COLGATE-PALMOLIVE COMPANYDownload PDFPatent Trials and Appeals BoardMay 8, 202014979014 - (D) (P.T.A.B. May. 8, 2020) Copy Citation 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. 14/979,014 12/22/2015 Scott Demarest 10769-00-US-01-OC 2578 23909 7590 05/08/2020 COLGATE-PALMOLIVE COMPANY 909 RIVER ROAD PISCATAWAY, NJ 08855 EXAMINER FOLGMANN, DREW S ART UNIT PAPER NUMBER 3772 NOTIFICATION DATE DELIVERY MODE 05/08/2020 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): Patent_Mail@colpal.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte SCOTT DEMAREST, FRANCIS TATU, and MARK BARTLETT ____________ Appeal 2019-006011 Application 14/979,014 Technology Center 3700 ____________ Before JENNIFER D. BAHR, STEFAN STAICOVICI, and WILLIAM A. CAPP, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final rejection of claims 1–3, 5, 7–10, and 15–29. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies Colgate-Palmolive Company as the Applicant and real party in interest. Br. 2. Appeal 2019-006011 Application 14/979,014 2 THE INVENTION Appellant’s invention is an oral treatment device. Spec. ¶ 2. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. An oral treatment device comprising: a mouthpiece comprising a curved wall having a concave inner surface and a bite platform having an upper surf ace and a lower surface extending from the concave inner surface of the curved wall to a distal end, the distal end of the bite platform extending continuously in a non-interrupted manner from a first end of the bite platform to a second end of the bite platform; an electromagnetic radiation source configured to emit electromagnetic radiation from the curved wall; and a ridge extending upwardly from the upper surface of the bite platform and spaced apart from the concave inner surface of the curved wall; wherein the bite platform comprises a collapsible region such that the mouthpiece is alterable between: (1) a biased state in which the curved wall has a first curvature; and (2) a flexed state in which the curved wall has a second curvature that is different than the first curvature, the collapsible region extending along the bite platform from a first end of the collapsible region to a second end of the collapsible region; wherein the bite platform comprises a first non-collapsible region and a second non-collapsible region, the first non- collapsible region extending from the first end of the bite platform to the first end of the collapsible region and the second non-collapsible region extending from the second end of the bite platform to the second end of the collapsible region such that the collapsible region is located between the first and second non-collapsible regions; and wherein the ridge comprises a first portion located on the first non-collapsible region of the bite platform and a second portion located on the second non-collapsible region of the bite platform, the first and second portions of the ridge isolated and spaced apart from one another by a gap located on the collapsible region of the bite platform, the gap completely separating the first and second portions of the ridge. Appeal 2019-006011 Application 14/979,014 3 THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: NAME REFERENCE DATE Livolsi US 2005/0153256 Al July 14, 2005 Fischer US 2008/0050693 Al Feb. 28, 2008 Dwyer US 2012/0214122 Al Aug. 23, 2012 The following rejections are before us for review: 1. Claims 1–3, 5, 8–10, and 16–25 are rejected under 35 U.S.C. § 103 as being unpatentable over Dwyer and Livolsi. 2. Claims 1, 7, 15, 26, 28, and 29 are rejected under 35 U.S.C. § 103 as being unpatentable over Dwyer and Fischer. 3. Claim 27 is rejected under 35 U.S.C. § 103 as being unpatentable over Dwyer, Fischer, and Livolsi. OPINION Unpatentability of Claims 1–3, 5, 8–10, and 16–25 over Dwyer and Livolsi Claim 1–3, 5, 8–10, and 16–21 Appellant argues claims 1–3, 5, 8–10, and 16–21 as a group. Br. 6–9. We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv). The Examiner finds that Dwyer discloses the invention substantially as claimed except for a collapsible region with a gap, for which the Examiner relies on Livolsi. Final Act. 2–10. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time of the invention to modify Dwyer with the teachings of Livolsi to achieve the claimed invention. Id. at 10–11. According to the Examiner, a person of Appeal 2019-006011 Application 14/979,014 4 ordinary skill in the art would have done this to allow for diverse angular orientations of the impression tray. Id. at 11. Appellant argues that the prior art fails to teach or suggest first and second portions of the ridge spaced apart by a gap as claimed in claim 1. Br. 6. Appellant argues that the bellows (13, 14) of Livolsi do not have gaps. Id. at 7. Appellant supports this argument with a common English language dictionary definition of “gap.” Id. In response, the Examiner states that Livolsi teaches a gap and supports such position with an annotated version of Livolsi, Figure 1. Ans. 22. The dispute between Appellant and the Examiner is largely a matter of claim construction. During examination of a patent application, pending claims are given their broadest reasonable construction consistent with the specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under the broadest reasonable interpretation standard, claim terms are given their ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Although Appellant directs our attention to a dictionary definition of “gap,” we are cognizant that claims must be interpreted in light of the Specification of which they are a part. Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005). Phillips reminds us that indiscriminate reliance on dictionary definitions can produce absurd results. Id. at 1322. In lieu of relying on dictionary definitions, Phillips counsel us that the Specification may define claim terms expressly or by implication. Id. at 1321. Appeal 2019-006011 Application 14/979,014 5 In the instant case, Figures 3C and 3D of Appellant’s disclosure depict collapsible region 250 that includes what Appellant characterizes and identifies as “gap” 251. Spec. ¶ 66, Figs. 3C and 3D. As depicted in Figures 3C and 3D, collapsible region 250 is an accordion-like structure. Id. Gap 251 represents the spacing between the folds of the accordion like structure. Id. Gap 251 can widen or narrow as the collapsible region expands and contracts. Id. Livolsi discloses an adjustable dental impression tray. Livolsi, Abstract. Livolsi’s device contains at least two accordion-like or “bellows” structures at 13 and 14 respectively. Id. Fig. 1. Bellows 13 and 14 are spaced apart from each other by structure that includes at least central curved section 7. Id. ¶¶ 55, 63, Fig. 1. Livolsi’s bellows 13, 14 expand and contract in a manner that is essentially indistinguishable from the manner in which collapsible region 250 of Appellant’s device expands and contracts. Compare Appellant’s Spec. ¶ 66, Figs. 3C, 3D; Livolsi, ¶¶ 55, 63, Fig. 1. Construing the term “gap” in view of Appellant’s disclosure, we determine that Livolsi discloses a “gap” that is essentially identical to the “gap” disclosed and claimed by Appellant. Appellant further argues that the applied prior art fails to disclose first and second ridge portions spaced apart by a “gap.” Br. 8. “[A] gap must mean a space which separates the two portions of the ridge.” Id. This argument is not persuasive as it essentially entails individual attacks on the applied references rather than considering the references in combination. It is well established that non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Appeal 2019-006011 Application 14/979,014 6 Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981). Here, the Examiner relies on Dwyer as disclosing an oral treatment device mouthpiece with a ridge. Final Act. 3–4. The Examiner relies on Livolsi as teaching that it was known in the art to make a mouthpiece expandable by incorporating an accordion like bellows structure between two spaced apart, non-collapsible portions. Final Act. 8–9. As we understand the Examiner’s rejection, Dwyer’s ridge would be modified to allow for the interposition of an accordion-like or bellows structure between a left portion and a right portion of Dwyer’s ridge so that such left and right ridge portions would be spaced apart. In that regard, we note that the vertical walls of Livolsi’s lateral branches 8 and 9 are spaced apart by bellows 13, 14, and central portion 7. Livolsi, Fig. 1. Thus, there is teaching from which a person of ordinary skill in the art would have been able to modify Dwyer’s ridge by separating it into two spaced apart portions. Appellant next argues that the Examiner’s proposed combination is improper because it “fails to incorporate the entirety of the teachings of Livolsi.” Br. 8. Appellant, however, cites no legal authority for the notion that an obviousness analysis requires incorporating the “entirety” of the teachings of all references used in an obviousness combination and, indeed, we are not aware of any such authority. Appellant argues that the Examiner is guilty of “cherry picking” only selected aspects of Livolsi’s teaching while ignoring the remainder. Id. at 8–9. Appellant concludes that the Examiner’s combination is the result of hindsight. Id. at 9 (“The Final Rejection improperly relies on hindsight to cobble together bits and pieces of various references in an attempt to read on the invention of claim 1”). Appellant’s argument is bolstered by the assertion that, by incorporating the Appeal 2019-006011 Application 14/979,014 7 bellows of Livolsi into Dwyer, the shape alteration taught by Livolsi is no longer possible. Id. We agree with Appellant, at least in principle, that we should be on guard against improper hindsight reasoning in an obviousness analysis. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (explaining that a factfinder should be aware of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning). Furthermore, we agree, in principle, that we “cannot use hindsight reconstruction to pick and choose among isolated disclosures in the prior art to deprecate the claimed invention.” In re Fine, 837 F.2d 1071, 1075 (Fed. Cir. 1988). Notwithstanding, we disagree with Appellant that the Examiner is guilty of hindsight in this particular case. Appellant’s invention, as well as each of the prior art references of record, involves placing a U-shaped tray in a patient’s mouth so as to accommodate the teeth of a patient. A person of ordinary skill in the art knows that patients, and their respective mouths, jaws, and teeth arches vary in size from one patient to another. The concept of making an item expandable so that it may accommodate a broad range of users of various sizes is hardly new and is certainly not unique to dental appliances. Considering that Livolsi specifically discloses the use of bellows to make an impression tray adjustable (See Livolsi, ¶ 64), it would not have taken hindsight for a practitioner to recognize that incorporating an accordion-like or bellows structure would facilitate the fitting of Dwyer’s device to a wider range of patients of diverse sizes. Finally, Appellant’s argument that using Livolsi’s bellows in Dwyer’s dental device would destroy the shape alteration feature of Livolsi is Appeal 2019-006011 Application 14/979,014 8 unpersuasive as it is unsupported by any evidence and amounts to no more than unsubstantiated attorney argument. See Invitrogen Corp. v. Clontech Labs, Inc., 429 F.3d 1052, 1068 (Fed. Cir. 2005) (explaining that unsubstantiated attorney argument is no substitute for competent evidence). In view of the foregoing discussion, we determine the Examiner’s findings of fact are supported by a preponderance of the evidence and that the Examiner’s legal conclusion of unpatentability is well-founded. We sustain the Examiner’s unpatentability rejection of claims 1–3, 5, 8–10, and 16–21. Claims 22–25 Claim 22 is an independent claim and claims 23–25 depend, directly or indirectly, therefrom. Claims App. Claim 22 is substantially similar in scope to claim 1 except that it contains limitations directed to the bite platform being flat and planar in the non-collapsible regions. Claims App. In traversing the rejection, Appellant makes a naked assertion that “disagrees” with the Examiner’s finding regarding Dwyer disclosing flat/planar regions. Appeal Br. 11. Otherwise, Appellant relies on the same arguments that we previously considered and found unpersuasive with respect to claim 1 and find equally unpersuasive here. Id. Dwyer discloses that the upper and lower trough sections 16 and 18 of its dental tray have a common planar base. Dwyer ¶ 17. Appellant cites no evidence to place the Examiner’s findings of fact, based on Dwyer paragraph 17, in controversy. Final Act. 4; Appeal Br. 11. The Examiner’s findings of fact are supported by a preponderance of the evidence. We sustain the Examiner’s unpatentability rejection of claims 22–25. Appeal 2019-006011 Application 14/979,014 9 Unpatentability of Claims 1, 7, 15, 26, 28, and 29 over Dwyer and Fischer Claims 1, 7, and 15 Appellant argues claims 1, 7, and 15 as a group. Br. 6–9. We select claim 1 as representative. 37 C.F.R. § 41.37(c)(1)(iv). The Examiner finds that Dwyer discloses the invention substantially as claimed and relies on Fischer as disclosing collapsible and non- collapsible regions. Final Act. 12–21. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time of the invention to modify Dwyer with the teachings of Fischer to achieve the claimed invention. Id. at 20–21. According to the Examiner, a person of ordinary skill in the art would have done this to configure a treatment tray for placement over an upper or lower arch. Id. at 21. Appellant argues that the prior art fails to teach or suggest a gap that completely separates first and second portions of the ridge as claimed. Appeal Br. 10. Appellant argues that Fischer’s notch is disposed in lingual wall 106 and that wall 106 extends along the entire periphery of the tray. Id. In response, the Examiner finds that Fischer’s gap completely separates the ridge portions and provides an annotated version of Figure 1A to illustrate the point. Ans. 24. Fischer is directed a dental tray device. Fischer, ¶ 3. The tray has a shape that corresponds to the curvature of a person’s dental arch. Id. ¶ 10. Fischer’s dental tray is comprised of labial-buccal wall 102, lingual wall 106 and bottom wall 104. Id. ¶ 74. As shown in Figure 1A, bottom wall 104 separates and extends between spaced apart walls 102 and 106. Id. Fig. 1A. Fischer’s device incorporates a number of features to better conform to a plurality of differently sized and/or shaped teeth and different sizes of dental Appeal 2019-006011 Application 14/979,014 10 arches. Id. ¶¶ 11, 13. The bottom wall of Fischer includes notch 110 near the front of bottom wall 104. Id. ¶ 80. The notch allows the dental treatment tray to more easily spread open or compress. Id. This allows bottom wall 104 to conform to different sizes of dental arches. Id. Appellant’s argument that Fischer fails to disclose a gap between first and second portions of a ridge is not supported by the evidentiary record before us. Fisher discloses a left portion of lingual wall 106 and a right portion of lingual wall 106, but such portions do not extend to the central portion of the dental tray that includes notch 110. Id. Fig. 1A. Left and right lingual wall portions 106 are completely separated from each other. Id. Contrary to Appellant’s argument, notch 110 is disposed in bottom wall 104, not lingual wall 106. Id. In view of the foregoing discussion, we determine the Examiner’s findings of fact are supported by a preponderance of the evidence and that the Examiner’s legal conclusion of unpatentability is well-founded. We sustain the Examiner’s unpatentability rejection of claims 1, 7, and 15. Claim 26 Claim 26 is an independent and claims 28 and 29 depend therefrom. Claims App. Claim 26 differs in scope from claim 1, among other things, by including limitations directed to the thickness of the bite platform. Id. Appellant argues that the prior art fails to disclose the thickness limitations of claim 26. Appeal Br. 11–12. Appellant asserts that the Examiner incorrectly looks to the width of Fischer’s bite platform rather than its thickness to satisfy the thickness limitations. Id. at 12. In response, the Examiner finds that Fischer discloses the thickness limitations and provides an annotated version of Figure 1A to illustrate the Appeal 2019-006011 Application 14/979,014 11 point. Ans. 26. The Examiner’s annotations confirm that the Examiner relies on Fischer’s fore-to-aft width for its variable thickness. Id. Fischer refers to the thickness of its dental tray device in numerous places throughout its disclosure and, in places, compares the thickness of its dental tray device with a mouth guard used in sports play. See, e.g., Fischer, ¶¶ 13, 14, 37, 39, 44, 48, & 49. In context, such thickness is always referred to in a manner that strongly implies that Fischer’s tray has a uniform thickness. Id. (for example, see ¶ 37 “less than about 2 mm”). Appellant’s understanding of the term thickness comports with the manner in which it is used in Appellant’s Specification and also in Fischer. The Examiner errs in using the concepts of thickness and width interchangeably as merely a function of view orientation of the device. A person of ordinary skill in the art would understand that a dental tray has a certain thickness regardless of the orientation in which it is viewed. In view of the foregoing discussion, we determine the Examiner’s findings of fact are not supported by a preponderance of the evidence and, therefore, the Examiner’s legal conclusion of unpatentability is unfounded. We do not sustain the Examiner’s unpatentability rejection of claim 26. Claims 28 and 29 stand with claim 26. Unpatentability of Claim 27 over Dwyer, Fischer, and Livolsi Claim 27 depends from claim 26. Claims App. The Examiner’s rejection of this claim suffers from the same infirmity that was identified above with respect to claim 26. Thus, for essentially the same reason expressed above in connection with claim 26, we do not sustain the rejection of claim 27. Appeal 2019-006011 Application 14/979,014 12 CONCLUSION In summary: Claims Rejected § References Affirmed Reversed 1-3, 5, 8-10, 16-25 103 Dwyer, Livolsi 1-3, 5, 8-10, 16-25 1, 7, 15, 26, 28, 29 103 Dwyer, Fischer 1, 7, 15 26, 28, 29 27 103 Dwyer, Fischer, Livolsi 27 Overall Outcome 1-3, 5, 7-10, 15-25 26-29 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 Copy with citationCopy as parenthetical citation