Steven Jensen et al.Download PDFPatent Trials and Appeals BoardMar 18, 20212020004507 (P.T.A.B. Mar. 18, 2021) Copy Citation 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. 12/944,937 11/12/2010 Steven D. Jensen CAO-010-NP 6716 91479 7590 03/18/2021 CAO Group, Inc. Attn: Legal Department 4628 W Skyhawk Dr West Jordan, UT 84084-4501 EXAMINER LIU, TRACY ART UNIT PAPER NUMBER 1612 NOTIFICATION DATE DELIVERY MODE 03/18/2021 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): geoff@dobbiniplaw.com shaylyn@dobbiniplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte STEVEN D. JENSEN and DENSEN CAO1 ____________________ Appeal 2020-004507 Application 12/944,937 Technology Center 1600 ____________________ Before ERIC B. GRIMES, JEFFREY N. FREDMAN, and ROBERT A. POLLOCK, Administrative Patent Judges. POLLOCK, Administrative Patent Judge. DECISION ON APPEAL This appeal under 35 U.S.C. § 134(a) involves claims to a dental treatment system comprising a multiplicity of treatment strips. Appellant seeks our review of the Examiner’s decision to reject claims 1, 2, and 4–13 as obvious in view of the prior art. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellant identifies CAO Group, Inc. as the real party in interest. Appeal Br. 2. We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appeal 2020-004507 Application 12/944,937 2 Statement of the Case According to the Specification, “[c]onventional dental whitening strips are designed to only cover the portion of an individual’s teeth that is viewable during normal interactions with other people.” Spec. ¶ 4. Because “the length of existing whitening strips is designed to only cover teeth that are visible to casual onlookers[,] [e]xisting dental strips usually cover from 1st bicuspid to 1st bicuspid of a human dental arch, and therefore do not usually cover teeth located in the back of the mouth (e.g., molars).” Id. ¶ 6. Moreover, [T]he width of conventional dental whitening strips typically incorporates a one-size fits-all design to accommodate the various sizes of teeth found in humans. Therefore by design, conventional dental whitening strips are configured such that the user folds any excess width, which cannot be fit on the front surface of the teeth, over to the back surface of the teeth. The excess width usually does not cover the entire back surface of the teeth, and thus does not provide an even treatment to the back surfaces of the teeth. Id. ¶ 5. But, “many dental treatments (e.g., those other than whitening) require that the entire surface of every tooth be treated. Conventional dental strips are not sufficient to apply a uniform treatment to the entire surface of every tooth.” Id. ¶ 7. Accordingly, “embodiments of the present invention include methods, devices, and systems that provide effective dental treatments to all tooth surfaces of the entire dental arch.” Id. ¶¶ 9, 17. Claims 1, 2, and 4–13 are on appeal, of which claims 1, 6 and 11 are independent. Appellant directs its arguments to claims 1, 6, and 11, Appeal 2020-004507 Application 12/944,937 3 collectively, and sets forth no additional arguments with respect to the dependent claims. See Appeal Br. 8–14.2 Claim 6 is representative: 6. A dental treatment system, comprising: a front portion treatment strip sized to fully cover one or more teeth on a front portion of a user’s dental arch; two back portion treatment strips, each of the two back portion treatment strips sized to fully cover one or more teeth on a back portion of the user’s dental arch; wherein the front portion treatment strip is a separate strip from each of the at [sic] two back portion treatment strips; wherein each of the two back portion treatment strips have a different size than the front portion treatment strip; and wherein the front portion treatment strip and the two back portion treatment strips comprise: an insoluble backing layer that comprises a flexible thin film; and a treatment composition layer formed on one side of the insoluble backing layer; and wherein the front portion treatment strip, when applied to the user’s teeth, overlaps a portion of each of the two back portion treatment strips. Id. at 15–16. Issue The Examiner rejects claims 1, 2, and 4–13 under 35 U.S.C. § 103(a) as obvious in view of: 2 In the October 9, 2019, Notice of Defective Appeal Brief, the Examiner indicated that the Summary of Claimed Subject Matter section of the Appeal Brief failed to show the paragraph numbers that maps the claims to the specification and drawings. On February 10, 2020, Appellant submitted a substitute section correcting this omission. We cite to the original Appeal Brief for simplicity. Appeal 2020-004507 Application 12/944,937 4 1) Sagel3 and Xu4 (Final Act. 3–5); 2) Sagel, Xu, and Trapozzano5 (id. at 6–7); and 3) Sagel, Xu, Trapozzano, and Dirksing6 (id. at 8–9). Appellant contends none of the above combinations teach or suggest a dental treatment system “wherein the front portion treatment strip, when applied to the user’s teeth, overlaps a portion of each of the two back portion treatment strips,” as recited in independent claims 1, 6, and 11. We do not find Appellant’s arguments persuasive. For the reasons set forth below, we affirm the Examiner’s rejection of independent claims 1, 6, and 11 as obvious in view of Sagel and Xu. Appellant does not separately contest any element of dependent claims 2, 4, 5, 7–10, 12, and 13 such that they fall with the independent claims. We adopt the Examiner’s findings of fact and reasoning regarding the content and application of Sagel and Xu.7 We emphasize the following findings of fact relevant to the contested element. Findings of Fact 1. Sagel discloses a teeth whitening kit comprising a strip of material coated on one side with a layer of tooth whitening composition. Sagel, e.g., Abstract, ¶¶ 16, 29. Sagel describes the strip of material as conformable to the contoured surfaces of the teeth, the interstitial tooth spaces, and the soft tissue. A relatively low flexural stiffness enables the strip of material to drape over the 3 Sagel et al., US 2002/0146666 A1, publ. Oct. 10, 2002. 4 Xu et al., US 6,503,486 B2, issued Jan. 7, 2003. 5 Trapozzano, US 3,118,230, issued Jan. 21, 1964. 6 Dirksing et al., US 6,277,458 B1, issued Aug. 21, 2001. 7 We need not reach the Examiner’s further argument with respect to Trapozzano and Dirksing in rejections 2) and 3). Appeal 2020-004507 Application 12/944,937 5 contoured surfaces of teeth and soft tissue with very little force being exerted; that is, conformity to the curvature of the wearer’s mouth and gaps between adjacent teeth is maintained because there is little residual force within strip of material to cause it to return to its substantially flat shape. Id. ¶ 27. 2. Figure 7 of Sagel is reproduced below: Figure 7 is a top schematic plan view of Sagel’s tooth whitening system applied to the maxillary (upper) teeth. Id. ¶ 17. With reference to Figure 7, Sagel teaches that the strip of material is preferably sized and configured to cover a portion of the teeth to be whitened and portions of the soft tissue adjacent these teeth such that the tooth whitening composition is applied to both the teeth and soft tissue. The strip of material is held in place on a plurality of adjacent teeth by adhesive attachment to the teeth and/or the soft tissue, wherein the adhesiveness can be provided by one or more of the tooth whitening compositions described herein. Id. ¶ 29. 3. Xu discloses “a strip for applying a whitening agent to teeth in order to remove stains from the surface thereof.” Xu 1:9–12. Xu’s strip comprises a thin, flexible film comprising a water hydratable matrix including a peroxide whitening agent to whiten the teeth to which the film is applied. Id. at Abstract, 1:52–62. Xu teaches that when the film is hydrated Appeal 2020-004507 Application 12/944,937 6 by saliva in the oral cavity or prewetted with water and applied to the teeth surface it will “adhere to the teeth in an appropriate manner.” Id. at 3:39–41. “For ease of use, the dry film is cut into pieces of suitable size and shape and packed into a suitable container.” Id. at 3:35–36. 4. According to Xu, “the whitening strip is formed to have a width dimension suitable to cover a row of teeth,” whereas, [t]he length dimension of the whitening strip is determined by the amount of coverage desired. In this regard, the number of teeth which it is desired to whiten will determine the dimensions of the whitening strip. For instance, it may be desired to only whiten the front teeth, which are most easily seen by others. Accordingly, the length of whitening strip can be reduced in this case, as compared to the case where it is desired to whiten all of the teeth. Id. at 3:41–54; see also Reply Br. 2 (Appellant admitting Xu teaches different lengths of whitening strip). 5. Trapozzano is directed to dental occlusal test strips designed to test for high spots on the occlusal surface of teeth. Trapozzano 1:8–9. Trapozzano discloses occlusal test strips dimensioned to cover the posterior teeth (id. at Fig. 2, claim 5), or the anterior teeth (id. at Fig. 6, claim 7). Analysis For the reasons set forth below, we affirm the Examiner’s rejection of independent claims 1, 6, and 11 as obvious in view of Sagel and Xu. Appellant does not separately contest any element of dependent claims 2, 4, 5, 7–10, 12, and 13 such that they fall with the independent claims. Appellant’s dental treatment system, as claimed, comprises three treatment strips, each sized to fully cover one or more teeth. Independent claims 6 and 11 further require that two of the strips are smaller than the Appeal 2020-004507 Application 12/944,937 7 third. Representative claim 6, for example, recites “a front portion treatment strip” and “two back portion treatment strips hav[ing] a different size than the front portion treatment strip.” Although each independent claim also recites “wherein the front portion treatment strip, when applied to the user’s teeth, overlaps a portion of each of the two back portion treatment strips,” we consider both the application of the treatment strips to teeth, and the claimed overlap once applied, as statements of intended use entitled to no patentable weight. See Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002) (“the patentability of apparatus or composition claims depends on the claimed structure, not on the use or purpose of that structure”). Accordingly, a finding of obviousness need not address the application of dental strips to teeth, nor why one of ordinary skill in the art would have found it obvious to overlap adjacent dental treatment strips. See, e.g., In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (prior art may satisfy the claim limitations if it is merely capable of performing the intended use). Nevertheless, as the Examiner points to the application of dental strips to teeth in the cited art, and has adequately established why one of ordinary skill in the art would have found it obvious to overlap the strips in use, we address these elements in our discussion, below. According to the Examiner, Sagel differs from the instant claims in not disclosing wherein the entire dental arch is whitened, wherein the strip of material is . . . cut into smaller pieces such that one piece is for treating a front portion of a user’s dental arch and two pieces are for treating a back portion of a user’s dental arch, wherein the two back portion pieces are smaller than the front portion piece, and wherein the front portion piece overlaps a portion of each of the two back portion pieces. Appeal 2020-004507 Application 12/944,937 8 Final Act. 3–4. The Examiner cites Xu as disclosing a tooth whitening film, which, for ease of use, may be cut into strips of suitable length and width according to the amount of coverage desired, i.e., for application to all teeth, or only to the front teeth. Id. at 4–5. With respect to application of tooth whitening film to all teeth, the Examiner reasons that: placement of the strip onto the rear teeth would be expected to be more difficult than on the front teeth since it would be hindered by a user’s cheeks. Therefore, it would have been obvious to have included strips comprised of more than one pieces, in particular a front portion strip and two back portion strip for each side, wherein the back portion strips are smaller than the front portion strips, since the use of smaller sections would prevent premature folding and/or disruption of the whitening composition while the strip is placed onto the front surface of the teeth and then folded over onto the back surface. Id. at 4–5; see also, id. at 5–6 (explaining why for ease of placement, it would have been obvious to use smaller strips for the rear teeth). With respect to the claim element “wherein the front portion treatment strip, when applied to the user’s teeth, overlaps a portion of each of the two back portion treatment strips,” the Examiner finds “it would have been obvious to overlap pieces of the strip when placed on the teeth to ensure that the entire dental arch is covered with whitening substance and is whitened.” Id. at 6. In response, Appellant states that neither Sagel nor Xu teach or suggest the use of multiple sections of whitening strip for a single dental arch, nor that any portion of such sections would overlap. Appeal Br. 8–9; Reply Br. 2–3. Appellant’s assertion, unaccompanied by evidence or explanatory argument, is insufficient to rebut the rejection. Appeal 2020-004507 Application 12/944,937 9 In its Reply Brief, Appellant further argues that Xu’s teaching that “a shortened length strip may be used when ‘it may be desired to whiten only the front teeth, which are most easily seen by others,’” teaches away from the use of multiple strips and “instead teaches that more teeth (further back in the mouth) require a longer strip.” Reply Br. 2. But arguments raised for the first time in a Reply Brief are untimely and waived. Cross Med. Prods. Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1320–21 n.3 (Fed. Cir. 2005) (“The reply brief is not an opportunity to make arguments that could have been made during prosecution, but were not. Nor is the reply brief an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner’s rejections, but were not.”); Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (Informative). Nevertheless, in the interest of compact prosecution, we address Appellant’s untimely argument. 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). In this case, Xu’s statement that a longer strip may be used to reach teeth “further back in the mouth” implies, at best, an embodiment using a single strip to cover the entire dental arch. Because even an express preference for certain embodiments does not constitute a teaching away from a broader disclosure or non-preferred embodiments, we do not find Appellant’s argument persuasive. See In re Susi, 440 F.2d 442, 446 n.3 (CCPA 1971). In sum, Xu discloses that it may be desirable to whiten only the front teeth, or an entire dental arch, using dental strips, and that such “dental strips may be cut into pieces for ease of use.” Ans. 4; FF 3. We find reasonable the Appeal 2020-004507 Application 12/944,937 10 Examiner’s finding that, in light of the hindrance afforded by a patient’s cheeks, one of ordinary skill in the art seeking to whiten an entire dental arch would have found it obvious to use one piece of whitening strip on the front teeth and smaller portions on the back teeth. See e.g., Ans. 4. Xu, thus, teaches or suggests the three treatment strip portions recited in the independent claims on appeal. Moreover, and though not necessary in light of claim construction, we further agree with the Examiner that “it would have been obvious to have overlapped pieces of the strip . . . to insure that the entire dental arch is covered with whitening substance and is whitened.” See id. at 4–5. Appellant has not shown that the Examiner erred in rejecting claims 1, 6, and 11 in light of Sagel and Xu. Accordingly, we affirm the Examiner’s rejection of those claims. Claims 2, 4, 5, 7–10, 12, and 13, which are not separately argued, fall with claims 1, 6, and 11. 37 C.F.R. § 41.37(c)(1)(iv) (2018). The remaining two rejections encompass the same arguments regarding Sagel and Xu but in conjunction with Trapozzano and/or Dirksing. We affirm those rejections for the same reasons set forth above. We further note that Trapozzano discloses occlusal marking strips for application to anterior or posterior portions of the dental arch, respectively. FF5. As noted by Appellant, the Examiner has not established that Trapozzano teaches or suggests the simultaneous application of anterior and posterior occlusal marking strips. See Appeal Br. 10. But as we note above, “appli[cation] to the user’s teeth” as recited in the independent claims is but an intended use entitled to no patentable weight. Trapozzano, nonetheless, underscores the use of multiple segments of dental strip to cover different Appeal 2020-004507 Application 12/944,937 11 portions of the dental arch. For this additional reason, we affirm the remaining rejections. CONCLUSION Claim(s) Rejected 35 U.S.C § Reference(s)/Basis Affirmed Reversed 1, 2, 4– 13 103(a) Sagel, Xu 1, 2, 4– 13 1, 2, 4– 13 103(a) Sagel, Xu, Trapozzano 1, 2, 4– 13 1, 2, 4– 13 103(a) Sagel, Xu, Trapozzano, Dirksing 1, 2, 4– 13 Overall Outcome 1, 2, 4– 13 TIME PERIOD 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 Copy with citationCopy as parenthetical citation