Turkbas, JayDownload PDFPatent Trials and Appeals BoardOct 24, 201914191149 - (D) (P.T.A.B. Oct. 24, 2019) 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. 14/191,149 02/26/2014 Jay Turkbas 473893.000068 4253 25764 7590 10/24/2019 Faegre Baker Daniels LLP PATENT DOCKETING - INTELLECTUAL PROPERTY 2200 WELLS FARGO CENTER 90 SOUTH SEVENTH STREET MINNEAPOLIS, MN 55402-3901 EXAMINER LEE, MICHELLE J ART UNIT PAPER NUMBER 3786 NOTIFICATION DATE DELIVERY MODE 10/24/2019 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): PatentDocketing@FaegreBD.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JAY TURKBAS ____________ Appeal 2019-002114 Application 14/191,149 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 Final Office Action (dated July 13, 2017) rejecting claims 1– 6, 9–17, 19–21, and 23–27.2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b). SUMMARY OF DECISION We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Shock Door, Inc. is identified as the real party in interest in Appellant’s Appeal Brief (filed June 29, 2018). Appeal Br. 2. 2 Claim 7, 8, 18, and 22 are canceled. Appeal Br. 16–18 (Claims App.). Appeal 2019-002114 Application 14/191,149 2 INVENTION Appellant’s invention relates to a composite mouthguard made from different polymeric materials, wherein at least one of the polymeric materials includes one or more flavorants. Spec. para. 19. Claims 1, 20, 23, and 27 are independent. Claim 1 is illustrative of the claimed invention and reads as follows: 1. A composite flavored mouthguard comprising: a mouthguard base having a generally U-shaped profile, the mouthguard base having an outer wall and an inner wall, the outer wall and inner wall forming an upper channel, the mouthguard base formed entirely of a first material; an elastomeric frame including an impact shield disposed over the outer wall, a first cushion pad and a second cushion pad positioned between the outer wall and inner wall of the mouthguard base, the elastomeric frame formed entirely of a second material, wherein the shield, the outer wall, the inner wall, and the first and second cushion pads define a bottom surface of the mouthguard; and a liner disposed within the upper channel and defining a top surface of the mouthguard, the liner formed entirely of a third material, wherein at least one of the first material, the second material, or the third material is unsweetened and includes an unsweetened flavorant, and at least one other of the first material, the second material, or the third material includes a sweetener consisting essentially of sugar alcohols, natural sugars, artificial sugars, and combinations thereof. Appeal 2019-002114 Application 14/191,149 3 REJECTIONS3 I. The Examiner rejects claims 1, 2, 4, 5, 15, 19, and 26 under 35 U.S.C. § 103(a) as being unpatentable over Castaldi,4 Kittelsen,5 Maurello,6 and Cramer.7 II. The Examiner rejects claims 3 and 6 under 35 U.S.C. § 103(a) as being unpatentable over Castaldi, Kittelsen, Maurello, Cramer, and Macinnis.8 III. The Examiner rejects claim 14 and 17 under 35 U.S.C. § 103(a) as being unpatentable over Castaldi, Kittelsen, Maurello, Cramer, and Yoshida.9 IV. The Examiner rejects claim 16 under 35 U.S.C. § 103(a) as being unpatentable over Castaldi, Kittelsen, Maurello, Cramer, and Washburn.10 V. The Examiner rejects claims 1 and 12 under 35 U.S.C. § 103(a) as being unpatentable over Castaldi, Kittelsen, Maurello, and Macinnis. 3 We understand the Examiner has withdrawn the rejection of claim 27 under 35 U.S.C. § 101 as being directed to or encompassing a human organism. See Advisory Action, dated Nov. 3, 2017; Final Act. 2–3. 4 Castaldi, US 5,031,638, issued July 16, 1991. 5 Kittelsen et al., US 5,339,832, issued Aug. 23, 1994. 6 Maurello, US 2007/0151568 A1, published July 5, 2007. 7 Cramer et al., US 2010/0304338 A1, published Dec. 2, 2010. 8 Macinnis et al., US 2010/0055233 A1, published Mar. 4, 2010. 9 Yoshida, US 5,826,581, issued Oct. 27, 1998. 10 Washburn, US 6,082,363, issued July 4, 2000. Appeal 2019-002114 Application 14/191,149 4 VI. The Examiner rejects claims 5 and 9 under 35 U.S.C. § 103(a) as being unpatentable over Castaldi, Kittelsen, Maurello, Macinnis, and Cramer. VII. The Examiner rejects claims 1 and 10 under 35 U.S.C. § 103(a) as being unpatentable over Castaldi, Kittelsen, Maurello, and Cramer. VIII. The Examiner rejects claim 11 under 35 U.S.C. § 103(a) as being unpatentable over Castaldi, Kittelsen, Maurello, Cramer, and Macinnis. IX. The Examiner rejects claim 1 under 35 U.S.C. § 103(a) as being unpatentable over Castaldi, Kittelsen, Maurello, and Cramer. X. The Examiner rejects claim 13 under 35 U.S.C. § 103(a) as being unpatentable over Castaldi, Kittelsen, Maurello, Cramer, and Macinnis. XI. The Examiner rejects claims 20 and 21 under 35 U.S.C. § 103(a) as being unpatentable over Castaldi, Kittelsen, Macinnis, and Cramer. XII. The Examiner rejects claims 23 and 24 under 35 U.S.C. § 103(a) as being unpatentable over Castaldi, Kittelsen, Cramer, and Macinnis. XIII. The Examiner rejects claim 25 under 35 U.S.C. § 103(a) as being unpatentable over Castaldi, Kittelsen, Cramer, Macinnis, and Adell.11 11 Adell, US 5,406,963, issued Apr. 18, 1995. Appeal 2019-002114 Application 14/191,149 5 XIV. The Examiner rejects claim 27 under 35 U.S.C. § 103(a) as being unpatentable over Persichetti,12 Maurello, and Cramer. ANALYSIS Rejection I The Examiner finds that the combined teachings of Castaldi and Kittelsen disclose a mouthguard including, inter alia, a base, a frame, and a liner made from a first, second, and third material, respectively. Final Act. 3–4 (citing Castaldi, col. 3, ll. 39–41, col. 4, ll. 6–8, 65, Figs. 1, 2; Kittelsen, col. 4, ll. 49, 59–61, 66–67, Fig. 2, 3, 5, 6). However, the Examiner finds that the mouthguard of Castaldi, as modified by Kittelsen, fails to disclose that at least one of the first, second, and third material includes an unsweetened flavorant, whereas one of the other first, second, and third material includes a sweetener. Id. at 4–5. Nonetheless, the Examiner finds that Maurello discloses a mouthguard made from rubber, which according to the Examiner is analogous to the elastomeric material (i.e., second material) of the frame of the mouthguard of Castaldi, as modified by Kittelsen, and, moreover, includes an unsweetened flavorant, i.e., sour flavorant. Id. at 4 (citing Maurello, paras. 1, 23, 89). Hence, the Examiner determines that it would have been obvious for a person of ordinary skill in the art to modify “at least one of the first material, the second material, or the third material of [the mouthguard of] Castaldi in view of Kittelsen to be unsweetened” and, thus, include “an unsweetened flavorant, as taught by Maurello, which ‘provides flavor when placed into 12 Persichetti, US 2003/0075184 A1, published Apr. 24, 2003. Appeal 2019-002114 Application 14/191,149 6 the user’s mouth taking away the often stale taste left on the mouth guard.’” Id. at 4 (citing Maurello, para. 12). Appellant argues that the Examiner’s modification “is a mere invitation to embark upon experimentation” because “[t]he flavored composite mouthguard recited in claim 1 advantageously separates sweeteners and unsweetened flavorants and delivers them to targeted areas of a user’s mouth by separating them into different components/materials,” whereas “[n]one of Castaldi, Kittelsen, Maurello, or Cramer reasonably contemplates . . . separately providing an unsweetened flavorant and a sweetener within a single mouthguard.” Id. at 8–9. In response, the Examiner takes the position that the feature of “flavorants that target distinct areas of the mouth[guard],” which Appellant relies on in the arguments, is “not recited in the rejected claim(s).” Ans. 25.13 We do not agree with the Examiner’s position because independent claim 1 specifically recites that at least one of the first, second, and third material includes an unsweetened flavorant, whereas one of the other first, second, and third material includes a sweetener. See Appeal Br. 15 (Claims App.). The use of the term “other” makes it clear that different (separate) portions of the claimed mouthguard receive the unsweetened flavorant and the sweetener. Furthermore, it is undisputed that the mouthguard of Castaldi, as modified by Kittelsen, fails to disclose that at least one of the first, second, and third material includes an unsweetened flavorant, whereas one of the 13 Examiner’s Answer, dated Oct. 19, 2018. Appeal 2019-002114 Application 14/191,149 7 other first, second, and third material includes a sweetener. Maurello discloses a rubber mouthguard that includes an unsweetened flavorant impregnated into the entirety of the rubber material. See Maurello, paras. 1, 89. As such, although Maurello discloses that it was known in the art to include an unsweetened flavorant into the entirety of a mouthguard’s rubber material, absent hindsight, we find the Examiner’s rejection insufficient to explain what would have prompted a person of ordinary skill in the art to include an unsweetened flavorant, as taught by Maurello, specifically to the rubber elastomeric frame portion (i.e., second material) of the mouthguard of Castaldi, as modified by Kittelsen, when Maurello discloses that in order to “take away the often stale taste left on a the mouth guard” the unsweetened flavorant is supplied into the entirety of the rubber mouthguard. See Maurello, para. 12. Hence, there is no comparable teaching or technical reasoning provided by the Examiner that including Maurello’s unsweetened flavorant into the rubber elastomeric frame portion of the mouthguard of Castaldi, as modified by Kittelsen, rather than into the entirety of the mouthguard, would “take away the often stale taste left on the mouth guard,” as reasoned by the Examiner. See Final Act. 4 (citing Maurello, para. 12). We, thus, agree with Appellant that the Examiner’s modification “is a mere invitation to embark upon experimentation.” Appeal Br. 9. Furthermore, we note that in addition to rubber, Maurello discloses that other materials, such as plastic, polymers, and other man-made materials can be employed to make its mouthguard. See Maurello, para. 89. As the unsweetened flavorant of Maurello can be included into other materials in addition to rubber, absent hindsight, it is not clear why a person of ordinary Appeal 2019-002114 Application 14/191,149 8 skill in the art would specifically choose to include Maurello’s unsweetened flavorant into the rubber elastomeric frame portion (i.e., second material) of the mouthguard of Castaldi, as modified by Kittelsen, as opposed to the thermoplastic (polymer/plastic) base 36 and/or liner 32. See Castaldi, col. 3, ll. 39–41, 53–54 The Examiner’s use of the Cramer disclosure does not remedy the deficiency of the Castaldi, Kittelsen, and Maurello combination discussed supra. See Final Act. 5. Accordingly, for the foregoing reasons, we do not sustain the rejection under 35 U.S.C. § 103(a) of claims 1, 2, 4, 5, 15, 19, and 26 as unpatentable over Castaldi, Kittelsen, Maurello, and Cramer. Rejections II–IV The Examiner’s use of the Macinnis, Yoshida, and Washburn disclosures does not remedy the deficiency of the Castaldi, Kittelsen, Maurello, and Cramer combination discussed above in Rejection I. See Final Act. 6–9. Therefore, for the same reasons discussed supra, we also do not sustain Rejections II–IV. Rejection V–X and XIV With respect to Rejections V–X and XIV, the Examiner employs the teachings of Maurello in the same manner and for the same purpose as discussed supra. See Final Act. 11–18. In regard to Rejections V–X, for the reasons discussed supra in Rejection I, we fail to see why a person having ordinary skill in the art would include Maurello’s unsweetened flavorant into the rubber elastomeric Appeal 2019-002114 Application 14/191,149 9 frame portion (i.e., second material) of the mouthguard of Castaldi, as modified by Kittelsen. See id. at 11, 14, 17. As to Rejection XIV, because Persichetti discloses a single-use flavored mouthguard (see Persichetti, para. 19), for the same reasons discussed above in Rejection I, we fail to see why a person having ordinary skill in the art would include Maurello’s unsweetened flavorant into a portion of Persichetti’s mouthguard, that is, to one of first and second layers. See Final Act. 24. Furthermore, the Examiner’s reasoning to modify the mouthguard of Persichetti to include Maurello’s unsweetened flavorant, namely, to “take away the often stale taste left on the mouth guard,” lacks rational underpinning. See id. Persichetti specifically discloses a single-use (disposable) flavored mouthguard that “avoids problems associated with repeated use of a mouthguard,” such as a stale taste, which is a problem that arises when a mouthguard “is used over and over again.” Persichetti, para. 19; Maurello, para.12. Hence, the Examiner’s reasoning does not support the conclusion of obviousness because the Examiner has not adequately shown the relevance of that rationale in the context of Persichetti’s single- use (disposable) flavored mouthguard. Lastly, the Examiner’s use of the Macinnis and Cramer disclosures does not remedy the deficiency of the Castaldi, Kittelsen, and Maurello or the Persichetti and Maurello combinations discussed above. Accordingly, for the foregoing reasons, we also do not sustain Rejections V–X and XIV. Appeal 2019-002114 Application 14/191,149 10 Rejection XI The Examiner finds that that the combined teachings of Castaldi and Kittelsen disclose a mouthguard including, inter alia, a base, a frame, and a liner made from a first, second, and third material, respectively. Final Act. 17–19 (citing Castaldi, col. 3, ll. 39–41, col. 4, ll. 6–8, 65, Figs. 1, 2; Kittelsen, col. 4, ll. 49, 59–61, 66–67, Fig. 2, 3, 5, 6). However, the Examiner finds that the mouthguard of Castaldi, as modified by Kittelsen, fails to disclose that the first material of the base includes an unsweetened flavorant and the third material of the liner includes a sweetener. Id. at 19– 20. Nonetheless, the Examiner finds that Macinnis discloses a mouthguard made from a polymer, which according to the Examiner, is analogous to the thermoplastic material (i.e., first material) of the base of the mouthguard of Castaldi, as modified by Kittelsen, and, moreover, includes an unsweetened flavorant. Id. at 19 (citing Macinnis, paras. 10, 25, 59, 61, 62). Thus, the Examiner concludes that it would have been obvious for a person of ordinary skill in the art to modify the first material, i.e., the base, of the mouthguard of Castaldi in view of Kittelsen, to include an unsweetened flavorant, as taught by Macinnis, in order “to contribute to ‘the desired taste as related to the target flavor.’” Id (citing Macinnis, para. 62). Although Macinnis discloses that it was known in the art to include an unsweetened flavorant into the entirety of the polymeric material of the mouthguard, nonetheless, we find the Examiner’s rejection insufficient to explain what would have prompted a person of ordinary skill in the art to include an unsweetened flavorant, as taught by Macinnis, into the thermoplastic base portion of the mouthguard of Castaldi, as modified by Kittelsen. In other words, the Examiner does not adequately explain why a Appeal 2019-002114 Application 14/191,149 11 skilled artisan would include Macinnis’ unsweetened flavorant into the thermoplastic base portion of the mouthguard of Castaldi, as modified by Kittelsen, when Macinnis discloses that in order “to contribute to the desired taste as related to the target flavor” the unsweetened flavorant is supplied into the entirety of the thermoplastic mouthguard. See Macinnis, paras. 10, 59, 62. There is no comparable teaching or technical reasoning provided by the Examiner that including Macinnis’ unsweetened flavorant into the thermoplastic base portion of the mouthguard of Castaldi, as modified by Kittelsen, rather than the entirety of the mouthguard, would “contribute to the desired taste as related to the target flavor,” as reasoned by the Examiner. See Final Act. 19 (citing Macinnis, para. 62). We, thus, agree with Appellant that the Examiner’s modification “is a mere invitation to embark upon experimentation.” Appeal Br. 9. Furthermore, we note that both base 36 and liner 32 of the mouthguard of Castaldi, as modified by Kittelsen, are made from the same thermoplastic material, i.e., polymer material. See Castaldi, col. 3, ll. 39–41, 53–54 (“both layers are formed from precisely the same thermoplastic material”). As such, absent hindsight, it is not clear why a person of ordinary skill in the art would choose to include Macinnis’ unsweetened flavorant into the thermoplastic base portion of the mouthguard of Castaldi, as modified by Kittelsen, as opposed to the thermoplastic liner portion. The Examiner’s use of the Cramer disclosure does not remedy the deficiency of the Castaldi, Kittelsen, and Macinnis combination discussed supra. See Appeal Br. 20. Appeal 2019-002114 Application 14/191,149 12 Accordingly, for the foregoing reasons, we do not sustain the rejection under 35 U.S.C. § 103(a) of claims 20 and 21 as unpatentable over Castaldi, Kittelsen, Macinnis, and Cramer. Rejections XII and XIII In regards to Rejections XII and XIII, the Examiner finds that the combined teachings of Castaldi and Kittelsen disclose a mouthguard including, inter alia, a frame, a base, and a liner made from a first elastomeric material, a second material, and a third material, respectively. Final Act. 20–22 (citing Castaldi, col. 3, ll. 39–41, col. 4, ll. 6–8, 65, Figs. 1, 2; Kittelsen, col. 4, ll. 49, 59–61, 66–67, Fig. 2, 3, 5, 6). However, the Examiner finds that the mouthguard of Castaldi, as modified by Kittelsen, fails to disclose that at least one of the first, second, and third materials includes an unsweetened flavorant and at least one other of the first, second, and third materials includes a sweetening flavorant. Id. at 22. Nonetheless, the Examiner finds that Cramer teaches an impression material, similar to the liner of Castaldi, as modified by Kittelsen, which includes an unsweetened flavorant, and Macinnis discloses a mouthguard made from a polymeric material, analogous to the thermoplastic base material of Castaldi, as modified by Kittelsen, which includes a sweetening flavorant. Id. (citing Cramer, paras. 17, 57, 58; Macinnis, paras. 10, 46, 59). Thus, the Examiner concludes that it would have been obvious to a person of ordinary skill in the art to include Cramer’s unsweetened flavorant into at least one of the first, second, and third materials of the mouthguard of Castaldi, as modified by Kittelsen, and Macinnis’ sweetening flavorant into at least one other of the first, second, and third materials, in order “to increase user acceptability” Appeal 2019-002114 Application 14/191,149 13 and “to contribute to ‘the desired taste as related to the target flavor,’” respectively. Id. (citing Cramer, para. 58; Macinnis, para. 62). Similar to the discussion supra of Rejections I and XI, because both Cramer and Macinnis disclose introducing flavorants throughout the entirety of their respective materials, we find the Examiner’s rejection insufficient to explain what would have prompted a skilled artisan to include the flavorants of Cramer and Macinnis into different portions of the mouthguard of Castaldi, as modified by Kittelsen. There is no comparable teaching or technical reasoning provided by the Examiner that including the flavorants of Cramer and Macinnis into different portions of the mouthguard of Castaldi, as modified by Kittelsen, rather than the entirety of the mouthguard, would “increase patient acceptability” and contribute to “the desired taste as related to the target flavor,” as the Examiner reasons. See Cramer, para. 57; Macinnis, para. 62. Furthermore, as Macinnis discloses combining a fruit or mint flavor (unsweetened flavorant) with a sweetener (see Macinnis, para. 62), absent hindsight, it is not clear why a person of ordinary skill in the art would separately introduce the unsweetened flavorant and the sweetener into different portions of the mouthguard of Castaldi, as modified by Kittelsen. Thus, the Examiner has not sufficiently rebutted Appellant’s argument that “what these . . . references themselves disclose, is not to separate sweeteners from unsweetened flavorants, but instead to combine flavors.” Appeal Br. 8 (emphasis omitted). Lastly, the Examiner’s use of the Adell disclosures does not remedy the deficiency of the Castaldi, Kittelsen, Cramer, and Macinnis combination discussed above. See Final Act. 23. Appeal 2019-002114 Application 14/191,149 14 Accordingly, for the foregoing reasons, we also do not sustain Rejections XII and XIII. CONCLUSION Claim(s) rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4, 5, 15, 19, 26 103(a) Castaldi, Kittelsen, Maurello, Cramer 1, 2, 4, 5, 15, 19, 26 3, 6 103(a) Castaldi, Kittelsen, Maurello, Cramer, Macinnis 3, 6 14, 17 103(a) Castaldi, Kittelsen, Maurello, Cramer, Yoshida 14, 17 16 103(a) Castaldi, Kittelsen, Maurello, Cramer, Washburn 16 1,12 103(a) Castaldi, Kittelsen, Maurello, Macinnis 1, 12 5, 9 103(a) Castaldi, Kittelsen, Maurello, Macinnis, Cramer 5, 9 1, 10 103(a) Castaldi, Kittelsen, Maurello, Cramer 1 10 11 103(a) Castaldi, Kittelsen, Maurello, Cramer, and Macinnis 11 1 103(a) Castaldi, Kittelsen, Maurello, Cramer 1 13 103(a) Castaldi, Kittelsen, Maurello, Cramer, Macinnis 13 20, 21 103(a) Castaldi, Kittelsen, Macinnis, Cramer 20, 21 23, 24 103(a) Castaldi, Kittelsen, Cramer, Macinnis 23, 24 25 103(a) Castaldi, Kittelsen, Cramer, Macinnis, Adell 25 27 103(a) Persichetti, Maurello, Cramer 27 Overall outcome 1–6, 9–17, 21, 23–27 REVERSED Copy with citationCopy as parenthetical citation