Ex Parte Cousley

Patent Trial and Appeal Board

Jun 7, 2017

12298408 (P.T.A.B. Jun. 7, 2017)

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;
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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
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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
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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:
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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:
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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
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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,
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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.
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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
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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.
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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.
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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
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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
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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
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