New Dent AG

Patent Trials and Appeals Board

Sep 21, 2020

2020001674 (P.T.A.B. Sep. 21, 2020)

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.
15/471,378 03/28/2017 Peter Perler FRG-35774.01 8692
40854 7590 09/21/2020
RANKIN, HILL & CLARK LLP
38210 GLENN AVENUE
WILLOUGHBY, OH 44094-7808
EXAMINER
NELSON, MATTHEW M
ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
09/21/2020 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):
40854@rankinhill.com
spaw@rankinhill.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PETER PERLER and PETER SCHWENTER
____________

Appeal 2020-001674
Application 15/471,378
Technology Center 3700
____________

Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
SEAN P. O’HANLON, Administrative Patent Judges.

O’HANLON, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1–7. We have jurisdiction over this appeal under
35 U.S.C. § 6(b). We REVERSE.
In explaining our Decision, we refer to the Specification filed
March 28, 2017 (“Spec.”), the Final Office Action mailed November 19,
2018 (“Final Act.”), the Appeal Brief filed July 16, 2019 (“Appeal Br.”),2

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Z-Systems AG.
Appeal Br. 3.
2 The Appeal Brief does not include pagination after page 1. We refer herein
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the Examiner’s Answer mailed November 1, 2019 (“Ans.”), and the Reply
Brief filed December 31, 2019 (“Reply Br.”).
SUMMARY OF THE INVENTION
Appellant’s claimed invention relates to ceramic implants. Spec. ¶ 1.
Claim 1, the sole independent claim, is reproduced below from page 15
(Claims Appendix) of the Appeal Brief:
1. A method for producing a dental implant, wherein the
dental implant has a ceramic endosseous surface area of an
endosseous portion, comprising the steps of:
in a first step, providing the implant having an intended
shape, which includes the ceramic endosseous surface area, said
ceramic endosseous surface area comprising a thread having a
first region and a second region, wherein said first region
comprises crests and upper flank areas of the thread and the
second region comprises a thread root, which is disposed
between said upper flank areas of said thread and,
in a second step, modifying said ceramic endosseous
surface area in order to obtain a roughening or porous structure
for promoting osseointegration,
wherein in the second step, the implant surface is
modified in said first region of the thread to a first extent,
whereas said second region of the thread is not modified, or is
modified to a second extent, said second extent being less than
said first extent.
REFERENCES
The Examiner relies on the following prior art references in rejecting
the claims on appeal:
Straub US 6,482,076 B1 Nov. 19, 2002
Amrich US 2006/0129161 A1 June 15, 2006

to the remaining pages of the Appeal Brief as if numbered consecutively
following page 1.
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Voudouris US 2010/0000069 A1 Jan. 7, 2010
REJECTIONS
I. Claims 1–3 and 5–7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Amrich.
II. Claims 3 and 5 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Amrich and Voudouris.
III. Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Amrich, Voudouris, and Straub.
ANALYSIS
Rejection I – Obviousness based on Amrich
In rejecting claim 1, the Examiner finds that Amrich discloses a
method for producing an implant substantially as recited, including regions
of textured and non-textured surface area. Final Act. 2 (citing Amrich,
Fig. 31, ¶ 155). The Examiner finds that “Amrich does not explicitly state
the combination of the ribs (crests and upper flank areas of a first region)
being textured and the outer surface (thread root of the second region) non-
textured.” Id. at 3. The Examiner determines that
[i]t would have been obvious to try this combination of texture
since there was a recognized problem or need in the art (strong
bone integration of a dental implant), a finite number of
identified, predictable potential solutions (that any of the
surfaces can be textured or non-textured in [0155]), one of
ordinary skill in the art could have pursued the known potential
solutions with a reasonable expectation of success (texturing
and non-texturing of surfaces are widely used in the dental art)
and the scope and contents of the prior art (textured and non-
textured dental implants), differences from the claims (which
specific regions are textured or non-textured), ordinary skill in
the art (texturing of an implant increases osseointegration), and
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the objective evidence detailed above would lead to
obviousness.
Id. at 3–4.
Appellant argues that “it would not have been ‘obvious to try’ the
texturing required by claimed invention.” Appeal Br. 10. Appellant asserts
that “Amrich explicitly teaches texturing of the spaces (root) between
threads (ribs) and that an advantage is gained by leaving the threads (ribs)
non-textured or smooth, contrary to the present invention.” Id. at 9–10; see
also id. at 10 (asserting that “paragraph [155 of Amrich] teaches only that
specific areas may be textured and that it is advantageous to not texture the
crests, contrary to the present invention” (emphasis omitted)). Appellant
contends that, “[w]ithout knowing the present invention, the skilled person
does not have the slightest reason to do what the invention claims – given
the fact that the prior art teaches that the opposite configuration is
advantageous.” Id. at 10–11. According to Appellant, “the proposed
modification of Amrich does not have a ‘reasonable expectation of success’
as nothing in the prior art, especially the prior art cited by the Examiner
(Amrich), would lead one to believe that texturing the implant in the manner
required by the present invention would result in success.” Reply Br. 4
(emphasis omitted). We agree with Appellant.
A claimed invention may be “obvious to try” “[w]hen there is a design
need or market pressure to solve a problem and there are a finite number of
identified, predictable solutions.” KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 421 (2007); see also Bayer Schering Pharma AG v. Barr Labs., Inc.,
575 F.3d 1341, 1347 (Fed. Cir. 2009) (interpreting KSR as “requiring the
field of search to be among a ‘finite number of identified’ solutions” and
“the identified solutions be ‘predictable’”). “KSR posits a situation with a
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finite, and in the context of the art, [a] small or easily traversed[] number of
options.” Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc., 520 F.3d 1358,
1364 (Fed. Cir. 2008).
Here, the Examiner has not adequately supported the conclusion of
obviousness based on an “obvious to try” rationale. In particular, the
Examiner has not shown that a finite number of identified, predictable
solutions are known to exist to solve a problem evidenced by design need or
market pressure. Amrich discloses an embodiment in which “outer face 322
is at least partially textured, and ribs 326 are non-textured.” Amrich ¶ 155;
Fig. 39A. Using the language of claim 1, Amrich discloses a first region that
is not modified (i.e., non-textured ribs 326) and a second region that is
modified (i.e., textured outer face 322). In other words, Amrich discloses a
configuration that is opposite to that recited in claim 1, which calls for a
modified first region (i.e., textured ribs) and non-modified second region
(i.e., non-textured outer face). Amrich further explains that “[l]eaving crests
392 without texture is believed to facilitate the installation of implant 310,
for example, by avoiding excessive fragmentation to tissue (e.g., bone)
surrounding the distal end of implant 310.” Id. Given this disclosure, it is
unclear why one of ordinary skill in the art would have had a reasonable
expectation of success in modifying Amrich’s implant so that ribs 326 are
textured and outer face 322 is not textured. Here, absent improper hindsight
reconstruction, we fail to see a sufficiently reasoned explanation based on
some rational underpinning explaining why one of ordinary skill in the art
would have been led to modify Amrich as proposed by the Examiner, and a
reason for such modification is not otherwise evident from the record.
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Accordingly, for the foregoing reasons, we do not sustain the rejection
of claim 1, or its dependent claims 2, 3, and 5–7, as being unpatentable over
Amrich.
Rejections II and III – Obviousness based on Amrich and one
or more of Voudouris and Straub
These rejections of claims 3–5, which depend from independent
claim 1, rely on the same rationale for the conclusion of obviousness that we
find deficient for the reasons discussed above in connection with Rejection I.
See Final Act. 4–5. The Examiner relies on Voudouris and Straub for
teaching additional recited features, but does not articulate any findings or
reasoning that would cure the aforementioned deficiencies in Rejection I.
See id. Accordingly, for the same reasons discussed above, we do not
sustain the rejections of claims 3–5.
CONCLUSION
In summary,
Claim(s)
Rejected 35 U.S.C. § Reference(s) Affirmed Reversed
1–3, 5–7 103(a) Amrich 1–3, 5–7
3, 5 103(a) Amrich, Voudouris 3, 5
4 103(a) Amrich, Voudouris,
Straub
4
Overall Outcome 1–7
REVERSED