Ex Parte Stewart et al

Patent Trial and Appeal Board

Jul 12, 2018

14016552 (P.T.A.B. Jul. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/016,552 09/03/2013
92983 7590 07/16/2018
Jason P. Webb
1802 W. South Jordan Parkway Suite 200
South Jordan, UT 84095
FIRST NAMED INVENTOR
Jeromi Stewart
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.
4644.2.lDIV 8217
EXAMINER
GILL, JENNIFER FRANCES
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
07/16/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
dokippearson@gmail.com
mariella@pearsonbutler.com
j asonw@pearsonbutler.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEROMI STEWART and KEITH BORNSTEIN ALLEN
Appeal2017-005335
Application 14/016,552
Technology Center 3700
Before JEFFREY N. FREDMAN, RYAN H. FLAX, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal 1 under 35 U.S.C. § 134 involving claims to a
flossing tool for dental hygiene. The Examiner rejected the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
Statement of the Case
Background
"Dental floss is either a bundle of thin nylon filaments or a plastic
(Teflon or polyethylene) ribbon used to remove food and dental plaque from
teeth. The floss is gently inserted between the teeth and scraped along the
1 Appellants identify the Real Party in Interest as the inventors, Jeromi
Stewart and Keith Bornstein Allen (see App. Br. l; the pages of Appellants'
Brief lacks page numbers. We number the pages sequentially starting with
the page after the table of contents stating "I. REAL PAR TY IN
INTEREST" as page 1).
Appeal2017-005335
Application 14/016,552
teeth sides, especially close to the gums" (Spec. 2:16-19). Tools "have been
produced to hold the floss. These may be attached to or separate from a
floss dispenser" (Spec. 2:21-22).
The Claims
Claims 9, 11, and 12 are on appeal. Claim 9 is representative and
reads as follows:
9. A flossing tool, comprising
a) a pair of floss handles disposed on a cradle, each including:
al) a gripping region having a cylindrical body having a
front end and a back end opposite thereto, and
a2) a release mechanism including a shaft disposed
within the cylindrical body, extending through an entirety of the
gripping region thereof, and configured to selectably disengage
the floss handle from the coupling member; and
b) a floss cartridge, including:
b 1) a length of floss; and
b2) a pair of coupling members, selectably coupleable to
the pair of floss handles, each including a coupling structure
and each is coupled to opposite ends of the length of floss;
wherein the release mechanism is configured to selectably
disengage the floss handle from the coupling member; and
wherein the release mechanism includes a button functionally
coupled to the shaft and extending backwardly from the back
end of the cylindrical body of each floss handle such that a user
may grasp the floss handles together and strike the back end of
each of the floss handles against a surface, thereby depressing
the button and thus ejecting the floss cartridge from the floss
handles.
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The Issues 2
A. The Examiner rejected claims 9, 11, and 12 under 35 U.S.C. § I03(a)
as obvious over Chung, 3 Stile,4 and Treacy5 (Non-Final Act. 11-14).
B. The Examiner rejected claims 9, 11, and 12 under 35 U.S.C. § I03(a)
as obvious over Kosteniuk, 6 Stile, and Treacy (Non-Final Act. 14--17).
DISCUSSION
Because the same issues are dispositive for both rejections, we will
consider them together.
The Examiner finds that either Chung or Kosteniuk teach "a flossing
tool comprising a pair of floss handles (20) each including a cylindrical body
and a release mechanism" (Non-Final Act. 11; cf Id. at 14). The Examiner
acknowledges that neither Chung nor Kosteniuk teach "the pair of floss
handles being disposed on a cradle" (Id. at 11; cf Id. at 15), nor does either
reference teach a "release mechanism including a shaft disposed within the
cylindrical body and extending through an entirety of the gripping region
and configured to selectively disengage the floss handle from the coupling
member when actuated via a button extending backward from the back end
of the body of the floss handles" (Id. at 12; cf Id. at 15-16).
The Examiner finds it would have been obvious to include "a cradle
and panels which form a housing in view of Stiles in order to keep the
replacement floss lengths organized and clean" (Non-Final Act. 12; cf Id. at
2 We note that the Examiner withdrew rejections under 35 U.S.C. § 112(b)/second
paragraph, as well as several 35 U.S.C. § I03(a) rejections (see Ans. 8-9).
3 Chung, US 2011/0155168 Al, published June 30, 2011.
4 Stile, US 5,067,503, issued Nov. 26, 1991.
5 Treacy et al., US 2004/0129296 Al, published July 8, 2004.
6 Kosteniuk, CA 2,356,225 Al, published Feb. 28, 2003.
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Application 14/016,552
15) and to include "floss handles with a release mechanism as disclosed by
Treacy in order to make removal of the cleaning heads or floss lengths from
the handles more sanitary and more convenient (Id. at 13; cf Id. at 16).
The issue presented is: Does the evidence of record support the
Examiner's conclusion that the prior art renders the claims obvious?
Findings of Fact
1. Figure 1 of Chung, annotated, is reproduced below:
--- Uk,--,,
length
of fioss
floss
cartridge
handles 20
mechanism .. ~ .
. r- ,:;.,:;. ··~ /·,..,,.....__....._ _ ........
. , /
/
Fig. l
Figure 1 of Chung depicts "a dental floss holding structure, including a
dental floss 10 and two holding bodies 20, wherein a base 11 is respectively
mounted on two ends of the dental floss 10" (Chung ,r 18; cf Kosteniuk, fig.
1 ).
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2. Chung teaches:
when the first coupling portion 12 of the base 11 is inserted into
the second coupling portion 21 of the holding body 20, the
protrusion of the first positioning portion 13 is inserted into the
indentation 221 of the second positioning portion 22 and further
engaged with the locking block 222 of the second positioning
portion 22 to form a stable fixed relationship.
(Chung ,r 19).
3. Chung teaches:
After using, the dental floss together with the bases can be
detached from the holding bodies, so that not only the second
coupling portions of the holding bodies can be cleaned for
further assuring the hygiene of the mouth, but also the holding
bodies can be reused to achieve the environmental protection.
(Chung ,r 12).
4. Chung teaches "the user's fingers can be kept out of the mouth,
thereby avoiding the entrance of the fingers into the mouth, and thus,
preventing from the invasion of the dirt and bacteria, so as to maintain the
oral hygiene" (Chung ,r 10).
5. Stiles teaches "a flosser or flossing hand tool 11, a housing 12
with a plurality of cams or angled guides 13 and a slidable floss card 14 with
a plurality of floss sections 15" (Stile 3 :23-26).
6. Treacy teaches "a cleaning apparatus including a body, an
actuator operably coupled to the body, and a flushable cleaning head
detachably coupled to the body and removable from the body in response to
actuation of the actuator" (Treacy ,r 5).
7. Treacy teaches "the cleaning apparatus, shown as executed as a
toilet brush" (Treacy ,r 32).
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8. Figure 5 of Treacy is reproduced below:
Fig. 5
Figure 5 depicts an embodiment of the cleaning device where
The cleaning head holder 40 features a movable connection
element 11 split lengthwise at the end of the cleaning head side
in the interior of the handle 5' that interlocks with a flexible
extension 4a of the push button 4 and which transfers
translation motions of the push button 4 to the sleeve-shaped
ejection mechanism 6 via a bolt 9 that can slide in oblong slots
Sa of the handle 5'. The ejection mechanism 6 features a flange
6a that serves as a stopper for the protective cover of the
cleaning head. The protective paper cover is pushed back to the
stopper. The spring 12 resets the push button 4 to its starting
position.
(Treacy ,r 36).
9. Treacy teaches "handle 50 enjoys the advantage of retaining a
biodegradable cleaning head 58 while providing for the disposal thereof in a
simple to use method and apparatus. Furthermore, use of the handle 50
eliminates the need to touch or store the cleaning head 58 after becoming
contaminated with harmful germs and the like" (Treacy ,r 60).
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Principles of Law
"In determining whether the subject matter of a patent claim is
obvious, neither the particular motivation nor the avowed purpose of the
patentee controls. What matters is the objective reach of the claim. If the
claim extends to what is obvious, it is invalid under§ 103." KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 419 (2007).
Analysis
We adopt the Examiner's findings of fact and reasoning regarding the
scope and content of the prior art (Non-Final Act. 11-17; FF 1-9) and agree
that the claims are rendered obvious by Chung or Kosteniuk combined with
Stile and Treacy. We address Appellants' arguments below.
Appellants contend "the combination[ s] of the cited art of the Office
Action with Treacy (USP 20040129296) are inappropriate combinations, as
such devices are toilet cleaning tools, and are therefore not within the field
of Appellants['] endeavor and not reasonably pertinent to that field" (App.
Br. 9). Appellants contend "[t]oilet cleaning tools are not within this same
field of endeavor ... to say that cleaning a person's mouth is the same
endeavor as cleaning a toilet is ridiculous, just as it would be ridiculous to
say that a dentist or dental hygienist is the same as a janitor" (App. Br. 10).
Appellants contend
the structures described in Treacy relate to ways to disengage a
cleaning head without having to touch the same, specifically
because of sanitation concerns related to a great desire that
people have to not accidentally touch feces. Yet, there is no
feces in the mouth and one would not combine a tool designed
to protect from feces with a tool designed to clean the mouth.
(App. Br. 12).
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While we agree with Appellants that toilet cleaning tools are not in the
same field of endeavor as tooth cleaning tools, we disagree with Appellants'
framing of the problem with which the inventor was involved. The list of
disadvantages identified in the Specification (see Spec. 5:12-19) do not
relate to the release mechanism, but rather to other design elements. To the
extent that the Specification discusses the release mechanism, the
Specification simply states "[ w ]here desired, the user may push a release
button or otherwise actively disengage the floss cartridge from the floss
handles and may discard the floss cartridge or return it to the cradle" (Spec.
15: 10-12). Similarly, the Specification explains that the "pair of floss
handles 16 include a release mechanism 36 disposed within the cylindrical
body 32 and configured to selectably disengage the floss handle 16 from the
coupling member 20" (Spec. 16: 12-14).
Thus, the problem with which the inventor was concerned is properly
framed as being the need to release used dental floss from the tooth cleaning
tool, a problem shared by Chung who teaches that used "dental floss
together with the bases can be detached from the holding bodies" (FF 3).
In ICON, the Federal Circuit explained that
"A reference is reasonably pertinent if, even though it may be in
a different field from that of the inventor's endeavor, it is one
which, because of the matter with which it deals, logically
would have commended itself to an inventor's attention in
considering his problem." In re Clay, 966 F.2d 656, 659
(Fed.Cir.1992). In other words, "familiar items may have
obvious uses beyond their primary purposes." KSR Int 'l Co. v.
Teleflex, Inc., 550 U.S. 398, 127 S.Ct. 1727, 1742 ... (2007).
We therefore have concluded, for example, that an inventor
considering a hinge and latch mechanism for portable
computers would naturally look to references employing other
"housings, hinges, latches, springs, etc.," which in that case
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came from areas such as "a desktop telephone directory, a piano
lid, a kitchen cabinet, a washing machine cabinet, a wooden
furniture cabinet, or a two-part housing for storing audio
cassettes." Paulsen, 30 F.3d at 1481-82.
In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379-1380 (Fed. Cir.
2007). Just as in ICON, where different types of hinges and latches from
entirely different types of devices would have been considered by the skilled
artisan, we agree with the Examiner that here the ordinary artisan selecting
release mechanisms for tooth cleaning devices would have looked to release
mechanisms used in other cleaning devices, including the release mechanism
used by Treacy in the toilet cleaning device.
We agree with the Examiner that the ordinary artisan in the tooth
cleaning arts prefers that "the user's fingers ... be kept out of the mouth,
thereby avoiding the entrance of the fingers into the mouth, and thus,
preventing from the invasion of the dirt and bacteria, so as to maintain the
oral hygiene" (FF 4; cf Ans. 14). Thus, when looking for release
mechanisms as suggested by Chung (FF 3), the ordinary artisan would have
reasonably selected mechanisms that would allow remote release such as
Treacy's teaching that the "use of the handle 50 eliminates the need to touch
or store the cleaning head 58 after becoming contaminated with harmful
germs and the like" (FF 9). Therefore, Treacy is pertinent to the problem of
releasing used, germ contaminated cleaning heads, a concern suggested by
Chung (FF 4) and consistent with the Specification (Spec. 5:3 "without
requiring the user to insert the user's fingers into the person's mouth.")
We recognize Appellants' point that "sanitary concerns are generally
not enough to stop many people from putting their fingers in their mouth ...
many patents within the dental hygiene category that show people putting
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fingers in their mouth" (App. Br. 14), but find it unpersuasive because
Chung directly suggests that placement of fingers in the mouth is
undesirable (FF 4 ). Thus, even if some members of the general public are
comfortable with potentially unhygienic practices, Chung provides a
reasoned basis for "assuring the hygiene of the mouth" (FF 3) by avoiding
placement of the fingers into the mouth (FF 4), and therefore provides a
reason to incorporate a remote release mechanism as disclosed in Treacy (FF
8-9).
Appellants contend "the references teach away from the combination"
(App. Br. 15). Appellants contend the structures of Chung and Stiles
"implicitly include a fearlessness and acceptance of touching the inside of
the mouth with ones fingers and hands" (Id.). Appellants contend "Chung
accepts without any concern, that during operation the fingers will be close
to the mouth and close to the floss and that to disengage the floss, the fingers
will necessarily be close to or touching the floss" (Id. at 16). Appellants
contend that in Stile, "the floss tool be manipulated, with the fingers near the
head of the tool, in order to slip the floss under the U-shaped portion and
then lift upward to dislodge the floss" (Id. at 18).
We are not persuaded. A teaching away requires a reference to
actually criticize, discredit, or otherwise discourage the claimed solution.
See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) ("The prior art's
mere disclosure of more than one alternative does not constitute a teaching
away from any of these alternatives because such disclosure does not
criticize, discredit, or otherwise discourage the solution claimed").
Appellants do not identify any teachings in Chung, Stile, Treacy, or
Kosteniuk that criticize, discourage or otherwise discredit modification of
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tools to avoid contact with the mouth or other germ laden areas. Indeed, to
the extent that the references discuss placing fingers in the mouth or other
germ laden areas, the references support the reasoning behind the
Examiner's rejection (FF 3--4, 9). Disclosed examples and preferred
embodiments do not constitute a teaching away from a broader disclosure or
non-preferred embodiments. In re Susi, 440 F.2d 442,446 n.3 (CCPA
1971).
Appellants contend
there is no indication that combining the structures of Treacy
would be more convenient. In particular, when using flossing
tools, the fingers are close to the tips and thus it is convenient to
have the release structures be close to the tips, as they already
are in each of Chung, Stile and Kosteniuk. Accordingly,
Appellant argues that it would be less convenient to have to
move ones hands to a new position to disconnect the floss heads
of the present application as compared to the structures in the
cited art.
(App. Br. 20).
We find this argument unpersuasive because "the motivation in the
prior art to combine the references does not have to be identical to that of the
applicant to establish obviousness." In re Kemps, 97 F.3d 1427, 1430 (Fed.
Cir. 1996). In this case, the Examiner provides a reason to combine Treacy
with Chung and Stiles, specifically "to make removal of the cleaning heads
or floss lengths from the handles more sanitary and more convenient" (Non-
Final Act. 13). This reason is supported by Chung's desire that a "user's
fingers ... be kept out of the mouth, thereby avoiding the entrance of the
fingers into the mouth, and thus, preventing from the invasion of the dirt and
bacteria, so as to maintain the oral hygiene" (FF 3) as well as Treacy's
suggestion that the "use of the handle 50 eliminates the need to touch or
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store the cleaning head 58 after becoming contaminated with harmful germs
and the like" (FF 9). Thus, the issue is not whether the use of a handle
would have been more convenient, but rather whether it would have been
more sanitary and hygienic as desired by both Chung and Treacy. The
evidence of record supports the Examiner's position that the ordinary artisan
would have had reason to improve Chung's dental flossing device with a
remote handle to improve hygiene (FF 3, 4, 9).
Conclusion of Law
The evidence of record supports the Examiner's conclusion that the
prior art renders the claims obvious.
SUMMARY
In summary, we affirm the rejection of claims 9, 11, and 12 under 35
U.S.C. § 103(a) as obvious over Chung, Stile, and Treacy.
We affirm the rejection of claims 9, 11, and 12 under 35 U.S.C.
§ 103(a) as obvious over Kosteniuk, Stile, and Treacy.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.
AFFIRMED
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