Ex Parte VOIC

Patent Trial and Appeal Board

Jun 19, 2018

14038463 (P.T.A.B. Jun. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/038,463 09/26/2013
28156 7590 06/19/2018
Cosud Intellectual Property Solutions, P.C.
714 COLORADO AVENUE
BRIDGEPORT, CT 06605-1601
FIRST NAMED INVENTOR
Dan VOIC
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.
M24-202 2774
EXAMINER
EASTWOOD, DAVID C
ART UNIT PAPER NUMBER
3731
MAIL DATE DELIVERY MODE
06/19/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAN VOIC
(APPLICANT: MISONIX INCORPORATED)
Appeal2017-007083
Application 14/03 8,463 1
Technology Center 3700
Before DONALD E. ADAMS, ULRIKE W. JENKS, and RYAN H. FLAX,
Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL
This Appeal under 35 U.S.C. § 134(a) involves claims 1-7, 10-13,
and 15-19 (App. Br. 2). 2 Examiner entered a rejection under 35 U.S.C.
§ 103(a). We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellant identifies "Misonix Incorporated" as the real party in interest
(App. Br. 1 ).
2 Appellant canceled "claim 14 ... in the Amendment filed with the Notice
of Appeal" (App. Br. 2; see also Ans. 2).
Appeal2017-007083
Application 14/038,463
STATEMENT OF THE CASE
Appellant's disclosure "relates to an ultrasonic tool or instrument
particularly, but not exclusively, for use in medical surgical procedures" and
"to an associated process using the ultrasonic instrument or tool" (App. Br.
3-5). Independent claims 1 and 12 are representative and reproduced below:
1. An ultrasonic medical instrument comprising:
a probe shaft having a connector at a proximal end and a
head at a distal end, the connector being configured for
operative attachment to a source of ultrasonic mechanical
vibratory energy, the head having an operative surface
configured for engagement with organic tissues of a patient,
said probe shaft, said connector, and said head being made of a
rigid first material; and
at least one end-of-life indicator element affixed to one
of said probe shaft and said head, said indicator element
including a layer of a second material that disintegrates or
degrades with repeated use of the instrument, said indicator
element further including an alphanumeric or graphic symbol
hidden by said layer and revealed upon a disintegration or
degrading of said layer upon repeated use of the instrument.
(App. Br. 9 (emphasis added).)
12. An ultrasonic medical instrument comprising:
a probe shaft having a connector at a proximal end and a
head at a distal end, the connector being configured for
operative attachment to a source of ultrasonic mechanical
vibratory energy, the head having an operative surface
configured for engagement with organic tissues of a patient,
said probe shaft, said connector, and said head being made of a
rigid first material; and
a plurality of separate end-of-life indicator elements
affixed to one of said probe shaft and said head, said indicator
elements each including a layer of a second material that
disintegrates or degrades with repeated use of the instrument,
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Application 14/038,463
said indicator elements configured to provide visual indicators
after different degrees of accumulated use.
(Id. at 11-12 (emphasis added).)
The claims stand rejected as follows:
Claims 1-7, 10-13, and 15-19 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over the combination ofNovak, 3 Harris, 4 and
Heinen. 5
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Examiner finds:
Novak discloses [Appellant's] invention essentially as
claimed except for at least one end-of-life indicator element
affixed to one of said probe shaft and said head, said indicator
element including a layer of a second material that disintegrates
or degrades with repeated use of the instrument and said
indicator element further including an alphanumeric or graphic
symbol hidden by said layer and revealed upon a disintegration
or degrading of said layer upon repeated use of the instrument
and relies on Harris and Heinen to make up for the foregoing deficiencies in
Novak (Final Act. 6 3--4).
FF 2. Harris "relates to a use indicator for a device and, more particularly,
to a use indicator coupled to a device to signal a predetermined amount of
3 Novak et al., US 8,025,672 B2, issued Sept. 27, 2011.
4 Harris et al., US 6,314,907 Bl, issued Nov. 13, 2001.
5 Heinen, US 2005/0081971 Al, published Apr. 21, 2005.
6 Office Action mailed February 24, 2016.
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Application 14/038,463
use of the device as measured in the amount of vibration experienced by the
device" (Harris 1: 4--8).
FF 3. Harris' Figure 2 is reproduced below:
20
22
Hg.2
Harris' "FIG. 2 is an exploded view of the device use indicator" (Harris 2:
42 ( emphasis omitted)).
FF 4. Harris discloses:
[T]he use indicator 16 includes a chemical retaining disk 18
retaining a chemical therein, a chemical receiving disk 20, and
an intermediate layer 22 for separating the two disks 18, 20. In
the embodiment shown, the intermediate layer 22 takes the
form of an annular spacer interposed between the chemical
retaining disk 18 and the chemical receiving disk 20. The
annular spacer 22 defines a gap 24 between the two disks 18,
20, thus preventing direct contact between the disk 18 and the
disk 20. The chemical retaining disk 18 is adapted to release
the chemical therefrom upon vibration of the device body 12
and the chemical retaining disk 18. The chemical receiving
disk 20 is adapted to receive and retain the chemical released
from the chemical retaining disk 18. The chemical is
transferred from the chemical retaining disk 18 away from the
source of vibration (e.g., a toothbrush body); therefore the
chemical transfers substantially in one direction only along the
direction of the energy gradient, i.e., from the chemical
retaining disk 18 to the chemical receiving disk 20. Thus, it is
preferable to place the chemical receiving disk 20 on the
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Application 14/038,463
exterior surface of the device body 12 relative to the chemical
retaining disk 18.
(Harris 3: 1-22 ( emphasis omitted).)
FF 5. Harris discloses:
[T]he chemical receiving disk 20 may also retain a chemical
that, when combined with the chemical migrating from the
chemical retaining disk 18, interacts with and/or produces a
chemical reaction within the chemical receiving disk 20 that
produces a detectable indication. The interaction and/or
chemical reaction is preferably directly proportional to the
amount of the chemical released from the chemical retaining
disk 18 and received by the chemical receiving disk 20 and,
hence, the amount of vibration of the device 10.
(Harris 4: 11-20 ( emphasis omitted).)
FF 6. Examiner relies on Heinen to disclose "a device having an indicator
element further including an alphanumeric or graphic symbol hidden by a
layer and that is revealed upon a disintegration or degrading of said layer
upon repeated use of the [device]" (Final Act. 3--4 ( citing Heinen ,r 3 6); see
also Ans. 4 (Examiner emphasizes that "the Heinen reference was merely
used to teach an indicator being a symbol such as a stop sign which is
revealed by degradation as per paragraph 36 of the Heinen reference")).
ANALYSIS
Based on the combination of Novak, Harris, and Heinen, Examiner
concludes that, at the time Appellant's invention was made, it would have
been prima facie obvious "to modify the tip or shaft of Novak to include the
end-of-life indicator element, as taught by Harris, in order to provide a
visible signal to an operator when a device has been used for a
predetermined amount of time, and has lost its effectiveness or become
unsanitary, so that the device may be replaced" (Final Act. 3 ( citing Harris 1:
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Appeal2017-007083
Application 14/038,463
30-46)). In this regard, Examiner further concludes that it would have been
obvious to a person of ordinary skill in this art at the time of Appellant's
invention, "to modify the end-of-life indicator element of Novak in view of
Harris to include a graphic symbol, as taught by Heinen, in order to provide
a visible symbol indication to an operator that is still easily interpreted by an
operator, such as an internationally known indicator" (Final Act. 4 ( citing
Heinen ,r,r 36 and 38)). We are not persuaded.
Appellant's end-of-life indicator element comprises both a: (a) layer
of material that disintegrates or degrades with repeated use and (b) hidden
symbol that is revealed upon a disintegration or degradation of the material
layer upon repeated use (see App. Br. 9 and 11-12). Harris discloses a
device that releases a chemical from a chemical retaining disk in response to
vibration (FF 2-5). Even if the release of a chemical from Harris' chemical
retaining disk may be considered to be caused by disintegration or
degradation, a hidden symbol is not revealed on Harris' chemical retaining
disk (see id.; see Reply Br. 2). Furthermore, given the arrangement of
Harris' chemical retaining disk behind Harris' chemical receiving disk, no
symbol would be expected to be observed on Harris' chemical retaining disk
(see FF 2-5; see Reply Br. 2). To the contrary, the chemical released from
Harris' chemical retaining disk "interacts with and/or produces a chemical
reaction within the chemical receiving disk[] [to] produce[] a detectable
indication" (FF 5; see also App. Br. 6 (Harris discloses "a chemical that is
released from an underlayer and changes the color of an upper layer")).
Thus, the detectable indicia of Harris' configuration is on a disk that is
separate and distinct from the disk comprising the material that is released.
Therefore, Harris fails to disclose an indicator element comprising both a:
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Application 14/038,463
(a) layer of material that disintegrates or degrades with repeated use and (b)
hidden symbol that is revealed upon a disintegration or degradation of the
material layer upon repeated use (see Reply Br. 2-3).
Further, although Heinen discloses "a device having an indicator
element further including an alphanumeric or graphic symbol hidden by a
layer and that is revealed upon a disintegration or degrading of said layer
upon repeated use of the [device]" (see FF 6), Examiner failed to explain
how Heinen would make up for the deficiencies in the combination of
Novak and Harris discussed above (see Reply Br. 3 ("Appellant questions
how one of ordinary skill in the art would incorporate the symbol(s) of
Heinen in a combination of Novak and Harris, when the indicator element of
Harris produces a color change in an upper disk that would not inherently or
necessarily reveal anything below the disk")).
Taken as a whole, Examiner has, at best, established each of Novak,
Harris, and Heinen disclose separate limitations of Appellant's claimed
invention.
Obviousness[, however,] requires more than a mere
showing that the prior art includes separate references covering
each separate limitation in a claim under examination. KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398,418, 127 S. Ct. 1727,
167 L.Ed.2d 705 (2007). Rather, obviousness requires the
additional showing that a person of ordinary skill at the time of
the invention would have selected and combined those prior art
elements in the normal course of research and development to
yield the claimed invention. Id. at 421, 127 S. Ct. 1727.
Unigene Laboratories, Inc. v. Apotex, Inc., 655 F.3d 1352, 1360 (Fed. Cir.
2011 ). On this record, Examiner failed to explain how a person of ordinary
skill in this art, without the aid of Appellant's disclosure, would have
combined the disclosures of Novak, Harris, and Heinen to arrive at
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Application 14/038,463
Appellant's claimed invention. See In re Oetiker, 977 F.2d 1443, 1445 (Fed.
Cir. 1992) ("examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability").
CONCLUSION
The preponderance of evidence relied upon by Examiner fails to
support a conclusion of obviousness. The rejection of claims 1-7, 10-13,
and 15-19 under 35 U.S.C. § 103(a) as unpatentable over the combination of
Novak, Harris, and Heinen is reversed.
REVERSED
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