Ex Parte Maev et al

Patent Trial and Appeal Board

Apr 15, 2016

12708741 (P.T.A.B. Apr. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121708,741 02/19/2010
26096 7590 04/19/2016
CARLSON, GASKEY & OLDS, P,C
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
FIRST NAMED INVENTOR
Roman Gr. Maev
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.
67232-00SPUS 1 5136
EXAMINER
APONTE, MIRA YDA ARLENE
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
04/19/2016 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):
ptodocket@cgolaw.com
cgolaw@yahoo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROMAN GR. MAEV, EUGENE V. MALY ARENKO
and ALEXANDER IL YUTOVICH
Appeal2014-002592
Application 12/708,741
Technology Center 3700
Before STEFAN STAICOVICI, WILLIAM A. CAPP, and
LEE L. STEPINA, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 2-15. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal2014-002592
Application 12/708,741
THE INVENTION
Appellants' invention relates to an ultrasonic imaging device for
dental applications. Spec. i-f 2. Claim 2, reproduced below, is illustrative of
the subject matter on appeal.
2. A method of evaluating a tooth structure, comprising:
emitting a first signal from a first position;
emitting a second signal from a second position that is
different than the first position; and
determining an internal geometry of a tooth structure based
at least on a reflection of the first signal and a reflection of the
second signal.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Adams
Maev
Nields
us 4,762,002
US 2007/0037125 Al
US 2009/0143674 Al
The following rejections are before us for review: 1
Aug. 9, 1988
Feb. 15,2007
June 4, 2009
1. Claims 4, 5, and 7 are rejected under 35 U.S.C. § 112, second
paragraph (pre-AIA), as being indefinite for failure to particularly point out
and distinctly claim the subject matter that the inventors regard as their
invention.
2. Claims 2-5, 8-11, 13 and 14 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Maev.2
1 A rejection of claim 2 under 35 U.S.C. § 101 has been withdrawn. Final
Action 3; April 5, 2013, Advisory Action.
2 Although claim 7 is not presented in the heading of this rejection, because
the Examiner addresses claim 7 in the body of the rejection, we consider the
Examiner's omission as a mere typographical error.
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Application 12/708,741
3. Claims 6 and 15 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Maev and Adams.
4. Claim 12 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Maev and Nields
OPINION
Indefiniteness of Claims 4, 5, and 7
Claim 4
The Examiner states that it is unclear whether Appellants' use of
"tooth normal" in claim 4 refers to a place on the tooth called normal or
refers to the axis that extends away from the tooth in a direction normal to
the tooth surface. Final Action 3. For purposes of the art rejection, the
Examiner assumes that "tooth normal" means "the axis that extends away
from the tooth in a direction normal from the tooth surface." Id.
In response, Appellants state that the Examiner's assumed meaning is
correct. Appeal Br. 7. The Specification refers to a reference direction R
that is "normal" to the tooth surface. Spec. 30. We think that person of
ordinary skill in the art would understand "tooth normal" to have the
meaning assumed by the Examiner and agreed to by Appellants.
We do not sustain the indefiniteness rejection of claim 4.
Claim 5 and 7
The Examiner is uncertain as to the meaning of "determining
comprises determining . .. "in claims 5 and 7. Final Action 4. For purposes
of the rejection, the Examiner interprets the phrase as "the step of
determiningfurther comprises determining ... " Id.
In response, Appellants state that the Examiner's assumed meaning is
correct. Appeal Br. 7. In claim 5, the phrase "determining comprises
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Appeal2014-002592
Application 12/708,741
determining . .. "is preceded by the definite article "the." Claims App. \Ve
think that a person of ordinary skill in the art would understand that "the
determining" refers to the claim language "determining an internal geometry
of a tooth structure" in claim 2 as an antecedent basis for "the determining"
in claims 5 and 7. Claims App.
With that understanding in mind, we agree with Appellants that the
claim is definite and we thus do not sustain the indefiniteness rejection of
claims 5 and 7.
Unpatentability of Claims 2-5, 8-11, 13, and 14
Appellants argue that Maev fails to disclose emitting a second signal
from a second position that is different than the first position. Appeal Br. 4.
Appellants contend that Maev shows only one position from which signals
are emitted. Id.
In response, the Examiner states, in essence, that the "second
position" limitation can be satisfied by emitting the second signal from the
same location as the location of emitting the first signal. Ans. 4. According
to the Examiner, rotating or tilting the source of signal emission can be
considered to be a different position in relation to a predefined reference. Id.
In addition, the Examiner finds that, although Maev does not explicitly
disclose emitting a second signal from a second position, the emission of a
second signal is entitled to no patentable significance as it merely entails a
duplication of steps. Final Action 6, citing In re Harza, 274 F.2d 669
(CCP A 1960).
In reply, Appellants point out that, although Maev discloses that its
ultrasound probe may be tilted, it specifically recites that the "perpendicular
measurement is used." Reply Br. 2. Thus, according to Appellants, Maev
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Appeal2014-002592
Application 12/708,741
does not disclose determining an internal geometry of a tooth structure based
on a reflection of a first signal and second signal as claimed. Id. We agree.
The claimed invention entails more than the mere duplication of either
parts or steps. It entails combining two signals taken from two different
positions and integrating the information from the two signals into a
determination of the internal geometry of a tooth structure. This is not
taught or suggested by Maev and the Examiner has provided no analysis or
articulated reasoning by which a person of ordinary skill in the art would
have found it obvious to modify Maev to achieve the claimed invention. See
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).3
In view of the foregoing, we do not sustain the unpatentability
rejection of claim 2, neither do we sustain the unpatentability rejection of
claims 3-5, 8-11, 13 and 14 that depend therefrom.
Unpatentability of Claims 6, 12, and 15
Claims 6; 12; and 15 depend; directly or indirectly; from claim 2.
Claims App. The Examiner relies on Maev for the same disclosures relied
on in the rejection of claim 2 and then relies on either Adams or Nields as
prior art for the various dependent limitations in claim 6, 12, and 15. Final
Action 7-8. However, the deficiencies that we have noted above with
respect to Maev with respect to claim 2 are not cured by either Adams or
Nields. Consequently, we do not sustain the rejection of claims 6, 12, or 15.
3 "[R ]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness." Id. quoting In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006).
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Application 12/708,741
DECISION
The decision of the Examiner to reject claims 2-15 is REVERSED.
REVERSED
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