Heung-san Choi et al.

Patent Trials and Appeals Board

Apr 29, 2021

2020000002 (P.T.A.B. Apr. 29, 2021)

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.
14/001,037 08/22/2013 Heung-san Choi 112772-3
(FE13029/PCT/US)
3896
24256 7590 04/29/2021
DINSMORE & SHOHL LLP
255 EAST FIFTH STREET, SUITE 1900
CINCINNATI, OH 45202
EXAMINER
PATEL, SHIVANG I
ART UNIT PAPER NUMBER
2619
NOTIFICATION DATE DELIVERY MODE
04/29/2021 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):
CincyPAIR@dinsmore.com
elise.merkel@dinsmore.com
jennifer.baker@dinsmore.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HEUNG-SAN CHOI, JIN-SU KIM, YOUNG-GUK PARK,
SEUNG-HAK BAEK, SANG-HWAN JOO, and HYUNG-JUN CHO
Appeal 2020-000002
Application 14/001,037
Technology Center 2600
Before ADAM J. PYONIN, MICHAEL J. ENGLE, and
PHILLIP A. BENNETT, Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s rejection. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Herein, “Appellant” refers to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as MORPHEUS
CO., LTD. Appeal Br. 2.
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Application 14/001,037

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STATEMENT OF THE CASE
Introduction
The Application is directed to “display[ing] a predicted facial image
to confirm an operation plan before performing a face correction operation.”
Spec. 1. For example, “the present invention determines the amount and
area of change in the soft skin tissues (i.e., the lips) corresponding to the
change in the location and orientation of the teeth.” Spec. 23. Claims 1–9,
and 11–20 are pending; claims 1, 14, 15, and 16 are independent. Appeal
Br. 25–31. Claim 1 is reproduced below for reference:
1. A method for providing a face adjustment image,
comprising the steps of:
(a) generating a matched image on a screen by
superimposing a two-dimensional cephalometric image having
an X-ray image for a cranium of a patient whose face is to be
corrected with a three-dimensional facial image of a face of the
patient acquired by photographing the face of the patient; and
(b) displaying on the screen a predicted facial image in
which soft skin tissues in the three-dimensional facial image are
transformed according to a change in hard tissues implemented
in the two-dimensional cephalometric image in the matched
image,
wherein the step (b) comprises the steps of:
(b1) determining transformation of the soft skin
tissues corresponding to the change in the hard tissues
implemented in the two-dimensional cephalometric image in the
matched image; and
(b2) displaying the predicted facial image on the
screen based on the transformation of the soft skin tissues.
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Application 14/001,037

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References and Rejections
The Examiner relies on the following prior art:
Name Reference Date
Kim US 2002/0035458 A1 Mar. 21, 2002
Tuncay US 2002/0176612 A1 Nov. 28, 2002
Sachdeva (herein,
“Sachdeva[1]”)
US 2004/0029068 A1 Feb. 12, 2004
Sachdeva (herein,
“Sachdeva[2]”)
US 2004/0197727 A1 Oct. 7, 2004
Klinghult US 2008/0124064 A1 May 29, 2008

Claims 1–5, 9, and 11–20 are rejected under 35 U.S.C. § 103 as being
obvious over Sachdeva[1] in view of Sachdeva[2]. Final Act. 6.
Claims 7 and 8 are rejected under 35 U.S.C. § 103(a) as being obvious
over Sachdeva[1] and Sachdeva[2]2 in view of Kim and Tuncay. Final Act.
16.
Claim 6 is rejected under 35 U.S.C. § 103(a) as being obvious over
Sachdeva[1] and Sachdeva[2]3 in view of Klinghult. Final Act. 18.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments. Arguments Appellant could have made but chose not to make
are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv).
Appellant argues the independent claims collectively and does not
provide separate substantive arguments for any dependent claims. See

2, 3 Although these claims depend from claims rejected over Sachdeva[1] in
view of Sachdeva[2], the headings of the rejections of these dependent
claims do not list Sachdeva[2] as part of the rejection. We find this to
constitute harmless error.
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Application 14/001,037

4
Appeal Br. 21–23. We select claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(1)(iv). We disagree with Appellant that the Examiner erred and
adopt as our own the findings and reasons set forth by the Examiner, to the
extent consistent with our analysis below. We add the following primarily
for emphasis.
Appellant argues the Examiner’s rejection is in error, because “the
purported combination of Sachdeva[1] and Sachdeva[2] fails to teach or
fairly suggest at least three features of each of independent claims 1 and 14-
16.” Appeal Br. 13. Particularly, Appellant contends the combination of
cited references does not teach or suggest limitations (a), (b), or the
“wherein clause” ((b1) and (b2)) of claim 1. Id. at 13–21.

Limitation (a)
Regarding limitation (a), Appellant contends the following:
[Sachdeva[1]’s] 2D X-ray does not correspond to “a two-
dimensional cephalometric image having an X-ray image for a
cranium of a patient,” as recited in independent claim 1. As
clearly shown . . . , the 2D X-ray data of Sachdeva only includes
an image for teeth, but does not include an image for a
cranium. . . .
Furthermore, the 2D X-Ray data of Sachdeva[1] is not
superimposed with a three-dimensional facial image of a face.
Instead, the 2D X-Ray data is morphed into 3D digital data or is
combined with 3D optical scan data of crowns.
Appeal Br. 15, 16; see also Reply Br. 2–5.
We are not persuaded the Examiner errs. As cited by the Examiner,
Sachdeva[1] discloses “cephalometric x-rays (i.e., 2 dimensional x-ray
photographs showing a lateral view of the head and jaws, including teeth)”.
Sachdeval[1] ¶ 6 (emphasis added); see also id. at Fig. 10 (depicting a
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screen shot showing the superposition of skull and face data with X-Ray
data.); Final Act. 6; Ans. 4. We agree with the Examiner that Satchdeva’s
disclosures, including head images, teach or suggest “a two-dimensional
cephalometric image having an X-ray image for a cranium of a patient” as
claimed. See Final Act. 6; Ans. 3.
Sachdeva[1] is further cited for disclosing “[a]fter the images of the
face, craniofacial structures, X-rays, teeth etc. are obtained and stored in
memory in digital form they are superimposed on each other (i.e., registered
to each other via software in the workstation) to create a complete virtual
patient model,” such as by “registering the CT scan data and X-ray data to
the combined 3D face and jaw model.” Sachdeva[1] ¶ 83; see also id. at 15
(“The images can be combined or superimposed.”); Final Act. 6. We agree
with the Examiner that such disclosure teaches 2D X-ray data is
superimposed with a three-dimensional facial image of a face, as claimed.
See Final Act. 6; Ans. 5.
Moreover—although we find otherwise as discussed above—even
were Sachdeva[1] limited to only discussing teeth and jaws, as alleged by
Appellant, we still would not be persuaded of Examiner error. As correctly
noted by the Examiner, Sachdeva[1]’s “disclosed method is not limited to
jaw\teeth,” and we find that one of ordinary skill, in view of the teachings of
the cited references, would have found it obvious to apply these face
adjustment image teachings to cranium images as a predictable variation, as
claimed. Ans. 4; see also KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 405
(2007) (“if a person of ordinary skill can implement a predictable variation,
§ 103 likely bars its patentability”).
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Accordingly, we are not persuaded the Examiner errs in finding
limitation (a) to be taught or suggested by the cited art.

Limitation (b) and the “wherein clause”
Regarding limitation (b) and the “wherein clause” of claim 1,
Appellant argues Sachdeva[1] “describe[s] that . . . soft tissues in a two-
dimensional facial image are transformed,” but does not teach or suggest the
claimed “displaying on the screen a predicted facial image in which soft skin
tissues in the three-dimensional facial image are transformed according to a
change in hard tissues implemented in the two-dimensional cephalometric
image in the matched image.” Appeal Br. 18. Appellant contends
Sachdeva[2] “merely describes changing the position of 3D virtual teeth,”
and “does not teach or fairly suggest determining transformation of the soft
skin tissues corresponding to the change in the hard tissues implemented in
the two-dimensional cephalometric image in the matched image.” Appeal
Br. 20; see Reply Br. 5–7.
We are not persuaded the Examiner’s rejection is in error.
Sachdeva[1], as cited by the Examiner, discloses that “[t]he display . . .
shows other aspects of the patient virtual model, here a two-dimensional
lateral x-ray view of the face, including teeth and jaws,” and the “desired
position of the incisors can be planned” which “drives the change in the
position of the soft tissue, e.g. lips.” Sachdeva[1] ¶ 153; Final Act. 6.
Although this paragraph discloses “two-dimensional” planning, the
reference further discloses superimposing, inter-alia, “3D scanned images”
to “create a virtual patient model.” Sachdeva[1] ¶ 15; see also id. at 76 (“3D
image of the face can be obtained”). Sachdeva[2] is cited for disclosing
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“tools [used] for modifying the shape or position of one or more bones of the
upper and lower jaws, and show[ing] how those modifications affect the
patient’s appearance and smile.” Sachdeva[2] ¶ 121; Final Act. 6, 7.
Appellant does not persuade us of error in the Examiner’s reasonable fact
finding.
Appellant separately argues each citation relied on by the Examiner,
and does not challenge the Examiner’s combination reasoning. See Appeal
Br. 17–21; Reply Br. 5–7. Accordingly, Appellant does not show the
Examiner errs in finding the combined teachings of the Satchdeva[1] and
Satchdeva[2] would have suggested the limitations of claim 1 to those of
ordinary skill in the art. See Final Act. 7; see also In re Keller, 642 F.2d
413, 425 (CCPA 1981) (“The test for obviousness is not . . . that the claimed
invention must be expressly suggested in any one or all of the references.
Rather, the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.”). We sustain the Examiner’s
rejection of independent claim 1.

DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–5, 9, 11–
20
103 Sachdeva[1],
Sachdeva[2]
1–5, 9, 11–
20

7, 8 103(a) Sachdeva[1],
Sachdeva[2], Kim,
Tuncay
7, 8
6 103(a) Sachdeva[1],
Sachdeva[2],
Klinghult
6
Overall
Outcome
1–9, 11–20
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Application 14/001,037

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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED