Ex Parte Pernot et al

Board of Patent Appeals and Interferences

Oct 23, 2011

10580373 (B.P.A.I. Oct. 23, 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.
10/580,373 05/23/2006 Jacques Pernot MICROM27 2074
7590 10/24/2011
Gary M Cohen
Strafford Buliding Number Three
125 Strafford Avenue, Suite 300
Wayne, PA 19087-3318
EXAMINER
WILSON, JOHN J
ART UNIT PAPER NUMBER
3732
MAIL DATE DELIVERY MODE
10/24/2011 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 JACQUES PERNOT and JEAN-CLAUDE BOINOT
____________________

Appeal 2009-012833
Application 10/580,373
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, JOHN C. KERINS, and FRED A.
SILVERBERG, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Jacques Pernot and Jean-Claude Boinot (Appellants) appeal under 35
U.S.C. § 134 from the Examiner’s rejection under 35 U.S.C. § 103(a) of
claims 33-42, 45, 46, 54-56, 58-61, and 63 as unpatentable over Uejima (US
5,902,105, iss. May 11, 1999) and Nakanishi (US 5,011,408, iss. Apr. 30,
1991); of claim 44 as unpatentable over Uejima, Nakanishi, and Hutchinson
(US 2,263,808, iss. Nov. 25, 1941); of claim 62 as unpatentable over
Uejima, Nakanishi, and Grubbs (US 5,575,647, iss. Nov. 19, 1996); and of
claim 64 as unpatentable over Uejima, Nakanishi, and Nemetz (US
6,149,430, iss. Nov. 21, 2000). The Examiner indicated that claims 47-53,
57, and 65 would be allowable if rewritten in independent form. Ans. 3.
Claims 1-32 and 43 have been canceled. We have jurisdiction under
35 U.S.C. § 6(b).

SUMMARY OF DECISION
We REVERSE.

THE INVENTION
The claims are directed to a dental handpiece having a body formed
from a single piece. Spec. 1. Claim 33, reproduced below, is illustrative of
the claimed subject matter.
33. A dental handpiece including mechanical components and
comprising a tool-holder assembly for attaching and for
rotationally driving a dental instrument about a drive axis, and
an assembly for transmitting rotational movement to the tool-
holder assembly;
wherein the mechanical components are mounted in
interior portions of a body having a head and a handle, wherein
the body is formed as a unitary, electrically insulating envelope
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including one part which serves as the handle and another part
which constitutes the head;
wherein the head includes a first housing having at least
one opening dimensioned to permit component parts of the
head to be introduced into and assembled within interior
portions of the first housing;
wherein the handle includes a second, longitudinal
housing having a longitudinal axis, and an opening at an end of
the handle opposite to the head which is dimensioned to permit
internal component parts of the handle to be introduced into and
assembled within interior portions of the second housing, and a
lateral opening communicating with the first housing;
wherein electrical current is conducted from a casing
associated with the end of the handle opposite to the head, for
connection to a drive motor, to the lateral opening
communicating with the first housing by internal component
parts of the handle; and
wherein the head includes a barrel pinion assembled for
rotation about the drive axis, wherein the barrel pinion includes
teeth operatively coupled with teeth of an output pinion
associated with the internal component parts of the handle, and
wherein the barrel pinion is electrically conductive and ensures
an electrical connection between the internal component parts
of the handle and the dental instrument coupled with the tool-
holder assembly.

OPINION
Appellants’ independent claim, and thus each of the claims depending
therefrom, requires a handpiece comprising “a body having a head and a
handle, wherein the body is formed as a unitary, electrically insulating
envelope including one part which serves as the handle and another part
which constitutes the head” and “wherein electrical current is conducted
from a casing associated with the end of the handle opposite to the head, for
connection to a drive motor, to the lateral opening communicating with the
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first housing by internal component parts of the handle.” An issue presented
in this appeal is whether Uejima and Nakanishi would have rendered
obvious such a handpiece. See App. Br. 20-21; Reply Br. 7, 8-10.
The Examiner’s rejection relies in part on a finding that Uejima’s
shank module 13 and head 14 form an electrically insulated body and head.
Ans. 3. This finding is not consistent with Uejima’s disclosure.
Specifically, Uejima discloses that housing 13c of the shank module
13 is made of an electrically conductive material in order to form part of the
conduction circuit from terminal 31 to the cutting tool 15. Uejima, col. 5, ll.
44-67; col. 6, ll. 21-24. According to Uejima, the surface of the housing 13c
is provided with an insulating film so that, even if the handpiece 11 makes
contact with tissue of the patient during root canal length measurement, the
measurement circuit is not adversely affected. Uejima, col. 6, ll. 24-26, 39-
43. While the film may form an electrically insulating envelope, the
electrically conductive housing 13c, and hence the shank module 13 (on
which the Examiner reads the claimed electrically insulating “body”), cannot
be considered to be a body formed as an electrically insulating envelope, as
called for in claim 33. Further, to modify the shank module 13 by making
the housing 13c of an electrically insulating material would interrupt the
electrical circuit described by Uejima. Thus, even assuming it would have
been obvious, in view of the teachings of Nakanishi, to make the shank
module 13 and head 14 as a unitary body, this would not result in the
claimed invention.
We appreciate that Uejima discloses a second, albeit seemingly less
preferred, embodiment in which the conduction circuit is made without
passing through the handpiece 11, but instead by passing through an external
lead extended along the handpiece 11. Uejima, col. 12, ll. 60-65; fig. 11. In
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such an embodiment, the housing 13c of the shank module would not form
part of the electrical circuit, and thus need not be made of electrically
conducting material. However, such an embodiment would not satisfy the
further limitation in claim 33 “wherein electrical current is conducted from a
casing associated with the end of the handle opposite to the head, for
connection to a drive motor, to the lateral opening communicating with the
first housing by internal component parts of the handle.”
For the reasons discussed above, we conclude that the Examiner has
not established a prima facie case that the combined teachings of Uejima and
Nakanishi would have rendered obvious the subject matter of claim 33, or of
its dependent claims. We reverse the rejection of claims 33-42, 45, 46, 54-
56, 58-61, and 63 as unpatentable over Uejima and Nakanishi.
In rejecting the remaining dependent claims, the Examiner has not
relied on any teaching in Hutchinson, Grubbs, or Nemetz which would make
up for the deficiency in the combination of Uejima and Nakanishi discussed
above. Thus, we also reverse the rejections of claim 44 as unpatentable over
Uejima, Nakanishi, and Hutchinson; of claim 62 as unpatentable over
Uejima, Nakanishi, and Grubbs; and of claim 64 as unpatentable over
Uejima, Nakanishi, and Nemetz.

DECISION
The Examiner’s decision is reversed.

REVERSED

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