Jessop, Dee et al.

Patent Trials and Appeals Board

Jan 21, 2020

13133129 - (D) (P.T.A.B. Jan. 21, 2020)

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.
13/133,129 08/24/2011 Dee Jessop 7678.1145a.7 1668
22913 7590 01/21/2020
Workman Nydegger
60 East South Temple
Suite 1000
Salt Lake City, UT 84111
EXAMINER
MORAN, EDWARD JOHN
ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
01/21/2020 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):
Docketing@wnlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DEE JESSOP, JARED SHEETZ, and NEIL JESSOP
____________

Appeal 2019-002098
Application 13/133,129
Technology Center 3700
____________

Before STEFAN STAICOVICI, EDWARD A. BROWN, and
LEE L. STEPINA, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE.
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision in the Non-Final Office Action (dated Dec. 1, 2017) rejecting
claims 75–129.2 We have jurisdiction over this appeal under 35 U.S.C.
§ 6(b).

SUMMARY OF DECISION
We AFFIRM-IN-PART.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Ultradent Products, Inc. is identified as the real party in
interest in Appellant’s Appeal Brief (filed Aug. 24, 2018). Appeal Br. 2.
2 Claims 1–74 are canceled. Appeal Br. 2.
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Application 13/133,129
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INVENTION
Appellant’s invention relates to a light curing device including light
emitting diodes for curing a polymerizable composition. Spec. 1, ll. 11–13.
Claims 75, 115, 116, 124, and 127 are independent. Claim 75 is
illustrative of the claimed invention and reads as follows:
75. A dental curing light device, comprising:
an elongated unitary, one-piece body formed from
a continuous seamless piece of thermally conductive
material extending between a proximal end and a distal
end along a longitudinal axis, the continuous seamless
piece comprising:
a head portion extending to the distal end
and having a recess in a first side of the continuous
seamless piece;
a neck tapering outward from the head
portion; and
a handle portion extending to the proximal
end of the continuous seamless piece, the handle
portion having a cavity formed along the
longitudinal axis and opening through a second
side of the continuous seamless piece opposite the
first side;
an LED assembly disposed at least partially in the
recess and thermally coupled to the head portion, the
LED assembly including one or more LED dies and a
thermally conductive LED assembly substrate;
a thermally conductive layer that thermally couples
the LED assembly to the head portion;
an electronics assembly disposed at least partially
within the cavity in the handle portion of the continuous
seamless piece; and
a power cord extending from, or an electrical plug
or connection disposed at, the proximal end of the
continuous seamless piece.

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Application 13/133,129
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REJECTIONS

I. The Examiner rejects claim 125 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement.
II. The Examiner rejects claims 76–85, 92, 111, 112, and 125
under 35 U.S.C. § 112, second paragraph, as being indefinite.
III. The Examiner rejects claims 75–77, 89, 113, 114, 117, and 118
under 35 U.S.C. § 102(b) as being anticipated by Lieb.3
IV. The Examiner rejects claims 78, 112, and 116 under 35 U.S.C.
§ 103(a) as being unpatentable over Lieb.
V. The Examiner rejects claims 79–81 under 35 U.S.C. § 103(a) as
being unpatentable over Lieb, Marson,4 and Gemunder.5
VI. The Examiner rejects claims 82 and 83 under 35 U.S.C.
§ 103(a) as being unpatentable over Lieb and Scott ‘797.6
VII. The Examiner rejects claims 90, 108, and 109 under 35 U.S.C.
§ 103(a) as being unpatentable over Lieb and Maglica.7
VIII. The Examiner rejects claims 91, 103, and 105 under 35 U.S.C.
§ 103(a) as being unpatentable over Lieb and Scott ‘514.8
IX. The Examiner rejects claim 92 under 35 U.S.C. § 103(a) as
being unpatentable over Lieb, Lee,9 and Cooper.10

3 Lieb et al., US 2003/0036031, published Feb. 20, 2003.
4 Marson et al., US 2007/0154823 A1, published July 5, 2007.
5 Gemunder et al., US 6,485,301 B1, issued Nov. 26, 2002.
6 Scott et al., US 2006/0088797 A1, published Apr. 27, 2006.
7 Maglica, US 2005/0207148 A1, published Sept. 22, 2005.
8 Scott, US 2005/0142514 A1, published June 30, 2005.
9 Lee, US 2008/0070188 A1, published Mar. 20, 2008.
10 Cooper, US 2004/0218039 A1, published Nov. 4, 2004.
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X. The Examiner rejects claim 93 under 35 U.S.C. § 103(a) as
being unpatentable over Lieb and Scott ‘113.11
XI. The Examiner rejects claims 94, 96, and 97 under 35 U.S.C.
§ 103(a) as being unpatentable over Lieb and Cao.12
XII. The Examiner rejects claim 95 under 35 U.S.C. § 103(a) as
being unpatentable over Lieb, Cao, and Katsuda.13
XIII. The Examiner rejects claims 98 and 99 under 35 U.S.C.
§ 103(a) as being unpatentable over Lieb and Liu.14
XIV. The Examiner rejects claim 104 under 35 U.S.C. § 103(a) as
being unpatentable over Lieb and Nortrup.15
XV. The Examiner rejects claims 106 and 107 under 35 U.S.C.
§ 103(a) as being unpatentable over Lieb and Uttinger.16
XVI. The Examiner rejects claims 110 and 111 under 35 U.S.C.
§ 103(a) as being unpatentable over Lieb and Gemunder.
XVII. The Examiner rejects claims 75 and 82–89 under 35 U.S.C.
§ 103(a) as being unpatentable over Lieb and Scott ‘797.
XVIII. The Examiner rejects claims 75 and 100–102 under 35
U.S.C. § 103(a) as being unpatentable over Lieb and Gill.17
XIX. The Examiner rejects claims 115 and 120–123 under 35 U.S.C.
§ 103(a) as being unpatentable over Lieb and Liu.

11 Scott et al., US 2007/0037113 A1, published Feb. 15, 2007.
12 Cao, US 7,108,504 B2, issued Sept. 19, 2006.
13 Katsuda et al., US 2004/0248059 A1, published Dec. 9, 2004.
14 Liu, US 2007/0275344 A1, published Nov. 29, 2007.
15 Nortrup et al., US 2005/0276053 A1, published Dec. 15, 2005.
16 Uttinger et al., US 2002/0074153 A1, published June 20, 2002.
17 Gill et al., US 2004/0029069 A1, published Feb. 12, 2004.
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XX. The Examiner rejects claims 115 and 120–123 under 35 U.S.C.
§ 103(a) as being unpatentable over Lieb, Liu, and Kim.18
XXI. The Examiner rejects claims 75–77, 113, 114, 117–119, 127,
and 128 under 35 U.S.C. § 103(a) as being unpatentable over
Lieb and Kim.
XXII. The Examiner rejects claim 129 under 35 U.S.C. § 103(a) as
being unpatentable over Lieb, Kim, and Sherman.19
XXIII. The Examiner rejects claims 75, 113, 114, 117–119, and
124–126 under 35 U.S.C. § 103(a) as being unpatentable over
Kennedy,20 Lieb, and Cao.

ANALYSIS
Rejections I and II
Appellant does not substantively address Rejections I and II. See
Appeal Br. 11. As such, Appellant has waived any argument of error, and
we summarily sustain Rejections I and II. See In re Berger, 279 F.3d 975,
984, 985 (Fed. Cir. 2002) (holding that the Board did not err in sustaining a
rejection under 35 U.S.C. § 112, second paragraph, when the applicant failed
to contest the rejection on appeal).

18 Kim, US 2008/0268401 A1, published Oct. 30, 2008.
19 Lilli Manolis Sherman, Plastics That Conduct Heat, PLASTICS
TECHNOLOGY, June 2001 (http://www.ptonline.com/articles/plastics-that-
conduct-heat).
20 Kennedy, US 5,420,768, issued May 30, 1995.
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Rejection III
The Examiner finds that Lieb discloses a continuous, seamless,
unitary one-piece body 10, 16, and 12 distal of 12a including, inter alia, a
head portion A, a neck portion B, and a handle portion C. Final Act. 5
(citing Lieb, Figs. 1–5). To better illustrate, the Examiner provides an
annotated Figure 1 of Lieb, as shown below:

The Examiner’s annotated Figure 1 of Lieb shows a light-emitting handpiece
for curing polymerizable compositions including a head portion A, a neck
portion B, and a handle portion C.
Appellant argues that “Lieb does not describe the structure to the left
of junction 12A as being a ‘handle portion 12 that is adapted to be held by a
user.’” Appeal Br. 15 (citing Lieb para. 19). According to Appellant, Lieb’s
handle portion 12 includes both right and left halves that are press fit
together at junction 12A. Id. Thus, Appellant contends that the left side
piece of Lieb’s handle portion 12 does not constitute “a handle portion,” as
called for by claim 75, because “[i]t is not described in Lieb as a ‘handle
portion,’ [and] is too short to be held by a user.” Id.
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In response, the Examiner takes the position that “claim [75] does not
limit the curing light device to ‘only’ the continuous seamless piece (e.g.
comprising, not ‘consisting of’)[,]” and, thus, “the Examiner interprets the
continuous seamless piece” as one piece body 10, 16, and 12 distal of 12a of
Lieb, “and there is nothing in the claim that excludes additional components
(e.g. the housing which holds batteries) from being connected thereto.” Ans.
3.21 For example, the Examiner notes that Appellant’s “own device shows
the continuous seamless piece with a power cord or other electrical
connector attached to the proximal end.” Id.
We appreciate that the use of the term “comprising” in the preamble
of independent claim 75 allows for additional structural elements not recited
in the claim. However, “claims under examination before the PTO are given
their broadest reasonable interpretation consistent with the specification.” In
re Abbott Diabetes Care Inc., 696 F.3d 1142, 1148 (Fed. Cir. 2012)
(emphasis added). The correct inquiry in giving a claim term its broadest
reasonable interpretation in light of the Specification is not whether the
Specification proscribes or precludes some broad reading of the claim term
adopted by the Examiner. Rather, it is an interpretation that corresponds
with what and how the inventor describes his invention in the Specification,
i.e., an interpretation that is “consistent with the [S]pecification.” In re
Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997) (citation and internal
quotation marks omitted); see also In re Suitco Surface, 603 F.3d 1255,
1259–60 (Fed. Cir. 2010).
In this case, Appellant’s Specification describes device body 102 as
including “a handle or gripping portion 106 that is sized and configured for a

21 Examiner’s Answer, dated Nov. 14, 2018.
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Application 13/133,129
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dental practitioner to hold and manipulate with the hand.” Spec. 11, ll. 22–
23; see also Figs. 1, 4. In a similar manner, Lieb discloses “handle portion
12 that is adapted to be held by the user.” Lieb, para. 19 (emphasis omitted).
As such, in light of Appellant’s Specification, the Examiner’s interpretation
of the structure to the left of junction 12A as constituting a “handle portion,”
as called for by claim 75, is unreasonable. We agree with Appellant that
“the term ‘handle portion’ means the portion of the ‘body’ configured to
function as a handle” and “[i]t does [not] mean a portion of a handle.”
Appeal Br. 12; see also Ans. 4 (citing Lieb, para. 19).
Appellant is also correct that Lieb’s structure to the left of junction
12A in Figure 1 “is not described by Lieb as being or functioning as a
‘handle’ that is held in the hand of a user.” Appeal Br. 12. An ordinary and
customary meaning of the term “handle” is “a part that is designed
especially to be grasped by the hand.”22 Although we appreciate that Lieb’s
structure to the left of junction 12A includes switch S and can be grasped by
a user’s hand (see Ans. 4 (citing Lieb, para. 29)), nonetheless, the Examiner
does not adequately explain how this portion of Lieb’s handle portion 12 is
“designed especially” for grasping. In other words, the Examiner does not
adequately explain how Lieb’s structure to the left of junction 12A is, by
itself, “adapted to be held by the user,” as Lieb explicitly discloses that both
right and left halves form handle portion 12 and both are needed for a user to
hold light curing device 102. Lieb, para. 19.
Furthermore, “[p]rior art references may be ‘indicative of what all
those skilled in the art generally believe a certain term means . . . [and] can

22 See https://www.merriam-webster.com/dictionary/handle (last visited
December 27, 2019) (emphasis added).
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often help to demonstrate how a disputed term is used by those skilled in the
art.’” In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999) (quoting
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1584 (Fed. Cir.
1996)). “Accordingly, the PTO’s interpretation of claim terms should not be
so broad that it conflicts with the meaning given to identical terms in other
patents from analogous art.” Id. (emphasis added). In this case, Lieb
demonstrates how the term “handle portion” is used by a skilled artisan,
namely, as a portion of housing H “that is adapted to be held by the user.”
See Lieb, para. 19. As noted above, Lieb does not disclose the structure to
the left of junction 12A, which the Examiner equates as the claimed “handle
portion,” is “adapted to be held by the user.”
Lastly, the Examiner erred in relying on the transitional term
“comprising,” to interpret Lieb’s head portion A, neck portion B, and handle
portion C as the claimed “elongated unitary, one-piece body formed from a
continuous seamless piece of thermally conductive material,” as being
sufficiently broad to encompass an additional thermally conductive segment
(Lieb’s structure to the right of junction 12A). See Reply Br. 7.23 “The
open-ended transition [term] ‘comprising’ does not free the claim from its
own limitations.” Kustom Signals, Inc. v. Applied Concepts, Inc., 264 F.3d
1326, 1332 (Fed. Cir. 2001). Moreover, to interpret Lieb’s head portion A,
neck portion B, and handle portion C as the claimed “elongated unitary, one-
piece body formed from a continuous seamless piece” is inconsistent with
Appellant’s description of a “unibody construction” that “eliminates seams
and joints through the body 102 itself” as Lieb discloses joint 12A (junction)

23 Appellant’s Reply Brief, filed Jan. 14, 2019.
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between right and left halves of handle portion 12. See Spec. 14, ll. 5, 25–
26; Lieb, Fig. 1.
In conclusion, for the foregoing reasons, we do not sustain the
rejection under 35 U.S.C. § 102(b) of claim 75, and its dependent claims 77,
89, 113, 114, 117, and 118, as anticipated by Lieb.

Rejections IV–XXII
The Examiner’s modification of Lieb and use of the multiple
references noted above does not remedy the deficiency of the Examiner’s
interpretation of Lieb discussed above. See Non-Final Act. 7–31.
Accordingly, for the same reasons discussed supra, we also do not
sustain Rejections IV–XXII.

Rejection XXIII
The Examiner finds that Kennedy discloses a continuous, seamless,
unitary one-piece body 14 including, inter alia, a light emitting head A, a
neck B, and a handle C. Final Act. 31 (citing Kennedy, Fig. 2). To better
illustrate, the Examiner provides an annotated Figure 2 of Kennedy, as
shown below:

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The Examiner’s annotated Figure 2 of Kennedy shows a portable LED
photocuring device including a head portion A, a neck portion B, and a
handle portion C.
Appellant argues that “[n]owhere does Kennedy . . . teach that
‘housing 14’ is a unitary, one-piece structure formed from a continuous
seamless piece of material.” Appeal Br. 26. According to Appellant,
“housing 14 [in Kennedy’s Figure 2] should not be understood as literally
having a simple rectangular structure.” Id. at 27.
In response, “the Examiner finds th[ese] argument[s] unpersuasive
since such interpretation . . . ignores what is disclosed by the prior art” and
Figure 2 of Kennedy is not described as a “schematic,” but rather “as a
‘front elevation view’.” Ans. 5.
We do not agree with the Examiner’s position that because Kennedy’s
Figure 2 depicts housing 14 as a rectangular block, this means that housing
14 constitutes a continuous, seamless, unitary one-piece body. See Final
Act. 31. For example, although Kennedy’s Figure 2 depicts LED module 10
as a rectangular block, nonetheless, Kennedy discloses LED module 10 as
“having a plurality of light emitting diodes.” Kennedy, col. 2, ll. 8–10
(emphasis added). Hence, we agree with Appellant “that Kennedy only
schematically depicts housing 14 as a rectangular block in Figure 2 and
provide[s] no description of the structure of housing 14.” Reply Br. 17
(emphasis added). Accordingly, the Examiner’s determination that
Kennedy’s housing 14 constitutes a continuous, seamless, unitary one-piece
body requires speculation on the Examiner’s part. Patentability
determinations “should be based on evidence rather than on mere
speculation or conjecture.” Alza Corp. v. Mylan Laboratories, Inc., 464 F.
3d 1286, 1290 (Fed. Cir. 2006).
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Hence, Appellant is correct that “[t]he failure of Kennedy to teach
anything about the structure of housing 14 cannot reasonably be interpreted
as somehow disclosing or suggesting ‘an elongated unitary, one-piece
body’.” Reply Br. 17. Moreover, we note that as Kennedy’s Figure 2 is a
“front elevation view,” the vertical line shown connecting CTL 13 (control
circuit) and housing 14 would appear to suggest to a skilled artisan that
housing 14 includes a junction (connection, joint) in that area, and, thus,
housing 14 does not constitute a continuous, seamless, unitary one-piece
body, as the Examiner determines.
The Examiner’s use of the disclosures of Lieb and Cao does not
remedy the deficiency of Kennedy discussed supra. See Final Act. 32–33.
Therefore, for the foregoing reasons, we do not sustain the rejection under
35 U.S.C. § 103(a) of claims 75, 113, 114, 117–119, and 124–126 as
unpatentable over Kennedy, Lieb, and Cao.

CONCLUSION

Claim(s)
rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
125 112, first
paragraph
Written description 125
76–85, 92,
111, 112,
125
112, second
paragraph
Indefiniteness 76–85, 92,
111, 112,
125

75–77, 89,
113, 114,
117, 118
102(b) Lieb 75–77,
89, 113,
114, 117,
118
78, 112, 116 103(a) Lieb 78, 112,
116
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79–81 103(a) Lieb, Marson,
Gemunder
79–81
82, 83 103(a) Lieb, Scott ‘797 82, 83
90, 108, 109 103(a) Lieb, Maglica 90, 108,
109
91, 103, 105 103(a) Lied, Scott ‘514 91, 103,
105
92 103(a) Lieb, Lee, Cooper 92
93 103(a) Lieb, Scott ‘113 93
94, 96, 97 103(a) Lieb, Cao 94, 96, 97
95 103(a) Lieb, Cao, Katsuda 95
98, 99 103(a) Lieb, Liu 98, 99
104 103(a) Lieb, Nortrup 104
106, 107 103(a) Lieb, Uttinger 106, 107
110, 111 103(a) Lieb, Gemunder 110, 111
75, 82–89 103(a) Lieb, Scott ‘797 75, 82–89
75, 100–102 103(a) Lieb, Gill 75, 100–
102
115, 120–
123
103(a) Lieb, Liu 115, 120–
123
115, 120–
123
103(a) Lieb, Liu, Kim 115, 120–
123
75–77, 113,
114, 117–
103(a) Lieb, Kim 75–77,
113, 114,
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119, 127,
128
117–119,
127, 128
129 103(a) Lieb, Kim,
Sherman
129
75, 113,
114, 117–
119, 124–
126
103(a) Kennedy, Lieb,
Cao
75, 113,
114, 117–
119, 124–
126
Overall
outcome
76–85, 92,
111, 112,
125
75, 86–
91, 93–
110, 113–
124, 126–
129

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)(iv).

AFFIRMED-IN-PART