Ex Parte Osborn

Patent Trial and Appeal Board

Jun 23, 2017

11632561 (P.T.A.B. Jun. 23, 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.
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:
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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
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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
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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-
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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
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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,
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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.
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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
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