Ex parte Edgar

Board of Patent Appeals and Interferences

Nov 8, 1999

08747663 (B.P.A.I. Nov. 8, 1999)

Application for patent filed November 13, 1996. Accord-1
ing to appellant, the application is a continuation-in-part of
Application 08/400,829, filed March 8, 1995, abandoned.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 10
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte GARY W. EDGAR
_____________
Appeal No. 1999-0739
Application 08/747,6631
______________
ON BRIEF
_______________
Before FRANKFORT, STAAB and NASE, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 1999-0739
Application 08/747,663
2
This is a decision on appeal from the examiner's
final rejection of claims 1 through 18, all of the claims
pending in this application.
Appellant’s invention relates to a tongue cleaning
and treating device. Of importance to appellant is the re-
quirement that the device be effective for cleaning the sur-
face of the tongue and particularly that portion of the
tongue’s surface that is located under the taste buds. As
noted on page 1 of the specification, much of the surface of
the tongue is covered with taste buds which protrude from the
tongue and provide small areas between and under such
projections where bacteria, minute food particles, and
cellular debris tend to accumulate. Conventional methods of
cleaning the tongue and applying medication or mouth-rinse to
the tongue are said to be ineffective in dealing with the area
of the tongue surface under the taste buds. A preferred
embodiment of appellant’s invention is said to include a
plurality of hollow, rigid mechanical fingers (5) which gently
part the tops of the taste buds while simultaneously
Appeal No. 1999-0739
Application 08/747,663
While the examiner has not expressly repeated all of the2
rejections applicable to the claims before us on appeal in the
examiner’s answer (Paper No. 9), it is clear from a review of
the final rejection, appellant’s brief (Paper No. 8) and the
totality of the examiner’s answer (particularly sections 3, 6,
7 and 8) that the rejections as stated above are those that
are before us for consideration on appeal. We are at a loss
to understand why all of the applicable prior art references
3
introducing a liquid under pressure, via openings (7) in the
ends of the
fingers, between the taste buds and onto the floor of the
tongue. Independent claims 1 and 12 are representative of the
subject matter on appeal and a copy of those claims can be
found in the Appendix to appellant’s brief.
The prior art references relied upon by the examiner
in rejecting the appealed claims are:
Curtis et al. (Curtis) 5,098,291 Mar. 24, 1992
Nack et al. (Nack) 5,226,197 July 13, 1993
As stated in the final rejection (Paper No. 6),
claims 1 through 6 and 8 through 17 stand rejected under 35
U.S.C. § 103 as being unpatentable over Curtis, while claims 7
and 18 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Curtis in view of Nack.2
Appeal No. 1999-0739
Application 08/747,663
and rejections were not repeated in the examiner’s answer.
Normally, rejections of claims which are not repeated in the
examiner’s answer are considered to have been withdrawn by the
examiner. See, for example, Ex parte Emm, 118 USPQ 180 (Bd.
App. 1957). In the present case, we note that appellant’s
grouping of the claims as set forth on page 3 of the brief in
no way relieves the examiner of the obligation to expressly
state in the examiner’s answer exactly what rejections are
before the Board for review.
4
Rather than attempt to reiterate the examiner's full
commentary with regard to the above-noted rejections and the
conflicting viewpoints advanced by the examiner and appellant
regarding the rejections, we make reference to the final
rejection (Paper No. 6, mailed March 27, 1998) and the
examiner's
answer (Paper No. 9, mailed October 16, 1998) for the
reasoning in support of the rejections, and to appellant’s
brief (Paper No. 8, filed August 21, 1998) for the arguments
thereagainst.
OPINION
Appeal No. 1999-0739
Application 08/747,663
5
In reaching our decision in this appeal, we have
given careful consideration to appellant’s specification and
claims, to the applied prior art references, and to the
respective positions articulated by appellant and the
examiner. As a consequence of our review, we have made the
determinations which follow.
Looking at page 3 of the brief, we note that
appellant has indicated that independent claims 1 and 12 are
separately patentable, that dependent claims 2 through 11
stand or fall with claim 1, and that dependent claims 13
through 18 stand or fall with claim 12. Thus, we focus our
discussions below on
independent claims 1 and 12, and consider that the dependent
claims before us on appeal will stand or fall with their
respective independent claims.
Independent claims 1 and 12 each define appellant’s
device for cleaning and treating the tongue as including,
inter
Appeal No. 1999-0739
Application 08/747,663
6
alia, a plurality of rigid fingers. In claim 1, these rigid
fingers are said to provide means for parting the taste buds
of the tongue while applying a liquid directly to the surface
of the tongue. In claim 12, the rigid fingers are indicated
to be shaped and sized for movement across the tongue and as
including openings where the fingers come into contact with
the tongue for applying liquid to the tongue during use of the
device.
In rejecting claims 1 through 6 and 8 through 17
under 35 U.S.C. § 103 based on the Curtis patent, the examiner
has taken the position that Curtis discloses, in Figure 5, an
embodiment of the invention therein that can be considered to
be a tongue cleaning device and which has a plurality of
hollow bristles (e.g., 43 in Fig. 5), a liquid reservoir, and
means for
allowing the application of liquid to the tongue through the
hollow bristles (see particularly, Curtis col. 6, lines 19-
60).
While recognizing that the hollow bristles of the toothbrush
head (40) in Curtis Figure 5 are flexible and therefore not
Appeal No. 1999-0739
Application 08/747,663
7
responsive to the “rigid fingers” limitation set forth in each
of the independent claims on appeal, the examiner urges that
the bristles of the toothbrush head in Curtis are capable of
parting
the taste buds and thereby of also allowing liquid to be
delivered via the hollow bristles to the surface of the
tongue.
Based on this determination, the examiner concludes (final
rejection, page 3) that appellant has not disclosed “the
criticality of the fingers being rigid,” and urges that it
therefore would have been “[an] obvious matter of design
choice to employ such limitation on the Curtis et al device
since the applicant has not disclosed that such solves any
stated problem or is for any particular purpose, and it
appears the device would work equally well with flexible
hollow bristles.”
Appeal No. 1999-0739
Application 08/747,663
8
Like appellant (brief, pages 4-8), we find the
examiner’s rejection of independent claims 1 and 12 on appeal
based on Curtis to be improper. In the first place, it is the
applicant, not the examiner, who determines what the invention
is and what features or characteristics of the invention are
important or critical for carrying out the invention. In the
present case, appellant has both disclosed and claimed that
his device for cleaning the tongue includes a plurality of
rigid fingers that gently part the tops of the taste buds
while simultaneously introducing liquid between the taste buds
onto the floor of the tongue. Thus, whether or not the
examiner considers the limitation of “rigid fingers” to be
critical to carrying out the objectives of appellant’s
invention, or nor, is irrelevant,
since appellant discloses and expressly sets forth in the
claims on appeal that the tongue cleaning device includes
“rigid fingers” and provides his reasons why such fingers
should be rigid. As a second point, even if the hollow,
flexible bristles of Curtis might be capable of functioning to
part the taste buds of a user’s tongue in the manner claimed
Appeal No. 1999-0739
Application 08/747,663
9
(a point of some debate and speculation since we have no idea
exactly what the flexi- bility of the bristles in Curtis may
be), it does not follow that the “rigid fingers” of
appellant’s claims on appeal lack utility or are somehow of
less significance in a determination of obviousness under 35
U.S.C. § 103.
With respect to the examiner’s conclusion that it
would have been merely an obvious matter of design choice for
one of ordinary skill in the art to employ rigid fingers on
the Curtis
device in place of the bristles (43), we must agree with
appellant (brief, pages 6-7) that such a modification is
directly contrary to the clear teachings in Curtis (col. 6,
lines 55-59) regarding the need to maintain flexibility of the
bristles therein, and would in fact destroy the toothbrush
head embodiment
(Fig. 5) of the Curtis device for its intended purpose. As
was
Appeal No. 1999-0739
Application 08/747,663
10
pointed out by appellant (brief, page 7), the claimed
invention, when considered as a whole, is not a toothbrush and
has no such capability, but is intended only for cleaning the
tongue and is so structured as to achieve this result. By
contrast, the device seen in Figure 5 of Curtis is expressly
described as being a toothbrush with flexible bristles and is
clearly intended for an entirely different use, which use
requires that device to have structural characteristics that
are distinctly different from those of appellant’s claimed
tongue cleaning device.
Since the teachings and suggestions found in Curtis
would not have made the subject matter as a whole of claims 1
and 12 on appeal obvious to one of ordinary skill in the art
at the time of appellant’s invention, we must refuse to
sustain the examiner’s rejection of claims 1 and 12 under 35
U.S.C. § 103.
It follows that the examiner’s rejection of claims 2 through 6
and 8 through 11 (which depend from claim 1) and of claims 13
through 17 (which depend from claim 12) under 35 U.S.C. § 103
based on Curtis alone will also not be sustained.
Appeal No. 1999-0739
Application 08/747,663
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We have additionally reviewed the patent to Nack
applied along with Curtis by the examiner against dependent
claims 7 and 18. However, we find nothing in this patent
which would change our view as expressed above, i.e., nothing
which would supply that which we have indicated above to be
lacking in Curtis. Thus, the examiner’s rejection of claims 7
and 18 under 35 U.S.C. § 103 will also not be sustained.
In view of the foregoing, the examiner's decision
rejecting claims 1 through 18 of the present application under
35 U.S.C. § 103 is reversed.
REVERSED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
) BOARD OF
PATENT
LAWRENCE J. STAAB ) APPEALS AND
Appeal No. 1999-0739
Application 08/747,663
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Administrative Patent Judge )
INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
CEF:psb
Appeal No. 1999-0739
Application 08/747,663
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Eugene R. LaRoche
8407 Terra Woods Drive
Springfield, VA 22153-3515