Ex Parte Lowe et al

Patent Trial and Appeal Board

Feb 24, 2017

11773849 (P.T.A.B. Feb. 24, 2017)

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.
11/773,849 07/05/2007 Michael Kenneth Lowe OA:006001 2105
11132 7590 02/28/2017
Rmilware Rr Valnir
EXAMINER
Three Riverway, Suite 950
Houston, TX 77056
NELSON, MATTHEW M
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
02/28/2017 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):
patent @ boulwarevaloir.com
nseigel @ boulwarevaloir.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL KENNETH LOWE, CHRISTOPHER
LYLE WASDEN, and WILSON BRENT TARVER
Appeal 2013-005563
Application 11/773,8491
Technology Center 3700
Before PATRICK R. SCANLON, MICHELLE R. OSINSKI, and
BRADLEY B. BAYAT, Administrative Patent Judges.
SCANLON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’
decision rejecting claims 30-43. Claims 1—29 are cancelled. An oral
hearing was conducted on October 17, 2016. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify Ortho Accel Technologies Inc. as the real party in
interest. Appeal Br. 3.
Appeal 2013-005563
Application 11/773,849
CLAIMED SUBJECT MATTER
Appellants’ claimed invention relates to “systems and methods for
treating malocclusion.” Spec. 1. Claims 30 and 40, reproduced below, are
illustrative of the claimed subject matter.
30) An orthodontic device, consisting of:
g. an extraoral vibratory source;
h. an extraoral processor that controls said
extraoral vibratory source;
i. a power source that drives said vibratory
source;
j. an intraoral attachment consisting of a bite
plate allowing for contact with an occlusal surface
and at least one of lingual and buccal surfaces of a
patient's teeth, wherein a patient biting on said bite
plate holds said device in place during use;
k. wherein the extraoral vibratory source is
coupled to the intraoral attachment;
l. wherein said orthodontic device is
hermetically sealed and can vibrate at a frequency
of 0.1^100 Hz.
Appeal Br. i, Claims App. (emphases omitted).2
40) A method for treating occlusion, comprising:
a. providing an orthodontic device
according to claim 30 wherein the orthodontic
device is held in place during usage by said patient
biting on said intraoral attachment;
b. biting said intraoral attachment; and
2 We note that the Claims Appendix identifies the elements of claim 30 with
the letters g.-l. rather than the letters a.-f.
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Application 11/773,849
c. vibrating said orthodontic device for a
period of time at a frequency of 0.1 400 Hz.
Appeal Br. ii, Claims App.
Independent claim 31 is directed to an orthodontic device “consisting
of’ elements similar to the elements of claim 30. Claim 39 is directed to
method for treating occlusion comprising, inter alia, “providing an
orthodontic device according to claim 31.”
REFERENCES
The Examiner relies upon the following prior art references:3
Kurz US 4,348,178 Sept. 7, 1982
Streetman US 6,158,439 Dec. 12, 2000
Dworkin US 6,613,001 B1 Sept. 2, 2003
Mao US 6,832,912 B2 Dec. 21,2004
Rahman US 2006/0166157 A1 July 27, 2006
Dworzan US 7,409,741 B2 Aug. 12, 2008
Houman JP 2001340412 A Dec. 11,2001
Yamashiro JP 2004-321498 Nov. 18, 2004
REJECTIONS
The following rejections are before us on appeal:
I. Claims 30-32, 34, and 36-43 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Yamashiro, Streetman, Mao, and Dworzan
II. Claims 31—34 and 39 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Yamashiro, Streetman, Mao, Dworzan, and Rahman.
III. Claims 31—34 and 39 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Yamashiro, Streetman, Mao, Dworzan, and Dworkin.
3 References to Yamashiro and Houman are to the respective English-
language translations of record.
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Application 11/773,849
IV. Claim 35 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Yamashiro, Streetman, Mao, Dworzan, and Kurz.
V. Claims 30-32, 34, and 36-43 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Houman, Mao, Dworzan, and Yamashiro.
VI. Claims 31,35, and 39 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Houman, Mao, Dworzan, Yamashiro, and Kurz.
VII. Claims 31—34 and 39 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Houman, Mao, Dworzan, Yamashiro, and Rahman.
VIII. Claims 31—34 and 39 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Houman, Mao, Dworzan, Yamashiro, and Dworkin.
ANALYSIS
Rejections I—IV
Each of these four grounds of rejections relies on the Examiner’s
finding that Yamashiro discloses an orthodontic device consisting of “a
vibratory source 23 (Drawing 3; paragraph 0029); a power source
(paragraph 0036) and an intraoral attachment 21 consisting of a bite plate
allowing for contact with an occlusal surface.”4 Non-Final Act. 3^4.
Independent claims 30 and 31 both recite an orthodontic device
consisting of certain elements. Independent claims 30 and 31 also both
4 Although referring to “an intraoral attachment 21 consisting of a bite
plate,” it appears that the Examiner intended to indicate that Yamashiro’s
tray 22, rather than constituent 21, corresponds to the recited intraoral
attachment consisting of a bite plate. See, e.g., Non-Final Act. 5 (stating,
with respect to biting the intraoral attachment, that one of ordinary skill in
the art would understand a tray put into a user’s mouth would touch the
user’s teeth). In the event that the Examiner does find that Yamashiro’s
constituent 21 corresponds to the recited intraoral attachment, there is
insufficient support to establish that constituent 21 consists of a bite plate.
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Application 11/773,849
recite that one of these elements—an intraoral attachment—itself consists of
a bite plate. It is well established that “[u]se of the transitional phrase
‘consisting of’ to set off a patent claim element creates a very strong
presumption that that claim element is ‘closed’ and therefore ‘exclude[s] any
elements, steps, or ingredients not specified in the claim.’” Multilayer
Stretch Cling Film Holdings, Inc. v. Berry Plastics Corp., 831 F.3d 1350,
1358 (Fed. Cir. 2016) (quoting AFGIndus., Inc. v. CardinalIG Co., Inc.,
239 F.3d 1239, 1245 (Fed. Cir. 2001)); see also Vehicular Techs. Corp. v.
Titan WheelInt% Inc., 212 F.3d 1377, 1382-83 (Fed. Cir. 2000) (“The
phrase ‘consisting of’ is a term of art in patent law signifying restriction and
exclusion, while, in contrast, the term ‘comprising’ indicates an open-ended
construction. In simple terms, a drafter uses the phrase ‘consisting of to
mean ‘I claim what follows and nothing else.’” (citations omitted)).
The phrase “consisting of,” however, is not a term of absolute
exclusion. For example, the phrase “does not limit aspects unrelated to the
invention.” Norian Corp. v. Stryker Corp., 363 F.3d 1321, 1331 (Fed. Cir.
2004). The claim in question in Norian recited a dental repair kit
“consisting of’ specified chemicals. The kit accused of infringing the claim
included the same specified chemicals plus a spatula for mixing them. The
court ruled that “[infringement is not avoided by the presence of a spatula,
for the spatula has no interaction with the chemicals, and is irrelevant to the
invention.” Norian, 363 F.3d at 1332.
Yamashiro is directed to “a device for improving an oral
environment.” Yamashiro, Abstract. Device 10 of Figure 1 includes tray 12
filled with constituent 11, vibrator 13 for vibrating the tray, and vibration
source 14 for supplying vibrations to the vibrator. Id. 122. In another
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embodiment, shown in Figure 3, device 20 includes tray 22 filled with
constituent 21, and vibrator 23 for vibrating the tray. Id. 129. The
constituent (also referred to as a composition (see id. at Abstract)) is
described as being a germicide, an anti-inflammatory agent, a tooth paste
agent, a liquid dentifrice, or the like. Id. Tflf 6, 14, 15.
As such, Yamashiro discloses an element—the constituent—that is
not recited in either one of claims 30 and 31, or any of the claims depending
therefrom. Unlike the spatula in the Norian case, the constituent is related to
Yamashiro’s invention in that it plays a key role in cleaning the mouth. See,
e.g., id. 11 (“This invention is carrying out localization of the constituent
containing a germicide, an anti-inflammatory agent, etc. . . . and relates to
the device for mouth environmental improvements.”). Thus, we determine
that the Examiner erred in finding that Yamashiro discloses an orthodontic
device consisting of a vibratory source, a power source, and an intraoral
attachment consisting of a bite plate.
Furthermore, the Examiner does not explain adequately why one of
ordinary skill in the art would have been led to modify Yamashiro to omit
the constituent; the Examiner does not even conclude that a skilled artisan
would have made such a modification. Accordingly, the combination of
references cited by the Examiner does not result in a device “consisting of’
only the elements recited in claims 30—38. The rejections of claim 39 and
40, which recite methods of treating occlusion including the step of
providing an orthodontic device according to claim 31 and 30, respectively,
rely on the same erroneous finding regarding Yamashiro’s disclosure.
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For the above reasons, we do not sustain the rejections of claims 30-
43 as unpatentable over Yamashiro, Streetman, Mao, and Dworzan or these
four references further combined with Rahman or Dworkin or Kurz.
Rejection V—VIII
Each of these four grounds of rejections relies on the Examiner’s
finding that Houman discloses an orthodontic device consisting of
an extraoral vibratory source (element 35—42 and 44 in figure 4;
alternatively, elements 35—37, 71, 72 and 80 in figure 10); a
power source/battery (element 43 in figure 4; alternatively,
elements 83 and 84 in figure 10); and an intraoral attachment
(combination of elements 3 and 4) consisting of a bite plate
allowing for contact with an occlusal surface.
Non-Final Act. 10.
Houman is directed to a device for preventing and treating periodontal
disease. Houman, Abstract. Device 1 includes tremulor 2, medium 3, and
mouthpiece 4. Id. 110. Medium 3 is a cylindrical structure that “plays the
role which tells vibration generated with the tremulor 2 to the mouthpiece
4.”5 Id. 113.
As noted above, the Examiner finds that the intraoral attachment of
claims 30 and 31 is met by the combination of medium 3 and mouthpiece 4.
Non-Final Act. 10. Both claims, however, recite the intraoral attachment as
consisting of a bite plate. The claimed intraoral attachment is thus limited to
a bite plate. The combination of Houman’s medium 3 and mouthpiece 4 is
more than a bite plate. Although mouthpiece 4 can be considered a bite
plate, medium 3 is a distinct structural element disclosed as transferring
5 Taken in context, it appears that “tells vibration” is used in the Houman
translation to mean “transfers vibration.”
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Application 11/773,849
vibration from tremulor 2 to mouthpiece 4 and is not a bite plate or a portion
of a bite plate.
Medium 3 plays an integral role in Houman’s device and is not
unrelated or irrelevant to the invention. Furthermore, the Examiner has not
provided sufficient rationale suggesting that one of ordinary skill in the art
would have been caused to modify Houman by omitting medium 3. Thus,
we conclude that the Examiner erred in finding that Houman discloses an
intraoral attachment consisting of a bite plate, and the combination of
references relied on by the Examiner includes an element—medium 3—
excluded from the claims.
In view of the above, we do not sustain the rejections of claims 30-43
as unpatentable over Houman, Mao, Dworzan, and Yamashiro or these four
references further combined with Rahman or Dworkin or Kurz.
DECISION
We reverse the decision of the Examiner rejecting claims 30-43.
REVERSED
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