Ex Parte OsbornDownload PDFPatent Trial and Appeal BoardJun 23, 201711632561 (P.T.A.B. Jun. 23, 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. 11/632,561 01/16/2007 Joyce A. Osborn 203261-301001 8869 32009 7590 06/26/2017 RR ADT FY AR ANT ROT TT T OT TMMTNOS T T P EXAMINER 200 CLINTON AVE. WEST PATEL, YOGESH P SUITE 900 HUNTSVILLE, AL 35801 ART UNIT PAPER NUMBER 3732 MAIL DATE DELIVERY MODE 06/26/2017 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOYCE A. OSBORN1 Appeal 2016-004757 Application 11/632,561 Technology Center 3700 Before JOHN G. NEW, TAWEN CHANG, and RACHEL H. TOWNSEND, Administrative Patent Judges. NEW, Administrative Patent Judge. 1 Appellant states the real party-in-interest is Joyce A. Osborn, the inventor. App. Br. 2. Appeal 2016-004757 Application 11/632,561 DECISION ON APPEAL Appellant files this appeal under 35 U.S.C. § 134(a) from the Examiner’s Non-Final Rejection of claims 7—9 and 16. Specifically, claims 7—9 and 16 stand rejected as unpatentable under 35 U.S.C. § 103(a) as being obvious over the combination of Rizoiu et al. (US 6,616,447 Bl, September 9, 2003) (“Rizoiu”), Philp, JR. et al. (US 2006/0141422 Al, June 29, 2006) (“Philp”) and Liao (US 2004/0043349 Al, March 4, 2004) (“Liao”). Claims 7—9 and 16 also stand rejected as unpatentable under 35 U.S.C. §103(a) as being obvious over the combination of Rizoiu, Liao, and Soukos et al. (US 2005/0064371 Al, March 24, 2005) (“Soukos”). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. NATURE OF THE CLAIMED INVENTION Appellant’s invention is directed to a teeth-whitening device having a lens which fits against the teeth, with a casing containing a plurality of light emitting diodes which project light into the lens. The lens filters the light to produce a 415 to 480 nanometer blue light which is projected onto the surface of the teeth, which activates carbamide peroxide placed on the surface of the teeth to whiten the teeth several shades within one hour and without heating or sensitizing the teeth. Abstract. REPRESENTATIVE CLAIM Claim 7 is representative of the claims on appeal and recites: 7. A method of whitening teeth, comprising the steps of: 2 Appeal 2016-004757 Application 11/632,561 1) applying a film of carbamide peroxide solution to the surfaces of the upper and lower teeth; 2) inserting a lens which is a wave selection filter having an inner surface and an outer surface into the mouth; 3) placing said inner surface against the surface of the upper and lower teeth; 4) holding said wave selection filter against the surface of the upper and lower teeth by biting down on a bite plate on said inner surface of said wave selection filter, wherein said bite plate is a single continuous bite plate which extends perpendicularly from said inner surface and bisects said wave selection filter into an upper portion which contacts upper teeth and a lower portion which contacts lower teeth; 5) activating a plurality of light emitting diodes within a casing on said outer surface of said wave selection filter so that light is projected from said light sources through said wave selection filter producing blue light in the range of 415 to 480 nanometers which is projected onto the surface of the teeth; and 6) activating said carbamide peroxide by said blue light to whiten the surface of the teeth within one hour without heating the teeth. App. Br. 12. ISSUES AND ANALYSES We agree with, and adopt, the Examiner’s findings and conclusions that the appealed claims are prima facie obvious over the combined prior art 3 Appeal 2016-004757 Application 11/632,561 cited by the Examiner. We address the arguments raised by Appellant below. A. Rejection of the claims as obvious over Rizoiu, Philp, and Liao Issue Appellant argues the Examiner erred in finding the combined cited prior art references teach or suggest the limitation of claim 7 reciting “activating said carbamide peroxide by said blue light to whiten the surface of the teeth within one hour without heating the teeth. App. Br. 6. Analysis The Examiner finds Rizoiu teaches a teeth whitening device with a lens having inside and outside surfaces, a bite plate located on inner surface capable of being held inside the mouth against the teeth. Final Act. 2 (citing Rizoiu col. 5,11. 30-40, col. 6,11. 4—9; col. 4,11. 55—57; col. 7,11. 44-46). The Examiner finds Rizoiu further teaches a casing located on the outer surface with a plurality of light emitting diodes, which provide light at about 3 to about 75 milliwatts/c2. Id. (citing Rizoiu col. 4,11. 44-46; col. 5,11. 5— 13). The Examiner finds Rizoiu also teaches a method that includes applying a film of carbamide peroxide solution to the surface of the teeth and projecting blue light onto the surface of the teeth which activates the carbamide peroxide to whiten teeth. Final Act. 2—3 (citing Rizoiu col. 6,11. 61—63; col. 7,1. 1; claim 20; col. 6,11. 58—67; col 10). The Examiner finds Philp teaches a mouth-whitening apparatus that includes a wave filter that filters light within the claimed range. Final Act. 3 (citing Philp || 129, 122). The Examiner concludes that it would have been 4 Appeal 2016-004757 Application 11/632,561 obvious to a person of ordinary skill to have modified Rizoiu to include the LED filter of Philp, so as to allow only the desired wavelengths to pass through and activate the carbamide peroxide without requiring heat. Id. at 3^1. Appellant disputes the Examiner’s finding that Philp teaches activating the peroxide without the requirement of heat. App Br. 6. Appellant points to several passages in Philp that teach temperature increases caused by its light/heat source. Id. at 6—7 (quoting Philp Abstr. || 39, 44^46, 56, 61, 124, 126, 127) (see e.g., 139: “It is an object of this invention to provide a tooth whitening system, the action of which is accelerated by light-and-heat energy, which the consumer can use at home....”). According to Appellant, Rizoiu also teaches heat conduction. App. Br. 7—8 (citing Rizoiu col. 7,11. 40-50,11. 25—28). Appellant therefore contends that both references expressly teach heating the teeth during the cleaning process, contrary to the requirement of claim 7. Furthermore, Appellant argues, because Philp teaches an elevated temperature range (i.e., raising the pulp temperature no more than 5° C), whereas claim 7 requires no raising of the temperature, Philp teaches away from the Appellant’s invention. App. Br. 9. The Examiner responds that Rizoiu is relied upon as teaching most of the limitations of claim 7, and that Philp is relied upon only as teaching a “wave filter” for ensuring that only desired frequencies wavelengths pass through and activate the carbamide peroxide. Ans. 7. The Examiner finds Rizoiu does not require heating of teeth for whitening purposes, but, rather, expressly teaches that the invention is not restricted to only LEDs, but heat- 5 Appeal 2016-004757 Application 11/632,561 emitting elements can also be used. Id. at 8 (citing Rizoiu col. 5,11. 19-25). Therefore, the Examiner finds, Rizoiu does not require heating of teeth for whitening purpose. Id. The Examiner also finds Rizoiu teaches the use of carbamide peroxide, which is the same material as claimed, which does not require heat for activation. Id. We agree with the Examiner. The Examiner relies on Philp only for teaching “a wave filter that filters light between the claimed range.” See Final Act. 3. That Philp teaches additional features is not by itself dispositive of whether the Examiner’s rejection is in error. The claimed invention need not be expressly suggested in a single reference. See In re Keller, 642 F.2d 413, 425 (CCPA 1981). Nor does the test for obviousness require all features of a secondary reference be bodily incorporated into the structure of the primary reference. Id. Nor do we agree with Appellant that Rizoiu requires, as Appellant asserts, the use of heat in its teachings. Rizoui teaches that the source of electromagnetic radiation in its teeth-whitening device: “may be a light emitting diode [LED], an optical fiber, or an electrochemiluminescent material.” Rizoiu col. 2,11. 16—18. Furthermore, Rizoiu expressly teaches: The dental tray may also be constructed to emit heat. This may be in addition to, or instead of, the electromagnetic radiation source. For example, a dry chemical heat-emitting material may be incorporated or added to the tray. The emission of heat may be activated after the user places the tray on his teeth and the user starts biting down on the tray. Id. at col. 7,11. 40-46 (emphasis added). We understand this passage to unequivocally mean that the use of heat is optional, and may be used in 6 Appeal 2016-004757 Application 11/632,561 addition to, or in combination with, electromagnetic radiation emitted by the LEDs. Consequently, and contrary to Appellant’s contention, Rizoiu does not teach that heating the teeth is required in the practice of its invention and, therefore, teaches the disputed limitation of claim 7. We therefore affirm the Examiner’s rejection of the claims in this ground. B. Rejection of the claims as obvious over Rizoiu, Liao, and Soukos Appellant essentially repeats the argument presented supra. App. Br. 9. Appellant acknowledges that the Examiner relies upon Soukos as teaching the same limitation as Philp, viz., for the wave filter that filters light in the claimed range. Id. (citing Final Act. 5—6). Appellant assert that both Soukos and Rizoiu teach the use of heat in the practice of their invention and therefore do not teach or suggest the limitation of claim 7 reciting “activating said carbamide peroxide by said blue light to whiten the surface of the teeth within one hour without heating the teeth.” App. Br. 9—10. Soukos teaches: “The present invention relates to the exposure of the oral cavity of a subject to a therapeutically effective amount of light to improve oral health. Alternatively, the oral cavity may be exposed to a therapeutically effective amount of both light and an oxidizing agent to improve oral health” [i.e., carbamide peroxide]. Soukos 151. Soukos also teaches: Light sources that may be utilized in the present invention include, but are not limited to, gas plasma, light emitting diode (“LED”), linear flash lamps, tungsten halogen, metal halide, Xenon short arc, Mercury short arc, Mercury Xenon short arc, 7 Appeal 2016-004757 Application 11/632,561 Argon plasma arc, Argon short arc lamps, and curing lights. The light energy can also be provided by an array of light emitting diodes or laser diodes of suitable wavelength and sufficient power. The light energy can also be provided by chemiluminescent or electroluminescent means. Id. at | 53. Soukos also teaches: “In another embodiment, the light source is an LED emitting blue light in the range of about 430 nm to about 510 nm, the peak being either about 455 nm or about 470 nm (blue light).” Id. at 77. Soukos thus teaches the use of LEDs emitting blue light, which Appellant’s Specification discloses are known in the art not to emit appreciable amounts of heat. See Spec. 4: The preferred light to accelerate the whitening action of the peroxide is blue light having a wavelength range of 415 to 480 nanometers, preferably 430 to 450 nanometers, with a power of 3 to 75 milliwatts/cm2.... The relatively narrow range of blue light (430 to 450 nanometers) will accelerate the decomposition of carbamide peroxide at the surface of the teeth without appreciably heating the teeth. Spec. 4 (emphasis added). We therefore agree with the Examiner that, even if the Examiner relied upon Soukos as teaching the disputed limitation (for which the Examiner actually relies upon Rizoiu), Appellant’s argument that the invention of Soukos requires the application of heat in its practice is not persuasive. We therefore affirm the Examiner’s rejection of the claims on this ground. Furthermore, because Appellant argues that dependent claims 9-16 stand or fall with claim 7, we affirm the Examiner’s rejection of those claims. See App. Br. 5, 11. 8 Appeal 2016-004757 Application 11/632,561 DECISION The Examiner’s rejection of claims 7 and 9-16 as unpatentable under 35 U.S.C. §103(a) is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 9 Copy with citationCopy as parenthetical citation