Ex Parte Wool

Patent Trial and Appeal BoardJun 16, 2014

12169717 (P.T.A.B. Jun. 16, 2014)

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. 12/169,717 07/09/2008 Arthur L. Wool 133.47668X00 9806 20457 7590 06/16/2014 ANTONELLI, TERRY, STOUT & KRAUS, LLP 1300 NORTH SEVENTEENTH STREET SUITE 1800 ARLINGTON, VA 22209-3873 EXAMINER WALTERS, RYAN J ART UNIT PAPER NUMBER 3726 MAIL DATE DELIVERY MODE 06/16/2014 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 ARTHUR L. WOOL ____________ Appeal 2012-003150 Application 12/169,717 Technology Center 3700 ____________ Before JENNIFER D. BAHR, STEFAN STAICOVICI, and LYNNE H. BROWNE, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Arthur L. Wool (Appellant) appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 5-9 and 11-19. Claims 1-4, 10, and 20 have been withdrawn by the Examiner. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). INVENTION Appellant’s invention “relates to a process of making a crimp stop.” Spec. 2, l. 7. Appeal 2012-003150 Application 12/169,717 2 Claims 5 and 17 are independent claims. Claim 5 is illustrative of the claimed invention and reads as follows: 5. A process for making a crimp stop, comprising forming a metal material into a formed member having a U-shaped cross- section and a size and shape configured to receive an orthodontic archwire and to be crimped so as to maintain position of the member on the orthodontic archwire, annealing the entire formed member by heating, and cooling the annealed member to soften the metal material. REJECTIONS The following rejections are before us for review1,2: I. The Examiner rejected claims 5, 7, 9, 16, 17, and 19 under 35 U.S.C. § 102(b) as anticipated by Kupcak (US 4,226,550, iss. Oct. 7, 1980). II. The Examiner rejected claims 5-7, 9, and 11-19 under 35 U.S.C. § 102(b) as anticipated by Castner (US 2006/0228664 A1, pub. Oct. 12, 2006) or, in the alternative, under 35 U.S.C. § 103(a) as unpatentable over Castner and Dunn (US 2,993,980, iss. Jul. 25, 1961). 1 The rejection of claims 9 and 19 under 35 U.S.C. § 112, second paragraph, as being indefinite, has been withdrawn by the Examiner. See Advisory Action, mailed April 6, 2011. 2 The Examiner instituted a new ground of rejection of claims 11-15 as anticipated by Castner or, in the alternative, as unpatentable over Castner and Dunn. See Ans. 4, 8. Accordingly, the rejection of claims 11-15 as anticipated by Castner or, in the alternative, as unpatentable over Castner and Dunn, as made in the Final Rejection, mailed December 21, 2010, is considered to have been withdrawn by the Examiner. Compare Final Rej. 3-5 with Ans. 8-11. Appeal 2012-003150 Application 12/169,717 3 III. The Examiner rejected claim 8 under 35 U.S.C. § 103(a) as unpatentable over Castner, Dunn, and Goldberg (US 4,717,341, iss. Jan. 5, 1988). IV. The Examiner rejected claim 8 under 35 U.S.C. § 103(a) as unpatentable over Kupcak and Goldberg. SUMMARY OF DECISION We AFFIRM. ANALYSIS Rejections I and IV Appellant argues that Kupcak fails to teach a “formed member having . . . a size and shape configured to receive an orthodontic archwire and to be crimped so as to maintain position of the member on the orthodontic archwire,” as called for by each of independent claims 5 and 17. App. Br. 5. The Examiner responds that, “the limitations for receiving an archwire and crimping the member are NOT positively recited.” Ans. 12. Thus, according to the Examiner, independent claims 5 and 17 merely require that the formed member have a size and shape “capable of (i.e. configured) receiving an orthodontic archwire and capable of (i.e. configured) being crimped so as to maintain position of the member on the orthodontic wire.” Ans. 12-13. As such, the Examiner finds that “the components in Kupcak are of a size and shape configured to receive an orthodontic archwire and to be crimped.” Ans. 13. An ordinary and customary meaning of the term “crimp” is “to be an inhibiting or restraining influence on.” Merriam Webster’s Collegiate Appeal 2012-003150 Application 12/169,717 4 Dictionary (10th Ed. 1997). Such an interpretation of the term “crimp” is consistent with Appellant’s Specification, which describes a crimp stop as, “hold[ing] very efficiently to an archwire.” Spec. 4, l. 22. As such, in a first instance, we appreciate the Examiner’s position that the size and shape of Kupcak’s U-shaped member 24 is capable of receiving an orthodontic wire and of being crimped. However, the Examiner has not shown by a preponderance of the evidence that Kupcak’s U-shaped member 24 is capable of being “crimped so as to maintain position of the member on the orthodontic wire,” as called for by each of independent claims 5 and 17. More specifically, the Examiner has not provided any persuasive evidence or technical reasoning to show that the size and shape of Kupcak’s U-shaped member 24 is such as to receive an orthodontic archwire, yet not so large that the archwire would have excess room to move around once crimped (i.e., inhibit/restrain crimp stop with respect to orthodontic archwire). Accordingly, because the Examiner does not establish a sound basis that Kupcak teaches “a formed member having . . . a size and shape configured . . . to be crimped so as to maintain position of the member on the orthodontic archwire,” we do not sustain the rejection of independent claims 5 and 17, and their respective dependent claims 7, 9, 16, and 19 under 35 U.S.C. § 102(b) as anticipated by Kupcak. With respect to Rejection IV, the Examiner’s use of Goldberg does not remedy the deficiency of Kupcak, as described supra. See Ans. 83. Therefore, we likewise do not sustain the rejection of claim 8 under 35 U.S.C. § 103(a) as unpatentable over Kupcak and Goldberg. 3 The Examiner finds that “Goldberg teaches using a metal material of a NiCrCo alloy for orthodontic devices” (emphasis and citation omitted). Appeal 2012-003150 Application 12/169,717 5 Rejection II The anticipation rejection based upon Castner Appellant argues that Castner fails to disclose an annealing step, as called for by independent claims 5 and 17. App. Br. 7; Reply Br. 2-3. In response, the Examiner points to ¶ 43 of Castner, which describes a “formed and heat treated clip,” and further states that “[a]nneal is defined as ‘[t]o subject (glass or metal to a process of heating and slow cooling in order to toughen and reduce brittleness’ or ‘to strengthen or harden’ (from Answer.com).” Ans. 15. Although we appreciate that Castner teaches heat-treating clip 10, nonetheless, we do not agree that a generic teaching of heat-treating constitutes “annealing.” As defined by the Examiner, annealing constitutes a process of “heating and slow cooling” (emphasis added). In contrast, Castner’s generic teaching of heat treatment, which, although it constitutes a process of heating and cooling, fails to teach slow cooling, which is characteristic for an annealing process, as the Examiner has explained4. As such, for the foregoing reasons, we do not sustain the rejection of claims 5-7, 9, and 11-19 under 35 U.S.C. § 102(b) as anticipated by Castner. The obviousness rejection based upon Castner and Dunn Claims 5-7, 9, and 16-19 Appellant has not presented arguments for the patentability of claims 6, 7, 9, and 16–19 apart from claim 5. See App. Br. 8-9; see also Reply Br. 4 For example, the heat treatment of “quenching,” which is defined as “to cool (as heated metal) suddenly by immersion (as in oil or water),” includes heating and fast cooling. Merriam Webster’s Collegiate Dictionary (10th Ed. 1997). Appeal 2012-003150 Application 12/169,717 6 1-2. Therefore, in accordance with 37 C.F.R. § 41.37(c)(1)(vii) (2011), we select claim 5 as the representative claim to decide the appeal of the rejection of these claims, with claims 6, 7, 9, and 16-19 standing or falling with claim 5. Appellant argues that the “self-ligating orthodontic bracket assembly” of Castner “is completely different than a crimp stop.” App. Br. 6. However, Appellant’s argument does not explain how clip 10 of Castner fails to constitute a “crimp stop” and does not take into consideration the Examiner’s finding that only clip 10 of Castner’s orthodontic bracket assembly constitutes the recited “crimp stop.” Ans. 6 (“Castner discloses a process for making a crimp stop 10 . . . ”). Furthermore, as the Examiner notes, because the term “crimp stop” appears only in the preamble of independent claim 5, the preamble does not limit the scope of a claim when it simply states a purpose or intended use of the invention. See Ans. 13–14; see also Loctite Corp. v. Ultraseal Ltd., 781 F.2d 861, 868 (Fed. Cir. 1985). In this case, Appellant’s Specification does not provide a definition of a “crimp stop,” but merely describes a crimp stop as, “hold[ing] very efficiently to an archwire.” Spec. 4, l. 22. In similar fashion, Castner describes clip 10 as retaining archwire 50 within archslot 52. See Castner, ¶ 92 and Fig. 6. As such, we agree with the Examiner that “the term ‘crimp stop’ does not imply any specific structure which would restrict” clip 10 “from being relied on as a ‘crimp stop’.” Ans. 14. Appellant further argues that Castner’s clip 10 “does not have a size and shape configured to receive an orthodontic archwire” because “the orthodontic archwire is received in the slot 52 of the bracket,” rather than “into the crimp so as to maintain position of the member on the orthodontic Appeal 2012-003150 Application 12/169,717 7 archwire.” App. Br. 7 (citing Castner, Figs. 4 and 5); see also Reply Br. 2. We are not persuaded by Appellant’s argument because it is well established that limitations not appearing in the claims cannot be relied upon for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Here, independent claim 5 does not require that the formed U-shaped member be configured to directly receive an orthodontic archwire, that is, “into the crimp,” as Appellant argues, but merely that it receives an orthodontic archwire. Although we appreciate Appellant’s position that archwire 50 is located in slot 52 of bracket 16, nonetheless, because clip 10 locks onto bracket 16 to retain archwire 50 there between, we agree with the Examiner that Castner’s clip 10 is configured to receive an orthodontic wire, as broadly called for by independent claim 5. See Ans. 6 (citing Castner, ¶ 43 (“The metal clip is configured to hold the orthodontic wire into the bracket archslot.”)). Lastly, Appellant argues that because Castner fails to disclose an annealing step and Dunn’s heat exchanger tubes are not crimp stops and are not configured to receive an orthodontic archwire, “there would not have been any reason to combine the teachings of [Castner] with [Dunn].” App. Br. 7-9; Reply Br. 2-4. We are not persuaded by Appellant’s argument because Appellant cannot show nonobviousness by attacking Castner and Dunn individually when the rejection as articulated by the Examiner is based on a combination of Castner and Dunn. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). In this case, the Examiner uses the teachings of Dunn to show “annealing an entire formed member by heating, and cooling the annealed member to soften the metal material.” Ans. 7 (citing Dunn, col. 3, ll. 37–55). Furthermore, the Supreme Court has rejected the rigid Appeal 2012-003150 Application 12/169,717 8 requirement that the rationale for the proposed combination come from within the references. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (Rejecting the rigid requirement of a teaching, suggestion or motivation to combine known elements in order to show obviousness). Appellant’s conclusory assertion that, “there would not have been any reason” ignores and fails to point out the error in the rationale provided by the Examiner, namely, “for the purpose of . . . tailoring the mechanical properties of the member and to strengthen the metal.” Ans. 7. Given that the Examiner correctly found that the choice of metallurgical processing (i.e., heat treatment) used to form Castner’s clip 10 “allow[s] for tailoring the mechanical properties of the clip as needed,” the Examiner’s reasoning has a rational underpinning. Id. (citing Castner, ¶ 90). In conclusion, for the foregoing reasons, we sustain the rejection under 35 U.S.C. § 103(a) of independent claim 5, and claims 6, 7, 9, and 16– 19 falling with claim 5, as unpatentable over of the combined teachings of Castner and Dunn. Claims 11-155 Appellant argues that Castner fails to disclose “a formed member having a dimension parallel to a longitudinal length of an orthodontic archwire of 0.08 to 0.10 inches.” Reply Br. 3. However, the rejection as articulated by the Examiner is not based on Castner alone, but rather on a modification of Castner and Dunn. See Ans. 9. More specifically, the 5 As the Examiner notes, Appellant’s arguments with respect to the rejection of claims 11-15 over the combined teachings of Castner and Dunn, as presented on pages 9-10 of the Appeal Brief, are moot in view of the Examiner’s new ground of rejection. See Ans. 13; see id. 8-9. Appeal 2012-003150 Application 12/169,717 9 Examiner concludes that because Castner’s spine width 24 and spine curvature 26 constitute controlled design parameters, “one of ordinary skill in the art could adjust the width to provide optimal configuration offering an optimal combination of flexibility and strength of the clip.” Id (citing In re Aller, 220 F.2d 454, 456 (CCPA 1955)). Appellant does not come forth with any persuasive evidence or technical reasoning to show error in the Examiner’s reasoning. Appellant also argues that Castner’s teachings “with respect to the spine width and the thickness of the clip have no relation to the size and shape of a crimp stop . . . configured to receive an orthodontic archwire into the crimp stop so as to maintain position of the member on the orthodontic archwire.” Reply Br. 3 (emphasis added). This argument is merely a repetition of the argument presented supra with respect to the rejection of independent claim 5 (see App. Br. 7; Reply Br. 2), and as such, we are not persuaded for the reasons expressed above. In conclusion, we likewise sustain the rejection of claims 11-15 under 35 U.S.C. § 103(a) as unpatentable over of the combined teachings of Castner and Dunn. Rejection III Appellant argues that, “clearly nothing in [Goldberg] remedies the basic deficiencies noted above with respect to [Castner] and [Dunn]” App. Br. 11. However, because we do not find any deficiencies with the Examiner’s rejection based upon the combined teachings of Castner and Dunn, and for the reasons set forth supra, we also sustain the rejection of claim 8 under over the combined teachings of Castner, Dunn, and Goldberg. Appeal 2012-003150 Application 12/169,717 10 SUMMARY The Examiner’s decision to reject claims 5, 7, 9, 16, 17, and 19 under 35 U.S.C. § 102(b) as anticipated by Kupcak is reversed. The Examiner’s decision to reject claims 5–7, 9, and 11–19 under 35 U.S.C. § 102(b) as anticipated by Castner is reversed. The Examiner’s decision to reject claims 5–7, 9, and 11–19 under 35 U.S.C. § 103(a) as unpatentable over Castner and Dunn is affirmed. The Examiner’s decision to reject claim 8 under 35 U.S.C. § 103(a) as unpatentable over Castner, Dunn, and Goldberg is affirmed. The Examiner’s decision to reject claim 8 under 35 U.S.C. § 103(a) as unpatentable over Kupcak and Goldberg is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED llw