13160297 - (D) (P.T.A.B. Apr. 12, 2019)

Ex Parte Clark et al

Patent Trials and Appeals BoardApr 12, 2019

13160297 - (D) (P.T.A.B. Apr. 12, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 13/160,297 7590 Kregg T. Brooks ICE MILLER LLP FILING DATE 06/14/2011 04/12/2019 200 West Madison Suite 3500 Chicago, IL 60606 FIRST NAMED INVENTOR David Clark 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. 27099.0270 (P02096US01) 3070 EXAMINER NELSON,MATTHEWM ART UNIT PAPER NUMBER 3772 MAIL DATE DELIVERY MODE 04/12/2019 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 DAVID CLARK, BRANT MILES, and MICHAEL QUIGLEY Appeal2018-007217 Application 13/160,297 Technology Center 3700 Before STEFAN STAICOVICI, WILLIAM A. CAPP, and ALYSSA A. FINAMORE, Administrative Patent Judges. Opinion for the Board filed by ST AI CO VICI, Administrative Patent Judge. Opinion Concurring filed by CAPP, Administrative Patent Judge. ST AI CO VICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE- David Clark et al. ("Appellants") 1 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision in the Final Office Action ( dated June 20, 2017, hereinafter "Final Act.") rejecting claims 1, 3-13, and 17-21.2 We have jurisdiction over this appeal under 35 U.S.C. Â§ 6(b ). 1 SS White Burs, Inc. is identified as the real party in interest in Appellants' Appeal Brief (filed Dec. 19, 2017, hereinafter "Appeal Br."). Appeal Br. 3. 2 Claims 2 and 14--16 are canceled. See Appeal Br. 18, 20 (Claims App.). Appeal2018-007217 Application 13/160,297 SUMMARY OF DECISION We REVERSE and enter a NEW GROUND of REJECTION pursuant to our authority under 37 C.F.R. Â§ 4I.50(b). INVENTION Appellants' invention is related to a bur for endodontic treatment. Spec. para. 8. Claims 1, 20, and 21 are independent. Claim 1 is illustrative of the claimed invention and reads as follows: 1. A self-centering endodontic bur for access cavity preparation, troughing, and enlargement of orifices enabling unimpeded navigation of root canals by endodontic files and reamers, compnsmg: a drive shaft connectable to a motorized dental handpiece; a stiff shank attached to the drive shaft with the same axis as the drive shaft; and a conical bur cutting head having a length, a base, and a tip, the conical bur cutting head being attached to the stiff shank at the base, the tip being at a vertex to the base, the conical bur cutting head tapering in width along the length from the base to the tip; wherein the conical bur cutting head comprises an outer surface having a plurality of cutting members running parallel to the axis of the stiff shank and extending outwardly from the outer surface, wherein at least one of the cutting members is positioned between the base and the vertex, each of the plurality of cutting members sized and shaped to cut dentin; wherein the stiff shank tapers in width from the drive shaft to the conical bur cutting head in a manner which allows microscopic observation of the vertex, and wherein a transition between the base of the cutting head and the stiff shank is smooth; 2 Appeal2018-007217 Application 13/160,297 wherein the stiff shank is of a stiffness capable of self- centering the conical bur during access cavity preparation, and wherein the stiff shank tapers at a constant rate from the drive shaft to the transition between the base of the cutting head and the stiff shank. REJECTIONS I. The Examiner rejects claims 1, 3-12, 17, and 19-21 under 35 U.S.C. Â§ I03(a) as being unpatentable over Fischer (US 2006/0008766 Al, pub. Jan. 12, 2006) in view of Boston (US 6,257,889 Bl, iss. July 10, 2001), Aono et al. (US 5,823,775, iss. Oct. 20, 1998, hereinafter "Aono"), and Beppu (US 2003/0232307 Al, pub. Dec. 18, 2003). II. The Examiner rejects claim 13 under 35 U.S.C. Â§ 103(a) as being unpatentable over Fischer, Boston, Aono, Beppu, and Hickok (US 7,140,878 B2, iss. Nov. 28, 2006). III. The Examiner rejects claim 18 under 35 U.S.C. Â§ I03(a) as being unpatentable over Fischer, Boston, Aono, Beppu, and Graybill et al. (US 7,311,522 B2, iss. Dec. 25, 2007, hereinafter "Graybill"). NEW GROUND OF REJECTION Claims 1, 3-13, and 17-21 are rejected under 35 U.S.C. Â§ 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the invention which applicant regards as the invention. Each of independent claims 1, 20, and 21 requires, inter alia, that "a transition between the base of the cutting head and the stiff shank is smooth." Appeal Br. 18, 20-22 (Claims App.) (emphasis added). 3 Appeal2018-007217 Application 13/160,297 Although an ordinary and customary meaning of the term "smooth" is "free from projections or unevenness of surface; not rough," 3 independent claims 1, 20, and 21 are "still indefinite if a person of ordinary skill in the art cannot translate the definition into meaningfully precise claim scope." Haliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1251 (Fed. Cir. 2008). "[P]atentees are allowed to claim their inventions broadly, [but] they must do so in a way that distinctly identifies the boundaries of their claims." Id. at 1253. In this case, the Specification does not set forth the metes and bounds of the term "smooth," as called for by each of independent claims 1, 20, and 21. We appreciate that the Specification describes that "the bur head base 385, neck 326 and mount 327 may be machined so as to form a smooth, gradual transition between the bur head 360 and the shank 325." Spec. para. 50 ( emphasis added). However, in a first instance, merely stating that surfaces are machined without describing the machining process or the degree of "projections or unevenness" required by a surface to be considered a "smooth" surface does not allow a skilled artisan to determine whether the claimed "transition between the base of the cutting head and the stiff shank is smooth." Second, it is not clear whether the term "smooth" as applied to the claimed "transition between the base of the cutting head and the stiff shank" refers to the degree of "projections or unevenness" discussed supra or a transition having a machined radius between burr head base 385 and shank 325 rather than a stepped transition. Accordingly, independent claims 3 See https://www.dictionary.com/browse/smooth (last visited April 9, 2019). 4 Appeal2018-007217 Application 13/160,297 1, 20, and 21 "do not define the invention (i.e., the subject matter which the applicant regards as his invention) with a reasonable degree of particularity." In re Hammack, 427 F.2d 1378, 1382 (CCPA 1970). In conclusion, for the foregoing reasons, the term "smooth" as used in the claims, when construed in light of Appellants' Specification, lacks sufficient precision such that one endeavoring to practice the invention could not determine the metes and bounds thereof. Therefore, claims 1, 3-13, and 17-21 are indefinite for failing to particularly point out and distinctly claim the invention. ANALYSIS In view of our determination that claims 1, 3-13, and 17-21 are indefinite, it follows that the prior art rejection of claims 1, 3-13, and 1 7-21 must fall because it is necessarily based on speculative assumptions as to the meaning of the claims. See In re Steele, 305 F.2d 859, 862---63 (CCPA 1962). It should be understood, however, that our decision in this regard is proforma and based solely on the indefiniteness of the claimed subject matter, and does not reflect on the adequacy of the prior art evidence applied in support of the rejections. SUMMARY We reverse the Examiner's decision to reject claims 1, 3-13, and 17- 21. We enter a new ground of rejection of claims 1, 3-13, and 17-21 under 35 U.S.C. Â§ 112, second paragraph, as being indefinite. 5 Appeal2018-007217 Application 13/160,297 This decision contains new grounds of rejection pursuant to 37 C.F.R. Â§ 4I.50(b). Section 4I.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the Examiner, in which event the prosecution will be remanded to the Examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard underÂ§ 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining ProcedureÂ§ 1214.01. REVERSED; 37 C.F.R. Â§ 4I.50(b) 6 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DAVID CLARK, BRANT MILES, and MICHAEL QUIGLEY Appeal2018-007217 Application 13/160,297 Technology Center 3700 Before STEFAN STAICOVICI, WILLIAM A. CAPP, and ALYSSA A. FINAMORE, Administrative Patent Judges. CAPP, Administrative Patent Judge, concurring. I concur in the result reached by the majority. I write separately to express my own views as to the indefiniteness of "smooth." It is entirely possible for a shaft to have a surface that is "smooth" circumferentially, but otherwise have an irregular or "rough" surface in the axial direction. Appellants' claims and accompanying disclosure provide no guidance as to whether "smooth" surface language at issue applies circumferentially, axially, or both. Thus, the scope of the claim is uncertain. During prosecution, a claim is properly rejected as indefinite if it is "amenable to two or more plausible claim constructions." Ex parte Miyazaki, 2008 WL 5105055 at *5 (BPAINov. 19, 2008) (precedential). That is the situation presented here.