Ex Parte Okawa et al

Board of Patent Appeals and Interferences

Jul 23, 2012

10582302 (B.P.A.I. Jul. 23, 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.
10/582,302 06/08/2006 Shinichi Okawa 57800/A400 4987
23363 7590 07/24/2012
CHRISTIE, PARKER & HALE, LLP
PO BOX 29001
Glendale, CA 91209-9001
EXAMINER
SINGH, SUNIL K
ART UNIT PAPER NUMBER
3732
MAIL DATE DELIVERY MODE
07/24/2012 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 SHINICHI OKAWA, KENJI KINO, and KAZUNARI MATOBA
__________

Appeal 2011-005695
Application 10/582,302
Technology Center 3700
__________

Before TONI R. SCHEINER, MELANIE L. McCOLLUM, and ERICA A.
FRANKLIN, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a dental
treatment apparatus. The Examiner has rejected the claims as anticipated or
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
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Application 10/582,302

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STATEMENT OF THE CASE
Claims 42-61, 64-75, and 77-80 are on appeal (App. Br. 1).1 We will
focus on claim 42, the only independent claim on appeal, which reads as
follows:
42. A dental treatment apparatus comprising:
an instrument having a forward end equipped with a treatment tool for
treating a lesion in an oral cavity; and
a light radiating unit having a first light source for emitting excitation
light and a second light source for emitting illumination light into said oral
cavity, said first and second light sources being disposed at or near said
forward end, wherein
a wavelength of said excitation light is selected from within a near
ultraviolet region of 40550 nm, a red region of 700100 nm, an infrared
region, or a near infrared region.
Claims 42-60 and 77-80 stand rejected under 35 U.S.C. § 102(e) as
anticipated by Katsuda et al. (US 2005/0003323 A1, Jan. 6, 2005) (Ans. 3).
Claims 61 and 64-75 stand rejected under 35 U.S.C. § 103(a) as
obvious over Katsuda in view of Nakanishi (US 6,607,384 B1, Aug. 19,
2003) (Ans. 4).
The Examiner finds:
Katsuda discloses a dental device that includes: an
instrument (A) having a forward end (4) that is equipped with a
diagnostic/treatment tool that is capable of being used for
treating/diagnosing a lesion in an oral cavity; a light radiating
unit (1) having a light source (2a) for emitting excitation light
and a light source (2b) capable of emitting illumination light
[0169]; wherein the wavelength of excitation light is selected
from 405 +/- 50 nm. . . . The examiner notes that although
Katsuda does not specifically state that the forward end of the

1 Claims 62, 63, and 76 are also pending but have been withdrawn from
consideration (App. Br. 1).
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dental device is a diagnostic or treatment tool, this is a
functional limitation. It is the examiner’s position that the tip
of the device of Katsuda can be used as a scaler, a dental
treatment tool typically used in dentistry to scrape off plaque
and tartar. It is well known in the art to make dental scalers of
plastic and Katsuda teaches that the element (12) located in the
tip of the dental device can be made of plastic. As the forward
end of dental device of Katsuda is made of a material durable
enough to scrape off dental tartar from an oral cavity, it is
capable of use as a dental treatment tool.
(Ans. 3-4.)
Appellants argue that “Katsuda does not teach ‘an instrument ...
equipped with a treatment tool for treating a lesion in an oral cavity’” (App.
Br. 3).
FINDINGS OF FACT
1. Katsuda discloses:
The diagnostic imaging apparatus A as shown in FIG. 1-FIG. 5
is comprised of a main body 1 like a dental handpiece freely
supported with hands and fingers and a forward portion 4
provided with a luminous means 2 for irradiating at least one of
lights among exciting light, infrared light, ultraviolet light, and
white light (light emitting member 2a, 2b, 2c) and with an
imaging means 3 comprised of CCD (charge coupled
device) 3a.
(Katsuda ¶ [0088].)
2. Katsuda also discloses: “The main body 1 is comprised of a
casing 5 made of synthetic resin formed by three members, an upper case 5a,
a lower case 5b and a forward case 5c. . . . The forward case 5c . . . has a
light receiving filter 12 for the imaging means 3.” (Id. at ¶ [0089].)
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3. In addition, Katsuda discloses:
The luminous means 2 is comprised of six LEDs, namely two
pieces of three kinds of LEDs (light emitting diode) as light
emitting members, white LED (light emitting diode) 2a,
infrared LED (light emitting diode emitting infrared light) 2b
and ultraviolet LED (light emitting diode emitting ultraviolet
light). . . . Hereby, the light from the luminous means 2 is
directly irradiated on the tooth.
(Id. at ¶ [0094].)
4. Katsuda also discloses that the “light receiving filter 12 is fitted
in the forward case 5c as shown in FIG. 2-FIG. 4 and is constructed like a
circular plate so as to cover under the CCD 3a and six LEDs 2a-2c” (id. at
¶ [0100]).
5. In addition, Katsuda discloses:
The light receiving filter 12 transmits only the light with
specific wavelength to the light receiving member of the
imaging means 3. The circumference corresponding to the
luminous means 2 may be constructed so as to pass the light
from the luminous means 2 as it is, or the circumference may be
constructed as a radiation filter for irradiating the diagnostic
object by transmitting the light with specific wavelength among
the light emitted from the luminous means 2.
(Id. at ¶ [0101].)
6. Katsuda also discloses that the “light receiving filter 12 [is]
made of glass or plastic” (id. at ¶ [0133]).
ANALYSIS
The Examiner finds that Katsuda’s light receiving filter 12 “can be
used as a scaler, a dental treatment tool typically used in dentistry to scrape
off plaque and tartar” (Ans. 4). However, we do not agree that the Examiner
has provided sufficient evidence that Katsuda’s light receiving filter 12
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could necessarily be used as a scaler or, even if it could to some degree
scrape off plaque and tartar, that one of ordinary skill in the art would
consider it a scaler. Thus, we agree with Appellants that the Examiner has
not set forth a prima facie case that Katsuda teaches “an instrument having a
forward end equipped with a treatment tool for treating a lesion in an oral
cavity,” as recited in claim 42. We therefore reverse the anticipation
rejection.
In the obviousness rejection, the Examiner relies on Nakanishi for
teaching “a detachable adaptor . . . that includes various LEDs” (Ans. 5).
However, the Examiner does not explain why it would have been obvious to
include a tool for treating a lesion in an oral cavity. We therefore also
reverse the obviousness rejection.

REVERSED

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