Thomas Balshi et al.

Patent Trials and Appeals Board

Aug 13, 2020

14983677 - (D) (P.T.A.B. Aug. 13, 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.
14/983,677 12/30/2015 Thomas J. Balshi 00317 6155
107047 7590 08/13/2020
IP WORKS, PLLC
39506 N. Daisy Mountain Dr
Suite 122-501
Phoenix, AZ 85086
EXAMINER
SPARKS, STEPHEN R
ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
08/13/2020 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):
paralegal@inspiredideasolutions.com
patents@ipworkslaw.com
wayne@inspiredideasolutions.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte THOMAS J. BALSHI, STEPHEN F. BALSHI, and
GLENN J. WOLFINGER
____________

Appeal 2020-000444
Application 14/983,677
Technology Center 3700
____________

Before JENNIFER D. BAHR, BRETT C. MARTIN, and LISA M. GUIJT,
Administrative Patent Judges.

GUIJT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the rejection
of claims 1–5 and 7–17. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Thomas J. Balshi, Stephen F. Balshi, and
Glenn J. Wolfinger as the real party in interest. Appeal Br. 3.
Appeal 2020-000444
Application 14/983,677
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THE INVENTION
Appellant’s invention relates to “copings used for dental implants.”
Spec. 1:11–12. Claims 1, 14, and 17 are the independent claims on appeal.
Claim 1, reproduced below, is illustrative of the subject matter on appeal.
1. A dental device comprising:
a multi-functional coping comprising:
a coping base having a base interior and a base exterior,
wherein the base interior is formed in relation to an implant or
an abutment for close fit with the implant or the abutment,
wherein the base exterior is formed with a channel for seating a
portion of a rubber dam around the base exterior; and
an engagement section for bonding to a provisional
prosthesis, the engagement section including a first portion
connected to the coping base, and a second portion connected to
the first portion, wherein each of the first portion and the
second portion include:
a plurality of engagement grooves;
and a first flat side; and
wherein the plurality of engagement grooves on the first
portion and the second portion are on the engagement exterior,
and wherein the engagement interior includes an opening at a
first end connected to the base interior to allow a fastener to
connect the multi-functional coping of the implant or the
abutment;
wherein the engagement section includes a variable wall
thickness between the engagement interior and the engagement
exterior, and wherein the variable wall thickness includes a
cutting groove between the first portion and the second portion.

Appeal 2020-000444
Application 14/983,677
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THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
NAME REFERENCE DATE
Popovic US 6,464,500 B1 Oct. 15, 2002
Thome US 2015/0111175 A1 Apr. 23, 2015
Bernard US 2017/0202649 A1 July 20, 2017

Claims 1–5 and 7–17 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Thome, Popovic, and Bernard.

OPINION
Independent claim 1 and dependent claims 2–13, 15, and 16
Regarding independent claim 1, the Examiner states that “[a] more
specific definition of ‘coping’ including structure that differentiates from the
multifunctional elements . . . of the prior art is necessary to overcome the . . .
rejection,” because the claimed multi-functional coping reads on the prior
art.” Adv. Act. 2. In particular, the Examiner finds that Thome discloses,
inter alia, a multi-use prosthetic component having certain of the structural
elements required by the claimed multi-functional coping, including (i) a
base (i.e., the bottom portion of prosthetic pillar 4.2, as oriented in Thome’s
Figure 2) having an interior formed for close fit with an implant or an
abutment,2 and also a channel in an exterior of the base (i.e., channel 4E);

2 Thome discloses that the base of multi-use prosthetic component 4 has
internal hexagon 4F for mating with external hexagon faces 5A of implant 5,
which inherently requires a close fit to function to transfer torque. See, e.g.,
Thome ¶ 19, Fig. 4.
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and (ii) an engagement section including a first portion (i.e., the top portion
of prosthetic pillar 4.2 above channel 4E, as oriented in Thome’s Figure 2)
connected to the base (i.e., the bottom portion of prosthetic pillar 4.2 below
channel 4E), and a second portion (i.e., prismatic head 4.1) connected to the
first portion (i.e., the top portion of prosthetic pillar 4.2). Final Act. 2–3
(citing, e.g., Thome ¶ 43, Figs. 2, 4, 7). The Examiner also finds that Thome
discloses “wherein the first portion and the second portion include a first flat
side” (i.e., larger surfaces 4A on prismatic head 4.1). Id. at 3 (citing Thome,
Fig. 3). Notably, a flat side (i.e., larger surfaces 4A) is depicted in Thome as
being on only the second portion of the engagement section, as the second
portion is identified by the Examiner supra. See, e.g., Thome, Figs. 1–5.
Although the Examiner also finds “an engagement groove” that
extends through the first and second engagement portions on the exterior of
the engagement section as identified supra (i.e., at least one of external
vertical concave grooves 4D3), the Examiner states that “Thome is silent
regarding the first and second portions of the engagement section includ[ing]
engagement grooves between wings for bonding to a provisional prosthesis,”
and also that “each of the first portion and second portion include a plurality
of engagement grooves.” Final Act. 4–5.
The Examiner relies on Popovic for disclosing two portions of an
engagement section (i.e., coronal region 150), each containing an
engagement groove between engagement wings4, and on Bernard for

3 Notably, Thome’s Figures 4 clearly shows, at cross-section B-B, three (or
a plurality of) external vertical concave grooves 4D (or engagement
grooves), which are clearly depicted in Thome’s Figure 3 on each of the first
portion and the second portion of Thome’s engagement section, as identified
in the Examiner’s findings.
4 Notably, engagement wings are not recited independent claim 1.
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disclosing two portions of an engagement section, each with a plurality of
engagement grooves. Id. at 4–5 (citing, e.g., Popovic 4:12–25, Fig. 2;
Bernard ¶¶ 13, 129 7A). The Examiner also relies on Bernard for disclosing
that “[t]he first and second portion comprise a flat side.” Ans. 16 (citing
Bernard ¶¶ 129, 146, Figs. 7, 18, 30A). The Examiner reasons that it would
have been obvious to modify Thome’s engagement section with first and
second portions having engagement grooves between engagement wings, as
taught in Popovic “to provide a more versatile, multi-functional
coping/improved universal abutment that can be connected to various sized
implants and can be adapted to attach various dental prostheses.” Final Act.
4 (citing Popovic 1:33–36). The Examiner further reasons that it would have
been obvious to modify Thome’s engagement section, as modified by
Popovic, in view of Bernard, “to facilitate cutting at a desired area.” Id. at 5
(citing Bernard ¶¶ 13, 129).
Additionally, the Examiner finds that Thome’s structures are “multi-
functional devices which perform as both an abutment and coping in the
same manner as disclosed by the [Specification],” and also that “the
functional language [in claim 1, which is] directed toward the dental dam
do[es] not patentably distinguish over the prior art.” Ans. 11 (emphasis
added); see also id. at 13 (finding that the claim limitation “multi-functional
coping” is also functional and further, that Thome discloses generally using
the device “as a coping if desired by a practitioner” (citing Thome ¶ 25)).
The Examiner finds that Thome’s channel in the exterior of the base is
structurally the same as the claimed channel in the base exterior, and that
Thome’s channel is capable of performing the function of seating a portion
of a dam around the base exterior. Id. at 12.
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“An intended use or purpose usually will not limit the scope of the
claim because such statements usually do no more than define a context in
which the invention operates.” Boehringer Ingelheim Vetmedica, Inc. v.
Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003). Such
statements often appear in the claim’s preamble, but can appear elsewhere in
the claim.5 In re Stencel, 828 F.2d 751, 754 (Fed. Cir. 1987). See, e.g., In re
Schreiber, 128 F.3d 1473, 1477–79 (Fed. Cir. 1997). Although features of
an apparatus may be recited either structurally or functionally, claims
directed to an apparatus must be distinguished from the prior art in terms of
structure rather than function. In re Schreiber, 128 F.3d 1473, 1477–78
(Fed. Cir. 1997) (“Schreiber’s contention that his structure will be used to
dispense popcorn does not have patentable weight if the structure is already
known” and “the Board [correctly] found that the Harz dispenser [for
dispensing lubricating oil] would be capable of dispensing popcorn in the
manner set forth in claim 1 of Schreiber’s application.”); see also Hewlett-
Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990)
(“[A]pparatus claims cover what a device is, not what a device does.”)
(emphasis in original).
Appellant identifies correctly the elements of Thome’s dental device,
as depicted Thome’s Figure 1. Appeal Br. 16–18. Although we are
persuaded by Appellant’s argument that the Examiner erred with respect to
the Examiner’s findings relative to Bernard, as discussed infra, we provide
the following claim construction in an effort to promote efficient
prosecution.

5 Cf. Appeal Br. 2 (submitting that “cases about intended use are usually
regarding an intended use in a preamble to a claim, and not to a functional
limitation in a claim”).
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We construe the claim term “multi-functional coping.” The
Specification discloses that
a provisional prosthesis may be prepared by attaching a coping
act as a temporary cylinder. A rubber dam (which may be a
flexible elastic material) may be placed over the surgical site in
the mouth and used to protect the surgical site from the
materials used to construct the provisional prosthesis. The
rubber dam may go around the coping attached to the implant
or abutment.
Spec. 4:28–32. The Specification also discloses that “[i]n some
embodiments the copings used as temporary cylinders may extend through
the provisional prosthesis, and the copings may need to be cut.” Id. 5:7–8;
see also Appeal Br. 8 (describing a coping as “part of an artificial tooth, or
crown, which may be temporary or permanent,” and which “may be placed
on an abutment, or in some cases the implant is designed to accept a coping
directly”). Here, even the cylindrical nature of the coping is disclosed as
relevant to only some embodiments. Therefore, in view of the Specification,
we do not identify any structure that is inherently required by the recitation
of a multi-functional coping, but rather, we construe the claimed multi-
functional coping as requiring the structure positively recited in the
limitations of the claims.
We also construe the claim term “engagement section.” The
Specification discloses, for example, “an engagement section with multiple
uses including engaging an impression.” Spec. 2:16–18. Thus, we
understand that an engagement section is a section that has structure for
engaging—or moving into a position so as to come into operation with—
another component of a device. Accordingly, we agree with the Examiner
that the exterior surfaces of Thome’s prismatic head 4.1 and prosthetic pillar
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4.2 are engagement surfaces each having one (or, for example, three)
external vertical concave grooves 4D for engaging another component of the
dental device, and therefore, such exterior surfaces are engagement surfaces,
in the context of this Specification. Cf. Appeal Br. 20 (submitting that “the
phrase ‘an engagement section for bonding a prosthesis’ denotes an actual
state of configuration that fundamentally ties the engagement section to the
physical characteristic required for bonding to a provision prostheses”).
We further construe claim 1 to include the following functional claim
limitations, which each recite an intended use for structural claim elements,
without further limiting the structure of the claimed element: (i) “. . . for
seating a portion of a rubber dam around the base exterior”; and (ii) “. . . for
bonding to a provisional prosthesis.” Thus, we decline to give patentable
weight to these limitations.
We also do not consider the rubber dam to be positively claimed as a
limitation of the dental device recited in claim 1. Rather, claim 1 positively
recites a dental device comprising a multi-functional coping comprising a
coping base with a channel formed in the base exterior for seating a portion
of a rubber dam, wherein the rubber dam is not an element of the dental
device, but a functional limitation that defines a use for the channel. See
Appeal Br. 24–25 (arguing that “Thome does not teach use of a rubber dam
[or] a channel for seating a rubber dam”). In this respect, we also determine
that Appellant does not provide sufficient argument or evidence that
Thome’s channel lacks the dimensions to receive a rubber dam, which
according to the Specification “may be a sheet of flexible elastic material”
and “may go around the coping attached to the implant or abutment.” Id. at
4:29–30; see Appeal Br. 20 (“the channel of Thome could not be used for a
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rubber dam and still work as intended to connect the cylinder (1) because 1B
on the cylinder (coping) is intended to fit into 4E of the prosthetic pillar 4.2
(abutment”); id. at Appeal Br. 17–18 (arguing that Figure 6 of Thome “does
not show two parallel flat surfaces, but rather suggest that the channel is
rounded to match the internal protrusions 1B” and that “[t]here is no
description of the channel in Thome that would suggest that the channel has
the specific structure6 of parallel seating surfaces that are substantially
perpendicular to the axis of the coping”); Reply Br. 3 (arguing that Thome’s
channel in the base exterior, as identified by the Examiner supra, “is not
capable of seating a rubber dam.”).
In sum, Appellant’s arguments that address functional language of
claim 1 are unpersuasive. For example, Appellant’s argument that Thome’s
prosthetic pillar 4.2 “is not a coping, and therefore, does not show a channel
on the base of a coping” is not persuasive. Appeal Br. 16. Similarly,
Appellant’s argument that Thome fails to disclose a channel formed in the
exterior of a coping base, which is formed for seating a portion of a rubber
dam around the base exterior, as claimed, is not persuasive. Appeal Br. 16;
see Reply Br. 3 (“[t]he seating of the rubber dam limits the claims to
differentiate from the prior art”); see also Appeal Br. 20 (“Thome does not
have a channel for seating a portion of a rubber dam on a coping base
because the channel of Thome [is] for securing the cylinder (1) with one
click”). Appellant’s argument that the Examiner errs by finding that
Thome’s prismatic head 4.1 and prosthetic pillar 4.2 disclose an engagement
section with first and second sections, as claimed, because prismatic head

6 Notably, this specific structure is not recited in claim 1.
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4.1 and prosthetic pillar 4.2 relate to “an abutment” and “not to a coping”
fails for the same reason. Appeal Br. 19.
Notwithstanding, we are persuaded by Appellant’s argument that,
with respect to Bernard, “bore 720 is not a division between two [portions],”
as relied on by the Examiner. Appeal Br. 19. Bernard discloses that
“elongate member 714 can include a longitudinal bore 720 through at least a
portion of the elongate member 714,” wherein “bore 720 can be sized and
shaped to allow a fastener to pass therethrough.” Bernard ¶ 128, see, e.g.,
Fig. 7A. In other words, the Examiner’s use of bore 720 to divide Bernard’s
elongate section into two portions is arbitrary, and the Examiner does not
provide support for finding that Bernard’s elongate member 714 has first and
second portions of an engagement section, with a first flat side on each
portion; rather, Bernard discloses a first flat side on a single portion that
extends the length of an engagement section. See, e.g., Bernard, Figs. 18,
27A; Ans. 16 (finding that Bernard’s “first and second portion[s] comprise a
flat side”). Nor does the Examiner provide any reasoning for modifying
Thome’s multi-use prosthetic components to incorporate a second flat side,
as a flat side is taught along the entire length in Bernard—and more
specifically, to modify Thome’s second portion (i.e., the portion of
prosthetic pillar 4.2 above channel 4E) to include a flat side, for example,
similar to flat side (or larger surfaces 4A) on Thome’s first portion (or
Thome’s prismatic head 4.1), such that the entirety of Thome’s engagement
section has a flat side (i.e., on each portion), as taught in Bernard, to reach
the subject matter claimed. See Final Act. 5 (proposing to modify Thome, in
of Bernard, to include a plurality of engagement grooves to facilitate cutting
at a desired area).
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Accordingly, we do not sustain the Examiner’s rejection of
independent claim 1, and claims 2–14 depending therefrom. The Examiner
relies on the same deficient finding regarding Bernard in the rejection of
independent claim 14, which requires, similar to claim 1, first and second
portions on the engagement section, wherein each portion comprises a first
flat side. Appeal Br. 30–31 (Claims App.). Therefore, for essentially the
same reasons as stated supra, we also do not sustain the Examiner’s
rejection of independent claim 14, and claims 15 and 16 depending
therefrom.
Independent claim 17
Independent claim 17 does not require any flat sides on the multi-
functional coping, as required by independent claims 1 and 14 supra.
Appeal Br. 31–32 (Claims App.). Independent claim 17 does recite, in
relevant part, “wherein the channel includes a first seating surface and a
second seating surface substantially parallel to the first seating surface,
wherein the first seating surface and the second seating surface are
substantially perpendicular to a longitudinal axis of the multi-functional
coping.” Id.
The Examiner finds that Thome discloses these claim limitations by
depicting a seating surface—including top and bottom surfaces and a
width—of channel 4E in Figure 2. Final Act. 8, 9; see also Ans. 16 (“the
parallel surfaces of Thome’s Fig. 3 illustrate at least the parallel sections of
the channel (indicated by parallel lines) is flat”).
Although, for the reasons set forth supra, we are not persuaded by
Appellant’s argument that Thome fails to disclose the claimed structure
because Thome’s channel is not on coping base, we are persuaded by
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Appellant’s argument that Thome fails to disclose the surfaces of the
channel as recited in claim 17, because Thome is silent with respect to the
dimensional characteristics of channel 4E, and the seating surface is not
sufficiently depicted in Thome’s Figure 4 to support the Examiner’s finding.
Appeal Br. 21–22. Indeed, Figure 3 of Thome appears to depict channel 4E
as concave. Under our precedent, it is well established that patent drawings
do not define the precise proportions of the elements and may not be relied
on to show particular sizes if the specification is completely silent on the
issue. Hockerson-Halberstadt, Inc. v. Avia Group Int’l, Inc., 222 F.3d 951,
956 (Fed. Cir. 2000), citing In re Wright, 569 F.2d 1124, 1127 (CCPA
1977). Moreover, the Examiner does not propose modifying Thome’s
channel 4E to be formed as claimed.
Accordingly, we do not sustain the Examiner’s rejection of claim 17.
CONCLUSION
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s) Affirmed Reversed
1–5, 7–17 103 Thome, Popovic, Bernard 1–5, 7–17
REVERSED