KALTENBACH & VOIGT GMBH

Patent Trials and Appeals Board

Mar 14, 2022

2021004046 (P.T.A.B. Mar. 14, 2022)

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. 15/424,368 02/03/2017 Thomas Cla¿en 208572-9006-US01 3460 129916 7590 03/14/2022 Michael Best & Friedrich LLP (DITC) 790 N WATER ST SUITE 2500 MILWAUKEE, WI 53202 EXAMINER APONTE, MIRAYDA ARLENE ART UNIT PAPER NUMBER 3772 NOTIFICATION DATE DELIVERY MODE 03/14/2022 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): mkeipdocket@michaelbest.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THOMAS CLAßN, MARKUS HAARMANN, and BERNHARD KUHN Appeal 2021-004046 Application 15/424,368 Technology Center 3700 Before BRETT C. MARTIN, JEREMY M. PLENZLER, and CARL M. DEFRANCO, Administrative Patent Judges. PLENZLER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-3, 5, 7, 12-18, and 22-28. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Kaltenbach & Voigt GmbH. Appeal Br. 2. Appeal 2021-004046 Application 15/424,368 2 CLAIMED SUBJECT MATTER The claims relate to a dental tool. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A dental tool comprising: a shank region configured to be coupled to a dental handpiece, the shank region having a first end and second, opposite end along a longitudinal axis, wherein the first end includes a carrier region having an angular, polygonal, outer periphery, and the second end includes spring arms separated by an axially-extending slot, wherein each spring arm includes a latching projection extending radially outwardly from an end of the spring arm, wherein the latching projections are configured to extend and latch into the dental handpiece to hold the dental tool axially in place, and wherein the carrier region is configured to engage a drive component of the dental handpiece and is configured for form-lock coupling to the drive component such that the dental tool is configured to be rotated about the longitudinal axis at the carrier region via the drive component; and a work region extending axially away from the first end of the shank region such that the carrier region is disposed axially between the spring arms and the work region, wherein the work region is configured to be rotated via the drive component; wherein the shank region is comprised of a plastic material, and is configured to be latched into a head region of the dental handpiece with the latching projections, and insertable and removable from the head region of the dental handpiece without actuation of any element on the dental handpiece. Appeal 2021-004046 Application 15/424,368 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Falcon US 5,040,978 Aug. 20, 1991 Henrikson US 5,911,577 June 15, 1999 Rehkemper US 7,270,129 B1 Sept. 18, 2007 Pernot US 8,118,594 B2 Feb. 21, 2012 Becker EP 0031409 A2 July 8, 1981 REJECTIONS Claim 1, 2, 5, 7, 12-17, and 22-28 are rejected under 35 U.S.C. § 103 as being unpatentable over Falcon, Henrikson, and Rehkemper. Claims 3 is rejected under 35 U.S.C. § 103 as being unpatentable over Falcon, Henrikson, Rehkemper, and Becker. Claim 18 is rejected under 35 U.S.C. § 103 as being unpatentable over Falcon, Henrikson, Rehkemper, and Pernot. OPINION Each of the Examiner’s rejections relies on a proposed modification to Falcon’s teachings “to modify the shank region . . . with the insertable and removable shank region of Rehkemper, in order to be able to remove the dental tool and replace it with another dental tool if needed.” Final Act. 7. Appellant contends that Falcon requires permanent mounting. See Appeal Br. 7 (citing Falcon 1:55-66). Appellant contends that “[o]ne of skill in the art would therefore have no motivation to modify the arrangement of Falcon based on the disclosure of Rehkemper, to provide for a removable shank region as the Office suggests” because “[d]oing so would clearly be contrary to the explicit intent of Falcon.” Appeal Br. 11. Appeal 2021-004046 Application 15/424,368 4 Appellant additionally contends that “the Examiner’s use of these various references amounts to a hindsight reconstruction of the claim[s].” Id. at 12. Appellant has the better position. Falcon explains that its “invention relates to dental prophylaxis angles and more specifically to those to be thrown away after each patient to avoid cross infection.” Falcon 1:5-7. According to Falcon, “[t]he gearing arrangement [in these devices] is such that it tends to eject the prophy cup rotating member from the housing because the gear on the drive shaft engages the prophy cup rotating member driven gear from above” and, “[t]hus, the reliability of the securement means for the prophy cup rotating member is an important aspect of the present invention.” Id. at 1:48-54. Falcon expressly states that “[a]n aspect of the invention is the permanency of the securement of the prophy cup rotating member in position by shaping the snap stud and the snap receiver such that once the snap connection is made it is permanent” for the “advantage [of] patient safety, preventing the prophy cup rotating member from becoming dislodged in a patient's mouth during a prophy treatment.”2 Id. at 1:55-58. The Examiner has not established sufficiently that one skilled in the art would have modified Falcon’s teachings to make its prophy cup removable “in order to be able to remove the dental tool and replace it with another dental tool if needed” (see Final Act. 6) because the Examiner’s reasoning goes against the express teachings of Falcon noted above. Moreover, it is unclear why such a replacement is necessary for a disposable instrument. See, e.g., Falcon 1:5-7. 2 Falcon’s prophy cup 15 includes the structure identified by the Examiner as corresponding to the shank recited in the claims as being removable. See Final Act. 3-4. Appeal 2021-004046 Application 15/424,368 5 For at least these reasons, we do not sustain the Examiner’s decision to reject claims 1-3, 5, 7, 12-18, and 22-28. CONCLUSION The Examiner’s rejections are reversed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 5, 7, 12-17, 22- 28 103 Falcon, Henrikson, Rehkemper 1, 2, 5, 7, 12-17, 22- 28 3 103 Falcon, Henrikson, Rehkemper, Becker 3 18 103 Falcon, Henrikson, Rehkemper, Pernot 18 Overall Outcome 1-3, 5, 7, 12-18, 22- 28 REVERSED