Ex Parte Yu et al

Patent Trial and Appeal Board

Nov 9, 2018

12766602 (P.T.A.B. Nov. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/766,602 04/23/2010
84331 7590 11/14/2018
McBee Moore Woodward & Vanik IP, LLC
7900 Westpark Drive, Suite AIOO
McLean, VA 22102
FIRST NAMED INVENTOR
Qingsong Yu
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.
3000033-001000 1809
EXAMINER
SAUNDERS, MATTHEW P
ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
11/14/2018 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):
docketing@mmwvlaw.com
cgmoore@mmwvlaw.com
dwoodward@mmwvlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte QINGSONG YU, HAO LI, and MENG CHEN
Appeal2017-003397
Application 12/7 66,602 1
Technology Center 3700
Before STEFAN STAICOVICI, LYNNE H. BROWNE, and
ANNETTE R. REIMERS, Administrative Patent Judges.
ST AI CO VICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE-
Qingsong Yu et al. ("Appellants") appeal under 35 U.S.C. § 134(a) from the
Examiner's decision in the Non-Final Office Action (dated June 4, 2015,
hereinafter "Non-Final Act.") rejecting claims 1-5, 7, 8, 11-13, 15, 16, 20, 23, 25,
and 29-32. 2
Appellants' representative presented oral argument on November 6, 2018.
We have jurisdiction over this appeal under 35 U.S.C. § 6(b ).
1 The real party in interest is identified as The Curators of the University of
Missouri in Appellants' Appeal Brief 4 (filed June 2, 2016, hereinafter "Appeal
Br.").
2 Claims 6, 9, 10, 14, 17-19, 21, 22, 24, and 26-28 are cancelled. Appeal Br.
51-54 (Claims App.).
Appeal2017-003397
Application 12/766,602
We REVERSE.
SUMMARY OF DECISION
INVENTION
Appellants' invention is directed to a surface treatment method for dentin
using a cold plasma technique. Spec., para. 3.
Claims 1, 12, and 23 are independent. Claim 1 is illustrative of the claimed
invention and reads as follows:
1. A method of increasing bonding strength on a dental restoration
site in the mouth of a patient comprising:
removing material from the dental restoration site to expose a
surface comprising dentin;
generating a cold atmospheric plasma inside the mouth of the
patient, said plasma having a brush-like shape;
after the step of removing material to expose the dentin,
applying the cold atmospheric plasma onto the dental restoration site
for a period of time between about 3 0 seconds and 60 seconds to
chemically activate the dentin to increase penetration of a dental
adhesive into collagen fibrils of the dentin and increase chemical
bonding between the collagen fibrils and the dental adhesive;
wherein said dental adhesive is a composite material and
wherein said cold atmospheric plasma comprises argon;
after the step of applying the plasma, applying the adhesive to
the surface; and
installing a dental restoration on the adhesive-coated surface.
REJECTIONS
I. The Examiner rejects claims 1-5, 8, 11-13, 16, 20, 25, and 29-32 under 35
U.S.C. § I03(a) as being unpatentable over Allred et al. (US 2003/0186197
Al, published Oct. 2, 2003, hereinafter "Allred"), Laroussi (WO
2006/096716 A2, published Sept. 14, 2006), as evidenced by Karmaker et al.
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Appeal2017-003397
Application 12/766,602
(US 2004/0202985 Al, published Oct. 14, 2004, hereinafter "Kannaker"),
and R.E.J. Sladek et al. (Treatment of Streptococcus Mutans Biofilms with a
Nonthermal Atmospheric Plasma, 45 LETTERS IN APPLIED MICROBIOLOGY,
318-323 (2007), hereinafter "Sladek"). 3
II. The Examiner rejects claims 7, 15, and 23 under 35 U.S.C. § I03(a) as being
unpatentable over Allred, Laroussi, as evidenced by Karmaker, Sladek, and
Watson (US 2009/0012589 Al, published Jan. 8, 2009). 4
ANALYSIS
Rejection I
As noted above, independent claim 1 recites, inter alia, "applying the cold
atmospheric plasma ... for a period of time between about 30 seconds and 60
seconds to chemically activate the dentin to . . . increase chemical bonding
between the collagen fibrils and the dental adhesive." Appeal Br. 50 (Claims
App.) ( emphasis added). Similarly, independent claim 12 recites, inter alia,
"chemically activating the dentin by applying the cold atmospheric plasma ... for
a period of time between about 30 seconds and 60 seconds to ... increase chemical
bonding between the collagen fibrils and the dental adhesive." Id. at 51-52
( emphasis added).
The Examiner finds that Allred discloses a method for adhering amalgam or
composite restoratives to dental structures including, inter alia, removing material
from the tooth to expose the dentin layer, treating the surface with a dental acid,
3 We note that claims 31 and 32 depend from independent claim 23, which is not
part of this rejection.
4 We view the Examiner's omission of Karmaker from the heading of this rejection
as a mere typographical error.
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Application 12/766,602
subsequently removing the dental acid, coating the acid treated surface with a
dental composite adhesive, and installing a dental restoration structure. See
Non-Final Act. 2 (citing Allred, paras. 24- 6, 104, 124); see also Allred, Figs. 1--4.
However, the Examiner finds that Allred fails to disclose applying cold plasma to
the acid treated surface for a time range of between 30 and 60 seconds. See id. at
3, 4. Thus, the Examiner relies on Laroussi to disclose the application of cold
plasma for cleaning of dental caries and on Sladek to disclose application of cold
plasma for 60 seconds for sterilization of dental bacteria. Id. at 3--4 (citing
Laroussi, paras. 4, 7, and 9; Sladek, p. 319, col. 2, 11. 27-29). Hence, the Examiner
concludes that it would have been obvious to a person of ordinary skill in the art to
apply cold plasma, as taught by Laroussi, for a time of 60 seconds, as taught by
Sladek, to the acid treated dental surface of Allred. Id. The Examiner's reasoning
for such a modification is to "ensur[ e] sterilization before placement of dental
adhesive" and to "destroy[] biofilms from contaminating a fissure or crack in a
dental carie being treated." Id. (citing Laroussi, para. 4; Sladek, p. 319, col. 1, 11.
1-12).
The Examiner further relies on the disclosure of Karmaker to show that "the
application of ... [ cold] plasma caus[ing] chemical modification ... [ of a surface]
... is a known effect." Id. at 3 (citing Karmaker, paras. 33-37). According to the
Examiner, because both Laroussi and Karmaker disclose the use of cold plasma to
affect surface modification of polymers and "dentin ... is generally made ...
[from] hydroxyapatite and collagen[,] which is a polymer," a skilled artisan would
readily understand that dentin "would [likewise] be affected by the plasma during
the sanitation treatment" of Allred, as modified by Laroussi and Sladek. Id. at 3--4.
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Application 12/766,602
Appellants argue that although Kannaker discloses the application of cold
plasma to affect surface treatments, Karmaker "does not refer to restoration sites
that are in the mouth of a patient." Appeal Br. 19. Furthermore, Appellants
contend that because Karmaker' s application time of cold plasma of about 10
minutes is contradictory to the application time of Sladek of 60 seconds, a skilled
artisan "would not have incorporated the time period set forth in Sladek into the
teachings of Allred, Laroussi, and Karmak[ er]." Reply Brief 9 ( filed Dec. 20,
2016, hereinafter "Reply Br.").
The Examiner responds that because the combined teachings of Allred and
Laroussi disclose the application of cold plasma to a dental carie for sterilization
and cleaning, "Karmaker was relied upon to show that ... Allred and Laroussi
would inherently cause the [ chemical] activation," as called for by each of
independent claims 1 and 12. Examiner's Answer 4 (dated Oct. 20, 2016,
hereinafter "Ans.") (emphasis added). According to the Examiner, because the
combined teachings of Allred, Laroussi, and Sladek disclose applying cold plasma
"to a dental restoration site for the same [amount of] time" as claimed, i.e., 60
seconds, "the same inherent effect of activating the dental tissue" would result. Id.
at 9 ( emphasis added).
The Examiner is relying on a theory of inherency to establish that in light of
Karmaker, using cold plasma, as taught by Laroussi, in the process of Allred, as
modified by Sladek, would necessarily chemically activate the dentin to increase
chemical bonding. "Inherency, however, 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." In re Robertson, 169 F.3d 743, 745 (Fed. Cir.
1999). In this case, the Examiner is correct in that both Laroussi and Karmaker
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Application 12/766,602
disclose the use of cold plasma to treat the surface of polymers, and Karmaker
further discloses that such a treatment improves bonding properties of the surface.
See Non-Final Act. 3--4; see also Laroussi, para. 4; Karmaker, paras. 23, 33.
However, this in no way demonstrates that cold plasma can also chemically
activate dentin to increase chemical bonding, as the Examiner contends. Just
because Karmaker discloses that cold plasma treatment of a dental post or
obturator made from a metal, plastic, ceramic, polymeric, or composite material
improves the material's bonding properties (see Karmaker, paras. 23, 33, 34), it
does not necessarily mean that it can also chemically activate dentin to increase its
chemical bonding properties.
In other words, just because cold plasma can treat general classes of
inorganic materials, such as, metal, plastic, ceramic, polymeric, or composite
materials, to improve their respective bonding properties, it does not mean that the
same will necessarily occur when treating a specific inorganic-organic composite
material, such as dentin. The Examiner's reliance on Karmaker's general
disclosure of classes of inorganic materials does not take into account the distinct
structure of dentin, which is an inorganic-organic composite material made from a
"matrix ofhydroxyapatite" (an inorganic mineral) and "fibrils of collagen"
(organic). Spec., para. 33. We, thus, do not agree with the Examiner's finding that
dentin constitutes a "polymer." See Non-Final Act. 3--4. 5
Furthermore, we note the Examiner's reliance on Sladek to disclose a cold
plasma application time of 60 seconds for sterilization (in vivo disinfection) of
5 Hydroxyapatite is "a complex phosphate of calcium Cas(P04)3QH that occurs as
a mineral and is the chief structural element of vertebrate bone." See Merriam-
Webster.com, https://www.merriam-webster.com/dictionary/hydroxyapatite
( emphasis added) (last visited Nov. 8, 2018).
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Application 12/766,602
dental bacteria. See Non-Final Act. 4. However, because chemical activation of
dentin to increase chemical bonding is a different process than sterilization of
dental bacteria, it does not mean that applying Laroussi's cold plasma for 60
seconds, as taught by Sladek, to Allred's dentin for sterilizing dental bacteria,
necessarily would chemically activate the dentin to increase chemical bonding. As
discussed supra, the Examiner's position does not take into account the distinct
structure of dentin, which as an inorganic-organic composite material is
structurally different from the general classes of inorganic materials discussed in
Karmaker.
Accordingly, the Examiner's determination that applying Laroussi's cold
plasma for 60 seconds, as taught by Sladek, to Allred's conditioning process
necessarily would chemically activate the dentin to increase chemical bonding is
mere speculation on the Examiner's part. Stated differently, just because cold
plasma can treat inorganic materials, in general, to improve their bonding
characteristics, and can sterilize dental bacteria when applied for 60 seconds, it
does not mean that applying cold plasma for 60 seconds necessarily would
chemically activate dentin to increase its chemical bonding properties.
In conclusion, as speculation cannot form the basis for concluding
obviousness, we do not sustain the rejection of independent claims 1 and 12, and
their respective dependent claims 2-5, 8, 11, 13, 16, 20, 25, and 29-32, under 35
U.S.C. § 103(a) as unpatentable over Allred, Laroussi, Sladek, and as evidenced by
Karmaker.
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Application 12/766,602
Rejection II
Similar to independent claims 1 and 12, independent claim 23 recites, inter
alia, "chemically activating the dentin ... to expose amino acids and increase the
exposed surface area of amino acids available for adhesion." Appeal Br. 53
(Claims App.) (emphasis added). The Examiner's reliance on Watson does not
remedy the deficiency of the Examiner's combination of Allred, Laroussi, and
Sladek, as evidenced by Karmaker, discussed supra. See Non-Final Act. 5---6.
Accordingly, for the same reasons discussed above, we also do not sustain
the rejection of claims 7, 15, and 23 as unpatentable over the combined teachings
of Allred, Laroussi, Sladek, as evidenced by Karmaker, and Watson.
SUMMARY
The Examiner's decision to reject claims 1-5, 7, 8, 11-13, 15, 16, 20, 23, 25,
and 29-32 under 35 U.S.C. § 103(a) is reversed.
REVERSED
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