Ex Parte Tarr

Board of Patent Appeals and Interferences

Feb 9, 2011

10906861 (B.P.A.I. Feb. 9, 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.
10/906,861 03/09/2005 Daniel Edward Tarr TAR858/02313B 3861
24118 7590 02/09/2011
HEAD, JOHNSON & KACHIGIAN
228 W 17TH PLACE
TULSA, OK 74119
EXAMINER
WILSON, JOHN J
ART UNIT PAPER NUMBER
3732
MAIL DATE DELIVERY MODE
02/09/2011 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 DANIEL EDWARD TARR
____________

Appeal 2009-012142
Application 10/906,861
Technology Center 3700
____________

Before LINDA E. HORNER, KEN B. BARRETT, and
FRED A. SILVERBERG, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-012142
Application 10/906,861

2
Daniel Edward Tarr (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 1, 3, 5-8, and 10-12.
Claims 2, 4, and 9 have been canceled. We have jurisdiction under
35 U.S.C. § 6(b). We REVERSE.
Appellant’s claimed invention is directed to a combination rotating
dental cleaning brush and paste device and a method for using the same.
Spec. 1, para. 3. Claim 1, reproduced below, is representative of the subject
matter on appeal.2
1. A combination rotating dental cleaning brush and paste
device, which device comprises:
a housing having a rotating shaft therethrough, said
housing having a first cylindrical portion and a second portion
in angular relation therewith, wherein said rotating shaft
terminates in a first gear that rotates a second gear in said
second portion of said housing;
a disk extending from said second gear;
a compressible tube having two opposed ends, a first end
attached to and extending from said disk and rotated by said
shaft and a second end;
a brush integral with, connected to and rotated by said
second end; and
dental paste inside said compressible tube whereby
compression of said tube by pressing said brush against the
teeth of a patient forces said paste out of said second end.

2 Independent claim 8 is directed to a method of using a combination dental
cleaning brush and paste.
Appeal 2009-012142
Application 10/906,861

3
Appellant seeks review of the following rejections:
1. The Examiner rejected claims 1, 33, 5, 6, 8, 10, and 124 under
35 U.S.C. § 103(a) as being unpatentable over Jaffe
(US 2005/0032022 A1; published February 10, 2005), Warner
(US 6,257,886 B1; issued July 10, 2001), and Randolph
(US 6,382,971 B1; issued May 7, 2002).
2. The Examiner rejected claims 7 and 11 under 35 U.S.C. § 103(a) as
being unpatentable over Jaffe, Warner, Randolph, and Wasylucha
(US 2005/0026103 A1; published February 3, 2005).
The issue presented by this appeal is whether Jaffe is prior art to the
claims on appeal.
The present application is a continuation-in-part of Application
Number 10/418,235, filed April 17, 2003, which issued as US 6,875,017 on
April 5, 2005 (“the parent application”).
35 U.S.C. § 120 provides, in pertinent part:
An application for patent for an invention disclosed in the
manner provided by the first paragraph of section 112 of this
title in an application previously filed in the United States, . . .,
which is filed by an inventor or inventors named in the

3 Claim 3 improperly depends from canceled claim 2. For purposes of this
appeal, we treat claim 3 as being dependent from claim 1.
4 The Examiner objected to dependent method claims 10-12 as being
improperly dependent from apparatus claim 7. The Examiner suggested
making claims 10-12 depend from method claim 8. We presume that the
Examiner treated claims 10 and 12 as if they were dependent from method
claim 8 in this rejection, since claim 7 is not rejected in this ground of
rejection.
Appeal 2009-012142
Application 10/906,861

4
previously filed application shall have the same effect, as to
such invention, as though filed on the date of the prior
application, if filed before the patenting or abandonment of or
termination of proceedings on the first application or on an
application similarly entitled to the benefit of the filing date of
the first application . . . .
The Examiner has not given the claims on appeal the benefit under
35 U.S.C. § 120 of the filing date of the parent application “[b]ased on the
lack of any written description regarding a ‘disk’ in the specification and a
lack of a drawing that one of ordinary skill in the art would recognize as
containing a ‘disk’ extending from the second gear in the parent application.
. . .” Ans. 5-6. Appellant argues that “[t]he disk extending from the second
gear onto which the first end of the tube is attached is clearly shown in
Figures 4, 5, and 6 of the parent application.” Br. 9. Appellant admits that
the disk was not called a disk in the parent application and was not referred
to by name or description at all. Id. Appellant argues:
Although there is no textual explanation of how the second gear
is connected to the first end of the accordion tube, in looking at
Figures 4, 5, and 6 of the parent application, it is evident that a
portion of the second gear extends down into the first end of the
accordion tube and forms a rim over which the accordion tube
may be secured via a lip on the first end of the accordion tube.
. . . This connection is clear from the drawings. Therefore, one
skilled in the art would be able to determine, from the drawings,
that the second gear has connecting to it a portion extending
from the second gear, and that the first end of the tube is
attached to and extending from that portion.
Br. 10. Appellant further asserts that “one reasonably skilled in the art
would be able to determine that the portion extending from the second gear
Appeal 2009-012142
Application 10/906,861

5
is a disk.” Id. Appellant notes that Figures 4, 5, and 6 of the parent
application show that the portion extending from the second gear is thin and
flat, and for this portion to be surrounded by the accordion tube would
necessarily mean that the portion is circular. Br. 11.
In order to satisfy the written description requirement, “the [original]
specification must describe an invention understandable to that skilled
artisan and show that the inventor actually invented the invention claimed.”
Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(en banc). “[T]he test for sufficiency is whether the disclosure of the
application relied upon reasonably conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date.”
Id. (citations omitted). “[T]he level of detail required to satisfy the written
description requirement varies depending on the nature and scope of the
claims and on the complexity and predictability of the relevant technology.”
Id. (citing Capon v. Eshhar, 418 F.3d 1349, 1357-58 (Fed. Cir. 2005)). The
claimed invention need not be recited in haec verba in the original
specification in order to satisfy the written description requirement. Id. at
1352. “[D]rawings alone may be sufficient to provide the ‘written
description of the invention’ required by § 112, first paragraph.” Vas-Cath,
Inc. v. Mahurkar, 935 F.2d 1555, 1564 (Fed. Cir. 1991).
We note that Warner shows a flanged extension 66 depending from a
secondary driven gear 62 of its gear train 40. Warner, col. 6, ll. 58-61 and
64-67; figs. 3 and 3A. Warner discloses that “[t]he prophylaxis cup 32 is
operatively mounted to the secondary driven gear 62 via interaction in a
Appeal 2009-012142
Application 10/906,861

6
conventional manner with a flanged extension 66 depending from the driven
gear 62.” Warner, col. 6, ll. 64-67 (emphasis added). As can be best seen in
Figure 16A of Warner, the flanged extension resembles Appellant’s disk, as
shown in Figures 4, 5, and 6 of the parent application. Thus, we find Warner
evinces that well before the filing date of Appellant’s parent application the
use of a flanged extension depending from a second gear in a prophylaxis
angle device to operatively mount a prophy cup to the second gear was
conventional in the art and thus known to a person skilled in the art.
For the reasons provided by Appellant, we agree that Figures 4, 5, and
6 of the parent application provide adequate written description of the
claimed disk. In particular, we find that a person skilled in the art would see
from these Figures that a portion of the second gear extends down into the
first end of the accordion tube and forms a rim over which the accordion
tube may be secured via a lip on the first end of the accordion tube. We
further find that one reasonably skilled in the art would understand that the
portion extending from the second gear is a disk.
Based on the evidence of record, we find that Appellant’s original
disclosure in the parent application reasonably conveys to a person skilled in
the art a disk extending from the second gear with one end of the
compressible tube attached to and extending from the disk, as called for in
the claims. Based on this finding, Appellant’s claims are entitled to the
benefit of the filing date of the parent application of April 17, 2003 under
35 U.S.C. § 120.
Appeal 2009-012142
Application 10/906,861

7
Jaffe was filed on August 4, 2003, after the filing date of Appellant’s
parent application, and published on February 10, 2005. As such, Jaffe does
not qualify under 35 U.S.C. § 102 as prior art against Appellant’s claims on
appeal. The rejections before us rely on Jaffe as the primary reference to
support the conclusion of obviousness. Thus, we REVERSE the decision of
the Examiner to reject claims 1, 3, 5-8, and 10-12.

REVERSED

nlk

HEAD, JOHNSON & KACHIGIAN
228 W 17TH PLACE
TULSA OK 74119