08321262 (B.P.A.I. Sep. 14, 1998)

Ex parte GRIFFITH

Board of Patent Appeals and InterferencesSep 14, 1998

08321262 (B.P.A.I. Sep. 14, 1998)

Application for patent filed October 11, 1994. 1 According to the appellant, the application is a continuation- in-part of Application No. 08/144,060, filed October 27, 1993, now abandoned. THIS OPINION WAS NOT WRITTEN FOR PUBLICATION The opinion in support of the decision being entered today (1) was not written for publication in a law journal and (2) is not binding precedent of the Board. Paper No. 19 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte PATRICK GRIFFITH ____________ Appeal No. 97-1810 Application No. 08/321,2621 ____________ ON BRIEF ____________ Before McCANDLISH, Senior Administrative Patent Judge, MEISTER and NASE, Administrative Patent Judges. NASE, Administrative Patent Judge. Appeal No. 97-1810 Application No. 08/321,262 Claims 25 and 28 were amended subsequent to the final2 rejection. DECISION ON APPEAL This is a decision on appeal from the examiner's final rejection of claims 21 through 30, which are all of the claims pending in this application.2 We AFFIRM-IN-PART. Appeal No. 97-1810 Page 3 Application No. 08/321,262 In determining the teachings of Zagouris, we will rely3 on the translation provided by the PTO. A copy of the translation is attached for the appellant's convenience. In determining the teachings of Munoz Saiz, we will rely4 on the translation provided by the PTO. A copy of the translation is attached for the appellant's convenience. BACKGROUND The appellant's invention relates to a disposable toothbrush. An understanding of the invention can be derived from a reading of exemplary claim 21, which appears in the appendix to the appellant's brief. The prior art references of record relied upon by the examiner in rejecting the appealed claims are: Danek 958,371 May 17, 1910 Merrill 1,642,620 Sep. 13, 1927 Zagouris 2,457,378 (France) Aug. 14,3 1981 Munoz Saiz 3,616,182 (Germany) Dec. 4,4 1986 Claims 21, 24 and 25 stand rejected under 35 U.S.C. Â§ 103 as being unpatentable over Merrill in view of Munoz Saiz. Appeal No. 97-1810 Page 4 Application No. 08/321,262 Claims 22, 23 and 26 through 30 stand rejected under 35 U.S.C. Â§ 103 as being unpatentable over Merrill in view of Munoz Saiz, Danek and Zagouris. Rather than reiterate the conflicting viewpoints advanced by the examiner and the appellant regarding the above-noted rejections, we make reference to the examiner's answer (Paper No. 14, mailed December 11, 1996) for the examiner's complete reasoning in support of the rejections, and to the appellant's brief (Paper No. 12, filed September 9, 1996) for the appellant's arguments thereagainst. OPINION In reaching our decision in this appeal, we have given careful consideration to the appellant's specification and claims, to the applied prior art references, and to the respective positions articulated by the appellant and the examiner. As a consequence of our review, we make the determinations which follow. The rejection of claims 21, 24 and 25 under 35 U.S.C. Â§ 103 Appeal No. 97-1810 Page 5 Application No. 08/321,262 We sustain the rejection of claims 21 and 25, but not the rejection of claim 24. Claim 21 Claim 21 recites a disposable tooth cleaning apparatus comprising, inter alia, an elongated brush portion having a segment at one end and a plurality of bristles at the other end, an elongated handle portion having a compartment for holding a supply of powdered dentifrice and an opening through which the dentifrice may be poured and through which the segment of the brush portion is received for connecting the brush portion and handle portion for use, and means for sealing the opening for subsequent manual unsealing. Merrill discloses a pocket outfit for the care of teeth. As shown in Figures 1, the outfit includes a toothbrush 1 provided with a shank 2 whose tapered end fits exactly into a corresponding aperture 3 formed in the hollow handle 4. Merrill teaches (page 1, lines 49-54) that [b]y this arrangement the brush is well secured to its handle and at the same time the aperture 3 is closed, so that the chamber 5 in the interior of the handle will Appeal No. 97-1810 Page 6 Application No. 08/321,262 serve to contain a dentifrice in the form of a liquid or a paste, or even a powder. Applying the terms of claim 21 to these teachings we find that Merrill has an elongated brush portion having a segment at one end (i.e, shank 2) and a plurality of bristles at the other end (i.e, toothbrush 1) and an elongated handle portion (i.e, handle 4) having a compartment for holding a supply of powdered dentifrice (i.e, chamber 5) and an opening (i.e, aperture 3) through which the dentifrice may be poured and through which the segment of the brush portion is received for connecting the brush portion and handle portion for use. Munoz Saiz discloses a toothbrush with an interchangeable handle. As shown in Figure 1, the toothbrush 1 consists of a brush head body 3 and a handle 2. The brush head body 3 has a passage 5 extending from slanted end 7 to the bristles. The handle 2 forms a container 11 for containing liquid or semi- liquid toothpaste. The container 11 is sealed by wall 12 which is pushed through or removed by the slanted end 7 of the brush head body 3 during connection (see page 6, third Appeal No. 97-1810 Page 7 Application No. 08/321,262 The test for obviousness is what the combined teachings5 of the references would have suggested to one of ordinary skill in the art. See In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). paragraph and page 4, fourth and fifth paragraphs). Munoz Saiz teaches (see page 5, second paragraph) that the removable wall of the container serves as a seal until connection with the brush head body is made, since this exchangeable part is purchased individually in stores. After the scope and content of the prior art are determined, the differences between the prior art and the claims at issue are to be ascertained. Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966). Based on our analysis and review of Merrill and claim 21, it is our opinion that the only difference is the limitation that the tooth cleaning apparatus includes "means for sealing the opening for subsequent manual unsealing." In applying the test for obviousness , we reach the5 conclusion that it would have been obvious to one of ordinary Appeal No. 97-1810 Page 8 Application No. 08/321,262 skill in the art at the time the invention was made to seal Merrill's chamber 5 in the handle 4 by a wall which would be pushed through or removed by Merrill's shank 2 as suggested by the teachings of Munoz Saiz. The motivation for this modification is to make Merrill's handle an exchangeable part which can be purchased in stores in the manner suggested and taught by the handle of Munoz Saiz. The appellant's argue (brief, pp. 5-6) that the combination of Merrill and Munoz Saiz is improper since there is no motivation to combine their teachings. We do not agree. As set forth above, it is our opinion that Munoz Saiz's teaching of making his handle an exchangeable part which can be purchased in stores provides one skilled in the art the motivation to provide Merrill's chamber 5 in the handle 4 with a sealing wall. The appellant's argue (brief, p. 4 and reply brief, p. 1) that the combination of Merrill and Munoz Saiz does not meet all the limitations of claim 21. Specifically, the appellant's argue that the claimed "means for sealing the Appeal No. 97-1810 Page 9 Application No. 08/321,262 opening for subsequent manual unsealing" is not met since the seal 12 in Munoz Saiz does not appear to be manually removable. We find this argument to be unpersuasive for the following reasons. First, claim 21 does not require the sealing means to be manually removable. Claim 21 only requires the sealing means to be manually unsealed. Second, as pointed out above, Munoz Saiz specifically teaches that the wall 12 can be either pushed through or removed by pushing the slanted end 7 into the handle 2. Lastly, it is our opinion that the pushing of the brush head body into the handle to either push through or remove the wall is manually unsealing the opening to the chamber. In that regard, it quite apparent to us that the pushing of the brush head body into the handle is done manually (i.e., by the hands of a person) and the result is the unsealing of the chamber. For the reasons set forth above, the decision of the examiner to reject claim 21 under 35 U.S.C. Â§ 103 is affirmed. Appeal No. 97-1810 Page 10 Application No. 08/321,262 See page 3 of appellants' brief.6 Claim 25 The appellant has grouped claims 21 and 25 as standing or falling together. Thereby, in accordance with 37 CFR 6 Â§ 1.192(c)(7), claim 25 falls with claim 21. Thus, it follows that the decision of the examiner to reject claim 25 under 35 U.S.C. Â§ 103 is also affirmed. Claim 24 Dependent claim 24 adds to parent claim 21 the limitation that the means for sealing includes a flexible material extending across the opening and attached with an adhesive for one-time removal. The appellant argues (brief, p. 4) that the combination plainly fails to meet or suggest this limitation. As pointed out in the reply brief (p. 1), the examiner has not responded to this argument. Appeal No. 97-1810 Page 11 Application No. 08/321,262 We have reviewed the applied prior art but find nothing therein which would have suggested the subject matter of claim 24. Specifically, there is no teaching or suggestion of utilizing an adhesive for attaching the wall 12 of Munoz Saiz across the opening to his container 11. Since all the limitations of claim 24 are not suggested or taught by the applied prior art, the decision of the examiner to reject claim 24 under 35 U.S.C. Â§ 103 is reversed. The rejection of claims 22, 23 and 26 to 30 under 35 U.S.C. Â§ 103 We sustain the rejection of claims 22, 23, 26 and 28 through 30, but not the rejection of claim 27. Claim 22 Dependent claim 22 adds to parent claim 21 the limitation that the apparatus further includes a hermetic package enclosing the brush portion and the handle portion and that the package includes means for facilitating manually tearing open the package. Appeal No. 97-1810 Page 12 Application No. 08/321,262 The appellant has not provided any argument with respect to claim 22. The appellant has grouped claim 22 (brief, p. 3) with claims 23, 26 and 28 to 30 and has provided arguments relative to those claims. While the appellant has not argued claim 22, we have reviewed the applied prior art and find that the subject matter of claim 22 would have been obvious to one of ordinary skill in the art at the time the invention was made in view of Zagouris' teachings of a single-use toothbrush contained within a package having a pull-tab to separate the package into two sections. For the reasons set forth above, the decision of the examiner to reject claim 22 under 35 U.S.C. Â§ 103 is affirmed. Claim 23 Dependent claim 23 adds to parent claim 21 the limitation that the distal end of the handle portion is curved upwardly such that a thumb fits within the curve and a middle finger of Appeal No. 97-1810 Page 13 Application No. 08/321,262 a hand fits under the curved distal end, opposite the thumb, when the handle is manually grasped and oriented for brushing. Danek discloses a toothbrush. As shown in Figure 1, the toothbrush includes a handle 1 having an enlarged curved portion 3 shaped to conform to the contour of the palm of the hand, and a cavity 4 to receive the ball of the thumb. Zagouris discloses a single-use toothbrush. As shown in the figure, the handle 6 of the toothbrush is curved upwardly. In applying the above-noted test for obviousness, we reach the conclusion that it would have been obvious to one of ordinary skill in the art at the time the invention was made to curve Merrill's handle upwardly as suggested and taught by Danek and Zagouris. The self-evident motivation for this modification is to permit better gripping of Merrill's handle. The argument presented by the appellant (brief, p. 6 and reply brief, p. 2) is unpersuasive for the following reason. While the upwardly curved handles of Danek and Zagouris fit Appeal No. 97-1810 Page 14 Application No. 08/321,262 the contour of the palm, they are capable of being gripped in the manner recited in claim 23. That is, a thumb is capable of fitting within the curve and a middle finger of a hand is capable of fitting under the curved distal end, opposite the thumb, when the handle is manually grasped and oriented for brushing. In this regard, it should be remembered that claim 23 is directed to a tooth cleaning apparatus, per se, not to a method of using wherein this particular tooth cleaning apparatus is used. It seems the appellant is endeavoring to predicate patentability upon the method of using the tooth cleaning apparatus. This method is not determinative of the patentability of claim 23. The manner or method in which a machine is to be utilized is not germane to the issue of patentability of the machine itself. See In re Casey, 370 F.2d 576, 580, 152 USPQ 235, 238 (CCPA 1967); In re Yanush, 477 F.2d, 958, 959, 177 USPQ 705, 706 (CCPA 1973). For the reasons set forth above, the decision of the examiner to reject claim 23 under 35 U.S.C. Â§ 103 is affirmed. Claims 26 and 28 through 30 Appeal No. 97-1810 Page 15 Application No. 08/321,262 See page 3 of appellants' brief.7 The appellant has grouped claims 23, 26 and 28 through 30 as standing or falling together. Thereby, in accordance with 7 37 CFR Â§ 1.192(c)(7), claims 26 and 28 through 30 fall with claim 23. Thus, it follows that the decision of the examiner to reject claims 26 and 28 through 30 under 35 U.S.C. Â§ 103 is also affirmed. Claim 27 Dependent claim 24 adds to parent claim 26 the limitation that the means for sealing includes a flexible material extending across the opening and attached with an adhesive for one-time removal. The appellant argues (brief, pp. 4 and 6) that the combination plainly fails to meet or suggest this limitation. As pointed out in the reply brief (p. 1), the examiner has not responded to this argument. Appeal No. 97-1810 Page 16 Application No. 08/321,262 We have reviewed the applied prior art but find nothing therein which would have suggested the subject matter of claim 27 for the same reasons as pointed out above with respect to claim 24. Since all the limitations of claim 27 are not suggested or taught by the applied prior art, the decision of the examiner to reject claim 27 under 35 U.S.C. Â§ 103 is reversed. CONCLUSION To summarize, the decision of the examiner to reject claims 21 through 30 under 35 U.S.C. Â§ 103 is affirmed with respect to claims 21 through 23, 25, 26 and 28 through 30 but is reversed with respect to claims 24 and 27. Appeal No. 97-1810 Page 17 Application No. 08/321,262 No time period for taking any subsequent action in connection with this appeal may be extended under 37 CFR Â§ 1.136(a). AFFIRMED-IN-PART HARRISON E. McCANDLISH ) Senior Administrative Patent Judge ) ) ) ) ) BOARD OF PATENT JAMES M. MEISTER ) APPEALS Administrative Patent Judge ) AND ) INTERFERENCES ) ) ) JEFFREY V. NASE ) Administrative Patent Judge ) JVN/gjh Appeal No. 97-1810 Page 18 Application No. 08/321,262 MARC A. HUBBARD WINSTEAD SECHREST & MINICK 5400 RENAISSANCE TOWER 1201 ELM STREET DALLAS, TX 75270-2199 APPEAL NO. 97-1810 - JUDGE NASE APPLICATION NO. 08/321,262 APJ NASE SAPJ McCANDLISH APJ MEISTER DECISION: AFFIRMED-IN-PART Prepared By: Gloria Henderson DRAFT TYPED: 04 Sep 98 FINAL TYPED: