Ex Parte Johnsen et al

Board of Patent Appeals and Interferences

May 7, 2012

10350640 (B.P.A.I. May. 7, 2012)

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.
10/350,640 01/23/2003 James B. Johnsen OIE 309 1883
7590 05/07/2012
Kolisch, Hartwell, Dickinson,
McCormack & Heuser
Suite 200
520 S.W. Yamhill Street
Portland, OR 97204
EXAMINER
CHIN, RANDALL E
ART UNIT PAPER NUMBER
3723
MAIL DATE DELIVERY MODE
05/07/2012 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 JAMES B. JOHNSEN and HAL J. OIEN
____________________

Appeal 2010-001200
Application 10/350,640
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, GAY ANN SPAHN, and
MICHAEL L. HOELTER, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
James B. Johnsen and Hal J. Oien (Appellants) appeal under 35
U.S.C. § 134 from a rejection of claims 1-44. We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.
The Claimed Subject Matter
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1 An instrument servicing system, comprising:
a socket-forming member including spaced
wall members that define a socket having opposite
open ends;
a porous material inserted through the
socket-forming member for insertion cleaning of
contaminated instruments, the porous material
including an at least partially open-cell foam body
having an interior region and a surface, wherein
the body has a density of at least 20 kg/m3, and is
configured to substantially grip a contaminated
instrument that has been inserted through the
surface into the interior region, and to remove at
least eighty percent of the contaminants from the
instrument upon a single insertion and removal
from the body; and
a finger mount coupled to the socket-
forming member to provide for attachment of the
system to a user's hand.

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References
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Riitano
Johnsen
Barham
US 5,967,778
US 6,036,490
US 6,257,888 B1
Oct. 19, 1999
Mar. 14, 2000
Jul. 10, 2001

Rejections
The Examiner rejected claims 1-14, 16-35 and 37-44 under 35 U.S.C.
§ 103(a) as unpatentable over Johnsen and Riitano.
The Examiner rejected claims 15 and 36 under 35 U.S.C. § 103(a) as
unpatentable over Johnsen, Riitano, and Barham.
ISSUES
Issues raised in this appeal include whether the combined teachings of
Johnsen and Riitano render obvious an instrument servicing system or
method of cleaning contaminated instruments comprising a porous material
having (1) the density claimed in claims 1, 37, and 41 and (2) the indentation
force deflection claimed in claims 16, 28, and 37.
FACTS PERTINENT TO THE ISSUES
Johnsen discloses a dental instrument servicing system having a
socket-forming member 12, which carries a cushion 14 made of a resilient
sponge-like material suitable for use in holding dental instruments such as
endodontic files at the upper end of the cushion. Col. 3, ll. 1-5; col. 4, ll. 10-
12. Johnsen also describes using the cushion to provide a cleaning surface
to wipe debris from dental instruments. Col. 4, ll. 12-15. Johnsen does not
further specify the physical characteristics of the material of cushion 14.
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Riitano describes a dental instrument container comprising a
supporting material 18, such as a cellular foam, that has sufficient porosity
or deformability to enable an instrument, such as an endodontic file having a
proximal gripping end 20 opposite a distal insertion end 22, to be inserted
into the material without damaging the instrument and that is sufficiently
elastomeric or resilient that it is not permanently deformed by insertion of
instruments and can withstand repeated insertion of an instrument into
approximately the same location. Col. 4, ll. 39-41; col. 5, ll. 19-23, 63-64;
col. 6, ll. 16-38. The insertion ends of the endodontic files “readily pierce a
variety of densities of supporting material 18 during insertion into
supporting material 18.” Col. 9, ll. 34-37. Riitano teaches that “[c]ellular
foam materials are particularly useful due primarily to having sufficient
porosity for easy insertion of an instrument.” Col. 6, ll. 41-43. Riitano
discloses that a variety of materials, ranging from a light-weight cellular
foam to less porous and relatively dense rubber with sufficient deformability
and elastomeric characteristics to enable an instrument to be inserted, are
suitable for use as the supporting material 18. Col. 6, ll. 43-55.
Riitano teaches that the supporting material 18 may be of any size,
shape, or density that enables it to support instruments 12. Col. 6, ll. 56-58.
Riitano also teaches that “[t]he ability to retain an instrument can result from
the particular configuration of the material or due to the properties of the
material such as the porosity, elasticity, resilience or deformability.” Col. 7,
ll. 21-24.
Riitano further teaches the supporting material should preferably be
sufficiently porous that the insertion end 22 of an instrument 12, such as an
endodontic file, may be disposed therein, and the pore structure should be
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selected to permit insertion of only the distal insertion end of the instrument
into the supporting material, while preventing insertion of the proximal end
20 of the instrument. Col. 6, ll. 65-67; col. 7, ll. 9-15. Riitano teaches that
the diameter of the distal insertion end 22 of an endodontic file is in the
range of about 0.06 mm to about 2 mm, while the diameter of the gripping
end 20 is at least two times greater than that of the insertion end 22. Col. 9,
ll. 12-18. In accordance with one embodiment of Riitano’s supporting
material, the pores of the material roughly correspond to, or are slightly
smaller than, the diameter of the insertion ends of the files, and thus are too
small to receive the gripping ends 20, thereby preventing the gripping ends
20 from extending into the supporting material. Col. 9, ll. 20-26.
Riitano teaches that the supporting material 18 is “sufficiently rigid”
to maintain the instrument in an essentially upright position, as well as to
permit the practitioner to easily connect a handpiece to the proximal
gripping end 20 while the distal insertion end 22 is positioned within the
supporting material and to reposition the distal insertion end into the
supporting material 18 and disconnect the handpiece from the proximal
gripping end 20. Col. 7, ll. 25-33.
Riitano describes the supporting material as being capable of gripping
the distal insertion end of 22 of the instrument 12, and further teaches that
the ability of the supporting material to grip the distal insertion end “may
also be related to having varying pore sizes.” Col. 7, ll. 33-37.
The structure of Riitano’s supporting material enables a practitioner to
“remove debris” from the instrument 12 by rubbing the instrument against
the supporting material, “such as by placing end 22 within supporting
material 18 or removing end 22 from supporting material 18.” Col. 8, ll. 7-
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12. Thus, debris can be removed and instrument 12 can be simultaneously
disinfected by placing distal insertion end 22 of the instrument 12 within the
supporting material or removing the instrument from the supporting
material. Col. 8, ll. 12-17.
Riitano’s supporting material is sufficiently porous to permit solution
to permeate the material. Col. 6, l. 67 to col. 7, l. 2.
Appellants’ Specification describes two particular exemplary foams
(Foam A and Foam B) that are suitable for use in the present invention. See
Spec. 6, ll. 19-20; Spec. 7, Table 1. Appellants’ Specification, however, also
teaches that suitable foams for Appellants’ invention “may have a different
density, air flow, indentation force deflection (IFD), compression force
deflection (CFD), cell count, etc.” Spec. 7, ll. 4-6. According to Appellants:
Generally, the foam characteristics may be balanced to
achieve a suitable material for use in insertion cleaning of
instruments. Selection of one or more of the density, material,
and cell count of the foam may effect a change in the air flow,
the indentation force deflection, the compression force
deflection, or other characteristic of the cushion. For example,
selection of the appropriate material may include balancing the
density and cell count of the foam, such that the foam functions
as desired.
Spec. 7, ll. 8-13.
PRINCIPLES OF LAW
Discovery of an optimum value of a result effective variable is
ordinarily within the skill of the art. See In re Boesch, 617 F.2d 272, 276,
(CCPA 1980); In re Aller, 220 F.2d 454, 456, (CCPA 1955). However,
exceptions have been found where the results of optimizing the variable are
unexpectedly good or where the parameter optimized was not recognized to
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be a result-effective variable. In re Antonie, 559 F.2d 618, 620, (CCPA
1977).
DISCUSSION
Even assuming that it would have been obvious to modify Johnsen’s
cushion material to have the physical characteristics taught by Riitano (i.e.,
appropriate porosity, density, deformability, etc. to permit insertion of the
distal insertion ends of the endodontic files into the cushion without
deforming, blunting, or otherwise damaging the files while preventing
penetration of the gripping ends of the files into the cushion, to support the
files, to permit disinfecting medium to permeate the material, and to remove
debris from the files upon insertion into or removal from the material) as
proposed by the Examiner, Johnsen does not explicitly disclose, inter alia,
either the density or the indentation force deflection range called for in
Appellants’ independent claims 1, 16, 28, 37, and 41. Further, the record
before us is insufficient to establish that a person of ordinary skill in the art
would arrive at the claimed values for these parameters by routine
optimization, as alleged by the Examiner (Ans. 4, 5, 6, 7, 9, 10, 11, 15-19).
As noted in our findings above, both Appellants and Riitano seek to provide
a supporting material with common functional characteristics. Specifically,
both Appellants and Riitano describe a material that permits easy insertion
and removal of the endodontic files into and out of the material, permits
penetration of the insertion ends of the files into the material upon insertion,
and sufficiently grips the insertion ends of the inserted files to support the
files and to remove debris upon insertion and/or removal. However, both
Appellants and Riitano also teach that these functional characteristics can be
achieved by balancing such physical characteristics as the density, porosity,
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and deformability, and suggest that there may be a variety of combinations
of values for these physical characteristics that will achieve the functional
characteristics desired. See, e.g., Riitano, col. 6, ll. 41-58 (additionally
teaching that resilience or elastomeric properties play a role); Spec. 7, ll. 4-
13. Riitano does not disclose or point to values or ranges for any of the
parameters that need to be balanced to achieve the desired functional
characteristics, and thus does not provide a specific starting point from
which routine optimization would necessarily lead to the particular values or
ranges called for in Appellants’ claims.
Merely by way of example, Riitano’s disclosure does not point to any
range of values or minimum value for the density of the supporting material,
and, to the contrary, gives some indication that density itself is not of any
criticality in achieving the desired functional characteristics. See, e.g., col.
9, ll. 33-37 (disclosing that the insertion ends of the endodontic files readily
pierce “a variety of densities” of supporting material); col. 6, ll. 41-55
(suggesting that other factors, such as deformability and elastomeric or
resilience characteristics, are more pertinent than density in rendering a
material suitable for use as the supporting material). Thus, it is not apparent
that a person of ordinary skill in the art would arrive at the claimed density
ranges by routine optimization. Accordingly, we cannot conclude, on the
basis of the record before us, that Johnsen and Riitano render obvious an
instrument servicing system or method of cleaning instruments comprising a
porous material having a density within the ranges claimed in claims 1, 37,
and 41.
Appellants’ claims 16, 28, and 37 all require the cushion foam to have
a 25% indentation force deflection of at least 80 N. As explained in
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Appellants’ Specification, the 25% indentation force deflection value is a
measure of the “firmness” of the cushion, and represents the force required
to indent a foam sample by 25% of its original thickness. Spec. 9, l. 22 to
Spec. 10, l. 2. Thus, the claimed 25% indentation force deflection of at least
80 N effectively constitutes a restriction on the degree of deformability of
the foam. According to Appellants’ Specification, foams with indentation
force deflection values less than 80 N might tend to collapse or resist
penetration of files or other instruments, thus frustrating the user or requiring
additional user attention. Spec. 9, l. 17 to Spec. 10, l. 3. Riitano appears to
suggest that deformability and resilience are desirable properties for the
supporting material, to facilitate insertion of endodontic files into the
material and to retain the endodontic files. Col. 6, ll. 43-55; col. 7, ll. 21-24.
The Examiner alludes to teachings in Riitano regarding factors that,
according to the Examiner, “directly relate” to the supporting material’s
firmness or indentation force deflection. Ans. 5, l. 21 to Ans. 6, l. 7; Ans. 9,
ll. 17-20. The first portion of Riitano alluded to by the Examiner teaches
that the supporting material must be sufficiently penetrable or deformable to
prevent bending, blunting, or otherwise damaging the instruments (col. 4, ll.
39-41). The second portion of Riitano alluded to by the Examiner reiterates
the desire for sufficient deformability to permit insertion of the instrument
without bending, blunting, or otherwise damaging the instrument (col. 6, ll.
16-21), and further teaches that the supporting material should be
sufficiently elastomeric or resilient that it returns to its original configuration
and resists permanent deformation and tearing, even after repeated insertions
of an instrument into approximately the same location (col. 6, ll. 21-39).
The third portion of Riitano alluded to by the Examiner teaches providing
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the supporting material with uniform properties throughout so that an
instrument may be inserted into any portion thereof without being damaged
(col. 7, ll. 39-43), and the final portion points out that the supporting
material can support instruments having a variety of shapes and sizes and
that instruments of dissimilar length can be placed adjacent one another in
the supporting material without a predetermined hole for each instrument
(col. 7, ll. 58-65). These teachings of Riitano relied upon by the Examiner,
viewed alone or in combination, do not suggest an upper limit or restriction
on the degree of deformability of the supporting material. Thus, the
Examiner has not established that a person of ordinary skill in the art would
have arrived at a 25% indentation force deflection of at least 80 N by routine
optimization in accordance with Riitano’s teachings.
As noted in our findings above, Riitano additionally describes the
supporting material 18 as “sufficiently rigid” to maintain the instrument in
an essentially upright position, as well as to permit the practitioner to easily
connect a handpiece to the proximal gripping end 20 while the distal
insertion end 22 is positioned within the supporting material and to
reposition the distal insertion end into the supporting material 18 and
disconnect the handpiece from the proximal gripping end 20 (col. 7, ll. 25-
33). However, we will not speculate as to whether that disclosure (not
discussed by the Examiner or Appellants) is in any way pertinent to an
indentation force deflection, rather than some other parameter, such as
torsion or shear resistance, for example.
Accordingly, we cannot conclude, on the basis of the record before us,
that Johnsen and Riitano render obvious an instrument servicing system or
method of cleaning instruments comprising a porous material having a 25%
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indentation force deflection of at least 80 N as called for in claims 16, 28,
and 37.
For the foregoing reasons, we are constrained to reverse the rejections
of independent claims 1, 16, 28, 37, and 41, and their dependent claims 2-14,
17-27, 29-35, 38-40, and 42-44, as unpatentable over Johnsen and Riitano.
The Examiner’s rejection of claims 15 and 36 as unpatentable over
Johnsen, Riitano, and Barham suffers from the same deficiency, and we thus
are constrained to reverse it as well.
DECISION
The Examiner’s rejection of claims 1-44 is reversed.

REVERSED

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