Ex Parte Jones

Patent Trial and Appeal Board

Jun 7, 2018

12611396 (P.T.A.B. Jun. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/611,396 11103/2009
30678 7590
POLSINELLI PC
(DC OFFICE)
1000 Louisiana Street
Fifty-Third Floor
HOUSTON, TX 77002
06/11/2018
FIRST NAMED INVENTOR
Thomas L. Jones
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
085609-541715 2417
EXAMINER
APONTE, MIRA YDA ARLENE
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
06/11/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
DC-IPDocketing@polsinelli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS L. JONES 1
Appeal2017-006339
Application 12/611,396
Technology Center 3700
Before TONI R. SCHEINER, ULRIKE W. JENKS, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
SCHEINER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1, 3, 5-9, 17-25, 27-30, and 32-35, directed to a device and method
for testing heat sensitivity in teeth. The claims have been rejected on the
grounds of anticipation and obviousness. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.
BACKGROUND
"[H]eat sensitivity in a tooth results in the most intense pain seen by
the dental profession," but "[ c ]urrent methods for diagnosing the tooth from
1 Appellant identifies the Real Party in Interest as Thomas L. Jones, D.D.S.
Appeal Br. 2.
Appeal2017-006339
Application 12/611,396
which the pain is emanating are primitive." Spec. i-f 3. "If the pain is related
to hot or cold, testing involves putting cold or hot liquids ... on the teeth"
(id.), but "[ m Jost, if not all of the teeth in a quadrant are subjected to the
thermal changes of the test" (id. i-f 4). "A patient feels the pain and, in many
cases, thinks they know which tooth it is related to, but clinical testing
demonstrates that they are incorrect much of the time." Id. i-f 4. According
to the Specification:
While other devices have been suggested to have potential
utility in testing for a heat sensitivity in teeth, they have no
utility in the limited space provided for dental treatment or they
disadvantageously have a flat or a rounded metal tip, which
cannot conform to the convex tooth surface. . . . Heat delivered
in this manner must include massive amounts of heat energy to
the point contact (considerably in excess of a safe limit that will
not cause damage to the enamel, dentin, and the soft tissue of
the pulp) to engage the enamel and dentine to become the heat
source for testing the pulp tissue for a heat sensitivity. The heat
emanating from a point source must be heated to much higher
temperatures at the source to compensate for the small surface
area conducting the heat.
Id.i-f7.
The Specification discloses a testing device designed to avoid these
problems. The testing device comprises "a base; and a tip having a cushion,
wherein the cushion comprises a heating element, and wherein the cushion
conforms to a contour of a tooth tested for a heat sensitivity." Id. i-f 9. The
heated cushion may be constructed of a heat resistant silicone rubber, or any
durable, heat resistant rubber, and has a design that allows the cushion "to
deform and contour to the unique contours of different types of teeth,
incisors, canines, premolars, and molars." Id. i-f 35.
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Application 12/611,396
STATEMENT OF THE CASE
Claims 1, 3, 5-9, 17-25, 27-30, and 32-35 are on appeal. Claims 2,
10-16, 26, and 31 have been canceled. Claim 4 stands objected to as
dependent on a rejected base claim, but otherwise allowable. Claims 1 and
17 are independent, are representative of the subject matter on appeal, and
read as follows:
1. A device for testing a heat sensitivity in teeth comprising:
a base; and
a testing tip having a cushion;
wherein the cushion comprises a heating element,
wherein said heating element is embedded in said cushion; and
wherein the cushion is conformable to a contour of a
tooth to be tested for a heat sensitivity and is conformable to
contours of different types of teeth and wherein the cushion has
a left side and a right side that are mirror images of each other
that allows testing of all upper and lower teeth individually; and
being capable of transferring heat energy from the
cushion to the top surface and at least one side surface of a
tooth tested for heat sensitivity, wherein the surface of the
cushion is adaptable to the surface of the tooth for greater
surface area contact between the cushion and the tooth enamel
allowing for heat energy transfer to the tooth over a larger area
and at a level to prevent damage to the enamel layer, the
dentine layer, or pulp tissue in the tooth being tested.
1 7. A method for testing a tooth for heat sensitivity
compnsmg:
applying a dental testing device comprising a testing tip
having a cushion to a tooth;
wherein the cushion comprises a heating element and
wherein said heating element is embedded in said cushion;
heating the cushion with said heating element; and
transferring heat energy from the cushion to the top
surface and at least one side surface of the tooth,
wherein the cushion conforms to a contour of the tooth
and is conformable to contours of different types of teeth and
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Application 12/611,396
wherein the cushion has a left side and a right side that are
mirror images of each other, and
wherein the surface of the cushion adapts to the surface
of the tooth for greater surface area contact between the cushion
and the tooth enamel allowing for heat energy transfer to the
tooth over a larger area and at a level to prevent damage to the
enamel layer, the dentine layer, or pulp tissue in the tooth being
tested.
The claims stand rejected as follows:
Claims 1, 3, 5, 6, 9, 17-21, 24--27, 29, 30, 32, and 34 under pre-
AIA 35 U.S.C. § 102(b) as anticipated by Faught (US 439,238, issued
October 28, 1890) (Ans. 3-7);
Claims 7, 8, and 35 under 35 U.S.C. § 103(a) as unpatentable
over Faught and Chen (US 4,763,657, issued August 16, 1988) (Ans.
8);
Claims 22, 28, and 33 under 35 U.S.C. § 103(a) as unpatentable
over Faught and Frank (US 3,618,590, issued November 9, 1971)
(Ans. 9); and
Claim 23 under 35 U.S.C. § 103(a) as unpatentable over Faught
and Nerli (US 4,859,182, issued August 22, 1989) (Ans. 10).
ANTICIPATION
Claims 1, 3, 5, 6, 9, 17-21, 24--27, 29, 30, 32, and 34 stand rejected as
anticipated by Faught.
Faught
Faught discloses a "heating appliance for the working of gutta-percha
or somewhat similar material or substances into indentures or cavities
formed in the teeth," "for readily transmitting the requisite amount of heat to
artificial crowns, veneers, or parts of crowns ... permitting of their insertion
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Application 12/611,396
into apertures or cavities prepared to receive them in natural teeth or roots in
the mouth," or "for transmitting heat ... for the purpose of warming or
drying the canals in the roots of teeth." Faught, 1:25-39. Figures 2 and 3 of
Faught are reproduced below:
Figure 2 depicts a vertical central section of an embodiment of Faught's
heating appliance "having an incandescent electric lamp mounted therein ...
and with a suitable tool applied to the upper end thereof for working the
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Application 12/611,396
filling." Id. at 1 :49--57. Figure 3 is a similar view of an embodiment
"adapted to permit of the heating of artificial crowns, veneers, or parts of
crowns for securing the same in cavities prepared to receive them in the
mouth." Id. at 1 :59--62.
The construction of heater illustrated in Fig. 3 is the same
as that illustrated in ... [Fig.] 2, with this exception, that the
upper removable cap c is provided with a sunken head instead
of being made tapering for the reception of a point or other tool
for working the filling in the cavity or causing the same to
become firmly set therein. The sunken head of the cap c is
adapted to receive an artificial crown provided with a pin or
dowel, or veneer, or parts of crowns with or without pins, so
that when the cap has been heated up by the lamp e it will
transmit its heat therefrom to and maintain it in the artificial
tooth, and its pin of platinum or other material softening the
material applied thereto and also that embedded in the cavity
prepared to receive the same, in order that when the heater is
removed the artificial crown may become firmly fixed in the
required position in the mouth.
Id. at 2:37-57.
"The cap c, applied to the instrument, whether of tapering form, as
shown in [Figure 2], or of a form adapted to receive an artificial crown, as
shown in Fig. 3, is made of a metal or material that will readily conduct heat
from the lamp e." Id. at 1:89--93. "[I]n case of breakage of the lamp the cap
c may be readily removed, and as well the button b at the opposite end of the
holder a, for permitting the withdrawal of the lamp ... from the battery for
the supplying of another thereto." Id. at 1 :99--2:4.
Discussion
The dispositive issue raised by this rejection is whether the evidence
of record supports the Examiner's finding that Faught discloses a device
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Application 12/611,396
with a heating element embedded in a cushion, where the heating element is
conformable to contours of different types of teeth.
With respect to device claim 1, the Examiner finds that Faught
discloses a device "capable of testing a heat sensitivity in teeth." Ans. 3.
Figure 3 of Faught, as annotated by the Examiner, is reproduced below, in
relevant part:
Heating
Element
Figure 3 of Faught, as annotated by the Examiner, is reproduced
above, in relevant part.
The Examiner finds that Faught's device meets all the limitations of
claim 1, particularly "a cushion [ ( c, c ')] ... including a heating element ( e ),
wherein the heating element ( e) is embedded in the cushion; and wherein the
cushion is conformable conforms to a contour of a tooth ... and is
conformable to contours of different types of teeth." Id. at 3. With respect
to method claim 17, the Examiner finds that Faught discloses a "method
capable to be used for testing a tooth for heat sensitivity." Id. at 4.
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According to the Examiner:
First, it is defined that the cushion conforms to the
contour of a tooth, where it is understood that the cushion can
conform to a tooth contour configuration at a time, wherein
Faught's the interpretation of cushion in element (c) is capable
to conform to a tooth contour, as claimed, understanding that it
is for a particular tooth contour. Second, the limitation that also
the cushion is conformable to contours of different types of
teeth, it is interpreted that Faught's cushion is capable to be
shaped or contoured for other teeth, depending which tooth
needs to be used on, also understanding that is for a particular
tooth at a time.
Furthermore the language used to define the kind of
difference in teeth type is open to interpretation. The term
"different types of teeth" not necessarily limits the definition to
be different size or shape, but it can be understood to be
different colors, or materials, or including artificial tooth
portions (veneers), or crowns or with different root
configuration but the contact area having the same size and
shape, etc. Therefore by using "different types" does not
necessarily limit the meaning of the term "types" to be size
and/or shape, but it can be related to the use of other
configurations included in the tooth and keeping the same
contour in the area of contact with the cushion.
Ans. 11-12.
Appellant contends that "Faught fails to disclose or suggest a cushion
that is conformable to a contour of a tooth to be tested for heat sensitivity
and is conformable to contours of different types of teeth as required by ...
claims 1 and 17." Appeal Br. 10. Appellant contends that elements c and c'
of Faught's device "are made of a metal or material that will readily conduct
heat from the lamp e" (id. at 9), and nothing in Faught indicates that the
device would "be conformable to contours of different types of teeth" (id.).
Appellant contends:
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More particularly, the device in Faught in Figure 3 is
concerned with a device for receiving a crown and to have heat
applied to it. The elements c' in Faught are configured for
receiving the crown or part thereof. Each different crown
would require a separate device shaped to correspond to each
individual crown. In other words, even if one were [to] test
teeth with the device in Fraught, such could test one tooth only.
To test any other tooth a second tip would have to be made.
Id. In addition, Appellant contends that "Fraught fails to disclose ... a
heating element embedded in the element asserted to be a 'cushion' by the
Examiner" (Reply Br. 3--4).
With respect to method claim 17, Appellant argues that "[ t ]he
patentability of a method claim is to be determined not whether the prior art
method is capable of practicing the process ... but instead whether the prior
disclosed process actually carries out the claimed process." Appeal Br. 10.
Appellant contends that "Faught is not concerned ... with a method for
testing heat sensitivity in teeth" and Faught's device is "not even capable of
carrying out the claimed process." Id. Again, Appellant contends that
Faught's "elements c' are made of a metal or material that will readily
conduct heat ... [and] [u]se of a metal ... would be detrimental to the use of
the testing device of the present invention." Id.
The law requires claims directed to an apparatus to be distinguished
from the prior art on structural grounds, and merely stating an intended use
for an apparatus is not sufficient to distinguish the apparatus from the prior
art. See In re Schreiber, 128 F.3d 1473, 1477-1478 (Fed. Cir. 1997), and In
re Sinex, 309 F.2d 488, 492 (CCPA 1962). In this case, however, we agree
with Appellant that the present claims impose structural limitations that
Faught's device does not include.
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As discussed above, claims 1 and 1 7 require a device with a heating
element embedded in a cushion, where the cushion is "conformable to
contours of different types of teeth." The Specification explains that the
conformable cushion has a design that allows it "to deform and contour to
the unique contours of different types of teeth, incisors, canines, premolars,
and molars." Spec. i-f 35. Thus, according to the Specification, the same
"cushion" must be capable of conforming to more than one type of tooth-
including teeth of different sizes and shapes. The Examiner has not
explained how Faught's metal cap c can conform to more than one particular
tooth without being refashioned each time it is used for a different tooth.
Moreover, Faught's heat source (lamp e) is clearly not embedded in the
cap---rather, it is discrete from the cap, so that "in case of breakage of the
lamp the cap c may be readily removed ... for permitting the withdrawal of
the lamp." Faught, 1:99--2:4, Fig. 3. With respect to method claim 17, the
Examiner contends that Faught discloses a "method capable to be used for
testing a tooth for heat sensitivity" (Ans. 4), but has not established that
Faught performs or discloses the steps of the claimed method.
The Examiner's finding that claims 1, 3, 5, 6, 9, 17-21, 24--27, 29, 30,
32, and 34 are anticipated by Faught is not supported by a preponderance of
the evidence. Accordingly, the rejection is reversed.
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OBVIOUSNESS
There are three separate obviousness rejections of the claims, all of
which are premised on the Examiner's finding that Faught discloses a device
and method that meet the limitations of independent claims 1 and 1 7.
As the evidence of record does not support the Examiner's findings,
and none of the additional references cited by the Examiner remedies this
underlying deficiency, we will reverse all three of the obviousness rejections
as well.
SUMMARY
The rejection of claims 1, 3, 5, 6, 9, 17-21, 24--27, 29, 30, 32,
and 34 under 35 U.S.C. § 102(b) as anticipated by Faught is reversed;
The rejection of claims 7, 8, and 35 under 35 U.S.C. § 103(a) as
unpatentable over Faught and Chen is reversed;
The rejection of claims 22, 28, and 33 under 35 U.S.C. § 103(a)
as unpatentable over Faught and Frank is reversed; and
The rejection of claim 23 under 35 U.S.C. § 103(a) as unpatentable
over Faught and Nerli is reversed.
REVERSED
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