Karrie Lynn. Velky

Patent Trials and Appeals Board

Aug 2, 2019

15267998 - (D) (P.T.A.B. Aug. 2, 2019)

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.
15/267,998 09/16/2016 Karrie Lynn Velky P07985US1 1473
34082 7590 08/02/2019
ZARLEY LAW FIRM P.L.C.
CAPITAL SQUARE
400 LOCUST, SUITE 200
DES MOINES, IA 50309-2350
EXAMINER
DEMOSKY, GWEN M
ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
08/02/2019 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):
crasmussen@zarleylaw.com
emarty@zarleylaw.com
kconrad@zarleylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KARRIE LYNN VELKY
____________

Appeal 2019-0015361
Application 15/267,9982
Technology Center 3700
____________

Before ANTON W. FETTING, MICHAEL C. ASTORINO, and
TARA L. HUTCHINGS, Administrative Patent Judges.

HUTCHINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–7 and 9–11. We have jurisdiction under 35 U.S.C.
§ 6(b).

1 Our decision references Appellant’s Appeal Brief (“App. Br.,” filed
June 14, 2018) and Reply Brief (“Reply Br.,” filed Dec. 10, 2018), and the
Examiner’s Answer (“Ans.,” mailed Oct. 12, 2018), Advisory Action (“Adv.
Act.,” mailed Feb. 20, 2018), and Final Office Action (“Final Act.,” mailed
Dec. 14, 2017).
2 Appellant does not identify the real party of interest, and we find no
indication that an entity other than the inventor is the real party in interest.
Appeal 2019-001536
Application 15/267,998

2
We REVERSE.
CLAIMED INVENTION
Appellant’s claimed invention is “directed to [a] dental suction
assembly, and more particularly to a hands-free dental suction assembly.”
Spec. 1:12–13.
Claim 1 is the sole independent claim on appeal, and is representative
of the claimed subject matter:
1. A hands-free dental suction assembly, comprising:
a pad having a pair of parallel slits positioned between a
first end and a second end and formed to cover a buccal mucosa
of a cheek;
a flexible suction tip inserted through the parallel slits to
connect the pad to the suction tip; and
wherein the pad has a size and shape to maintain the
suction tip in a corner of a mouth.

REJECTIONS3
Claims 1 and 7 are rejected under 35 U.S.C. § 102(a)(1) as anticipated
by Barham (US 8,398,398 B1, iss. Mar. 19, 2013).
Claims 2–5 and 9–11 are rejected under 35 U.S.C. § 103 as
unpatentable over Barham.
Claim 6 is rejected under 35 U.S.C. § 103 as unpatentable over
Barham and Hertz (US 5,813,857, iss. Sept. 29, 1998).

3 The Examiner has withdrawn the rejection of claim 9 under 35 U.S.C.
§ 112(b) as indefinite. Adv. Act. 2.
Appeal 2019-001536
Application 15/267,998

3
ANALYSIS
Anticipation
Appellant argues that the Examiner erred in rejecting independent
claim 1 under 35 U.S.C. § 102(a)(1) because Barham does not teach that the
pad is “formed to cover a buccal mucosa of a cheek” and to have “a size and
shape to maintain the suction tip in a corner of a mouth,” as recited in claim
1. See App. Br. 3–5; see also Reply Br. 2–3. Appellant’s Specification
describes that the pad is “generally triangular or egg shape and formed to
comfortably cover the buccal mucosa of the cheek.” Spec. 2:7–9, Fig. 1.
Alternatively, the pad has an apex at one end with tapered eges that extend
to flat side edges, and a bottom with convex edges having a concave edge
therebetween. Id. at 2:21–24, Fig. 2. The pad is approximately 1 3/8 inches
wide and 1 5/8 inches long. Id. at 2:17–19. “The size and shape of the pad
12 is important in order to keep [the] suction tip in [the] corner of the mouth
while still providing comfort and minimizing obstruction.” Id. at 2:19–20.
Barham, in contrast, relates to a foam protective pad that is mounted
on the end of a tubular dental member, such as a vacuum suction tip.
Barham, col. 1, ll. 18–20. Barham’s pad “has essentially a diamond shape
with truncated top and bottom corners.” Id. at col. 4, ll. 10–11. However,
the shape “is not critical and other shapes can be used.” Id. at col. 4, ll. 12–
14, Figs. 3A–3D. The pad is approximately one inch wide and two inches
long. Id. at col. 4, ll. 4–7. The pad is mounted on an end of a vacuum tube.
Id. at col. 1, ll. 64–65. Specifically, the pad, initially flat, is folded between
its top and bottom edges and mounted on the vacuum tube to partially close
an open end of the tube. Id. at col. 1, l. 65–col. 2, l. 3. The pad is sized to
be “wider than the tubular vacuum member so that the protective pad, when
Appeal 2019-001536
Application 15/267,998

4
folded, extends completely around the tubular vacuum member.” Id. at col.
2, ll. 25–27. The suction apparatus with the folded pad is used in a dental
cavity. Id. at col. 2, ll. 31.
The Examiner finds that Barham describes a pad that is formed to
cover a buccal mucosa of a cheek. Final Act. 3 (citing Barham (col. 6, ll.
38–54)). Yet, the portion of Barham relied upon by the Examiner describes
how the foam pad folded over the end of the vacuum tube “prevent[s] the
soft portions of the patient’s mouth from being sucked into the distal end 12
of the tubular vacuum member 10,” thereby “protect[ing] delicate areas of
the patient’s mouth when the suction apparatus 2 is in use.” Barham, col. 6,
ll. 40–45. Barham’s pad, which is sized and shaped to fold over an end of a
vacuum tube, has a different shape and size than the pad described in
Appellant’s Specification. In light of these structural differences, the
Examiner does not adequately support finding that Barham’s pad is formed
to cover a buccal mucosa of a cheek. In re Spada, 911 F.2d 705, 708 (Fed.
Cir. 1990) (“When the PTO shows [a] sound basis for believing that the
products of the applicant and the prior art are the same, the applicant has the
burden of showing that they are not.”). For example, unlike the various pad
shapes described in Appellant’s Specification, a diamond-shaped pad is not
flat along its length and, if used to cover the buccal mucosa of a cheek,
would seemingly poke a patient’s gum and/or leave portions exposed.
The Examiner further determines that Barham has a size and shape to
maintain the suction tip in a corner of a mouth, as required by claim 1,
because Barham’s pad “is sized and shaped to be inserted into a mouth, and
is therefore functionally capable of being held in the corner of the mouth.”
Final Act. 3. Yet, that Barham’s pad is folded and mounted to a vacuum
Appeal 2019-001536
Application 15/267,998

5
tube for insertion into a mouth does not establish that Barham’s pad has a
size and shape to maintain the suction tip in a corner of a mouth, particularly
in light of the structural differences described above. Here, the Examiner’s
analysis fails to provide a sound basis for belief that the pad of Barham has a
size and shape to maintain the suction tip in the corner of the mouth, as
required by claim 1.
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claim 1 and dependent claim 7 under 35 U.S.C. § 102(a)(1).

Obviousness
The Examiner’s rejections of dependent claims 2–6 and 9–11 under
35 U.S.C. § 103 do not cure the deficiencies in the Examiner’s rejection of
claim 1 under 35 U.S.C. § 102(a)(1). Therefore, we do not sustain the
rejections of claims 2–6 and 9–11 under 35 U.S.C. § 103(a) for the same
reasons set forth above with respect to claim 1.

DECISION
The Examiner’s rejection of claims 1 and 7 under 35 U.S.C.
§ 102(a)(1) is reversed.
The Examiner’s rejections of claims 2–6 and 9–11 under 35 U.S.C.
§ 103 as unpatentable are reversed.

REVERSED