10593701 (B.P.A.I. Jul. 26, 2012)

Ex Parte Lui et al

Board of Patent Appeals and InterferencesJul 26, 2012

10593701 (B.P.A.I. Jul. 26, 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. 10/593,701 09/19/2006 Wai-Kuen Lui 865-B-PCT-US 3093 7590 07/26/2012 Albert Wai-Kit Chan Law Offices of Albert Wai-Kit Chan World Plaza Suite 604 141-07 20th Avenue Whitestone, NY 11357 EXAMINER MAI, HAO D ART UNIT PAPER NUMBER 3732 MAIL DATE DELIVERY MODE 07/26/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte WAI-KUEN LUI and WILLIAM WAI-SHING LUI ____________________ Appeal 2010-003290 Application 10/593,701 Technology Center 3700 ____________________ Before: JENNIFER D. BAHR, WILLIAM V. SAINDON, and MICHAEL J. FITZPATRICK, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-003290 Application 10/593,701 2 STATEMENT OF THE CASE Wai-Kuen Lui and William Wai-Shing Lui (Appellants) appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 22 and 24- 41. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. The Claimed Subject Matter Claim 22, reproduced below, is illustrative of the claimed subject matter. 22. A dental hygiene apparatus, comprising: (a) an elongated handling means having a longitudinal axis; (b) a teeth-cleaning means comprising arms that secure one or more lengths of interdental material, wherein the interdental material is oriented longitudinally as related to the longitudinal axis of the handling means; and (c) a flexible means between the teeth-cleaning means and the handling means, wherein the flexible means is integral with the teeth-cleaning means and the handling means in that the flexible means, the teeth-cleaning means and the handling means are of one construction, and the flexible means is pliable so that the interdental material can be brought laterally to either side of the longitudinal axis of the handling means to have an about 90 degrees angle between the interdental material and the longitudinal axis of the handling means. Evidence The Examiner relied on the following evidence in rejecting the claims on appeal: Maloney Gordon US 3,533,420 US 5,184,719 Oct. 13, 1970 Feb. 9, 1993 Chodorow US 2005/0217692 A1 Oct. 6, 2005 Appeal 2010-003290 Application 10/593,701 3 Rejections The Examiner rejected claims 22, 24-27, and 31-38 under 35 U.S.C. § 103(a) as unpatentable over Maloney and Chodorow. The Examiner rejected claims 28-30 and 39-41 under 35 U.S.C. § 103(a) as unpatentable over Maloney, Chodorow, and Gordon. OPINION The Examiner found that Maloney describes the dental hygiene apparatus of claims 22 and 31 with the exception of the flexible means (hinge pin 66 and hinge 64), teeth-cleaning means (head 60), and handling means (handle 62)1 being “of one construction, i.e. monolithic.” Ans. 4. The Examiner determined it would have been obvious to modify Maloney by “substituting spring hinge 64/66 with an integrated or monolithic living hinge as taught by Chodorow” because “[s]uch substitution would produce the same and/or predictable results” and “would allow for a more cost effective manufacture of the device since less part and/or materials are needed.” Id. Appellants argue that Chodorow allows movement to only one side, not to either side of the handling means as called for in claims 22 and 31, due to the construction and operation of the hinge, and that modifying Maloney by replacing Maloney’s spring hinge 64/66 with Chodorow’s hinge would not produce an apparatus that permits bending the head portion to both sides of the handle as required in the claims. App. Br. 6; Reply Br. 4. 1 Although the Examiner’s rejection refers to a “handling means 10” and “teeth-cleaning means 12” of Maloney (Ans. 3), the handle and head are labeled with the reference numerals 62 and 60, respectively, in the embodiment of Maloney’s dental floss holder with the hinge 64 and hinge pin 66 relied upon by the Examiner. Appeal 2010-003290 Application 10/593,701 4 We agree with Appellants. We find no support in Chodorow for the Examiner’s finding that Chodorow’s head “is capable of bending to either side via living hinge 22” (Ans. 7). Chodorow only describes movement of the head portion to one side of the handle, i.e., in the direction in which a projection 25 and its hook 25A on the handle engages with a catch 26 and its engagement edge 27 on the head to fix the head in its angle position relative to the handle. Chodorow, para. [0060]; figs. 7A-7D (showing movement of the head portion in the counter- clockwise direction relative to the handle). Chodorow does not describe any movement of the head portion in the opposite direction (i.e., clockwise as the device is depicted in figures 7A-7D), and the Examiner has not pointed to any teachings in Chodorow, or proffered other evidence or technical reasoning, to establish a sound basis for the belief that Chodorow’s living hinge 22 necessarily is constructed to permit any movement in that direction, much less movement to the degree required in claims 22 and 31. More specifically, claims 22 and 31 require that the flexible means be “pliable,” which is defined in Appellants’ Specification to mean that “the apparatus is flexible and receptive to change such that it is capable of being flex adjusted (bent) numerous times without breaking and will readily adhere to a new configuration after flex adjustment” (Spec., p. 13, ll. 14-19), “so that the interdental material can be brought laterally to either side of the longitudinal axis of the handling means [or handle] to have an about 90 degrees angle between the interdental material and the longitudinal axis of the handling means [or handle].” Even assuming Chodorow’s living hinge permits some movement of the head in the direction opposite the latching direction (i.e., in the clockwise direction as depicted in figures 7A-7D), the Examiner has not established a sound basis to believe that Chodorow’s Appeal 2010-003290 Application 10/593,701 5 living hinge permits movement of the head in that direction to an angle of about 90 degrees even one time, much less numerous times, without breaking. Thus, we agree with Appellants that replacing Maloney’s hinge pin 66 and hinge 64 with Chodorow’s living hinge 22 as proposed by the Examiner would not produce the invention recited in claims 22 and 31. For the above reasons, we reverse the Examiner’s rejection of claims 22 and 31 and their dependent claims 24-27 and 32-38 as unpatentable over Maloney and Chodorow. We also reverse the rejection of claims 28-30 and 39-41 as unpatentable over Maloney, Chodorow, and Gordon, which suffers from the same deficiency. DECISION The Examiner’s decision rejecting claims 22 and 24-41 is reversed. REVERSED hh