Ex Parte Sprosta et al

Patent Trials and Appeals Board

Apr 29, 2019

14691342 - (D) (P.T.A.B. Apr. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/691,342 04/20/2015
23909 7590 05/01/2019
COLGATE-PALMOLIVE COMPANY
909 RIVER ROAD
PISCATAWAY, NJ 08855
FIRST NAMED INVENTOR
Al Sprosta
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.
10729-00-US-01-TB 5170
EXAMINER
OLIVER, BRADLEY S
ART UNIT PAPER NUMBER
3754
NOTIFICATION DATE DELIVERY MODE
05/01/2019 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_Mail@colpal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AL SPROST A and MICHAEL ROONEY 1
Appeal2018-007812
Application 14/691,342
Technology Center 3700
Before JILL D. HILL, LEE L. STEPINA, and ARTHUR M. PESLAK,
Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Al Sprosta and Michael Rooney ("Appellants") appeal under 35
U.S.C. § 134(a) from the Examiner's decision rejecting claims 1-18. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 The Appeal Brief indicates that Colgate-Palmolive Company is the real
party in interest. Br. 2.
Appeal2018-007812
Application 14/691,342
CLAIMED SUBJECT MATTER
Appellant's invention relates to an oral care system and oral care
dispenser. Claims 1 and 15 are independent. Claim 1, reproduced below
with emphasis added, is illustrative of the claimed subject matter:
1. An oral care dispenser comprising:
a housing forming an internal cavity extending along a
longitudinal axis from a proximal end to a distal end;
an elevator slideably disposed within the internal cavity
that separates the internal cavity into a chamber and a reservoir
that contains an oral care material;
a dispensing orifice for dispensing the oral care material
from the reservoir;
an actuator;
a drive screw positioned in the housing, the drive screw
operably coupled to the actuator such that actuation of the
actuator rotates the drive screw;
an extension member having a distal end detachably
coupled to the elevator via a component interface, the extension
member threadably coupled to the drive screw;
wherein rotation of the drive screw in a first direction
causes the extension member and the elevator to axially advance
along the drive screw towards the distal end of the dispenser to
dispense the oral care material from the dispensing orifice; and
wherein the component interface is configured such that a
proximally-directed axial pullout force required to separate the
extension member from the elevator is greater than a proximally-
directed axial retraction force required to retract the elevator
towards the proximal end of the dispenser when the drive screw
is rotated in a second direction opposite the first direction.
Br. 12 (Claims App.).
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Appeal2018-007812
Application 14/691,342
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Lang
Jimenez
US 6,241,408 Bl June 5, 2001
US 2012/0272996 Al Nov. 1, 2012
REJECTIONS
I. Claims 1---6 and 9-17 are rejected under 35 U.S.C. § 103 as
unpatentable over Jimenez.
II. Claims 7, 8, and 18 are rejected under 35 U.S.C. § 103 as
unpatentable over Jimenez and Lang.
OPINION
Rejection I; Claims 1-6 and 9-17
In rejecting independent claims 1 and 15 as unpatentable over
Jimenez, the Examiner finds that Jimenez discloses the claimed elevator
and extension member, but does not disclose the relationship between the
pullout force and the retraction force for the elevator and extension member
presented in italics above. Final Act. 2-3. Nonetheless, based on an
embodiment disclosed by Jimenez wherein the elevator and extension
member are formed as a unitary structure (Jimenez ,r 102), the Examiner
considers that Jimenez suggests that a separately formed elevator and
extension member "should be joined together firmly." Id. at 3. The
Examiner thus concludes that it would have been obvious to have formed
the device of Jimenez so that a pullout force is greater than a retraction
force "in light of the suggestion of Jimenez that the elevator and extension
member be joined firmly together." Id.
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Appeal2018-007812
Application 14/691,342
Appellants argue that the Examiner appears to be relying on
inherency, but that "[ n Jo evidence exists that the embodiment having a
separately formed elevator 308 and extension member 307 would inherently
result in the elevator 308 retracting without separating." Br. 8. According
to Appellants, the Examiner's proposition is "an unsupportable logical
leap," because one of ordinary skill would have used a unitary body to
increase the pullout force. Br. 9. Appellants assert that the claim does not
recite the term "firmly" and the Examiner's proposed modification is not
suggested by Jimenez. Id.
The Examiner responds that the claimed relationship "is absolutely
necessary for the retraction of the elevator of the claimed invention and
would be inherent in any similar system in which the elevator can be
projected and retracted." Ans. 6. According to the Examiner, increasing
the strength of the component interface provides desirable advantages as a
"logical step, not a leap." Id. at 7.
The Examiner has the better position here. The elevator 308 of
Jimenez is movable between "a fully retracted state (as shown in FIG. 6),"
and "a fully extended position (not illustrated)." Jimenez ,r,r 96 and 97.
Jimenez's use of the terms "retracted" and "extended" suggests more than
just two different positions, and rather, suggests that the elevator 308 is
actuated forward to extend the elevator and is pulled back to retract the
elevator. 2 Jimenez also discloses that "elevator 308 is coupled to the
extension member 307 through insertion of the distal end 369 of the
2 A common dictionary definition of the term "retract" is "to draw or pull
back." Retract Definition, Merriam-Webster's Collegiate Dictionary (I Ph
ed. 2005). This definition is consistent with the term's use in Appellants'
Specification.
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Appeal2018-007812
Application 14/691,342
extension member 307 into the elevator." Jimenez ,r 102. Here, the term
"coupled" is consistent with the common dictionary definition meaning "to
fasten together." Coupled Definition, Merriam-Webster's Collegiate
Dictionary (I Ph ed. 2005). Jimenez's use of the term "coupled" suggests
more than just contact between extension member 307 and elevator 308.
Indeed, Appellants acknowledge that "the preferred embodiment of the
dispenser of Jimenez is identical except for the limitations regarding the
axial pullout force being greater than the axial retraction force." Br. 8.
Given that Appellants dispenser retracts and given that Jimenez's dispenser
is "identical" except for the claimed relationship, a preponderance of the
evidence supports the Examiner's position that a pullout force required to
separate the extension member from the elevator is greater than a
proximally-directed axial retraction force required to retract the elevator.
Consequently, it would have been an obvious configuration to provide
because the "component interface would need to be strong enough to
prevent separation," in order to have an operable device as a "logical step"
in the engineering design process. See Ans. 6-7.
For these reasons, we sustain the Examiner's rejection of claims 1
and 15 as unpatentable over Jimenez. Claims 2-6, 9-14, 16, and 1 7 fall
with claims 1 and 15. See Br. 4.
Rejection II; Claims 7, 8, and 18
Appellants do not argue for the separate patentability of claims 7, 8,
and 18 apart from arguments presented with respect to claims 1 and 15,
which we have previously considered. See Br. 4. Consequently, we affirm
the Examiner's rejection of claims 7, 8, and 18 over Jimenez and Lang.
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Appeal2018-007812
Application 14/691,342
DECISION
The Examiner's decision to reject claims 1-18 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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