Ex Parte Maev et al

Patent Trial and Appeal BoardApr 15, 2016

12708741 (P.T.A.B. Apr. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 121708,741 02/19/2010 26096 7590 04/19/2016 CARLSON, GASKEY & OLDS, P,C 400 WEST MAPLE ROAD SUITE 350 BIRMINGHAM, MI 48009 FIRST NAMED INVENTOR Roman Gr. Maev 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. 67232-00SPUS 1 5136 EXAMINER APONTE, MIRA YDA ARLENE ART UNIT PAPER NUMBER 3732 NOTIFICATION DATE DELIVERY MODE 04/19/2016 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): ptodocket@cgolaw.com cgolaw@yahoo.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROMAN GR. MAEV, EUGENE V. MALY ARENKO and ALEXANDER IL YUTOVICH Appeal2014-002592 Application 12/708,741 Technology Center 3700 Before STEFAN STAICOVICI, WILLIAM A. CAPP, and LEE L. STEPINA, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. Â§ 134 of the final rejection of claims 2-15. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. Appeal2014-002592 Application 12/708,741 THE INVENTION Appellants' invention relates to an ultrasonic imaging device for dental applications. Spec. i-f 2. Claim 2, reproduced below, is illustrative of the subject matter on appeal. 2. A method of evaluating a tooth structure, comprising: emitting a first signal from a first position; emitting a second signal from a second position that is different than the first position; and determining an internal geometry of a tooth structure based at least on a reflection of the first signal and a reflection of the second signal. THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: Adams Maev Nields us 4,762,002 US 2007/0037125 Al US 2009/0143674 Al The following rejections are before us for review: 1 Aug. 9, 1988 Feb. 15,2007 June 4, 2009 1. Claims 4, 5, and 7 are rejected under 35 U.S.C. Â§ 112, second paragraph (pre-AIA), as being indefinite for failure to particularly point out and distinctly claim the subject matter that the inventors regard as their invention. 2. Claims 2-5, 8-11, 13 and 14 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Maev.2 1 A rejection of claim 2 under 35 U.S.C. Â§ 101 has been withdrawn. Final Action 3; April 5, 2013, Advisory Action. 2 Although claim 7 is not presented in the heading of this rejection, because the Examiner addresses claim 7 in the body of the rejection, we consider the Examiner's omission as a mere typographical error. 2 Appeal2014-002592 Application 12/708,741 3. Claims 6 and 15 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Maev and Adams. 4. Claim 12 is rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Maev and Nields OPINION Indefiniteness of Claims 4, 5, and 7 Claim 4 The Examiner states that it is unclear whether Appellants' use of "tooth normal" in claim 4 refers to a place on the tooth called normal or refers to the axis that extends away from the tooth in a direction normal to the tooth surface. Final Action 3. For purposes of the art rejection, the Examiner assumes that "tooth normal" means "the axis that extends away from the tooth in a direction normal from the tooth surface." Id. In response, Appellants state that the Examiner's assumed meaning is correct. Appeal Br. 7. The Specification refers to a reference direction R that is "normal" to the tooth surface. Spec. 30. We think that person of ordinary skill in the art would understand "tooth normal" to have the meaning assumed by the Examiner and agreed to by Appellants. We do not sustain the indefiniteness rejection of claim 4. Claim 5 and 7 The Examiner is uncertain as to the meaning of "determining comprises determining . .. "in claims 5 and 7. Final Action 4. For purposes of the rejection, the Examiner interprets the phrase as "the step of determiningfurther comprises determining ... " Id. In response, Appellants state that the Examiner's assumed meaning is correct. Appeal Br. 7. In claim 5, the phrase "determining comprises 3 Appeal2014-002592 Application 12/708,741 determining . .. "is preceded by the definite article "the." Claims App. \Ve think that a person of ordinary skill in the art would understand that "the determining" refers to the claim language "determining an internal geometry of a tooth structure" in claim 2 as an antecedent basis for "the determining" in claims 5 and 7. Claims App. With that understanding in mind, we agree with Appellants that the claim is definite and we thus do not sustain the indefiniteness rejection of claims 5 and 7. Unpatentability of Claims 2-5, 8-11, 13, and 14 Appellants argue that Maev fails to disclose emitting a second signal from a second position that is different than the first position. Appeal Br. 4. Appellants contend that Maev shows only one position from which signals are emitted. Id. In response, the Examiner states, in essence, that the "second position" limitation can be satisfied by emitting the second signal from the same location as the location of emitting the first signal. Ans. 4. According to the Examiner, rotating or tilting the source of signal emission can be considered to be a different position in relation to a predefined reference. Id. In addition, the Examiner finds that, although Maev does not explicitly disclose emitting a second signal from a second position, the emission of a second signal is entitled to no patentable significance as it merely entails a duplication of steps. Final Action 6, citing In re Harza, 274 F.2d 669 (CCP A 1960). In reply, Appellants point out that, although Maev discloses that its ultrasound probe may be tilted, it specifically recites that the "perpendicular measurement is used." Reply Br. 2. Thus, according to Appellants, Maev 4 Appeal2014-002592 Application 12/708,741 does not disclose determining an internal geometry of a tooth structure based on a reflection of a first signal and second signal as claimed. Id. We agree. The claimed invention entails more than the mere duplication of either parts or steps. It entails combining two signals taken from two different positions and integrating the information from the two signals into a determination of the internal geometry of a tooth structure. This is not taught or suggested by Maev and the Examiner has provided no analysis or articulated reasoning by which a person of ordinary skill in the art would have found it obvious to modify Maev to achieve the claimed invention. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).3 In view of the foregoing, we do not sustain the unpatentability rejection of claim 2, neither do we sustain the unpatentability rejection of claims 3-5, 8-11, 13 and 14 that depend therefrom. Unpatentability of Claims 6, 12, and 15 Claims 6; 12; and 15 depend; directly or indirectly; from claim 2. Claims App. The Examiner relies on Maev for the same disclosures relied on in the rejection of claim 2 and then relies on either Adams or Nields as prior art for the various dependent limitations in claim 6, 12, and 15. Final Action 7-8. However, the deficiencies that we have noted above with respect to Maev with respect to claim 2 are not cured by either Adams or Nields. Consequently, we do not sustain the rejection of claims 6, 12, or 15. 3 "[R ]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." Id. quoting In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006). 5 Appeal2014-002592 Application 12/708,741 DECISION The decision of the Examiner to reject claims 2-15 is REVERSED. REVERSED 6