Ex Parte Tallon

Patent Trial and Appeal Board

Dec 17, 2018

15030846 (P.T.A.B. Dec. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/030,846 04/20/2016
40581 7590 12/19/2018
CRAWFORD MAUNU PLLC
1150 NORTHLAND DRIVE, SUITE 100
ST. PAUL, MN 55120
FIRST NAMED INVENTOR
Richard Dale Tallon
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.
TDPL.002US 1775
EXAMINER
APONTE, MIRA YDA ARLENE
ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
12/19/2018 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):
USPTO-patent@ip-firm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD DALE TALLON
Appeal2018-009197
Application 15/030,846
Technology Center 3700
Before ERIC B. GRIMES, MICHAEL J. FITZPATRICK, and
ULRIKE W. JENKS, Administrative Patent Judges.
JENKS, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from Examiner's
decision to reject claims directed to a dental extraction apparatus and a
method of using the apparatus. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellant is the Applicant, Tallon Dental Products LLC, which, according
to the Brief, is the real party in interest. Appeal Br. 2.
Appeal2018-009197
Application 15/030,846
STATEMENT OF THE CASE
Claims 1-5, 7-9, 11, 12, 14, 16, and 18-22 are on appeal, and can be
found in the Claims Appendix of the Appeal Brief. Claim 1 is representative
of the claims on appeal, and reads as follows:
1. A dental extraction apparatus comprising:
an engagement component including a hook configured
and arranged to extract a tooth from a patient's mouth by
engaging with a side of the tooth via an end portion of the hook
and applying a torque to the tooth;
an input torque component, including a handle, configured
and arranged to receive an input torque and to translate that input
torque to the engagement component; and
a torque controller, including a spring, configured and
arranged with the input torque component and the engagement
component to limit the torque applied to the tooth at different
selectable torque limits, relative to input torque provided via the
input torque component, wherein the engagement component
includes a coupling configured and arranged to couple to a
plurality of different types of hooks, each hook being configured
and arranged with a curvature that matches curvature of a
particular type of tooth and that facilitates engagement between
the hook and tooth for applying the translated torque to the tooth,
each hook being configured and arranged with a curvature that
matches a curvature of a tooth that is different than tooth
curvature that other ones of the hooks match; and
a shaft which is separate from and coupled to the torque
controller at a proximal end of the shaft with the engagement
component at a distal end of the shaft, the shaft configured and
arranged to translate torque from the input torque component to
the engagement component, as limited by the torque controller.
Appeal Br. 14 (Claims Appendix).
Independent claims 13 and 18, are directed to methods of using a dental
extraction tool comprising a torque controller.
2
Appeal2018-009197
Application 15/030,846
Appellant seeks review of the following grounds of rejection2 made
by Examiner3:
I. Claims4 1, 8, 9, 11,5 16, 18, 19, and 21 under§ 103 as
unpatentable over McConnell 6 in view of Livermont, 7 in further view of
Durham, 8 and in further view of Hollander. 9
II. Claims 2-5 and 22 under § 103 as unpatentable over
McConnell in view of Livermont, in further view of Durham, in further
view of Hollander, and in further view of Katz. 10
III. Claims 12 and 20 under § 103 as unpatentable over McConnell
in view of Livermont, and in further view of Katz.
IV. Claim 14 under § 103 as unpatentable over McConnell in view
of Livermont, further view of Katz, and in further view of Hollander.
2 In the Answer, the rejection of claims 7 and 8 under 35 U.S.C. § 112 (a) as
failing to provide sufficient written descriptive support for a "Torque-
Limiting Dial" is withdrawn. See Ans. 2.
3 We note that Examiner interprets the claims under 35 U.S.C. § 112 (f) and
determines that "claim elements that do not use the word 'means' (or 'step
for') are presumed not to invoke 35 U.S.C. 112(±) except as otherwise
indicated in an Office action." Final Office Action mailed Sept. 13, 2017
("Final Act.") 3. Examiner, however, does not articulate which claims are
being interpreted under the provisions of 35 U.S.C. § 112 (f).
4 In the Answer, the rejection of claim 7 under 35 U.S.C. § 103 is
withdrawn. See Ans. 3.
5 The omission of claim 11 in the header of the rejection appears to be an
inadvertent error by Examiner because the limitations of claim 11 are
discussed in the body of the rejection. Compare Final Act. 4, with Final Act.
11-12.
6 McConnell, US 1,327, issued Sept. 20, 1839.
7 Livermont, US 2,503,499, issued April 11, 1950.
8 Durham, US 165,808, issued July 20, 1875.
9 Hollander, US 6,162,053, issued Dec. 19, 2000.
1° Katz, US 2011/0256502 Al, published Oct. 20, 2011.
3
Appeal2018-009197
Application 15/030,846
I. and II
Hollander
Obviousness over McConnell, Livermont, Durham, and
Appellant contends that the references as combined by Examiner does
not teach the claimed invention as a whole, and, therefore, has not
established a prima facie case of obviousness. See Appeal Br. 8. 11
Examiner finds that McConnell teaches a dental extraction apparatus
(Final Act. 4 ), but acknowledges that McConnell does not disclose a torque
controller, or a shaft that is separate and coupled to the torque controller (id.
at 5). Examiner relies on Livermont to teach a torque controller and separate
shaft. Id. at 7. Examiner looks to Hollander's teaching of a dental wrench
that "limit[ s] the torque applied to the tooth at different selectable torque
limits indicated by indicia 52 provided near the center of cylindrical segment
20." Id. at 10.
"In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant." In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993) (citation omitted). The dispositive issue on appeal with respect to
rejections I. and II. is whether the preponderance of evidence of record
supports Examiner's conclusion that the combination of McConnell,
Livermont, Durham, and Hollander, renders the limitation of a "torque
controller ... at different selectable torque limit[ ations ]" obvious.
11 All references to the Appeal Brief are to the corrected Appeal Brief
submitted May 3, 2018 ("Appeal Br.").
4
Appeal2018-009197
Application 15/030,846
McConnell teaches a tooth extractor containing a hook. Fig. 1,
reproduced below shows McConnell's tooth extractor:
Figure 1 shows a tooth extractor containing a shaft (a) affixed to the handle
( b ), and the shaft contains a groove for receiving a lever ( c) used to affix the
hook to the shaft. See McConnell I :35--46; Final Act. 6. "The hook, or
claw,!, has a notch in it to receive the end of the lever, or latch, c . ... "
McConnell 1 :44--46. Examiner acknowledges that "McConnell does not
disclose ... a torque controller." Final Act. 5; Ans. 5.
Livermont teaches a torque wrench having a predetermined torque.
Fig. 1, reproduced below, shows the torque wrench:
; i
6~
lfU
5
Appeal2018-009197
Application 15/030,846
Fig. 1 shows a handle and a shaft. Livennont explains that the torque
is determined by spring 17 inside the handle.
In order to determine the frictional resistance of the shank [ ( a.k.a.
shaft)] 4, to rotation within the branch 2 so that the friction
developed will be necessarily constant, I have provided means
within the crosshead 3 for resisting the transverse thrust imposed
against the head 14 by the force of the spring 17 acting through
the block 16.
Livermont 3:8-14; Final Act. 8.
Hollander teaches that the use of an adjustable torque wrench
eliminates the necessity "for a dentist to purchase a different wrench for
each different torque level that may be applicable to a given procedure or
given type or brand of a component used within an implant system."
Hollander 4:66-5:2. "These indicia [of Hollander] reflect values of torque
used in implant dentistry which represents a safe or acceptable limits of
torque which can be safely applied to a work object within the mouth of a
patient, e.g., a dental implant, abutment, or screw associated with the same."
Id. 4:57---61.
As stated in KSR, an invention
composed of several elements is not proved obvious merely by
demonstrating that each of its elements was, independently,
known in the prior art. Although common sense directs one to
look with care at a patent application that claims as innovation
the combination of two known devices according to their
established functions, it can be important to identify a reason that
would have prompted a person of ordinary skill in the relevant
field to combine the elements in the way the claimed new
invention does.
KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Here, we agree with the Examiner's findings that the references teach
the individual limitations. See Final Act. 4--15. What is missing from the
6
Appeal2018-009197
Application 15/030,846
rejection, however, is a reason to combine the references in such a way that
one of ordinary skill would arrive at the invention as claimed. For example,
Examiner concludes:
It would have been obvious to one having ordinary skill in the art
before the effective filing date of the claimed invention to modify
the McConnell's dental extraction apparatus, to the Livermont's
torque controller, in order to set up a predetermined torque that
can consistency [sic] of the torque requirement in an order to
cause the clutch means to release upon reaching the setting
thereof required as the limit.
Final Act. 7-8. Here, Examiner's rationale provides an explanation of how a
torque wrench works but does not explain why one of ordinary skill would
want to have a dental extraction tool with predetermined torque in the first
place. In other words, Examiner has not explained why one of ordinary skill
would want to limit the force applied to a tooth during an extraction
procedure.
A rejection for obviousness must include "articulated reasoning with
some rational underpinning to support the legal conclusion." KSR, 550 U.S.
at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). An
"obviousness findings grounded in 'common sense' must contain explicit
and clear reasoning providing some rational underpinning why common
sense compels a finding of obviousness." Plantronics, Inc. v Aliph, Inc., 724
F.3d 1343, 1354 (Fed. Cir. 2013) (brackets and citation omitted). Because
Examiner has not provided an articulated reason or explanation why one of
ordinary skill in the art would have wanted to add a torque controller to
McConnell's dental extraction tool in the first place, we find that Examiner
has not established a prima facie case of obviousness, and we are
7
Appeal2018-009197
Application 15/030,846
constrained to reverse each rejection that relies on the combination of
McConnell, Livermont, Durham, and Hollander.
III. and IV. Obviousness over McConnell, Livermont, and Katz
Appellant contends the combination of references does not suggest the
"the dial ( or torque indicator) and the force-absorbing component including
a bumper and/or its use in connection with a pivot point." Appeal Br. 12.
We find that Appellant has the better position. Although Examiner
has directed our attention to each individual limitation in the references,
Examiner has not provided a sufficient reason to modify the references to
arrive at the claimed invention. Because Examiner has not provided an
articulated reason or explanation why one of ordinary skill in the art would
have wanted to add a torque controller to McConnell's dental extraction tool
in the first place, we find that Examiner has not established a prima facie
case of obviousness and we are, therefore, constrained to reverse each
rejection that relies on the combination of McConnell, Livermont, and Katz.
SUMMARY
We reverse the rejection of all claims.
REVERSED
8