Ex Parte Chapoulaud et al

Patent Trial and Appeal Board

Nov 30, 2012

09941151 (P.T.A.B. Nov. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte ERIC CHAPOULAUD, CRAIG A. ANDREIKO, and
MARK A. PAYNE
__________

Appeal 2011-005333
Application 09/941,151
Technology Center 3700
__________

Before TONI R. SCHEINER, LORA M. GREEN, and ULRIKE W. JENKS,
Administrative Patent Judges.

JENKS, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 involving claims
directed to a method of providing a custom orthodontic appliance. The
Examiner has rejected the claims as obvious. We have jurisdiction under 35
U.S.C. § 6(b). We affirm.
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STATEMENT OF THE CASE
The invention is directed to the production of an orthodontic device
and “provide[s] a practical, reliable and efficient custom appliance designing
and manufacturing system and to provide a method of designing custom
orthodontic appliances and treating patients therewith.” (Spec. 2, ll. 16-18.)
The Specification describes a method which “apportion[s] tasks
involved in the design and manufacture of custom appliances most
efficiently between orthodontist and appliance manufacturing facility in
accordance with the scale and other particulars of the individual practitioner
operation, giving the orthodontist optimum control over the final archform
and of the treatment process while increasing the accuracy of treatment and
the efficiency of use of the orthodontist's time and eliminating guesswork
and sources of error.” (Spec. 2, ll. 24-28.)

Claims 120-132 are on appeal, and can be found in Appendix A of the
Appeal Brief (App. Br. 14-19). Claims 120, 124, and 129 are independent
claims. Claim 120 is representative of the claims on appeal, and reads as
follows (emphasis added):

120. A method of providing a custom orthodontic appliance for
repositioning teeth of a patient, the method comprising:
providing for display on a computer screen, with interaction by
an operator, data of images of the teeth of the patient in suggested
post-treatment tooth positions and orientations that are based on three-
dimensional information of the shapes of the teeth of the patient;
receiving feedback information on the suggested post-treatment
positions and orientations from a person, other than the operator, who
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has interactively viewed a display of the provided images on the
computer screen; and
providing a custom orthodontic appliance configured to
reposition teeth of the patient based on the suggested tooth positions
and orientations in accordance with the feed back information.

The following grounds of rejection are before us for review:
The Examiner has rejected claims 120-132 under 35 U.S.C. § 103(a)
as unpatentable over Chishti1 in view of Hultgren2 and further in view of
Peltz.3 As Appellants do not argue the claims separately, we focus our
analysis on claim 120, and claims 121-132 fall with that claim. 37 C.F.R.
§ 41.37 (c)(1)(vii).
The Examiner has rejected claims 120-132 under 35 U.S.C. § 103(a)
as unpatentable over Chishti in view of Lehmann.4

ISSUE
The Examiner takes the position that Chishti disclosed a method for
“repositioning teeth of a patient comprising providing for display on a
computer screen [] with interaction by an operator (user).” (Ans. 5.) The
Examiner finds that the method included “receiving feedback information
from a treating professional providing revised images of the teeth [] and
providing custom appliances based of [sic] the feedback.” (Id.) The
Examiner’s position is that “Hultgren teaches the method comprising the

1 Chishti et al., US 5,975,893, issued Nov. 2, 1999.
2 Hultgren, US 6,217,334 B1, issued Apr. 17, 2001.
3 Peltz, US 6, 205,716 B1, issued Mar. 27, 2001.
4 Lehmann et al., US 6,575,751 B1, issued Jun. 10, 2003.
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step of transmitting the data, the teeth arrangement, to a consulting dentist or
a laboratory (see abstract),” while Peltz provides interactive “communication
between a user and a medical professional” (Id.). The Examiner concludes
that at the time of the claimed invention, it would have been prima facie
obvious to “transmit the treatment plan taught by Chishti to another user to
get a second opinion of a consulting dentist.” (Id. at 9.)
Appellants assert that Chishti “never states that there is a step of
feedback from an orthodontic practitioner, or any other person than the
original operator, or the creation of a 'suggested final tooth position' that
could lead to such feedback.” (App. Br. 8.) “Chishti does not show, after
the development of an image, feedback on the image from a treating
professional or other third party, as claimed herein.” (Id.)
The issue with respect to this rejection is: Does the evidence of
record support the Examiner’s conclusion that communicating an
orthodontic treatment plan with a person other than the operator as recited in
claim 120 is obvious in view of the cited references?

FINDINGS OF FACT
FF1. Chishti disclosed methods that “comprise providing an initial
digital data set, a final digital data set, and producing a plurality of
successive digital data sets representing the target successive tooth
arrangements.” (Chishti col. 6, ll. 52-56.)
FF2. Chishti disclosed that after obtaining a digital data set of
patient’s teeth
[t]he image manipulation can be done entirely subjectively, i.e.
the user may simply reposition teeth in an aesthetically and/or
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therapeutically desired manner based on observation of the image
alone. . . . Once the individual teeth have been repositioned, a final
digital data set representing the desired final tooth arrangement will be
generated and stored.

(Chishti col. 5, ll. 56-67; Ans. 4, 6.)
FF3. Chishti disclosed that
the digital information will be introduced to the computer or
other workstation for manipulation. . . . the user will often follow a
prescription or other written specification provided by the treating
professional. Alternatively, the user may reposition them based on the
visual appearance or using rules and algorithms programmed into the
computer. Once the user is satisfied with the final arrangement, the
final tooth arrangement is incorporated into a final digital data set
(FDDS).

(Chishti col. 10, ll. 29-41; Ans. 4.)
FF4. Chishti disclosed that
the component manipulation software can assist a computer
operator, lacking orthodontic training, by providing feedback
regarding permissible and forbidden manipulations of the teeth. On
the other hand, an orthodontist, having greater skill in intraoral
physiology and teeth-moving dynamics, can simply use the
component identification and manipulation software as a tool and
disable or otherwise ignore the advice.

(Chishti col. 14, ll. 24-34; Ans. 4.)
FF5. Hultgren disclosed a dental scanning method that provides
[a] positive image may be displayed on the video display unit
503 for teaching or educational purposes with the patient. Still
further, the positive information data may be transmitted to a remote
PC 505 for storage, study by a consulting dentist (or physician), or
fabrication of a study cast by fabrication device 507. The fabrication
device 507 may optionally be connected directly to computer 500.
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These and other options may be selected by the computer 500 user via
the input device 506.

(Hultgren col. 7, ll. 48-56; Ans. 5)
FF6. Peltz disclosed a “fully enclosed, secure, movable, interactive
two-way video conferencing shelter.” (Peltz col. 1, ll. 46-48; Ans. 5.) The
“video conferencing booth/kiosk [can] house a person, or persons, to
conduct private and privileged consultation or discussions over two-way
interactive video conferencing from a variety of places.” (Peltz col. 7, ll. 54-
57.) “The shelters are equipped to provide full telecollaboration and
electronic one on one, or face-to-face, or point to point conferences, as well
as multipoint video conferences by connecting to one or to many video
conferencing locations.” (Peltz col. 13, ll. 35-39.) “This larger interative
two-way video conferencing shelter is equipped to provide teleradiology or
still images . . . . [for use in] dental exam[s].” (Peltz col. 15, ll. 61-67.)
FF7. The Specification provides that “[t]he computer first calculates
a suggested posttreatment setup of the teeth, which the orthodontist can
modify and have recalculated until the final treatment positions of the teeth
have been approved by the orthodontist.” (Spec. 3, ll. 27-29.)
FF8. The Specification provides that “an initial proposed treatment
position is calculated by the computer 30b and presented for review by the
orthodontist 14.” (Spec. 13, ll. 19-20.)

PRINCIPLES OF LAW
During prosecution, claims are given the broadest reasonable
construction “in light of the specification as it would be interpreted by one of
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ordinary skill in the art.” In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004). Our reviewing court “has instructed that any such
construction be ‘consistent with the specification, and that claim language
should be read in light of the specification as it would be interpreted by one
of ordinary skill in the art.’” In re Suitco Surface, Inc., 603 F.3d 1255, 1260
(Fed. Cir. 2010).

“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’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
If a person of ordinary skill can implement a predictable variation,
§ 103 likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary skill in
the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application
is beyond his or her skill.
Id. at 417.
It is proper to “take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” Id. at 418. See also id. at
421 (“A person of ordinary skill is also a person of ordinary creativity, not
an automaton.”).

ANALYSIS
Obviousness over Chishti in view of Hultgren and further in view of Peltz
The Examiner takes the position that at the time of the Appellants’
claimed invention it would have been prima facie obvious to modify the
method of Chishti, which teaches the production of an orthodontic
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appliance, to include the step of “transmit[ing] the treatment plan taught by
Chishti to another user to get a second opinion of a consulting dentist”
(Ans. 9).
Appellants assert that “Chishti does not show, after the development
of an image, feedback on the image from a treating professional or other
third party, as claimed herein.” (App. Br. 8.) Appellants assert that Chishti
does not disclose “feedback on suggested post-treatment positions ‘from a
person, other than the operator, who has interactively viewed a display of the
provided images’” (Reply Br. 3), and that “Chishti does not teach a treating
professional moving teeth or doing any other sort of feedback on suggested
final positions” (id. at 4).
Claim 120 requires, in pertinent part, the limitations of “suggested
post-treatment tooth positions,” “feedback,” and “interactively viewed.”
The Specification, however, does not specifically define what is
encompassed by each of these limitations. “The ordinary and customary
meaning of a claim term may be determined by reviewing a variety of
sources. Some of these sources include the claims themselves; dictionaries
and treatises; and the written description, the drawings, and the prosecution
history.” Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294,
1298 (Fed. Cir. 2003) (internal citations omitted).
The limitation of “suggested post-treatment tooth positions” is not
specifically defined by the Specification. Nevertheless, we look to the
Specification for guidance to determine what is encompassed by the claims.
The Specification provides that a computer calculates a suggested tooth
arrangement and an orthodontist has to approve the final position before an
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appliance is manufactured (FFs 7-8). We interpret the “suggested post-
treatment tooth positions” limitation to mean that teeth may assume a variety
of intermediate positions as well as the final position, any of these positions
could initially be calculated by a computer. However, arriving at the final
position for the teeth requires the input of a dental professional (an
orthodontist). There is no indication in the claims or the specification that
the dental professional providing input has to be the orthodontist that
interacts with the patient.
The Specification does not define “feedback.” Thus, we look to a
dictionary to determine the ordinary meaning of feedback.5 Feedback is “the
return of information about the result of a process or activity; an evaluative
response.” In the context of the claims, feedback in interpreted to be any
returned information regarding any intermediate or final tooth position.
The Specification does not define “interactively viewed.” Again we
look to a dictionary to determine the ordinary meaning of interactively

5 Feedback: 1. a. The return of a portion of the output of a process or system
to the input, especially when used to maintain performance or to control a
system or process. b. The portion of the output so returned. c. Sound created
when a transducer such as a microphone or electric guitar picks up sound
from a speaker connected to an amplifier and regenerates it back through the
amplifier. 2. The return of information about the result of a process or
activity; an evaluative response: asked the students for feedback on the new
curriculum. 3. The process by which a system, often biological or ecological,
is modulated, controlled, or changed by the product, output, or response it
produces. (The Free Dictionary, www.thefreedictionay.com/feedback,
accessed 11/9/2012.)
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viewed. The term “interactive”6 or “interactively viewed” is interpreted to
be the act of affecting events on the screen. Affecting events on the screen
could be achieved by directly providing input at a terminal or it can be
achieved by providing instructions verbal or written to someone that can
enter the input at a terminal. Thus, interactively viewed does not require that
the person sitting in front of the screen is the same person that inputs the
instructions at a terminal to alter the image on the screen.
We interpret claim 120 to encompass a method that uses a computer
as directed by an operator, to display an image of a final position of a
patient’s teeth; this image is viewed by a person other than the operator,
preferably a dental professional, and this person may, but does not have to
provide instructions to change something on the image; the appliance is
produced according to the instructions received.
We have considered the arguments presented in the Appeal Brief,
Reply Brief and those presented during oral arguments on November 9,
2012. We find the Examiner has the better position. Applying KSR standard
of obviousness to the facts, we agree with the Examiner’s conclusion that the
person of ordinary skill would have modified the method of Chishti to
include an interactive step, such as obtaining a second opinion regarding
treatment plans. The Examiner’s reason for combining the references is that

6 Interactive: 1. Acting or capable of acting on each other. 2. Computer
Science Of or relating to a program that responds to user activity. 3. Of,
relating to, or being a form of television entertainment in which the signal
activates electronic apparatus in the viewer's home or the viewer uses the
apparatus to affect events on the screen, or both. (The Free Dictionary,
www.thefreedictionay.com/interactive, accessed 11/9/2012.)

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it would provide “immediate feedback from a specialist so a[s] to develop a
better treatment plan for the patient.” (Ans. 10.) Such a combination is a
“predictable use of prior art elements according to their established
functions.” KSR, 550 U.S. at 417.
Appellants assert that “Chishti does not show, after the development
of an image, feedback on the image from a treating professional or other
third party, as claimed herein.” (App. Br. 8.) We are not persuaded by this
argument. We find that claim 120 does not require that the feedback has to
come from a treating professional. All that is required by the claim is that
returned information is given by “a person, other than the operator.” Chishti
disclosed that “software can assist a computer operator, a person without
orthodontic training” (FF4), to come up with a tooth arrangement, but an
orthodontist “having greater skill in intraoral physiology and teeth-moving
dynamics” can override the software suggestions (FF4). Chishti uses the
generic term “user” throughout most of the disclosure; however, Chishti
acknowledges different levels of skill for the user (FF4). Chishti disclosed
that an orthodontist or computer operator can manipulate images on the
screen. This manual manipulation process affects events on a screen, so it is
visually interactive, and provides returned information, feedback, to change
the images. (FFs 2-4.) Thus, Chishti infers that the person scanning and
digitizing the dental mold is different from the person making the manual
adjustments to the tooth positions to arrive at an orthodontic appliance, and
at times that person is an orthodontist. (FF4.) “A person of ordinary skill is
also a person of ordinary creativity, not an automaton.” KSR, 550 at 421.
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Appellants assert that Chishti’s software does not meet the limitation
of “providing feedback” as recited in the presently claimed invention (Reply.
Br. 1). We are not persuaded by this argument. Chishti disclosed that the
positioning of the teeth can be done subjectively by the user to arrive at an
“aesthetically and/or therapeutically desired manner based on observation of
the image alone” (FF2). This manual manipulation, which is based on the
observation of the image, infers there is an immediate feedback from the
user based on the observed image (FF2). Additionally, the manipulation is
performed on an image that falls within the limitation of a “suggested post-
treatment tooth positions,” because each manipulation would be on an
intermediate image and would advance the image to the final position.
The Examiner combines Chishti with Hultgren to arrive at remote
transmission of an image. According to the Examiner, the “remote
transmission [of Hultgren] obviously teaches that the operator doing the
scanning is a different person than the dentist.” (Ans. 5.) Appellants take the
position that the combination with Hultgrin “would inspire no change to the
Chishti process, other than that a plaster cast might be digitized remotely by
the orthodontist's office, rather than mailed. The Examiner also cites Peltz
for teaching ‘interaction communication between a user and a medical
professional.’” (App. Br. 12.)
We are not persuaded by Appellants’ arguments. “Non-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references. . . .
[The reference] must be read, not in isolation, but for what it fairly teaches
in combination with the prior art as a whole.” In re Merck & Co., 800 F.2d
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1091, 1097(Fed. Cir. 1986). Here, Hultgren’s process specifically discloses
obtaining a second opinion because images can be used for “study by a
consulting dentist (or physician).” (FF5.) We agree with the Examiner’s
position that “it would have been obvious to one having ordinary skill in the
art to modify the method taught by Chishti with the step of remotely
transmitting the dental models taught by Hultgren in order to provide more
accurate digital images at a remote lab for consultation.” (Ans. 5.)
We conclude that the preponderance of the evidence of record
supports the Examiner’s conclusion that the combination of Chishti,
Hultgren, and Peltz renders obvious the method of claim 120. We thus,
affirm the rejection of claim 120 under 35 U.S.C. § 103(a) as being obvious.
We find that Appellants have not argued the claims separately;
Appellants’ Appeal Brief does no more than recite the limitations of the
independent claims 120, 124 and 129. (App. Br. 6-7.) Our reviewing court
has found that “the Board [has] reasonably interpreted Rule 41.37 to require
more substantive arguments in an appeal brief than a mere recitation of the
claim elements and a naked assertion that the corresponding elements were
not found in the prior art.” In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. July
22, 2011).

Obviousness over Chishti in view of Lehmann
Based on the combination of Chishti and Lehmann, the Examiner
concludes, that at the time of the claimed invention, it would have been
prima facie obvious to “receiv[e] feedback, in the form of modifications, to
the treatment plan from someone other than the original treating
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professional.” (Ans. 7.) The Examiner takes the position that it would have
been obvious to “transmit the treatment plan taught by Chishti to another
user to get a second opinion of a consulting dentist.” (Id. at 9.)
Appellants assert that that “Lehmann has an effective filing date no
earlier than November 1998, and thus is not prior art to the present claims”
(App. Br. 9), and as such does not constitute prior art under 35 U.S.C.
§ 102(e). Appellants have provided numerous 37 C.F.R. § 1.131 affidavits
and declaration during prosecution.
We do not reach this obviousness rejection based on Chishti and
Lehmann, as we find that Lehmann is cumulative to Chishti, Hultgren and
Peltz, which are discussed above.

SUMMARY
We affirm the rejection of claims 120-132 under 35 U.S.C. §103(a) as
unpatentable over Chishti, Hultgren and Peltz.
We do not reach the obviousness rejection of claims 120-132 under 35
U.S.C. §103(a) based on Chishti and Lehmann.

AFFIRMED

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