-012447
Application 11/007,818

2
Statement of the Case
Background
The Specification teaches that “a dental implant comprises an
artificial root or fixture to be implanted surgically in the bony tissue, and a
stump or abutment intended for supporting a dental prosthesis and connected
to the fixture” (Spec. 1, ll. 11-14).
The Claims
Claims 2-12, 14-21, 23, 24, and 27 are on appeal. Claim 14 is
representative and read as follows:
14. A dental implant comprising:
a fixture defining a tapered cavity at an open end of said
fixture, said fixture also defining a polygonal seat arranged at
an end of said cavity diametrically opposite said open end;
an abutment with a tapered shank and a prosthesis
connection arranged on one end of said shank, said abutment
also including an appendix arranged on another end of said
shank diametrically opposite said prosthesis connection, said
appendix having a shape substantially complementary to a
shape of said polygonal seat, said tapered cavity and said
tapered shank being shaped to have said shank fit inside said
cavity, a taper of said shank and of said cavity being arranged
to cause said shank to lock into said cavity when said shank is
fitted in said cavity, said appendix being rotatably connected to
said shank.

The issues

A. The Examiner rejected claims 2, 3, 14-18, 21, 23, 24, and 27 under 35
U.S.C. § 103(a) as obvious over Halldin
1
and Siegmund
2
(Ans. 5-7).

1
Halldin et al., US 2003/0082498 A1, published May 1, 2003.
2
Siegmund, E., US 5,571,015, issued Nov. 5, 1996.
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B. The Examiner rejected claims 4-7 and 19 under 35 U.S.C. § 103(a) as
obvious over Halldin, Siegmund, and Misch
3
(Ans. 7-8).
C. The Examiner rejected claims 10-12 and 20 under 35 U.S.C. § 103(a)
as obvious over Halldin, Siegmund, and Riera
4
(Ans. 8).
D. The Examiner rejected claims 2, 3, 8, 9, 14-18, 21, 23, 24, and 27
under 35 U.S.C. § 103(a) as obvious over Halldin and Willoughby
5
(Ans. 9-
11).
E. The Examiner rejected claims 4-7 and 19 under 35 U.S.C. § 103(a) as
obvious over Halldin, Willoughby, and Misch (Ans. 11).
F. The Examiner rejected claims 10-12 and 20 under 35 U.S.C. § 103(a)
as obvious over Halldin, Willoughby, and Riera (Ans. 11-12).
A.-F. 35 U.S.C. § 103(a)
Because all of these rejections rely on Halldin and all the rejections
turn on the same issue, we will consider them together.
The Examiner finds that Halldin teaches a “tapered shank being
shaped to have said shank fit inside said cavity, a taper of said shank and of
said cavity being arranged to cause said shank to lock into said cavity” (Ans.
6). The Examiner finds that “Halldin fails to disclose the appendix being
rotatably connected to the shank” (Ans. 6).
The Examiner finds it obvious “to modify Halldin by providing the
appendix rotatably connected to the shank or as taught by Siegmund for easy

3
Misch et al., US 6,068,480, issued May 30, 2000.
4
Riera, J., US 5,116,225, issued May 26, 1992.
5
Willoughby, A., US 6,283,753, B1, issued Sep. 4, 2001.
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Application 11/007,818

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assembly within patient‟s mouth or to provide micro-gap between two
elements” (Ans. 6).
Appellants contend “[e]lement 14 in Halldin is tapered and fits in a
tapered cavity. However there is no disclosure in Halldin that the shape or
dimensions of this taper meet the requirements of a locking or self-holding
taper” (App. Br. 21). Appellants contend that “not all tapers are capable of
locking a shank in a cavity. Some tapered cones will not lock into a tapered
cavity, and instead those tapered cones in those cavities would have the
same result as a ball in a hole” (App. Br. 17).
Appellants contend that “if element 21 was rotatably connected as
proposed by the rejection, Halldin would be rendered unsatisfactory for its
intended purpose. If appendix/polygon 21 was rotatable with regard to
element 14, then appendix/polygon 21 could not provide the rotational lock
of the abutment 1 to the implant 401” (App. Br. 18). Appellants contend that
“[a]ll the rotatable connections in the prior art, especially such as Siegmund,
are either not between a taper and a polygon, or are not between a polygon
and a tapered cone that fits into a tapered cavity of a fixture as in
Willoughby. It is only claim 24, and the present application, which sets forth
this feature” (App. Br. 19).
The Examiner responds by finding that “Morse-tapering is very well-
known in the art, therefore one having ordinary skill in the art would
recognize the benefit of specific tapering for tight or friction-fit connection
between two elements in order to prevent undesired loosening after
installation” (Ans. 13).
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The issue with respect to these rejections is: Does the evidence of
record support the Examiner‟s conclusion that the cited prior art teaches “a
taper of said shank and of said cavity being arranged to cause said shank to
lock into said cavity” as required by claim 14?
Findings of Fact
1. Figure 2a of Halldin is reproduced below:

“FIG[]. 2a . . . depict[s] a second embodiment of an abutment;” (Halldin 6 ¶
0086).
2. Halldin teaches that the “outer surface 8 of the post portion 5 is
tapering towards the coronal direction of the abutment” (Halldin 7 ¶ 0111).
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3. Halldin teaches “a hexagonal locking structure 21 for rotational
lock to an implant . . . A screw may be inserted in the through bore 17,
seating the screw head on the ledge 18, for connection of the abutment 1 to
an implant” (Halldin 8 ¶ 0123).
4. Siegmund teaches a two part abutment where “the mounting
base 16 is screwed onto the cylindrical portion 15 of the transmucosal collar
14” (Siegmund, col. 5, ll. 49-50).
5. Figure 12 of Willoughby is reproduced below:

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“FIG. 12 is a perspective view of components of a Milled Universal
Abutment System („MUAS‟)” (Willoughby, col. 5, ll. 65-66).
6. Misch teaches “machining a marking onto the abutment-mount
20 to be used as a reference point. This ensures a near exact fit between the
prosthesis, the abutment-mount 20 and the patients surrounding teeth”
(Misch, col. 6, ll. 2-5).
7. The Examiner finds that “Riera is silent as to the taper ratio of
the shank and cavity” (Ans. 8).
8. The Examiner finds it obvious to “make said taper have a range
of 19.002:1 through 20.047:1 since it has been held that where the general
conditions of a claim are disclosed in the prior art, discovering the optimum
or workable ranges involves only routine skill in the art” (Ans. 8).
Principles of Law
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993).
“„[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.”‟ KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Analysis
Each of the independent claims require a tapered shank where the
taper causes the shank to lock into a tapered cavity (see Claims 14, 24, and
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27). Claim 24 specifically requires a Morse taper to achieve this lock
(Claim 24).
The “Examiner believes that Halldin discloses such tapering and its
structure” (Ans. 12-13). “Inherency … may not be established by
probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient.” MEHL/Biophile Int’l.
Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999). In this case, there
is no evidence to suggest that the Halldin shank will expressly or inherently
lock into the cavity.
In the absence of any teaching of a tapered shank which locks into the
cavity in any of the cited references, the Examiner has not satisfied the
burden of providing a prima facie case of obviousness.
The Examiner finds that “Morse-tapering is very well-known in the
art, therefore one having ordinary skill in the art would recognize the benefit
of specific tapering for tight or friction-fit connection between two elements
in order to prevent undesired loosening after installation” (Ans. 13).
We are not persuaded. While we do not dispute that Morse-tapering is
well known, particularly for machine tools, the Examiner did not discuss or
rely upon Morse-tapering, or any other type of locking taper, in the Final
rejection. The Examiner, in the Examiner‟s answer, attempts to remedy this
deficiency and provide a reason to modify the tapering in Halldin to use
Morse tapering or another type of locking taper “to prevent undesired
loosening” (Ans. 13). However, the Examiner fails to establish that
loosening is a known problem in Halldin, who teaches the use of threaded
screws to secure the shank as well as the polygonal structure to rotationally
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lock the structure to the implant (FF 3). Consequently, the Examiner has not
provided a reason to incorporate a locking taper into the prior art of record.
Conclusion of Law
The evidence of record does not support the Examiner‟s conclusion
that the cited prior art teaches “a taper of said shank and of said cavity being
arranged to cause said shank to lock into said cavity” as required by claim
14.
SUMMARY
In summary, we reverse the rejection of claims 2, 3, 14-18, 21, 23, 24,
and 27 under 35 U.S.C. § 103(a) as obvious over Halldin and Siegmund.
We reverse the rejection of claims 4-7 and 19 under 35 U.S.C. §
103(a) as obvious over Halldin, Siegmund, and Misch.
We reverse the rejection of claims 10-12 and 20 under 35 U.S.C. §
103(a) as obvious over Halldin, Siegmund, and Riera.
We reverse the rejection of claims 2, 3, 8, 9, 14-18, 21, 23, 24, and 27
under 35 U.S.C. § 103(a) as obvious over Halldin and Willoughby.
We reverse the rejection of claims 4-7 and 19 under 35 U.S.C. §
103(a) as obvious over Halldin, Willoughby, and Misch.
We reverse the rejection of claims 10-12 and 20 under 35 U.S.C. §
103(a) as obvious over Halldin, Willoughby, and Riera.

REVERSED

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