Ex Parte MettlerDownload PDFPatent Trial and Appeal BoardMay 26, 201712013911 (P.T.A.B. May. 26, 2017) Copy Citation 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. 12/013,911 01/14/2008 Gilbert William Mettler JR. 4735.001US1 9515 21186 7590 05/31/2017 SCHWEGMAN LUNDBERG & WOESSNER, P.A. P.O. BOX 2938 MINNEAPOLIS, MN 55402 EXAMINER SIMPSON, SARAH A ART UNIT PAPER NUMBER 3731 NOTIFICATION DATE DELIVERY MODE 05/31/2017 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): uspto@slwip.com SLW @blackhillsip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GILBERT WILLIAM METTLER JR. Appeal 2015-0059171 Application 12/013,9112 Technology Center 3700 Before PHILIP J. HOFFMANN, KENNETH G. SCHOPFER, and MATTHEW S. MEYERS, Administrative Patent Judges. SCHOPFER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 from the rejection of claims 1—18 and 26—28. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Our decision references the Appeal Brief (“Appeal Br.,” filed Jan. 26, 2015) and Reply Brief (“Reply Br.,” filed May 20, 2015), and the Examiner’s Answer (“Ans.,” mailed Mar. 26, 2015) and Final Office Action (“Final Act.,” mailed Aug. 27, 2014). 2 According to Appellant, the real party in interest “is the assignee, Gil Mettler.” Appeal Br. 2. Appeal 2015-005917 Application 12/013,911 BACKGROUND The Specification relates “generally to oral tools, including a tongue retraction and cleaning method and apparatus.” Spec. 11. CLAIMS Claims 1—18 and 26—28 are on appeal. Claims 9—25 and 29—32 were canceled. Claim 1 is illustrative of the appealed claims and recites: 1. An apparatus for retracting at least a portion of sides of an animal tongue, at least a portion of a back of the animal tongue, and a dorsal portion of an animal tongue, comprising: a tongue retraction handle that is elongate comprising a proximal portion that extends along a reference plane toward a distal portion, with the tongue retraction handle generally disposed above the reference plane; and a tongue retraction cup coupled the distal portion of the tongue retraction handle, the tongue retraction cup extending along the reference plane and generally beneath the reference plane, the tongue retraction cup being generally concave and sized to locate a first side of the tongue retraction cup over a first lateral side of the tongue to forcibly retract the tongue laterally, the tongue retraction cup being sized to locate a second side opposite the first side and over a second side of the tongue that is opposite the first lateral side of the tongue to forcibly retract the tongue laterally, the tongue retraction cup being sized to locate a dorsal portion of the cup along the dorsal portion of the tongue and a posterior extending tip at least partially along the back of the tongue toward an oral pharyngeal portion of the tongue to retract the tongue, the first side, second side, and posterior extending tip defining a tongue receiving cavity of the tongue retraction cup, wherein the tongue retraction cup is sized to locate the first side over the first side of the tongue while the second side is disposed over the second side of the tongue, and the dorsal portion of the cup is disposed over the back of the tongue, and 2 Appeal 2015-005917 Application 12/013,911 wherein the apparatus is formed of one or more materials adapted to maintain a shape, including an orientation of the tongue retraction handle with respect to the tongue retraction cup, to forcibly retract the animal tongue laterally. Appeal Br. 28. REJECTIONS 1. The Examiner rejects claims 1—4, 9, 11, 12, 26, and 27 under 35 U.S.C. § 103(a) as unpatentable over Takahashi3 in view of Welt,4 Rimkus,5 and Abbott.6 2. The Examiner rejects claims 5 and 6 under 35 U.S.C. § 103(a) as unpatentable over Takahashi in view of Welt, Rimkus, Abbott, and Wong.7 3. The Examiner rejects claims 7 and 8 under 35 U.S.C. § 103(a) as unpatentable over Takahashi in view of Welt, Rimkus, Abbott, and Mueller.8 4. The Examiner rejects claim 10 under 35 U.S.C. § 103(a) as unpatentable over Takahashi in view of Welt, Rimkus, Abbott, and Williams.9 5. The Examiner rejects claims 13—15 under 35 U.S.C. § 103(a) as unpatentable over Takahashi in view of Welt, Rimkus, Abbott, and Bosma.10 3 Takahashi, US 2004/0152031 Al, pub. Aug. 5, 2004. 4 Welt, US 5,984,935, iss. Nov. 16, 1999. 5 Rimkus, US 6,015,293, iss. Jan. 18, 2000. 6 Abbott et al., US 2008/0045988 Al, pub. Feb. 21, 2008. 7 Wong et al., US 2007/0163064 Al, pub. July 19, 2007. 8 Mueller, US 2008/0208228 Al, pub. Aug. 28, 2008. 9 Williams, US 4,455,704, iss. June 26, 1984. 10 Bosma et al., US 2008/0154291 Al, pub. June 26, 2008. 3 Appeal 2015-005917 Application 12/013,911 6. The Examiner rejects claims 16—18 and 28 under 35 U.S.C. § 103(a) as unpatentable over Takahashi in view of Welt, Rimkus, Abbott, and Runnels.11 DISCUSSION With respect to claim 1, the Examiner finds that Takahashi discloses an apparatus for retracting a portion of the sides, back and dorsal portion of the tongue including a tongue retraction handle and a tongue retraction cup as claimed except that Takahashi fails to disclose that the device is formed from materials as claimed; that the retraction handle is generally disposed above the reference plane and the cup is disposed beneath the reference plane as claimed; and that the cup is sized to retract the tongue as claimed. Final Act. 3—6. The Examiner relies on a combination with Welt, Rimkus, and Abbott to address these deficiencies in Takahashi, respectively. Id. In particular, with respect to Rimkus, the Examiner finds that Rimkus teaches a tongue retraction device oriented with respect to a reference plane as claimed. Id. at 4 (citing Rimkus Fig. 2). With respect to the proposed combination with Rimkus, the Examiner concludes that the combination “provides the user with an ergonomic, comfortable handle that allows the user to control the pressure exerted on the surface of the tongue.” Id. at 5 (citing Rimkus col. 2,11. 52—54). We are persuaded of error in the rejection by Appellant’s argument that the Examiner’s proposed rationale for the combination with Rimkus lacks the required rational underpinning to adequately to support the Examiner’s conclusion that claim 1 would have been obvious over the art of 11 Runnels, US 2,583,750, iss. Jan. 29, 1952. 4 Appeal 2015-005917 Application 12/013,911 record. SeeKSRInt'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[R]ejections on obviousness 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.”). In particular, the cited portion of Rimkus discusses the use of a flexible connector in the device, which is said to enable “the user to control the pressure exerted on the surface of the tongue by the apparatus.” Rimkus col. 2,11. 52—56. The Examiner has not cited to any portion of Rimkus, or any portion of the art of record, or otherwise provided an explanation, regarding why changing the orientation of Takahashi’s tongue retraction handle with respect to the tongue retraction cup would have led to a “more ergonomic, comfortable handle.” Final Act. 5; see also Ans. 23—24. Further, to the extent the Examiner proposes that Rimkus’s flexible connector be included in the proposed combination, we agree with Appellant that the Examiner has not adequately explained how the proposed modification would result in a device that is “adapted to maintain a shape, including an orientation of the tongue retraction handle with respect to the tongue retraction cup” as claimed. See Reply Br. 3^4. For these reasons, we do not sustain the rejection of claim 1. Because the Examiner relies on the same reasoning for the rejections of claims 2—18 and 26—28, we also do not sustain the rejections of those claims for the same reasons discussed above. 5 Appeal 2015-005917 Application 12/013,911 CONCLUSION We REVERSE the rejections of claims 1—18 and 26—28 for the reasons discussed above. REVERSED 6 Copy with citationCopy as parenthetical citation