Ex Parte Doucette et al

Board of Patent Appeals and Interferences

Feb 21, 2012

11275747 (B.P.A.I. Feb. 21, 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.
11/275,747 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.
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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);
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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.
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[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.
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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.
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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
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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.
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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

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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

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