Pascal Kunz et al.

Patent Trials and Appeals Board

Aug 20, 2020

2019002609 (P.T.A.B. Aug. 20, 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.
14/759,920 07/08/2015 Pascal Kunz NOBELB.491NP
(P1512US00)
6791
20995 7590 08/20/2020
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
EXAMINER
FOLGMANN, DREW S
ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
08/20/2020 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):
efiling@knobbe.com
jayna.cartee@knobbe.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PASCAL KUNZ and ULF JOHANSSON

Appeal 2019-002609
Application 14/759,920
Technology Center 3700
____________

Before KENNETH G. SCHOPFER, BRADLEY B. BAYAT, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3, and 5–11. We have jurisdiction
under 35 U.S.C. § 6(b). A hearing was held on July 30, 2020.
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Nobel
Biocare Services AG. Appeal Br. 3.
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Application 14/759,920

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BACKGROUND
The Specification discloses that “[t]he present invention relates to a
dental drill bit,” “the use of such a dental drill bit,” and “a method of drilling
a hole in an oblique bone surface of a jaw bone of a patient.” Spec. 1, ll. 3–
7.
ILLUSTRATIVE CLAIM
Independent claim 1 is illustrative of the appealed claims and recites:
1. A combination of a dental drill bit and a surgical template
provided with a guide hole adapted to guide the dental drill bit
directly or via a guide sleeve provided in the guide hole, the
dental drill bit comprising a first end, a second end, a spherical
drill head arranged at the first end, and at least one helical flute
extending from the spherical drill head towards the second end,
wherein the portion of the dental drill bit having the at least one
helical flute is substantially cylindrical and configured to be
guided by the guide hole or by the guide sleeve, wherein the
dental drill bit further comprises a longitudinal axis extending
through the first end and the second end, wherein the longitudinal
axis lies in a plane in which the spherical drill head defines a
circle sector having a sector angle greater than 180 degrees, and
wherein only the spherical drill head comprises a plurality of
cutting edges.
Appeal Br. 12.
REJECTIONS
1. The Examiner rejects claims 1, 3, and 5–11 under 35 U.S.C. § 103(a) as
unpatentable over Cheng2 in view of Danger3 and Chen.4

2 Cheng et al., US 2012/0135373 A1, pub. May 31, 2012.
3 Danger, US 2009/0053674 A1, pub. Feb. 26, 2009.
4 Chen, US 2010/0112517 A1, pub. May 6, 2010.
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Application 14/759,920

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2. The Examiner rejects claims 6 and 7 under 35 U.S.C. § 103(a) as
unpatentable over Cheng in view of Danger, Chen, and Ellis.5
DISCUSSION
Claim 1 requires, inter alia, a drill bit with a spherical drill head
wherein the drill head is the only portion of the drill bit with a plurality of
cutting edges. Appeal Br. 12. The Examiner finds that Cheng teaches a drill
bit as claimed, except that
Cheng fail(s) to teach a spherical drill head arranged at the
first end, from the spherical drill head; wherein the longitudinal
axis lies in a plane which the spherical drill head defines a circle
sector having a sector angle greater than 180 degrees, and
wherein only the spherical drill head comprises a plurality of
cutting edges; wherein the spherical drill head is radially
centralized; wherein the maximum diameter of the spherical drill
head is equal or substantially equal to the diameter of the portion
of the dental drill bit having the at least one helical flute.
Final Act. 4–5. The Examiner relies on Danger as teaching a drill bit with a
spherical head (per present claim 1) and with a maximum diameter of the
head equal to a diameter of the helical portion of the drill bit (see present
claim 8). Id. at 5 (citing Danger Fig. 1; ¶¶ 23, 24). The Examiner
concludes:
Therefore, it would have been obvious to one of ordinary skill in
the art before the effective filing date of the claimed invention,
to modify Cheng, by requiring a spherical drill head arranged at
the first end, from the spherical drill head; wherein the spherical
drill head is radially centralized; wherein the maximum diameter
of the spherical drill head is equal or substantially equal to the
diameter of the portion of the dental drill bit having the at least
one helical flute, as taught by Danger, for the purpose of using a

5 Ellis, US 2013/0006248 A1, pub. Jan. 3, 2013.
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Application 14/759,920

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drill head shape well known in the art to provide the optimum
tool for each preparation step.
Id. at 5–6 (citing Danger ¶ 2). The Examiner finds that the resulting
combination would include a drill with a spherical head wherein a plurality
of cutting edges are present only on the drill head, as required by claim 1.
Id. at 6. The Examiner further relies on Chen as disclosing a drill head with
a sector angle greater than 180 degrees, as claimed. Id. at 6–7.
A conclusion of obviousness must be supported by the clear
articulation of a reason why the claimed invention would have been obvious.
The Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007) indicated that the analysis supporting a rejection under 35 U.S.C.
§ 103 should be made explicit. The Federal Circuit has stated that
“rejections on obviousness grounds cannot be sustained by mere conclusory
statements; instead, there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.” In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550
U.S. at 418.
We are persuaded by Appellant’s argument that the Examiner has not
set forth an adequate reason to support the proposed combination of Cheng
and Danger. See Appeal Br. 7–8. More specifically, we agree with
Appellant that the Examiner has not provided an adequate reason supporting
the Examiner’s proposal to pick only Danger’s semi-spherical cutting head
for combination with Cheng’s drill bit. Id. The Examiner reasons that the
substitution would provide “a drill head shape well known in the art to
provide the optimum tool for each preparation step.” Final Act. 6. Yet, we
determine that the use of such a “catch-all” reasoning does not adequately
support the conclusion of obviousness. Danger discloses that a “dentist may
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select the optimum tool for each preparation step” (id. ¶ 2), but any person
of ordinary skill in any art would recognize the desirability of using the
appropriate tool for a particular job. This general statement says nothing
regarding why a person of ordinary skill in the art would have specifically
chosen to modify Cheng’s drill bit with a semispherical head, as taught by
Danger, and without also applying Danger’s teaching of continuous cutting
edges extending along the shaft of the bit. Thus, we are persuaded of error
in the rejection because the Examiner has not adequately supported the
conclusion that it would have been obvious to modify Cheng as proposed.
Accordingly, we do not sustain the rejection of claim 1. Further, the
Examiner relies on the same reasoning in rejecting each of the remaining
claims on appeal and does not provide further citation to evidence or
reasoning to cure the deficiency discussed above. Thus, we also do not
sustain the rejections of claims 3 and 5–11.
CONCLUSION
We REVERSE the rejections of claims 1, 3, and 5–11.

In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3, 5–11 103(a) Cheng, Danger,
Chen
1, 3, 5–
11
6, 7 103(a) Cheng, Danger,
Chen, Ellis
6, 7
Overall
Outcome
1, 3, 5–
11

REVERSED