Ex Parte Ahani

Board of Patent Appeals and Interferences

Mar 29, 2010

10858329 (B.P.A.I. Mar. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte HESSAM AHANI
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Appeal 2009-003462
Application 10/858,329
Technology Center 3700
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Decided: March 29, 2010
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Before: LINDA E. HORNER, WILLIAM F. PATE III, and
FRED A. SILVERBERG, Administrative Patent Judges.

PATE III, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
18-67. We have jurisdiction under 35 U.S.C. § 6(b).
The claims are directed to an endodontic file. Claim 18, reproduced
below, is illustrative of the claimed subject matter:
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18. An endodontic file comprising a conductive shank having
a tip, a tooth-entering lower shank portion terminating in the
tip, and upper shank portion bound to the tooth-entering lower
shank portion and color indicia disposed on the tooth-entering
lower shank portion of the conductive shank for indicating the
length of the tooth-entering lower shank portion which has
entered a tooth.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Wong
Sicurelli
Weber
Riitano
US 5,855,479
US 6,024,565
US 6,520,773 B1
US 6,575,747 B1
Jan. 5, 1999
Feb. 15, 2000
Feb. 18, 2003
Jun. 10, 2003

REJECTIONS
Claims 18, 25, 26, 28, 29, 31, 36, 38, 39, 46, 47, 57, 58, and 62-67
stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
Sicurelli, Riitano, and Weber. Ans. 3.
Claims 19-24, 27, 30, 32-35, 37, 40-45, 48-56, and 59-61 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Sicurelli,
Riitano, Weber, and Wong. Ans. 4.

OPINION
Like Appellant, Sicurelli sought to overcome the problem of
inaccurate root canal length determinations made via X-ray or electronic
techniques. Sicurelli col. 1, ll. 10-17; Spec. 1-4. To overcome this problem,
Sicurelli teaches that length markings on a tooth entering portion 13 may be
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used in order to more accurately determine the length “L” of the tooth canal
2. Sicurelli col. 3, ll. 57-62. Appellant and the Examiner agree that Sicurelli
does not disclose color indicia on a tooth-entering lower shank portion. Ans.
3; App. Br. 5-6.
Riitano teaches that once a root canal depth has been determined,
there is a need for a quick and accurate way to set the working length of
dental instruments used in the procedure so that the working length of those
instruments is equivalent to the root canal depth. Col. 2, l. 1 – col. 3, l. 37.
Riitano teaches that incremental adjustment indicators can be placed on the
instrument such that the working length of the instrument can be determined
by viewing those indicators. Col. 4, ll. 59-63. Riitano further teaches that
indicators may be markings 136 such as bands or lines, and they may be
the same or different colors. Col. 4, l. 66 – col. 5, l. 3; col. 9, ll. 29-32; figs.
5A-C.
Using Riitano’s color markings on a tool, in addition to, or in place of,
Sicurelli’s bands or lines around that tool, amounts to the predictable use of
prior art elements according to their established functions—providing visual
indication of a particular location on a tool. Such a combination would
therefore have been obvious to one having ordinary skill in the art. KSR
International Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
Appellant contends that claim 18 is patentable over the combination
of Sicurelli, Riitano, and Weber because Riitano fails to teach the use of
color markings on the tooth-entering portion, instead using them on the
handle-entering portion 131. Sicurelli already teaches the placement of the
indicia on the tooth-entering portion. This feature need not also be taught by
Riitano in order to render the claimed subject matter obvious in view of the
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combined teachings of the references. The Examiner’s proposed
combination would meet the limitation requiring “color indicia disposed on
the tooth-entering lower shank portion.” The test for obviousness is not
whether the claimed invention is expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of the references
would have rendered obvious to those of ordinary skill in the art. See In re
Keller, 642 F.2d 413, 425 (CCPA 1981). Applying the teachings of Riitano
to Sicurelli, to use colored markings in place of bands or lines, would not
require changing the location of Sicurelli’s markings.
Regarding claim 39, Appellant repeats the argument discussed
regarding claim 18. App. Br. 9-11. Again, the method step of “viewing color
indicia disposed on the tooth-entering lower shank portion” is met by the
Examiner’s proposed combination.
Appellant reiterates the claim language of claims 25, 28, 29, 31, 36,
38, 46, 57, 62, 63, 641, and 65 in each case contending that the claimed
limitations in combination with those of their respective parent claims are
allowable. App. Br. 7-8; 11-13. These arguments do not point to any specific
factual finding, claim construction or conclusion of law made by the
Examiner that is believed to be in error. These arguments fail to convince us
of any error in the Examiner’s prima facie case.
Regarding claims 66 and 67 Appellant argues that the Examiner’s
proposed combination does not teach the use of both color indicia and length
indicia nor use in alternating fashion. App. Br. 13-14. The Examiner has not
contended that the use of both color and length indicia in alternating fashion

1 In the Appeal Brief claim 64 is argued at pages 12-13, and again at page
15. The argument on page 15 is discussed below.
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is expressly described by any one or all of the references. The Examiner has
concluded that one of ordinary skill in the art would know how to combine
length indicia of the type described by Sicurelli, with color indicia described
by Riitano in order to achieve optimal visibility of the indicia, in order to
facilitate length determinations. Ans. 6. Selecting the specific quantity and
location of each type of indicia would require only routine skill in the art.
Appellant has not provided any argument or evidence to demonstrate that the
Examiner’s conclusion is erroneous. Appellant’s arguments regarding claims
34 and 35 (App. Br. 17) are unpersuasive for the same reasons.
Regarding claims 26 and 47, Appellant contends that Weber does not
teach non-conductive material on the tooth entering portion of the file. App.
Br. 14. Appellant’s characterization of Weber is inaccurate. While specific
locations are explicitly discussed in Weber, middle portion 24 is encased in a
non-conductive material in order to prevent grounding when contacting a
metal tooth filling. Col. 3, ll. 41-48. In order to perform this function middle
portion 24 along with its non-conductive casing, must enter the tooth 32. (It
is noted that Figure 2 of Weber more accurately demonstrates the extents of
the non-conductive region 24 as opposed to Figure 4 which does not identify
any extent of the middle portion 24.) We note that the Examiner’s
characterization of the location of the non-conductive portion as an obvious
variant of Weber’s design rather than a necessary, and therefore inherent,
characteristic of Weber does not change the thrust of the rejection because
the location of the non-conductive portion would have been apparent to one
of ordinary skill in the art from Weber’s disclosure.
Regarding claim 30, Appellant contends that Weber does not teach the
non-conductive portion is a non-conductive film, sleeve, or combination
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thereof. App. Br. 16-17. Weber’s encasement, discussed above, is
reasonably read as the claimed “non-conductive film” or “non-conductive
sleeve.”
Regarding the rejection of claims 58 and 64, again, the fact that no
single reference shows the color indicia combined with the non-conductive
portion is not sufficient to establish that the Examiner erred in determining
that the claimed subject matter would have been obvious based upon a
combination of the references. Contra App. Br. 14-15.Applying Weber’s
teaching to locate the non-conductive portion at a location where contact
with metal fillings might occur would result in the non-conductive portion
being located on the portion of the tool that Sicurelli teaches placing
markings—the portion adjacent the coronal crown end 6 of the tooth 1.
Sicurelli col. 5, ll. 10-11. Appellant’s argument regarding claims 32 and 48
(App. Br. 17-18) are unpersuasive for the same reasons.
Regarding claims 19-24, 27, 30, 32-35, 37, 40-45, 48-56 and 59-61,
Appellant argues that Wong does not make up for the alleged lack of color
disposed along the tooth entering portion in Sicurelli, Riitano and Weber.
App. Br. 15-16. Since, as discussed above, this feature was not lacking in the
Examiner’s proposed combination, this argument is unpersuasive.
Additionally, it is not necessary for the prior art to serve the same purpose as
that disclosed in Appellants’ Specification in order to support the conclusion
that the claimed subject matter would have been obvious. See e.g., In re
Linter, 458 F.2d 1013, 1016 (CCPA 1972).
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DECISION
For the above reasons, the Examiner’s rejections of claims 18-67 are
affirmed.
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) (2009).

AFFIRMED
Vsh

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