Ex Parte Levens

Patent Trial and Appeal Board

Jul 28, 2016

12888280 (P.T.A.B. Jul. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
12/888,280
11132 7590
Boulware & Valoir
FILING DATE
09/22/2010
08/01/2016
Three Riverway, Suite 950
Houston, TX 77056
FIRST NAMED INVENTOR
Lawrence J. LEVENS
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.
OA004002 4141
EXAMINER
O'DONNELL, JUSTIN R
ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
08/01/2016 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):
patent@boulwarevaloir.com
nseigel@boulwarevaloir.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LAWRENCE J. LEVENS
Appeal 2014-007 628 1
Application 12/888,2802
Technology Center 3700
Before MICHAEL C. ASTORINO, JAMES A. WORTH, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
WORTH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. §§ 134
and 6(b).
We AFFIRM.
1 Our decision refers to the Appellant's Appeal Brief ("Appeal Br.," filed
Jan. 16, 2014) and Reply Brief ("Reply Br.," filed July 2, 2014), and the
Examiner's Final Office Action ("Final Act.," mailed Aug. 6, 2013) and
Answer ("Ans.," mailed June 18, 2014).
2 According to Appellant, the real party in interest is OrthoAccel
Technologies Inc. (Appeal Br. 3).
Appeal2014-007628
Application 12/888,280
Introduction
Appellant's disclosure "relates to a brace cap that fits over the end of
orthodontic braces, which protects the patient from the arch wire protruding
therefrom" (Spec. i-f 4 ).
Claims 1, 11, and 12 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal:
1. A brace cap, comprising a cap having a completely open end,
an open base, an entirely closed end that is opposite said open end, a
closed top, an exterior surface, and an interior hollow, said exterior
surface being smoothly rounded, and said interior hollow being
shaped to snap fit over a terminal orthodontic bracket having
recessions and to hold an end of an archwire, said cap comprising
protrusions shaped to snap fit into said recessions.
(Appeal Br., Claims App.)
Rejections on Appeal
The Examiner maintains; and the Appellant appeals; the following
rejections:
1. Claims 1-3, 5, 6, 11-14, and 16 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Morgan (US 4,913,654, iss. Apr. 3,
1990) and de Salazar Vinas (US 2007 /0218417 Al, pub. Sept. 20, 2007).
2. Claims 4 and 15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Morgan, de Salazar Vinas, and Goldberg (US
2004/0013994 Al, pub. Jan. 22, 2004).
3. Claims 7, 8, 10, 17, 18, and 20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Morgan, de Salazar Vinas, Karwoski
(US 5,037,296, iss. Aug. 6, 1991), and Mumaw (US 3,372,484, iss. Mar. 12,
1968).
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Application 12/888,280
4. Claims 9 and 19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Morgan, de Salazar Vinas, Karwoski, Mumaw, and
Goldberg.
ANALYSIS
Independent claim 1 and dependent claims 2-10
The Examiner's rejection of independent claim 1 is based on the
Examiner's determination that it would have been obvious to modify the
brace cap of Morgan to have a closed end, as taught by de Salazar Vinas in
order to cover the end of the archwire and protect the mucous membranes
inside the mouth (Final Act. 5---6). Appellant sets forth three arguments for
the patentability of independent claim 1, which we address in tum.
First, Appellant argues that Morgan teaches away from the proposed
modification of closing one end. (Appeal Br. 12). A "teaching away" from
a modification exists "when a person of ordinary skill, upon reading the
reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
taken by the applicant." In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
Appellant asserts, in particular, that Morgan teaches "making a long coil or
strip cut to size," where "cutting results in two open ends" (Appeal Br. 12).
Although Morgan discloses that a strip may be extruded or continuously
molded in a long coil, Morgan also discloses fabrication in strips of "any
desire length" [sic] (see Morgan, col. 5, 11. 1-7 (cited in Final Act. 3)). See
also Morgan 5:23-24 (user can obtain a quantity of shield material in a coil
or in precut strips). As such, we agree with the Examiner that it would be
consistent with Morgan to manufacture the brace cap of Morgan in pieces
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Application 12/888,280
rather than coils (see Ans. 8-9). ivierely because iviorgan discloses having a
brace cap with two open ends does not criticize, discredit, or otherwise
discourage having a closed end.
To the extent that Appellant's argument that Morgan "teaches away"
is based on Morgan's disclosure of low manufacturing costs (see Morgan,
col. 3, 11. 1-13 (quoted in Appeal Br. 12)), this is an argument that is not
made with specificity. In any event, there are trade-offs in cost which may
be acceptable to a manufacturer or customer. See Allied Erecting and
Dismantling Co., Inc. v. Genesis Attachments, LLC, 2016 WL 3344093, at
*6 (Fed. Cir. June 15, 2016) ("[a] given course of action often has
simultaneous advantages and disadvantages, and this does not necessarily
obviate motivation to combine."); see also Gurley, 27 F.3d at 553 (nature of
teaching must be evaluated). We recognize that Morgan does discourage the
reuse of strip shields for hygienic reasons, and encourages low
manufacturing cost and sales price of strips in order to prevent such reuse
(Morgan, col. 3, 11. 8-13). However, we are not persuaded that the sale of
individual pieces would require reuse, or that additional manufacturing costs
would outweigh the advantages of a closed end to prevent the end of the
archwire from causing discomfort to the mucosa, as taught by de Salazar
Vinas.
Second, Appellant argues that the proposed modification of closing
one end would render the invention of Morgan unfit for its intended use
because the device could no longer be manufactured by extrusion and would
require additional costs for manufacture (Appeal Br. 13 (citing Morgan,
col. 5, 11. 2-7)). The Examiner finds that Morgan's extrusion process could
still be used in manufacture of Morgan's cap, as modified by de Salazar
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Application 12/888,280
Vinas, with the addition of further steps for the manufacture of a closed end
(see Ans. 9). We agree with the Examiner's determination that the addition
of a closed end is not inconsistent with Morgan's teachings, including the
use of extrusion in the manufacture process. As to any additional costs, we
are unpersuaded that the proposed modification would render the invention
of Morgan unfit for its intended use for similar reasons as above.
Third, Appellant argues that the Examiner's proposed modification
would result in a device which requires user modification for manufacture
(Appeal Br. 13-14). As set forth above, we are not persuaded that the
manufacture of pieces with a closed end, as proposed, would require user
modification because the brace cap can be manufactured to any desired
length, or could even be cut to a desired length by the manufacturer prior to
sale (see Ans. 9). Further, this argument does not address the Examiner's
conclusion that "one of ordinary skill in the art would recognize that the
Morgan/Vinas combination may also be achieved by extrusion into a die
with a closed end," which would not require user modification (Id. at 10).
For these reasons, we sustain the Examiner's rejection under 35
U.S.C. § 103(a) of independent claim 1. Appellant does not argue the
patentability of claims 2-10 separately from that of claim 1, from which they
depend. We sustain the Examiner's rejection under 35 U.S.C. § 103(a) of
claims 2-10, for similar reasons as for independent claim 1.
Independent claims 11 and 12 and dependent claims 13-20
Appellant does not argue the patentability of independent claims 11
and 12 separately from that of independent claim 1. We, therefore, sustain
the Examiner's rejection under 35 U.S.C. § 103(a) of independent claims 11
and 12, for similar reasons as for independent claim 1.
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Application 12/888,280
Appellant does not argue the patentability of claims 13-20 separately
from that of claim 12, from which they depend. We sustain the Examiner's
rejection under 35 U.S.C. § 103(a) of claims 13-20, for similar reasons as
for independent claim 12.
DECISION
The Examiner's decision to reject claims 1-20 under 35 U.S.C.
§ 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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