Ex Parte Wen et al

Patent Trial and Appeal Board

Nov 12, 2014

11404643 (P.T.A.B. Nov. 12, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HUAFENG WEN, MUHAMMAD ZIAULLAH KHAN CHISHTI,
FRANK ZHENHUAN LIU, KASHIF MOHAMMAD,
SYED WASI MOHSIN RAZA RIZVI, and YASSER BASHIR
____________

Appeal 2012-006850
Application 11/404,6431
Technology Center 3700
____________

Before JEFFREY N. FREDMAN, ULRIKE W. JENKS, and
AMANDA F. WIEKER, Administrative Patent Judges.

WIEKER, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134(a) involving claims directed
to a method and system for digitizing a patient’s dental arch. The Examiner
rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 According to Appellants, the real party in interest is Align Technology,
Inc. (App. Br. 3).

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STATEMENT OF THE CASE
Claims 1, 2, 4–15, 17–23, 59, and 61–64 are pending and on appeal,
and can be found in the Claims Appendix of the Appeal Brief (App. Br. 24–
31).2 Claim 1 is representative and reads as follows (emphasis added):

1. A method for digitizing a patient’s arch, comprising:

producing a physical arch model for the patient’s arch, the arch
model comprising a plurality of model teeth representing crown
portions of the patient’s teeth;

separating the physical arch model into a plurality of arch
model components, at least one arch model component
comprising one or more model teeth;

mounting the arch model components on a scan plate;

capturing one or more images of the arch model components
comprising scanning separate arch model components mounted
on the scan plate;

developing digital representations of the separate arch model
components using the captured one or more images; and

combining the digital representations of the arch model
components into a manipulable digital arch model, comprising
assembling separate arch model components in a selected arch
model arrangement such that separate arch model components
remain manipulable relative to each other.

2 Concurrent with the Appeal Brief, Appellants filed an Amendment
cancelling claim 60 (App. Br. 8–9). The Examiner entered that Amendment
in the Advisory Action dated Dec. 12, 2011 (Adv. Act. 1; Reply Br. 2).
Therefore, claim 60 will not be addressed in this Decision.
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Independent claims 10, 15, 21, and 59 also recite that digital
representations of arch model components are combined into a manipulable
digital arch model, and that separate arch model components remain
manipulable relative to each other.
The following grounds of rejection are before us for review:
I. Claims 1, 2, 4–15, 18–19, 21–22, 59, and 62–63 under 35 U.S.C.
§ 103(a) are unpatentable over Guiot3 in view of Chishti;4
II. Claims 17 and 61 under 35 U.S.C. § 103(a) are unpatentable over
Guiot in view of Chishti and further in view of Chapoulaud;5
III. Claims 20 and 64 under 35 U.S.C. § 103(a) are unpatentable over
Guiot in view of Chishti and further in view of Dillier;6 and
IV. Claim 23 under 35 U.S.C. § 103(a) are unpatentable over Guiot in
view of Chishti and further in view of Wu.7
Appellants do not argue the claims separately, but rather rely on the
arguments presented with respect to claim 1 for all other independent and
dependent claims (App. Br. 15–22). Therefore, we focus our analysis on
claim 1, and claims 2, 4–15, 17–23, 59, and 61–64 stand or fall with that
claim. 37 C.F.R. § 41.37(c)(1).
THE ISSUE

The Examiner finds that Guiot disclosed a method for digitizing a
patient’s arch comprising the steps of producing a physical arch model,
separating the physical arch model into a plurality of arch model

3 Guiot et al., US 6,287,121 B1, issued Sep. 11, 2001.
4 Chishti et al., US 6,227,850 B1, issued May 8, 2001.
5 Chapoulaud et al., US 2002/0025503 A1, published Feb. 28, 2002.
6 Dillier, US 2002/0110786 A1, published Aug. 15, 2002.
7 Wu et al., US 5,338,198, issued Aug. 16, 1994.
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components (e.g., model teeth), mounting the arch model components on a
scan plate, capturing images of the separate components, developing digital
representations of those components, and combining the digital
representations into a digital arch model, comprising assembling the separate
arch model components in a selected arch model arrangement (Ans. 5). The
Examiner acknowledges that Guiot did not disclose that the digital arch
model is manipulable, or that the separate arch model components remain
manipulable relative to each other (Ans. 6). The Examiner relies on Chishti
to supply this limitation, and concludes that it would have been obvious to
modify Guiot’s method by making the digital arch model manipulable,
wherein the separate arch model components remain manipulable relative to
each other, as taught by Chishti, in order to create an esthetic looking dental
arch (Ans. 7).
Does the evidence of record support the Examiner’s conclusion that
the combination of Guiot and Chishti renders obvious the claimed method
for digitizing a patient’s arch?

FINDINGS OF FACT

FF1. Guiot disclosed a method for creating digital data reflecting the
shape of a patient’s teeth (Guiot Abstract), wherein a physical model 20/40
of the patient’s arch is made, including a plurality of teeth (Guiot col. 8, ll.
44–60; see also id. at Figs. 3–4).
FF2. Guiot disclosed that the physical model, or an identical
secondary physical model (id. at col. 4, ll. 23–32), is “divided with the aid of
a separating device, represented in the form of a saw, into duplicate
sections” (id. at col. 8, ll. 56–60; see also id. at Fig. 4).
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FF3. Guiot disclosed that “the division of the duplicate [into sections]
is performed tooth by tooth” (id. at col. 4, ll. 33–34).
FF4. Guiot disclosed that “the duplicate sections 42.1, 42.2, 42.3 are
individually and at distances from each other clamped into units of a section
clamping device 44 in the detection range of the sensor device” (id. at col. 8,
ll. 61–64; see also id. at Figs. 5, 10).
FF5. Guiot disclosed that, at high resolution (id. at col. 9, ll. 65–66):
[t]he duplicate section 42.1 . . . is optically and contactless [sic]
scanned . . . Following the scanning of the duplicate section
42.1, the duplicate clamping device 44 is displaced, and first the
duplicate section 42.2 and thereafter, after a respective further
displacement of the section clamping device 44, the further
duplicate sections 42.3 to 42.8 are scanned in the same way.

(Id. at col. 9, ll. 38–48; see also id. at Figs. 6A–6D).
FF6. Guiot disclosed that the undivided physical arch model is also
scanned at low resolution (id. at col. 9, ll. 61–64; col. 10, ll. 2–4; see also id.
at Fig. 7).
FF7. Guiot disclosed that after scanning:
[the] data must be stored as digital data, so that subsequently
the different data of the individual sections, as well as the
different data of the duplicate, can be combined in a so-called
three-dimensional matching process, by means of which a
precise image of the remaining tooth area is obtained in a
digital representation. Therefore it is necessary to digitize the
determined data, so that they become suitable for processing in
an electronic data processing device.

(Id. at col. 3, ll. 61–col. 4, ll. 2; see also id. col. 10, ll. 7–21).
FF8. The Examiner finds that Guiot “does not specifically teach the
separate arch model components remain manipulable relative to each other”
(Ans. 6).
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FF9. Chishti disclosed a method for creating a digital data set
representing a patient’s teeth (Chishti Abstract), wherein a physical model of
the patient’s arch is made, including a plurality of teeth (id. at col. 3, ll. 61–
64).
FF10. Chishti disclosed that “[a]fter the tooth casting is obtained, the
casting is digitally scanned by a scanner . . . to produce the IDDS [‘initial
digital data set’]” representing a digital arch model (id. at col. 3, l. 66–col. 4,
l. 2).
FF11. Chishti disclosed that “[i]ndividual tooth and other components
may be segmented or isolated in the [digital] model to permit their
individual repositioning or removal from the digital model” (id. at col. 3, ll.
24–26). Specifically, Chishti disclosed that a “saw tool is used to define the
individual teeth (or possibly groups of teeth) to be moved (step 510). The
tool separates the scanned image into individual graphic components (step
512) enabling the software to move the tooth or other component images
independent of remaining portions of the model” (id. at col. 9, ll. 46–51; see
also id. at col. 8, ll. 30–34; Fig. 5).
FF12. Chishti disclosed that providing a digital model with
modifiable individual teeth allows visualization of a treatment plan to
straighten a user’s teeth and create an esthetic looking dental arch (id. at col.
1, ll. 16–17; col. 1, l. 65–col. 2, l. 7; compare with id. at col. 1, ll. 38–46).
Specifically, Chishti disclosed:

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[t]he invention thus allows teeth plan treatment to be generated
in a simple and efficient manner. It also improves the way a
treating clinician performs case presentations by allowing the
clinician to express his or her treatment plans more clearly and
gives a prospective patients [sic] an opportunity to visualize the
facial changes associated with the proposed treatment.
(Id. at col. 2, ll. 41–47).

PRINCIPLES OF LAW

“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). As expressly
recognized in KSR, any art recognized need or problem can provide a reason
for combining claim elements. Id. at 416.

ANALYSIS

We agree with the Examiner’s findings (Ans. 4–6) that Guiot
disclosed a method for digitizing a patient’s arch comprising the steps of
producing a physical arch model (FF1), separating the physical arch model
into a plurality of arch model components (e.g., model teeth) (FF2–3),
mounting the model teeth on a scan plate (FF4), capturing images of the
model teeth (FF5–6), developing digital representations of the model teeth
(FF7), and combining the digital representations into a digital arch model by
assembling the model teeth in a selected arrangement (FF7). We also agree
with the findings that Chishti disclosed a digital arch model having digital
representations of a plurality of model teeth (FF9–12; see also Ans. 7),
wherein the individual digital model teeth may be manipulable relative to
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each other (FF11), in order to visualize a treatment plan to straighten a
user’s teeth and create an esthetic looking dental arch (FF12).
Applying the KSR standard of obviousness to these findings of fact,
we conclude that the person of ordinary skill in the art would have found it
obvious to modify the method for digitizing a patient’s arch, as disclosed by
Guiot, such that the digital arch model once created remains manipulable,
and the separate model teeth also remain manipulable relative to each other,
as taught by Chishti, in order to digitally vizualize an esthetic looking dental
arch.
When read in combination, we agree with the Examiner that Guiot
and Chishti render claim 1 obvious. Each reference disclosed a method for
creating a digital arch model (FF1, FF9), and each method involved common
steps, but taken in different order. Specifically each method disclosed the
steps of making a physical model of a patient’s arch (FF2, FF9), scanning
the physical model to create a digital model (FF5–7, FF10), and dividing
either the physical model (as in Guiot) or the digital model (as in Chishti)
into individual components (FF2–3, FF11). Chishti further disclosed that by
providing manipulable digital teeth within the resulting digital arch model,
the digital model can be manipulated in order to visualize a treatment plan
and to create an esthetic looking arch (FF12). In light of these disclosures,
we agree with the Examiner’s conclusion that “[i]t would have been obvious
to one having ordinary skill in the art at the time of the invention to modify
the method taught by Guiot with the step of manipulating the individual arch
model components relative to each other in order to modify a position of a
tooth as desired by the user to create an esthetic looking dental arch” (Ans.
7).
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Appellants contend that the Examiner erred in rejecting the claims
because Guiot does not disclose a manipulable digital arch model with
manipulable digital teeth (App. Br. 13) and, in fact, teaches away from such
an arrangement (id. 13, 15).
The Examiner acknowledged that Guiot did not disclose manipulable
digital teeth and is not an anticipatory reference (FF8; Ans. 6, 12). Instead,
the Examiner relied upon Chishti to supply this teaching (Ans. 7). Despite
Appellants’ argument (App. Br. 14–15), the Examiner provided a rationale
for combining the two references. Specifically, the Examiner stated: “It
would have been obvious to one having ordinary skill in the art at the time of
the invention to modify the method taught by Guiot with the step of
manipulating the individual arch model components relative to each other in
order to modify a position of a tooth as desired by the user to create an
esthetic looking dental arch” (Ans. 7; Final Act. 5).
Appellants argue that this rationale is flawed because manipulable
digital teeth would be contrary to Guiot’s purpose of creating a dental
prosthesis (App. Br. 13, 15). Specifically, Appellants argue that “there
would be no reason for Guiot to produce a manipulable model, as Guiot is
directed to duplicating teeth in a dental prosthesis. Modifying arrangements
of those teeth would defeat the duplication effort” (id. at 13 (emphasis
omitted), 15).
We are not persuaded. A prior art reference is said to teach away
from an applicant’s invention “when a person of ordinary skill, upon reading
the reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
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Here, Guiot does not state that modifiable digital teeth would not work in the
disclosed digital arch model or that modifiable digital teeth would be
detrimental. Guiot does not discourage, discredit, or otherwise criticize the
utility of modifiable digital teeth.
Further, although modifiable digital teeth may not be necessary when
Guiot’s digital arch model is used to create a dental prosthesis, that does not
constitute a teaching away. Guiot is prior art for all it discloses and suggests
to a person of ordinary skill in the art. “The use of patents as references is
not limited to what the patentees describe as their own inventions or to the
problems with which they are concerned. They are part of the literature of
the art, relevant for all they contain.” In re Lemelson, 397 F.2d 1006, 1009
(CCPA 1968). Therefore, we do not agree with Appellants that Guiot
teaches away from modifiable digital teeth, merely because it discusses
dental prosthetics.
Appellants also argue that the Examiner’s rationale does not support a
conclusion of obviousness because Guiot does not discuss any need for
creating an esthetic looking dental arch (App. Br. 14–15; Reply Br. 4).
Again, we are not persuaded. The test for obviousness is what the combined
teachings of the references as a whole would have suggested to those of
ordinary skill in the art, not merely what Guiot disclosed. In re Keller, 642
F.2d 413, 425 (CCPA 1981). “Nonobviousness cannot be established by
attacking references individually where the rejection is based upon the
teachings of a combination of references.” See also In re Merck & Co., Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986). Whether, or to what extent, Guiot
discussed the desirability of an esthetic dental arch is not dispositive.
Similarly, how the references are put together, whether Guiot in view of
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Chishti, or Chishti in view of Guiot, is immaterial. “[W]here the relevant
factual inquiries underlying an obviousness determination are otherwise
clear, characterization by the examiner of prior art as ‘primary’ and
‘secondary’ is merely a matter of presentation with no legal significance.” In
re Mouttet, 686 F.3d 1322, 1333 (Fed. Cir. 2012). It is the combination of
references together that is important. In re Bush, 296 F.2d 491, 496 (CCPA
1961) (citing In re Cowles, 156 F.2d 551, 554 (CCPA 1946)). And when
read as a whole and taken together, we agree with the Examiner that Guiot
and Chishti render obvious claim 1, as discussed above.
Appellants present several additional arguments but none alter our
conclusion.
Appellants argue that Guiot does not teach “assembling separate arch
model components” because “Guiot teaches combining duplicate section
data with an image of the duplicate” (App. Br. 13) or, in other words,
“supplement[ing] image data of a duplicate in order to improve image detail
in a single-piece, whole duplicate” (Reply Br. 3). We disagree. Guiot
discloses that “different data of the individual sections, as well as the
different data of the duplicate, can be combined in a so-called three-
dimensional matching process” (FF7). Under the broadest reasonable
interpretation of “assembling,” Guiot’s disclosure of combining the high
resolution scans of each separate arch model component with each other and
with the low resolution scan of the entire duplicate constitutes “assembling”
the components.
Appellants also argue that Chishti is commonly owned with the
present application (App. Br. 13). However, Chishti qualifies as prior art
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under 35 U.S.C. § 102(b), making common ownership irrelevant to the
obviousness analysis (see Ans. 12).
Appellants argue that “Chishti fails to disclose separating physical
components, scanning the separated physical components, then combining
the digital representations . . . ” (App. Br. 14). Again, Appellants attack the
references individually, despite the fact that the rejection is predicated on a
combination of those references. The Examiner does not rely on Chishti to
teach these limitations (Ans. 13; see also FF2–3, FF5, FF7).
Finally, Appellants argue that Chishti provides “a different solution
for generating a manipulable digital model compared to the current claims”
and that if the references were combined, the combination would provide “a
whole duplicate of Guiot that is further digitally processed (e.g., segmented)
into separate digital components per Chishti” (Reply Br. 4 (emphasis
omitted)). Appellants provide no evidence to suggest that one skilled in the
art, presented with the teachings of Guiot and Chishti, would re-segment the
digital representation of Guiot, which was just made into a unitary digital
arch model from a plurality of segments. Rather, we agree with the
Examiner that one skilled in the art would find the subject matter of claim 1
to be obvious, as discussed above.
We conclude that the preponderance of the evidence of record
supports the Examiner’s conclusion that the combination of Guiot and
Chishti renders obvious the method for digitizing a patient’s arch as recited
in claim 1. We thus affirm the rejection of claim 1 under 35 U.S.C. § 103(a)
as being obvious. Because claims 2, 4–15, 17–23, 59, and 61–64 fall with
that claim, we affirm the rejections as to those claims as well. 37 C.F.R.
§ 41.37(c)(1).
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SUMMARY

We affirm all rejections on appeal.
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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