Ex Parte Phillips

Patent Trial and Appeal BoardJan 6, 2017

12666262 (P.T.A.B. Jan. 6, 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. 12/666,262 12/22/2009 Heather Phillips 25277.26 7963 122269 7590 01/10/2017 EXAMINER Krian 1 lioker Kirton McConkie SCRUGGS, ROBERT J 36 South State Street, Suite 1900 Salt Lake City, UT 84111 ART UNIT PAPER NUMBER 3723 NOTIFICATION DATE DELIVERY MODE 01/10/2017 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): btucker@kmclaw.com mbrimhall@kmclaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HEATHER PHILLIPS Appeal 2015-001594 Application 12/666,262 Technology Center 3700 Before CHARLES N. GREENHUT, MICHELLE R. OSINSKI, and BRENT M. DOUGAL, Administrative Patent Judges. DOUGAL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from a final rejection of claims 1, 2, 4—8, 10-14, and 16—18. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part. CLAIMED SUBJECT MATTER The claims are directed to an infant toothbrush. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A toothbrush, comprising: an elongate grasping region consisting of a single element having a crescent shape formed from a soft, compliant material, Appeal 2015-001594 Application 12/666,262 a configuration and dimensions of the elongate grasping region enabling an infant's hand to be placed entirely around the elongate grasping region while preventing insertion of the elongate grasping region into the infant's mouth; a head at a top end the elongate grasping region, the head consisting of the soft, compliant material; and a plurality of bristles consisting of the soft, compliant material protruding from the head. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Crowell US 878,486 Feb. 4, 1908 Grossman US 4,351,080 Sept. 28, 1982 Carroll US 5,048,143 Sept. 17, 1991 Masterman US 6,199,242 B1 Mar. 13, 2001 Rohrig US 2003/0014825 A1 Jan. 23, 2003 Davis US 2003/0172483 A1 Sept. 18, 2003 Kayser US 2006/0037160 A1 Feb. 23, 2006 REJECTIONS Claims 1, 2, 8, 10, 11, 13, and 17 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Grossman, Kayser, and Davis. Claims 4—6 and 14 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Grossman, Kayser, Davis, and Rohrig. Claim 7 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Grossman, Kayser, Davis, and Carroll. Claim 12 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Grossman, Kayser, Davis, and Masterman. Claims 16 and 18 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Grossman, Kayser, Davis, Rohrig, and Crowell. 2 Appeal 2015-001594 Application 12/666,262 OPINION Claims 1,13, and 14 are independent. Appellant relies on the same arguments for all claims, except claim 12. See generally Appeal Br. Claims 1, 13, and 14 The Examiner finds that Grossman teaches all of the features of the toothbrush of claims 1,13 and 14, with the exception of the soft compliant material for the elongated grasping region and the bristles. Final Act. 2—3, 4. The Examiner relies Davis regarding the bristles. Id. at 3.1 The Examiner finds that the combination would be obvious, noting in particular the advantage of softer bristles for “users with sensitive teeth and/or gums.” Id. Appellant argues against the combination of Davis and Grossman because it is asserted that the soft bristles of Davis “do not provide for the ‘degree of vigor’ required for normal tooth brushing, as Grossman expressly requires.” Appeal Br. 10-11 (citing Davis 125). Thus, Appellant states, Davis teaches away from the combination. Id. at 11. Appellant also states that using the soft bristles of Davis in the toothbrush of Grossman “would render the toothbrush of Grossman unfit for its intended purpose.” Id. This is because Grossman requires “simultaneous brushing of the teeth and massaging of the gum line” and Davis’s bristles “would not provide the ‘degree of vigor’ required for normal tooth brushing.” Id. (citing Grossman, col. 3:6—7 and Davis 125). This is because, Appellant argues, Davis’s bristles are unfit for brushing teeth. Reply. Br. 2. 1 Although not expressly stated, presumably the Examiner relies on Davis similarly regarding claim 14. 3 Appeal 2015-001594 Application 12/666,262 It is true that Davis teaches that “it not intended that the [oral care] device of this invention be used primarily for ‘vigorous’ toothbrushing,” but it also teaches that ‘vigorous’ toothbrushing “is detrimental to gum function or condition.” Davis 125. Thus, rather than teaching away from combination with Grossman’s tooth and gum brush, it would appear beneficial to use Davis’s softer bristles so as to not damage the gums with Grossman’s brush that performs “simultaneous brushing of the teeth and massaging of the gum line”. Grossman, col. 3:6—7; see also Ans. 5. Further, Davis teaches that “with the incorporation of softer bristles, use of the brush for more sensitive users is achieved.” Davis 125. Davis also explicitly teaches “an oral care brush for use primarily as a gum massage brush and which also functions as a toothbrush.” Id. 13. Thus, though it may be arguable whether the bristles taught by Davis are suitable for all types of toothbrushes, there is nothing in Davis that teaches away from using the soft bristles in a toothbrush as claimed and as taught by Grossman. The Examiner refers to Davis’s teachings related to sensitive teeth (Final Act. 3; Ans. 3), and nothing in the claims precludes the toothbrush from being put to such use. Rather, such a teaching appears consistent with Appellant’s specification. See, e.g., Spec., 2:17—19 (“methods [of the invention] may include use of a toothbrush with bristles that will not damage or irritate an infant’s sensitive gums with prolonged use” (emphasis added)). From the above, it also can be seen that there is nothing in Davis that leads us to believe that Davis’s bristles are unfit for brushing teeth to render the toothbrush of Grossman unfit for its intended purpose. See also Ans. 5— 6. 4 Appeal 2015-001594 Application 12/666,262 For the above reasons, we are not informed of error in the Examiner’s rejection of the independent claims or of those not separately argued. Claim 12 Claim 12 depends from claim 1 and adds “a material including at least one of a fragrance and a flavor.” The Examiner finds that this is taught by Masterman’s disclosure of a toothbrush for “polishing and cleaning.” Final Act. 6 (citing Masterman, col. 2:56—58). The Examiner further explains “Masterman clearly teaches of including a material (e.g. dentifrice or a toothpaste material), which includes at least one fragrance and flavor thereby meeting the limitations of the claims.” Ans. 6. But as noted by Appellant, Masterman does not include any discussion of fragrance or flavor. Appeal Br. 13. The Examiner further does not make any explicit findings concerning fragrance or flavor. Thus, based on the current record, the Examiner has not established a prima facie case of obviousness with regard to claim 12. DECISION The Examiner’s rejection of claims 1, 2, 4—8, 10, 11, 13, 14, and 16— 18 is affirmed. The Examiner’s rejection of claim 12 is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED-IN-PART 5