Ex parte FRANETZKI

Board of Patent Appeals and Interferences

Jan 22, 1998

08142832 (B.P.A.I. Jan. 22, 1998)

Application for patent filed October 25, 1993. According1
to the appellant, the application is a continuation of
Application No. 07/913,627, filed July 16, 1992, now abandoned.
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journal and (2) is not binding precedent of the Board.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. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MANFRED FRANETZKI
____________
Appeal No. 96-0943
Application No. 08/142,8321
____________
HEARD: January 15, 1998
____________
Before McQUADE, NASE, and CRAWFORD, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 17 through 22 and 24 through 28. Claim 23
has been objected to as depending from a non allowed claim.
Claims 1 through 16 have been canceled.
We REVERSE.
Appeal No. 96-0943 Page 2
Application No. 08/142,832
BACKGROUND
The appellant's invention relates to a hand-held dental
treatment apparatus using laser light. An understanding of the
invention can be derived from a reading of exemplary claim 17
which appears in the appendix to the appellant's brief.
The prior art references of record relied upon by the
examiner as evidence of obviousness under 35 U.S.C. § 103 are:
Aihara 4,608,980 Sep. 2, 1986
Nagasawa 4,849,859 July 18, 1989
Daikuzono 5,151,097 Sep. 29, 1992
(filed Aug. 28, 1990)
Claims 17 through 22 and 24 through 28 stand rejected under
35 U.S.C. § 103 as being unpatentable over Aihara in view of
Daikuzono and Nagasawa.
Rather than reiterate the conflicting viewpoints advanced by
the examiner and the appellant regarding the § 103 rejection, we
make reference to the final rejection (Paper No. 20, mailed
January 3, 1995) and the examiner's answer (Paper No. 23, mailed
June 12, 1995) for the examiner's complete reasoning in support
of the rejection, and to the appellant's brief (Paper No. 22,
filed April 26, 1995) for the appellant's arguments thereagainst.
Appeal No. 96-0943 Page 3
Application No. 08/142,832
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
examiner. As a consequence of our review, we have made the
determination that the examiner's rejection of the appealed
claims under 35 U.S.C. § 103 is not well founded and will
therefore not be sustained. Our reasoning for this determination
follows.
The test for obviousness is what the combined teachings of
the references would have suggested to one of ordinary skill in
the art. See In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089,
1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d 413, 425, 208
USPQ 871, 881 (CCPA 1981).
With regard to the examiner's rejection of claims 17 through
22 and 24 through 28 under 35 U.S.C. § 103, we share the
appellant's view that the combined teachings of the applied prior
art would not have suggested the claimed invention.
Specifically, it is our determination that the combined teachings
Appeal No. 96-0943 Page 4
Application No. 08/142,832
of the applied prior art would not have suggested the
relationship between the handpiece and the carrier means as
recited in independent claim 17. In that regard, independent
claim 17 requires (1) a handpiece having a longitudinal axis, and
(2) a carrier means oriented perpendicularly to the longitudinal
axis of the handpiece wherein the carrier means causes laser
light to exit the carrier means through a light exit port in a
direction perpendicular to the central axis of the carrier means
and parallel to the second end of the carrier means (e.g.,
parallel to the longitudinal axis of the handpiece). Contrary to
the position of the examiner, it is our opinion that Daikuzono
and Nagasawa would not have provided any motivation to an artisan
to make a 90° angle between Aihara's shank 7 and holder 8. It is
our view, after a careful review of the combined teachings of the
applied prior art, that in searching for an incentive for
modifying the laser hand piece of Aihara, the examiner has
impermissibly drawn from the appellant's own teachings and fallen
victim to what our reviewing Court has called "the insidious
effect of a hindsight syndrome wherein that which only the
inventor taught is used against its teacher."
W. L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220
USPQ 303, 313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
Appeal No. 96-0943 Page 5
Application No. 08/142,832
(1984). Since we have determined that the subject matter of
independent claim 17 would not have been suggested by the
combined teachings of the applied prior art, it follows that we
will not sustain the examiner's rejection of appealed independent
claim 17, or claims 18 through 22 and 24 through 28 which depend
therefrom, under 35 U.S.C. § 103.
CONCLUSION
Appeal No. 96-0943 Page 6
Application No. 08/142,832
To summarize, the decision of the examiner to reject claims
17 through 22 and 24 through 28 under 35 U.S.C. § 103 is
reversed.
REVERSED
JOHN P. McQUADE )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 96-0943 Page 7
Application No. 08/142,832
HILL, STEADMAN & SIMPSON
85TH FLOOR SEARS TOWER
CHICAGO, IL 60606
Appeal No. 96-0943
Application No. 08/142,832
Page 1
APPEAL NO. 96-0943 - JUDGE NASE
APPLICATION NO. 08/142,832
APJ NASE
APJ McQUADE
APJ CRAWFORD
DECISION: REVERSED
Prepared By: Delores A. Lowe
DRAFT TYPED: 20 Jan 98
FINAL TYPED:
HEARD: 15 Jan 98