Ex Parte Wasylucha

Patent Trial and Appeal BoardApr 29, 2013

10872256 (P.T.A.B. Apr. 29, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte BRYAN WASYLUCHA ____________ Appeal 2012-001179 Application 10/872,256 Technology Center 3700 ____________ Before JENNIFER D. BAHR, JOHN C. KERINS and STEFAN STAICOVICI, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-001179 Application 10/872,256 2 STATEMENT OF THE CASE Bryan Wasylucha (Appellant) seeks our review under 35 U.S.C. § 134(a) of the Examiner’s final rejection of claims 50, 51, 53-65, 119-122, 125, and 127. Claims 1-49 and 66-118 have been withdrawn, and claims 52, 123, 124 and 126 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. THE INVENTION Appellant’s invention is directed to a device for whitening teeth. Independent claim 50, reproduced below, is representative of the claimed subject matter: 50. A device for whitening teeth, comprising: a pen-shaped housing having a central axis with proximal and distal ends, the distal end terminating in an applicator tip with a single group of bristles parallel to the axis of the housing; a reservoir within the housing containing a peroxide-based tooth whitening composition; and a manually operated control on the housing coupled to an indexing mechanism operative to dispense a predetermined amount of the tooth whitening composition to the applicator tip. THE REJECTIONS Appellant appeals the following rejections: (i) claims 50, 51, 53, 119, 120, 122, 125, and 127 under 35 U.S.C. Appeal 2012-001179 Application 10/872,256 3 § 103(a) as being unpatentable over Wagner (US 5,611,687, issued Mar. 18, 1997) in view of Kageyama ‘739 (US 6,227,739 B1, issued May 8, 2001); (ii) claims 54 and 55 under 35 U.S.C. § 103(a) as being unpatentable over Wagner in view of Kageyama ‘739 and Yarborough (US 6,254,388 B1, issued Jul. 3, 2001); (iii) claims 56-59 and 61 under 35 U.S.C. § 103(a) as being unpatentable over Wagner in view of Kageyama ‘739 and Neuberger (US 6,056,548, issued May 2, 2000); (iv) claims 60 and 62-65 under 35 U.S.C. § 103(a) as being unpatentable over Wagner in view of Kageyama ‘739, Neuberger, and Rizoiu (US 6,616,447 B1, issued Sep. 9, 2003); and (v) claim 121 under 35 U.S.C. § 103(a) as being unpatentable over Wagner in view of Kageyama ‘739 and Kageyama ‘247 (US 2002/0070247 A1, published Jun. 13, 2002). ANALYSIS Claims 50, 51, 53, 119, 120, 122, 125, and 127--Obviousness-- Wagner/Kageyama ‘739 Appellant argues claims 50, 51, 53, 119, 120, 122, 125, and 127 as a group. Appeal Br. 3-5. We take claim 50 as representative, and claims 51, 53, 119, 120, 122, 125, and 127 stand or fall with claim 50. The Examiner found that Wagner discloses the subject matter of claim 50, except that the applicator tip is a single group of bristles parallel to the axis of the housing, and that a manually operated control on the housing is coupled to an indexing mechanism operative to dispense a predetermined amount of the tooth whitening composition to the applicator tip. Ans. 5. The Examiner points to Kageyama ‘739 as teaching a device for delivering a Appeal 2012-001179 Application 10/872,256 4 liquid, the device comprising: a single group of bristles (brush 20) parallel to the axis of a housing; and a manually operated control (operation cylinder 30) on the housing coupled to an indexing mechanism to dispense a predetermined amount of a composition to an applicator tip. Id., citing Kageyama ‘739, col. 5, ll. 22-49. The Examiner concluded that it would have been obvious to modify the dispensing means and applicator tip taught by Wagner with the user controlled dispensing means and bristles taught by Kageyama ‘739 in order to better control the amount of composition supplied to the applicator tip and as a matter of obvious design choice as a known means of composition application in the art. Id. Appellant’s first argument is that Kageyama ‘739 does not teach dispensing “a predetermined amount” of tooth whitening composition. Appeal Br. 4-5; Reply Br. 2. Appellant argues that Kageyama ‘739 is concerned only with making a liquid L “available for use,” and that there is no teaching or disclosure relating to “a predetermined amount.” Appeal Br. 4, citing to Kageyama ‘739, col. 5, ll. 22-49. However, as the Examiner noted, Kageyama teaches that an operation cylinder 30 and piston rod guide 26 are rotated together in order to supply a liquid L to a brush 20, and that during rotation of the operation cylinder 30, serrated teeth 30b of the operation cylinder 30 run over and down a slope of a ratchet gear tooth 27a so that the user can experience a feeling of control. See Kageyama ‘739, col. 5, ll. 27-48; see also Ans. 10. Thus, as the Examiner correctly concluded, the amount of liquid L supplied to the brush 20 during a single ratcheted movement of the serrated teeth 30b over the ratchet gear tooth 27a corresponds to “a predetermined amount” of liquid L made available to the brush 20. See Ans. 11. Further, the Examiner correctly pointed out that a Appeal 2012-001179 Application 10/872,256 5 ratcheting mechanism for dispensing a predetermined amount of liquid disclosed in Appellant’s Specification appears to be substantially similar to the dispensing mechanism taught by Kageyama ‘739. See Specification, p. 7, ll. 3-17; see also Ans. 11. Further, Appellant argues that, in Kageyama ‘739, a user shakes a dispenser or taps it against an object until a tip of the dispenser gets wet without having any idea about how much liquid was dispensed. Reply Br. 2. However, Kageyama ‘739 does not disclose this type of dispensing mechanism, which appears to be disclosed by a reference (Kageyama ‘247) that the Examiner did not rely on in rejecting claim 50. Appellant’s remaining argument is that Wagner teaches away from dispensing “a predetermined amount” of tooth whitening composition. Appeal Br. 5; Reply Br. 1-2. Appellant argues that Wagner’s disclosed delivery mechanism – a cylindrical tail wick 50 projecting downwardly into a fibrous wadding 36 of a liquid reservoir cartridge 34 – represents Wagner’s point of novelty, and the Examiner’s modification of this delivery mechanism would change the principle of operation of the device of Wagner. Appeal Br. 5; see Wagner, col. 3, ll. 48-61. However, the Examiner’s modification preserves the ability of the device of Wagner to dispense a tooth whitening composition, while improving the delivery mechanism by providing a user with better control over the amount of composition supplied to the applicator tip. See Ans. 5, 11-12. Appellant argues that the Examiner’s modification would undermine Wagner’s stated goals of providing a delivery system that is “simple to use,” “low in cost,” and “well suited for economical mass production fabrication.” Reply Br. 1 (citing Wagner, col. 2, ll. 8-19). However, Appellant does not provide any Appeal 2012-001179 Application 10/872,256 6 persuasive evidence or reasoning as to how the Examiner’s modification undermines these stated goals of Wagner. Appellant further argues that Wagner’s teaching of several different operation modes demonstrates that Wagner could have disclosed a mode involving dispensing predetermined amounts of composition and failed to do so, thus supporting Appellant’s argument that Wagner teaches away from the Examiner’s modification. Appeal Br. 5. However, Wagner’s failure to disclose an embodiment containing the Examiner’s modification does not mean that Wagner teaches away from such an embodiment. Further, Appellant has not shown where Wagner criticizes, discredits or otherwise discourages the Examiner’s proposed modification. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004); In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). The rejection of claim 50, and that of claims 51, 53, 119, 120, 122, 125, and 127 depending therefrom, is sustained. Claims 54 and 55--Obviousness--Wagner/Kageyama ‘739/Yarborough Claim 54 further recites that the tooth whitening composition has a peroxide concentration ranging from 5-35%, and claim 55 further recites that the tooth whitening compositing comprises a therapeutic agent. Appeal Br., Claims Appendix. The Examiner relied on Yarborough as teaching these features, and stated that it would have been obvious to modify the composition taught by Wagner/Kageyama ‘739 with the peroxide concentration and therapeutic agent taught by Yarborough “in order to create a greater whitening effect and to treat sensitive teeth.” Ans. 7. Appellant argues that the Examiner’s rationale is indefinite and insufficient, noting that “greater whitening effect” is subjective. However, the Examiner noted that Appeal 2012-001179 Application 10/872,256 7 Yarborough teaches that the concentration of peroxide affects the degree of whitening caused by the tooth whitening composition. Ans. 12; see Yarborough, col. 5, ll. 4-8. Thus, Appellant has not provided any persuasive reasoning or evidence that the Examiner’s modification of the device of Wagner/Kageyama ‘739 in view of the teachings of Yarborough lacks rational underpinnings. The rejection of claims 54 and 55 as being unpatentable over Wagner, Kageyama ‘739, and Yarborough is sustained. Claims 56-59 and 61--Obviousness--Wagner/Kageyama ‘739/Neuberger Claims 56 and 61 further recite that a light source in the form of a laser diode is disposed on or in the device for whitening teeth such that light emitted by the light source impinges on the tooth whitening composition. Appeal Br., Claims Appendix. The Examiner relied on Neuberger as teaching this feature, and concluded that it would have been obvious to include a light source on the Wagner device, as modified by Kageyama ‘739, to accelerate the whitening process. Ans. 8. Appellant does not take issue with this position, and thus does not apprise us of Examiner error in the rejection of claims 56 and 61. Thus, the rejection of claims 56 and 61 as unpatentable over Wagner, Kageyama’739, and Neuberger is sustained. Claims 57-59 further recite that the light source is disposed on various locations of the tooth whitening device. Appeal Br., Claims Appendix. The Examiner concluded that “it would have been an obvious matter of design choice…to locate the light source in any location on the device in order to control when the acceleration of the whitening process is achieved as desired by the user.” Ans. 8. Appellant argues that there is no factual evidence in support of the Examiner’s conclusion. Appeal Br. 6. To the extent that the Appeal 2012-001179 Application 10/872,256 8 Examiner’s position is understood at all, we agree with Appellant that the Examiner provided no evidence in the references themselves or in the knowledge available to one of ordinary skill in the art that the location of the light source would control when the acceleration of the whitening process is achieved. Thus, the Examiner’s reason for modifying the location of the light source lacks rational underpinnings. The rejection of claims 57-59 as unpatentable over Wagner, Kageyama’739, and Neuberger is not sustained. Claims 60 and 62-65--Obviousness-Wagner/Kageyama‘739/Neuberger/ Rizoiu Claim 60 further recites that the light source is in the form of a light emitting diode. Claims Appendix. The Examiner relied on Rizoiu as teaching this feature, and concluded that it would have been obvious to use such a light source as a matter of obvious design choice. Ans. 9. Appellant does not contest this conclusion specifically, and thus does not apprise us of Examiner error in the rejection of claim 60. Thus, the rejection of claim 60 as unpatentable over Wagner, Kageyama’739, Neuberger, and Rizoiu is sustained. Claims 62-65 further recite that the light source is disposed in or on the reservoir of the tooth whitening device. Claims Appendix. The Examiner concluded that “it would have been an obvious matter of design choice…to select any location on the device for the luminescent material…in order to control when the acceleration and the degree of the acceleration of the whitening process is achieved as desired by the user.” Ans. 9. For reasons similar to those discussed supra regarding the rejection of claims 57-59, the rejection of claims 62-65 as unpatentable over Wagner, Kageyama’739, Neuberger, and Rizoiu is not sustained. Appeal 2012-001179 Application 10/872,256 9 Claims 121--Obviousness--Wagner/Kageyama ‘739/Kageyama ‘247 Claim 121 further recites that the manually operated control is a pushbutton. Appeal Br., Claims Appendix. The Examiner relied on Kageyama ‘247 as teaching this feature. Ans. 10. Appellant erroneously states that claim 121 stands rejected over a patent to Horstman (US 5,851,079, issued Dec. 22, 1998) in view of Wagner, and presents arguments directed to that purported combination. Appeal Br. 6-7. Appellant thus does not apprise us of Examiner error in the rejection of claim 121 as made by the Examiner. Thus, the rejection of claim 121 as being unpatentable over Wagner, Kageyama ‘739, and Kageyama ‘247 is sustained. DECISION The decision of the Examiner to reject claims 50, 51, 53-56, 60, 61, 119-122, 125, and 127 is affirmed. The decision of the Examiner to reject claims 57-59 and 62-65 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)(1)(iv). AFFIRMED-IN-PART Klh