Ex Parte Eisenhut

Patent Trial and Appeal Board

Aug 29, 2014

11294331 (P.T.A.B. Aug. 29, 2014)

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.
11/294,331 12/06/2005 Anthony R. Eisenhut NSR-001 3861
21884 7590 08/29/2014
WELSH FLAXMAN & GITLER LLC
2000 DUKE STREET, SUITE 100
ALEXANDRIA, VA 22314
EXAMINER
LE, HUYEN D
ART UNIT PAPER NUMBER
3751
MAIL DATE DELIVERY MODE
08/29/2014 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 ANTHONY R. EISENHUT
____________________

Appeal 2014-003634
Application 11/294,331
Technology Center 3700
____________________

Before JENNIFER D. BAHR, JOHN C. KERINS, and JILL D. HILL,
Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Anthony R. Eisenhut (Appellant) appeals under 35 U.S.C. § 134 from
a rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

Appeal 2014-003634
Application 11/294,331

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THE INVENTION
Appellant’s invention is directed to a dispensing apparatus for
dispensing a photocurable resin material. Claim 1, reproduced below, is
illustrative:
1. A dispensing apparatus, comprising:

a container having a storage reservoir containing a photocurable
resin material;

a dispensing nozzle secured to the container; and

an applicator shield positioned about the dispensing nozzle to
shield dispensed resin from exposure to light.

THE REJECTIONS
Claims 1, 3–15, and 17–20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kangasniemi (US 6,116,901, issued Sept. 12, 2000).
Claims 2 and 16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kangasniemi and Dragan (US 4,682,950, issued July 28,
1987).
ANALYSIS
The Examiner finds that Kangasniemi discloses all limitations set
forth in independent claims 1, 8, and 15, with the exception that the
applicator shield 161 is not expressly disclosed as being capable of shielding
dispensed photocurable resin from exposure to light. Answer 2. The
Examiner takes the position that, since “Kangasniemi discloses that it is
desirable [that] the photocurable resin material (wetted fiber bundle) is not
cured by light before the resin material is applied on the intended place,” it

1 Referred to in Kangasniemi as a “tip.” Kangasniemi, col. 3, l. 46.
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Application 11/294,331

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would have been obvious “to make the applicator shield 16 of Kangasniemi
device of an opaque material . . . to shield the resin dispensed from the
dispensing nozzle onto the desired surface to be treated from exposure of
light.” Answer 2.
Responding to Appellant’s argument that tip 16 of Kangasniemi
would not function to shield dispensed resin from exposure to light (see,
e.g., Appeal Br. 8-10), the Examiner voices disagreement, and reasons that:
Tip 16 of Kangasniemi is used to press the reinforcing fiber
bundle against the tooth. The tip 16 is concave to directly
contact the fiber bundle and to keep the individual fibers
together. It would be obvious that the tip 16 is made of an
opaque material so that it can apply the fiber bundle without
letting the fiber bundle exposed to light before the fiber bundle
is in place and ready to be cured by light. If light must pass
through tip 16 during the application as asserted by appellant,
the fiber bundle could be hardened by exposure to light as soon
as the fiber bundle exits the nozzle 14. This would be very
difficult for an operator to fiber bundle that is cured early.
Answer 4.
The preponderance of the evidence in this appeal favors Appellant.
Appellant points out that Kangasniemi states that, “the reinforcing fiber
bundle can be firmly pressed by tip 16 against the tooth or dental prosthetic
device for the time of curing.” Reply Br. 2 (quoting Kangasniemi, col. 3, ll.
51–53); see also Appeal Br. 8–9. Kangasniemi goes on to state (as the
Examiner recognizes in the above quoted passage) that “[t]he concave
surface [of tip 16] keeps the individual fibers of the reinforcing fiber bundle
firmly together and prevents their fraying.” Kangasniemi, col. 3, ll. 60–62.
These passages in Kangasniemi would be understood by a person of
ordinary skill in the art as calling for the wetted fiber bundle to be cured, or
at least partially cured, while tip 16 is pressing against the fiber bundle and
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Application 11/294,331

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keeping the individual fibers firmly together at the desired location. Further,
notwithstanding the Examiner’s observation that curing might commence as
soon as the fiber bundle exits nozzle 14 in Kangasniemi, were we to accept
the Examiner’s position that it would have been obvious to have tip 16
designed to shield from exposure to light, there would appear to be nothing
to maintain the position of, and to prevent the fraying of, the fibers at the
time that curing is commenced. The Examiner does not address this
consequence in reaching the conclusion that it would have been obvious that
tip 16 of Kangasniemi would shield light and prevent curing.
Accordingly, the rejection of claims 1, 3–15, and 17–20 as being
unpatentable over Kangasniemi is not sustained.
The Examiner does not rely on the Dragan disclosure in any manner
that would remedy the deficiency noted above with respect to the
obviousness rejection over Kangasniemi. Accordingly, the rejection of
claims 2 and 16 as being unpatentable over Kangasniemi and Dragan is also
not sustained.

DECISION
The rejections of claims 1–20 under 35 U.S.C. § 103(a) are reversed.

REVERSED

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