Ex Parte WoodDownload PDFPatent Trial and Appeal BoardApr 30, 201411315379 (P.T.A.B. Apr. 30, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/315,379 12/19/2005 Timothy E. Wood SMI0118.US 8477 41863 7590 04/30/2014 TAYLOR IP, P.C. P.O. Box 560 142. S Main Street Avilla, IN 46710 EXAMINER REYNOLDS, STEVEN ALAN ART UNIT PAPER NUMBER 3788 MAIL DATE DELIVERY MODE 04/30/2014 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 PATENT TRIAL AND APPEAL BOARD ____________ Ex parte TIMOTHY E. WOOD ____________ Appeal 2012-004701 Application 11/315,379 Technology Center 3700 ____________ Before HUBERT C. LORIN, MICHAEL C. ASTORINO, and BART A. GERSTENBLITH, Administrative Patent Judges. GERSTENBLITH, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-004701 Application 11/315,379 2 STATEMENT OF THE CASE Timothy E. Wood (“Appellant”) appeals under 35 U.S.C. § 134 from the Examiner’s final decision rejecting claims 1, 4-8, 11, 12, 28, and 29. We have jurisdiction under 35 U.S.C. § 6(b). Claimed Subject Matter Claims 1 and 7 are the independent claims on appeal. Claim 1 is illustrative of the claimed subject matter and is reproduced below. 1. A dental case comprising: a substrate having a plurality of holes therein; a grommet matrix including a plurality of grommets each having a groove, said plurality of grommets being interconnected outside of said groove, said plurality of grommets being located at predetermined positions corresponding to said plurality of holes; a membrane by which said plurality of grommets are interconnected, said membrane being configured to remain attached to said plurality of grommets at least until being removed subsequent to said plurality of grommets being installed in said substrate at said predetermined positions; and a weakened linkage between said membrane and each of said plurality of grommets, said membrane being made of the same material as said plurality of grommets, said membrane and said plurality of grommets being formed in the same molding operation, said membrane and said plurality of grommets being integral when formed. App. Br. 16, Claims App’x. References The Examiner relies upon the following prior art references: Hurson US 5,525,314 Jun. 11, 1996 Neidich US 6,256,879 B1 Jul. 10, 2001 Appeal 2012-004701 Application 11/315,379 3 Rejection Appellant seeks review of the following rejection: Claims 1, 4-8, 11, 12, 28, and 29 are rejected under 35 U.S.C. § 103(a) as unpatentable over Hurson and Neidich. SUMMARY OF DECISION We REVERSE. OPINION The Examiner concludes that the combination of Hurson and Neidich would have rendered obvious the subject matter of claims 1, 4-8, 11, 12, 28, and 29 to one of ordinary skill in the art at the time of invention. Ans. 4-6. The Examiner finds that Hurson discloses most of the elements of the claims, but does not disclose how the grommets are placed into the holes of the substrate. Id. at 5. The Examiner finds that Neidich discloses a flexible, elastically deformable membrane, which “is configured to remain attached to [a] plurality of articles at least until being removed subsequent to the plurality of articles being installed in [a] substrate . . . at . . . predetermined positions for the purpose of transferring [the] . . . articles . . . to a substrate.” Id. The Examiner concludes that it would have been obvious to one of ordinary skill in the art at the time of invention to “provide[] the grommets of Hurson (prior to placement within the holes of the substrate) on a[n] elastically deformable membrane as taught by Neidich in order to easily transfer the plurality of grommets to the holes in the substrate.” Id. The Examiner also finds that the combination results in a “membrane (elastically deformable membrane – See Hurson, column 5, line 20) . . . made from the Appeal 2012-004701 Application 11/315,379 4 same material as the plurality of grommets (elastomeric grommets – See Neidich, column 2, lines 60-65).” Id. at 6. Appellant raises several arguments in response to the Examiner’s rejection, including that the combination of Hurson and Neidich does not teach a grommet matrix/assembly with a membrane made of the same material as the grommets. See App. Br. 12. In response to Appellant’s argument, the Examiner maintains that because Neidich’s membrane “is formed from an elastically deformable material,” and the “plurality of grommets” disclosed by Hurson “are formed from an elastomeric material,” the combination proposed by the Examiner discloses grommets and a membrane “made of the same material (elastomeric material).” Ans. 8 (“the combination of Hurson and Neidich discloses elastomeric grommets arranged within an elastomeric membrane”). While we agree with the Examiner that Hurson’s grommets and Neidich’s membrane are disclosed as elastomeric and elastically deformable, respectively, and hence share the property of elasticity, that finding does not, in and of itself, mean that the grommets and membrane are the same material, as recited by the claims.1 Accordingly, because the Examiner’s finding—that two elastomeric materials necessarily disclose the same material—is not supported by a preponderance of evidence, we do not sustain the rejection. 1 Independent claims 1 and 7 are directed to “[a] dental case” and “[a] grommet assembly,” respectively, comprising a “membrane being made of the same material as said plurality of grommets.” App. Br. 16-17, Claims App’x. Appeal 2012-004701 Application 11/315,379 5 DECISION We REVERSE the Examiner’s decision rejecting claims 1, 4-8, 11, 12, 28, and 29. REVERSED rvb Copy with citationCopy as parenthetical citation