Ex Parte Baptist

Patent Trials and Appeals Board

Mar 27, 2019

14044724 - (D) (P.T.A.B. Mar. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
14/044,724
129723 7590
Loza & Loza, LLP
Patrick B. Law, Esq.
FILING DATE
10/02/2013
03/29/2019
305 N. Second Ave. #127
Upland, CA 91786
FIRST NAMED INVENTOR
Benjamin A. Baptist
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.
BAPTIST-1001 7933
EXAMINER
COLEY, ZADE JAMES
ART UNIT PAPER NUMBER
3775
NOTIFICATION DATE DELIVERY MODE
03/29/2019 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@lozaip.com
patrick@lozaip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BENJAMIN A. BAPTIST 1
Appeal 2017-011151
Application 14/044, 724
Technology Center 3700
Before ERIC B. GRIMES, MICHAEL J. FITZPATRICK, and
JOHN G. NEW, Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellant states that the real party-in-interest is the named inventor,
Benjamin A. Baptist. App. Br. 1.
Appeal2017-011151
Application 14/044, 724
SUMMARY
Appellant files this appeal under 35 U.S.C. § I34(a) from the
Examiner's Final Rejection of claims 1-22 as unpatentable under 35 U.S.C.
§ I03(a) as being obvious over the combination of Lorenzi (US
2002/0094508 Al, July 18, 2002) ("Lorenzi"), in view ofNowak (US
5,997,298, December 7, 1999) ("Nowak").
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
NATURE OF THE CLAIMED INVENTION
Appellant's invention is directed to apparatus and systems for rotary
osteotomy. Abstr.
REPRESENTATIVE CLAIM
Independent claim 1 is representative of the claims on appeal
and recites:
1. An apparatus for rotary osteotomy comprising:
a tip portion having a first diameter at a first end and a
second diameter at a second end larger than the first diameter,
wherein at least a part of the tip portion includes a plurality of
pitched threads;
a shank fixedly connected to the second end of the tip
portion and having at least a third diameter;
and a generally cylindrical handle fixedly connected to the
shank and configured for being grasped by hand to allow a user
to apply rotation to the apparatus by hand via the handle, the
handle being disposed distal from the tip portion and having a
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fourth diameter that is at least greater than the second diameter
of the tip portion and the third diameter of the shank.
App. Br. 8.
ISSUES AND ANALYSES
We are persuaded by, and expressly adopt, the Examiner's findings,
reasoning, and conclusion that Appellant's claims are primafacie obvious
over the combined cited prior art. We address the arguments raised by
Appellant below.
A. Claim 1
Issue
Appellant argues the Examiner erred in finding that a person of
ordinary skill in the art would have found it obvious to combine the
references so as to substitute the coupling of Lorenzi for the handle and
shank of Nowak. App. Br. 5.
Analysis
The Examiner finds that Lorenzi teaches all of the limitations of
Appellant's claim 1 with the exception of the coupling being generally
cylindrical. Final Act. 2-3.
The Examiner finds that Nowak teaches an osteotome that comprises
a tip ( 5) having a first diameter at a first end (7) and a second diameter at a
second end (opposite end), a shank (4) fixedly connected to the second end
of the tip portion and has at least a third diameter. Final Act. 3 ( citing
Nowak Fig. 1 ). The Examiner also finds that Nowak teaches a generally
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cylindrical handle fixedly connected to the shank and configured for being
grasped by hand to allow a user to apply rotation to the apparatus by hand
via the handle. Id. (citing Nowak cols. 4--5, Figs. 1, 3). The Examiner finds
that the handle taught by Nowak is disposed distal to the tip portion (Fig. 1)
and has a fourth diameter that is at least greater than the second diameter of
the tip portion and the third diameter of the shank. Id. (citing Nowak Fig. 1).
The Examiner finds that the shank is configured with a predetermined length
to allow a user to create mechanical movement by hand to effectuate a
prescribed degree of leverage for the tip portion. Id. at 3--4 (citing Nowak
Abstr., cols. 1---6, Fig. 1). The Examiner finds that the handle ofNowak's
device includes one of one or more textured portions and a flattened portion
of the generally cylindrical handle to allow increased grip of the handle. Id.
at 4 ( citing Nowak Fig. 1 ).
The Examiner concludes that it would have been obvious to a person
of ordinary skill in the art to substitute the coupling of Lorenzi for the handle
and shank of Nowak because both devices are directed to a device to create
openings in bone, and because substituting a means for manual control for
automatic control means, or vice versa, would require only routine skill in
the art. Final Act. 4.
Appellant argues that Figure 1 of Lorenzi teaches that coupling 12 is a
square or rectangular shaped coupling and the disclosure describes that it is
constructed for coupling a drill or wrench to the osteotome 10. App. Br. 6.
Figure 1 of Lorenzi is depicted below:
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Figure 1 of Lorenzi depicts a perspective view of a rotary
osteotome
Appellant next points to paragraph [0022] of Lorenzi as teaching that
coupling 12 is configured for coupling to a drill mount of a standard dental
drill or to a surgical hand wrench. App. Br. 6. Accordingly, contends
Appellant, coupling 12 of Lorenzi cannot reasonably be interpreted as
constituting a handle, but is rather a device for facilitating coupling to a non-
fixed or detachable drill or hand wrench. Id. ( citing Lorenzi ,r,r 22, 30, Fig.
3).
Appellant further asserts that the Examiner's interpretation of the
claimed term "handle" is: "predicated on a misapplication of the broadest
reasonable interpretation standard set forth in Phillips v. A WH Corp., 415
F.3d 1303 (Fed. Cir. 2005)." App. Br. 7. According to Appellant, the
Examiner applies an overly broad and allegedly fanciful interpretation of the
coupling 12 in Lorenzi, and does not actually apply that interpretation to
Appellant's claims on appeal. Id. Nevertheless, Appellant asserts, the
claims recite a handle, which in light of the specification, would be
interpreted by one skilled in the art to be a handle used for operating the
claimed osteotome by a user's hand. Id. (citing, e.g., Spec. ,r 18). Appellant
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argues that the Examiner's interpretation of coupling 12 to be a handle
capable of allowing operation ofLorenzi's osteotome 10 by hand is beyond
broadest reasonable construction of the claim language. Id.
Appellant then points to Figure 1 of Nowak, which is reproduced
below:
Figure 1 of Nowak depicts a side partially cutaway view of an
osteotome
Appellant argues that Nowak teaches a dental device having a shank 4
connected to a generally cylindrical handle 3, that the Appellant contends
the Examiner finds to be configured to be grasped by hand to allow a user to
apply rotation to the apparatus via the handle. App. Br. 7. Appellant asserts
that Nowak does not teach this and, further, that one skilled in the art would
not have been motivated to combine the teachings of Nowak with those of
Lorenzi. Id. at 8.
Appellant contends that the holder 3 of Nowak is not a handle
configured for rotation of the instrument 1 in Figure 1, but rather is a holder
to either give a user a striking surface for a mallet to drive the instrument
into bone or to push the device by hand. App. Br. 8. Specifically, Appellant
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argues that the dental instruments of Nowak are of the "Summers" type of
osteotome that creates a hole in bone by pressure on the dental instrument
without rotation. Id. (citing, e.g., Nowak col. 1, 11. 59---61). Appellant
contends that this interpretation is further borne out by Nowak's
distinguishing the Summers device from known methods of rotational
drilling into bone, which has the significant drawback of removing valuable
bone material. Id. at 8-9 ( citing Nowak col. 1, 11. 28--44).
Appellant asserts that Nowak points out that the Summers device has
the drawback of forming simple, slightly conical cavity in a jaw bone that
does not guarantee a reliable bed for the fixation of screw-type dental
implants. App. Br. 9 (citing Nowak col. 2, 11. 1--4). Appellant contends that
Nowak teaches that the object of its invention is to: "create an oral surgical
instrument ( osteotome) of the generic type, with which openings in the jaw,
especially in the upper jaw, can be formed for implanting implants, so that
these implants can be inserted into the openings in the jaw with greater
fitting strength." Id. (quoting Nowak col. 2, 11. 15-20).
Appellant contends that Nowak teaches that this declared object is
accomplished by a set of oral surgical instruments for creating openings in
the jawbone, having at least one preformer with a conical working tip and at
least one implant bed former with a working tip adapted to the outer contour
of the particular desired implant, such that the specific shape of the implant
is already taken into account during the shaping of the implant bed. App.
Br. 9 (citing Nowak col. 2, 11. 21-54). Of particular significance, Appellant
argues, is that Nowak expressly teaches that, in contrast to its claimed
device: "[r]otating instruments were previously necessary for this type of
implant bed." Id. (quoting Nowak col. 2, 11. 55-57). Appellant points out
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that Nowak is otherwise silent concerning the use or the purpose of the
holder 3 and, therefore, a person of ordinary skill in the art would have
reasonably understood that Nowak's device is not a rotational device.
Consequently, Appellant argues, holder 3 ofNowak's device cannot be
reasonably construed as being configured for the rotation of an osteotome.
Id.
Appellant next points to L.H. Silverstein et al., Aesthetic
Enhancement of Anterior Dental Implants with the Use of Tapered
Osteotomes and Soft Tissue Manipulation, 25(1) J. ORAL IMPLANTOL. 18-22
(1999) ("Silverstein") and J. Hahn, Clinical Uses of Osteotomes, 25(1) J.
ORAL lMPLANTOL. 23-29 (1999) ("Hahn"). App. Br. 9-10. According to
Appellant, both Silverstein and Hahn expressly teach the use of a mallet with
an osteotome. Id. at 10 (citing Silverstein Fig. 5; Hahn Fig. 4).
Appellant similarly points to C.E. Misch, CONTEMPORARY IMPLANT
DENTISTRY (Third ed.), 778-787 (2008) ("Misch"). App. Br. 10. Appellant
contends that Misch teaches that bone expansion with an osteotome, such as
that taught by Nowak, requires the use of a surgical mallet, and that the use
of an osteotome and mallet to prepare an implant site is advantageous. Id. at
10-11.
Appellant disputes the Examiner's finding that: "[t]he handle [of
Nowak] is designed to be grabbed by and [sic] hand and is also knurled[,]
which will allow the user to apply torque to the handle and instrument."
App. Br. 11 (quoting Final Act. 7 (citing Nowak cols. 4--5, 11. 62-13)).
Appellant further disagrees with the Examiner's statement that:
[a] recitation of the intended use (i.e. using the handle to rotate
the device) of the claimed invention must result in a structural
difference between the claimed invention and the prior art in
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order to patentably distinguish the claimed invention from the
prior art. If the prior art structure is capable of performing the
intended use, then it meets the claim.
Id. (quoting Final Act. 7). Appellant argues that, notwithstanding that the
holder 3 of Nowak is cylindrical and knurled for holding the dental
instrument in place, there is no teaching or suggestion in Nowak for
applying torque or rotation to the instrument, because it is of a type that is
operable through pressure exerted on the dental instrument to form an
opening through compaction and displacement alone. Id. at 11-12 (citing
Nowak col. 1, 11. 59---61).
Finally, Appellant argues that a person of ordinary skill in the art
would not have been motivated to combine the holder 3 of Nowak as a
substitute for the coupling 12 in Lorenzi, because the proposed modification
or combination of the prior art would change the principle of operation of
the prior art invention being modified. App. Br. 12 ( citing In re Ratti, 270
F.2d 810, 813 (C.C.P.A. 1959). Appellant repeats the argument that Lorenzi
explicitly teaches a coupling 12 that is configured to couple the device 10 to
a ratchet or drill device. Id. at 12-13. Appellant contends that, although
osteotomes with holders, such as Nowak's holder 3, were known at the time
of Lorenzi, the device of Lorenzi was nonetheless specifically configured
and designed with a coupling 10, not a handle or holder, for effecting
coupling to a ratchet or drill to drive the device into bone. Id. at 13.
Appellant asserts that Lorenzi expressly teaches the intent or design of the
coupling 12 is not to be a handle used to effect rotation of the osteotome, but
is rather a coupling to join with a detachable means that actually effects the
rotation or operation the device. Id. Appellant therefore argues that the
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modification proposed by the Examiner changes how the device of Lorenzi
is to be operated and, as such, the modification is not sufficient to establish a
prima facie case of obviousness. Id.
We are not persuaded by Appellant's arguments. We agree with the
Examiner that the handles of both Nowak and Appellant's claimed invention
are cylindrical and curved and are capable of being manually rotated. See
Ans. 3. And if, as we find, the knurled, cylindrical handle of Nowak is
capable of performing the intended use recited in the claims, then it reads
upon the corresponding limitation of claim 1. Appellant adduces no
evidence that the knurled, cylindrical handle ofNowak's device is incapable
of being manually rotated as recited in Appellant's claims. We therefore
conclude that it would have been obvious to a skilled artisan that combining
the handle of Nowak with the osteotome of Lorenzi, in lieu of the latter's
drive attachment, would result in a osteotome capable of being rotated by
hand. Manually driven and motor-powered rotation devices (e.g.,
screwdrivers) are commonplace in the mechanical arts.
Furthermore:
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the
art.
In re Keller, 642 F.2d 413,425 (C.C.P.A. 1981). It is not disputed by
Appellant that Lorenzi teaches all of the limitations of claim 1 with the
exception of: "a generally cylindrical handle fixedly connected to the shank
and configured for being grasped by hand to allow a user to apply rotation to
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the apparatus by hand via the handle." Nowak teaches a generally
cylindrical handle that can be grasped by the hand and that would allow a
user to apply rotation, even if Nowak does not expressly teach it being
rotated in that manner. Lorenzi teaches a rotating dental osteotome and we
agree with the Examiner that it would be obvious to a skilled artisan that, by
substituting the generally cylindrical, knurled handle taught by Nowak, the
resultant combination would be capable of being manually rotated.
Nor are we persuaded by Appellant's argument that a person of
ordinary skill would not be motivated to combine the teachings of Lorenzi
and Nowak. "The combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,416 (2007).
Furthermore: "[i]f a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability." Id. at 417. Knurled, generally
cylindrical handles are taught by Nowak, are well known in the art, and are
generally known in the art to be capable of being used in the manner claimed
by Appellant.
We find Appellant's argument that combining the teachings of
Lorenzi and Nowak would alter the principle of operation of Lorenzi to be
similarly not persuasive. Lorenzi teaches that, in its claimed device: "The
threads are constructed to feed the osteotome into the implantation site in
response to rotation of the osteotome, ordinarily without any significant
cutting or removal of bone." Lorenzi ,r 13. Substituting the knurled,
cylindrical handle of Nowak for the drill attachment structure of Nowak
would not prevent the osteotome of Lorenzi from being used in this manner.
We consequently affirm the Examiner's rejection of claim 1.
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B. Claims 3 and 15
Issue
Claim 3, which depends from claim 1 and is exemplary, recites:
"wherein the plurality of pitched threads are configured such that at least a
portion of the plurality of pitched threads have a prescribed thread depth
extending beyond at least one of the first diameter and the second diameter."
App. Br. 18. Appellant argues that Lorenzi does not expressly provide
teaching of a particular prescribed thread depth extending beyond at least
one of the first diameter and the second diameter. Id. at 15.
Analysis
Appellant argues that, that apart from the visual information in
Figures 1 and 2, Lorenzi does not expressly provide teaching of a particular
prescribed thread depth extending beyond at least one of the first diameter
and the second diameter. App. Br. 15. According to Appellant, Lorenzi
teaches only that there are threads without any teaching or suggestion
concerning their depth. Id.
The Examiner responds that claim 3 recites that the thread extends
more radially outward from a central axis than at least the tip. Ans. 4. The
Examiner finds that the threads 1 7 of Lorenzi appear to have essentially a
larger diameter compared to the tip in the same manner as recited by claim
3. Id.
We are not persuaded by Appellant's argument. Figure 1 of Lorenzi,
reproduced supra demonstrates threads with a depth exceeding that of the tip
of the osteotome. Appellant dismisses Figure 1 as "not dispositive" ( see
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App. Br. 15) but provides no reasoning or authority in support of its
argument as to why this should be so. Furthermore, Lorenzi expressly
teaches that:
[T]he invention is a rotary osteotome with a tapered shape having
a finely threaded exterior surface. The threads are constructed to
feed the osteotome into the implantation site in response to
rotation of the osteotome, ordinarily without any significant
cutting or removal of bone. The osteotome thus widens the
implantation site by being rotated into the site and drawn
thereinto by the threads, which engage the bone at the interior of
the implantation site.
Lorenzi ,r 13. We conclude that a person of ordinary skill in the art,
comparing this description to Figure 1, would understand that in the tapering
osteotome in which the threads engage and widen the implantation site, the
depth of the threads would necessarily exceed the diameter of the osteotome
tip. Simply put, a person of ordinary skill in the art would understand that
this is how a screw is designed to work. We consequently affirm the
Examiner's rejection of claims 3 and 15.
C. Claims 6 and 18
Issue
Claim 6 is representative and recites, in relevant part: "wherein the
shank is configured with a predetermined length to allow a user to create
mechanical moment by hand to effectuate a prescribed degree of leverage
for the tip portion." App. Br. 19. Appellant argues that the Examiner erred
in finding that Nowak teaches or suggests this limitation.
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Analysis
Appellant contends that the Examiner appears to rely upon the
graduated shank 4 of Nowak, as depicted in Figure 1, as teaching this
limitation. App. Br. 16. According to Appellant, Nowak neither teaches nor
suggests that this shaft is configured to be of a predetermined length and,
more significantly, that it would be configured for a user to create leverage,
let alone a prescribed degree of leverage for a tip portion. Id. Appellant
asserts that graduated shaft 4 being configured or constructed for leverage is
not found in Nowak, and would not be suggested, because the device of
Nowak is configured for being pressed into a bone opening, and is not taught
to be applied with any leverage force to the bone opening. Id.
Appellant additionally argues that the shaft 14 in Lorenzi is merely
taught as being an unthreaded shaft between coupling 12 and tapered body
11. App. Br. 16 ( citing Lorenzi ,r 22). Appellant contends that shaft 14 of
Lorenzi, like Nowak, is not taught or suggested as being configured or sized
to create a moment for leverage to effectuate a prescribed degree of leverage
for the tip portion of osteotome 10. Id.
The Examiner responds that the rejection substitutes the coupling of
Lorenzi with the handle and shank of Nowak. Ans. 4. The Examiner finds
that shank 4 is inherently built with a predetermined, i.e., non-random,
length that can be grasped at one end and torqued/twisted/manipulated in a
manner to leverage the tip as a matter of simple physics. Id. at 4--5.
Appellant replies that it cannot be reasonably ascertained from Nowak
whether the shank length was decided based on an understanding or
consideration of lever mechanics and that one skilled in the art would indeed
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be motivated to deviate from the teachings of this cited reference to define a
particular shank length designed to achieve a particular lever moment.
Reply Br. 4. 2
We do not find Appellant's argument to be persuasive. As an initial
matter, we note that neither the claims nor the Specification identify a
quantitative length measurement that would meet the requirements recited in
the claim. However, Appellant's Specification discloses that:
Additionally, length 115 of shank 104 affords length between the
tip portion 102 and the handle 106 to afford leverage to an
operator of apparatus 100, such as for controlling
direction/trajectory angle or lateral force, if necessary. The
particular measurement of length 115 is varied and may be on
various factors including, but not limited to, the presence ( or
lack) of tapered portions (e.g., 116), the diameter of the tip
portion 102, and the type of osteotomy procedure being
performed.
Spec. ,r 17. The Specification offers no illumination as to what
quantitatively constitutes "a prescribed degree of leverage for the tip
portion," as recited in the claim.
Lorenzi teaches a rotating osteotome that is coupled to, driven by, a
power source rather than manually. See, e.g., Lorenzi ,r 22. Consequently,
the requisite shank length to deliver an amount of leverage required to
perform the functions described on paragraph [0013] of Lorenzi, quoted
supra, would be either known or determinable by a person of ordinary skill
in the art. "[W]here the general conditions of a claim are disclosed in the
2 We note that the Reply Brief is not supplied with page numbers. We
therefore refer to the number of the pages seriatim, with the cover page
designated as page 1.
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prior art, it is not inventive to discover the optimum or workable ranges by
routine experimentation." In re Aller, 220 F.2d 454, 456 (C.C.P.A. 1955).
This rule is limited to cases in which the optimized variable is a "result-
effective variable." See In re Applied Materials, Inc., 692 F.3d 1289, 1295
(Fed. Cir. 2012). In the appeal before us, the claim language reciting "to
create mechanical moment by hand to effectuate a prescribed degree of
leverage for the tip portion" is a general claim that seeks to produce a result-
effective variable, viz., "a prescribed amount of leverage" ( although no
particular amount of leverage is actually prescribed). Because optimizing
the handle length to provide an (undefined) degree of leverage for the tip
portion would be obvious to a person of ordinary skill in the art, we affirm
the Examiner's rejection of claims 6 and 18.
D. Claims 21 and 22
Issue
Claim 21 is representative and recites, relevantly: "wherein the
apparatus is configured to cause bone displacement without cutting of bone
through compression force resultant from advancement of the apparatus into
a bone via a rotational force and an apical force applied to the handle of the
apparatus by hand." App. Br. 22. Appellant argues that the combined cited
prior art neither teaches nor suggests this limitation. Id. at 16.
Analysis
Appellant disputes the Examiner's finding that Lorenzi teaches
the disputed limitation through "caus[ing] bone displacement without cutting
of bone through compression force resultant from advancement of the
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apparatus into a bone via a rotational force and an apical force applied to the
coupling by hand" App. Br. 16 (quoting Final Act. 3 (citing Lorenzi ,r 13,
Figs. 1, 3). Appellant argues that paragraph 13 of Lorenzi teaches, at most,
bone displacement via a rotational force. Id. Appellant asserts that Lorenzi
neither teaches nor suggests application of any apical force applied to the
coupling 12, the osteotome 10, or the driver 35 of the apparatus, or
application of such a force by hand. Id. at 16-17.
Appellant argues further that Nowak teaches away from using
rotational force, because its device is taught to be a push in or mallet driven
device that is preferable to a device employing rotational devices. App. Br.
17 (citing Nowak col. 2, 11. 55-57).
We are not persuaded by Appellant's arguments. Lorenzi teaches:
The threads are constructed to feed the osteotome into the
implantation site in response to rotation of the osteotome,
ordinarily without any significant cutting or removal of bone.
The osteotome thus widens the implantation site by being rotated
into the site and drawn thereinto by the threads, which engage
the bone at the interior of the implantation site.
Lorenzi ,r 13. We agree with the Examiner that Lorenzi thus teaches: an
"apparatus is configured to cause bone displacement without cutting of bone
through compression force resultant from advancement of the apparatus into
a bone via a rotational force and an apical force applied to the handle of the
apparatus by hand," as recited in claim 21. Although Lorenzi teaches that its
device is powered by coupling to a power source, we have explained supra
why we conclude that it would have been obvious to a person of ordinary
skill in the art to combine the teachings of Lorenzi and Nowak such that the
osteotome could be turned by hand via a handle,
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With respect to Appellant's argument that Nowak teaches away from
the claims because Nowak teaches pushing an osteotome or driving one with
a mallet, we are similarly not persuaded. A teaching away requires a
reference to actually criticize, discredit, or otherwise discourage the claimed
solution. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). The
passage of Nowak cited by Appellant teaches merely that: "Rotating
instruments were previously necessary for this type of implant bed." Nowak
col. 2, 11. 55-57. We interpret the plain language of this teaching as
disclosing an alternative; we do not find that it rises to the level of criticism,
discrediting, or otherwise discouraging use of the rotating instrument taught
by Lorenzi.
Nowak also teaches that: "the creation of jaw openings for the
implantation of implants by means of drilling is well known in dentistry. As
a result of this, however, valuable bone material is removed, due to which
the fitting strength of the implant is not guaranteed." Id. at col. 1, 11. 29-33.
However, Lorenzi expressly distinguishes its rotating osteotome from
drilling:
According to the first technique, drills of successively larger
diameters are used to remove bone tissue from the implant site
and thereby increase the implant site diameter until the final drill
is the same diameter as the implant.
This fist [sic] technique requires adequate bone width because of
the removal of bone. Removal of large amounts of bone is
ordinarily undesirable since bone removal weakens the implant
site. Accordingly, this first technique for preparation of the
implant site is used sparingly ....
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Lorenzi ,r,r 6-7. Paragraph [0013] of Lorenzi, quoted supra, expressly states
that the use of the rotating osteotome it teaches does not remove the large
amounts of bone caused by drilling.
Indeed, Lorenzi provides motivation of its own for avoiding the push-
or-mallet driven osteotome technique taught by Nowak. Specifically,
Lorenzi teaches:
In particular, hammering of osteotomes is traumatic to the bone
and is uncomfortable to an awake patient. Moreover, despite
proper alignment of the pilot hole, alignment of the implantation
site can easily drift since the osteotomes are hammered manually
into place. Particularly with narrow implantation sites such as a
thin jaw bone, it is possible for the osteotome to perforate the
side of the implantation site. Additionally, hammered osteotomes
often become embedded in the bone and require considerable
force to remove.
Lorenzi ,r 11. We therefore find that not only Nowak does not teach away
from the claimed invention, Lorenzi provides additional motivation for the
skilled artisan to combine the references. We consequently affirm the
Examiner's rejection of claims 21 and 22. Furthermore, because Appellant
makes no arguments concerning the Examiner's rejection of claims 2, 4, 5,
7-14, and 16-20, we also summarily affirm the rejection of those claims.
DECISION
The Examiner's rejection of claim 1-22 under 35 U.S.C. § 103(a) is
affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.I36(a)(l)(iv).
AFFIRMED
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