Ex Parte Kim

Patent Trial and Appeal Board

Sep 25, 2012

11271291 (P.T.A.B. Sep. 25, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/271,291 11/12/2005 Daniel Sung-Yul Kim 9172
23442 7590 09/25/2012
RYLANDER & ASSOCIATES PC
P.O. Box 250
VANCOUVER, WA 98660
EXAMINER
LEWIS, RALPH A
ART UNIT PAPER NUMBER
3732
MAIL DATE DELIVERY MODE
09/25/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte DANIEL SUNG-YUL KIM
________________

Appeal 2010-000448
Application 11/271,291
Technology Center 3700
________________

Before STEVEN D.A. McCARTHY, BRETT C. MARTIN and
ANNETTE R. REIMERS, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE 1
The Appellant1 appeals under 35 U.S.C. § 134 from the Examiner’s 2
final decision rejecting claims 8-17. Claims 1-7 are cancelled. We have 3
jurisdiction under 35 U.S.C. § 6(b)(1). 4
We sustain the rejection of claims 8-11 under 35 U.S.C. § 102(b) as 5
being anticipated by Russ (US 1,201,875, issued Oct. 17, 1916).6

1 The Appellant is the real party in interest.
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Application 11/271,291

2
We do not sustain: 1
the rejection of claim 16 under 35 U.S.C. § 112, first 2
paragraph; 3
the rejection of claim 12 under § 102(b) as being 4
anticipated by Russ; 5
the rejection of claim 16 under 35 U.S.C. § 103(a) as 6
being unpatentable over Russ; 7
the rejection of claims 8-12, 14, 15 and 17 under § 102(b) 8
as being anticipated by Saupe (US 2,730,804, issued Jan. 17, 9
1956); 10
the rejection of claims 12 and 13 under § 103(a) as being 11
unpatentable over Saupe and Grätz (US 6,508,649 B2, issued 12
Jan. 21, 2003); 13
the rejection of claims 8-12 under § 102(b) as being 14
anticipated by Imai (JP H7-194618 A, publ. August 1, 1995);2 15
and 16
the rejection of claims 14-17 under § 103(a) as being 17
unpatentable over Imai and Blank (US 6,386,873 B1, issued 18
May 14, 2002). 19
20
ISSUES 21
The Appellant argues claims 8-11 as a group for purposes of the 22
rejection of those claims as anticipated by Russ. Sole independent claim 8, 23
reproduced below, is representative of those claims: 24

2 All references to Imai in this opinion will be to an English language
translation prepared by The McElroy Translation Company in or about May
2009, a copy of which is in the prosecution history.
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Application 11/271,291

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8. A disposable dental filing tool, 1
comprising: 2
[a]n arch shaped handle having a horizontal 3
arm with first and second ends, a first vertical arm 4
attached at said first end and a second vertical arm 5
attached at said second end; and 6
[a] taut filing strip formed in said handle 7
between said first vertical arm and said second 8
vertical armed. 9
Only issues and findings of fact contested by the Appellant have been 10
considered. See Ex parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI 2010). 11
This appeal turns on five issues: 12
First, has the Examiner shown that the Specification fails 13
to either enable the subject matter of claim 16 or provide a 14
written description of that subject matter? (See App. Br. 4; 15
Reply Br. 1-4). 16
Second, does Russ describe a disposable dental filing tool 17
including a filing strip “formed in” a handle as recited in claim 18
8? (See App. Br. 5 and 6; Reply Br. 5). 19
Third, does Russ describe a dental filing tool including a 20
filing strip having a sharp cutting edge system as recited in 21
claim 12? (App. Br. 5; Reply Br. 5). 22
Fourth, do the evidence and technical reasoning 23
underlying the rejection of claim 16 under § 103(a) adequately 24
support the conclusion that one of ordinary skill in the art 25
would have had reason to insert the filing strip into a melted 26
formable material used to injection mold the handle? (App. Br. 27
12; Reply Br. 7-8). 28
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Fifth, does Saupe or Imai describe a tool including a 1
filing strip “formed in” a handle as recited in claim 8? (See 2
App. Br. 5; Reply Br. 5). 3
4
FINDINGS OF FACT 5
The record supports the following findings of fact (“FF”) by a 6
preponderance of the evidence. 7
1. The Specification as originally filed describes the subject matter 8
of claim 16. For example, claim 3 of the application underlying this appeal, 9
as originally filed, recited a filing tool “of which the handle component 10
secures a filing strip, fastening at the first and second ends including the 11
opening of the filing strip by injecting melted formable material, but not 12
limited to plastic, in the mold.” 13
2. Russ describes a strip and matrix holder adapted for use by 14
dentists. (Russ 1, ll. 9-24). The holder includes a strip 9 and a handle. 15
(Russ 1, ll. 41-53). 16
3. Russ describes the handle as being “formed” from a single 17
piece of bent wire of suitable gage. (Russ 1, ll. 41-49). Russ does not 18
appear to teach forming the handle by injection molding a formable material. 19
4. Russ describes the strip 9 as being “of emery cloth or other 20
material to be used.” (Russ 1, ll. 49-53). 21
5. Russ teaches fastening the strip 9 to the handle by inserting end 22
portions of the strip 9 into slots 8 in vertical arms 5, 7 of the handle; 23
doubling end portions 10 of the strip 9 around sides of the vertical arms 5, 7, 24
thereby pressing the doubled end portions of the strip 9 into grooves 13 in 25
the vertical arms 5, 7; and pivoting clamping members 12 over the vertical 26
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arms 5, 7 to secure the end portions 10 of the strip 9 to the vertical arms 5, 7 1
of the handle. (Russ 1, ll. 49-88 and fig. 2). 2
6. Saupe describes a dental hand abrasive separator device 3
including a frame 10 and an abrasive strip 23. Saupe teaches securing ends 4
of the abrasive strip 23 in a groove 13 extending through each of two legs 12 5
at opposite ends of the frame 10 by means of finger members 16. (Saupe, 6
col. 1, ll. 56-65; col. 2, ll. 31-44; and fig. 4). Saupe does not appear to 7
describe any deformation of the abrasive strip 23 in the frame 10. 8
7. Imai describes a dental work polishing unit including an 9
abrasive grain foil 3 installed by stretching between two ends of a bow-10
shaped holding frame 1. (Imai, paras. 0003 and 0004). Imai further 11
describes the abrasive grain foil 3 as having two holes for insertion in the 12
holding frame 1. Projections 7 formed at the two ends 2 of the holding 13
frame 1 allow detachable insertion of the abrasive grain foil 3 in the holding 14
frame 1. (Imai, para. 0008). Imai does not appear to describe any 15
deformation of the abrasive grain foil 3 in the holding frame 1. 16
17
ANALYSIS 18
First Issue 19
It is unclear whether the Examiner intends to reject claim 16 under the 20
first paragraph of § 112 for lack of enablement or failure to comply with the 21
written description requirement. (See Ans. 4; Reply Br. 1). If the Examiner 22
intended to reject claim 16 for failure to comply with the written description 23
requirement, claim 3 as originally filed adequately describes a process for 24
fabricating a dental filing tool by insert molding a filing strip into an 25
injection molded handle. (See FF 1; see also Reply Br. 5). One of ordinary 26
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Application 11/271,291

6
skill in the art would have appreciated from claim 3 as originally filed that 1
the Appellant regarded the product of such an insert molding process as the 2
Appellant’s invention. 3
If the Examiner intended to reject claim 16 for lack of enablement, 4
then the Examiner has not provided adequate evidence and technical 5
reasoning to establish that one of ordinary skill in the art would require 6
undue experimentation to make or use the product recited in claim 16. See, 7
e.g., In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). In particular, the 8
Examiner has not established that the level of ordinary skill in the art in the 9
field of insert molding as of the filing date was insufficient to perform the 10
insert molding process recited in claim 16. Therefore, we do not sustain the 11
rejection of claim 16 under § 112, first paragraph, for either lack of 12
enablement or failure to comply with the written description requirement. 13
14
Second Issue 15
A claim under examination is given its broadest reasonable 16
interpretation consistent with the underlying specification. In re Am. Acad. 17
of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). In the absence of 18
an express definition of a claim term in the specification or a clear 19
disclaimer of scope, the claim term is interpreted as broadly as the ordinary 20
usage of the term by one of ordinary skill in the art reasonably would permit. 21
In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007); In 22
re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). 23
The Appellant does not formally define the term “formed in” in the 24
Specification. The ordinary usage of the term is at least broad enough to 25
encompass structure shaped, molded or fashioned into a particular state or 26
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condition. (See WEBSTER’S THIRD NEW INT’L DICTIONARY (G&C Merriam 1
1971)(“form,” entry 2, def. 2a)). More specifically, the ordinary usage of 2
the term is at least broad enough to encompass structure bent or stretched to 3
conform to the shape of a tool. (Id. (“form,” entry 2, def. 8)). Russ itself, 4
which relates to the field of dental tools, uses the term “formed” consistently 5
with this definition. (See FF 3). The Appellant identifies nothing in the 6
Specification inconsistent with this usage. In fact, the Appellant has not 7
identified any use of the term “formed in” in the Specification. 8
Russ teaches doubling the end portions 10 of the strip 9 around the 9
sides of the vertical arms when securing the ends portions 10 of the strip 9 to 10
the handle. (FF 5). This doubling of the end portions 10 around the sides of 11
the vertical arms constitutes a bending or stretching of the strip in the 12
handle. Therefore, Russ describes a filing strip 9 “formed in” the handle as 13
recited in claim 8. 14
The preamble of claim 8 recites a “disposable dental filing tool.” 15
Assuming for purposes of the present appeal only that this preamble 16
language limits the scope of claim 8, the limitation is functional. This 17
limitation is met by structure capable of performing the function. 18
For example, in Re Schreiber, 128 F.3d 1473 (Fed. Cir. 1997), the 19
Board found that a spout useful for purposes such as dispensing oil from an 20
oil can anticipate a claim reciting a “dispensing top for passing only several 21
kernels of a popped popcorn at a time from an open-ended container filled 22
with popcorn.” Id. at 1475. The Court held that, 23
where the Patent [& Trademark] Office has reason 24
to believe that a functional limitation asserted to be 25
critical for establishing novelty in the claimed 26
subject matter may, in fact, be an inherent 27
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characteristic of the prior art, it possesses the 1
authority to require the applicant to prove that the 2
subject matter shown to be in the prior art does not 3
possess the characteristic relied on. 4
Id. at 1478 (quoting In re Swinehart, 439 F.2d 210, 212 (CCPA 1971)). Our 5
reviewing court agreed with the Board that the Examiner had articulated a 6
reason to believe that the prior art spout inherently possessed the dimensions 7
necessary to perform the function of “passing only several kernels of a 8
popped popcorn at a time from an open-ended container filled with 9
popcorn.” Id. at 1475. Alternatively, the court agreed with the Board’s fact 10
finding that the prior art spout was “capable of functioning to dispense 11
kernels of popped corn in the manner set forth in claim 1.” Id. at 1478. On 12
these alternative bases, our reviewing court affirmed the rejection. 13
Russ describes a dental filing tool including each structural limitation 14
recited in the body of claim 8. Since Russ describes structure identical or 15
substantially identical to that recited in claim 8, the Examiner has reason to 16
believe that the tool described by Russ is disposable. Apart from this, the 17
Examiner correctly points out that a person may dispose of almost any 18
object, even if that object may be re-usable. (See Ans. 5). Therefore, the 19
Examiner has sufficient reason to believe that the tool described by Russ is 20
“disposable” so as to impose on the Appellant the burden of producing 21
rebuttal evidence. See In re Best, 562 F.2d 1252, 1255 (CCPA 22
1977)(citations omitted). The Appellant has produced no persuasive 23
evidence suggesting that the Examiner’s belief is not correct. Therefore, the 24
Examiner’s finding that the tool described by Russ is disposable is correct. 25
We sustain the rejection of claims 8-11 under § 102(b) as being anticipated 26
by Russ. 27
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Third Issue 1
Russ describes the strip 9 as being of emery cloth or other material. 2
(FF 4). The Examiner has not provided any persuasive evidence or technical 3
argument to support the finding that emery cloth necessarily has some 4
cutting (as opposed to abrading) ability. (See Ans. 5). Therefore, the 5
Examiner has not provided a factual basis for the finding that Russ’ emery 6
cloth has a “sharp cutting edge system.” We do not sustain the rejection of 7
claim 12 under § 102(b) as being anticipated by Russ. 8
9
Fourth Issue 10
An Examiner cannot entirely ignore any limitation in a claim while 11
determining whether the subject matter of the claim would have been 12
obvious. In re Wilson, 484 F.2d 1382, 1385 (CCPA 1970). On the other 13
hand, “[i]f the product in a product-by-process claim is the same as or 14
obvious from a product of the prior art, the claim is unpatentable even 15
though the prior product was made by a different process.” In re Thorpe, 16
777 F.2d 695, 697 (Fed. Cir. 1985); see also SmithKline Beecham Corp. v. 17
Apotex Corp., 439 F.3d 1312, 1317 (Fed. Cir. 2006). Where claimed and 18
prior art products are produced by identical or substantially identical 19
processes, 20
the [Patent & Trademark Office] can require an 21
applicant to prove that the prior art products do not 22
necessarily or inherently possess the characteristics 23
of [the] claimed product. Whether the rejection is 24
based on ‘inherency’ under 35 U.S.C. § 102, on 25
‘prima facie obviousness’ under 35 U.S.C. § 103, 26
jointly or alternatively, the burden of proof is the 27
same, and its fairness is evidenced by the PTO’s 28
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inability to manufacture products or to obtain and 1
compare prior art products. 2
In re Best, 562 F.2d 1252, 1255 (CCPA 1977)(citations omitted). 3
Russ teaches forming the handle of Russ’ tool from a single piece of 4
bent wire of suitable gage. (FF 3). Russ does not appear to describe making 5
the tool by a method identical or substantially identical to that recited in 6
claim 16. (See App. Br. 12). The Examiner articulates no other reason for 7
believing that the structure of Russ’ tool is identical or substantially identical 8
to the subject matter of claim 16. The process limitations recited in claim 16 9
cannot be set aside in determining whether the structure recited in claim 16 10
would have been obvious. 11
The Appellant does not appear to contest the Examiner’s finding that 12
injection molding (or insert molding) was a well known process in the 13
pertinent art. (See Ans. 8-9 and 12; see also App. Br. 12; Reply Br. 7-8). 14
Nevertheless, the Examiner has not provided a rational underpinning for the 15
conclusion that it would have been obvious to apply injection molding to 16
insert mold a handle around a filing strip in order to fabricate a dental filing 17
tool satisfying the limitations of claim 16. See In re Ochiai, 71 F.3d 1565, 18
1570 (Fed. Cir. 1995)(holding that the application of a known process to a 19
new starting material to produce a new result would not necessarily have 20
been obvious, even if the new starting material might have been similar to 21
that described in the prior art). We do not sustain the rejection of claim 16 22
under § 103(a) as being unpatentable over Russ. 23
24
Fifth Issue 25
The ordinary usage of the term “formed in” is at least broad enough to 26
encompass structure shaped, molded or fashioned into a particular state or 27
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condition. (See WEBSTER’S THIRD NEW INT’L DICTIONARY (G&C Merriam 1
1971)(“form,” entry 2, def. 2a)). Alternatively, in view of originally filed 2
claim 3, the term is at least broad enough to encompass an insert within a 3
structure shaped, molded or fashioned about the insert. Nevertheless, the 4
Examiner provides no basis in either the Specification or ordinary usage for 5
concluding that the term is broad enough to encompass any strip “held by 6
the vertical arms . . . of the handle.” (Ans. 6-7). 7
Neither Saupe nor Imai describes a filing strip shaped, molded or 8
fashioned in a handle. Neither reference describes a handle shaped, molded 9
or fashioned about a filing strip. Each reference appears to describe the 10
combination of a handle and a filing strip, each formed separately before 11
being subsequently secured together. (See FF 6 and 7). Since the Examiner 12
has not provided an adequate factual basis for finding that either Saupe or 13
Imai describes a dental filing tool including a filing strip formed in a handle, 14
we do not sustain the rejection of claims 8-12, 14, 15 and 17 under § 102(b) 15
as being anticipated by Saupe; or the rejection of claims 8-12 under § 102(b) 16
as being anticipated by Imai. 17
The Examiner cites Grätz for the teaching that “it is desirable to add 18
serrated teeth 3 to dental filing strips [such] as that described by Saupe in 19
order to aid in the filing of the interdental space between adjacent teeth.” 20
(Ans. 7). The Examiner does not persuasively explain how this teaching 21
might remedy the deficiency in the disclosure of Saupe as applied to claim 8 22
for purposes of the rejection of claims 12 and 13 under § 103(a). We do not 23
sustain the rejection of claims 12 and 13 under §103(a) as being 24
unpatentable over Saupe and Grätz. 25
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The Examiner cites Blank for the teaching “the use of holes for [the] 1
attachment of dental abrasive strips to handles.” (Ans. 9). The Examiner 2
does not persuasively explain how this teaching might remedy the deficiency 3
in the disclosure of Imai as applied to claim 8. We do not sustain the 4
rejection of claims 14-17 under § 103(a) as being unpatentable over Imai 5
and Blank. 6
7
DECISION 8
We AFFIRM the Examiner’s decision rejecting claims 8-11. 9
We REVERSE the Examiner’s decision rejecting claims 12-17. 10
No time period for taking any subsequent action in connection with 11
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). 12
13
AFFIRMED-IN-PART 14
15
16
mls 17