Ex Parte Johnson

Board of Patent Appeals and Interferences

Jan 8, 2009

11130081 (B.P.A.I. Jan. 8, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte DOUGLAS B. JOHNSON
__________

Appeal 2008-5983
Application 11/130,081
Technology Center 3700
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Decided: January 8, 2009
__________

Before ERIC GRIMES, RICHARD M. LEBOVITZ, and JEFFREY N.
FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving a claim to
endodontic instruments. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

Appeal 2008-5983
Application 11/130,081

Statement of the Case
Background
“[A]bscessed teeth can be successfully treated to permit retention by a
patient for greatly increased health and physiological benefit” (Spec. 2:9-
10). The Specification teaches that the “endodontic preparation of a root
canal typically includes opening the root canal through the coronal area of
the tooth and thereafter manipulating files and reamers within the root canal
to physically remove as much as possible of the pulpal material” (Spec.
2:12-14). According to the Specification “in recent times procedures have
been developed wherein the root canal is irrigated or flushed with a fluid to
remove and/or neutralize organic pulpal material that remains after files and
reamers have been employed” (Spec. 2:20-22).
The Claims
Claims 2 and 6-12 are on appeal. We will focus on claims 7, 11, and
12, which are representative and read as follows:
7. A system for delivery of flushing fluid to a tooth root
canal comprising:
a reservoir of flushing fluid;
a positive displacement pump having a fluid inlet in
communication with said reservoir and a fluid outlet conduit
providing flushing fluid under pulsed pressure;
a hand piece having a flow passageway therethrough
and having a proximal end connected to receive fluid under
pulsed pressure from said fluid outlet conduit and a distal
end having connected thereto an injection tube dimensioned
and configured for insertion into a tooth root canal; and
an ultrasonic energy generator secured to said hand
piece whereby flushing fluid under pulsed pressure having
ultrasonic energy superimposed thereon is delivered into the
root canal.
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11. A system according to Claim 7 wherein said pump
provides flushing fluid under pressure pulsed at between 2
and 100 pulses per second.

12. A system according to Claim 7 wherein said
ultrasonic energy superimposed on said hand piece is at a
frequency above about 20,000 Hz.

The prior art
The Examiner relies on the following prior art references to show
unpatentability:
Yoshii et al. US 4,247,288 Jan. 27, 1981
Sicurelli et al. US 6,162,202 Dec. 19, 2000
Buchanan US 2003/0157458 A1 Aug. 21, 2003
Nusstein US 6,948,935 B2 Sep. 27, 2005

The issues
A. The Examiner rejected claims 2, 6, 7, and 9-11 under 35 U.S.C. §
103(a) as obvious over Nusstein and Yoshii (Ans. 3-4).
B. The Examiner rejected claim 8 under 35 U.S.C. § 103(a) as obvious
over Nusstein, Yoshii, and Sicurelli (Ans. 4).
C. The Examiner rejected claim 12 under 35 U.S.C. § 103(a) as obvious
over Nusstein, Yoshii, and Buchanan (Ans. 4-5).
A. 35 U.S.C. § 103(a) over Nusstein and Yoshii
The Examiner finds that “Nusstein teaches of a dental device for
performing endodontic procedure . . . [h]owever, Nusstein fail to disclose a
positive displacement pump providing flushing fluid under pulsed pressure”
(Ans. 3). The Examiner finds that the “Yoshii et al. explicitly disclose a
reciprocating pump, a type of positive displacement pump . . . for pumping
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fluid from a vessel (reservoir) into a tooth root canal intermittently in the
form of pulsating currents” (Ans. 3). The Examiner find that it “would have
been obvious to one having ordinary skill in the art at the time the invention
was made to replace Nusstein's pump with Yoshii et al.'s positive
displacement pump so that a thorough debridement of the tooth canal can be
achieved with the pulsating current of fluid” (id. at 4).
Appellant contends that “nothing in Nusstein in view of Yoshii et al.
teaches or suggests the benefits of varying pulse pressure over time while
simultaneously superimposing ultrasonic frequency on that varying pulse
pressure” (App. Br. 8). Appellant contends regarding the pulse pressure
frequency that “Yoshii et al. teach away from the applicant's claimed range”
(id. at 9). Appellant further contends that “Nusstein and Yoshii et al. teach
away from Applicant's invention of a low positive pulse pressure rate and a
superimposed ultrasonic energy signal. This is a completely new, different
and unique teaching not taught nor suggested in the prior art” (id. at 10).
Appellant contends that the Examiner has not “presented any
articulated reasoning or any rational underpinning to support a conclusion of
obviousness” (id. at 11).
In view of these conflicting positions, we frame the obviousness issue
before us as follows:
Did the Examiner err in concluding that it would have been obvious to
replace Nusstein’s syringe pump with Yoshii’s positive displacement pump,
rendering claim 7 obvious?
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Findings of Fact (FF)
1. Figure 1 of Nusstein is reproduced below:

“FIG. 1 is a perspective view of the dental device of the present invention
showing both the shaft assembly and the tubing assembly” (Nusstein, col. 2,
ll. 31-33).
2. Nusstein teaches “a device for performing endodontic
procedures such as root canals” (Nusstein, col. 1, ll. 49-50).
3. Nusstein teaches that “an irrigating solution, stored in the
syringe or other reservoir, may be dispensed into the root canal by
depressing the plunger on the syringe or by actuating a pump if another type
of reservoir is being used” (Nusstein, col. 4, ll. 28-32).
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4. Nusstein teaches “a shaft assembly and a stainless steel
hypodermic needle which directs and concentrates the ultrasonic energy at
the tip of the needle” (Nusstein, col. 1, ll. 52-54).
5. Nusstein teaches a hand piece where the “[s]haft 18 includes a
bore running through its length” and that “shaft 18 further includes aperture
28 which is drilled through shaft 18” (Nusstein, col. 3, ll. 13-20).
6. Nusstein teaches that the hand piece has two ends, a proximal
end and a distal end, where the distal end has an “aperture . . . positioned
such that tip 26 of needle 24 can be inserted into the aperture and directed
through the bore within shaft 18” (Nusstein, col. 3, ll. 21-24).
7. Nusstein teaches a proximal end of the hand piece connected to
receive fluid where “the end of needle 24 opposite tip 26 includes a
connector 30 that permits needle 24 to be attached to a syringe” (Nusstein,
col. 3, ll. 29-31).
8. Nusstein teaches connection of the hand piece to an ultrasonic
generator, noting that “shaft assembly 12 is threaded onto ultrasonic wand
42” (Nusstein, col. 3, ll. 65-66).
9. Yoshii teaches an “apparatus for root canal irrigation for
treating a decayed tooth by washing the dental focus . . . in the pulp cavity of
the tooth” (Yoshii, col. 1, ll. 10-13).
10. Yoshii teaches that “within the root canal irrigator is provided a
pumping means for pumping the liquid from the vessel 20. A typical
pumping means is shown in FIG. 3A” (Yoshii, col. 3, ll. 43-46).
11. The Examiner found that “Yoshii et al. explicitly disclose a
reciprocating pump, a type of positive displacement pump . . . for pumping
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fluid from a vessel (reservoir) into a tooth root canal intermittently in the
form of pulsating currents at a frequency of about 8-58 pulses per second
(converted from 500-3500 cycle per minute)” (Ans. 3-4).
12. Yoshii teaches that “liquid is discharged intermittently in the
form of pulsating currents while the piston is reciprocating. Experiments
show that such currents must be pulsated at a frequency of about 500 to
3,500 cycles per minute to make dental irrigation the most effective”
(Yoshii, col. 4, ll. 28-33).
13. Yoshii teaches that dental irrigation with a syringe is
“troublesome and not very efficient” (Yoshii, col. 1, ll. 33-34) but that “[b]y
using this irrigator it is possible for dentists to reduce the time required for
washing teeth and improve the effect of dental irrigation” (Yoshii, col. 4, ll.
65-67).
Principles of Law
The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) the level of ordinary skill in the art; (3) the differences between the
claimed invention and the prior art; and (4) secondary considerations of
nonobviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
The Supreme Court has recently emphasized that “the [obviousness] analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR
Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007).
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“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
Id. at 1739. “If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability.” Id. at 1740. Moreover, an
“[e]xpress suggestion to substitute one equivalent for another need not be
present to render such substitution obvious.” In re Fout, 675 F.2d 297, 301
(CCPA 1982). As noted by the Court in KSR, “[a] person of ordinary skill is
also a person of ordinary creativity, not an automaton.” 127 S. Ct. at 1742.
Analysis
Claim 7
Nusstein teaches a device for delivery of flushing fluid to a root canal
comprising a reservoir and a pump (FF 1-3). Nusstein further teaches a hand
piece with a flow passageway therethrough which has one end connected to
receive fluid and the other end configured for insertion into a tooth root
canal (FF 4-7). Nusstein teaches that an ultrasonic generator is secured to
the hand piece to permit ultrasonic energy to be delivered to the root canal
(FF 8). Yoshii teaches delivery of fluid to a root canal using a positive
displacement pump which provides flushing fluid under pulsed pressure (FF
9-12).
Applying the KSR standard of obviousness to the findings of fact, it
would have been obvious to use Yoshii’s positive displacement pump to
deliver fluid from the reservoir of Nusstein, since Nusstein teaches that “an
irrigating solution . . . may be dispensed into the root canal . . . by actuating
a pump” (Nusstein, col. 4, ll. 28-32; FF 3). Further, Yoshii teaches that
dental irrigation with a syringe is “troublesome and not very efficient”
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(Yoshii, col. 1, ll. 33-34) but that “[b]y using this irrigator it is possible for
dentists to reduce the time required for washing teeth and improve the effect
of dental irrigation” (Yoshii, col. 4, ll. 65-67; FF 13). The combination of
Nusstein and Yoshii uses known elements and combines them in predictable
ways. Such a combination is merely a “predictable use of prior art elements
according to their established functions.” KSR, 127 S. Ct. at 1740.
We are not persuaded by Appellant’s argument that “nothing in
Nusstein in view of Yoshii et al. teaches or suggests the benefits of varying
pulse pressure over time while simultaneously superimposing ultrasonic
frequency on that varying pulse pressure” (App. Br. 8). This asserted
benefit, however, is a functional recitation which represents an intended use
of the apparatus of claim 7. Apparatus claims must be structurally
distinguishable from the prior art, and they must be distinguished from the
prior art in terms of structure rather than function. See In re Schreiber, 128
F.3d 1473, 1477-78 (Fed. Cir. 1997).
We also are not persuaded by Appellant’s argument that “Nusstein
and Yoshii et al. teach away from Applicant's invention of a low positive
pulse pressure rate and a superimposed ultrasonic energy signal” (App. Br.
10). Like our appellate reviewing court, “[w]e will not read into a reference
a teaching away from a process where no such language exists.” DyStar
Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d
1356, 1364 (Fed. Cir. 2006). There is no language in either Nusstein or
Yoshii which teaches away from the combination of Yoshii’s pump with
Nusstein’s ultrasonic endodontal treatment apparatus. “The prior art's mere
disclosure of more than one alternative does not constitute a teaching away
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from any of these alternatives because such disclosure does not criticize,
discredit, or otherwise discourage the solution claimed in the …
application.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Claim 11
We do not find persuasive Appellant’s argument regarding the pulse
frequency that “Yoshii et al. teach away from the applicant's claimed range”
(App. Br. 9). Yoshii teaches a range of 8-58 pulses per second which falls
entirely within Appellant’s claimed range of 2 to 100 pulses per second (FF
11). However, since Yoshii teaches a range which falls within the claimed
range, that narrow range anticipates at least that portion of the range. See
Titanium Metals Corp. v. Banner, 778 F.2d 775, 782 (Fed. Cir. 1985). (“It is
also an elementary principle of patent law that when, as by a recitation of
ranges or otherwise, a claim covers several compositions, the claim is
‘anticipated’ if one of them is in the prior art.”).
Conclusion of Law
The Examiner did not err in concluding that it would have been
obvious to replace Nusstein’s syringe pump with Yoshii’s positive
displacement pump, rendering claim 7 obvious.
B. 35 U.S.C. § 103(a) over Nusstein, Yoshii, and Sicurelli
The Examiner rejected claim 8 under 35 U.S.C. § 103(a) as obvious
over Nusstein, Yoshii, and Sicurelli (Ans. 4).
Claim 8 depends from claim 7. Claim 8 is directed to the apparatus of
claim 7 where “said injection tube is flexible” (Claim 8). The Examiner
finds that Sicurelli teaches a
flexible syringe needle which discharges pulsating fluid to
be used in endodontic procedures such as debriding of root
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canals . . . . The flexibility of the needle is for it to
conformably reach into the root canal. It would have been
obvious to one having ordinary skill in the art at the time the
invention was made to modify Nusstein/Yoshii et al. by
making the injection tube/needle flexible so that it can
conform and reach into the root canal.

(Ans. 4.)
Appellant does not identify any deficiency in the Examiner's
reasoning, and as we find none, we affirm the rejection.
C. 35 U.S.C. § 103(a) over Nusstein, Yoshii, and Buchanan
The Examiner rejected claim 12 under 35 U.S.C. § 103(a) as obvious
over Nusstein, Yoshii, and Buchanan (Ans. 4-5).
The Examiner finds that “Nusstein and Yoshii et al. are silent to the
frequency of the ultrasonic energy superimposed on the hand piece.
Buchanan teaches of a hand held ultrasonic instrument for performing
endodontic procedures wherein the transducer 104 that provides ultrasonic
energy to the instrument vibrates at the frequency of above 40,000 Hz”
(Ans. 5).
Appellant contends that
if Buchanan teaches what is claimed by the Examiner--that a
frequency above 40,000 Hz (cycles per second) is needed to
"provide a thorough debridement of the root canal," Office
Communication, July 18, 2003,para. 9--then the range of
frequency vibration specified by Buchanan is at odds with
the frequency specified by Nusstein (above 20,000 Hz). This
situation would leave a person of ordinary skill confused as
to which range is the correct range to use for debridement of
the root canal.

(App. Br. 12.)
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In view of these conflicting positions, we frame the obviousness
issues before us as follows:
Did the Examiner err in concluding that it would have been obvious to
impose ultrasonic energy at “a frequency above about 20,000 Hz” as
required by claim 12?
Findings of Fact
13. The Examiner finds that “Nusstein and Yoshii et al. are silent to
the frequency of the ultrasonic energy superimposed on the hand piece”
(Ans. 5).
14. Buchanan teaches a frequency of 40,000 Hz in an ultrasonic
dental tool (see Buchanan ¶ 0030).
Principles of Law
In patent prosecution the examiner is entitled to
reject application claims as anticipated by a prior art
patent without conducting an inquiry into whether or
not that patent is enabled or whether or not it is the
claimed material (as opposed to the unclaimed
disclosures) in that patent that are at issue. . . . The
applicant, however, can then overcome that rejection
by proving that the relevant disclosures of the prior art
patent are not enabled.

Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355 (Fed. Cir.
2003).
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Analysis
As discussed above, Nusstein and Yoshii teach all of the limitations of
claim 7 (FF 1-12). Buchanan teaches the use of a frequency of 40,000 Hz in
an ultrasonic dental tool for root canals (FF 14).
Appellant argues that “the range of frequency vibration specified by
Buchanan is at odds with the frequency specified by Nusstein (above 20,000
Hz)” (App. Br. 12). Appellant never specifically identifies where Nusstein
teaches a specific ultrasonic frequency, simply stating Nusstein’s frequency
as a fact without any support (see App. Br. 12). The Examiner finds that
Nusstein is silent with regard to frequency (FF 13). We have carefully
reviewed Nusstein and do not find any specific frequency given.
Consequently, Appellant’s argument is unsupported, since there is no
explicit contradiction between the teachings of Nusstein and Buchanan.
However, even if Nusstein taught a frequency of greater than 20,000
Hz while Buchanan teaches a frequency of above 40,000 Hz, no
contradiction would exist. The prior art would simply suggest that two
ranges are possible, one of at least 20,000 Hz and the other of at least 40,000
Hz. Since either range would satisfy the requirement of claim 12, which
requires a “frequency above about 20,000 Hz,” claim 12 would be obvious
under either construction of the prior art. See KSR, 127 S. Ct. at 1740. (“If a
person of ordinary skill can implement a predictable variation, § 103 likely
bars its patentability.”).
We also do not find Appellant’s argument persuasive regarding
Buchanan’s teaching that the frequencies may include a range “below
20,000 Hz. and substantially above 40,000 Hz” (Buchanan ¶ 0030). “[T]he
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existence of overlapping or encompassing ranges shifts the burden to the
applicant to show that his invention would not have been obvious.” In re
Peterson, 315 F.3d at 1330. Appellant has not made any showing regarding
the claimed range of ultrasonic frequencies and Buchanan expressly suggests
that the “term ‘ultrasonic’ is generally understood to mean the transducer
vibrates at a frequency above the threshold of human hearing, typically
above 20,000 Hz.” (Buchanan ¶ 0030).
Conclusions of Law
The Examiner did not err in concluding that it would have been
obvious to impose ultrasonic energy at “a frequency above about 20,000 Hz”
as required by claim 12.
SUMMARY
In summary, we affirm the rejection of claims 7 and 11 under 35
U.S.C. § 103(a) over Nusstein and Yoshii. Pursuant to 37 C.F.R. §
41.37(c)(1)(vii)(2006), we also affirm the rejection of claims 2, 6, 9, and 10
as these claims were not argued separately. We affirm the rejection of claim
8 under 35 U.S.C. § 103(a) as obvious over Nusstein, Yoshii, and Sicurelli.
We also affirm the rejection of claim 12 under 35 U.S.C. § 103(a) as obvious
over Nusstein, Yoshii, and Buchanan.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2006).
AFFIRMED

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