Ex Parte Ehrt et al

Patent Trial and Appeal BoardAug 11, 2017

13817526 (P.T.A.B. Aug. 11, 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. 13/817,526 02/18/2013 Roland Ehrt 6121-P50040 1053 13897 7590 Abel Law Group, LLP 8911 N. Capital of Texas Hwy Bldg 4, Suite 4200 Austin, TX 78759 08/15/2017 EXAMINER BOWMAN, ANDREW J ART UNIT PAPER NUMBER 1717 NOTIFICATION DATE DELIVERY MODE 08/15/2017 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): mail @ Abel-IP.com hmuensterer @ abel-ip. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROLAND EHRT and MARTINA JOHANNES Appeal 2016-005883 Application 13/817,526 Technology Center 1700 Before JEFFREY T. SMITH, MARKNAGUMO, and SHELDON M. McGEE, Administrative Patent Judges. Opinion for the Board by McGEE, Administrative Patent Judge. Opinion dissenting by NAGUMO, Administrative Patent Judge. McGEE, Administrative Patent Judge. Appeal 2016-005883 Application 13/817,526 DECISION ON REQUEST FOR REHEARING Appellants timely request1 rehearing under 37 C.F.R. § 41.52 of our Decision2 affirming the Examiner’s final rejection of claims 10—15. We have thoroughly considered Appellants’ request (Req. 1—8) but we deny the requested relief. On appeal, Appellants argued (App. Br.3 10) that it would be “highly unlikely that” the ordinary skilled artisan would modify Brodkin’s compositions by considering the disclosure of Stephan, and we determined this argument was unpersuasive of reversible error. Maj. Op. 5—6. Appellants contend that, in making this determination, we overlooked the differences between Brodkin’s glass-ceramic compositions used in the manufacture of dental products, and Stephan’s ceramic dental prosthesis which is infiltrated with a glass. Req. 2—3. Specifically, Appellants fault our Decision because we agreed with the Examiner’s observation (Maj. Op. 5—6) that both Brodkin and Stephan “teach silica based dental glass compositions and both teach the importance of using niobium pentoxide in their relative compositions.” Req. 1—2. Appellants contend that Stephan relates to a glass and, thus, does not have the characteristic of pressability as does Brodkin’s composition. Id. at 2. Appellants contend further that Brodkin’s compositions require lithium, whereas Stephan’s compositions do not. Id. at 3^4. Appellants assert that, without applying hindsight and based on the differences between the compositions of Brodkin and Stephan, the 1 Request for Rehearing dated June 29, 2017 (“Req.”). 2 Decision on Appeal dated May 3, 2017 (“Maj. Op.”). 3 Appeal Brief dated July 23, 2015. 2 Appeal 2016-005883 Application 13/817,526 ordinary skilled artisan would not have expected “a significant increase in the chemical stability of the lithium disilicate based glass-ceramics of Brodkin can be achieved.” Id. at 4. For the reasons that follow, we determine that Appellants have not shown how our Decision misapprehended or overlooked the differences between the compositions of Brodkin and Stephan, or how our Decision employed impermissible hindsight in affirming the Examiner’s obviousness conclusion. 37 C.F.R. § 41.52(a)(1) (explaining how the rehearing request “must state with particularity the points believed to have been misapprehended or overlooked by the Board.”). First, we note that our Decision indicates that the Examiner’s rejection was sustained for essentially those reasons expressed in the Final Rejection and the Examiner’s Answer. Maj. Op. 3, 6. Each of the Final Rejection and the Answer directly addresses Appellants’ arguments alleging compositional differences that would prevent the skilled artisan from modifying Brodkin’s niobium pentoxide concentration based on the teachings of Stephan. Final Act. 4; Ans. 3^4. Specifically, the Examiner determines that both Brodkin and Stephan are directed to “a combination of glass and ceramic materials” because Brodkin teaches what is most accurately described as a glass (see Brodkin [0063], first line wherein Brodkin refers to the composition as a quenched glass) containing ceramic materials and Stephan is related to the use of a glass containing ceramic materials as a component of an implant wherein the implant is made of a ceramic material and the glass containing ceramic material of Stephan is infiltrated into the ceramic material. The compositions discussed by the examiner for both prior arts are glasses containing ceramic materials. Ans. 4. 3 Appeal 2016-005883 Application 13/817,526 Regarding Appellants’ arguments during prosecution that the compositions are too different to be combined, the Examiner noted that “the examiner did not state that one would use the composition of Brodkin as used in Stephan. The rejection is based on the concept of modifying the ratio of components of Brodkin based on the teachings of Stephan.” Final Act. 4. Therefore, Appellants’ arguments that the compositions of Brodkin and Stephan “have hardly anything in common” (Req. 2—3) does not identify error in the Examiner’s proposed modification of Brodkin’s composition, or our Decision affirming the rejection based on it (Maj. Op.). Moreover, our Decision identifies the factual basis upon which the obviousness conclusion was reached, including the Examiner’s finding that Brodkin teaches a dental ceramic composition containing each of the recited elements, and in amounts that overlap such elements, except for niobium pentoxide. Maj. Op. 2. Our Decision {id. at 2—3) also identifies the Examiner’s reliance on 19 of Stephan which teaches using niobium pentoxide “both as an additive to lanthanum-containing glasses and as a component in other [silica] systems”4 in order to realize a “significant improvement in chemical stability.” Stephan 19 (emphasis added). It cannot be ignored here that Stephan discloses niobium pentoxide in amounts overlapping the claimed ranges, not only in infiltrating glasses, but also as a component in other silica systems, and that the presence of niobium pentoxide “provokes a significant improvement in chemical stability.” Id. Based on Brodkin’s disclosure of a silica-based composition in the same 4 The Examiner determines, and Appellants do not dispute, that Stephan’s recitation of the word “silicate” is a typographical error and should read “silica” based on the overall teachings of Stephan. Ans. 5. 4 Appeal 2016-005883 Application 13/817,526 field of endeavor as Stephan (i.e., ceramic dental prosthesis containing glass (Brodkin || 55, 58, 59, 63; Stephan || 1,9)), we determine that it was reasonable for the Examiner to conclude (Final Act. 3 4) and for us to agree (Maj. Op. 6) that it would have been obvious to increase the amount of niobium pentoxide in Brodkin’s silica-based composition to an amount that overlaps with Stephan’s disclosure with a reasonable expectation of successfully achieving the increased chemical stability as taught by Stephan. Regarding Appellants’ arguments that such an increase in stability would not have been expected by the skilled artisan (Req. 4—7), our Decision makes clear (Maj. Op. 4—5) that such assertions are not evidence and are, therefore, unpersuasive. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). CONCFUSION Based on the foregoing, Appellants’ Request is granted to the extent that we have reconsidered our Decision, but is denied with respect to making changes to the final disposition of the rejections therein. This Decision on the Request for Rehearing incorporates our Decision, mailed May 3, 2017, and is final for the purposes of judicial review. See 37 C.F.R. § 41.52(a)(1). ORDER DENIED 5 Appeal 2016-005883 Application 13/817,526 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROLAND EHRT and MARTINA JOHANNES Appeal 2016-005883 Application 13/817,526 Technology Center 1700 Before JEFFREY T. SMITH, MARKNAGUMO, and SHELDON M. McGEE, Administrative Patent Judges. Opinion dissenting by NAGUMO, Administrative Patent Judge. Appellants’ Request for Rehearing explains fully, as did the Brief and the Reply, that the Majority overlooks or misapprehends the evidence that the compositions described by Brodkin and by Stephan differ so much (high strength ceramic components versus an infiltrating glass, respectively) that, without more, the prior art relied on provides no reason to expect that the “guidance” provided by Stephan regarding useful amounts of M^Os would have led to predictable, let alone desired changes or improvements in the materials described by Brodkin. I therefore dissent, respectfully, from the continued Decision to affirm the appealed rejection. I would reverse. 6