Ex Parte Pinyayev et al

Patent Trial and Appeal BoardNov 28, 2012

11592674 (P.T.A.B. Nov. 28, 2012)

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. 11/592,674 11/03/2006 Aleksey Mikhailovich Pinyayev 10202 2104 27752 7590 11/28/2012 THE PROCTER & GAMBLE COMPANY Global Legal Department - IP Sycamore Building - 4th Floor 299 East Sixth Street CINCINNATI, OH 45202 EXAMINER EIDE, HEIDI MARIE ART UNIT PAPER NUMBER 3732 MAIL DATE DELIVERY MODE 11/28/2012 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 ALEKSEY MIKHAILOVICH PINYAYEV and CHANCHAL KUMAR GHOSH __________ Appeal 2011-013377 Application 11/592,674 Technology Center 3700 __________ Before DONALD E. ADAMS, STEPHEN WALSH, and JACQUELINE WRIGHT BONILLA, Administrative Patent Judges. WALSH, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from the rejection of claims directed to an electric oral device and a method of treating a surface of the oral cavity. The Patent Examiner rejected the claims for anticipation and obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We affirm- in-part. Appeal 2011-013377 Application 11/592,674 2 STATEMENT OF THE CASE Claims 1-5, 10-12, 14-16, 18, 21-26, and 28 are on appeal. Claims 1 and 26 are illustrative. Claim 1 reads as follows: 1. An electric oral device comprising: (a) a handle, and (b) a bristle-less head assembly; (c) wherein said bristle-less head assembly comprises at least one light emitting element which is operatively connected to a power source, a spacing element for contact with oral surface, and a swivel joint. The Examiner rejected the claims as follows: I. claims 1, 2, 10-12, 14, 16, 18, 21-25, and 28 under 35 U.S.C. § 102(e) as anticipated by Fischer;1 II. claim 26 under 35 U.S.C. § 102(b) as anticipated by Friedman;2 III. claims 4 and 5 under 35 U.S.C. § 103(a) as unpatentable over Fischer and Philp;3 and IV. claims 3 and 15 under 35 U.S.C. § 103(a) as unpatentable over Fischer and Rose.4 I The Issue The issue is whether Fischer described a device comprising all the features recited in the claims. 1 Dan E. Fischer et al., US 7,192,276 B2, issued March 20, 2007, application filed Aug. 20, 2003. 2 Joshua Friedman, US 4,661,070, issued April 28, 1987. 3 Graham K. Philp, Jr. et al., WO 2004/108003 A1, published Dec. 16, 2004. 4 Eric P. Rose et al., US 2006/0029901 A1, published Feb. 9, 2006, application filed June 30, 2005. Appeal 2011-013377 Application 11/592,674 3 Findings of Fact 1. We adopt the Examiner’s findings, with one exception relating to claims 14 and 25, discussed below. Analysis Claim 1 “Applicants contend the Office Action fails to point to a teaching in Fischer with respect to a spacing element as recited in independent claims 1 and 16.” (App. Br. 4.) This argument is unpersuasive because the Examiner found that the edge of element 805, shown in Fischer’s Figure 8B, corresponded to the claimed spacing element. (Ans. 5.) The Examiner also found that the edge of Fischer’s element 805 was “capable of contact with an oral surface,” meeting the claim requirement “for contact with oral surface.” (Id.) Appellants also contend “there is no support for the Office Action’s contention that Fischer teaches placement against an oral surface.” (App. Br. 5.) This argument is unpersuasive because the rejection did not make that finding. That the edge of Fischer’s element 805 had the capability of contact with an oral surface is sufficient to meet the intended use. (See Ans. 7-8.) Contrary to Appellants’ contentions (App. Br. 5), there is no structural difference required to meet the intended use. Appellants contend that the Specification defined a spacing element as a non-visual indicator of the proper spacing between the light emitting element and the oral surface. (App. Br. 5.) We again agree with the Examiner that Fischer’s element 805 functions in that manner. (See Ans. 8.) The risk in defining an element functionally is that “where the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an Appeal 2011-013377 Application 11/592,674 4 inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on.” In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) quoting In re Swinehart, 439 F.2d 210, 212 (CCPA 1971). The Examiner’s evidence is sufficient to show that Fischer anticipated the claimed device. The rejection of claim 1 is affirmed. Claims 10-12, 16, 21-24, and 28 have not been argued separately and therefore fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii). Claims 2 and 18 Dependent claims 2 and 185 define an electric oral device having a spacing element that comprises a protuberance. The Examiner found that Fischer’s spacing element 805 “comprises at least one protuberance (fig. 8B, the protuberance being the edge of element 805 above the light emitting element).” (Ans. 5.) Appellants contend: the edge of element 805 appears to Applicants to be flat. Generally, a protuberance is a bulge or knob. Applicants see nothing on the edge of element 805 which is a protuberance. As such, Applicants submit claims 2 and 18 are novel over Fischer and respectfully request reconsideration. (App. Br. 6.) The ordinary meaning of protuberance includes “something, such as a bulge, knob, or swelling, that protrudes.”6 Bulge, knob, and swelling are 5 Claim 18 is dependent on cancelled claim 17. (See App. Br. 1 and 10.) 6 “protuberance 1. Something, such as a bulge, knob, or swelling, that protrudes.” The American Heritage® Dictionary of the English Language, 4th ed. copyright ©2000 by Houghton Mifflin Company. Updated in 2009. Appeal 2011-013377 Application 11/592,674 5 examples, but “protuberance” is not limited to those examples. We agree with the Examiner that the edge itself of Fischer’s element 805 “protrudes” and therefore comprises a protuberance. Claims 14 and 25 Claims 14 and 25 define an electric oral device having a spacing element that signals location with a sensory indicator that is a “groove” (claim 14) or comprises “grooves” (claim 25). The Examiner found that Fischer’s “spacing element is capable of signaling to the user the location of the light emitting element within the oral cavity with a sensory indicator (the upper edge of the wall surrounding the light emitting elements), wherein the sensory indicator is grooves (grooves between the wall and lens covering the lighting elements).” (Ans. 5.) Appellants contend that the rejection failed to show support in Fischer for the finding that Fischer’s device comprised a sensory indicator that is a groove, or comprised grooves. (App. Br. 6.) “[A]ssuming arguendo the noted portion in the Office Action were a groove, Applicants see no teaching in the Office Action as to how this ‘groove’ would provide a sensory signal to the user.” (Id.) We agree with Appellants. The rejection of claims 14 and 25 is reversed. II Claim 26 reads: 26. A method of treating a surface of the oral cavity, comprising: Published by Houghton Mifflin Company. All rights reserved. Accessed at www.the freedictionary.com/protuberance, Nov. 21, 2012. Appeal 2011-013377 Application 11/592,674 6 providing an oral care device comprising a head, a spacing element, and a light source, and placing the spacing element onto a tooth surface, wherein the spacing element maintains the proper distance between the light source and the tooth surface. The Examiner’s position is that Friedman taught the claimed method, as Friedman taught placing its device against a tooth surface. (Ans. 5.) The Examiner found that Friedman’s device parts 30, 21, and 18, illustrated in Friedman’s Figure 1, corresponded to Appellant’s device head, spacing element, and light source, respectively. (Id.) A portion of Friedman’s Figure 1 is shown here, with the parts labeled according to the Examiner’s findings (id.): “FIG. 1 is a longitudinal sectional view of a hand held light transmitting device for generating radiant energy.” (Friedman, col. 2, ll. 24-25.) Appeal 2011-013377 Application 11/592,674 7 Appellants contend that claim 26 is novel over Friedman because Friedman defined element 30 as a nose cone, not a head, and “[i]t is unclear to Applicants how 30 could be the head of a device.” (App. Br. 7.) The Examiner responds: While the prior art does not specifically use the same term as the appellant it is noted that the structure meets the limitation of a head. The term head is known to be the upper end of a structure in the art. It is noted that the nose cone/head 30 is located at the upper end of the gun, therefore, the structure taught by Friedman meets the claimed structural limitation with respect to the head. (Ans. 9.) We find the Examiner’s evidence-based position both sound and reasonable. A reference does not have to use the same terms to anticipate. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009). The rejection is affirmed. III Appellants contend that their arguments alleging deficiencies in Fischer’s disclosure with respect to claim 1 “are likewise applicable to claims 4 and 5.” (App. Br. 7.) This argument is unpersuasive because the evidence shows Fischer did disclose all the elements of claim 1. (See I, above.) The rejection of claim 4 is affirmed. Appellants also contend that “the teachings pointed to by the Office Action with respect to claim 5 are directed to the shape of a dental arch and not to the shape of a labial surface of one or more teeth.” (Id.) The Examiner found that Philp disclosed “a cap 56 which extends over the light emitting element and the cap is contoured in the shape of a Appeal 2011-013377 Application 11/592,674 8 labial surface of one or more teeth (pg. 19, ll. 10-14, pg. 20, ll. 22-27, pg. 21, ll. 1-7).” (Ans. 6.) Philp taught that “One or more attachments 56 may be provided to accommodate different sizes, widths, and arch sizes of the user's mouth.” (Philp at 20, ll. 22-23.) Philp’s Figure 6 illustrating cap 56 is reproduced here: “Fig. 6 shows a perspective view of the hand-held consumer light for use with the tooth whitening system according to the invention in an optional recharger base.” (Philp 7.) We agree with the Examiner that cap 56, shown in Philp’s Figure 6, has an arch that conforms to the labial surfaces of the teeth. Philp’s use of the term “arch size” is thus fairly understood to refer to the arch formed by the labial surface of the teeth. This interpretation is consistent with the ordinary Appeal 2011-013377 Application 11/592,674 9 meaning of “dental arch.”7 Appellants’ argument to the contrary is unpersuasive because it contradicts the evidence. The rejection of claim 5 is affirmed. IV Appellants contend only that: “As the Office Action has failed to point to teachings relating to all of the claim elements of independent claim 1, from which claims 3 and 15 depend, it has likewise failed to make a showing with respect to claims 3 and 15.” (App. Br. 8.) This argument is unpersuasive because the evidence shows Fischer did disclose all the elements of claim 1. (See I, above.) The rejection of claims 3 and 15 is affirmed. SUMMARY We affirm the rejection of claims 1, 2, 10-12, 16, 18, 21-24, and 28 under 35 U.S.C. § 102(e) as anticipated by Fischer. We reverse the rejection of claims 14 and 25 under 35 U.S.C. § 102(e) as anticipated by Fischer. We affirm the rejection of claim 26 under 35 U.S.C. § 102(b) as anticipated by Friedman. We affirm the rejection of claims 4 and 5 under 35 U.S.C. § 103(a) as unpatentable over Fischer and Philp. 7 “dental arch the curving shape formed by the arrangement of a normal set of teeth in each jaw.” Mosby’s Medical Dictionary, 8th ed. ©2009, Elsevier. Accessed at http://medical-dictionary.thefreedictionary.com/dental+arch, Nov. 21, 2012. Appeal 2011-013377 Application 11/592,674 10 We affirm the rejection of claims 3 and 15 under 35 U.S.C. § 103(a) as unpatentable over Fischer and Rose. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED-IN-PART lp