Ex Parte Kalange

Patent Trial and Appeal BoardAug 17, 2017

12926872 (P.T.A.B. Aug. 17, 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. 12/926,872 12/15/2010 John T. Kalange 1597 92217 7590 08/17/2017 John T. Kalange 136 E. Mallard Dr Boise, ID 83706 EXAMINER APONTE, MIRAYDA ARLENE ART UNIT PAPER NUMBER 3732 MAIL DATE DELIVERY MODE 08/17/2017 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 JOHN T. KALANGE ________________ Appeal 2016-000654 Application 12/926,872 Technology Center 3700 ________________ Before MICHAEL L. HOELTER, LISA M. GUIJT, and GORDON D. KINDER, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. § 134(a), from the Examiner’s final rejection of claims 21–31. Br. 3. Claims 1–20 have been canceled. Br. 12 (Claims Appendix). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2016-000654 Application 12/926,872 2 THE CLAIMED SUBJECT MATTER The disclosed subject matter “relates to buccal tubes placed on orthodontic bands and brackets and, more particularly, to a buccal tube that has a square or rectangular slot that prevents rotation of devices inserted into this slot.” Spec. 1.1 Claim 21 is the sole independent claim, is illustrative of the claims on appeal, and is reproduced below: 21. A buccal tube defining a biting (occlusal) side, a cheek (buccal) side, a gum (gingival) side, a tongue (lingual) side, a front (mesial) side, and a back (distal) side, the buccal tube of which is configured to facilitate the application of a force to at least one tooth and at least one jaw, the buccal tube comprising: a base configured for adhering or bonding to the at least one tooth; and an auxiliary tube directly coupled to the base and including a non-rounded opening formed therein, the opening extending the length of the auxiliary tube extending from the front side (mesial) to the back side (distal) and said opening is integrally formed within and made part of the auxiliary tube and becomes part of the base and precludes the need for an insert and is geometrically configured as having one of a substantially octagonal cross-sectional shape, or a substantially triangular cross-sectional shape, or a substantially rectangular cross- sectional shape, or a substantially square cross-sectional shape for coupling the at least one device that applies a force to the at least one tooth and the at least one jaw and said geometry prevents rotation of the at least one device within the auxiliary tube. 1 Appellant’s Specification does not provide line or paragraph numbering. Accordingly, reference to the Specification will only be made via the page number. Appeal 2016-000654 Application 12/926,872 3 REFERENCE RELIED ON BY THE EXAMINER Tuneberg US 5,320,526 June 14, 1994 THE REJECTIONS ON APPEAL Claims 27 and 29 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Claims 21, 23–26, 28, 30, and 31 are rejected under 35 U.S.C. § 102(b) as anticipated by Tuneberg. Claims 22, 27, and 29 are rejected under 35 U.S.C. § 103(a) as unpatentable over Tuneberg ANALYSIS The rejection of claims 27 and 29 as failing to comply with the written description requirement Claims 27 and 29 are each directed to a “slot”2 and each further specifies that the “slot has a cross-sectional dimension of either .018 x .025 or .022 x .028 inches.” The Examiner states these limitations lack support because such dimensions are “not described directly or indirectly” in Appellant’s Specification.3 Final Act. 2. Appellant, on the other hand, identifies several locations in the original Specification where support for this limitation can purportedly be found. Br. 7. Upon our review of Appellant’s Specification, we note that original claim 1 (since canceled) recites an “archwire slot being of the dimension of .018 x .025 or .022 x .028 2 Claim 27 is directed to a “main archwire slot” while claim 29 is directed to an “auxiliary archwire slot.” 3 As if to clarify, the Examiner also states, “[i]t needs to be understood that the rejection in question was based on the absence of the claimed dimensions in the application as originally filed.” Ans. 9. Appeal 2016-000654 Application 12/926,872 4 inches or similar dimensions.” Spec. 27. We are also mindful of guidance that “[i]t is now well accepted that a satisfactory description may be in the claims or any other portion of the originally filed specification.” Manual of Patent Examining Procedure § 2163(I). Because original claim 1 specifically discloses the same dimensions now recited in claims 27 and 29, we do not sustain the Examiner’s rejection of claims 27 and 29 as lacking written description support. The rejection of claims 21, 23–26, 28, 30, and 31 as anticipated by Tuneberg Appellant argues independent claim 21 separate from dependent claims 23–26, 28, 30, and 31. See Br. 8. We address these claim groups separately. See 37 C.F.R. § 41.37(c)(1)(iv). Claim 21 Appellant initially contends that the Examiner’s language used to reject this claim “is a simple ‘cut and paste’” from Appellant’s own claim. Br. 8. In other words, the statements employed by the Examiner in rejecting claim 21 “exist[] nowhere in the Tuneberg document.” Br. 8. However, we determine that the Examiner is simply following the traditional form of reciting the claim language in question and stating that the structure described by such language is disclosed in Tuneberg. See Final Act. 3. Appellant also contends that the Examiner “incorrectly labeled Prior Art Figure 1, wherein the Auxiliary Tube/Slot is incorrectly labeled as an Auxiliary Archwire Slot.” Br. 8. To resolve this purported mis-labeling, Appellant “prepared and submitted a Letter of Explanation of Difference Between Slots and Tubes” (hereinafter “Letter”). Br. 8. However, we can find that nowhere in this Letter (or in Appellant’s Specification) is the claim Appeal 2016-000654 Application 12/926,872 5 term “auxiliary tube” expressly defined; nor is there any indication that this phrase is a term of art. The Examiner, on the other hand, stated that “all pending claims have been given their broadest reasonable interpretation consistent with the specification” and that consequently, “the language used to claim [Appellant’s] buccal tube also can be interpreted [to] read[] over the presented art.” Ans. 10–11. Perhaps more to the point, the Examiner states, “the main argument is based on the intended use of the application device vs. the capability of the presented prior art of Tuneberg” which “complies with the claimed limitations under the language used by the appellant.” Ans. 7. In other words, the Examiner is following instructions from our reviewing court which states, “apparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990) (citations omitted). Accordingly, we are not persuaded the Examiner erred in applying the broadest reasonable interpretation to claim 1 nor are we persuaded by Appellant that the Examiner erred in correlating the recited “auxiliary tube” to Tuneberg’s item 24. Final Act. 3. We sustain the Examiner’s anticipation rejection of claim 21. Claims 23–26, 28, 30, and 31 Regarding claims 23–26, 28, and 30, Appellant simply repeats the above argument that the Examiner “utilizes the incorrectly labeled figure” in the rejection of these claims. Br. 8. As above, we are not persuaded, based on the record presented, that the Examiner erred in making the stated correlation. Regarding claim 31, which recites a buccal tube and a device coupled thereto, the device being “one of a headgear facebow, a lip bumper, or a Appeal 2016-000654 Application 12/926,872 6 class II corrector,” Appellant initially contends the Examiner’s reference to Tuneberg “col. 4, lines 62–65” does not exist. Final Act. 4; Br. 8. However, this section of Tuneberg clearly discloses that a passageway in the buccal tube may be used “for a facebow.” See also Ans. 13. Appellant does not explain how this teaching in Tuneberg fails to satisfy the above limitation. Accordingly, and based on the record presented, we affirm the Examiner’s rejection of claim 31. The rejection of claims 22, 27, and 29 as unpatentable over Tuneberg Appellant argues claim 22 separately from claims 27 and 29 (which are argued together). Br. 9. We select claims 22 and 27 for review, with claim 29 standing or falling with claim 27. See 37 C.F.R. § 41.37(c)(1)(iv). Claim 22 Claim 22 includes the additional limitation that the opening in the auxiliary tube “is recognized as having an industry standard cross-sectional dimension of either 0.045 or 0.051 inches.” The Examiner states that because claim 22 recites that these dimensions are each “a recognized industry standard cross-sectional dimension,” they are each then “well known in the art” and that they each “provide the optimum size for said opening.” Final Act. 6; see also Ans. 13. In other words, according to the Examiner, these recited dimensions are “a well-known parameter that provide[s] the optimum results for this kind of device.” Final Act. 6. Appellant contends that such sizing “would preclude the need for an insert” as employed in Tuneberg and further that “an insert placed in this tube (as described by Tuneberg) would then prevent the use [in Tuneberg] of a plethora of auxiliary devices meant to fit within the dimensions of these Appeal 2016-000654 Application 12/926,872 7 two tube sizes.” Br. 9. However, it appears Appellant is referring to other disclosures in Tuneberg where the use of an insert is employed, but the Examiner instead has referenced Figure 1 of Tuneberg describing the prior art that employs no such insert. See Final Act. 3. Accordingly, Appellant’s contentions are not responsive to the Examiner’s rejection. Further, the Examiner states that “an applicant is entitled to have a patent for a NEW” process, machine, manufacture, or composition of matter but that a recitation to dimensions that are well-known or that rise to the level of an “industry standard” does not “transform said claim” into one that complies “with the minimal statutory requirements of a new invention.” Ans. 13. In view of the acknowledgement in claim 22 itself that the claimed cross-sectional dimensions are an industry standard, Appellant does not explain why it would not have been obvious to one skilled in the art at the time of the invention to size the opening in the auxiliary tube in accordance with these industry-accepted dimensions in order to optimize the subsequent use of such opening. Accordingly, we are not persuaded the Examiner erred in rejecting claim 22 as being obvious over Tuneberg. Claim 27 Claim 27 depends directly from claim 21 and, as above, recites the additional limitation, “wherein said main archwire slot has a cross-sectional dimension of either .018 x .025 or .022 x .028 inches.” The Examiner recognizes that the claim is directed to sizes for the archwire slot, and that Tuneberg discloses an archwire slot, but not these dimensions for such a slot. Final Act. 6. The Examiner determines, however, that “these parameters are deemed matters of design choice, well within the skill of the ordinary artisan, obtained through routine measurements in determining Appeal 2016-000654 Application 12/926,872 8 optimum dimensions.” Final Act. 6. The Examiner also states, “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device” and that “a device having the claimed relative dimensions would not perform differently than the prior art device,” then “the claimed device was not patentably distinct from the prior art device.” Final Act. 6–7 (referencing In Gardner v. TEC Systems, Inc., 725 F.2d 1338 (Fed. Cir. 1984), cert. denied). Appellant addresses the Examiner’s reference to “‘relative dimension which would not perform differently than the prior art.’” Br. 9. Appellant understands this to mean “that scaling up or down would not have an impact on the device.” Br. 9. Appellant disagrees stating, “This is simply not the case because minor changes in dimensions at that small of a scale would have huge effects on frictional resistance, tensile and shear strengths of material, fracture resistance and so forth.” Br. 9. The Examiner responds that “the claimed elements[’] criticality [is] not present in the specification” and that “Tuneberg’s buccal tube [is] capable of performing as the claimed buccal tube.” Ans. 14. The Examiner further states that the only difference “between both are the relative dimensions” and that this does not “place the claimed device” as “patentably distinct from the prior art device as explained above.” Ans. 14. In effect, Appellant is seeking protection for particular slot dimensions without explaining why these dimensions are critical or achieve an unexpected result when compared to other slot dimensions. See In re Chu, 66 F.3d 292, 298–9 (Fed. Cir. 1995) (“design choice” is appropriate where the applicant fails “to set forth any reasons why the differences between the claimed invention and the prior art would result in a different Appeal 2016-000654 Application 12/926,872 9 function or give unexpected results.”) (citing In re Rice, 341 F.2d 309 (CCPA 1965) (“Appellants have failed to show that the change [in the claimed invention] as compared to [the reference], result in a difference in function or give unexpected results.”); In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (“[u]se of such means of electrical connection in lieu of those used in the references solves no stated problem and would be an obvious matter of design choice within the skill in the art.” (citations omitted)). In view of the above instructions from our reviewing court, and based on the record presented, we are not persuaded the recited dimensions have criticality or achieve an unexpected result. We are further not persuaded that Tuneberg’s device is incapable of performing as recited. Accordingly, we agree with the Examiner. We sustain the Examiner’s rejection of claims 27 and 29 as being unpatentable over Tuneberg. DECISION The Examiner’s rejections of claims 21–31 are 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)(1)(iv). AFFIRMED