James Feine

Patent Trials and Appeals Board

Mar 22, 2022

2021004341 (P.T.A.B. Mar. 22, 2022)

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. 15/164,678 05/25/2016 James Feine USI-Merlin 2808 23508 7590 03/22/2022 LUNDEEN & LUNDEEN, PLLC 360 Alder St. Leadville, CO 80461 EXAMINER FOLGMANN, DREW S ART UNIT PAPER NUMBER 3772 NOTIFICATION DATE DELIVERY MODE 03/22/2022 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): dan@lpats.com ekonokat@aol.com marcee@lpats.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAMES FEINE Appeal 2021-004341 Application 15/164,678 Technology Center 3700 Before DANIEL S. SONG, STEFAN STAICOVICI, and LISA M. GUIJT, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 8, 9, 11-14, 25, and 262 under 35 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Ultrasonic Services, Inc. Appeal Br. 2. 2 The pre-brief conference panel withdrew all art rejections and upheld all indefiniteness rejections. See Pre-Brief Conference Panel Decision (dated Nov. 10, 2020); see also Adv. Act. (dated Dec. 28, 2020) (indicating that claims 8, 9, 11-14, 25, and 26 stand rejected, claims 1, 3-7, and 10 have been allowed, and claims 15, 17, 19-21, 23, and 24 have been withdrawn); Appeal Br. 2. Appeal 2021-004341 Application 15/164,678 2 U.S.C. § 112(b) as being indefinite. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. CLAIMED SUBJECT MATTER The claims are directed to “Universal Piezo-Magneto Ultrasonic Systems and Methods.” Spec., Title. Claims 1 (allowed) and 11, reproduced below, are the independent claims and are also illustrative of the claimed subject matter. 1. An ultrasonic dental scaling system, comprising: an ultrasonic comprising a power scaler handpiece and a tip, wherein the ultrasonic device is selected from a piezoelectric ultrasonic device operable on capacitance and a magnetostrictive ultrasonic device operable on inductance; a device cable connecting the ultrasonic device to a signal conditioner of a universal ultrasonic generator unit; the signal conditioner comprising a piezoelectric mode circuit to drive the piezoelectric ultrasonic device when connected to the universal ultrasonic generator and further comprising a magnetostrictive mode circuit to drive the magnetostrictive ultrasonic device when connected to the universal ultrasonic generator; the signal conditioner further comprising a switch to selectively activate the piezoelectric mode circuit and de- activated the magnetostrictive mode circuit when the piezoelectric ultrasonic device is connected, and activate the magnetostrictive mode circuit and de-activate the piezoelectric mode circuit when the magnetostrictive ultrasonic device is connected; and a signal generation circuit to send an interrogation signal to the connected ultrasonic device and detect a response; wherein the switch comprises a relay switch to automatically activate the piezoelectric or magnetostrictive mode circuit and de-active the other of the magnetostrictive or Appeal 2021-004341 Application 15/164,678 3 piezoelectric mode circuit base on the response of the connected ultrasonic device to the interrogation signal. 11. An assembly line system for assembling ultrasonic dental scaling unit, comprising: an inventory of ultrasonic devices comprising piezoelectric power scalers operable by capacitance and magnetostrictive power scalers operable by induction; an inventory of device cables adapted to connect the ultrasonic devices to a respective universal ultrasonic generator unit; an inventory of the universal ultrasonic generator units, wherein each ultrasonic generator unit comprises: a signal conditioner comprising a piezoelectric mode circuit to drive one of the piezoelectric ultrasonic devices and further comprising a magnetostrictive mode circuit to drive one of the magmetostrictive ultrasonic devices; the signal conditioner further comprising a switch to selectively activate the piezoelectric mode circuit and de-activate the magnetostrictive mode circuit when one of the piezoelectric power scalers is connected, or activate the magnetostrictive mode circuit and de-activate the piezoelectric mode circuit when one of the magnetostrictive power scalers is connected; and a signal generation circuit to send an interrogation signal to the connected ultrasonic device and detect a response; wherein the switch comprises a relay switch to automatically activate the piezoelectric or magnetostrictive mode circuit and de-activate the other of the magentostrictive or piezo electric mode circuit based on the response of the connected ultrasonic device to the interrogation signal; and an assembly line workstation to assemble together a respective one or more of the device cables from the device cable inventory, a respective one or more of the power scalers from the ultrasonic device inventory, and a respective one of the universal ultrasonic generator units from the universal Appeal 2021-004341 Application 15/164,678 4 ultrasonic generator inventory to form assembled ultrasonic dental scaling units. OPINION A claim is properly rejected as indefinite if, after applying the broadest reasonable interpretation in light of the specification, the metes and bounds of a claim are not clear because the claim contains words or phrases whose meaning is unclear. In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014) (per curiam); see also Ex parte McAward, Appeal No. 2015-006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential) (adopting the approach for assessing indefiniteness approved by the Federal Circuit in Packard). It is well settled that the breadth of a claim is not to be equated with indefiniteness. See In re Miller, 441 F.2d 689 (CCPA 1971). Further, during examination of a patent application, pending claims are given their broadest reasonable construction consistent with the specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under the broadest reasonable interpretation standard, claim terms are given their ordinary and customary meaning as would be understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Claim 8: “the power level control [(“PLC”)]3 footswitch, if present” Claim 8 depends from claim 7, which in turn depends from independent claim 1. Claim 7 requires “a footswitch selected from the group 3 Appellant uses the acronym “PLC” for “power level control,” and we will do the same. See, e.g., Appeal Br. 5 (“a power level control (‘PLC’)”). Appeal 2021-004341 Application 15/164,678 5 consisting of an on/off footswitch and a [PLC] footswitch.” Appeal Br. 21 (Claims App.). Claim 8 recites: wherein the [PLC] footswitch, if present, comprises a potentiometer; wherein the signal conditioner comprises a footswitch detection circuit to determine whether the connected footswitch is the [PLC] footswitch by sensing for the potentiometer; and an automatic switch to automatically switch to the [PLC] footswitch for power level input to the drive signal conditioner when the potentiometer is detected, and to automatically switch to a front panel [PLC] for the power level input to the drive signal condition when the potentiometer is not detected. Id. The Examiner finds that “[i]t is unclear what is required when the [PLC] footswitch is optionally not selected based upon the dependency of claim 7.” Final Act. 2; see also Ans. 4. Appellant submits that [c]laim 8 affirmatively recites that the PLC footswitch is automatically switched to for a power level input to the drive signal conditioner when the potentiometer is detected, and when the potentiometer is not detected a front panel power level controller is automatically switched to for the power level input to the drive signal conditioner. Thus when the PLC footswitch is not selected and is not present, the power level input comes from the front panel. Appeal Br. 13; see also Reply Br. 3. The Specification makes clear that, in the context of the invention, an on/off footswitch does not have a potentiometer, while a PLC footswitch does: “The [invented] method can also include sensing for a potentiometer in the connected footswitch to determine if the footswitch is the on/off Appeal 2021-004341 Application 15/164,678 6 footswitch (no potentiometer) or the power level control footswitch (potentiometer).” Spec. ¶ 55. See also id. ¶¶ 3, 42. The Specification further describes the “two types of footswitches” as “on-off, wherein the system generator is equipped with . . . a potentiometer” and “[PLC] . . . , wherein the footswitch operates a potentiometer” (id. ¶ 3 (emphasis added)), and that “[t]he potentiometer is seen in the [PLC] footswitch . . . ; but when the footswitch is of the on/off type, the power level can be input via a control on the generator unit, e.g., a knob or digital input” (id. ¶ 49 (emphasis added)). Claim 7 is written in Markush format which means that claim 7 is limited to the selection of either an on/off or a PLC footswitch (i.e., a closed group of alternatives). Claim 8 specifies that the PLC footswitch includes a potentiometer, and although claim 8 does not expressly state that the on/off footswitch does not include a potentiometer, claim 8 recites that a footswitch detection circuit determines whether the footswitch selected pursuant to claim 7 is a PLC footswitch “by sensing for the potentiometer”-implying that a failure to detect a potentiometer means that the on/off footswitch must have been selected pursuant to claim 7. Claim 8 further requires that when the potentiometer is not detected (i.e., meaning the on/off footswitch must have been selected), the automatic switch automatically switches to a front panel PLC. Thus, we find the metes and bounds of claim 8, including the recitations of claim 7, to be clear. Accordingly, we do not sustain the Examiner’s rejection of claim 8 as indefinite. Appeal 2021-004341 Application 15/164,678 7 Claim 9: “passive activation plug” Claim 9 depends from independent claim 1 and recites, in relevant part, a footswitch cable connecting the selected footswitch to the universal ultrasonic generation unit, wherein the footswitch cable comprises a passive activation plug corresponding to the connected on/off or [PLC] footswitch, wherein the passive activation plug corresponding to the on/off footswitch activates a power level controller in the ultrasonic generator unit when the on/off footswitch is connected, and wherein the passive activation plug corresponding to the [PLC] footswitch activates a power level controller in the footswitch when the [PLC] control footswitch is connected. Appeal Br. 22 (Claims App.) (emphasis added). The Examiner finds that “[i]t is unclear what structure is required by the limitation of a ‘passive activation plug,’” notwithstanding the definition provided in Appellant’s Specification. Final Act. 2. In particular, the Examiner finds that it is unclear “what structure is required which allows an activation plug to be passive according to the definition provided of passive.” Ans. 4. Appellant argues that the Specification defines and provides examples and an explanation of “passive activation,” wherein “the socket structure of the passive activation is made clear by the functionality that must be achieved.” Appeal Br. 16 (citing Spec. ¶ 3 (“context”), ¶ 35 (“definition”), ¶ 66 (“examples”), ¶ 71 and Fig. 2A (“functionality”)); see also Reply Br. 3 (“a plug has a socket structure ‘where certain sockets may be designated for a piezo device 24A and not used in a magneto device, and vice versa, other sockets may be designated for a magnetostrictive device 24B’” (citing Spec. ¶ 71)). In particular, Appellant submits that “passive switching technology” Appeal 2021-004341 Application 15/164,678 8 is embodied in plugs 20, 22, wherein “the corresponding passive activation plug connecting [either an on/off or PLC] footswitch uses the sockets designated to activate [either] the power level controller in the ultrasonic generator unit [or] the power level controller in the footswitch [respectively].” Appeal Br. 16; see also Reply Br. 3 (arguing “a plug has a socket structure ‘where certain sockets may be designated for a piezo device 24A and not used in a magneto device, and vice versa, other sockets may be designated for a magnetostrictive device 24B” (citing Spec. ¶ 71)). The Specification states: “As used herein, ‘active’ refers to a device or process using functional components that change state internally in response to a stimulus, as opposed to a ‘passive’ device or process in which a function is activated, altered, or deactivated by manipulation of fixed components.” Spec. ¶ 35. The Specification discloses that “the footswitch cable connect[s] the footswitch to the universal ultrasonic generation unit, wherein the footswitch cable comprises a passive activation plug corresponding to the connected on/off or [PLC] footswitch.” Id. ¶ 50. Figure 3B of the Specification is reproduced below. Appeal 2021-004341 Application 15/164,678 9 Figure 3B of the Specification depicts “the footswitch cable according to embodiments of the instant disclosure” (id. ¶ 19), wherein “insulated electrical connectors 52 [are] within a sheath 54, as is well known in the art” (id ¶ 66). The Specification also discloses, with reference to Figure 2B, that “footswitch cable 38 . . . can preferably be a universal cable to connect to both on/off and [PLC] footswitches, or the cable 38 can employ passive footswitch type selection functionality as disclosed in Figures 6A and 6B of U.S. 6,976,8434 (“Feine”), which is hereby incorporated by reference in its entirety.” Id. ¶ 66 (emphasis added). Thus, the Specification indicates that there exists a universal cable for connecting both types of footswitches, as compared to a passive footswitch type selection functionality. We find that claim 9 recites passive footswitch type selection functionality, as claim 9 specifies that the passive activation plug of the footswitch cable “correspond[s] to the connected on/off or [PLC] footswitch,” but not both. Further, Feine, which is incorporated by reference into Appellant’s Specification, discloses generally, that “footswitch connector 42 is a seven- pin connector that engages to the dental generator unit 50,” wherein “[o]ne pin is dedicated as a ground pin” and “[t]he other pins couple to circuitry of the dental generator unit 50 to activate the circuitry and operate the dental scaling function.” Feine 6:18-22. Feine discloses separate footswitch connectors 42a and 42b depending on the type of footswitch selected: FIGS. 6A and 6B depict the on/off and [PLC] footswitches, respectively, to be connected to the dental generator unit 50, according to one embodiment. In FIG. 6A 4 US 6,976,843 B2, issued Dec. 20, 2005. Appeal 2021-004341 Application 15/164,678 10 the on/off footswitch connector 42a and the on/off footswitch 44a connect to the dental generation unit 50 at seven pins (62, 64, 66, 68, 70, 72, and 92). . . . In FIG. 6B, a [PLC] footswitch connector 42b and a [PLC] footswitch 44b connect to the dental generation unit 50, at the seven pins (62, 64, 66, 68, 70, 72, and 92). As compared to the on/off footswitch connector 42a, the [PLC] footswitch connector 42b produces different results. Feine 6:29-34, 53-58. Feine further discloses: Like the . . . footswitch circuitry, the programmable lock controller 82 can include passive elements, such as resistors, capacitors, inductors, connecting wires, and so on, in one embodiment. When coupled to the dental generator unit 50, these passive elements change the operation of the underlying circuitry. These passive elements become part of the circuitry much as the passive elements in the . . . footswitch circuitry became part of the unit (see FIGS. . . . 6A-6B). Feine 7:55-63). Thus, in view of Appellant’s Specification, we construe the claim term “passive activation plug” to be a plug of the footswitch cable, which is “passive” in the sense that the plug employs passive elements, such resistors, capacitors, inductors, connecting wires, and so on, that become part of the circuitry of the on/off or PLC footswitch for which the plug is designed to “activate” a power level controller in the ultrasonic generator unit or in the PLC footswitch, respectively, when the corresponding footswitch is connected to the universal ultrasonic generation unit via the footswitch cable. Notably, we construe claim 9’s recitation of a passive activation plug as Appeal 2021-004341 Application 15/164,678 11 corresponding to the either the connected on/off or PLC footswitch, but not as a single universal plug that correspond to both. Accordingly, we do not sustain the Examiner’s rejection of claim 9 as indefinite based on the recitation of a “passive activation plug.” The Examiner also finds that “[i]t is unclear how the foot switch can be optionally between two types of footswitches but also further require ‘the passive activation plug corresponding to the on/off footswitch activates a power level controller in the ultrasonic generator unit.’” Final Act. 2. To the extent the Examiner is finding that claim 9 is indefinite for reciting activation of a power level controller located in different components depending on the connection of two distinct footswitches, when only one footswitch is selected at a time, we disagree. In fact, we find that claim 9’s reference to “the selected footswitch” makes clear that a matching footswitch cable is available as part of the claimed system, according to the functional descriptions in the claim. The Examiner further finds that it is unclear what is encompassed by “wherein the passive activation plug corresponding to the on/off footswitch activates a power level controller in the ultrasonic generator unit when the on/off footswitch is connected, and wherein the passive activation plug corresponding to the power level control footswitch activates a power level controller in the footswitch is connected.” Final Act. 2-3. We find that this claim limitation clearly sets forth the metes and bounds of the functions of the passive activation plug for the respective footswitch cables, as discussed supra. Appeal 2021-004341 Application 15/164,678 12 Accordingly, we do not sustain the Examiner’s rejection of claim 9 as indefinite. Claims 11, 14, and 25: “inventory” Claim 11 recites “[a]n assembly line system . . . comprising, . . . an inventory of ultrasonic devices, . . . an inventory of device cables, and . . . an inventory of universal ultrasonic generator units.” Appeal Br. 22-23 (Claims App.). Similarly, claim 14, which depends from claim 11, further requires “an inventory of footswitches,” and claim 25, which depends from claim 1 further requires “an inventory of the ultrasonic devices.” Id. at 23, 26 (Claims App.). The Examiner finds that “it is unclear what structure the limitation of an ‘inventory’ imparts on the ‘dental scaling units.’” Final Act. 3. In particular, the Examiner finds that “[the] use of ‘inventory’ . . . is unclear . . . because an inventory can be an inventory of zero or a plurality or just one” and “[i]t is unclear if ‘inventory’ requires just the one of the current assembly,” as “excess parts could be out of stock.” Ans. 4. Appellant submits that “inventory” means “a quantity of physical goods or materials on hand, or stock, e.g., ready for re-sale.” Appeal Br. 17 (citing https://www.shopify.com/encyclopedia/inventory); Reply Br. 3-4. Appellant also refers to Figures 1 and 5 of the Specification as illustrating “inventories I-1, I-2, I-3, I-4, I-5, and I-6” as “stock on hand.” Appeal Br. 17; see also Spec. ¶¶ 83-91, Figs. 1, 5. We accept Appellant’s definition of the claim term “inventory,” as the ordinary and customary meaning of the claim term, and as would be understood by one of ordinary skill in the art in the context of the entire disclosure. Such a construction of the term “inventory” is consistent with Appeal 2021-004341 Application 15/164,678 13 Appellant’s Specification which describes “selecting . . . from an inventory.” Spec. ¶ 14. Thus, we find that claims 11, 14, and 25 are not indefinite, in that the claims require a physical quantity of each of ultrasonic devices, device cables, and universal ultrasonic generator units as being included in ultrasonic dental scaling system of claim 1 or in the assembly line system of claim 11. The Examiner also finds, regarding the limitation in claim 11 of “assembly line workstation,” that “[i]t is unclear what structure is encompassed.” Final Act. 3. In particular, the Examiner finds that “[i]t is unclear what is required of the assembly line workstation in the scope of the claim which is an assembly line system for assembly ultrasonic dental scaling units,” because the Specification states that “[a]n assembly line is a manufacturing process,” yet claim 11 is “not a method of manufacture.” Ans. 5. Appellant submits that, according to a dictionary definition, a “workstation” means “an area where work of a particular nature is carried out, such as a specific location on a manufacturing line.’” Appeal Br. 18; see also Reply Br. 4 (“a workstation” means a station “where all of the specified parts are assembled together”). We accept Appellant’s definition of a workstation and interpret the claimed “assembly line workstation” to be an area where the device cables, power scalers, and universal generator units are worked upon and assembled to form assembled ultrasonic dental scaling units, as expressly recited in claim 11. Such a construction is consistent with Appellant’s Specification which defines the term “station” as “a place or space where any machines Appeal 2021-004341 Application 15/164,678 14 and/or other equipment are located for a specified activity or service.” Spec. ¶ 46. Accordingly, we do not sustain the Examiner’s rejection of claims 11, 14, and 25, and claims 12, 13, and 26 depending therefrom. CONCLUSION The Examiner’s rejections are reversed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 8, 9, 11-14, 25, 26 112(b) Indefiniteness 8, 9, 11-14, 25, 26 REVERSED