Ex Parte Fischer

Patent Trial and Appeal Board

Sep 24, 2014

12210539 (P.T.A.B. Sep. 24, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DAN E. FISCHER
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Appeal 2012-002266
Application 12/210,5391
Technology Center 3700
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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.
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Application 12/210,539

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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 Claims 13–15 stand withdrawn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.
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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, 464467 (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
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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
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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.
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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
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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.
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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,
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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.
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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.
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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
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