Ex Parte Haje

Board of Patent Appeals and Interferences

Jun 16, 2008

10774451 (B.P.A.I. Jun. 16, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte EMAD EL HAJE
____________

Appeal 2008-1268
Application 10/774,451
Technology Center 1600
____________

Decided: June 16, 2008
____________

Before DONALD E. ADAMS, LORA M. GREEN , and
JEFFREY N. FREDMAN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL

This appeal under 35 U.S.C. § 134 involves claims 1-20. The
Examiner has objected to claims 21 and 22, the only remaining pending
claims, which are not before us on appeal1 (Ans. 8-9). We have jurisdiction
under 35 U.S.C. § 6(b).

1 The objections relate to petitionable rather than an appealable matter.
Accordingly, we do not consider the objections as part of our deliberations.
Appeal 2008-1268
Application 10/774,451

INTRODUCTION
The claims are directed to a gum packing assisting tool for forcing
soft gum tissue of a patient around a tooth (claims 1-14) and a kit of a
plurality of gum packing tools (clams 15-20). Claims 1, 3, 5, and 14 are
illustrative:
1. A gum packing assisting tool for forcing soft gum tissue of a
patient around a tooth comprising:
an endless strand of material,
the endless strand being made of a material which is easily sterilized,
the endless strand being made of a flexible dense material which
stretches when under tension and which returns to its original shape when
the tension is released, and which admits of few, if any, pockets for housing
germs and contaminants therein,
wherein the length of the endless strand is less than the circumference
of tooth around which soft gum is to be forced around, so that the endless
strand can be tensioned to allow the endless strand to be placed over and
encircle the tooth and to tightly grip the edges of the tooth when the tension
is released, and
wherein the endless strand tool has portions of its cross-section to be
of circular configuration so as to facilitate rolling downward of the endless
strand over the sides of a tooth to the gum line of the patient.
3. The gum packing assisting tool of Claim 1 wherein the cross-
section of the endless strand tool varies along its length.
5. The gum packing assisting tool of Claim 1 wherein a portion of the
endless strand tool has at least one projecting tab to allow a dental
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practitioner to grip and pull the tab to elongate the endless strand tool to
permit easy removal of the endless strand tool from around a tooth.
14. The gum packing tool of Claim 1 wherein the endless tool is
biodegradable.

The Examiner relies on the following prior art references to show
unpatentability:
Robertson US 3,238,620 Mar. 8, 1966
Brosius US 5,829,974 Nov. 3, 1998
Mahoney et al. US 5,976,439 Nov. 2, 1999

The rejections as presented by the Examiner are as follows:
1. Claims 1, 2, 13, 15, and 16 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Robertson.
2. Claims 1, 3-5, 7-9, 11, 12, 15, and 17-20 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Brosius.
3. Claims 3-12 stand rejected under 35 U.S.C § 103(a) as unpatentable over
the combination of Robertson and Brosius.
4. Claim 14 stands rejected under 35 U.S.C § 103(a) as unpatentable over
the combination of Robertson and Mahoney.
We affirm.

DISCUSSION
Findings of Fact (FF):
1. Robertson teaches a dental appliance in the shape of an endless ring or
resilient material of uniform cross sectional shape (Robertson 1: 17-19).
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2. Robertson teaches that the dental appliance may be impregnated with
a vaso-constrictor to control or restrict capillary bleeding from the gum
tissue, when the appliance is inserted between the tooth and surrounding
gum tissue (Robertson 1: 61-68).
3. Appellants’ Specification discloses that “it would be desirable to have
the dense flexible strand tool coated with either an antiseptic, vaso-
constrictor and/or an analgesic. These coatings would release medicines
and/or pain killers to the area of the gum line” (Spec. 8: 8-10). Accordingly,
Appellants’ Specification defines medicines as including vaso-constrictors.
4. Robertson teaches that the dental appliance is composed of “resilient
materials which will retain their pliancy in use, such as hard and soft
leathers” (Robertson 2: 49-51).
5. Robertson teaches that the dental appliance is in the form of a circular
ring which is manufacturable in various diameters and thicknesses
(Robertson 2: 46-48). As the Examiner explains a “cross-section sliced
through a plane of the tool” will result in a circular configuration (Ans. 3).
In addition the Examiner explains that a cross-sectional area of the tool
throughout its length is substantially constant (id.).
6. Robertson’s appliance is designed to “snugly engage the neck portion
of the tooth when inserted between the tooth and surrounding gum tissue”
(Robertson 1: 64-66).
7. Robertson teaches that in use the dental practitioner selects an
appliance that “snugly encircle[s] the outer end of the tooth . . ., slips the
appliance . . . over the tooth . . . and tucks the appliance . . . between the gum
. . . and the neck . . . of the tooth” (Robertson 2: 60-66).
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8. Brosius teaches a “ligature including an elastic ring member with a
grip extension protruding therefrom” (Brosius 1: 63-65).
9. Brosius’ FIG. 2 and FIG. 2A are reproduced below:

“FIG. 2 is a plan view of a ligature according to an embodiment of the
present invention” (Brosius 2: 66-67). “FIG 2A is a sectional elevation
taken generally along line IIA-IIA of FIG. 2” (Brosius 3: 1-2).
10. Brosius teaches that the ligature “is preferably a unitary element
molded from a high-strength elastomeric material of a conventional type
suitable for orthodontic applications” (Brosius 3: 38-40). According to the
Examiner Brosius’ device will stretch under tension and contract with the
tension is relased (Ans. 4).
11. Brosius teaches that
as illustrated in FIG. 2A, the ring 22 has a dimension in a radial
direction referred to herein as a cross-sectional thickness r. At
the grip member 24, however, the ligature 20 has a greater
dimension in the radial direction, referred to herein as a cross-
sectional thickness g. Preferably, the cross-sectional thickness
g of the ligature 20 for the grip extension 24 is at least 1.5 times
the cross-sectional thickness r of the ligature 20 for the ring
member 22.

(Brosius 3: 57-65.)
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12. Brosius teaches that
[t]he ring member 22 alone may be sized similarly to that of a
conventional ligature . . . i.e., having an outer diameter of about
0.110-0.125 inches, and having an inner diameter
corresponding to that of a similarly sized conventional ligature.
. . . As will be readily appreciated, the ligature 20 may also be
made in other sizes as needed.

(Brosius 3: 44-49).
13. Brosius teaches “[t]he grip extension 24 advantageously provides a
convenient means by which the ligature 20 can be gripped for stretchable
manipulation of the ring member 22” (Brosius 4: 1-3).
14. Mahoney teaches alginate rope products that are suitable for use as
gingival retraction cords (Mahoney 5: 18-20).
15. Mahoney teaches that “alginates being natural materials show
considerable variety but are characterized [sic] in being block copolymers,
the individual monosaccharide [sic] units being arranged into groups as
blocks of mannuronic (M) and guluronic (G) residues” (Mahoney 4: 34-37).
16. Mahoney teaches that “[i]n use high M containing dressings can
dissolve in wound exudate allowing for the dressings to be removed by
washing out the wound with sterile saline solution, water or the like”
(Mahoney 5: 53-56).
17. Mahoney teaches that “[t]he employ of alginate fibres is often
desirable over other conventional materials employed in surgical dressings,
such as cotton and the like, in view of the superior biocompatibility
properties of alginates” (Mahoney 1: 11-14).

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Anticipation:
1. Claims 1, 2, 13, 15, and 16 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Robertson.
In addition to the teachings of Robertson set forth above (see FF 1-6),
the Examiner finds that Robertson’s appliance is made of an endless strand
of material “which stretches under tension and which returns to its original
shape when the tension is released” (Ans. 3).
In response, Appellant separately argues claims 1 and 13. Therefore,
we limit our discussion to representative claims 1 and 13. 37 C.F.R.
§ 41.37(c)(1)(vii). Claims 1, 2, 15, and 16 will stand or fall together with
claim 1. Claim 13 will stand or fall alone.
Claim 1:
Appellant asserts that the preamble of claim 1 “is written in means
plus function format . . . [and] requires ‘[a gum packing assisting] tool for
forcing soft gum tissue of a patient around a tooth’” (App. Br. 7). We
disagree. As the Examiner explains, the language of claim 1 does not invoke
35 U.S.C. § 112, sixth paragraph (Ans. 5). We agree. To the contrary, the
preamble of claim 1 sets forth the intended use of the claimed invention “for
forcing soft gum tissue of a patient around a tooth” (Claim 1). The body of
claim 1 defines a structurally complete invention. Where, as here, “a
patentee defines a structurally complete invention in the claim body and uses
the preamble only to state a purpose or intended use for the invention, the
preamble is not a claim limitation.” Rowe v. Dror, 112 F.3d 473, 478 (Fed.
Cir. 1997). Accordingly, we disagree with Appellant’s assertion that the
Examiner erred by not giving patentable weight to Appellant’s statement of
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intended use as it appears in the preamble of Appellant’s claim 1 (App. Br.
7).
Appellant asserts that “[t]he Examiner is wrong in stating that in
Robertson ‘the strand tool has portions of its cross-section to be of circular
configuration’. The Robertson disclosure shows the cross-section to be
rectangular or square” (App. Br. 6). According to Appellant “[a] slice
through a plane of Robertson would produce a hollow cylinder not a
‘circular configuration’ as claimed” (Reply Br. 1). We are not persuaded.
Appellant admits that a cross section of Robertson’s device will produce a
hollow cylinder. A hollow cylinder has a circular configuration (FF 5). The
claim does not require that a further cross-section of the device be made
along the “y-axis” to produce an “arcuate” geometry. Accordingly, we are
not persuaded by Appellant’s assertion.
We are also not persuaded by Appellant’s assertion that a “[r]ing
form” will not “facilitate rolling downward of the endless strand over the
sides of a tooth to the gum line of the patient” (id.). See FF 7. There is no
evidence on this record to suggest that the configuration of Robertson’s
appliance would not facilitate rolling downward of the endless strand over
the sides of a tooth to the gum line of the patient as required by claim 1.
We are also not persuaded by Appellant’s assertion that “[t]he
Examiner is wrong in stating ‘Robertson discloses a method of packing soft
tissue gum around a tooth” (App. Br. 6). Claim 1 is directed to a tool not a
method. For the reasons set forth herein, we agree with the Examiner that
Robertson teaches a tool that meets the requirements of the tool as set forth
in claim 1.
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Appellant asserts that Robertson’s appliance is “not ‘easily sterilized’”
(App. Br. 7; Reply Br. 2). Appellant does not, however, identify any
evidence on this record to support this assertion. Accordingly, we are not
persuaded. It is well settled that argument by counsel cannot take the place
of evidence. In re Cole, 326 F.2d 769, 773 (CCPA 1964); In re Geisler, 116
F.3d 1465, 1471 (Fed. Cir. 1997).
Appellant asserts that “Robertson’s leather has pockets especially
since Robertson desires his ring 6 to be ‘impregnated’ with a vaso-
constrictor…to prevent bleeding . . . To IMPREGNATE something, you
have to have openings” (App. Br. 7). We are not persuaded. Appellant
identifies no evidence on this record to support this assertion. Further, claim
1 does not exclude the presence of “pockets”, to the contrary claim 1
requires only that the device has “few, if any, pockets for housing germs and
contaminants therein” (Claim 1). Further, Appellant has not established that,
even if Robertson’s device has pockets, the number of pockets present in
Robertson’s device would exceed those encompassed by claim 1.
For the foregoing reasons we affirm the rejection of claims 1, 2, 15,
and 16 under 35 U.S.C. § 102(b) as being anticipated by Robertson.

Claim 13:
Appellants assert that “[t]he Examiner is wrong in stating the ring of
Robertson ‘has a medicinal coating’” (App. Br. 6). According to Appellants
a “‘vaso-constrictor’ is not a medicine” (id.). We are not persuaded (see FF
3). As the Examiner explains a “vasoconstrictor is known in the art to
function as a coagulant or decongestant which may alleviate irritation and
discomfort to a person and be construed to alleviate ‘pain’” (Ans. 7). As
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Appellant has not refuted this assertion of the Examiner, we are not
persuaded by Appellant’s argument to the contrary. Regarding the term
“coating” the Examiner points out that Robertson teaches that the “dentist
may dip the said gum retracting appliance in a hemostatic or vaso-
constrictive solution of his preference prior to placing on the tooth, [and/or]
may further apply a vaso-constrictive to the ring after it has been placed
between the gum and the cervical portion of the tooth” (Ans. 7). In our
opinion, either of these procedures will “coat” the appliance with a
medicinal agent.
For the foregoing reasons we affirm the rejection of claim 13 under 35
U.S.C. § 102(b) as being anticipated by Robertson.

2. Claims 1, 3-5, 7-9, 11, 12, 15, and 17-20 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Brosius.
The Examiner finds that Brosius anticipates the claimed invention (FF
8-13; Ans. 4). In response, Appellant argues the claims as they relate to the
following two groups: I. 1, 3, 4, 7-9, 15, and 17-20; and II. 5, 11, and 12.
Therefore, we limit our discussion to representative claims 1 and 5. 37
C.F.R. § 41.37(c)(1)(vii). The claims in each group will stand or fall
together.
Claim 1:
Appellant asserts that the preamble of claim 1 “is written in means
plus function format . . . [and] requires ‘a gum packing assisting tool for
forcing soft gum tissue of a patient around a tooth’” (App. Br. 8). For the
reasons set forth above, we disagree. Accordingly, we disagree with
Appellant’s assertion that the Examiner erred by not giving patentable
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weight to Appellant’s statement of intended use as it appears in the preamble
of Appellant’s claim 1 (App. Br. 8).
We are also not persuaded by Appellant’s assertion that while Brosius
provides the dimension of the ligature it is not related
to a tooth circumference wherein “the length of the endless
strand is less than the circumference of tooth around which soft
gum is to be forced around” as claimed, much less so “the
endless strand can be tensioned to allow the endless strand to be
placed over and encircle the tooth and to tightly grip the edges
of the tooth when the tension is released”. Nor does Brosius
provide for a cross-section of circular configuration to facilitate
rolling downward of the endless strand over the sides of a tooth
to the gum line of the patient as claimed in Claim 1.

(App. Br. 8-9.) We are not persuaded.
As the Examiner explains “[i]f the prior art structure is capable of
performing the intended use, then it meets the claim” (Ans. 7). Here
Appellant provides no evidence that the dimensions of Brosius’ ligature are
different than the dimension of the claimed device. Further, Appellant
provides no evidence on this record to support a conclusion that the
functional limitations set forth in Appellant’s claim 1 distinguish Brosius’
device from the claimed device. A patent applicant is free to recite features
of an apparatus either structurally or functionally. See In re Swinehart, 439
F.2d 210, 212 (CCPA 1971) (“[T]here is nothing intrinsically wrong with
[defining something by what it does rather than what it is] in drafting patent
claims.”). Yet, choosing to define an element functionally, i.e., by what it
does, carries with it a risk. As our predecessor court stated in Swinehart,
439 F.2d at 213:
where the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
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claimed subject matter may, in fact, be an inherent
characteristic of the prior art, it possesses the authority to
require the applicant to prove that the subject matter shown to
be in the prior art does not possess the characteristic relied on.

This Appellant has not done. Accordingly, we find no error in the
Examiner’s prima facie case of anticipation.
We are also not persuaded by Appellant’s assertion that while Brosius
provides the dimension of the ligature it is not related
to a tooth circumference wherein “the length of the endless
strand is less than the circumference of tooth around which soft
gum is to be forced around” as claimed, much less so “the
endless strand can be tensioned to allow the endless strand to be
placed over and encircle the tooth and to tightly grip the edges
of the tooth when the tension is released”. Nor does Brosius
provide for a cross-section of circular configuration to facilitate
rolling downward of the endless strand over the sides of a tooth
to the gum line of the patient as claimed in Claim 1.

(App. Br. 8-9.) We are not persuaded.
As the Examiner explains “[i]f the prior art structure is capable of
performing the intended use, then it meets the claim” (Ans. 7). Here
Appellant provides no evidence that the dimensions of Brosius’ ligature are
different than the dimension of the claimed device. Further, Appellant
provides no evidence on this record to support a conclusion that the
functional limitations set forth in Appellant’s claim 1 distinguish Brosius’
device from the claimed device. Accordingly, we find no error in the
Examiner’s prima facie case of anticipation.
For the foregoing reasons, we affirm the rejection of claim 1 under 35
U.S.C. § 102(b) as being anticipated by Brosius. Claims 3, 4, 7-9, 15, and
17-20 fall together with claim 1.
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Claim 5:
According to Appellant, “Brosius does not provide a teaching of using
a tab (or plural tabs) to elongate the endless strand tool to permit easy
removal of the endless strand tool from around a tooth” (App. Br. 9). We
disagree.
Brosius teaches a tab, or “grip extension” that is used to grip, stretch,
and thereby manipulate the endless strand tool (FF 13). There is no
evidence on this record to suggest that this “grip extension” would not
function in the same manner to remove the tool from a tooth upon which it
has been placed.
For the foregoing reasons, we affirm the rejection of claim 5 under 35
U.S.C. § 102(b) as being anticipated by Brosius. Claims 11 and 12 fall
together with claim 5.

Obviousness:
3. Claims 3-12 stand rejected under 35 U.S.C § 103(a) as unpatentable over
the combination of Robertson and Brosius.
The claims have not been separately argued and therefore stand or fall
together. 37 C.F.R. § 41.37(c)(1)(vii). Claim 3 is representative.
Based on the combined teachings of Robertson and Brosius the
Examiner concludes that “[i]t would have been obvious to one having
ordinary skill in the art at the time the invention was made to modify the tool
of Robertson to have the configuration(s) of Brosius in order to be able to
facilitate installation of the tool in view of Brosius” (Ans. 4). We find no
error in the Examiner’s prima facie case of obviousness.
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Appellant asserts that Robertson and Brosius are nonanalogous art
(App. Br. 9). We disagree. In ICON, the Federal Circuit explained that
“A reference is reasonably pertinent if, even though it may be in
a different field from that of the inventor's endeavor, it is one
which, because of the matter with which it deals, logically
would have commended itself to an inventor’s attention in
considering his problem.” In re Clay, 966 F.2d 656, 659
(Fed.Cir.1992). In other words, “familiar items may have
obvious uses beyond their primary purposes.” KSR Int'l Co. v.
Teleflex, Inc., --- U.S. ----, 127 S.Ct. 1727, 1742, 167 L.Ed.2d
705 (2007). We therefore have concluded, for example, that an
inventor considering a hinge and latch mechanism for portable
computers would naturally look to references employing other
“housings, hinges, latches, springs, etc.,” which in that case
came from areas such as “a desktop telephone directory, a piano
lid, a kitchen cabinet, a washing machine cabinet, a wooden
furniture cabinet, or a two-part housing for storing audio
cassettes.” Paulsen, 30 F.3d at 1481-82.

In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379-1380 (Fed. Cir.
2007).
Appellant recognizes, both Robertson and Brosius deal with human
teeth (App. Br. 9). As the Examiner explains, “it is the added feature of the
projecting tabs or widened portions on the ‘tool’ that is taught by Brosius
which is applied to modify the ‘tool’ of Robertson” (Ans. 7). There is no
evidence on this record to suggest that one working in the dental field would
not have recognized that the grip extension on the endless strand tool taught
by Brosius could not reasonably be applied to the endless strand tool of
Robertson to facilitate the insertion and removal of the tool from a tooth.
Accordingly, we are not persuaded by Appellant’s assertion to the contrary.
We are also not persuaded by Appellant’s assertion that “one skilled
in the art would clearly recognize that having a rounded cross-section as the
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cross-section for scraping ring 6 of Robertson would lead to an inferior and
unworkable device, since a rounded cross-section wouldn’t scrape away
tissue from the root of a tooth” (App. Br. 9). According to Roberston
[i]n using the said appliance, the dental practitioner selects a
ring 6 of a diameter to snugly encircle the outer end of the tooth
8 which has been prepared for the taking of an impression, slips
the appliance 6 over the tooth 8 and tucks the appliance 6
between the gum 10 and the neck 12 of the tooth 8 with the
usual dental tools. Because of the resilient composition of the
said appliance 6, the device will snugly enclose the outer end of
the tooth 8 but is readily tucked into gum retracting position
encircling the neck portion 12 of the tooth 8, between the tooth
8 and the gum 10 because of the resilient nature of the ring.

(Robertson 2: 61-72; FF 6 and 7.) Notwithstanding, Appellant’s assertion to
the contrary, in practice Robertson’s device does not require that tissue be
scraped away from the root of a tooth. Accordingly, we are not persuaded
by Appellant’s assertion that the combination of Robertson and Brosius
would lead to an inoperative, interferer and/or unworkable device (App. Br.
9).
Accordingly, we affirm the rejection of claim 3 under 35 U.S.C
§ 103(a) as unpatentable over the combination of Robertson and Brosius.
Claims 4-12 fall together with claim 3.

4. Claim 14 stands rejected under 35 U.S.C § 103(a) as unpatentable over
the combination of Robertson and Mahoney.
Based on the combined teachings of Robertson and Mahoney the
Examiner concludes
[i]t would have been obvious to one having ordinary skill in the
art at the time the invention was made to modify the tool of
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Robertson to be biodegradable as in Mahoney et al. in order to
use a tool that is biocompatible and easier to use by eliminating
step of removal and/or disposal.

(Ans. 5).
Appellant asserts that “the alginate products of Mahoney et al. are
such that the fibers become stronger and are not susceptible to breaking
down in a human cavity and thus are the opposite of being biodegradable”
(App. Br. 10). We disagree. See FF 16.
Appellant asserts that biocompatibility and biodegradability are not
concerns addressed in Robertson (App. Br. 10). We are not persuaded.
Mahoney teaches that the biocompatibility properties of alginates are
superior to other materials used in surgical dressings (FF 17). Therefore,
while it may be true that Robertson does not address biocompatibility issues,
a person of ordinary skill in this art at the time the invention was made was
concerned with issue of biocompatibility. As to biodegradability, there are a
number of reasons why biodegradable products are preferred over non-
biodegradable products. In this regard, the Examiner notes that
biodegradable products are preferred due to the ability to eliminate the need
to remove and dispose of the product (Ans. 5). A person of ordinary skill in
this art would likewise appreciate that biodegradable products are
environmentally preferred.
Accordingly, while Appellant asserts that “Robertson teaches
removing its ring in THREE MINUTES after insertion” (App. Br. 10) and
therefore biodegradability is not an issue for Robertson, we find that the
disposal of a biodegradable product is environmentally preferred over the
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disposal of a non-biodegradable product. Accordingly, we are not persuaded
by Appellants’ argument.
Lastly Appellant asserts that “it is not clear that the Mahoney et al.
material could be fashioned into a stretchable ring that could retract gum
tissue from about the root of tooth which would make using the material as
something obvious to one skilled in the Robertson art” (App. Br. 10). We
are not persuaded. There is no evidence on this record to suggest that
Mahoney’s biodegradable materials could not be fashioned into a stretchable
ring.
For the foregoing reasons we affirm the rejection of claim 14 under 35
U.S.C § 103(a) as unpatentable over the combination of Robertson and
Mahoney.

CONCLUSION
In summary, we affirm the rejections of record.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a).

AFFIRMED

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