Ex Parte Chen et al

Patent Trial and Appeal Board

Jun 27, 2016

13214933 (P.T.A.B. Jun. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/214,933 08/22/2011
83571 7590 06/29/2016
Wood, Herron & Evans, LLP (Sybron)
441 Vine Street
2700 Carew Tower
Cincinnati, OH 45202
FIRST NAMED INVENTOR
Xiangxu Chen
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
KMC-357US 1251
EXAMINER
MAI,HAOD
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
06/29/2016 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):
usptodock@whe-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte XIANGXU CHEN, JAMES LOBSENZ, and BEAT KILCHER
Appeal2014-006912
Application 13/214,933
Technology Center 3700
Before JOHN C. KERINS, STEFAN STAICOVICI, and LEE L. STEPINA,
Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Xiangxu Chen et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the Examiner's final decision rejecting claims 11, 14, 17, 18, and 21.
We have jurisdiction over this appeal under 35 U.S.C. § 6(b ).
We REVERSE.
THE INVENTION
Appellants' invention relates to a dispensing device for use in
delivering a paste in a dental procedure.
Claims 11 and 18 are independent. Claim 11 is illustrative of the
claimed invention and is reproduced below:
Appeal2014-006912
Application 13/214,933
11. A method for delivering a dental paste to an oral location
comprising soft tissue, comprising:
loading a capsule of dental paste into a carrier of an
applicator having a plunger adapted to enter a first end of the
carrier for engaging the capsule;
positioning a metal needle attached to the capsule such
that an attachment end of the needle is proximate a second end
of the carrier opposite the first end and a dispensing end of the
needle having a terminal edge is distal to the carrier, wherein
the dispensing end includes a modification for atraumatic
contact with the soft tissue, where the modification comprises a
plastic tip member over the dispensing end, comprising a first
inner channel engaged over the dispensing end and a second
inner channel of larger size than an inner diameter of the
dispensing end, where the second inner channel has a flattened
oval shape in a static position and a rounded shape in a dynamic
position;
contacting the soft tissue with the dispensing end while
advancing the piunger to dispense the dentai paste from the
dispensing end of the needle into the oral location while the
modification prevents traumatic injury to the soft tissue.
THE REJECTIONS
The Examiner has rejected:
(i) claims 11 and 14 under 35 U.S.C. § 103(a) as being unpatentable
over Dragan (US 2003/0013066 Al, pub. Jan. 16, 2003), Burrell (US
1,951,544, iss. Mar. 20, 1934), and Dougherty (US 4,553,686, iss. Nov. 19,
1985); and
(ii) claims 17, 18, and 21under35 U.S.C. § 103(a) as being
unpatentable over Dragan, Burrell, Dougherty, and Kollefrath (US
2005/0202367 Al, pub. Sept. 15, 2005).
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Application 13/214,933
ANALYSIS
Claims 11 and 14--0bviousness--Dragan/Burrell/Dougherty
Claim 11 recites, in part,
wherein the dispensing end includes a modification for
atraumatic contact with the soft tissue, where the modification
comprises a plastic tip member over the dispensing end,
comprising a first inner channel engaged over the dispensing end
and a second inner channel of larger size than an inner diameter
of the dispensing end, where the second inner channel has a
flattened oval shape in a static position and a rounded shape in a
dynamic position.
The Examiner finds that a dispensing end of the needle of Dragan has
a component corresponding to the claimed modification for atraumatic
contact with soft tissue, namely, cover 54. Final Act. 2 (citing Dragan, Figs.
7-9). The Examiner relies on Burrell as disclosing "a plastic tip 5 engaging
over the dispensing end 3 of tube 1, wherein the plastic tip 8 ha[ s] a second
inner channei (dispensing tip 9) that has a flattened ovai shape 9 in a
static/non-dispensing position (Fig. 6) and a rounded shape 9 in a
dynamic/dispensing position." Id. at 3, citing Burrell, p. 1, 11. 75-88; Figs. 6
and 7. The Examiner concludes that it would have been obvious to one of
ordinary skill in the art to substitute modification/cover 54 of Dragan with
plastic tip 8 of Burrell "as a suitable alternative tip modification with
predictable results, e.g. providing flow control of the material dispensing
there through and self-sealing mechanism at the dispen[s]ing end." Id. at 4.
Appellants assert that the Examiner's "modification of Dragan[' s]
device would change the principle of operation of the device and is contrary
to the objectives of Dragan[], and is therefore an impermissible modification
that does not support a prima facie case of obviousness." Appeal Br. 4
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Appeal2014-006912
Application 13/214,933
(emphasis omitted). Appellants argue that "Burrell's tip modification
provides no means to spread, burnish or brush the material onto the dental
surface, similar to the prior art that Dragan [was] trying to overcome, nor
any means to control the flow based on the viscosity of the material in the
tube," and therefore substituting the tip modification of Burrell for the
porous covering for the Dragan tip would change the principle of operation
of the Dragan device and is contrary to the objectives of Dragan. Id. at 5;
see also Reply Br. 4.
In the Answer, the Examiner responds that, "replacement of
Dragan['s] porous foam tip cover 54 [with] Burrell's flow control and self-
sealing tip cover may change the useful purposes of Dragan['s] porous foam
tip," but that such substitution "would not require substantial reconstruction
and redesign of the elements shown in Dragan." Ans. 6. The Examiner's
position is that the proposed substitution would not "change the basic
principies in which Dragan['s] device is designed to operate, i.e. a dentai
syringe/nozzle with capsule 210 of dispensing material loaded thereon a
carrier with plunger, and a needle 212 is attached thereon providing a
dispensing end with a modified dispensing tip cover." Id., citing Dragan,
Fig. 15. The Examiner also takes the position that it would have been
"obvious to try to adapt" the tip cover of Burrell to the device of Dragan "as
a known alternative suitable tip cover/modification in order to obtain
Burrell's flow-control and self-sealing properties with reasonable
expectation of success. Id., citing KSR Int 'l Co. v. Teleflex Inc., 550 U.S.
398 (2007).
The mere fact that the Dragan reference could be modified as
proposed does not make the modification obvious where the art fails to
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Appeal2014-006912
Application 13/214,933
suggest the desirability of the modification and where the results emanating
from the modification have not been shown to have been predictable to one
of ordinary skill in the art. See In re Gordon, 733 F.2d 900, 902 (Fed. Cir.
1984); KSR Int'! Co., 550 U.S. at 417. Although we appreciate that the
device of Dragan as modified based on the teachings of Burrell would still
be able to dispense dental material, we agree with Appellants that the
Examiner's proposed modification changes Dragan's principle of operation,
and would render it unfit to perform as intended, namely, "for dispensing
low viscosity dental material through a porous flow through applicator
connected to the discharge orifice for evenly distributing and applying the
low viscosity or fluent dental material directly onto a tooth." Dragan i-f 1.
Specifically, the inquiry is not whether the device of Dragan would still
work as a dental nozzle, but rather, whether the device of Dragan would still
work as intended to "provide[ s] for a more consistent and controllable flow
characteristic than prior known brush or flock type appiicators." Id. if 43.
Because the paste of Burrell is dispensed by applying pressure to a
tube to force paste through a single large dispensing hole in the tip (see
Burrell, p. 1, 11. 58-67), the Examiner has not adequately explained how
such dispensing provides suitable flow control that is comparable to flowing
material through multiple pores or openings in a controlled manner as in
Dragan. See id. i-f 30. The Examiner's "obvious to try" rationale is also
deficient in that the Examiner fails to adequately explain how the flow of
Dragan's low viscosity material would be predictably controlled using the
tip of Burrell inasmuch as Burrell does not match the size of the tip opening
to the viscosity of the material being dispensed. See id. As such, the
Examiner has not established that the proposed modification would present a
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Application 13/214,933
reasonable expectation of success. Thus, we do not agree that a person of
ordinary skill in the art would have found obvious replacing the covering of
Dragan with the tip of Burrell as a suitable alternative.
In view of the above, we do not sustain the rejection of claims 11 and
14 as being unpatentable over Dragan, Burrell, and Dougherty.
Claims 17, 18, and 21--0bviousness--Dragan/Burrell/Dougherty/Kollefrath
Independent claim 18 recites, in part, a plastic tip member having a
first inner channel and a second inner channel, "where the second inner
channel has a flattened oval shape in a static position and a rounded shape in
a dynamic position." As with claim 11, the Examiner relies on Burrell as
teaching this limitation. Final Act. 3. The Examiner does not rely on
Kollefrath in any manner that remedies the deficiencies in the rejection of
claim 11 based on Dragan, Burrell, and Dougherty. Accordingly, for the
same reason discussed supra with respect to claim 11, the rejection of claims
18 and 21 is not sustained. Because claim 1 7 depends from claim 11, the
rejection of claim 17 is also not sustained.
DECISION
The rejection of claims 11 and 14 under 35 U.S.C. § 103(a) as being
unpatentable over Dragan, Burrell, and Dougherty is reversed.
The rejection of claims 17, 18, and 21 under 35 U.S.C. § 103(a) as
being unpatentable over Dragan, Burrell, Dougherty, and Kollefrath is
reversed.
REVERSED
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