Ex Parte Gaskell

Patent Trial and Appeal Board

Jun 26, 2013

11070621 (P.T.A.B. Jun. 26, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/070,621 03/02/2005 John Gaskell MDS 0002 PA/33682.2 1416
7590 06/26/2013
DINSMORE & SHOHL LLP
One Dayton Centre
Suite 1300
One South Main Street
Dayton, OH 45402-2023
EXAMINER
OSTRUP, CLINTON T
ART UNIT PAPER NUMBER
3771
MAIL DATE DELIVERY MODE
06/26/2013 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 JOHN GASKELL
__________

Appeal 2011-008872
Application 11/070,621
Technology Center 3700
__________

Before DEMETRA J. MILLS, LORA M. GREEN, and
SHERIDAN K. SNEDDEN, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal1 under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 2-8, 10, 12-15, 17, 18, 23-25, 28-35, and 37-
39. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 The Real Part in Interest is MDSA PTY Ltd. (App. Br. 1).
Appeal 2011-008872
Application 11/070,621

2
STATEMENT OF THE CASE
Claim 33 is representative of the claims on appeal, and reads as
follows (emphasis added):
33. A fastener having a substantially planar arch-engaging profile suitable
for connecting a plurality of arch members of a dental splint together in a
predetermined spatial relationship when located within the mouth of a
person for treating the person suffering from a sleep disorder, wherein the
substantially planar arch-engaging profile allows the fastener to fit
comfortably within the mouth of the person, the fastener comprising:
a substantially planar base member having a plurality of substantially
planar attachment elements extending therefrom and in a common plane
therewith to allow the fastener to define the substantially planar arch-
engaging profile,
a cover member adhered to the substantially planar base member to
form a cavity therebetween,
at least a part of a movable connector located within the cavity, and
an adjustor at least a part of which is located within the cavity, said
adjustor cooperative with the connector such that movement of the adjustor
produces movement in the connector that in turn moves one of the plurality
of arch members with respect to another of the plurality of arch members so
as to adjust the splint to treat the person.

Note that independent claims 29-32 also contain a limitation similar to
the limitation italicized above.
The following grounds of rejection are before us for review:
I. Claims 2-8, 10, 12-18, 21, 23-25, and 28-38 stand rejected under
35 U.S.C. § 112, second paragraph, as being indefinite (Ans. 3).
II. Claims 2-8, 10, 12-15, 17, 18, 23-25, 28-35, and 37-39 stand
rejected under 35 U.S.C. § 103(a) as being rendered obvious by the
combination of Gaskell2 and Thornton3 (Ans. 4).

2 Gaskell, US 2002/0000230 A1, published Jan. 3, 2002.
Appeal 2011-008872
Application 11/070,621

3
III. Claims 14 and 15 stand rejected under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Gaskell and Thornton as
further combined with Sarkisian4 (Ans. 17).

ISSUE (Indefiniteness)
Does the preponderance of the evidence of record support the
Examiner’s finding that the use of the modifier “substantially” renders the
claims indefinite?

FINDINGS OF FACT
FF1. The Examiner rejects claims 2-8, 10, 12-18, 21, 23-25, and 28-38 as
being indefinite “for failing to particularly point out and distinctly claim the
subject matter which applicant regards as the invention” (Ans. 3).
FF2. The Examiner finds that the “term ‘substantially planar’ in claims 24
and 29-33 is a relative term which renders the claims indefinite” (id.).
FF3. According to the Examiner:
The term “substantially-planar” is not defined by the claim, the
specification does not provide a standard for ascertaining the
requisite degree, and one of ordinary skill in the art would not
be reasonably apprised of the scope of the invention. It is
unclear how “substantially planar” the devices must be to be
included or excluded by the claims.

(Id.).

3 Thornton, US 2003/0217753 A1, published Nov. 27, 2003.
4 Sarkisian, US 2006/0174897 A1, published Aug. 10, 2006.
Appeal 2011-008872
Application 11/070,621

4
FF4. Using similar reasoning, the Examiner also finds that the term
“‘substantially parallel’” in claim 15 is also indefinite (id. at 3-4).

ANALYSIS
Appellant argue that the term “‘substantially’ is utilized to represent
the inherent degree of uncertainty that may be attributed to any quantitative
comparison, value, measurement, or other representation” (App. Br. 6).
Thus, Appellant asserts, the claims are not indefinite (id.).
We agree with Appellant. The use of “substantially” does not per se
render a claim indefinite. See Verve, LLC V. Crane Cams, Inc., 311 F.3d
1116, 1120 (“It is well established that when the term ‘substantially’ serves
reasonably to describe the subject matter so that its scope would be
understood by persons in the field of the invention, and to distinguish the
claimed subject matter from the prior art, it is not indefinite.”). The
Examiner has not explained why the skilled artisan in view of the
Specification would not understand the meets and bounds of substantially,
and we thus reverse the rejection.

CONCLUSION OF LAW
We conclude that the preponderance of the evidence of record does
not support the Examiner’s finding that the use of the modifier
“substantially” renders the claims indefinite. We thus reverse the rejection
of claims 2-8, 10, 12-18, 21, 23-25, and 28-38 under 35 U.S.C. § 112,
second paragraph, as being indefinite.

Appeal 2011-008872
Application 11/070,621

5
ISSUE (Obviousness)
Does the preponderance of the evidence of record support the
Examiner’s conclusion that Gaskell in combination with Thornton renders
obvious the limitation “a substantially planar base member having a plurality
of substantially planar attachment elements extending therefrom and in a
common plane therewith to allow the fastener to define the substantially
planar arch-engaging profile” as required by independent claims 29-33?

FINDINGS OF FACT
FF5. As taught by the Specification, “the present invention relates to denta1
devices for insertion into the mouth of a person suffering from one or more
forms of a sleep disorder so as to prevent the incidence of snoring and/or to
provide improved breathing during sleep thereby treating the sleep disorder
and/or to ameliorate the adverse effects of snoring and other sleep disorders”
(Spec. 1).
FF6. Figure 4 of the Specification is reproduced below:
App
App

Figu
Spec
(Spe
FF7.
gene
FF8.
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lication 11
re 4 is an e
ification s
c. 13, ll. 1
As show
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relations
08872
/070,621
xploded i
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8-20).
n in the Fi
e or rectil
cification t
pair of s
ly from op
at the pai
6. In so
with a s
body port
the plane
hip with
sometric v
of the com
gure, “[b]
inear plana
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ubstantiall
posed sid
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me embo
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of body
the body
6
iew of a fa
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ase plate 4
r main bo
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es of bod
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ong the e
isplace th
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6. In
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dy portion
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y portion
from the
each of t
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into bein
other em
aught by t
rom one a
centrally
”(id. at 13
abs 16 ex
6. It is t
sides of
he tabs 1
ent to the
f tabs 16
g in a ste
bodiments
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, ll. 35-37)
tend
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side
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pped
, as

.
Appeal 2011-008872
Application 11/070,621

7
illustrated tab 16 may extend in the same plane as body portion
6. In still other embodiments, tabs 16 may be inclined to the
body portion 6 so as to be angularly inclined to body portion 6
rather than being in a stepped relationship. In other
embodiments, tabs 16 may be both in stepped relationship and
be angularly inclined with main body 6. Irrespective of the
relationship to main body 6, each tab 16 is provided with a
circular aperture 12 to assist in connecting the fastener to the
arch…. It is to be noted that a particularly preferred from of the
base plate 4 is where tabs 16 are coplanar with body 6 so that
the fastener can adopt a low profile within the splint to allow a
person using the splint to fully close their lips during use of the
splint so that use of the splint is more comfortable.

(Spec.5 14, l. 15-15, l. 3.)
FF9. The Examiner rejects independent claims 29-33 over the combination
of Gaskell and Thornton (Ans. 4).
FF10. The Examiner finds that Gaskell teaches an arch member of a
mandibular splint, “wherein the fastener has a substantially planar arch-
engaging profile (as shown in figure 1) suitable for connecting the arch
member (50) to another arch member (48) forming the mandibular splint”
(id.).6
FF11. The Examiner also finds that the fastener (2) comprises “a
substantially planar base member (4) having a plurality of substantially
planar attachment elements (12) extending therefrom and in a horizontal

5 As amended April 25, 2007.
6 We have cited specifically to the Examiner’s rejection of independent
claim 29, but the Examiner’s rejection of each of the independent claims
relies on the same recited facts and conclusions (see Ans. 6-14).
App
App

plan
arch
FF12
requ
mem
amb
FF13
perso
the i
sleep
FF14
eal 2011-0
lication 11
e therewith
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. Specific
ire a “‘plan
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iguity of w
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thereby t
. Figure 4
08872
/070,621
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of Gaskel
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8
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nds that th
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planar bas
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planar
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ness and
uth of a
to prevent
ing

Appeal 2011-008872
Application 11/070,621

9
Figure 4 is an “exploded isometric view of the components of the fastener”
of Gaskell (id. at 3, ¶48).
FF15. The fastener comprises base plate 4, which includes “a centrally
located generally square or rectilinear planar body portion 6 which is
provided with a pair of opposed square cut-outs or apertures 8 at or towards
opposite side edges of the body portion” (id. at 3, ¶52).
FF16. As shown in the Figure, “A pair of substantially planar opposed tabs
or tags 12 extend outwardly from opposed sides of body portion 6” (id. at 3,
¶53). The tabs are provided with “a shoulder 14 along the edge adjacent to
the side edge of body portion 6 to move the level of tab 12 from being in the
plane of body portion 6 into being in a stepped relationship with the body 6”
(id.).
FF17. Gaskell teaches further that “[o]ptionally, tab 12 may extend in the
same plane as body portion 6 or may be inclined to the body portion 6 so as
to be angularly inclined to body portion 6 rather than being in a stepped
relationship” (id.).
FF18. Gaskell also teaches that “[a] locating means in the form of a flange
10 is provided along one side edge of body portion 6 of the base plate 4,
generally intermediate of the location of square apertures 8” (id.). The
flange “assists in locating the fastener in the mouth in the correct position”
(id.).
FF19. According to the Examiner, while
Gaskell discloses the “substantially planar attachment
elements” located to the sides of the “substantially planar base
member” as being in a horizontal plane which is slightly
different than the horizontal plane of the “substantially” planar
base member (4) to allow the fastener (2) to adopt said
App
App

(Ans
FF20
a hoo
and l
midd
FF2
(Tho
FF22
Figu
adju
FF23
¶ 3).
eal 2011-0
lication 11
substant
lacks th
base me

. 5).
. The Exa
k (60) to
eft sides o
le of 40) w
1. Thornton
rnton 1, ¶
. Figure 5
re 5 shows
stment me
. As show
As taugh
08872
/070,621
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of Thornt
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” (id.).
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g and for
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latform 4
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t (top right
(top
ing
ward
0 (id. at 3,

Appeal 2011-008872
Application 11/070,621

11
The cooperating shapes of slot 42 of upper platform 40
and flange 64 of hook 60 permit forward and rearward travel of
hook 60 within slot 42 while substantially preventing lateral
and vertical movement of hook 60 relative to upper platform
40. Preferably, hook 60 is permitted to travel within slot 42 to
any appropriate extent to adjust the extent to which lower arch
20, and thus the user’s lower jaw, is pulled forward. For
example, a portion of hook 60, including some or all of end 62,
may be permitted to travel forward past the most anterior
portion of upper platform 40 if desired, and a portion of hook
60, including some or all of end 62, may he permitted to travel
rearward past the most posterior portion of upper platform 40 if
desired, according to rotation of adjustor 44. However, as
described more fully below, one or more stops may be provided
to limit the forward and rearward travel of hook 60 within slot
42.

(Id. at 3, ¶ 30.)
FF24. The Examiner concludes that it would have been obvious to modify
the attachment and base member of Gaskell to be horizontally coplanar as
taught by Thornton as the device would be less obtrusive to the central
incisors, providing for a more comfortable fit (id. at 5-6).

ANALYSIS
Appellant argues that the base plate of Gaskell has “a stepped
configuration where the side portions of the base plate are formed into two
side wings having curved sides extending laterally from either side of the
base plate out of the plane of the base plate's central part,” and also
“includes an upstanding flange positioned along the front” (App. Br. 8
(emphasis added)). Thus, Appellant asserts, the base plate of Gaskell is not
planar (id.). Appellant asserts further that Thornton does not remedy that
Appeal 2011-008872
Application 11/070,621

12
deficiency, as the attachment elements have non-planar features (id. at 8-9).
According to Appellant, “the lateral ends of the upper arch member 40
exhibit both upwardly and downwardly projecting features that are out of the
plane of the member itself” (id. at 9). Appellant further asserts that the
upper surface of the member 40 also does not have a planar structure due to
the presence of the generally rectangular cutouts (id.). According to
Appellant, “neither Gaskell nor Thornton even remotely contemplate the
generally planar base plate construction that is recited in the independent
claims” (id.). Thus, Appellant asserts, the Examiner has failed to
demonstrate that the independent claims are rendered obvious by the
combination of Gaskell and Thornton.
The Examiner’s combination appears to be based on interpreting
“substantially planar” in such as way so as to read the term “planar” out of
the claim. As noted by the Federal Circuit, “[s]ubstantially” can be
interpreted as “‘significantly or considerably,’” or also “‘largely or
essentially.’” Deering Precision Instruments, L.L.C. v. Vector Distribution
Systems, Inc., 347 F.3d 1314, 1322-23 (Fed. Cir. 2003) (citing Webster’s
New 20th Century Dictionary 1817 (1983)). In the context of the
Specification and drawings, we interpret “substantially” as “largely or
essentially.” “Planar” may be defined as “lying in one plane, flat.”7 Thus,
we interpret the term “substantially planar” as requiring the base plate to be
largely or essentially planar.

7 planar. Dictionary.com. Collins English Dictionary - Complete &
Unabridged 10th Edition. HarperCollins Publishers.
http://dictionary.reference.com/browse/planar (accessed: June 19, 2013).

Appeal 2011-008872
Application 11/070,621

13
Given that interpretation, contrary to the finding of the Examiner, we
find that Thornton does not teach a substantially planar base plate.
Moreover, the Examiner has provided no reason as to why the ordinary
artisan, in view the device of Thornton, would have removed the flange of
Gaskell, which is used to locate the fastener in the mouth, to achieve “a
substantially planar base member having a plurality of substantially planar
attachment elements extending therefrom and in a common plane therewith
to allow the fastener to define the substantially planar arch-engaging profile”
as required by independent claims 29-33. We thus reverse the rejection.
As to the rejection of claim 14 and 15 over the combination of Gaskell
and Thornton as further combined with Sarkisian, as the Examiner does not
rely on Sarkisian to remedy the above deficiencies of Gaskell and Thornton
(see Ans. 17-18), we reverse that rejection as well.

SUMMARY
We conclude the preponderance of the evidence of record does not
support the Examiner’s conclusion that Gaskell in combination with
Thornton renders obvious the limitation “a substantially planar base member
having a plurality of substantially planar attachment elements extending
therefrom and in a common plane therewith to allow the fastener to define
the substantially planar arch-engaging profile” as required by independent
claims 29-33.

Appeal 2011-008872
Application 11/070,621

14
We thus reverse the rejections of:
Claims 2-8, 10, 12-15, 17, 18, 23-25, 28-35, and 37-39 under 35
U.S.C. § 102(b) as being anticipated by, or under 103(a) as being rendered
obvious by Gaskell and Thornton; and
Claims 14 and 15 under 35 U.S.C. § 103(a) as being rendered obvious
by the combination of Gaskell and Thornton, as further combined with
Sarkisian.

REVERSED

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