Ex Parte Johnson et alDownload PDFPatent Trials and Appeals BoardMay 21, 201914772967 - (D) (P.T.A.B. May. 21, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/772,967 22913 7590 Workman Nydegger 60 East South Temple Suite 1000 09/04/2015 05/23/2019 Salt Lake City, UT 84111 FIRST NAMED INVENTOR Steven B. Johnson 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. 7678.1238.la.l 1369 EXAMINER DEMOSKY, GWEN M ART UNIT PAPER NUMBER 3772 NOTIFICATION DATE DELIVERY MODE 05/23/2019 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@wnlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEVEN B. JOHNSON, DAVID LAWRENCE MARGETTS, BARRY LEE HOBSON, JONATHAN D. SCOVILLE, NEIL T. JESSOP, PETER M. ALLRED, and DANE. FISCHER Appeal2018-006708 1 Application 14/772,9672 Technology Center 3700 Before MICHAEL C. ASTORINO, KENNETH G. SCHOPPER, and AMEE A. SHAH, Administrative Patent Judges. SCHOPPER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 from the rejection of claims 77-88 and 93-102. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Our decision references the Appeal Brief ("Appeal Br.," filed Feb. 1, 2018), the Reply Brief ("Reply Br.," filed June 11, 2018), the Examiner's Answer ("Ans.," mailed May 3, 2018), and the Final Office Action ("Final Act.," mailed June 28, 2017). 2 According to Appellants, the real party in interest is Ultradent Products, Inc. Appeal Br. 2. Appeal2018-006708 Application 14/772,967 BACKGROUND According to Appellants, "[ t ]he present invention is in the field of wax-based compositions and dental treatment devices and other articles made from such compositions." Spec. 1, 11. 6-7. CLAIMS Claims 77, 93, and 102 are the independent claims on appeal. Claim 77 is illustrative of the appealed claims and recites: 77. An oral treatment device, comprising: a barrier layer sized and configured to be placed over at least a portion of a user's teeth and formed from a wax-based composition, the wax-based composition comprising: 50% to 93% of a wax fraction comprising paraffin wax and microcrystalline wax; and 7% to 50% of a thermoplastic elastomer. Appeal Br. 15. REJECTIONS 1. The Examiner rejects claims 77-88, 93-97, and 100-102 under 35 U.S.C. § I03(a) as unpatentable over Lewis3 in view of Odajima. 4 2. The Examiner rejects claims 98 and 99 under 35 U.S.C. § I03(a) as unpatentable over Lewis in view of Odajima and Wasylucha. 5 DISCUSSION We are persuaded of reversible error in the rejection of each of the independent claims for the reasons discussed below. 3 Lewis et al., US 2010/0028829 Al, pub. Feb. 4, 2010. 4 Odajima et al., US 2006/0233865 Al, pub. Oct. 19, 2006. 5 Wasylucha, US 2010/0112510 Al, pub. May 6, 2010. 2 Appeal2018-006708 Application 14/772,967 Independent claims 77 and 102 each recites a device formed from a "wax-based composition" including a thermoplastic elastomer and a wax fraction made of paraffin wax and microcrystalline wax. Appeal Br. 15, 18. Independent claim 93 recites a method for manufacturing an oral treatment device including the step of blending paraffin wax, microcrystalline wax, and thermoplastic elastomer to form a wax-based composition. Id. at 17. Thus, all of the present claims require a wax-based composition that includes paraffin wax, microcrystalline wax, and a thermoplastic elastomer. With respect to claim 77, for example, the Examiner finds that Lewis discloses an oral treatment device with a barrier layer including "a wax- based composition ... or a thermoplastic elastomer." Final Act. 2 ( citing Lewis ,r,r 3, 27, 39, 49, 54). The Examiner also finds that Lewis discloses a barrier layer that may include a blend of two or more polymeric materials. Id. ( citing Lewis ,r 49). The Examiner acknowledges that Lewis does not teach the specific wax-based combination claimed, including paraffin wax, microcrystalline wax, and a thermoplastic elastomer. Id. However, the Examiner finds that Odajima teaches a wax composition that includes a wax fraction, including paraffin wax and microcrystalline wax, mixed with a thermoplastic elastomer. Id. at 2-3 (citing Odajima ,r,r 2, 3, 9, 10, 42--43, 104). We are persuaded by Appellants' argument that the Examiner erred in determining that Odajima teaches a wax composition that includes a blend of paraffin wax and microcrystalline wax with a thermoplastic elastomer. Appeal Br. 9-10. The Examiner finds that Odajima teaches a wax mixture including paraffin wax and microcrystalline wax because Odajima teaches that "petroleum waxes include microcrystalline wax and paraffin wax." 3 Appeal2018-006708 Application 14/772,967 Final Act. 3 ( citing Odajima ,r 42). However, we agree with Appellants that Odajima merely discloses that paraffin wax and microcrystalline wax are each a type of petroleum wax. See Appeal Br. 9. Odajima makes this point clear by disclosing a mixture of high and low melting point waxes, disclosing that petroleum wax is a preferable low-melting point wax component, stating that "[t]he petroleum waxes include microcrystalline wax and paraffin wax," and then stating that "[m]icrocrystalline wax is particularly preferred of these waxes." Odajima ,r,r 104, 109, 110. We disagree with the Examiner that Odajima can be interpreted to disclose a wax composition including both paraffin and microcrystalline waxes based on this disclosure. Further, the Examiner does not point to any other portion of Odajima that teaches the use of a mixture of paraffin and microcrystalline waxes as a wax component in a composition also including a thermoplastic elastomer. As noted above, Odajima discloses a mixture of waxes that include both a high melting point wax and a low melting point wax. Odajima ,r 104. However, Odajima discloses that microcrystalline wax and paraffin wax are both low melting point waxes. Id. at ,r,r 109, 110. To the extent Odajima discloses using more than one wax in the composition, Odajima does not contemplate using both paraffin and microcrystalline waxes. Thus, we agree with Appellants that Odajima's does not specifically disclose a composition including paraffin wax, microcrystalline wax, and a thermoplastic elastomer, and given the numerous polymers and types of waxes disclosed by Odajima, the Examiner has not established that the use of a composition as claimed would have been obvious. See Appeal Br. 9-10 (citing Odajima ,r,r 38, 42, 44, 45). 4 Appeal2018-006708 Application 14/772,967 Based on the foregoing, we are persuaded of error in the rejection of independent claims 77, 93, and 102. Accordingly, we do not sustain the rejection of those claims. For the same reasons, we do not sustain the rejection of dependent claims 78-88, 94--97, 100, and 101. Finally, we also do not sustain the rejection of dependent claims 98 and 99 for the same reasons and because the Examiner does not rely on Wasylucha in a manner that cures the deficiency in the rejection of independent claim 77. CONCLUSION We REVERSE the rejections of claims 77-88 and 93-102. REVERSED 5 Copy with citationCopy as parenthetical citation