Ex Parte Wen

Board of Patent Appeals and Interferences

Sep 6, 2012

11050050 (B.P.A.I. Sep. 6, 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.
11/050,050 02/03/2005 Huafeng Wen 8067.ALG.US.P 2777
70410 7590 09/07/2012
ALIGN TECHNOLOGY C/O WAGNER BLECHER LLP
123 WESTRIDGE DRIVE
WATSONVILLE, CA 95076
EXAMINER
EIDE, HEIDI MARIE
ART UNIT PAPER NUMBER
3732
MAIL DATE DELIVERY MODE
09/07/2012 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 HUAFENG WEN
__________

Appeal 2011-005597
Application 11/050,050
Technology Center 3700
__________

Before ERIC GRIMES, FRANCISCO C. PRATS, and
JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims to a system for
tracking dental devices. The Examiner entered a rejection for obviousness.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Claims 1-13 and 15-20 stand rejected and appealed (App. Br. 3).
Claims 1 and 4-6 illustrate the appealed subject matter and read as follows:
1. A system for tracking a dental device, comprising:
a label storing a data structure comprising information about a
patient’s dental treatment, wherein the information is selected from a
group consisting of: information about the dental device’s sequence in
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the dental treatment, information regarding a shipping date of the
dental device, information regarding operators associated with the
dental device, information regarding doctors associated with the
dental device, information differentiating dental devices for different
patients, information about a doctor conducting a dental treatment, a
job information for dental treatment, information about a batch of
dental devices for a plurality of patients, manufacture information,
and treatment schedules, wherein the label is configured to be
attached to the dental device; and
a detector configured to extract data from the data structure
stored in the label to determine a shipping destination of the dental
device.

4. The system of claim 1, wherein the label includes inductively
coupled RFID tags and capacitively coupled RFID tags.

5. The system of claim 1, wherein the label is embedded inside the
dental device or a package containing one or more dental devices.

6. The system of claim 1, wherein the dental devices include one
or more of dental aligners, dental brackets, dental arch models, tooth
models, and bases or base components for tooth models.

The sole rejection before us for review is the Examiner’s rejection of
claims 1-13 and 15-20 under 35 U.S.C. § 103(a) as obvious over Raby
1
and
Recigno
2
(Ans. 3-5).
DISCUSSION
The Examiner found that Raby described a system substantially as
claimed, except that Raby did not “specifically teach the label containing
data related to a shipping destination of a dental device” as required by claim
1 (Ans. 4). To address that deficiency, the Examiner cited Recigno as

1
U.S. Patent App. Pub. No. 2006/0134580 A1 (filed December 17, 2004).
2
U.S. Patent No. 5,616,899 (issued April 1, 1997).
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teaching a system similar to Raby’s that included a detector “configured to
extract information to determine a shipping destination of the dental device”
(id.). Based on the references’ teachings, the Examiner reasoned that an
ordinary artisan would have considered it obvious “to modify the
information stored in the label taught by Raby with the information of the
address stored in the label as taught by Recigno in order to easily be able to
ship the dental appliance to the proper destination after manufacturing the
appliance” (id.).
As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden . . . of presenting a
prima facie case of unpatentability. . . .
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.

Appellant’s arguments do not persuade us that a preponderance of the
evidence fails to support the Examiner’s prima facie case of obviousness.
As the Supreme Court has noted, “the [obviousness] analysis need not
seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” KSR Int’l v.
Teleflex Inc., 550 U.S. 398, 418 (2007). Thus, a “person of ordinary skill is .
. . a person of ordinary creativity, not an automaton.” Id. at 421.
Here, Raby discloses the use of RFID tags “to track patient-specific
materials throughout the manufacturing of indirect bonding trays” used in
orthodontic corrective procedures (Raby, abstract). As Raby explains, a
manufacturing facility constructs an “indirect bonding tray” from a dental
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impression of a dental arch or tooth structure of a patient, the dental
impression being sent from an orthodontic clinic to the manufacturing
facility (see id. at [0032]-[0034]).
The manufacturing facility “utilizes dental impression tray 10 to
construct an indirect bonding tray 16 for use in physically placing brackets
on the teeth of patient 6” (id. at [0034]). As required by claim 1, the RFID
tag is attached to the indirect bonding tray (id. at [0020], [0039]), and can be
configured to store a variety of information relating to the manufacture of
the tray, including “a timestamp of when indirect bonding tray 16 was
formed and other information, such as the identification information for
manufacturing facility 12 and any personnel involved in the manufacture of
the indirect bonding tray” (id. at [0039]; see also id. at [0076]). Raby also
discloses that the RFID tag can be embedded in the indirect binding tray (id.
at [0020], [0039]), as recited in Appellant’s claim 5.
Raby discloses that, once the indirect bonding tray is formed,
“manufacturing facility 12 ships the indirect bonding tray to clinic 8. The
RFID tag within the indirect bonding tray 16 may be used to record a
shipment date and time, which may be made available to clinic 8 via
network 14” (id. at [0041]). While the Examiner concedes that Raby does
not include shipping destination information, as the Examiner points out,
Recigno discloses, in a similar computer-assisted system for tracking the
movements of dental appliances between doctors and manufacturing
facilities (Recigno, col. 2, l. 65 through col. 3, l. 22), that it was useful to
include in such systems a bar code scanner capable of reading a shipping
label associated with the dental appliance (see id. at col. 23, ll. 26-30).
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Thus, given Raby’s disclosure that it was useful to include shipment
date and time information in an RFID tag attached to an orthodontic
implement such as an indirect bonding tray, we agree with the Examiner that
an ordinary artisan would have reasonably inferred that it would also be
useful to include shipping destination information in the tag to ensure that
the bonding tray would be shipped from the manufacturing facility to the
correct destination, particularly in view of Recigno’s explicit disclosure of
the importance of destination information. We therefore also agree with the
Examiner that an ordinary artisan would have been prompted to include in
Raby’s system a detector capable of extracting the shipping destination
information from the RFID tag.
Thus, in view of the teachings discussed above, we are not persuaded
that the Examiner failed to make out a prima facie case of obviousness as to
claim 1. Moreover, given Raby’s explicit disclosure of embedding the RFID
tag in the indirect binding tray (Raby [0020], [0039]), we are not persuaded
that the Examiner failed to show that Appellant’s claim 5 would have been
prima facie obvious to an ordinary artisan.
While Appellant repeatedly urges that the Examiner has failed to
show prima facie obviousness as to claim 6 (App. Br. 9-13), the features
asserted as distinguishing that claim from the art, “the label is embedded
inside the dental device or a package containing one or more dental
devices” (id. at 9), actually appear in claim 5 (see App. Br. 19). In contrast,
Appellant asserts no error in the Examiner’s finding that Raby’s indirect
bonding tray, or any of the other implements described by Raby as suitably
including an RFID tag, falls within the list of dental devices included in
claim 6.
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As to claim 5, even if it were true that neither Raby nor Recigno
disclosed including a shipping label inside a package containing one or more
dental devices, as the Examiner pointed out, Raby explicitly discloses
embedding an RFID tag (i.e., “label” as recited) inside a dental device, as
claim 5 encompasses as an alternative (Raby [0020], [0039]; Ans. 6; see also
pending claim 3 reciting that “the label includes barcodes or RFID tags”).
Thus, while it may be true that Recigno’s case entry personnel physically
attach shipping labels to packages containing dental appliances, we are not
persuaded that Recigno would have dissuaded an ordinary artisan from
including shipping destination information in Raby’s embedded RFID tag
(i.e., label), particularly given Raby’s teaching that it was useful to include
other shipping-related information in the tag.
For similar reasons, while the specific workings of Recigno’s system
may be somewhat distinct from Raby’s system, as we understand it, the
Examiner did not seek to physically combine the two systems, but instead
only cited Recigno to demonstrate the importance of including shipping
destination information in systems that track the movements of dental
appliances between manufacturing facilities and clinical practitioners (see
Ans. 4-5). Thus, we are not persuaded that the Examiner sought to combine
the teachings of Recigno with Raby in a manner that would have
undermined the principles by which either Recigno’s or Raby’s systems
operated.
In sum, as Appellant’s arguments do not persuade us, for the reasons
discussed, that the Examiner erred in concluding that the system recited in
claim 1 would have been prima facie obvious to an ordinary artisan, we
affirm the Examiner’s rejection of that claim over Raby and Recigno. As
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they were not argued separately, claims 2-4, 6-11, 13, 15-17, 19, and 20 fall
with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).
As Appellant’s arguments also do not persuade us, for the reasons
discussed, that the Examiner erred in concluding that an ordinary artisan
would have considered it obvious to embed a data-storing tag inside a dental
device as required by claim 5, we affirm the Examiner’s rejection of that
claim over Raby and Recigno, as well as claims 12 and 18, which were
argued under the same rationale (see App. Br. 14).

TIME PERIOD
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

cdc