Ex Parte Memmolo et al

Patent Trial and Appeal BoardNov 6, 2015

10575988 (P.T.A.B. Nov. 6, 2015)

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. 10/575,988 04/17/2006 Marcello Memmolo 19725 8467 272 7590 11/09/2015 SCULLY, SCOTT, MURPHY & PRESSER, P.C. 400 GARDEN CITY PLAZA SUITE 300 GARDEN CITY, NY 11530 EXAMINER SINGH, SUNIL K ART UNIT PAPER NUMBER 3722 MAIL DATE DELIVERY MODE 11/09/2015 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 MARCELLO MEMMOLO and DANIEL GUNTER ____________ Appeal 2013-001189 Application 10/575,9881 Technology Center 3700 ____________ Before ULRIKE W. JENKS, KENNETH G. SCHOPFER, and JACQUELINE T. HARLOW, Administrative Patent Judges. SCHOPFER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to dental implants and related parts. The Examiner rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE Background “The present invention refers generally to an improved transfer part or holding element for an implant . . . which is suitable to secure over a longer period of time the implant in an inner ampule filled with liquid.” Spec. 1. 1 According to Appellants, the real party in interest is Straumann Holding AG. App. Br. 2. Appeal 2013-001189 Application 10/575,988 2 The Claims Claims 11–14 and 16–21 are on appeal. Claim 11 is illustrative and reads as follows. 11. A combination of a dental implant and a transfer part for holding the dental implant, the transfer part comprising: a free extension at one end of the transfer part for coupling a rotational tool and a first radial groove adjacent to the free extension for receiving a securing element; a clamping portion at the other end of the transfer part for the clamping connection2 of the transfer part to the dental implant, said clamping connection providing the sole connection between the transfer part and the implant, the clamping portion comprising a force transmission element for securing the clamping connection against rotation, a second radial groove directly adjacent to the force transmission element, and a clamp ring insertable into the second radial groove to engage with the dental implant, wherein the dental implant comprises an internal undercut positioned correspondingly to the second radial groove of the clamping portion of the transfer part and dimensioned suitably to provide together with the second radial groove a receiving means for clampingly receiving the clamp ring. App. Br. 12 (emphasis added). Independent claims 17 and 18 also require a transfer part with a clamping connection that provides the sole connection between the transfer part and a dental implant. Id. at 13–14. 2 We note, without further comment, that there does not appear to be any antecedent basis for “the clamping connection” in any of the independent claims. Appeal 2013-001189 Application 10/575,988 3 The Rejections 1. The Examiner maintains that claims 11, 13, 14, and 16–21 are unpatentable under 35 U.S.C. § 103(a) over Vogt3 in view of Porter.4 2. The Examiner maintains that claim 12 is unpatentable under 35 U.S.C. § 103(a) over Vogt in view of Porter and Sutter.5 DISCUSSION 1. Vogt in view of Porter For the reasons set forth below, we find that the Examiner failed to establish that the art of record teaches or suggests, or that it would have been obvious based on the knowledge of a person of ordinary skill in the art to include, a clamping connection that provides the sole connection between a transfer part and an implant, as required by each of the independent claims. Principles of Law In order to establish a prima facie case of obviousness, the Examiner must show that each and every limitation of the claim is described or suggested by the combination of prior art references or would have been obvious based on the knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988). Analysis Each of the independent claims requires a dental implant and a transfer part for the dental implant including a clamping connection that 3 Vogt et al., US 2004/0096804 A1, published on May 20, 2004. 4 Porter et al., US 2004/0101808 A1, published on May 27, 2004. 5 Sutter et al., US 5,078,605, issued on Jan. 7, 1992. Appeal 2013-001189 Application 10/575,988 4 provides the sole connection between the transfer part and the implant. In rejecting the independent claims, the Examiner finds that Vogt discloses a transfer part as claimed, as depicted in Figure 3A. Figure 3A shows an adapter 3 including a driving section 30 at its distal end for form fit insertion into an inner contour of a dental implant. Vogt ¶ 88. The Examiner finds that driving section 30 is a clamping portion that provides the sole connection between the transfer part 3 and the implant. Ans. 5. Appellants argue, inter alia, that neither Vogt nor Porter, either individually or collectively, teaches or suggests a clamping portion that provides the sole connection between the transfer part and the implant. See App. Br. 6–7. We find that Appellants have the better position. Specifically, we agree that Vogt discloses a transfer cap that provides an additional connection between the adapter and the implant, as shown in Figure 5B. Appeal 2013-001189 Application 10/575,988 5 Figure 5B shows a cross-sectional view of an implant 1 with an adapter 3 and a transfer cap 2. Vogt ¶¶ 35, 94. Vogt discloses that the transfer cap is locked onto the implant and the adapter is inserted into the implant such that the driving portion 30 of the adapter engages the inner contour 17 of the implant and that section 31 of the adapter “is gripped with defined frictional connection by the cylinder portion 200 of the transfer cap . . . so that the adapter 3 inserted into the transfer cap 2 and in the implant 1 does not inadvertently slide out . . . .” Id. at ¶ 94. Thus, we find that Vogt discloses that the adapter connects to the implant not only at the driving section 30 but also via the transfer cap, and that both connections are required to keep the adapter from inadvertently moving. To the extent the Examiner finds that the driving section 30 provides “a screw-type fit in the internal bore of the implant in order to provide the connection between the transfer part and the Appeal 2013-001189 Application 10/575,988 6 implant” (see Ans. 7), we disagree, and we note that there does not appear to be any disclosure in Vogt of a screw-type connection between the adapter and the implant. Further, to extent the Examiner finds that Vogt’s transfer cap is not used to connect the adapter to the implant (see id.), we disagree based on the description provided by Vogt, as discussed above. Finally, we note that the Examiner does not rely on Porter as teaching or suggesting a clamping connection providing the sole connection between the transfer part and the implant. See id. at 5–6. Thus, the Examiner has not established, and we find that it is not readily apparent, that Porter teaches or suggests a clamping connection providing the sole connection between a transfer part and an implant as claimed. See App. Br. 7. Based on the foregoing, we determine that the Examiner failed to establish a prima facie showing of obviousness with respect to any of the independent claims. Accordingly, we reverse this rejection. 2. Vogt in view of Porter and Sutter With respect to the rejection of claim 12 over Vogt, Porter, and Sutter, the Examiner does not rely on Sutter to cure the deficiencies in the rejection of independent claim 11, as discussed above. Thus, we determine that the Examiner failed to establish a prima facie showing of obviousness with respect to claim 12. Accordingly, we reverse this rejection. CONCLUSION For the reasons set forth above, we reverse the rejection of claims 11– 14 and 16–21. REVERSED