Ex Parte Wagner et al

Patent Trial and Appeal Board

Jul 30, 2013

11784720 (P.T.A.B. Jul. 30, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/784,720 04/09/2007 Ray A. Wagner 6014.127US 7695
60717 7590 07/31/2013
LAWRENCE R. OREMLAND, P.C.
5055 E. BROADWAY BLVD.
SUITE C-214
TUCSON, AZ 85711
EXAMINER
NELSON, MATTHEW M
ART UNIT PAPER NUMBER
3776
MAIL DATE DELIVERY MODE
07/31/2013 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 RAY A. WAGNER and ELIZABETH P. NOBLE
____________

Appeal 2011-007631
Application 11/784,720
Technology Center 3700
____________

Before CHARLES N. GREENHUT, BARRY L. GROSSMAN, and
BART A. GERSTENBLITH, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-007631
Application 11/784,720

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STATEMENT OF THE CASE
Ray A. Wagner and Elizabeth P. Noble (“Appellants”) appeal under
35 U.S.C. § 134 from the Examiner’s decision rejecting claims 10 and 11.
We have jurisdiction under 35 U.S.C. § 6(b).
The Claimed Subject Matter
Claims 10 and 11 are independent. Claim 10 is illustrative of the
claimed subject matter and is reproduced below.
10. A method of applying a dental cleansing solution
to an applicator designed to be inserted into an oral cavity of a
human patient, comprising
(a) providing a solution that is fluoride free, includes a
plaque inhibitor, has a viscosity that promotes wicking when
applied to a portion of an applicator that is configured to
contact the teeth of a human patient, is palatable to children
under the age of 2, and further characterized in that it does not
foam when applied onto the teeth of a human patient by contact
between the portion of the applicator and the teeth of the human
patient, and
(b) applying the solution to the portion of an applicator
that is designed to be inserted into an oral cavity of a human
patient and to contact the teeth of the human patient to apply the
solution to the teeth of the human patient:
(c) wherein the applicator is a child tooth brush designed
to be inserted into the oral cavity of a child under the age of 2,
and wherein the step of applying the solution to the portion of
an applicator comprises pouring or dropping the solution into a
receptacle and submerging the portion of the applicator in the
solution in the receptacle.
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Reference
The Examiner relies upon the following prior art reference:
Kamen US 6,375,459 B1 Apr. 23, 2002
Rejection
The Examiner makes the following rejection:
I. Claims 10 and 11are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kamen.
SUMMARY OF DECISION
We REVERSE.
OPINION
The Examiner concluded that the subject matter of claims 10 and 11
would have been obvious to one of ordinary skill in the art at the time of
invention based on Kamen. Ans. 3-4. The Examiner found that Kamen
discloses each element of the claims except
wherein the object is a child tooth brush designed to be inserted
into the oral cavity of a child under the age of 2 and the solution
is applied onto the portion of the applicator by pouring or
dropping the solution into a receptacle and submerging the
portion of the applicator into the solution in the receptacle or by
pouring or dropping the solution from the container onto the
portion of the applicator.
Id. at 4. The Examiner determined that it would have been obvious to one of
ordinary skill in the art at the time of invention “to modify Kamen by
reducing the size of the brush for a child since it has been held that
limitations relating to the size of a device are not sufficient to patentably
distinguish over the prior art.” Id. (citing Manual of Patent Examining
Appeal 2011-007631
Application 11/784,720

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Procedure (MPEP) § 2144.04(IV)(A) (8th Ed., Rev. 9, Aug. 2012)). The
Examiner further determined that it would have been
an obvious matter of design choice to one of skill in the art at
the time of invention to have applied the solution onto the
portion of the applicator by pouring or dropping the solution
into a receptacle and submerging the portion of the applicator
into the solution in the receptacle or by pouring or dropping the
solution from the container onto the portion of the applicator as
these are well known methods of applying cleaning solution to
an applicator in the art.
Id.
Appellants raise several arguments in response to the rejection,
including that it would not have been an obvious to modify Kamen as
proposed by the Examiner because Kamen “applies a solution . . . to a
person’s teeth by a special applicator that propels a high pressure jet of the
. . . solution against the teeth.” App. Br. 21. Thus, modifying Kamen to
meet the elements of claims 10 and 11, specifically to apply the solution to a
portion of an applicator by pouring or dropping the solution from the
container onto the applicator or pouring or dropping the solution from the
container onto the applicator and allowing the solution to wick into the
applicator would give up the essential feature (high pressure pump-driven
propelling of the solution directly against the teeth) that is the essence of
Kamen’s disclosure. Id.; see also Reply Br. 2-3; Kamen, col. 2, ll. 39-56.
We agree with Appellants that one of ordinary skill in the art would
not have found it an obvious matter of design choice to apply the solution of
Kamen onto the applicator of Kamen by pouring or dropping the solution
into a receptacle and submerging the applicator into the solution in the
receptacle or by pouring or dropping the solution from the container onto the
applicator. Kamen discloses an apparatus designed to clean surfaces and to
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Application 11/784,720

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recycle a cleaning fluid. Kamen, Abstr. Kamen’s apparatus includes a
reservoir 50 and a pump 30 that impels a cleaning solution out of the
reservoir and then draws the solution back into the reservoir to recycle the
solution. See, e.g., Kamen, col. 2. ll. 3-8, ll. 35-38. While Kamen discloses
that the apparatus “may be lined with brush bristles 12,” Kamen does not
disclose that the bristles are used for cleaning. See id., col. 2, ll. 42-44.
Rather, Kamen discloses that a pressure sensor may be included in the exit
nozzle to activate the apparatus when the exit nozzle or the bristles contact a
surface. Id. at col. 2, ll. 59-62. The method of cleaning a surface in an oral
cavity disclosed by Kamen includes “both impelling solution to a vicinity of
a tooth surface, and holding an exit nozzle 22 to urge the recycling of that
solution.” Id. at col. 4, ll. 55-60.
In light of the above, the Examiner has not sufficiently explained how
modifying Kamen to apply the cleaning solution to the bristles rather than
Kamen’s method of impelling the solution to a tooth surface would have
maintained Kamen’s intended purpose. See DePuy Spine, Inc. v. Medtronic
Sofamor Danek, Inc., 567 F.3d 1314, 1326 (Fed. Cir. 2009) (noting that the
“predictable result” discussed in KSR also means “that the combination
would have worked for its intended purpose”); see also Tec Air, Inc. v.
Denso Mfg. Michigan, Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999); In re
Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984).
Nor do we find the Examiner’s response to Appellants’ arguments
persuasive. First, the Examiner’s reliance upon U.S. Patent App. No.
2005/0250076 (see Ans. 5) as disclosing an allegedly common application
method for applying a solution to an applicator is inapposite as the rejection
is based solely on Kamen. “Where a reference is relied on to support a
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rejection, whether or not in a ‘minor capacity,’ there would appear to be no
excuse for not positively including the reference in the statement of the
rejection.” In re Hoch, 428 F.2d 1341, 1342 n.3 (CCPA 1970). Second, the
examples provided by the Examiner (see Ans. 5), asserting that “Kamen
would be capable of meeting these limitations in regular use, do not
persuade us of the Examiner’s position. The Examiner’s comment appears
to contradict the thrust of the Examiner’s rejection expressly finding that
Kamen does not disclose the elements of claims 10 and 11 discussed above.
This Board is free to affirm an examiner’s rejection so long as “appellants
have had a fair opportunity to react to the thrust of the rejection.” In re
Kronig, 539 F.2d 1300, 1302-03 (CCPA 1976). Even considering the
examples provided, we do not find that they disclose the claim elements the
Examiner previously identified as missing from Kamen.
Accordingly, based on the balance of the evidence in the record before
us, the Examiner has not established that claims 10 and 11 would have been
obvious to one of ordinary skill in the art at the time of invention.
DECISION
We REVERSE the Examiner’s decision rejecting claims 10 and 11.

REVERSED

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