Ex Parte CousleyDownload PDFPatent Trial and Appeal BoardJun 7, 201712298408 (P.T.A.B. Jun. 7, 2017) Copy Citation 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. 12/298,408 05/12/2009 Richard Cousley 5941-2 7760 40777 7590 06/09/2017 EDWARD K WFT fTTTT EXAMINER IP&L Solutions SAUNDERS, MATTHEW P 2308 Harrier Run Naples, EL 34105 ART UNIT PAPER NUMBER 3732 NOTIFICATION DATE DELIVERY MODE 06/09/2017 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): welched @ Comcast, net jholme @ impactbt. com debwelchl @comcast.net PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RICHARD COUSLEY1 Appeal 2016-002229 Application 12/298,408 Technology Center 3700 Before JOHN G. NEW, RYAN H. FLAX, and DEVON ZASTROW NEWMAN, Administrative Patent Judges. NEW, Administrative Patent Judge. 1 Appellant states the real parties-in-interest are the inventor and DB Orthodontics Ltd. App. Br. 3. Appeal 2016-002229 Application 12/298,408 DECISION ON APPEAL Appellant files this appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 2, 3, 6, 7, 9, 10, 14, 15, 44, and 46—56, which stand rejected as unpatentable under 35 U.S.C. § 103(a) as being obvious over the combination of Bumann et al. (US 2004/0152035 Al, August 5, 2004) (“Bumann”) and Schlapfer et al. (US 5,534,001, July 9, 1996) (“Schlapfer”). Claims 2, 3, 6, 7, 9, 10, 14, 15, 44, and 46—56 also stand rejected as unpatentable under 35 U.S.C. § 103(a) as being obvious over the combination of Schlapfer and Park et al. (US 2002/0182560 Al, December 5, 2002) (“Park”). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. NATURE OF THE CLAIMED INVENTION Appellant’s invention is directed to an orthodontic implant device. Abstract. REPRESENTATIVE CLAIM Claim 44 is the sole independent claim and is representative of the claims on appeal. Claim 44 recites: Claim 44. An orthodontic implant device, said device having a longitudinal axis and including: a head portion having an upper surface, a lower end, and an external edge or external side wall defining the periphery of the head portion; 2 Appeal 2016-002229 Application 12/298,408 engagement means provided on or associated with the head portion to allow an insertion instrument to engage therewith in use; and a body portion extending from the lower end of the head portion: wherein: one or more slots are present in the upper surface of the head portion with the one or more slots in the form of a channel with an open end along at least a portion of the upper surface of the head portion, a base and channel side walls; a lateral recess or undercut is provided in at least one of the channel side walls along the length of the channel side wall substantially internally of the head portion, said recess or undercut being of such dimension as will allow a wire, tie, band, rubber or elastic piece, ligature or part of another orthodontic appliance to be located therein; and optionally, at least one further lateral recess or undercut is provided in at least a part of the external edge or side wall of the head portion. App. Br. 21. A. Rejection of claims 2, 3, 6, 7, 9, 10, 14, 15, 44, and 46—56 under 35 U.S.C. $103 Issue The Examiner finds both Bumann and Park teach all of the limitations of the claims, except the slots in the upper head surface (Fig. 1 elements 22 and 24) having an undercut/recess which is coplanar with the external edge undercut. Final Act. 3, 6. The Examiner finds Schlapfer teaches a bone implant device, including a head portion (Fig. 8 element 3) having an 3 Appeal 2016-002229 Application 12/298,408 attachment/engagement means in the form of a slot defined in the upper surface of the head portion, (Fig. 8 element 7). Id. The Examiner finds the slot is in the form of a channel with substantially vertical walls, a base, an open top, and the attachment means below the upper surface of the head being a channel substantially perpendicular/lateral to the vertical wall and the recess/undercut being substantially internally of the head portion with the channel recesses being coplanar with the bottom of the slot. Id. (citing Schlapfer Fig. 8 elements 7, 8; see also col. 3,11. 1—10). The Examiner concludes it would have been obvious to a person of ordinary skill in the art to incorporate the undercut/recess located at the bottom of the slot, as taught by Schlapfer, into the bottom of the slots taught by Bumann or Park for the purpose of providing better manipulation control of the implant device as taught by Schlapfer. Final Act. 4, 6 (citing Schlapfer col. 1 11. 24—32). Appellant concedes that the implants taught by Bumann and Park generally correspond to the structures asserted by the Examiner and are generally similar to those of independent claim 44. App. Br. 9. However, Appellant asserts that neither reference teaches one or more recesses or undercuts in the one or more slots or channels in the head of Appellant’s claimed implant. Id. Appellant argues that Bumann teaches that the head of its disclosed implant has one or two channels, through which one or two orthodontic wires pass and which are then held in place by use of a curable composition, preferably a light-curable material. App Br. 9. The curable composition, argues Appellant, encapsulates the head, including and embedding the wire(s) and also the circumferential recess (28) in the lower portion of the 4 Appeal 2016-002229 Application 12/298,408 head, thereby locking the encapsulating material to the head of the implant. Id. Appellant contends that, contrary to the Examiner’s findings, (28) is not a point of attachment for the wires or other orthodontia elements, rather, the recess serves solely to secure or anchor the cured composition to the implant so that the wires do not readily fall off or pull off. Id. at 9-10. With respect to the Examiner’s findings as to why a person of ordinary skill would be motivated to combine the references, Appellant argues to note that both Bumann and Appellant’s claimed invention employs an implant having a hexagonal head and an corresponding hex screwdriver, whereas Park employs a traditional flathead or Phillips screwdriver. Ans. 10. Presumably, Appellant suggests, neither Baumann nor Park is concerned with the alleged lack of control allegedly improved by the modification of these prior art references as proposed the Examiner. Id. We are not persuaded by Appellant’s arguments, at least with respect to Park. The Examiner acknowledges that neither Bumann nor Park teaches the limitation reciting: [A] lateral recess or undercut is provided in at least one of the channel side walls along the length of the channel side wall substantially internally of the head portion, said recess or undercut being of such dimension as will allow a wire, tie, band, rubber or elastic piece, ligature or part of another orthodontic appliance to be located therein. We agree with the Examiner that neither reference teaches this limitation. Appellant’s Specification provides an illustration of this limitation at Figure la, which is reproduced below: 5 Appeal 2016-002229 Application 12/298,408 IS 21 W 18 6 \ V A ,s rm -~8 —12 ,~10 i ,-■28 FIG, la Figure la of Appellant’s Specification depicts a first side view of an orthodontic implant according to one embodiment of the present invention The lateral recess or undercut recited in the limitation running along the length of the channel side wall and substantially internally of the head portion is indicated in Figure la by 21. See Spec. 12—13; see also Fig. 4a. Such a recess or undercut running along the length of the channel side wall is missing from the teachings of Bumann and Park, as depicted in their Figures 1 and 4, respectively: 6 Appeal 2016-002229 Application 12/298,408 Figure 1 of Bumann (left) and Figure 4 of Park (right) depict side views of representative embodiments of the respective inventions The Examiner therefore relies upon the teachings of Schlapfer as supplying this limitation and, particularly, Figure 8, which is reproduced below: Figure 8 of Schlapfer, as annotated by the Examiner, depicts an embodiment of the fixation element between socket and driver. See Final Act. 4. The Examiner finds the lateral undercut or recess of slot 7 corresponds to the limitation of claim 44 requiring a lateral recess or 7 Appeal 2016-002229 Application 12/298,408 undercut running along the length of the channel side wall and substantially internally of the head. Final Act. 4. And, indeed, Schlapfer teaches: [S]lot 7 of fixation element 10 is formed as a T unit. T unit 59 is introduced laterally into slot 7 for coupling and pin 52 is extended downward to prevent sliding out from slot 7. This design principle can also be inverted by forming upper section 3 at its upper end 6 as a T unit and manipulation device 20 instead as a horseshoe. Schlapfer col. 3,11. 4—10. We agree with the Examiner that Schlapfer thus teaches the physical characteristics recited by the disputed limitation of Appellant’s claimed invention. However, at least with respect to Bumann, we part company with the Examiner’s reasoning regarding the findings as to why a person of ordinary skill would have a reason, or be motivated, to combine the references. Bumann teaches that the groove or recess in the head is for the purpose of receiving and orthodontial wire or similar tensioning device: The fastening means have at least one elongate recess which is formed on the head and extends substantially transversely or obliquely to a longitudinal axis of the shaft and is open on at least one longitudinal end to receive a section of the at least one tensioning or retaining element. Bumann Abstr. Further: “FIG. 2 depicts the implant 10 with the tensioning or retaining element 20 received in the recess 22, the wire-shaped element 20 being fixed by means of a curing or curable adhesive composition 40, for example a photocurable plastic.” Id. at | 60. Similarly, claim 44 of Bumann, and Appellant’s Specification, are explicit in disclosing that the purpose of the undercuts along the wall of the channel side wall is to: “allow a wire, tie, band, rubber or elastic piece, 8 Appeal 2016-002229 Application 12/298,408 ligature or part of another orthodontic appliance to be located therein.” Claim 44. Similarly, Appellant’s Specification discloses: The base of recesses 21 is substantially continuous with the base of the channel slots. Thus, the recesses 21 and slots form an inverted ‘T’ formation. This provides a shoulder or hook-like portion for engagement of a part of an orthodontic appliance, such as for example a ligature wire, thereto. The recesses 20, and particularly the undercut portion 21, as shown in figure 2, on the interior surfaces of the screw head defining slots 14, 16 increase the ease with which an orthodontic appliance can be directly attached to the screw head without increasing the height profde of the screw head. Thus, the screw head of the present invention can include both external and internal recesses or undercuts .... Further attachment means can be provided with the screw head, such as one or more channels passing through middle section 22 of screw head 4 and/ or the like. Spec. 12—13 (emphases added). However, Schlapfer is directed to an: [OJsteosynthetic fixation element (10) in the form of a pedicular screw or a vertebral column hook ... [in which t]he upper section (3) is provided at its upper end (6) or at the inserted lock part (30; 50) with a rotationally-stable, releasable connecting mechanism (4, 5, 7; 11, 12) for positive and non-positive temporary acceptance of a manipulation device (20). Schlapfer Abstr. More particularly, Schlapfer teaches that: The invention is directed to the task of creating a fixation element and a device for the manipulation of this osteosynthetic fixation element, which, on the one hand, permits powerful intrasurgical manipulation of the implant and, depending on the embodiment of the implant, offers the opportunity to tighten the fixation element in its position relative to the bone, or to tighten it to other fixation elements, simultaneously with the manipulative process. 9 Appeal 2016-002229 Application 12/298,408 And, further: The advantages achieved through the invention are to be seen essentially in the fact that it facilitates a powerful insertion and removal motion of the pedicular screws into the vertebral column.... When the pedicular screw is inserted into the bone or the vertebral column hooks are hung, the manipulation device can be used to exert forces and torque via the screws (or the hooks, respectively) on the vertebral column and thus can manipulate deformities. Schlapfer col. 1,11. 12—47. With respect to Figure 8, Schlapfer teaches: “FIG. 8 shows an additional variation on the coupling principle between fixation element 10 and manipulation device 20, where the end of pin 26 of manipulation device 20 is formed as, T unit 59 with pin 52.” Id. at col. 3,11. 1^1. In other words, the physical features of the device disclosed by Schlapfer, which we have described supra, are related, not to the attachment of orthodontic devices to the head of the insert, but rather to the manipulation of the screw device via a manipulation device designed to “exert forces and torque,” e.g., screwing and unscrewing the device into bone. See also, e.g., Schlapfer Figs. 4—5. Indeed, the Examiner acknowledges as much. See Final Act. 4. However, the undercuts or recesses claimed by Appellant, and disclosed by the Specification, play no role in such manipulation, as we have explained, but, rather, are for the attachment or engagement of an orthodontic appliance to the head of the device. Furthermore, Appellant’s Specification, as well as Bumann, teach the disclosed devices are screwed into the bone by other means, i.e., via a hex hexagonal or pentagonal region 10 Appeal 2016-002229 Application 12/298,408 beneath the devices head which engages a socket driver designed to engage that region. See, e.g., Spec. 14 (“The pentagonal outer surface of the head and/ or neck portion enables engagement with an insertion tool [e.g., a screw driver, see Spec. 16] therewith”); see also Bumann 57: (“The undercut 28 is followed moreover by a polygon 30, in the exemplary embodiment shown a hexagon, to fit a corresponding tool, for example a wrench. The head 14 additionally has a base section 32 from which the shaft 12 extends away.”). In short, the physical portions of the device disclosed by Schlapfer, and cited by the Examiner, are directed to driving or manipulating the device into or within bone, whereas the undercuts or recesses claimed by Appellant serve an entirely different purpose and are unrelated to the purpose of the elements of Schlapfer relied upon by the Examiner. We conclude the Examiner has not articulated a sufficient nexus between the teachings and suggestions of Bumann and those of Schlapfer, related to the respective functions of the teachings of the prior art, to provide a sufficient rationale or motivation as to why a person of ordinary skill in the art would have combined the references to arrive at Appellant’s claimed invention. See KSRInt’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). We consequently reverse the Examiner’s rejection of the claims over Bumann and Schlapfer. Park, however, teaches that: A manipulating portion 33c is a manipulating groove formed on the upper surface of the flat portion 32 between brackets 33<2. The brackets 33<2 are formed oppositely at a predetermined interval. The manipulating groove is used to be inserted with a dental tool (such as a straight screwdriver and a cross screwdriver) and to implant the implant 30 into the dentine of teeth. 11 Appeal 2016-002229 Application 12/298,408 Park 121; see also Fig. 3. Park thus expressly teaches that a manipulating tool (i.e., a flat- or Phillips-head style screwdriver) can be inserted into the slot on the head of the device as a means of screwing in the device into the substrate. We therefore agree with the Examiner that a person of ordinary skill would have reason and motivation to combine the manipulating groove taught by Park with the undercut/recess(es) taught by Schlapfer as providing a more efficient and effective means of manipulating and controlling the manipulation of the device. Thus, we find the skilled artisan would have been motivated to modify the device of Park to include the features of Schlapfer, as proposed by the Examiner. We consequently affirm the Examiner’s rejection of the claims as being obvious over the combination of Park and Schlapfer. B. Rejection of claims 50—53 Appellant additionally argues these claims separately. The Examiner finds that the incorporation of the lateral recess of Schlapfer, located co- planar with the lower surface of the slot, into the bottom of the slots of Park would cause the recess to be co-planar, contiguous with, and intersecting of the external recess around the peripheral of head and also contiguous and intersecting with the slot. Final Act. 7. Appellant argues: The further limitations of claims 50—53 provide added benefits depending upon the type of orthodontic appliance being connected or affixed to the claimed implant. For example, having a recess whose base is lower than the base of the channel or slot provides added protection against the orthodontic element prematurely releasing from the implant should tension be lost. 12 Appeal 2016-002229 Application 12/298,408 On the other hand, those instances where the two are coplanar are beneficial in those instances where the orthodontic element is rigid and not easily contorted or bent to allow anything but lying fiat on the base of the recess and channel. Finally, where the orthodontic element has a chain link or loop that is to be placed over the posts or quadrants of the implant head, the continuous recess provides added security that the same will not slip up over an outside edge and, thereby allow for the same to disengage from the recess in the channel. App. Br. 15. Appellant discourses upon the perceived advantages provided by the limitations recited in claims 50—53, however, Appellant advances no argument, save those made and presented with respect to the other claims. Appellant makes no argument as to why a person of ordinary skill in the art would not have found the claims obvious over the prior art as cited by the Examiner or why the Examiner erred in finding the claims to be prima facie obvious over the cited references. Furthermore, Appellant adduces no evidence of record to support Appellant’s assertions of the putative advantages of the limitations recited in claims 50—53. “Attorneys’ argument is no substitute for evidence.” Johnston v. IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989). We adopt the Examiner’s findings and conclusions with respect to claims 50-53 and, because Appellant provides neither evidence nor argument with respect to why the claims are not obvious over the combined cited prior art, we affirm the Examiner’s rejection of the claims. C. Unexpected Results 13 Appeal 2016-002229 Application 12/298,408 Appellant next argues that the claimed invention provides unexpected benefits and results. App. Br. 16. Specifically Appellant argues that, whereas in Bumann and Park the lip or overhang of the recess is what secures the curable composition or ligatures to the head of the implant, in the claimed invention, the internal recess or undercut advantageously provides that function. Id. Appellant further argues that, in contrast to the inventions taught by Bumann and Park, both of which require the need for an additional element for affixing the one to the other as well as at least two steps for accomplishing the fixture, Appellant’s invention does not require anything more than the orthodontic element and a single step for attaching the orthodontic element to the implant. App. Br. 16. Appellant argues that the claimed invention may exhibit certain advantages over the cited prior art, however, Appellant fails to adduce any evidence of record as to why a person of ordinary skill in the art at the time of invention would have found Appellant’s invention to be unexpected or surprising when compared to the nearest prior art. See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“[W]hen unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art”). The Examiner having concluded that claims are obvious over the combination of Park and Schlapfer, the burden shifts to Appellant to produce evidence as to why the combined teachings of the reference would have unexpected or surprising properties. Appellant produces no such evidence; indeed, the arguments advanced by Appellant, although unsupported by evidence, point to precisely the advantages that a person of ordinary skill would expect from 14 Appeal 2016-002229 Application 12/298,408 combining the references and therefore speak directly to why a person of ordinary skill in the art would be motivated to combine the references. Consequently, we are not persuaded by Appellant’s arguments, and we affirm the Examiner’s rejection of the claims. DECISION The Examiner’s rejection of claims 2, 3, 6, 7, 9, 10, 14, 15, 44, and 46—56 as unpatentable under 35 U.S.C. § 103(a) is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 15 Copy with citationCopy as parenthetical citation