Ex Parte Steur

Patent Trial and Appeal BoardMar 30, 2016

12994943 (P.T.A.B. Mar. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/994,943 11/29/2010 Jelte Steur 24737 7590 04/01/2016 PHILIPS INTELLECTUAL PROPERTY & STANDARDS P.O. BOX 3001 BRIARCLIFF MANOR, NY 10510 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 2008P00605WOUS 6945 EXAMINER JENNINGS, MICHAEL DEANGILO ART UNIT PAPER NUMBER 3727 NOTIFICATION DATE DELIVERY MODE 04/01/2016 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): debbie.henn@philips.com marianne.fox@philips.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JELTE STEUR Appeal2013-011054 Application 12/994,943 Technology Center 3700 Before JENNIFER D. BAHR, LEE L. STEPINA, and RICHARD H. MARSCHALL, Administrative Patent Judges. MARSCHALL, Administrative Patent Judge. DECISION ON APPEAL Jelte Steur (Appellant) seeks our review under 35 U.S.C. Â§ 134 of the Examiner's final decision rejecting claims 1-15. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. THE CLAIMED SUBJECT MATTER Appellant's claimed subject matter relates to mouthpieces used for cleaning teeth. Spec. 1:4--5. Claim 1, reproduced below, is the only independent claim and is representative of the claimed subject matter. Appeal2013-011054 Application 12/994,943 1. A mouthpiece for cleaning of teeth, comprising: a mouthpiece body (10) configured to receive at least a region of a user's set of teeth when the mouthpiece body is inserted into the mouth; a teeth cleaning assembly (16), positioned in the mouthpiece body, including bristles and a system for moving the bristles against the teeth to clean the teeth; and a hands-free control assembly (22), adapted and arranged to be activatable by a selected interior portion or element of the user's mouth, for controlling the teeth cleaning assembly. Appeal Br. 7 (Claims App.). THE EVIDENCE The Examiner relied upon the following prior art references in rejecting the claims on appeal: Solow Krasner Berge De Vresse us 4,224,710 us 5,337 ,435 US 6,353,956 Bl WO 2005/107638 Al THE REJECTIONS Appellant seeks review of the following rejections: Sept. 30, 1980 Aug. 16, 1994 Mar. 12, 2002 Nov. 17, 2005 1. Claims 1-5, 7, 9, 14, and 15 under 35 U.S.C. Â§ 103(a) as unpatentable over De Vreese and Berge. 2. Claim 6 under 35 U.S.C. Â§ 103(a) as unpatentable over De Vreese, Berge, and Solow. 3. Claims 8 and 10-13 under 35 U.S.C. Â§ 103(a) as unpatentable over De Vreese, Berge, and Krasner. 2 Appeal2013-011054 Application 12/994,943 ANALYSIS Claim 1 requires "a hands-free control assembly" that is "adapted and arranged to be activatable by a selected interior portion or element of the user's mouth." Appeal Br. 7 (Claims App.). The Examiner found De Vreese's switch 59 meets this limitation because the switch 59 is capable of being activated by either the tongue or the jaw. Final Act. 3. In support of this finding, the Examiner relied on Appellant's alleged admission that the switch 59 is capable of being activated by the tongue or jaw. Id. In the Answer, the Examiner also relied on the accessibility of the switch 59 to the cheek and concluded that switch 59 "is certainly capable of being activated by the mouth as currently claimed." Ans. 11. Appellant argues that "[t]here is no suggestion or teaching that switch 59 is capable of being operated by an interior portion of the user's mouth, nor is there any structural direction as to how to make switch 59 operable by a portion of the user's mouth." Appeal. Br. 5. Appellant also argues that the previous statements relied upon by the Examiner did not amount to an admission that the switch 59 was capable of being activated by the tongue or Jaw. Reply Br. 1-2. We agree with Appellant that the Examiner has failed to establish that De Vreese discloses the claimed "hands-free control assembly" that is "adapted and arranged to be activatable by a selected interior portion or element of the user's mouth." The Examiner did not provide adequate analysis of De Vreese's switch 59 to support the conclusion that the switch was "adapted and arranged to be activatable" by an interior portion of the mouth. See Final Act. 3. In the Answer, the Examiner found that the switch 3 Appeal2013-011054 Application 12/994,943 59 was "readily accessible to the cheek inside the mouth," which arguably goes to whether the switch is "arranged to be activatable." Ans. 11. In order to be "adapted . .. to be activatable," the switch must be more than accessible, it must be "activatable" by the forces that the interior of the cheek are able to generate without using the hands. The Examiner makes no findings and renders no analysis on this critical point. Id. Moreover, De Vreese's disclosure of the switch 59 does not mention or suggest in any way that a portion of the mouth such as the cheek could manipulate the switch. See De Vreese 52:8-25. The Examiner suggests that Appellant's own admissions made earlier in prosecution support the Examiner's "capable of' findings. See Ans. 11 (citing to Appellant's Nov. 1, 2012 Remarks at 4). More specifically, the Examiner states that Appellant contended "that the switch ( 59) is capable of being activated by either tongue or jaw whether it is routine or convenient is another argument." Id. We have reviewed Appellant's Remarks cited by the Examiner and do not view those statements as supportive of the Examiner's statements, much less an admission that supports the Examiner's findings. Appellant's Remarks do not even mention the tongue or jaw in the context of any alleged admission, much less admit that the switch could be activated using the tongue or jaw. See Nov. 1, 2012 Remarks at 4; see also Reply Br. 1-2. The Remarks mention the cheek in the context of identifying the nearest mouth structure that might be able to activate the switch, before concluding that "the switch 59 is in fact not operable by an interior portion of a user's mouth." Id. Taken in context, the statements regarding the cheek 4 Appeal2013-011054 Application 12/994,943 do not amount to an admission that De Vreese's switch 59 is capable of activation by the interior of a cheek. Because the Examiner did not adequately support the finding that De Vreese's switch 59 is "adapted and arranged to be activatable by a selected interior portion or element of the user's mouth," we do not sustain the rejection of claim 1. The rejections of the remaining dependent claims rely upon the same flawed reading of claim 1 and the disclosure of De Vreese discussed above with respect to the hands-free control limitation. Final Act. 3-7. Accordingly, we do not sustain the rejections of claims 2-15. DECISION We reverse the decision of the Examiner to reject claims 1-15. REVERSED 5