Ex Parte Palfy et al

Board of Patent Appeals and Interferences

Apr 26, 2010

10322648 (B.P.A.I. Apr. 26, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte VALERIE PALFY and DON A. SKOMSKY
____________

Appeal 2009-012360
Application 10/322,648
Technology Center 1700
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Decided: April 26, 2010
____________

Before MICHAEL P. COLAIANNI, LINDA M. GAUDETTE, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-3, 7-10, 23-26, 28, 30-44, and 72.1 (App. Br. 8-9). We
have jurisdiction pursuant to 35 U.S.C. § 6(b).2

1 Claims 4-6, 11-22, 27, 29, 45-64, and 71 have been canceled and claims
65-70 have been allowed. (Appeal Brief filed July 1, 2008, (hereinafter
“App. Br.”), 3; Final Rejection entered January 28, 2008, 14).
2 Oral argument was heard in this appeal on April 14, 2010.
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We AFFIRM.
THE INVENTION
Appellants describe an at-home system for cleaning and disinfecting
dental hardware. (Spec. 1:5-10). Claim 1, reproduced below, is
representative of the subject matter on appeal.
1. An at-home integrated cleaning and disinfection system for
dental hardware, for consumer use, comprising:
a portable base unit sized for at-home use by a consumer,
the base unit comprising a holding frame and an ultraviolet
lamp;
a cleaning chamber within which dental hardware and a
cleaning solution comprising hydrogen peroxide are receivable,
the cleaning chamber fitting within the holding frame in a
manner such that contents of the cleaning chamber are exposed
to light emitted by the ultraviolet lamp;
a vibration mechanism positioned to cause the cleaning
chamber and the contents therein to vibrate while the cleaning
chamber is fitted within the holding frame; and
a cleaning solution comprising hydrogen peroxide, in a
concentration of between 1 percent and 5 percent, received
within the cleaning chamber;
wherein a biocidal action is caused by dissociation of
hydrogen peroxide molecules into free hydroxyl radicals upon
absorption of ultraviolet light by the hydrogen peroxide
molecules, the free hydroxyl radicals in turn chemically
attacking and killing bacterial or viral cells.

(App. Br. 28, Claims Appendix.)

There are five grounds of rejection under 35 U.S.C. §103(a) for
review on appeal:
(1) The Examiner rejected claims 1-3, 7-10, 23-26, 28, 32-39, 43, and
44 as being unpatentable over Baron (U.S. 5,120,499 issued June 9, 1992
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(hereinafter “Baron ‘499”)) in view of Urbach (U.S. 3,852,032 issued Dec.
3, 1974) and Arnold (U.S. Patent 4,746,489, issued May 24, 1988);
(2) The Examiner rejected claim 24 as being unpatentable over Baron
‘499 in view of Urbach and Arnold, further in view of Baron (U.S.
4,063,890, issued Dec. 20, 1977, (hereinafter “Baron ‘890”));
(3) The Examiner rejected claims 30-33 as being unpatentable over
Baron in view of Urbach and Arnold, further in view of Scotto (U.S.
6,361,610 B1, issued Mar. 26, 2002), Shurtliff (U.S. 5,975,094 issued Nov.
2, 1999), and Glotz (U.S. 5,823,016, issued Oct. 20, 1988);
(4) The Examiner rejected claims 40-42 as being unpatentable over
Baron ‘499 in view of Urbach and Arnold, further in view of Baron ‘890 and
Walter (U.S. 4,114,194, Sep. 12,1978);
(5) The Examiner rejected claim 72 as being unpatentable over Baron
‘499 in view of Urbach and Arnold, further in view of Langford (U.S.
5,184,633, issued Feb. 9, 1993).3
In rejecting the claims on appeal, the Examiner found that Baron ‘499
teaches the apparatus as claimed with the exception of the claimed
concentration of hydrogen peroxide. (Examiner’s Answer entered
September 10, 2008, (hereinafter “Ans.”) 4). The Examiner found that
Arnold and Urbach disclose conventional concentrations of peroxide of
about 3% for cleaning contact lenses. (Id. at 5.) The Examiner concluded
that it would have been obvious to include conventional concentrations of
hydrogen peroxide in the apparatus of Baron ‘499 “to ensure the results of

3 The Patent number for Langford is incorrectly listed as U.S. 5,184,663 on
page 3 of the Examiner’s Answer.
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treatment and in order to use a conventional solution for its conventional
purpose.” (Id.)
Appellants contend that the recesses in Baron ‘499 are too small to
receive dental hardware. (App. Br. 10.) Appellants argue that Baron ‘499
teaches away from using 1-5% hydrogen peroxide and rinsing as disclosed
by Arnold and Urbach because of potential serious damage to the eye and
because the purpose of Baron ’499 is to exclude rinsing steps. (App. Br. 11-
13). Appellants also contend that Baron ‘499 teaches away from the recited
concentration of hydrogen peroxide because 1-5% hydrogen peroxide is not
transparent to light from 290 nm and above are required by Baron ‘499.
(App. Br. 17-18.)

ISSUES
Did the Examiner err in finding that the apparatus of Baron ‘499 is
capable of receiving dental hardware?
Did the Examiner err in concluding that it would have been obvious to
include conventional concentrations of hydrogen peroxide of 1-5% as
disclosed in Arnold and Urbach in the apparatus of Baron ‘499?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellants’ Specification states that dental hardware includes
“prostheses, dentures, plates, retainers, clips, and removable
implants.” (Spec. 1, ll. 6-7.)
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2. Baron ’499 discloses a system whereby contact eye lenses “may be
asepticized by the combined or synergistic effects of ultraviolet
irradiation, ultrasonic vibration and chemical oxidation to destroy
micro-organisms.” (Col. 2, ll. 56-64.)
3. Baron ‘499 discloses “an object of the invention is the provision of
process and liquid media which eliminate the need for the use of
chemical additives thereby eliminating allergy and carcinogenic
effects caused by the use of contact eye lens bodies and to remove
any opportunity for patient misenterpretation [sic] in use of
asepticizing process.” (Col. 3, ll. 30-36.)
4. Baron ‘499 discloses that saline solution “is the most compatible
with the human eye.” (Col. 4, ll. 53-55.)
5. Baron ‘499 discloses “[i]t should be noted when peroxide is used,
there should be no greater than 30 parts per million in the solution
otherwise serious damage to the eye can result.” (Col. 4, ll. 57-
59.)
6. Baron ‘499 discloses that the aqueous liquid media used in the
invention is “characterized as being transparent to ultraviolet
radiation form the 290 nanometers wavelength and above.” (Col.
4, ll. 7-10.) This is due to the lens materials disclosed as being
used with the invention are “substantially and rapidly damaged
when exposed to ultraviolet radiation in the range of 254 to 280
nanometers wavelength, while there is little if any significantl [sic]
damage to these lenses when they are exposed to ultraviolet
irradiation in the range of 290 to 310 nanometers wavelength.”
(Col. 5, ll. 22-28.)
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7. Urbach discloses that in order to clean plastic lenses, “the lenses
may be treated with three percent hydrogen peroxide for 5 to 10
minutes followed by saline-bicarbonate rinse.” (Col. 1, ll. 37-39.)
Urbach discloses that “it is possible to damage the eyes should the
peroxide not be thoroughly removed by the bicarbonate soda
rinse.” (Col. 1, ll. 41-43.)
8. Arnold discloses a cleaning method where a contact lens is treated
with a 3% hydrogen peroxide solution, which “must be neutralized
with a reducing agent or a strong burning in the eye of the user
may be provoked.” (Col. 1, ll. 33-38.)

PRINCIPLES OF LAW
A patent applicant is free to recite features of an apparatus either
structurally or functionally. In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir.
1997). Where the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the claimed
subject matter may, in fact, be an inherent characteristic of the prior art, it
possesses the authority to require the applicant to prove that the subject
matter shown to be in the prior art does not possess the characteristic relied
on. Id. The structure of the prior art apparatus must merely be capable of
performing the claimed functional recitation. Id at 1478-79.
In KSR, the Supreme Court explained, “[t]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” KSR Int'l Co. v. Teleflex Inc., 550
U.S. 398, 416 (2007).
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When references teach away from the claimed combination, it is
improper to combine them in an obviousness rejection. In re Grasselli, 713
F.2d 731, 743 (Fed. Cir. 1983).

ANALYSIS
Appellants indicate that claims 2, 3, 7-10, 23-26, 28, 30-44, and 72
stand or fall together with claim 1. (App. Br. 9.) Accordingly, we confine
our discussion to appealed claim 1 with respect to rejection (1), which
contains claim limitations representative of the arguments made by
Appellants pursuant to 37 C.F.R. § 41.37(c)(1)(vii).4 In addition, since
Appellants do not separately argue the rejections of claims 24, 30-33, 40-42,
and 72, are comments below apply equally to rejections (2)-(5).
We begin by interpreting whether the recitation “a cleaning solution
comprising hydrogen peroxide, in a concentration of between 1 percent and
5 percent, received within the cleaning chamber” is a structural limitation of
claim 1. Claim 1 positively recites the presence of the cleaning solution in
the claimed system. The cleaning solution is not a material or article that is
to be worked upon by the recited system. Whether the system is used to
clean dental hardware or contact lenses, the claimed system requires the
presence of the cleaning solution. Accordingly, the cleaning solution is a
structural element of the claims. Therefore, we will focus our discussion on
the aspects of the Examiner’s rejections that address the cleaning solution as
a structural element of the claims and Appellants’ responses thereto.

4 Only those arguments actually made by Appellants have been considered
in this decision. Arguments which Appellants could have made but chose
not to make have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii) (2009).
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Issue #1
Appellants argue that “[a]t best only a tip of a gum massager or the
like could fit within the recess 12, while dentures, plates, retainers, and the
like would be much too big to fit within recesses 12.” (App. Br. 10.) Thus,
as the Examiner points out, Appellants admit that Baron ‘499 is capable of
receiving dental hardware in the form of a gum massager tip. (Ans. 14-15.)
Moreover, Appellants’ Specification states that dental hardware includes
prostheses, clips, and removable implants. (FF 1.) Appellants do not
present any persuasive evidence that such dental hardware would be
incapable of being received in the recesses of the Baron ‘499 apparatus.
Therefore, Appellants’ arguments are not persuasive.
Issue #2
Appellants provide two arguments that Baron ‘499 teaches away from
the combination of prior art applied by the Examiner. Appellants first argue
that Baron ‘499 teaches away from applying hydrogen peroxide solutions of
a conventional concentration of 3% as taught by Arnold and Urbach,
because Baron ‘499 discloses that at concentrations over 30 ppm hydrogen
peroxide, serious damage to the eye can result and the rinsing steps that
would be required as a result of using hydrogen peroxide in conventional
concentrations would be contrary to the purpose of Baron ‘499, which seeks
to eliminate such steps. (App. Br. 13, 19; see FF 3 and 5.) We disagree.
Both Arnold and Urbach evidence that when conventional concentrations of
hydrogen peroxide are used to clean contact lenses, it is known in the art that
a rinsing step must be employed or damage to the eye could result. (FF 7
and 9; Ans. 17.) Therefore, one of ordinary skill in the art would have been
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aware of the additional steps necessary as a result of applying a more
concentrated conventional solution of hydrogen peroxide.
Regarding Appellants’ argument that the Examiner’s combination
would be contrary to the purpose of Baron ‘499, Baron ‘499 discloses that
the liquid media employed should eliminate the allergy and carcinogenic
effects caused by the use of contact eye lens bodies. (FF 3.) Urbach
discloses that the rinsing method employs a saline-bicarbonate rinse. (FF 7.)
Baron ‘499 discloses that saline solution is the most compatible with the eye.
(FF 4.) Appellants present no persuasive evidence that the bicarbonate used
in Urbach’s rinse would have any of the allergy or carcinogenic effects that
Baron ‘499 desires to eliminate. Accordingly, Appellants have not
established that one of ordinary skill in the art would have been discouraged
from applying the conventional solutions of hydrogen peroxide disclosed in
Urbach and Arnold to the apparatus of Baron ‘499 followed by a rinsing step
as was known in the art.
Appellants also contend that Baron ‘499 teaches away from the
combination proposed by the Examiner because of the reduced transparency
in wavelengths over 290 nm that is exhibited by concentrations of hydrogen
peroxide within the claimed range as opposed to hydrogen peroxide having a
concentration of 30 ppm and below employed by Baron ‘499. Appellants
rely on the Declaration of Don S. Skomsky dated April 7, 2007 (hereinafter
“the Skomsky Declaration”) for support that the transparency of hydrogen
peroxide solutions having concentrations within Appellants’ claimed range
at wavelengths greater than 290 nm would be less than the transparency of
the hydrogen peroxide solution employed by Baron ‘499. (App. Br. 23-25.)
However, the Skomsky Declaration does not address the overall effect that
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the increased hydrogen peroxide concentration would have on the cleaning
ability of the solution. Rather, Appellants argue:
it would remain an open question whether one of the three
actions (direct UV irradiation, hydroxyl radicals, and direct
hydrogen peroxide chemical attack) might overwhelm the
others in overall effectiveness, such that a decrease in its
effectiveness overwhelms even a substantial increase in
effectiveness of the other two actions.
(App. Br. 18.)
Appellants have failed to direct our attention to any persuasive
evidence on the record to support this argument. Baron ‘499 discloses
synergistic effects of ultraviolet irradiation, ultrasonic vibration, and
chemical oxidation on cleaning contact lenses (FF 2) and does not indicate
that increasing one of the actions would have a detrimental effect on the
others. Accordingly, Appellants’ arguments are not persuasive.
Appellants also contend that the Examiner’s reasons for combining
the prior art are weak while the evidence of teaching away is strong. (App.
Br. 18-19.) However, for the reasons discussed supra we disagree. That is,
Appellants’ arguments that Baron ‘499 teaches away from the combination
employed by the Examiner do not outweigh the Examiner’s rationale that
one of ordinary skill in the art would have made a simple substitution of a
conventional concentration of hydrogen peroxide in the system of Baron
‘499 to yield a predictable result. (Ans. 20.) Therefore, we are not
persuaded by Appellants’ arguments.

CONCLUSION
The Examiner did not err in finding that the apparatus of Baron ‘499
is capable of receiving dental hardware.
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The Examiner did not err in concluding that it would have been
obvious to include conventional concentrations of hydrogen peroxide of 1-
5% as disclosed in Arnold and Urbach in the apparatus of Baron ‘499.

ORDER
We affirm the Examiner’s decision rejecting claims 1-3, 7-10, 23-26,
28, 30-44, and 72 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. §1.136(a).

AFFIRMED

rvb

James E. Mrose
4719 River Road
Bethesda, MD 20816-3034