Ex Parte Pond

Patent Trial and Appeal Board

Aug 16, 2013

11405254 (P.T.A.B. Aug. 16, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte GARY J. POND
__________

Appeal 2012-003441
Application 11/405,254
Technology Center 3700
__________

Before TONI R. SCHEINER, ULRIKE W. JENKS, and
SHERIDAN K. SNEDDEN, Administrative Patent Judges.

SNEDDEN, Administrative Patent Judge.

DECISION ON APPEAL
This appeal1 under 35 U.S.C. § 134 involves claims involving a dental
handpiece for delivering a prophy paste. The Examiner entered rejections
under 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Appellant identifies the Real Party in Interest as Gary J. Pond (App. Br. 2).
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STATEMENT OF THE CASE
Claims 1-20 are on appeal. Claims 1, 5, and 7 are representative and
read as follows:
1. A dental handpiece arranged for delivery of a prophy
paste comprising:
a generally elongated body enclosing a drive member;
a reservoir to hold said prophy paste;
a unitary removable prophy angle comprising:
(A) a polishing member;
(B) a drive shaft connecting said polishing member to
said drive
(C) a through conduit located in said prophy angle,
said conduit having a distal end, said distal end in fluid
communication with an area wherein said prophy paste
may be applied adjacent said polishing member, said
through conduit being segregated from said drive shaft;
and
a plunger, said plunger in communication with said prophy
paste.

5. The device according to claim 1 wherein said reservoir
is located within said prophy angle.

7. The device according to claim 6 wherein the control
mechanism is a reversible trigger.

The claims stand rejected as follows:
I. Claims 1-4, 6, 8-12, 14-16 and 18-20 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Wu (US 5,927,976,
issued Jul. 27, 1999) and Graceffo (US 3,826,004, issued Jul. 30,
1974).
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II. Claims 7 and 13 under 35 U.S.C. § 103(a) as being unpatentable
over the combination of Wu, Graceffo, and Friedman et al. (US
4,793,807, issued Dec. 27, 1988).
III. Claims 5 and 17 under 35 U.S.C. § 103(a) as being unpatentable
over the combination of Wu, Graceffo, and Chipian et al. (US
5,642,994, issued Jul. 1, 1997).

The Examiner withdraws the rejection of claims 1-2, 6-7, 12-14, and
18-19 on the ground of nonstatutory obviousness-type double patenting over
claims 1-7 of US 7,029,278 in view of Graceffo.

I. – Wu and Graceffo
Issue
The Examiner rejected claims 1-4, 6, 8-12, 14-16 and 18-20 under 35
U.S.C. § 103(a) as being unpatentable over the combination of Wu and
Graceffo. The issue presented with this rejection is: Does the evidence of
record support the Examiner’s finding that the combined prior art teaches or
suggests a dental handpiece having a prophy angle as required by claim 1?
Principles of Law
“[A] patent composed of several elements is not proved obvious
merely by demonstrating that each of its elements was, independently,
known in the prior art.” KSR Int’l v. Teleflex Inc., 550 U.S. 398, 418 (2007).
However, a prima facie conclusion of obviousness may be supported by a
showing that a combination of familiar elements according to known
methods yields no more than predictable results. Id. at 401; citing United
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States v. Adams, 383 U.S. 39, 50-52 (1966). Furthermore, the Supreme
Court has emphasized that “the [obviousness] analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” Id. at 418. “If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. at 417.
Analysis
Appellant contends that Wu is not analogous art because it “discloses
a hollow drill bit used for the delivery of anesthetic or medication through
the drill bit” and “not a device for delivering prophy paste” (App. Br. 5).
We are not persuaded. Appellant presents an overly narrow view of what
constitutes analogous art. In determining the scope of the prior art under 35
U.S.C. § 103, it is presumed that an inventor of ordinary skill has full
knowledge of all prior art in the field of his endeavor. In re Wood, 599 F.2d
1032, 1036 (CCPA 1979). In this case, we find it reasonable for the
Examiner to find that a person of ordinary skill in the art with knowledge of
a prophy angle would also have full knowledge of other handheld dental
instruments, such as the drill disclose by Wu.
Appellant further contends that “Wu also does not disclose a unitary
prophy angle” (App. Br. 5). “First if a device does not have a polishing
device it cannot, by its plain and simple English meaning, be a prophy angle.
Secondly, the plain and simple English meaning of unitary means that it is
not formed of two separate sections, i.e. the transfucer 14 and the handpiece
16.” (Id. at 6.) We are not persuaded. The Examiner has interpreted the
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term “unitary” as meaning “integral” or “forming a single unit or one-piece”
(Ans. 3-4) and finds that the headpiece of Wu, defined by elements 14 and
16 (see, e.g., Wu at Figs. 1A – 1D), forms a single unit (cf., Specification at
Figs. 1-5). We find no persuasive evidence on record to support a finding
that the Examiner’s interpretation is unreasonable. For example, the
Specification provides no discussion of “unitary,” no definition. The
Specification, however, does provide an embodiment where a prophy angle
is formed by the union of distinct pieces to form a single unit (Specification
at Figs. 1-5), which is consistent with the Examiner’s interpretation of the
term.
Appellant further contends that “alterations to Wu would render ‘the
principle operation of the primary reference or render the reference
inoperable for its intended purpose’” (App. Br. 7, quoting MPEP § 2145).
We are not persuaded. While the replacement of a drill bit for a polishing
member may change the useful purpose of the dental instrument, we are not
persuaded by Appellant’s argument that this substitution would change the
basic principles in which Wu’s drill is designed to operate. “A change in the
basic principles” refers to change that is fundamental in scope to the
scientific or technical principles under which the invention is designed to
operate. In re Ratti, 270 F.2d 810, 813 (CCPA 1959) (“This suggested
combination of references would require a substantial reconstruction and
redesign of the elements shown in [the primary reference] as well as a
change in the basic principles under which the [primary reference]
construction was designed to operate.”); See, e.g., In re Umbarger, 407 F.2d
425, 430-31 (CCPA 1969) (finding [In re Ratti, 270 F.2d at 813]
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inapplicable where the modified apparatus will operate “on the same
principles as before”). It cannot be said that “change in the basic principles”
occurs by all modifications of a prior art device which changes the manner
in which the device operates. Otherwise, even nominal modification to a
prior art device could be considered a “change in the basic principles,”
thereby eliminating the need for obviousness analysis under 35 U.S.C. §
103.
Appellant further contends that “[t]he Examiner has cited KSR
several times to suggest that the combination of Wu with Graceffo obviates
the present claims, basing the obviousness rejection on ‘yielding predictable
results’ without any teaching or suggestion for such a statement” (App. Br.
8). We are not persuaded. The Examiner has presented a sound rationale as
to why a person of ordinary skill in the art would have modified the dental
instrument of Wu with the teachings of Graceffo to arrive at the claim
composition.
For example, the Examiner finds that Wu teaches a dental instrument
having each element of independent claim 1, except that the instrument of
Wu is a drill having a drill bit and not a prophy angle having a polishing
member as required by the claims. The Examiner, however, finds that
Graceffo discloses a prophy angle having a polishing member and
that both Wu’s drill bit 12 and Graceffo’s polishing member 18
are disclosed to be removably attached to the device’s head via
threading mechanism 76 and 84, respectively (Wu’s Fig. 11;
Graceffo’s Fig. 8). Both Wu’s drill bit and Graceffo’s polishing
member 18 are hollow for receiving material dispensed from
the through conduit 22 and 68, respectively (Wu’s Fig. 11;
Graceffo’s Fig. 8). It would have been obvious to one having
ordinary skill in the art at the time the invention was made to
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modify Wu by substituting Wu’s drill bit with a polishing
member as taught by Graceffo so that such handpiece can be
used to clean and polish teeth depending on the needed dental
procedure.
(Ans. 4.)
In view of the above, we find that the Examiner has provided
sufficient evidence to support a prima facie case of obviousness. Having
done so, the burden shifted to Appellant to provide evidence that the claimed
combination of known elements would do more than yield predictable
results, KSR, 550 U.S. at 416, or that the compositions in the prior art did not
possess the claimed properties. Appellant has not met this burden.
Appellant’s additional arguments address the cited reference
individually, not the combined teachings of the references, and thus fail to
persuade us that the subject matter of claim 1 is non-obvious. The fact that
Wu and Graceffo disclose distinct dental instruments is not sufficient to
establish that the references are not combinable in the manner set forth by
the Examiner. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986) (Each reference “must be read, not in isolation, but for what it fairly
teaches in combination with the prior art as a whole.”). We are therefore not
persuaded by Appellant’s arguments to the contrary.
Conclusion of Law
The preponderance of evidence on this record supports the
Examiner’s conclusion that the combination of Wu and Graceffo renders
claim 1 obvious. Claims 2-4, 6, 8-12, 14-16 and 18-20 fall with claim 1. 37
C.F.R. § 41.37(c)(1)(vii).

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II. – Wu, Graceffo, and Friedman
Issue
The Examiner rejected claims 7 and 13 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Wu, Graceffo, and Friedman.
The Examiner finds that “Wu discloses a foot pedal as a control mechanism
to control drive member” and that a hand trigger is an art-recognized
equivalent to a foot pedal (Ans. 5, citing Friedman at col. 5, ll. 61-65). The
Examiner concludes that
it would have been obvious to one having ordinary skill in the
art at the time the invention was made to modify Wu by
substituting the foot control pedal with a (finger/hand)
reversible trigger since it is well known and common practice
to use such reversible trigger as a known suitable alternative
mechanism to actuate and control a handheld device. Such
substitution would yield the same and/or predictable results

(Ans. 5.)
Appellant contends that “[s]imply stating that Friedman discloses a
foot pedal and a hand trigger does not correlate to any teaching as to how to
modify either Wu or Graceffo to arrive at the structure of the present
invention, which is necessary to substantiate a prima facie obviousness
rejection.” (Reply Br. 3.)
The issue presented is:
Does the evidence of record support the Examiner’s findings that the
combined prior art teaches or suggests a dental handpiece having a
reversible trigger as set forth in claim 7?
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Additional Findings of Fact
FF1. The Specification discloses that “[t]he trigger 26 allows for
both a forward and reverse direction of the drive mechanism 38”
(Specification 7).
FF2. Wu discloses that
The invention preferably includes a foot control pedal
operatively coupled to the drill. . . . The operator of the
medication injection device controls the drilling and
medication injection by positioning the foot control pedal.
(Wu, col. 2, ll. 28-33.)
FF3. Wu discloses that “[t]he foot control pedal controls the power
on-off of the two motors and also gives variable speed adjustment to the
injection plunger, plus a reverse motion switch for the plunger” (id. at col. 3,
ll. 64-67).
FF4. Friedman discloses an “apparatus for effecting delivery of a
chemical solution useful in the softening of tooth caries and/or plaque in a
patient’s mouth utiliz[ing] a reciprocating piston-type pump” (Friedman,
abstract).
FF5. Friedman discloses that “a hand-operated control 59 (FIG. 13)
or, alternatively, a foot pedal 60, can be provided to intermittently activate
the motor and pump assembly, and therefore, regulate the flow of Solution S
as required” (id. at col. 5, ll. 61-65).
Analysis
We find that the Examiner has set forth a prima facie case of
obviousness that has not been adequately rebutted by Appellant. The
Examiner has provided a rational basis for combining the cited references,
where the proposed modifications address each disputed element of claim 7
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and are supported by the findings of fact (FF1 – FF5). Wu discloses a foot
pedal which allows for both a forward and reverse direction of the drive
mechanism (FF2 and FF3; cf. FF1). The Examiner relies on Friedman to
establish that the functionality of Wu’s foot pedal may be configured as a
hand-operated control. Appellant has not presented any evidence to
establish that the references are incapable of being combined as set forth by
the Examiner. We thus find that the Examiner has expressed a proper reason
for the combination of the cited references, namely, the combination of
familiar elements in a manner that yields no more than predictable results.
KSR, 550 U.S. at 401.
Conclusion of Law
The preponderance of the evidence of record supports the Examiner’s
conclusion that the combined teachings of the cited prior art disclose a
method having all limitations of claim 7. Claim 13 falls with claim 7. 37
C.F.R. § 41.37(c)(1)(vii).

III. – Wu, Graceffo, and Chipian
The Examiner rejected claims 5 and 17 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Wu, Graceffo, and Chipian. The
Examiner finds that
Wu/Graceffo disclose the reservoir to be located within the
elongated body; thus failing to disclose the reservoir to be
located within the prophy angle. It is well known in the
dentistry field to have a reservoir located within the prophy
angle. For example, Chipian et al. disclose a dental handpiece
having a prophy angle having a reservoir 300 with a plunger
located therein (Figs. 4D or 12A). It would have been obvious
to one having ordinary skill in the art at the time the invention
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was made to rearrange Wu/Graceffo’s reservoir from within the
elongated body to the prophy angle as well known in the
dentistry field as shown by Chipian in order to have the
reservoir being removable and disposable or replaceable along
with the prophy angle while still yielding the same and/or
predictable results.
(Ans. 5-6.)
Appellant does not dispute the factual findings of the Examiner.
Rather, Appellant contends that
The Examiner has shown no motivation or reason to support a
claim of obviousness for the worker in the art to modify Wu so
as to make Wu inoperable for its intended use. Both Graceffo
and Chipian disclose and teach prior art prophy devices that are
unlike the presently claimed device. Wu teaches and discloses
a non-analogous device, a drill bit. It would not be obvious to
try to combine Graceffo or Chipian with Wu, as Graceffo and
Chipian is a completely unrelated device to Wu.
(App. Br. 10.)
We are not persuaded by Appellant’s arguments as they do not
specifically address the Examiner’s obviousness rationale. As set forth
above, we do not agree that Wu is non-analogous art. Appellant’s additional
arguments do not persuade us that the references are incapable of being
combined as set forth by the Examiner. Rather, we find that the Examiner
has expressed a proper reason for the combination of the cited references,
namely, the combination of familiar elements in a manner that yields no
more than predictable results. KSR, 550 U.S. at 401.
Conclusion of Law
The preponderance of the evidence of record supports the Examiner’s
conclusion that the combined teachings of the cited prior art disclose a
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method having all limitations of claim 5. Claim 17 falls with claim 5. 37
C.F.R. § 41.37(c)(1)(vii).

SUMMARY
We affirm all rejections on appeal.

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

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