Ex Parte Andell et alDownload PDFPatent Trial and Appeal BoardJan 22, 201812450207 (P.T.A.B. Jan. 22, 2018) 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. 12/450,207 10/13/2009 Henri Andell PLAN-0006 1964 38327 7590 01/24/2018 Juan Carlos A. Marquez Marquez Intellectual Property Law Office PLLC 1629 K Street, NW Suite 300 Washington, DC 20006 EXAMINER TILLERY, RASHAWN N ART UNIT PAPER NUMBER 2174 NOTIFICATION DATE DELIVERY MODE 01/24/2018 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): mail@marqueziplaw.com lniu @ marqueziplaw.com US PTO @ dockettrak. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HENRI ANDELL and TERO PIHLAJAMAKI Appeal 2017-006979 Application 12/450,207 Technology Center 2100 Before JOHN A. JEFFERY, JAMES R. HUGHES, and JASON M. REPKO, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 1 and 4—22. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE Appellants’ invention is a dental unit with a microprocessor configured to control the unit according to a specific user profile, and a reader for reading the profile from an external record. See generally Abstract. Claim 1 is illustrative: 1. A dental unit comprising: a patient chair; a plurality of instruments; Appeal 2017-006979 Application 12/450,207 a control device; connections for operatively mounting and connecting the instruments and the control device to the dental unit; a display; a user interface; a microprocessor arranged to control the dental unit, the microprocessor being programmed to control functions of the dental unit according to a dentist user specific profile, the dentist user specific profile comprising dentist user configuration data for selectively configuring the user interface, the instruments and the control device of the dental unit according to selection by a specific dentist user, the user interface comprising icons presentable on the display and/or menus related to functions of the dental unit and that are presented on the display, wherein said microprocessor controls the dental unit according to the dentist user specific profile by receiving feeds related to said icons and/or menus from the control device and by guiding the instruments and/or ancillary devices connected to the dental unit according to said feeds as defined by the dentist user specific profile; and a reader for reading a handheld portable media source external to the dental unit for at least a part of the dentist user specific profile, wherein the dentist user specific profile is stored on a record of the handheld portable media source external to the dental unit, and wherein the microprocessor is operatively configured to read via the reader at least a part of the dentist user specific profile from the record external to the dental unit on the handheld portable media source, and the microprocessor is further operatively connected to configure the user interface, the instruments and the control device of the dental unit in response to the dentist user configuration data from the record external to the dental unit. 2 Appeal 2017-006979 Application 12/450,207 THE REJECTION The Examiner rejected claims 1 and 4—22 under 35 U.S.C. § 103 as unpatentable over Sorensen (US 2006/0177795 Al; Aug. 10, 2006), Kim (US 2006/0248332 Al; Nov. 2, 2006), and Vigil (US 2007/0136247 Al; June 14, 2007). Non-Final Act. 2—10.1 CONTENTIONS Regarding independent claim 1, the Examiner finds that Sorensen’s dental unit comprises, among other things, a microprocessor programmed to control unit functions according to a dentist user specific profile, where the profile comprises dentist user configuration data for selectively configuring the unit’s instruments and control device according to a specific dentist user’s selection. Non-Final Act. 2—5. Although the Examiner acknowledges that Sorensen’s dentist user configuration data does not also selectively configure the unit’s user interface that displays icons and/or menus, the Examiner cites Kim for teaching these features. Non-Final Act. 5—6. The Examiner also acknowledges that the Sorensen/Kim system does not store a user profile on a record of a handheld portable media source external to the dental unit, but cites Vigil for teaching storing user profile data on a memory stick. Non-Final Act. 6. In light of these collective teachings, the Examiner concludes that the claim would have been obvious. Non-Final Act. 2—6. 1 Throughout this Opinion, we refer to (1) the Non-Final Rejection mailed March 10, 2016 (“Non-Final Act.”); (2) the Appeal Brief filed November 1, 2016 (“App. Br.”); (3) the Examiner’s Answer mailed January 26, 2017 (“Ans.”); and (4) the Reply Brief filed March 27, 2017 (“Reply Br.”). 3 Appeal 2017-006979 Application 12/450,207 Appellants argue, among other things, that Sorensen does not teach or suggest a dentist user specific profile, let alone a dentist user specific profile on a handheld portable media source for configuring a dental unit as claimed. App. Br. 9-13; Reply Br. 5—8. According to Appellants, Sorensen uses information specific to patients—not dentists—and teaches a centralized network system that provides standardized treatment protocols, step-by-step instructions, and patient-specific information that is shared among networked dental units. App. Br. 9-13; Reply Br. 5—8. Sorensen’s centralized network-based system is said to teach away from the dental unit of claimed invention that uses a reader for reading dentist user specific configuration data stored on a handheld portable media source to configure an individual dental unit. App. Br. 14—15, 18—20; Reply Br. 5—9. Appellants add that neither Kim nor Vigil cures Sorensen’s deficiencies because, among other things, these references do not pertain to dental- related technology, and the components of Kim’s system are in a network. App. Br. 15—19; Reply Br. 9—10. ISSUES (1) Under § 103, has the Examiner erred in rejecting claim 1 by finding that Sorensen, Kim, and Vigil collectively would have taught or suggested a dental unit with (a) a microprocessor programmed to control unit functions according to a dentist user specific profile comprising dentist user configuration data for selectively configuring the unit’s user interface, instruments, and control device, and (b) a reader for reading a handheld portable media source external to the dental unit, where the microprocessor 4 Appeal 2017-006979 Application 12/450,207 is configured to read at least part of a dentist user specific profile stored on a record of the handheld portable media source? (2) Is the Examiner’s proposed combination of the cited references supported by articulated reasoning with some rational underpinning to justify the Examiner’s obviousness conclusion? This issue turns on whether Sorensen teaches away from the claimed invention. ANALYSIS Claim 1 recites, in pertinent part, a dental unit with a microprocessor programmed to control unit functions according to a dentist user specific profile, where the profile comprises dentist user configuration data for selectively configuring three elements of the dental unit: (1) the user interface; (2) the instruments; and (3) the control device. As noted above, the Examiner relies principally on Sorensen for teaching this functionality, but acknowledges that Sorensen lacks the recited user interface configuration, and cites Kim to cure this deficiency. Non- Final Act. 5—6; Ans. 3. We see no error in the Examiner’s reliance on Sorensen and Kim in this regard. To be sure, Sorensen’s system enables setting dental instrument parameters according to patient information stored in a computer configuration or on a network. Sorensen 195. But Sorensen’s system also enables dentists to select their own personal programmes and settings of the dental unit, as well as their own individual treatment protocols. Sorensen 1103. Given these teachings, Sorensen at least suggests selectively configuring at least a dental unit’s instruments and control device according 5 Appeal 2017-006979 Application 12/450,207 to a particular dentist’s selection consistent with that dentist’s personal programmes, settings, and individual treatment protocols. Appellants’ contention that ordinarily skilled artisans would allegedly be “left somewhat in the dark” as to what these particular personal programmes and settings are (Reply Br. 7) is unavailing, particularly in view of the configurability of operational parameters and settings associated with Sorensen’s dental unit based on selected information. Although Sorensen does not detail the dentists’ personal programmes, settings, and treatment protocols with particularity, Sorensen nevertheless suggests that this data tailored to individual dentists is associated with a dentist-based profile, and could be used to configure associated operational parameters and settings associated with the dental unit, in a manner similar to patient data. See Sorensen 46-47, 67—76, 95. Such a configuration would have been at least an obvious variation given these teachings. That Sorensen includes a networked, multi-user embodiment in Figure 11 as Appellants indicate (App. Br. 13) is of no consequence here. Notably, a particular patient’s information that is used to set relevant instrument parameters need not be stored on a network, but rather alternatively stored in the computer configuration. Sorensen 195. Although this locally-stored information pertains to patients, we see no reason why dentist-based information could not be stored locally as well, particularly given the selection of dentists’ personal programmes, settings, and treatment protocols in paragraph 103. Therefore, to the extent that Appellants contend that Sorensen’s system is limited to network-based implementations, and that dentists are allegedly “forced to rely on the central network system” (see 6 Appeal 2017-006979 Application 12/450,207 App. Br. 14), such a contention is overstated given the alterative local storage of configuration information in paragraph 95. Nor do we see error in the Examiner’s reliance on Kim for teaching that selectively configuring a user interface based on user profile information is known in the art, and that it would have been obvious to provide such a selective user interface configuration in Sorensen. Final Act. 5—6; Ans. 3 (citing Kim || 63, 103). Such an enhancement uses prior art elements predictably according to their established functions—an obvious improvement. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007). That Kim does not pertain to dental care units as Appellants contend (App. Br. 17) is of no consequence here given the limited purpose for which the reference was cited, namely merely to show that selectively configuring a user interface based on user profile information is known in the art, and that providing such a technique in Sorensen’s dental unit would have been obvious. We, likewise, find no error in the Examiner’s reliance on Vigil merely to show that storing user profile data on a record of a handheld portable media source, such as a memory stick, is known in the art, and that providing a reader in the Sorensen/Kim system for reading such externally- stored data would have been obvious. Non-Final Act. 6; Ans. 4 (citing Vigil 130; Fig. 3b). We see no error in this proposed combination, particularly in view of the alternative storage of configuration information in the computer configuration in Sorensen’s paragraph 95. In short, the Examiner’s proposed enhancement uses prior art elements predictably according to their established functions to yield a predictable result. See KSR, 550 U.S. at 417. Appellants’ arguments regarding the individual shortcomings of the cited 7 Appeal 2017-006979 Application 12/450,207 prior art (App. Br. 9-18; Reply Br. 4—9) do not show nonobviousness where, as here, the rejection is based on the cited references’ collective teachings. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Appellants’ contention that the cited prior art teaches away from the claimed invention is likewise unavailing. App. Br. 14—15, 19-22; Reply Br. 9. According to Appellants, Sorensen’s centralized network-based system teaches away from the dental unit of claimed invention that uses a reader for reading dentist user specific configuration data stored on a handheld portable media source to configure an individual dental unit. App. Br. 14—15, 18—20; Reply Br. 5—9. But nothing on this record indicates that the cited references criticize, discredit, or otherwise discourage investigation into the invention claimed as required for teaching away. See Norgren Inc. v. Int 7 Trade Comm’n, 699 F.3d 1317, 1326 (Fed. Cir. 2012); see also In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006). Nor have Appellants shown that ordinarily skilled artisans would have been discouraged from combining Vigil’s teachings with those of Sorensen and Kim as the Examiner indicates. Ans. 5. Nor do we find the Examiner’s rejection is based on impermissible hindsight reconstruction as Appellants allege. App. Br. 22—23; Reply Br. 9. To be sure, “[a]ny judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning . . . .” In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). But it is well settled that the reason to combine references need not be found in the combined references, but rather may be found in any number of sources, including common knowledge, the prior art as a whole, or the nature of the problem itself. DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1361 8 Appeal 2017-006979 Application 12/450,207 (Fed. Cir. 2006) (citation omitted). Where, as here, the record tends to suggest that the Examiner’s rationale to combine the references stems from common knowledge in the art and the teachings of the cited references, and is not based solely on knowledge gleaned only from Appellants’ disclosure, the Examiner’s proposed combination is proper. See id. On this record, then, we find the Examiner’s proposed combination is supported by articulated reasoning with some rational underpinning to justify the Examiner’s obviousness conclusion. Therefore, we are not persuaded that the Examiner erred in rejecting claim 1, and claims 4—22 not argued separately with particularity.2 CONCLUSION The Examiner did not err in rejecting claims 1 and 4—22 under § 103. DECISION We affirm the Examiner’s decision to reject claims 1 and 4—22. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 2 Although Appellants nominally argue claims 4—22 separately (App. Br. 23—25), Appellants reiterate arguments similar to those made for claim 1. We, therefore, group these claims accordingly. 9 Copy with citationCopy as parenthetical citation