Ex Parte Fisker et al

Patent Trial and Appeal BoardAug 23, 2017

13256452 (P.T.A.B. Aug. 23, 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. 13/256,452 12/06/2011 Rune Fisker 0079124-000034 1092 21839 7590 08/25/2017 BUCHANAN, INGERSOLL & ROONEY PC POST OFFICE BOX 1404 ALEXANDRIA, VA 22313-1404 EXAMINER HANN, JAY B ART UNIT PAPER NUMBER 2123 NOTIFICATION DATE DELIVERY MODE 08/25/2017 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): ADIPDOCl@BIPC.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RUNE FISKER, KARL-JOSEF HOLLENBECK, SUNE JORGENSEN, and TAIS CLAUSEN Appeal 2016-002152 Application 13/256,4521 Technology Center 2100 Before ST. JOHN COURTENAY III, JOHN A. EVANS, and SCOTT B. HOWARD, Administrative Patent Judges. HOWARD, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection of claims 75—92, 94, and 95, which constitute all of the claims pending in this application. Claims 1—74 and 93 have been cancelled. App. Br. Claims App’x 1, 4. We have jurisdiction under 35 U.S.C. § 6(b). We heard oral arguments on August 15, 2017. We reverse. 1 Appellants identify 3Shape A/S. as the real party in interest. App. Br. 2. Appeal 2016-002152 Application 13/256,452 THE INVENTION The disclosed and claimed invention is directed to a system and method “for planning dental restorative work.” Spec. 1:6—7. More specifically, the invention “relates to a system and a method for interactive CAD design and realistic 3D presentation and visualization of dental restorations and subsequent physical realization by means of CAM.” Id. at 1:7-9. Claim 75, reproduced below, is illustrative of the claimed subject matter: 75. A method for planning, visualizing, and/or optimizing dental restoration on at least a part of pre-prepared teeth of a patient, wherein said method comprises: obtaining a first 3D digital model of at least a part of the pre-prepared teeth, said first 3D digital model comprising a first portion expressing the shape of one or more teeth prior to preparation of the one or more teeth; designing at least one dental restoration CAD model for said one or more teeth based on the first portion of the first 3D digital model of at least a part of the pre-prepared teeth; obtaining a second 3D digital model of at least a part of the prepared teeth, where the prepared teeth are provided by preparing the pre-prepared teeth by dental restorative work; and aligning the first 3D digital model of the pre-prepared teeth and the second 3D digital model of the prepared teeth. REFERENCES The prior art relied upon by the Examiner as evidence in rejecting the claims on appeal is: Baba US 6,049,743 Apr. 11,2000 Jones US 7,110,594 B2 Sept. 19,2006 Boerjes US 8,454,365 B2 June 4,2013 2 Appeal 2016-002152 Application 13/256,452 REJECTIONS Claims 75—91 and 94 stand rejected under pre-AIA 35 U.S.C. § 102(e) as being anticipated by Boerjes. Final Act. 4—14. Claim 92 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Boerjes and Baba. Final Act. 14—15. Claim 95 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Boerjes and Jones. Final Act. 15—16 ANALYSIS We have reviewed the Examiner’s rejection in light of Appellants’ arguments that the Examiner erred. In reaching this decision, we have considered all evidence presented and all arguments made by Appellants. We are persuaded by Appellants’ arguments regarding claims 75—92, 94, and 95. Appellants argue the Examiner erred in finding Boerjes discloses “aligning the first 3D digital model of the pre-prepared teeth and the second 3D digital model of the prepared teeth,” as recited in independent claim 75. App. Br. 8—10; Reply Br. 4—6. More specifically, Appellants argue to the extent Boerjes discloses some type of alignment, Boerjes does not disclose the specific alignment recited in claim 1: Even though Boerjes explains that the motion data (e.g., axis of articulation) can be used to supplement static alignment data, it is respectfully submitted that this is not equivalent to the claimed “aligning the first 30 digital model of the pre-prepared teeth and the second 30 digital model of the prepared teeth”. Further, Boerjes provides no clarification as to whether the motion data is collected with respect to an initial scan of the pre-prepared teeth and/or any one or more subsequent scans relating to the surface prepared teeth. 3 Appeal 2016-002152 Application 13/256,452 App. Br. 10. The Examiner finds Boerjes discloses the aligning step recited in claim 75. Final Act. 6; Ans. 4. Specifically, the Examiner finds “[gjuidance concerning the fit of the dental object and its relationship to surrounding teeth is an alignment of the model of pre-prepared dentition initial scan and the prepared teeth.” Final Act. 6 (citing Boerjes 33:1—5). The Examiner further finds that the dental model “is an alignment of the model of the pre-prepared teeth and the model of the prepared teeth” and that “[reconstructing dental models with alignment or calibration points is an alignment of the models.” Id. (citing Boerjes 26:33—35, 23:31—39); see also Ans. 4 (“Under the broadest reasonable interpretation of ‘aligning’ the calibration point alignment data taught by Boerjes col. 24 lines 31—39 may also be considered an alignment. Alignment of both models with proper calibration points indirectly aligns the models with each other and anticipates this claim limitation. An indirect alignment via calibration is still an alignment.”).2 “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987). Moreover, the reference must also “disclos[] within the four comers of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim.” Net Money IN, Inc. v. Verisign, Inc., 545 F.3d 1359, 2 Both the Final Action and the Answer cite to column 24, lines 31—39. However, based on the quoted material, this appears to be a typo and should have been column 23. 4 Appeal 2016-002152 Application 13/256,452 1371 (Fed. Cir. 2008). However, “the reference need not satisfy an ipsissimis verbis test.” In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009) (internal quotation marks omitted). Moreover, “it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.” In re Preda, 401 F.2d 825, 826 (CCPA 1968); In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (holding that prior art references must be “considered together with the knowledge of one of ordinary skill in the pertinent art”). We are persuaded by Appellants’ arguments as the Examiner has not identified sufficient evidence or provided sufficient explanation as to how Boerjes teaches the aligning step as recited in claim 1. Although the cited sections of Beorjes discuss aligning, it does so in the context of “providing reference or calibration points for continuous, dynamic motion.” Boerjes. 23:38—39. We do not see anything in the cited portions that discloses “aligning the first 3D digital model of the pre-prepared teeth and the second 3D digital model of the prepared teeth,” as recited in claim 75. Accordingly, we agree with Appellant the Examiner’s finding that Boerjes discloses the recited aligning step is in error because it is not supported by a preponderance of the evidence. See In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (Examiner’s burden of proving non-patentability is by a preponderance of the evidence); see also In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“The Patent Office has the initial duty of supplying the factual basis for its rejection. It may not, because it may doubt that the 5 Appeal 2016-002152 Application 13/256,452 invention is patentable, resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in its factual basis.”).3 Accordingly, we do not sustain the Examiner’s rejection of claim 754, along with dependent claims 76—91 and 94, which are not separately argued. See App. Br. 10. With regard to dependent claims 92 and 95, the Examiner has not shown that Baba or Jones cures the deficiency in Boerjes regarding the aligning step. Accordingly, we do not sustain the Examiner’s rejections of claims 92 and 95. DECISION For the above reasons, we reverse the Examiner’s decisions rejecting claims 75—92, 94, and 95. REVERSED 3 Because this issue is dispositive, we do not address Appellants’ other arguments. 4 Appellants do not separately argues claims 75—91 or 94. We decide the appeal of those claims based on representative claim 75. See 37 C.F.R. § 41.37(c)(iv). 6