Ex Parte Battaglia

Patent Trial and Appeal Board

Sep 25, 2018

12067656 (P.T.A.B. Sep. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/067,656 04/01/2008
466 7590
YOUNG & THOMPSON
209 Madison Street
Suite 500
Alexandria, VA 22314
09/27/2018
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Alessio Battaglia
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2553-1117 3021
EXAMINER
BERRY, STEPHANIE R
ART UNIT PAPER NUMBER
3723
NOTIFICATION DATE DELIVERY MODE
09/27/2018 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):
DocketingDept@young-thompson.com
yandtpair@firs ttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte ALESSIO BATTAGLIA 1
Appeal2018-000253
Application 12/067,656
Technology Center 3700
Before BENJAMIN D. M. WOOD, LISA M. GUIJT, and
SCOTT C. MOORE, Administrative Patent Judges.
WOOD, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellant is the real party in interest. Br. 2.
Appeal2018-000253
Application 12/067,656
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
75, 76, 79--85, 87, 88, and 135-137. Claims 1-74, 77, 78, 133, and 134
have been canceled, and claims 86 and 89-132 have been withdrawn. Br. 4.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The claims are directed to a toothbrush. Sole independent claim 75,
reproduced below, is illustrative of the claimed subject matter:
75. A toothbrush comprising:
a handle having a length;
a head having a length and a width, the
length of the head being greater than the width of the
head, the head having a principal longitudinal axis of
extension which extends longitudinally to the handle
along a length direction of the handle;
a plurality of bristles attached to a lower
face of the head, the bristles forming a working line
for the toothbrush, the bristles extending from the
face of the head in a first downward direction;
an inclined connecting portion located
between the handle and the head, wherein the handle
and the connecting portion extend from the head in a
second upward direction opposite to the first
downward direction of the bristles, wherein,
a finger rest is located on a lower side of the
handle, the finger rest beginning adjacent a point
where the handle joins the connecting portion, on
which finger rest a user can engage a finger when
holding the handle,
at least one part of the working line formed
by the bristles extends longitudinally in a direction
parallel to the principal longitudinal axis of the
handle,
2
Appeal2018-000253
Application 12/067,656
Massari
Munoz
Harada
a height between i) the point where the
handle joins the connecting portion and ii) the
working line of the toothbrush being in a range of
1. 7 cm to 3 . 5 cm,
a distance between one end point of the
finger rest and a point, defined by free ends of the
bristles nearest the finger rest, is in a range of 4.0
cm to 7 .0 cm, and
the toothbrush permits brushing of the teeth
according to the Bass method.
REFERENCES
us 4,457,039
us 5,025,525
US 2001/0005917 Al
REJECTIONS
July 3, 1984
June 25, 1991
July 5, 2001
Claims 75, 76, 79, 81-85, 87, 88, 135, and 136 are rejected under
35 U.S.C. § I03(a) as unpatentable over Munoz and Massari. 2
Claims 80 and 137 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Munoz, Massari, and Harada.
ANALYSIS
Claims 75, 76, 79, 81-85, 87, 88, 135, and 136-
Rejected as Unpatentable over Munoz and Massari
Appellant argues the claims subject to this rejection as a group. Br.
10-25. We select claim 7 5 as representative of the group, and decide the
2 Although claim 80 is listed in the statement of rejection, the Examiner
provides no findings and reasoning for rejecting claim 80 as unpatentable
over Munoz and Massari; instead, the Examiner provides findings and
reasoning for rejecting claim 80 as unpatentable over Munoz, Massari, and
Harada. Final Act. 2---6.
3
Appeal2018-000253
Application 12/067,656
appeal of this rejection on the basis of claim 75 alone. 37 C.F.R.
§ 4I.37(c)(l)(iv).
The Examiner finds that Munoz teaches all of the structural
limitations of claim 7 5 except for the claimed height and distance
dimensions. Final Act. 2--4 (citing Munoz Figs. 3, 6). For these limitations,
the Examiner relies on Massari. Id. at 4. The Examiner contends that
"Massari discloses a handle having a length of about 10 cm and a connecting
portion having a length of about 4 cm." Id. ( citing Massari 1:56-60). The
Examiner determines that it would have been obvious to one of ordinary
skill in the art to use the claimed dimensions "based on the aforementioned
teachings of Massari for the purpose of dimensioning the toothbrush to
provide effective brushing." Id. at 4--5. The Examiner further determines
that:
The instant disclosure describes the claimed height and distance
parameters as being merely preferable, and does not describe
these as contributing any unexpected results to the invention. As
such, these parameters are deemed a matter of design choice,
lacking any criticality, and being well within the skill of the
ordinary artisan obtained through routine experimentation in
determining optimum results.
Id. at 4.
Having considered Appellant's arguments and the evidence of record,
we are not persuaded that the Examiner erred in rejecting claim 75 as
unpatentable over Munoz and Massari. We address specific arguments for
emphasis in our analysis below.
Appellant argues that the Examiner has not shown that the proposed
combination satisfies the requirement that the toothbrush "permits brushing
of the teeth according to the Bass method." Br. 13. The Examiner responds
4
Appeal2018-000253
Application 12/067,656
that this limitation constitutes a statement of intended use rather than a
structural limitation, and therefore does not differentiate the claimed
apparatus from the prior art. Ans. 2.
As our reviewing court has stated:
[W]here the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent characteristic
of the prior art, it possesses the authority to require the
[Appellant] to prove that the subject matter shown to be in the
prior art does not possess the characteristic relied on.
In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (quoting In re
Swinehart, 439 F.2d 210,213 (CCPA 1971)). A functional limitation may
be an inherent characteristic of a prior art structure when the prior art
structure has "the same general shape" as the claimed structure. See id. (the
examiner's observation that the prior art device had the "same general
shape" as the claimed device established a prima facie case of inherent
anticipation).
That is the case here. The embodiment depicted in Figure 3 of Munoz
has the same general shape as the embodiment depicted in Figure 2 of the
present application, which Appellant asserts corresponds to claim 7 5. Br. 6.
Thus, under Schreiber, it is Appellant's burden to demonstrate that Munoz's
toothbrush does not permit brushing teeth according to the Bass method.
Appellant, however, does not allege this to be the case, much less support
such an allegation with evidence or persuasive argument. Therefore,
Appellant has not met this burden, and we are not persuaded of Examiner
error.
Appellant next argues that Massari' s toothbrush is "very different"
from Munoz's toothbrush because "Massari teaches [a] toothbrush in which
5
Appeal2018-000253
Application 12/067,656
the head 11 extends perpendicularly to the handle 10." Br. 15. According to
Appellant, "the Massari toothbrush in no way permits the brushing the teeth
according to the Bass method." Id. at 16. Similarly, Appellant asserts that
"if Massari transversal head would be mounted on the Munoz toothbrush
would render the Munoz toothbrush completely inoperable and in particular
not usable for brushing the teeth with the Bass method." Id. at 18. But the
Examiner is not proposing to combine Massari' s perpendicular head
teaching with Munoz, but only certain of Massari's dimensions. "The test
for obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference ... [ r ]ather,
the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art." In re Keller, 642 F.2d 413,
425 (CCP A 1981) ( citations omitted). Thus, this argument is unpersuasive.
Appellant further argues that the Examiner's rejection requires a
showing that the height and distance limitations are "result-effective
variable[s] that should be optimized." Br. 19 (citing In re Aller, 220 F.2d
454 (CCPA 1955). We disagree. First, Massari expressly teaches at least
the distance limitation of claim 75. Massari 1:56-57, Fig. 1. Second, the
Examiner's findings regarding the obviousness of the height and distance
dimensions do not require a finding that these dimensions are result-
effective variables where, as here, the dimensions relate to the size or shape
of the article. See In re Rose, 220 F.2d 459, 463 (CCPA 1955) (holding that
limitations relating to the size of a claimed article are "not ordinarily a
matter of invention"); In re Rinehart, 531 F.2d 1048, 1053 (CCPA 1976)
("mere scaling up of a prior art process capable of being scaled up, is such
were the case, would not establish patentability in a claim to an old process
6
Appeal2018-000253
Application 12/067,656
so scaled."); In re Dailey, 357 F.2d 669 (CCPA 1966) ("Appellants have
presented no argument which convinces us that the particular configuration
of their container is significant or is anything more than one of numerous
configurations a person of ordinary skill in the art would find obvious for the
purpose of providing mating surfaces in the collapsed container of
Matzen."). As the Examiner observes, Final Act. 4, the Specification
describes these dimensions as being merely preferable and does not describe
them as contributing any unexpected results.
Claims 80 and 137-Rejected as
Unpatentable over Munoz, Massari, and Harada
Appellant relies on its previously made, and rejected, arguments in
support of the patentability of claims 80 and 137. Br. 26. Accordingly, for
the reasons stated above, we sustain this rejection.
DECISION
The Examiner's rejection of claims 75, 76, 79--85, 87, 88, and 135-
13 7 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
7