Ex Parte Sabbagh

Board of Patent Appeals and Interferences

Feb 23, 2010

11195382 (B.P.A.I. Feb. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte EMILY M. SABBAGH
____________

Appeal 2009-002312
Application 11/195,382
Technology Center 3700
____________

Decided: February 23, 2010
____________

Before WILLIAM F. PATE, III, JOHN C. KERINS, and
STEFAN STAICOVICI, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-002312
Application 11/195,382

2
STATEMENT OF THE CASE
Emily M. Sabbagh (Appellant) appeals under 35 U.S.C. § 134 (2002)
from the Examiner’s decision rejecting claims 1-17. We have jurisdiction
over this appeal under 35 U.S.C. § 6 (2002).

THE INVENTION
Appellant’s invention relates to a tongue retractor and fluid/particle
barrier for use during oral medical procedures. Spec. 1, ll. 6-7 and fig. 1.
Claim 1 is representative of the claimed invention and reads as
follows:
1. An oral shield for use in oral medical procedures, the oral
shield comprising:

an absorbent, deformable, kidney-shaped shield body,
with an insertion end, a handling end, and a curved edge
shaped to conform to a floor and roof of a patient's
mouth, the insertion end inserted into a first side of the
patient's mouth, between an inner surfaces of the patient's
teeth and the patient's tongue, and the handling end
tucked between an outer surface of the patient's teeth and
an inner surface of the patient's cheek on a second side of
the patient's mouth, opposite to the first side.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Skinner US 5,071,349 Dec. 10, 1991
Asher US 5,573,400 Nov. 12, 1996
Owais US 2003/0031980 A1 Feb. 13, 2003
Chen US 2003/0135181 A1 Jul. 17, 2003
Heasley US 2003/0190584 A1 Oct. 9, 2003
Anderson US 2004/0101804 A1 May 27, 2004

Appeal 2009-002312
Application 11/195,382

3
The following rejections are before us for review:
The Examiner rejected claims 1-3 and 12-14 under 35 U.S.C. § 103(a)
as unpatentable over Skinner and Anderson.
The Examiner rejected claim 4 under 35 U.S.C. § 103(a) as
unpatentable over Skinner, Anderson, and Owais.
The Examiner rejected claim 5 under 35 U.S.C. § 103(a) as
unpatentable over Skinner, Anderson, and Asher.
The Examiner rejected claims 6-8 and 15-17 under 35 U.S.C. § 103(a)
as unpatentable over Heasley, Skinner, and Anderson.
The Examiner rejected claim 9 under 35 U.S.C. § 103(a) as
unpatentable over Heasley, Skinner, Anderson, and Owais.
The Examiner rejected claim 10 under 35 U.S.C. § 103(a) as
unpatentable over Heasley, Skinner, Anderson, and Asher.
The Examiner rejected claim 11 under 35 U.S.C. § 103(a) as
unpatentable over Heasley, Skinner, Anderson, and Chen.
The Examiner entered new grounds of rejection of claims 1-3 and 14
under 35 U.S.C. § 102(b) as anticipated by Skinner.
The Examiner entered new grounds of rejection of claim 4 under
35 U.S.C. § 103(a) as unpatentable over Skinner and Owais.
The Examiner entered new grounds of rejection of claim 5 under
35 U.S.C. § 103(a) as unpatentable over Skinner and Asher.
The Examiner entered new grounds of rejection of claims 6-8 and
15-17 under 35 U.S.C. § 103(a) as unpatentable over Heasley and Skinner.
The Examiner entered new grounds of rejection of claim 9 under
35 U.S.C. § 103(a) as unpatentable over Heasley, Skinner, and Owais.
Appeal 2009-002312
Application 11/195,382

4
The Examiner entered new grounds of rejection of claim 10 under
35 U.S.C. § 103(a) as unpatentable over Heasley, Skinner, and Asher.
The Examiner entered new grounds of rejection of claim 11 under
35 U.S.C. § 103(a) as unpatentable over Heasley, Skinner, and Chen.

OPINION
We shall not sustain the Examiner’s rejection of claims 1-17 under
35 U.S.C. §§ 102(b) and 103(a). For the reasons expressed below,
independent claims 1 and 6, and dependent claims 2-5 and 7-17, are
inconsistent with Appellant’s Specification and Drawings. Therefore, the
prior art rejections must fall because they necessarily are based on
speculative assumption as to the meaning of the claims. See In re Steele,
305 F.2d 859, 862-63 (CCPA 1962). It should be understood, however, that
our decision in this regard is based solely on the indefiniteness of the
claimed subject matter, and does not reflect on the adequacy of the prior art
evidence applied in support of the rejections.

NEW GROUNDS OF REJECTION
We make the following new grounds of rejection pursuant to
37 C.F.R. § 41.50(b)(2007).
Claims 1-17 are rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
invention which applicant regards as the invention.
The definiteness of claim language must be analyzed, not in a
vacuum, but always in light of the teachings of the prior art and the
particular application disclosure as it would be interpreted by one possessing
Appeal 2009-002312
Application 11/195,382

5
the ordinary level of skill in the pertinent art. In re Moore, 439 F.2d 1232
(CCPA 1971). See also, In re Cohn, 438 F.2d 989, 993 (CCPA 1971)
(sustaining rejection of claims under 35 U.S.C. § 112, second paragraph, as
being indefinite, where the claims were inherently inconsistent with the
description, definitions, and examples appearing in applicant’s
specification).
Each of independent claims 1 and 6 requires a kidney-shaped shield
body as depicted in Figure 1 of Appellant’s Drawings.
Figure 1 of Appellant’s Drawings is reproduced below:

Figure 1 of Appellant’s Drawings depicts an oral shield 100 including
insertion end 102 and handling end 104.
Appellant takes the position that, “a kidney-shaped object generally is
round or oval and indented at one side like a kidney organ or a kidney bean.”
Appellant’s Amendment, filed Aug. 16, 2007, Pages 6-7. 1 Emphasis added.
As examples, Appellant presents in Figure 1A a kidney organ and in Figure
1B a kidney bean. Id. at 7-8.

1 Hereafter referred to as “Amendment.”
Appeal 2009-002312
Application 11/195,382

6
Figure 1A of the Amendment is reproduced below:

Figure 1A depicts a kidney organ.
Figure 1B of the Amendment is reproduced below:

Figure 1B depicts a kidney bean.
After comparing the shape of Appellant’s claimed shield body (as per
Figure 1 of Appellant’s Drawings) with the examples provided by Appellant
of kidney-shaped objects (as per Figures 1A and 1B of the Amendment), we
do not find that Appellant’s illustrated oral shield 100 is kidney-shaped, as
required by each of independent claims 1 and 6. Hence, claims 1 and 6 “do
not define the invention (i.e., the subject matter which the applicant regards
as his invention) with a reasonable degree of particularity.” In re Hammack,
427 F.2d 1378, 1382 (CCPA 1970). In other words, we conclude that
kidney-shaped as used in the claims, when construed in view of Appellant’s
Appeal 2009-002312
Application 11/195,382

7
Figure 1lacks sufficient precision so that one endeavoring to practice the
invention could not determine the metes and bounds thereof.
In light of the above, we conclude that claims 1 and 6, which include
the kidney-shaped limitation, and claims 2-5 and 7-17 which depend from
claims 1 and 6, are inherently inconsistent with the description that appears
in Appellant’s Specification, Drawings, and examples.

SUMMARY
The decision of the Examiner to reject claims 1-17 is reversed.
We enter new grounds of rejection of claims 1-17 under 35 U.S.C.
§ 112, second paragraph.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b)(2007). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an
appropriate amendment of the claims so rejected or
new evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the
examiner, in which event the proceeding will be
remanded to the examiner. . . .
Appeal 2009-002312
Application 11/195,382

8
(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board
upon the same record. . . .

REVERSED; 37 C.F.R. § 41.50(b)

Vsh

DARBY & DARBY P.C.
P.O. BOX 770
CHURCH STREET STATION
NEW YORK, NY 10008-0770