Ex Parte Badoz

Board of Patent Appeals and Interferences

Feb 12, 2010

10416630 (B.P.A.I. Feb. 12, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JEAN-MARIE BADOZ
____________________

Appeal 2009-006586
Application 10/416,630
Technology Center 3700
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Decided: February 12, 2010
____________________

Before WILLIAM F. PATE, III, JENNIFER D. BAHR, and
FRED A. SILVERBERG, Administrative Patent Judges.

SILVERBERG, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Jean-Marie Badoz (Appellant) seeks our review under 35 U.S.C.
§ 134 of the final rejection of claims 4-9. We have jurisdiction under 35
U.S.C. § 6(b) (2002).

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SUMMARY OF DECISION
We REVERSE.

THE INVENTION
Appellant’s claimed invention is directed to canal instruments for
executing an endodontic operative procedure (Spec. 1:4-11).
Claim 4, reproduced below, is representative of the subject matter on
appeal.
4. A sequence of canal instruments for
performing an endodontic operating protocol
comprising a plurality of instruments adapted for
use in a defined sequence, wherein each of the
instruments has a plurality of cutting blades,
wherein the sequence of instruments have
progressive conicities from instrument to
instrument in the sequence, wherein the sequence
of instruments have progressive pitches including a
defined progression and a defined initial pitch,
wherein the progression of each instrument is
identical to the progression of the other
instruments in the sequence, and wherein the initial
pitch of the instruments in the sequence of
instruments increases progressively as a function
of the conicities of the instruments in the sequence
and varies in increasing proportion.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Buchanan US 5,897,316 Apr. 27, 1999

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The following rejections by the Examiner are before us for review:
1. Claims 4-9 are rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly
claim the subject matter which applicant regards as the invention.
2. Claims 4-9 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Buchanan.

ISSUES
The issues before us are: (1) whether the Examiner erred in
concluding that claim 4 is indefinite, in particular, whether the following
claim 4 limitations are indefinite: (a) “defined initial pitch” (App. Br., Claim
Appendix, cl. 4, l. 8), (b) “wherein the progression of each instrument is
identical to the progression of the other instruments in the sequence,” (App.
Br., Claim Appendix, cl. 4, ll. 8-10), and (c) “wherein the initial pitch of the
instruments in the sequence of instruments increases progressively as a
function of the conicities of the instruments in the sequence and varies in
increasing proportion.” (App. Br., Claim Appendix, cl. 4, ll. 10-13) (App.
Br. 12, 14); and (2) whether the Examiner has failed to articulate a reason
with rational underpinning as to why “the progression of each instrument is
identical to the progression of the other instruments in the sequence,” as
called for in claim 4, would have been obvious to a person having ordinary
skill in the art in view of the teachings of Buchanan (App. Br. 16).

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ANALYSIS
Rejection under 35 U.S.C. § 112, second paragraph
Appellant contends that claim 4: (1) is definite, (2) particularly points
out and distinctly claims the subject matter Appellant regards as the
invention, and (3) complies with the requirements of 35 U.S.C. § 112,
second paragraph. App. Br. 12-15. In particular, Appellant contends that
the following limitations called for in claim 4 are definite: (a) “defined
initial pitch” (App. Br., Claim Appendix, cl. 4, l. 8), (b) “wherein the
progression of each instrument is identical to the progression of the other
instruments in the sequence,” (App. Br., Claim Appendix, cl. 4, ll. 8-10) and
(c) “wherein the initial pitch of the instruments in the sequence of
instruments increases progressively as a function of the conicities of the
instruments in the sequence and varies in increasing proportion.” (App. Br.,
Claim Appendix, cl. 4, ll. 10-13). App. Br. 14. In support thereof,
Appellant supplies an illustration schematically showing the three canal
instruments (App. Br., Evidence Appendix) and Appellant states that:
As is “defined” in the supplied illustration,
the “initial pitch” of the third instrument is “x”, the
“initial pitch" of the second instrument is “1.5x”
and the “initial pitch” of the first instrument is
“2x”. Accordingly, the “the initial pitch [sic, ”] of
the instruments in the sequence of instruments
increases progressively [from “x”, to “1.5x”, to
“2x”] as a function of the conicities of the
instruments in the sequence [from 2% to 4% to
6%] and varies in increasing proportion [once
again, from “x”, to “1.5x”, to “2x”], as claimed.
App. Br. 14.
The Examiner found the following regarding claim 4: (1) that “it is
not clear what the definition of ‘defined initial pitch’ is” (Ans. 3, 5), (2) that
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it is unclear how the “progression of each instrument is identical to the
progression of the other instruments in the sequence.” (Ans. 3, 5), and (3)
that “[i]t is not clear . . . what is meant by the initial pitch of the instruments
varies in increasing proportion in addition to increasing progressively as a
function of the conicities of the instruments.” (Ans. 3).
The Examiner still further found that “the progression shown in the
illustration is not in accordance with the disclosure.” (Ans. 5).
Appellant’s Specification describes that “the instruments being of
progressive conicity and each having an identical progressive pitch,
characterized in that the pitch increases progressively as a function of the
conicity.” (Spec. 1: 34-37).
Appellant’s Specification further describes three canal instruments, a
first canal instrument having a pitch of x for a conicity of 2%, a second
canal instrument having a pitch of 1.5x for a conicity of 4% and a third
canal instrument having a pitch of 2x for a conicity of 6%. (Spec. 1:7, 32)
(Spec. 2:4-12) (emphasis added).
Appellant’s Specification still further describes that “the progression
of the pitch of each instrument increase[s] from the apex towards the
handle.” (Spec. 2:11-12).
We find that Appellant’s Specification defines the limitation “defined
initial pitch” as x, which is a broad limitation, but is not an indefinite
limitation. In re Johnson, 558 F.2d 1008, 1016 n.17 (CCPA 1977) (Merely
that a claim is broad does not mean that it is indefinite, that is, undue breadth
is not indefiniteness.)
We find that the limitation “wherein the progression of each
instrument is identical to the progression of the other instruments in the
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sequence,” means that the pitch of each instrument increases in size
proportionally to the pitches of the other two instruments as the conicity of
each instrument increases. We find that while this limitation may be broad it
is not indefinite. Id.
We find that the limitation “wherein the initial pitch of the
instruments in the sequence of instruments increases progressively as a
function of the conicities of the instruments in the sequence and varies in
increasing proportion” means that the initial pitch of the three instruments
increases from x to 1.5x to 2x as the conicity of the instruments increases
from 2% to 4% to 6% and varies in increasing proportion from x to 1.5x to
2x. We find that while this limitation may be broad it is not indefinite. Id.
We disagree with the Examiner and find that the illustration supplied
by Appellant accurately shows the three canal instruments (App. Br.,
Evidence Appendix). The illustration shows in one view: (1) the three
instruments having initial pitches of x, 1.5x and 2x, (2) the pitch of each
instrument progressively increasing in size from x to 1.5x to 2x as the
conicity of the instruments increases in size, and (3) the progression, that is,
the proportional increase in size, of the pitch of each instrument as the
conicity increases in size for each instrument being identical for the three
instruments.
Accordingly, we conclude that Appellant has demonstrated that the
Examiner erred in rejecting claim 4 under 35 U.S.C. § 112, second
paragraph as being indefinite. Appellant has likewise demonstrated error in
the Examiner’s rejection of claims 5-9, which depend from claim 4.

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Rejection under 35 U.S.C. § 103(a)
Claim 4 calls for, in part, “wherein the sequence of instruments have
progressive pitches including a defined progression . . . , wherein the
progression of each instrument is identical to the progression of the other
instruments in the sequence, . . .”
Appellant contends that Buchanan’s Specification does not describe,
nor can it be determined from Buchanan’s drawings, in particular figure 7A,
that the files have flutes that exhibit progressions that are identical to the
progressions of the other files as called for in independent claim 4 (App. Br.
17-18).
The Examiner found that Buchanan describes an “increase in pitch for
increase in conicity,” but does not describe “the specific correspondence.”
(Ans. 5). The Examiner concluded that “[i]t would have been an obvious
matter of choice to one of ordinary skill in the art as to the specific
correspondence between the progressive conicity and pitch as it is not clear
as to how to apply the functionality with conflicting definition and
progressive pitches.” (Ans. 5).
Buchanan describes tapered shaping files 50A, 50B, 50C and 50D
having a working portion 56 (col. 15, ll. 52-62, and fig. 7A). Buchanan is
silent as to the whether the progression of the pitch of each file is identical to
the progression of the pitch of the other files.
Buchanan further describes in column 6, line 49 through column 7,
line 20, an ISO standard regarding the files that vary in their tapers.
However, no evidence has been submitted as to the particulars of the ISO
standard and how or if it applies to Appellant’s claimed subject matter.
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We find that the Examiner’s conclusion of obviousness regarding
claim 4 is based upon the Examiner’s uncertainty as to subject matter called
for in claim 4 and not on specific facts or evidence. Therefore, we find that
the Examiner’s conclusion of obviousness is merely conclusory.
Accordingly, we find that the Examiner has failed to reach a proper final
conclusion of obviousness based on the record. KSR Int'l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007) (“[R]ejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.”).
Further, it is not clear to us why the limitation “wherein the
progression of the pitch of each file is identical to the progression of the
pitch of the other files” as called for claim 4, that is, why the pitch of each
instrument increasing in size proportionally to the pitches of the other two
instruments as the conicity of each instrument increases, would have been
obvious to a person having ordinary skill in the art.
We conclude that Appellant has demonstrated that the Examiner erred
in rejecting claim 4 under 35 U.S.C. § 103(a) as being unpatentable over
Buchanan. Appellant has likewise demonstrated error in the Examiner’s
rejection of claims 5-9, which depend from claim 4.

CONCLUSIONS
Appellant has established that the Examiner erred in concluding that
claim 4 is indefinite, in particular, that the following claim 4 limitations are
indefinite: (a) “defined initial pitch”, (b) “wherein the progression of each
instrument is identical to the progression of the other instruments in the
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sequence,” and (c) “wherein the initial pitch of the instruments in the
sequence of instruments increases progressively as a function of the
conicities of the instruments in the sequence and varies in increasing
proportion.”
Appellant has established that the Examiner has failed to articulate a
reason with rational underpinning as to why “the progression of each
instrument is identical to the progression of the other instruments in the
sequence” as called for in claim 4 would have been obvious to a person
having ordinary skill in the art in view of the teachings of Buchanan.

DECISION
The decision of the Examiner to reject claims 4-9 is reversed.

REVERSED

mls

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