Ex Parte Toriyabe et al

Patent Trial and Appeal Board

Jun 19, 2018

14431174 (P.T.A.B. Jun. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/431,174 03/25/2015 Chika Toriyabe
97379 7590 06/21/2018
Rankin, Hill & Clark LLP
23755 Lorain Road, Suite 200
North Olmsted, OH 44070
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
ON0-39351 3595
EXAMINER
WHITELEY, JESSICA
ART UNIT PAPER NUMBER
1763
NOTIFICATION DATE DELIVERY MODE
06/21/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ishihara@rankinhill.com
97379@rankinhill.com
shea@rankinhill.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHIKA TORIY ABE and HIRONOBU AK.IZUMI
Appeal2017-008622
Application 14/431,174
Technology Center 1700
Before CATHERINE Q. TIMM, LILANREN, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner's decision to reject claims 1-9 under 35 U.S.C. §§ 102(a)(l) and
1 In explaining our Decision, we cite to the Specification of March 25, 2015
(Spec.), the Final Office Action of February 24, 2016 (Final), the Appeal
Brief of August 24, 2016 (Br.), and the Examiner's Answer of October 28,
2017 (Ans.).
2 Appellant is the Applicant, Tokuyama Dental Corporation, which,
according to the Brief, is the real party in interest. Br. 3.
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Application 14/431, 17 4
I02(a)(2) as anticipated by Okubayashi3 as evidenced by Yamakawa. 4 We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
The claims are directed to a dental restorative material including a
photocurable composition. As Appellant does not argue any claim
separately from the others, we select claim 1 as representative. Claim 1,
with the limitations most at issue highlighted, is reproduced below:
Claim 1. A dental restorative material including a
photocurable composition that contains a polymerizable
monomer component (A), an inorganic filler component (B)
having an average particle size of not smaller than 0.07 µm, and
a photo polymerization initiator (C),
said inorganic filler component (B) being silica, or a
silica zirconia composite oxide having a silica content of 70-
95% by mass and a zirconia content of 5-30% by mass,
said inorganic filler component (B) being contained in an
amount of 100 to 1500 parts by mass per 100 parts by mass of
said polymerizable monomer component (A), and
3 Okubayashi et al., WO 2009/133913 Al, published November 5, 2009.
The Examiner relies on US 8,436,078 B2 as the English language equivalent
without dispute by Appellant. Thus, we also rely on and cite to US
8,436,078 B2.
4 Yamakawa et al., US 2003/00365582 Al, published Feb. 20, 2003.
Although the Examiner includes Yamakawa in the statement of rejection
listing all the claims, the Examiner only applies Yamakawa to reject claim 8.
Final 4-- 5; Ans. 5.
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Application 14/431, 17 4
said polymerizable monomer component (A) and said
inorganic filler component (B) being so selected as to satisfy a
condition (XI) represented by the following formulas (la) and
(lb):
nF - 0.005 < nM < nF + 0.005 (la)
nF + 0.020 < nP < nF + 0.040 (lb)
wherein,
nM is a refractive index of the polymerizable monomer
component (A) at 25°C,
nP is a refractive index at 25°C of a polymer obtained by
polymerizing the polymerizable monomer component (A), and
nF is a refractive index of the inorganic filler component
(B) at 25°C.
Br. 19 (claims appendix)(emphasis added).
OPINION
Claim 1 requires a photocurable composition including an inorganic
filler component (B). Claim 1. This inorganic filler component must be
either (1) silica, or (2) a silica zirconia composite oxide having a silica
content of70-95% by mass and a zirconia content of 5-30% by mass. Id.;
see also Spec. ,r,r 36 (disclosing useful inorganic fillers), 37 (disclosing
silica-type fillers), 57 ( disclosing the use of silica-zirconia composite oxide
with the specified mass percentages).
Okubayashi describes a dental restorative material including an
amorphous powder (B) that is a composite particle of silica-based fine
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Application 14/431, 17 4
particles coated with an oxide containing zirconium, silicon, and oxygen
atoms. Okubayashi col. 3, 11. 21-30. The Examiner finds that the silica-
based fine particles meet the requirements of the inorganic filler component
(B) of claim 1. Final 3; Ans. 5-6. Okubayashi's silica-based fine particles
contain 80 mol% or more Si02 in terms of oxides with a preference for a
content of substantially 100 mol% silica. Okubayashi col. 5, 11. 41---67. The
Examiner acknowledges that Okubayashi's silica-based fine particles are
coated, but the Examiner interprets the claim as open to the coating. Ans. 6
("the claims use the equivalent to comprising, meaning that the coating of
the filler does not negate the art."). Thus, a key question on appeal is
whether Okubayashi's silica-based fine particles read on the "inorganic filler
component (B) being silica" recited in claim 1.
To interpret the claim, we start by considering the claim language.
Claim 1 is directed to a dental restorative material including a photocurable
composition. This photocurable composition contains at least three
component substances: a polymerizable monomer component (A), an
inorganic filler component (B), and a photo polymerization initiator (C). In
other words, it is a mixture of at least three substances, one of which is an
inorganic filler. See PIN/NIP, Inc. v. Platte Chem. Co., 304 F.3d 1235, 1244
(Fed. Cir. 2002) ("The term 'composition' in chemistry is well-established.
It generally refers to mixtures of substances.").
Next we consider how the term "inorganic filler component (B)" is
used in the Specification. "During examination, 'claims ... are to be given
their broadest reasonable interpretation consistent with the specification, and
... claim language should be read in light of the specification as it would be
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Application 14/431, 17 4
interpreted by one of ordinary skill in the art."' In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910 F.2d
831,833 (Fed. Cir. 1990)); see also US. v. Adams, 383 U.S. 39, 49 (1966)
("[I]t is fundamental that claims are to be construed in the light of the
specifications and both are to be read with a view to ascertaining the
invention.").
The Specification also uses the phrase "inorganic filler component
(B)" to refer to the inorganic filler used in mixture with polymerizable
monomer and photo polymerization initiator to form a photocurable
composition. See Spec. ,r,r 3, 13, 14, 33, 36, 41. The Specification states
that "[t]he inorganic filler component (B), too, may be made up of a plurality
of kinds of components." Spec. ,r 49. When that is the case, the refractive
index is subject to the rule of addition, i.e., one adds up the refractive
indexes of the individual inorganic fillers depending on their ratio of
amounts and calculates the refractive index nF of the inorganic filler
component (B). Id. Thus, the Specification acknowledges that the inorganic
filler component (B) may include additional inorganic filler components.
The Specification supports the Examiner's interpretation of claim 1 as
open to the oxide coating of Okubayashi. The claim is open to reading
Okubayashi's 100 mol% silica fine particle as an inorganic filler component
(B) and does not exclude the presence of additional inorganic filler
components such as the coating taught by Okubayashi.
Most of Appellant's arguments miss the mark because they are not
directed to the Examiner's actual findings, i.e., (1) that Okubayashi's silica-
based fine particles meet the requirements of the inorganic filler component
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Application 14/431, 17 4
(B) of claim 1 and (2) claim 1 is open to the inclusion of the oxide coating of
Okubayashi. Appellant's arguments are instead directed to whether the
whole amorphous powder (B) of Okubayashi is a silica zirconia composite
oxide with silica and zirconia content within the ranges of claim 1. Br. 14-
17.
We note that the name of the game is the claim and here the claims
sweep in the prior art. In re Hiniker Co., 150 F.3d 1362, 1369
(Fed.Cir.1998). It is the Applicants' burden to precisely define the
invention. In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997). An
applicant seeking a narrower construction must either show why the broader
construction is unreasonable or amend the claim to expressly state the scope
intended. Id., at 1057.
Because the Examiner does not rely on the whole amorphous powder
(B) of Okubayashi, but instead finds the silica-based fine particles meet the
requirements of Appellant's inorganic filler (B), the arguments are
unpersuasive.
In summary:
1-9
Summar
§§ 102(a)(l)
and
102(a)(2)
CONCLUSION
Okubayashi,
Yamakawa
6
1-9
1-9
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DECISION
The Examiner's decision is affirmed.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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