Ex Parte Pond

Board of Patent Appeals and Interferences

Aug 14, 2009

10820931 (B.P.A.I. Aug. 14, 2009)

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.
10/820,931 04/08/2004 Gary J. Pond 4285.18554 8749
26308 7590 08/14/2009
RYAN KROMHOLZ & MANION, S.C.
POST OFFICE BOX 26618
MILWAUKEE, WI 53226
EXAMINER
SINGH, SUNIL K
ART UNIT PAPER NUMBER
3732
MAIL DATE DELIVERY MODE
08/14/2009 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 GARY J. POND
____________

Appeal 2009-003906
Application 10/820,931
Technology Center 3700
____________

Decided: August 14, 2009
____________

Before DEMETRA J. MILLS, LORA M. GREEN, and
RICHARD M. LEBOVITZ, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on the Patent Applicant’s appeal from the Patent
Examiner’s rejection of claims 1-5 and 9. Jurisdiction for this appeal is
under 35 U.S.C. § 6(b). We affirm.

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STATEMENT OF THE CASE
The claims are to an adaptor to connect an irrigation tip to an
ultrasonic dental scaler which is used for cleaning and treating teeth (Spec.
1:3-5). According to the Specification, the adaptor “provides means to use
the scaler handpiece as an irrigation device, without ultrasonic energy being
transferred to the irrigation tip from the ultrasonic handpiece.” (Spec. 3:3-
6).
Claims 1-5 and 9 are appealed and stand rejected by the Examiner as
follows:
1. Claims 1-5 and 9 under 35 U.S.C. § 112, second paragraph (Ans.
3);
2. Claim 1-5 and 9 under 35 U.S.C. § 112, first paragraph (Ans. 3);
3. Claims 1, 3-5, and 9 under 35 U.S.C. § 102(b) as anticipated by
Feine (U.S. Pat. No. 6,164,968, Dec. 26, 2000) (Ans. 3-4); and
4. Claim 2 under 35 U.S.C. § 103(a) as obvious in view of Feine and
Sharp (U.S. Pat. No. 6,086,369, Jul. 11, 2000) (Ans. 4).
Claim 1 is representative and reads as follows:
1. An adaptor for coupling a dental irrigation tip to an ultrasonic dental
scaler handpiece, said dental scaler handpiece including ultrasonic vibration
means, said dental handpiece being connectable to a power source for
actuating said ultrasonic vibration means, said irrigation tip including a
through bore, said dental handpiece including a conduit in fluid
communication with a fluid source and in fluid communication with said
adaptor, said adaptor comprising:
an elongated body having unitary, one-piece construction and having
a distal end for connection to said irrigation tip and a proximal end for
connection to said dental handpiece, said proximal end securely matingley
connected said handpiece, said distal end securely matingly connected to
said irrigation tip; and
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a through bore located within said elongated body, said through bore
in fluid communication with said conduit of said dental handpiece and said
through bore of said irrigation tip.

INDEFINITENESS REJECTION
Claims 1-5 and 9 stand rejected under 35 U.S.C. § 112, second
paragraph, as indefinite for failing to particularly point out and distinctly
claim the subject matter which Applicant regards as the invention (Ans. 3).

Principles of Law
“The definiteness inquiry [under 35 U.S.C. § 112, second paragraph]
focuses on whether those skilled in the art would understand the scope of the
claim when the claim is read in light of the rest of the specification.” Union
Pacific Resources Co. v. Chesapeake Energy Corp., 236 F.3d 684, 692 (Fed.
Cir. 2001).
Statement of the Issues
Claim 1
Claim 1 is to an adaptor for coupling a dental irrigation tip to an
ultrasonic dental scaler handpiece. The claim preamble recites specific
features of the irrigation tip and handpiece. The body of the claim recites
that the adaptor has “an elongated body having unitary, one-piece
construction”; that its distal end is “for connection to said irrigation tip”; and
that its proximal end is “for connection to said dental handpiece.” Following
this, the claim recites:
said proximal end securely matingley connected said handpiece,
said distal end securely matingly connected to said irrigation
tip.
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The Examiner finds that the claim is directed to an adaptor, but also
recites that its proximal and distal ends are “connected” to a dental scaler
handpiece and irrigation tip, respectively. (Ans. 3.) The Examiner contends
that it is therefore “unclear whether the handpiece and tip are intended to be
positively claimed.” (Id.)
Appellant contends that the claim is directed only to the adaptor and
that preamble of the claim reciting the irrigation tip and dental scaler
handpiece “is used to establish the relationship between the adaptor, the
handpiece, and the tip.” (App. Br. 6)
The issue is whether Appellant has established that the Examiner
erred in finding claim 1 indefinite because it is unclear whether the
handpiece and tip are claimed in combination with the adapter.

Claim 9
Claim 9 was objected also by the Examiner under 37 C.F.R. § 1.75(b)1
as not being substantially different from claim 1 and therefore “unduly
multiplied.” The Examiner contends that an objection under 37 C.F.R.
§ 1.75 can be petitioned, but not appealed.
Appellant contends that claim 9 is not unduly multiplicative because
“claim 9 recites that the adaptor is disposable while claim 1 does not require
such a limitation.” (App. Br. 5.) “As such, claims 1 and 9 do indeed claim
different subject matter, and claim 9 should not be objected to over claim 1.”
(Id.)

1 “More than one claim may be presented provided they differ substantially
from each other and are not unduly multiplied.”

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Appellant also asserts that “issue with respect to claim 9 is an issue of
patentability, as the Examiner is attempting to limit what the Applicant
believes that he is entitled.” (Reply Br. 2.) Therefore, Appellant contends
that the “objection to claim 9 is an appealable matter properly put forth in
the present appeal.” (Id.)
Analysis
Claim 1
Claim 1 is directed to an “adaptor” recited in the claim preamble to be
for connecting a dental irrigation tip to an ultrasonic dental scaler handpiece.
The body of the claim, however, recites that the adaptor ends are
“connected” to the tip and handpiece. Accordingly, we conclude that the
Examiner is correct that it is unclear whether the claim is to the adaptor,
alone, or the adaptor combined with the irrigation tip and scaler handpiece.
The Specification describes both configurations (Spec. 6) and therefore does
not elucidate the claim language. When a claim is susceptible to two or
more plausible claim interpretations, the claim is indefinite under § 112,
second paragraph. Ex parte Miyazaki (No. 2007-3300, BPAI, Nov. 19,
2008). The rejection of claim 1 is therefore affirmed. As claim 9 recites the
same language, we affirm the rejection of claim 9 for the same reasons.

Claim 9
In objecting to claim 9 for undue multiplicity, the Examiner did not
follow the correct procedure as set forth in the Manual of Patent Examining
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Procedure. See M.P.E.P. § 2173.05(n) (Rev. July 2008).2 Thus, the claim is
not properly before us on appeal.

WRITTEN DESCRIPTION REJECTION
Claims 1-5 and 9 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement
(Ans. 3).
Statement of Issue
The Examiner contends that the claimed limitation in independent
claims 1, 5, and 9 of an adaptor comprising an elongated body “having
unitary, one-piece construction” was not described in the Specification in
such a way as to reasonably convey to a person of ordinary skill in the art
that the inventor had possession of the claimed invention (Ans. 3).
Appellant contends that the claimed feature of “unitary, one-piece
construction” is supported by Figures 4 and 7-11 (App. Br. 6; Reply Br. 2).

Principles of Law
The words used in the claims need not appear verbatim in the
Specification in order to satisfy the written description requirement; what is
needed is a description that shows possession of what is later claimed to a
person of ordinary skill in the art. Purdue Pharma L.P. v. Faulding, Inc.,

2 “If an undue multiplicity rejection under 35 U.S.C. 112, second paragraph,
is appropriate, the examiner should contact applicant by telephone
explaining that the claims are unduly multiplied and will be rejected under
35 U.S.C. 112, second paragraph . . . This procedure [as described in §
2173.05(n)] preserves applicant’s right to have the rejection on undue
multiplicity reviewed by the Board of Patent Appeals and Interferences.”
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230 F.3d 1320, 1323 (Fed. Cir. 2000). “[U]nder proper circumstances,
drawings alone may provide a ‘written description’ of an invention as
required by § 112.” Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1565 (Fed.
Cir. 1991).
Analysis
Figures 4 and 7-11 of the Specification show an adaptor 120 for
connecting an irrigation tip to a dental scaler handpiece. Figure 4 is
representative and is reproduced below:

Figure 4 shows adaptor 120 with through bore 133 (shown in
phantom) and exit portal 134 (Spec. 7).
We interpret the claimed “elongated body having unitary, one-piece
construction and having a distal end for connection to said irrigation tip and
a proximal end for connection to said dental handpiece” to cover an adapter
body with its connecting distal and proximal ends. Figure 4 shows an
elongated body portion comprising distal and proximal ends for connecting
the adaptor to the tip and handpiece, respectively. The ends of the adaptor
have a larger outer diameter than the body portion between them. Thus, the
claim reads on the body portion with enlarged ends as depicted in Figure 4.
It cannot be discerned from the drawing whether the larger outer
diameter ends are attached during manufacturing to the smaller outer
diameter body portion or whether the assembly is made from a single piece
as required by the claims. Appellants did not explain how Figure 4, or how
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claims 7-11, support the claim limitation that the elongated body has
“unitary, one-piece construction”, but merely made the assertion without
clarification.
Because the drawings do not support the claim limitation of an
“elongated body having unitary, one-piece construction”, we affirm the
written description rejection of claims 1, 5 and 9.

ANTICIPATION REJECTION
Claims 1, 3-5, and 9 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Feine (Ans. 3-4).
Principles of Law
Because the hallmark of anticipation is prior invention, the
prior art reference – in order to anticipate under 35 U.S.C. §
102 – must not only disclose all elements of the claim within
the four corners of the document, but must also disclose those
elements “arranged as in the claim.” Connell v. Sears, Roebuck
& Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983).
Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008).

Facts (F)
The Feine patent
1. Feine describes a three-part ultrasonic dental insert used in a handpiece
(Abstract).
2. The insert includes a magnetostrictive element (12), a velocity transducer
(14), and a tip (Abstract).
3. The assembled insert is placed inside a handpiece by frictional
engagement (col. 4, ll. 41-44).
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4. Figure 4, reproduced below, shows a longitudinal section of a velocity
transducer section.

Figure 4 show the velocity transducer 14 which comprises sections 36
and 38 and a finger grip 48 that snaps on to section 38 (col. 4, ll. 1-15).
5. The transducer has a central passage 42 for water to flow through (col. 3,
ll. 65-67).
6. At one end, a threaded section 32 receives the magnetostrictive element
12 (col. 3, ll. 55-65).
7. At the other end, the transducer has passage with terminal threads 56 for
engaging the tip 16 (col. 4, ll. 24-37).
8. Figure 8, reproduced below in part, is a longitudinal section view of a
handpiece containing the insert (col. 3, ll. 16-17):

Figure 8 shows the insert placed inside handpiece 70, with the inner
cylindrical piece 82 of the handpiece gripped around the end of the insert
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opposite the tip holding end (col. 4, ll. 24-27 & 57-65). The velocity
transducer 14 and the magnetostrictive element 12 are shown inserted inside
handpiece 70.
9. “The velocity transducer 14 is generally machined from thick-walled
tubing of suitable autoclavable material, such as stainless steel, for
example.” (Col. 4, ll. 21-23.)

Claim 1
The following findings summarize the correspondence between
Feine’s velocity transducer and the claimed adaptor:
10. Feine describes a velocity transducer with sections 36 and 38 which is
connected to a tip 16 at one end (F4, 7) and a handpiece 70 (F8). The
velocity transducer therefore serves as an adaptor having an elongated body
and with ends for connecting the adaptor to an irrigation tip and handpiece
as recited in claim 1.
11. The velocity transducer is machined from an autoclavable material, such
as stainless steel (F9), and therefore has the claimed “unitary, one-piece
construction.”
12. The velocity transducer has a central passage 42 for water flow (F5) and
therefore meets the claim limitation of “a through bore located within said
elongated body.
Analysis
The Examiner has the burden of establishing that the prior art,
expressly or inherently, describes all elements of the claimed invention as
arranged in the claim. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d at
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1369. In this case, as found by the Examiner on pages 3-4 of the Answer
and summarized in Facts 10-12, all the elements recited in claim 1 are
present in the assembly described by Feine. Whether the claim is interpreted
to be drawn to the adaptor alone, or the adaptor connected to a tip and
handpiece, we exercise our discretion to address the merits of the
anticipation rejection, and we determine that all the claim limitations are
met.3 Having met the burden, we turn to Appellant’s arguments to
determine whether an error was made.
Appellant contends that Feine describes a three part dental insert in
which all three pieces are required for the device (App. Br. 7). Appellant
asserts:
As shown in Figure 8, Feine shows a multi-part adaptor, with
the main sections being shown as reference numeral #12, #14,
and #16 (see Figure 6 for #16). Figure 8 demonstrates that 14 is
a separate piece from 12, and, further, that the adaptor also
includes an insert 10, that engages a handpiece. See Col. 4,
lines 41-45. The adaptor of Feine necessarily includes all of
these pieces.
(App. Br. 7).
Component 14 corresponds to Feine’s velocity transducer (F4).
Component 12 is the magneto-restrictive element (col. 3, ll. 24-25);
component 16 is the tip (F6). The Examiner found that component 14, the
velocity transducer, met all the requirements of the claim. The claim does
not exclude the adaptor – Feine’s velocity transducer – from comprising

3 When claims are indefinite, rejecting … based on speculation and
assumptions is legal error. In re Steele, 305 F.2d 859, 862, 134 USPQ 292,
295 (CCPA 1962). However, a claim can sometimes be analyzed … even
though it is indefinite. In re Steele distinguished. Ex parte Saceman, 27
USPQ2d 1472, 1474 (Bd. Pat. App. Int. 1993).

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further elements, as long as it meets the structural requirements of the claim.
Therefore, Appellant’s argument is not persuasive.
Appellant also argues that reference numeral 14 is “definitely not of
one-piece construction.” (Reply Br. 4.) This argument is not supported by
the evidence. Feine expressly states that transducer 14 “is generally
machined from thick-walled tubing of suitable autoclavable material” (F9),
providing reasonable basis to believe that the transducer is made from a
single piece of tubing – and therefore is of one-piece construction.
Appellant also contends that the Examiner has ignored component 12
which is “a necessity for Feine to properly function and operate.” (Reply Br.
4.) Appellants states: “The Examiner has also noted that Figure 4 also
includes O-rings located between reference numerals 12 and 14, which
would only be used if reference numerals 12 and 14 were separate sections
and not a unitary piece.” (Id. at 4)
This argument is not persuasive. The Examiner found that element
14, the velocity transducer, met all structural limitations of claim 1. The
Examiner did not ignore 12. 12 is the magneto-restrictive element which fits
into the transducer (F6); it does not correspond to the claimed adaptor nor
does the claim exclude a magneto-restrictive element.
Component 14 is of one-piece construction, has a through bore, an
elongate body, and ends connecting to a tip 16 and handpiece 70 – and thus
meets all elements of the claimed invention.

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OBVIOUSNESS REJECTION
Claim 2 stands rejected under 35 U.S.C. § 103(a) as obvious in view
of Feine and Sharp (Ans. 4).
The Examiner found:
Feine discloses an adaptor that shows the limitations as
described above; however, Feine does not show a means for
restricting ultrasonic vibrations. Sharp et al. teach an ultrasonic
dental scaler comprising a means for restricting ultrasonic
vibrations 29. It would have been obvious to one having
ordinary skill in the art at the time the invention was made to
include the means of Sharp et al. in order to dampen flexural
vibrations and make the motion of the tip less erratic in view of
Sharp et al.
(Ans. 4).
Appellant does not identify any deficiency in the Examiner’s findings.
As the Examiner provided a fact-based rationale for concluding that the
claim 2 was obvious, we affirm the rejection of the reasons set forth by the
Examiner.
SUMMARY
The rejections under § 112, first and second paragraphs, of claims 1, 5
and 9 are affirmed. Claims 3 and 4 fall with claims 1, 5, and 9 because
separate arguments for their patentability were not provided. 37 C.F.R.
§ 41.37(c)(1)(vii).
The anticipation rejection of claim 1 is affirmed. Claims 3-5 and 9
fall with claim 1 because separate reasons for their patentability were not
provided. 37 C.F.R. § 41.37(c)(1)(vii).
The obviousness rejection of claim 2 is affirmed.

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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

lp

RYAN KROMHOLZ & MANION, S.C.
POST OFFICE BOX 26618
MILWAUKEE WI 53226