Heung-san Choi et al.Download PDFPatent Trials and Appeals BoardApr 29, 20212020000002 (P.T.A.B. Apr. 29, 2021) 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. 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. Appeal 2020-000002 Application 14/001,037 2 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. Appeal 2020-000002 Application 14/001,037 3 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. Appeal 2020-000002 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 Appeal 2020-000002 Application 14/001,037 5 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”). Appeal 2020-000002 Application 14/001,037 6 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 Appeal 2020-000002 Application 14/001,037 7 “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 Appeal 2020-000002 Application 14/001,037 8 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 Copy with citationCopy as parenthetical citation