Ex Parte Luoto

Patent Trial and Appeal Board

Dec 21, 2018

13375658 (P.T.A.B. Dec. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/375,658 12/01/2011
27885 7590 12/21/2018
FAY SHARPE LLP
1228 Euclid Avenue, 5th Floor
The Halle Building
FIRST NAMED INVENTOR
Toni Luoto
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
PLMC 200012US01 6351
EXAMINER
LEWIS, RALPH A
Cleveland, OH 44115 ART UNIT PAPER NUMBER
3772
MAIL DATE DELIVERY MODE
12/21/2018 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
Exparte TONI LUOTO
Appeal2018-003734
Application 13/375,658 1
Technology Center 3700
Before EDWARD A. BROWN, BRETT C. MARTIN, and
RICHARD H. MARSCHALL, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Toni Luoto ("Appellant") seeks review under 35 U.S.C. § 134(a) of
the Examiner's decision rejecting claims 1-3, 10-12, and 22-30. We have
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 LM-Instruments O Y is identified as the real party in interest. Appeal Br. 1.
Appeal2018-003734
Application 13/375,658
CLAIMED SUBJECT MATTER
Claims 1, 29, and 3 0 are independent. Claim 1 illustrates the claimed
subject matter, and reads:
1. A hand instrument for manual use in dental care,
compnsmg:
a substantially elongated handle having a longitudinal
axis,
a head-part extending at least substantially from a central
axis of the handle, said head-part bent such that at least one
region along a length of the head-part resides fully off the
longitudinal axis,
a construction at one end or both ends of the handle, said
construction providing a detachable connection of said head-part
to the handle wherein said head-part can be selectively attached
to the handle and removed from the handle, the construction
including a tightening element, and
a fastening element which prevents the head-part from
swivelling in relation to the central axis of the handle and a
structure which prevents movement of the head-part in an axial
direction of the handle when the head-part is positioned in said
construction, the fastening element extending substantially from
the central axis of the handle, which fastening element is
arranged to receive a base end of the head-part, said fastening
element including a continuous or discontinuous protrusion
configured to engage with a continuous ring-like groove on the
head-part,
wherein the handle and the tightening element are
arranged with compatible threads and the fastening element is
integrally formed with the handle, wherein screwing of the
tightening element to the handle compresses the protrusion into
engagement with said groove and prevents removal of said head-
part from engagement with said handle,
and
wherein the fastening element of the handle is arranged
with an axially extending axially non-symmetric recess or rib
disposed on said longitudinal axis, and the head-part respectively
with a rib or a recess that is compatible with the handle recess or
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Application 13/375,658
rib, which when attached together position the head-part to the
handle and prevent swivelling of the head-part in relation to the
central axis of the handle.
Appeal Br. 13 (Claims App.).
REJECTIONS
Claim 30 is rejected under 35 U.S.C. § 102(b) as anticipated by Butler
(US 3,753,455, issued Aug. 21, 1973).
Claims 1-3, 10-12, and 22-32 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Le Mongne (FR 1 460 553 A, published March 4,
1966) and Lewthwaite (US 964,922, issued July 19, 1910).
ANALYSIS
Claim 3 0 as anticipated by Butler
Claim 30 recites "[a] hand instrument for manual use in dental care"
comprising, among other things, "a head-part selected from a tartar scaler
and a tooth filling modeler extending at least substantially from a central
axis of the handle." Appeal Br. 16-17 (Claims App. (emphasis added)).
The Examiner finds that Butler discloses a hand instrument capable of use
"in dental care," comprising a head part (screwdriver blade 51) extending
from a central axis of an elongated handle (hollow handle 21, rod 24) and
detachably connected to the handle. Final Act. 2. The Examiner states, "[i]n
regard to the [tartar] scaler or tooth filling [modeler] limitation, the Butler
device is capable of use scraping [tartar] or [modeling] tooth filler." Id. at 3.
The Examiner submits the claim does not set forth "any physical attributes
that are required of a 'tarter scaler' or the 'tooth filling modeler' that are not
present in the flat screw driver blade of Butler." Id.
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Application 13/375,658
Appellant contends that a skilled artisan would not consider a
screwdriver a "tartar scaler" or a "tooth filling modeler" because these
claimed elements are terms of art having specific physical configurations.
Appeal Br. 9.
The Patent Office "determines the scope of claims ... not solely on
the basis of the claim language, but upon giving claims their broadest
reasonable construction 'in light of the specification as it would be
interpreted by one of ordinary skill in the art."' Phillips v. A WH Corp., 415
F.3d 1303, 1316 (Fed. Cir. 2005) (en bane) (quoting In re Am. Acad. Of Sci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)). The "broadest reasonable
construction" must be the "broadest reasonable construction consistent with
the specification." In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007) ( emphasis added). Appellant's Specification describes
instruments designed for removing tartar and for modeling tooth filling
material. Particularly, the Specification describes, "[t]he instrument
designed to be used manually may be e.g. one designed for removing tartar,
which includes a substantially narrow head part with at least one bending."
See Spec. 1, 11. 19-21 ( emphasis added). The Specification also describes
that "[t]wo head parts (3) designed to be used for scaling tartar are
connected to the instrument presented in Fig. 1, but the head part may also
be of a different kind, e.g. one designed for modelling tooth filling material."
See id. at 4, 11. 20-23 ( emphasis added). Accordingly, Figure 1 discloses
head parts 3 designed for scaling tartar. As shown, each head part 3 has "at
least one bend[]." Id. at 1, 1. 20.
Additionally, Appellant provides an image of an instrument in which
"each of a tartar scaler and tooth filling modeler as accepted configurations
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Application 13/375,658
in the art are depicted." Reply Br. 3. We note that each of the elements
located at the opposed ends of the instrument includes a bent portion.
Appellant contends that "the head of a screwdriver is straight," whereas
" [ t ]he dental instrument as claimed ( tartar scaler and tooth filling modeler)
and as shown in the figures of the application has a bent head-part which is a
prerequisite to achieving good clinical functionality." Id. at 4.
Appellant's contentions are persuasive. First, the Specification
discloses a tartar scaler having the configuration shown in Figure 1. The
Examiner fails to establish, with evidence, that Butler's screwdriver head 51
has a configuration that a skilled artisan reasonably would consider to
correspond to the configuration of the depicted tartar scaler.
Second, the Examiner fails to establish that Butler's screwdriver head
51 can be considered a "tooth filling modeler." Although claim 3 0 does not
explicitly recite the configuration of a "tooth filling modeler," the Examiner
provides no evidence that one of ordinary skill in the art would consider
Butler's screwdriver head 51 to have a configuration that corresponds to the
configuration a skilled artisan would understand the claimed "tooth filling
modeler" has. Indeed, Appellant has provided evidence showing the
configuration of a tooth filling modeler, which configuration is significantly
different from that of Butler's screwdriver head 51. See Reply Br. 3.
Accordingly, we agree with Appellant that the Examiner's finding that
Butler's screwdriver blade discloses "a head-part selected from a tartar
scaler and a tooth filling modeler" is premised on an improper claim
construction, and is not supported by evidence. Thus, we do not sustain the
rejection of claim 30 as anticipated by Butler.
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Application 13/375,658
Claims 1-3, 10-12, and 22-32 as unpatentable over Le Mongne and
Lewthwaite
Claims 1-3, 10-12, 22-26, 28, 31, and 32
The Examiner finds that Le Mongne discloses most limitations recited
in claim 1. Final Act. 4. Particularly, the Examiner finds that Le Mongne
discloses a dental hand instrument comprising, among other things, an
elongated handle (handle 12), a head part (handle tool 19), a fastening
element (nozzle tip carrier 23), and a tightening element (nut clamp 24),
where the "head element" includes ribs (lugs 34) to cooperate with a recess
(slot 30) in the fastening element to prevent the head element from rotating
when the tightening element is tightened over the fastening element. Id.
( citing Le Mongne, Figs. 4, 7-9). The Examiner finds that Le Mongne does
not disclose "the claimed ring-like groove in the head part in which
protrusions from the fastening element engage to prevent axial movement."
Id. We understand this finding refers to the limitation reciting, "said
fastening element including a continuous or discontinuous protrusion
configured to engage with a continuous ring-like groove on the head-part."
Appeal Br. 13 (Claims App.).
The Examiner relies on Lewthwaite for teaching that, for collet
couplings, it is known to add a groove (groove 20) to a tool (punch 7, "head
part") and for the groove to be engaged by a protrusion on a fastening
element to prevent the tool from being pulled inadvertently from a handle.
Final Act. 4 (citing Lewthwaite, Fig. 3, p. 2, 11. 41--49). The Examiner
concludes that it would have been obvious to one of ordinary skill the art to
provide Le Mongne's tool collet coupling with an annular groove and a
projection to prevent the tool member from being pulled from the handle.
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Appellant contends that Lewthwaite does not qualify as analogous
prior art. Appeal Br. 6. The test for determining whether a prior art
reference is analogous art is: "(1) whether the art is from the same field of
endeavor, regardless of the problem addressed, and (2) if the reference is not
within the field of the inventor's endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the inventor is
involved." In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). Appellant
contends that its field of endeavor is dental care instruments, whereas
Lewthwaite is directed to the field of punch press apparatuses. Appeal Br. 6.
The Examiner finds that both Le Mongne and Lewthwaite "are directed to
common mechanical field of couplings that use collets for attaching a
removable tool to a holder/handle assembly." Final Act. 5. Appellant
submits that Lewthwaite is not in the field of Appellant's endeavor merely
because Lewthwaite includes aspects of clamping via tightening. Appeal Br.
7. Appellant also contends that Lewthwaite does not address any particular
problem in Le Mongne's device. Id.
Appellant's contentions are not persuasive. Even assuming
Lewthwaite is not from the same field of endeavor as Appellant's, the
second prong of the analogous art test asks whether Lewthwaite "is
reasonably pertinent to the particular problem with which the inventor is
involved." In re Clay, 966 F.2d at 659 (emphasis added). Appellant's
contentions do not explain why Lewthwaite is not reasonably pertinent to a
particular problem with which Appellant is involved.
Appellant also contends that a skilled artisan would not have replaced
Le Mongne's lugs 33, 34 with the groove ofLewthwaite. Appeal Br. 7.
Appellant submits that because Le Mongne' s lugs prevent both longitudinal
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and rotational motion and, thus, already retain the tool element, a skilled
artisan would have no reason to replace Le Mongne' s with Lewthwaite' s
groove. Id. The Examiner responds that the rejection does not replace Le
Mongne's lugs 33, 34 with the groove of Lewthwaite, but modifies Le
Mongne by adding a groove to the tool ("head-part" 25) and a protrusion to
compressible members 29 of fastening element 23 to help prevent tool/head-
part 25 from being inadvertently pulled from the handle during use. Ans.
10.
Appellant replies that Le Mongne already provides structures that
prevent inadvertently pulling out tool 25. Reply Br. 5. In Le Mongne,
projecting ribs 34 on tool 25 prohibit tool 25 from being axially removed
from cap 23 when clamp 24 is tightened onto cap 23, and the conical hollow
35 (of clamp 24) impinges upon the cone angle 31 (of cap 23) such that
longitudinal slots 30 ( of cap 23) are narrowed, and, in combination with ribs
34 (of tool 25), rotationally and axially retain tool 25. Id. Appellant submits
that longitudinal slots 30 are clamped upon ribs 34 such that axial removal
of tool 25 is prevented. Id. Thus, Appellant contends, a skilled artisan
would have no motivation to add the groove of Lewthwaite to the tool of Le
Mongne.
Appellant's contentions are persuasive. The Examiner's proposed
modification of Le Monge fails to properly recognize that Le Mongne
already provides structure that prevents inadvertently pulling out tool 25. As
discussed, Le Mongne's instrument includes lugs 33, 34 provided on tool 25
for engaging slots 30 formed in cap 23, and clamp 24, which is tightened
onto cap 23 to thereby clamp longitudinal slots 30 onto ribs 34, so that tool
25 is set in place. The Examiner does not identify any disclosure in Le
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Mongne that describes or suggests that tool 25 is prone to being
inadvertently pulled from the handle during use, despite having this
structure. The Examiner does not articulate an adequate reason with a
rational underpinning why one of ordinary skill in the art would have
modified Le Mongne to add additional structure to help prevent tool 25 from
being inadvertently pulled from the handle during use. Nor does the
Examiner explain adequately how Le Monge would be modified to add the
additional structure taught by Lewthwaite without interfering with, and
potentially requiring additional structural modifications to, Le Monge.
For these reasons, we do not sustain the rejection of claim 1, or of
claims 2, 3, 10-12, 22-26, 28, 31, and 32 depending therefrom, as
unpatentable over Le Mongne and Lewthwaite.
Claims 27 and 29
Independent claim 29 recites substantially the same limitations as
claim 1. Appeal Br. 15-16 (Claims App.). The Examiner rejects claim 29
based on the same findings and reasoning as for claim 1. Final Act. 4--5.
Accordingly, we do not sustain the rejection of claim 29, or of claim 27
depending therefrom, as unpatentable over Le Mongne and Lewthwaite.
DECISION
We reverse the rejections of claims 1-3, 10-12, and 22-30.
REVERSED
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