Ex Parte Chapoulaud et al

Patent Trial and Appeal Board

Oct 28, 2016

13329613 (P.T.A.B. Oct. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/329,613 12/19/2011
83571 7590 11/01/2016
Wood, Herron & Evans, LLP (Sybron)
441 Vine Street
2700 Carew Tower
Cincinnati, OH 45202
FIRST NAMED INVENTOR
Eric Chapoulaud
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.
ORM-166CO 7793
EXAMINER
SINGH, SUNIL K
ART UNIT PAPER NUMBER
3722
NOTIFICATION DATE DELIVERY MODE
11/01/2016 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):
usptodock@whe-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIC CHAPOULAUD, CRAIG A. ANDREIKO, and
MARK A. PAYNE1
Appeal2014-007476
Application 13/329,613
Technology Center 3700
Before DEMETRA J. MILLS, ERIC B. GRIMES, and
CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
of manufacturing an orthodontic appliance, which have been rejected as
obvious and lacking adequate written description. We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse both of the rejections on appeal.
1 Appellants identify the Real Party in Interest as Ormco Corporation.
(Appeal Br. 3.)
Appeal2014-007476
Application 13/329,613
STATEMENT OF THE CASE
Orthodontic treatment commonly involves positioning brackets on a
patient's teeth and placing a guidewire in slots in the brackets. (Spec. i-f 5.)
"Brackets can be made ... by printing the material of which the bracket is to
be made, such as metal, plastic or ceramic .... This direct stereo
lithographic printing eliminates the need to cast a custom mold for the
appliance." (Spec. i-f 98.)
"Methods of manufacture are known or are evolving by which
materials, such as, for example, metal or ceramic, can be provided in powder
form mixed with a binder. Such a material could then be deposited in a
layer in the shape of the cross section of an appliance." (Id.) "[T]he binder
can be removed by heat or solvent, leaving a bracket or other appliance or
appliance part formed of the material in the three-dimensional shape of the
orthodontic appliance." (Id.)
Claims 1-7, 9-14, and 18-22 are on appeal. Claims 1 and 10 are
illustrative and read as follows (emphasis added):
1. A method of manufacturing an orthodontic appliance comprising:
producing digital data defining a dimension of an orthodontic
appliance;
manufacturing the orthodontic appliance based on the digital data by a
process that includes depositing a mixture of metal powder and a binder, the
mixture being provided in powder form, in accordance with the digital data,
in a plurality of layers, layer by layer, each layer constituting a two-
dimensional cross section of the orthodontic appliance and each layer
deposited being the mixture of metal powder and the binder, the layers being
stacked in a third dimension; and
removing the binder to form the orthodontic appliance having
dimensions defined by the digital data.
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Application 13/329,613
10. A method of manufacturing an orthodontic appliance comprising:
producing digital data defining a three-dimensional surface of an
orthodontic appliance or component thereof;
manufacturing the orthodontic appliance or component thereof based
on the digital data by a process that includes depositing a metal powder, in
accordance with the digital data, layer by layer in a plurality of layers, each
layer of the metal powder being in the shape of a two-dimensional cross
section of the orthodontic appliance or component thereof, each layer then
being sintered, the layers being stacked in a third dimension to define a
thickness of the orthodontic appliance or component thereof;
wherein each layer of the metal powder is bonded to the preceding
layer of the metal, and wherein at least one cross section is deposited and
then is sintered before all of the layers are deposited to form the three-
dimensional surface on the orthodontic appliance or component thereof;
thereby producing the orthodontic appliance or component thereof
having a shape defined by the digital data.
The claims stand rejected as follows:
Claims 10-14 and 18-22 under 35 U.S.C. § 112, first paragraph, for
lack of adequate written description (Ans. 4); and
Claims 1-7 and 9 under 35 U.S.C. § 103(a) as obvious based on
Andreiko,2 Brodkin,3 and Vickery4 (Ans. 4). 5
2 Andreiko et al., US 5,431,562, issued July 11, 1995.
3 Brodkin et al., US 6,322,728 Bl, issued Nov. 27, 2001.
4 Vickery, US 3,502,466, issued Mar. 24, 1970.
5 In addition to the rejections summarized above, the Examiner also
provisionally rejected the claims for obviousness-type double patenting
based on the claims of application 10/868,311. (Office Action mailed Oct.
10, 2013, page 3; Ans. 3.) Appellants did not appeal this rejection. (See
Appeal Br. 5---6; Reply Br. 2.)
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Application 13/329,613
I
The Examiner has rejected claims 10-14 and 18-22 as lacking
adequate written description in the Specification. The Examiner finds that
"[t]he disclosure as originally filed does not provide adequate support for the
limitation that at least one cross-section/layer is sintered before all layers are
deposited." (Ans. 4.)
Appellants argue that the disputed limitation is described in the
Specification at i-fi-198 and 99. (Appeal Br. 7-9.)
We agree with Appellants that the Specification shows possession of a
process that includes the disputed limitation. "[T]he description requirement
does not demand any particular form of disclosure, or that the specification
recite the claimed invention in haec verba." Ariad Pharms., Inc. v. Eli Lilly
& Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (citation omitted). Rather, "the
test for sufficiency is whether the disclosure of the application relied upon
reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date." Id. at 1351.
The Specification describes a method of making an orthodontic
appliance in which metal mixed with a binder is deposited in layers and the
binder is then removed. (Spec. i198.) "[A]fter all layers have been applied
to produce the three-dimensional appliance, the material, which is metal,
ceramic or other material, and which is relatively fragile with the binder
removed, is then heated to just below its melting point, and sintered until it
achieves the desired cohesion and density." (Id.) This embodiment does not
include sintering before all the layers are deposited.
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Appeal2014-007476
Application 13/329,613
However, the Specification also states that "[ o ]ther techniques for
producing the appliance in layers may be used." (Id. i-f 99.) "Materials may,
for example, be deposited in uniform layers, with a cross section of the
appliance then being bonded, such as for example, being sintered with the
use of a computer controlled laser." (Id., emphasis added.)
Each layer of the appliance represents a cross section of the final
product; thus, the above disclosure is reasonably understood to describe
sintering each layer before the next layer of metal powder is deposited. We
agree with Appellants that the Specification shows possession of a method in
which "at least one cross section is deposited and then is sintered before all
of the layers are deposited," as recited in claim 10. The rejection under 35
U.S.C. § 112, first paragraph, is reversed.
II
The Examiner has rejected claims 1-7 and 9 as obvious based on
Andreiko, Brodkin, and Vickery. The Examiner finds that Andreiko
discloses a method meeting most of the limitations of claim 1, except that it
does not disclose layers that are a mixture of a metal powder and binder,
removing the binder, or sintering. (Ans. 4-5.)
The Examiner finds that Brodkin discloses forming an orthodontic
product made of ceramic in a layer-by-layer technique that involve placing a
binder between the layers, then removing the binder and sintering. (Id. at 5.)
The Examiner finds that Vickery discloses making a dental appliance by
depositing a mixture of a metal powder and a binder. (Id. at 6.) The
Examiner concludes that it would have been obvious to modify the method
suggested by the combination of Andreiko and Brodkin "to include the
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Appeal2014-007476
Application 13/329,613
method step of Vickery, in order to provide a well known means of
providing a dental article with fluidity and strength. Furthermore, mixing
both elements together would be more efficient then depositing on[ e] at a
time as taught by Brodkin." (Id.)
Appellants argue that
Brodkin describes depositing an unformed layer of loose powder
and then selectively producing jets of a liquid binder at selected
regions of that loose powder layer. The presence of loose
powder, that is, powder left unbound by liquid binder,
temporarily supports the formation of the restoration. The
selectively bound areas ultimately constitute the restoration,
which is produced when the unbound powder is removed. . . .
Thus, it is the combination of loose powder and selectively
bound powder that ultimately forms the restoration.
(Appeal Br. 14.)
Appellants argue that, by contrast, the
putty-like mass of Vickery appears to be self-supporting and thus
does not need any portion of unbound, loose powder for support.
These different functions reasonably suggest that the putty-like
mass of Vickery is not substitutable for either the powder or the
binder or both the powder and the binder of Brodkin.
(Id. at 15.)
(Id.)
Appellants also argue that
the process described in Brodkin is not compatible with the
putty-like mass of Vickery. It is unknown from the record how
substituting the putty-like mass of Vickery for the loose powder
is even possible in the process of Brodkin because it is unknown
whether the print head in Brodkin could even dispense or be
made to dispense a putty-like mass.
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Application 13/329,613
We agree with Appellants that the Examiner has not shown that the
claimed process would have been obvious based on Andreiko, Brodkin, and
Vickery. Andreiko discloses a method of making an orthodontic bracket by,
among other methods, stereo lithography. ( Andreiko 3 2: 44--51.)
Brodkin states that "dimensional printing and fused deposition
modeling are preferred because both ceramic and resin-based composite
dental restorations can be produced in solid (e.g. denture teeth) or
multilayered form (e.g. crowns). Three-dimensional printing is most
preferred for mass-production." (Brodkin 2:33-36.) Brodkin describes a
method of using a three-dimensional printing apparatus having a powder
distribution head and a binder deposition head. (Id. at 4: 12-16.) "The
powder material is dispensed in a confined region as the dispensing head is
moved in discrete steps." (Id. at 4: 17-19.)
"An ink jet print head ... is also driven ... to follow the motion of
the powder head and to selectively produce jets of a liquid binder material at
selected regions thereby causing the powdered material at such regions to
become bonded." (Id. at 4:28-33.) "The powder/binder layer forming
process is repeated so as to build up the restoration, layer by layer." (Id. at
4:38-39.) "[O]nce the desired final shaped configuration is achieved and the
layering process is complete, ... the loose, unbounded [sic] powder particles
are removed using a suitable technique, such as ultrasonic cleaning, to leave
a finished restoration. (Id. at 4:41--49.)
Brodkin states that "[ w ]hile the binder solution must have a relatively
high binder content, the viscosity thereof should be low enough so as to be
able to flow through the printing head for deposit into the powder material."
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Application 13/329,613
(Id. at 5:4--8.) Thus, Brodkin discloses a method in which a layer of a
powdered material, which can be metal (id. at 5:51-52), is deposited and
then a layer of a liquid binder is applied to selected regions of the powder.
Brodkin does not disclose depositing layers of a mixture of powder and
binder. The Examiner cites Vickery as disclosing this limitation.
Vickery describes a method of making metallic dental prostheses in
which a "powdered metal is first mixed with a binder to form a putty or
paste, the paste thereafter formed into the desired shape, and the shape then
heated whereby the binder is driven off." (Vickery 1:27-28, 61---64.) More
specifically, "a putty-like mass is provided comprising very finely divided
metallic particles mixed with a binder which, while permitting a degree of
fluidity, also is capable of providing strength of construction up to the point
at which sintering and bonding of the particles takes place." (Id. at 1: 66-
71.) "The putty is carved or sculptured with an appropriate instrument to the
required contours," then dried and heated to drive off the binder and sinter
the metallic particles. (Id. at 2:3-9.)
We agree with Appellants that the Examiner has not provided an
adequate basis for concluding that it would have been obvious to modify
Brodkin's method for production of dental restorations by using a mixture of
metal powder and binder, such as the putty-like material of Vickery.
Brodkin's method is based on depositing a layer of metal powder and then
spraying a liquid binder from an ink-jet print head onto selected parts of the
powder layer. Brodkin expressly cautions that the liquid binder must have a
"viscosity ... low enough so as to be able to flow through the printing head
for deposit into the powder material." (Brodkin 5:6-8.)
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Application 13/329,613
The Examiner has not pointed to evidence showing that a putty-like
material would have a viscosity low enough to flow through an ink-jet print
head, or evidence showing that it would have been obvious to modify
Brodkin's dental restoration method to accommodate a material with a
viscosity comparable to that of Vickery's putty-like material. The Examiner
responds that Appellants "ha[ ve] not provided any evidence to how the
mixture of Vickery cannot be done in the process of Brodkin." (Ans. 7.)
However, that evidence is provided by Brodkin itself, in its guidance
regarding the viscosity required for a binder to be used in its process.
The Examiner also finds that "after further review, the limitation of a
metal powder as a binder is already disclosed by Brodkin (column 5, lines
45-54)." (Id. at 7-8.) Appellants argue that Brodkin's disclosure of a
"metallic binder" refers to a "a binder usable with a metal powder and
deposited in accordance with the separate application of powder and binder
per Brodkin." (Reply Br. 8.)
We agree with Appellants that Brodkin's description of its process
focuses on liquid binders but, even if Brodkin were read to describe the use
of a powdered binder in its process, the resulting process would still involve
the sequential application of metal powder and binder, rather than
simultaneous deposit as required by the claims on appeal.
"An examiner bears the initial burden of presenting a prima facie case
of obviousness." In re Huai-Hung Kao, 639 F.3d 1057, 1066 (Fed. Cir.
2011 ). Because that burden has not been carried here, we reverse the
rejection of claims 1-7 and 9 under 35 U.S.C. § 103(a).
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Application 13/329,613
SUMMARY
We reverse the rejection of claims 10-14 and 18-22 under 35 U.S.C.
§ 112, first paragraph.
We reverse the rejection of claims 1-7 and 9 under 35 U.S.C.
§ 103(a).
The claims remain rejected for obviousness-type double patenting
because that rejection was not appealed.
REVERSED
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