Ex Parte Ramos et al

Patent Trial and Appeal Board

Jun 12, 2017

13260389 (P.T.A.B. Jun. 12, 2017)

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.
13/260,389 01/25/2012 Carlos Alberto Spironelli Ramos 31844U 1892
20529 7590 06/14/2017
NATH, GOLDBERG & MEYER
Joshua Goldberg
112 South West Street
Alexandria, VA 22314
EXAMINER
PATEL, YOGESH P
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
06/14/2017 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):
USPTO@nathlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CARLOS ALBERTO SPIRONELLI RAMOS and
MICHAEL YAKOBY1
Appeal 2016-002306
Application 13/260,389
Technology Center 3700
Before ULRIKE W. JENKS, JOHN G. NEW, and RYAN H. FLAX,
Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants state the real party-in-interest is Forum Engineering
Technologies (96) Ltd. App. Br. 3.
Appeal 2016-002306
Application 13/260,389
SUMMARY
Appellants file this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 43—63.2 Specifically, claims 43—47,
49-57, and 59-62 stand rejected as unpatentable under 35 U.S.C. § 102(b)
as being anticipated by Johnson (US 2010/0040884 Al, February 18, 2010)
(“Johnson”).
Claims 48 and 58 stand rejected as unpatentable under 35 U.S.C.
§ 103(a) as being obvious over Johnson.
Claims 48 and 58 stand rejected as unpatentable under 35 U.S.C.
§ 103(a) as being obvious over Johnson and Meyer Shuster (US
2009/0136896 Al, May 28, 2009) (“Meyer Shuster”).
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
NATURE OF THE CFAIMED INVENTION
Appellants’ invention is directed to a system for endodontic treatment
of a root canal. The system includes a handpiece containing a rotary motor
adapted to rotate an endodontic file secured by the handpiece. A control unit
executes a regime of motion of the motor to produce a regime of file motion
in which episodes of oscillation of the file are separated by a rotation of the
file. Abstract.
REPRESENTATIVE CLAIM
Claim 43 and 54 are representative of the claims on appeal, and recite:
2 Claims 1—42 are canceled. App. Br. 16. Claims 64—69 are withdrawn. Id.
at 19-20.
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43. A system for endodontic treatment, comprising:
(a) a handpiece containing a rotary motor adapted to rotate
an endodontic file secured by the handpiece;
(b) a processor configured to execute a regime of motion
of the motor or produce a regime of file motion comprising:
(c) for k=l to n, where n is an integer;
(i) oscillating the file through an arc ak at a frequency of
oscillation fk for an amount of time Tk or a number of oscillation
cycles Mk; and
(ii) rotating the file either clockwise or counterclockwise
through an arc (V
App. Br. 16. Claim 54 recites:
54. A system for endodontic treatment, comprising:
(d) a handpiece containing a rotary motor adapted to rotate
an endodontic file secured by the handpiece;
(e) a processor configured to execute a regime of motion
of the motor or produce a regime of file motion comprising:
(f) for k=l to n, where n is an integer;
(i) rotating the file through an arc ak at a[n] angular
speed CQk; and
(ii) rotating the file in an opposite direction through
an arc Pk
wherein at least one of the sets (ak for k=l to n}, and Pk
for k=l to n} includes at least two terms of different values.
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Id. at 18.
ISSUES AND ANALYSES
Except where otherwise indicated, we adopt the Examiner’s
findings and conclusions that certain claims are anticipated and/or
obvious over the cited prior art. We address Appellants’ arguments
below.
A. Rejection of claims 43^47, 49-57, and 59-62 under 35 U.S.C.
§ 102(b)
Issue
Appellants argue the Examiner erred because Johnson does not
disclose oscillating the file through an arc ak at a frequency of oscillation fk
for an amount of time Tk or a number of oscillation cycles Mk. App. Br. 6.
Analysis
The Examiner finds, in relevant part, that Johnson discloses an
endodontic system including a handpiece containing rotary motor; a file; a
processor configured to execute a regime of rotation/file motion including
oscillating the file from angular position 0k to ak at predetermined oscillation
for amount of time Tk or cycles Mk and rotating the file (clockwise or
counter clockwise) through arch 13k. Final Act. 3 (citing Johnson Fig. 1,
119-11).
Appellants argue, with respect to claims 43—53, that Johnson’s device
is configured for “sequential rotation of a selected angle [of at least 90°] in a
forward direction followed [immediately] by rotation of a slightly less angle
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in a reverse direction.” App. Br. 9 (citing Johnson Abstr., || 9-10, Fig. 12).
According to Appellants, Johnson focuses on providing disposable
endodontic files, preferably providing sequential rotation in which the
forward arc is larger than the subsequent rearward arc. Id. By that means,
Appellants argue, the cutting (forward) surface of the file would constantly
progress within the canal with each arc forward and backwards, thus
constantly contacting some amount of untouched canal surface until the file
sufficiently completes the loop within the canal to reach the “beginning
point.” Id.
In contrast, Appellants assert claims 43—53 require that the endodontic
file “oscillate,” i.e., moves the file for at least one full cycle, forward and
rearward, through the same arc ak before the drill is then rotated through arc
pk. App. Br. 9-10 (citing Spec. 2, 3, 4, Figs. 4, 5).
With respect to claims 54—63 Appellants admit that the claims do not
expressly recite the claim term “oscillation,” but argue that they do
inherently require oscillation of the file. App. Br. 10. Appellants assert that
for each of these claims, “at least one of the sets” (for arcs ak and Pk)
“includes at least two terms of different values.” Id. Appellants point to
Figure 5 of their Specification as illustrating that at least one of the arcs is
repeated, or oscillated. Id. Appellants repeat that Johnson does not teach or
disclose a true oscillation, where a cycle of forward and rearward movement
ends at the same starting point as before the cycle began, rather, Appellants
contend, Johnson preferably moves the position of the file rotationally
during each cycle. Id. Appellants suggest that Johnson should therefore be
understood to teach away from oscillating the drill as taught by the
specification and required by claims 43—53.
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The Examiner responds that, with respect to claims 43—53, Johnson
discloses that its endodontic file oscillates for K=l, an angular position 0k an
arc ak at a frequency fk for time Tk as claimed. Ans. 4. The Examiner finds
claims 43—53 do not require moving the file for more than one full cycle of
forward and rearward movement. Id.
With respect to Appellants argument with respect to claims 54—63 that
“oscillation” is inherently required and for at least one of the sets include at
least two terms of different values, the Examiner finds Johnson teaches the
file being rotated in an opposite direction with a different arc Pk, thus
satisfying the claimed limitation. App. Br. 4—5.
We agree in part with Appellants’ arguments. With respect to claims
43—53, the claims require that the file oscillate at least once “through an arc
ak.” We agree with Appellants that this requires, at minimum, that the file
oscillate once forward and back through arc ak, returning to the “starting
point” before rotating through arc Pk. See, e.g., Spec. Fig. 4.
Johnson, however, teaches: “An endodontic file that is well-suited for
rotation first in one direction through a given arc and then rotation in a
reverse direction through a reduced arc” and that:
In a preferred embodiment, the edge cuts into a surface of a root
canal when the file is rotated in the forward direction and scrapes
the surface of the root canal when the file is rotated in the
rearward direction. The rotation in the forward direction passes
through a minimum angle of about 90° and the immediately
following rotation in the rearward direction passes through an
angle less than the angle of rotation in the forward direction.
Johnson || 10, 11; see also claim 3. Johnson, therefore does not disclose
“oscillating the file through an arc ak,” as required by claim 43, because
Johnson does not expressly disclose that the file completes its oscillation
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through the arc ak on its rearward leg of the oscillation. We therefore
reverse the Examiner’s rejection of these claims.
With respect to claims 54—63, although we agree with Appellants that
the claims inherently require an oscillation, i.e., the forward and rearward
rotations of the file through arcs ak and Pk, we disagree that the claim
requires that the file oscillate through an arc in such a manner that the file
returns to its starting point through an arc. Indeed, we find Johnson’s
disclosure that the file “is well-suited for rotation first in one direction
through a given arc and then rotation in a reverse direction through a
reduced arc” corresponds directly to the limitation of claims 54 reciting
“rotating the file through an arc af’ and “rotating the file in an opposite
direction through an arc Pk,” “wherein at least one of the sets {ak for k=l to
n}, and (Pk for k=l to n} includes at least two terms of different values.”
That is to say, if the values of ak and Pk in forward and rearward motions of
the file are different, then the file does not oscillate through a prescribed arc,
but rather follows the motions disclosed by Johnson, in which the arc of
travel in either direction is different. We therefore affirm the Examiner’s
rejection of claims 54—63.
B. Rejection of claims 48 and 58 under 35 U.S.C. $ 103(a)
Appellants argue these claims separately. App. Br. 12. Claim 48
recites: “The system according to claim 43, wherein an angular velocity of
the file during an episode of oscillation is in the range of from 300°/sec to
2400°/sec.” Id. at 17.
Appellants rely upon their arguments presented supra that Johnson
neither teaches nor suggests all of the limitations of the claims. App. Br. 13.
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Specifically, Appellants repeat their assertion Johnson fails to teach or
suggest, expressly or implicitly, “oscillating the file through an arc ak at a
frequency of oscillation fk for an amount of time Tk or a number of
oscillation cycles Mk.” Id.
Claim 48 depends from independent claim 43, whereas claim 58
depends from independent claim 54. We have explained supra our
reasoning why we reverse the rejection as to claim 43 and we affirm the
rejection as to claim 54. Since Appellants rely upon the same arguments
with respect to claims 48 and 58, we similarly reverse the rejection with
respect to claim 48 and affirm the rejection with respect to claim 58.
C. Rejection of claims 53 and 63 under 35 U.S.C. $103(a)
Issue
Appellants also argue these claims separately. App. Br. 13. Claim 53
is representative and recites: “The system according to claim 50, wherein
any one or more of ak, fk, Pk, Tk, and Mk, are modulated randomly.” Id. at
17. Appellants argue the combination of Johnson and Meyer Shuster neither
teaches nor suggests the “instant oscillation or reverse rotation of the file
required in all pending claims.” Id. at 14.
Analysis
The Examiner finds Johnson discloses the invention substantially as
claimed except for the limitations of claims 53 and 63 requiring random
modulation of the various defined parameters. Final Act. 4. The Examiner
finds, however, that Meyer Shuster teaches random modulation ([0018]) in
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root canal cleaning because it is also effective. Id. (citing Meyer Shuster
118).
Appellants argue that Meyer Shuster teaches an apparatus for use in
cleaning dental root canals in which the motor “is normally driven in one,
forward direction, but periodically, the motor rotation is reversed for a very
short time ... such that the direction of rotation of the file ... is not
changed.” App. Br. 13 (quoting Meyer Shuster, Abstr., H 12—17).
Appellants note that Meyer Shuster further teaches that:
Reversing the direction of the motor and then restoring the
original direction of rotation produces a pulse in the transmission
between the motor and the drill head. The pulse results in a
disruption of the connection between the motor and the flutes of
the drill as a result of which the energy stored in the file through
the previous twisting of the flutes is released to drive the flutes.
When the torsion energy is released, the flutes may unwind and
reduce in diameter.
Id. at 13—14 (quoting Meyer Shuster 116).
Appellants further point to Meyer Shuster as teaching:
[T]he direction of the current driving the motor is reversed in
order to interrupt the normal speed of the motor. Reversing the
direction of the current for a short time may or may not cause the
motor to actually rotate in a reverse direction but will cause an
interruption in the normal speed of the motor.
App. Br. 14 (quoting Meyer Shuster 117). Appellants point out that Meyer
Shuster further teaches that:
A pulse in the transmission may also be achieved by
intermittently decelerating or accelerating the motor at a
frequency, which will ensure a change in the rotational speed but
no change in the direction of rotation of the motor.... The very
short time, during which the normal speed is interrupted, can be,
for example, in the range of 1 to 4 milliseconds.
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Id. (quoting Meyer Shuster 118).
Therefore, Appellants argue, Meyer Shuster’s focus and intent is to
affect the motor speed in order to reduce or relieve the “winding” tension in
the system, without necessarily reversing the direction of the rotating file, let
alone for any significant duration. App. Br. 14. Appellants assert this is
different from the oscillation or reverse rotation of the file required in all
pending claims, including claims 53 and 63. Id. Therefore, Appellants
argue, Meyer Shuster’s teaching of pulsing the motor does not teach or
suggest purposefully reversing the direction of the file at all, let alone for a
significant portion of its operation. Id.
Finally, Appellants argue, there would have been no motivation for a
person of ordinary skill to combine the teachings of Johnson and Meyer
Shuster. App. Br. 14. Appellants argue that Johnson provides a system that
consistently reverses the direction of the motor regularly, and for significant
portions of time, which should effectively prevent the “winding” issue
addressed by Meyer Shuster, and therefore renders the two references
inconsistent with each other. Id. at 14—15.
The Examiner responds that Meyer Shuster teaches that the direction
of the current driving the motor is reversed which may cause the motor to
actually rotate in a reverse direction and it will cause an interruption in
normal speed, thus satisfying the “random modulation” limitation of the
claims. Ans. 5.
Paragraph [0018] of Meyer Shuster, upon which the Examiner
primarily relies (see Final Act. 4), recites:
A pulse in the transmission may also be achieved by
intermittently decelerating or accelerating the motor at a
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frequency, which will ensure a change in the rotational speed but
no change in the direction of rotation of the motor. This can
include decelerating the motor to a stop and the accelerating the
motor back to its normal operating speed. The intermittent
changes in motor rotation preferably take place regularly,
although a random program of changes would also be effective.
The normal speed can typically be in the range 300 rpm to 650
rpm. The very short time, during which the normal speed is
interrupted, can be, for example, in the range of 1 to 4
milliseconds, and this interruption can take place for example at
a frequency of up to 100 Hz. The frequency is however very
dependant [sic] upon the speed of rotation. The requirement is
to maintain the gears in mesh in the drive train, and this will
require the same numbers of degrees of rotation whatever the
speed. Thus, the speed will influence the rate at which the
“unwinding” is achieved. At higher forward rotation speeds, the
period of the reverse pulse will either need to be shorter than at
low speeds or the reverse pulse may be of a magnitude intended
to drive the motor in reverse at a speed different from, and lower
than the speed in the forward direction. In the latter case, the
very short time for which the normal speed is interrupted may be
up to 10 milliseconds.
(emphasis added).
Because we agree with Appellants on certain facts, as we have
explained supra, and find that Johnson fails to teach or suggest the
limitations of claims 43—53, with respect to the limitation reciting
“oscillating the file through an arc ak,” we also agree with Appellants that
Meyer Shuster does not remedy the deficiencies of Johnson. We
consequently reverse the Examiner’s rejection of claim 53.
With respect to dependent claim 63, we have explained supra why we
agree with the Examiner that Johnson teaches the limitations of independent
claim 54 (from which claim 63 indirectly depends) reciting “rotating the file
through an arc ak” and “rotating the file in an opposite direction through an
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arc Pk,” “wherein at least one of the sets {ak for k=l to n}, and (Pk for k=l to
n} includes at least two terms of different values.” We agree with the
Examiner that a person of ordinary skill in the art would conclude that it
would have been obvious for a person of ordinary skill in the art to combine
the teachings of Johnson and Meyer Shuster so that a random deceleration or
acceleration pulse of the motor and file would thus change the angular speed
cok of the file in the root canal in either ak, Pk, or both. Furthermore, we
agree with the Examiner that a person of ordinary skill would be motivated
to combine the teachings of Meyer Shuster with Johnson to obtain the
benefits recited in Meyer Shuster, viz., “unwinding” the torsion energy
stored in the file that may cause radial expansion of the portion of the file in
contact with the canal wall. See Meyer Shuster 115.
Finally, Appellants contend there would have been no motivation for
a person of ordinary skill to combine the teachings of Johnson and Meyer
Shuster because the teachings of Johnson alone would effectively prevent
the “winding” issue described by Meyer Shuster. App. Br. 14—15. We are
not persuaded; Appellants adduce no evidence beyond attorney argument
that the combination of the teachings of Johnson and Meyer Shuster would
not provide increased unwinding efficiency. Certainly, Appellants point to
no evidence that a person of ordinary skill would be discouraged or
dissuaded from combining the references to obtain the advantages disclosed
by Meyer Shuster.
We therefore affirm the Examiner’s rejection of claim 63.
DECISION
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The Examiner’s rejection of claims 43—53 as unpatentable under 35
U.S.C. § 102(b) is reversed.
The Examiner’s rejection of claims 54—63 as unpatentable under 35
U.S.C. § 102(b) is affirmed.
The Examiner’s rejection of claims 48 and 53 as unpatentable under
35 U.S.C. § 103(a) is reversed.
The Examiner’s rejection of claims 58 and 63 as unpatentable under
35 U.S.C. § 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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