Ex Parte Yarovesky

Patent Trial and Appeal BoardAug 8, 2014

12115967 (P.T.A.B. Aug. 8, 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. 12/115,967 05/06/2008 Uriel Yarovesky DENTAL-50748 6117 26252 7590 08/08/2014 KELLY & KELLEY, LLP 6320 CANOGA AVENUE SUITE 1650 WOODLAND HILLS, CA 91367 EXAMINER SZEKELY, PETER A ART UNIT PAPER NUMBER 1766 MAIL DATE DELIVERY MODE 08/08/2014 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 URIEL YAROVESKY ________________ Appeal 2013-000263 Application 12/115,967 Technology Center 1700 ________________ Before BRADLEY R. GARRIS, CHARLES F. WARREN, and TERRY J. OWENS, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from Examiner’s rejection of claims 31-42. We have jurisdiction under 35 U.S.C. § 6(b). The Invention Appellant claims a dental restoration. Claim 31 is illustrative: 31. A dental restoration, comprising: a dental restoration base attachable to a tooth of a patient or insertable in a mouth of a patient; a decal attached to the dental restoration base and having printed thereon an image of a selected natural oral cavity characteristic of the patient including tooth structure, enamel, dentin, crazing lines, stains, veins, blood vessels, bony coloration, hyper-calcification, mucosal tissue or gum tissue so as to be similar in appearance to at least a portion of a natural tooth or oral cavity tissue; and Appeal 2013-000263 Application 12/115,967 2 a sealant disposed over the decal and at least a portion of the dental restoration base. The Reference Kim US 2005/0074721 A1 Apr. 7, 2005 The Rejections Claims 31-42 stand rejected under 35 U.S.C. § 102(b) or, in the alternative, under 35 U.S.C. § 103 over Kim. OPINION The rejection under 35 U.S.C. § 102(b) is reversed and the rejection under 35 U.S.C. § 103 is affirmed as to claims 31-36 and 38-41 and reversed as to claims 37 and 42. Rejection under 35 U.S.C. § 102(b) “Anticipation requires that every limitation of the claim in issue be disclosed, either expressly or under principles of inherency, in a single prior art reference.” Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1255-56 (Fed. Cir. 1989). Appellant’s independent claims (31 and 38) require a dental restoration base to which is attached a decal having printed thereon an image of a natural oral cavity characteristic so as to be similar in appearance to at least a portion of a natural tooth or oral cavity tissue. Kim teaches that “[l]ong endeavors have been made in the dentistry and dental restoration area to improve the material, colors, and shapes of artificial teeth or dentin structures, particularly, for making the artificial teeth resembled to the natural teeth of a patient” (¶ 2) and that “[i]n addition, certain efforts have also been made to apply ornaments onto the surface of Appeal 2013-000263 Application 12/115,967 3 artificial teeth to obtain a particular fashion desired by the user” (¶ 3). Kim applies a decal comprising an ornamental design, image and/or informational media to the front or rear surface of a natural tooth or a dental construct such as an artificial tooth, dental crown, veneer, inlay or onlay, and forms thereon at least one layer having mechanical strength (¶¶ 1, 5, 7, 9, 23). Appellant states that “the differences between Kim and the present invention reside in the printed matter on the substrate decal” (App. Br. 16). “Where printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability.” In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983). Appellant argues that Appellant’s printed matter “is functionally related to the decal and dental restoration base in that it creates the appearance of at least a portion of a natural tooth or oral cavity tissue, which is functional in nature in the art of dental restoration” (Reply Br. 6-7) and that “[t]here is no disclosure or suggestion whatsoever in Kim that the decal have printed thereon an image of a selected natural oral cavity characteristic” (App. Br. 11). Examiner points out that “where the printed matter is not functionally related to the substrate, the printed matter will not distinguish the invention from the prior art in terms of patentability” (Ans. 3) and argues that “[i]t is immaterial whether the image on the decal is the user’s natural tooth or the Mona Lisa. It can be anything the user desires and for purposes of patentability the user’s personal preferences are irrelevant.” Id. Appeal 2013-000263 Application 12/115,967 4 Examiner has not established that in the dental art, printed matter on a dental restoration decal is not functionally related to the decal and dental restoration base. Examiner’s mere assertion that the appearance of the printed matter is immaterial is insufficient for establishing lack of such functional relationship. Accordingly, we reverse the rejection under 35 U.S.C. § 102(b). Rejection under 35 U.S.C. § 103 Claims 31-36 and 38-41 Although Appellant addresses claims 38-41 under a separate heading (App. Br. 19-20), Appellant relies upon the same arguments with respect to claims 31-36 and 38-41 (App. Br. 9-20). We therefore limit our discussion to one claim among those claims, i.e., claim 31. Claims 32-36 and 38-41 stand or fall with that claim. See 37 C.F.R. § 41.37(c)(1)(vii) (2007). Appellant argues that modifying Kim’s image such that it renders the decal similar in appearance to at least a portion of a natural tooth or oral cavity tissue would render Kim’s decal unsatisfactory for its intended purpose (App. Br. 15). Although Kim’s printed matter is limited to ornamental designs, images and/or informational media (¶ 1), Kim’s disclosure that efforts have been made in dentistry both to apply ornaments to the surface of artificial teeth and to make artificial teeth resemble natural teeth (¶¶ 1, 2) would have led one of ordinary skill in the art, through no more than ordinary creativity, to use, as an alternative to Kim’s ornamental images, images including those recited in Appellant’s claims which make artificial teeth resemble natural teeth. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (in Appeal 2013-000263 Application 12/115,967 5 making an obviousness determination one “can take account of the inferences and creative steps that a person of ordinary skill in the art would employ”). Appellant argues, in reliance upon In re Nomiya, 509 F.2d 566 (CCPA 1975), that Appellant’s recognition of “the problems of fabricating dental restorations to replicate the natural anatomical appearance in the oral cavity without depending upon the artistic abilities of a relatively few dental technicians” is strong evidence of non-obviousness of Appellant’s claimed invention (App. Br. 14). That argument is not well taken because Appellant has not established that the problem of “relatively few dental technicians that have the artistic ability or experience to artistically perform dental restorations to a level necessary to achieve high aesthetic results” (Spec. ¶ 2) was unknown in the prior art. As set forth in Nomiya, 509 F.2d at 572, “[t]he significance of evidence that a problem was known in the prior art is, of course, that knowledge of a problem provides a reason or motivation for workers in the art to apply their skill to its solution.” Thus, we are not persuaded of reversible error in the rejection of claims 31-36 and 38-41under 35 U.S.C. § 103. Claims 37 and 42 Dependent claims 37 and 42 require “a secondary decal attached to the restoration base.” Examiner argues that “[m]ultiple glazes and decals are shown in [Kim’s] Figure 6” (Ans. 3). Appeal 2013-000263 Application 12/115,967 6 That figure shows steps of providing a dental construct substrate, providing a decal sheet containing desired images, applying a glaze onto the dental construct, firing the glaze-applied dental construct, positioning a decal sheet on the dental construct substrate, firing the dental construct substrate and decal, applying glaze onto the dental construct, and firing the glaze-applied dental construct. Although the figure says “providing a decal sheet” and “positioning a decal sheet”, the decal sheet in the positioning step is the decal sheet in the providing step (¶¶ 36, 40, 41, 59, 60). Figure 6 does not include a step of providing and positioning a second decal sheet. Examiner argues that it would have been prima facie obvious to one of ordinary skill in the art to cover up Kim’s first decal with a second decal if the image on the first decal is unsatisfactory (Ans. 3). That argument is based upon pure speculation, and such speculation is not a sufficient basis for a prima facie case of obviousness. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967); In re Sporck, 301 F.2d 686, 690 (CCPA 1962). We therefore reverse the rejection under 35 U.S.C. § 103 of claims 37 and 42. DECISION/ORDER The rejection of claims 31-42 under 35 U.S.C. § 102(b) over Kim is reversed. The rejection of claims 31-42 under 35 U.S.C. § 103 over Kim is affirmed as to claims 31-36 and 38-41 and reversed as to claims 37 and 42. It is ordered that Examiner’s decision is affirmed-in-part. Appeal 2013-000263 Application 12/115,967 7 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED-IN-PART lp