Ex Parte Peters

Patent Trial and Appeal Board

Aug 31, 2016

11699239 (P.T.A.B. Aug. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111699,239 01129/2007
26948 7590 09/02/2016
VENJURIS, P.C.
1938 E. OSBORN RD
PHOENIX, AZ 85016-7234
FIRST NAMED INVENTOR
Cassie Peters JR.
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.
PHWA1773-001 7411
EXAMINER
STEITZ, RACHEL RUNNING
ART UNIT PAPER NUMBER
3776
NOTIFICATION DATE DELIVERY MODE
09/02/2016 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):
docketing@venjuris.com
vclmdocket@venjuris.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CASSIE PETERS, JR. 1
Appellant
Appeal2014-009497
Application 11/699,239
Technology Center 3700
Before DANIELS. SONG, AMANDA F. WIEKER, and
SEAN P. O'HANLON, Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
1 The real party in interest is Cassie Peters, Jr. (Appeal Brief (hereinafter
"App. Br.") 1.).
Appeal2014-009497
Application 11/699,239
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 the Examiner's final
rejection of claims 5-10 in the present application, claims 1--4 having been
cancelled (App. Br. 2). In addition to its Appeal Brief, the Appellant relies
on a Reply Brief (hereinafter "Reply Br."). We have jurisdiction under 35
U.S.C. §§ 6(b) and 134.
We REVERSE.
The claimed invention is directed to a toothpick device (Spec. 1
(Title)), and method reciting steps for making such a toothpick device
(claims 9 and 10). Representative independent claim 5 reads as follows
(App. Br. 21 (Claims App'x) (emphasis added)):
5. A toothpick device for cleaning teeth, comprising:
a toothpick having an exterior surface; the exterior
surface comprising afloss-wrapping region that is substantially
smooth and free from manufactured notches and free from
manufactured indentations;
a piece of waxed dental floss comprising a length of
dental floss having opposed first and second ends and coated
with wax from the first end of the length of dental floss to the
second end of the length of dental floss, the length of dental
floss wrapped around the exterior surface of the toothpick from
the first end of the length of dental floss to the second end of
the length of dental floss; and
the wax of the piece of waxed dental floss at the first and
second ends of the length of dental floss melted and resolidified
with respect to the exterior surface of the toothpick forming
melted and resolidified wax of the wax of the piece of waxed
dental floss between the first and second ends of the length of
dental floss and the exterior surface of the toothpick securing
the first and second ends of the length of dental floss to the
floss-wrapping region of the exterior surface of the toothpick;
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Application 11/699,239
whereby a user of the toothpick device can divide the
toothpick into parts so that the user can hold one part of the
divided toothpick in each hand and floss the user's teeth with
the floss between the parts of the divided toothpick.
Independent claim 7 is similar to claim 5, but claim 7 recites "a
toothpick having an exterior surface; the exterior surface being substantially
smooth and free from manufactured notches and free from manufactured
indentations." (App. Br. 22 (Claims App'x).) Independent claim 9 recites a
method reciting the steps for making a toothpick device. (Id.)
The Examiner rejects claims 5-10 under 35 U.S.C. § 112(a) for failing
to comply with the written description requirement.
The Examiner also rejects claims 5-10 under 35 U.S.C. § 103(a) as
being obvious over the combination of Mason2 and De Mar. 3
ANALYSIS
Written Description Rejection
The Examiner rejects claims 5-10, which were added during
prosecution, as failing to comply with the written description requirement.
(Ans. 2; Final Act 2.) The Examiner finds that the limitation "the exterior
surface comprising a floss-wrapping region that is substantially smooth and
free from manufactured notches and free from manufactured indentations"
was not disclosed in the Specification and thus, constitutes new matter. 4
(Id.)
2 U.S. Patent No. 407,362, issued July 23, 1889.
3 U.S. Patent No. 2,702,555, issued February 22, 1955.
4 As noted, the language of claim 7 is slightly different than the quoted
language. However, it is apparent from the Examiner's inclusion of claim 7
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The Appellant argues independent claims 5, 7, and 9 together. (App.
Br. 6.) Substantively, the Appellant argues that the Specification provides
sufficient description of the limitation at issue because: Figures 1 and lB
show "a standard toothpick ... without any visible notches or indentations,
around which the floss is coiled or wrapped"; the Specification describes the
toothpick as a "standard wooden toothpick"; and that toothpicks are
"ubiquitous in restaurants" and "common." (Id. at 7-11 (citing Spec., Figs.
1, lB; 4, 11. 12-13; 5, 11. 13-17; 1, 11. 18-19, 22-23); see also Reply Br. 2-
4.) According to the Appellant, "[o ]ne of ordinary skill in the art would
clearly read the disclosure as requiring and disclosing a surface substantially
smooth and free from manufactured notches and free from manufactured
indentations." (App. Br. 11.)
The Examiner disagrees, finding that because Figure 1 shows a
toothpick with dental floss wrapped around it, Figure 1 does not show an
exterior surface with a floss-wrapping region that is substantially free of
notches and indentations. (Ans. 3.) The Examiner also finds that
"[A ]ppellant has not disclosed what the manufactured process is that would
result in this [claimed] exterior surface." (Id. at 4.) The Examiner further
finds that restaurant style toothpicks are pointed at both ends, but the
disclosed toothpick has only one pointed end and a flat end. (Id.)
We agree with the Appellant that there is adequate written descriptive
support for the limitation at issue. As argued by the Appellant, the
Specification describes the toothpick as a "standard wooden toothpick" (5,
11. 13-14), thereby also providing adequate written descriptive support.
in this rejection that the Examiner considers that the language of claim 7
lacks written descriptive support as well.
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Those of ordinary skill in the art would know that such standard wooden
toothpicks, which are ubiquitous and common as pointed out by the
Appellant, include a "region that is substantially smooth and free from
manufactured notches and free from manufactured indentations." In re
Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983) ("The test for determining
compliance with the written description requirement is whether the
disclosure of the application as originally filed reasonably conveys to the
artisan that the inventor had possession at that time of the later claimed
subject matter, rather than the presence or absence of literal support in the
specification for the claim language."). In addition, while in Figure 1, the
surface of the toothpick is obscured by the floss, Figure lB shows the
surface of the toothpick as the floss is being unraveled, the surface being
free of any notch or indentation, thereby providing additional descriptive
support. (See Spec., Fig. lB.)
As to the Examiner's finding that the Specification does not disclose
the manufacturing process that would result in the claimed exterior surface,
we do not view such disclosure as being necessary in view of the fact that
toothpicks are well known. Hybritech, Inc. v. Monoclonal Antibodies, Inc.,
802 F.2d 1367, 1384 (Fed. Cir. 1986) ("a patent need not teach, and
preferably omits, what is well known in the art"). As to the Examiner's
further finding that the illustrated toothpick of Figure 1 is not like restaurant
style toothpicks which are pointed at both ends, we are in agreement with
the Appellant that this does not change the fact that standard toothpicks have
a region "that is substantially smooth and free from manufactured notches
and free from manufactured indentations." (Reply Br. 4 n.1.)
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Therefore, in view of the above, we reverse the Examiner's rejection
of claims 5, 7, and 9 for failure to comply with the written description
requirement. The rejection of claims 6, 8, and 10 appears to be based on
their dependency from the rejected independent claims. Correspondingly,
this rejection is reversed as to the dependent claims 6, 8, and 10 as well.
Obviousness Rejection
The Examiner rejects claims 5-10 as obvious over the combination of
Mason and De Mar, finding that Mason discloses the toothpick and method
claimed except "Mason does not disclose the floss being coated with wax,
wherein the floss is secured to the toothpick by solidified wax." (Ans. 3.)
The Examiner relies on De Mar as teaching the method of "melting and
resolidifying wax from a piece of wax dental floss" so as to secure the dental
floss. (Id. (citing De Mar, Figs. 3, 4; col. 2, 11. 20-35).) The Examiner
concludes that:
It would have been obvious to one having ordinary skill in the
art at the time the invention was made to modify the toothpick
of Mason with a securement as taught by De Mar of melting
and resolidifying the wax of the waxed dental floss to the
exterior of the toothpick in order to hold the floss to the
toothpick.
(Ans. 3; see also Final Act. 4.)
The Appellant argues that unlike Mason and De Mar, the claimed
invention "secures the floss to the exterior surface of the toothpick without
any slits, notches or indentations." (Reply Br. 5-7 .) Specifically, the
Appellant argues that the claims require ends of the dental floss to be
"secured to the un-notched, substantially smooth exterior surface of the
toothpick with wax," but Mason utilizes a mechanical notch or a bobbin to
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Application 11/699,239
secure the free end, and De Mar uses notches and wax lumps to secure the
floss. (App. Br. 12-13.) The Examiner disagrees and explains that the
claims are being interpreted so that the "the region in which the floss is
wrapped [is] the region that is free from manufactured notches and
manufactured indentations which is disclosed in both Mason and De Mar."
(Ans. 4; Final Act. 4.)
The Examiner's claim interpretation and explanation does not fully
address the Appellant's argument, which is based on the language of the
claims. Specifically, in addition to the language focused upon by the
Examiner, claims 5 and 9 further recite that the wax secures the ends of the
dental floss "to the floss-wrapping region of the exterior surface of the
toothpick." (App. Br. 21, 23 (Claims App'x).) Hence, these claims require
securement of the ends of the dental floss to the exterior surface that is
recited to be substantially smooth and free from manufactured notches or
indentations.
As the Appellant points out, Mason utilizes a slit to secure the end of
the floss. (Mason, Fig. 1; 11. 9-16, 21-25.) De Mar discloses securement of
floss extending through a notch by melting the wax of the floss to form
lumps. (De Mar, Figs 2--4; col. 1, 1. 58--col. 2, 1. 6; col. 2, 11. 21-29.) Thus,
neither Mason nor De Mar discloses securement of the ends of the dental
floss to the exterior surface of the toothpick, which is substantially smooth
and free of notches or indentations as required by the claims.
We also do not view the disclosure in De Mar of melting the wax of
the floss to retain the floss within its notches as being sufficient to establish
that it would have been obvious to have secured the floss of Mason on the
substantially smooth surface of the toothpick instead of Mason's disclosed
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slit. The Examiner has not set forth a reason with rational underpinnings as
to why it would have been obvious to modify Mason to secure its floss as
claimed in claims 5 and 9. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007) ("[R ]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness" (alteration in original) (quoting In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006))). Thus, the Examiner's obviousness rejection as to claims
5 and 9 is reversed.
As noted above, the language of claim 7 differs slightly from claim 5
in that claim 7 recites "a toothpick having an exterior surface; the exterior
surface being substantially smooth and free from manufactured notches and
free from manufactured indentations." (App. Br. 22 (Claims App'x).)
Claim 7 also recites that the wax secures the ends of the dental floss "to the
exterior surface of the toothpick." (Id.)
The Examiner's position is that under the broadest reasonable
interpretation, "the limitation 'an exterior surface' does not clearly set forth
the entire surface of the whole toothpick." (Ans. 5.) The Appellant argues
that in claim 7, "the exterior surface as a whole ... [is] substantially smooth
and free from manufactured notches and free from manufactured
inden[ta]tions," and that securement of the floss to such a surface is not
disclosed in Mason or De Mar. (App. Br. 18-19.)
We generally agree with the Appellant and view the Examiner's
position to be based on an unreasonably broad interpretation of the claim.
Under the facts of this case where the structure is well known in the art to be
small and unitary in construction, a person of ordinary skill in the art would
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understand the recited exterior surface as referring to the entire exterior
surface of the toothpick unless there is modifying language in the claim to
indicate the contrary. Hence, the analysis set forth above relative to claim 5
as to the securement of the floss is applicable to claim 7 as well.
Correspondingly, this rejection is also reversed with respect to claim 7.
Finally, because claims 6, 8, and 10 depend from independent claims
5, 7, and 9, respectively, this obviousness rejection is reversed as to claims
6, 8, and 10 as well. The remaining arguments between the Appellant and
the Examiner are moot.
ORDER
The Examiner's rejections are REVERSED.
REVERSED
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