Ex Parte Kuhn et al

Patent Trials and Appeals BoardMar 28, 2019

14840832 - (D) (P.T.A.B. Mar. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/840,832 08/31/2015 129916 7590 04/01/2019 Michael Best & Friedrich LLP (DITC) 100 East Wisconsin A venue Suite 3300 Milwaukee, WI 53202 FIRST NAMED INVENTOR Bernhard Kuhn 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. 208572-9003-USOO 1087 EXAMINER SPARKS, STEPHEN R ART UNIT PAPER NUMBER 3772 NOTIFICATION DATE DELIVERY MODE 04/01/2019 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): mkeipdocket@michaelbest.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BERNHARD KUHN and THOMAS CLABEN Appeal2018-006492 Application 14/840,832 Technology Center 3700 Before JAMES P. CALVE, BRETT C. MARTIN, and NATHAN A. ENGELS, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL Appeal2018-006492 Application 14/840,832 STATEMENT OF CASE Appellants appeal under 35 U.S.C. Â§ 134 from the Examiner's rejection of claims 1, 2, and 5-12, the only pending claims. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We REVERSE. THE INVENTION Appellants' claims are directed "to mechanisms [for] receiving and holding a tool or treatment instrument in a dental hand instrument." Spec. ,r 2. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A dental hand instrument, comprising: a grip sleeve having a front end; a head housing arranged at the front end of the grip sleeve, the head housing including a substantially cylindrical hollow space and an inner wall region enclosing the substantially hollow space, the head housing configured to receive or hold a treatment instrument, a spray insert arranged in the substantially cylindrical hollow space having two circumferential annular incisions; a connecting bore having a first end facing the grip sleeve, wherein the substantially cylindrical hollow space is connected by way of the connecting bore to a connection region pointing to the grip sleeve, and wherein the first end of the connecting bore is coupled to a media line extending through the grip sleeve; and a sickle-shaped recess located within the inner wall region of the head housing and into which the connecting bore opens. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Knopp US 2008/0118890 Al May 22, 2008 2 Appeal2018-006492 Application 14/840,832 REJECTIONS The Examiner made the following rejections: Claims 1, 2, and 5-12 stand rejected under 35 U.S.C. Â§ 112(b) or second paragraph as being indefinite. Ans. 2. Claims 1, 2, and 5-12 stand rejected under 35 U.S.C. Â§ 102(a)(l) as being anticipated by Knopp. Ans. 3. ANALYSIS The Examiner rejects the claims as indefinite due to the inclusion of the term "substantially." Ans. 2. The Examiner provides no explanation of this rejection other than to say that "the specification does not provide a standard for ascertaining the requisite degree." Id. We agree with Appellants, however, that, "[ o ]ne of ordinary skill in the art understands that a perfect cylinder is not required and that the claim language allows for some leeway or imperfection in the cylindrical shape." Br. 7. This is a fairly standard use of the term "substantially" and does not render the claims indefinite. As to Knopp, the Examiner appears to take the position that an annular undercut is the same as being sickle-shaped. Ans. 8. As Appellants point out, however, paragraph [0008] "describes two different embodiments: 1) a sickle-shape recess and 2) a recess formed from a circumferential undercut." Contrary to the Examiner's assertion, an annular undercut is not the same as something that is sickle-shaped. While not specifically defined in Appellants' Specification, we accept that, given the distinction between merely sickle-shaped and annular undercut, that sickle-shaped should be properly construed as "falcate," which is curved and tapering to a point. Br. 3 Appeal2018-006492 Application 14/840,832 8. Such structure is clearly shown as elements 11 and 21 in Fig. 2. It is clear from the Examiner's rejection that the Examiner is giving no weight to the additional requirements of being "sickle-shaped" and is merely reciting art that discloses an annular ring or undercut that does not include the requisite taper. As such, we do not sustain the Examiner's rejection. DECISION For the above reasons, we REVERSE the Examiner's decision to reject claims 1, 2, and 5-12. REVERSED 4