Ex Parte Hackel et al

Patent Trial and Appeal Board

Sep 23, 2016

13291775 (P.T.A.B. Sep. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/291,775 11/08/2011
4743 7590 09/27/2016
MARSHALL, GERSTEIN & BORUN LLP
233 SOUTH WACKER DRIVE
6300 WILLIS TOWER
CHICAGO, IL 60606-6357
FIRST NAMED INVENTOR
Andre Hackel
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.
30815/37383 3938
EXAMINER
EIDE, HEIDI MARIE
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
09/27/2016 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):
mgbdocket@marshallip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDRE HACKEL and SVEN ERDMANN
Appeal2014-004571
Application 13/291, 77 51
Technology Center 3700
Before MICHAEL C. ASTORINO, MICHELLE R. OSINSKI, and
MATTHEWS. MEYERS, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-9. Claim 10 has been cancelled. 2 We have
jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM.
1 According to the Appellants, "[t]he real party in interest is Kaltenbach &
Voigt GmbH." Br. 1.
2 We understand from the Examiner's statements in the Answer, including
"claim 10 has been cancelled by the amendment" (Ans. 2), to imply that the
Examiner has entered the claim amendment filed September 13, 2013.
Accordingly, we understand that the Examiner inadvertently checked box
7(a) in the Advisory Action, which indicates that the proposed amendments
were not entered.
Appeal2014-004571
Application 13/291,775
Claimed Subject Matter
Claim 1, the sole independent claim, is representative of the subject
matter on appeal and is reproduced below.
1. Dental device with a hand-held instrument, comprising:
a removable attachment arranged at a front end of the
hand-held instrument, the attachment having at least one light
source, the light source having a lens at a front end of the light
source, wherein the lens is coupled to a plurality of light guides,
the light guides leading forwardly from the lens into at least two
arms extending laterally from the attachment and arranged to
trans-illuminate a tooth received between the lateral arms, and
the light source is arranged inside a closed housing in the
attachment, and
current transfer means acting between the attachment and
the instrument provided for supplying power to the light source.
Rejections3
Claims 1-9 are rejected under 35 U.S.C. § l 12(a) or 35 U.S.C. § 112
(pre-AIA), first paragraph, as failing to comply with the written description
requirement.
Claims 1-5, 8, and 9 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Suyama (US 2009/0076321 Al, pub. Mar. 19, 2009),
Mandelkem (US 2003/0228553 Al, pub. Dec. 11, 2003), Fregoso
(US 6,611,110 Bl, iss. Aug. 26, 2003), and Ooshima (US 6,561,972 B2,
iss. May 13, 2003). 4
3 The Examiner has withdrawn all rejections to claim 10 due to its
cancellation and the rejection of claims 3-5 under§ l 12(a) or 35 U.S.C.
§ 112 (pre-AIA), second paragraph, as indefinite. Ans. 2.
4 The Examiner explains that the Final Office Action, mailed January 15,
2013, inadvertently included claim 6 in this ground of rejection. Ans. 2.
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Application 13/291,775
Claims 6 and 7 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Suyama, Mandelkem, Fregoso, Ooshima, and Chan
(US 2005/0050658 Al, pub. Mar. 10, 2005).
ANALYSIS
Rejection I
The Examiner finds that the phrase "at least two arms," as recited in
independent claim 1, fails to comply with the written description
requirement because "support for more than two arms cannot be found in the
originally filed specification." Final Act. 3--4. The Examiner explains that
support for two arms is provided by the written description, but support is
not provided by the written description for more than two arms. Ans. 3.
The Appellants argue that "the [S]pecification never limits the number
of arms to two or less." Br. 5. The Appellants point to the Specification at
paragraphs 18, 19, and 21, which use the phrase "arms" as "implicit
disclosure for the recitation of 'at least two arms' as recited by claim 1." Id.
The Appellants' argument is not persuasive.
Notably, each time the term "arms" is used in paragraphs 18, 19, and
21, it is accompanied immediately thereafter with reference number "11."
Reference number 11 is illustrated in Figures 1 and 2 and depicts only two
arms. Accordingly, we find that the use of the term "arms 11" in the
Specification along with the illustration of only two arms in Figures 1 and 2
does not implicitly disclose more than two arms. As such, we are not
persuaded by Appellants' argument that the Specification would reasonably
convey to one skilled in the relevant art, that the Appellants (Applicants) had
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Application 13/291,775
possession of the claimed invention, as of the filing date, through implicit
disclosure.
Thus, we sustain the Examiner's rejection of independent claim 1, as
well as its dependent claims 2-9, under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
Rejection II
The Appellants contend that the claimed invention is distinct from the
applied prior art references because "[a ]t the time of the present invention,
devices for the transillumination of teeth were incapable of the especially
compact design recited by claim 1." Br. 9-10; see id. at 7. The Appellants'
contention is not persuasive because claim 1 does not recite that the "dental
device" is compact. See Ans. 4. As such, the Appellants' contention is
outside of the scope of the claimed invention.
The Appellants contend that Ooshima fails to disclose "light guides
leading forwardly from the lens into at least two arms extending laterally
from the [removable] attachment," as recited in claim 1, because, among
other things, Ooshima describes that the light from LEDs is directed
downwardly from bent entering portion 11 onto reflective surfaces. See
Br. 6-7 (citing Ooshima, Fig. 4). The Appellants' contention is not
persuasive. We agree with the Examiner's response in the Answer and
adopt it as our own. Ans. 3--4. However, we emphasize that the Examiner's
rejection of claim 1 is based on a combination of teachings from Suyama,
Mandelkem, Fregoso, and Ooshima, and that the Examiner explains that
"Fregoso teaches the light guide extending from a lens" and that the light
from Ooshima's "LEDs 7 is directed into the lateral legs and to the teeth by
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Appeal2014-004571
Application 13/291,775
the window 4 guiding the light." See id.; see, e.g., Ooshima, Fig. 4.
Additionally, the Appellants provide a general description of Suyama,
Mandelkem, Fregoso, and Ooshima. See Br. 7. However, the general
description does not explain error in the Examiner's rejection because it fails
to persuasively explain how the Examiner erred in combining the specific
teachings from each reference to result in the subject matter required by
claim 1.
The Appellants contend that the Examiner failed to provide a proper
teaching, suggestion, or motivation to combine Suyama, Mandelkem,
Fregoso, and Ooshima to result in all the elements of claim 1. See id. at 8.
More particularly, the Appellants assert that "the [E]xaminer relies on the
tooth transillumination device of Ooshima to provide a motivation to
combine the references with a structure found in the photocuring device of
Fregoso, the motivation to combine these references is improper." Id. at 8-9
(emphasis omitted). The Appellants' contention is not persuasive. We agree
with the Examiner's response in the Answer and adopt it as our own.
Ans. 4--5.
Further, we emphasize that while the requirement for a teaching,
suggestion, or motivation (the TSM test) to combine known elements in
order to show that the combination would have been obvious may be "a
helpful insight," it cannot be used as a rigid and mandatory formula. KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418-19 (2007). Rejections on
obviousness grounds must be supported by "some articulated reasoning with
some rational underpinning" to combine the known elements in the manner
required in the claim at issue. Id. at 418. In this case, we determine that the
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Application 13/291,775
Examiner's rejection of claim 1 includes some articulated reasoning with
some rational underpinning. For example, the Examiner determines that:
11. Fregoso teaches the light source 22 has a lens 24 at a front
end of the light source and the lens is coupled to a light guide 36
(see fig. 1 ). It would ha[ ve] been obvious to one having ordinary
skill in the art at the time of the invention to modifj;
Suyama/Mandelkern with the lens taught by Fregoso in order to
focus the light from the light source.
12. Ooshima teaches a dental device wherein the light from
the light source 7 is guided into two lateral arms (see fig. 4, it is
guided by the mirrors and lenses). It would ha[ ve] been obvious
to one having ordinary skill in the art at the time of the invention
to modify Suyama/Mandelkern/Fregoso with the lateral arms
taught by Ooshima in order to obtain an image of the tooth in
several directions.
Final Act. 6 (emphases added). Additionally, we note that "the analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ." KSR,
550 U.S. at 418. "[I]f a technique has been used to improve one device, and
a person of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill." Id. at 417. Moreover, the
Appellants do not persuasively explain why the articulated reasoning
provided in the Examiner's rejection of claim 1 is in error.
Thus, we sustain the Examiner's rejection of independent claim 1
under 35 U.S.C. § 103(a) as unpatentable over Suyama, Mandelkem,
Fregoso, and Ooshima. For the same reason, we also sustain the Examiner's
rejection of dependent claims 2-5, 8, and 9, which are not argued separately.
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Application 13/291,775
Rejection III
The Appellants merely rely on the arguments presented for the
Examiner's rejection of claim 1 for this ground of rejection and allege that
Chan does not cure the alleged deficiencies of the rejection of claim 1. See
Br. 10-11. For the same reasons we have sustained the rejection of claim 1,
we likewise sustain the Examiner's rejection of claims 6 and 7 under 35
U.S.C. § 103(a) as unpatentable over Suyama, Mandelkem, Fregoso,
Ooshima, and Chan.
DECISION
We AFFIRM the Examiner's decision rejecting claims 1-9.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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