Yong-Kyu Yoon et al.

Patent Trials and Appeals Board

Aug 22, 2019

14347951 - (D) (P.T.A.B. Aug. 22, 2019)

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.
14/347,951 03/27/2014 Yong-Kyu Yoon UF#-13812 (222108-1740) 4737
154717 7590 08/22/2019
THOMAS|HORSTEMEYER, LLP - UF
University of Florida (UF)
3200 WINDY HILL ROAD, SE
SUITE 1600E
ATLANTA, GA 30339
EXAMINER
MORAN, EDWARD JOHN
ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
08/22/2019 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@thomashorstemeyer.com
ozzie.liggins@thomashorstemeyer.com
uspatents@thomashorstemeyer.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte YONG-KYU YOON, GLORIA J. KIM,
XIAOYU CHENG, MARC CAMPILLO-FUNOLLET, and
CARLOS A. MUNOZ
____________________

Appeal 2019-000748
Application 14/347,9511
Technology Center 3700
____________________

Before PHILIP J. HOFFMANN, TARA L. HUTCHINGS, and
AMEE A. SHAH, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner’s rejection of claims 1–3, 5–18, 22–24, and 27. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appellants’ invention relates to “a multifunctional oral prosthetic
system [that] includes an oral prosthetic device that may be located in an
oral cavity.” Spec., Abstract. Claims 1 and 27 are the independent claims

1 “The real parties in interest . . . are . . . The University of Florida Research
Foundation, Incorporated, . . . and The Research Foundation of State
University of New York.” Appeal Br. 3.
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on appeal. Below, we reproduce claim 1 as illustrative of the appealed
claims.
1. A multifunctional oral prosthetic system,
comprising:
an oral prosthetic device comprising an upper portion
configured to align with a roof of an oral cavity of a wearer, the
upper portion of the oral prosthetic device including:
a plurality of sensors embedded in the upper portion
including a displacement sensor configured to provide at
least one sensor value that corresponds to at least one
displacement distance between the upper portion of the
oral prosthetic device and the roof of the oral cavity while
being worn by the wearer, where the displacement sensor
is fixed into a section of the upper portion of the oral
prosthetic device that is adjacent to the roof of the oral
cavity when worn by the wearer; and
an internal module in communication with the
plurality of sensors, the internal module configured to
provide sensor data corresponding to at least one of the
plurality of sensors to an external processing unit when
located in an oral cavity, the sensor data comprising the at
least one sensor value, where the external processing unit
determines the at least one displacement distance between
the upper portion of the oral prosthetic device and the roof
of the oral cavity using the at least one sensor value.

REJECTIONS AND PRIOR ART
As set forth in the Final Office Action, the Examiner rejects the
claims as follows:2

2 In the Advisory Action, the Examiner withdraws an indefiniteness
rejection from the Final Office Action. See Advisory Action mailed
Mar. 19, 2018, 1; see Final Action 2–3.
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Application 14/347,951
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I. Claims 1, 2, 5, 9, 10, 14–16, 18, 22, 23,3 and 274 under
35 U.S.C. § 103(a) as unpatentable over Rahman et al.
(US 2006/0166157 A1, pub. July 27, 2006) (“Rahman”) and
Igarashi, Analysis of the Denture Dynamics in RPDs, Part 1.
Methods for Analyzing the Denture Dynamics of the Free-End-
Saddle, J Jpn Prosthodont Soc, 33 (s): 1989 (1988)
(“Igarashi”);
II. Claims 7 and 8 under 35 U.S.C. § 103(a) as unpatentable over
Rahman, Igarashi, and Shachar (US 2009/0220563 A1, pub.
Sept. 3, 2009);
III. Claim 17 under 35 U.S.C. § 103(a) as unpatentable over
Rahman, Igarashi, and Teggatz et al. (US 2011/0008744 A1,
pub. Jan. 13, 2011) (“Teggatz”);
IV. Claims 1–3, 5, 6, 9–16, 18, 22–24, and 27 under 35 U.S.C.
§ 103(a) as unpatentable over Beiski et al.
(US 2007/0106138 A1, pub. May 10, 2007) (“Beiski”),
Rahman, and Igarashi;
V. Claims 7 and 8 under 35 U.S.C. § 103(a) as unpatentable over
Beiski, Rahman, Igarashi, and Shachar; and
VI. Claim 17 under 35 U.S.C. § 103(a) as unpatentable over Beiski,
Rahman, Igarashi, and Teggatz.
See generally Final Action.

3 Although this rejection and Rejection IV refer to claim 4, Appellants
canceled the claim in a Response to Final Office Action. Response to Final
Action 3. Thus, we correct the claim listing in view of this cancellation.
4 The Examiner rejects claim 27 in the Advisory Action. See Advisory
Action 3.
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ANALYSIS
Rejection I
As set forth above, independent claim 1 recites, in relevant part,
a plurality of sensors embedded in the upper portion [of an
oral prosthetic device] including a displacement sensor
configured to provide at least one sensor value that corresponds
to at least one displacement distance between the upper portion
of the oral prosthetic device and the roof of the oral cavity while
being worn by the wearer.
Appeal Br., Claims App. The Examiner relies on Rahman to disclose the
claimed displacement sensor. See, e.g., Final Action 3–4 (“Rahman . . .
discloses . . . a displacement sensor [(106, 242)] . . . configured to provide at
least one sensor value that corresponds to at least one displacement distance
(e.g. a signal of varying capacitance) between the upper portion of the oral
prosthetic device and the roof of the oral cavity while being worn by the
wearer (see [0045]–[0046] and [0049]).”).
Nonetheless, we determine that the Examiner does not adequately
support that Rahman discloses a sensor configured to provide at least one
sensor value that corresponds to the claimed displacement distance. Appeal
Br. 11–13. Specifically, it is not clear from any of the portions of Rahman
which the Examiner cites—i.e., paragraphs 45, 46, and 49—that the value
output by either sensor 106 or secondary sensor 242 is capable of being
processed to indicate a distance. As the Examiner finds, Rahman’s
paragraph 45 does describe that “sensor 106 may be implemented as a
capacitive sensor that measures capacitance with respect to the medical
device 102 and determines changes therein when in proximity to the body.”
Rahman ¶ 45. However, it is not clear to us that “the signal from the
Rahman sensor [is capable of] be[ing] processed or correlated to specific
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Application 14/347,951
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distance . . . [, such that] the resultant device would allow for measurement
of a distance of the device from a roof of the oral cavity, by virtue of the
change in capacitance, and calibration thereof.” Answer 3–4. The Examiner
does not support adequately this statement. Instead, without adequate
support, this statement appears to be only supposition on the Examiner’s
part.
Thus, based on the foregoing, we do not sustain the Examiner’s
obviousness rejection of independent claim 1 over Rahman and Igarashi.
We also do not sustain the Examiner’s rejection of claims 2, 5, 9, 10, 14–16,
18, 22, and 23 that depend from, and which the Examiner rejects with,
claim 1. Further, inasmuch as independent claim 27 includes a similar
recitation as, and the Examiner rejects claim 27 for reasons similar to those
used to reject, claim 1, we also do not sustain claim 27’s obviousness
rejection.

Rejections II and III
Claims 7, 8, and 17 depend from claim 1. Inasmuch as the Examiner
does not rely on Scachar and Teggatz to disclose anything that remedies the
above-discussed deficiency in claim 1’s rejection, we do not sustain the
Examiner’s obviousness rejections of claims 7, 8, and 17.

Rejection IV
The Examiner’s rejection of independent claim 1 based on Beiski,
Rahman, and Igarashi relies on Rahman to disclose the claimed
displacement sensor. See, e.g., Final Action 11–12. Thus, we do not sustain
the Examiner’s obviousness rejection of independent claims 1 and 27, and
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claims 2, 3, 5, 6, 9–16, 18, and 22–24 that depend from claim 1, for the
reasons discussed above under the heading for Rejection I.

Rejections V and VI
Claims 7, 8, and 17 depend from claim 1. Inasmuch as the Examiner
does not rely on Shachar and Teggatz to disclose anything that remedies the
above-discussed deficiency in claim 1’s rejection discussed under the
heading for Rejection IV, we do not sustain the Examiner’s obviousness
rejections of claims 7, 8, and 17.

DECISION
We REVERSE the Examiner’s obviousness rejections of claims 1–3,
5–18, 22–24, and 27.

REVERSED