Ex Parte PondDownload PDFPatent Trial and Appeal BoardAug 16, 201311405254 (P.T.A.B. Aug. 16, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte GARY J. POND __________ Appeal 2012-003441 Application 11/405,254 Technology Center 3700 __________ Before TONI R. SCHEINER, ULRIKE W. JENKS, and SHERIDAN K. SNEDDEN, Administrative Patent Judges. SNEDDEN, Administrative Patent Judge. DECISION ON APPEAL This appeal1 under 35 U.S.C. § 134 involves claims involving a dental handpiece for delivering a prophy paste. The Examiner entered rejections under 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellant identifies the Real Party in Interest as Gary J. Pond (App. Br. 2). Appeal 2012-003441 Application 11/405,254 2 STATEMENT OF THE CASE Claims 1-20 are on appeal. Claims 1, 5, and 7 are representative and read as follows: 1. A dental handpiece arranged for delivery of a prophy paste comprising: a generally elongated body enclosing a drive member; a reservoir to hold said prophy paste; a unitary removable prophy angle comprising: (A) a polishing member; (B) a drive shaft connecting said polishing member to said drive (C) a through conduit located in said prophy angle, said conduit having a distal end, said distal end in fluid communication with an area wherein said prophy paste may be applied adjacent said polishing member, said through conduit being segregated from said drive shaft; and a plunger, said plunger in communication with said prophy paste. 5. The device according to claim 1 wherein said reservoir is located within said prophy angle. 7. The device according to claim 6 wherein the control mechanism is a reversible trigger. The claims stand rejected as follows: I. Claims 1-4, 6, 8-12, 14-16 and 18-20 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Wu (US 5,927,976, issued Jul. 27, 1999) and Graceffo (US 3,826,004, issued Jul. 30, 1974). Appeal 2012-003441 Application 11/405,254 3 II. Claims 7 and 13 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Wu, Graceffo, and Friedman et al. (US 4,793,807, issued Dec. 27, 1988). III. Claims 5 and 17 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Wu, Graceffo, and Chipian et al. (US 5,642,994, issued Jul. 1, 1997). The Examiner withdraws the rejection of claims 1-2, 6-7, 12-14, and 18-19 on the ground of nonstatutory obviousness-type double patenting over claims 1-7 of US 7,029,278 in view of Graceffo. I. – Wu and Graceffo Issue The Examiner rejected claims 1-4, 6, 8-12, 14-16 and 18-20 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Wu and Graceffo. The issue presented with this rejection is: Does the evidence of record support the Examiner’s finding that the combined prior art teaches or suggests a dental handpiece having a prophy angle as required by claim 1? Principles of Law “[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR Int’l v. Teleflex Inc., 550 U.S. 398, 418 (2007). However, a prima facie conclusion of obviousness may be supported by a showing that a combination of familiar elements according to known methods yields no more than predictable results. Id. at 401; citing United Appeal 2012-003441 Application 11/405,254 4 States v. Adams, 383 U.S. 39, 50-52 (1966). Furthermore, the Supreme Court has emphasized that “the [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418. “If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” Id. at 417. Analysis Appellant contends that Wu is not analogous art because it “discloses a hollow drill bit used for the delivery of anesthetic or medication through the drill bit” and “not a device for delivering prophy paste” (App. Br. 5). We are not persuaded. Appellant presents an overly narrow view of what constitutes analogous art. In determining the scope of the prior art under 35 U.S.C. § 103, it is presumed that an inventor of ordinary skill has full knowledge of all prior art in the field of his endeavor. In re Wood, 599 F.2d 1032, 1036 (CCPA 1979). In this case, we find it reasonable for the Examiner to find that a person of ordinary skill in the art with knowledge of a prophy angle would also have full knowledge of other handheld dental instruments, such as the drill disclose by Wu. Appellant further contends that “Wu also does not disclose a unitary prophy angle” (App. Br. 5). “First if a device does not have a polishing device it cannot, by its plain and simple English meaning, be a prophy angle. Secondly, the plain and simple English meaning of unitary means that it is not formed of two separate sections, i.e. the transfucer 14 and the handpiece 16.” (Id. at 6.) We are not persuaded. The Examiner has interpreted the Appeal 2012-003441 Application 11/405,254 5 term “unitary” as meaning “integral” or “forming a single unit or one-piece” (Ans. 3-4) and finds that the headpiece of Wu, defined by elements 14 and 16 (see, e.g., Wu at Figs. 1A – 1D), forms a single unit (cf., Specification at Figs. 1-5). We find no persuasive evidence on record to support a finding that the Examiner’s interpretation is unreasonable. For example, the Specification provides no discussion of “unitary,” no definition. The Specification, however, does provide an embodiment where a prophy angle is formed by the union of distinct pieces to form a single unit (Specification at Figs. 1-5), which is consistent with the Examiner’s interpretation of the term. Appellant further contends that “alterations to Wu would render ‘the principle operation of the primary reference or render the reference inoperable for its intended purpose’” (App. Br. 7, quoting MPEP § 2145). We are not persuaded. While the replacement of a drill bit for a polishing member may change the useful purpose of the dental instrument, we are not persuaded by Appellant’s argument that this substitution would change the basic principles in which Wu’s drill is designed to operate. “A change in the basic principles” refers to change that is fundamental in scope to the scientific or technical principles under which the invention is designed to operate. In re Ratti, 270 F.2d 810, 813 (CCPA 1959) (“This suggested combination of references would require a substantial reconstruction and redesign of the elements shown in [the primary reference] as well as a change in the basic principles under which the [primary reference] construction was designed to operate.”); See, e.g., In re Umbarger, 407 F.2d 425, 430-31 (CCPA 1969) (finding [In re Ratti, 270 F.2d at 813] Appeal 2012-003441 Application 11/405,254 6 inapplicable where the modified apparatus will operate “on the same principles as before”). It cannot be said that “change in the basic principles” occurs by all modifications of a prior art device which changes the manner in which the device operates. Otherwise, even nominal modification to a prior art device could be considered a “change in the basic principles,” thereby eliminating the need for obviousness analysis under 35 U.S.C. § 103. Appellant further contends that “[t]he Examiner has cited KSR several times to suggest that the combination of Wu with Graceffo obviates the present claims, basing the obviousness rejection on ‘yielding predictable results’ without any teaching or suggestion for such a statement” (App. Br. 8). We are not persuaded. The Examiner has presented a sound rationale as to why a person of ordinary skill in the art would have modified the dental instrument of Wu with the teachings of Graceffo to arrive at the claim composition. For example, the Examiner finds that Wu teaches a dental instrument having each element of independent claim 1, except that the instrument of Wu is a drill having a drill bit and not a prophy angle having a polishing member as required by the claims. The Examiner, however, finds that Graceffo discloses a prophy angle having a polishing member and that both Wu’s drill bit 12 and Graceffo’s polishing member 18 are disclosed to be removably attached to the device’s head via threading mechanism 76 and 84, respectively (Wu’s Fig. 11; Graceffo’s Fig. 8). Both Wu’s drill bit and Graceffo’s polishing member 18 are hollow for receiving material dispensed from the through conduit 22 and 68, respectively (Wu’s Fig. 11; Graceffo’s Fig. 8). It would have been obvious to one having ordinary skill in the art at the time the invention was made to Appeal 2012-003441 Application 11/405,254 7 modify Wu by substituting Wu’s drill bit with a polishing member as taught by Graceffo so that such handpiece can be used to clean and polish teeth depending on the needed dental procedure. (Ans. 4.) In view of the above, we find that the Examiner has provided sufficient evidence to support a prima facie case of obviousness. Having done so, the burden shifted to Appellant to provide evidence that the claimed combination of known elements would do more than yield predictable results, KSR, 550 U.S. at 416, or that the compositions in the prior art did not possess the claimed properties. Appellant has not met this burden. Appellant’s additional arguments address the cited reference individually, not the combined teachings of the references, and thus fail to persuade us that the subject matter of claim 1 is non-obvious. The fact that Wu and Graceffo disclose distinct dental instruments is not sufficient to establish that the references are not combinable in the manner set forth by the Examiner. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (Each reference “must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole.”). We are therefore not persuaded by Appellant’s arguments to the contrary. Conclusion of Law The preponderance of evidence on this record supports the Examiner’s conclusion that the combination of Wu and Graceffo renders claim 1 obvious. Claims 2-4, 6, 8-12, 14-16 and 18-20 fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii). Appeal 2012-003441 Application 11/405,254 8 II. – Wu, Graceffo, and Friedman Issue The Examiner rejected claims 7 and 13 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Wu, Graceffo, and Friedman. The Examiner finds that “Wu discloses a foot pedal as a control mechanism to control drive member” and that a hand trigger is an art-recognized equivalent to a foot pedal (Ans. 5, citing Friedman at col. 5, ll. 61-65). The Examiner concludes that it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify Wu by substituting the foot control pedal with a (finger/hand) reversible trigger since it is well known and common practice to use such reversible trigger as a known suitable alternative mechanism to actuate and control a handheld device. Such substitution would yield the same and/or predictable results (Ans. 5.) Appellant contends that “[s]imply stating that Friedman discloses a foot pedal and a hand trigger does not correlate to any teaching as to how to modify either Wu or Graceffo to arrive at the structure of the present invention, which is necessary to substantiate a prima facie obviousness rejection.” (Reply Br. 3.) The issue presented is: Does the evidence of record support the Examiner’s findings that the combined prior art teaches or suggests a dental handpiece having a reversible trigger as set forth in claim 7? Appeal 2012-003441 Application 11/405,254 9 Additional Findings of Fact FF1. The Specification discloses that “[t]he trigger 26 allows for both a forward and reverse direction of the drive mechanism 38” (Specification 7). FF2. Wu discloses that The invention preferably includes a foot control pedal operatively coupled to the drill. . . . The operator of the medication injection device controls the drilling and medication injection by positioning the foot control pedal. (Wu, col. 2, ll. 28-33.) FF3. Wu discloses that “[t]he foot control pedal controls the power on-off of the two motors and also gives variable speed adjustment to the injection plunger, plus a reverse motion switch for the plunger” (id. at col. 3, ll. 64-67). FF4. Friedman discloses an “apparatus for effecting delivery of a chemical solution useful in the softening of tooth caries and/or plaque in a patient’s mouth utiliz[ing] a reciprocating piston-type pump” (Friedman, abstract). FF5. Friedman discloses that “a hand-operated control 59 (FIG. 13) or, alternatively, a foot pedal 60, can be provided to intermittently activate the motor and pump assembly, and therefore, regulate the flow of Solution S as required” (id. at col. 5, ll. 61-65). Analysis We find that the Examiner has set forth a prima facie case of obviousness that has not been adequately rebutted by Appellant. The Examiner has provided a rational basis for combining the cited references, where the proposed modifications address each disputed element of claim 7 Appeal 2012-003441 Application 11/405,254 10 and are supported by the findings of fact (FF1 – FF5). Wu discloses a foot pedal which allows for both a forward and reverse direction of the drive mechanism (FF2 and FF3; cf. FF1). The Examiner relies on Friedman to establish that the functionality of Wu’s foot pedal may be configured as a hand-operated control. Appellant has not presented any evidence to establish that the references are incapable of being combined as set forth by the Examiner. We thus find that the Examiner has expressed a proper reason for the combination of the cited references, namely, the combination of familiar elements in a manner that yields no more than predictable results. KSR, 550 U.S. at 401. Conclusion of Law The preponderance of the evidence of record supports the Examiner’s conclusion that the combined teachings of the cited prior art disclose a method having all limitations of claim 7. Claim 13 falls with claim 7. 37 C.F.R. § 41.37(c)(1)(vii). III. – Wu, Graceffo, and Chipian The Examiner rejected claims 5 and 17 under 35 U.S.C. § 103(a) as being unpatentable over the combination of Wu, Graceffo, and Chipian. The Examiner finds that Wu/Graceffo disclose the reservoir to be located within the elongated body; thus failing to disclose the reservoir to be located within the prophy angle. It is well known in the dentistry field to have a reservoir located within the prophy angle. For example, Chipian et al. disclose a dental handpiece having a prophy angle having a reservoir 300 with a plunger located therein (Figs. 4D or 12A). It would have been obvious to one having ordinary skill in the art at the time the invention Appeal 2012-003441 Application 11/405,254 11 was made to rearrange Wu/Graceffo’s reservoir from within the elongated body to the prophy angle as well known in the dentistry field as shown by Chipian in order to have the reservoir being removable and disposable or replaceable along with the prophy angle while still yielding the same and/or predictable results. (Ans. 5-6.) Appellant does not dispute the factual findings of the Examiner. Rather, Appellant contends that The Examiner has shown no motivation or reason to support a claim of obviousness for the worker in the art to modify Wu so as to make Wu inoperable for its intended use. Both Graceffo and Chipian disclose and teach prior art prophy devices that are unlike the presently claimed device. Wu teaches and discloses a non-analogous device, a drill bit. It would not be obvious to try to combine Graceffo or Chipian with Wu, as Graceffo and Chipian is a completely unrelated device to Wu. (App. Br. 10.) We are not persuaded by Appellant’s arguments as they do not specifically address the Examiner’s obviousness rationale. As set forth above, we do not agree that Wu is non-analogous art. Appellant’s additional arguments do not persuade us that the references are incapable of being combined as set forth by the Examiner. Rather, we find that the Examiner has expressed a proper reason for the combination of the cited references, namely, the combination of familiar elements in a manner that yields no more than predictable results. KSR, 550 U.S. at 401. Conclusion of Law The preponderance of the evidence of record supports the Examiner’s conclusion that the combined teachings of the cited prior art disclose a Appeal 2012-003441 Application 11/405,254 12 method having all limitations of claim 5. Claim 17 falls with claim 5. 37 C.F.R. § 41.37(c)(1)(vii). SUMMARY We affirm all rejections on appeal. TIME PERIOD FOR RESPONSE 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 cdc Copy with citationCopy as parenthetical citation