Ex Parte Golden

Patent Trial and Appeal Board

Dec 20, 2016

12789732 (P.T.A.B. Dec. 20, 2016)

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.
12/789,732 05/28/2010 Richard Golden GOL-l 1502/16 9185
25006 7590 12/22/2016
DTNSMORF fr SHOHT T T P
EXAMINER
900 Wilshire Drive MAI, HAO D
Suite 300
TROY, MI 48084 ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
12/22/2016 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):
docket@patlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD GOLDEN
Appeal 2015-002426
Application 12/789,732
Technology Center 3700
Before LINDA E. HORNER, THOMAS F. SMEGAL, and
BRENT M. DOUGAL, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Richard Golden (Appellant)1 seeks our review under 35 U.S.C. § 134
of the Examiner’s decision, as set forth in the Final Action, dated February
20, 2014 (“Final Act.”), rejecting claims 5-7 and 15 under 35 U.S.C.
§ 103(a) as unpatentable over Krajeski (US 2,030,798, issued February 11,
1936) and Heimann (US 3,456,349, issued July 22, 1969) and rejecting
claim 2 under 35 U.S.C. § 103(a) as unpatentable over Krajeski, Heimann,
1 Appellant identifies the real party in interest as Beak and Bumper, LLC.
Br. 2.
Appeal 2015-002426
Application 12/789,732
and Berkowitz (US 2,698,483, issued January 4, 1955). We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
Appellant’s claimed subject matter relates to “forceps for use in the
extraction of molars.” Spec. para. 2. Claim 15 is the sole independent claim
and is reproduced below.
15. A dental forceps for dislodging of teeth,
comprising:
first and second handles which are pivotally connected and
extend along a first linear axis;
said first handle exhibiting an angled support at a distal
end thereof extending in a second linear axis at angle relative to
the first linear axis, a width extending pad at an end location of
said angled support, said pad exhibiting a substantially
rectangular profile with a gum support surface, a centerline
extending through a largest width dimension of said pad
extending at a further angle relative to each of the first and
second linear axes of said first handle; and
said second handle exhibiting a beak extending outwardly
from a distal end thereof and having an arcuate portion, said beak
extending in a curved fashion relative to each of the first and
second linear axes and terminating at a narrowed edge opposing
and overlaying an intermediate location of said pad support
surface when said handles are in a closed position;
said pad adapted to being placed on one side of a tooth
and, upon concurrently placing said terminating edge of said
beak against an opposite side of the tooth, a rotating force exerted
on said handles results in said pad acting as a fulcrum point
around which said beak and terminating edge will move to
forcibly dislodge the tooth.
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Application 12/789,732
ANALYSIS
The Examiner found that the Krajeski discloses dental forceps
substantially as called for in claim 15, including a width extending pad 6 at
an end location of an angled support 8, which extends from a first handle 4,
and a beak 7 extending outwardly from a distal end of a second handle 5.
Final Act. 2. The Examiner acknowledged that “Krajeski’s pad 6 does not
exhibit a substantially rectangular profile as claimed.” Id. at 3. The
Examiner found that Heimann discloses dental pliers having “a width
extending pad 3 exhibiting a substantially rectangular profile with a gum
support surface.” Id. The Examiner determined:
It would have been obvious to one having ordinary skill in the art
at the time the invention was made to replace Krajeski’s pad 6
and beak 7 with Heimann’s pad 3 and beak 2 as alternative
suitable pliers’ jaw design while yielding predictable results, e.g.
better gripping and stabilizing of the tooth with the larger
rectangular-shaped support surface.
Id. The Examiner further found:
the dental forceps as disclosed by Krajeski[,] as modified by
Heimann[,] has all the structural limitations as claimed, and the
modified/incorporated pad is capable of being placed upon a
patient’s gum between a selected molar and the cheek while the
beak is capable of being concurrently placed on the lingual side
of the selected molar, wherein an outward rotating force exerted
on the handles would forcibly extract the molar.
Ans. 6-7.
Appellant asserts that “[substituting the contoured inner surface of
jaw 3 of Heimann for jaw 6 in Krajeski is submitted to not teach the pad
support surface ... of claim 15, in that both the prior art references again
teach only gripping the tooth.” Br. 7 (asserting that the tooth engaging jaw 3
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Application 12/789,732
in Heimann would need to be modified to apply to a surface of a gum).
Appellant argues jaw 3 of Heimann would need to be further modified to
replace the jaw 6 in Krajeski in a manner which satisfies the functional
aspects of the invention of claim 15, i.e., exertion of a rotating force on the
handles results in the pad acting as a fulcrum point around which the beak
and terminating edge will move to forcibly dislodge the tooth. Id.
We agree with Appellant that the modified forceps of Krajeski does
not result in a pad “adapted to” be used as a fulcrum point in the manner
claimed. This appeal presents an issue similar to the issue facing the court in
In re Giannelli, 739 F.3d 1375 (Fed. Cir. 2014). In Giannelli, the question
before the court was whether the patent application’s claim language reciting
a “first handle portion adapted to be moved from a first position to a second
position by a pulling force ... in a rowing machine” was rendered obvious
by a prior art chest press machine. The court looked to the written
description of the application and determined that the phrase “adapted to” in
view of the specification, has a narrower meaning than “capable of’ or
“suited for.” Id. at 1379 (contrasting the narrower meaning of “adapted to”
as meaning “made to,” “designed to,” or “configured to,” with the broader
meaning of “capable of’ or “suitable for”). See also Aspex Eyewear, Inc. v.
Marchon Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012) (holding that
“adapted to” in the claim at issue had the narrower “configured to” meaning,
which required elements to be “designed or configured to accomplish the
specified objective, not simply that they can be made to serve that purpose”).
The Court in Giannelli determined that the prior art chest press machine did
not have handles adapted to be pulled in a rowing motion because such a
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Application 12/789,732
motion of the handles was contraindicated by the prior art itself, and that the
proper inquiry the Board should have made was “whether it would have
been obvious to modify the prior art apparatus to arrive at the claimed
rowing machine.” Giannelli, 739 F.3d at 1380.
In this case, we likewise look to Appellant’s Specification to discern
the meaning of “adapted to.” Appellant’s Specification describes that “[b]y
design, the pad 34 is intended to be complementary in configuration to the
gum of a patient when inserted and manipulated by the user.” Spec. para. 29
(describing that the pad 34 “exhibits an arcuate (or rounded/non-linear)
surface profile which extends laterally to one side of the handle 26 and
integral support 38”). The Specification further describes:
In use, the forceps 20 are set in position at the desired molar (not
shown) by placing the rounded and width extending pad support
34 upon the gum of the patient between the molar and the cheek,
i.e., the outside of the jaw[,] and by concurrently placing the
pointed beak 40 on the lingual side of the molar, i.e., on the inside
of the jaw. An outward rotating force is then exerted on the
handles 26 and 28 to roll (or rotate) the pad 34 and beak 40 such
that the molar is forcibly extracted.
Spec. para. 32.
As in Giannelli, we interpret the language “said pad adapted to being
placed on one side of a tooth and, upon concurrently placing said
terminating edge of said beak against an opposite side of the tooth, a rotating
force exerted on said handles results in said pad acting as a fulcrum point
around which said beak and terminating edge will move to forcibly dislodge
the tooth” as requiring a pad and a beak configured such that when they are
placed on either side of the tooth, the pad engages the gum and the beak
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Application 12/789,732
engages the tooth, so that when a rotating force is exerted on the handles, the
pad acts as a fulcrum point.
Like in Giannelli, the Examiner is proposing that the prior art Krajeski
device, as modified by Heimann, be used in a manner different from what it
was designed to accomplish. In particular, as noted by Appellant, both
Krajeski and Heimann teach dental forceps designed to be applied to the
tooth to be extracted and not to engage the gum. The Examiner is proposing
to use Krajeski’s forceps, as modified with a rectangular pad shape as taught
by Heimann, to engage the gum on the pad side of the tooth and to rotate the
handles to extract the tooth such that the pad acts as a fulcrum point about
which the force is applied to dislodge the tooth. The Examiner’s finding that
the modified forceps of Krajeski is capable of being used in the manner
claimed is not sufficient to show that the pad is “adapted to” operate as a
fulcrum in the manner claimed. In other words, the forceps of Krajeski, as
modified by Heimann, is adapted to be used to extract a tooth by placing the
modified rectangular pad against one side of the tooth and placing the beak
at the same location on the opposite side of the tooth. Such a modification
does not result in the device having the claimed fulcrum point and the
Examiner failed to provide adequate reasoning to explain why one having
ordinary skill in the art would have been led to further modify the location of
the rectangular pad on the jaw of Krajeski so that when the jaws are placed
about the tooth, the rectangular pad act as a fulcrum point, as claimed.
For these reasons, we do not sustain the rejection of claim 15, and its
dependent claims 5-7, under 35 U.S.C. § 103(a) as unpatentable over
Krajeski and Heimann. The Examiner relies on the same problematic
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finding in support of the second ground of rejection of dependent claim 2,
and does not rely on Berkowitz to cure the deficiency in the combination of
Krajeski and Heimann. Final Act. 5. Thus, for the same reasons, we do not
sustain the rejection of claim 2 under 35 U.S.C. § 103(a) as unpatentable
over Krajeski, Heimann, and Berkowitz.
DECISION
The decision of the Examiner to reject claims 2, 5-7, and 15 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)(l)(iv).
REVERSED
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