Ex Parte Grez et al

Patent Trial and Appeal Board

Jun 5, 2013

11022910 (P.T.A.B. Jun. 5, 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.
11/022,910 12/27/2004 Joseph W. Grez 000099-1 8009
7590 06/05/2013
Philips Electronics
P.O. Box 3001
Briarcliff Manor, NY 10510-8001
EXAMINER
KARLS, SHAY LYNN
ART UNIT PAPER NUMBER
3723
MAIL DATE DELIVERY MODE
06/05/2013 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 JOSEPH W. GREZ and JOLDERT MARIA BOERSMA
____________

Appeal 2011-004299
Application 11/022,910
Technology Center 3700
____________

Before WILLAIM V. SAINDON, WILLIAM A. CAPP, and
JILL D. HILL, Administrative Patent Judges.

HILL, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-004299
Application 11/022,910

2
STATEMENT OF THE CASE
Joseph W. Grez and Joldert Maria Boersma (Appellants) appeal under
35 U.S.C. § 134 from a final rejection of claims 1-3, 8-15, 18, 26, 27, 30, 32,
and 34-38. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
The claimed subject matter relates to “power toothbrushes which use
acoustic wave action to produce a cleansing effect for the teeth of the user.”
Spec, 1, ll. 13-15. Claim 1 is illustrative of the subject matter on appeal and
is reproduced below.
1. A power toothbrush, comprising:

a handle portion;

a head portion, the head portion containing a flexible
diaphragm acoustic action member for creating sonic frequency
acoustic wave action outwardly from the head portion, acting
on fluid in a user's mouth; and

an acoustic system driver for producing energy to move
the acoustic action member relative to the teeth, at a frequency
in the range of 30-700 Hz, to create a sonic frequency acoustic
wave from or off of the acoustic action member, such that when
the head portion is operatively positioned in the mouth of a
user, the acoustic action member moves toward and away from
the teeth of the user, wherein movement of the acoustic action
member produces a sonic frequency acoustic wave action in
fluid contacting the teeth, producing an acoustic cleansing
effect on the teeth.

EVIDENCE

The Examiner relies on the following evidence:
Appeal 2011-004299
Application 11/022,910

3
Wysocki US 5,255,274 Oct. 19, 1993
Giuliani US 5,378,153 Jan. 3, 1995
Bock US 5,546,624 Aug. 20, 1996
Kanetsuki JP 10-165228 A Jun. 1998
Kurosawa JP 2004148079 May 2004

REJECTIONS
Claims 1-3, 10-15, 18, 26, 27, and 35-38 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Kanetsuki, Kurosawa, and Giuliani.
Ans. 3-5. Claims 8, 9, 30, and 34 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Kanetsuki, Kurosawa, Giuliani, and Bock, and claim 32
stands rejected under 35 U.S.C. § 103(a) as unpatentable over Kanetsuki,
Kurosawa, Giuliani, and Wysocki. Fin. Rej. 6.1 Claims 26, 27, 30, 32, and
34 stand provisionally rejected on the ground of non-statutory double
patenting. Fin. Rej. 7.
ANALYSIS
Claims 2, 3, 10-15, 18, 35, and 37 stand or fall with claim 1, and
Claims 27, 36, and 38 stand or fall with claim 26. App. Br. 8. Reply Br. 3.
The two issues in this appeal apply to independent claims 1 and 26, and
include: (1) whether the Examiner provided an articulated reasoning with
rational underpinning regarding why it would have been obvious to one
skilled in the art at the time of the invention to use Kurosawa’s flexible
rubber material in Kanetsuki’s diaphragm 5; and (2) whether the Examiner
provided an articulated reasoning with rational underpinning regarding why
it would have been obvious to one skilled in the art at the time of the

1 Appellants do not separately address these rejections, which are of claims
dependent from claims 1 and 26.
Appeal 2011-004299
Application 11/022,910

4
invention to use Giuliani’s sonic frequencies in Kanetsuki’s toothbrush.
None of the Examiner’s findings with respect to the teachings of Kanetsuki
and Kurosawa are in dispute.
Regarding the first issue, the Examiner concluded that it would have
been obvious to one of ordinary skill in the art at the time of the invention to
modify the acoustic member of Kanetsuki so that it is made from rubber as
taught by Kurosawa, because a rubber diaphragm will cause less injury to a
user’s mouth and the flexible rubber will allow the acoustic member to
vibrate more efficiently. Ans. 4-5. Appellants argue that Kurosawa teaches
rubber fingers extending from its rubber base 8, and that Kurosawa’s
structure therefore “bears no resemblance to the ordinary definition/meaning
of a ‘diaphragm,’” and that therefore one skilled in the art would not
recognize or appreciate Kurosawa’s structure “as anything close to a
diaphragm and hence would be unlikely to modify [Kanetsuki] to make it
rubber as asserted by the examiner.” Reply Br. 4. Appellants’ argument,
however, does not address the Examiner’s articulated reasoning and rational
underpinning. The Examiner’s reasoning that a rubber diaphragm will cause
less injury to a user’s mouth and the flexible rubber will allow the acoustic
member to vibrate more efficiently is an articulated reasoning with rational
underpinning.
Regarding the second issue, the Examiner concluded that it would
have been obvious to one of ordinary skill in the art at the time of the
invention to operate Kanetsuki’s ultrasonic brush with a sonic drive
frequency of Giuliani to create an appropriate size and amount of bubbles in
the cleaning fluid to more efficiently clean teeth, and because higher
frequencies are irritating to human hearing. Ans. 5 (citing Giuliani, col. 7,
Appeal 2011-004299
Application 11/022,910

5
lines 59-61 (stating that frequencies above 500Hz are irritating to human
hearing)).
Appellants argue that, although one skilled in the art would be aware
of the “noise” issue at supersonic frequencies, a single issue, addressed in a
single statement in Giuliani, “is not sufficient to overturn the clear direction
of” Kanetsuki and Kurosawa, because there are many advantages to using
ultrasonic frequencies. Reply Br. 5. Appellants explain that ultrasonic
frequencies have a substantially different operational effect than sonic
frequencies. Id. Even if ultrasonic and sonic frequencies have a
substantially different operational effect, both frequencies clean teeth and
Appellants have not cogently explained how the operational distinction is so
great that one skilled in the art would not turn to Giuliani’s sonic frequencies
to address the issue of the cleaning noise being irritating to human hearing.
Further, Appellants argue that Giuliani teaches sonic frequency only
for a toothbrush, and not to produce acoustic wave energy for cleaning teeth,
because Giuliani’s electromagnetic driver produces a back and forth action
of a brush for scrubbing teeth. Reply Br. 5. To the contrary, Giuliani
teaches acoustic cleaning effects beyond the bristles of the teeth, achieved
when the bristles cause fluid to flow in the region of the teeth and gums at
velocities near that of the brush. Giuliani, col. 4, ll. 21-48.
Lastly, Appellants argue that there is nothing in Kanetsuki or
Kurosawa to suggest to one skilled in the sonic acoustic teeth cleaning art
that the Giuliani frequencies could be used in their devices. Reply Br. 5.
Neither Kanetsuki nor Kurosawa need to suggest Giuliani’s frequencies for
the rejection to stand, and the Examiner has provided an articulated
reasoning with rational underpinning regarding why it would have been
Appeal 2011-004299
Application 11/022,910

6
obvious to one skilled in the art at the time of the invention to use Giuliani’s
sonic frequencies in Kanetsuki’s toothbrush.
For the reasons set forth above, we sustain the rejections of claims 1-
3, 10-15, 26, 27, and 35-38.
Appellants do not advance any separate argument suggesting that
claims 8, 9, 30, and 34 might be patentable over Kanetsuki, Kurosawa,
Giuliani, and Bock if claims 1 and 26 are obvious over Kanetsuki,
Kurosawa, and Giuliani. Similarly, Appellants do not advance any separate
argument suggesting that claim 32 might be patentable over Kanetsuki,
Kurosawa, Giuliani, and Wysocki if claim 26 is obvious over Kanetsuki,
Kurosawa, and Giuliani. We therefore also sustain the rejections of claims
8, 9, 30, 32, and 24.
Regarding the provisional obviousness-type double patenting rejection
of claims 26, 27, 30, 32, and 34, the claims relied upon in the rejection have
been canceled or amended. We decline to reach the rejection because the
claims now relied upon are not the same as those originally considered by
the Examiner when the rejection was made. Panels have flexibility to reach
or not reach provisional obviousness-type double patenting rejections. See
Ex parte Moncla, 95 USPQ2d 1884 (BPAI 2010) (precedential).

DECISION

We AFFIRM the rejections of claims 1-3, 10-15, 18, 26, 27, and 35-
38 under 35 U.S.C. § 103(a) as unpatentable over Kanetsuki, Kurosawa, and
Giuliani.
We AFFIRM the rejection of claims 8, 9, 30, and 34 under 35 U.S.C.
§ 103(a) as unpatentable over Kanetsuki, Kurosawa, Giuliani, and Bock.
Appeal 2011-004299
Application 11/022,910

7
We AFFIRM the rejection of claim 32 under 35 U.S.C. § 103(a) as
unpatentable over Kanetsuki, Kurosawa, Giuliani, and Wysocki.
We do not reach the provisional rejection of claims 26, 27, 30, 32, and
34 on the ground of non-statutory double patenting.
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).
AFFIRMED

Vsh