Dmd, Joseph A. Stofko

Patent Trials and Appeals Board

Sep 25, 2019

14680192 - (D) (P.T.A.B. Sep. 25, 2019)

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.
14/680,192 04/07/2015 Joseph A. Stofko, DMD Stofko-1204CIP 5791
36787 7590 09/25/2019
BLYNN L. SHIDELER
THE BLK LAW GROUP
3500 BROKKTREE ROAD
SUITE 200
WEXFORD, PA 15090
EXAMINER
STEITZ, RACHEL RUNNING
ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
09/25/2019 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):
blynn@BLKLawGroup.com
cbelleci@BLKLawGroup.com
patents@BLKLawGroup.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOSEPH A. STOFKO

Appeal 2019-000498
Application 14/680,192
Technology Center 3700
____________

Before STEFAN STAICOVICI, MICHAEL J. FITZPATRICK, and
MICHAEL L. WOODS, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL

Joseph A. Stofko (“Appellant”) appeals under 35 U.S.C. § 134(a)
from the Examiner’s final decision rejecting claims 21–39. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

Appeal 2019-000498
Application 14/680,192

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STATEMENT OF THE CASE
The Specification
The Specification discloses “an improved one piece molded dental
floss holder.” Spec. ¶11.
The Rejected Claims
Claims 21–39 are rejected. Final Act. 3.1 No other claims are
pending. Claims 21 and 22 are illustrative and reproduced below, with
emphasis added to limitations especially material to our Decision.
21. A dental floss holder comprising:
a. An arcuate elongated handle terminating at a head
at one distal end and a tapered pick end defined on an end of the
handle opposite the head;
b. a pair of spaced apart arms extending from the
head, the spaced apart arms having a first end and a second end,
the first end of the spaced apart arms adjoining the head of the
handle, and wherein the pair of spaced apart arms include
visible spiral indicia, wherein each spiral indicia extends more
than 360 degrees about one arm; and
c. mushroom head floss element tie off on the top of
the handle portion.
22. The dental floss holder as recited in claim 21,
wherein the dental floss holder is a one piece molded article,
wherein the visible spiral indicia are grooves.
Appeal Br. 18.

1 Page 1 of the Final Action erroneously fails to list claim 21 as pending or
rejected. Final Act. 1. Claim 21 is pending and rejected. Id. at 3; Appeal
Br. 18.
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Application 14/680,192

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The Examiner’s Rejection
The following rejection is before us for review: claims 21–39, under
35 U.S.C. § 103(a), as being unpatentable over Johansson2 and Misner.3
Final Act. 3.4
DISCUSSION
The Examiner found that Johansson discloses all of the subject matter
of claims 21–39 except that “Johansson et al fails to show the handle having
an arcuate shape.” Final Act. 3 (citing Johansson 6:52–54 and Figs. 1 and 6
(ref. 1, 1b, 1c, 1d, 1b', 1c', 2)). The Examiner found that Misner discloses a
dental floss holder with an arcuate handle. Id. (citing Misner Fig. 2 (ref.
48)). The Examiner concluded:
It would have been obvious to one of ordinary skill in the art
before the effective filing date of the claimed invention was made
to modify the handle of Johanss[o]n et al with the arcuate
configuration as taught by Misner et al in order to better grip the
device and also to allow the device to be stacked on another
device for providing compact packaging.
Id. at 3–4.
Appellant argues that the Examiner’s rejection fails to show a
teaching or suggestion of “the claimed visible spiral indicia or grooves,
wherein each spiral indicia (or grooves) extends more than 360 degrees.”
Appeal Br. 13. As discussed below, Appellant’s argument is not persuasive
with respect to the “visible indicia” recited in independent claims 21 and 29

2 US 4,041,962, issued Aug. 16, 1977 (“Johansson”).
3 US 2011/0186074 A1, published Aug. 4, 2011 (“Misner”).
4 The Examiner’s rejection of claims 21–28, 33, and 36–39 under 35 U.S.C.
§ 112(b)/¶2 as indefinite was withdrawn. See Final Act. 2; Ans. 4.
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but is persuasive with respect to the “grooves” required by claims 22–28 and
30–39.
Claims 21 and 29
Claims 21 and 29 recite that “the pair of spaced apart arms include
visible spiral indicia, wherein each spiral indicia extends more than 360
degrees about one arm.” Appeal Br. 18–19. The Examiner interpreted the
“visible indicia” as “printed matter . . . not functionally related to the
substrate [and] not distinguish[ing] the invention from the prior art in terms
of patentability.” Final Act. 4 (citing In re Gulack, 703 F.2d 1381 (Fed. Cir.
1983)). “Where the printed matter is not functionally related to the
substrate, the printed matter will not distinguish the invention from the prior
art in terms of patentability.” Gulack, 703 F.2d at 1385. Thus, “[t]he critical
question is whether there exists any new and unobvious functional
relationship between the printed matter and the substrate.” Id. at 1386.
Appellant argues that “the alleged ‘printed material’ is CLEARLY
FUNCTIONALLY RELATED TO THE SUBSTRATE.” Appeal Br. 14.
Appellant explains that, “[f]or proper flossing[,] many practitioners advise
client[s] to use an advancing and twisting motion rather than a linear motion
that is often used.” Id. at 12. Appellant adds that “[t]he visible spiral acts as
visual reminder of this proper motion, namely of advancing and twisting, as
believed to be understood by those of ordinary skill in the art.” Id. (citing
Spec. ¶¶11, 14, 20, 21, and 26).
The Examiner responds that “the function of the flosser is to floss the
user’s teeth” and “the user can still preform [sic] the function of ‘flossing
teeth’ whether the spiral indicia is located on the spaced apart arms or not.”
Ans. 5 (citing In re Miller, 418 F.2d 1392 (C.C.P.A. 1969)). The Examiner
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distinguishes Miller (which found such a functional relationship) on the
basis that the claimed invention in Miller, a measuring cup, was unusable
“without the visual indicia to provide the correct volume indicated.” Ans.
5–6; see also Miller, 418 F.2d at 1395–96. We agree that Miller is distinct
from the instant facts.
We find the instant facts more analogous to those in In re Ngai, 367
F.3d 1336 (Fed. Cir. 2004) involving a claim to “[a] kit for normalizing and
amplifying an RNA population . . . comprising instructions.” Id. at 1337.
The Ngai court held that the printed matter, i.e., the instructions, “in no way
depends on the kit, and the kit does not depend on the printed matter.” Id. at
1339. The Ngai court added that “[a]ll that the printed matter does is teach a
new use for an existing product.” Id. Here, the printed matter does even
less. It reminds the user of a known use for an existing product.
For the foregoing reasons, Appellant has not apprised us of error in
the rejection of claims 21 and 29. Accordingly, the rejection of claims 21
and 29 is affirmed.
Claims 22–28 and 30–39
Claim 21 recites that “each spiral indicia extends more than 360
degrees about one arm.” Appeal Br. 18. Claim 22 depends from claim 21
and further recites that “the visible spiral indicia are grooves.” Id. Claims
23–28 ultimately depend from claim 22. Id. at 18–19.
Claim 29 recites that “each spiral indicia extends more than 360
degrees about one arm.” Id. at 19. Claim 30 depends from claim 29 and
further recites that “the visible spiral indicia are grooves.” Id. at 20. Claims
31–36 ultimately depend from claim 30. Id. at 20–21.
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Claim 37 recites “wherein the pair of spaced apart arms includes
visible spiral grooves, wherein each spiral groove extends more than 360
degrees about one arm.” Id. at 21. Claims 38 and 39 ultimately depend
from claim 37. Id.
To summarize, each of claims 22–28 and 30–39 requires a spiral
groove on each arm that extends around the arm for more than 360 degrees.
The Examiner found that Johannsson’s dental flosser includes visible
spiral grooves (i.e., helical tracks 1 b") on each of its arms (i.e., “tines”).
Final Act. 3 (citing Johansson 6:52–54). However, the Examiner did not
find Johansson’s helical tracks extend more than 360 degrees about each
tine. They do not. Rather, they extend only “slightly helically upward and
outward along the outside of said bends to the exterior sides of said tines.”
Johansson 6:52–54. Thus, we agree with Appellant that there is no teaching
or suggestion of grooves, wherein each extends more than 360 degrees about
one arm. See Appeal Br. 13.
The Examiner attempts to lump “grooves” in with the “visible indicia”
as printed matter. See Final Act. 4 (equating “visual indicia” with “360
degree spiral grooves”). That is error, because the grooves are not printed
matter. They are physical structure. The Examiner has not shown that the
prior art teaches or suggests spiral grooves, wherein each groove extends
more than 360 degrees about one arm.
Accordingly, the rejection of 22–28 and 30–39 is reversed.

Appeal 2019-000498
Application 14/680,192

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SUMMARY

Claims
Rejected
Basis Affirmed Reversed
21–39 § 103(a); Johansson
and Misner
21, 29 22–28, 30–39
Overall Outcome 21, 29 22–28, 30–39

AFFIRMED-IN-PART