Ex Parte Wasylucha

Patent Trial and Appeal Board

Aug 25, 2017

14101910 (P.T.A.B. Aug. 25, 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.
14/101,910 12/10/2013 Bryan Wasylucha BWY-10103/29 7786
25006 7590 08/29/2017
DTNSMORF fr SHOHT T T P
EXAMINER
900 Wilshire Drive EIDE, HEIDI MARIE
Suite 300
TROY, MI 48084 ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
08/29/2017 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):
MichiganPatTM @ dinsmore. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRYAN WASYLUCHA
Appeal 2015-006623
Application 14/101,910
Technology Center 3700
Before SUSAN L. C. MITCHELL, LISA M. GUIJT, and
NATHAN A. ENGELS, Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s decision1 rejecting claims 1—20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM—IN—PART.
CLAIMED SUBJECT MATTER
Claim 1 is the sole independent claim on appeal. Claim 1, reproduced
below, is illustrative of the subject matter on appeal.
1. A process of whitening a tooth, comprising the steps of:
1 Appeal is taken from the Final Office Action dated July 22, 2014 (“Final
Act.”).
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Application 14/101,910
providing a delivery device having a push-button, twist-
turn or lever, and wherein a single, incremental movement of the
push-button, twist-turn or lever mechanically dispenses a
predetermined amount of a whitening composition to an
applicator tip;
dispensing the amount of whitening composition to the
applicator tip;
applying the amount of whitening composition disposed
on the applicator tip to a tooth to be whitened; and
allowing the whitening composition to remain in contact
with the tooth for a period of time sufficient to whiten a tooth.
REJECTIONS
I. Claims 1—7 and 12—14 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Jensen (US 5,785,527; issued July 28, 1998) and
Discko (US 5,267,859; issued Dec. 7, 1992).
II. Claim 8 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Jensen, Discko, and Moret (US 4,184,196; issued Jan. 15,
1980).
III. Claims 9 and 11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Jensen, Discko, and Tolkoff (US 2004/0010299 Al;
published Jan. 15, 2004).
IV. Claim 10 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Jensen, Discko, Tolkoff, and Mauze (US 5,057,277;
issued Oct. 15, 1991).
V. Claims 15—20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Jensen, Discko, and Rizoiu (US 6,616,447 Bl; issued
Sept. 9, 2003).
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ANALYSIS
Rejection I
Regarding independent claim 1, the Examiner finds, inter alia, that
Jensen’s syringe “is inherently a mechanical dispensing device.” Final Act.
2. The Examiner also determines that Jensen “does not specifically teach [a]
device ha[ving] a push button, twist turn or lever” or that “a single
incremental movement of the push button, twist turn or lever mechanically
dispenses [a] predetermined amount2 of whitening composition;” the
Examiner relies on Discko for teaching these claim limitations. Id. at 3
(citing Discko 7:37—44, Figs. 9, 10). The Examiner reasons that it would
have been obvious “to modify [Jensen’s dispensing device] with the twist
turn taught by Discko in order to dispense a proper amount of material
without wasting the material.” Id.
Appellant argues that Jensen “teaches away from dispensing ‘a
predetermined amount,”’ because, in Jensen, “[t]he dental professional
2 Although Jensen discloses using a syringe for dispensing a desired
quantity of dental bleaching composition, Jensen is silent as to how the
desired quantity is determined. Thus, a preponderance of the evidence does
not support a finding that Jensen discloses dispensing a predetermined
amount of whitening composition. The Examiner’s reliance on such an
incorrect finding, however, is not fatal because we agree with the
Examiner’s finding that Discko discloses dispensing a predetermined
amount of a composition as discussed infra, and we determine that such
finding is sufficient to establish a prima facie case of obviousness. See Final
Act. 2—3 (“Jens[e]n teaches . . . dispensing a predetermined amount,”
wherein “the predetermined amount [is] based on the amount the plunger of
the syringe is moved.”).
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simply places a desired quantity of the dental bleaching composition on the
patient’s teeth and then triggers accelerated bleaching,” such that “the
amount [is left] up to the dental professional.” Appeal Br. 2 (quoting Jensen
4:35—44); see also Reply Br. 1—2.
A teaching away requires a reference to actually criticize, discredit, or
otherwise discourage the claimed solution. See In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004). Jensen discloses that “dental bleaching compositions
may advantageously be either preloaded or loaded manually into and
dispensed from a syringe onto the patient’s teeth” and that “[t]he dental
professional simply places a desired quantity of the dental bleaching
composition on the patient’s teeth.” Jensen 4:32—37. However, Jensen does
not criticize, discredit, or otherwise discourage using a dispensing device
wherein an amount of whitening composition is predetermined, as claimed.
Therefore, Jensen does not teach away from providing a predetermined
amount of a whitening composition to an applicator tip as recited in claim 1.
Appellant also argues that Discko “does not teach dispensing ‘a
predetermined amount,”’ but rather, a “proper amount” that “is up to the
dentist.” Appeal Br. 2—3. Appellant submits that claim 1 requires that “this
predetermined amount is established in advance mechanically.” Reply Br. 1.
Appellant also submits that in Discko, “there is no known correlation
between the number of turns of the threaded rod and the amount dispensed
since the user can simply glance at the markings.” Appeal Br. 3; see also
Reply Br. 2—3.
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An ordinary meaning of the claim term “predetermined,” consistent
with the Specification, is “determine[d] beforehand.” Webster’s Third
New Int’l Dictionary 1400-1401 (1993). In the context of claim 1, we
construe the claim term “predetermined” to mean that the amount of
whitening composition is determined before mechanically dispensing the
composition. We do not agree with Appellant that claim 1 requires the
predetermined amount to be mechanically established; rather, claim 1 only
requires the predetermined amount to be mechanically dispensed. In other
words, claim 1 does not limit how the amount is predetermined (i.e.,
mechanically or by a dental professional). See Appeal Br. 2 (wherein
Appellant characterizes the claimed device as “automatically and
mechanically dispensing] a predetermined amount,” which “would take the
decision-making away from the profession.”) (emphasis added). To the
extent Appellant construes claim 1 to require the delivery device to
determine mechanically a predetermined amount of a whitening composition
to be dispensed, such a limitation is not claimed. See Spec. 148 (stating
“[a]n inventive device includes a user activation of a mechanism for moving
a desired amount of a substance out of a reservoir and onto an applicator tip
for application to a tooth .... In a preferred embodiment the desired
amount may be predetermined such that the user dispenses a known amount
with each activation of the push-button, twist-turn, lever and the like.”)
With reference to Figure 10, Discko discloses that
[mjarkings 63 placed on the threaded piston 52 help indicate
dosing. As the piston 52 is advanced displacing the material
within the bulk cartridge 66 markings 63 can be used with
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reference to the surface of nut 48 to indicate the number of doses
being placed in the patient cartridge 64.
Discko 8:2—6, Fig. 10. Discko also discloses that “dosing lines 60 provide
units of measure for dispensing the dental material M” (id. at 7:24—25), and
that “dosing graduations permit the dentist to individually load an empty
cartridge 12 with a dental material. . . in an amount required by a specific
application.” Id. at 4:5—9 (emphasis added).
Thus, Discko discloses a twist turn (or threaded piston 52), as
claimed, wherein turning piston 52 from a position wherein a first marking
63 is aligned with the surface of nut 48 to a second position wherein a
second marking 63 is aligned with the surface of nut 48 corresponds to the
claimed single, incremental movement of the twist turn. Discko also
discloses that such a single, incremental movement mechanically3 * * 6(i.e., by
means of machinery—threaded piston 52) dispenses an amount of the
material. Because Discko discloses that the desired amount required for a
specific application is established or known by the dentist before loading an
empty cartridge, a preponderance of the evidence supports the Examiner’s
finding that Discko discloses dispensing a predetermined amount of the
material, i.e., a dose(s) for a specific application. See Discko, 4:20-24
3 An ordinary meaning of the claim term “mechanically,” consistent with
the Specification, is “in a mechanical manner,” wherein an ordinary meaning
of the term “mechanical” means “of, relating to, or concerned with
machinery or tools.” Webster’s Third New Int’l Dictionary 1400-1401
(1993); see also Spec. 148 (“User activation of a mechanical dispenser
includes activation by push-button, twist-turn, lever and the like.”).
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(describing how dentist controls the desired specific volume of material to
be used).
Appellant further argues that “[t]he Examiner’s rationale for
combining Jensen and Discko is also not persuasive,” because “both Jensen
and Discko rely on a dental professional to administer a substance.” Appeal
Br. 4; see also Reply Br. 3. We disagree. Modifying Jensen’s syringe to
include Discko’s threaded piston 52, nut 48, and markings 63 is factually
supported by Discko, which discloses that the advantage of such a
dispensing system is to indicate the number of doses, resulting in less
material waste. See Discko 1:62—64 (“the dental material being relatively
expensive, it is undesirable to leave any dental material remaining within the
cartridge.”).
Accordingly, we sustain the Examiner’s rejection of independent
claim 1. Appellant chose not to present separate arguments for claims 2—7
and 12—14, which depend from claim 1, and therefore, we also sustain the
Examiner’s rejection of claims 2—7 and 12—14. See Appeal Br. 2-4; Reply
Br. 1-2.
Rejection II
Regarding claim 8, which depends from independent claim 1, the
Examiner relies on Moret for teaching the step of exposing the whitening
composition to light emitted from a light source disposed on the mechanical
dispensing device. Final Act. 4 (citing Moret, Abstract, Fig. 1). The
Examiner reasons that it would have been obvious to modify Jensen’s device
to include a light as taught by Moret “in order to provide the user with all the
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tools needed to carry out the procedure in a single easy to use tool.” Id. at
4-5.
Appellant argues that the Examiner’s rationale “is not supported by
any factual evidence,” in that “[tjhere is no evidence that the disclosures of
Jensen or Discko would benefit from exposure to light emitted from a light
source.” Appeal Br. 4; see also Reply Br. 3. Appellant further contends that
the Examiner’s reference to ‘“all the tools necessary’ is far too broad and
would supposedly render obvious any dental (or medical or surgical)
instrument depending upon the ‘procedure’ which is undefined,” and that
‘“[e]asy to use’ is without support and highly subjective.” Appeal Br. 4.
The Examiner responds that Jensen teaches “a bleaching composition
that is accelerated by exposure to light,” and therefore, Jensen teaches “the
composition benefitting from exposure to light.” Ans. 4 (citing Jensen 4:34—
41). Indeed, Jensen discloses “irradiating the bleaching composition with
radiant energy, such as visible and/or UV light” (Jensen 4:27—39), and Moret
discloses “[a] dispenser . . . mounted with the lamp for containing the
fluorescible material” (Moret, Abstract). Further, Moret discloses that “[t]he
dispenser for the fluorescible material is arranged directly on the housing of
the pocket lamp and hence always conveniently handy.” Moret 2:27—29.
Thus, contrary to Appellant’s argument, the Examiner’s determination of
obviousness is factually supported by Jensen and Moret.
Accordingly, we sustain the Examiner’s rejection of claim 8.
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Rejection III
Regarding claim 9, which depends from independent claim 1, the
Examiner relies on Tolkoff for teaching the step of exposing a whitening
composition to light emitted from a light source disposed in the composition,
and regarding claim 11, which depends from claim 9, the Examiner relies on
Tolkoff for disclosing that the light source disposed in the composition is a
chemiluminescent light source. Final Act. 5 (citing Tolkoff 153). The
Examiner reasons that it would have been obvious to modify Jensen’s device
with a light source in the dental bleaching composition, as taught by Tolkoff,
“to easily reach all the areas of the mouth.” Id. (citing Tolkoff H 27, 53).
Appellant argues that Tolkoff is improperly relied on by the Examiner
because Tolkoff is non-analogous art “in that [Tolkoff] is unrelated to tooth
whitening.” Appeal Br. 5. The Examiner responds that Tolkoff “discusses
using the chemiluminescent light in the oral cavity for a whitening
treatment.” Ans. 5 (citing Tolkoff 153).
Our reviewing court has explained that “[tjjhe analogous art inquiry is
a factual one, requiring inquiry into the similarities of the problems and the
closeness of the subject matter as viewed by a person of ordinary skill.”
Scientific Plastic Prods., Inc. v. Biotage AB, 766 F.3d 1355, 1360 (Fed. Cir.
2014). C Criteria for determining whether prior art is analogous may be
summarized as “(1) whether the art is from the same field of endeavor,
regardless of the problem addressed, and (2) if the reference is not within the
field of the inventor's endeavor, whether the reference still is reasonably
pertinent to the particular problem with which the inventor is involved.”
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Id. at 1359 (quoting In re Clay, 966 F.2d 656, 658—59 (Fed. Cir. 1992)).
We determine that the field of Appellant’s endeavor is “methods for
whitening a user’s tooth.” Spec. 12. Tolkoff “relates to light source therapy
of tissue and/or biological material on or within a patient’s body and, more
particularly, to light source therapy using chemiluminescent light sources.”
Tolkoff 12. In particular, Tolkoff addresses “[wjhitening teeth by use of a
brightening material,” wherein “[t]he chemiluminescent material is
particularly well suited for treating the mouth because it can be applied to
bath[e] the entire region in light at once, without shadows.” Id. at | 53.
Thus, Tolkoff is in the same field of endeavor as Appellant’s invention,
namely, methods for tooth whitening, and is properly relied on by the
Examiner.
Appellant also argues that “there is no factual evidence that [] the
whitening compositions of Jensen or Discko would benefit from exposure to
light emitted from a light source, chemiluminescent or otherwise.” Appeal
Br. 5. However, as discussed supra, Jensen provides factual support for
exposing a whitening composition to light. See Jensen 4:35—39 (“The dental
professional. . . triggers accelerated bleaching by [] irradiating the bleaching
composition with radiant energy, such as visible and/or UV light.”).
Moreover, Jensen discloses that two-part systems are known, wherein
materials are microencapsulated in the whitening composition, such that
upon rupture, the materials cause certain effects within the whitening
composition. See Jensen 2:24—28; cf. Spec. 1 89 (“a luminescent substance
is present in the whitening composition,” for example, “dispensing device
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2000 contains a microencapsulated phosphorescent material in a whitening
composition 2200 in the reservoir 2100”) (emphasis added); see also id.
(“Similarly, a fluorescent, or chemiluminescent material may be included in
a whitening composition.”); Fig. 6. Thus, contrary to Appellant’s argument,
the Examiner’s determination of obviousness is factually supported by
Jensen.
Appellant further argues that “the Examiner’s rationale for the
proposed combination—in order to easily reach all areas of the mouth—
really has nothing to do with exposing a whitening composition to light
emitted from a light source disposed in the whitening composition,” and that
“[t]o one of skill in the art, reaching ‘ah’ areas of the mouth is more
dependent on the instrument(s) used and/or the skill of the practitioner.”
Appeal Br. 5; see also Reply Br. 3^4. However, as set forth supra, Tolkoff
specifically discloses that “chemiluminescent material is particularly well
suited for treating the mouth because it can be applied to bath[e] the entire
region in light at once, without shadows” and that “[a]t least one beneficial
effect of light treatment applied to the teeth includes whitening.” Tolkoff
| 53. Thus, contrary to Appellant’s argument, the Examiner’s determination
of obviousness is factually supported by Tolkoff, in that Tolkoff discloses
that the chemiluminescent material reaches all areas of the mouth, without
regard to instrumentation or the skill of practitioners.
Accordingly, we sustain the Examiner’s rejection of claims 9 and 11.
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Rejection IV
Regarding claim 10, which depends from claim 9, the Examiner relies
on Mauze for teaching that the light source is a phosphorescent light source.
Final Act. 6 (citing Mauze 2:44—62). Appellant argues that Mauze is non-
analogous art, because “Mauze resides in ‘a dimensionally-stable
organosilicon material composition ... for establishing the sensitivity of [a]
variably-radiative material to [a] selected analyte,” which “has nothing to do
with Appellant’s invention.” Appeal Br. 5; see also Reply Br. 4
(characterizing the problem addressed by Appellant as “[activating a
composition with a light source.”). The Examiner determines that
“activating a composition with a light source” is “the same problem is being
solved” in Mauze. Ans. 5.
We determine that the field of endeavor of Mauze (i.e., “chemically
sensitive organosilicon material compositions” (Mauze 1:8)) is not the same
as Appellant’s field of endeavor (i.e., methods for tooth whitening, as
determined supra). Further, we determine that Mauze, which is directed to
“producing] a material composition which is . . . variably radiative or
luminescent in response to concentrations of [a] selected analyte” is not
reasonably pertinent to the particular problem of activating a composition
with a light source. Mauze 2:29-30 (emphasis added); see also id., Abstract
(“A dimensionally-stable organosilicon material composition . . . having
dissolved therein a variably-radiative material. . . responsive to the
concentration of a selected analyte.” (emphasis added)). Thus, we determine
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that Mauze is not analogous art, and therefore, is improperly relied on in the
combination by the Examiner.
Accordingly, we cannot sustain the Examiner’s rejection of claim 10.
Rejection V
Regarding claim 15, which depends from independent claim 1, the
Examiner finds that “Jens[e]n/Discko teaches the process as substantially
claimed [with respect to claim 1], however, does not specifically teach the
step of providing a dental apparatus,” as claimed. Final Act. 6—7. The
Examiner relies on Rizoiu for teaching a dental apparatus comprising a
support structure (i.e., dental tray 12) adapted to be placed entirely within a
user’s mouth, and a light source (i.e., LEDs 22) disposed on or in the support
structure, as claimed. Id. at 7 (citing Rizoiu 5:30-33, 6:58—67, 7:10—16,
Figs. 1 A, Id). The Examiner reasons that it would have been obvious “to
modify Jensen/Discko with the tray taught by Rizoiu in order to illuminate
several teeth at once.” Id. at 8.
Regarding claims 15—19, Appellant argues that “[t]he Examiner
concedes that the Jensen/Discko combination does not disclose any of the
limitations of Appellant’s claim[s] 15—19,” but “[nevertheless,. . . finds all
of these limitations obvious.” Appeal Br. 6; see also Reply Br. 4. Appellant
concludes that “[t]his is an omnibus rejection without sufficient support.”
Id. However, Appellant’s characterization of the Examiner’s rejection is
inaccurate, as the Examiner relies on Jensen and Discko, as applied to
claim 1 and from which claims 15—19 depend, and further, on Rizoiu for
disclosing the claimed dental apparatus. See Final Act. 6—8; Ans. 5—6.
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Appellant does not present separate arguments for the patentability of
claim 15, which depends from claim 1, or claim 16, which depends from
claim 15, or claim 20, which depends from claim 16. Thus, we are not
apprised of error in the Examiner’s rejection of claims 15, 16, and 20.
However, Appellant challenges the Examiner’s rejection of claims 18 and 19
as set forth infra.
Regarding claims 18 and 19, the Examiner finds that “Rizoiu teaches
a tape which is placed on the teeth” and that “it is well known in the art
[that] a tape is a flat thin sheet of material with an adhesive that is placed on
a surface and molds to the shape of the surface at room temperature.” Final
Act. 7 (citing Rizoiu 7:51—67, 8:1—4) (emphasis added); see also Ans. 5
(citing, in addition, Rizoiu, Figs. 7A, 7B). The Examiner determines that
“[i]t is well known in the art that tape is flexible at room temperature so that
it can adhere to a surface,” and that Rizoiu’s “tape is molded and adhered to
the teeth a[t] room temperature.” Ans. 5—6.
Appellant argues that Rizoiu’s “transparent material” does not meet
the limitations of claims 18 and 19. See Appeal Br. 6 (citing Rizoiu 5:37—
47). However, the Examiner did not rely on Rizoiu’s transparent material
(or transparent panel 28), as described in the passages of Rizoiu cited by
Appellant. Rather, as set forth supra, the Examiner appropriately relies on
Rizoiu’s dental tape 7A, which is described in Rizoiu at column 7, line 51 to
column 8, line 4, and depicted in Figure 7A, for disclosing the limitations of
claims 18 and 19. Thus, Appellant’s argument does not apprise us of any
error in the Examiner’s findings or reasoning.
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Appellant also argues that “to one of skill in the art, tape is not
molded—rather, it is adhered to something,” and “[t]he only way to
‘reshape’ a tape is to crumple it up, which is certainly not what [Rizoiu]
intended.” Reply Br. 4. We disagree. A preponderance of evidence
supports the Examiner’s determination that one skilled in the art would
consider applying a tape (with or without adhesive) to the surface of a
person’s teeth to be molding4 the tape to the person’s teeth, wherein the
purpose is to cover each tooth with dentrifrice. See Rizoiu 7:59-60.
Notably, Appellant does not dispute the Examiner’s determination that it is
well known in the art that tape is flexible at room temperature or at a
temperature ranging between 10-40°C, as recited in claims 18 and 19.
Accordingly, we sustain the Examiner’s rejection of claims 15—20.
DECISION
The Examiner’s rejections of claims 1—9 and 11—20 are affirmed.
The Examiner’s rejection of claim 10 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN—PART
4 An ordinary meaning of the claim term “moldable,” consistent with the
Specification, is “capable of being molded,” wherein “mold” means “to fit
the contours of.” Webster’s Third New Int’l Dictionary 1454 (1993);
see also Spec. 15 (“Optionally, the dental apparatus includes a support
structure which is moldable to conform to the user’s dentition.”)
15