Ex Parte Larsen

Board of Patent Appeals and Interferences

Aug 29, 2011

10690421 (B.P.A.I. Aug. 29, 2011)

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.
10/690,421 10/20/2003 Steven S. Larsen PLARSS 3835
7590 08/29/2011
Thompson E. Fehr
Suite 300
Goldenwest Corporate Center
5025 Adams Avenue
Ogden, UT 84403
EXAMINER
LEWIS, RALPH A
ART UNIT PAPER NUMBER
3732
MAIL DATE DELIVERY MODE
08/29/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEVEN S. LARSEN
____________

Appeal 2009-012913
Application 10/690,421
Technology Center 3700
____________

Before MICHAEL W. O’NEILL, FRED A. SILVERBERG, and
GAY ANN SPAHN, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Steven S. Larsen (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s rejection of claims 1-8 and 11-20.1 We have jurisdiction
under 35 U.S.C. § 6(b).

1 Although the Examiner also rejected claims 9 and 10, Appellant is not
appealing the rejection of those claims. See Corrected Sections for
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Application 10/690,421

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The Invention
The claims on appeal relate to an endodontic instrument. Claim 1,
reproduced below, with emphasis added, is illustrative of the subject matter
on appeal.
1. An endodontic instrument, which comprises:
a handle having an elongated base with a threaded blunt
projection at a first end; and
a cap containing a channel extending through a first end
of said cap with a first portion of the channel being threaded for
mating with the projection of the elongated base of said handle,
said cap possessing a side, and said cap also having a second
end containing an aperture through which an endodontic file
can project, the diameter of the aperture being selected to be
larger than the diameter of the endodontic file but smaller
than the diameter of a plastic cap attached to the endodontic
file.

Independent claim 11 is similar to claim 1, but instead of a
threaded blunt projection, only recites a threaded projection. Claim
11 also recites “a means for securely retaining a plastic cap of an
endodontic file between the threaded projection of said handle and the
second end of said cap.” Br., Claims Appd’x.2
Independent claims 19 and 20 are similar to claim 1, but also
recite that the cap and the base have substantially the same maximum

Appellant’s Brief (37 C.F.R. § 41.37), filed Oct. 14. 2008. Thus, the
Examiner’s rejection of claims 9 and 10 constitutes the final agency action
as to those claims since no further action on those claims is possible. In
accordance with the Manual of Patent Examining Procedure (MPEP) §
1215.03, the Examiner should cancel claims 9 and 10 by Examiner’s
Amendment.
2 All references to “Br.” herein, are to the Appeal Brief, filed Nov. 11, 2007.
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outer diameter and that the endodontic file has a tip and blunt plastic
cap as well as other details of the file.

The Rejections
The following Examiner’s rejections are before us for review:
Claims 1, 2, 5, 6, 11, 12, 15, and 16 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Powers (U.S. Patent No. 904,990, issued Nov. 24,
1908).
Claims 3, 4, 7, 8, 13, 14, and 17-20 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Powers and Lovaas (U.S. Patent No.
5,197,880, issued Mar. 30, 1993).
Claims 1, 2, 5, 6, 11, 12, 15, and 16 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Powers and either one of Mosley (U.S. Patent
No. 1,115,718, issued Nov. 3, 1914) or Perry (U.S. Patent No. 656,300,
issued Aug. 21, 1900).

SUMMARY OF DECISION
We AFFIRM.

OPINION
Anticipation based on Powers
The Examiner finds that Powers anticipates independent claims 1 and
11. Ans. 3-4. In particular, the Examiner interprets Powers as disclosing
claim 1’s handle B having an elongated base with a threaded 11 blunt
projection 12, 13 and claim 11’s means for securely retaining a plastic cap of
an endodontic file between the threaded projection of the handle and the
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second end of the cap. Id. In response to Appellant’s arguments that
Powers’ projection is pointed rather than blunt, the Examiner reasons that
the term “blunt” is a relative term and “the illustrated rounded conical end of
Powers reasonably meets the ‘blunt’ limitation.” Ans. 6. Indeed, the
Examiner determines that Powers’ figures illustrate that the end of the
terminal conical portion 13 is not sharpened and does not cut or pierce, but
rather is wedged against the cap of the endodontic file as shown in Figure 3.
Ans. 6-7.
Appellant contends that Powers has a pointed first end and a spherical
cap on the file so that the angle of the file relative to the handle can be
changed. Br. 5. Even though Powers states that the file can be securely
retained when the cap is tightened, Appellant contends that Powers’ handle
has a pointed surface which, when tightened against the spherical surface of
the cap, will not securely retain the file. Br. 6. Appellant disagrees with the
Examiner’s characterization of Powers as not forming a positively sharp
point and ending in a small flat surface to be relatively blunt because, on
page 1, lines 95-97, Powers states that “the forward end of the reduced
portion 12 has a terminal conical portion 13.” Consequently, Appellant
contends that Powers cannot anticipate claims 1 and 11. Id.
A claim under examination is given its broadest reasonable
interpretation consistent with the underlying specification. In re Am. Acad.
of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). In the absence of
an express definition of a claim term in the specification or a clear
disclaimer of scope, the claim term is interpreted as broadly as the ordinary
usage of the term by one of ordinary skill in the art would permit. In re
ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). Where
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the Specification does not assign or suggest a particular definition to a claim
term, it is appropriate to consult a general dictionary definition of the term
for guidance in determining the ordinary and customary meaning thereof as
viewed by a person of ordinary skill in the art. See Comaper Corp. v. Antec,
Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010) citing Phillips v. AWH Corp., 415
F.3d 1303, 1322-23 (Fed. Cir. 2005).
Here, the Examiner finds that Powers’ terminal conical portion 13
satisfies the claim language of “a threaded blunt projection.” An ordinary
and customary meaning of the adjective “blunt” is “having a thick edge or
point : not sharp or keen.”3 Powers’ Figures 2 and 3 appear to show that at
the left end of the terminal conical portion 13, there is a more tapered section
that comes to a thick edge or point which is not sharp or keen. Thus, we
agree with the Examiner that Powers’ terminal conical portion 13 is blunt
and we sustain the Examiner’s rejection of claims 1, 2, 5, and 6 under 35
U.S.C. § 102(b) as anticipated by Powers.
With respect to claim 11’s limitation of “a means for securely
retaining a plastic cap of an endodontic file between the threaded
projection of said handle and the second end of the cap,” we note that
“the ‘broadest reasonable interpretation’ that an examiner may give
means-plus-function language is that statutorily mandated in
paragraph six.” In re Donaldson Co., Inc., 16 F.3d 1189, 1194-95
(Fed. Cir. 1994) (en banc). In other words, in order to meet a “means-

3 Webster’s Third New International Dictionary, Unabridged, Copyright
1993, Merriam-Webster, Incorporated, accessed at http://lionreference.
chadwyck.com/searchFulltext.do?id=3700478&idType=offset7divLevel=2&
queryId=../session/1314219934_4021&area=mwd&forward=refshelf&trail=
refshelf (last viewed on Aug. 24, 2011).
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plus-function” limitation, the prior art must (1) perform the identical
function recited in the means limitation and (2) perform that function
using the structure disclosed in the specification or an equivalent
structure. Cf. Carroll Touch Inc. v. Electro Mechanical Sys. Inc., 15
F.3d 1573, 1578 (Fed. Cir. 1994); Valmont Indus. Inc. v. Reinke Mfg.
Co., 983 F.2d 1039, 1042 (Fed. Cir. 1993); Johnston v. IVAC Corp.,
885 F.2d 1574, 1580 (Fed. Cir. 1989).
Appellant states that the Specification defines claim 11’s
“means for securely retaining a plastic cap of an endodontic file
between the threaded projection of said handle and the second end of
the cap,” in paragraph [0016], by the following sentence:
The cap 2 is then screwed closer to the first end 5 of the
elongated base 3 until the plastic cap 12 is securely retained in
the channel 6 between the second end 9 of the cap 2 and the
projection 4, as a result of the blunt projection 4, as seen in
FIG. 1, pushing against the blunt plastic cap, shown in FIG. 2
…. .
Br. 5-6.
Thus, the Specification defines the means as the blunt end of the
threaded projection 4. Powers’ terminal conical portion 13 meets
claim 11’s means plus function limitation because it (1) performs the
identical function of securely retaining a cap of an endodontic file
between the threaded projection of said handle and the second end of
the cap; and (2) performs that function by using the blunt end of the
elongated base, the blunt end being either a similar structure to the
structure disclosed in the specification or an equivalent structure.
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In view of the foregoing, we also sustain the Examiner’s
rejection of claims 11, 12, 15, and 16 under 35 U.S.C. § 102(b) as
anticipated by Powers.
Obviousness based upon Powers and Lovaas
With respect to claims 3, 4, 13, 14, 19, and 20, the Examiner
finds that Powers discloses the endodontic instrument being used with
an endodontic file (c) substantially as claimed, except that Powers
fails to explicitly disclose the plastic material of the file’s cap. The
Examiner concludes that the selection of common and widely used
plastic as the material for the cap would have been obvious to one of
ordinary skill in the art as a matter of routine in practicing the Powers’
invention. The Examiner also finds that to have formed an aperture in
the cap into which the file is inserted and secured would have been
obvious to one of ordinary skill in the art as a routine common
mechanical expedient. Ans. 5.
With respect to claims 7, 8, 18, and 20, the Examiner finds that
while Powers fails to disclose that the file moves away from and then
curves back toward a centerline which it eventually crosses, Lovaas
discloses any endodontic file shaped with a bowed configuration that
meets the claim language. The Examiner concludes that it would have
been obvious to one of ordinary skill in the art to use the bend
endodontic file of Lovaas in combination with the endodontic
instrument of Powers “in order that such files may be used on
nonlinear root canals with a device that allows for ease in handling
and angular adjustment of the file so that it may be used more readily
and with more satisfactory results.” Id.
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Appellant alleges that Appellant alone recognized the need to
stabilize the needle of the endodontic file and that “invention may
exist in the discovery of the cause of a defect in an existing machine
or process and applying a remedy therefor even though, after the
cause is understood, the remedy would be obvious.”4 Br. 7.
Appellant contends that “by itself, Appellant’s comprehension of the
need to stabilize the needle demonstrates that claims 3, 4, 7, 8, 13, 14,
17, and 18 are patentable and not obvious over Powers in view of
Lovaas.” Br. 9.
We cannot agree with Appellant that claims 3, 4, 7, 8, 13, 14, 17, and
18 are patentable simply because Appellant recognized the need to stabilize
the needle of an endodontic file and then applied a remedy to the problem.
Here, Appellant has not set forth any analysis as to how the facts of the
present case are similar to the facts in any of Ex parte Phair, Ex parte
Campbell, and any of the other cases cited on page 8 of the Appeal Brief.
Without knowing that the facts of the present case are similar enough to the
facts of the cited cases, we cannot determine whether the holdings in the
cited cases should be applied to the present case. In addition, Appellant has
supplied no evidence, in the form of affidavits, declarations, etc., which
supports the contention that Appellant was the only one who understood the
problem and came up with a solution for that problem. Without any analysis
as to the similarity of the facts of the present case and the cited cases and
without any supporting evidence that Appellant alone discovered the

4 Appellant cites to Ex parte Phair, 1 USPQ 133, 143 (Bd. App. 1929) and
Ex parte Campbell, 211 USPQ 575 (Bd. App. 1980) for this proposition.
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problem, we sustain the Examiner’s rejection of claims 3, 4, 7, 8, 13, 14, and
17-20 under 35 U.S.C. § 103(a) as unpatentable over Powers and Lavaas.
Obviousness based upon Powers and either Mosley or Perry
In the alternative, the Examiner finds that if one of ordinary skill in
the art would not find Powers’ terminal conical portion 13 to be blunt, then
Mosley and Perry each teach projections having blunt ends for holding
dental instruments in a secure manner, while still allowing for angular
adjustment in the same manner as Powers. Ans. 6. The Examiner concludes
that it would have been obvious to a person of ordinary skill in the art to
make the end of the terminal conical portion 13 of Powers be blunt as taught
by either Mosley or Perry in order to provide for a secure hold of a dental
instrument. Id.
Appellant again alleges that “Appellant’s comprehension of the need
to stabilize the needle demonstrates that the claims . . . are patentable and not
obvious.” Br. 9. Appellant also alleges that neither Mosley nor Perry
discloses a projection having a blunt end. Br. 9-10. More particularly,
Appellant alleges that because the end of Mosley’s hand piece contains
grooves to mate with projections on the spherical member of the tool, the
end of Mosley’s hand piece is not blunt. Br. 10. Appellant also alleges that
because the end of Perry’s handle is concave, it is not blunt. Id.
We disagree with Appellant that the claims are patentable because
Appellant comprehended of the need to stabilize the needle for the same
reasons as discussed supra. We also disagree with Appellant that the ends
of Mosley’s hand piece and Perry’s handle do not satisfy the claim limitation
of blunt. Both ends of Mosley’s hand piece and Perry’s handle have a thick
edge or point and are not sharp or keen and thus, satisfy the ordinary and
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customary meaning of the claim term blunt as discussed supra. Whether the
end of Mosley’s hand piece has grooves therein and the end of Perry’s
handle is concave does not have any bearing upon whether the ends are
blunt. With respect to claim 11, Powers’ terminal conical portion 13, as
modified to be blunt by the teachings of either Mosley or Perry, meets the
means-plus-function limitation because it (1) performs the identical function
of securely retaining a cap of an endodontic file between the threaded
projection of said handle and the second end of the cap; and (2) performs
that function using the blunt end of the elongated base, the blunt end being
either a similar structure to the structure disclosed in the specification or an
equivalent structure.
In view of the foregoing, we sustain the Examiner’s rejection of
claims 1, 2, 5, 6, 11, 12, 15, and 16.

DECISION
We affirm the Examiner’s rejection of: claims 1, 2, 5, 6, 11, 12, 15,
and 16 under 35 U.S.C. § 102(b) as anticipated by Powers; claims 3, 4, 7, 8,
13, 14, and 17-20 under 35 U.S.C. § 103(a) as unpatentable over Powers and
Lovaas; and claims 1, 2, 5, 6, 11, 12, 15, and 16 under 35 U.S.C. § 103(a) as
unpatentable over Powers and either one of Mosley or Perry.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

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