Ex Parte FischerDownload PDFPatent Trial and Appeal BoardSep 24, 201412210539 (P.T.A.B. Sep. 24, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte DAN E. FISCHER ____________________ Appeal 2012-002266 Application 12/210,5391 Technology Center 3700 ____________________ Before LYNNE H. BROWNE, PATRICK R. SCANLON, and ANNETTE R. REIMERS, Administrative Patent Judges. SCANLON, Administrative Patent Judge. DECISION ON APPEAL 1 According to Appellant, the real party in interest is Ultradent Products, Inc. Appeal Br. 2. Appeal 2012-002266 Application 12/210,539 2 STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1–12 and 16–24. Claims 13–15 stand withdrawn from consideration. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. THE INVENTION Claims 1, 16, and 19 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A method of manufacturing a dental instrument having high toughness, durability, resistance to work hardening, and biocompatibility, comprising: forming an instrument body into a configuration for engaging dental tissue, the instrument body comprising: a metal alloy composed of at least one group IVB transition metal, at least one group VB transition metal, and oxygen, the metal alloy being substantially free of nickel and characterized as having increased tensile strength, resistance to work hardening, and decreased elastic modulus of elasticity upon being cold worked; and cold working the metal alloy to thereby increase tensile strength, provide resistance to work hardening, and decrease elastic modulus compared to the metal alloy before being cold worked, the dental instrument possessing higher toughness, durability, resistance to work hardening, and biocompatibility compared to a dental instrument made of a nickel-titanium alloy. Appeal 2012-002266 Application 12/210,539 3 REFERENCES The Examiner relies upon the following prior art references: Brock US 2003/0077553 A1 Apr. 24, 2003 Takashi Saito et al., Multifunctional Alloys Obtained via a Dislocation-Free Plastic Deformation Mechanism, SCIENCE, vol. 300, 464467 (2003) (“Saito”). REJECTIONS The following rejections are before us on appeal: I. Claims 1–12 and 16–24 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Brock and Saito. II. Claims 1–9, 11, 12, and 16–23 stand provisionally rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1–5, 11, 14, and 16–22 of Application No. 11/176,839 (hereinafter the “’839 application”). ANALYSIS Rejection I Claims 1–11 and 16–18 Appellant presents three arguments that appear to apply to all of claims 1–12 and 16–24 (Appeal Br. 3–13) and a fourth argument that is directed to claims 12 and 19–24 only (id. at 13–14). As such, we treat claims 1–11 and 16–18 as argued as a single group and select independent claim 1 as the representative claim in accordance with 37 C.F.R. § 41.37(c)(1)(vii) (2011). We address claims 12 and 19–24 below. The Examiner finds that Brock discloses all limitations of claim 1 except for using “a metal alloy that is free of nickel and where the metal alloy is formed in part by cold working.” Answer 5. The Examiner also Appeal 2012-002266 Application 12/210,539 4 finds that Brock discloses the objective of providing an endodontic instrument having a reduced tendency to break during use. Id. at 14 (citing Brock ¶ 14). The Examiner finds that Saito discloses a method of forming a superelastic metal alloy that is free of nickel and contains oxygen, and, more specifically, has a composition in mole percent of about Ti-12Ta-9Nb-3V- 6Zr-O or Ti-23Nb-0.7Ta-2Zr-O. Id. at 6. The Examiner further finds that the method of Saito includes cold working the alloy and concludes that it would have been obvious “to modify Brock by forming an endodontic file with Saito’s metal alloy in order to provide an endodontic file with super elasticity, strength, and cold-workability.” Id. Appellant argues “[t]he Examiner fails to identify any teaching, suggestion, motivation or other reason that would have prompted one of skill in the art to modify Brock to include the metal alloy and manufacturing method of Saito in order to manufacture dental instruments.” Appeal Br. 5. Appellant also asserts that the Examiner “reiterates the reasons disclosed in the Application as to why the claimed metal alloy is especially well-suited for manufacturing dental instruments” but “fails to identify any teaching or suggestion in the prior art” for the proposed combination, and thus “engages in impermissible hindsight reconstruction.” Id. at 6. These arguments are not persuasive. First, we disagree that the Examiner fails to provide adequate reasoning for combining Brock and Saito. As noted above, the Examiner indicates that forming Brock’s endodontic file with Saito’s metal alloy will produce a file having superelasticity, strength, and cold-workability. The Examiner also indicates that Saito’s metal alloy offers the superelasticity and strength to achieve Brock’s disclosed objective of providing an endodontic instrument having a Appeal 2012-002266 Application 12/210,539 5 reduced tendency to break during use.2 Answer 14. As such, the Examiner articulates adequate reasoning based on rational underpinnings to explain why one of ordinary skill in the art would have been led to make the proposed modification. Second, we do not agree that the Examiner’s proposed combination involves impermissible hindsight. Contrary to Appellant’s assertion, the Examiner’s rejection does not include knowledge gleaned only from the Appellant’s disclosure. Rather, for the reasons discussed above, the rejection takes into account the teachings of Brock and Saito, i.e., knowledge which was within the level of ordinary skill at the time the claimed invention was made. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Appellant also argues that “Brock teaches that superelastic alloys such as nickel-titanium alloys are especially difficult to work with when manufacturing endodontic instruments,” and “one of ordinary skill in the art would not seek out and use a metal alloy that would be expected to be even more difficult to work with than nickel-titanium alloy.” Appeal Br. 6. Appellant then asserts that because “the ‘super-elastic’ metal alloy of Saito has ‘an amazing capacity for compressive deformation, like that of clay, by virtue of its strange work-softening characteristics,” this alloy “would be expected to be substantially more difficult and even more expensive to machine compared to nickel-titanium alloy.” Id. at 6–7 (quoting Saito, 465, col. 3, ll. 14–17). 2 We agree that Saito’s alloy would have little tendency to break when used in a dental instrument. For example, the alloy is described as exhibiting properties “such as ultralow elastic modulus, ultrahigh strength, super elasticity, and super plasticity, at room temperature.” Saito, Abstract. Appeal 2012-002266 Application 12/210,539 6 Although describing nickel-titanium alloy as being “very difficult and expensive to machine” (Brock ¶ 11), Brock nevertheless discloses that “shank 110 is preferably formed from a rod of nickel titanium alloy” (id. ¶ 36). We thus do not find Brock’s statements regarding difficulty and expense to be sufficiently disparaging of nickel-titanium alloy to discourage a person of ordinary skill in the art from using nickel-titanium, or other superelastic alloys, in dental instruments. In addition, Appellant does not provide a convincing argument that Saito’s metal alloy is necessarily more difficult and expensive to machine than nickel-titanium alloy. Contrary to Appellant’s assertion, the statement in Saito that the metal alloy has “an amazing capacity for compressive deformation, like that of clay, by virtue of its strange work-softening characteristics” does not establish that Saito’s metal alloy is more superelastic than nickel-titanium. For these reasons, Appellant’s argument is not persuasive. Next, Appellant argues that “[t]he Examiner fails to identify any teaching in either Brock or Saito relative to the specific requirement in the claims that the dental instrument or shaft must possess ‘higher toughness, durability, resistance to work hardening, and biocompatibility compared to a dental instrument [or shaft] made of a nickel-titanium alloy’.” Appeal Br. 8. According to Appellant, the Examiner relies on the doctrine of inherency for this limitation, and, to establish inherency in an obviousness rejection, the Examiner must establish that “(1) the claimed property, though not actually taught in the prior art, is inherently present in the prior art and (2) the inherent property was ‘known at the time an invention is made’.” Id. at 8–9 (citing In re Rijckaert, 9 F.3d 1531 (Fed. Cir. 1993) and MPEP § 2141.02). Appellant then asserts that “the Examiner fails to make a prima facie Appeal 2012-002266 Application 12/210,539 7 showing of inherency because the Examiner fails to provide any prior art teaching or evidence that establishes that the claimed inherent feature was, in fact, known at the time the invention was made.” Id. at 9. Appellant does not argue that inherency cannot be employed in a § 103 analysis, and, indeed, inherency is a question of fact that arises both in the context of anticipation and obviousness rejections. See In re Napier, 55 F.3d 610, 613 (Fed. Cir. 1995). Rather, Appellant’s argument is based on the assertion that it was not known at the time of invention that Saito’s metal alloy possessed the properties of “higher toughness, durability, resistance to work hardening, and biocompatibility” compared to a nickel-titanium alloy. This position appears to be based on the fact the Saito does not disclose explicitly that the metal alloy possesses the claimed properties. However, explicit disclosure is not required for an obviousness rejection based on inherency.3 See In re Huai-Hung Kao, 639 F.3d 1057, 1070 (Fed. Cir. 2011) (finding a reference inherently disclosed a property of oxymorphone despite not disclosing the property explicitly). In this case, the Examiner takes the position that because Saito discloses “the exact same alloy material . . . as being claimed by the Appellant . . . , the combination of Brock and Saito will necessarily have the same properties as being claimed by the Appellant.” Answer 15. Saito discloses the metal alloy can have various composition combinations including Ti-12Ta-9Nb-3V-6Zr-O and Ti-23Nb-0.7Ta-2Zr-O (mole percent). Saito, 464, col. 2, ll. 2–5. These are the same compositions recited 3 Indeed, if a feature was explicitly disclosed by a reference, there would be no need to rely on inherency. Appeal 2012-002266 Application 12/210,539 8 in claims 9 and 10, respectively. We thus agree with the Examiner’s position. See Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985) (“The fact that appellant has recognized another advantage which would flow naturally from following the suggestions of the prior art cannot be the basis for patentability when the differences would otherwise be obvious.”). We therefore find a preponderance of the evidence shows that the properties recited in claim 1 would be inherent in the combination of Brock and Saito. Appellant’s next argument is that Saito is non-analogous. Appeal Br. 10. As Appellants correctly note, the Federal Circuit has held: Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. Id. (quoting In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011)). Appellant asserts Saito fails both tests. Id. at 11. In particular, Appellant argues that Saito is not reasonably pertinent to a particular problem solved by the claimed invention, which is “the manufacture of dental instruments that are superior to dental instruments made using nickel-titanium and other nickel- containing alloys so as to have ‘higher toughness, durability, resistance to work hardening, and biocompatibility compared to a shaft made of a nickel- titanium alloy’.” Id.; Reply Br. 8. However, “[a] reference is reasonably pertinent if . . . it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” Wyers v. Master Lock Co., 616 F.3d 1231, 1237 (Fed. Cir. 2010) (quoting In re Clay, Appeal 2012-002266 Application 12/210,539 9 966 F.2d 656, 659 (Fed.Cir.1992)). A reference need not address the same problem to be reasonably pertinent to the problem addressed by the claimed invention. Instead, the Supreme Court “directs us to construe the scope of analogous art broadly, stating that ‘familiar items may have obvious uses beyond their primary purposes, and a person of ordinary skill often will be able to fit the teachings of multiple patents together like pieces of a puzzle.’” Wyers, 616 F.3d at 1238 (quoting KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 402 (2007)). Here, Brock discloses that “[w]hile nickel–titanium alloys are preferred, the invention . . . may be practiced using a wide variety of other suitable alloys, including other super-elastic alloys.” Brock ¶ 37. Thus, Brock’s express suggestion would have led one of ordinary skill in the art to consider other superelastic alloys, and Saito discloses a metal alloy free of nickel and offering “super elasticity, super strength, super cold-workability, and Invar and Elinvar properties.” Saito, 464, col. 1, ll. 16–18. Saito accordingly would have logically commended itself to an inventor’s attention in considering the problem of providing a dental instrument having higher toughness, durability, resistance to work hardening, and biocompatibility than dental instruments made of a nickel-titanium alloy. We thus find Appellant’s argument that Saito is non-analogous art unpersuasive. In view of the above, Appellant’s arguments do not apprise us of error, and we sustain the rejection of claim 1, and of claims 2–11 and 16–18 grouped therewith, under 35 U.S.C. § 103(a) as unpatentable over Brock and Saito. Appeal 2012-002266 Application 12/210,539 10 Claims 12 and 19–24 Claim 12 and independent claim 19 both recite providing the instrument with “at least one flute and helical cutting edge.” The Examiner takes the position that Brock discloses this feature by virtue of the incorporation by reference of U.S. Patent No. 5,882,198. Answer 5 (citing Brock ¶ 32). Appellant disagrees, arguing that “Brock teaches away from an endodontic file having at least one flute and helical cutting edge.” Appeal Br. 13. Appellant asserts that Brock discloses a “fluteless endodontic instrument” and “clearly disparages endodontic files having a helical or fluted cutting surface.” Id. In response, the Examiner contends that Brock discloses not using flutes as one approach to solving the problem of providing endodontic files that do not break, and Brock discloses using a nickel-titanium alloy as an alternate solution to this problem. Ans. 18–19. Appellant argues that this contention by the Examiner is erroneous. Reply Br. 4–6. We find Appellant’s positions convincing. As noted by Appellant, ¶ 32 of Brock outlines several problems with fluted instrument designs that are sufficiently disparaging so as to discourage a person of ordinary skill in the art from using a helical or fluted cutting surface with the instrument of Brock. In addition, we disagree with the Examiner that Brock discloses using a nickel-titanium alloy, instead of a fluteless design, as an alternate solution to reducing breakage. Rather, Brock indicates that highly flexible endodontic files fabricated from nickel-titanium alloy were introduced to alleviate breakage problems, but conventional fluted instruments designs made from a nickel-titanium alloy are difficult to manufacture. Brock ¶ 32. Appeal 2012-002266 Application 12/210,539 11 As such, the problems with fluted designs identified by Brock also apply to instruments made of a nickel-titanium alloy. For the above reasons, we do not sustain the rejection of claims 12 and 19—and of claims 20–24 depending from claim 19—under 35 U.S.C. § 103(a) as unpatentable over Brock and Saito. Rejection II Since the institution of the provisional obviousness-type double patenting rejection, the ’839 application, the basis of the provisional rejection, was abandoned. As the ’839 application is no longer a copending application, we summarily reverse the double patenting rejection of claims 1–9, 11, 12, and 16–23. DECISION We affirm the Examiner’s rejection of claims 1–11 and 16–18 under 35 U.S.C. § 103(a) as unpatentable over Brock and Saito. We reverse the Examiner’s rejection of claims 12 and 19–24 under 35 U.S.C. § 103(a) as unpatentable over Brock and Saito. We reverse the Examiner’s provisional rejection of claims 1–9, 11, 12, and 16–23 on the ground of non-statutory obviousness-type double patenting. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART llw Copy with citationCopy as parenthetical citation