Sirona Dental Systems GmbH

Patent Trials and Appeals Board

Mar 1, 2021

2020004924 (P.T.A.B. Mar. 1, 2021)

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
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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.
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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).
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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–
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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,
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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).
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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