Ex Parte Kakavand

Patent Trial and Appeal Board

May 24, 2017

12203088 (P.T.A.B. May. 24, 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.
12/203,088 09/02/2008 ALIKAKAVAND 22773-768.201 2531
107046 7590 05/26/2017
WSOR / Alian TWTinnlnav Tno EXAMINER
650 Page Mill Road
Palo Alto, CA 94304
MAI, HAO D
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
05/26/2017 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):
patentdocket @ wsgr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALI KAKAVAND1
Appeal 2016-002108
Application 12/203,088
Technology Center 3700
Before FRANCISCO C. PRATS, JOHN G. NEW, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
MAJORS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to an
orthodontic appliance and methods of fabricating or defining the appliance.
The claims have been rejected as anticipated and obvious. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
The Specification describes alternatives to conventional orthodontic
treatment (i.e., braces), such as with “[sjhell appliances [] designed to impart
1 Appellant identifies the Real Party in Interest as Align Technology, Inc.
(App. Br. 3.)
Appeal 2016-002108
Application 12/203,088
positioning or repositioning forces to the patient’s teeth.” (Spec. 13.)
According to the Specification, “in some cases undesirable non-elastic
deformation may occur due to use of a shell appliance.” {Id. at 14.) The
Specification explains that “[significant appliance non-elastic deformation
may degrade the performance of the appliance by reducing or eliminating
desirable contact forces between the appliance and the patient’s teeth.” {Id.
at 1 5.)
Appellant’s “invention relates to orthodontic positioning appliances
shaped to compensate for non-elastic deformation and related methods.”
(Spec. 11.)
Claims 1,3,4, 6—12, and 14—22 are on appeal. Claim 1 is illustrative
1. An orthodontic positioning appliance comprising:
a patient removable orthodontic tooth positioning appliance
including a polymeric shell having teeth receiving cavities
shaped to receive and apply a resilient positioning force to the
patient’s teeth where at least one of the cavities includes (i) an
upper portion and (ii) a lower portion having a proximal end
beginning at the upper portion and a distal end terminating above
the patient’s gingival margin, the lower portion of the polymeric
shell being shaped to compensate for non-elastic deformation
due to use of the appliance, the upper portion being shaped to
match the contour of an occlusal surface of a patient’s tooth such
that the upper portion is in contact with the occlusal surface of
the received tooth crown when the appliance is worn by the
patient, wherein the lower portion of the polymeric shell is
produced to have a width of the cavity substantially smaller than
a corresponding width of the patient’s tooth.
(App. Br. 18 (Claims App’x) (emphasis added).)
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The claims stand rejected as follows:
I. Claims 1, 6—12, and 22 as anticipated under 35 U.S.C. § 102(b)
by Martz2 (“Rejection I”).
II. Claims 3 and 4 as being unpatentable under 35 U.S.C. § 103(a)
over Martz (“Rejection II”).
III. Claims 14—21 as being unpatentable under 35 U.S.C. § 103(a)
over Martz and Chishti3 (“Rejection III”).
I-ANTICIPATION
Issue
Appellant argues the patentability of the claims subject to Rejection I
as a group. We select claim 1 as representative. 37 C.F.R. § 41.37(c)(l)(iv).
The issue on appeal is whether the Examiner established by a
preponderance of the evidence that Martz discloses the appliance of claim 1.
Findings of Fact (FF)
The Examiner’s findings of fact and reasoning in support of Rejection
I are provided on pages 3^4 and 6—7 of the Examiner’s Answer. (See also
Final Act. 2—3, 5.)
FF 1. Figures 2A and 2B from the Specification are provided below:
2 Martz et al., US 5,145,364, issued Sept. 8, 1992.
3 Chishti et al., US 5,975,893, issued Nov. 2, 1999.
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Application 12/203,088
FIG, 2A FIG. 2B
Figure 2 A depicts a cross-sectional view of tooth (22) within a cavity of an
orthodontic positioning appliance (20). (Spec. 120.) According to the
Specification, “Fig. 2B illustrates the impact that appliance non-elastic
deformation can have on how well the appliance 20 cavity conforms to the
exterior surface of a tooth 22.” {Id. at 125.) More specifically, “[u]se of an
appliance results in internal strains associated with the external deflection of
the appliance.” {Id.) Appellant discloses “one type of distortion is
illustrated in Fig. 2B, which shows a cavity cross section [of appliance 20]
that has experienced a significant increase in width at the opening of the
cavity.” {Id.)
FF 2. Figure 3 (partial) from the Specification is provided below.
Figure 3 is an embodiment of the invention of claim 1, and depicts a cross-
sectional view of a modified orthodontic positioning appliance. (Spec.
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126.) “As shown, the appliance 30 includes an upper portion 34 and a
lower portion 36” where “lower portion 36 is modified as shown in the
dashed line” so that “the width of the cavity in the lower portion 36 has been
decreased by a progressively smaller amount.” (Id.) Further, “[t]he shape
modification results in [a] cavity opening that is smaller than a
corresponding width of the associated tooth.” (Id. at 128.) Appellant
discloses that “[t]he progressive modification shown [e.g., in Fig. 3] can be
beneficial in compensating for the appliance non-elastic deformation
depicted in Fig. 2B.” (Id. at 126.)
FF 3. Martz discloses “a new and improved removable orthodontic
appliance.” (Martz 1:6—7.) According to Martz, “the appliances may be
removed and reinstalled by the patient as required as, for example, when
eating.” (Id. at 2:30-32.)
FF 4. More specifically, Martz discloses the appliance includes a
clasp and “[s]uch a clasp is formed of spring wire and engages the facial
and/or lingual surfaces of the teeth, preferably engaging undercuts of the
tooth.” (Id. at 1:27—30; see also id at 5:36-40 (“clasp assembly 40 is made
from a continuous piece of wrought spring wire with ears 32 bent into it
forming a modification of an Adams clasp to grip the lingual side of the
tooth.”) Martz discloses that “[pjreferably the clasps are encased in molded,
flexible appliances of silicone rubber, plastic or other suitable material
hereinafter referred to as ‘flexible material.’” (Id. at 1:16—20.) According to
Martz, the “molded, resilient flexible material appliances [] encase the clasps
and are molded to fit one or both arches of the patient[.] The coverings
augment the clasps, biasing the teeth into normal position.” (Id. at 1:32—36.)
FF 5. Figures 13 and 13 A of Martz are provided below.
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Figures 13 and 13A are cross-sectional views of the removable orthodontic
appliance applied to a tooth (30J). {Id. at 6:59—64.) Figure 13 includes,
inter alia, “U-shaped spring element which goes over the occlusal surface of
the tooth.” {Id. at 6:25—27; see also id. at Fig. 11.) Horizontal wire element
45 is fixed firmly to vertical end of U-shaped spring element 43 and is
formed with curved ends 141 to engage the natural undercuts of a tooth. (Id.
at 6:25 40.) On the opposing side is stretch 144 of spring element 43,
secured by tube 147 to vertical stretch 143 and horizontal element 46, which
has inward curved ends 142 to engage the natural undercuts on the lingual
side of the tooth. {Id.) “[MJolded flexible material 54 . . . flows around and
envelops the clasp assembly” as illustrated in Figure 13A. {Id. at 5:51—53.)
Principles of Law
“Under the principles of inherency, if the prior art necessarily
functions in accordance with, or includes, the claimed limitations, it
anticipates.” In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir.
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2002) (quoting MEIIL/Biophile Ini’l Corp. v. Milgraum, 192 F.3d 1362,
1365 (Fed. Cir. 1999)).
“[AJfter the PTO establishes aprima facie case of anticipation based
on inherency, the burden shifts to appellant to ‘prove that the subject matter
shown to be in the prior art does not possess the characteristic relied on.’”
In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986) (quoting In re Swinehart,
439 F.2d 210, 213 (CCPA 1971)).
Analysis
The Examiner finds that Martz “discloses an orthodontic positioning
appliance 54 (Fig. 13 A) that is capable of being removed by a patient.”
(Ans. 3.) The Examiner finds the appliance “includes a polymeric shell that
has teeth receiving cavities that includes an upper portion (toward occlusal
area) and lower portion (toward gingival area).” {Id. (citation omitted).)
According to the Examiner, Martz’s “polymeric shell 54 is of flexible
material and encases spring clasp 43. Note that clasp 43 is a spring clasp
with ends 141 and 142 engaging the undercuts of the tooth.” {Id. (citation
omitted).) The Examiner reasons “[i]t is inherent that the spring clasp 43
reinforces and applies its clasping force onto the encasing shell 54 especially
in the gingival end areas 141 and 142 in order to clasp onto the tooth.” {Id.)
As the Examiner further explains:
With such clasping force from clasp 43 applied... the polymeric
shell 54 inherently has a width of the cavity substantially smaller
than a corresponding width of the patient tooth prior to and/or
when not worn by the patient as to [be] capable of compensating
for non-elastic deformation due to use of the appliance. That is,
when the appliance is removed from the tooth, with the biasing
tooth structure removed therefrom, the spring clasp 43 is allowed
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to spring inward in accordance [with] the spring clasping force,
and therefore causing the appliance to have a smaller width than
the corresponding width of the tooth.
(Id. at 3 4.)
We adopt the Examiner’s fact finding, reasoning, and determination
that Martz anticipates claim 1. Below we provide further explanation and
address the Appellant’s arguments.
Appellant argues Martz fails to teach the limitation of claim 1 reciting
“the lower portion of the polymeric shell is produced to have a width of the
cavity substantially smaller than a corresponding width of the patient’s
tooth.” (App. Br. 11.) According to Appellant, “Martz is entirely silent
regarding the width of the molded flexible material relative to the width of
the patient’s tooth” and “the molded flexible material is depicted in all
relevant figures of Martz as having the same width as the patient’s tooth.”
(Id. at 13.)
We agree with Appellant that Martz does not expressly disclose that
the width of a cavity formed with the flexible material is less than the width
of corresponding portion of a patient’s tooth. We further agree that the
figures of Martz show the flexible material as having the same width as the
corresponding portion of the patient’s tooth. But that does not end the
inquiry, because in the relevant figures the clasp having the flexible material
is shown on the tooth. The relevant question is what occurs when the clasp
with the flexible material (e.g., as depicted in Figure 13A) is removed from
the tooth. The Examiner finds the clasp and flexible material — particularly
in the lower portion nearer curved ends 141 and 142 — would be biased
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inward (toward the cavity opening) due to a clasping/spring force created by
spring element 43 of the clasp. (Ans. 3—4.)
Appellant argues the Examiner’s reliance on inherency to supply the
element of claim 1 not expressly disclosed in Martz is flawed. Appellant
contends the Examiner failed to provide a basis in fact or technical reasoning
to show that Martz’s clasp necessarily applies a clasping force onto the
encasing flexible material. (App. Br. 13—14.)
We are unpersuaded. The Examiner explained that
since the clasp is disclosed by Martz et al. to be a spring El-
shaped wire clasp 43 for clasping onto a tooth especially at the
gingival/lower portion of the tooth, there is inherently a spring
clasping force provided by such clasp at the gingival/lower
portion thereof in order to effectively clasp onto the
gingival/lower portion of the tooth.
(Ans. 7 (citations omitted).) The Examiner provided technical reasoning,
based on Martz’s express teachings, explaining why the described clasp
would have an inward biasing force along the lower portion of the clasp.
Indeed, in the absence of any such force, we are unpersuaded Martz’s clasp
would grip the tooth in order to correct for malocclusions in the manner
suggested throughout the reference. (FF 4—5.) Put differently, the curved
portions or ears would not securely engage the undercuts of the tooth if not
for some clasping or spring force biasing those portions toward the tooth’s
surface.
Against the Examiner’s findings and reasoning, Appellant provides
argument but no sufficient rebuttal evidence. After a prima facie case of
anticipation based on inherency is made out, the burden shifts to the
applicant to show a difference between the prior art and the claims. See In
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re King, 801 F.2d at 1327; In re Best, 562 F.2d 1252, 1255 (CCPA 1977).
Appellant, for example, provided no evidence that a clasp, designed
according to Martz’s teachings, would lack a clasping or spring force as
determined by the Examiner.
Appellant’s Brief does not clearly dispute that the clasp and spring
element itself (e.g., Figure 13) provides a clasping force in the manner
suggested by the Examiner. Instead, Appellant’s contentions focus on
whether any such clasping force would be imparted to the flexible encasing
material. (App. Br. 14; Reply Br. 7—8.)4 Similarly, Appellant contends “the
Examiner has also failed to provide reasonable support for her assertion that
the clasping force inherently causes the gingival portions of the molded
flexible material to have a cavity width smaller than that of the tooth.”
(App. Br. 14.)
Appellant’s contentions are unpersuasive. As the Examiner points
out, the molded material is expressly described in Martz as resilient and
flexible, being made of materials such as silicone rubber. (Ans. 6; FF 4.)
Absent persuasive argument or evidence to the contrary, we agree with the
4 In the Reply Brief, Appellant contends “the laterally protruding clasp ends
‘hook’ onto the tooth at undercuts, thereby securing the appliance to the
tooth without requiring the active application of force to the tooth.” (Reply
Br. 6.) Appellant offers no explanation why this contention was not made
earlier, particularly where Appellant asserts “the Examiner’s Answer dated
September 10, 2014 appear[s] to repeat, nearly verbatim, the rejections as set
forth in the Office Action dated February 20, 2014.” (Id. at 5.) Even
assuming this contention could be characterized as a reasonable clarification
of an earlier argument, Appellant provides no persuasive evidentiary support
for it. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s
argument in a brief cannot take the place of evidence.”).
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Examiner that a clasping/spring force of the clasp would cause the flexible
material along the lower portion to be biased inward — thus decreasing the
width of the cavity as recited in claim 1. If, alternatively, the flexible
material were too hard or inflexible, that would significantly reduce or
eliminate the inward-biasing force provided by the clasp as previously
described. Because Martz teaches that the flexible materials “augment the
clasps” (Martz 1:30-35), the preponderance of the evidence suggests the
flexible material acts in synergy with the clasp, not against it. This is
consistent with the Examiner’s findings and reasoning. Appellant provided
no persuasive evidence otherwise.
Finally, Appellant contends “the Examiner’s reliance on the
possibility that the flexible molded material can be adjusted (e.g., squeezed)
to have a cavity width smaller than that of the tooth is contrary to the
requirements for establishing inherency.” (App. Br. 14.) We agree. A
possible modification of the prior art does not support a rejection for
anticipation based on inherency. Scaltech Inc. v. Retec/Tetra L.L.C., 178
F.3d 1378, 1384 (Fed. Cir. 1999) (“Inherency may not be established by
probabilities or possibilities.”). But that does not change the analysis
above.5 The Examiner provided other findings and reasoning to support the
anticipation rejection as already discussed.
5 The Examiner appears to now apply the reasoning about adjustment of the
shell by “squeezing inwardly” only with respect to the rejection of
dependent claims 3 and 4 for obviousness. (Ans. 4.)
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Conclusion of Law
We conclude the Examiner established by a preponderance of the
evidence that Martz anticipates claim 1.
Claims 6—12 and 22 have not been argued separately and therefore fall
with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
II & III - OBVIOUSNESS
We adopt as our own the Examiner’s findings of fact, reasoning, and
conclusion of obviousness with respect to Rejection II (see Ans. 4—5, 7) and
Rejection III (see id. at 5, 7—8.)
With respect to the rejection of claims 3 and 4 for obviousness
(Rejection II), Appellant argues the Examiner improperly relied on routine
optimization over Martz to produce an appliance with the claimed
dimensions (e.g., claim 3 “the width of the cavity is five percent to twenty
percent smaller than the corresponding width of the patient’s tooth”). (App.
Br. 15—16.) Appellant contends “the Examiner must first demonstrate that
the general conditions for the claim are already known in the prior art” and
“Examiner has not yet demonstrated that it was already generally known for
an appliance shell to have a cavity width substantially smaller than a
corresponding width of the patient’s tooth.” (Id.)
We are unpersuaded. According to the Examiner, “the lower portion
of the polymeric shell 54 [of Martz] can be adjusted (by squeezing inwardly
at the lower portion) and holds its clasping force.” (Ans. 4.) And, as the
Examiner explained, “[t]he percentage by which the cavity is smaller than a
tooth . . . [is] an obvious matter of choice in the intended use of the shown
structure with a particular sized tooth depending on the tooth and [the]
treatment plan (e.g., how much clasping force wanted, etc.).” (Id.)
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Consistent with the Examiner’s determination, we agree that the width of the
cavity relative to the tooth over which it fits is a result-effective and
optimizable variable that would have predictably been adjusted to provide
greater or lesser clasping force on the appliance of Martz.
With respect to the rejection of claims 14—21 as obvious over Martz
and Chishti (Rejection III), Appellant refers to the arguments concerning
Martz and claim 1, and further contends that Chishti does not remedy the
alleged deficiencies of Martz. (App. Br. 16—17.) These contentions are
unpersuasive for the reasons given above concerning Rejection I.
SUMMARY
We affirm the rejection of claims 1, 6—12, and 22 as anticipated under
35 U.S.C. § 102(b) by Martz.
We affirm the rejection of claims 3 and 4 under 35 U.S.C. § 103(a)
over Martz.
We affirm the rejection of claims 16—21 under 35 U.S.C. § 103(a)
over Martz and Chishti.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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