Ex Parte Cheetham et al

Patent Trial and Appeal Board

May 27, 2016

11249320 (P.T.A.B. May. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111249,320 10/14/2005
25628 7590 05/31/2016
William H, Holt
Law Offices of William H. Holt
14584 West Dartmouth Avenue
Lakewood, CO 80228
FIRST NAMED INVENTOR
Joshua James Cheetham
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
Cheetham-5952 2414
EXAMINER
NELSON,MATTHEWM
ART UNIT PAPER NUMBER
3732
MAILDATE DELIVERY MODE
05/31/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSHUA JAMES CHEETHAM, RAYMOND
MAURICE CAHILL, and JEFFERY JAMES CHEETHAM
Appeal2014-004425
Application 11/249,320
Technology Center 3700
Before ANNETTE R. REIMERS, THOMAS F. SMEGAL, and
PAUL J. KORNICZKY, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellants, Joshua James Cheetham et al., 1 appeal under 35 U.S.C.
§ 134 from the Examiner's decision rejecting claims 19-28.2 We have
jurisdiction under 35 U.S.C. § 6(b).
2
We AFFIRM.
Appellants identify the real party in interest as SDI Limited. Br. 1.
Claims 1-18 are cancelled. Br. 1.
Appeal2014-004425
Application 11/249,320
THE CLAIMED SUBJECT MATTER
The claims are directed to a dental curing light. Spec. 1:5. Claims 19
and 24 are independent. Claim 19, reproduced below, is illustrative of the
claimed subject matter:
19. A dental treatment light comprising
an attachment having an outer end containing an LED light
source for providing a curing or bleaching treatment,
a main controlling and driving unit, and
means for rotatably mounting said attachment relative to
said main controlling and driving unit in such manner that said
attachment is manually rotatable about an axis with respect to
said main controlling and driving unit during use,
wherein said attachment comprises a housing having a
first transversely extending end face relative to said axis,
said main controlling and driving unit having a second
transversely extending end face relative to said axis,
said first and second end faces each being provided with
electrical contact means disposed in abutting contact when said
attachment is mounted to said main controlling and driving unit,
said electrical contact means comprising a plurality of
concentric circular electrical circuit rings on one of said first or
second end faces and a plurality of engageable electrical contacts
on the other end face,
said plurality of engageable electrical contacts extending
across said other end face and the circular electrical circuit rings
contacting the electrical contacts in such manner that at least two
contacts are in contact with each ring simultaneously when said
first and second faces are in abutting contact for ensuring that
electrical connection is maintained when said attachment is
mounted to said main controlling and driving unit and during said
relative rotation,
said main controlling and driving unit includes an
electrical supply means for supplying electrical power to said
LED light source, and
electrical circuit means extending from said electrical
contact means to said LED light source.
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Appeal2014-004425
Application 11/249,320
REFERENCES
In rejecting the claims on appeal, the Examiner relied upon the
following prior art:
Powell
Boinot
Becker
US 4,428,815 Jan. 31, 1984
US 4,725,231 Feb. 16, 1988
US 2003/0081430 Al May 1, 2003
REJECTIONS
The Examiner made the following rejections:
1. Claims 19-23 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Boinot, Powell, and Becker.
2. Claims 24--28 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Boinot, Powell, and Becker.
Appellants seek our review of the two rejections.
OPINION
Rejections 1-2: Claims 19, 21-24, and 26-28
Appellants combine their arguments in response to Rejections 1-2
together, and argue claims 19, 21-24, and 26-28 as a group. Br. 6-8. We
select claim 19 as the representative claim, and claims 21-24 and 26-28
stand or fall with claim 19. 37 C.F.R. § 41.37(c)(l)(iv) (2015).
The Examiner finds that Benoit discloses all of the limitations of
claim 19, except for the limitation requiring "at least two contacts are in
contact with each ring simultaneously when said first and second faces are in
abutting contact," which is disclosed in Powell. Final Act. 2--4. In response,
Appellants argue that the Examiner's rejection is wrong for three reasons.
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Application 11/249,320
First, Appellants assert that Benoit3 does not disclose "the plurality of
concentric circular electrical circuit rings and plurality of engageable
electrical contacts are in contact 'in such manner that at least two contacts
are in contact with each ring simultaneously when said first and second end
faces are in abutting contact ... during said relative rotation ... , "'as recited
in independent claims 19 and 24. Br. 6-7. However, Appellants' argument
does not address the Examiner's finding that this limitation is taught by
Powell (Final Act. 3--4) and, thus, is not responsive to the rejection as
articulated by the Examiner. See In re Merck & Co., 800 F .2d 1091, 1097
(Fed. Cir. 1986) ("Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references."). Appellants' argument does not apprise us of
error by the Examiner.
Second, Appellants argue that Benoit discloses bulb 1, but "does not
disclose a 'dental treatment light' having an LED source for providing
curing or bleaching treatment, as specifically recited in parent claims 19 and
24." Br. 6-7. However, Appellants' argument does not address the
Examiner's findings that Benoit discloses "a bulb that outputs light in the
visible spectrum, and despite this maybe not being of optimal wavelength,
would still result in the curing of light activated curable compounds" (Final
Act. 3), or that "Becker teaches a dental treatment light comprising a heat
sink [citing i-f 23] and LED [citing i-f 21] as the light source" (Id. at 4). See In
3 Appellants also assert that Benoit's "rings 62 and 63 are part of£!
separate battery charger and not part of the dental handpiece." Br. 7. In
response, the Examiner correctly notes that "the circuit rings 62, 63 are not
cited for the rejection, but rather the rings and pins 18/21and19/22." Ans.
5.
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Appeal2014-004425
Application 11/249,320
re Merck & Co., 800 F .2d at 1097. Appellants do not contest the
Examiner's findings regarding the combined teachings of Boinot and Powell
with Becker, namely, "to modify Boinot/Powell to include a heat sink and
LED as shown in Becker in order to better cool the light source and provide
an alternative light source that has the benefits of producing less heat and
having longer life than a bulb." Final Act. 4. Appellants also do not contest
the Examiner's finding that "white light from a bulb includes spectrums of
light typically used for curing." Ans. 5. Thus, Appellants' argument is not
responsive to the rejection as articulated by the Examiner and does not
apprise us of error by the Examiner.
Finally, Appellants argue that Boinot and Powell are non-analogous
art, asserting that they "are from widely different art, and neither of those
patented devices need or is adaptable to the teachings of Becker." Br. 8. The
analogous art inquiry has developed as a mechanism to define the scope and
content of prior art properly considered in an obviousness analysis.
To qualify as prior art for an obviousness analysis, a reference
must qualify as "analogous art," i.e., it must satisfy one of the
following conditions: (1) the reference must be from the same
field of endeavor; or (2) the reference must be reasonably
pertinent to the particular problem with which the inventor is
involved.
K-TEC, Inc. v. Vita-Mix Corp., 696 F.3d 1364, 1375 (Fed. Cir. 2012).
Appellants, however, do not substantively address these two non-analogous
art factors or explain why Benoit and Powell are not adaptable to Becker.
Appellants also do not address the Examiner's findings about Boinot and
Powell, including:
Boinot's device is fully capable of being used in a curing or
bleaching treatment. This is merely intended use and does not
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Application 11/249,320
provide any language in the current claims that structurally
differentiates [the claims] from the combination of Boinot with
the alternative LED light source of Becker. The benefits of
utilizing an LED as the light source are well known in the dental
art for producing less heat and providing longer life for instance
Powell is merely being used to show the benefit of having
redundant electrical connections in order to provide additional
points of contact in case one of the [non-analogous art] contacts
fails. This is a basic electrical benefit that would be desirable in
any electrical device such as a dental device. Additionally, both
Powell and Boinot are specifically dealing with the details of
electrical connections in a device.
Final Act. 5---6. Thus, Appellants argument is not responsive to the rejection
as articulated by the Examiner and does not apprise us of error by the
Examiner.
For the reasons discussed above, we sustain the Examiner's rejection
of claim 19 under 35 U.S.C. § 103(a) in view of Boinot, Powell, and Becker.
Because Appellants do not allege any other patentable distinctions for claims
21-24 and 26-28, we likewise sustain the Examiner's rejections of these
claims under 35 U.S.C. §103(a).
Rejections 1-2: Claims 20 and 25
Appellants combine their arguments in response to Rejections 1-2
together, and argue claims 20 and 25 as a group. Br. 7-9. We select claim
20 as the representative claim, and claim 25 stands or falls with claim 20. 37
C.F.R. § 41.37(c)(l)(iv) (2015).
Turning to dependent claims 20 and 25, the Examiner's findings state
that "[t]o use three rings is an obvious matter of choice in the number of a
known structure to the skilled artisan" (Final Act. 4), and "the third ring is
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Application 11/249,320
only being included to provide the same thing the other two rings are
capable of providing, and thus is merely a duplication of parts to allow for
more signals. Simply adding another ring that already has a known purpose
disclosed in the reference in order to have more of that purpose would be a
matter of choice." Ans. 6. In response, Appellants describe the benefits of
three electrical rings:
the presence of three rings allows for identification of the light
guard attachment. Thus, the identification may be able to
determine between a bleaching light that may require lower
intensity and longer application times compared to an attachment
with high intensity for short period use for curing a dental
restorative
Further, the presence of three rings allows the controlling
portion to immediately identify the attachment, this not being
possible with two rings.
Further, the presence of three rings provides additional
control such a feedback from a thermometer or thermostat. The
Examiner's dismissive reference to three rings as a matter of
choice appears not to be justified in this case.
Br. 8-9. Pages 4:15-5:10 of the Specification also describe benefits of
three rings. However, limitations not appearing in the claims cannot be
relied upon for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
The claims do not ascribe any special use or function to the recited three
rings, and Appellants have not shown how the Examiner's findings and
reasoning are in error. Thus, Appellants' arguments are not persuasive.
Claim 20 also recites, in part, a "heat sink." The Examiner finds that
it would have been obvious to one having ordinary skill in the art
at the time of invention to modify Boinot/Powell to include a heat
sink and LED as shown in Becker in order to better cool the light
source and provide an alternative light source that has the
benefits of producing less heat and having longer life than a bulb.
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Application 11/249,320
Final Act. 4 (emphasis added). In response, Appellants argue that "there is
no such [heat sink] structure or need suggested in the Boinot et al. or Powell
et al. patents, nor an appropriate place for inserting the device of Becker."
Br. 7-8. Appellants' argument, however, does not address the teachings of
Becker which are applied to Boinot and, thus, is not responsive to the
rejection as articulated by the Examiner. See Final Act. 4; see also id. at 5
("having the heat sink of Becker in Boinot would allow for longer operation
of the device due to dissipation of accumulating heat"); Ans. 5-6 ("the
motivation for combining is within the Becker reference which discusses use
of a heat sink in a dental light device for facilitating removal of heat
generated by the LED (Abstract for instance) ... in addition to the Becker
and Boinot devices both being dental devices having lights"); In re Merck &
Co., 800 F.2d at 1097. Appellants do not apprise us of error by the
Examiner.
For the reasons discussed above, we sustain the Examiner's rejection
of claim 20 and 25 under 35 U.S.C. § 103(a) in view of Benoit, Powell, and
Becker.
DECISION
The Examiner's rejection of claims 19-23 is AFFIRMED.
The Examiner's rejection of claims 24--28 is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv) (2015).
AFFIRMED
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