Ex Parte KakavandDownload PDFPatent Trial and Appeal BoardMay 24, 201712203088 (P.T.A.B. May. 24, 2017) Copy Citation 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).) 2 Appeal 2016-002108 Application 12/203,088 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. 3 Appeal 2016-002108 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. 4 Appeal 2016-002108 Application 12/203,088 126.) “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. 5 Appeal 2016-002108 Application 12/203,088 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. 6 Appeal 2016-002108 Application 12/203,088 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 7 Appeal 2016-002108 Application 12/203,088 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 8 Appeal 2016-002108 Application 12/203,088 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 9 Appeal 2016-002108 Application 12/203,088 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.”). 10 Appeal 2016-002108 Application 12/203,088 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.) 11 Appeal 2016-002108 Application 12/203,088 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.) 12 Appeal 2016-002108 Application 12/203,088 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 13 Copy with citationCopy as parenthetical citation