Ex Parte Johnson

Patent Trials and Appeals BoardMar 20, 2019

14844229 - (D) (P.T.A.B. Mar. 20, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/844,229 09/03/2015 83571 7590 03/22/2019 Wood, Herron & Evans, LLP (Sybron) 441 Vine Street 2700 Carew Tower Cincinnati, OH 45202 FIRST NAMED INVENTOR Alfred David Johnson 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 ATTORNEY DOCKET NO. CONFIRMATION NO. ORM-383CO 9242 EXAMINER WYSZOMIERSKI, GEORGE P ART UNIT PAPER NUMBER 1733 NOTIFICATION DATE DELIVERY MODE 03/22/2019 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): usptodock@whe-law.com smeyer@whe-law.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALFRED DAVID JOHNSON Appeal2018-005357 Application 14/844,229 Technology Center 1700 Before KAREN M. HASTINGS, JEFFREY R. SNAY, and DEBRA L. DENNETT, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Appellant1 requests our review under 35 U.S.C. Â§ 134 of the Examiner's final decision rejecting claims 1-7 under 35 U.S.C. Â§ 103(a) as being unpatentable over WO '635 (WO 2005/108635 A2, published Nov. 17, 2005). 2 We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b ). We AFFIRM. 1 Appellant is the Applicant, Ormco Corporation, which is also stated to be the Real Party in Interest (Appeal Br. 3). 2 The Examiner's rejection based on Schuh (US 2010/0140439 Al, published June 10, 2010) has been withdrawn, as well as the Examiner's provisional nonstatutory double patenting rejection (Ans. 3). Appeal2018-005357 Application 14/844,229 Claim 1 is illustrative of the subject matter on appeal ( emphasis added to highlight key limitation in dispute): 1. A dental archwire comprising a hyperelastic, single- crystal shape memory CuAlX alloy, where Xis Ni, Mn, Nb, or Be, the dental archwire having a shape-set curved length and either a round diameter of between about 0.013 to about 0.026 inches or a rectangular cross-section with dimensions of between about 0.016 by 0.016 inches and about 0.020 by 0.030 inches. ANALYSIS We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010) (precedential), cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t has long been the Board's practice to require an applicant to identify the alleged error in the examiner's rejections .... "). After considering the evidence presented in this Appeal and each of Appellant's arguments, we are not persuaded that Appellant identifies reversible error. Thus, we affirm the Examiner's rejections for the reasons expressed in the Final Office Action and the Answer. We add the following for emphasis. The Examiner's determination that the claims are directed to a product and that the key limitation in dispute involves the process by which the product was made is not in dispute (see generally Appeal Br.; Ans.). Appellant's main argument focuses on WO '63 5 's teaching of making its single crystal shape memory alloy wire by a process that does not involve "exposure to high temperature and/or stress" that may cause recrystallization (WO '635, 11; Appeal Br. 8; Reply Br. 8), versus the claimed "shape-set 2 Appeal2018-005357 Application 14/844,229 curved length" as recited in claim 1 (which Appellant contends de facto requires heating that the prior art has stated is to be avoided). Appellant argues that the Specification taken as a whole requires that shape-setting involves annealing, constrained shaping, and quenching (see generally Reply Br.). These arguments are not persuasive of error in the Examiner's position. It has been well established that, when a product recited in product- by-process format reasonably appears to be the same as or obvious from a product of the prior art, the burden is on applicant to show that the prior art product is in fact different from the claimed product, even though the products may be made by different processes. In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985). Appellant does not sufficiently dispute that the applied prior art establishes that a dental arch wire as recited in claim 1 would have been within the creativity of one of ordinary skill in the art. Cf KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398,416 (2007) ("[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result."). Here, WO '635 establishes that a curved guidewire and other curved medical devices are possible using a single crystal shape memory alloy as recited (WO '635, 13 (listing guidewires, laproscopic instruments, stents, etc.)). While Appellant points out that the tip of a curved guidewire 64 at Figure 5 of WO '635 is described as "non- elastic," this does not establish that a wire such as that taught in WO '635 would not have, with the use of no more than ordinary creativity by a skilled artisan, been formed into a "dental arch wire" as the wire is made of the same 3 Appeal2018-005357 Application 14/844,229 material and has dimensions that totally overlap those recited in claim 1 (Ans. 5; WO '635, 23). 3 We also do not agree with Appellant's position that the term "shape setting" by itself in a product claim as here requires the steps of annealing, constrained shaping, and quenching (see, e.g., Ans. 4). The Examiner points out that Appellant has not provided any evidence that the product of WO '635 does not have a single crystal structure (Ans. 5---6), nor has Appellant shown that a curved wire device made by the processes set out in WO '635 is of a different crystalline structure than one made by, e.g., annealing, constrained shaping, and quenching. Attorney's arguments in a brief cannot take the place of evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). Appellant has not shown error in the Examiner's determination that the "dental archwire" product that one of ordinary skill and creativity would have made based on the applied prior art is structurally similar to the claimed product. Accordingly, on this record, Appellant has failed to demonstrate that a product made using the single crystal shape memory alloy of WO '635 is any different than the product made from Appellant's "shape set" process as recited in claim 1. In re Thorpe, 777 F .2d at 697; cf In re Spada, 911 F .2d 705, 708 (Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1255 (Fed. Cir. 1977). 3 To the extent that the Examiner may be conflating the diameter dimensions of the round wire itself with the shape-set curve as set out in claim 1, we consider this to be harmless error, since one of ordinary skill would have readily inferred any known medical wire type device such as a dental arch wire may be made from the single crystal alloy wire of WO '63 5 that is taught for use in medical devices inclusive of those with curves. 4 Appeal2018-005357 Application 14/844,229 Appellant has not relied upon any further arguments to address any of the dependent claims. Thus, Appellant has not persuasively presented facts or reasons to convince us that the Examiner failed to establish a prima facie case of obviousness as to any of the claims on appeal. Accordingly, we sustain the Â§ 103 rejection of all of the claims on appeal. The decision of the Examiner is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l ). AFFIRMED 5