Ex Parte Miles

Patent Trial and Appeal Board

Mar 25, 2016

12788807 (P.T.A.B. Mar. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121788,807 05/27/2010 Will Miles
44305 7590 03/25/2016
WITHERS & KEYS, LLC
P. 0. BOX 2049
MCDONOUGH, GA 30253
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.
10097.000lUSOl 7410
EXAMINER
NOBREGA, TATIANA L
ART UNIT PAPER NUMBER
3776
MAILDATE DELIVERY MODE
03/25/2016 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 WILL MILES
Appeal2014-000867
Application 12/788,807
Technology Center 3700
Before JENNIFER D. BAHR, BRANDON J. WARNER, and
FREDERICK C. LANEY, Administrative Patent Judges.
LANEY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Will Miles (Appellant) appeals under 35 U.S.C. § 134(a) from the
Examiner's decision rejecting claims 1, 2, 4, 5, 7, 8, 11, 13-15, and 17-25. 1
We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM-IN-PART.
1 Claims 3, 6, 9, 10, 12, and 16 have been canceled. See Appeal Br. 3.
Appeal2014-000867
Application 12/788,807
INVENTION
Appellant's invention relates "generally to flossing toys and devices."
Spec. 1, 11. 4--5. Claims 1, 18, and 20 are independent. Claim 1 is
illustrative of the claimed invention and reads as follows:
1. A flossing toy comprising:
a central base portion,
two, spaced floss-supporting members extending downward
from said central base portion,
a fixed length of floss extending between and connected to each
of said two, spaced floss-supporting members, wherein said fixed
length of floss is substantially equal to or less than an overall width of
said flossing toy, and
two finger-engaging members extending upward from said
central base portion, wherein each of said two finger-engaging
members independently comprises (i) a first end connected to said
central base portion and (ii) a second end opposite said first end, said
two finger-engaging members combining with one another to form an
open expandable loop having a disconnecting slot therein, said
disconnecting slot being positioned between opposing and separated
end surfaces of said second ends of said two finger-engaging members,
said disconnecting slot being positioned a distance from said central
base portion and a further distance from said fixed length of floss, said
open loop being sized to adjustably extend over and grasp a finger
positioned therein.
REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claims 17, 20, and 23-25 under 35
U.S.C. § 112, second paragraph, as being indefinite for failing
to particularly point out and distinctly claim the subject matter
which the applicant regards as the invention.
II. The Examiner rejected claims 1, 2, 4, 5, 7, and 8 under 35
U.S.C. § 103(a) as unpatentable Zuehlsdorf (US 5,222,510,
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Application 12/788,807
issued June 29, 1993) and Stelmach (US 6,116,252, issued
Sept. 12, 2000).
III. The Examiner rejected claims 11 and 13 under 35 U.S.C.
§ 103(a) as unpatentable Zuehlsdorf, Stelmach, and Landis (US
5,881,745, issued Mar. 16, 1999).
IV. The Examiner rejected claim 14 under 35 U.S.C. § 103(a) as
unpatentable Zuehlsdorf, Stelmach, Landis, and Little (US
2007/0186453, pub. Aug. 16, 2007).
V. The Examiner rejected claim 15 under 35 U.S.C. § 103(a) as
unpatentable Zuehlsdorf, Stelmach, Landis, and Stitt (US
3,861,406, issued Jan. 21, 1975).
VI. The Examiner rejected claim 17 under 35 U.S.C. § 103(a) as
unpatentable Zuehlsdorf, Stelmach, and Little.
VII. The Examiner rejected claims 18, 19, and 22 under 35 U.S.C.
§ 103(a) as unpatentable Zuehlsdorf, Stelmach, and Landis.
VIII. The Examiner rejected claim 21under35 U.S.C. § 103(a) as
unpatentable Zuehlsdorf, Stelmach, and Curtis (US 5,033,488,
issued July 23, 1991).
IX. The Examiner rejected claim 23 under 35 U.S.C. § 103(a) as
unpatentable Zuehlsdorf, Stelmach, Landis, and Stitt.
X. The Examiner rejected claim 24 under 35 U.S.C. § 103(a) as
unpatentable Zuehlsdorf, Stelmach, Landis, and Curtis.
XI. The Examiner rejected claims 20 and 25 under 35 U.S.C.
§ 103(a) as unpatentable Zuehlsdorf, Stelmach, Landis, and
Curtis.
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ANALYSIS
Rejection I
The Examiner determines "[r]egarding claims 17, 20 and 23-25, the
phrase 'optional' renders the claim indefinite because it is unclear whether
the limitation(s) following the phrase are part of the claimed invention."
Final Act. 2 (citing MPEP § 2173.05(d)). The Examiner further explains:
The word "optional" renders the claims indefinite as it is
unclear whether the optional features are a requirement of the
claimed invention or if they are not required. Applicant states
the optional limitation may be included or not included in the
scope of the claim; however, a proper form of claiming an
alternative configuration would be to explicitly state both
alternatives. For example, in the case of claim 17, the flossing
toy either is void of printed matter or has printed matter along a
surface of the flossing toy. However, the term "optional" does
not properly state the alternatives as Appellant intends; instead,
the term leads to confusion over the intended scope of the
claim.
Ans. 21. Thus; the issue is whether the Examiner has properly made a prima
facie showing that "optional" in the context of claims 17, 20, and 23-25
creates confusion.
Appellant alleges the use of the term "optional" does not create
confusion. As support, Appellant points to "the fact that at least 15,013
issued U.S. patents, as of July 21, 2012, contain the word "optional" in at
least one claim." Appeal Br. 8. It is clear, according to Appellant, a skilled
artisan would understand claims 17, 20, and 23-25 as covering both
alternative structures - i.e., a structure with or without "optional printed
material" (claim 17) or a structure with or without "optional additive
materials" (claims 20, 24, and 25). Id. at 9-10.
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When the term "optionally" or "optional" is used, some analysis is
required before concluding whether or not the language is indefinite.
Absent some relevant analysis, the fact that a word search identifies a large
number of patents use the word "optional" in at least one claim has little, if
any, probative value. It has little value because we have no context
surrounding the use of the term "optional" in those claims. As with any
analysis assessing the meaning of claim language, context is an important
consideration. Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005)
(en bane).
In determining whether a claim is definite under 35 U.S.C. § 112,
second paragraph, "[t]he USPTO, in examining an application, is obliged to
test the claims for reasonable precision." In re Packard, 751F.3d1307,
1313 (Fed. Cir. 2014), cert. denied, 2015 WL 2340862 (May 18, 2015).
Importantly, "we employ a lower threshold of ambiguity when reviewing a
pending claim for indefiniteness than those used by post-issuance reviewing
courts." Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BP AI 2008)
(precedential). In particular, we have held that "if a claim is amenable to
two or more plausible claim constructions, the [Examiner] is justified in
requiring the applicant to more precisely define the metes and bounds of the
claimed invention by holding the claim unpatentable under 35 U.S.C. § 112,
second paragraph, as indefinite." Id. The Examiner "has a duty to guard the
public against patents of ambiguous and vague scope" and "is justified in
using a lower threshold ... because the applicant has an opportunity and a
duty to amend the claims during prosecution to more clearly and precisely
define the metes and bounds of the claimed invention and to more clearly
and precisely put the public on notice of the scope of the patent." Id.
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After considering the relevant claims at issue, and the Specification,
we conclude, for the reasons discussed below, the Examiner erroneously
rejected claim 17 as indefinite, but properly rejected claims 20, 24, and 25 as
indefinite. Turning first to dependent claim 17, "optional" appears in the
following context:
17. The flossing toy of claim 1, wherein said flossing toy
consists of said central base portion, said two, spaced floss-
supporting members, said fixed length of floss, said two finger-
engaging members, and optional printed material along a surface
of said flossing toy.
Appeal Br. 48 (Claims App., emphasis added). In this context, "optional" is
modifying "printed material" and plainly characterizing the printed material
as an option of the device covered by claim 1 7. We note the claim uses the
term "optional" in accordance with its ordinary meaning and neither the
Examiner nor Appellant has alleged a special definition is justified.
Moreover, the use of "optional" throughout the Specification is consistent
with its plain and ordinary meaning. See e.g., Spec. 7, 11. 6-12; 9, 11. 22-27;
11, 11. 21-30; 12, 11. 19-30.
We do not agree with the Examiner that Appellant was required to
state explicitly both alternatives. Reciting optional limitations, without
more, does not make a claim indefinite. See Ex parte Cordova, 1988 WL
252403, at *1(BPAI1987) ("[T]he use of the alternative expression
'optionally' in the rejected claims does not obfuscate the subject matter
appellants regard as their invention."); Ex parte Wu, 1989 WL 281900, at * 1
(BPAI 1988) (finding no difficulty in determining the scope of a claim
reciting composition consisting of three components and, optionally, a fourth
component). The question is, in light of the Specification, whether the
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context in which a claim uses the term "optional" would cause reasonable
uncertainty about the scope of what the claim covers.
In claim 17, "optional" immediately precedes the last element, thereby
clearly setting it apart and signaling what follows is an alternative that may
or may not be present in the claimed invention - an alternative a skilled
artisan can readily ascertain. As Appellant asserts, the skilled artisan would
recognize claim 17 covers the described device with both alternatives,
namely with or without the "printed material along a surface of said flossing
toy." Appeal Br. 9. We agree. Therefore, we do not sustain the Examiner's
rejection of claim 17 as indefinite.
The context in which claims 20, 24, and 25 use the term "optional" is
problematic, however. Each of those claims recites "one or more optional
additive materials" and subsequently identifies, directly or indirectly, a list
of potential additive materials. Claim 20 is representative, which states, in
relevant part:
one or more optional additive materials coated onto said flossing
toy or incorporated into said flossing toy, said one or more
optional additive materials being selected from (i) a fluoride-
containing component, (ii) an anti-bacterial component, (iii) a
colorant, (iv) a flavor, (v) a scent, or any combination or (i) to
(v).
Appeal Br. 50 (Claims App.) (emphasis added). In the above context, we
agree with the Examiner it is unclear whether the optional feature is or is not
a requirement of the claimed invention.
Ambiguity exists because there are at least two reasonable
interpretations of "optional" in the above context. "Optional" is reasonably
understood as signaling all of the listed additive materials are an option, any
one of which, or all, may or may not be used. On the other hand, the claim
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element could also be understood as atlirmatively representing at least "one
or more" of the additive materials subsequently listed must be included in
the flossing toy in some way (e.g., "coated on" or "incorporated into"). See
Appeal Br. 50, 51 (Claims App.). "Optional" is reasonably understood as
being descriptive of the fact that, for the at least one additive material used,
any particular one of listed materials may or may not be selected as an
option. The first interpretation allows the option of not including any
additive materials; whereas, the second interpretation requires at least one
additive material, but with the option to choose or not to choose any
particular one of the listed materials. Both are reasonable applications of the
plain and ordinary meaning of "optional" in the context of claim 20, and
thus both are plausible claim constructions. Appellant has not pointed to
anything in the Specification that requires limiting one interpretation over
the other. Therefore, because claim 20 is amenable to two or more plausible
interpretations, we sustain the Examiner's indefiniteness rejection.
Because claims 24 and 25 include the same language and issues
discussed for claim 20, we also sustain the Examiner's indefiniteness
rejections of those claims for the same reasons. Regarding the Examiner's
rejection of claim 23, we note the term "optional" is not present in that
claim. See Appeal Br. 51 (Claims App.). Therefore, we do not sustain the
Examiner's indefiniteness rejection of claim 23.
Rejection II
Central to the Examiner's rejection of claims 1, 2, 4, 5, 7, and 8 is the
determination that it would have been obvious to modify Zuehlsdorf with
Stelmach to have "two finger-engaging members ... [with] an open
expandable loop having a disconnecting slot therein ... [that is] positioned a
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distance from said central base portion and a further distance from said fixed
length of floss, said open loop being sized to adjustably extend over and
grasp a finger positioned therein." See Final Act. 4--5. Zuehlsdorf,
according to the Examiner, "teaches a flossing toy having a loop portion for
accommodating a user's finger, a base connecting the loop portion to two
floss supporting members and a fixed length of floss extending between the
floss supporting members." Id. at 4. Moreover, "the floss is tied to two tie-
posts (38, 39) such that the tension in the floss does not change or remains
substantially constant." Id.
The Examiner finds Zuehlsdorf does not disclose positioning a slot
between the second ends of the two finger-engaging members at a point that
is "a distance from said central base portion and a further distance from said
fixed length of floss." Id. at 4. The Examiner, however, finds Stelmach
teaches a finger mounted dental device with a mounting ring having a slot to
accommodate various size fingers, wherein "the slot is placed in a portion of
the ring opposite the base and a maximum distance from the brush and
floss." Id. The articulated reason for modifying Zuehlsdorf to include the
mounting ring of Stelmach is "to allow the loop or ring portion to
accommodate various finger sizes while maintaining a substantially constant
amount of tension in the floss." Id.
Appellant challenges the Examiner's obviousness conclusion as
"ignor[ing] the principle of operation within the teaching of Zuehlsdorf."
Appeal Br. 13. Appellant argues the operating principles taught by the
Zuehlsdorf dental ring flosser require adjusting the length of floss to create
the desired amount of floss tension and accommodate various finger sizes.
Id. at 11. Quoting In re Ratti, 270 F.2d 810 (CCPA 1959), Appellant refers
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us to the legal principle that, "If the proposed modification or combination
of the prior art would change the principle of operation of the prior art
invention being modified, then the teachings of the references are not
sufficient to render the claims primafacie obvious." Id. at 13. Appellant
alleges that, because the Examiner's modification would result in such a
change to the principle of operation of Zuehlsdorf, the Examiner "fails to
establish a prima facie case of obviousness in view of the proposed
combination of Zuehlsdorf and Stelmach." Id.
Although a close case, Appellant has the better position regarding the
proposed combination of Zuehlsdorf and Stelmach. We find the Fluor Tee,
Corp. v. Kappas, 499 F. App'x 35 (Fed. Cir. 2012), decision to be
instructive. In that case, the primary reference disclosed two different
configurations for gas separation, which depend on the pressure of the feed
gas. Id. at *38-39. One configuration, designed for use with low-pressure
feed gas, did not involve the use of an expander. Id. at *39. The other
configuration, designed for use with high-pressure feed gas, did involve an
expander. Id.at *39--40. The reference further discussed advantages derived
from not using an expander for the low-pressure system. Id. at 41. Fluor
Tee, in that case, argued "it would have been a mere design choice for a
skilled artisan to add an expander when utilizing ... [the] low-pressure
system with a high-pressure feed gas in order to improve the efficiency of
the absorber, since the need to match the feed gas pressure with the absorber
pressure was well-known in the prior art." Id. The Federal Circuit disagreed
because "a skilled artisan desiring to utilize a high-pressure feed gas would
have been directed to follow the alternative systems disclosed in the ...
[prior art] that are specifically designed to accommodate a high-pressure
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feed gas, rather than attempt to modify ... [the prior art's] low-pressure
configuration." Id. at *42.
Similarly, in this case, Zuehlsdorf discloses two different
configurations for a dental ring flosser. One configuration, designed to have
a solid ring without an open section, is "manufactured in exact
predetermined sizes, to fit children as well as adults." Zuehlsdorf 2:30-33,
4:4--16, Fig. 6. "Because the ... endless ring 48 is solid, the size of the
Dental Ring Flosser 10 is not adjustable responsive to tension in the floss
22." Id. The other configuration, designed to have an open section (i.e., a
slot) in the ring, is able to alter the ring's size "by varying the tension in the
floss." Id. 2:29-30, Figs. 3, 7. Zuehlsdorf teaches placing the slot in the
portion of the ring closest to the floss so that the opening changes responsive
to varying tension in the floss. Id. 3:59---62. As a result, "a user can adjust
the size ... by adjusting the tension in the floss 22 [and] pressure between
the user's finger 12 and the radially-inner surface 16 of the open-ended ring
14 can be controlled." Id. 3:62---66. "Accordingly, slippage of the open-
ended ring 14 from the user's finger 12 can be reduced by controlling the
friction created from such pressure." Id. 3: 66-4: 1.
Here, for Zuehlsdorf' s adjustable ring flosser, the principle of
operation is to adjust the length of floss and, thereby, the tension in the floss
controlling the clamping/closing force of the ring on a user's finger. By
adjusting the length of the floss, a user has the ability to control the fit of the
ring flosser to the user's finger. The modification of Zuehlsdorf by
Stelmach proposed by the Examiner runs completely contrary to this
principle of operation. By placing the slot a maximum distance away from
the floss (i.e., the exact opposite end proposed by the claimed invention in
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this case), tensioning of the floss would create an opening/loosening force of
the ring from the user's finger. Moreover, it would eliminate the benefit of
being able to minimize slippage by controlling the friction created by
clamping pressure, which locating the slot in a portion of the ring closest to
the floss provides.
Regarding the solid ring disclosed by Zuehlsdorf, a skilled artisan
desiring to utilize a ring flosser with a slot to accommodate various finger
sizes would have been directed to follow the alternative ring flosser
disclosed in Zuehlsdorf that is specifically designed to accommodate various
finger sizes, rather than attempt to modify Zuehlsdorf s solid ring
configuration. See Fluor Tee, 499 F. App'x 35, at *42. The Examiner has
not articulated a reason with a rational underpinning to support a skilled
artisan doing otherwise. Although a person of ordinary skill is not an
automaton and is presumed to have ordinary creativity, that hypothetical
person is "also presumed to be one who thinks along the line of conventional
wisdom in the art and is not one who undertakes to innovate." Standard Oil
Co. v. American Cyanamid Co., 774 F.2d 448, 454 (Fed. Cir. 1985).
Therefore, we do not sustain the Examiner's rejection of claims 1, 2, 4, 5, 7,
and 8.
Rejection III
Claims 11 and 13 indirectly depend from claim 1. Appeal Br. 4 7
(Claims App). The Examiner's rejection of claims 11and13 as
unpatentable over Zuehlsdorf, Stelmach, and Landis is based on the same
erroneous determination that it would have been obvious to modify
Zuehlsdorf with Stelmach to "have two finger-engaging members ... [with]
an open expandable loop having a disconnecting slot therein ... [that is]
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positioned a distance from said central base portion and a further distance
from said fixed length of floss, said open loop being sized to adjustably
extend over and grasp a finger positioned therein." See Final Act. 6-7. The
Examiner does not cite Landis to cure the deficiencies of claim 1.2 For
similar reasons to those set forth above for independent claim 1 (supra,
Rejection II), we likewise do not sustain the Examiner's rejection of claims
11 and 13 as unpatentable over Zuehlsdorf, Stelmach, and Landis.
Rejection IV
Claim 14 indirectly depends from claim 1. Appeal Br. 48 (Claims
App). The Examiner's rejection of claim 14 as unpatentable over
Zuehlsdorf, Stelmach, Landis, and Little is based on the same erroneous
determination that it would have been obvious to modify Zuehlsdorf with
Stelmach to have "two finger-engaging members ... [with] an open
expandable loop having a disconnecting slot therein ... [that is] positioned a
distance from said central base portion and a further distance from said fixed
length of floss, said open loop being sized to adjustably extend over and
2 For example, the Examiner does not rely on the combination of Landis, as
modified by Stelmach, to demonstrate the obviousness of a flossing tool
with a fixed length floss including, inter alia, a two finger-engaging member
with an open expandable loop having a disconnecting slot therein that is
positioned a distance from said central base portion and a further distance
from said fixed length of floss, said open loop being sized to adjustably
extend over and grasp a finger positioned therein. Our decision herein is a
decision on the merits of the rejections before us and should not be
interpreted to mean the claims at issue in this appeal are patentable, even
over the prior art of record, nor should it preclude the Examiner from
considering whether such a combination of Landis and Stelmach renders
unpatentable the subject matter of any of the claims on appeal. See MPEP
§ 1213.02.
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grasp a finger positioned therein." See Final Act. 4--5, 6-8. The Examiner
does not cite Landis or Little to cure the deficiencies of claim 1. For similar
reasons to those set forth above for independent claim 1 (supra, Rejection
II), we likewise do not sustain the Examiner's rejection of claim 14 as
unpatentable over Zuehlsdorf, Stelmach, Landis, and Little.
Rejection V
Claim 15 indirectly depends from claim 1. Appeal Br. 48 (Claims
App). The Examiner's rejection of claim 15, as unpatentable over
Zuehlsdorf, Stelmach, and Landis is based on the same erroneous
determination that it would have been obvious to modify Zuehlsdorf with
Stelmach to a have "two finger-engaging members ... [with] an open
expandable loop having a disconnecting slot therein ... [that is] positioned a
distance from said central base portion and a further distance from said fixed
length of floss, said open loop being sized to adjustably extend over and
grasp a finger positioned therein." See Final Act. 4--5, 8-9. The Examiner
does not cite Landis to cure the deficiencies of claim 1. For similar reasons
to those set forth above for independent claim 1 (supra, Rejection II), we
likewise do not sustain the Examiner's rejection of claim 15 as unpatentable
over Zuehlsdorf, Stelmach, and Landis.
Rejection VI
Claim 17 depends from claim 1. Appeal Br. 48 (Claims App). The
Examiner's rejection of claim 17 as unpatentable over Zuehlsdorf, Stelmach,
and Little is based on the same erroneous determination that it would have
been obvious to modify Zuehlsdorf with Stelmach to a have "two finger-
engaging members ... [with] an open expandable loop having a
disconnecting slot therein ... [that is] positioned a distance from said central
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base portion and a further distance from said fixed length of floss, said open
loop being sized to adjustably extend over and grasp a finger positioned
therein." See Final Act. 4--5, 9-10. The Examiner does not cite Little to
cure the deficiencies of claim 1. For similar reasons to those set forth above
for independent claim 1 (supra, Rejection II), we likewise do not sustain the
Examiner's rejection of claims 11 and 13 as unpatentable over Zuehlsdorf,
Stelmach, and Little.
Rejection VII
Claim 18 is an independent claim from which claims 19 and 22
depend, either directly or indirectly. Appeal Br. 48--49, 51 (Claims App).
The Examiner's rejection of claims 18, 19, and 22 as unpatentable over
Zuehlsdorf, Stelmach, and Landis is based on the same erroneous
determination that it would have been obvious to modify Zuehlsdorf with
Stelmach to a have "two finger-engaging members ... [with] an open
expandable loop having a disconnecting slot therein ... [that is] positioned a
distance from said central base portion and a further distance from said fixed
length of floss, said open loop being sized to adjustably extend over and
grasp a finger positioned therein." See Final Act. 10-13. The Examiner
does not cite Landis to cure the deficiencies discussed regarding that same
element also found in claim 1. For similar reasons to those set forth above
for independent claim 1 (supra, Rejection II), we likewise do not sustain the
Examiner's rejection of claims 18, 19 and 22 as unpatentable over
Zuehlsdorf, Stelmach, and Landis.
Rejection VIII
Claim 21 indirectly depends from claim 1. Appeal Br. 50-51 (Claims
App). The Examiner's rejection of claim 21 as unpatentable over
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Zuehlsdort~ Stelmach, and Curtis is based on the same erroneous
determination that it would have been obvious to modify Zuehlsdorf with
Stelmach to a have "two finger-engaging members ... [with] an open
expandable loop having a disconnecting slot therein ... [that is] positioned a
distance from said central base portion and a further distance from said fixed
length of floss, said open loop being sized to adjustably extend over and
grasp a finger positioned therein." See Final Act. 4--5, 13-14. The
Examiner does not cite Curtis to cure the deficiencies of claim 1. For similar
reasons to those set forth above for independent claim 1 (supra, Rejection
II), we likewise do not sustain the Examiner's rejection of claim 21 as
unpatentable over Zuehlsdorf, Stelmach, and Curtis.
Rejection IX
Claim 23 depends from claim 18. Appeal Br. 51 (Claims App). The
Examiner's rejection of claim 23 as unpatentable over Zuehlsdorf, Stelmach,
Landis, and Stitt is based on the same erroneous determination that it would
have been obvious to modify Zuehlsdorf with Stelmach to a "have "two
finger-engaging members ... [with] an open expandable loop having a
disconnecting slot therein ... [that is] positioned a distance from said central
base portion and a further distance from said fixed length of floss, said open
loop being sized to adjustably extend over and grasp a finger positioned
therein." See id.; Final Act. 10-11, 14--15. The Examiner does not cite
Landis or Stitt to cure the deficiencies discussed regarding that same element
also found in claim 1. For similar reasons to those set forth above for
independent claim 1 (supra, Rejection II), we likewise do not sustain the
Examiner's rejection of claim 23 as unpatentable over Zuehlsdorf, Stelmach,
Landis, and Stitt.
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RejectionX
Claim 24 indirectly depends from claim 18. Appeal Br. 51 (Claims
App). The Examiner's rejection of claim 24 as unpatentable over
Zuehlsdorf, Stelmach, Landis, and Curtis is based on the same erroneous
determination that it would have been obvious to modify Zuehlsdorf with
Stelmach to have "two finger-engaging members ... [with] an open
expandable loop having a disconnecting slot therein [that is] positioned a
distance from said central base portion and a further distance from said fixed
length of floss, said open loop being sized to adjustably extend over and
grasp a finger positioned therein." See Final Act. 10-11; 14--15. The
Examiner does not cite Landis or Curtis to cure the deficiencies discussed
regarding that same element also found in claim 1. For similar reasons to
those set forth above for independent claim 1 (supra, Rejection II), we
likewise do not sustain the Examiner's rejection of claim 24 as unpatentable
over Zuehlsdorf, Stelmach, Landis, and Curtis.
Rejection XI
Claim 20 is an independent claim, from which claim 25 depends.
Appeal Br. 49-51 (Claims App). The Examiner's rejection of claims 20 and
25 as unpatentable over Zuehlsdorf, Stelmach, Landis, and Curtis is based
on the same erroneous determination that it would have been obvious to
modify Zuehlsdorf with Stelmach to have "two finger-engaging members
... [with] an open expandable loop having a disconnecting slot therein ...
[that is] positioned a distance from said central base portion and a further
distance from said fixed length of floss, said open loop being sized to
adjustably extend over and grasp a finger positioned therein." See Final Act.
16-20. The Examiner does not cite Landis or Curtis to cure the deficiencies
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Appeal2014-000867
Application 12/788,807
discussed regarding that same element also found in claim 1. For similar
reasons to those set forth above for independent claim 1 (supra, Rejection
II), we likewise do not sustain the Examiner's rejection of claims 20 and 25
as unpatentable over Zuehlsdorf, Stelmach, Landis, and Curtis.
SUMMARY
The Examiner's decision to reject claims 17 and 23 as indefinite is
reversed.
The Examiner's decision to reject claims 20, 24, and 25 as indefinite
is affirmed.
The Examiner's decision to reject claims 1, 2, 4--5, 7-8, 11, 13-15,
and 17-25 for obviousness is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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