Ex Parte 5076791 et al

Board of Patent Appeals and Interferences

Apr 26, 2010

90005292 (B.P.A.I. Apr. 26, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GEORGE W. MADRAY, Jr.
Patent Owner and Appellant
____________

Appeal 2010-002314
Reexamination Control 90/005,292
Reissue Application 09/610,064
Patent 5,076,7911
Technology Center 3900
____________

Decided: April 26, 2010
____________

Before LINDA E. HORNER, KARL D. EASTHOM, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL

1 The patent under reexamination (hereinafter the “‘791 Patent”) issued to
George W. Madray, Jr., on December 31, 1991, from Application
07/602,076 filed on October 22, 1990. The reexamination and reissue
proceedings were merged on April 10, 2006. (Decision Merging the
Reexamination and the Reissue mailed April 11, 2006.)
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George W. Madray, Jr., the owner of the ‘791 Patent under reexamination,
appeals under 35 U.S.C. §§ 134(b) and 306 from a final rejection of claim 3
(Supplemental Appeal Brief filed August 13, 2009 (hereinafter “App. Br.”)
at 4; Final Office Action mailed July 7, 2008). We have jurisdiction under
35 U.S.C. §§ 134(b) and 306.
We AFFIRM.

STATEMENT OF THE CASE
This reexamination proceeding arose from a third-party request for ex
parte reexamination filed by Plak-Smacker, Inc. and Wal-Mart Stores, Inc.
(Request for Ex Parte Reexamination filed March 10, 1999).2
The ‘791 Patent states that the invention involves a method of
bleaching teeth with a tray that can be conveniently used at home. (Col. 2,
ll. 15-44.)
Claim 3 on appeal reads as follows:
3. [The process of claim 1] A process of bleaching teeth
comprising the steps of:
a) heating a thermoplastic material which is substantially
in the shape of a horseshoe with a U-shaped channel for
receiving the teeth in a dental arch, to a temperature in excess
of normal human body temperature, to the point of being
pliable,
b) adapting said thermoplastic material to said teeth with
the forefingers and thumbs, lips and tongue, and the teeth in the

2 The ‘791 patent is involved in litigation in the U.S. District Court for the
Southern District of Georgia, Case Number 2:97-cv-00240, which has been
placed in a Civil Suspense File until circumstances change. (Order dated
May 14, 1999.)
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opposite arch to snugly encompass said teeth so that it is in
juxtaposition with said teeth, and that when cooled to the
normal human body temperature is resilient and shape retaining
whereby a tray is formed, and
c) placing a bleaching agent within the confines of said
tray and placing said tray over said teeth whereby said agent is
held in contact with said teeth,
wherein said thermoplastic material has its tooth
contacting surface etched, pimpled or has a grid pattern, giving
said material a greater surface area wherein to act as a reservoir
whereby additional said bleaching agent can be held in contact
with said teeth.

(Claims App’x, App. Br. 16.)

The Examiner relied upon the following as evidence of
unpatentability (Examiner’s Answer mailed November 28, 2008,
(hereinafter “Ans.”) at 3):
Monaghan U.S. 3,379,193 Apr. 23, 1968
Jacobs U.S. 4,044,762 Aug. 30, 1977
Darnell U.S. 4,968,251 Nov. 6, 1990
Silverman U.S. 5,165,424 Nov. 24, 1992
Van B. Haywood and Harald O. Heymann, Nightguard Vital Bleaching,
173-176, Quintessence International, The Journal of Practical Dentistry,
Volume 20, March 1989.

The Examiner rejected claim 3 under 35 U.S.C. § 103(a) as
unpatentable over Silverman in view of Darnell (Ans. 4-6). The Examiner
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also rejected claim 3 under 35 U.S.C. § 103(a) as unpatentable over
Monaghan in view of Jacobs, Haywood and Darnell (Ans. 6-8).

ISSUE
Appellant does not present separate arguments for the Examiner’s
rejection of claim 3 over Monaghan in view of Jacobs, Haywood and
Darnell. (See App. Br. 14-15.) Instead, Appellant focuses solely on the
rejection of claim 3 over Silverman in view of Darnell, and in particular the
teachings of Darnell. Therefore, we limit our discussion to Darnell and the
Examiner’s rejection of claim 3 over Silverman in view of Darnell.
The Examiner found that Silverman discloses a method for bleaching
teeth comprising heating a horseshoe shaped thermoplastic tray, adapting the
heated thermoplastic tray to the teeth with fingers, tongue, and teeth, letting
the tray cool, and placing a bleaching agent in the form fitted tray. (Ans. 4.)
The Examiner found that Darnell discloses a dental whitening tray where it
is desirable to form a small space in the tooth contacting surface of the tray
in order to preferentially treat a selected portion of a tooth. (Ans. 5.) The
Examiner stated that if Darnell’s tray is viewed from the outside, the tray
includes a pimple. (Ans. 5-6.) The Examiner concluded that it would have
been obvious to have included a pimple reservoir in the Silverman whitening
tray in order to selectively treat a particular tooth or teeth. (Ans. 8-9.)
Appellant contends that the Examiner’s combination is improper
because Darnell discloses vacuum-forming a stint over a model of teeth,
whereas claim 3 involves heating a horseshoe-shaped piece of material and
shaping the material directly on the teeth. (App. Br. 8-10.) Appellant argues
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that Darnell does not provide a greater surface area to act as a reservoir for
additional bleaching material, because Darnell’s retaining material fills the
void formed in the stint. (App. Br. 10-11.) Appellant additionally contends
that it is not reasonable to view the space in Darnell as a pimple from the
exterior of the stint. (App. Br. 12-13.)
Thus, the principal issue in this appeal is:
Did the Examiner err in concluding that a person of ordinary skill in
the art would have found it obvious to combine Silverman and Darnell to
form a pimpled tooth-contacting surface within the meaning of claim 3?

FINDINGS OF FACT (“FF”)
1. The ‘791 patent states “a thin tray with a grid or etchings on the
inside can be added to act as a reservoir to hold additional
gel . . . .” (Col. 3, ll. 47-49.)
2. Darnell’s Figure 7 is reproduced below:

Figure 7 above is a sectional view of a stint 230 made of plastic
material 224 disposed on a tooth 222 of a patient to
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preferentially treat a selected portion of a tooth 222 with active
agent 240 applied to retaining material 226, where the
termination 234 of the stint ends with the gingiva 238. (Col. 5,
ll. 32-36; col. 7, ll. 60-61; col. 9, ll. 33-65.)
3. Darnell discloses that an active agent is absorbed within the
retaining material to retain the active agent in close proximity to
the teeth. (Col. 8, ll. 45-50.)
4. There is no dispute that the definition of pimple is a small
round swelling, protuberance, and/or raised surface. (See Ans.
5; App. Br. 12.)

PRINCIPLES OF LAW
Unlike a district court in patent litigation,3 “the PTO must give claims
their broadest reasonable construction consistent with the specification . . . .
Therefore, we look to the specification to see if it provides a definition for
claim terms, but otherwise apply a broad interpretation.” In re ICON Health
and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (citation omitted).
“[A]s applicants may amend claims to narrow their scope, a broad
construction during prosecution creates no unfairness to the applicant or
patentee.” ICON Health, 496 F.3d at 1379 (citation omitted).
It is well established that “it is not necessary that the inventions of the
references be physically combinable to render obvious the invention under

3 See, e.g., In re Swanson., 540 F.3d 1368, 1377-78 (Fed. Cir. 2008)
(explaining that, relative to district court litigation, reexamination is
conducted under different standards including standard of proof, absence of
a presumption of validity, and claim construction).
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review.” In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (citation
omitted). In addition, “[c]ombining the teachings of references does not
involve an ability to combine their specific structures.” In re Nievelt, 482
F.2d 965, 968 (CCPA 1973) (emphasis in original).
The Supreme Court in KSR emphasized the need to account for
common sense when considering whether a combination of references would
have been obvious: “[o]ne of the ways in which a patent’s subject matter
can be proved obvious is by noting that there existed at the time of invention
a known problem for which there was an obvious solution encompassed by
the patent’s claims.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 419-420
(2007).
The Court also stated:
The first error of the Court of Appeals in this case was to
foreclose this reasoning by holding that courts and patent
examiners should look only to the problem the patentee was
trying to solve. The Court of Appeals failed to recognize that
the problem motivating the patentee may be only one of many
addressed by the patent's subject matter. The question is not
whether the combination was obvious to the patentee but
whether the combination was obvious to a person with ordinary
skill in the art. Under the correct analysis, any need or problem
known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the
elements in the manner claimed.
The second error of the Court of Appeals lay in its
assumption that a person of ordinary skill attempting to solve a
problem will be led only to those elements of prior art designed
to solve the same problem.

Id. at 420 (citations omitted).
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ANALYSIS
Claim Interpretation
We begin by interpreting “wherein said thermoplastic material has its
tooth contacting surface etched, pimpled or has a grid pattern, giving said
material a greater surface area wherein to act as a reservoir whereby
additional said bleaching agent can be held in contact with said teeth” as
recited in claim 3. We must decide whether the claim is limited to a pimple
that extends inwardly toward the tooth when viewed from the tooth
contacting surface as argued by Appellant, or whether the claim includes a
pimple that extends outwardly away from the tooth contacting surface when
viewed from the outside of the tray, which is consistent with the Examiner’s
position. We first turn to the Specification of the ‘791 patent for guidance in
interpreting the claim.
The Specification of the ‘791 patent closely mimics the language of
the claim, except that the Specification does not provide details or drawings
of a pimpled tooth contacting surface. (FF 1; Ans. 5.) Appellant contends
that “[a] raised pimple on the tooth-contacting surface touches the teeth and
spaces the surrounding thermoplastic material away from the teeth, thereby
forming a space between the surrounding thermoplastic material and the
teeth that can hold more teeth-treating material.” (App. Br. 13.) Appellant
explains that the pimpled surface resembles a table tennis paddle, rubber
“gripper” jar opener, or the surface of a football, where the spaces between
the pimples form a reservoir. (Reply Brief filed January 28, 2009,
(hereinafter “Rep. Br.”) at 5.) While we agree with Appellant’s
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interpretation, we are not persuaded that Appellant’s interpretation is the
only reasonable interpretation of the claims.
Specifically, the Specification is silent as to the orientation of the
pimple on the tooth-contacting surface. However, claim 3 recites that the
“thermoplastic material has its tooth contacting surface etched . . . to act as a
reservoir.” Thus, when etched, the portion of the thermoplastic material that
has been removed acts as a reservoir for the additional bleaching agent. This
is consistent with the Examiner’s interpretation of a pimpled tooth
contacting surface, where the inside of the pimple acts as a reservoir for
additional bleaching agent. Therefore, claim 3 includes both pimples that
extend toward the tooth as well as pimples that extend outwardly from the
tooth contacting surface away from the tooth as viewed from the outside of
the tray.

35 U.S.C. § 103 Rejection Based on Darnell and Silverman
Initially, Appellant argues that the Examiner overlooked the method
of claim 3 in his obviousness analysis. (App. Br. 9-10.) We are not
persuaded by Appellant’s arguments. The Examiner relies on Silverman for
the method steps recited in the claims. Appellant unduly focuses on the
individual teachings of Silverman and Darnell, rather than what the prior art
as a whole would have conveyed to one of ordinary skill in the art. There is
no indication that one of ordinary skill in the art would have been incapable
of implementing the combination suggested by the Examiner. (See Ans. 9.)
In addition, Appellant has failed to direct our attention to a limitation in the
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present claim that would exclude processes where only a portion of a tooth is
treated. (See App. Br. 10.)
We are also not persuaded by Appellant’s argument that Darnell does
not provide a greater surface area to act as a reservoir for additional
bleaching agent due to the presence of the retaining material, which would
fill the reservoir. (App. Br. 10.) As stated by the Examiner, the pimpled
reservoir of Darnell does have increased surface area to hold material,
whether or not the retaining material is present. (Ans. 9.) Moreover, that
the retaining material is present does not mean that additional bleaching
agent is incapable of being present as well. Indeed, Darnell discloses that
the retaining material absorbs active agent. (FF 3.) Thus, Darnell’s
disclosure is not incompatible with Silverman.4
In light of the claim interpretation discussed supra, Appellant’s
arguments that Darnell fails to disclose a pimpled tooth contacting surface as
recited in claim 3 are not persuasive. Appellant’s claim, while requiring a
pimpled tooth contacting surface, does not specify in what direction the
protuberance extends. Darnell discloses a pimple as defined by Appellant
where the protuberance extends outwardly away from the tooth-contacting
surface and the tooth. (FF 2, 4.) As explained supra, the Examiner’s

4 We are also not persuaded by Appellant’s argument that because Darnell
discloses baffles or indentations in the retaining material, that Darnell
teaches away from the present claims. (App. Br. 11-12; Rep. Br. 11-14.)
Darnell does not in any way criticize the use of pimples, nor does the use of
baffles or indentations impact Darnell’s disclosure of a pimple. Moreover,
contrary to Appellant’s arguments (App. Br. 13), the Examiner does not rely
on this disclosure in Darnell to support the rejection of claim 3.
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interpretation is consistent with the limitations of claim 3.5 Therefore, we
cannot agree with Appellant’s position that the Examiner’s claim
interpretation is unreasonable.6

CONCLUSION
On this record, the Examiner did not err in the factual findings and
conclusions that a person of ordinary skill in the art would have found it
obvious to combine Silverman and Darnell, or Monaghan, Jacobs, Haywood,
and Darnell, to form a pimpled tooth-contacting surface within the meaning
of claim 3.

DECISION
The Examiner’s decision to reject claim 3 under 35 U.S.C. § 103(a) is
affirmed.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED

5 Appellant’s arguments that the Examiner fails to address arguments made
in the Appeal Brief are not persuasive. (Rep. Br. 12-13.) However, the
Examiner’s position regarding the interpretation of the term “pimple” is
clearly set forth in the Answer, along with the response to Appellant’s
arguments. (Ans. 5, 6, and 9.)
6 Additionally, we agree with the Examiner that Appellant’s arguments with
respect to the chain of continuing applications claiming priority to Darnell
are not relevant to the disclosure of a pimpled surface as recited in claim 3.
(See App. Br. 13-14; Rep. Br. 14-15; Ans. 9.)
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rvb

PATENT OWNER:

John S. Pratt, Esq.
Kilpatrick Stockton, LLP
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309

THIRD-PARTY REQUESTER:
Holmes J. Hawkins, III
King & Spaulding
1180 Peachtree Street
Atlanta, GA 30309