Ex Parte Evazynajad et al

Board of Patent Appeals and Interferences

May 23, 2012

11204453 (B.P.A.I. May. 23, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/204,453 08/16/2005 Alimohammad Evazynajad 05502 - P0001A 1885
24126 7590 05/23/2012
ST. ONGE STEWARD JOHNSTON & REENS, LLC
986 BEDFORD STREET
STAMFORD, CT 06905-5619
EXAMINER
DOAN, ROBYN KIEU
ART UNIT PAPER NUMBER
3776
MAIL DATE DELIVERY MODE
05/23/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte EVAZYNAJAD ALIMOHAMMAD and
W.E. LEGRANDE
____________________

Appeal 2010-007559
Application 11/204,453
Technology Center 3700
____________________

Before RICHARD TORCZON, KARL D. EASTHOM, and
JOSIAH C. COCKS, Administrative Patent Judges.

COCKS, Administrative Patent Judge.

DECISION ON APPEAL
A. STATEMENT OF THE CASE
This is a decision on appeal by an Appellant, whose real party in
interest is Gudebrod, Inc., (hereinafter “Gudebrod”), under 35 U.S.C.
§ 134(a) from a final rejection of claims 1-14. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse and enter a new ground of rejection.

Appeal 2010-007559
Application 11/204,453

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References Relied on by the Examiner
Ochs et al. (“Ochs”) 6,080,481 Jun. 27, 2000

The Rejections on Appeal
The Examiner rejected claims 1-3, 5-7, 9-12, and 14 under 35 U.S.C.
§ 102(b) as anticipated by Ochs.
The Examiner rejected claims 4, 8, and 13 under 35 U.S.C. § 103(a)
as unpatentable over Ochs.

The Invention
The invention relates to coated dental floss. (Spec. p. 1, ll. 8-9.)
Claims 1, 5, 8, and 9 are the independent claims and are reproduced below
(App. Br., p. 14, Claims App’x.):
1. A dental floss comprising an ePTFE strand coated with
Soywax.

5. A method of forming coated dental floss comprising:
forming a stand of expanded PTFE;
coating the strand with Soywax

8. A dental floss coated with Soywax formed without a core.

9. A method of forming coated dental floss comprising:
forming a strand of nonexpanded PTFE;
coating the strand with Soywax.
B. ISSUE
Did the Examiner provide an adequate evidentiary basis for
determining that Ochs discloses a “Soywax” material as a coating for dental
floss?
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C. ANALYSIS
With respect to each of the Examiner’s anticipation and obviousness
rejections, the issue centers on whether Ochs discloses “Soywax” as the
coasting material for its disclosed dental floss. Ochs discloses a wax coated
dental floss formed from either polytetrafluoroethylene (PTFE) or
“expanded” PTFE, i.e., ePTFE. (Ochs, 7:54-8:2.) The Examiner found that
Ochs “further discloses mixing soybean oil (in a form of an emulsifier) with
melted beeswax” (Ans., p. 3.) The Examiner concluded that, under the guise
of broadest reasonable interpretation, the “Soywax” coating requirement of
the claims is met by a wax coating formed from a soybean emulsifier and
beeswax. (Id. at p. 4, l. 13 – p. 5, l. 4). We observe that Ochs teaches
(Table 3) a preferred coating composition as including mainly beeswax with
an additive (EC-25) incorporating partially hydrogenated soybean oil.
In challenging the Examiner’s rejections, Gudebrod contends that the
term “soywax” “is a term of art and its meaning is understood by those of
skill in the art.” (App. Br., p. 8, ll. 13-14.) Gudebrod further submits that
one with ordinary skill in the art would not have viewed the particular
identified wax composition in Ochs, which includes mainly beeswax with
only a nominal or minor percentage of soybean additive, as “soywax.” (Id.
at pp. 9-10.) To that end, Gudebrod urges that “[i]t is well known that
soywax results from the hydrogenation of soybean oil, and not the addition
of emulsifier to beeswax.” (Id. at p. 10.) In support of its position that
Ochs lacks disclosure of a “soywax,” Gudebrod relies on the declaration
testimony of inventor Alimohammad Evazynadjad.1

1 See “Declaration of Alimohammad Evazynajad Under 35 U.S.C. 1.132”
filed October 14, 2009 (“Evazynadjad Decl.”).
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Application 11/204,453

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We have reviewed Mr. Evazynadjad’s declaration and observe that
while he concludes that Ochs’s beeswax and soybean emulsifier is not
“Soywax” (Evazynadjad Decl. ¶ 10), his testimony provides little, if any,
guidance as to what material would be understood as forming “soywax.”
Gudebrod’s specification also is largely devoid of any meaningful
elucidation as to what makes up “soywax” other than the general statement
that “Soywax is made from 100% renewable sources such as soybeans and
other plant oils.” (Spec., p. 3, ll. 4-5.)
Our inquiry into the propriety of the Examiner’s rejection based on
Ochs turns on whether the record provides adequate evidence that Ochs’s
beeswax with soybean additive would have been understood as a material
constituting soywax. Although it is not readily apparent from the record just
what “soywax” is, on our review, we conclude that there is insufficient proof
that Ochs’s disclosed wax would itself be regarded as soywax. Because the
rejections as made by the Examiner are premised on an inadequately
supported finding equating Ochs’s wax with “soywax,” we cannot
countenance those rejections.
Accordingly, we do not sustain the Examiner’s rejections of claims 1-
29 based solely on the teachings of Ochs.
D. CONCLUSION
The Examiner did not provide an adequate evidentiary basis for
determining that Ochs discloses a “Soywax” material as a coating for dental
floss.
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E. NEW GROUND OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter the
following new ground of rejection:
Independent claims 1, 5, 8 and 9 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Ochs and Heath.2
With respect to the above-noted claims, Ochs discloses a practice of
forming dental floss from monofilaments or stands of PTFE or expanded
PTFE. (Ochs, 7:54-8:2.) The dental floss includes an exterior “coating” (id.
at 3:58-62) incorporating any of a variety of “waxes” including “vegetable
waxes” (id. at 4:22-5:40). Ochs does not describe “soywax,” as a particular
type of wax contemplated for the coating material.
As evidenced by Heath, however, a person of ordinary skill in the art
would have recognized that “soywax” is a known variety of “vegetable
based waxes.” (Heath, p. 2, ¶ 0012.) In light of Heath’s disclosure, a skilled
artisan would have readily appreciated that “soywax” is a type of “vegetable
wax” available as an alternative to beeswax. Accordingly, we conclude that
claims 1, 5, 8, and 9 would have been prima facie obvious in view of the
teachings of Ochs that the Examiner noted and of Heath regarding soywax.
We leave the evaluation of the patentability of the remaining
dependent claims in view of the teachings of the prior art in the first instance
to the expertise of the Examiner.
F. SUMMARY
The Examiner’s rejection of claims 1-3, 5-7, 9-12, and 14 under 35
U.S.C. § 102(b) as anticipated by Ochs is reversed.

2 US 2004/0208953 A1, published October 21, 2004.
Appeal 2010-007559
Application 11/204,453

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The Examiner’s rejection of claims 4, 8, and 13 under 35 U.S.C.
§ 103(a) as unpatentable over Ochs is reversed.
Claims 1, 5, 8 and 9 stand newly rejected as having been obvious in
view of the combined teachings of Ochs and Heath.

This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). That section provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to the
examiner….

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same
record….

REVERSED
New Ground of Rejection: 37 C.F.R. § 41.50(b)
rvb