Ex Parte Vanini et al

Patent Trial and Appeal BoardMay 4, 2018

12067418 (P.T.A.B. May. 4, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/067,418 08/14/2008 75628 7590 05/08/2018 RANKIN, HILL & CLARK LLP 23755 LORAIN ROAD, SUITE 200 NORTH OLMSTED, OH 44070 FIRST NAMED INVENTOR Lorenzo Vanini 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. LUS-18209 1685 EXAMINER PEPITONE, MICHAEL F ART UNIT PAPER NUMBER 1767 NOTIFICATION DATE DELIVERY MODE 05/08/2018 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): 7 5628@rankinhill.com digges@rankinhill.com shea@rankinhill.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LORENZO V ANINI, EUGENIO MICELI, and THOMAS NIEM Appeal2017-006965 Application 12/067 ,418 Technology Center 1700 Before DONNA M. PRAISS, JULIA HEANEY, and MICHAEL G. MCMANUS, Administrative Patent Judges. PRAISS, Administrative Patent Judge. DECISION ON APPEAL 1 Appellants2 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's final decision to reject claims 1-3, 8-22, and 25-33. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. 1 In explaining our Decision, we make reference to the Specification filed August 14, 2008 ("Spec."), the Final Office Action entered May 9, 2016 ("Final Act."), the Appeal Brief filed October 7, 2016 ("App. Br."), the Examiner's Answer entered February 3, 2017 ("Ans."), and the Reply Brief filed March 27, 2017 ("Reply Br."). 2 The real parties in interest are identified as GDF Gesellschaft fuer Dentale Forschung und Innovation Gmbh, Micerium S.p.A., and Lorenzo Vanini. App. Br. 3. Appeal2017-006965 Application 12/067,418 BACKGROUND The subject matter on appeal relates to dental materials, in particular filling substances and dental enamels. Spec. 1: 1-3. According to the Specification, known dental materials' indices of refraction do not match those of natural teeth, resulting in an optical effect or aesthetic that is a drawback. Id. at 1:5-7. Claim 1 is reproduced below (disputed limitations italicized): 1. A material comprising: a curable resin; an amount of inorganic nano-scale solid particles having a diameter of less than 100 nanometers; glass particles having an index of refraction; and accessory substances for autopolymerizing or light curing the resin; wherein the amount of inorganic nano-scale solid particles present in the material is selected such that an exclusive mixture consisting of said curable resin and said inorganic nano-scale solid particles would exhibit an index of refraction that deviates at most by 5% from the index of refraction of the glass particles, and wherein an index of refraction of the cured material is within a range of 1.56 to 1. 70. App. Br. 20 (Claims Appendix). Claim 2 depends from claim 1 and further recites "the index of refraction of the cured material is larger than 1.59." Id. Claim 15 also depends from claim 1 and further recites "the glass particles have a mean maximum diameter of 5 Âµm." Id. at 21. Claims 25-27 depend directly or indirectly from claim 1 and require that the index of refraction of the resin 2 Appeal2017-006965 Application 12/067,418 and inorganic nano-scale solid particles deviates at most by 2%, 1 %, and 0.2%, respectfully. Id. at 22-23. REJECTIONS ON APPEAL 1. Claims 1-3, 8, 9, 12-22, and 25-33 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Chadwick3 in view ofMichl. 4 Ans. 3; Final Act. 2. 2. Claim 10 stands rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Chadwick and Michl as applied to claim 1 in further view of Gander. 5 Ans. 6; Final Act. 6. 3. Claim 11 stands rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Chadwick and Michl as applied to claim 1 in further view of Davy. 6 Ans. 7; Final Act. 7. ANALYSIS Rejection 1 For the reasons stated on pages 2--4 of the Final Office Action and pages 2-3 of the Answer, the Examiner determines that claims 1-3, 8, 9, 12-22, and 25-33 are unpatentable under 35 U.S.C. Â§ 103(a) over Chadwick in view of Michl. In the Appeal Brief, Appellants argue the rejection of claims 1, 3, 8, 9, 12-14, 16-22, and 28-33 as a group and claims 25-27 as a group. App. Br. 7-12. In accordance with 37 C.F.R. Â§ 41.37( c )(1 )(iv), we select claims 1 3 Chadwick et al., US 2006/0014883 Al, pub. Jan. 19, 2006 ("Chadwick"). 4 Michl et al., US 4,267,097, issued May 12, 1981 ("Michl"). 5 Gander et al., US 3,835,090, issued Sept. 10, 1974 ("Gander"). 6 Davy et al., US 5,679,710, issued Oct. 21, 1997 ("Davy"). 3 Appeal2017-006965 Application 12/067,418 and 25 as representative of these groups, thus, claims 3, 8, 9, 12-14, 16-22, and 28-33 will stand or fall with claim 1 and claims 26 and 27 will stand or fall with claim 25. Appellants separately argue the rejection of claims 2 and 15, therefore, we discuss below the rejection of claims 1, 2, 15, and 25. Claim 1 Appellants contend that the Examiner erred in rejecting claim 1 because ( 1) Chadwick fails to disclose the particle size of glass that should be incorporated into dental composites as the disclosure in paragraph 40 merely grinds glass to a size for determining whether any glass phase is present, (2) Chadwick fails to disclose the refractive index of the cured material containing 33% quartz by weight and the refractive index cannot be predicted with any degree of certainty, but would be lower than the claimed range because quartz has a refractive index of 1.458, (3) Michl teaches away from the use of glass particles having a larger particle size than micro-fine inorganic particles, and ( 4) the claimed property of a refraction index that deviates at most by 5% from the refraction index of the glass particles is not necessarily achieved by a curable resin having inorganic nano-scale solid particles, glass particles, and accessory substances for autopolymerizing or light curing the resin as an amount of inorganic nano scale solid particles must be selected. Id. at 8-15. The Examiner responds that Chadwick discloses a dental composite containing radiopaque glasses, a glass having a refractive index of 1.592, a composite containing 45% by volume resin, 33% by volume quartz filler, and 22% by volume glass, as well as the polymerized resin having a refractive index of 1.564. Ans. 8-9 (citing Chadwick Abstr., i-fi-124, 35, 47). 4 Appeal2017-006965 Application 12/067,418 The Examiner concedes that "the dental composite [0035] does not specifically recite the glass of Ex. 3 is 10-20 Âµm," but all that the reference discloses must be considered, specifically, Chadwick's disclosure of obtaining 10-20 Âµm glass particles by grinding. Id. at 9. Regarding Michl, the Examiner responds that Michl teaches adding micro fine fillers to dental materials for thickening of the monomer and imparting thixotropic properties to the material so that the mixture can be liquefied again by simple stirring, thereby preventing sedimentation. Id. (citing Michl 2:39--57, 3:11-14). Modifying Chadwick with the teachings of Michl such that the silica (at least 50%) has a particle size of 10 to 40 mÂµ (10 to 40 nm) for preventing sedimentation, the Examiner finds that the dental composition disclosed is substantially identical to the claimed material and that the properties recited for the index of refraction of the cured material and the index of refraction of the mixture of resin and inorganic nano-scale particles deviating at most by 5% from the index of refraction of the glass particles would be implicitly achieved. Id. at 9--10. In the Reply Brief, Appellants assert that the index of refraction required by claim 1 depends on the amount of inorganic nano-scale solid particles present as shown by examples 7-16 in Appellants' Specification, therefore, it is not the case that any amount of inorganic nano-scale solid particles present necessarily results in the required index of refraction that deviates at most by 5% from the index of refraction of the glass particles. Reply Br. 4. Appellants' arguments are not persuasive of reversible error by the Examiner. Appellants do not dispute the Examiner's findings (Ans. 8-9) 5 Appeal2017-006965 Application 12/067,418 that (1) Chadwick discloses dental composites containing radiopaque glasses, (2) Chadwick also discloses grinding glass particles to a size of 10-20 Âµm, (3) Chadwick discloses a composite containing 45 vol% resin, 33 vol% quartz filler, and 22 vol% glass (a weight ratio of resin to silica of about 1.2), ( 4) Chadwick discloses quartz filler for preventing sedimentation, and ( 5) Michl discloses polymerizable dental materials comprising 10-90% micro fine filler having a particle size of less than 400 mÂµ, with at least 50% having a particle size of 10-40 mÂµ to impart thixotropic properties and prevent sedimentation. Appellants' argument that Michl' s disclosure of disadvantages caused by the addition of micro fine solid particles teaches away from the combination with Chadwick (App. Br. 11; Michl 2:20-68) is not persuasive of error because Michl also evidences that the addition of micro fine solid particles to a dental composition are known to provide the benefit of preventing sedimentation and also imparting thixotropic properties to the material (Ans. 9, 11-12; Michl 2:39-57, 3: 1-14 ). Therefore, Michl does not lead away from using an amount of inorganic nano-scale solid particles having a diameter of less than 100 nm as required by the claim. In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001) ("A reference may be said to teach away when a person of ordinary skill, upon reading the reference, ... would be led in a direction divergent from the path that was taken by the applicant") (internal quotations and citation omitted). A combination of references may be obvious even if the combination eliminates a benefit of one of the references. In re Urbanski, 809 F.3d 1237, 1244 (Fed. Cir. 2016) ("the Board properly found that one of ordinary skill would have been motivated to pursue the desirable properties taught by 6 Appeal2017-006965 Application 12/067,418 Wong, even at the expense of foregoing the benefit taught by Gross"). Based on the cited record in this Appeal, however, Michl discloses how to minimize the known disadvantages by using an inorganic filler having a particle size of less than about 400 mÂµ (Michl 3:63---68) while achieving the stated advantage with a preferred particle size range of about 10-40 mÂµ (Michl 3: 1-14). Therefore, based on the preponderance of the evidence, Michl provides a rational underpinning for the modification of Chadwick and does not teach away from the combination. Appellants' argument that any amount of inorganic nano-scale solid particles does not necessarily result in the curable resin and inorganic nano-scale solid particles exhibiting an index of refraction that "deviates at most by 5% from the index of refraction of the glass particles," as recited in claim 1, does not adequately rebut the Examiner's finding (Ans. 9-10) that Chadwick as modified with Michl discloses a substantially identical dental composition and the disputed property is inseparable from the chemical composition. Appellants do not dispute the Examiner's finding that the combination of Chadwick and Michl discloses a substantially identical dental composition. The Examiner finds (Ans. 9) that the glass of Chadwick's Example 3 has a refractive index of 1.592 and is incorporated into a polymerized resin containing ethoxylated bisphenol-A dimethacrylate having a refractive index of 1.564, which is a deviation of 1.75% from the refractive index of the glass. The Examiner has provided the record with a preponderance of evidence including commonalities shared by Chadwick and claim 1 which justifies requiring Appellants to prove that Chadwick's product does not necessarily or inherently possess the claimed characteristic of the mixture of 7 Appeal2017-006965 Application 12/067,418 curable resin and inorganic nano-scale solid particles exhibiting an index of refraction that deviates at most by 5% from the index of refraction of the glass particles. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) ("[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. ... Whether the rejection is based on 'inherency' under 35 U.S.C. Â§ 102, on 'prima facie obviousness' under 35 U.S.C. Â§ 103,jointly or alternatively, [J the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products" (internal footnote and citation omitted)). No such proof has been provided by Appellants. Moreover, Appellants only identify the amount of inorganic nano-scale particles being determinative of the disputed property and assert that "the amount selected is not an inherent physical property or claimed effect" (Reply Br. 4) (emphasis omitted) without explaining why the amount of inorganic nano-scale particles disclosed by Chadwick would not result in the disputed property, let alone the amount disclosed by Chadwick in the particle size taught by Michl. To the extent that Appellants discovered that the amount of inorganic nano-scale particles correlates to the index of refraction and that a minimum deviation from the index of refraction is desirable (Reply Br. 4--5), the same effect would necessarily occur from optimizing the prior art composition as suggested by Chadwick, because both Appellants and the prior art use conventional methods to prepare the glasses and the dental composites and Chadwick teaches that glasses can be mixed with a resin and other fillers "such that the refractive index of the resin and glass filler substantially match." Chadwick i-f 18; Spec. 1:3-12, 8 Appeal2017-006965 Application 12/067,418 9: 1-9, 10: 1-9; see also Chadwick i-f 47 ("The range of refractive indices for these glasses corresponds well to the refractive indices of common dental resins."); cf MEHL/Biophile Int'! Corp. v. Milgraum, 192 F.3d 1362, 1366 (Fed. Cir. 1999) ("Where, as here, the result is a necessary consequence of what was deliberately intended [by the prior art], it is of no import that the [prior art's] authors did not appreciate the results"). On this record, because Appellants have not identified reversible error in the Examiner's rejection of claim 1, we affirm the Examiner's rejection. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t has long been the Board's practice to require an applicant to identify the alleged error in the [E]xaminer's rejections"). Claim 2 Appellants contend that the Examiner erred in not identifying "any possible way one could arrive at a cured material using the information provided by Chadwick et al. and Michl et al. that meets ... [the required index of refraction larger than 1.59]." App. Br. 15. Appellants also argue that Chadwick's teaching of grinding radiopaque glasses to a size of 10-20 Âµm for refractive index testing indicates the glasses are used in dental composites at a larger size. Id. In addition, Appellants assert that Chadwick's use of quartz as a filler would necessarily bring the refractive index containing this material "to well below 1.59 as claimed in claim 2." Id. The Examiner responds that because the dental composition of the prior art is substantially identical to the claimed material, the required index of refraction of the cured material would implicitly be achieved by the composition with all the claimed ingredients. Ans. 12. 9 Appeal2017-006965 Application 12/067,418 Appellants do not address claim 2 in the Reply Brief. We are not persuaded by Appellants' arguments for essentially the same reasons discussed above in connection with claim 1. Appellants do not dispute the Examiner's finding (Final Act. 3; Ans. 9) that Chadwick discloses an index of refraction of 1.564 for its polymerized resin. The Examiner's finding is supported by the record. Chadwick i-f 47. Appellants provide no explanation why Chadwick's disclosure of grinding each glass to produce 10-20 Âµm particles (Chadwick i-f 40) suggests the particles used in the composite would have been larger. Indeed, if Chadwick's disclosure of grinding glasses to a certain size suggests to a skilled artisan other sizes may be used in the composite, why wouldn't that also suggest smaller sizes? Appellants also do not adequately rebut the Examiner's finding that Chadwick as modified with Michl discloses compositions substantially identical to the claimed composition and would be expected to have the same chemical properties. Claim 15 Appellants contend that the Examiner erred in not explaining why the limitation that the glass particles have a mean maximum diameter of 5 Âµm would have been obvious. App. Br. 17. The Examiner responds that a change of size is generally recognized as being within the level of ordinary skill in the art and would have been obvious in view of Chadwick's disclosure of grinding glass particles. Ans. 14. Appellants do not separately address claim 15 in the Reply Brief. We are not persuaded by Appellants' arguments. As discussed in 10 Appeal2017-006965 Application 12/067,418 connection with claim 2, Appellants contend that a person skilled in the art would not understand Chadwick's disclosure of grinding each glass to produce 10-20 Âµm particles (Chadwick i-f 40) to mean that the particles used in the composite are 10-20 Âµmin size. App. Br. 15. If Chadwick's disclosure of grinding glasses to a certain size suggests to a skilled artisan other sizes may be used in the composite, then Chadwick reasonably also would suggest smaller sizes or that size of the glass particles as an obvious variation. Claim 25 Appellants contend that the Examiner erred because "[Appellants'] invention, which matches the refractive index of the mixture of resin and inorganic nano-scale particles closely to that of the glass particles is completely different ... [from the teachings of Chadwick and Michl]." App. Br. 18. According to Appellants, Chadwick and Michl are directed to different problems and provide different solutions and cannot be combined without contradicting the teachings of Michl. Id. The Examiner responds that because Chadwick as modified with Michl discloses a dental composition substantially identical to the claimed material, the claimed property of the chemical composition would necessarily be present. Ans. 15. In the Reply Brief, Appellants make the same arguments as presented with respect to claim 1 and note that claim 25 recites an even smaller deviation. Reply Br. 4. We are not persuaded by Appellants' arguments for the same reasons discussed above in connection with claim 1. 11 Appeal2017-006965 Application 12/067,418 Rejection 2 For the reasons stated on pages 6-7 of the Final Office Action and pages 6-7 of the Answer, the Examiner determines that claim 10 is unpatentable under 35 U.S.C. Â§ 103(a) over Chadwick in view of Michl and further in view of Gander. In the Appeal Brief, Appellants argue that Gander does not cure the defects in the base rejection of Chadwick and Michl. App. Br. 16. Appellants' arguments are not persuasive of reversible error by the Examiner for the same reasons we are not persuaded of error in the Examiner's combination of Chadwick and Michl as discussed above in connection with claim 1. On this record, because Appellants have not identified reversible error in the Examiner's rejection, we affirm the Examiner's rejection of claim 10 over Chadwick in view of Michl and further in view of Gander. Rejection 3 For the reasons stated on pages 7-8 of the Final Office Action and pages 7-8 of the Answer, the Examiner determines that claim 11 is unpatentable under 35 U.S.C. Â§ 103(a) over Chadwick in view of Michl and further in view of Davy. In the Appeal Brief, Appellants argue that Davy does not cure the defects in the base rejection of Chadwick and Michl. App. Br. 16. Appellants' arguments are not persuasive of reversible error by the Examiner for the same reasons we are not persuaded of error in the Examiner's combination of Chadwick and Michl as discussed above in connection with claim 1. 12 Appeal2017-006965 Application 12/067,418 Based on the cited record in this Appeal, we affirm the Examiner's rejection of claim 11 as unpatentable over Chadwick and Michl in further view of Davy. CONCLUSION We AFFIRM all of the Examiner's rejections. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED 13