Ex Parte Krikorian et al

Patent Trial and Appeal Board

Aug 2, 2017

13742907 (P.T.A.B. Aug. 2, 2017)

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.
13/742,907 01/16/2013 Vahik Krikorian KMC-372US 8002
83571 7590 08/04/2017
Wood, Herron & Evans, LLP (Sybron)
441 Vine Street
2700 Carew Tower
Cincinnati, OH 45202
EXAMINER
MORAN, EDWARD JOHN
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
08/04/2017 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):
usptodock@whe-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VAHIK KRIKORIAN, MEHDI DURALI,
XIANGXU CHEN, JAMES LOBSENZ, and RAYMOND F. WONG
Appeal 2016-003987
Application 13/742,907
Technology Center 3700
Before FRANCISCO C. PRATS, JEFFREY N. FREDMAN, and
DEVON ZASTROW NEWMAN, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to a device
for use in a gingival retraction procedure. The Examiner rejected the claims
as indefinite and as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify the Real Party in Interest as Kerr Corporation, a
subsidiary of Sybron Dental Specialties, Inc., which is a subsidiary of
Danaher Corporation (see App. Br. 3).
Appeal 2016-003987
Application 13/742,907
Statement of the Case
Background
The Specification teaches:
a device for use in a gingival retraction procedure . . . The
device comprises the thermoplastic-based polymer adhesive and
a tubular wall or ring structure configured to fit around a tooth
that includes the thermoplastic-based polymer adhesive. The
structure is configured to be operatively coupled to a source of
energy that is capable of applying energy to the thermoplastic-
based polymer adhesive to heat the thermoplastic-based
polymer adhesive before the thermoplastic-based polymer
adhesive is inserted into the sulcus.
(Spec. 122).
The Claims
Claims 20—22, 24, 26, and 27 are on appeal. Claim 20 is
representative and reads as follows:
1. A device for use in a gingival retraction procedure to
enlarge a gingival sulcus, the device comprising:
a thermoplastic-based polymer composition comprising:
a thermoplastic polymer, and
an additional polymer or additive including at least
one moiety, monomer, or prepolymer capable of
changing at least one property of the thermoplastic-based
polymer composition when exposed to an activation
energy; and
a tubular wall or ring structure configured to fit around a
tooth and including the thermoplastic-based polymer
composition, the structure being configured to be operatively
coupled to a source of energy that is capable of applying energy
to the thermoplastic-based polymer composition to heat the
thermoplastic-based polymer composition before the
thermoplastic-based polymer composition is inserted into the
sulcus.
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Appeal 2016-003987
Application 13/742,907
The Issues
A. The Examiner rejected claims 26 and 27 under 35 U.S.C. § 112,
second paragraph as indefinite (Final Act. 2).
B. The Examiner rejected claims 20-22 under 35 U.S.C. § 103(a) as
obvious over Weissman2 and Jensen3 (Final Act. 3—5).
C. The Examiner rejected claims 24, 26, and 27 under 35 U.S.C. § 103(a)
as obvious over Weissman, Jensen, and Coopersmith4 (Final Act. 5—8).
A. 35 U.S.C. § 112, second paragraph
The Examiner finds:
Regarding claim 26, it is unclear if “applying energy” is
referring to the step of applying energy as set forth in claim 24,
line 4, or if it is referring to the applying energy as set forth in
claim 20, line 10. As best understood by the Examiner,
“applying energy” in claim 26 is referring to the capability of
the energy source to apply energy as set forth in claim 20.
(Final Act. 2).
Appellants contend:
Claim 20 is directed to a device ....
On the other hand, claim 24 is directed to a method . . .
Claim 26 is also a method claim and depends from claim 24.
Claim 26 further recites “wherein applying energy includes
heating the thermoplastic-based polymer composition in the
channels ....” Accordingly, “applying energy” is still a verb
phrase and is clearly referring to “applying energy” in claim 24
and not the “capable of applying energy” adjective phrase in
2 Weissman, US 4,375,965, issued Mar. 8, 1983.
3 Jensen, US 2012/0058453 Al, published Mar. 8, 2012.
4 Coopersmith, US 2009/0274999 Al, published Nov. 5, 2009.
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Appeal 2016-003987
Application 13/742,907
claim 20. Accordingly, rules of proper grammar dictate the
construction, and provide a clear interpretation of the claim.
(App. Br. 4—5).
We find that Appellants have the better position. The phrase
“applying energy” in claim 26 clearly refers to the antecedent phrase
“applying energy” in claim 24, where there is a step of “applying energy” to
a thermoplastic-based polymer. Claim 26 further limits the “applying
energy” to include “heating the thermoplastic-based polymer”. We also
agree with Appellants’ position that the rules of ordinary grammar preclude
the Examiner’s interpretation of the phrase “applying energy” in claim 26 as
having antecedent basis in claim 20 rather than claim 24.
B. 35 U.S.C. § 103(a) over Weis smart and Jensen
The Examiner finds:
Weissman discloses a device (figure 1) for use in a
gingival retraction procedure . . . comprising:
an impression material 40; and a tubular wall or ring
structure (figure 1) configured to fit around a tooth
(figures 3 and 4) and including the impression
material 40, the structure being configured to be
operatively coupled to a source of energy that is
capable of applying energy to the impression material
to heat the impression before the impression material
is inserted into the sulcus.
(Final Act. 3). The Examiner acknowledges that “Weissman is silent
regarding the impression material being a thermoplastic-based polymer
composition” {id. at 4).
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Appeal 2016-003987
Application 13/742,907
The Examiner finds Jensen teaches “an impression material being a
thermoplastic-based polymer composition for use in dentistry” {id.) and
finds it obvious “to modify Weissman by providing the impression material
in the form of a thermoplastic-based polymer composition for use in
dentistry ... for the purpose of using an impression material that can be
easily removed from the teeth and retain the impression accurately” {id. at
«).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner’s conclusion that Weissman teaches a “tubular
wall” that is “around” a tooth as required by claim 20?
Findings of Fact
1. The Specification teaches: “The device comprises the
thermoplastic-based polymer adhesive and a tubular wall or ring structure
configured to fit around a tooth that includes the thermoplastic-based
polymer adhesive” (Spec. 122).
2. The Specification teaches: “Each of the upper portion 142 and
the lower portion 144 define a tubular-shaped cavity configured to fit over a
tooth” (Spec. 170).
3. Weissman teaches the dental impression tray “has a
substantially trough-shape configuration for fitting over the dental area, the
apertures being formed in the base wall. The cover member covers the
apertures for application of a force thereon so as to force the dental
impression material into the tray and around the dental areas” (Weissman
2:46-51).
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Application 13/742,907
4. Figure 1 of Weissman is reproduced below:
38 36
3p V FIG. I
Referring now to FIG. 1, the dental impression forming
apparatus of the present invention is shown to include a dental
impression tray, shown generally at 10 and a cover or pressure
member, shown generally at 12. The dental impression tray 10
has a substantially arcuately shaped planar configuration. As
shown, it is U-shaped or a semi-ellipse which can fit over the
entire lower or upper set of teeth.
(Weissman 3:33—40).
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Application 13/742,907
Principles of Law
“The protocol of giving claims their broadest reasonable interpretation
during examination does not include giving claims a legally incorrect
interpretation. This protocol is solely an examination expedient, not a rule
of claim construction.” In re Skvorecz, 580 F.3d 1262, 1267 (Fed. Cir.
2009).
Analysis
We begin with claim interpretation because before a claim is properly
interpreted, its scope cannot be compared with the prior art. The dispute
centers on the terms “around” and “tubular” in independent claim 20.
An ordinary meaning of “around” is: “[i]n the immediate vicinity of;
near.”5 This general definition is fully consistent with the Specification’s
use of the term (FF 1). The Examiner has proffered a broadest reasonable
interpretation of “around,” which comports with the ordinary meaning of the
term, and the Appellants do not provide us with any definition of the term
“around” in the Specification or evidence to show that the Examiner’s
interpretation is unreasonable in light of the Specification.
An ordinary meaning of “tubular” is: “Relating to or shaped like a
tube.”6 This general definition is consistent with the Specification’s use of
the term as a “tubular-shaped cavity configured to fit over a tooth” (FF 2).
5 American Heritage® Dictionary of the English Language (2007), retrieved
from http: //www. credoreference. com/entry/hmdictenglang/around (last
accessed July 21, 2017)
6 American Heritage® Dictionary of the English Language (2007), retrieved
from http: //www. credoreference. com/entry/hmdictenglang/tubular (last
accessed July 21, 2017)
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We recognize the Examiner’s interpretation of “tubular” using further terms
such as “hollow” and “cavity”, but do not find the interpretation reasonable.
We agree with Appellants that the ordinary meaning of “tubular” is in the
shape of a “tube” which is not a “trough” (see App. Br. 8). We therefore
agree with Appellants that it is not a reasonable interpretation to equate
“tubular” with “trough-like” and therefore it is unreasonable to equate the
“tubular” structure of claim 20 with the trough shown by Weissman (FF 4).
See, e.g., In re Buszard, 504 F.3d 1364, 1367 (Fed. Cir. 2007) (“[I]t is not a
reasonable claim interpretation to equate “flexible” with “rigid”).
The Examiner provides no teachings in Weissman or Jensen that
disclose a “tubular” structure consistent with our interpretation. We
therefore reverse this obviousness rejection.
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that Weissman teaches a “tubular wall” as required by claim 20.
C. 35 U.S.C. § 103(a) over Weissman, Jensen, and Coopersmith
This rejection relies upon the underlying obviousness rejection over
Weissman and Jensen. Having reversed the Weissman and Jensen rejection
for the reasons given above, we necessarily reverse the obviousness rejection
further including Coopersmith, as the Examiner does not rely upon
Coopersmith to address the “tubular” limitation.
SUMMARY
In summary, we reverse the rejection of claims 26 and 27 under
35 U.S.C. § 112, second paragraph as indefinite.
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Application 13/742,907
We reverse the rejection of claims 20—22 under 35 U.S.C. § 103(a) as
obvious over Weissman and Jensen.
We reverse the rejection of claims 24, 26, and 27 under 35 U.S.C.
§ 103(a) as obvious over Weissman, Jensen, and Coopersmith.
REVERSED
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