11493460 (P.T.A.B. Nov. 27, 2012)

Ex Parte Buchanan

Patent Trial and Appeal BoardNov 27, 2012

11493460 (P.T.A.B. Nov. 27, 2012)

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. 11/493,460 07/25/2006 L. Stephen Buchanan 142-26-002 8514 23935 7590 11/28/2012 KOPPEL, PATRICK, HEYBL & PHILPOTT 2815 Townsgate Road SUITE 215 Westlake Village, CA 91361-5827 EXAMINER SINGH, SUNIL K ART UNIT PAPER NUMBER 3732 MAIL DATE DELIVERY MODE 11/28/2012 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 L. STEPHEN BUCHANAN __________ Appeal 2010-007758 Application 11/493,460 Technology Center 3700 __________ Before DONALD E. ADAMS, ERIC GRIMES, and ERICA A. FRANKLIN, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) involving claims to an endodontic instrument and file. The Patent Examiner rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal 2010-007758 Application 11/493,460 2 STATEMENT OF THE CASE Appellant states in the Appeal Brief that “[c]laims 16 and 17 were withdrawn by the examiner from examination as a non-elected invention and such withdrawal from examination is being appealed.” (App Br. 2.) An Examiner’s decision to withdraw claims as a non-elected invention does not address the patentability of a claimed invention, and is therefore not an appealable issue. See In re Hengehold, 440 F.2d 1395, 1403 (CCPA 1971): There are a host of various kinds of decision an examiner makes in the examination proceeding—mostly matters of a discretionary, procedural or nonsubstantive nature—which have not been and are not now appealable to the board . . . when they are not directly connected with the merits of issues involving rejections of claims, but traditionally have been settled by petition to the Commissioner. Thus, the Examiner’s decision to withdraw claims 16 and 17 must be reviewed by way of petition, not appeal. See 37 C.F.R. § 1.144; Manual of Patent Examining Procedure § 1201 and § 1002.02(c)(2). Claims 1, 4, 7, 8, 11 and 14 and 15 are on appeal. Claims 1 and 8 are representative and read as follows: 1. An improved endodontic instrument for shaping or cleaning a root canal in a tooth comprising a file with one or more flutes spiraling along the length of the file, the one or more flutes having a first outer diameter at a shank end of the file, a second, smaller outer diameter at a tip end of the file, said first and second outer diameters conforming to a straight taper line between a shank portion and a tip portion of the file, the outer diameter of the flutes along an intermediate portion located between the shank portion and the tip portion of the file being less than the first diameter, and a cutting edge on a leading edge of the one or more flutes, wherein the flutes in the shank portion and the tip portion are landed flutes, nonlanded flutes or a combination thereof, the improvement comprising: at least one region in the intermediate portion with flute diameters Appeal 2010-007758 Application 11/493,460 3 which are less than the straight taper line between the shank portion and the tip portion wherein the flutes in the at least one region in the intermediate portion are landed flutes and all the lands on the flutes in said one region in the intermediate portion have widths greater than the widths of the lands in the shank portion or tip portion. 8. A tapered endodontic file for shaping or cleaning a root canal in a tooth comprising one or more flutes spiraling along the length of the file, the diameters of the one or more flutes tapering in a non-uniform manner from a first diameter in a shank portion of the file to a smaller diameter in a tip portion of the file such that at least one intermediate flute region between the shank portion and the tip portion has a reduced diameter which is less than a straight line taper from the shank portion to the tip portion wherein the flutes in the shank portion and the tip portion are landed flutes, non-landed flutes or a combination thereof, the flutes at least in the intermediate flute region are landed flutes and all of the lands on the flutes in the intermediate flute region have widths greater than the widths of the lands in the shank portion or tip portion. The Examiner rejected claims 1, 4, 7, 8, 11 and 14 and15 under 35 U.S.C. § 103(a) as unpatentable over Johnson1 and Huebner.2 OBVIOUSNESS The Examiner’s position is that Johnson taught the claimed invention except for “disclos[ing] a device where all the lands in the intermediate portion have widths greater than the widths of the lands in the tip portion.” (Ans. 5.) The Examiner found that Huebner taught a bone cutting device having flutes with land widths that progressively taper from a first end to a second end. (Id.) Therefore, the Examiner found that the lands of Huebner’s device inherently had “widths greater than the width of the tip 1 US Patent No. 6,074,209 issued to William B. Johnson, Jun. 13, 2000. 2 US Patent No. 5,871,486 issued to Randall J. Huebner et al., Feb. 16, 1999. Appeal 2010-007758 Application 11/493,460 4 portion.” (Id.) According to the Examiner, it would have been obvious to a person of ordinary skill in the art at the time the invention was made to have modified Johnson’s device so that all “the lands in the intermediate portion having widths greater than the widths of the land in the tip portion, as taught by Huebner, since such a bone cutting device is well known in the art.” (Id.) Appellant contends, among other things, that in Huebner “there is no suggestion of a smaller diameter intermediate portion.” (App. Br. 6.) Further, Appellant asserts that the Examiner has not provided evidence establishing any motivation or suggestion for a skilled artisan to have combined Johnson and Huebner to yield the claimed invention. (Id. at 7-8.) We agree with Appellant that the Examiner has not established that a skilled artisan would have been motivated to combine Johnson and Huebner to yield the claimed invention. In particular, we agree with Appellant that Huebner does not provide a suggestion to modify Johnson so that the lands in the intermediate portion have widths greater than the widths of the lands in the shank or tip portions, as required by the claims. See In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988)(A conclusion that the claimed subject matter is prima facie obvious must be supported by evidence, as shown by some objective teaching in the prior art or by knowledge generally available to one of ordinary skill in the art that would have led that individual to combine the relevant teachings of the references to arrive at the claimed invention.). Appeal 2010-007758 Application 11/493,460 5 SUMMARY We reverse the obviousness rejection. REVERSED lp