12008310 - (D) (P.T.A.B. Apr. 9, 2013)

Ex Parte Eckert

Patent Trials and Appeals BoardApr 9, 2013

12008310 - (D) (P.T.A.B. Apr. 9, 2013)

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. 12/008,310 01/10/2008 Ronald C. Eckert Eckert 4.1-4 9593 7590 04/10/2013 Butzel Long Suite 1100 110 West Michigan Ave. Lansing, MI 48933 EXAMINER ROSEN, ERIC J ART UNIT PAPER NUMBER 3732 MAIL DATE DELIVERY MODE 04/10/2013 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 RONALD C. ECKERT __________ Appeal 2012-001091 Application 12/008,310 Technology Center 3700 __________ Before DEMETRA J. MILLS, JEFFREY N. FREDMAN, and STEPHEN WALSH, Administrative Patent Judges. FREDMAN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a disposable cup for cleaning and polishing teeth. The Examiner rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2012-001091 Application 12/008,310 2 Statement of the Case Background “The present invention relates to a disposable prophylaxis cup formed of a silicone elastomer having perlite particles incorporated therein. The present invention also . . . relates to a method of using a prophylaxis cup formed of a silicone elastomer having perlite particles to clean and polish teeth” (Spec. 1 ¶ 0003). The Claims Claims 1-18 are on appeal. Claim 1 is representative and reads as follows: 1. A disposable prophylaxis cup for cleaning and polishing teeth, which comprises: (a) a silicone elastomer; and (b) perlite particles incorporated in the silicone elastomer as an abrasive material, wherein the particles are as a uniform dispersion in the elastomer, the cup has been cured in a mold so that it has a hardened outer case and then subjected to cryogenic deflashing to remove the casing so that the cup begins to disintegrate after contact with the teeth. The issues A. The Examiner rejected claims 1-11 and 15-18 under 35 U.S.C. § 103(a) as obvious over Eckert1 and Roulston2 (Ans. 5-8). B. The Examiner rejected claim 12 under 35 U.S.C. § 103(a) as obvious over Eckert, Roulston, and Charlton3 (Ans. 9-10). 1 Eckert, R., US 5,334,020, issued Aug. 2, 1994. 2 Roulston et al., US 7,303,600 B2, issued Dec. 4, 2007. Appeal 2012-001091 Application 12/008,310 3 C. The Examiner rejected claim 13 under 35 U.S.C. § 103(a) as obvious over Eckert, Roulston, and Drapen4 (Ans. 10). D. The Examiner rejected claim 14 under 35 U.S.C. § 103(a) as obvious over Eckert, Roulston, and Madsen5 (Ans. 11). A. 35 U.S.C. § 103(a) over Eckert and Roulston The Examiner finds that Eckert teaches: a disposable prophylaxis cup 10 (figure 3) for cleaning and polishing teeth, which comprises: a silicone elastomer (Col. 3, lines 3-4); and particles (Col. 3, lines 3-4) incorporated in the silicone elastomer as an abrasive material, wherein the particles are as a uniform dispersion in the elastomer (col. 3, lines 17-18), wherein the cup begins to disintegrate after contact with the teeth (Col. 3, lines 25-28; “wears down”). (Ans. 5). The Examiner finds that “Eckert is silent regarding the abrasive particles being perlite particles. However, Roulston teaches perlite particles being used as an abrasive material for use in polishing teeth with a prophylaxis cup” (Ans. 6). The Examiner finds it obvious to “modify Eckert by using perlite particles as the abrasive particles, as taught by Roulston, for the purpose of using abrasive particles that are effective in cleaning and polishing teeth” (Ans. 6). The issue with respect to this rejection is: Does the evidence of record support the Examiner’s conclusion Eckert and Roulston render the claims obvious? 3 Charlton, D., US 6,083,000, issued Jul. 4, 2000. 4 Drapen et al., US 3,675,330, issued Jul. 11, 1972. 5 Madsen, E., US 4,322,207, issued Mar. 30, 1982. Appeal 2012-001091 Application 12/008,310 4 Findings of Fact The following findings of fact (“FF”) are supported by a preponderance of the evidence of record. 1. Eckert teaches an “improved dental prophylaxis cup formed of a non-toxic silicone elastomer incorporating an abrasive uniformly dispersed throughout so that both a polishing cavity in a working end of the cup can be used to clean teeth as well as the outside surface of the cup, thus enhancing operator convenience” (Eckert, col. 3, ll. 16-21). 2. Eckert teaches that “the cup wears down during a teeth cleaning procedure to continuously apply fresh abrasive to the tooth surface” (Ecker, col. 3, ll. 24-26). 3. Eckert teaches that: The abrasive material for dental purposes can be pumice or pumice based powders, quartz and quartz based powders, zirconium silicate and zirconium silicate based powders and feldspar and feldspar based powders as specified by ANSI/ADA Specification to 37-1986. Type I up to 150 microns is for oral use and Type II up to 250 microns is for laboratory use such as on appliances and dentures. Type I is preferably between about 37 and 150 microns and Type II is preferably between about 74 and 250 microns. (Eckert, col. 7, ll. 23-32). 4. Roulston teaches that the “unexpanded perlite ore polishing composition has utility for use in a dental prophalaxis paste” (Roulston, col. 7, ll. 31-32). 5. Roulston teaches that “unexpanded perlite ore polishing composition has utility for use in a strip material for polishing teeth” (Roulston, col. 7, ll. 34-35). Appeal 2012-001091 Application 12/008,310 5 6. Roulston teaches that the “invention is not limited to any specific perlite composition according to an elemental analysis of unexpanded perlite. It is envisioned that all compositions of unexpanded perlite, sometimes referred to herein as unexpanded perlite ore, can be used in practicing this invention” (Roulston, col. 8, ll. 63-67). Principles of Law “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability.” Id. at 417. As noted by the Court in KSR, “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.” Id. at 421. Analysis Claim 1 Eckert teaches a prophylaxis cup for teeth cleaning which comprises a silicone elastomer and an abrasive material which is incorporated as a uniform dispersion (FF 1). Eckert teaches that the cup “wears down during a teeth cleaning procedure to continuously apply fresh abrasive to the tooth surface” (Eckert, col. 3, ll. 24-26; FF 2). While Eckert does not teach the use of perlite, Roulston teaches that the “unexpanded perlite ore polishing composition has utility for use in a dental prophalaxis paste” (Roulston, col. 7, ll. 31-32; FF 4). Roulston also teaches that “unexpanded perlite ore polishing composition has utility for use in a strip material for polishing teeth” (Roulston, col. 7, ll. 34-35; FF 5). Appeal 2012-001091 Application 12/008,310 6 Applying the KSR standard of obviousness to the findings of fact, we conclude that an ordinary artisan would have reasonably found it obvious to use the perlite dental abrasive of Roulston in the prophylaxis cup of Eckert since Roulston teaches that perlite is useful for polishing teeth (FF 4-5). Such a combination is merely a “predictable use of prior art elements according to their established functions.” KSR, 550 U.S. at 417. Appellant contends that “Roulston, however, does not disclose, teach, or suggest the use of perlite particles in a prophylaxis cup (or in any other solid matrix) as asserted by the action. The passages cited by the action only disclose the use of perlite particles in a prophylaxis paste” (App. Br. 14). While Appellant correctly notes that Roulston does not anticipate the claimed invention by incorporating perlite particles in a prophylaxis cup, the Examiner’s rejection is not anticipation, but rather obviousness over the combination of Eckert and Roulston. We agree with the Examiner that since “pumice, as disclosed by Eckert, and perlite, as disclosed by Roulston . . . are natural volcanic materials used in various areas of dentistry as an abrasive for cleaning and polishing teeth [this] would further lead one of ordinary skill in the art to understand that such polishing materials may be interchangeable for use as an abrasive in such devices as a prophylaxis cup” (Ans. 12). That is, the ordinary artisan would have recognized that just as Eckert taught four or five different abrasive compounds suitable for dental use, Roulston’s teaching that perlite would be a useful abrasive compound would have suggested the use of perlite in Eckert’s prophylaxis cup (FF 1- 3). Appeal 2012-001091 Application 12/008,310 7 Claims 2, 4, and 17 Appellant contends that “the particle sizes disclosed in Eckert ‘020 are an inappropriate basis for comparison with the recited range, inasmuch as Eckert ‘020’s disclosure related to particle size particularly addresses pumice and other specific abrasives, but does not address the specifically recited perlite particles” (App. Br. 16). We are not persuaded. Eckert teaches “powders as specified by ANSI/ADA Specification to 37-1986. Type I up to 150 microns is for oral use and Type II up to 250 microns is for laboratory use such as on appliances and dentures. Type I is preferably between about 37 and 150 microns and Type II is preferably between about 74 and 250 microns” (Eckert, col. 7, ll. 27-32; FF 3). Thus, the ordinary artisan selecting particle sizes for oral use in the prophylaxis cup of Eckert would have reasonably selected “Type I” particle sizes between 37 and 150 microns, not larger “Type II” particle sizes which were not designated for oral use but rather laboratory use on dentures. Further, the ordinary artisan would have reasonably relied upon the teaching of Eckert, which provides specific guidance on the particle sizes of abrasives for oral use, rather than Roulston, who teaches particle sizes for polishing dentures rather than oral use (see Roulston, col. 19, example 9). Eckert’s preferred range of 37 to 150 microns overlaps the claims 15 to 40 micron range. See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“In cases involving overlapping ranges, we and our predecessor court have consistently held that even a slight overlap in range establishes a prima facie case of obviousness.”) Appeal 2012-001091 Application 12/008,310 8 Claims 7, 10, and 11 Appellant contends that “[g]iven the process and resulting structural differences between the two silicone matrices, there is no basis to conclude that the prophylaxis cup of Eckert ‘020 would have the recited disintegration time” (App. Br. 18). We are not persuaded. While the processes used to prepare the silicone matrix of Eckert and that required by claim 1 differ in the presence of the cryogenic cooling step, Appellant has presented no evidence that the cryogenic deflashing demonstrably changes the rate of disintegration of the prophylaxis cup compared to Eckert’s prophylaxis cup which did not receive this treatment. By contrast, there is evidence that Eckert’s cup disintegrates continuously. Specifically, Eckert teaches that “the cup wears down during a teeth cleaning procedure to continuously apply fresh abrasive to the tooth surface” (Eckert, col. 3, ll. 24-26; FF 2). This express teach that the cup wears down continuously is a direct teaching that throughout the cleaning procedure, including the first 5 to 10 seconds, the prophylaxis cup wears down, i.e. disintegrates. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product.”). Appellant has not provided any evidence to rebut the Examiner’s inherency position. Appeal 2012-001091 Application 12/008,310 9 Conclusion of Law The evidence of record supports the Examiner’s conclusion Eckert and Roulston render the claims obvious. B.-D 35 U.S.C. § 103(a) The Examiner provides sound fact-based reasoning for combining Eckert and Roulston with Charlton, Drapen, and Madsen. We adopt the fact finding and analysis of the Examiner as our own. Appellant argues the underlying obviousness rejection over Eckert and Roulston but Appellant does not identify any material defect in the Examiner’s reasoning for combining Charlton, Drapen, and Madsen with these references. Since Appellant only argues the underlying rejection which we affirmed above, we affirm these rejections for the reasons stated by the Examiner. SUMMARY In summary, we affirm the rejection of claims 1-11 and 15-18 under 35 U.S.C. § 103(a) as obvious over Eckert and Roulston. We affirm the rejection of claim 12 under 35 U.S.C. § 103(a) as obvious over Eckert, Roulston, and Charlton. We affirm the rejection of claim 13 under 35 U.S.C. § 103(a) as obvious over Eckert, Roulston, and Drapen. We affirm the rejection of claim 14 under 35 U.S.C. § 103(a) as obvious over Eckert, Roulston, and Madsen. Appeal 2012-001091 Application 12/008,310 10 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED llw