Brian Bloch

Patent Trials and Appeals Board

Aug 22, 2019

14654526 - (D) (P.T.A.B. Aug. 22, 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.
14/654,526 06/20/2015 Brian Bloch 9780-00-US-01-TB 1856
23909 7590 08/22/2019
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
EXAMINER
GILL, JENNIFER FRANCES
ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
08/22/2019 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):
Patent_Mail@colpal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte BRIAN BLOCH1
____________________

Appeal 2018-007404
Application 14/654,526
Technology Center 3700
____________________

Before STEFAN STAICOVICI, MICHELLE R. OSINSKI, and
JILL D. HILL, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–3, 5–10, 13–16, 18–20, 24, 25, and 30.2 We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 Colgate-Palmolive Company (“Appellant”) is the Applicant as provided in
37 C.F.R. § 1.46 and is identified as the real party in interest. Br. 2.
2 Claims 4, 11, 12, 17, 21–23, and 26–29 are cancelled. Appeal Br. 14–17
(Claims App.).
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THE CLAIMED SUBJECT MATTER
Claims 1, 18, and 30 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter.
1. An oral care implement comprising:
a body comprising a handle portion and a head portion
coupled to the head portion;
a mirror coupled to the head portion, the mirror having a
first surface and a second surface opposite the first surface, the
first surface having a central portion and a perimeter portion,
the perimeter portion surrounding the central portion;
a light source coupled to the head portion adjacent the
mirror; and
a light transmissive elastomeric material coupled to the head
portion and overlying the light source and the perimeter portion
of the first surface of the mirror, the central portion of the first
surface of the mirror being exposed.

EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
THE REJECTIONS
I. Claims 13–16 stand rejected under 35 U.S.C. § 112(b) as being
indefinite. Final Act. 4.
II. Claims 1, 3, 5–8, and 13 stand rejected under 35 U.S.C. § 103 as
unpatentable over Altshuler and Chan. Id. at 5–8.3

3 Although the Examiner uses the general heading “35 USC § 103,”
includes a quotation of the statute for only § 103, and refers only to “103” in
Chan
Altshuler
Russell

US 2004/0200016 A1
US 7,223,270 B2
US 2008/0276393 A1

Oct. 14, 2004
May 29, 2007
Nov. 13, 2008

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III. Claims 1–3, 5–10, 13–16, 18–20, 24, 25, and 30 stand rejected
under 35 U.S.C. § 103 as unpatentable over Russell, Chan, and
Altshuler. Id. at 8–22.

OPINION
Rejection I
Appellant does not present any substantive arguments contesting the
Examiner’s rejection of claims 13–16 under 35 U.S.C. § 112(b) as being
indefinite. See Appeal Br. 6–13 (presenting arguments only as to the
obviousness rejections). Consequently, Appellant has waived any argument
of error, and we summarily sustain the rejection of claims 13–16 under
35 U.S.C. § 112(b) as being indefinite. See, e.g., In re Berger, 279 F.3d 975,
984–85 (Fed. Cir. 2002) (holding that the Board did not err in sustaining a
rejection under 35 U.S.C. § 112, second paragraph, when the applicant failed
to contest the rejection on appeal); Hyatt v. Dudas, 551 F.3d 1307, 1314
(Fed. Cir. 2008) (explaining that summary affirmance without consideration

the subheading (Final Act. 4–5), the Examiner’s subheading also states that
“[c]laims 1, 3, 5–8, and 13 is/are rejected under pre-AIA 35 U.S.C.
[§] 103(a) as being anticipated by, or unpatentable over, Altshuler . . . [and]
Chan” (id. at 5 (boldface omitted; italics added)). As the body of the
rejection employs the teachings of both Altshuler and Chan, we view the
reference to anticipation to be a typographical error and consider the
rejection to be made under 35 U.S.C. § 103 only. Furthermore, we consider
the first inventor to file provisions of the AIA to be applicable to this
application based on it having an effective filing date on or after March 16,
2013. As such, we view the reference to pre-AIA 35 U.S.C. § 103(a) as also
being a typographical error. We see no prejudice to Appellant in correcting
these typographical errors herein.
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of the substantive merits is appropriate where an appellant fails to contest a
ground of rejection).
Rejection II
The Examiner finds, among other things, that Altshuler teaches oral
care implement 10 comprising reflective surface 20. Final Act. 5 (citing
Altshuler 13:10–25). The Examiner takes the position that Altshuler’s
teaching of reflective surface 20 is a teaching of a “mirror,” as recited in the
claims. Id. First, the Examiner points to dictionary definitions of “mirror”
as “a reflecting surface” and/or “a surface that is either plane, concave, or
convex, and that reflects rays of light” as support that “the term ‘reflective
surface’ . . . [is] synonymous with the term ‘mirror.’” Ans. 17 (citing
Dictionary.com). Second, the Examiner determines that even under a more
narrow interpretation of “mirror” as “a polished or smooth surface that forms
images by reflection” (Final Act. 5), Altshuler’s reflective surface 20 “would
be able to form ‘an image’ by reflection” (Ans. 17). According to the
Examiner, “[t]his image may not be a perfectly clear image, but it is capable
of reflecting light and therefore also ‘an image’ of that light.” Id.
The USPTO gives claims their broadest reasonable construction “in
light of the [S]pecification as it would be interpreted by one of ordinary skill
in the art.” In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004). Even under the broadest reasonable interpretation standard, the
Board’s construction “cannot be divorced from the specification and the
record evidence” (In re NTP, Inc., 654 F.3d 1279, 1288 (Fed. Cir. 2011)),
and “must be consistent with the one that those skilled in the art would
reach” (In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir. 1999)). A
construction that is “unreasonably broad” and which does not “reasonably
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reflect the plain language and disclosure” will not pass muster. In re Suitco
Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010).
Appellant’s Specification describes that a mirror is used on an oral
care implement in order to view “certain areas of the oral care cavity [that]
are still not visible when looking in a mirror” and that require “insertion of a
second mirror into the oral cavity.” Spec. ¶ 1. The Specification also
describes the mirror as “a metal or metallic plate having a highly polished
surface that forms the reflective surface 21”; “a substrate such as glass,
comprising an appropriate reflective layer”; and/or “a metal or metallic foil,
which can be applied to a substrate or to the body 150 itself.” Id. ¶ 34. The
Specification, thus, supports that the “mirror” on the oral care implement
refers specifically to a surface that forms an image by reflection, which
would enable a user to view certain areas of the oral cavity in a first mirror
using a second mirror on the oral care implement.
The Examiner’s first position relies on a finding that Altshuler’s
reflective surface is a mirror simply because it is a reflective surface. This
construction by the Examiner of “mirror,” as recited in the claims, is
unreasonably broad in view of the Specification, such that the rejection
based upon this claim construction is in error. When viewed in light of the
Specification, the term “mirror” requires the formation of an image so as to
enable a user to view the oral cavity in a first mirror using a second mirror
on the oral care implement.
In accordance with the second position taken by the Examiner in
which “mirror” is interpreted more narrowly as requiring the formation of an
image, the Examiner finds that Altshuler’s reflective surface would be able
to form an image, albeit not a clear image. Ans. 17. Appellant argues that
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“[t]he reflective surface 20 of Altshuler is only disclosed as reflecting
radiation from the user’s oral care tissues” and “[t]here is no disclosure
whatsoever of this reflected radiation forming an image.” Br. 8. Appellant
argues that “[i]t is entirely possible to reflect without forming an image” and
“it is unclear why a reflective surface capable of forming images is either
necessary or desirable in reflecting radiation from the oral tissue.” Id.
Appellant also points out that Altshuler teaches that “the user’s oral tissue is
. . . reflecting radiation,” and “[i]t cannot be said that oral tissue constitutes a
mirror.” Id.; see Altshuler 13:14–19 (“When radiation is delivered to a
target area, some of the radiation can be reflected by the tissue surface
resulting in lost radiation. To save this reflected energy, the oral appliance
of the present invention can include a highly reflective surface which will
return at least a portion of the reflected radiation to the tissue.”).
“The Patent Office has the initial duty of supplying the factual basis
for its rejection. It may not . . . resort to speculation, unfounded assumptions
or hindsight reconstruction to supply deficiencies” in the cited references. In
re Warner, 379 F.2d 1011, 1017 (CCPA 1967); see In re GPAC Inc., 57
F.3d 1573, 1582 (Fed. Cir. 1995). On these facts, one of ordinary skill in the
art can only speculate as to whether Altshuler’s reflective surface 20 forms
an image by reflection, as the Examiner proposes. Thus, the Examiner relies
on a speculative finding that Altshuler’s reflective surface 20 forms an
image by reflection, and such speculation is insufficient to support the
rejection.
Moreover, to the extent that the Examiner’s second position is more
specifically that any reflection of light can be considered to form an image
of light (see Ans. 17), we find such a position to be unreasonable because it
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effectively reads out any reasonable meaning imparted by the term “mirror,”
such that any object that reflects light (even including gum tissue which is
described in Altshuler as reflecting light, as pointed out in Appellant’s
arguments) could be considered a “mirror” simply because it reflects light.
Virtually all objects reflect light, but in our view not all of these objects can
reasonably be considered a “mirror.” In addition, as described in more detail
in connection with the analysis of the Examiner’s first position, such an
interpretation of “mirror” (i.e., any object that reflects light is a “mirror”) is
not consistent with Appellant’s Specification.
Based on the record before us, we determine that the Examiner’s
construction of “mirror” as recited in the claims, is unreasonably broad, such
that the rejection based upon such a claim construction is in error and/or that
the Examiner erred in finding that Altshuler discloses a “mirror” by
improperly relying on a speculative finding that Altshuler’s reflective
surface forms an image. We do not sustain the rejection of independent
claim 1, or claims 3, 5–8, and 13 which depend therefrom, under 35 U.S.C.
§ 103 as unpatentable over Altshuler and Chan.
Rejection III
The Examiner also rejects claims 1–3, 5–10, 13–16, 18–20, 24, 25,
and 30 stand rejected under 35 U.S.C. § 103 as unpatentable over Russell,
Chan, and Altshuler. The Examiner relies on Russell and Chan for teaching
most of the limitations of independent claims 1, 18, and 30, but turns to
Altshuler for teaching a mirror. See Final Act. 9–10 (“Modified Russell
discloses the invention essentially as claimed except for a mirror coupled to
the body of the toothbrush. Altshuler, however, teaches an irradiating
toothbrush (10) that . . . carries at least one reflective surface (20), or
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mirror.”); 16–17 (similarly relying on Altshuler for teaching a mirror in
connection with independent claim 18); 21 (similarly relying on Altshuler
for teaching a mirror in connection with independent claim 30). The
Examiner concludes that it would have been obvious to further modify
Russell (as already modified by Chan) to comprise mirrors on the front and
rear surfaces “in order to allow a user to better irradiate their mouth with the
lights during use.”). Id. at 10.
Thus, the rejection of these claims relies on the Examiner’s
unreasonably broad claim construction of the term “mirror” and/or the
Examiner’s speculative finding that Altshuler’s reflective surface forms an
image. We do not sustain the rejection of independent claims 1, 18, or 30, or
claims 2, 3, 5–10, 13–16, 19, 20, 24, and 25 which depend therefrom, under
35 U.S.C. § 103 as unpatentable over Russell, Chan, and Altshuler.

DECISION
The Examiner’s decision to reject claims 13–16 under 35 U.S.C.
§ 112(b) as being indefinite is summarily affirmed.
The Examiner’s decision to reject claims 1, 3, 5–8, and 13 under
35 U.S.C. § 103 as unpatentable over Altshuler and Chan is reversed.
The Examiner’s decision to reject claims 1–3, 5–10, 13–16, 18–20,
24, 25, and 30 under 35 U.S.C. § 103 as unpatentable over Russell, Chan,
and Altshuler is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED-IN-PART