Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper No. 8
`Entered: October 3, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`EXOCAD GMBH AND EXOCAD AMERICA, INC.,
`Petitioner,
`
`v.
`
`3SHAPE A/S,
`Patent Owner.
`
`____________
`
`Case IPR2018-00785
`Patent 9,336,336 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, IRVIN E. BRANCH, and
`FRANCES L. IPPOLITO, Administrative Patent Judges.
`
`BRANCH, Administrative Patent Judge.
`
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314(a)
`
`
`
`
`
`

`

`IPR2018-00785
`Patent 9,336,336 B2
`
`
`I. INTRODUCTION
`exocad GmbH, and exocad America, Inc. (“Petitioner”) filed a
`Petition (Paper 1, “Pet.”) to institute an inter partes review of claims 1–30 of
`U.S. Patent No. 9,336,336 B2 (“the ’336 patent”). 3Shape A/S (“Patent
`Owner”) filed a Preliminary Response. Paper 6 (“Prelim. Resp.”). Applying
`the standard set forth in 35 U.S.C. § 314(a), which requires demonstrating a
`reasonable likelihood that Petitioner would prevail with respect to at least
`one challenged claim, we decline to institute review of claims 1–30 of the
`’336 patent.
`
`II. BACKGROUND
`A. The ’336 Patent
`1. Disclosure
`The ’336 patent involves computer-implemented dental restoration
`design. Ex. 1001, 1:5–6 (“a method of visualizing and modeling a set of
`teeth for a patient”). The ’336 patent explains that dental restoration
`modeling combines facial imagery with a 3D model of the patient’s oral
`structure, to thereby allow visualization of the patient’s post-restoration
`appearance. Id. at 19:43–20:29. The 3D model is then usable for
`manufacturing the restoration. Id. at 20:26–29.
`The ’336 patent acknowledges that “[v]isualization and modeling or
`design of teeth [were] known in the field of dental restorations” but
`distinguishes its method because it “may be performed faster than prior art
`methods.” Id. at 1:13–14, 3:38–39. Among the reasons given is that the
`’336 patient’s 2D facial imagery “is not superimposed or overlaid onto the
`3D virtual model for creating one representation with all data included” as is
`
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`IPR2018-00785
`Patent 9,336,336 B2
`
`the case in the prior art, which “requires more time and exhaustive data
`processing.” Id. at 3:30–37. In particular, the ’336 patent explains that at
`least one 2D image of the patient’s facial features is arranged relative to the
`3D model in 3D virtual space yet the image and the model “remain as
`separate data representations which are not merged or fused together into
`one representation.” Id. at 3:25–28. Figures 3A and 3B, reproduced below,
`are illustrative.
`
`
`
`Figures 3A and 3B depict visualizing and arranging a 2D image and a
`3D model. The 3D model 302 and the 2D image 301 are depicted separately
`in Figure 3A and depicted aligned in Figure 3B. Id. at 20:54–21:3. The
`’336 patent explains that the teeth of the 2D image may be cut out or
`rendered transparent. Id. at Figs. 8, 11D, 11G, 11H and 23:23–35, 24:31–
`37, 24:60–25:3.
`
`
`
`
`
`3
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`IPR2018-00785
`Patent 9,336,336 B2
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`
`2. Illustrative Claim
`Of the challenged claims, claims 1 and 29 are independent. Claim 1 is
`illustrative of the claims at issue, and is reproduced below.
`1. A computer-implemented method of designing a dental
`restoration for a patient, wherein the method comprises:
`using a hardware processor to:
`provide one or more 2D images, where at least one
`of the one or more 2D images comprises at least one facial
`feature, wherein the at least one facial feature comprises
`lips;
`
`either virtually cut at least a part of teeth out of the
`at least one 2D image or render a part of the at least one
`2D image that includes teeth at least partly or wholly
`transparent;
`provide a 3D virtual model of at least part of an oral
`cavity of the patient;
`arrange the at least one 2D image relative to the 3D
`virtual model in a virtual 3D space such that the at least
`one 2D image and the 3D virtual model are aligned when
`viewed
`from a viewpoint and
`remain
`separate
`representations after being arranged, whereby the 3D
`virtual model and the at least one 2D image are both
`visualized in the 3D space; and
`design a restoration for the 3D virtual model, where
`the restoration is designed to fit the at least one facial
`feature of the at least one 2D image;
`wherein the at least one 2D image and the 3D virtual
`model are aligned by scaling, translating or rotating the at least
`one 2D image or the 3D virtual model relative to each other.
`Ex. 1001, 25:66–26:25.
`
`4
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`IPR2018-00785
`Patent 9,336,336 B2
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`
`B. Evidence and Asserted Grounds of Unpatentability
`Petitioner asserts that claims 1–30 are unpatentable based on the
`following grounds (Pet. 2):
`
`Ground
`1
`
`Claim(s) Description
`1–14, 16–
`Anticipated under § 102 by, or obvious under
`20, and
`§ 103 over, Malfliet,1 or alternatively obvious
`22–30
`under § 103 over Malfliet and Kopelman2 or
`Malfliet and Wiedmann3
`Obvious under § 103 based on Malfliet,
`Kopelman, (or Wiedmann), and Lehmann4
`Obvious under § 103 based on Malfliet,
`Kopelman, (or Wiedmann), and Seeger5
`Obvious under § 103 based on Malfliet,
`Kopelman, (or Wiedmann), and MacDougald6
`
`15
`
`21
`
`6–8
`
`2
`
`3
`
`4
`
`
`
`Petitioner further relies on the Declaration of its witness, Joseph
`Mundy, Ph.D. Ex. 1002.
`
`
`1 International Publication Number WO 2008/128700 A1 to Malfliet et
`al., published October 30, 2008 (Ex. 1006, “Malfliet”).
`2 U.S. Patent No. 6,845,175 B2 to Kopelman et al., issued January 18, 2005
`(Ex. 1008, “Kopelman”).
`3 Wiedmann, Oliver, “According to the Laws of Harmony . . . to find the
`right tooth shape with the assistance of the computer,” Digital Dental
`News, 2nd Volume, April 2008 (Ex. 1007, “Wiedmann”).
`4 Lehmann, Thomas M., et al., “Survey: Interpolation Methods in Medical
`Image Processing,” IEEE Transactions on Medical Imaging, Vol. 18,
`No. 11, November 1999 (Ex. 1010, “Lehmann”).
`5 U.S. Patent Publication No. 2002/0075389 A1 to Seeger, published June
`20, 2002, (Ex. 1011, “Seeger”).
`6 U.S. Patent No. 6,568,936 B2 to MacDougald, issued May 27, 2003 (Ex.
`1009, “MacDougald”).
`
`5
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`IPR2018-00785
`Patent 9,336,336 B2
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`
`C. Real Parties in Interest
`Petitioner identifies the following parties as real parties in interest:
`exocad GmbH, exocad America, Inc., Ivory GmbH, Ivory Holding GmbH,
`Ivory Global Holdings GmbH, CETP III Ivory SARL (“CETP” is Carlyle
`Europe Technology Partners”), CETP III Participations SARL, SICAR, and
`Carlyle Europe Technology Partners III, L.P. Pet. 1.7
`Patent Owner identifies only itself as a real party in interest. Paper 3,
`
`1.
`
`D. Related Proceedings
`The parties state that the ’336 patent is asserted in 3Shape A/S v.
`exocad GmbH, and exocad America, Inc., Case No. 1:17-cv-00239- ER-
`MPT (D. Del.) and that Petitioner has filed another IPR against the ’336
`patent (IPR2018-00788; filed March 15, 2018). Pet. 1; Paper 3, 1.
`
`III. ANALYSIS
`A. Claim Construction
`The Board interprets claims of an unexpired patent using the broadest
`reasonable construction in light of the specification of the patent in which
`they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs., LLC v. Lee,
`136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest
`reasonable interpretation standard); Office Patent Trial Practice Guide, 77
`Fed. Reg. 48,756, 48,766 (Aug. 14, 2012). Under the broadest reasonable
`
`
`7 Petitioner states “[n]one of the entities other than exocad GmbH and
`exocad America, Inc. meet the definition of a real-party-in-interest, but
`Petitioners nonetheless list those additional entities as real-parties-in-interest
`in this matter.” Pet. 1, n. 1.
`
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`IPR2018-00785
`Patent 9,336,336 B2
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`construction standard, claim terms are generally given their ordinary and
`customary meaning, as would be understood by one of ordinary skill in the
`art at the time of the invention and in the context of the entire disclosure. In
`re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007).
`Petitioner proposes constructions for “2D image,” “3D virtual model
`of at least part of an oral cavity of the patient,” “virtual 3D space,” “remain
`separate representations after being arranged,” “designed to fit,” “section at
`least two or more teeth,” and “prepared tooth.” Pet. 8–12. Patent Owner
`proposes constructions for “of at least part of an oral cavity of the patient,”
`“arrange the at least one 2D image relative to the 3D virtual model in a
`virtual 3D space such that the at least one 2D image and the 3D virtual
`model are aligned when viewed from a viewpoint and remain separate
`representations after being arranged,” and “render a part of the at least one
`2D image that includes teeth at least partly or wholly transparent.” Prelim.
`Resp. 9–15.
`We do not find it necessary, for purposes of this Decision, to construe
`any terms explicitly. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200
`F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms need be construed that
`are in controversy, and only to the extent necessary to resolve the
`controversy.”).
`
`B. 35 U.S.C. § 325(d)
`1. Overview
`Institution of an inter partes review is discretionary. See Harmonic
`Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (explaining
`that under § 314(a), “the PTO is permitted, but never compelled, to institute
`7
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`IPR2018-00785
`Patent 9,336,336 B2
`
`an IPR proceeding”). When determining whether to institute such a review,
`“the Director may take into account whether, and reject the petition or
`request because, the same or substantially the same prior art or arguments
`previously were presented to the Office.” 35 U.S.C. § 325(d).
`2. Challenges over Malfliet
`Petitioner asserts that claims 1–14, 16–20, and 22–30 are anticipated
`by, or rendered obvious over, Malfliet. Pet. 2. Petitioner acknowledges that
`the Examiner considered Malfliet during prosecution, but argues that “[t]he
`Examiner never considered substantially the same . . . arguments under
`§ 325(d), because the Examiner did not consider the portion of Malfliet
`addressing use of a 2D face image, as discussed above, nor obviousness
`based on Malfliet combined with any other references.” Pet. 67 (quotation
`marks omitted).
`Petitioner also argues that, during prosecution, Patent Owner
`overcame the Examiner’s rejection over Malfliet through erroneous
`arguments. Id. at 13–14. Specifically, Petitioner argues that “[Patent
`Owner] argued that Malfliet only taught ‘to build a 3D face model and
`combine this with the 3D dental model’.” Id. at 13 (quoting Ex. 1004, 856).
`Patent Owner contends that “because Petitioner fails to adequately
`explain why the PTAB should ‘readjudicate substantially the same prior art
`and arguments as those presented during prosecution and considered by the
`Examiner,’ the PTAB should exercise its discretion under § 325(d) and deny
`institution of all grounds.” Prelim. Resp. 53 (citing Unified Patents Inc. v.
`Berman, IPR2016-01571, Paper 10, at 12 (PTAB Dec. 14, 2016)
`(informative)).
`
`8
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`IPR2018-00785
`Patent 9,336,336 B2
`
`
`After considering the arguments and evidence, we agree with Patent
`Owner that each of Petitioner’s asserted grounds of obviousness and
`anticipation involving Malfliet alone raise the same or substantially the same
`arguments previously considered by the Office. During prosecution, in the
`October 23, 2015, Office Action, the Examiner rejected pending claims 110–
`124 and 126–138 as obvious over Malfliet “in view of the taking of official
`notice regarding standard practices in the art, & the foreign search report
`([Information Disclosure Statement, “IDS”] 6/3/2013).” Ex. 1004, 825. The
`Examiner’s rejection cites to the disclosure in Malfliet relied upon for the
`teaching of each recited limitation in the rejected claims, and further, takes
`official notice that the claimed subject matter was common technical
`knowledge for a skilled artisan. See Ex. 1004, 825–834. Further, in addition
`to the cited portions expressly provided in the Office Action, the Examiner
`indicated that the citations were not exhaustive and that the
`Examiner has cited particular columns/line numbers (or ¶) in the
`references applied to the claims above for the convenience of the
`applicant. Although the specified citations are representative
`of the teachings of the art & are applied to specific imitations
`within the individual claim, other passages/figures may apply
`as well. It is respectfully requested from the Applicant in
`preparing responses, to fully consider the references in their
`entirety as potentially teaching all or part of the claimed
`invention, as well as the context of the passage as taught by the
`prior art or disclosed by the Examiner. The entire reference is
`considered to provide disclosure relating to the claimed
`invention.
`Ex. 1004, 834–835 (emphasis added). The Applicant filed a response to the
`Office Action including amendments to pending claims. Ex. 1008, 845–856.
`A Notice of Allowance issued on March 29, 2016. These facts support a
`
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`IPR2018-00785
`Patent 9,336,336 B2
`
`finding that the Examiner considered Malfliet in its entirety during
`prosecution and substantively applied its teachings to reject the ’336 patent’s
`claims, which in turn supports our exercise of discretion under § 325(d) to
`deny the grounds based on Malfliet alone. See Unified Patents, Inc. v.
`Berman, IPR2016-01571, Paper 10 at 11–12 (Dec. 14, 2016) (informative)
`(denying institution of grounds under § 325(d) where reference(s) asserted
`by Petitioner had previously been considered and discussed by Examiner
`during prosecution).
`With respect to Petitioner’s contention that the Examiner did not
`consider the portion of Malfliet addressing use of 2D face images, Patent
`Owner argues: “Malfliet’s disclosure of the ‘use of a 2D face image’ was
`considered during prosecution.” Prelim. Resp. 54–55. Patent Owner argues
`that the Petition’s claim chart relies on page 5, lines 14–18,8 and page 23,
`lines 17–19,9 of Malfliet for “at least one of the one or more 2D images
`
`
`8Ex. 1006, 6.
`The image data 30 that has been acquired from the imaging
`sources 31-34 is used to generate a virtual, three-dimensional
`model 56 which is a life-like representation of at least the area of
`the human body to be treated. Typically, this area will be the
`patient’s jaw, teeth (if any are remaining) and soft tissue
`surrounding these parts, such as the gums, lips and skin on the
`outer surface of the face.
`
` 9
`
` Ex. 1006, 24.
`19. A method according to any one of the preceding claims
`wherein the data about a face of a patient comprises one or more
`of: a 2D photograph; a 3D photograph; an optical scan of the
`external surface of at least part of the patient's head.
`
`10
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`IPR2018-00785
`Patent 9,336,336 B2
`
`comprises at least one facial feature” and relies on page 23, lines 17–19, and
`page 18, lines 27–30,10 in support of the assertion that “Malfliet ‘explicitly
`provides that the face model may be a single 2D image’.” Id. (citing Pet.
`13–14, 23). Patent Owner contends the Examiner explicitly considered page
`5, lines 14–18 (see Ex. 1004, 825) and that “Petitioner relies on [page 23,
`lines 17–19] of Malfliet for substantially the same reasons” as the Examiner
`relies on page 5, lines 14–18. Id.
`Because the Examiner expressly cited and considered Malfliet during
`prosecution, we are persuaded Malfliet amounts to “the same” prior art
`previously presented to the Office. This fact is not negated by the
`Examiner’s having not cited a specific passage that Petitioner cited. To
`whatever extent Petitioner argues the omission of a key passage from the
`Examiner’s analysis means the “same” prior art was not previously
`presented, we are persuaded by Patent Owner that Petitioner’s challenge
`relies on “substantially the same” prior art based on what the Examiner did
`cite. Ex. 1004, 825. Indeed, even assuming that the exact citations relied
`upon by Petitioner were not expressly relied upon by the Examiner during
`prosecution, we are persuaded that the Examiner fully considered Malfliet in
`its entirety. See Ex. 1004, 834–835.
`Moreover, we are not persuaded reconsideration of Mafliet is justified
`based on the Patent Owner allegedly having submitted erroneous arguments.
`
`
`10 Ex. 1006, 19
`For instance when only a 2D photograph of the patient is
`available then the optimal tooth set-up should be positioned,
`oriented, and scaled relative to the 2D photograph and then
`embedded within the photograph to visualize the result.
`11
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`IPR2018-00785
`Patent 9,336,336 B2
`
`See Pet. 13–14. To this end, Petitioner misrepresents what Patent Owner
`argued. Petitioner contends Patent Owner “argued that Malfliet only taught
`‘to build a 3D face model and combine this with the 3D dental model’.” Pet.
`13 (quoting Ex. 1004, 856) (emphasis added here). Patent Owner’s
`argument in context reads: “Malfliet teaches a more complicated, and in
`many cases a more expensive/time consuming, method since it teaches to
`build a 3D face model and combine this with the 3D dental model.” Ex.
`1004, 856. In other words, while Patent Owner may have argued only
`Malfliet’s disclosure of using 2D images to build 3D face models, Petitioner
`characterizes Patent Owner as having represented to the Examiner that
`Malfliet only discloses 3D face models, which is not what Patent Owner
`argued. Moreover, even assuming that these statements were incorrect, we,
`again, note that the Examiner considered the entirety of Malfliet’s disclosure
`in depth, as reflected in the Examiner’s rejection and comments in the
`October 23, 2015, Office Action. Thus, on this record, Petitioner has not
`articulated sufficient reasoning for us to question the Examiner’s previous
`consideration of Malfliet.
`Accordingly, because the Office already considered Malfliet
`extensively during the prosecution of the challenged claims, we exercise our
`discretion under § 325(d) and decline to consider grounds based upon
`Malfliet again.
`3. Challenges based on Malfliet and Kopelman
`Petitioner also challenges claims based upon the combination of
`Malfliet with Kopelman. Pet. 2.
`
`12
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`Patent 9,336,336 B2
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`
`For these grounds, we also are persuaded the Examiner considered
`obviousness based on Malfliet combined with substantially the same
`disclosure as Kopelman, contrary to Petitioner’s contentions. Pet. 56–58;
`Pet. 67 (“the Examiner did not consider . . . obviousness based on Malfliet
`combined with any other references . . . [and] did not consider Kopelman”).
`In the Office Action dated October 23, 2015, the Examiner rejected the
`claims “as obvious over Malfliet . . . in view of the taking of official notice
`regarding standard practices in the art, & the foreign search report,” which
`included the subject matter of Kopelman as Patent Owner explains below.
`Ex. 1004, 825; Ex. 1008; Ex. 2001. Prelim. Resp. 57–58.
`
`Specifically, Patent Owner argues as follows:
`The foreign search report cites EP 1124487 B1 as an “X”
`reference. Ex.2001; see also Ex.1004 at 0685. EP 1124487 B1
`(Exhibit 2005) corresponds to Kopelman (Exhibit 1008) which
`is now being cited in grounds presented in this Petition. Ex.1004
`at 0691 (International Search Report issued in international
`application corresponding to Application No. 13/807,443
`indicating that EP 1124487 B1 is in the same family as
`US2003169913); Ex.1008 at 1 (indicating that US2003/0169913
`is a prior publication of Kopelman); see also Ex.2003 (showing
`that EP 1124487 B1 and Kopelman are in the same family). The
`portions of EP 1124487 B1 cited in the foreign search report are
`substantially identical to corresponding portions of Kopelman.
`Ex.2001 (citing “[0009], [0010], [0020], [0032], [0034], [0036],
`fig 1A, 1B, 3A, 3B, 4A, 4B”); Ex.1008 at 1:59-65, 1:66-2:11,
`3:63-4:8, 6:9-16, 6:31-39, 6:53-63, Figs. 1A, 1B, 3A, 3B, 4A,
`4B). Further, the International Search Report, which also cites
`EP 1124487 B1, was also considered by the Examiner during
`prosecution. Ex.1004 at 0689; Ex.1001 at 2. Petitioner
`completely overlooks the fact that the Examiner during
`prosecution already considered an obviousness rejection
`applying Malfliet
`in combination with subject matter
`
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`
`corresponding to Kopelman. Moreover, Petitioner provides no
`explanation as to how the obviousness ground based on Malfliet
`and Kopelman now presented in the Petition somehow differs
`from
`the combination of Malfliet and subject matter
`corresponding to Kopelman (i.e., the foreign search report citing
`EP 1124487) previously considered by the Patent Office.
`Prelim. Resp. 57–58.
`Petitioner argues “[t]he Examiner did not consider Kopelman” but
`acknowledges “its parent application was cited during prosecution.” Pet. 67.
`On this record, we are persuaded Petitioner’s challenges based on
`Malfliet and Kopelman amount to challenges based on substantially the
`same prior art previously presented to the Office. 35 U.S.C. § 325(d). The
`search report referred to by the Examiner in the Office Action was provided
`in an Information Disclosure Statement (“IDS”) on June 3, 2013, and
`included EP 1124487 B1 (Ex. 2001; see Ex. 1004, 682–85). Consistent with
`Patent Owner’s position, EP1124487 B1 is a European patent that issued to
`Kopelman from an international patent application under the PCT (Patent
`Cooperation Treaty). Ex. 2005 (86) (PCT/IL1999000577). Kopelman,
`shown in Exhibit 1008, is a continuation of the same international
`application (PCT/IL1999000577). Ex. 1008, (63). Thus, the disclosure in
`EP1124487, considered by the Examiner during prosecution, appears to
`correspond to Kopelman (Ex. 1008).
`Petitioner does not direct us to differences between the content of the
`reference cited in the foreign search report (i.e., Kopelman’s “parent
`application”) and Kopelman, even though Petitioner acknowledges the
`relationship. Pet. 67. Patent Owner, on the other hand, provides a
`comparison demonstrating that the subject matter is substantially the same.
`
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`Prelim. Resp. 57–58. Further, Patent Owner asserts that “Petitioner provides
`no explanation as to how the obviousness ground based on Malfliet and
`Kopelman now presented in the Petition somehow differs from the
`combination of Malfliet and subject matter corresponding to Kopelman (i.e.,
`the foreign search report citing EP 1124487) previously considered by the
`Patent Office.” Id.
`In view of the foregoing, we are persuaded that Petitioner’s challenges
`based on Malfliet and Kopelman amount to a request to review “the same or
`substantially the same prior art or arguments previously were presented to
`the Office,” and that, in this case, we should exercise our discretion under
`§ 325(d) not to institute the requested review.
`4. Challenges based on Malfliet and Wiedmann
`Petitioner alternatively challenges the claims as obvious over
`combinations that include Malfliet and Wiedmann. Pet. 12–40. Patent
`Owner contends that Wiedmann is cumulative with respect to Kopelman and
`that Petitioner concedes the similarities. Prelim. Resp. 58–60 (citing Pet.
`58–59 (“Kopelman and Wiedmann are in the same field and apply the same
`Approach . . . . It was well-known how to arrange and visualize a 2D image
`with a 3D model in a 3D space, as shown in Kopelman, Wiedmann, and
`many other references.”)). Patent Owner asserts “[t]he cumulative nature of
`Wiedmann weighs in favor of denial under § 325(d).” Id. at 59 (citing
`Becton, Dickinson and Co. v. B. Braun Melsungen AG, IPR2017-01586,
`Paper 8, at 17 (PTAB Dec. 15, 2017) (informative) (weighing “(b) the
`cumulative nature of the asserted art and the prior art evaluated during
`examination”)).
`
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`IPR2018-00785
`Patent 9,336,336 B2
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`
`Patent Owner’s arguments are persuasive. We have reviewed
`Petitioner’s challenges based on Malfliet and Wiedmann as compared to the
`challenges based on Malfliet and Kopelman (Pet. 12–57), Petitioner’s
`rationale for combining Malfliet and Wiedmann as compared to Malfliet and
`Kopelman (id. at 58–62), and the evidence Petitioner cites in support of the
`respective challenges (Ex. 1002, ¶¶ 70–275). In its claim charts and
`arguments, Petitioner essentially relies on Malfliet, Kopelman, and
`Wiedmann interchangeably for the arrangement and visualization of a 2D
`image with a 3D model in 3D space. Petitioner asserts that Malfliet
`discloses this feature:
`Malfliet recognizes that sometimes “only a 2D photograph of the
`patient is available” (Ex. 1006 at 18:27-28), which would have
`motivated a POSITA to be able to visualize just a 2D image with
`the 3D dental model. Ex. 1002, ¶273.
`Pet. 59. Petitioner then argues that Wiedmann’s disclosure does the same:
`Wiedmann teaches use of 2D images as well. The increasingly
`easy ways to obtain 2D images of the face, e.g., with a camera
`on every cell phone, would motivate the use of a 2D image
`(cellphone picture for example) with a restoration model. A
`POSITA would have been aware of the design need and would
`have sought to modify Malfliet such that it could accommodate
`aligning the 2D image of a patient’s face with the 3D tooth
`model. Id.
`Pet. 59–60 (emphasis added). Petitioner further asserts that Kopelman also
`discloses the same teachings:
`Kopelman also teaches combining 2D image data (e.g., an X-
`ray) with a 3D tooth model, teaching that it allows for better
`analysis for orthodontic treatment. Ex. 1008 at 1:52-56 (“For the
`purpose of proper design of orthodontic treatment it would have
`been high[ly] advantageous to have a method and system
`whereby information which can be acquired from one type of
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`image [2D] can be transferred or superpositioned to information
`available from another type of image [3D]”); Ex. 1008 at 5:43-
`60; Ex. 1002, ¶273. A POSITA would have been motivated to
`use Kopelman’s 2D to 3D technique in the context of [Malfliet],
`particularly where only a 2D image of the face was available. Ex.
`1002, ¶274.
`Pet. 60 (emphasis added). Additionally, Petitioner indicates that “based on
`Wiedmann and/or Kopelman (and common sense), it would be obvious (and
`easier) to construct a system such as that in Malfliet but accommodating a
`2D image of the face rather than a 3D image.” Pet. 62 (emphasis added).
`Nonetheless, as noted above, during prosecution the Examiner already
`considered whether these features were disclosed in the prior art now cited
`by Petitioner. Particularly, the Examiner considered the disclosure of
`Malfliet, Kopelman, and “common technical knowledge” with respect to
`these claimed features. See Ex. 1004, 825, 826. In this respect, Petitioner’s
`arguments are not substantively different from those already considered
`during prosecution. Namely, Petitioner relies essentially on the disclosure in
`Wiedmann as being substantially the same or the same as that provided by
`Malfliet, Kopelman, and common technical knowledge considered by the
`Examiner previously. See Pet. 58–59 (“It was well-known how to arrange
`and visualize a 2D image with a 3D model in a 3D space, as shown in
`Kopelman, [and] Wiedmann.”). We are persuaded that “Wiedmann adds
`nothing beyond what was already considered by the Patent Office.” Prelim.
`Resp. 58.
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`5. Additional challenges
`Petitioner presents three additional grounds for dependent claims 6, 7,
`8, 15, and 21. Pet. 2. With respect to dependent claim 15, Petitioner
`contends that it would have been obvious to combine Malfliet (with or
`without Kopelman and Wiedmann) to Lehman to add known techniques of
`interpolation and extrapolation. Id. at 62–64. For dependent claim 21,
`Petitioner argues de-warping is a known image processing technique to
`remove distortion (e.g., from a lens) in a 2D image, and a POSITA would
`have recognized that an undistorted image is preferable and thus would have
`had reason to add this known de-warping feature, including by combining
`Malfliet with Seeger (which shows basic dewarping was well-known). Id. at
`64. For dependent claims 6–8, Petitioner contends, citing MacDougald, that
`it “would have been obvious to combine Malfliet with MacDougald (to the
`extent the elements are not already disclosed in Malfliet) to use a 3D model
`of prepared teeth and a 3D model of unprepared teeth in designing the
`restoration.” Id. at 64–65.
`Patent Owner contends:
`In its § 325(d) analysis, Petitioner does not assert that the
`reliance on Lehman, Seeger, and MacDougald in the Petition
`should somehow preclude denial under § 325(d). Pet. at 67.
`Such references are not even mentioned in Petitioner’s § 325(d)
`analysis. As discussed above, Petitioner merely relies on
`Lehman, Seeger, and MacDougald in certain grounds to address
`additional subject matter of certain dependent claims. . . . Thus,
`Petitioner’s reliance on Lehman, Seeger, and MacDougald does
`not preclude denial under § 325(d). See Kayak Software Corp.
`v. Int’l Business Machines Corp., CBM2016-00075, Paper 16,
`at 10 (PTAB Dec. 15, 2016) (informative) (“Petitioner’s
`additional citation of [a reference not previously considered by
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`the Patent Office] in certain grounds, for the additional subject
`matter of certain dependent claims, is insufficient to persuade
`us that exercising our discretion under 35 U.S.C. § 325(d) is
`inappropriate.”)
`Prelim. Resp. 60–61.
`As discussed supra, the only Office Action issued during prosecution
`of the ’336 patent evidences that the Examiner considered Malfliet, the subject
`matter of Kopelman—by virtue of the foreign search report—and “the taking
`of official notice regarding standard practices in the art.” Ex. 1004, 825. In
`other words, the Examiner considered the same art presented in the Petition
`with respect to grounds 2, 3, and 4; namely, that which was “well known.”
`Pet. 62–66. Petitioner does not explain why the additional references provide
`subject matter that was not considered by the Examiner during prosecution.
`The entirety of the Petition’s § 325(d) discussion is below:
`The Examiner never considered “substantially the same …
`arguments” under § 325(d), because the Examiner did not
`consider the portion of Malfliet addressing use of a 2D face
`image, as discussed above, nor obviousness based on Malfliet
`combined with any other references. See, e.g., Chimei Innolux
`Corp. v. Semiconductor Energy Lab. Co., IPR2013-00068, Paper
`7, at 8 (Apr. 24, 2013) (instituting IPR was not improper where
`the Examiner had considered the two prior art references but did
`not consider substantially the same argument presented in the
`IPR). The Examiner did not consider Kopelman, even though its
`parent application was cited during prosecution, and neither
`Wiedmann nor Sachdeva were disclosed or considered during
`prosecution.
`Pet. 67.
`Accordingly, we are persuaded that the additional references that were
`not before the Office, which are cited for the additional subject matter of the
`dependent claims, amount to substantially the same prior art presented by
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`the Examiner. For example, claim 21, corresponding to claim 131 in the
`October 21, 2015, Office Action, was rejected under § 103 as obvious over
`Malfliet and “common technical knowledge for a skilled artisan.” Ex. 1004,
`832. Similarly, Petitioner contends “[d]e-warping is a known image
`processing technique to remove distortion (e.g., from a lens) in a 2D image,”
`“has long been known in the prior art,” and a “POSITA would have
`recognized that an undistorted image is preferable and thus would have had
`reason to add this known de-warping feature, including by combining
`Malfliet with [Seeger] (which shows basic dewarping was well-known).”
`Pet. 64 (citing Ex. 1002, ¶¶ 281–83 and Ex. 1011, ¶¶ 7, 10, and 44–47).
`Thus, the citation of these additional references for these dependent claims
`“is insufficient to persuade us that exercising our discretion under 35 U.S.C.
`§ 325(d) is inappropriate.” See Kayak Software Corp. v. Int’l Business
`Machines Corp., CBM2016-00075, Paper 16, at 10 (PTAB Dec. 15, 2016)
`