Ex Parte Jansheski

Patent Trial and Appeal Board

Sep 30, 2016

13081853 (P.T.A.B. Sep. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/081,853 04/07/2011 John M. Jansheski
408 7590 10/04/2016
LUEDEKA NEELY GROUP, P.C.
P 0 BOX 1871
KNOXVILLE, TN 37901
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.
65944.US 4824
EXAMINER
HICKS, VICTORIA J
ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
10/04/2016 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):
docketing@luedeka.com
LNG.PA TENT@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN M. JANSHESKI
Appeal2015-000357
Application 13/081,853
Technology Center 3700
Before BRETT C. MARTIN, ANNETTE R. REIMERS, and
LISA M. GUIJT, Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
The Appellant appeals under 35 U.S.C. § 134 of the Examiner's
rejection of claims 4-6. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal2015-000357
Application 13/081,853
THE CLAIMED SUBJECT MATTER
The Appellant's claims are directed generally to "a system for
improving fit of boil and bite type dental guards." Spec. i-f 2. Claim 4,
reproduced below, is illustrative of the claimed subject matter:
4. A dental guard system, comprising:
a boil and bite dental guard made of a thermoplastic
material that is softenable by immersion in heated water and
capable of changing configuration when being fitted to a user by
use of heating of the boil and bite dental guard followed by
application of biting pressure by the user to conform portions of
the boil and bite dental guard to tooth surfaces of the user; and
a generally rigid forming tray made of injection molded
plastic and configured to fittingly receive the boil and bite dental
guard during heating and fitting of the boil and bite dental guard
to teeth of the user, the generally rigid forming tray including a
base and a sidewall including at least two spaced apart slots
formed in the base and the sidewall that each enlarge in a
direction from the base toward the sidewall to provide a flex
point that permits the generally rigid forming tray to expand
slightly to receive the boil and bite dental guard; and thereafter
relax to grip and retain the boil and bite dental guard during
heating and fitting of the boil and bite dental guard, the generally
rigid forming tray remaining sufficiently rigid so that during
fitting of the boil and bite dental guard the generally rigid
forming tray does not substantially conform to the tooth surfaces
of the user.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Wagner
Jacobs
Jansheski
us 4, 77 6, 792
us 5,562,449
US 7 ,954,496 B2
2
Oct. 11, 1988
Oct. 8, 1996
June 7, 2011
Appeal2015-000357
Application 13/081,853
REJECTIONS
The Examiner made the following rejections:
Claims 5 and 6 stand rejected under 35 U.S.C. § 112, first paragraph
as failing to comply with the written description requirement. Ans. 2.
Claims 4 and 6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wagner and Jansheski. Ans. 3.
Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wagner, Jansheski, and Jacobs. Ans. 6.
ANALYSIS
Written Description
The Examiner rejects each of claims 5 and 6 for lack of written
description. With regard to claim 5, the Examiner states that "the
specification teaches 'the tray 14 is slightly smaller than the guard 12,'
which is not sufficient to teach only a portion of the forming tray 14 being
smaller than the boil and bite dental guard 12, as claimed." Ans. 8.
Similarly, the Examiner rejects claim 6 because the claims state that
characteristics of the forming tray are "at least equal to ... " characteristics of
the dental guard, but the Specification actually discloses that the forming
tray has a claimed characteristic "greater than the material of the channel 16
[of the dental guard]," but does not disclose equal to in regard to the channel
16. Ans. 9 (citing Spec. i-f 26) (emphasis omitted).
Essentially, the issue here is that the claims may be read so as to be
broader than the disclosure in the Specification. In both instances, the
claims cover the disclosure, but they also allow for something not explicitly
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Application 13/081,853
described. With claim 5, disclosing the entirety of the forming tray being
smaller than the guard would mean that "at least a portion of the forming
tray" is smaller than the guard. Likewise, with claim 6, although material
channel 16 does not meet the "equal to" portion of the claim limitation, pad
18 does. See App. Br. 6.
Although not exactly analogous, this situation is similar to a situation
where a claim is to a genus while only a species is disclosed. As the Federal
Circuit has stated in such instances:
A claim will not be invalidated on section 112 grounds simply
because the embodiments of the specification do not contain
examples explicitly covering the full scope of the claim
language .... [T]he patent specification is written for a person of
skill in the art, and such a person comes to the patent with the
knowledge of what has come before. Placed in that context, it is
unnecessary to spell out every detail of the invention in the
specification; only enough must be included to convince a person
of skill in the art that the inventor possessed the invention ....
[A] single embodiment would support such a generic claim only
if the specification would "reasonably convey to a person skilled
in the art that [the inventor] had possession of the claimed subject
matter at the time of filing" . . . . [A] patentee cannot always
satisfy the requirements of section 112, in supporting expansive
claim language, merely by clearly describing one embodiment of
the thing claimed.
LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1345--47
(Fed. Cir. 2005) (citations omitted). Ultimately, whether broadening or
narrowing of the claims is involved, "the inquiry into whether the
description requirement is met must be determined on a case by case basis
and is a question of fact. Moreover, the examiner has the initial burden of
presenting evidence or reasons why persons skilled in the art would not
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Application 13/081,853
recognize in an appellant's disclosure a description of the invention defined
by the claims." Ex parte Sorenson, 3 USPQ2d 1462, 1463 (citing In re
Wertheim, 541F.2d257, 265 (CCPA 1976)); see also, Smith, 458 F.2d
1389, 1395 (CCPA 1972).
In the present case, the Examiner has shown only that the
Specification is slightly narrower than the claimed subject matter. The
Examiner, however, has not explained nor presented evidence as to why one
of skill in the art would not recognize in Appellant's Specification a
description of the invention defined by claims 5 and 6. We agree with the
Appellant that in both cases, one skilled in the art would conclude that the
Appellant had possession of a tray meeting the claimed limitations and thus
do not sustain the rejections.
Obviousness
All of the art-based rejections rely on the combination of Wagner and
Jansheski. According to the Examiner, Wagner teaches the claimed
"generally rigid" aspect by way of its teaching that "tray 1 is made of
conventional hard strong plastic material." Ans. 9 (citing Wagner col. 4, 11.
33-35). The Examiner appears to take a literal reading of "generally rigid"
without acknowledging that the Appellant's Specification provides a
definition of the term that requires a level of flexibility that would not be
accorded by "hard strong plastic material." See App. Br. 7 (citing Spec. i-f 24
("the tray 14 is slightly smaller than the guard 12 and substantially thin and
configured to flex to allow the tray 14 to expand slightly to receive the guard
12, and thereafter relax to grip and retain the guard 12") and Spec. i-f 26 ("the
tray 14 is 'generally rigid' in that it tends to retain its shape so as to provide
a guide to inhibit undesirably deformation of the guard 12, yet provides the
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Application 13/081,853
described close interference fit with the guard"). As the Appellant's further
point out, Wagner incorporates by reference the similarity of its tray to that
disclosed in Patent US 3,473,225 to Deuschle. App. Br. 8-9. We agree with
the Appellant that "Deuschle discloses that its tray must be sufficiently rigid
not to flex when removing the impression." App. Br. 9. Here, "generally
rigid" as claimed requires some level of flexibility not contemplated in
Wagner or Deuschle.
Similarly, the Examiner's basis for combining Wagner with
J ansheski' s slots to allow for flexibility goes against the teaching of Wagner
necessitating an inflexible tray. We agree with the Appellant that "the
modification proposed by the Examiner is counterproductive to [the]
Wagner tray." Id. Accordingly, we are persuaded not only that Wagner
does not teach the claimed "generally rigid" tray, but also that one of skill in
the art would not combine Wagner with Jansheski as proposed by the
Examiner. Accordingly, we do not sustain the Examiner's obviousness
rejections of claims 4-6.
DECISION
For the above reasons, we REVERSE the Examiner's decision to
reject claims 4---6.
REVERSED
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