Block, Douglas

Patent Trials and Appeals BoardDec 19, 2019

14721310 - (D) (P.T.A.B. Dec. 19, 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. 14/721,310 05/26/2015 Douglas Block Block - 100 7201 97110 7590 12/19/2019 Raymond Van Dyke Van Dyke Law Washington Square, P.O. Box 65302 1050 Connecticut Avenue NW Washington, DC 20035 EXAMINER WRIGHT, SHANNEL N ART UNIT PAPER NUMBER 3772 NOTIFICATION DATE DELIVERY MODE 12/19/2019 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): ray@rayvandyke.com vandyke@acm.org vandykelaw@aol.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DOUGLAS BLOCK Appeal 2018-0047081 Application 14/721,310 Technology Center 3700 ____________ Before JOHN C. KERINS, JILL D. HILL, and CYNTHIA L. MURPHY, Administrative Patent Judges. MURPHY, Administrative Patent Judge. DECISION ON APPEAL2 The Appellant3 appeals from the Examiner’s rejections of claims 1–12 and 14–21 under 35 U.S.C. § 103. We REVERSE. 1 An oral hearing was held on December 4, 2019. 2 We have jurisdiction under 35 U.S.C. §§ 6(b) and 134(a). 3 The Appellant is the “applicant” as defined by 37 C.F.R. § 1.42 (“the inventor”). “Dr. Douglas Block is the sole inventor, and real party in interest.” (Appeal Br. 3.) Appeal 2018-004708 Application 14/721,310 2 STATEMENT OF THE CASE According to the Appellant, “[t]he present invention is directed to improvements in dentistry, dental care and elder and other care involving the teeth and gums.” (Spec. ¶ 2.) Illustrative Claim 1. A device for removing dental appliances from a patient mouth comprising: a handle; a shaft, said shaft being affixed to said handle at one end thereof; a hook, said hook being affixed at one end to a second end of said shaft, wherein said hook is affixed to said shaft, and wherein said hook has a tip portion at an angle of about 30–110 degrees from a horizontal line, wherein said horizontal line is perpendicular to the axis of said shaft, whereby said device is adapted for a user employing said device to engage a dental appliance in said patient mouth, and said device is adapted to remove said dental appliance therefrom. References Pankratz US 3,686,756 August 29, 1972 Lukase US 5,378,151 January 3, 1995 Rahman US 6,361,317 B1 March 26, 2002 Kangasniemi US 6,997, 709 B2 February 14, 2006 Moritz US 2010/028162 A1 November 11, 2010 Rejections The Examiner rejects claims 1, 3, 5–7, 9, 11, 12, 14, and 15 under 35 U.S.C. § 103 as unpatentable over Pankratz. (Final Action 2.) Appeal 2018-004708 Application 14/721,310 3 The Examiner rejects claims 8, 16, and 17 under 35 U.S.C. § 103 as unpatentable over Pankratz and Lukase. (Final Action 4.) The Examiner rejects claims 2, 4, and 10 under 35 U.S.C. § 103 as unpatentable over Pankratz and Rahman. (Final Action 5.) The Examiner rejects claim 18 under 35 U.S.C. § 103 as unpatentable over Pankratz, Lukase, and Moritz. (Final Action 6.) The Examiner rejects claims 19 and 21 under 35 U.S.C. § 103 as unpatentable over Pankratz and Kangasniemi. (Final Action 6.) The Examiner rejects claim 20 under 35 U.S.C. § 103 as unpatentable over Pankratz, Lukase, and Kangasniemi. (Final Action 7.) ANALYSIS Independent claim 1 sets forth “[a] device for removing dental appliances from a patient mouth” which comprises “a hook” having “a tip portion at an angle of about 30–110 degrees from a horizontal line.” (Appeal Br., Claims App.) The Examiner concludes that the dental device set forth in independent claim 1 would have been obvious over Pankratz. (See Final Action 2.) Specifically, the Examiner finds that Pankratz discloses a dental device having a hook, but does not “explicitly disclose the hook having a tip portion at an angle of about 30–110 degrees.” (Id.) However, the Examiner determines that it would have been obvious to modify Pankratz so that its hook had a tip portion at the claimed angle, “for the purpose of providing easy access to the dental appliance, while preventing damage to the surface of the prosthetic.” (Id. at 3.) Appeal 2018-004708 Application 14/721,310 4 The Appellant argues that the Examiner’s conclusion of obviousness is not sufficiently supported by the record. (See Appeal Br. 11–19.) The Appellant’s position is persuasive. According to the Appellant, Pankratz discloses a dental device that “provide[s] hammering power in both the insertion and the extraction of cemented dental crowns.” (Id. at 16.) The Appellant contends that the angular profile of the tip portion of Pankratz’s hook is “due to the insertion hammering needs.” (Id. at 17.) In other words, the Appellant contends that Pankratz does not show or suggest that the angle of its hook’s tip portion somehow correlates with the Examiner’s articulated reason for the proposed modification. (See id at. 16–19.) Pankratz describes its disclosed tool as “a conventional hammer member having a hooked end 18,” which “has a surface 19 usable to hammer a crown or similar member into place.” (Pankratz, col. 2, ll. 15–19.) Pankratz does indicate that “the end of hook 18” is “used to extract and remove crowns or similar inserts.” (Id. at col. 2, ll. 19–20.) But Pankratz does not indicate how the tip angle of this hook affects the operation of its dental device for any purpose, much less the purposes stated by the Examiner (i.e., “providing easy access to the dental appliance” and “preventing damage to the surface of the prosthetic”). The Examiner does not address the Appellant’s contentions regarding the teachings of Pankratz. (See Answer 8–9.) Rather, the Examiner maintains that “[m]odification of the disclosed angle of Pankratz would be obvious” based upon In re Aller, 220 F.2d 454 (CCPA 1955). (Answer 9.) The Examiner is correct that, “where the general conditions of a claim are Appeal 2018-004708 Application 14/721,310 5 disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” (Aller, 220 F.2d at 456.) However, the parameter purportedly being optimized (i.e., the angle of the hook’s tip portion) must first be recognized as “a result-effective variable.” (In re Antonie, 559 F.2d 618, 619 (CCPA 1977).) Here, the record contains no discussion as to why the angle of the hook’s tip portion would be recognized as a result-effect variable in Pankratz’s dental device. Thus, we do not sustain the Examiner’s rejection of independent claim 1 under 35 U.S.C. § 103 as unpatentable over Pankratz. The rest of the claims on appeal likewise require “a hook” having “a tip portion at an angle of about 30–110 degrees from a horizontal line,” and their rejections likewise rely upon Pankratz to show or suggest this limitation. Thus, we also do not sustain the Examiner’s rejections of claims 2–12 and 14–21 under 35 U.S.C. § 103. Appeal 2018-004708 Application 14/721,310 6 CONCLUSION Claims Rejected 35 U.S.C. References Affirmed Reversed 1, 3, 5–7, 9, 11, 12, 14, 15 § 103 Pankratz 1, 3, 5–7, 9, 11, 12, 14, 15 8, 16, 17 § 103 Pankratz, Lukase 8, 16, 17 2, 4, 10 § 103 Pankratz Rahman 2, 4, 10 18 § 103 Pankratz Lukase Moritz 18 19, 21 § 103 Pankratz Kangasniemi 19, 21 20 § 103 Pankratz Lukase Kangasniemi 20 Overall Outcome 1–12, 14–21 REVERSED