Steven Jensen et al.

Patent Trials and Appeals Board

Mar 18, 2021

2020004507 (P.T.A.B. Mar. 18, 2021)

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).
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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,
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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.
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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).
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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
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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
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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.
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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.
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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
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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
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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