Ex Parte Doucette et alDownload PDFBoard of Patent Appeals and InterferencesFeb 21, 201211275747 (B.P.A.I. Feb. 21, 2012) 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. 11/275,747 01/26/2006 Ronald W. Doucette JR. MIDTF-404P2 2068 26875 7590 02/21/2012 WOOD, HERRON & EVANS, LLP 2700 CAREW TOWER 441 VINE STREET CINCINNATI, OH 45202 EXAMINER PATEL, YOGESH P ART UNIT PAPER NUMBER 3776 MAIL DATE DELIVERY MODE 02/21/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte RONALD W. DOUCETTE, JR., DAVID P. HOSEY, TIM SILVERS, MICHAEL R. SUPINGER, and SCOTT STRAIT ____________________ Appeal 2010-000929 Application 11/275,747 Technology Center 3700 ____________________ Before KEN B. BARRETT, GAY ANN SPAHN, and MICHAEL C. ASTORINO, Administrative Patent Judges. BARRETT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Ronald W. Doucette, Jr. et al. (Appellants) seek our review under 35 U.S.C. § 134 of the final rejection of claims 1-10. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2010-000929 Application 11/275,747 2 THE INVENTION Claim 1 is representative of the subject matter on appeal. 1. A dental vacuum system, comprising: a vacuum reservoir; at least one positive displacement dry vacuum pump operatively coupled to said vacuum reservoir to create a vacuum in said reservoir, said pump having a pumping chamber configured to operate without a working fluid in the pump chamber; and at least one dental aspirator operatively coupled to said vacuum reservoir. THE REJECTIONS The following Examiner’s rejections are before us for review: 1. Claims 1, 2, 4, and 6 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Meyer (US 5,282,744, iss. Feb. 1, 1994) and Maruyama (US 5,674,051, iss. Oct. 7, 1997); 2. Claim 3 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Meyer, Maruyama, and Folkenroth (US 4,344,756, iss. Aug. 17, 1982); 3. Claim 5 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Meyer, Maruyama, and Goertzen (US 5,378,119, iss. Jan. 3, 1995); 4. Claims 9 and 10 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Meyer, Maruyama, and Bordelon (US 3,553,840, iss. Jan. 12, 1971); Appeal 2010-000929 Application 11/275,747 3 5. Claims 1, 2, and 6 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Stone (US 2006/0093990 A1, pub. May 4, 2006) and Maruyama; and 6. Claims 7 and 8 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Stone, Maruyama, and Johnson (US 2,709,534, iss. May 31, 1955). OPINION The Examiner rejected claim 1 (the sole independent claim on appeal) and some of its dependent claims as obvious in light of the combination of Meyer and Maruyama and in light of the combination of Stone and Maruyama. Appellants argue these two rejections together rather than separately and argue the rejected claims as a group, addressing the merits of only claim 1. E.g., App. Br. 5. To reach the dispositive issues in this case, we need only address the rejection of claims 1, 2, 4, and 6 under 35 U.S.C. § 103 as unpatentable over Meyer and Maruyama. Our analysis applies equally to the Stone-Maruyama rejection. As Appellants argue the claims subject to the Meyer-Maruyama rejection as a group (App. Br. 5-13), we select claim 1 as representative, and claims 2, 4, and 6 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). The Examiner found that Meyer discloses the claimed dental vacuum system except for the vacuum pump being a dry vacuum pump. Ans. 3. The Examiner found that Maruyama discloses a positive displacement dry vacuum pump and teaches that “the dry pump is desirable over an oil rotary pump because it has a higher reliability (column 2, lines 32-34).” Id. Appellants do not contest these findings. See, e.g., Reply Br. 3 (discussing but not challenging the Examiner’s reliability finding); cf. Spec. 8, para. Appeal 2010-000929 Application 11/275,747 4 [0023] (Appellants’ Specification stating that pumps that operate without working fluid were known in the art of Appellants’ invention). The Examiner concluded that “[i]t would have been obvious to one of ordinary skill in the art at the time the invention was made to replace the oil pump of Meyer with the pump of Maruyama, because it is more reliable.” Ans. 3. We determine that the Examiner has set forth adequate findings and reasoning to support the conclusion of obviousness. Appellants, relying on the Shoemaker Declaration1, contend that one of ordinary skill in the art would not have substituted the pump disclosed in Maruyama into the system of Meyer. See, e.g., App. Br. 7, 9; Reply Br. 2-3. For the following reasons, the Shoemaker Declaration and Appellants’ arguments based thereon are not persuasive of error in the Examiner’s conclusion of obviousness. The Declarant opines that persons skilled in the art would not have expected the pump of Maruyama to be suitable for use in a dental vacuum system. Shoemaker Decl. 5. This opinion and the corresponding arguments are based on the assumption that the vacuum system must be located in close proximity to the dental operatories and in a small closet or other confined area. Id. at 3-4; App. Br. 9. This assumption contradicts Appellants’ Specification which states “[t]he vacuum assembly 20 will generally be located remote from the operatories 12, such as in a separate room or a utility area of the dental office.” Spec. 5, para. [0018]; see also Fig. 1 (depicting the pump housed in a relatively large room or utility area). Also, the opinion appears to be based on the assumption that one of ordinary skill would be attempting to bodily incorporate an industrial- 1 Declaration of Daniel Shoemaker, dated June 16, 2008. Appeal 2010-000929 Application 11/275,747 5 sized pump of the type disclosed by Maruyama into a dental office rather than an appropriately sized unit. Shoemaker Decl. 5; App. Br. 8. “The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted). Furthermore, the “special requirements” upon which the Declarant’s opinions are based (“certain thresholds of size, generated noise, and generated heat”) are vague and are not recited limitations of the claimed invention. See Shoemaker Decl. 3; see also App. Br. 10 (“Appellants note that the characteristics of size, heat, and noise are not recited in the claims.”); Ans. 9 (the Examiner noting that the Declarant does not identify the thresholds or standards for noise, size, and heat). We agree with the Examiner that the Shoemaker Declaration “is insufficient to overcome the rejection of claim 1 . . . .” Ans. 7, 9-10. To the extent that Appellants argue that the selection of a dry pump would not be obvious due to the necessity of balancing various design considerations such as reliability versus size, heat output and noise output, this argument is not persuasive. Reply Br. 3-4. Our reviewing court has recognized that a given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate any or all reasons to combine teachings. See Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Appeal 2010-000929 Application 11/275,747 6 Instead, the benefits, both lost and gained, should be weighed against one another.”) Evidence of secondary considerations, such as that presented by Appellants, must be considered en route to a determination of obviousness/nonobviousness under 35 U.S.C. § 103. Accordingly, we consider anew the issue of obviousness, carefully evaluating and weighing both the evidence relied upon by the Examiner and the objective evidence of non-obviousness provided by Appellants. “For objective evidence to be accorded substantial weight, its proponent must establish a nexus between the evidence and the merits of the claimed invention.” In re GPAC Inc., 57 F.3d 1573, 1580 (Fed. Cir. 1995). “Where the offered secondary consideration actually results from something other than what is both claimed and novel in the claim, there is no nexus to the merits of the claimed invention.” In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) (citations omitted). Appellants’ asserted evidence of long felt need is entitled to little, if any, weight as Appellants have failed to show a nexus between the claimed invention and a solution to the purported “drawbacks” – those related to the unclaimed aspects of size, heat, and noise. App. Br. 11; Shoemaker Decl. 5. Claim 1 broadly recites a dry vacuum pump, and it is not clear from the Shoemaker Declaration how Appellants’ system having this broadly claimed pump overcomes the same “drawbacks” that the Declarant attributes to such pumps. See Shoemaker Decl. 5. For this same reason, we also fail to perceive a nexus to the claimed invention for Appellants’ assertion of unexpected results. App. Br. 9 (“the system provides unexpected results of a suitable vacuum system having a compact size and which is capable of Appeal 2010-000929 Application 11/275,747 7 operating with generated noise and heat levels that are acceptable for use in a dental practice.”) To the extent that the Declarant refers to “the drawbacks associated with prior vacuum systems which utilize [pumps that operate with a working fluid]” (Shoemaker Decl. 2), the Declarant’s testimony is inadequate to establish a nexus between such “drawbacks,” the claimed and novel aspects of the claimed invention, and any secondary considerations. See, e.g., Shoemaker Decl. 2-3 (Declarant, at most, differentiating between the claimed invention and the Meyer system). The Silvers Declaration2 is offered as evidence of commercial success. See App. Br. 12; Silvers Decl. 2. The Declarant offers the conclusory opinion that the commercial success is due to the use of a dry vacuum pump. Silvers Decl. 3. However, the Declarant’s testimony is that Appellants’ commercial embodiment has enjoyed commercial success relative, at least in part, to other systems on the market that utilize dry pumps. Id. (“the PowerVac® system is the best dry dental vacuum on the market.”) Thus, any such commercial success cannot be due to the presence of a dry pump in Appellants’ embodiment, but must be due to some other feature. The Declarant does not identify that feature. Cf. Ans. 7 (“the declaration failed . . . to indicate difference between these [competing] products and the applicant’s (invention as claimed).”). Rather, the Declarant points to the “primary difference” between the PowerVac® system and the prior art Meyer system having a pump utilizing a working fluid. Silvers Decl. 3. Although Appellants assert that “the dental vacuum system of Meyer ‘744 . . . represents the competitive products,” Appellants do not 2 Declaration of Tim Silvers, dated June 17, 2008. Appeal 2010-000929 Application 11/275,747 8 direct us to any evidence of this (and, again, this contradicts the Declarant’s testimony indicating that other systems on the market utilize dry pumps). App. Br. 12. In summary, Appellants have not demonstrated a nexus between the merits of the claimed invention and any commercial success relative to competitors in the market, and have not shown that the claimed invention enjoyed commercial success relative to the system of the Meyer prior art reference. After reviewing Appellants’ arguments pertaining to, and evidence of, secondary considerations, we find that Appellants have failed to demonstrate an adequate nexus between that evidence and the merits of the claimed invention. Alternatively, even if there was a nexus between the merits of the claimed invention and Appellants’ evidence of secondary consideration, that evidence is entitled to but little weight. We sustain the rejection of claims 1, 2, 4, and 6 as unpatentable over Meyer and Maruyama. As mentioned above, Appellants do not offer separate arguments for the rejection of claims 1, 2, and 6 as unpatentable over Stone and Murayama, but rather argue that rejection as a group with the Meyer- Murayama rejection. Accordingly, we affirm the rejection of claims 1, 2, and 6 over Stone and Murayama for the same reasons set forth above. As to the remaining rejections on appeal, Appellants rely on the rejected claims’ dependency on independent claim 1 and argue that the tertiary references “each fail to cure the deficiencies of claim 1 discussed above [in the Appeal Brief].” App. Br. 14. We found no such deficiencies, and therefore also affirm the remaining rejections. Appeal 2010-000929 Application 11/275,747 9 DECISION The decision of the Examiner to reject claims 1-10 is affirmed. 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 nlk Copy with citationCopy as parenthetical citation