Ex Parte Boorstein

Patent Trial and Appeal Board

Apr 20, 2016

13551052 (P.T.A.B. Apr. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/551,052 07/17/2012 Daniel BOORSTEIN
79389 7590 04/21/2016
The Weintraub Group, P,LC,
24901 Northwestern Highway
Suite 311
Southfield, MI 48075
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.
BDA-100-A-l 8455
EXAMINER
PERREAULT, ANDREW D
ART UNIT PAPER NUMBER
3788
MAILDATE DELIVERY MODE
04/21/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL BOORSTEIN
Appeal2014-004691
Application 13/551,052
Technology Center 3700
Before JENNIFER D. BAHR, LINDA E. HORNER, and
BRANDON J. WARNER, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Daniel Boorstein (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner's decision rejecting claims 1 and 3-19, which are all of the
pending claims. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Appeal2014-004691
Application 13/551,052
CLAIMED SUBJECT MATTER
Appellant's claimed subject matter "relates to a cover for a toothbrush
which absorbs water and/or saliva ... to minimize re-deposition of germs
onto the bristles when the brush is next used." Spec. para. 2. Of those
claims before us on appeal, claims 1 and 13 are independent. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A cover for a dental appliance, comprising:
a biodegradable, compostable and twistable external
sleeve, having an open top and open bottom[;]
a biodegradable, and compostable cellulosic, liquid
absorbing closed bottom internal sleeve disposed within the
external sleeve, a portion of the sleeve projecting through the
open bottom of the external sleeve, [t]he cup being dimensioned
to removably nest a head of a dental appliance therewithin;
the cup being sanitized and disinfected to a biomedical
standard prior to being disposed within the external sleeve[;] and
a water-activated disinfectant deposited within the internal
cup and in contact with the head of the appliance when the head
is nested within the internal cup, and wherein the cup absorbs
liquid from the head of the appliance whereby the disinfectant
reduces any redeposition of germs or bacteria onto the appliance
head.
EVIDENCE
The Examiner relied upon the following evidence:
Campbell
Collinson
Hansen
Kutsch
Shaw
Renn
us 2,377,311
us 5, 178,469
us 5,487,201
US 7,458,464 Bl
US 7,581,638 B2
US 7,700,172 B2
2
June 5, 1945
Jan. 12, 1993
Jan.30, 1996
Dec. 2, 2008
Sept. 1, 2009
Apr. 20, 2010
Appeal2014-004691
Application 13/551,052
Jurgens
West
Boorstein
US 2010/0314272 Al Dec. 16, 2010
US 7 ,954,640 B2 June 7, 2011
US 8,245,840 B2 Aug. 21, 2012
REJECTIONS
Appellant appeals from the Final Action, dated March 7, 2013, which
includes the following rejections:
1. Claims 1, 3-12, and 17-19 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement.
2. Claims 1 and 3-12 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
3. Claims 1 and 5-7 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Campbell, Jurgens, and West.
4. Claims 3, 4, 8-10, and 13-16 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Campbell, Jurgens, West, and Renn.
5. Claims 11 and 12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Campbell, Jurgens, West, and Shaw.
6. Claims 17-19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Campbell, Jurgens, West, and Kutsch.
7. Claims 1 and 5-7 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Campbell, Jurgens, and Hansen.
8. Claims 3, 4, 8-10, and 13-16 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Campbell, Jurgens, Hansen, and Renn.
9. Claims 11 and 12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Campbell, Jurgens, Hansen, and Shaw.
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Appeal2014-004691
Application I 3/55 I ,052
IO.Claims I 7-I9 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Campbell, Jurgens, Hansen, and Kutsch.
I I.Claims I and 5-7 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Campbell, Jurgens, and Collinson.
I2.Claims 3, 4, 8-IO, and I3-I6 are rejected under 35 U.S.C. § I03(a)
as unpatentable over Campbell, Jurgens, Collinson, and Renn. 1
I3.Claims I I and I2 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Campbell, Jurgens, Collinson, and Shaw.
I4.Claims I 7-I9 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Campbell, Jurgens, Collinson, and Kutsch.
I 5. Claims I, 5-7, I I, and I 2 are rejected on the ground of
nonstatutory obviousness-type double patenting as unpatentable
over claims I-9 of Boorstein.
16.Claims 3, 4, 8-10, and 13-16 are rejected on the ground of
nonstatutory obviousness-type double patenting as unpatentable
over claims I-9 of Boorstein and Renn.
I 7. Claims I 7-I 9 are rejected on the ground of nonstatutory
obviousness-type double patenting as unpatentable over claims I-9
of Boorstein and Kutsch.
1 The Final Action does not include Collinson in the statement of this
rejection for claims I3-I6 (Final Act. 16), yet the Examiner applies
Collinson in the body of the rejection (id. at 16----17). Thus, we understand
the Exarniner has rejected claims 13-16 as unpatentable over Campbell,
Jurgens, Collinson, and Renn.
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Appeal2014-004691
Application 13/551,052
ANALYSIS
Rejections 1and2: Written Description and Indefiniteness
Although Appellant's Brief includes the 35 U.S.C. § 112 rejections in
the listing of the grounds of rejection for review, Appellant simply notes that
the After-Final Arnendment dated June 7, 2013, which was denied entry by
the Examiner, sought to overcome these rejections. Br. 3; see Advisory Act.
dated July 5, 2013. Appellant does not present any arguments contesting the
propriety of these rejections. See Br. 5----9 (presenting arguments only as to
the rejections under 35 U.S.C. § 103). Thus, we summarily sustain the
rejections of claims 1, 3-12, and 17-19 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement, and
of claims 1 and 3-12 under 35 U.S.C. § 112, second paragraph, as being
indefinite. See In re Berger, 279 F.3d 975 (Fed. Cir. 2002) (holding that the
Bc1a.rd did_ not err in sustaining a rejection \x1l1en the a.pplica11t failed to
contest the rejection on appeal).
Rejection 3: Obviousness based on Campbell, Jurgens, and West
The Examiner found that Campbell discloses a cover having an
external canvas sleeve and an internal metal cup within the sleeve, but does
not disclose, inter alia, the internal cup being made of a cellulosic material.
Final Act. 4-5. The Examiner found that West discloses a cellulosic
material and determined that it would have been obvious to one of ordinary
skill at the time of invention to provide the cellulosic material of West in
Campbell "to provide biodegradable characteristics while also providing the
best strength and cost characteristics." Id. at 5 (citing West, col. 2, 11. 3-30,
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Application 13/551,052
col. 2, 1. 57---col. 3, 1. 3). The Examiner also determined that it would have
been obvious to modify the material of Campbell "because it has been held
that selection of a known material on the basis of its suitability for the
intended use was an obvious extension of the prior teaching." Id. (citing In
re Leshin, 277 F.2d 197 (CCPA 1960)).
Appellant argues that a person having ordinary skill in the art would
not have modified Campbell based upon the teachings of \Vest to render
obvious the claimed invention. Br. 5-9. In particular, Appellant contends
that the Examiner utilized impen11issib1e hindsight in formulating the
rejection (id. at 6) and that "the Examiner has taken piecemeal portions of
references and combined them ... while overlooking the purposes to which
the references, themselves, are directed." Id. at 8 (citing Interconnect
Planning Corp. v. Thomas E. Fell, 774 F.2d 1132, 1139 (Fed. Cir. 1985)).
For the reasons that follow, we agree with Appellant that the Examiner's
proposed rnodification of the metal bottom of Campbell's bag with the
cellu1osic material of West is not supported by adequate reasoning based on
rational underpinnings. See KSR Int 'l Co. v. Teleflex inc., 550 U.S. 398, 418
(2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
Campbell discloses a heavy duty bag with a metal bottom used to
carry ice and other commodities. Campbell 1, first col., 11. 3-7. The metal
bottom of the bag largely sustains the load of ice or commodities carried in
the bag. Id. at 2, first col., 11. 14--15. West discloses a biodegradable jar for
holding a semi-solid material. West, Abstract. The outer wall of the jar is
made of a biodegradable plant-based fibrous material, such as paper, which
is "a material that will break down to at least 90% H20, C02, and biomass
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Application 13/551,052
within a period of six months." Id. at col. 2, 11. 55-57, 61---63. West teaches
that, within the context of its fibrous outer wall, "[ w ]rapped materials seem
to have the best strength and cost characteristics." Id. at col. 2, 11. 57-58.
The Examiner's explanation of the proposed modification to Campbell with
the biodegradable material of West was "to provide biodegradable
characteristics while also providing the best strength and cost
characteristics." Final Act. 5. This reasoning is not supported by West,
which teaches only that wrapped materials have the best strength and cost
material as among the fibrous biodegradable materials suitable for use as the
outer wall of West's jar. This reasoning does not explain why one would
desire to have biodegradable characteristics in the heavy duty bag of
Campbell. Further, there is inadequate evidence to support a finding that
replacing the metal bottom of Campbell's heavy duty bag with a cellulosic
material to provide biodegradable charactenstlcs would enhance Campbell's
bag or otherwise be suitable to sustain the load of ice or commodities carried
in Campbell's bag. For these reasons, the Examiner has failed to explain
adequately why one having ordinary skill in the art would have been led to
use a biodegradable material as taught by West for the bottom of the heavy
duty bag of Campbell.
The Examiner has not provided a sufficient reason to modify the
metal bottom of Campbell's bag with the biodegradable cellulosic material
of West. As such, neither of the Examiner's articulated reasons for the
proposed modification (i.e., to provide biodegradable, strength, and cost
characteristics or as a suitable material for the intended use) is supported by
rational underpinnings. Absent improper hindsight, we fail to see a reason
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Application 13/551,052
why a person of ordinary skill in the art would have been led to modify the
metal bottom of Campbell's bag with the biodegradable cellulosic material
of West. For these reasons, we do not sustain the Examiner's rejection of
claims 1 and 5-7 under 35 U.S.C. § 103(a) as unpatentable over Campbell,
Jurgens, and West.
Rejections 7 and 11: Obviousness based on Campbell, Jurgens, and one of
Hansen and Collinson
The Examiner's additional rejections of claims 1 and 5-7 rely on the
same findings and reasoning with respect to the disclosures of Campbell and
Jurgens presented in Rejection 3, except that the Examiner relies on Hansen
or Collinson, rather than West, for teaching a cellulosic material. See Final
Act. 7-8, 10-11; compare id. at 4--5. The reasoning articulated by the
Examiner in Rejections 7 and 11 in support of the proposed modification of
Campbell in view of Hansen and Collinson, respectively, is similar as that
articulated in Rejection 3 (i.e., to provide biodegradability and absorbability,
and as a suitable material for the intended use). See id. at 8, 11; compare id.
at 5. This reasoning suffers from the same deficiency discussed supra in the
analysis of Rejection 3. Accordingly, we do not sustain the Examiner's
rejections of claims 1 and 5-7 as unpatentable over Campbell, Jurgens, and
Hansen, and as unpatentable over Campbell, Jurgens, and Collinson.
Remaining Obviousness Rejections
The Examiner's rejections of claims 3, 4, and 8-19 under 35 U.S.C.
§ 103(a) rely on the same proposed modification of Campbell's metal-
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Application 13/551,052
bottomed bag using a cellulosic material as taught by each of West, Hansen,
and Collinson that we find deficient for the reasons stated above in the
analysis of Rejections 3, 7, and 11. 2 See Final Act. 5-7, 13-17. The
additional references relied on in the rejections of claims 3, 4, and 8-19, i.e.,
Renn, Shaw, and Kutsch, do not cure the deficiency in the Examiner's
reasoning articulated in support of the proposed modification. Accordingly,
we do not sustain the reiections of claims 3, 4, and 8-19 under 35 U.S.C.
§ 103(a).
Obviousness-Type Double Patenting
Appellant does not present any arguments to contest the Examiner's
rejections of claims 1 and 3-19 on the ground of nonstatutory obviousness-
type double patenting. Final Act. 18-19; Br., passim (presenting arguments
only as to the rejections under 35 U.S.C. § 103). Although these double
patenting rejections are included in the listing of the grounds of rejection for
review in the Brief, Appellant simply notes that the After-Final Amendment,
which was denied entry by the Examiner, sought to remedy these rejections.
Br. 5. Accordingly, we summarily sustain the rejections of claims 1 and 3-
19 on the ground of obviousness-type double patenting. See In re Berger,
279 F.3d 975.
2 We note that independent claim 13 is substantially similar in scope to
independent claim 1, except that claim 13 recites "a sponge material" rather
than a cellulosic. Br. 11, Claims App. The Examiner's rejections of claim
13 address the sponge limitation by applying the same findings and
reasoning used in Rejections 3, 7, and 11 to address the cellulosic limitation
of claim 1. See Final Act. 13-17; compare id. at 5, 8, 11.
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Application 13/551,052
DECISION
We AFFIRM the decision of the Examiner to reject:
a. Claims 1, 3-12, and 17-19 under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement,
b. Claims 1 and 3-12 under 35 U.S.C. § 112, second paragraph, as
being indefinite,
c. Claims 1, 5-7, 11, 12 on the ground ofnonstatutory obviousness-
type double patenting as unpatentable over claims 1-9 of
Boorstein,
d. Claims 3, 4, 8-10, and 13-16 on the ground of nonstatutory
obviousness-type double patenting as unpatentable over claims 1-9
of Boorstein and Renn, and
e. Claims 17-19 on the ground of nonstatutory obviousness-type
double patenting as unpatentable over claims 1-9 of Boorstein and
Kutsch.
We REVERSE the decision of the Examiner to reject:
a. Claims 1 and 5-7 under 35 U.S.C. § 103(a) as unpatentable over
Campbell, Jurgens, and West,
b. Claims 3, 4, 8-10, and 13-16 under 35 U.S.C. § 103(a) as
unpatentable over Campbell, Jurgens, West, and Renn,
c. Claims 11 and 12 under 35 U.S.C. § 103(a) as unpatentable over
Campbell, Jurgens, West, and Shaw,
d. Claims 17-19 under 35 U.S.C. § 103(a) as unpatentable over
Campbell, Jurgens, West, and Kutsch,
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Application 13/551,052
e. Claims 1 and 5-7 under 35 U.S.C. § 103(a) as unpatentable over
Campbell, Jurgens, and Hansen,
f. Claims 3, 4, 8-10, and 13-16 under 35 U.S.C. § 103(a) as
unpatentable over Campbell, Jurgens, Hansen, and Renn,
g. Claims 11 and 12 under 35 U.S.C. § 103(a) as unpatentable over
Campbell, Jurgens, Hansen, and Shaw,
h. Claims 17-19 under 35 U.S.C. § 103(a) as unpatentable over
Campbell, Jurgens, Hansen, and Kutsch,
1. Claims 1 and 5-7 under 35 U.S.C. § 103(a) as unpatentable over
Campbell, Jurgens, and Collinson,
J. Claims 3, 4, 8-10, and 13-16 under 35 U.S.C. § 103(a) as
unpatentable over Campbell, Jurgens, Collinson, and Renn,
k. Claims 11 and 12 under 35 U.S.C. § 103(a) as unpatentable over
Campbell, Jurgens, Collinson, and Shaw, and
1. Claims 17-19 under 35 U.S.C. § 103(a) as unpatentable over
Campbell, Jurgens, Collinson, and Kutsch.
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)(l )(iv).
AFFIRMED
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