Ex Parte Graham

Board of Patent Appeals and Interferences

Sep 20, 2010

11302648 (B.P.A.I. Sep. 20, 2010)

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.
11/302,648 12/15/2005 Neil John Graham 51179 1742
7590 09/21/2010
Neil John Graham
6017 Lido Lane
Long Beach, CA 90803
EXAMINER
LEWIS, RALPH A
ART UNIT PAPER NUMBER
3732
MAIL DATE DELIVERY MODE
09/21/2010 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 NEIL JOHN GRAHAM
____________

Appeal 2009-012045
Application 11/302,648
Technology Center 3700
____________

Before LINDA E. HORNER, MICHAEL W. O’NEILL, and
KEN B. BARRETT, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown in the PTOL-90A cover letter attached to this decision.

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STATEMENT OF THE CASE
Neil John Graham (Appellant) seeks our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-20. We have jurisdiction under 35
U.S.C. § 6(b).2

The Invention
The claimed invention is to a portable vacuum veneer placement
instrument.
Claims 1 and 19, reproduced below, are illustrative of the subject
matter on appeal.
1. A portable vacuum veneer placement instrument
for placing a dental veneer on a tooth comprising:
a straight axial longitudinal tube with a first end,
second end, and an exterior and an interior wherein the

2 We do not have jurisdiction to review the objection to the drawings under
37 C.F.R. § 1.83(a) (see App. Br. 11 and 12) nor the finality of the
Examiner’s Office Action (see App. Br. 39-40) as these are matters that are
reviewable by petition to the Director under 37 C.F.R. § 1.181. See MPEP
§ 1201 (the Board will not ordinarily hear a question that is reviewable by
petition); In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002) (citing In re
Hengehold, 440 F.2d 1395, 1403-04 (CCPA 1971) (stating that there are
many kinds of decisions made by examiners that are not appealable to the
Board when they are not directly connected with the merits of issues
involving rejections of claims, and holding that “the kind of adverse
decisions of examiners which are reviewable by the board must be those
which relate, at least indirectly, to matters involving the rejection of
claims”)); and In re Mindick, 371 F.2d 892, 894 (CCPA 1967) (holding that
the refusal of an examiner to enter an amendment of claims is reviewable by
petition under 37 C.F.R. § 1.181, and not by appeal to the Board).
Therefore, we will not review the Examiner’s objection to the drawings
under 37 C.F.R. § 1.83(a) nor the finality of the Examiner’s Office Action.

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longitudinal tube interior is hollow and extends from the
first end to the second end;
an air bulb with a hollow interior having front and
rear ends, the front end defining an internal passage, the
air bulb front end is connected to the axial longitudinal
tube first end wherein the air bulb internal passage
connects with the hollow interior of the longitudinal tube;
and
a tip with an interior channel mounted at the second
end of the axial longitudinal tube, the tip being 4mm-6mm
in diameter formed from a resilient elastomer and defining
an outwardly opening cup-shaped base for engaging the
dental veneer, the interior of the cup-shaped base being in
communication with the tip interior channel which
communicates with the hollow interior of the axial tube
whereby the dental veneer is vacuum supported against the
cup-shaped base when the air bulb is squeezed.

19. A method of handling a dental restoration,
during its fitting and final cementation to a tooth
comprising:
placing a tip of a portable vacuum veneer placement
instrument on an outer surface of the dental restoration,
squeezing an air bulb of the portable vacuum veneer
placement instrument in order to vacuum attach the dental
restoration to the tip of the portable vacuum veneer
placement instrument
carrying the den[t]al restoration to the tooth for
sizing;
coating an inner surface of the dental restoration
with a light-curing adhesive;
seating the inner surface of the dental restoration on
the tooth;
curing the adhesive with a light-curing light; and
squeezing the air bulb of the portable vacuum
veneer placement instrument which releases the portable
vacuum veneer placement instrument from the dental
restoration.

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The Rejections
The following Examiner’s rejections are before us for review:
1) Claims 1, 2, 7, 8, 13, and 14 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Palmer (U.S. Patent No. 5,106,139, issued Apr. 21,
1992). Ans. 3.
2) Claims 1, 2, 7, 8, 13, 14, and 19 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Oliva ’278 (U.S. Patent No. 4,822,278, issued
Apr. 18, 1989) in view of Palmer. Ans. 5.
3) Claims 3-5, 9-11, and 15-17 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Oliva ’278 in view of Palmer, as applied to claims 1, 7,
and 13 above, and further in view of Oliva ’981 (U.S. Patent No. 5,040,981,
issued Aug. 20, 1991).3 Ans. 7.
4) Claims 6, 12, and 18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Oliva ’278 in view of Palmer, as applied to claims 1, 7,
and 13 above, and further in view of Oliva ’981 and Johnsen (U.S. Patent
No. 5,749,730, issued May 12, 1998).4 Ans. 8.
5) Claim 20 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Oliva ’278 in view of Palmer, as applied to claim 19
above, and further in view of Johnsen. Ans. 9.

3 We note that the statement of the rejection on page 7 of the Examiner’s
Answer failed to include claim 11. However, from the body of the rejection
(i.e., first full paragraph on page 8), it is clear that claim 11 is being rejected
along with claims 3-5, 9, 10, and 15-17. Therefore, the rejection as
presented above has been reworded to include claim 11.
4 We note that the statement of the rejection on page 8 of the Examiner’s
Answer was worded incorrectly and has been reworded to correctly reflect
the Examiner’s rejection.
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SUMMARY OF DECISION
We AFFIRM.

OPINION
Issues
In light of the Appellant’s contentions and the Examiner’s positions,
the issues before us are as follows:
1) Did the Examiner err in finding that Palmer discloses that the air
bulb 26 front end 46 is connected to the axial longitudinal tube 40 first end,
the air bulb internal passage connects with the hollow interior of the
longitudinal tube, and the cup-shaped base of the tip is circular in shape?
2) Did the Examiner err in concluding that one of ordinary skill in the
art would have found it obvious to modify Oliva ’278 to replace the vacuum
line 22 and vacuum source 26 with the air bulb 26 of Palmer and in finding
that Oliva ’278 discloses a cup-shaped base of a tip which is circular in
shape?
3) Did the Examiner err in concluding that one of ordinary skill in the
art would have found it obvious to modify the resulting veneer placement
instrument from the combination of Oliva ’278 and Palmer by making the
cup-shaped base of the tip be either rectangular or trapezoidal in shape and
by including a tool holder with holes as taught by Oliva ’981?
4) Did the Examiner err in concluding that one of ordinary skill in the
art would have found it obvious to modify the combination of Oliva ’278
and Palmer to include a tool holder with holes by the teachings of Oliva ’981
and a light proof hinged box by the teachings of Johnsen?
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5) Did the Examiner err in concluding that one of ordinary skill in the
art would have found it obvious to modify the resulting method from the
combination of Oliva ’278 and Palmer by the teachings of Johnsen to
include the steps of placing the veneer mounted on the instrument into a tool
holder within a light insulated box and closing the lid?
Analysis
Issue 1
Independent Claims 1, 7, and 13
Appellant contends that Palmer does not teach the front end of the air
bulb being connected to the front end of the axial longitudinal tube and that
the internal passage of the air bulb is connected to the hollow interior of the
axial longitudinal tube. App. Br. 14-15. More particularly, Appellant
contends that “[t]he axial longitudinal tube (extension tube) in Palmer has
no direct connection with the air bulb” and Palmer “has no direct
connection between the air bulb (suction means) interior and the longitudinal
tube (extension tube) interior.” Id. In other words, Appellant contends that
in order to meet the claim language of “connected to” and “connects with” in
each of independent claims 1, 7, and 13, the air bulb and axial longitudinal
tube must be in direct contact with each other and there cannot be any
intervening structure between the air bulb and the axial longitudinal tube.
Id.
The Examiner’s position is that Palmer discloses “an air bulb 26 with
a hollow interior having front and rear ends wherein the front end defines an
internal passage” and “[t]he air bulb 26 front end being connected to the
axial longitudinal tube 40 first end.” Ans. 4. The Examiner argues that:
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the present claims do not require that the air bulb
and longitudinal tube be formed as a single unitary
piece. The "direct connection" argued by appellant
to be critical to the claim is not even present in the
claims. The claims do not reasonably exclude
from their scope a coupling connection between
the air bulb and the longitudinal tube.
Ans. 10.
“[T]he accepted definition of the term ‘connected’ is restricted to
neither a direct nor an indirect connection, and the term is therefore
applicable to an indirect connection….” Ullstrand v. Coons, 147 F.2d 698,
700 (CCPA 1945). Therefore, we agree with the Examiner that Palmer
meets the claim language of “connected to” and “connected with” because
this language does not require direct connection and does not exclude
intervening structure as argued by Appellant.
Appellant also contends that “[t]he proposed modification is to
eliminate the quick-couple which renders the Palmer invention
unsatisfactory for the stated purpose of quickly interchangeable gripping
members with suction cups of different sizes and shapes” and “the removal
of the quick couple and the tube enclosed air bulb would require a
substantial reconstruction or redesign of the Palmer invention.” App. Br. 16.
The Examiner has not proposed to modify Palmer to eliminate the
quick couple. See Ans. 4-5 (Examiner proposed modifying Palmer to meet
the claimed size limitation for the tip and the claimed bend angle for the
tube). The claim language does not require that the air bulb be directly
connected to the axial longitudinal tube so that there is no need to eliminate
the quick couple to directly connect those two components. Thus, we
disagree that the Examiner’s proposed modifications of Palmer would render
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it unfit for its intended purpose or would require substantial reconstruction
or redesign.
Based on the foregoing, the Examiner’s rejection of claims 1, 7, and
13 under 35 U.S.C. § 103(a) as unpatentable over Palmer is sustained.
Dependent Claims 2, 8, and 14
Appellant contends that “[t]he Palmer specification is silent as to the
shape of the suction cups 38” and that none of Figures 1-3 are detailed
enough to discern whether the suction cup is circular or oval. App. Br. 15.
Appellant further contends that “[a] circular cup in Palmer would have to be
an assumption.” Id.
The Examiner’s position is that:
the drawings reasonably teach a circular shape, and
to the extent that they do not explicitly teach such
a shape, then one of ordinary skill in the art
desiring to practice the Palmer et al[.] invention
would have found the selection of such a common
shape obvious as a matter of routine practice since
“cup” and “suction cup” terminology (column 4,
line 55) commonly refer to a circular shape.
Ans. 10.
Appellant is viewing the Palmer reference too narrowly because what
a reference explicitly teaches is not the limiting factor in an obviousness
analysis. Rather, a reference must be considered not only for what it
expressly teaches, but also for what it fairly suggests. See In re Baird, 16
F.3d 380 (Fed. Cir. 1994). The Examiner found that “suction cup”
commonly refers to a circular shape and Appellant does not appear to
contest this finding. Thus, the suction cup 38 of Palmer fairly suggests that
it is circular in shape because “suction cup” commonly refers to a circular
shape. While the Palmer reference does not clearly show a cross-section of
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the suction cup 38 so that we may know for certain whether the suction cup
38 is circular in shape or not, we find that the Palmer reference would fairly
suggest to one of ordinary skill in the art that the suction cup 38 is circular in
shape.
Based on the foregoing, the Examiner’s rejection of claims 2, 8, and
14 under 35 U.S.C. § 103(a) as obvious over Palmer is sustained.
Issue 2
Independent claims 1, 7, 13, and 19
Appellant contends that Oliva ’278 has no vacuum suction of its own,
but that the Oliva ’278 instrument includes a light-weight handpiece which
is adapted for coupling to a vacuum source. App. Br. 18. Appellant
describes Oliva ’278 as using the following structures instead of an air bulb,
namely, various air valve mechanisms, a hollow barrel with an elongated
cylindrical grip, tubing with fittings, an adapter for a vacuum line source,
and an external vacuum source which is not part of the Oliva ’278
instrument. App. Br. 19. Appellant contends that the Examiner’s
substitution of the air bulb mechanism of Palmer for the vacuum line
mechanism of Oliva ’278 “would require a substantial reconstruction and
redesign of the elements shown (in the primary reference) as well as a
change in the basic principle under which the (primary reference)
construction was designed to operate” (App. Br. 19) which Appellant sees as
“[t]he valves and adapters in Oliva are designed for a high volume vacuum
source.” App. Br. 21. Appellant also contends that: (1) “Oliva [’278] in
view of Palmer does not teach all the claim limitations” because Palmer does
not disclose a direct connection between the air bulb and the axial
longitudinal tube; (2) “[t]here is no suggestion in Oliva [’278] to modify the
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vacuum source to a small portable vacuum source found in Palmer”; and (3)
“the vacuum modification . . . would have very little chance of success due
to the implied high volume vacuum requirement in Oliva [’278]. App. Br.
21-22.
The Examiner’s position is that Oliva ’278 discloses all of the claim
limitations of claims 1, 7, 13, and 19; except that Oliva ’278 fails to disclose
that the tip is 4-6 mm in diameter and Oliva ’278 discloses “vacuum line 22
attached to a vacuum source 26 instead of the claimed air bulb.” Ans. 6.
The Examiner concludes that:
To have replaced the vacuum line and source of
the [Oliva ’278] with an air bulb so that the [Oliva
’278] tool may be made small, portable and not
encumbered by an exterior vacuum line and source
would have been obvious to one of ordinary skill
in the art in view of the teaching by Palmer et al.
Additionally, it is noted that Palmer et al also teach
that the axial longitudinal tube may be straight or
angled (col. 4, lines 50-61) and that the tip 38 may
be of various sizes.
Id.
Palmer discloses a device or tool for picking up light-weight items or
components. Title and Abstract, ll. 1-2. The pick-up tool 52 includes an
elongated, hollow tube 10 enclosing a suction creating means 26, comprised
of a pliable bulb, in which a vacuum is created by depressing an actuator
member 18. Col. 3, ll. 39-43 and 66-68. The tube 20 has an open proximal
end 14 and a distal end 12. Col. 3, ll. 61-62. The suction creating means 26
has an open end 46 through which air is drawn or expelled in conjunction
with the open proximal end 14 of the tube 10. Col. 3, ll. 62-66. Air is drawn
into the suction creating means 26 through a tip member 28 which is
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attached to a gripping member 36. Col. 3, ll. 45-47. In order to pick up item
50, the gripping member 36 is placed in contact with the item and air is
drawn into the suction creating means 26 through the gripping member 36
and the tip member 28 by a releasing the pressure previously applied on the
actuator member 18. Col. 3, ll. 47-54.
Oliva ’278 discloses a dental veneer instrument 10 for use in the
placement and fixation of dental veneer designed for bonding to a patient’s
tooth. Title and Abstract, ll. 1-4. The dental veneer instrument 10 includes
an elongated handpiece 18 of tubular construction defining an internal flow
passage 19. Col. 5, ll. 27-30. A fitting 20 at the rear of the handpiece 18
permits connection to tubing 22 for connection through an adapter 24 to a
vacuum source 26. Col. 5, ll. 35-39. At the front of the handpiece 18 is a
conical nose 28 which is connected to a hollow probe 30. Col. 5, ll. 40-44.
A tip 40 is connected to the probe 30. Col. 6, ll. 8-11. A cylindrical grip 34
is formed about a major portion of the handpiece 18. Col. 5, ll. 46-50.
“[T]he simple substitution of one known element for another”
generally will be obvious unless the substitution would have been beyond
the level of ordinary skill in the art; or the results of the substitution would
not have been predictable by one of ordinary skill in the art. KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 416-417 (2007).
We are not persuaded by Appellant’s arguments that it would not have
been obvious to one of ordinary skill in the art to have modified Oliva ’278
by replacing the vacuum source with the air bulb of Palmer. The
Examiner’s modification appears to be a simple substitution of one known
element (i.e., suction creating means of Palmer) for another (vacuum source
of Oliva ’278) that leads to the predictable result of being able to pick up an
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item through the use of suction or vacuum. It appears to be within the level
of skill of an ordinary skilled artisan to replace the vacuum source of Oliva
’278 with the air bulb of Palmer. Such a substitution would not require a
substantial reconstruction or redesign as suggested by Appellant.
Nor do we agree that it would change the basic principle of operation
of Oliva ’278 because Appellant has viewed the principle of operation of
Oliva ’278 as being that the valves and adapters are designed for a high
volume vacuum source, and this view is too narrow. The term principle of
operation actually relates to the “basic principles” under which the prior art
device was designed to operate. See In re Ratti, 270 F.2d 810, 813 (CCPA
1959) (“This suggested combination of references would require a
substantial reconstruction and redesign of the elements shown in [the
primary reference] as well as a change in the basic principles under which
the [primary reference] construction was designed to operate.” (Emphasis
added)). In Ratti, the modification suggested by the Examiner changed the
basic principle of sealing from attaining sealing through a rigid, press-fit,
interface between the components, to attaining sealing by providing a
resilient interface between the components. Id. at 811-13. This
modification fundamentally changed the technical basis of how a seal
performed its sealing function and how a sealed interface was attained.
Appellant’s reliance on Ratti is misplaced. The present case is
distinguishable from Ratti in that the suction creating means 26 of Palmer
provides a vacuum or suction in order to be able to pick up an item, and
replacing the vacuum source 26 of Oliva ‘278 with the suction creating
means 26 of Palmer still permits the creation of vacuum or suction to pick
up an item in the same manner. Thus, there is no “change in the basic
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principles” of operation with the modification of Oliva ’278 in view of
Palmer.
As stated above, with respect to Issue 1, we disagree with Appellant’s
arguments that Palmer does not satisfy the claim language of “connected to”
and “connected with” because this claim language does not require a direct
connection (i.e., there may be intervening structure between the air bulb and
the axial longitudinal tube).
We are also not convinced by Appellant’s argument that there is no
suggestion in Oliva ’278 to modify the vacuum source. The teaching,
suggestion, or motivation to combine the references need not be found in the
Oliva ’278 reference, but rather may be found in the knowledge generally
available to one of ordinary skill in the art. See KSR Int’l Co. v. Teleflex,
Inc., 550 U.S. 398 (2007), In re Jones, 958 F.2d 347 (Fed. Cir. 1992), and In
re Fine, 837 F.2d 1071 (Fed. Cir. 1988).
Finally, to the extent Appellant is arguing that there is no reasonable
expectation of success in the Examiner’s proposed combination, this
argument is not persuasive. Absolute predictability that the substitution will
be successful is not required. See In re O'Farrell 853 F.2d 894, 903-904
(Fed. Cir. 1988). Oliva ’278 and Palmer are cited by the Examiner to
demonstrate structural elements which are known in the art and the known
advantages that result from using those structural elements. Ans. 5-7.
Appellant has not suggested any persuasive reason why the Examiner erred
by concluding that it would have been obvious to one of ordinary skill in the
art to substitute the known suction creating means of Palmer for the known
vacuum source of Oliva ’278 in order to predictably provide the known
advantages of these structures. Appellant has also not suggested any
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persuasive reason why one of ordinary skill in the art would not have had a
reasonable expectation of success that the suction creating means of Palmer
could be substituted for Oliva ’278’s known vacuum source. The
replacement of the vacuum source of Oliva ’278 with the suction creating
means or air bulb of Palmer appears to be a simple substitution of one
known vacuum or suction device for another leading to a predictable result.
Therefore, it appears that the modification of Oliva ’278 by Palmer would
have a reasonable expectation of success contrary to Appellant’s arguments
otherwise.
Based on the foregoing, the Examiner’s rejection of claims 1, 7, 13,
and 19 under 35 U.S.C. § 103(a) as unpatentable over Oliva ’278 in view of
Palmer is sustained.
Dependent Claims 2, 8, and 14
For the same reasons as discussed supra with respect to whether
Palmer fairly suggested the circular shape of the cup-shaped base of the tip
of dependent claims 2, 8, and 14, we are not convinced that Oliva ’278 does
not fairly suggest that the cup-shaped base of the tip 40 is circular in shape.
Based on the foregoing, the Examiner’s rejection of claims 2, 8, and
14 under 35 U.S.C. § 103(a) as unpatentable over Oliva ’278 in view of
Palmer is sustained.
Issue 3
Dependent claims 3, 4, 9, 10, 15, and 16
Appellant contends that the square tip of Fig. 3C of Oliva ’981 does
not meet the claim limitation of rectangular as recited in claims 3, 9, and 15
because “[t]he specification and drawings are the best source of the
interpretation of the claims (MPEP)” and “[a] square-shaped cup in the
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present invention would not be useful; therefore, the present invention
claims all rectangles (as disclosed in Fig. 6B) except a square rectangle.”
App. Br. 24. Appellant contends that because the tips of Oliva ’981 are hard
and use adhesive to attach the dental veneer, one of ordinary skill in the art
would not modify Oliva ’278 in view of Palmer to have the tip shapes of
Oliva ’981 because it would change the principle of operation of Oliva ’278.
App. Br. 25. Appellant contends that Oliva ’981 does not teach a
trapezoidal shaped tip and Palmer was not designed for use on teeth. App.
Br. 26.
Oliva ’278 and Palmer have been discussed supra.
Oliva ’981 discloses a device or tool for manipulating dental
restorations or veneers. Abstract, ll. 1-7. The dental veneer manipulating
tool 30 includes a handle section 31, a tapered transition section 33, a tip
support section 32, and a tip 34. Col. 4, l. 65 through col. 5, l. 11. The tool
can be angled or straight. Fig. 1 and Fig. 4. The tip 34 may be circular,
square (i.e., rectangular), triangular, or other shapes. Figs. 3B-3D and col. 5,
l. 67 through col. 6, l. 6.
The Examiner’s position is that:
In regard to the cup tip shape limitations of
claims 3, 4, 9, 10, 15 and 16, Oliva ’981 teaches a
portable veneer placement instrument 30 having a
cup shaped base 34 which may be circular (Figure
3B), square/rectangular (Figure 3C), triangular
(Figure 3D) or other shape (column 6, line 4) in
order to accommodate veneer A. To have
modified the shape of the [Oliva ’278] tip in order
to better accommodate the shape of a particular
veneer being positioned on the tooth as taught by
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[Oliva] ’981 would have been obvious to one of
ordinary skill in the art.
Ans. 7-8.
We are not convinced that the square shaped tip 34A shown in Fig. 3C
of Oliva ’981 fails to meet the claim limitation of rectangular in claims 3, 9,
and 15. Appellant has provided no evidence that a square-shaped tip would
not be useful in dental veneer placement instruments or that the present
invention is limited to all rectangles except square rectangles.
Further, although Oliva ’981 does not explicitly disclose a trapezoidal
shaped tip, it is clear that Oliva ’981 envisioned “[o]ther transverse cross-
sectional shapes for tip 34” as pointed out by the Examiner by referring to
column 6, line 4. Therefore, in our view, it would have been within the level
of skill of an ordinary skilled artisan to modify the tip of Oliva ’278 to be
trapezoidal in shape absent evidence that the shape of the tip was significant.
See In re Dailey, 357 F.2d 669 (CCPA 1966) (The court held that the
configuration of the claimed disposable plastic nursing container was a
matter of choice which a person of ordinary skill in the art would have found
obvious absent persuasive evidence that the particular configuration of the
claimed container was significant).
We are not persuaded by Appellant’s argument that the tips of Oliva
’981 were not designed to be used as vacuum suction cups, but rather are
made of hard plastic and use adhesive or that the modification by Oliva ’981
would change the principle of operation of Oliva ’278. Just because the tips
of Oliva ’981 use adhesive instead of suction does not mean that one of
ordinary skill in the art would not look to the shapes of the tips of Oliva ’981
to modify the shape of the suction tips of Oliva ’278 (i.e., such a
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modification would not change the principle of operation of Oliva ’278).
Likewise, just because Palmer was not meant to be used on teeth does not
mean that one or ordinary skill in the art would not look to the teachings of
Palmer’s air bulb to replace the vacuum source and line of Oliva ’278.
Based on the foregoing, the Examiner’s rejections of claims 3, 4, 9,
10, 15, and 16 under 35 U.S.C. § 103(a) as unpatentable over Oliva ’278,
Palmer, and Oliva ’981 are sustained.
Dependent claims 5, 11, and 17
Appellant contends that one of ordinary skill in the art “would not
combine [Oliva ’278, Palmer, and Oliva ’981] and design a box to hold the
present tool in an upright manner allowing bonding material to be placed
upon a veneer while it is held on the tool suction cup” because “[t]he present
box has a different design and purpose and this invention and the upright
feature of the holder would not be obvious to an expert of ordinary skills in
the art.” App. Br. 26. Appellant further contends that “[t]he Oliva ’981 box
and holder would not be satisfactory for the intended purpose of the present
invention” and “the principal of operation of the prior art and the present
invention are different.” App. Br. 27.
The Examiner’s position is that:
In regard to the tool holder limitations of
claims 5, 11 and 17, Oliva ’981 also teaches
providing a tool holder 80 (Figure 9) comprised of
holes 87 sized to receive and transport (column 10,
line 28) a plurality of portable veneer placement
instruments. To have provided the [Oliva ’278]
device with a tool holder similar to that of [Oliva]
’981 so that multiple tool members may be
received and transported would have been obvious
to one of ordinary skill in the art in view of the
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teaching by [Oliva] ’981. In regard to the "upright
manner" limitation, the claims fail to provide for
any orientation of the instruments which would
indicate what is "upright."

Ans. 8.
Oliva ’278, Palmer, and Oliva ’981 have been discussed supra. Oliva
’981 additionally discloses that the dental veneer instruments may be
contained within a container 80 for transporting and dispensing the
instruments. Col. 10, ll. 28-30. The container 80 includes a box 81 having a
rectangular base 28 with four side walls 83, 84, 85, 86. Col. 10, ll. 34-42.
The upper side wall 84 has a plurality of holes 87 of the appropriate size to
snugly receive the outer cylindrical surface of the tool. Col. 10, ll. 46-48.
Spacing partitions 88 also help hold the tools in place in the container 80.
Col. 10, ll. 49-57.
We are not persuaded by Appellant’s arguments that one of ordinary
skill in the art would not modify the resulting instrument from the
combination of Oliva ’278 and Palmer to include the tool holder 80 having
holes 87 of Figure 9 of Oliva ’981 because the upright feature of the holder
would not be obvious, would make the resulting instrument unfit for its
intended purpose, and change the principal of operation of the resulting
instrument. Although the container 80 in Figure 9 of Oliva ’981 does not
appear to be upright, this does not mean that the container 80 could not be
set on its bottom (opposite the inner upper surface 89) or be attached to a
wall so that the tools would be held in an upright manner.
Based on the foregoing, the Examiner’s rejection of claims 5, 11, and
17 under 35 U.S.C. § 103(a) as unpatentable over Oliva ’278, Palmer, and
Oliva ’981 is sustained.
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Issue 4
Appellant contends that one of ordinary skill in the art viewing the
Oliva ’278, Palmer, and Oliva ’981 references would not find the present
light proof box and tool holder obvious. App. Br. 29. Appellant also
contends that one of ordinary skill in the art would not view Johnsen’s light
proof box, which was designed to contain small portions of light curing
material, and find the present invention obvious. Id.
The Examiner’s position is that:
The [Oliva] ’981 "container for transporting
and dispensing a quantity of dental veneer
manipulating tools" (column 10, lines 28 and 29) is
further disclosed as having a "cover of any suitable
type is included with container 80 to form an air-
tight enclosure for the tools 30, guaranteeing
sterility" (column 10, line 68--column 11, line 3).
Merely providing a common cardboard box with
folding lid (i.e. hinged) with the container 80 of
Oliva ’981 in order transport the tools would have
been obvious to one of ordinary skill in the art as a
matter of routine. The providing of a such a box
would have been particularly obvious in view of
Johnsen et al who teach a dental organizer 10 for
receiving tools (column 3, line 51-59) and
adhesives whose lid 14 is connected to the base 12
with a hinge 16 (col. 1, lines 10-36; col. 2, lines
10-41; col. 3, lines 4-12; see Figure 1). Johnsen et
al further teach that the base and lid are opaque to
protect light sensitive material (col. 2, lines 10-4;
col. 3, lines 4-12). It would have been obvious to
one having ordinary skill in the art at the time the
invention was made to modify the portable
vacuum placement instrument and tool holder of
Oliva [’278] as modified by Palmer et al[.] and in
further view of Oliva ’981 and Johnsen et al[.] to
provide a tool holder which provides an easy-to-
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open-easy-to-close system while also providing
effective protection for light sensitive products
from exposure.

Ans. 8-9.
Johnsen discloses a dental organizer for light-sensitive materials.
Title. The dental organizer 10 includes a base 12 and a cover 14 which are
both opaque to protect light-sensitive material from light. Col. 3, ll. 4-7. A
resilient hinge 16 pivotally connects the cover 14 to the base 12. Col. 3,
ll. 7-9. The base has a perimeter flange 18 and first and second plateau
structures 20, 30. Col. 3, ll. 23-26. The first and second plateau structures
20, 30 include channels and wells which are configured to carry a material
or item, such as light sensitive bonding agents or resins and applicator
brushes, used in a dental procedure. Col. 3, ll. 26-33. When the cover 14 is
closed, the channels and wells are blocked from light so that the light
sensitive materials therein will not cure. Col. 4, ll. 1-29.
Familiar items may have obvious uses beyond their primary purpose.
KSR, 550 U.S. at 420 (“Common sense teaches, however, that familiar items
may have obvious uses beyond their primary purposes, and in many cases a
person of ordinary skill in the art will be able to fit the teachings of multiple
patents like pieces of a puzzle.”).
We disagree with Appellant that one of ordinary skill in the art would
not view Johnsen’s light proof box, which was designed to contain small
portions of light curing material, and find the present invention obvious.
Johnson clearly teaches that tools or applicator brushes B1 and B2 are
contained within light proof box 10 as shown in Figure 2 in order to prevent
the curing of the light sensitive material on the ends of the applicator brushes
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B1 and B2. Thus, Johnsen provides a teaching of placing a tool or
applicator brushes B1 and B2 within a light proof box and closing a hinged
lid in order to shut out light and prevent premature curing of a light sensitive
material on the ends of the tools or applicator brushes B1 and B2. The
Examiner has used common sense to fit together familiar items from the
teachings of Oliva ’278, Palmer, Oliva ’981, and Johnsen like pieces of a
puzzle.
Based on the foregoing, the Examiner’s rejection of claims 6, 12, and
18 under 35 U.S.C. § 103(a) as unpatentable over Oliva ’278, Palmer, Oliva
’981, and Johnsen is sustained.
Issue 5
Appellant contends that one of ordinary skill in the art would not view
Johnsen’s light proof box designed to contain small portions of light curing
material and find the present invention obvious. App. Br. 30.
The Examiner’s position is that Johnsen teaches storing light sensitive
dental materials and tools, such as applicator brushes B1 and B2, used
therewith in a light insulated box 10 having a hinged cover 14 and the box
prevents inadvertent exposure to light. Ans. 9. The Examiner concludes
that providing Johnsen’s light insulated box to the Oliva ’278 in view of
Palmer method, wherein a light curable adhesive is used to cement a veneer
to a tooth, would have been obvious in order to prevent inadvertent curing of
the light sensitive materials. Id.
We disagree with Appellant that one of ordinary skill in the art
viewing the teachings of Johnsen would not find the present invention
obvious. Johnsen teaches a light proof box 10 having a hinged lid 14 which
when closed prevents premature curing of light sensitive material in the
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wells 30, 32, 34, and 36 and on the applicator brushes B1 and B2 partially
contained within the channels 24 and 26. Thus, it appears that the Examiner
has used common sense to fit together familiar items from the teachings of
Oliva ’278, Palmer, and Johnsen like pieces of a puzzle.
Based on the foregoing, the Examiner’s decision to reject claim 20
under 35 U.S.C. § 103(a) as unpatentable over Oliva ’278, Palmer, and
Johnsen cannot be sustained.
CONCLUSIONS
1) The Examiner did not err in finding that Palmer’s air bulb front end
and internal passage are connected to/with the axial longitudinal tube first
end and hollow interior, respectively, and that the cup-shaped base of the tip
is circular in shape.
2) The Examiner did not err in concluding it would have been obvious
to one of ordinary skill in the art to modify Oliva ’278 to replace the vacuum
line and vacuum source with the air bulb of Palmer and in finding that Oliva
’278 discloses a cup-shaped base of the tip that is circular in shape.
3) The Examiner did not err in concluding that it would have been
obvious to one of ordinary skill in the art to modify the resulting veneer
placement instrument from the combination of Oliva ’278 and Palmer by
changing the shape of the cup-shaped base of the tip and by including a tool
holder with holes as taught by Oliva ’981.
4) The Examiner did not err in concluding that it would have been
obvious to one of ordinary skill in the art to modify the instrument from the
combination of Oliva ’278 and Palmer to include a tool holder with holes by
the teachings of Oliva ’981 within a light proof hinged box by the teachings
of Johnsen.
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5) The Examiner did not err in concluding that it would have been
obvious to one of ordinary skill in the art to modify the resulting method
from the combination of Oliva ’278 and Palmer by the teachings of Johnsen
to include the steps of placing the veneer mounted on the instrument into a
tool holder within a light insulated box and closing the lid.
DECISION
1) The Examiner’s rejection of claims 1, 2, 7, 8, 13, and 14 under 35
U.S.C. § 103(a) as unpatentable over Palmer is affirmed.
2) The Examiner’s rejection of claims 1, 2, 7, 8, 13, 14, and 19 under
35 U.S.C. § 103(a) as unpatentable over Oliva ’278 and Palmer is affirmed.
3) The Examiner’s rejection of claims 3-5, 9-11, and 15-17 under 35
U.S.C. § 103(a) as unpatentable over Oliva ’278, Palmer, and Oliva ’981 is
affirmed.
4) The Examiner’s rejection of claims 6, 12, and 18 under 35 U.S.C. §
103(a) as unpatentable over Oliva ’278, Palmer, Oliva ’981, and Johnsen is
affirmed.
5) The Examiner’s rejection of claim 20 under 35 U.S.C.
§ 103(a) as unpatentable over Oliva ’278, Palmer, and Johnsen is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).
AFFIRMED

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Klh

NEIL JOHN GRAHAM
6017 LIDO LANE
LONG BEACH, CA 90803