Ex Parte Courvoisier

Patent Trial and Appeal Board

Jun 13, 2017

12418728 (P.T.A.B. Jun. 13, 2017)

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.
12/418,728 04/06/2009 Stephane Courvoisier S0004/7011US2 9146
21127 7590 06/15/2017
POT STNFT T T PC
EXAMINER
100 Cambridge Street
Suite 2101
EIDE, HEIDI MARIE
BOSTON, MA 02114 ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
06/15/2017 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):
thendricks @polsinelli. com
athumann @polsinelli. com
DC-IPDocketing@polsinelli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHANE COURVOISIER
Appeal 2015-002669
Application 12/418,728
Technology Center 3700
Before: LINDA E. HORNER, JASON W. MELVIN, and
BRENT M. DOUGAL, Administrative Patent Judges.
DOUGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a final rejection of
claims 20, 22, 23, and 38. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appeal 2015-002669
Application 12/418,728
CLAIMED SUBJECT MATTER
The claims are directed to a disposable rotary tool for dental
applications. Sole independent claim 38, reproduced below, is illustrative of
the claimed subject matter:
38. A disposable rotary cutting tool for dental applications
comprising:
a tubular tool shank comprising a drawn metal pipe section
having a uniform diameter over its entire length;
a tool head comprising a drawn metal tube section having
a uniform diameter over its entire length, wherein the tool head
has a first open end and a second open end, the first open end of
the tool head has a crown of saw teeth forming a circumferential
cutting surface, the crown of saw teeth having the same diameter
as the rest of the tool head;
wherein the second open end of the tool head, opposite the
first open end, comprises a bushing, wherein the tool shank is
inserted into the bushing, wherein the tool head is force fit
connected to the tool shank; and
a fastening connector that is connected to the tubular tool
shank.
REFERENCES
The prior art relied upon by the Examiner in the present rejections is:
Polanin US 4,178,688 Dec. 18, 1979
Nash US 4,283,175 Aug. 11, 1981
Johnson US 5,085,586 Feb. 4, 1992
Lazzara US 5,868,572 Feb. 9, 1999
Ura US 5,941,706 Aug. 24, 1999
Brown US 6,514,258 B1 Feb. 4, 2003
REJECTIONS
Claims 20, 23, and 38 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Polanin, Lazzara, Brown, Ura, and Nash; and claim 22 is
further rejected over Johnson.
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Appeal 2015-002669
Application 12/418,728
OPINION
Appellant argues that the Examiner’s proposed modification of
Polanin’s drill to connect the tool head with the shaft through a “force fit
connected by a bushing” would improperly change the basic principle of
operation of Polanin. Appeal Br. 4; see also id. at 4—5.
We first note that Appellant’s argument, that claim 38 requires the
tool head and shaft be connected through a force fit at the bushing, is
narrower than the claim language. Ans. 2. Claim 38 requires that “the tool
shank is inserted into the bushing” where the bushing is at “the second open
end of the tool head” and “the tool head is force fit connected to the tool
shank.” Though the force fit can be at the bushing, the claim never requires
it. At the same time, we still consider Appellant’s argument that the
Examiner’s proposed modification of Polanin’s drill to connect the tool head
with the shaft through a “force fit” would improperly change the basic
principle of operation of Polanin.
In rejecting claim 38, the Examiner relies primarily on Polanin. Final
Act. 2—3. The Examiner finds that “Polanin, Lazzara and Brown show the
head and shank sections fit together and Brown teaches it is known to use a
press fit.” Id. at 3.
The cutter of Polanin is designed “to remove the cement from around”
“a post broken off from a cap previously applied to the tooth.” Polanin, col.
1:10-11, 7—8. Polanin uses the post itself as a guide for the drill, where “the
inner diameter of the drill closely fit[s] the outer diameter of the post,” so
that just the cement is removed. Id. at col. 1:15—18, 10—11. Polanin also has
an adjustable relationship between the shaft (rod 18) and the tool head (drill
14) so that after the length of the broken post is measured by X-ray, the
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Appeal 2015-002669
Application 12/418,728
relationship between the shaft and tool head can be set so that the shaft acts
as a stop that buts-up against the post after the tool head has removed the
cement. Id. at col. 1:55—col. 2:16. This helps ensure that only the cement is
removed.
Appellant argues that the adjustable stop is an important design aspect
of Polanin, designed to “accomplish[] one of the goals of Polanin,” which is
to provide a proper abutment for the post within the drill. Appeal Br. 4
(citing Polanin, col. 1:19-21). It is argued that modifying Polanin to include
a force fit connection between the tool shank and tool head “changes the
basic principle under which Polanin was designed to operate.” Id. (citing In
re Ratti, 270 F.2d 810, 813 (CCPA 1959)).
Under Ratti, “a change in the basic principles” refers to change that is
fundamental in scope so as to relate to scientific or technical principles
under which the invention is designed to operate. Ratti, 270 F.2d at 813
(“This suggested combination of references would require a substantial
reconstruction and redesign of the elements shown in [the primary reference]
as well as a change in the basic principles under which the [primary
reference] construction was designed to operate.”) (emphasis added).
As noted by the Examiner, Polanin states that the adjustable aspect of
the stop is “preferable.” Polanin col. 1:19; Ans. 3. But, this feature also
serves the “primary object” of Polanin which is to “remove the cement from
around the post” by ensuring that the cement is completely removed along
the entire length of the post without cutting deeper than necessary. When
reviewed in light of the Specification as a whole, we agree with Appellant
that the adjustable stop is an important aspect of Polanin’s device, the
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Appeal 2015-002669
Application 12/418,728
removal of which would improperly “change the basic principle under which
Polanin was designed to operate.” Appeal Br. 4.
We further note, that though the Examiner states that “Brown teaches
it is known to use a press fit” (Final Act. 3), no rationale is provided to
modify Polanin to use a press fit. “[Rejections 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.” KSRInt’l Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
For these reasons we do not sustain the Examiner’s rejection of claim
38. The rejections of the dependent claims rely on the same faulty findings
and are therefore not sustained.
DECISION
The Examiner’s rejections of claims 20, 22, 23, and 38 are reversed.
REVERSED
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