Ex Parte Yoon et alDownload PDFPatent Trial and Appeal BoardJun 19, 201713384810 (P.T.A.B. Jun. 19, 2017) Copy Citation 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. 13/384,810 01/19/2012 Ji Hoon Yoon CU-9580 ZBF 4569 26530 7590 06/21/2017 T ADASfrPARRY T T P EXAMINER 224 SOUTH MICHIGAN AVENUE PATEL, YOGESH P SUITE 1600 CHICAGO, IL 60604 ART UNIT PAPER NUMBER 3732 NOTIFICATION DATE DELIVERY MODE 06/21/2017 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): ChicagoU SPTO@ladas.net PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JI HOON YOON and SANG OH PARK Appeal 2016-004250 Application 13/3 84,8101 Technology Center 3700 Before FRANCISCO C. PRATS, ULRIKE W. JENKS, and TAWEN CHANG, Administrative Patent Judges. PRATS, Administrative Patent Judge. DECISION ON APPEAL This appeal under 35 U.S.C. § 134(a) involves claims to a dental implant fixture capable of being implanted in bone tissue. The Examiner rejected the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE The following rejections are before us for review: (1) Claims 1—3, under 35 U.S.C. § 103(a), for obviousness over Appellants’ Admitted Prior Art (“AAPA” (Appellants’ Figure 2)), Lazzara,2 and Lang3 (Ans. 2—3); and 1 Appellants state that “OSSTEMIMPLANT CO., LTD. is the real party in interest.” App. Br. 3. Appeal 2016-004250 Application 13/384,810 (2) Claims 4 and 5, under 35 U.S.C. § 103(a), for obviousness over AAPA, Lazzara, Lang, and Mochida2 3 4 (Ans. 4). Claim 1 is representative and reads as follows (App. Br. 16—17 (emphasis added)): 1. An implant fixture that is adapted to be implanted into a bone tissue including cortical bone and cancellous bone while rotating on a central axis to thereby form an artificial tooth root, the implant fixture comprising: a first portion that comprises a first screw thread having first peaks and first roots alternating with one another on an outer surface of the first portion; and a second portion that is disposed below the first portion, wherein a second screw thread having second peaks and second roots alternating with one another is formed on an outer surface of the second portion, wherein distances between adjacent second peaks of the second screw thread are equal to distances between adjacent first peaks of the first screw thread, and wherein outer diameters of the second screw thread are the same in up and down directions and inner diameters of the second screw thread are less than inner diameters of the first screw thread', and a third portion that is disposed below the second portion, wherein a third screw thread having third peaks and third roots alternating with one another on an outer surface of the third portion, and wherein a cutting edge is caved to be more adjacent to the central axis than the third roots and is arranged only in the third portion and is arranged around the outer surface of the third portion below the screw thread, and wherein the first screw thread and the second screw thread each have at least double threads, and 2 US 5,000,686 (issued Mar. 19, 1991). 3 US 2005/0250074 A1 (published Nov. 10, 2005). 4 US 5,642,996 (issued July 1, 1997). 2 Appeal 2016-004250 Application 13/384,810 wherein the outer diameter of the first screw thread and the outer diameters of the second screw thread are the same, and wherein the first screw thread and the second screw thread are continuously connected to each other. OBVIOUSNESS— AAPA, LAZZARA, AND LANG The Examiner’s Prima Facie Case In rejecting claims 1—3 over AAPA, Lazzara, and Lang, the Examiner cited AAPA as disclosing a dental implant fixture having threaded first, second, and third portions as recited in the rejected claims, but differing from the claims in not having the thread configuration required by the claims. Ans. 2. As evidence that it was known in the art to configure threaded bone- implantable dental implant fixtures to have the thread configuration required by claims 1—3, the Examiner cited Lazzara as disclosing an implant fixture having cylindrical top portion and a tapered bottom portion, with the diameter of some of the threads of the bottom tapered portion having the same outer diameter as required by claim 1, and with some of the threads at the bottom tapered portion having a smaller diameter than the top portion, as also required by claim 1. Id. at 2—3. The Examiner concluded that an ordinary artisan would have considered it obvious to modify the AAPA implant to have the thread configuration taught by Lazzara, thereby meeting the thread limitations in Appellants’ claim 1, because near the apical end of the shaft/core the threads are deeper and will cut more deeply into the side walls of the prepared bore in the bone; it provides increased thread engagement between the implant and the bone deep within the 3 Appeal 2016-004250 Application 13/384,810 bore and a strong anchor to hold the implant immobile during healing process. Ans. 3. The Examiner cited Lang as evidence that it would have been obvious to provide an implant with double threads as required by the claims, because double threads “enable a cleaner insertion of the implant as less bone deterioration and healing time is reduced as a result.” Id- Analysis As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992): [T]he examiner bears the initial burden ... of presenting a prima facie case of unpatentability. . . . After evidence or argument is submitted by the applicant in response, patentability is determined on the totality of the record, by a preponderance of evidence with due consideration to persuasiveness of argument. Appellants’ argument, essentially, is that the Examiner erred in finding that Lazzara teaches or suggests the combination of first, second, and third portions required by claim 1, even when combined with AAPA and Lang. See App. Br. 10-14. In particular, Appellants contend, Figure 1 of Lazzara does not teach or suggest a second central portion of its implant having “1) multiple portions or screw threads, or 2) its outer diameter of a second screw thread being the same as the outer diameter of a first screw thread.” Id. at 13. Rather, Appellants contend, “the outer diameter Dt of the tapered apical portion [of Lazzara’s implant] is never equal to the outer diameter Dp of the cylindrical gingival region as shown in Figure 1 and in column 3, lines 5—9 . . . .” Id. (quoted language omitted). 4 Appeal 2016-004250 Application 13/384,810 The Examiner responds that Lazzara “clearly shows that the outer diameters of the first and the second portions are the same in up and down direction (see reference numeral 15 in Lazarra’s [sic] figure lfi (Ans. 5), and provides the following annotated version of Lazzara’s Figure 1 to illustrate that position: Figure 1 of Fazzara shows a bone-implantable dental implant fixture with annotations by the Examiner to show the threads and peaks of the implant, as well as annotations by the Examiner showing first, second, and third portions of the implant alleged to have the features of the first, second, and third portions required by Appellants’ claim 1. 5 Appeal 2016-004250 Application 13/384,810 Appellants reply that Lazzara’s implant has only two portions, a cylindrical and tapered portion, and contend that the Examiner arbitrarily labeled Lazzara’s Figure 1 to have a second portion. Reply Br. 4—7. Moreover, Appellants contend, the Examiner’s rationale for modifying the implant of the AAPA only provides motivation for providing the implant with the deeper threads at the apical (bottom) portion of the implant, not for providing the AAPA implant with the second portion required by claim 1. Id. at 7—8. Having carefully considered the arguments and evidence on both sides, we find that a preponderance of the evidence supports the Examiner’s conclusion that the implant fixture recited in claim 1 would have been obvious to an ordinary artisan. Lazzara discloses, as seen in Figure 1 reproduced above, a “dental implant fixture 10 has a partially-tapered main body shaft 12 bearing screwthreads 14 having peaks truncated on a cylindrical locus 15 of diameter Dp.” Lazzara 3:1—4. Lazzara discloses: In the preferred embodiment illustrated, the shaft is cylindrical from its gingival [top] end 16 to the bottom of the bore 26, that is, from turn 14.1 to turn 14.3, following which the shaft tapers to a smaller diameter toward its apical [bottom] end 18. Three turns 14.4 to 14.6 are borne on the tapered portion of the shaft. Id. at 3:36-41. As we understand the Examiner’s position, the cylindrical section of Lazzara’s implant at thread turns 14.1/14.11 and 14.2 corresponds to the first portion of the implant fixture of Appellants’ claim 1, the tapered section of Lazzara’s implant at turns 14.3 and 14.4 corresponds to claim 1 ’s second portion, and the tapered section at turns 14.5 and 14.6 corresponds to claim 6 Appeal 2016-004250 Application 13/384,810 1 ’s third portion. See Ans. 6; see also Lazzara Fig. 1. Thus, contrary to Appellants’ contention (Reply Br. 7), each of the sections of Lazzara’s implant asserted as corresponding to the portions of claim 1 has a plurality of peaks and roots. Moreover, because Lazzara’s implant tapers to a narrower diameter starting at turn 14.3, the section of Lazzara’s implant fixture at turns 14.3 and 14.4, asserted by the Examiner as corresponding to claim 1 ’s second portion, has a narrower diameter than the uppermost section of Lazzara’s fixture, as claim 1 requires. See App. Br. 16 (“inner diameters of the second screw thread are less than inner diameters of the first screw thread”) (claim 1). As the Examiner points out, moreover, the outer diameter of the threads of turns 14.3 and 14.4 are shown to have diameter “Dp,” the same diameter as the threads at turns 14.1/14.11 and 14.2 (see Ans. 5—6; see also Lazzara Fig. 1), thus meeting claim 1 ’s requirement for the outer diameters of the threads of the first and second portions to be the same. See App. Br. 16—17 (“outer diameters of the second screw thread are the same in up and down directions” and “the outer diameter of the first screw thread and the outer diameters of the second screw thread are the same”) (claim 1). We, thus, agree with the Examiner that Lazzara’s implant has a second portion that includes all of the features Appellants’ claim 1 requires of the second portion of the claimed implant. We again acknowledge Appellants’ contention that the outer diameter Dt of the tapered bottom portion is never equal to the outer diameter Dp of the cylindrical region shown Lazzara’s Figure 1. App. Br. 13 (citing Lazzara 3:5—9). However, that the outer diameter Dt at the bottom portion 7 Appeal 2016-004250 Application 13/384,810 of Lazzara’s implant is less than diameter Dp does not negate the finding by the Examiner (Ans. 5), supported by Lazzara’s Figure 1, that the outer thread diameter Dp at turns 14.3 and 14.4 is shown to be the same as the outer thread diameter at turns 41.1/14.11 and 14.2, despite the narrower tapering inner diameter at turns 14.3 and 14.4. See Lazzara Fig. 1 (thread diameters at turns 14.1/14.11, 14.2, 14.3, and 14.4 all extend from diameter references 10 to 15). As to Appellants’ contention that the Examiner arbitrarily labeled Lazzara’s implant as having three portions (Reply Br. 6—7), we note that claim 1 does not require the portions of its fixture to constitute any particular proportion of the overall structure. Thus, in that respect, claim 1 encompasses any implant, including that described in Lazzara, which includes three sections having the features recited in the claim. Appellants also do not persuade us (Reply Br. 7—8), that the Examiner failed to articulate a reason to provide an implant with the second section of Lazarra. As noted above, the Examiner concluded that an ordinary artisan would have considered it obvious to modify the AAPA implant to have the thread configuration taught by Lazzara, thereby meeting the thread limitations in Appellants’ claim 1, because near the apical end of the shaft/core the threads are deeper and will cut more deeply into the side walls of the prepared bore in the bone; it provides increased thread engagement between the implant and the bone deep within the bore and a strong anchor to hold the implant immobile during healing process. Ans. 3. Because Lazzara’s implant tapers, yet maintains the same thread diameter at turns 14.3 and 14.4, the threads would be deeper, as the 8 Appeal 2016-004250 Application 13/384,810 Examiner found. Lazzara, moreover, teaches the desirability of the overall thread configuration of its implant: This combination of deeper threads at the apical end of the fixture and more bone for them to cut into near the bottom of the prepared bore provides increased thread engagement between the fixture and the bone deep within the bore, and a strong anchor to hold the fixture immobile during the healing process. Elsewhere the threads help to anchor the fixture against axial movement in the prepared bore, while-intimate contact between the fixture and the host bone provides the best- known environment for osseointegration to proceed. Lazzara, 4:42-48. Given the Examiner’s rationale, noted above, for providing the AAPA implant with the thread configuration of Lazzara, taken with the relevant teachings in Lazzara, Appellants do not persuade us that the Examiner failed to articulate a sufficient reason for providing the AAPA implant with a second portion having the features required by Appellants’ claim 1. In sum, for the reasons discussed, Appellants do not persuade us that the Examiner failed to make a prima facie case that the implant fixture recited in claim 1 would have been obvious to an ordinary artisan in view of AAPA, Lazzara, and Lang. Because Appellants do not advance objective evidence of nonobviousness, we affirm the Examiner’s rejection of claim 1 over those references. Claims 2 and 3 fall with claim 1 because they were not argued separately. 37 C.F.R. § 41.37(c)(l)(iv). OBVIOUSNESS— AAPA, LAZZARA, LANG, AND MOCHIDA In rejecting claims 4 and 5 the Examiner relied on the teachings discussed above in AAPA, Lazzara, and Lang, and cited Mochida as evidence that the thread configurations recited in claims 4 and 5, both of 9 Appeal 2016-004250 Application 13/384,810 which depend from claim 1, would have been obvious in an implant fixture of the type taught in the other references. Ans. 4. Appellants argue only that Mochida fails to cure the alleged, deficiencies in claim 1, discussed above. App. Br. 14—15. For the reasons discussed above, however, Appellants do not persuade us that a preponderance of the evidence fails to support the Examiner’s conclusion of obviousness as to claim 1. Because Appellants, therefore, do not identify, nor do we discern, error in the Examiner’s conclusion of obviousness as to claims 4 and 5, we affirm the Examiner’s rejection of those claims as well. SUMMARY For the reasons discussed, we affirm each of the Examiner’s rejections. TIME PERIOD 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 10 Copy with citationCopy as parenthetical citation