Ex Parte Cetrangelo

Board of Patent Appeals and Interferences

Jun 16, 2009

10656953 (B.P.A.I. Jun. 16, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte REGINA A. CETRANGELO
____________

Appeal 2009-002595
Application 10/656,953
Technology Center 1700
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Decided:1 June 16, 2009
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Before CHUNG K. PAK, PETER F. KRATZ, and
JEFFREY T. SMITH, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-002595
Application 10/656,953

This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-10. We have jurisdiction pursuant to
35 U.S.C. § 6.
Appellant’s claimed invention is directed to a method and device for
cleaning dental instruments.
Claims 1, 4, and 9 are illustrative and reproduced below:
1. A device for use in the cleaning of dental instruments
comprising:

a) a finger rest,

b) a stem,

c) an open container having an exterior surface, an interior
surface, and a top, said exterior surface having a girth near the
top, said interior surface containing a plurality of prongs, and
said top having a protective rim.

4. The device of claim 1, wherein the container contains gauze.

9. A method of cleaning a dental instrument having a pointed tip
which comprises:

a) holding the device of claim 4 in one hand,

b) holding the dental instrument in the other hand,

c) placing the pointed tip of the dental instrument inside the
open container,

d) putting the pointed tip of the dental instrument in contact
with the gauze,

e) applying pressure to the container to assure firm contact
between the instrument and the gauze,

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f ) wiping the tip of the instrument on the gauze, and

g) removing the instrument from the open container.

The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Williams 4,362,241 Dec. 07, 1982
Wallock 5,471,706 Dec. 05, 1995
Cerroni 5,704,088 Jan. 06, 1998

The following grounds of rejection are maintained by the Examiner:
I. Claims 1, 3, and 5 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Wallock;
II. Claims 2, 4, and 6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wallock in view of Williams; and
III. Claims 7-10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Cerroni in view of Wallock and Williams.
We reverse the stated rejections for the reasons set forth in the Appeal
Brief, as highlighted below.
Concerning the anticipation rejection of claims 1, 3, and 5, the
Examiner maintains that:
Wallock et al. disclose [sic] a device for cleaning dental
instrument [sic] comprising a container containing bristles, and
a finger grip ribs 22 (girth). The reference discloses that the
container includes guard loop 50, and guard collar 45, and
protective rim. See col. 3, line 65- col. 4, line 2, col. 5, lines 3-
10, 57-59, 29-37, and the claims. The reference discloses the
prongs (brush 10) as claimed.

Ans. 3.

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Appellant, on the other hand, argues that all of the anticipatorily
rejected claims require a device having several separately identified and
claimed component parts, including an open container having specified
features, a stem, and a finger rest, all of which claimed items the Examiner
has not prima facie shown to be described as part of a cleaning device
according to Wallock (App. Br. 11-13).
Concerning the obviousness rejection of dependent claims 2, 4, and 6,
the Examiner acknowledges that Wallock does not teach including gauze in
the container, but the Examiner maintains that “Williams discloses an
apparatus for disinfection of dental instruments” and Williams “discloses the
container and the gauze inside the container. See Figs. 1 and 7, col. 4, lines
61-67, and col. 5, lines 14-25” (Ans. 4).2
Based on the combined teachings of Wallock and Williams, the
Examiner maintains that “[i]t would have been obvious for one skilled in the
art to use the gauze taught by Williams in the Wallock et al. container to
remove any contaminants remains on the instrument” (id.).
Contrarily, Appellant contends that the Examiner has not prima facie
shown that the Examiner’s proposed combination of the teachings of
Williams and Wallock would have led one of ordinary skill in the art to a
device having all of the component parts called for in claims 2, 4, and 6
based on their dependency on claims 1, 3, and 5, much less a device further
including the additional features added by dependent claims 2, 4, and 6,
including the gauze required by claims 4 and 6 (App. Br. 13-17).

2 Of the three dependent claims subject to this rejection, only rejected
claims 4 and 6 require a container including gauze, dependent claim 2
requiring that an open container exterior surface of claim 1 to be textured
(see claims 2, 4, and 6).
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With regard to the Examiner’s obviousness rejection of claim 7-10,
the Examiner relies on a proposed combination of the teachings of Cerroni,
Wallock and Williams. The Examiner maintains that:
Cerroni discloses a method and apparatus for cleaning
dental instruments. The reference discloses holding the device
in one hand, placing the dental instrument inside the open
container, putting the pointed tip of the dental instrument in
contact with the bristles, and wiping the tip of the instrument.
See col. 3, lines 1-38. The reference discloses the objectives
and advantages of the invention to provide an apparatus has
many sizes and many geometric volume configurations. See
col. 5, lines 21-34. The reference discloses the device is made
of flexible material as claimed. See the abstract, col. 5, lines
20-42, col. 6, lines 11-30, and claims 2, 11.
The reference does not teach the container containing
gauze, the girth, and the prongs as claimed.

Ans. 4-5.

In light of the additional teachings of Wallock and Williams, the
Examiner asserts that:
It would have been obvious for one skilled in the art to
use the gauze taught by Williams and the girth and prongs
taught by Wallock et al. in the Cerroni container to enhance the
cleaning. This also because the brush element taught by
Cerroni may be absorbent and made of a material such as a
rough sponge material, ----, or a rough cloth material such as
terry cloth. See col. 6, lines 28-32. The reference also teaches
securing the brush element. It would have been obvious for one
skilled in the art to use the gauze as absorbent material in [the]
Cerroni container because Cerroni's brush may be made of
absorbent material, the girth (ribs (44)) taught by Wallock et al.
in the Cerroni's apparatus to enhance the holding of the
apparatus and therefore enhance using the apparatus during the
cleaning. The barrier 24 (col. 6, lines 53-58) taught by Cerroni
is equivalent to the prongs as claimed.
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Ans. 5-6.
In opposition, Appellant argues that the Examiner has not prima facie
established that the Examiner’s proposed combination of the teachings of
Cerroni, Williams and Wallock would have led one of ordinary skill in the
art to a device having all the component parts required by the rejected
claims, including a device comprising a stem, a finger rest and an open
container with prongs, much less a device or method of using a device
further including the additional features of claims 8-10 (App. Br. 17-20).
ISSUES
Has Appellant established that the Examiner has reversibly erred by
failing to show prima facie anticipation of claims 1, 3 and 5 over Wallock?
Has Appellant established that the Examiner reversibly erred by
failing to show that the proposed combination of Wallock and Williams
would have prima facie rendered the subject matter of any of claims 2, 4, or
6 prima facie obvious?
Has Appellant established reversible error in the Examiner’s assertion
that the proposed combination of Cerroni, Wallock and Williams would
have rendered the subject matter required by any of claims 7-10 prima facie
obvious?
PRINCIPLES OF LAW
It is well settled that the burden of establishing a prima facie case of
non-patentability resides with the Patent and Trademark Office (PTO). See
In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984).
“When the applicant states [in his or her specification] the meaning
that the claim terms are intended to have, the claims are examined with that
meaning . . . .” In re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989).
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“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
“‘[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.’” KSR Int’l v. Teleflex, Inc., 550 U.S. 398, 417 (2007)
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).

FINDINGS OF FACT
In addition to factual findings set forth elsewhere in this Opinion, the
following factual findings are made based on a preponderance of the
evidence of record:
The Specification provides that:

[t]he device of the present invention is an open container
into which dental gauze may be placed. The device is made up
of a finger rest, a stem, and an open container having a girth
near the open end and a protective rim at the open end.
Protruding prongs on the inner surface of the open container aid
in keeping the gauze in place. The device is made of a flexible
material which allows pressure to be put on the gauze for
assuring firm contact between the gauze and the instrument.

(Spec. ¶ 0022).
Wallock discloses an apparatus (9) for cleaning dental instruments
including a tubular container (17) housing a brush (10) for cleaning the
instrument, wherein the tubular housing includes spaced finger grip ribs (22)
intermediate the ends thereof, and an upper entry end cap assembly (23)
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(col. 3, ll. 35-65). A flushing liquid (35) can be provided in a sump area
(19) of the cleaning device (col. 4, ll. 14-19).
Williams discloses an apparatus for the disinfection of medical and
dental instruments using cold disinfection solution and a gauze liner bonded
to an envelope (Abstract; Fig. 2, elements 11, 20). The envelope can include
two chambers (12 and 13) divided by a heat seal (14), with chamber (12)
containing crushable capsules (16-18) containing disinfecting solution
components (col. 2, l. 54-col. 3, l. 56; Figs. 2 and 3). Williams
teaches/suggests several alternative embodiments, including one wherein a
reservoir of cold disinfectant solution is provided (col. 4, l. 61-col. 5, l. 26,
Fig. 7).
Cerroni teaches or suggests a hand-held apparatus including a flexible
sealed chamber including a brush element for manipulating medical and
dental instruments during the cleaning of the instrument upon its insertion
into the chamber (Abstract, col. 2, l. 50 - col. 3, l. 38, Figs. 1-10). Cerroni
teaches that the housing can be made from plastic material and that the brush
element may be absorbent and made from rough material including sponge,
wool, or cloth (col. 6, 11-32). A breakable bubble (20) of cleansing fluid
may be included with the device (col. 6, ll. 36-42, Figs. 6 and 7).

ANALYSIS
Rejection I

The Examiner refers to “col. 3, lines 60-65” and “claims 1 and 3” of
Wallock for a description of an open container corresponding to the open
container required by anticipatorily rejected claims 1, 3, and 5 (Ans. 6). In
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these sections of Wallock, a tubular casing (container 17) or housing tube
(17), is variously set forth by Wallock. However, the Examiner also refers
to element 17 of Wallock as describing Appellants’ claimed stem, which is a
separate element from the open container that is also called for in the
rejected claims. In this regard, Appellant’s drawing Figure 1 shows stem (6)
and finger rest (4) as distinct elements from the open container (8) portion of
the claimed cleaning device. Giving rejected claims 1, 3, and 5 their
broadest reasonable construction consistent with the Specification, the
Examiner has not fairly explained how the element (17) of Wallock can
comprise both a stem and the separately claimed open container portion of
the claimed device.
Accordingly, we reverse the Examiner’s anticipation rejection for
failing to present a prima facie case establishing lack of novelty of the
claimed device over Wallock.

REJECTION II
Concerning the Examiner’s rejection of dependent claims 2, 4, and 6,
the Examiner additionally relies on the further teachings of Williams for
allegedly suggesting the obviousness of using a gauze liner of Williams in
the cleaning device of Wallock. However, the Examiner does not further
explain how Williams in combination with Wallock would have rendered
the claimed cleaning device including a stem, a finger rest, and an open
container obvious to one of ordinary skill in the art. Thus, we need not
reach the question as to whether the substitution or addition of the gauze of
Williams for the brush of Wallock (which question only applies to rejected
dependent claims 4 and 6) would have been obvious to one of ordinary skill
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in the art at the time of the invention, because the Examiner has not even
fairly explained how Wallock with or without Williams, teaches or suggests
a cleaning device including a stem, a finger rest, and an open container, as
required by rejected claims 2, 4, and 6.
On this record, we reverse the Examiner’s obviousness rejection over
Wallock and Williams.

Rejection III
All of the rejected claims 7-10 require a device or a method
employing the device wherein the device including a finger rest, a stem, and
an open container, which open container includes a top with a protective
rim, and an interior surface containing a plurality of prongs as part thereof.
As argued by Appellant, the Examiner has not fairly articulated where
Cerroni teaches or suggest a device including a finger rest, a stem, and an
open container with a plurality of prongs on an interior surface thereof and a
top having a protective rim, as required by all of the claims subject to the
Examiner’s third stated rejection (App. Br. 18).
As we pointed out above with respect to the Examiner’s first and
second stated rejections, the Examiner has not reasonably established that
Wallock includes both a stem and an open container by referring to tubular
container (17) for each of these separate elements. Nor has the Examiner
employed Williams for addressing these claim features.
Moreover, the Examiner has not presented a persuasive line of
reasoning establishing why one of ordinary skill in the art would have been
led to modify the cleaning device and/or method of using the cleaning
device of Cerroni by adding bristles, as taught by Wallock, to an inner
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surface of the flexible device of Cerroni as a cleaning enhancer because
Cerroni already provides for a brush element 14. Furthermore, the Examiner
has not fairly explained why an ordinary skilled artisan would have been led
to make a wholesale substitution of gauze from Williams, and a brush
element, a so called stem, ribs, and protective rim, etc., allegedly from
Wallock, for the brush element of Cerroni in a manner so as to result in a
device corresponding to the claimed device based on the teachings of the
applied references.
Additionally, we note that the Examiner has not reasonably
established how the instrument entry barrier (24) of Cerroni corresponds to
the claimed prongs located at an open container interior surface (Ans. 6).
On this record, the Examiner has not furnished a sustainable basis for
the stated obviousness rejection predicated on the teachings of the applied
references.

CONCLUSION
Appellant has shown that:
(1) the Examiner has reversibly erred by failing to show prima facie
anticipation of claims 1, 3 and 5 by Wallock;
(2) the Examiner has reversibly erred by failing to show that the
proposed combination of Wallock and Williams would have prima facie
rendered the subject matter of any of claims 2, 4, or 6 prima facie obvious;
and
(3) the Examiner has reversibly erred in asserting that the proposed
combination of Cerroni, Wallock and Williams would have rendered the
subject matter required by any of claims 7-10 prima facie obvious.
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ORDER
The decision of the Examiner to reject claims 1, 3, and 5 under 35
U.S.C. § 102(b) as being anticipated by Wallock; to reject claims 2, 4, and 6
under 35 U.S.C. § 103(a) as being unpatentable over Wallock in view of
Williams; and to reject claims 7-10 under 35 U.S.C. § 103(a) as being
unpatentable over Cerroni in view of Wallock and Williams is reversed.

REVERSED

ssl

RICHARD L. HUFF
19304 OLNNEY MILL ROAD
OLNEY, MD 20832
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