Ex Parte DiEdwardo

Patent Trial and Appeal Board

Nov 22, 2016

13278336 (P.T.A.B. Nov. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/278,336 10/21/2011 William A. DiEdwardo
66386 7590 11/25/2016
JACQUELINE TADROS, PA
P.O. Box 4564
FORT LAUDERDALE, FL 33338-9998
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.
Comfort Brace, LLC 6636
EXAMINER
HARRIS, RAYMOND EUGENE
ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
11/25/2016 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):
JTADROS@INTELLECTUALPROPERTYNOW.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM A. DIEDW ARDO
Appeal2014-008143
Application 13/278,336
Technology Center 3700
Before LYNNE H. BROWNE, LISA M. GUIJT, and ERIC C. JESCHKE,
Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEivIENT OF THE CASE
William DiEdwardo ("Appellant") seeks review under 35 U.S.C.
§ 134(a) of the Examiner's decision, as set forth in the Final Office Action
dated August 30, 2013 ("Final Act."), rejecting claims 1-22. 1 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellant identifies Comfort Brace, LLC as the real party in interest.
Appeal Br. 1.
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Application 13/278,336
The disclosed subject matter "relates generally to a dental protective
device." Spec. i12. Claims 1, 11, 14, and 21 are independent. Claim 1 is
reproduced below:
1. A dental protective device for protecting a
user from discomfort and injury resulting from a
dental appliance mounted on a user's teeth, the
dental protective device comprising: a protective
strip for adhering to the installed dental appliance
mounted to a user's teeth, the protective strip
configured as a base material coated with a water
soluble adhesive coating on a dental appliance
contacting side of the protective strip, a backing
strip loosely adhered to the dental appliance
contacting side of the protective strip, wherein the
protective strip adheres to the installed dental
appliance by the water soluble adhesive being
exposed to moisture.
REJECTIONS
1. Claims 14 and 20-22 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
2. Claims 21 and 22 stand rejected under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly claim the subject
matter regarded as the invention.
3. Claims 1, 9, 10, 21, and 22 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Lee (US 2011/0209713 Al, published Sept. 1,
2011) and Lapidus (US 4,503,116, issued Mar. 5, 1985).
4. Claim 2 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Lee, Lapidus, and Williams (US 6,447,290 Bl, issued
Sept. 10, 2002).
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5. Claims 3, 4, and 6 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Lee, Lapidus, and Maier (US 2009/0175928 Al,
published July 9, 2009).
6. Claim 5 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Lee, Lapidus, and Besse (US 2005/0042173 Al,
published Feb. 24, 2005).
7. Claim 7 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Lee, Lapidus, Maier, and Besse.
8. Claim 8 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Lee, Lapidus, and Johns (US 4,781,293, issued Nov. 1,
1988).
9. Claims 11-13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Lee, Maier, Lapidus, and Williams.
10. Claims 14--18 and 20 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Lee, Williams, and Lapidus.
11. Claim 19 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Lee, Williams, Lapidus, and Maier.
DISCUSSION
Rejections 1 and 2 - The rejection of claims 14 and 20-22
under 35 US.C. § 112,first paragraph and the rejection of
claims 21and22 under 35 US.C. § 112, second paragraph
The Examiner rejected claims 14 and 20-22 as failing to comply with
the written description requirement, finding that certain language in each
claim "is not disclosed in the originally filed specification and is therefore
new matter." Final Act. 3. The Examiner also rejected claims 21 and 22,
determining that "the installed dental appliance" recited in claim 21 lacks
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Application 13/278,336
sufficient antecedent basis. Id. at 4. Claim 22 was rejected based on its
dependence from claim 21. Id.
We first address the status of claims 21 and 22. Appellant added
claims 21 and 22 in a Response to Office Action dated July 14, 2013
("Resp."). See Resp. 5-6. In a subsequent Final Office Action, dated
August 30, 2013 (at issue in this Appeal), the Examiner stated that "new
claims 21 and 22 have been added" and that "claims 1-22 are presently
pending in the application." Final Act. 2. Further, as of the Notice of Panel
Decision from Pre-Appeal Brief Review, dated January 2, 2014, the
Examiner identified claims 1-22 as rejected. We find no evidence of an
amendment canceling claims 21 and 22. As such, claims 21 and 22 remain
pending at the time of this Decision and are on appeal. See 3 7 C.F .R.
§ 41.31(c) (2013) ("An appeal, when taken, is presumed to be taken from the
rejection of all claims under rejection unless cancelled by an amendment
filed by the applicant and entered by the Office.")
We tum now to Rejections 1 and 2. Appellant does not address or
acknowledge Rejections 1 or 2 in the Appeal Brief. See Appeal Br. 6-17.
In the Answer, the Examiner acknowledges Rejection 1 as to claims 14 and
20 but does not acknowledge Rejection 2. See Ans. 2. In the Reply Brief,
Appellant argues for the patentability of claims 14 and 20 as to Rejection 1.
See Reply Br. 7-8. Because Appellant does not present any arguments
contesting the rejection of claims 21 and 22 under 35 U.S.C. §§ 112, second
paragraph, we summarily affirm Rejection 2. Moreover, because Appellant
does not present any arguments contesting the rejection of claims 21 and 22
under 35 U.S.C. §§ 112, first paragraph, we summarily affirm Rejection 1 as
to claims 21 and 22.
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Application 13/278,336
For procedural reasons, we will not address the discussion in the
Reply Brief in which Appellant presents new arguments as to the rejection
of claims 14 and 20 under 35 U.S.C. §§ 112, first paragraph (part of
Rejection 1). See Reply Br. 7-8; see also 37 C.F.R. § 41.41(b)(2) ("Any
argument raised in the reply brief which was not raised in the appeal brief, or
is not responsive to an argument raised in the examiner's answer ... will not
be considered by the Board ... unless good cause is shown."). These
arguments address the rejection as originally set forth in the Final Office
Action, rather than positions raised in the Answer. Compare Final Act. 3--4,
with Ans. 2-11. In addition, Appellant has not shown good cause for failing
to provide these arguments in the Appeal Brief. Thus, we sustain the
rejection of claims 14 and 20 under Rejection 1.
Rejection 3 - The rejection of claims 1, 9,
10, 21, and 22 under 35 USC§ 103(a)
A. Independent Claim 1 and Dependent Claims 9 and 10
Appellant argues the patentability of independent claim 1 and
dependent claim 10 and does not provide separate arguments for dependent
claim 9. See Appeal Br. 6-12 (addressing claims 1 and 10); Reply Br. 2-3
(addressing claim 1), 4-7 (addressing claim 10).
As to claim 1, the Examiner found that Lee disclosed various
limitations but stated that "Lee is silent as to the adhesive coating being a
water soluble adhesive coating wherein the protective strip is capable of
adhering to an installed dental appliance by the water soluble adhesive being
exposed to moisture." Final Act. 5. The Examiner found, however, that
Lapidus discloses a similar device (laminated adhesive device
10, Col. 3, Ins. 42--49) comprising a base material (fiber faced
webs 12 and 14, Col. 3, Ins. 52-59) coated with a water soluble
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adhesive coating (bonding agent 16 includes ethylene oxide
polymer which is readily soluble in water as is obvious to one of
skill in the art[)] ....
Id. at 5---6. The Examiner determined that it would have been obvious
to have modified the dental protective device of Lee to include a
water soluble adhesive coating wherein the protective strip is
capable of adhering to an installed dental appliance by the water
soluble adhesive being exposed to moisture in order to maintain
an advantageous position of the dental appliance in the mouth of
a user, as taught by Lapidus.
Id. at 6. As to claim 10, the Examiner found that "the flexible tooth cover 3
[of Lee] is capable of remaining adhered to a dental appliance while eating,
drinking and sleeping and preventing most foods from being lodged under
the appliance." Id. (citing Lee i-f 16).
First, Appellant argues that the "claim limitation of a water soluble
adhesive is not met by the Lapidus reference." Appeal Br. 12.2 Appellant
contends that "[ t ]he Examiner incorrectly assumes that because one of the
ingredients in the bonding agent of Lapidus is an ethylene oxide polymer,
that the resultant bonding agent is water soluble." See id. at 11. According
to Appellant, "[a]lthough ethylene oxide is water soluble, the adhesive that is
the subject of the Lapidus patent is not, since the dental adhesive is produced
by applying thermoplastic ethylene oxide polymer between moving webs of
cellulose acetate fibers" and "[ c ]ellulose acetate is not water soluble as is
apparent to one of ordinary skill in the art." Id. Appellant also contends that
"Lapidus explicitly teaches a fixative agent that is water soluble is not
2 Because claim 1 recites a "water soluble adhesive coating" and
because claim 10 depends from claim 1, we consider this first argument to
address both claims 1 and 10.
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Application 13/278,336
advantageous and therefore teaches away from the use of a water soluble
adhesive." Id. (citing Lapidus, col. 1, 11. 21-30).
We are not apprised of error here. As to the presence of cellulose
acetate fibers in the laminated adhesive device (element 10) of Lapidus, as
noted by the Examiner (Ans. 5), "only the ethylene oxide polymer powder of
Lapidus is utilized as teaching the water soluble adhesive" such that the
"cellulose acetate fibers of Lapidus are not utilized to modify the adhesive of
Lee and are not part of the water soluble adhesive utilized in the rejection"
of claim 1. Ans. 5 (referencing a discussion citing Lapidus, col. 3, 11. 54--60,
col. 4, 11. 48---68, col. 5, 11. 1-23). Thus, with this argument, Appellant does
not address the rejection as articulated.
Further, we disagree with Appellant that the identified passage in
Lapidus teaches away from the use of water soluble adhesives. As noted by
the Examiner (Ans. 5), "[a] known or obvious composition does not become
patentable simply because it has been described as somewhat inferior to
some other product for the same use." In re Gurley, 27 F.3d 551, 553 (Fed.
Cir. 1994 ). As acknowledged by Appellant, the identified passage teaches
that polymers of ethylene oxide have excellent fixative properties. Appeal
Br. 11 (citing Lapidus, col. 1, 11. 21-23). That the same materials may also
have certain "inherent disadvantages," based on solubility in water, does not
teach away from the use of such polymers. See Lapidus, col. 1, 11. 24--30.
Indeed, in passages relied on by the Examiner, Lapidus teaches the use of
ethylene oxide polymer despite the "inherent disadvantages" identified. See
Final Act. 5-6 (relying on Lapidus, col. 3, 11. 54---60); see also Gurley, 27
F.3d at 553 (holding that, to demonstrate teaching away, one must show that
"a person of ordinary skill, upon reading the reference, would be
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discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant").
Moreover, even assuming that Lapidus does, as asserted by Appellant,
"specifically teach[] that ethylene oxide is being used for its thermoplastic
and water activated adhesive characteristics" (Appeal Br. 11 (citing Lapidus,
col. 4, 11. 53-58)), the prior art need not explicitly disclose or rely on the
same reasoning as the rejection as the reason for providing a claimed aspect.
See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418-19 (2007) (holding that
when the teaching-suggestion-motivation test is applied as a rigid and
mandatory formula, it is incompatible with Supreme Court precedent); id. at
420 ("Under the correct analysis, any need or problem known in the field of
endeavor at the time of invention and addressed by the patent can provide a
reason for combining the elements in the manner claimed."); see also Reply
Br. 2 ("The Examiner impermissibly focuses on a characteristic of ethylene
oxide, that is neither disclosed nor relied upon by Lapidus (i.e. water
solubility).").
As to Appellant's argument that "converting Lapidus to a water
soluble adhesive ... would render each reference unsatisfactory for its
intended purpose" (Appeal Br. 12), for the reasons discussed above,
Appellant has not shown that such a conversion is necessary. Further,
Appellant's argument that "Lapidus does not teach a water soluble adhesive
applied to a protective strip as claimed" (Appeal Br. 12) does not apprise us
of error because, as stated by the Examiner, "Lapidus is not utilized to teach
a protective strip, and is only utilized to modify the protective strip taught by
Lee to include the adhesive coating of Lee being water soluble" (Ans. 5
(citing Final Act. 5-6)).
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Second, Appellant argues that "[t]he tooth cover of Lee inhibits the
normal function of eating and prevents the teeth from coming into occlusion,
since the bottom and top sets of teeth are separated by at least 4 mm of
fabric." Appeal Br. 7. 3 According to Appellant,
to modify the structure of the Lee device to meet [the] claimed
invention, one would have to, (a) change the configuration of
Lee, so that it no longer enveloped a user's teeth, (b) reduce the
thickness to allow the teeth to function normally while eating,
and ( c) remove the nodules from the Lee device.
Id. at 8. According to Appellant, "[t]he Examiner has construed the claim
term 'eating' in an exceedingly narrow fashion." Id. at 9 (discussing Final
Act. 27 i-f 21). Appellant contends that "[a] common sense interpretation of
the ordinary meaning of the term 'eating' involves cutting and chewing solid
food" and that "[t]he Examiner impermissibly gives [the] claim term 'eating'
an exceedingly narrow interpretation by excluding the ingestion and
consumption of solid food in the usual manner." Id. at 10.
We are not apprised of error based on Appellant's second argument.
As an initial matter, we note that the term "eating" is recited in claim 10 but
not recited in claim 1. See supra note 3. We tum now to the construction of
"eating." Here, Appellant's argument relies on a limitation not recited in
claim 10-----cutting and chewing solid food. See In re Self, 671 F.2d 1344,
1348 (CCP A 1982) (rejecting arguments "not based on limitations appearing
in the claims"). As stated by the Examiner, "eating requires that food be
3 Claim 10 recites: "The dental protective device of claim 1, wherein
the protective strip is capable of remaining adhered to the installed dental
appliance while eating, drinking and sleeping and preventing most foods
from being lodged under the installed dental appliance." Appeal Br. 19
(Claims App.) (emphasis added).
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taken into the body for absorption or digestion [but] does not require that a
user cut and chew solid food, i.e. the food can be soft." Ans. 3. Although
Appellant is correct that "eating," in the context of claim 10, includes cutting
and chewing solid foods, Appellant has not shown error in the Examiner's
position that the broadest reasonable construction of "eating" also includes
ingesting soft foods. See Ans. 4 (stating that "the broadest reasonable
interpretation of the term eating includes the consumption of foods that are
not solid including soft foods, that do not require cutting or chewing such as
yogurt, ice cream, baby food, soft fruit etc."). Appellant has also not shown
error in the Examiner's finding that the device of Lee is capable of being
worn while a user is "eating" such soft foods. See id.
Because the device of Lee satisfies the limitation at issue from claim
10, we are not apprised of error by Appellant's argument (set forth above)
that further modifications to the device of Lee would have been necessary.
See Appeal Br. 8. And, because Appellant has not shown that any of the
proposed further modifications would have been necessary, we are also not
apprised of error by the additional arguments that one or more of such
modifications would (1) render the device in Lee incapable of "performing
its intended use," (2) "fundamentally change the principle operation of Lee,"
or (3) undermine the "reasonable expectation of success in the use thereof."
Id. For these reasons, we sustain the rejection of claims 1, 9, and 10.
B. Independent Claim 21 and Dependent Claim 22
Appellant does not present arguments contesting the rejection of
claims 21 and 22 under 35 U.S.C. §§ 103(a). Thus, we summarily affirm
Rejection 3 as to claims 21 and 22. See 37 C.F.R. § 41.3 l(c).
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Rejection 4 through 8- The rejection of claims
2-8 under 35 USC§ 103(a)
Appellant do not separately argue claims 2-8, which depend from
claim 1. See Appeal Br. 12. Thus, for the reasons discussed above (see
supra Rejection 3 §A), we sustain the rejection of claims 2-8.
Rejection 9- The rejection of claims 11-13
under 35 USC§ 103(a)
For claims 11 and 13, Appellant relies on the arguments provided for
claim 1. See Appeal Br. 12-13. For the reasons discussed above (see supra
Rejection 3 §A), we sustain the rejection of claims 11 and 13. Appellant
does not separately argue claim 12, which depends from claim 11. See id. at
17. Thus, we sustain the rejection of claim 12.
Rejection 10- The rejection of claims 14-18
and 20 under 35 USC§ 103(a)
A. Independent Claim 14 and Dependent Claims 15 and 16
Claims 15-18 and 20 depend from independent claim 14. Appeal Br.
20-22 (Claims App.). Claim 14 recites, inter alia, the step of "d) installing
the protective strip in the desired area to an installed position, such that the a
[sic] user can cut and chew food, thereby allowing the user to eat." Id. at
20. 4 The Examiner found that Lee teaches
installing the protective strip in the desired area to an installed
position (tooth cover 3 is applied to the desired area, Paragraphs
19-21 ), such that the user can cut and chew food, thereby
allowing the user to eat (as best understood, the user can cut and
4 We note that the Examiner identified a portion of this limitation-
specifically "such that the a [sic] user can cut and chew food, thereby
allowing the user to eat"-as the basis for Rejection 1 as to claim 14. Final
Act. 3.
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chew food with the tooth cover 3 installed therefore allowing the
user to eat, Paragraph 16).
Final Act. 19.
Appellant argues that certain "extensive modifications ... would be
required to Lee, to meet [the] claim limitations, to allow a user to eat while
wearing the device." Appeal Br. 14--15; see also id. at 14 (setting forth
certain further modifications, including "changing the thickness of the tooth
cover [of Lee] to enable eating"). Appellant contends that "claim 14
overcomes the cited references for at least the reasons discussed above with
regard to claims 1 and 11." Id. at 15.
As noted above, we agree with the Examiner's proposed broadest
reasonable construction of "eating," as recited in claim 10, as "includ[ing]
the consumption of foods that are not solid including soft foods, that do not
require cutting or chewing such as yogurt, ice cream, baby food, soft fruit
etc." Ans. 4 (emphasis added). In the limitation at issue set forth above,
however, claim 14 requires that, after installing the protective strip to the
installed position, a user "can cut and chew food." Appeal Br. 20 (Claims
App.). Here, the Examiner has not shown that Lee, as modified, teaches
installing the protective strip in a manner to satisfy this requirement. For
example, paragraph 16 in Lee, relied upon by the Examiner, does not
disclose eating or the cutting and chewing of food while the device is worn
and does not clarify the Examiner's reasoning as to how this limitation is
addressed. See Lee i-f 16 (cited at Final Act. 19).
In the Answer, the Examiner makes clear that the modified device
used to address the method of claim 14 covers the bottom, back, and front of
the user's teeth. See Ans. 7 (stating that "[A]ppellant's claim [14] does not
require that the bottom, back or front of the user's teeth to not be covered").
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This, however, is the same configuration relied on to address claim 10, in
which the Examiner indicated that, with such a configuration, a user could
not cut and chew food. See Ans. 10 (stating that "eating requires that food
be taken into the body for absorption or digestion [but] does not require that
a user cut and chew solid food, i.e. the food can be soft"). Further, in
response to the argument that, to satisfy claim 14, the device of Lee would
have to be modified by, inter alia, "changing the thickness of the tooth cover
to enable eating" (Appeal Br. 14 (emphasis omitted)), the Examiner states
that claim 14 "does not recite ... a specific thickness of the device." Ans. 7.
Although the Examiner is correct, the limitation at issue does include certain
requirements as to the configuration of the installed device that the Examiner
has not shown to be satisfied by the relied-upon teachings.
For these reasons, we do not sustain the rejection of independent
claim 14, or dependent claims 15-18 and 20.
Rejection 11 - The rejection of claim 19
under 35 US.C. § 103(a)
Claim 19 depends from claim 14. Appeal Br. 20-22 (Claims App.).
The Examiner's added reliance on Maier does not remedy the deficiencies
discussed above (see supra Rejection 10). Thus, for the same reasons
discussed above, we do not sustain the rejection of claim 19.
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DECISION
We (1) AFFIRM the decision to reject claims 14 and 20-22 under
35 U.S.C. § 112, first paragraph, (2) AFFIRM the decision to reject claims
21 and 22 under 35 U.S.C. § 112, second paragraph, (3) AFFIRM the
decision to reject claims 1-13, 21, and 22 under 35 U.S.C. § 103(a), and (4)
REVERSE the decision to reject claims 14--20 under 35 U.S.C. § 103(a). 5
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
5 See 37 C.F.R. § 41.50(a)(l) ("The affirmance of the rejection of a
claim on any of the grounds specified constitutes a general affirmance of the
decision of the examiner on that claim, except as to any ground specifically
reversed.").
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