Ex Parte Winston

Patent Trial and Appeal BoardNov 12, 2015

12149971 (P.T.A.B. Nov. 12, 2015)

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. 12/149,971 05/12/2008 Ronald H. Winston 68145US(301422) 3656 7590 11/12/2015 Edwards Angell Palmer & Dodge LLP P.O. Box 55874 Boston, MA 02205 EXAMINER PATEL, YOGESH P ART UNIT PAPER NUMBER 3732 MAIL DATE DELIVERY MODE 11/12/2015 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 RONALD H. WINSTON ____________ Appeal 2013-0096731,2 Application 12/149,971 Technology Center 3700 ____________ Before ANTON W. FETTING, BIBHU R. MOHANTY, and PHILIP J. HOFFMANN, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the rejection of claims 1 and 3–18. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. According to Appellant, the “invention relates to a device for ultrasonically removing deposits from the surface of teeth.” Spec. 1, ll. 8–9. 1 Our decision references Appellant’s Specification (“Spec.,” filed May 12, 2008), Appeal Brief (“Appeal Br.,” filed Feb. 26, 2013), and Reply Brief (“Reply Br.,” filed Aug. 1, 2013), as well as the Final Office Action (“Final Action,” mailed Aug. 24, 2012) and the Examiner’s Answer (“Answer,” mailed June 5, 2013). 2 “The real party in interest is Ronald H. Winston.” Appeal Br. 2. Appeal 2013-009673 Application 12/149,971 2 Claim 1, which we reproduce below, is the only independent claim under appeal. 1. An ultrasonic dental cleaning device comprising: a handle having an ultrasonic driving system for transmitting ultrasonic energy containing a ferrite rod, a coil around the ferrite rod, a processor located in the handle and connected to the coil configured and adapted to output ultrasonic electrical energy, and at least two leads connected to a magnet on either end of the ferrite rod and coil; a cleaning tip operably coupled to the handle and configured to be driven to oscillate by the ultrasonic driving system; and a power supply configured and adapted to provide electric power to the ultrasonic driving system with a cord. Appeal Br., Claims App. REJECTIONS AND PRIOR ART Appellant appeals the Examiner’s rejection of claims 1, 3, 4, 6, 7, 10, 12, 14, and 18 under 35 U.S.C. § 103(a) as unpatentable over Kuris (US 4,333,197, iss. June 8, 1982) and Huguenin (US 2004/0170944 A1, pub. Sept. 2, 2004). Appellant also appeals the Examiner’s rejection of claims 1, 11, 13, and 15–17 under 35 U.S.C. § 103(a) as unpatentable over Winston (US 5,772,434, iss. June 30, 1998), Kuris, and Huguenin. Although the Examiner rejects claims 5, 8, and 9 under 35 U.S.C. § 103(a) as unpatentable over Kuris, Huguenin, and Suroff (US 5,150,492, iss. Sept. 29, 1992), Appellant does not appeal this rejection. Thus, we summarily sustain the rejection of claims 5, 8, and 9. Appeal 2013-009673 Application 12/149,971 3 See Final Action 2–5; see also Answer 3–6. ANALYSIS Obviousness rejection of claims 1, 3, 4, 6, 7, 10, 12, 14, and 18 based on Kuris and Huguenin Independent claim 1 recites, “a handle having an ultrasonic driving system for transmitting ultrasonic energy containing a ferrite rod, a coil around the ferrite rod, [and] a processor located in the handle and connected to the coil.” Appeal Br., Claims App. Appellant argues that: The combination of Kuris and Huguenin fails to teach or fairly suggest “a handle having an ultrasonic driving system for transmitting ultrasonic energy containing a ferrite rod, a coil around the ferrite rod, a processor located in the handle and connected to the coil configured and adapted to output ultrasonic electrical energy . . .”, as recited by Appellant's independent claim 1. Id. at 4. We disagree with Appellant. The Examiner finds that “Kuris discloses all of the claimed elements including . . . a handle and an ultrasonic driving system containing a ferrite rod . . . [,] a coil . . . around the ferrite rod, [and] a processor . . . located outside the handle and connected to the coil.” Answer 6; see also id. at 3–4, 7. The Examiner determines that Huguenin discloses a similar dental device (see, e.g., id. at 4) with a processor in the handle (see id.), and determines that it would have been obvious to provide Kuris’s processor within Kuris’s handle, based on Huguenin’s teaching of the same, to “provide[] increased mobility and avoid[] hassle [associated with] mov[ing] around the external processor as in Kuris” (id. at 7). We determine that the Examiner’s findings and conclusion of obviousness are supported by a preponderance of the evidence. Appeal 2013-009673 Application 12/149,971 4 In KSR, the Supreme Court emphasized “the need for caution in granting a patent based on the combination of elements found in the prior art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415 (2007). The Court discussed circumstances in which a patent might be determined to be obvious without an explicit teaching, suggestion, or motivation provided by the prior art references themselves. In particular, the Supreme Court reaffirmed that, “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” Id. at 416. In this case, as set forth above, the Examiner relies on Kuris to disclose almost every limitation of the claimed dental device, including a processor located outside a handle but connected to a coil surrounding a ferrite rod (see Answer 6–7), and relies on Huguenin’s disclosure of a similar dental device with a processor in the handle, to locate Kuris’s processor in Kuris’s handle (id. at 7). Thus, although Appellant is correct that no reference shows a processor that is connected to a coil located in a handle (see, e.g., Appeal Br. 4–6; see also Reply Br. 3–5), relocating Kuris’s processor based on Huguenin’s teaching would provide the predictable result of “provid[ing] increased mobility and avoid[ing] hassle [associated with] mov[ing] around the external processor as in Kuris” (Answer 7). Thus, the Examiner’s combination of reference establishes that claim 1 is obvious. Based on the foregoing, we sustain the obviousness rejection of independent claim 1 based on Kuris and Huguenin. We also sustain the obviousness rejection of claims 3, 4, 6, 7, 10, 12, 14, and 18 that depend from claim 1, and which Appellant does not argue separately. Appeal 2013-009673 Application 12/149,971 5 Obviousness rejection of claims 1, 11, 13, and 15–17 based on Winston, Kuris, and Huguenin Appellant argues: Winston in view of Kuris and Huguenin does not render independent claim 1 unpatentable, and since claims 11, 13 and 15-17 depend from independent claim 1, they likewise patentably distinguish from Winston in view of Kuris and Huguenin, thus withdrawal of the subject 103(a) rejection is earnestly solicited. It is respectfully submitted that to teach or suggest otherwise would require substantial reconstruction or redesign of Winston, Kuris[,] and Huguenin. One skilled in the art would readily recognize Kuris and/or Winston and/or Huguenin would have to be substantially modified such that “a processor located in the handle [is] connected to the coil”, which coil is wrapped “around a ferrite rod”. Appeal Br. 7. Appellant’s argument is not persuasive. Even assuming arguendo we agree with Appellant’s characterization of Winston, Kuris, and Huguenin (see Appeal Br. 4–6), Appellant does not explain why substantial modification, contrary to the requirements of the law, of the references would be required to provide the claimed invention. Thus, we sustain the rejection of claims 1, 11, 13, and 15–17. DECISION We AFFIRM the Examiner’s rejections of claims 1 and 3–18 under 35 U.S.C. § 103(a). Appeal 2013-009673 Application 12/149,971 6 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED mls