Ex Parte Knopp et al

Patent Trial and Appeal Board

Sep 24, 2012

11871394 (P.T.A.B. Sep. 24, 2012)

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.
11/871,394 10/12/2007 Arthur A. Knopp SPHP-102US 6704
23122 7590 09/24/2012
RATNERPRESTIA
P.O. BOX 980
VALLEY FORGE, PA 19482-0980
EXAMINER
EIDE, HEIDI MARIE
ART UNIT PAPER NUMBER
3732
MAIL DATE DELIVERY MODE
09/24/2012 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 ARTHUR A. KNOPP,
JOSEPH A. LIEB, and NATHANIEL H. LIEB
__________

Appeal 2011-010805
Application 11/871,394
Technology Center 3700
__________

Before DONALD E. ADAMS, LORA M. GREEN, and
ERICA A. FRANKLIN, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner‟s rejection of claims 1-3, 8-24, 39, and 41. We have jurisdiction
under 35 U.S.C. § 6(b).
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STATEMENT OF THE CASE
Claim 1 is representative of the claims on appeal, and reads as follows
(emphasis added):
1. An electric dental handpiece comprising:
a head configured to rotatably support a tool;
a handle defining a lower handle portion and an upper handle portion, the
lower handle portion engaging the head and the upper handle portion having
an attachment area configured for attachment to a power supply external to
the handle;
an electric motor positioned with a majority thereof within the lower
handle portion and configured to rotate the tool, the electric motor
configured to receive power from the power supply external to the handle;
a spindle chucking assembly positioned in the head and configured to
removably support the tool wherein the spindle chucking assembly includes
a spindle gear configured to transfer a rotational force of the electric motor
to the tool; and
wherein the electric motor includes a motor shaft and a gear positioned
on the motor shaft that directly engages the spindle gear or
wherein the electric motor is associated with one or more speed altering
gears, the one or more speed altering gears having an output shaft with a
gear thereon which directly engages the spindle gear.

The following grounds of rejection are before us for review:
I. Claims 1-3 stand rejected under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Kuhn
1
and Badoz
2
(Ans.
4).
II. Claims 8 and 9 stand rejected under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Kuhn and Badoz, as
further combined with Rosenstatter
3
(Ans. 6).

1
Kuhn, US 2003/0190583 A1, issued Oct. 9, 2003.
2
Badoz, US 5,944,523, issued Aug. 31, 1999.
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III. Claims 10, 11, and 14-16 stand rejected under 35 U.S.C. § 103(a)
as being rendered obvious by the combination of Kuhn and Badoz,
as further combined with Kuhn ‟817
4
(Ans. 6).
IV. Claims 12 and 13 stand rejected under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Kuhn and Badoz, as
further combined with Kuhn ‟817 and Terry
5
(Ans. 8).
V. Claims 17 and 18 stand rejected under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Kuhn and Badoz, as
further combined with Loge
6
(Ans. 8).
VI. Claims 17 and 19 stand rejected under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Kuhn and Badoz, as
further combined with Adams
7
(Ans. 9).
VII. Claims 20-23 stand rejected under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Kuhn and Badoz, as
further combined with Loge and Eyerly
8
(Ans. 10).
VIII. Claim 24 stands rejected under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Kuhn and Badoz, as
further combined with Lares
9
(Ans. 12).
IX. Claim 39 stands rejected under 35 U.S.C. § 103(a) as being
rendered obvious by Terry (Ans. 12).

3
Rosenstatter, US 5,846,078, issued Dec. 8, 1998.
4
Kuhn, US 2005/0089817 A1, issued Apr. 28, 2005.
5
Terry, US 2,010,421, issued Aug. 6, 1935.
6
Loge et al., US 4,184,256, issued Jan. 22, 1980.
7
Adams, US 6,171,300 B1, issued Jan. 9, 2001.
8
Eyerly et al., US 5,708,336, issued Jan. 13, 1998.
9
Lares, US 4,534,734, issued Aug. 13, 1985.
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X. Claim 41 stands rejected under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Loge, Eyerly, and
Sorensen
10
(Ans. 13).

We affirm.

ANALYSIS
Rejections I-VIII
The Examiner rejects claims 1-3 as being rendered obvious by the
combination of Kuhn and Badoz (Ans. 4-5). As we agree with the
Examiner‟s findings and conclusions, we adopt them as our own. In
addition, as Appellants only argue the merits of the rejection as to claim 1,
claims 2 and 3 fall with that claim. 37 C.F.R. § 41.37(c)(1)(vii).
Specifically, the Examiner finds that Kuhn teaches all of the elements
of claim 1 except that the majority of the electric motor being arranged in
the handle (Ans. 4).
The Examiner finds that Badoz teaches an electric dental handpiece
wherein the majority of the handle may be positioned within the lower
handle portion (id.).
The Examiner concludes that it would have been obvious to the
ordinary artisan “to modify the placement of the motor taught by Kuhn with
the placement taught by Bodoz [sic]… since Bodoz [sic] teaches the motor
can be in the handle, as taught by Kuhn, or in the neck or head” (id. at 5).

10
Sorensen, US 2004/0026443 A1, issued Feb. 12, 2004.
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Appellants argue that the Examiner has failed “to articulate any reason
why one of ordinary skill in the art would modify the motor position
disclosed in Kuhn ‟583 based on Badoz” (App. Br. 14). Appellants assert
that Badoz provides no reason to locate the motor within the lower handle
portion, and provides “no teaching as to how one of ordinary skill in the art
would position the motor in such a location” (id.).
Appellants argue further that Kuhn teaches positioning the electric
motor in a releasable connection part, and provides no reason why one
would remove it from that position and place it in the lower handle portion
of the instrument (id.).
Appellants‟ arguments are not convincing. “The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 416 (2007).
If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability. For the same
reason, if a technique has been used to improve one device, and
a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his
or her skill.

Id. at 417. In determining whether obviousness is established by combining
the teachings of the prior art, “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). In addition, a reference disclosure
is not limited only to its preferred embodiments, but is available for all that it
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discloses and suggests to one of ordinary skill in the art. In re Lamberti, 545
F.2d 747, 750 (CCPA 1976).
Here, the Examiner has provided a reason as to why the ordinary
artisan would have found it obvious to move the motor within the lower
handle portion—that is, that it was known in the art that the handle could be
located in such a region, as taught by Badoz. That was also recognized by
Kuhn, which teaches that the rotational motor that may be in the handpiece
itself or in a connection part that can be releasably connected by means of a
plug-in (Kuhn, p. 1, ¶ 2).
Appellants argue further that there is no reasonable expectation of
success of combining the references to arrive at the claimed invention (App.
Br. 15). Appellants assert that a “review of the figure of Badoz shows that
the motor … could not possibly fit in the neck … or head … of the dental
tool,” and that “Badoz provides no teaching on how [the] motor . . . could
„alternatively‟ be placed in the neck … or head … of the dental tool” (id.).
Thus, Appellants assert, “Badoz does not enable the feature of a motor
positioned with a majority thereof in a lower handle portion, and that one of
ordinary skill in the art would have had no reasonable expectation of success
in implementing such a feature based on the disclosure of Badoz” (id.)
Appellants‟ arguments are not convincing. Appellants are in essence
arguing that because the references do not specifically teach the method and
manner by which the motor of Kuhn can be moved from the connection part
that can be releasably connected by means of a plug-in to the lower handle
portion, the combination is not enabling. However,
[t]o justify combining reference teachings in support of a
rejection it is not necessary that a device shown in one
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reference can be physically inserted into the device shown in
the other. The test for obviousness is not whether the features
of a secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill
in the art.

Keller, 642 F.2d at 425 (citations omitted). Here, while Appellants appear to
be arguing that it would beyond the level of skill of the ordinary artisan to
move the motor to the lower handle portion, Appellants have provided no
evidence of such, and attorney argument cannot take the place of evidence
lacking in the record. Estee Lauder Inc. v. L’Oreal, S.A., 129 F.3d 588, 595
(Fed. Cir. 1997).
Appellants also argue that modifying Kuhn with Badoz would change
the principle of operation of Kuhn (App. Br. 16). Appellants assert that
Kuhn teaches positioning the electric motor in a releasable connection part,
and thus the proposed modification would prevent the motor being
releasable from the instrument (id.).
Appellants‟ arguments are not convincing. “„The fact that the
motivating benefit comes at the expense of another benefit … should not
nullify its use as a basis to modify the disclosure of one reference with the
teachings of another. Instead, the benefits, both lost and gained, should be
weighed against one another.‟” Medichem S.A. v. Rolabo S.L., 437 F.3d
1157, 1165 (Fed. Cir. 2006). Thus, the ordinary artisan could weigh the
benefit of placing the motor in the lower handle portion as opposed to in a
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releasable connection part, and the combination of Kuhn and Badoz renders
the selection of either obvious.
As to Rejections II-VIII, Appellants rely on the arguments made with
respect to claim 1 (see App. Br. 12 and 16). We thus affirm those rejections
as well for the reasons set forth with respect to claim 1.

Rejection IX
The Examiner rejects claim 39 as being rendered obvious by Terry
(Ans. 12-13).
Claim 39 recites (emphasis added):
An electric dental handpiece comprising:
a handle;
a head supported by the handle and configured to
rotatably support a tool;
an electric motor configured to rotate the tool;
a spindle chucking assembly positioned in the head and
configured to removably support the tool, the spindle chucking
assembly including an upper spindle bearing configured to
rotatably support a spindle shaft, and a spindle gear associated
with the spindle shaft; and
at least one removable cap assembly associated with the
head for providing access to the spindle chucking assembly,
wherein the spindle gear, the spindle shaft and the upper
spindle bearing are all removable from the head upon removal
of the at least one cap assembly without removing the head
from the handle, and
the upper spindle bearing is rigidly held in place by the
removable cap assembly.

As we agree with the Examiner‟s findings and conclusions, we adopt
them as our own. Specifically, the Examiner finds that Terry teaches a
device “wherein the spindle gear, the spindle shaft and the upper spindle
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bearing are all removable from the head upon removal of the at least one cap
assembly without removing the head from the handle (page 3, col. 1, ll. 54-
59, col. 2, ll. 5-8)” (Ans. 13). According to the Examiner, “when the barrel
is held in place by friction as taught by Terry, the entire barrel is capable of
being removed by the removal of cap 57” (id.). The Examiner further notes
that the device of Terry would still be able to function without screw 55, and
thus “upon removal of the cap 57 the bearing would be removed” (id. at 16).
Appellants argue that Terry does not teach or suggest the limitation
“of „the upper spindle bearing is rigidly held in place by the removable cap
assembly,‟” as required by claim 39 (App. Br. 17). According to Appellants,
“Terry teaches screw 55 is necessary to rigidly hold upper bearing 53 in
place” (id. at 18).
Appellants‟ arguments have been carefully considered, but are not
found to be convincing. Terry teaches that “by removing the screw 55 the
entire barrel and interior assembly of the head may be removed, and by
removing the cap 57 with the screw 55 in place the spindle 13 and front
bearing 56 may be removed from the barrel” (Terry, p. 3, col. 1, ll. 54-59).
Terry also teaches:
It will be understood that changes may be made in the
construction without departing from the spirit of the invention.
One of which changes may be in the use of the assembled parts
with variations therein in an instrument, tool, or device of any
other nature or for any other purpose, another may be in use of
other means for holding or attaching the parts together, another
may be in the use of other means for holding the barrel in the
head as it may be held by friction or other means, another may,
be in the use of other means for holding the bearings and
spindle in the barrel, and still another may be in the use of other
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means for holding the upper end of the bur or sealing the upper
end of the head.

(Id. at p. 3, col. 1, l. 73-col. 2, l. 12.)
Thus, Terry clearly teaches that the pieces of the instrument may be
held in place by friction, and in that circumstance, as found by the Examiner,
removing the cap would allow for removal of the upper spindle bearing.

Rejection X
The Examiner rejects claim 41 as being rendered obvious by the
combination of Loge, Eyerly, and Sorensen (Ans. 13-15). Claim 41 recites
(emphasis added):
An electric dental handpiece comprising:
a handle;
a head supported by the handle and configured to
rotatably support a tool;
an electric motor positioned in the handle and configured
to rotate the tool;
one or more cooling air tubes configured to deliver a
cooling air flow about the electric motor, and
a temperature sensing mechanism for sensing a
temperature of the electric motor, the cooling air flow being
controlled based on such sensed temperature,
wherein the electric motor includes at least one motor
winding and the temperature sensing mechanism computes the
temperature of the electric motor based on a measured
resistance of the at least one motor winding.

As we agree with the Examiner‟s findings and conclusions, we adopt
them as our own. Specifically, the Examiner finds that while Loge teaches
“one or more cooling air tubes configured to deliver a cooling air flow about
the electric motor …. Loge does not specifically teach a temperature sensing
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mechanism for sensing a temperature of the electric motor, the cooling air
flow being controlled based on such sensed temperature” (Ans. 13).
The Examiner finds that Eyerly “teaches a temperature sensing
mechanism for sensing a temperature of the electric motor” (id. at 14). The
Examiner relied on Sorenson for teaching “cooling air flow being controlled
based on a sensed temperature” (id. at 15).
The Examiner concludes that it would have been obvious to use a
temperature sensing mechanism as taught by Eyerly in the cooling system of
Loge in order to reach a desired motor temperature (id. at 14). The
Examiner also concludes that it would have been obvious to use a sensed
temperature as taught by Sorensen as Loge teaches the use of air to cool a
motor (id. at 15).
Appellants argue that the combination of references filed fail to teach
“one or more cooling air tubes configured to deliver cooling air flow about
the electric motor, and a temperature sensing mechanism for sensing a
temperature of the electric motor, the cooling air flow being controlled based
on such sensed temperature, wherein the electric motor includes at least one
motor winding and the temperature sensing mechanism computes the
temperature of the electric motor based on a measured resistance of the at
least one motor winding” as required by claim 41 (App. Br. 18-19).
Appellants assert that Loge “fails to disclose coolant regulating device
controlling the flow of coolant in tubular member 2,” and also “fails to
disclose controlling the coolant in tubular member 2 based on the
temperature of the motor 1” (id. at 19).
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As to Eyerly, Appellants argue that “Eyerly fails to disclose any
structure for controlling the flow of cooling air,” and “fails to disclose
controlling the flow of a coolant based on a measured temperature of the
motor windings 20” (App. Br. 19). Appellants assert that “Eyerly solely
discloses controlling the current in motor windings 20 based on the
measured temperature,” and thus “[b]ased on the teaching of Eyerly, one
skilled in the art would be taught to reduce the current, thereby causing the
handpiece to fail to operate at a desired speed or torque” (id.).
Appellants also argue that “Sorensen is directed to cooling products in
a transport system,” and “fails to disclose using the cooling device … to cool
a motor,” or “based on the sensed temperature of a motor” (id. at 20).
Appellants‟ arguments are not convincing. We note that Appellants
are arguing the references in isolation, while obviousness is determined in
view of the sum of all of the relevant teachings in the art, not isolated
teachings in the art. See In re Kuderna, 426 F.2d 385, 389 (CCPA 1970).
Appellants also appear to be arguing that the ordinary artisan would not have
looked to Sorensen, because it fails to disclose a cooling device to cool a
motor. We do not agree that Sorensen is non-analogous art.
The Federal Circuit has found that
an inventor considering a hinge and latch mechanism for
portable computers would naturally look to references
employing other “housings, hinges, latches, springs, etc.” which
in that case came from areas such as “a desktop telephone
directory, a piano lid, a kitchen cabinet, a washing machine

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cabinet, a wooden furniture cabinet, or a two-part housing for
storing audio cassettes.”

In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1380 (Fed. Cir. 2007)
(citing In re Paulsen, 30 F.3d 1475, 1481 (Fed. Cir. 1994). Thus, in this
case, Sorensen is pertinent to the problem of cooling, as are Loge and
Eyerly.
As to the argument that the ordinary artisan would reduce the current
in view of Eyerly, causing the handpiece to fail to operate at a desired speed
or torque, we note that “[a] person of ordinary skill is also a person of
ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. Moreover,
that argument ignores the teachings of Loge, which, as found by the
Examiner, teaches one or more cooling tubes configured to deliver a cooling
air flow about the electric motor.

SUMMARY
Rejection I-X are affirmed.

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

cdc