Ex Parte Chun et al

Patent Trial and Appeal BoardDec 17, 2018

12878039 (P.T.A.B. Dec. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 12/878,039 7590 Ashok Tamma 36 Greenleigh Drive Sewell, NJ 08080 FILING DATE FIRST NAMED INVENTOR 09/09/2010 James Jiwen Chun 12/17/2018 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. Chun_06NP 4268 EXAMINER APONTE, MIRA YDA ARLENE ART UNIT PAPER NUMBER 3772 MAIL DATE DELIVERY MODE 12/17/2018 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAMES JIWEN CHUN, ANGELA SOYOUNG CHUN, ANDREW YOUNGHO CHUN, and JENNIFER MISEONG CHUN Appeal2017-011737 Application 12/878,039 1 Technology Center 3700 Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and PHILIP J. HOFFMANN, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. Â§ 134(a), Appellants appeal from the Examiner's rejection of claims 1, 4, 6-10, 30, 32, and 33. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. 1 According to Appellants, the real party in interest is Hankookin, LLC. Appeal Br. 3. Appeal 2017-011737 Application 12/878,039 According to Appellants, the invention relates to "a method and system for fabricating and installing a dental implant that allows preservation of the supporting periodontal tissue and the supporting bone while maximizing retention and stability of the dental implant." Spec. 1, 11. 17-20. Claims 1, 30, 32, and 33 are the independent claims on appeal. Below, we reproduce claim 1 as illustrative of the appealed claims. 1. A dental implant, comprising: an implant member adapted for insertion into a periodontal bone socket of an extracted natural tooth, said implant member comprising a coronal section and a root section comprising a coronal end and a conical apical end, said coronal section axially extending from said coronal end of said root section, said implant member further comprising: a plurality of concentric retentive grooves disposed along an outer surface of a mid-portion of said root section, wherein adjacent retentive grooves define ridges formed therebetween; a plurality of hook-shaped micro-extensions integrally formed on a circumference of each of said ridges in said mid-portion of said root section, wherein each of said hook-shaped micro-extensions are bent upwards, wherein each of said hook-shaped micro-extensions are about 300 microns in length, about 100 microns in width, and about 60 microns in height, and wherein said hook-shaped micro- extensions are configured to impede coronal movement of an inserted implant member within said periodontal bone socket; an anchoring assembly positioned within a hollow axial cavity of said implant member, said anchoring assembly comprising: a fastening element engaged with said implant member, said fastening element positioned within said hollow axial cavity, 2 Appeal 2017-011737 Application 12/878,039 wherein said fastening element comprises an apical section comprising a conical shaft and a truncated end, wherein said fastening element is threaded to screwably engage said hollow axial cavity of said implant member, wherein said fastening element further comprises a coronal screw head for one of tightening and releasing said fastening element within said hollow axial cavity, and wherein said fastening element apically advances within said hollow axial cavity when said fastening element is tightened by turning said coronal screw head; and one or more radial and equidistant cylindrical members positioned in said mid-portion of said root section, wherein said mid-portion of said root section of said implant member further comprises one or more through-holes for radially and forcibly sliding said cylindrical members through said one or more through-holes, wherein each of said cylindrical members comprises a first end that interfaces with said conical shaft of said fastening element, and a second end that abuts against an inner wall of said periodontal bone socket without penetrating said inner wall of said periodontal bone socket, wherein said conical shaft of said fastening element radially and outwardly pushes said cylindrical members through said through- holes when said fastening element is apically advanced within said hollow axial cavity, and wherein said second end of each of said cylindrical members evenly presses against said inner wall of said periodontal bone socket to generate an anchoring force to anchor said implant member within said periodontal bone socket. 3 Appeal 2017-011737 Application 12/878,039 REJECTIONS AND PRIOR ART The Examiner rejects the claims as follows 2,3: I. Claims 1 and 30 under 35 U.S.C. Â§ 112, first paragraph, as failing to comply with the written-description requirement; II. Claims 1, 6, 8, 10, and 30 under 35 U.S.C. Â§ I03(a) as unpatentable over Kiernan, Jr. (US 2,857,670, iss. Oct. 28, 1958) ("Kiernan"), Sapian (US 5,890,902, iss. Apr. 6, 1999), Ashuckian (US 2,721,387, iss. Oct. 25, 1955), and Wahlstrom et al. (US 7,463,933 B2, iss. Dec. 9, 2008) ("Wahlstrom"); III. Claim 4 under 35 U.S.C. Â§ I03(a) as unpatentable over Kiernan, Sapian, Ashuckian, Wahlstrom, and Rybicki et al. (US 4,011,602, iss. Mar. 15, 1977) ("Rybicki"); IV. Claim 7 under 35 U.S.C. Â§ I03(a) as unpatentable over Kiernan, Sapian, Ashuckian, Wahlstrom, and Soler et al. (US 7,827,694 B2, iss. Nov. 9, 2010) ("Soler"); V. Claim 9 under 35 U.S.C. Â§ I03(a) as unpatentable over Kiernan, Sapian, Ashuckian, Wahlstrom, and Liebschner (US 7,361,369 B2, iss. Apr. 22, 2008); VI. Claim 32 under 35 U.S.C. Â§ I03(a) as unpatentable over Rubbert (US 2008/0090207 Al, pub Apr. 17, 2008), Kelly Misch and Hom-Lay Wang (Implant Surgery Complications: 2 Appellants argue (see Appeal Br. 20-22) that the Examiner's errs by objecting to the drawings (see Non-Final Action 2). Appellants may not appeal the objection to the Board, however. See In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002). Instead, the Patent Office may review the objection, if at all, only upon Appellants' filing of a petition. 3 The Examiner withdraws previous written-description and indefiniteness rejections to claim 33. Non-Final Action 3--4; Answer 2. 4 Appeal 2017-011737 Application 12/878,039 Etiology and Treatment, 17 Implant Dentistry 159---68 (2008)) ("Misch"), Kiernan, Mount (US 2007/0264612 Al, pub. Nov. 15, 2007), Ashuckian, Wahlstrom, and Berckmans, III, et al. (US 2008/0286722 Al, pub. Nov. 20, 2008) ("Berckmans"); and VII. Claim 33 under 35 U.S.C. Â§ I03(a) as unpatentable over Rubbert, Sers (US 2008/0287953 Al, pub. Nov. 20, 2008), Berckmans, Kiernan, and Ashuckian. ANALYSIS Reiection I With respect to each of independent claims 1 and 30, the Examiner finds that Appellants' Specification fails to describe the claim recitation "without penetrating said inner wall of said periodontal bone socket" in such a way as to reasonably convey to one skilled in the relevant art that, at the time the application was filed, Appellants had possession of the claimed invention. Non-Final Action 3. Appellants argue that the Examiner errs: F[igure] IF is a schematic drawing showing that when an anchoring force is applied, . . . cylindrical members 102b push ... inner wall 103b of ... periodontal bone socket 103a outwards. . . . Since ... second end 102g of ... cylindrical member 102b is flat, it presses evenly against ... inner wall 103b of ... periodontal bone socket I03a[,] and ... second end 102g of ... cylindrical member 102b does not penetrate into ... inner wall 103b of ... periodontal bone socket 103a. Appeal Br. 21-22 ( emphasis omitted). Based on our review of the record, Appellants' argument is persuasive. Appellants' argument is consistent with their Specification, which describes that "second end 102g of each of the cylindrical 5 Appeal 2017-011737 Application 12/878,039 members 102b abuts and evenly presses against ... periodontal bone surface 103b." Spec. 10, 11. 14--21 (emphases omitted); see also id. at 12, 11. 1-3 ("second end 102g of three equidistant cylindrical members 102b ... abut against and substantially uniformly contact ... periodontal bone surface 103b on ... periodontal bone structure 103c.") (emphases omitted). Appellants' Specification does not define "penetrate." Thus, we rely on the ordinary and customary meaning, which is "to pass into or through." MERRIAM-WEBSTER ONLINE DICTIONARY (last retrieved from https://www.merriam-webster.com/dictionary/penetrate on December 12, 2018). Because cylindrical member 102b "presses against," "abuts," and "contacts," but does not pass into or through, bone surface 103b, and does not reach bone structure 103c, Appellants had possession of the claim recitation "without penetrating said inner wall of said periodontal bone socket." Thus, we do not sustain the Examiner's written-description rejection of claims 1 and 30. Rei ection II With respect to independent claims 1 and 30, the Examiner finds that Wahlstrom discloses the claimed hook-shaped micro-extension that is about 100 microns in width, citing Wahlstrom's Figure 2A and column 3, lines 3-13. Non-Final Action 14. Appellants argue that the Examiner's finding is erroneous, because Wahlstrom does not disclose the claimed width. Appeal Br. 27. 6 Appeal 2017-011737 Application 12/878,039 Based on our review of the record, Appellants' argument is persuasive. Wahlstrom's Figure 2A is not dimensioned. See Wahlstrom Fig. 2A. Wahlstrom discusses, in Figure 2A's description, that each of the plurality of projections 385 include[s] a length Land extend[ s] laterally from . . . lead body 3 12 toward ... proximal end 321 at ... angle 33, which, according to some embodiments, is less than approximately 45 degrees. According to this embodiment of the present invention and various other embodiments illustrated herein[,] length L is greater than approximately 100 microns. Id. at col. 3, lines 4--13 (emphases omitted). Thus, although Wahlstrom, explicitly discloses certain dimensions including length and height, Wahlstrom does not explicitly disclose width. Because the drawings are dimensionless, and no width is stated explicitly, the Examiner's finding that Wahlstrom discloses the claimed width is based solely on speculation. By way of further example, although the Examiner calculates the width in Wahlstrom, the calculation is based on multiple assumptions, and, therefore, the calculation does not have an adequate factual basis. See, e.g., Answer 7- 8. For these reasons, the Examiner has not met the burden to provide a factual basis for the finding upon which the rejection rests. See In re Warner, 379 F.2d 1011, 1016 (CCPA 1967). Consequently, we do not sustain the Examiner's obviousness rejection of independent claims 1 and 30. Further, we do not sustain the Examiner's obviousness rejection of claims 6, 8, and 10 that depend from claim 1. Reiections III-V Claims 4, 7, and 9 depend from independent claim 1. The Examiner does not rely on either Rybicki, Soler, or Liebschner to remedy the above- 7 Appeal 2017-011737 Application 12/878,039 discussed deficiency in claim 1 's obviousness rejection. Thus, for the same reasons we do not sustain claim 1 's obviousness rejection, we do not sustain the obviousness rejections of claims 4, 7, and 9. Rei ection VI With respect to independent claim 32, the Examiner finds that Wahlstrom discloses the claimed hook-shaped micro-extension about 100 microns in width, citing Wahlstrom's Figure 3 and column 3, lines 3-13. Non-Final Action 23-24. Appellants argue that the Examiner's finding is erroneous, because the width dimension is not disclosed by any reference. Appeal Br. 36. Thus, we do not sustain claim 32's rejection for substantially the same reasons that we do not sustain claim 1 's rejection, as discussed supra. Rei ection VII Independent claim 33 recites, in relevant part, the following: pre-determining an anchoring force for anchoring said designed dental implant to an inner wall of said periodontal socket, by said digital simulator, based on said captured three dimensional X-ray images; [ and] anchoring said inserted dental implant within said periodontal bone socket, wherein a plurality of radial and equidistant cylindrical members disposed in said mid-portion of said root section of said fabricated dental implant abut and evenly press against said inner wall of said periodontal bone socket, wherein said anchoring force between said plurality of radial and equidistant cylindrical members and said inner wall of said periodontal bone socket is set to said predetermined anchoring force. 8 Appeal 2017-011737 Application 12/878,039 Appellants argue that the Examiner's obviousness rejection of claim 33 is in error because no reference discloses either pre-determining the anchoring force, or setting the implant using the pre-determined anchoring force value, as claimed. Appeal Br. 34--35. Based on our review, the Examiner does not support adequately that any reference discloses these claim recitations. More specifically, the Examiner addresses neither pre-determining of a setting force, nor the use of that determined force when setting an implant, as claimed, in the Non-Final Action or Answer. For example, after finding that Rubbert and Sers do not disclose these claim recitations (see, e.g., Non- Final Action 17-19), the Examiner relies on Berckmans to disclose "determining the stress and strain on the interface of [a] 3D virtual bone and [an] implant" (id. at 19). It is not apparent, however, that stress and strain determinations disclose or otherwise relate to the claimed anchoring force. Further, the Examiner does not respond specifically to Appellants' argument related to the anchoring force. See Appeal Br. 34--35; see Answer 10-12. Thus, we do not sustain the Examiner's obviousness rejection of claim 33. DECISION We REVERSE the Examiner's rejection of claims 1 and 30 under 35 U.S.C. Â§ 112, first paragraph. 9 Appeal 2017-011737 Application 12/878,039 We REVERSE the Examiner's obviousness rejections of claims 1, 4, 6-10, 30, 32, and 33. REVERSED 10