Ex Parte Yeh et al

Patent Trial and Appeal Board

Jul 30, 2018

14039348 (P.T.A.B. Jul. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/039,348 09/27/2013
83571 7590 08/01/2018
Wood, Herron & Evans, LLP (Sybron)
441 Vine Street
2700 Carew Tower
Cincinnati, OH 45202
FIRST NAMED INVENTOR
Jonathan Yeh
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
ORM-346CO 6967
EXAMINER
NELSON,MATTHEWM
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
08/01/2018 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):
usptodock@whe-law.com
mhines@whe-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JONATHAN YEH, RODOLFO RODRIGUEZ,
and FARROKH FARZIN-NIA 1
Appeal2017-008144
Application 14/039,348
Technology Center 3700
Before ERIC B. GRIMES, JOHN G. NEW, and RY ANH. FLAX,
Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) involving
claims to an orthodontic bracket and a ligating slide. 2 The Examiner's
rejections of claims 21-36 under 35 U.S.C. § 102(b) and§ 103(a) are
appealed. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
1 The Real Party in Interest is identified as "Ormco Corporation." Appeal
Br. 3.
2 We have considered and herein refer to the Specification of Sept. 27, 2013
("Spec."); Final Office Action of June 30, 2016 ("Final Action"); Appeal
Brief of Nov. 22, 2016 ("Appeal Br."); Examiner's Answer of Mar. 9, 2017
("Answer"); and Reply Brief of May 9, 2017 ("Reply Br.").
Appeal2017-008144
Application 14/039,348
STATEMENT OF THE CASE
The Specification states:
Orthodontic brackets represent a principal component of
corrective orthodontic treatments devoted to improving a
patient's occlusion. In conventional orthodontic treatments, an
orthodontist or an assistant affixes brackets to the patient's teeth
and engages an arch wire into a slot of each bracket. The archwire
applies corrective forces that coerce the teeth to move into
orthodontically correct positions. Traditional ligatures, such as
small elastomeric 0-rings or fine metal wires, are employed to
retain the archwire within each bracket slot. Due to difficulties
encountered in applying an individual ligature to each bracket,
self-ligating orthodontic brackets have been developed that
eliminate the need for ligatures by relying on a movable latch or
slide for captivating the archwire within the bracket slot.
Spec. ,r 3.
Independent claims 21 and 25, reproduced below, are representative:
21. An orthodontic bracket comprising:
a bracket body including an archwire slot, a support
surface that opens to the archwire slot, and a pair of guide
members adjacent the support surface; and
a ligating slide movable on the support surface between
the opposing guide members relative to the archwire slot from an
opened position to a closed position, the ligating slide including
a first portion that confronts the support surface in at least the
closed position, and a second portion extending from the first
portion in a gingival-occlusal direction and having at least a
portion that confronts the archwire slot in the closed position,
wherein the first portion has a first mesial-distal width and the
second portion has a second mesial-distal width that is narrower
than the first mesial-distal width.
25. An orthodontic bracket comprising:
a bracket body including an archwire slot, a support
surface that opens to the archwire slot, a pair of guide members
adjacent the support surface, and a cutout opposite from the
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Application 14/039,348
support surface across the archwire slot and including a tool
receptacle that is narrower in width than the width of the support
surface, is open toward the support surface, and is closed in a
direction away from the support surface; and
a ligating slide movable on the support surface between
the opposing guide members relative to the archwire slot from an
opened position to a closed position, the ligating slide including
a first portion that confronts the support surface of the bracket
body in at least the closed position, and a second portion
extending from the first portion, wherein the second portion
extends into the cutout in the closed position, and the tool
receptacle is configured to cooperate with a tool for moving the
ligating slide away from the closed position toward the opened
position.
Appeal Br. 16, 17 (Claims App'x).
The following rejections are appealed:
Claims 21-28 and 30-36 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Oda. 3 Final Action 3.
Claim 29 stands rejected under 35 U.S.C. § I03(a) as obvious over
Oda and Cinader. 4 Id. at 6.
DISCUSSION
Only those arguments made by Appellants in the Appeal Brief and
properly presented in the Reply Brief have been considered in this Decision;
arguments not so presented in the Briefs are waived. See 37 C.F.R.
§ 4I.37(c)(l)(iv) (2015); see also Ex parte Borden, 93 USPQ2d 1473, 1474
(BP AI 2010) (informative) ("Any bases for asserting error, whether factual
or legal, that are not raised in the principal brief are waived."). "[T]he
examiner bears the initial burden, on review of the prior art or on any other
3 US 2007/0275342 Al (pub. Nov. 29, 2007) ("Oda").
4 US 2005/0095549 Al (pub. May 5, 2005) ("Cinader").
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Appeal2017-008144
Application 14/039,348
ground, of presenting a prima facie case of unpatentability. If that burden is
met, the burden of coming forward with evidence or argument shifts to the
applicant." In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
"Anticipation requires that all of the claim elements and their
limitations are shown in a single prior art reference." In re Skvorecz, 580
F.3d 1262, 1266 (Fed. Cir. 2009). Regarding obviousness, "[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results." KSR Int 'l Co.
v. Teleflex Inc., 550 U.S. 398,416 (2007). "What matters is the objective
reach of the claim. If the claim extends to what is obvious, it is invalid
under§ 103." Id. at 419. "Dependent claims are nonobvious under section
103 if the independent claims from which they depend are nonobvious." In
re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988).
"[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification." In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000); see also Cuozzo Speed Tech., LLC v. Lee,
136 S. Ct. 2131, 2145 (2016). "[W]hile it is true that claims are to be
interpreted in light of the specification ... , it does not follow that limitations
from the specification may be read into the claims .... [T]he claims define
the invention." Sjolund v. Musland, 847 F.2d 1573, 1581-82 (Fed. Cir.
1988). "Absent claim language carrying a narrow meaning, the PTO should
only limit the claim based on the specification or prosecution history when
those sources expressly disclaim the broader definition." In re Bigio, 381
F.3d 1320, 1325 (Fed. Cir. 2004).
The Examiner determined that claims 21-28 and 30-36 are
anticipated by Oda and that claim 29, which depends from independent
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Appeal2017-008144
Application 14/039,348
claim 25, would have been obvious over Oda and Cinader. As to the
rejection of independent claims 21 and 32 and their dependent claims, we
discern no error in the Examiner's determinations. See Final Action 2-3, 6;
Answer 2--4, 6-7. We address Appellants' arguments below.
Appellants argue the Examiner has not applied the correct
interpretation for the claim language "wherein the first portion has a first
mesial-distal width and the second portion has a second mesial-distal width
that is narrower than the first mesial-distal width" because the Examiner has
interpreted that the first and second portions can be any arbitrarily selected
internal sub-sections of Oda 's ligating slide. Appeal Br. 7-8. Specifically,
Appellants argue Oda's slide "has a uniform mesial-distal width along its
occlusal-gingival extent," and so cannot satisfy the claim limitation, properly
interpreted. Id. at 8. Appellants argue, essentially, that this claim limitation
must be interpreted as limited to the disclosure in the Specification relating
to the slide shown in Figures 3 and 9, where the two claimed portions of the
slide do not share the same sides in the gingival-occlusal direction. Id.
Appellants reproduce Figure 3 from the Specification to illustrate that
a first portion of the claimed slide has one width and a second portion of the
slide has a second width. Appeal Br. 8-9. However, there is no requirement
in the claims themselves or in the Specification that the claimed slide take
the specific form shown in Figure 3. For example, the Specification
describes:
As shown in Fig. 3, the ligating slide 14 includes a mesial portion
62, a distal portion 64, and a central portion 66 intermediate the
mesial and distal portions 62, 64. Guides 42, 44 are configured
to overlie mesial and distal portions 62, 64, respectively, and
central portion 66 may be configured such that the labial side of
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Appeal2017-008144
Application 14/039,348
central portion 66 is substantially flush with the labial side of the
guides 42, 44 (Fig. 2).
Spec. ,r 55. Thus, the Specification describes that the central portion (e.g., a
second portion) is relatively raised with respect to the underlying portion
(e.g., a first portion) of the slide that includes the described mesial and distal
portions so that the first portion fits into the guides of the bracket as the slide
moves there-into and so that the narrower central portion fits between these
bracket guides to present a flush surface therewith.
We reproduce the Specification's Figure 1 below, annotated to
illustrate the disputed claim elements:
;I)
2/p 18
. ·---:-·__c:., .. --~ ________ {/'
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Appeal2017-008144
Application 14/039,348
As shown in Figure 1 above, the Specification's described slide 14 has a first
portion (shaded yellow) with a first mesial-distal width (wider red bracket)
that, in use, extends under or into the guides 42, 44 of the bracket 10, and
has a second portion (shaded blue) with a second mesial-distal width
(narrower blue bracket) that extends out of the first portion and is shaped to
move between the bracket's guides 42, 44 in a gingival-occlusal direction
(red, double ended arrow).
Although the Specification discloses an embodiment having such
qualities, the claims do not require that the slide has a gingival-occlusal
directional length defined by the slide' s second portion and that the first
portion's gingival-occlusal directional length is less than that of the second
portion, as essentially argued by Appellants. Therefore, although it is
reasonable to interpret the claim language at issue as including within its
scope a structure as contemplated by Appellants and as illustrated by the
Specification's Figure 3, it is also reasonable to interpret the claim language
at issue as including a structure that is narrower in a portion ( e.g., to extend
between guide structures) and wider in a portion ( e.g., to extend under the
guide structures) as discussed above.
Regarding claim 21, Appellants argue that, under their argued claim
interpretation, discussed above, "Oda fails to disclose the ligating slide
including the first portion and a second portion having different mesial-distal
widths." Appeal Br. 10.
This argument is not persuasive. As discussed above, the claim
language in dispute is not as narrow in scope as argued by Appellants when
given its broadest reasonable interpretation in view of the Specification,
without unnecessarily reading limitations from the Specification into the
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Appeal2017-008144
Application 14/039,348
claims. Under the broadest reasonable interpretation of the disputed claim
language, Oda discloses each element of claim 21 as determined by the
Examiner and as illustrated by Figure 1 of Oda, reproduced below, annotated
to show claim elements:
As shown in Figure 1 above, Oda discloses a bracket 10 having a slide 14,
which has a first portion (shaded yellow) with a first mesial-distal width
(wider red bracket) configured to slide under bracket guides 52, 54 and has a
second portion (shaded blue) with a second mesial-distal width (narrower
blue bracket) that extends from the first portion in a gingival-occlusal
direction (red, double ended arrow over second portion) so as to slide
between the bracket's guides 52, 54. See Oda ,r,r 24--32. As also shown
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Appeal2017-008144
Application 14/039,348
above, the bracket 10 has a support surface 46 opening into an archwire slot
16. Id.
As determined by the Examiner and as illustrated above by Oda's
annotated Figure 1 (based on the Examiner's determinations), Oda discloses
each element of independent claims 21 and 32. Appellants argued these
claims and their dependent claims together and so they fall together. For the
reasons above, we affirm the anticipation rejection of claims 21 and 32 and
their dependent claims.
Regarding claim 25, Appellants argue Oda fails to disclose the
claimed "tool receptacle" having an opening on the occlusal side, as required
by the claim. Appeal Br. 11-12. Appellants also present arguments that the
way the Examiner proposes to modify Oda to teach the claimed tool
receptacle and its opening is unreasonable. Id. at 12-14.
The rejection of claim 25 is for anticipation and we are persuaded that
Oda does not teach "a tool receptacle that is narrower in width than the
width of the support surface, is open toward the support surface, and is
closed in a direction away from the support surface," as claimed. There is
no evidence that Oda's recess 36, identified by the Examiner as disclosing
such a feature, has the structure claimed. If anything, the opening for the
recess 36 of Oda, if present, opens away from the support surface 46, as
shown in Figure 1 of the reference, not toward it. Even if the planar surface
3 8 of Oda, suggested by the Examiner as being optional, were not provided
so an opening to the support surface might be present, such an opening
would not be closed in a direction away from the support surface 46 of Oda.
For the reasons above, we reverse the anticipation rejection of claim
25 and its depending claims. We also reverse the obviousness rejection of
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Application 14/039,348
claim 29, which is dependent from claim 25, because the Examiner does not
present a prima facie case that the Oda-Cinader combination overcomes the
shortcomings of Oda alone with respect to claim 25, as discussed.
SUMMARY
The anticipation rejection is affirmed as to claims 21-24 and 32-36; it
is reversed as to claims 25-28.
The obviousness rejection of claim 29 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED-IN-PART
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