Ex Parte Walanski et al

Patent Trial and Appeal Board

Aug 8, 2017

12434785 (P.T.A.B. Aug. 8, 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.
12/434,785 05/04/2009 Amy Ann Walanski 11048 2005
27752 7590 08/10/2017
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
EXAMINER
NELSON, MATTHEW M
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
08/10/2017 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):
centraldocket. im @ pg. com
pair_pg @ firsttofile. com
mayer.jk @ pg. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AMY ANN WALANSKI and PAUL ALBERT SAGEL
Appeal 2016-004144
Application 12/434,7851
Technology Center 3700
Before RICHARD J. SMITH, RYAN H. FLAX, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
TOWNSEND, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134 involving claims to a method
for identifying oral conditions within an oral cavity and an oral hygiene
device, which have been rejected as obvious. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
“The visual indication of oral conditions to the observer and/or user
can assist the observer and/or user in removal of the conditions or in
1 Appellants identify the Real Party in Interest as The Procter & Gamble
Company of Cincinnati, Ohio. (Br. 1.)
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Application 12/434,785
identifying conditions which should be treated by a professional.” (Spec. 6.)
Appellants’ “invention relates generally to a plaque disclosing system.” {Id.
at 1.)
Claims 1, 2, 5—9, 12—14, 16, and 19—23 are on appeal. Claims 1 and 8
are representative and read as follows:
1. A method of identifying oral conditions within an oral cavity,
the method comprising:
applying an oral composition to the oral cavity, wherein
the oral composition comprises a fluorescent agent, and
wherein the fluorescent agent is present within the oral
composition from about 0.001 weight percent to about 10%
weight percent;
applying energy from an energy source to the oral cavity
wherein the energy source has a Flux Density at a
Representative Tooth Surface of from about 0.1 to about 20
mW/cm2;
manipulating an oral hygiene implement having a device
for filtering wavelengths, a handle and a head region including
a plurality of bristle tufts, the device including a filter layer and
a reflective layer located between the filter layer and a front
surface of the head region, adjacent the plurality of bristle tufts;
filtering at predetermined wavelengths the reflected
visible light from portions of the oral cavity; and
viewing the filtered visible light from the fluorescent
agent, which indicates conditions within the oral cavity.
8. An oral hygiene implement comprising:
a handle and a head region including a plurality of bristle
tufts;
an energy source adaptable to provide electromagnetic
energy to an oral cavity wherein the energy source has a Flux
Density at a Representative Tooth Surface of from about 0.1 to
about 20 mW/cm2;
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a viewing surface capable of allowing a user to visually
perceive indicated conditions within the oral cavity; and
a device for filtering visible light of predetermined
wavelengths reflected from portions of the oral cavity and for
transmission of fluorescence from a fluorescent agent, the
device including a filter layer and a reflective layer located
between the filter layer and a front surface of the oral hygiene
implement, adjacent the plurality of bristle tufts.
(Br. 10-11.)
The following grounds of rejection by the Examiner are before us on
review:
Claims 1, 2, 5—9, 14, 16, and 19-23 under 35 U.S.C. § 103(a) as
unpatentable over Okada,2 Liu,3 de Jong,4 and Pinyayev.5
Claims 8, 9, and 14 under 35 U.S.C. § 103(a) as unpatentable over
Liu, de Jong, and Pinyayev.
Claims 12 and 13 under 35 U.S.C. § 103(a) as unpatentable over Liu,
de Jong, Pinyayev, and Takahashi.6
DISCUSSION
Obviousness: Claim 1 is unpatentable over Okada, Liu, de Jong, and
Pinyayev
The Examiner finds that Okada teaches a method for identifying oral
conditions that involves applying an oral composition that includes a
2 Okada et al., US 2002/00119100 Al, published Aug. 29, 2002.
3 Liu, US 2003/0215765 Al, published Nov. 20, 2003.
4 de Josselin de Jong et al., US 2006/0240377 Al, published Oct. 26, 2006
(“de Jong”).
5 Pinyayev et al., US 2008/0060148 Al, published Mar. 13, 2008.
6 Takahashi, US 2005/0026104 Al, published Leb. 3, 2005.
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fluorescent agent to the oral cavity and “applying energy from an energy
source [to the oral cavity], and viewing the light from the fluorescent agent
indicating conditions within the oral.” (Ans. 8; Final Action 2.) The
Examiner also contends that Okada teaches “a toothbrush for cleaning with a
handle and bristle tufts.” (Id.) The Examiner acknowledges that Okada
does not teach a toothbrush that has a filter layer and a reflective layer as
claimed. (Id.) The Examiner relies on Liu and de Jong in this regard.
The Examiner finds that Liu teaches an oral hygiene implement that
not only has bristle tufts, but also includes an energy source and a reflective
layer in the head of the device, i.e., opposite the handle. (Ans. 3, 8; Final
Action 3.) The Examiner finds that it would have been obvious to one of
ordinary skill in the art to modify Okada’s cleaning implement to include an
energy source and reflective layer “as taught by Liu in order to allow one to
easily clean the interior of a user’s mouth in addition to observing with the
same implement.” (Ans. 3; Final Action 3.)
With respect to inclusion of a filter and placing that layer between the
reflective layer and front surface of the implement head, the Examiner turns
to de Jong. The Examiner finds that de Jong describes a device for
inspecting tooth surfaces that employs an energy source to provide
electromagnetic energy to the oral cavity and a filter to filter predetermined
wavelengths reflected from portions of the oral cavity and for transmission
of fluorescence from a fluorescent agent, as well as a reflective layer for
visually observing conditions within the oral cavity. (Id.) The filter is
layered on the reflective layer, which is on the front surface of the
implement head. (Id.) The Examiner explains that it would have been
obvious to one of ordinary skill in the art to include a filter layer on the
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reflective layer in the Okada device as modified by Liu “in order to allow
better visualization of the indicated condition via a mirror, filter, and
proximate energy source, while reducing unwanted light.” (Ans. 4; Final
Action 4.)
Regarding the claimed Flux Density of the energy source, the
Examiner notes that applying energy within the Flux Density range claimed
would have been obvious to one having ordinary skill in the art in light of
the teachings of Pinyayev. (Id.) The Examiner finds that Pinyayev teaches
limiting an intraoral light source to less than 300 mW/cm2 so as to prevent
damage to the oral cavity. (Id.) The Examiner indicates that in light of the
teachings of Pinyayev, it would have been obvious to one having ordinary
skill in the art to limit the intraoral light source to less than 300 mW/cm2 “in
order to prevent any damage to the oral cavity” and to further select a
density within the claimed range as a matter of determining a workable
range. (Ans. 4—5; Final Action 4—5.)
We agree with the Examiner’s factual findings and conclusion that the
claimed method using the claimed implement would have been obvious
from the combined teachings of the references.
Appellants’ arguments are directed to whether or not the implement
for use in the claimed method would have been obvious, not whether the
method steps are obvious. In particular, Appellants argue that Okada uses
conventional light technology in its method of detecting initial dental carries
and that there is no teaching, suggestion, or motivation “about the need for a
filter” for the fluorescent dye that is not readily noticeable. (Br. 4—5.) As to
de Jong, Appellants point out that it teaches using a light emitting diode
having a peak intensity and a filter with a cutoff that equals or is just over
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the maximum wavelength range of the light source. Appellants contend that
there is no teaching, suggestion or motivation to use a fluorescent dye that is
not readily noticeable in de Jong, nor is there a teaching, suggestion, or
motivation to include the LED with a set wavelength range and a filtered
mirror that blocks emitted LED. {Id. at 5.) Appellants further note that
Pinyayev is directed to adjusting a sensor responsive toothbrush and that
there is nothing in that reference concerning a need for a fluorescent dye that
is not readily noticeable in the oral cavity or a visualization system using a
light source with a controlled wavelength emission and filter to block
emitted wavelength. {Id. at 5.) Appellants also note that neither Okada nor
de Jong “disclose[s] a need for a toothbrush having a sensor for changing the
performance of the toothbrush depending on received input.” {Id.) Lastly,
Appellants argue that there is no teaching, suggestion, or motivation in Liu
of a
a need for a fluorescent dye that is not readily noticeable in the
oral cavity (Okada et al.) or a visualization system having a
light source with a controlled wavelength emission and filter to
block the emitted light wavelength (de Josselin de Jong et al.)
or a toothbrush with a sensor (Pinyayev et al.).
{Id. at 5—6.)
In summary, Appellants argue that the Examiner relies on hindsight to
combine the filter from de Jong and the concept of a controlled wavelength
emission of Pinyayev with Okada’s method of detecting dental carries, and
that “[t]he only motivation to combine the cited references comes from the
present invention.” (Br. 6.)
We do not find Appellants’ arguments persuasive. Appellants’
arguments focus on the “stated goal” of the references to determine whether
one of ordinary skill in the art would have considered modifying the
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reference to achieve that stated goal. (Id. at 7.) However, “[i]n determining
whether obviousness is established by combining the teachings of the prior
art, the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.” In re GPACInc., 57 F.3d
1573, 1581 (Fed. Cir. 1995) (internal quotations omitted). In that regard, we
note that “[t]he use of patents as references is not limited to what the
patentees describe as their own inventions or to the problems with which
they are concerned. They are part of the literature of the art, relevant for all
they contain.” In re Lemelson, 397 F.2d 1006, 1009 (CCPA 1968); In re
Fritch, 972 F.2d 1260, 1264 (Fed. Cir. 1992) (“It is well settled that a prior
art reference is relevant for all that it teaches to those of ordinary skill in the
art.”). Thus, the stated goal of a prior art reference is not dispositive of
whether one of ordinary skill in the art would have found the claimed
invention obvious in light of the combined teachings of the prior art. The
obviousness analysis “can take account of the inferences and creative steps
that a person of ordinary skill in the art would employ.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007).
Each of Okada, de Jong, and Pinyayev describes detecting dental
caries in the oral cavity with the assistance of a light source and detecting
fluorescence as indicative of dental caries. (See, e.g., Okada Tflf 7, 9
(describing using a dye in the oral cavity and detecting fluorescence emitted
by excitation of the dye after it is “excited by a light irradiated from a dental
visible light irradiator to emit a fluorescence”); Pinyayev 134 (describing
using light at a particular wavelength to “fluoresce caries in a manner that
may be detectable by a sensor input element”), 1120 (describing using a
filter element to remove unwanted wavelengths); and de Jong, Abstract
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(“Also described are methods for examining tooth surfaces for abnormal
conditions indicative of plaque involving illuminating surfaces with
radiation at a wavelength in the range of 390-450 nm wherein the radiation
is effective to cause detectable fluorescence emissions from bacterial
metabolites known to be associated with plaque-containing surfaces, and
detecting the emissions.”).) And, de Jong and Pinyayev teach that inclusion
of a filter can assist in fluorescence detection indicative of dental caries.
(See e.g., de Jong || 9, 10 (noting that filtering enables visual detection of
the differential fluorescence emission from normal and abnormal tooth
surfaces); Pinyayev 136 (noting that “[a] sensor filter may also be used in
conjunction with this light sensor to facilitate the detection.”).)
Pinyayev further adds that controlling the flux density of light at the
tooth surface is useful in obtaining oral care benefits and preventing damage
to the oral cavity. (Pinyayev 79-84.)
Furthermore, Liu and Pinyayev indicate that it was known that a
single device having a light source, reflective surface, and tufts of bristles,
rather than having these elements in separate devices is useful in inspecting
tooth surfaces for dental caries and to subsequently treat the surface where
caries has been detected. (Liu 119 (noting that mirror surface on the device
assist one to more easily see the inner side of the teeth and to more easily
clean them); Pinyayev 140 (noting that the sensor responsive toothbrush can
be used to detect and treat), || 115, 118, 121 (noting that a reflective surface
can assist with directing the light toward the target and away from the
implement head carrying the bristles).)
Consequently, we agree with the Examiner (Final Action 3) that in
light of the relied-upon prior art, it would have been obvious to modify the
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teachings of Okada with the teachings of Liu to arrive at an implement for
use in detecting and treating dental caries that includes a light source,
reflective layer and tufted bristles in the arrangement claimed in order to
allow one to both observe dental carries and easily clean the teeth found to
have such carries. Moreover, we agree with the Examiner that it would have
been obvious to provide such an implement with a filter in conjunction with
a reflective layer in order to filter predetermined wavelengths of light and
discriminate the fluorescence transmission reflecting dental caries, as well as
remove unwanted light to allow better visualization of areas of dental caries
in the oral cavity. {Id. at 3—4.) Moreover, we agree with the Examiner that
Pinyayev provides one of ordinary skill in the art with the motivation to
control the flux density of the light source. As taught by the prior art, this
avoids damage to the oral cavity while still providing an oral care benefit,
such as using sufficient radiation to cause fluorescence to thereby detect
dental caries. Thus, in light of the foregoing, we disagree with Appellants
that the Examiner relied on the claimed invention in hindsight to combine
the teachings of the prior art.
Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level
of ordinary skill at the time the claimed invention was made
and does not include knowledge gleaned only from applicant’s
disclosure, such a reconstruction is proper.
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
“[Wjhen the question is whether a patent claiming the combination of
elements of prior art is obvious,” the answer depends on “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” KSR, 550 U.S. at 417. Appellants do not
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provide sufficient evidence or persuasive argument that the modifications
proposed are beyond the skill of one of ordinary skill in this art, nor that the
claimed invention results in something more than the predictable use of prior
art elements according to their established functions.
In light of the foregoing, Appellants do not persuade us that the
Examiner erred in rejecting claim 1 for obviousness over Okada, Liu, de
Jong, and Pinyayev.
Claims 2, 5—9, 14, 16, and 19-23 have not been argued separately
and, therefore, fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
Obviousness: Claim 8 is unpatentable over Liu, deJong, and Pinyayev
Claim 8 is directed to an oral hygiene implement. The Examiner
relies on the same teachings discussed above, minus that of Okada’s
methodology for treating conditions in the oral cavity, in finding claim 8
obvious. (See Final Action 5—6.)
Appellants make the same arguments here with respect to the
references as argued for the method claims, which are discussed above. (Br.
6—7.) We find these arguments unpersuasive for the same reasons set forth
above.
Claims 9 and 14 have not been argued separately and, therefore, fall
with claim 8. 37 C.F.R. § 41.37(c)(l)(iv).
Obviousness: Claims 12 and 13
Regarding claims 12 and 13, in addition to the arguments Appellants
make with respect to claim 8, Appellants also argue that Takahashi does not
make up for the deficiencies of Liu, de Jong, and Pinyayev argued above.
(Br. 8—9.) As we do not find the Examiner erred in the combination of Liu,
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de Jong, and Pinyayev rendering obvious the device recited by claim 8, we
do not find Appellants’ argument persuasive.
SUMMARY
We affirm the rejection of claims 1, 2, 5—9, 14, 16, and 19-23 under
35 U.S.C. § 103(a) as unpatentable over Okada, Liu, de Jong, and Pinyayev.
We affirm the rejection of claims 8, 9, and 14 under 35 U.S.C.
§ 103(a) as unpatentable over Liu, de Jong, and Pinyayev.
We affirm the rejection of claims 12 and 13 under 35 U.S.C. § 103(a)
as unpatentable over Liu, de Jong, Pinyayev, and Takahashi.
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
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