Ex Parte Numakawa et al

Patent Trial and Appeal Board

Sep 27, 2012

10565769 (P.T.A.B. Sep. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte MAKOTO NUMAKAWA, SHIGEHIKO INOUE,
MAKOTO KAWAKAMI, and HIROFUMI JIKUHARA
__________

Appeal 2011-005742
Application 10/565,769
Technology Center 3700
__________

Before TONI R. SCHEINER, MELANIE L. McCOLLUM, and
ERICA A. FRANKLIN, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
maintenance apparatus for a medical handpiece. The Patent Examiner
rejected the claims as indefinite, anticipated, and obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.

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STATEMENT OF THE CASE
The invention is directed to “a maintenance apparatus for medical
handpieces, and particularly to a maintenance apparatus which feeds a
liquid, a gas or a mixture thereof to a handpiece equipped with a rotary
cutting tool for dental treatment to thereby wash and/or lubricate the
handpiece.” (Spec. 1.)
Claims 9-14 are on appeal. Claims 9, 12 and 13 are representative
and read as follows:
9. A maintenance apparatus (10, 100) for a medical handpiece
(12) with a chucking structure (52) for detachably chucking and holding a
rotary tool (39) along an axis (51) and a bearing (48,49) for rotatably
supporting the chucking structure (52) along the axis (51); comprising:
a maintenance fluid supply nozzle (40, 144) fluidly connected to a
second fluid supply (38, 122), said maintenance fluid supply nozzle (40,
144) being designed so as to be detachably connected to a chucking structure
(52, 152) in place of a rotary tool (39) so that the maintenance fluid is fed
through the nozzle (40, 144) into the chucking structure (52, 152).

12. The maintenance apparatus of claim 11,
wherein the connector (33) has a recycling passage (37) which is so
designed to be detachably connected to a feeding passage (43) of the
handpiece (12) and said handpiece (12) has a recycling passage (44) which
is so designed to be detachably connected to said first feeding passage (36),
when the handpiece (12) is connected to the connector (33), the
maintenance fluid can be fed through the feeding passages (36, 43) of the
connector (33) and the handpiece (12) to the bearing (48, 49) of the
handpiece (12) and then collected together with said maintenance fluid fed
through said supply nozzle (40) through the recycling passages (37, 44)
of the connector (33) and the handpiece (12).

13. The maintenance apparatus according to any one of claims 9 to
12, wherein the nozzle (40) has at, least one hole (41, 42) for injecting the
maintenance fluid in the form of mist.

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The Examiner rejected the claims as follows:
• claim 12 under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject
matter regarded as the invention;
• claims 9-10 and 14 under 35 U.S.C. §102(b) as anticipated by
Brown;
1

• claims 9-12 and 14 under 35 U.S.C. §102(b) as anticipated by
Hoffman;
2

• claims 13 under 35 U.S.C. § 103(a) as unpatentable over Hoffman,
and De Rocchis.
3

INDEFINITENESS
The Examiner‟s position is that the recitation in claim 12 positively
claiming the handpiece is inconsistent with the preamble. (Ans. 3.) The
Examiner states that “[t]he applicant should clarify what subject matter the
claim is drawn to, i.e.[,] either the subcombination of the maintenance
apparatus alone or the combination of the maintenance apparatus and the
handpiece.” (Id.)
Appellants contend that the “claims are only drawn to the
maintenance apparatus alone ….” (App. Br. 6.)
The Examiner responds that the “claim 12 is positively claiming a
handpiece with a recycling passage, therefore, the claim language is not

1
US Patent No. 5,520,882 issued to Kenneth R. Brown, May 28, 1996.
2
US Patent No. 5,165,503 issued to Elliott S. Hoffman, Nov. 24, 1992.
3
US Patent No. 4,990,087 issued to Louis G. De Rocchis et al., Feb. 5, 1991.

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clear with respect to the appellant‟s statement that only the maintenance
apparatus alone [is claimed].” (Ans. 6-7.)
In the Reply Brief, Appellants assert that “the hand piece with
recycling passage is not positively claimed in the [sic] Claim 12.” (Reply
Br. 1.) However, in support of this position, Appellants refer to a version of
claim 12 containing amendments that were not entered by the Examiner.
(See id.; see also Advisory Action, dated Jul. 28, 2010.)
Pending and rejected claim 12 recites, in part, “The maintenance
apparatus of claim 11, wherein… said handpiece (12) has a recycling
passage (44) which is so designed to be detachably connected to said first
feeding passage (36) ….” (App. Br. 10, Claims App‟x.) We agree with the
Examiner that this claim language positively claims a handpiece with a
recycling passage which is inconsistent with the preamble reciting a
maintenance apparatus. Thus, we agree with the Examiner that a person
skilled in the art would not have understood claim 12. See Orthokinetics,
Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986)
(citations omitted)(The test for definiteness under 35 U.S.C. § 112, second
paragraph, is whether “those skilled in the art would understand what is
claimed when the claim is read in light of the specification.”).
Accordingly, we affirm the rejection of claim 12 as being indefinite.
ANTICIPATION
I. Anticipation by Brown
The Examiner found that Brown taught a maintenance apparatus for a
medical handpiece with a chucking structure for detachably chucking a
holding rotary tool along an axis and a bearing for rotatably supporting the
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chucking structure along the axis comprising a maintenance fluid supply
nozzle fluidly connected to a second fluid supply. (Ans. 4.)
In particular, the Examiner found that the design of Brown‟s nozzle
“is capable of being detachabl[y] connected in the chucking structure in
place of the rotary tool so that the maintenance fluid is fed through the
nozzle into the chucking structure as illustrated in fig. 4.” (Id.) According
to the Examiner, although Brown does not teach the device functioning as
claimed, because the nozzle connected to the fluid supply is capable of being
detachably connected to the chucking structure, the claimed limitations are
met. (Id.)
Further, the Examiner found that Brown taught a first fluid supply for
feeding the maintenance fluid to the bearing of the handpiece, wherein the
nozzle comprises an elongated nozzle having an outer diameter that is
capable of being substantially equal to an outer diameter of a rotary tool, and
the elongated nozzle having one end portion capable of insertion into a
chucking structure and another end portion coupled to the second fluid
supply. (Id.)
Appellants contend that there is no suggestion or disclosure in Brown
“that the design of the capsule 30 makes it capable of being detachably
connected to the chucking structure in place of the rotary tool.” (App. Br.
6.) Appellants assert that Brown specifically teaches that the maintenance
fluid is dropped onto the chucking structure with the rotary tool in place (as
is shown in Figure 4). (Id.) Additionally, Appellants assert that, in Brown,
the composition from the capsule 20 is dropped into the inlet 11 and there is
no detachable connection ….” (Id.) Further, Appellants assert that there is
no teaching or suggestion in Brown that the diameter of the elongated nozzle
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would be equal to the outer diameter of the rotary tool, as required by claim
14. (Id. at 6-7.)
After considering the evidence and arguments, we agree with
Appellants that the Examiner has not shown that Brown‟s capsule is capable
of being “detachably connected” to the chucking structure of a medical
handpiece in place of a rotary tool, as required by independent claim 9.
“During examination, „claims … are to be given their broadest
reasonable interpretation consistent with the specification, and … claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.‟” In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Here, the Specification states
“the nozzle 40 attached to the distal end of the tube 38 is inserted in the
chucking structure 52 and secured thereto.” (Spec. 18.) The Specification
explains that “[t]he nozzle 40 is attached in the same manner as in the
attachment of the rotary cutting tool 39 to the handpiece 12, and is secured
in the chucking structure 52 of the handpiece 12.” (Id.) Thus, we interpret
the claim phrase “detachably connected” as requiring a secure attachment,
such that a connection, albeit reversible, is created between two elements,
and not merely a placement of one element in or on another.
Therefore, we interpret claim 9 as requiring a maintenance fluid
supply nozzle to be designed so as to be detachably secured to a chucking
structure in place of a rotary tool and not as merely being “capable of being
inserted in the bore in the head of the handpiece,” as explained by the
Examiner. (Ans. 7.) Consequently, we do not find that the Examiner
established that Brown teaches each and every element as set forth in
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independent claim 9. See Verdegaal Bros. v. Union Oil Co. of California,
814 F.2d 628, 631 (Fed. Cir. 1987).
Accordingly, we reverse the anticipation rejection of claim 9 and its
dependent claims 10 and 14.
II. Anticipation by Hoffman
The Examiner found that Hoffman taught a maintenance apparatus
comprising a maintenance fluid supply nozzle capable of being fluidly
connected to a second fluid supply, the supply nozzle also being capable of
being detachably connected in a chucking structure in place of a rotary tool
so that a maintenance fluid is fed through the nozzle into the chucking
structure. (Ans. 5.) The Examiner also found that Hoffman taught a first
fluid supply capable of feeding the maintenance fluid to a bearing of a
handpiece, a connector which is designed to be detachably connected to a
handpiece, wherein the connector has: (a) a feeding passage 42 of the first
fluid supply capable of feeding the maintenance fluid passage 55 of the
second fluid supply capable of feeding the maintenance fluid through the
nozzle of a chucking structure, and (b) a recycling passage 56 which is
capable of being detachably connected to a feeding passage of a handpiece
and a handpiece having a recycling passage 18 which is capable of being
detachably connected to the first feeding passage. According to the
Examiner, when a handpiece is connected to the connector a maintenance
fluid can be fed though the feeding passages of the connector and a
handpiece to a bearing of a handpiece and then collected together with the
maintenance fluid fed through the supply nozzle through the recycling
passages of the connector and a handpiece. (Id.)
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Additionally, the Examiner found that Hoffman taught that the
maintenance fluid supply nozzle comprising an elongated nozzle, which the
Examiner found to be capable of having an outer diameter substantially
equal to an outer diameter of a rotary tool, the elongated nozzle also having
and end portion capable of insertion into a chucking structure and another
end portion capable being coupled to a second fluid supply. (Id.)
Appellants contend that “Hoffman does not disclose each and every
element of Appellant‟s invention.” (App. Br. 8.) Appellants assert that
“Hoffman requires an adapter 11, 211 which is connected to the handpiece
in order to lubricate and disinfect the handpiece.” (Id. at 7.) Appellants
assert further that in Hoffman, “the maintenance fluid is connected to the
adapter and does not include an elongated nozzle that can be inserted into
the chucking structure in place of the rotary tool.” (Id.) According to
Appellants “it is impossible for Hoffman to be capable of functioning as the
apparatus claimed” because “there is no disclosure, suggestion or teaching in
Hoffman … that an elongated nozzle is inserted into the chucking structure
in place of the rotary tool.” (Id.)
After considering the evidence and arguments, we agree with
Appellants that the Examiner has not shown that Hoffman disclosed a nozzle
capable of being “detachably connected” to the chucking structure of a
medical handpiece in place of a rotary tool, as required by independent claim
9. As discussed, supra, we interpret “detachably connected” to mean a
detachable secured attachment. According to the Examiner, Hoffman‟s
nozzle satisfied this limitation because it was “capable of being inserted in
the bore in the head of the handpiece….” (Ans. 8-9.) Thus, what is missing
from the Examiner‟s rejection is a finding that Hoffman‟s nozzle was
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designed so as to be detachably secured to the chucking structure upon
insertion.
Accordingly, we reverse the anticipation rejection of claim 9 and its
dependent claims 10-12 and 14.
OBVIOUSNESS
The Examiner‟s position is that Hoffman taught the claimed
invention, except for specifically teaching the nozzle having a hole for
injecting the maintenance fluid in the form of a mist. (Ans. 6.) However,
the Examiner found that De Rocchis taught having a hole in a nozzle for
injecting the maintenance fluid in the form of a mist. (Id.) According to the
Examiner, it would have been obvious to a person of ordinary skill in the art
at the time the invention was made to have modified Hoffman with the
nozzle of De Rocchis to cover a larger area of the apparatus with the
maintenance fluid and to conserve the fluid. (Id.)
Appellants incorporate by reference their arguments relating to
Hoffman raised with respect to the anticipation rejection of claim 12 over
Hoffman. (App. Br. 8.) Additionally, Appellants assert that “there is no
showing, suggestion or teaching in De Rocchis et al. that the nozzle could be
provided such that it could be inserted into the chuck structure instead of the
rotary tool.” (Id.) Appellants further assert that Hoffman “also does not
teach a nozzle which is inserted into the chuck structure in place of the
rotary tool.” (Id.)
This rejection rests on the Examiner‟s finding that Hoffman taught
the limitations of independent claim 9, from which claim 13 depends. We
disagree for the same reason discussed with respect to the anticipation
rejection citing Hoffman, and reverse this rejection as well.
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SUMMARY
We affirm the rejection of claim 12 as being indefinite;
we reverse the anticipation rejection of claims 9-10 and 14 by Brown;
we reverse the anticipation rejection of claims 9-12 and 14 by
Hoffman; and
we reverse the obviousness rejection of claim 13 over Hoffman and
De Rocchis.

AFFIRMED-IN-PART

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