Ex Parte Stookey et al

Board of Patent Appeals and Interferences

Mar 13, 2012

11617103 (B.P.A.I. Mar. 13, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GEORGE K. STOOKEY, CHARLES L. THOMECZEK, JR.,
and JUN GE
____________

Appeal 2010-010218
Application 11/617,103
Technology Center 3700
____________

Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
STEPHEN WALSH, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims 2-5, 7, 9-14, 20,
21, 23, 30-32, and 39 (App. Br. 2).
1,2

1
Appellants do not appeal the rejection of claim 6 (App. Br. 3).
Accordingly, for the purposes of this Appeal we treat claim 6 as canceled.
See Manual of Patent Examining Procedure § 1214.05 (Rev. 8, July 2010).
2
While the Claims Appendix of Appellants’ Brief identifies claim 31 as
canceled, Appellants and Examiner both acknowledge that claim 31 is on
appeal (see App. Br. ii; Cf. App. Br. 2; Reply Br. 2; Ans. 2). Accordingly,
we treat claim 31 as pending and on appeal before this panel.
Appeal 2010-010218
Application 11/617,103

2
We have jurisdiction under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
The claims are directed to a handheld dental implement. Claims 9 and
32 are representative and are reproduced in the “CLAIMS APPENDIX” of
Appellants’ Brief (App. Br. i-iii).
Claims 2, 3, 5, 7, 9, 10, and 39 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Watson
3
and Rakocz.
4

Claims 4, 5, and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Watson, Rakocz, and Goldman.
5

Claims 11 and 12 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Watson, Rakocz, and Mandelkern.
6

Claim 13 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Watson, Rakocz, and Kerschbaumer.
7

Claims 20, 21, and 23 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Watson, Rakocz, Mandelkern, and
Kerschbaumer.
Claims 31 and 32 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Mandelkern, Watson, and Lovely.
8

Claim 30 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Mandelkern, Watson, Lovely, and Kerschbaumer.
We affirm-in-part.

3
Watson, US 2007/0224571 A1, issued Sep. 27, 2007.
4
Rakocz, US 6,276,934 B1, issued Aug. 21, 2001.
5
Goldman et al., US 2006/0078844 A1, issued Apr. 13, 2006.
6
Mandelkern et al., US 2003/0228553 A1, issued Dec. 11, 2003.
7
Kerschbaumer et al., US 2003/0148243 A1, issued Aug. 7, 2003.
8
Lovely, US 2007/0134615 A1, issued Jun. 14, 2007.
Appeal 2010-010218
Application 11/617,103

3
The rejections of claims 9, 20, and their dependent claims:
ISSUE
Did Examiner establish through a preponderance of evidence on this
record that the prior art suggests a handheld dental implement comprising a
mirror to reflect light from both: (1) the light source onto a diagnostic
specimen and (2) the diagnostic specimen to the light detecting device?
FACTUAL FINDINGS (FF)
FF 1. Watson suggests a handheld dental implement that comprises “a
mirror positioned to reflect light from the light source to a subject” or
“diagnostic specimen” (Ans. 3 and 8).
FF 2. Rakocz suggests a dental hand-held implement that comprises a
mirror positioned to reflect light from a diagnostic specimen to a light
detecting device (id. at 9).
FF 3. Examiner relies on Goldman to suggest a gas input fluidly coupled to
a rechargeable gas reservoir and a cradle to receive a housing (id. at 5).
FF 4. Examiner relies on Mandelkern to suggest “a dental camera having
an antenna” (id.).
FF 5. Examiner relies on Kerschbaumer to suggest “a device having a
microphone” (id. at 6).
ANALYSIS
Based on the combination of Watson and Rakocz Examiner concludes
that, at the time of Appellants’ claimed invention, it would have been prima
facie obvious to a person of ordinary skill in this art “to modify Watson by
providing the light detecting device of Rakocz in order to capture clear
images of intra oral areas” (Ans. 9; see also Ans. 4). We are not persuaded.
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Application 11/617,103

4
Independent claims 9 and 20 require the mirror to reflect light from
both: (1) the light source onto a diagnostic specimen and (2) the diagnostic
specimen to the light detecting device (Claims 9 and 20; see also Reply Br.
6). Examiner failed to establish, through a preponderance of evidence on
this record, a suggestion of the use of a single mirror to perform both of the
functions set forth above (see Reply Br. 6 (“neither Watson nor Rakocz
teaches a mirror that does both”)).
Examiner failed to establish that any of Goldman, Mandelkern, or
Kerschbaumer make up for the foregoing deficiency in the combination of
Watson and Rakocz (FF 3-5).
CONCLUSION OF LAW
Examiner failed to establish through a preponderance of evidence on
this record that the prior art suggests a handheld dental implement
comprising a mirror to reflect light from both: (1) the light source onto a
diagnostic specimen and (2) the diagnostic specimen to the light detecting
device.
The rejection of claims 2, 3, 5, 7, 9, 10, and 39 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Watson and Rakocz is
reversed.
The rejection of claims 4, 5, and 14 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Watson, Rakocz, and Goldman is
reversed.
The rejection of claims 11 and 12 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Watson, Rakocz, and Mandelkern is
reversed.
Appeal 2010-010218
Application 11/617,103

5
The rejection of claim 13 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Watson, Rakocz, and Kerschbaumer is reversed.
The rejection of claims 20, 21, and 23 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Watson, Rakocz, Mandelkern, and
Kerschbaumer is reversed.

The rejection of claims 31 and 32:
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 6. Examiner finds that Mandelkern suggests the dental investigation
system of Appellants’ claim 32 with the exception of a handpiece having a
gas reservoir, a microphone in communication with the processing unit, a
unit with voice recognition software, and a mirror (Ans. 6-7 and 10).
FF 7. Examiner finds that Watson suggests a handpiece comprising a gas
reservoir and a mirror (id. at 6 and 10).
FF 8. Examiner finds that Lovely suggests a processing system in
communication with a microphone and voice recognition software (id. at 7).
ANALYSIS
Based on the combination of Mandelkern, Watson, and Lovely
Examiner concludes that, at the time of Appellants’ claimed invention, it
would have been prima facie obvious to a person of ordinary skill in this art
“to modify Mandelkern by providing the gas reservoir as taught by Watson
in order to keep the camera clean so that [a] clear image of the patient’s
mouth can be achieved,” to provide the implement suggested by the
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Application 11/617,103

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combination of Mandelkern and Watson with a microphone in
communication with a process unit having software configured to receive
and act on commands from the microphone as suggested by Lovely; and to
modify Mandelkern to include Watson’s mirror “for dental cleaning/hygiene
purpose[s] or to direct light to teeth and gum for diagnos[tic] purpose[s]”
(Ans. 7 (emphasis removed)). With regard to the mirror, Examiner asserts
that “[d]ental mirrors are old and well-known in the dental art and they are
typically used to help clinical/dentist to more clearly visualize and diagnose
difficult to see areas in [a] patient’s mouth” (id. at 10). We find no error in
Examiner’s prima facie case of obviousness.
Appellants contend that Examiner’s Answer included a new ground of
rejection (Reply Br. 7-8). This issue, however, was resolved in the June 1,
2010 Decision on Petition under 37 C.F.R. § 1.181 and will not be addressed
further.
We recognize Appellants’ contention that Examiner’s rationale for
adding Watson’s mirror to Mandelkern’s device is a “generic motivation”
that is based in hindsight (Reply Br. 7-8; see also App. Br. 6-7). We are not
persuaded. Instead, we agree with Examiner’s reasoning that at the time of
Appellants’ claimed invention dentists routinely utilized mirrors to observe a
patient’s mouth; therefore, it would have been prima facie obvious to attach
a mirror to Mandelkern’s device.
CONCLUSION OF LAW
The preponderance of evidence on this record supports a conclusion
of obviousness. The rejection of claim 32 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Mandelkern, Watson, and Lovely is
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Application 11/617,103

7
affirmed. Because it is not separately argued claim 31 falls together with
claim 32. 37 C.F.R. § 41.37(c)(1)(vii).

The rejection of claim 30:
Appellants do not contest the rejection of claim 30. The rejection of
claim 30 under 35 U.S.C. § 103(a) as unpatentable over the combination of
Mandelkern, Watson, Lovely, and Kerschbaumer is affirmed.

TIME PERIOD FOR RESPONSE
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-IN-PART

cdc