Ex Parte Jimenez et al

Patent Trial and Appeal Board

Jan 31, 2017

12547627 (P.T.A.B. Jan. 31, 2017)

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.
12/547,627 08/26/2009 Eduardo Jimenez 8751-00-US-01-TB 5628
23909 7590 02/02/2017
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
EXAMINER
GILL, JENNIFER FRANCES
ART UNIT PAPER NUMBER
3776
NOTIFICATION DATE DELIVERY MODE
02/02/2017 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):
Paten t_Mail @ colpal. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDUARDO JIMINEZ, MICHAEL ROONEY,
ROBERT MOSKOVICH, LUCA CASHINI, and JACOB PRINGIERS
Appeal 2014-006029
Application 12/547,627
Technology Center 3700
Before JOSEPH A. FISCHETTI, BART A. GERSTENBLITH, and
BRADLEY B. BAYAT, Administrative Patent Judges.
BAYAT, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—4, 6—17, and 19-28.2 We have jurisdiction under
35 U.S.C. § 6(b).
1 Our decision references Appellants’ Appeal Brief (“Appeal Br.,” filed
Sept. 9, 2013), Reply Brief (“Reply Br.,” filed Apr. 18, 2014), the
Examiner’s Answer (“Ans.,” mailed Feb. 21, 2014), and the Final Office
Action (“Final Act.,” mailed Apr. 24, 2013).
2 Appellants identify the real party in interest as “Colgate-Palmolive
Company” (Appeal Br. 2).
Appeal 2014-006029
Application 12/547,627
STATEMENT OF THE DECISION
We AFFIRM.
CLAIMED INVENTION
Appellants’ invention “relates generally to ansate oral care
implements and specifically to toothbrushes, either manual or powered, that
have a handle and a head having cleaning elements for oral cleaning”
(Spec. 11). Claims 1,17, 22, and 28 are the independent claims on appeal.
Claim 1, reproduced below, is illustrative of the subject matter on appeal.
1. An oral care implement comprising:
a handle;
a head connected to the handle, the head comprising a
first surface and a second surface opposite the first surface, and
an axis extending from the first surface; and
a plurality of cleaning elements extending from the first
surface of the head and arranged in a ring about the axis,
wherein each of the cleaning elements extends from the first
surface of the head at an inclined orientation so as to radially
diverge from the axis;
a cleaning element wall extending from the first surface
of the head, the cleaning element wall circumferentially
surrounding the plurality of cleaning elements; and
the cleaning elements extending beyond a top surface of
the cleaning element wall.
Appeal Br. 19, Claims App.
REJECTIONS
Claims 1—4, 7, 9-12, 14, 15, 17—20, 22—26, and 28 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Hohlbein (US 2006/0236478
Al, pub. Oct. 26, 2006) and Moskovich (US 5,628,082, iss. May 13, 1997).
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Appeal 2014-006029
Application 12/547,627
Claims 6, 8, 13, 16, 21, and 27 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Hohlbein, Moskovich, and Huang
(US 2010/0115724 Al, pub. May 13, 2010).
DISCUSSION
We have reviewed Appellants’ arguments in the Briefs against the
Examiner’s Answer and the Final Office Action, and we are not persuaded
of error. We adopt the Examiner’s findings and rationale as our own, and
we note the following for emphasis.
As an initial matter, we note that Appellants argue independent
claims 1,17, 22, and 28 as a group (Appeal Br. 5). We select claim 1 as
representative. Appellants do not separately argue the dependent claims,
and instead “acknowledge[] that dependent claims 2-4, 6—16, 19-21, and
23—27 will stand or fall with independent claims 1,17, and 22 from which
they depend” (Id.). Thus, claims 2-4, 6—17, and 19-28 stand or fall with
independent claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
‘“On appeal to the Board, an applicant can overcome a rejection by
showing insufficient evidence ofprima facie obviousness or by rebutting the
prima facie case with evidence of secondary indicia of nonobviousness.’” In
re Kahn, 441 F.3d 977, 985—86 (Fed. Cir. 2006) (quoting In re Rouffet, 149
F.3d 1350, 1355 (Fed. Cir. 1998)). Here, “Appellants] agree[] that a prima
facie case of obviousness has been made by the Examiner.” Appeal Br. 9.
As such, “Appellant[s] provide[] the following rebuttal to the Examiner’s
finding of a prima facie case of obviousness” (Id.).
Appellants argue:
If Hohlbein were modified as suggested in the Office Action,
the arcuate walls 209a-d of Hohlbein would incur a change in
function. Specifically, if the perimeter bristles 102 of
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Application 12/547,627
Moskovich were positioned within and surrounded by the
arcuate walls 209a-d of Hohlbein, the arcuate walls 209a-d of
Hohlbein would assume the function of preventing the
perimeter bristles 102 from splaying, effectively acting as a
support structure. This is a change in the function that the
arcuate walls 209a-d serve in the Hohlbein toothbrush, which is
to encircle teeth and better retain dentifrice.
(Id. at 11-12).
The Examiner takes the position that
it would have been obvious to one possessing ordinary skill in
the art at the time the invention was made to modify the device
of Hohlbein by providing a plurality of cleaning elements
extending from the first surface of the head in an inclined
orientation in view of Moskovich in order to allow a user to
encircle the teeth with cleaning elements while allowing a
central tuft to clean between teeth and at the gumline thereby
cleaning the teeth more thoroughly.
(Final Act. 7).
“[I]t is not necessary that the inventions of the references be
physically combinable to render obvious the invention under review.” In re
Sneed, 710 F.2d 1544, 1550 Fed. Cir. 1983 (citing Orthopedic Equip. Co. v.
United States, 702 F.2d 1005, 1013 (Fed. Cir. 1983); In re Andersen, 391
F.2d 953, 958 (CCPA 1968)); see also In re Nievelt, 482 F.2d 965, 968
(CCPA 1973) (“Combining the teachings of references does not involve an
ability to combine their specific structures.”). “The test for obviousness is
not whether the features of a secondary reference may be bodily
incorporated into the structure of the primary reference .... Rather, 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 (CCPA
1981) (citations omitted).
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Application 12/547,627
Here, the Examiner does not propose that the features of Moskovich
be physically incorporated into the structure of Hohlbein. Instead, the
Examiner concludes that the combined teachings of the references would
have suggested to one of ordinary skill in the art the Appellants’ invention.
Appellants’ argument overlooks “the relevant combined teachings of the . . .
references.” Andersen, 391 F.2d at 958. The fact that the proposed
combination may have some disadvantages is not sufficiently germane to
persuade us that such proposed modification would not have occurred by
one of ordinary skill. See Winner Int’l Royalty Corp. v. Wang, 202 F.3d
1340, 1349 n.8 (Fed. Cir. 2000).
Appellants’ argument that the combination “is the sole result of
impermissible hindsight using Applicant’s disclosure as a blueprint” (Appeal
Br. 13) is also unpersuasive of Examiner error. Here, the Examiner relies on
the combined teachings of Hohlbein and Moskovich as would be understood
by one of ordinary skill in the art. Those reasons do not include knowledge
gleaned only from Appellants’ disclosure.
Finally, we disagree that “the Examiner has failed to properly
consider the submission of the affidavits3 and the specific evidentiary value
that they provide in support of the non-obviousness of the claims” (Appeal
Br. 15; Reply Br. 5). The Examiner addresses the evidence in the office
action following submission (see Final Act. 13—17), but does not find the
3 Appellants rely on Rule 132 Affidavits executed by Douglas J. Hohlbein
(“Hohlbein Aff.,” filed Feb. 26, 2013), an employee of the real party in
interest, and Robert Moskovich (“Moskovich Aff,” filed Feb. 26, 2013), one
of the inventors named in the above-identified application, to argue that the
presumption of obviousness has been overcome.
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Application 12/547,627
evidence of secondary considerations sufficient to overcome the evidence of
obviousness.
Turning to the merits, Appellants argue:
In their affidavits, Robert Moskovich and Douglas Hohlhein
provide evidence that: (1) the redundancy that would result
under the proper combination of Hohlbein and Moskovich is
undesirable and not one that a person of ordinary skill in the art
would make; (2) positioning the perimeter bristles of
Moskovich within the arcuate walls of Hohlbein would hinder
the purpose of the Moskovich perimeter bristles; and (3) a
person of ordinary skill in the art would not have found it
obvious to position the perimeter bristles of Moskovich within
the arcuate walls of Hohlbein.
Appeal Br. 17.
We recognize that evidence of secondary considerations, such as that
presented by Appellants, must be considered in route to a determination of
obviousness/nonobviousness under 35 U.S.C. § 103. Accordingly, we
consider anew the issue of obviousness under 35 U.S.C. § 103, carefully
evaluating and weighing both the evidence relied upon by the Examiner and
the objective evidence of nonobviousness provided by Appellants. To the
extent that the affiants maintain that the prior art devices are not physically
combinable, we reiterate that combining the teachings of the references does
not involve an ability to combine their specific structures. We find that the
bulk of each affidavit merely repeats some of the arguments set out in the
Appeal Brief and gives an opinion on the ultimate legal conclusion (see, e.g.,
Hohlbein Aff. 3—5; Moskovich Aff. 3—5). Neither affidavit provides factual
evidence (e.g., experimental data, research, literature) to corroborate the
opinion of the affiant. The affidavit submissions do not contain any
reasonably specific factual support for the opinions expressed therein. See
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Application 12/547,627
In re Am. Acad. ofSci. Tech. Ctr., 367 F.3d 1359, 1368 (Fed. Cir.
2004) (“[T]he Board is entitled to weigh the declarations and conclude that
the lack of factual corroboration warrants discounting the opinions expressed
in the declarations.”); Velanderv. Gamer, 348 F.3d 1359, 1371 (Fed. Cir.
2003) (“In giving more weight to prior publications than to subsequent
conclusory statements by experts, the Board acted well within [its]
discretion.”).
In view of the foregoing, we sustain the Examiner’s rejections of
independent claim 1, and claims 2—4, 6—17, and 19-28, which fall with
claim 1.
DECISION
The Examiner’s decision to reject claims 1—4, 6—17, and 19—28 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). See 37 C.F.R.
1.136(a)(l)(iv).
AFFIRMED
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