Sirona Dental Systems GmbHDownload PDFPatent Trials and Appeals BoardMar 1, 20212020004924 (P.T.A.B. Mar. 1, 2021) Copy Citation 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. 15/223,476 07/29/2016 Thomas Bierbaum 01873.400003.1 2421 5514 7590 03/01/2021 Venable LLP 1290 Avenue of the Americas New York, NY 10104-3800 EXAMINER VAN ROY, TOD THOMAS ART UNIT PAPER NUMBER 2828 MAIL DATE DELIVERY MODE 03/01/2021 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 THOMAS BIERBAUM, SIEGRIED GOISSER, HERMANN LANDGRAF, MATTHIAS REIN, RALF SUTTER, THOMAS JERGER, and JOACHIM PEUCKERT Appeal 2020-004924 Application 15/223,476 Technology Center 2800 Before JAMES R. HUGHES, JOHN A. EVANS, and LARRY J. HUME, Administrative Patent Judges. HUGHES, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Claims 26–42 are pending, stand rejected, are appealed by Appellant, and are the subject of our decision under 35 U.S.C. § 134(a).1 See Final Act. 1; Appeal Br. 3.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 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 Dentsply Sirona Inc. See Appeal Br. 1. 2 We refer to Appellant’s Specification (“Spec.”), filed July 29, 2016 (claiming benefit of DE 10 2009 000 685.0, filed Feb. 6, 2009); Appeal Appeal 2020-004924 Application 15/223,476 2 CLAIMED SUBJECT MATTER The claimed subject matter, according to Appellant, generally “relates to a laser handpiece, an exchangeable fiber-optic insert, and a control unit” for “the treatment of teeth or gums in the oral cavity of a patient.” Spec. 1:5–7. Specifically, Appellant’s claims recite a laser handpiece including a base member, a sleeve-type grip that surrounds (or partially surrounds) the base member, a light guide (or optical waveguide) attached to a light injector (light coupling site) in the base member where an end of the light guide is within the sleeve-type grip, and a removable glass fiber (application) element connected to the base member such that part of the element is outside of the sleeve-type grip. See Spec. 3:4–8:12; Abstract. Claim 26 (directed to a laser handpiece (a machine)) is independent. Claim 26, reproduced below with emphasis added, is illustrative of the claimed subject matter: 26. A laser handpiece comprising: a base member; a sleeve-type grip at least partially surrounding the base member; an optical waveguide fixed to a light coupling site provided on the base member, with an end of the optical waveguide being positioned within the sleeve-type grip; an application element for laser light detachably connected to the base member, with at least a part of the application element being positioned outside of the sleeve-type grip, wherein the base member is movable within the sleeve- type grip between (i) a first position in which the base member is fixed in relation to the sleeve-type grip and a tip of the Brief (“Appeal Br.”), filed Jan. 13, 2020; and Reply Brief (“Reply Br.”), filed June 17, 2020. We also refer to the Examiner’s Final Office Action (“Final Act.”), mailed May 31, 2019; and Answer (“Ans.”) mailed Apr. 17, 2020. Appeal 2020-004924 Application 15/223,476 3 application element is a first distance away from an end of the sleeve-type grip, and (ii) a second position in which the base member is fixed in relation to the sleeve type grip and the tip of the application element is a second distance away from the end of the sleeve-type grip. Claim App. i (Appeal Br.). REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Danek et al. (“Danek”) US 6,200,311 B1 Mar. 13, 2001 Daniel et al. (“Daniel”) US 2001/0025174 A1 Sept. 27, 2001 Boutoussov et al. (“Boutoussov”) US 2008/0181261 A1 July 31, 2008 REJECTIONS3 1. The Examiner rejects claims 26–30 and 39–42 under 35 U.S.C. § 103(a) as being unpatentable over Daniel and Boutoussov. See Final Act. 3–5. 2. The Examiner rejects claims 31–38 under 35 U.S.C. § 103 as being unpatentable over Daniel, Boutoussov, and Danek. See Final Act. 5– 7. ANALYSIS Appellant argues independent claim 26 and dependent claims 27–30 and 39–42 together as a group and does not separately argue the dependent 3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112–29, 125 Stat. 284 (2011), amended 35 U.S.C. § 103. Because the present application has an effective filing date prior to the AIA’s effective date (March 16, 2013), this decision refers to 35 U.S.C. § 103(a). Appeal 2020-004924 Application 15/223,476 4 claims. See Appeal Br. 8–12. We select independent claim 26 as representative of Appellant’s arguments with respect to claims 26–30 and 39–42. See 37 C.F.R. § 41.37(c)(1)(iv). Appellant also presents nominal separate combinability arguments with respect to claims 31–38. We also separately address this argument. Obviousness Rejection of Claims 26–30 and 39–42 The Examiner rejects independent claim 26 as being obvious in view of Daniel and Boutoussov. See Final Act. 3–4; Ans. 3–11. Specifically, the Examiner finds Daniel teaches the laser handpiece of claim 6 except for an optical waveguide being attached to a light coupling site on the base member, such that an end of the optical waveguide is positioned within the sleeve-type grip. The Examiner relies on Boutoussov to teach this feature. See Final Act. 3–4; Ans. 3–11. Appellant contends Daniel and Boutoussov are not properly combinable and do not teach the disputed features of claim 26. See Appeal Br. 8–12; Reply Br. 2–4. Specifically, Appellant contends “Daniel does not teach that an end of an optical waveguide element is positioned at a light coupling site within a sleeve type grip of a laser handpiece” (Appeal Br. 8), “one of ordinary skill in the art would not . . . look to Boutossov’s teaching of replaceable output fiberoptics as motivation to modify the device of Daniel” (Appeal Br. 12), the Examiner’s proposed modification of Daniel would require extensive modification of Daniel and would change the way Daniel operates (see Appeal Br. 9–11). See Appeal Br. 8–12; Reply Br. 2–4. We adopt as our own (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken (Final Act. 3–4) and (2) the reasons set forth by the Examiner in the Examiner’s Answer (Ans. 3– Appeal 2020-004924 Application 15/223,476 5 11) in response to Appellant’s Appeal Brief. We concur with the findings and conclusions reached by the Examiner, and we provide the following analysis for emphasis. Appellant’s claim 26 broadly recites “an optical waveguide fixed to a light coupling site provided on the base member, with an end of the optical waveguide being positioned within the sleeve-type grip.” Claim App. i. Appellant does not dispute that Daniel and Boutoussov teach the features of claim 26 as set forth in the Examiner’s rejection. Indeed, Appellant does not address Boutoussov except with respect to its combinability with Daniel. As explained by the Examiner, Daniel describes a sleeve-type grip, base member, an optical waveguide, a waveguide sleeve attached within the base member. See Final Act. 3–4. In particular, the Examiner finds that Daniel describes an application element (510) that is positioned outside the sleeve. The Examiner also finds Daniel’s waveguide and sleeve (510, 404) are attached to the base. See Final Act. 3–4 (citing Daniel ¶ 58). As explained by the Examiner, however, Daniel does not teach an optical waveguide being attached to a light coupling site on the base member, such that an end of the optical waveguide is positioned within the sleeve-type grip. The Examiner relies on Boutoussov for the light coupling site on the base member such that an end of the optical waveguide is positioned within the sleeve-type grip. See Final Act. 4 (citing Boutoussov ¶¶ 63, 64, 92; Fig. 10). Appellant’s contentions regarding the modification of Daniel and the combinability of Daniel and Boutoussov are unavailing of Examiner error. Appellant contends adding the light coupling site (as taught by Boutoussov) would change the way Daniel operates, but as explained by the Examiner, Appeal 2020-004924 Application 15/223,476 6 Daniel need not be extensively modified. See Ans. 3–11. As guided by our reviewing court: The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981) (citations omitted). We agree with the Examiner that it would have been within the skill of one skilled in the art to combine such known techniques of using a light coupling site (connection) for a detachable application element as taught by Boutoussov, with the device (handpiece) taught by Daniel. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill”). We are not persuaded that combining the respective familiar elements of the cited references in the manner proffered by the Examiner would have been “uniquely challenging or difficult for one of ordinary skill in the art” at the time of Appellant’s invention. Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Thus, Appellant does not persuade us of error in the Examiner’s obviousness rejection of representative claim 26. Dependent claims 27–30 and 39–42 depend from and stand with claim 26. Therefore, we affirm the Examiner’s obviousness rejection of representative claim 26 and claims 27– 30 and 39–42 separately argued with particularity (supra). See 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2020-004924 Application 15/223,476 7 Obviousness Rejections of Claims 31–38 The Examiner rejects claims 31–38 over Daniel, Boutoussov, and Danek. See Final Act. 5–7. Appellant contends Danek is not properly combinable for the same reasons as argued with respect to claim 26 (supra). See Appeal Br. 12. For the same reasons as claim 26 (supra), from which claims 31–38 depend, Appellant does not persuade us of error in the Examiner’s obviousness rejection of dependent claims 31–38. Therefore, we affirm the Examiner’s obviousness rejection of claims 31–38. CONCLUSION Appellant has not shown that the Examiner erred in rejecting claims 26–42 under 35 U.S.C. § 103(a). We, therefore, sustain the Examiner’s rejections of claims 26–42. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 26-30, 39- 42 103(a) Daniel, Boutoussov 26-30, 39- 42 31-38 103(a) Daniel, Boutoussov, Danek 31-38 Overall Outcome 26-42 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37 C.F.R. § 41.50(f). AFFIRMED Copy with citationCopy as parenthetical citation