Ex Parte Gantes

Patent Trial and Appeal Board

Dec 28, 2016

12245697 (P.T.A.B. Dec. 28, 2016)

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
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/245,697 10/03/2008 Bernard Gantes 018988-0006P 4604
34284 7590
Rutan & Tucker, LLP
611 ANTON BLVD
SUITE 1400
COSTA MESA, CA 92626
12/30/2016 EXAMINER
APONTE, MIRAYDA ARLENE
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
12/30/2016 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):
patents @ rutan. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BERNARD GANTES
Appeal 2015-002640
Application 12/245,697
Technology Center 3700
Before JOHN C. KERINS, BRANDON J. WARNER, and
SEAN P. O’HANLON, Administrative Patent Judges.
O’HANLON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Bernard Gantes (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1—23 and 41—57.1 We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 Claims 24^40 are canceled. App. Br. 3.
Appeal 2015-002640
Application 12/245,697
SUMMARY OF INVENTION
Appellant’s claimed invention “relate[s] to systems and methods for
use in the production and/or delivery of dental prostheses.” Spec. 12.
Claim 1, reproduced below from page 38 (Claims Appendix) of the Appeal
Brief, is illustrative of the claimed subject matter:
1. A system, for planning an oral or facial endosseous
implantation in a patient, comprising:
a processor;
memory coupled to the processor having stored thereon a
treatment planning program in a non-transitory machine
readable format;
a bone imager that communicates bone data to the
processor, the bone data representative of at least a portion of a
bone of the skull of the patient;
a surface imager that communicates surface data to the
processor, the surface data representative of at least a portion of
a surface, of the patient, that is apart from the bone;
wherein the processor processes the bone data and the
surface data into an output comprising three-dimensional (3-D)
representation data indicative of at least one of the group
consisting of an oral structure and a facial structure of the
patient;
the processor configured to execute the treatment
planning program that, based on a combination of the 3-D
representation data and input received from a treatment planner,
outputs a treatment plan and permits virtual placement of one or
more implants in a 3-D presentation of the patient’s jaws and/or
oral surface contours;
an assistant that receives input from the surface imager
and outputs information about bone density and other structural
information relating to an intended site of implantation; the
assistant automatically selects an implant site; and
a fabricator that, based on the 3-D representation data,
produces a physical model of the at least one of the group
consisting of the patient’s oral structure and the facial structure,
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the model indicating a planned location of an endosseous
implant, whereby the fabricator is capable of illustrating
mounted analogs in the physical model representing surgical
implants to be installed in the patient’s jaw.
REFERENCES
The Examiner relies on the following prior art references in rejecting
the claims on appeal:
Lee US 6,224,373 B1 May 1,2001
Poirier US 2002/0102517 A1 Aug. 1, 2002
De Clerck US 2005/0112524 A1 May 26, 2005
Sogo US 2006/0127848 A1 June 15, 2006
Powell US 2007/0092854 A1 Apr. 26, 2007
REJECTIONS
Claims 1—23 and 41—57 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Claims 1—23 and 41—57 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
Claims 1—23, 41—44, 49-52, and 54—56 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Sogo and Lee.
Claims 45—48 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sogo, Lee, and De Clerck.
Claim 53 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Sogo, Lee, and Poirier.
Claim 57 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Sogo, Lee, and Powell.
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ANALYSIS
Written Description Rejection
The Examiner finds that claims 1—23 and 41—57 fail to comply with
the written description requirement because the claims contain subject
matter that was not adequately described in the Specification. Non-Final
Act. 2—3.
Claims 1, 23, and 44—48
Regarding claims 1 and 23, the Examiner finds that, although the
Specification “provides support for software and/or algorithms that permit
virtual placement of one or more implants,” the Specification “is silent
regarding the treatment planning module permitting the claimed steps to be
performed.” Id. at 3. The Examiner makes a similar finding regarding
claims 44-48. Id. Appellant traverses, arguing that written descriptive
support for the cited claim language is seen in paragraphs 17, 145, and 146
of the Specification. App. Br. 13—14 (reproducing Spec. Tflf 17, 145, 146
with emphasis added to certain language therein). The Examiner answers
that “none of these paragraphs refer to ‘virtual placement.’” Ans. 12.
We are persuaded by Appellant’s arguments. As noted by Appellant,
the treatment planning module produces, based on three-dimensional patient
data, a treatment plan including a planned hole to receive an endosseous
implant. App. Br. 13—14; see also Spec. 117. The Specification further sets
forth that the treatment plan can include a virtual treatment plan allowing for
implants to “be conceptually ‘placed’ according to the estimated existing
alveolar volume and socket size following virtual extraction.” Spec. 1107.
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Further regarding claims 1 and 23, the Examiner also finds that the
Specification “is silent regarding ‘memory coupled to the processor having
stored thereon a treatment planning program in a non-transitory machine
readable format.’” Non-Final Act. 3. The Examiner further notes that “the
term ‘memory’ is not recited a single time in the original disclosure.” Ans.
11. Appellant traverses, arguing that written descriptive support for the cited
claim language is seen in paragraphs 8, 12, 22, 29, 37, 45, 51, 52, 57, 104—
10, 121, 128, 140, 143, and 146 of the Specification. App. Br. 12—13
(reproducing Spec. Tflf 104—10 with emphasis added to certain language
therein). Appellant also argues that “machine-readable medium,” included
in original claims 6 and 28, also provides written descriptive support. Reply
Br. 7-9.
We are persuaded by Appellant’s arguments. As noted by Appellant,
the disclosed treatment plan uses computer algorithms and software to
process and output data sets, provide three-dimensional representations, and
permit virtual surgical procedures. App. Br. 12—13: see also Spec, 104—
10. We find that a skilled artisan would understand that such use of software
necessarily includes memory on which the software is stored and accessed
by the processor.
Accordingly, we do not sustain the Examiner’s written description
rejection of claims 1, 22, and 44-48.
Claim 51
The Examiner finds that the Specification “is silent regarding
‘recorded positional calibration . . . used by the treatment planning
program.’” Non-Final Act. 3. Appellant traverses, arguing that written
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descriptive support for the cited claim language is seen in paragraphs 106
and 123 of the Specification. App. Br. 15 (reproducing Spec. 106, 123
with emphasis added to certain language therein).
We are persuaded by Appellant’s arguments. As noted by Appellant,
relative position data, including calibration marks, are included in the virtual
treatment plan data. Id.', see also Spec. 1123; and Ans. 13. As also noted
by Appellant, the treatment plan data is used by the treatment planning
program, for example by a surgical robot using the data to “replicate the
treatment plan on [a] live patient.” Spec. 1129; see also Reply Br. 11—12.
Accordingly, we do not sustain the Examiner’s written description
rejection of claim 51.
Claim 52
The Examiner finds that, although the Specification “sets forth that
the positional calibration data is included in the virtual treatment plan data,”
the Specification “is silent regarding the treatment planning module
incorporating the data into the treatment plan.” Non-Final Act. 3. For the
reasons set forth above regarding the rejection of claim 51, we do not sustain
the Examiner’s written description rejection of claim 52.
Indefiniteness Rejection2
The Examiner determines that claims 1—23 and 41—57 are indefinite.
Non-Final Act. 4. Although the Examiner does not specifically address
2 Although we sustain the rejection of certain claims as being indefinite
under 35 U.S.C. § 112, second paragraph, the indefmiteness does not impact
our consideration of the rejections under 35 U.S.C. § 103.
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claims 2—5, 7—22, 41, 42, and 44—57, we understand these claims to be
rejected by virtue of their dependence from a specifically addressed claim.
Claims 1—5, 12—18, 41, 42, and 44—57
Regarding claim 1, the Examiner determines the claim language
“illustrating mounted analogs” to be unclear. Non-Final Act. 4. Appellant
traverses, arguing that “the recitation ‘illustrating mounted analogs’ is fully
supported and enabled by the original disclosure” and that the term
“illustrates” is synonymous with “displays.” App. Br. 16 (citing Spec.
Tflf106, 114, Figs. 6, 8). Appellant further asserts that Figure 8 is a
screenshot, and that it inherently discloses “display” being synonymous with
“illustrate.” Id. The Examiner answers that Appellant’s first argument is
moot, as the rejection was based on indefiniteness rather than a lack of
enablement. Ans. 13—14. The Examiner further answers that neither of
Specification paragraphs 106 or 114 “recites the term ‘illustrate’” or
indicates “that ‘illustrate’ is meant to be synonymous with ‘display.’” Id. at
14. The Examiner also defines illustrate to mean “to give examples in order
to make (something) easier to understand; to be proof or evidence of
(something); to explain or decorate a story, book, etc., with pictures,” and
concludes that none of these definitions supports Appellant’s contention
regarding “display” and “illustrate” being synonymous. Id. Appellant
replies by reiterating arguments from the Appeal Brief and reproducing a
thesaurus listing for “illustrate,” which includes “display” as a synonym for
a particular usage of “illustrate.” Reply Br. 14—15.
Section 112, second paragraph, requires the claims “to be cast in
clear—as opposed to ambiguous, vague, indefinite—terms.” In re Packard,
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751 F.3d 1307, 1313 (Fed. Cir. 2014). Specification paragraph 106
discusses, and Figure 6 depicts, a virtual treatment plan, and therefore the
disclosure therein is not relevant to the physical model produced by the
fabricator. Figure 8 depicts a physical model of oral structures made from a
cast, and therefore does not depict a screenshot. Specification paragraph 113
discloses that the fabricator (CNC) produces a physical model in the form of
a “milled block that replicates the patient’s oral surface features,” and
paragraph 114 discloses that the CNC positions “implant analogs (replicas of
the surgical implants [that] will be installed in the patient’s jaw)” in the
physical model.
We are not persuaded by Appellant’s argument that “illustrate” is
synonymous with “display,” but we determine that a skilled artisan would
understand that the claim language reciting “the fabricator is capable of
illustrating mounted analogs in the physical model” to mean that the
physical model produced by the fabricator includes replicas of surgical
implants that will be installed in the patient’s jaw, as set forth in the
Specification. The claim language is sufficiently clear for the purposes of
35U.S.C. § 112, second paragraph. Accordingly, we do not sustain the
Examiner’s indefmiteness rejection of claim 1 or of its dependent claims 2—
5, 12—18, 41, 42, and 44—57.
Claims 6—11 and 19—22
Regarding claim 6, the Examiner finds “the treatment logic planning
module” to lack proper antecedent basis. Non-Final Act. 4. Appellant
argues that inclusion of “logic” in the Claims Appendix of the Appeal Brief
was “merely an informality” because “logic” was canceled in the April 15,
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2013 Amendment, and that the term “the treatment planning module” “has
sufficient antecedent basis and is fully supported and enabled by the original
disclosure.” App. Br. 17. The Examiner answers that “[i]t is unclear if ‘the
treatment planning module’ refers to the processor, the treatment planning
program, the treatment plan, or to some other claimed or unclaimed element
of the system.” Ans. 14—15. Appellant replies by reiterating that “logic” has
been canceled from the claim. Reply Br. 15
We are unpersuaded by Appellant’s arguments, which concentrate on
the erroneous inclusion of “logic” in claim 6 in the Claims Appendix.
However, as set forth by the Examiner, there is no proper antecedent basis
for “the treatment planning module” in line 1 of claim 6; in other words,
because claim 1, from which claim 6 directly depends, does not include any
recitation of a “module,” it is not clear to what “the treatment planning
module” refers. Appellant has failed to address the rejection set forth by the
Examiner, so we sustain the indefiniteness rejection of claim 6 as well as of
its dependent claims 7—11 and 19-22.
Claim 23
Regarding independent claim 23, the Examiner finds “the treatment
planning software” to lack proper antecedent basis. Non-Final Act. 4.
Appellant argues that the “rejection is improper for at least the reason that
‘software’ in line 13 is sufficiently synonymous with ‘program’ of line 4.”
App. Br. 17; see also Reply Br. 15.
We are not persuaded by Appellant’s argument. The use of two
different words (“software” and “program”) implies that the words have
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different meanings in the claims. Accordingly, we sustain the Examiner’s
indefmiteness rejection of claim 23.
Claim 43
Regarding claim 43, the Examiner determines “the first location as the
bone imager and surface imager” to be unclear. Non-Final Act. 4.
Appellant argues that this language is “clear, fully supported, and enabled by
the original disclosure,” referencing the “planned location” language of
claim 1 as providing antecedent basis. App. Br. 17—18; see also Reply Br.
15. The Examiner answers that the cited recitation “is not written with
proper grammar and makes the scope of the claim unclear.” Ans. 15.
We are not persuaded by Appellant’s arguments. Appellant argues
that “the first location” in claim 43 refers to “planned location” in the
physical model in claim 1. This is unpersuasive, as “first location” is
introduced in claim 41 as “the processor maintained at a first location
receives the bone data from the bone imager at the first location and the
surface data from the surface imager at the first location.” App. Br. 42
(Claims Appendix). Moreover, we agree with the Examiner that “the
fabricator is coupled to the processor to permit the physical model to be
produced at the first location as the bone imager and surface imager’'' is
indefinite because the references to the bone imager and the surface imager
are unclear. Accordingly, we sustain the Examiner’s indefmiteness rejection
of claim 43.
Obviousness Rejection Based on Sogo and Lee
Appellant argues claims 1—23, 41—44, 49-52, and 54—56 together.
App. Br. 18—28. We select claim 1 as representative, treating claims 2—23,
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41—44, 49—52, and 54—56 as standing or falling with representative claim 1.
See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Sogo discloses the system substantially as
claimed in independent claim 1, but “is silent regarding the assistant
output [ting] information about bone density, wherein the treatment planning
module permits virtual placement of one or more implant[s] in a 3-D
presentation of the patient’s jaw and/or oral surface contours.” Non-Final
Act. 5—8. The Examiner finds that Lee discloses these features, and reasons
that it would have been obvious to a skilled artisan:
to modify Sogo by having the assistant output information
about bone density, wherein the treatment planning module
permits virtual placement of one or more implant[s] in a 3-D
presentation of the patient’s jaw and/or oral surface contours, as
taught by Lee, for the purpose of allowing a user to verify the
density of the jawbone at an implant area, thereby minimizing
possible side effects in actual implantation.
Id. at 8—9. The Examiner further reasons that it would have been obvious to
a skilled artisan:
to modify Sogo by making the treatment planning
module/program permit manipulation of the displayed 3-D
representation, wherein the treatment planning module/program
permits a virtual implant to be displayed and placed in the
displayed 3-D representation, as taught by Lee, for the purpose
of allowing a user to verify that the density of the jawbone at an
implant area, thereby minimizing possible side effects in actual
implantation.
Id. at 9. The Examiner further finds that “Lee teaches that CT data provides
data regarding the density of an object.” Ans. 16.
Appellant traverses, arguing that “Sogo is directed to removing human
error from the implantation procedure,” so “the program of Lee is not
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feasibly combinable with Sogo for at least the reason that Sogo already
accounts for the anatomical information of the patient and determines safety
without the human error factor incorporated by Lee.” App. Br. 21.
We are not persuaded by this argument because the Examiner does
not modify Sogo to include “the program of Lee.” Rather, the Examiner
modifies Sogo’s collection and transmittal of patient CT data to also include
information about bone density, as taught by Lee. Appellant has failed to
apprise us of any error in the rejection as presented.
Appellant also argues that Sogo does not disclose “wherein the
processor processes the bone data and the surface data into an output
comprising three-dimensional (3-D) representation data indicative of at
least one of the group consisting of an oral structure and a facial structure
of the patient.” App. Br. 24. Appellant further argues that “Sogo merely
uses statistical data from a sample population for configuring a new dental
crown,” but does not combine three-dimensional data sets obtained from a
particular patient. Id. at 24—25.
We are not persuaded by Appellant’s arguments. Initially, we note
that Appellant’s arguments are inconsistent with Appellant’s previous
statement that “Sogo actually discloses a dentition three-dimensional data
and jaw-bone three-dimensional data are collected from a patient and they
are combined.” Id. at 21. Moreover, although Sogo does disclose creating a
replacement crown based on information measured from the particular
patient (see, e.g., Sogo 1102; see also Ans. 16—17), claim 1 does not require
“configuring a new dental crown.” To the extent Appellant argues that
claim 1 requires the three-dimensional data to be indicative of both an oral
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structure and a facial structure of the patient, claim 1 only requires the data
to be “indicative of at least one of the group consisting of an oral structure
and a facial structure of the patient.” App. Br. 38 (Claims Appendix)
(emphasis added). Appellant has failed to apprise us of any error.
Finally, Appellant argues that “nowhere in Lee can ‘oral surface
contours' be found in relation to a virtual implant.” App. Br. 27; see also
Reply Br. 21—23.
We are not persuaded by Appellant’s argument. Claim 1 recites “the
processor . . . permits virtual placement of one or more implants in a 3-D
presentation of the patient’s jaws and/or oral surface contours” (App. Br. 38
(Claims Appendix) (emphasis added)), and therefore does not require virtual
placement of an implant in a presentation of a patient’s surface contours.
Moreover, the Examiner relies on Sogo, rather than Lee, to disclose this
limitation. Non-Final Act. 6.
Accordingly, we sustain the Examiner’s rejection of claim 1, as well
as of claims 2—23, 41—44, 49-52, and 54—56, which fall with claim 1, as
being unpatentable over Sogo and Lee.
Obviousness Rejection Based on Sogo, Lee, and De Clerck
The Examiner determines claims 45—48 to be unpatentable over Sogo,
Lee, and De Clerck. Non-Final Act. 9—10. Appellant relies on the
arguments presented above with regard to the rejection of claim 1. App. Br.
29—30. Accordingly, for the same reasons as discussed above, we sustain
the rejection of claims 45—48 as being unpatentable over Sogo, Lee, and De
Clerck.
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Obviousness Rejection Based on Sogo, Lee, and Poirier
The Examiner determines claim 53 to be unpatentable over Sogo, Lee,
and Poirier. Non-Final Act. 10—11. Appellant relies on the arguments
presented above with regard to the rejection of claim 1. App. Br. 31—32.
Accordingly, for the same reasons as discussed above, we sustain the
rejection of claim 53 as being unpatentable over Sogo, Lee, and Poirier.
Obviousness Rejection Based on Sogo, Lee, and Powell
The Examiner determines claim 57 to be unpatentable over Sogo, Lee,
and Powell. Non-Final Act. 11. Appellant relies on the arguments presented
above with regard to the rejection of claim 1. App. Br. 33—35. Accordingly,
for the same reasons as discussed above, we sustain the rejection of claim 57
as being unpatentable over Sogo, Lee, and Powell.
DECISION
The Examiner’s decision to reject claims 1—23 and 41—57 under 35
U.S.C. § 112, first paragraph, is reversed.
The Examiner’s decision to reject claims 1—23 and 41—57 under 35
U.S.C. § 112, second paragraph, is affirmed with respect to claims 6—11, 19—
23, and 43, and is reversed with respect to claims 1—5, 12—18, 41, 42, and
44—57.
The Examiner’s decision to reject claims 1—23 and 41—57 under 35
U.S.C. § 103 is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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