Ex Parte Mehrhof

Patent Trial and Appeal BoardApr 15, 2016

13133433 (P.T.A.B. Apr. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/133,433 06/08/2011 Jurgen Mehrhof 277 7590 04/18/2016 PRICE HENEVELD LLP 695 KENMOOR SE PO BOX 2567 GRAND RAPIDS, MI 49501 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. MULOOl P359 3236 EXAMINER NELSON,MATTHEWM ART UNIT PAPER NUMBER 3732 MAILDATE DELIVERY MODE 04/18/2016 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JURGEN MEHRHOF Appeal2014-002379 Application 13/133,433 Technology Center 3700 Before MICHELLE R. OSINSKI, JILL D. HILL, and ERIC C. JESCHKE, Administrative Patent Judges. JESCHKE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Jurgen Mehrhof (Appellant) seeks review, under 35 U.S.C. Â§ 134(a), of the Examiner's decision to reject claims 1-8. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. BACKGROUND The disclosed subject matter "relates to a multi-part tooth implant with at least a proximal implant part and a distal implant part that are to be connected to each other such that a connection site is obtained when the two Appeal2014-002379 Application 13/133,433 implant parts are in the connected state." Spec. 1, 11. 9-12. Claim 1, the sole independent claim, is reproduced below, with emphasis added: 1. A multi-part tooth implant with at least a proximal implant part and a distal implant part that are to be connected to each other such that a connection portion is obtained when the two implant parts are in the connected state, wherein an annular sealing element is arranged at this connection portion, which, in the fully assembled state of the tooth implant, is clamped between mutually opposite sealing surfaces, namely a sealing surface of the proximal implant part and a sealing surface of the distal implant part, such that the sealing element has an outer surface portion that forms part of the outer contour of the tooth implant, wherein the two sealing surfaces approach each other in a direction oriented outwards from a central longitudinal axis of the tooth implant, the two sealing surfaces merge into respective outer surfaces of the tooth implant at the place where, in the outer contour of the fully assembled tooth implant, a surface portion formed by the sealing element in each case adjoins a surface portion formed by the respective implant part, which outer surfaces move away from each other in the outwardly oriented direction, characterized in that both implant parts have abutment surfaces facing the respective other implant part, which abutment surfaces abut or meet when the tooth implant is fully assembled and which define the degree of compression of the sealing element in the connected state of the tooth implant. 2 Appeal2014-002379 Application 13/133,433 REJECTIONS ON APPEAL 1. Claims 1---6 are rejected under 35 U.S.C. Â§ 102(b) as anticipated by Hanel (US 5,947,734, issued Sept. 7, 1999). 2. Claim 7 is rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Hanel and Mensor (US 4,993,950, issued Feb. 19, 1991). 3. Claim 8 is rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Hanel, Mensor, and Tohyama (US 2005/0210992 Al, published Sept. 29, 2005). DISCUSSION Rejection I -The rejection of claims 1-6 under 35 U.S.C. Â§ 102(b) Claim 1 recites, among other limitations, that the "proximal implant part" and "distal implant part" both "have abutment surfaces facing the respective other implant part, which abutment surfaces abut or meet when the tooth implant is fully assembled." Appeal Br. 11 (Claims App.). In rejecting claim 1 as anticipated by Hanel, the Examiner identified the "bottom of 21/21' and top of 11/11' in Fig[ s]. 1, 3" as the recited "abutment surfaces." Final Act. 3 (dated Oct. 26, 2012). Appellant argues that the limitation at issue is not satisfied because "Hanel specifically teaches the inclusion of a gap 30 between the structural body 21 and the implant body 11." Appeal Br. 6 (citing Hanel, col. 3, 11. 57- 63; Figs. 1-3 (element 30, 30')). Appellant states that "Hanel particularly includes that the gap 30 'must be of a sufficiently large size in the axial direction."' Id. (quoting, without citation, Hanel col. 4, 11. 35-36). Referring to Figure 3 in Hanel, the Examiner states that "the gap at 30' is present when the sealing element 17' is not fully compressed" but 3 Appeal2014-002379 Application 13/133,433 states that "[w]hen the screw [i.e., element 31 '] is tightened further and the sealing element 17' is further compressed, it can only be further compressed until the gap 30' between the abutment surfaces is gone." Ans. 7. According to the Examiner, "[ o ]nee this state has been reached, where the gap is gone, the abutment surfaces meet." Id. The Examiner states that "Hanel explains that the gap must be big enough so that it exists when the implant is first assembled (so that adjustments may still be made), but will then be diminished as the screw is tightened and the sealing element is compressed." Id. The record here does not support the finding that the identified structures in Hanel satisfy the limitation at issue. "To anticipate a claim, a prior art reference must disclose every limitation of the claimed invention, either explicitly or inherently." In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). Here, the Examiner does not identify any explicit disclosure of, for example, the structures in Figure 1 being configured such that an upper surface of implant body 11 "abut[ s] or meet[ s ]" a lower surface of structural body 21-i.e., such that gap 30 does not exist. See Reply Br. 1 ("[T]here is no disclosure in Hanel of the screw 31 being tightened until the structural body 21 abuts or meets the implant body 11."). Instead, as noted by Appellant, the Examiner essentially takes the position that "o-ring 17 of Hanel could be further compressed until there was no gap 30 between the surfaces of the implant body 11 and the structural body 21." Appeal Br. 6-7 (emphasis added). The Examiner has not, however, provided sufficient evidence that such a configuration is inherently (i.e., necessarily and without modification) disclosed by Hanel. See In re Oelrich, 666 F .2d 578, 581 (CCP A 1981) ("Inherency, however, may not be 4 Appeal2014-002379 Application 13/133,433 established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.") (quotingHansgirgv. Kemmer, 102 F.2d212, 214(CCPA1939)). Although Hanel does disclose that articulated screw 31 can be adjusted to provide greater or lesser "prestress" of seating ring 1 7 (Hanel, col. 4, 11. 25-29), Hanel does not disclose a configuration in which gap 30 does not exist and, in fact, seems to indicate that gap 30 is necessary. See Hanel, col. 3, 11. 57---63 (providing that "structural body 21 is inserted with its lower semicylindrical end part 28 into the correspondingly shaped recess 18 of the implant body 11 and is maintained in such a way that ... there is a sufficient gap 30 in the axial direction"); col. 4, 11. 25-36 (discussing why gap 30 "must ... be of a sufficiently large size in the axial direction"). Thus, we do not sustain the rejection of claim 1, nor the rejection of claims 2---6, which depend from claim 1. Rejections 2 and 3 - The rejections of claim 7 and 8 under 35 U.S.C. Â§ 103(a) Claims 7 and 8 depend from claim 1. Appeal Br. 13 (Claims App.). The Examiner's reliance on Mensor and Tohyama does not remedy the deficiencies in the teachings of Hanel, discussed above (see supra Rejection 1 ). Thus, for the same reasons discussed above, we do not sustain the rejections of claims 7 and 8. DECISION We REVERSE the decision to reject claims 1-8. REVERSED 5