Ex Parte Jacobs

Board of Patent Appeals and Interferences

May 28, 2008

10727061 (B.P.A.I. May. 28, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte SCOTT JACOBS
__________

Appeal 2008-0378
Application 10/727,061
Technology Center 1600
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Decided: May 28, 2008
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Before, DONALD E. ADAMS, DEMETRA J. MILLS,
RICHARD M. LEBOVITZ, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The following claims are representative.

1. A mouthguard for use by athletes in competition and the like,
comprising:
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Application 10/727,061

a first outer portion having a teeth engaging shape made from a
material having a freezing point of less than 130°F such that it is capable of
conforming to the user's teeth after warming, said first portion being formed
into a tray having a generally U-shape, said first portion having a tab
extending out from the tray, said tray having a plurality of holes therein,
a second inner portion formed on said first portion such that part of
said second portion extends through said plurality of holes in said first
portion to lock the two portions together, said second portion being formed
from a gel material having sufficient softness to protect the user from
damage during use in said athletic competition by producing a cushioning
effect when compressed upon contact on the user during use.

5. The mouthguard of claim 4, wherein said second portion is formed
from a gel selected from the group consisting of styrene block copolymer
and thermoplastic polyurethanes.

Cited References
Adell US 5,406,963 April 18, 1995
Ueno US 5,513,984 May 7, 1996
Frantz US 5,794,627 Aug. 18, 1998

Grounds of Rejection
1. Claims 1-4, 7-10, 13 and 14 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Frantz in view of Adell.
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2. Claims 5, 6, 11 and 12 stand rejected under 35 U.S.C. § 103(a) as
obvious over Frantz and Adell in view of Ueno.

DISCUSSION
Background
The present invention relates to mouthpieces for insertion in a user's
mouth for protection of the user's teeth. (Spec. 1.) More particularly, the
invention relates to a mouthguard having a first portion that can be
fitted to the user and a second portion providing the cushioning
desired. (Id.)

1. Claims 1-4, 7-10, 13 and 14 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Frantz in view of Adell. We select claim 1 as
representative of the rejection before us since Appellants have not separately
argued the claims. 37 C.F.R. 41.37(c)(1)(vii).
The Examiner finds that
Frantz discloses in Figures 1-4 an appliance having an upper
tray and a lower tray holding impression material into which a
patient bites and a pull-strap (50) extending forward out of the
patient's mouth. Figures 1-3 illustrates an upper and lower trays
(12, 14) generally a U-shaped having front portions (26,28), left
and right sides (36,36', 38,38’) and the sides having side
troughs (16, 16', 18, 18') and the putty rope (20) are placed in
the troughs (16, 16', 18, 18') as shown in Figure 3. The putty
rope (20) moves around the teeth to extend into the teeth
undercuts and hardens around the teeth and against the soft
tissues in order to secure the traps (12, 14) onto the upper and
lower teeth and tissues. Frantz discloses the appliance may be
made of plastic and the putty rope placed in the appliance's
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troughs is an impression material. The Frantz appliance device
lacks a plurality of holes therein, as recited.

(Ans. 4).

The Examiner therefore, relies on Adell for the disclosure
in Figures 1-5 [of] a mouthguard (10) which generally is a U-
shaped for fitting into the mouth and comprising wall (14) and
trough (16, 18) on opposite sides. The mouthguard (10)
includes series of holes (20) extending through wall (14). Adell
discloses a liner (12) received in the trough (16, 18) and Figure
5 illustrates the liner (12) is received through the holes (12).
Adell discloses the mouthguard (10) is made of ethylene/vinyl
acetate copolymer.

(Id. 4-5.)

The Examiner concludes that
it would have been obvious to one skilled in the art to include
holes on the Frantz appliance as taught by Adell as such would
fill the impression putty material (20) in the holes, thereby, lock
the appliance and the impression putty material together.

(Id. 5.)
Appellant contends that
[t]he combination of Frantz and Adell, taken as a whole,
does not suggest the claimed subject matter because nowhere in
either reference is (1) the concept of a cushion layer in contact
with the teeth, (2) the use of an outer tray that does conform to
the teeth (as neither Frantz nor Adell do) to position the cushion
portion in a place to protect the user.

(Br. 4.)
When determining whether a claim is obvious, an Examiner must
make “a searching comparison of the claimed invention – including all its
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limitations – with the teaching of the prior art.” In re Ochiai, 71 F.3d 1565,
1572 (Fed. Cir. 1995) (emphasis added). Thus, “obviousness requires a
suggestion of all limitations in a claim.” CFMT, Inc. v. Yieldup Intern.
Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) (citing In re Royka, 490 F.2d
981, 985 (CCPA 1974)). Moreover, as the Supreme Court recently stated,
“there must be some articulated reasoning with some rational underpinning
to support the legal conclusion of obviousness.” KSR Int'l v. Teleflex
Inc., 127 S. Ct. 1727, 1741 (2007) (quoting In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006) (emphasis added)).
Upon review of the evidence of record, we find sufficient evidence to
establish prima facie obviousness of the claimed subject matter. In
particular, Adell discloses a mouthguard having a first layer or trough
having holes therein (Fig. 1) and a second layer or liner. (Adell, col. 3, ll.
39-44.) The first layer has a teeth engaging shape and is made of
ethylene/vinyl acetate copolymer (Adell, col. 2, ll. 58-69), which according
to the Specification is a material having a freezing point less than 130º F
such that it is capable of conforming to the user’s teeth after warming.
(Spec. 12:18-19.) Adell suggests that second layer or liner may be made of
various materials, including polyurethane. (Adell, col. 3, ll. 27-40.)
Similarly, according to the Specification, the second gel portion of the
device may be made of thermoplastic polyurethanes, and this embodiment is
recited in claim 5. (Spec. 13:2.) Adell does not disclose a tab extending out
from the mouth tray as in claim 1, however this feature is described in
Frantz. (Frantz, Fig. 1.) and thus would have been obvious to incorporate
into Adell’s mouthguard for its known advantages
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Appellant further argues that “[t]he outer trays of Frantz and
Adell are not conformed to the user but serve to hold the conformable
inner layer.” (Br. 4.)
The claims, however, do not recite that the first portion is conformed
to the user. The claims before us require that the first outer portion has a
“teeth engaging shape” and is made from a material having a freezing point
of less than 130°F such that it is capable of conforming to the user's teeth
after warming.
The trough of Adell has a U-shaped, teeth engaging shape – i.e., a
shape which teeth are able to mesh with – and is made of the same material,
ethylene/vinyl acetate copolymer, which is disclosed in the specification has
a freezing point less than 130º F such that it is capable of conforming to the
user’s teeth after warming.
Finally, Appellant argues that, “[o]nly Applicant has made a
mouthguard that repeatedly cushions the teeth by presenting a gel that is not
formed into an impression of the user’s teeth and that has an outer
component that … holds the cushioning gel against the teeth.” (Br. 3-4.)
We do not find that the claims recite or require that the gel layer of the
second portion be formed into an impression of the user’s teeth, as argued by
Appellant. Furthermore, we find that the second portion or liner of Adell is
made of the same material disclosed in the Specification, a polyurethane,
and therefore which would be expected by one of ordinary skill in the art to
“produce a cushioning effect” as required by claim 1.
In view of the above, the obviousness rejection is affirmed.

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2. Claims 5, 6, 11 and 12 stand rejected under 35 U.S.C. § 103(a) as
obvious over Frantz and Adell in view of Ueno. We select claim 5 as
representative of the rejection before us since Appellants have not separately
argued the claims. 37 C.F.R. 41.37(c)(1)(vii).
The Examiner finds that
Frantz et a1 discloses in Figures l-4 an appliance having
an upper tray and a lower tray holding impression material into
which a patient bites and a pull-strap (50) extending forward
out of the patient's mouth comprising elements as recited in
these claims except for the impression material is not a gel, as
recited. Ueno discloses in Figures 10 and 11 a construction of a
mouthpiece wherein the ball members (3) are arranged and
received in a groove (16). Ueno teaches the ball members (3) is
made of thermoplastic elastomer (e.g. styrene block copolymer)
which offers a softening point of higher than 100º C, higher
than that of the mouthpiece. Therefore it would have been
obvious to one skilled in the art during the time of the invention
to utilize the styrene block copolymer, suggested by Ueno, in
the Frantz appliance as such would provide cushioning effect
when compressed upon contact on the user during use.

(Id. 5.)

Appellant contends that
Applicant has claimed a device in which the outer tray does
conform to the user's mouth and gums, so that it is personalized
and fits tightly in the mouth. In contrast again, Frantz et al. has
an outer tray that does not conform. Adell's outer tray is a
plastic material that does not deform upon heating and is hard.
This lack of a conformable outer tray in both references thus
also leads one skilled in the art away from the invention
completely.

(Br. 5.)

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In addition Appellant argues that

…[N]one of the references have an outer tray, which does not
directly contact the user's teeth, that does conform when heated
to give a better fit…

(Reply Br. 4.)

We are not persuaded by these arguments. As indicated herein, the
claims do not recite that the first portion is conformed to the user or in direct
contact with the user’s teeth. The claims before us require that the first outer
portion has a teeth engaging shape and is made from a material having a
freezing point of less than 130°F such that it is capable of conforming to the
user's teeth after warming. The trough of Adell has a U-shaped, teeth
engaging shape and is made of the same material, ethylene/vinyl acetate
copolymer, which is disclosed in the specification has a freezing point less
than 130º F such that it is capable of conforming to the user’s teeth after
warming.
Furthermore, we agree with Examiner that it would have been obvious
to have substituted styrene block copolymer of Ueno, as in claims 5, for its
expected benefit to provide a cushioning effect when compressed by the
teeth during its use. (Ueno, col. 7, ll. 26-29; Figs. 10-13; Ans. 5.)
We do not find the Appellants have presented sufficient rebuttal
argument to overcome the Examiner’s prima facie case of obvious-
ness. The obviousness rejection is affirmed.

SUMMARY

The obviousness rejections are affirmed.
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AFFIRMED
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