Ex Parte Williams

Patent Trial and Appeal BoardMar 20, 2017

13196686 (P.T.A.B. Mar. 20, 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. v0360 4311 EXAMINER EIDE, HEIDI MARIE ART UNIT PAPER NUMBER 3732 MAIL DATE DELIVERY MODE 13/196,686 08/02/2011 17614 7590 John F. Vodopia PC 191 New York Avenue Huntington, NY 11743 Thomas Williams 03/20/2017 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 THOMAS WILLIAMS Appeal 2015-0066541 Application 13/196,6862 Technology Center 3700 Before PHILIP J. HOFFMANN, JAMES A. WORTH, and KENNETH G. SCHOPFER, Administrative Patent Judges. WORTH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 14—23, 25, 26, and 30. We have jurisdiction under 35 U.S.C. §§ 134 and 6(b). We REVERSE. 1 Our decision refers to the Appellant’s Appeal Brief (“Appeal Br.,” filed Sept. 16, 2014) and Reply Brief (“Reply Br.,” filed June 5, 2015), and the Examiner’s Final Office Action (“Final Act.,” mailed June 17, 2014), Advisory Action (“Adv. Act.,” mailed Feb. 23, 2015), and Answer (“Ans.,” mailed Apr. 23, 2015). 2 According to Appellant, the real party in interest is Thomas Williams (Appeal Br. 3). Appeal 2015-006654 Application 13/196,686 Introduction Appellant’s disclosure relates to “a dental splint for stabilizing mobile or unstable human or animal teeth or firmly rooted teeth,” and more particularly to “an apparatus and method for fabricating such a splint and the procedure for installing same” (Spec. 12). Claims 14 and 30 are the independent claims on appeal. Claim 14, reproduced below, is illustrative of the subject matter on appeal: 14. A method of fabricating a one-piece extracoronal component for stabilizing mobile or unstable teeth, comprising the steps of: examining a patient’s dental arch to determine if lingual reduction is required; creating a representative model of the patient's dental arch; manipulating said representative model to select a group of teeth to be included in the one-piece extracoronal component and to define the height and length of the one-piece extracoronal component customized to the dentition of a patient; fabricating said one-piece extracoronal component from zirconia; dry fitting the fabricated one-piece extracoronal component to confirm proper fit; and adhering the fabricated one-piece extracoronal component to only the mobile or unstable teeth, wherein said one-piece extracoronal component adheres to the lingual aspect of said mobile or unstable teeth, functions substantially as a force transfer component, so customized to the dentition of a patient’s dental arch and appears substantially nonvisible facially. (Appeal Br., Claims App.) 2 Appeal 2015-006654 Application 13/196,686 Rejections on Appeal The Examiner maintains, and the Appellant appeals, the following rejections: 1. Claims 14, 15, 18—23, 25, and 26 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Overby (US 3,395,455, iss. Aug. 6, 1968), Lans (US 6,916,718 B2, iss. July 12, 2005), Golub (US 5,120,224, iss. June 9, 1992), and MacDougald (US 6,648,645 Bl, iss. Nov. 18, 2003). 2. Claims 16 and 17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Overby, Lans, Golub, MacDougald, and Rubbert (US 2008/0090207 Al, pub. Apr. 17, 2008). 3. Claim 30 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Overby, Lans, MacDougald, and Musich (US 5,964,589, iss. Oct. 12, 1999). ANALYSIS Independent claim 14 and its dependent claims Appellant contends that the prior art relied on by the Examiner fails to disclose an “extracoronal” structure, as recited in independent claim 14, i.e., “a one-piece extracoronal component for stabilizing mobile or unstable teeth” (Appeal Br. 12—13). In particular, Appellant argues that the structures of Overby and Lans are internal (and not external) to the tooth (id. ). We are persuaded by Appellant’s contention. The Specification defines “extra-coronal” as “external to the natural tooth” (Spec. 1 57). 3 Appeal 2015-006654 Application 13/196,686 The Examiner relies on Overby and Lans. As to Overby, the Examiner concedes that Overby’s splint is screwed into the tooth (see Appeal Br. 12; Ans. 2), but reasons that part of the splint remains outside the tooth (Ans. 2). The Examiner further reasons that the fastener is not part of the splint (Adv. Act. 2). As a matter of claim construction, the term “extra-coronal component” is modified by the term “one piece.” Although a “component” may refer to a single part, we determine that, in the phrase “one-piece . . . component,” the term “one-piece” would be redundant unless the “component” refers to the entire extra-coronal portion. This understanding is consistent with the usage of the claim phrase “one-piece extracoronal component” throughout the claims, and with the description in the Specification that the splint is bonded to the tooth (see Spec. Tflf 57, 79—80). Therefore, even under the broadest reasonable construction of the claim phrase, “one-piece extracoronal component,” Overby does not have a “one-piece” extracoronal component because the screw and the splint are both extra-coronal. Accordingly, we agree with Appellant that Overby fails to disclose a “one-piece extracoronal component,” as recited in independent claim 14. As to the other reference relied on by the Examiner, Lans requires that a groove be cut into the tooth prior to application of resin and insertion of prongs: The method for applying a splint, requires that a small, flat groove be cut into each of the two adjacent teeth. The grooves are aligned and cut at the contact point of the teeth. Each groove is slightly larger than the outer circumference of the two prongs and shoulders of the splint. The sides of the grooves are undercut, so the bottom circumference of the 4 Appeal 2015-006654 Application 13/196,686 groove is greater than the top. The grooves are lined with bonding agents and a flowable composite resin is placed in each groove. The splint is then placed in the aligned grooves so that the shoulder and prongs on one side of the splint are in one tooth, and the shoulder and prongs on the opposite side of the splint are in the adjacent teeth. (col. 2,11. 13—24) (see Appeal Br. 13—14). We agree with Appellant that Lans does not teach an “extracoronal” structure, as defined in the Specification, because the prongs are set into grooves inside the teeth. For these reasons, we do not sustain the Examiner’s rejection under § 103 of independent claim 14 and its dependent claims. Independent claim 30 Independent claim 30 contains similar language and requirements as independent claim 14. Therefore, we do not sustain the Examiner’s rejection under § 103 of independent claim 30, for similar reasons as for independent claim 14. DECISION The Examiner’s decision to reject claims 14—23, 25, 26, and 30 under 35 U.S.C. § 103(a) is reversed. REVERSED 5