2020002433 (P.T.A.B. Nov. 3, 2020)

Sharon McCarthy

Patent Trials and Appeals BoardNov 3, 2020

2020002433 (P.T.A.B. Nov. 3, 2020)

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. 15/167,651 05/27/2016 Sharon M.E. McCarthy 724223 1016 23460 7590 11/03/2020 LEYDIG VOIT & MAYER, LTD TWO PRUDENTIAL PLAZA, SUITE 4900 180 NORTH STETSON AVENUE CHICAGO, IL 60601-6731 EXAMINER LEWIS, RALPH A ART UNIT PAPER NUMBER 3772 NOTIFICATION DATE DELIVERY MODE 11/03/2020 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): Chgpatent@leydig.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SHARON M.E. McCARTHY ____________ Appeal 2020-002433 Application 15/167,651 Technology Center 3700 ____________ Before BIBHU R. MOHANTY, MICHAEL C. ASTORINO, and BRADLEY B. BAYAT, Administrative Patent Judges. MOHANTY, 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 1–10 and 12–21. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF THE DECISION 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 Sharon M.E. McCarthy and Robert E. McCarthy. (Appeal Br. 1). Appeal 2020-002433 Application 15/167,651 2 CLAIMED SUBJECT MATTER The Appellant’s claimed invention relates to an apparatus for removing a dental appliance (Spec. para. 1). Claim 1, reproduced below, is representative of the subject matter on appeal. 1. An apparatus for removing a dental appliance comprising: a body, the body including a first perimeter defining a first face having a concave surface and a second perimeter defining a second face having a convex surface, the first face in opposing relationship to the second face; a pry lip, the pry lip extending from one of the first and second perimeters, the pry lip circumscribing the one of the first and second perimeters from which the pry lip extends, the pry lip including an inclined surface and a terminal ridge surface, the inclined surface disposed between the terminal ridge surface and the one of the first and second perimeters from which the pry lip extends, the inclined surface and the terminal ridge surface defining an oblique bevel angle therebetween. THE REJECTIONS 1. Claims 1–3, 8–10, 12–14, 16, 17, 20, and 21 are rejected under 35 U.S.C. § 102(b) as anticipated by Nickolds (US 305,839; iss. Sept. 30, 1884). 2. Claims 4–7, 14, 15, and 17–19 are rejected under 35 U.S.C. § 103(a) as unpatentable over Nickolds. Appeal 2020-002433 Application 15/167,651 3 FINDINGS OF FACT We have determined that the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence.2 ANALYSIS The Appellant argues that the rejection of claim 1 is improper because the cited prior art fails to disclose the claim limitation for: a pry lip, the pry lip extending from one of the first and second perimeters, the pry lip circumscribing the one of the first and second perimeters from which the pry lip extends. (Appeal Br. 3, emphasis added). In contrast, the Examiner has determined that the rejection of record is proper (Final Act. 2–6; Ans. 3–8). We agree with the Appellant. The Examiner has determined that the Nickolds reference discloses a pry lip “circumscribing” one of the first and second perimeters from which the pry lip extends (Final Act. 2, Ans. 3). The Examiner has determined that the Specification under a broadest reasonable interpretation does not require that the claimed pry lips “circumscribing” to completely surround the perimeter as by a closed boundary (Ans. 6–8). In support of this position the Examiner provided a dictionary definition at page 6 of the Answer and citations to the term “circumscribes” used in other art (Ans. 6). We first construe the meaning of the word “circumscribing” in the claims. We determine the scope of the claims in patent applications “not 2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). Appeal 2020-002433 Application 15/167,651 4 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. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (quoting In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)). Here, the Specification at paragraph 54 states that pry lip 54 can circumscribe the perimeter and cites to Figure 1 as disclosing a pry lip 54 circumscribing the perimeter 81. The Specification at paragraph 77 provides a similar example for the lip 154 “circumscribing” the body 152 in Figures 8 and 9. The Specification at paragraph 81 provides a similar example for the lip 154 “circumscribing” the body 185 in Figure 15. The Specification at paragraph 104 provides a similar example for the lip 254 “circumscribing” the body 252 in Figures 16 and 17. The Specification at paragraph 60 also cites to Figure 3 as disclosing a pry lip 54 that extends continuously around the perimeter. Here, these above citations in the Specification for the “circumscribing” pry lip all cite to Figures in which the pry lip extends continuously around. Paragraph 60 also states that other embodiments can have the pry lip portions be discontinuous. Thus, the Specification at paragraph 60 makes a distinction between pry lips that are “continuously around the first perimeter” and those that are “discontinuous.” Here, one of ordinary skill in the art would have interpreted the term “circumscribing” in light of the Specification to have the meaning similar to “draw a line around” as listed in the Dictionary definition provided by the Examiner at definition 2a. See Ans. 6. Here, the reference of Nickolds does not disclose a pry lip that “circumscribes” the perimeter using the term “circumscribing” as Appeal 2020-002433 Application 15/167,651 5 understood in light of the Specification. Accordingly, the rejection of independent claim 1 and the remaining dependent claims under the rejection under 35 U.S.C. § 102(b) as anticipated by Nickolds is not sustained. The rejection of the claims under 35 U.S.C. § 103(a) as unpatentable over Nickolds fails for the same reasons as given above. Accordingly, the rejection under 35 U.S.C. § 103 is not sustained as well. CONCLUSION OF LAW We conclude that Appellant has shown that the Examiner erred in rejecting claims 1–3, 8–10, 12–14, 16, 17, 20, and 21 under 35 U.S.C. § 102(b) as anticipated by Nickolds We conclude that Appellant has shown that the Examiner erred in rejecting claims 4–7, 14, 15, and 17–19 under 35 U.S.C. § 103(a) as unpatentable over Nickolds. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–3, 8–10, 12–14, 16, 17, 20, 21 102(b) Nickolds 1–3, 8–10, 12–14, 16, 17, 20, 21 4–7, 14, 15, 17–19 103(a) Nickolds 4–7, 14, 15, 17–19 Overall Outcome 1–10, 12– 21 REVERSED