Ex Parte Cohen

Patent Trial and Appeal BoardNov 2, 2016

13192680 (P.T.A.B. Nov. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/192,680 07/28/2011 23599 7590 11/04/2016 MILLEN, WHITE, ZELANO & BRANIGAN, P,C 2200 CLARENDON BL VD. SUITE 1400 ARLINGTON, VA 22201 Jeff COHEN 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. DENGUARD-0001 6495 EXAMINER EIDE, HEIDI MARIE ART UNIT PAPER NUMBER 3732 NOTIFICATION DATE DELIVERY MODE 11/04/2016 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): docketing@mwzb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JEFF COHEN Appeal2013-006162 Application 13/192,6801 Technology Center 3700 Before MICHAEL C. ASTORINO, BRUCE T. WIEDER, and MATTHEWS. MEYERS, Administrative Patent Judges. WIEDER, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. Â§ 134 from the Examiner's rejection of claims 1, 3-9, and 11. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. CLAIMED SUBJECT MATTER Appellant's claimed invention "relates to covers for dental mirrors." (Spec. 1.) 1 According to Appellant, the real party in interest is DENGUARD LLC. (Appeal Br. 1.) Appeal2013-006162 Application 13/192,680 Claim 1 is the sole independent claim on appeal. Claim 1 recites: 1. A dental mirror apparatus cover comprising: A. a generally round and planar back portion suitable for covering a dental mirror frame and B. a curved side portion extending from the round and planar back portion with curved walls for extending over and around sides of a frame of a dental mirror and of a length suitable for securing said dental mirror cover to a frame of a dental mirror without obstructing a mirror surface of the dental mirror and wherein an inner surface of said curved side portion consists of a single curve or is flat and wherein said round and planar back portion and curved side portion comprise soft elastic material, and wherein portions A and B comprise one piece. REJECTIONS Claims 1, 3-5, 8, and 11 are rejected under 35 U.S.C. Â§ 103(a) in view ofMeyerhof (US 6,666,682 Bl, iss. Dec. 23, 2003), Meliconi (US 5,265,720, iss. Nov. 30, 1993), and Wickman-Dykes (US 2011/0183107 Al, pub. July 28, 2011). Claims 6 and 7 are rejected under 35 U.S.C. Â§ 103(a) in view of Meyerhof, Meliconi, Wickman-Dykes, and Cooper (US 4,757,381, iss. July 12, 1988). Claim 9 is rejected under 35 U.S.C. Â§ 103(a) in view of Meyerhof, Meliconi, Wickman-Dykes, and Jodaikin (US 2009/0042161 Al, pub. Feb. 12, 2009). ANALYSIS The Examiner finds that "Meyerhof teaches a dental mirror apparatus cover" but that it "does not specifically teach the cover comprises a 2 Appeal2013-006162 Application 13/192,680 generally round and planar back portion from with [sic] the curved side portion extend from and wherein the back and curved side portions are a single piece." (Final Action 2.) The Examiner also finds that "Meliconi teaches a cover comprising a planar back portion and curved side walls extending from the planar back portion, wherein the back portion and side walls are of a single piece (see fig. 6)." (Id. at 2-3.) The Examiner then determines that It would have been obvious to one having ordinary skill in the art at the time of the invention to modify the bumper taught by Meyerhof with the cover comprising a back portion connected to the side portions as taught by Meliconi in order to protect the patient from the back surface of the hard mirror while only exposing the working surface. (Id. at 3.) Meyerhof relates to an "intra-oral mirror." (Meyerhof, Title.) Wickman-Dykes relates to a "dental mirror protective cover." (Wickman- Dykes, Title.) l\1eliconi relates to a "shock-proof protective jacket for a remote control unit." (Meliconi, Title.) Appellant argues that Meliconi is non-analogous art (Appeal Br. 5-6) and that the Examiner relies on impermissible hindsight (Reply Br. 5). Specifically, Appellant argues that "[i]n the current case, the purpose of the dental mirror cover is to protect the teeth from a dental mirror frame when in use. The purpose of the remote control cover is to protect the remote control from damage not to protect the hand using it or the table it rests on when not in use." (Appeal Br. 6.) In other words, Appellant argues "that one of ordinary skill in the art would not look to prior art teachings regarding remote control covers when constructing a dental mirror cover" (id. at 5) and "that the basic knowledge (common sense) of a dental mirror cover artisan is 3 Appeal2013-006162 Application 13/192,680 likely to be different from the basic knowledge in the possession of a remote control cover artisan" (id. at 6). The pertinence of the reference as a source of solution to the inventor's problem must be recognizable with the foresight of a person of ordinary skill, not with the hindsight of the inventor's successful achievement. See In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992) ("Patent examination is necessarily conducted by hindsight, with complete knowledge of the applicant's invention .... "); see also KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 421, 127 S. Ct. 1727, 167 L. Ed. 2d 705 (2007) ("A factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning."). Scientific Plastic Prods., Inc. v. Biotage AB, 766 F.3d 1355, 1362 (Fed. Cir. 2014). The Examiner finds that Meliconi is reasonably pertinent to the particular problem with which the applicant is concerned. It teaches a cover which covers an entire instrument except for the working surface which protects the instrument. The prior art of Meyerhof teaches a cover for protecting the instrument and teeth as discussed in detail above. Therefore it would have been obvious to one having ordinary skill in the art at the time of the invention to modify the cover of Meyerhof with the cover of Meliconi in order to protect the entire instrument and the users [sic] teeth from the entire instrument, expect [sic] for the working portion which cannot be covered. (Answer 4.) Meliconi "relates to a shock-proof protective jacket, particularly suitable for portable remote control units of televisions, recording instruments and in general remote-control units, such as for example portable telephones, alarm clocks, professional instruments such as calculators, measuring instruments and suchlike." (Meliconi, col. 1, 11. 6- 4 Appeal2013-006162 Application 13/192,680 11.) Figure 6 of Meliconi, relied on by the Examiner, "illustrates the jacket in longitudinal section ... and according to an embodiment variant which can be effected in the case of instruments or portable remote control units with one end substantially cusp-shaped or in any case tapered." (Id. at col. 2, 11. 15-19.) We agree with Appellant that the Examiner relied on impermissible hindsight. It is not clear to us, and the Examiner has not shown, that the pertinence of the Meliconi reference as a source of solution to the inventor's problem would have been recognizable with the foresight of a person of ordinary skill, absent the hindsight of the inventor's achievement. See Scientific Plastic Prods., Inc. v. Biotage AB, 766 F.3d at 1362; see also Reply Br. 5. Therefore, we are persuaded that the Examiner erred in rejecting claim 1 under Â§ 103 in view of Meyerhof, Meliconi, and Wickman-Dykes. For the same reason, we are persuaded that the Examiner erred in rejecting dependent claims 3-9 and 11. DECISION The Examiner's rejections of claims 1, 3-9, and 11 under 35 U.S.C. Â§ 103(a) are reversed. REVERSED 5