Sonendo, Inc.

Patent Trials and Appeals BoardMar 31, 2021

2020005391 (P.T.A.B. Mar. 31, 2021)

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. 14/137,937 12/20/2013 Mehrzad Khakpour DNTEK.023A 1475 20995 7590 03/31/2021 KNOBBE MARTENS OLSON & BEAR LLP 2040 MAIN STREET FOURTEENTH FLOOR IRVINE, CA 92614 EXAMINER SAUNDERS, MATTHEW P ART UNIT PAPER NUMBER 3772 NOTIFICATION DATE DELIVERY MODE 03/31/2021 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): efiling@knobbe.com jayna.cartee@knobbe.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MEHRZAD KHAKPOUR, BJARNE BERGHEIM, RICHARD S. TEBBS, MORTEZA GHARIB, and MICHELE PHAM Appeal 2020-005391 Application 14/137,937 Technology Center 3700 ____________ Before MICHAEL C. ASTORINO, BRADLEY B. BAYAT, and AMEE A. SHAH, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s decision to reject claims 1–3, 5–7, 9–13, 17, 18, 20–22, 30–38, and 41–43. Claims 4, 14–16, and 23–29 are cancelled. Appeal Br., Claims App. Claims 8, 19, 39, 40, and 44 are withdrawn. Non-Final Act. 1, 3.2 We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held on March 12, 2021. We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as “the Assignee of record, Sonendo, Inc.” Appeal Br. 3. 2 “Non-Final Act.” refers to the Non-Final Office Action mailed Dec. 14, 2018. Appeal 2020-005391 Application 14/137,937 2 STATEMENT OF THE CASE Claimed Subject Matter Claims 1, 12, and 41 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. An apparatus for treating a tooth, the apparatus comprising: a chamber having an access port which places the chamber in fluid communication with a treatment region of the tooth when the chamber is coupled to tooth; a fluid motion generator coupled to the chamber, the fluid motion generator configured to direct fluid through a fluid inlet port at a non-parallel angle to a central axis of the chamber to generate fluid motion in the chamber, the fluid inlet port being offset relative to the central axis of the chamber, and opening into the chamber of the apparatus such that the fluid inlet port is positioned outside of the treatment region when the chamber is coupled to the tooth; and a suction port separate from the access port, the suction port comprising an aperture having a distal-most plane exposed to the chamber at a region opposite the access port, the suction port configured to connect to a suction system to remove fluid by suction from the treatment region and the chamber through the aperture. References The prior art relied upon by the Examiner is: Name Reference Date Dove US 2010/0152634 A1 June 17, 2010 Bergheim et al. (“Bergheim”) US 2012/0237893 A1 Sept. 20, 2012 Appeal 2020-005391 Application 14/137,937 3 Rejections Claims 1, 5–7, 9–12, 20–22, 30–38, and 41–43 are rejected under pre- AIA 35 U.S.C. § 102(b) as anticipated by Bergheim. Claims 1–3, 5–7, 9–13, 17, 18, 20–22, 30–38, and 41–43 are rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Dove and Bergheim. ANALYSIS The Examiner finds that Bergheim qualifies as prior art under the statutory bar of pre-AIA 35 U.S.C. § 102(b) as being more than a year before the currently claimed invention.3 Non-Final Act. 9. The Examiner’s position is that Bergheim, published on September 20, 2012, qualifies as prior art under § 102(b) because “the fluid inlet port being offset relative to the central axis of the chamber,” as recited in claims 1, 12, and 41, is only supported by Figure 10F of the present application, which was filed December 20, 2013, and not US Provisional Application 61/740,351, which was filed December 20, 2012 (“the provisional application”). See id. at 2–3, 9. In the Answer, the Examiner appears to find that further limitations of claim 1 lack support in the provisional application, specifically: “the fluid motion generator configured to direct fluid through a fluid inlet port at a non-parallel angle to a central axis of the chamber” and “the suction port 3 Pre-AIA 35 U.S.C. § 102(b) recites: A person shall be entitled to a patent unless . . . (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States. Appeal 2020-005391 Application 14/137,937 4 comprising an aperture having a distal-most plane exposed to the chamber at a region opposite the access port.” See Ans. 3–7. Also, the Examiner finds that “wherein the fluid motion generator is configured to rotate the fluid about an axis transverse to the central axis of the chamber,” as recited in claim 3, lacks support in the provisional application. Id. at 7. The Examiner’s primary concern is the failure of the provisional application to describe a central axis of the chamber. See Non-Final Act. 2; Ans. 3–4. In this regard, the Examiner finds that the provisional application’s most relevant drawing, Figure 7A, is a hand drawing without any scale, lacks a marking identifying the chamber’s central axis, and only shows a flow retainer in cross-section. See Ans. 3. The Examiner compares and contrasts the provisional application’s Figure 7a with the present application’s Figures 10A and 10F, which show cross-sectional and top down views, respectively. See, e.g., id. at 3, 4–5, 8. The Examiner’s comparison appears to lend support to the notion that the provisional application’s Figure 7a fails to show the relative position of the fluid inlet port to the chamber’s central axis. The Appellant argues that Bergheim does not qualify as prior art under pre-AIA 35 U.S.C. § 102(b) because “the pending claims are fully supported under 35 U.S.C. § 112 in the Priority Provisional Application to which the [present] Application claims priority.” Reply Br. 2. The Appellant contends that the pending claims have priority to December 20, 2012, which is the filing date of US Provisional Application 61/740,351, and Bergheim was “published on September 20, 2012, which is less than one year before the effective filing date of the pending claims.” Id. Additionally, the Appellant provides a chart detailing where each rejected Appeal 2020-005391 Application 14/137,937 5 and withdrawn claim is supported in the provisional application. Appeal Br. 10–11. The Appellant identifies support for claims 1, 3, 12, and 41 in the provisional application at pages 3–4, 7–8, and 11–12, and Figures 6a–d and 7a–7b. Id. at 10. The Appellant has the better position. We determine that the Examiner’s rejection does not appear to adequately consider the importance of a person of ordinary skill in the art in the analysis of the issue. See Reply Br. 8–9, 10. “[T]he test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). This test “requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art.” Id. We note that the Appellant points out that the Examiner’s rejection relies on Bergheim’s figures, which show cross-sectional views of a fluid retainer, to correspond to the claimed invention. See Appeal Br. 13; Reply Br. 4; Non-Final Act. 4 (citing Bergheim Title, Abstract, Figs. 3b, 4a, 4c, ¶ 72). In this regard, we note that Bergheim’s Figure 3B, for example, is similar to the provisional application’s Figure 7a in that they are both cross- sectional views of chambers of a fluid/flow retainer. The Appellant points out that Bergheim’s Figure 3B fails to show the central axis of the flow retainer’s chamber. See Reply Br. 4. The Appellant contends that despite Bergheim’s Figure 3B not depicting the chamber’s central axis the Examiner finds that the figure discloses a chamber having a central axis. See id.; Non- Final Act. 4. Appeal 2020-005391 Application 14/137,937 6 Although the Examiner responds to the Appellant’s point concerning Bergheim’s Figure 3B (Ans. 7), the response appears to fail to appreciate the importance of the Appellant’s point; namely, by applying Bergheim’s Figure 3B (a cross-sectional figure that lacks a depiction of a central axis of a chamber) to the claimed invention, the Examiner demonstrates how one of ordinary skill in the art would understand a cross-sectional drawing of a chamber of a fluid/flow retainer. Logically, a person of ordinary skill in the art would view the cross-sectional view of Bergheim’s Figure 3B in a similar manner as the cross-sectional view of the provisional application’s Figure 7a. And, because the Examiner’s rejection supports the notion that a person of ordinary skill in the art would view Bergheim’s Figure 3B as having a central axis of a chamber that is non-parallel and offset, there is no reason to believe that a person of one of ordinary skill in the art would not view the provisional application’s Figure 7a in the same or substantially similar way. Further, we find that a person of ordinary skill in the art can understand the relative positioning of the structural features of the flow retainer shown in provisional application’s Figure 7a despite the figure being drawn by hand and not to scale. To this end, the Appellant annotates provisional application’s Figure 7a to provide a depiction of how the fluid inlet port is at a non-parallel angle and offset relative to the chamber’s central axis. See Appeal Br. 13; Reply Br. 4, 8, 9. This annotated version of Figure 7a is merely a representation of how a person of ordinary skill in the art may understand the claimed invention. In view of the foregoing, we determine that the Examiner fails to adequately establish on the record that the provisional application fails to Appeal 2020-005391 Application 14/137,937 7 adequately convey with reasonable clarity to those skilled in the art that the Appellant was in possession of a fluid inlet port at a non-parallel angle and being offset relative to the chamber’s central axis. As for the other claim limitations in dispute, i.e., “the suction port comprising an aperture having a distal-most plane exposed to the chamber at a region opposite the access port,” as recited in claim 1, and “wherein the fluid motion generator is configured to rotate the fluid about an axis transverse to the central axis of the chamber,” as recited in claim 3, the Appellant argues that provisional application, including Figure 7A, shows support for these limitations as well. Reply Br. 9, 10; see Appeal Br. 10. The Appellant’s argument is persuasive. Similar to our analysis above, we determine that the Examiner’s rejection does not appear to adequately consider the importance of a person of ordinary skill in the art in the analysis of the issue. We find that provisional application’s Figure 7a, which includes a “stream of liquid, e.g., jet” that emanates from an “inlet,” “liquid motion,” which is a rotational motion within a “chamber substantially filled with liquid,” and openings of a “mating tube” to a root canal (i.e., access port) and an “outlet” (i.e., suction port), along with the relative positions thereof, adequately conveys with reasonable clarity to those skilled in the art that the Appellant was in possession of the disputed subject matter of claims 1 and 3 as of the filing date of the provisional application. See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed. Cir. 1991). Further, we determine that the Appellant persuasively argues that Bergheim does not qualify as prior art under pre-AIA 35 U.S.C. § 102(a) or § 102(e) because it is not “a printed publication or patent application ‘by Appeal 2020-005391 Application 14/137,937 8 another’ or ‘by others[.]’” Reply Br. 3. For the above reasons, we likewise determine that the Appellant persuasively argues that Bergheim does not qualify as prior art under pre-AIA 35 U.S.C. § 103(a). Id. Thus, we do not sustain the Examiner’s rejections of claims 1–3, 5–7, 9–13, 17, 18, 20–22, 30–38, and 41–43. CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 5–7, 9–12, 20–22, 30–38, 41–43 102(b) Bergheim 1, 5–7, 9–12, 20–22, 30–38, 41–43 1–3, 5–7, 9–13, 17, 18, 20–22, 30–38, 41–43 103(a) Dove, Bergheim 1–3, 5–7, 9–13, 17, 18, 20–22, 30–38, 41–43 Overall Outcome 1–3, 5–7, 9–13, 17, 18, 20–22, 30–38, 41–43 REVERSED