Ex Parte Lowe

Patent Trial and Appeal Board

Aug 31, 2017

13609346 (P.T.A.B. Aug. 31, 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.
13/609,346 09/11/2012 Michael K. LOWE OA:006003 7894
11132 7590 09/05/2017
Rmilware Rr Valnir
EXAMINER
Three Riverway, Suite 950
Houston, TX 77056
NELSON, MATTHEW M
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
09/05/2017 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):
patent @ boulwarevaloir.com
nseigel @ boulwarevaloir.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL K. LOWE and LAWRENCE W. SWOL
Appeal 2015-003430
Application 13/609,346
Technology Center 3700
Before BRANDON J. WARNER, PAUL J. KORNICZKY, and
BRENT M. DOUGAL, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2015-003430
Application 13/609,346
STATEMENT OF THE CASE
Appellants Michael K. Lowe and Lawrence W. Swol1 appeal under
35 U.S.C. § 134(a) from the Examiner’s decision, as set forth in the Final
Office Action dated April 29, 2014 (“Final Act.”) and Advisory Action
dated June 5, 2014 (“Adv. Act.”), rejecting claims 23, 25, and 26.2 We have
jurisdiction under 35 U.S.C. § 6(b). A hearing was held on August 7, 2017.
We AFFIRM-IN-PART.
THE CLAIMED SUBJECT MATTER
The claims are directed to a vibrating orthodontic remodeling device.
Claims 23, 25, and 26, the claims on appeal, are reproduced below with
disputed limitations italicized for emphasis:
23. An orthodontic remodeling device, comprising:
a) an extraoral vibratory source;
b) an extraoral processor that controls said vibratory
source and captures and transmits usage data;
c) a power source that drives said vibratory source;
d) an intraoral attachment consisting essentially of a
bite plate allowing for contact with occlusal surfaces and at
least one of lingual and buccal surfaces of both arches of a
patient’s teeth at the same time, wherein a patient biting on said
bite plate holds said orthodontic remodeling device in place
during use;
e) said vibratory source being coupled to the intraoral
attachment;
f) wherein said orthodontic remodeling device is
hermetically sealed and vibrates only at a frequency selected to
be between 0.1 Hz and 400 Hz.
1 Appellants identify Ortho Accel Technologies, Inc. as the real party in
interest. Appeal Brief, dated July 9, 2014, at 3 (“Appeal Br.”).
2 Claims 1—22 are cancelled, and claim 24 is withdrawn from
consideration. Appeal Br. 4; Final Act. Summary.
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Application 13/609,346
25. The device of claim 23, wherein said device vibrates at a
force selected to be between 0.1 and 0.5 Newtons.
26. The device of claim 23, wherein said device vibrates at a
force of 0.2 Newtons.
REFERENCES
In rejecting the claims on appeal, the Examiner relied upon the
following prior art:
Giuliani US 5,263,218 Nov. 23, 1993
Berge US 6,353,956 B1 Mar. 12, 2002
Lundell US 6,611,780 B2 Aug. 26, 2003
Mao US 6,832,912 B2 Dec. 21,2004
Dworzan US 7,409,741 B2 Aug. 12, 2008
Lowe US 2008/0227046 A1 Sept. 18, 2008
REJECTIONS
The Examiner made the following rejections:
1. Claim 23 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Giuliani, Lundell, Mao, Dworzan, and Berge.
2. Claims 25 and 26 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lowe and Mao.
Appellants seek our review of these rejections.
DISCUSSION
The Rejection of Claim 23
As Unpatentable Over Giuliani, Lundell, Mao, Dworzan, and Berge
The Examiner finds, in part, that Berge discloses “an intraoral
attachment consisting essentially of a bite plate allowing for contact with
occlusal surfaces and at least one of lingual and buccal surfaces of both
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arches of a patient’s teeth at the same time,” as recited in claim 23. Final
Act. 5 (citing Berge, Figs. 1, 6, 7, 9). According to the Examiner:
The intraoral attachment taught by Berge is made up of a
horizontal part 16 and front and back vertical parts 12/14.
Although bristles [35] are shown attached to the intraoral
attachment, the bristles are not part of the intraoral attachment.
The bristles are separate and distinct structures that are attached
to the intraoral attachment.
Elements 12, 14 and 16 may serve as the intraoral
attachment, wherein the intraoral attachment (while holding
bristles) is not itself made of bristles. Since claim 23 is open-
ended, allowing additional, unclaimed elements, due to the word
“comprising” in the preamble, the orthodontic remodeling device
may comprise bristles that are attached to the intraoral
attachment.
Ans. 8—9.3
Using this claim construction, the Examiner determines that it would
have been obvious
to modify Giuliani/Lundell/Ma[o]/Dworzan by making the bite
plate shaped so as to allow for contact with occlusal surfaces and
at least one of lingual and buccal surface of both arches of a
patient’s teeth at the same time, as taught by Berge, for the
purpose of allowing teeth of both arches to be cleaned at the same
time, thereby saving time in cleaning the teeth.
Final Act. 5.
Appellants assert that clause (d) uses the phrase “consisting
essentially of’ to limit the scope of the bite plate. Appellants correctly
assert:
3 The Examiner also posits an alternative interpretation in which the
bite plate is U-shaped elements 12, 14, flange 16, and bristles 35. Ans. 10.
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Application 13/609,346
The specification expressly teaches bristles as an example of
a material element that is excluded as fundamentally
changing the nature of the invention:
[0071] The phrase “consisting essentially of’ excludes additional
material elements, but allows the inclusions of non-material
elements that do not substantially change the nature of the
invention. Thus, the term consisting essentially of excludes such
elements as bulky head gear, designed to hold the device in place
during use, tooth brush bristles, lasers, and the like, which
would fundamentally change the nature and use of the device. []
Appeal Br. 11 (reproducing, with emphasis, paragraph 71 of Appellants’
Specification). In light of the Specification’s clear indication that
“consistently essentially of’ excludes elements such as toothbrush bristles,
Berge’s U-shaped elements 12, 14 and flange member 16 holding bristles 35
do not disclose the bite plate recited in claim 23. The Examiner’s finding to
the contrary is inconsistent with the Specification, and is, therefore,
unsupported.4
In addition, the Examiner’s stated rationale for combining Berge with
the other prior art and the Examiner’s finding regarding Berge’s bite plate
are inconsistent with one another. The Examiner proposes combining Berge
with the other prior art “for the purpose of allowing teeth of both arches to
be cleaned at the same time, thereby saving time in cleaning the teeth.”
Final Act. 5 (emphasis added). The Examiner’s proposed combination can
only clean teeth if the bite plate contains bristles. In contrast, the Examiner
4 Contrary to the Examiner’s contention that paragraph 69 of US
2008/0227046, incorporated by reference into the Specification, discloses
that the intraoral attachment may contain bristles (Ans. 10), statements about
a different embodiment relating to different claims in another application are
irrelevant to the present claims.
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finds that Berge’s bite plate includes U-shaped elements 12, 14 and flange
16 and excludes bristles 35. Without bristles 35, the proposed combination
cannot clean teeth as proposed by the Examiner. Finally, the Examiner’s
rationale is also contrary to the intended purpose of claim 23, which is
directed to orthodontic remodeling, not cleaning teeth.
Contrary to the Examiner’s finding, Berge does not disclose an
intraoral attachment or bite plate as recited in claim 23. The other prior art
does not remedy the deficiencies of Berge. The rejection of claim 23 is not
sustained.
The Rejection of Claims 25 and 26
As Unpatentable Over Lowe and Mao
Appellants’ Specification states a benefit claim of the filing dates of
several “parent” applications:
Application No. Publication No. Filing Date
60/906,807 Mar. 14, 2007
11/773,849 2008/0227046 A1 (“Lowe”) July 5, 2007
11/773,858 2008/0227047 A1 July 5, 2007
12/615,049 2010/0055634 A1 Nov. 9, 2009
Spec. 11.
The Examiner determines that claims 25 and 26 are not supported by
three parent applications (No. 60/906,807; No. 11/773,849 (Lowe); and No.
11/773,858), and, thus, are not entitled to the earlier filing dates of those
applications. The Examiner determines that claims 25 and 26 are first
supported by Application No. 12/615,049, and, thus, are entitled only to the
filing date of the ’049 application (i.e., November 9, 2009). Final Act. 2—3.
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Appellants do not contest these determinations. See, e.g., Appeal Br. 14—16;
Reply Br. i—ii.
Because the effective filing date of claims 25 and 26 is no earlier than
November 9, 2009, the Examiner applies Lowe and Mao against claims 25
and 26. The Examiner finds that Lowe discloses all of the limitations in
claim 23, from which claims 25 and 26 depend. The Examiner also finds
that, as recited in claims 25 and 26, Mao discloses using a force that is
“preferably about 0.1 to about 5 Newtons.” Ans. 19 (citing Mao 3:53—54);
see also Final Act. 6, 9.
The Examiner determines that it would been obvious “to modify
Lowe by making the device vibrate at a force selected to be between 0.1-0.5
Newtons and by making the device vibrate at a force of 0.2 Newtonsf,] as
taught by Mao, for the purpose of providing a device that remodels teeth in a
desired manner.” Final Act. 6; see also id. at 9 (it would have been
“‘obvious to try’ the force taught by Mao to be effective in performing
orthodontic remodeling”). Mao, for example, discloses “applying cyclic
forces to at least one tooth of the mammal in which tooth realignment is
desired with a peak magnitude of about 10 Newtons, and preferably about
0.1 to about 5 Newtons.” Mao 3:35—45.
Appellants argue that the rejection of claims 25 and 26 is erroneous
for several reasons. First, Appellants argue that Lowe is not prior art against
dependent claims 25 and 26 because Lowe cannot be prior art against base
claim 23, which has common subject matter disclosed in Lowe, and is
entitled to Lowe’s filing date under 35 U.S.C. § 120. Appeal Br. 14. The
two cases cited by Appellants refute Appellants’ position. See Reply Br. i
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(citing Santarus, Inc. v. Par Pharm. Inc., 694 F.3d 1344 (Fed. Cir. 2012))
and ii (citing In re Chu, 66 F.3d 292 (Fed. Cir. 1995)).
In Santarus, the Federal Circuit held that the common disclosure in a
parent application (i.e., US Patent No. 5,840,737) can be used to invalidate
claims in a continuation-in-part application (i.e., US Patent No. 6,699,885) if
the applicant “is unable to claim an early enough priority date to preclude
use of [the parent application] as prior art for some of the asserted claims [in
the CIP application].” Santarus, 694 F.3d at 1352. Appellants argue that
Santarus is inapposite because “there were breaks in the chain of priority
and Applicant did not argue that point.” Reply Br. i. Contrary to
Appellants’ assertion, “[t]here is no break in the chain of priority” between
the CIP ’885 patent and the parent ’737 patent. Santarus, 694 F.3d at 1361—
62.
Similarly, in Chu, the Federal Circuit held that a parent application
may be prior art to claims in a CIP application that cannot claim priority to
the parent application. Here, there is no dispute that CIP claims 25 and 26
cannot claim priority to the parent Lowe application. Appellants offer no
legal support for the proposition that the common subject matter in claims
25 and 26 and the parent Lowe patent (i.e., the limitations in independent
claim 23), properly carried forward in co-pending continuing applications,
cannot be prior art against itself. Appellants’ argument is not persuasive.
Second, Appellants argue that it would not have been obvious to try
the forces disclosed in Mao because (1) the claimed “force [i.e., 0.1-0.5N] is
considerably lowered from the 2N and 5N force actually used by Mao,” and
(2) Mao’s “forces were used for rabbit cranial suture and facial lengthening
studies, which is irrelevant to human orthodontics.” Appeal Br. 15—16.
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Contrary to Appellants’ arguments, however Appellants concede that Mao
discloses a “proposed” human orthodontic device that is applicable to
humans and other mammals. See, e.g., Appeal Br. 15; Mao 4:38-40 (“FIG.
2 is a diagrammatic view of an orthodontic device utilizing a device of the
present invention in place in a human mouth having a malocclusion.”)
(emphasis added); Spec. 125—26 (describing “cyclic forces can also be used
for orthodontic remodel[]ing”). Appellants, in the Specification, also
acknowledge that it is known from studies by Mao and others that “forces
ranging from 0.3N to 5N[] increased bone remodeling.” Contrary to
Appellants’ assertion that Mao uses “2N and 5N force,” Mao actually
discloses that the range of acceptable cyclic forces have “a peak magnitude
of about 10 Newtons, and preferably about 0.1 to about 5 Newtons.” Mao
3:39-41. Appellants do not persuasively explain why a person of ordinary
skill in the art would not try the forces described in Mao. KSR Int 7 Co.
Teleflex Inc., 550 U.S. 398, 421 (2007) (“When . . . there are a finite number
of identified, predictable solutions, a person of ordinary skill has good
reason to pursue the known options within his or her technical grasp.”).
Appellants’ argument is not persuasive.
For the reasons above, the rejection of claims 25 and 26 is sustained.
DECISION
For the above reasons, the Examiner’s rejection of claim 23 under
35 U.S.C. § 103(a) as being unpatentable over Giuliani, Lundell, Mao,
Dworzan, and Berge is REVERSED.
The Examiner’s rejection of claims 25 and 26 under 35 U.S.C.
§ 103(a) as being unpatentable over Lowe and Mao 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-IN-PART
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