Ex Parte Mettler

Patent Trial and Appeal Board

May 26, 2017

12013911 (P.T.A.B. May. 26, 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.
12/013,911 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