Ex Parte Eckert

Patent Trial and Appeal Board

Apr 9, 2013

12008310 (P.T.A.B. Apr. 9, 2013)

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.
12/008,310 01/10/2008 Ronald C. Eckert Eckert 4.1-4 9593
7590 04/10/2013
Butzel Long
Suite 1100
110 West Michigan Ave.
Lansing, MI 48933
EXAMINER
ROSEN, ERIC J
ART UNIT PAPER NUMBER
3732
MAIL DATE DELIVERY MODE
04/10/2013 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 RONALD C. ECKERT
__________

Appeal 2012-001091
Application 12/008,310
Technology Center 3700
__________

Before DEMETRA J. MILLS, JEFFREY N. FREDMAN, and
STEPHEN WALSH, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
disposable cup for cleaning and polishing teeth. The Examiner rejected the
claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

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Application 12/008,310

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Statement of the Case
Background
“The present invention relates to a disposable prophylaxis cup formed
of a silicone elastomer having perlite particles incorporated therein. The
present invention also . . . relates to a method of using a prophylaxis cup
formed of a silicone elastomer having perlite particles to clean and polish
teeth” (Spec. 1 ¶ 0003).
The Claims
Claims 1-18 are on appeal. Claim 1 is representative and reads as
follows:
1. A disposable prophylaxis cup for cleaning and
polishing teeth, which comprises:
(a) a silicone elastomer; and
(b) perlite particles incorporated in the silicone
elastomer as an abrasive material, wherein the particles are
as a uniform dispersion in the elastomer, the cup has been
cured in a mold so that it has a hardened outer case and then
subjected to cryogenic deflashing to remove the casing so
that the cup begins to disintegrate after contact with the
teeth.

The issues
A. The Examiner rejected claims 1-11 and 15-18 under 35 U.S.C.
§ 103(a) as obvious over Eckert1 and Roulston2 (Ans. 5-8).
B. The Examiner rejected claim 12 under 35 U.S.C. § 103(a) as obvious
over Eckert, Roulston, and Charlton3 (Ans. 9-10).

1 Eckert, R., US 5,334,020, issued Aug. 2, 1994.
2 Roulston et al., US 7,303,600 B2, issued Dec. 4, 2007.
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C. The Examiner rejected claim 13 under 35 U.S.C. § 103(a) as obvious
over Eckert, Roulston, and Drapen4 (Ans. 10).
D. The Examiner rejected claim 14 under 35 U.S.C. § 103(a) as obvious
over Eckert, Roulston, and Madsen5 (Ans. 11).
A. 35 U.S.C. § 103(a) over Eckert and Roulston
The Examiner finds that Eckert teaches:
a disposable prophylaxis cup 10 (figure 3) for cleaning and
polishing teeth, which comprises: a silicone elastomer (Col.
3, lines 3-4); and particles (Col. 3, lines 3-4) incorporated in
the silicone elastomer as an abrasive material, wherein the
particles are as a uniform dispersion in the elastomer (col. 3,
lines 17-18), wherein the cup begins to disintegrate after
contact with the teeth (Col. 3, lines 25-28; “wears down”).

(Ans. 5). The Examiner finds that “Eckert is silent regarding the abrasive
particles being perlite particles. However, Roulston teaches perlite particles
being used as an abrasive material for use in polishing teeth with a
prophylaxis cup” (Ans. 6). The Examiner finds it obvious to “modify Eckert
by using perlite particles as the abrasive particles, as taught by Roulston, for
the purpose of using abrasive particles that are effective in cleaning and
polishing teeth” (Ans. 6).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner’s conclusion Eckert and Roulston render the
claims obvious?

3 Charlton, D., US 6,083,000, issued Jul. 4, 2000.
4 Drapen et al., US 3,675,330, issued Jul. 11, 1972.
5 Madsen, E., US 4,322,207, issued Mar. 30, 1982.
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Findings of Fact
The following findings of fact (“FF”) are supported by a
preponderance of the evidence of record.
1. Eckert teaches an “improved dental prophylaxis cup formed of
a non-toxic silicone elastomer incorporating an abrasive uniformly dispersed
throughout so that both a polishing cavity in a working end of the cup can be
used to clean teeth as well as the outside surface of the cup, thus enhancing
operator convenience” (Eckert, col. 3, ll. 16-21).
2. Eckert teaches that “the cup wears down during a teeth cleaning
procedure to continuously apply fresh abrasive to the tooth surface” (Ecker,
col. 3, ll. 24-26).
3. Eckert teaches that:
The abrasive material for dental purposes can be pumice or
pumice based powders, quartz and quartz based powders,
zirconium silicate and zirconium silicate based powders and
feldspar and feldspar based powders as specified by
ANSI/ADA Specification to 37-1986. Type I up to 150
microns is for oral use and Type II up to 250 microns is for
laboratory use such as on appliances and dentures. Type I is
preferably between about 37 and 150 microns and Type II is
preferably between about 74 and 250 microns.

(Eckert, col. 7, ll. 23-32).
4. Roulston teaches that the “unexpanded perlite ore polishing
composition has utility for use in a dental prophalaxis paste” (Roulston, col.
7, ll. 31-32).
5. Roulston teaches that “unexpanded perlite ore polishing
composition has utility for use in a strip material for polishing teeth”
(Roulston, col. 7, ll. 34-35).
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6. Roulston teaches that the “invention is not limited to any
specific perlite composition according to an elemental analysis of
unexpanded perlite. It is envisioned that all compositions of unexpanded
perlite, sometimes referred to herein as unexpanded perlite ore, can be used
in practicing this invention” (Roulston, col. 8, ll. 63-67).
Principles of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. at 417. As noted by the Court in KSR, “[a] person of
ordinary skill is also a person of ordinary creativity, not an automaton.” Id.
at 421.
Analysis
Claim 1
Eckert teaches a prophylaxis cup for teeth cleaning which comprises a
silicone elastomer and an abrasive material which is incorporated as a
uniform dispersion (FF 1). Eckert teaches that the cup “wears down during
a teeth cleaning procedure to continuously apply fresh abrasive to the tooth
surface” (Eckert, col. 3, ll. 24-26; FF 2).
While Eckert does not teach the use of perlite, Roulston teaches that
the “unexpanded perlite ore polishing composition has utility for use in a
dental prophalaxis paste” (Roulston, col. 7, ll. 31-32; FF 4). Roulston also
teaches that “unexpanded perlite ore polishing composition has utility for
use in a strip material for polishing teeth” (Roulston, col. 7, ll. 34-35; FF 5).
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Applying the KSR standard of obviousness to the findings of fact, we
conclude that an ordinary artisan would have reasonably found it obvious to
use the perlite dental abrasive of Roulston in the prophylaxis cup of Eckert
since Roulston teaches that perlite is useful for polishing teeth (FF 4-5).
Such a combination is merely a “predictable use of prior art elements
according to their established functions.” KSR, 550 U.S. at 417.
Appellant contends that “Roulston, however, does not disclose, teach,
or suggest the use of perlite particles in a prophylaxis cup (or in any other
solid matrix) as asserted by the action. The passages cited by the action only
disclose the use of perlite particles in a prophylaxis paste” (App. Br. 14).
While Appellant correctly notes that Roulston does not anticipate the
claimed invention by incorporating perlite particles in a prophylaxis cup, the
Examiner’s rejection is not anticipation, but rather obviousness over the
combination of Eckert and Roulston. We agree with the Examiner that since
“pumice, as disclosed by Eckert, and perlite, as disclosed by Roulston . . .
are natural volcanic materials used in various areas of dentistry as an
abrasive for cleaning and polishing teeth [this] would further lead one of
ordinary skill in the art to understand that such polishing materials may be
interchangeable for use as an abrasive in such devices as a prophylaxis cup”
(Ans. 12). That is, the ordinary artisan would have recognized that just as
Eckert taught four or five different abrasive compounds suitable for dental
use, Roulston’s teaching that perlite would be a useful abrasive compound
would have suggested the use of perlite in Eckert’s prophylaxis cup (FF 1-
3).

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Claims 2, 4, and 17
Appellant contends that “the particle sizes disclosed in Eckert ‘020 are
an inappropriate basis for comparison with the recited range, inasmuch as
Eckert ‘020’s disclosure related to particle size particularly addresses
pumice and other specific abrasives, but does not address the specifically
recited perlite particles” (App. Br. 16).
We are not persuaded. Eckert teaches “powders as specified by
ANSI/ADA Specification to 37-1986. Type I up to 150 microns is for oral
use and Type II up to 250 microns is for laboratory use such as on
appliances and dentures. Type I is preferably between about 37 and 150
microns and Type II is preferably between about 74 and 250 microns”
(Eckert, col. 7, ll. 27-32; FF 3). Thus, the ordinary artisan selecting particle
sizes for oral use in the prophylaxis cup of Eckert would have reasonably
selected “Type I” particle sizes between 37 and 150 microns, not larger
“Type II” particle sizes which were not designated for oral use but rather
laboratory use on dentures. Further, the ordinary artisan would have
reasonably relied upon the teaching of Eckert, which provides specific
guidance on the particle sizes of abrasives for oral use, rather than Roulston,
who teaches particle sizes for polishing dentures rather than oral use (see
Roulston, col. 19, example 9). Eckert’s preferred range of 37 to 150 microns
overlaps the claims 15 to 40 micron range. See In re Peterson, 315 F.3d
1325, 1329 (Fed. Cir. 2003) (“In cases involving overlapping ranges, we and
our predecessor court have consistently held that even a slight overlap in
range establishes a prima facie case of obviousness.”)

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Claims 7, 10, and 11
Appellant contends that “[g]iven the process and resulting structural
differences between the two silicone matrices, there is no basis to conclude
that the prophylaxis cup of Eckert ‘020 would have the recited disintegration
time” (App. Br. 18).
We are not persuaded. While the processes used to prepare the
silicone matrix of Eckert and that required by claim 1 differ in the presence
of the cryogenic cooling step, Appellant has presented no evidence that the
cryogenic deflashing demonstrably changes the rate of disintegration of the
prophylaxis cup compared to Eckert’s prophylaxis cup which did not receive
this treatment.
By contrast, there is evidence that Eckert’s cup disintegrates
continuously. Specifically, Eckert teaches that “the cup wears down during
a teeth cleaning procedure to continuously apply fresh abrasive to the tooth
surface” (Eckert, col. 3, ll. 24-26; FF 2). This express teach that the cup
wears down continuously is a direct teaching that throughout the cleaning
procedure, including the first 5 to 10 seconds, the prophylaxis cup wears
down, i.e. disintegrates. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977)
(“Where, as here, the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially identical
processes, the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his
claimed product.”). Appellant has not provided any evidence to rebut the
Examiner’s inherency position.

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Conclusion of Law
The evidence of record supports the Examiner’s conclusion Eckert
and Roulston render the claims obvious.
B.-D 35 U.S.C. § 103(a)
The Examiner provides sound fact-based reasoning for combining
Eckert and Roulston with Charlton, Drapen, and Madsen. We adopt the fact
finding and analysis of the Examiner as our own. Appellant argues the
underlying obviousness rejection over Eckert and Roulston but Appellant
does not identify any material defect in the Examiner’s reasoning for
combining Charlton, Drapen, and Madsen with these references. Since
Appellant only argues the underlying rejection which we affirmed above, we
affirm these rejections for the reasons stated by the Examiner.
SUMMARY
In summary, we affirm the rejection of claims 1-11 and 15-18 under
35 U.S.C. § 103(a) as obvious over Eckert and Roulston.
We affirm the rejection of claim 12 under 35 U.S.C. § 103(a) as
obvious over Eckert, Roulston, and Charlton.
We affirm the rejection of claim 13 under 35 U.S.C. § 103(a) as
obvious over Eckert, Roulston, and Drapen.
We affirm the rejection of claim 14 under 35 U.S.C. § 103(a) as
obvious over Eckert, Roulston, and Madsen.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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