Phillip Goodman

Patent Trials and Appeals Board

Aug 26, 2020

2020000866 (P.T.A.B. Aug. 26, 2020)

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.
15/582,267 04/28/2017 Phillip M. Goodman 254.0010004 1016
38356 7590 08/26/2020
BROOKS, CAMERON & HUEBSCH , PLLC
1201 MARQUETTE AVENUE SOUTH, SUITE 400
MINNEAPOLIS, MN 55403
EXAMINER
APONTE, MIRAYDA ARLENE
ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
08/26/2020 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):
PARALEGAL.DOCKETING@BIPL.NET
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte PHILLIP M. GOODMAN
____________________

Appeal 2020-000866
Application 15/582,267
Technology Center 3700
____________________

Before MURRIEL E. CRAWFORD, DAVID C. McKONE, and
PHILIP J. HOFFMANN, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s rejection of claims 14–20 and 22–33. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
According to Appellant, the invention is directed to “devices for
orthodontic torquing.” Spec. ¶ 2. Claims 14, 23, and 28 are the independent

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Phillip M. Goodman as the real party
in interest. Appeal Br. 3.
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claims on appeal. Below, we reproduce independent claim 14 as illustrative
of the appealed claims.
14. An orthodontic torquing spring device, consisting
of:
a first spring coil portion having active coils;
a second spring coil portion having active coils, wherein
each of the active coils of the first spring coil portion and the
second spring coil portion have a common outer diameter; and
a loop portion extending between the first and second
spring coil portions.
REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows:
I. Claims 14, 15, and 28 under 35 U.S.C. § 102(b) as anticipated
by Sosnay (US 3,975,823, issued Aug. 24, 1976); and
II. Claims 16–20, 22–27, and 29–33 under 35 U.S.C. § 103(a) as
unpatentable over Sosnay.
ANALYSIS
Rejection I—Anticipation rejection of claims 14, 15, and 28
Independent claim 14 and dependent claim 15
As set forth above, independent claim 14 recites, in relevant part,
“[a]n orthodontic torquing spring device, consisting of . . . a first spring coil
portion having active coils[, and] . . . a second spring coil portion having
active coils, wherein each of the active coils of the first spring coil portion
and the second spring coil portion have a common outer diameter.”
Appeal Br., Claims App. (emphasis added).
Initially, we note that claim 14 recites the orthodontic torquing spring
device “consisting of” certain elements. Id. The transitional phrase
“consisting of” excludes any element not specified in the claim. See In re
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Gray, 53 F.2d 520 (CCPA 1931). Thus, as claimed, the first and second
spring coil portions have only active coils of a common outer diameter, and
exclude any active coil or coils having a different outer diameter than any
other coil, and exclude any inactive coil or coils. Appeal Br. 6–8. In the
application as originally filed, Appellant shows and describes such a device.
In particular, Appellant’s Figure 1 illustrates an orthodontic torquing spring
device in which first spring coil portion’s active coils 102, 104, 106,
and 108, and second spring coil portion’s active coils 110, 112, 114,
and 116, “each hav[e] an outer diameter 136”—i.e., all of the active coils
have a common (that is, same) outer diameter. Spec. ¶ 29 (emphasis added).
Further, as shown and described, each of the first and second spring coil
portions lacks any inactive coils.
Appellant argues that the Examiner’s anticipation rejection is in error
because Sosnay’s “outer-coil set 26 is composed not of active coils, but of
inactive coils, which are excluded from claim 14.” Appeal Br. 8; see also id.
at 7. Appellant further argues that the Examiner errs because Sosnay’s
“inner-coil set 24 has a first diameter[, while] . . . outer-coil set 26 has a
different, smaller, diameter.” Id. at 7.
Nonetheless, according to the Examiner, the rejection is proper
because Sosnay’s “orthodontic torquing spring device (18) . . . includes all
the claimed elements before it is installed and anchored to the dental
arch[ ]wire (16) at the connection point (28).” Answer 3–4. Specifically,
according to the Examiner, the coils in Sosnay’s “outer-coil set 26 are
inactive coils only when they are attached to the arch[ ]wire, through
welding or soldering, therefore . . . [both coil sets] 24 and 26 are active
before . . . install[ation] on the arch[ ]wire.” Final Action 12.
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Based on our review of the record, the Examiner does not support
adequately, either through technical reasoning or by reference to any
evidence, that Sosnay’s coil sets 26 are ever understood by one of ordinary
skill to be active coils. Conversely, the Examiner acknowledges that when
connected to the arch wire, the coils in Sosnay’s “coil set 26 are inactive
coils.” Final Action 12. Because Sosnay’s device includes coils that are
inactive after installation on the arch wire, and the Examiner does not
support adequately that the coils are ever understood to be active coils, such
as before installation on the arch wire, we do not sustain the rejection.
However, even assuming that Sosnay’s coil set 26 may be
characterized as active coils prior to installation of Sosnay’s device on the
arch wire, as discussed above claim 14 requires that all active coils have a
common (i.e., same) diameter. The Examiner does not support adequately
that prior to installation on arch wire 16, Sosnay’s coil sets 24 and coil
sets 26 all have a common outer diameter. Instead, Sosnay at least implies
that coil sets 24 are formed with a different outer diameter than coil sets 26.
See Appeal Br. 7; see, e.g., Sosnay col. 8, ll. 63–68 (“The ends of the loop
[forming the coil sets] are turned in a suitable sequence upon a two-step
arbor or mandrel to form the coil sets. The shape and diameters of the steps
of the arbor conform to that of the desired inner diameter of each of the
contiguous coil sets.”).
Thus, inasmuch as the Examiner does not support adequately that
Sosnay discloses all active coils having a common outer diameter, and no
inactive coils, we do not sustain the Examiner’s anticipation rejection of
independent claim 14. Consequently, we also do not sustain the Examiner’s
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rejection of claim 15 that depends from, and the Examiner rejects with,
claim 14.
Independent claim 28
Independent claim 28 recites, in relevant part,
An orthodontic torquing spring device formed from a
wire having a first terminal end and a second terminal end distal
to the first terminal end, comprising . . . a first spring coil
portion having active coils that terminate at the first terminal
end of the wire forming the orthodontic torquing spring device[,
and] . . . a second spring coil portion having active coils that
terminate at the second terminal end of the wire forming the
orthodontic torquing spring device.
Appeal Br., Claims App.
Appellant argues that the Examiner’s anticipation rejection based on
Sosnay is in error because Sosnay does not show two sets of active coils that
terminate at the first and second ends of the wire forming the orthodontic
torquing device, as claimed, but instead shows inactive coils terminating at
the wire ends. Appeal Br. 8–9. More specifically, according to Appellant,
the torquing device of Sosnay has a wire with ends that
terminate not with active coils (the inner coil-set 24), but rather
with . . . inactive coils (e.g., the outer coil-set 26). That is, in
contrast to claim 28, which recites “active coils that terminate at
the . . . terminal end of the wire forming the orthodontic
torquing spring device . . . [,]” Sosnay instead discloses active
coils that terminate at the outer-coil set 26; . . . [i.e.,] Sosnay
discloses inactive coils that terminate at the terminal end of the
wire forming the orthodontic torquing spring device.
Id. at 9.
Based on our review of the record, we agree with Appellant.
Particularly, for the reasons set forth above, the Examiner does not support
adequately that the coils in Sosnay’s coil sets 26, which terminate at the ends
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of the wire forming Sosnay’s U-shaped form, are active coils. See
Answer 9–10. Further, the Examiner does not support adequately that
Sosnay’s arrangement in which inactive coils are disposed between the
active coils and the wire ends discloses “active coils that terminate at the . . .
terminal end[s] of the wire forming the orthodontic torquing spring device,”
as claimed. Id., Appeal Br., Claims App. (Claim 28). Consequently, we do
not sustain the Examiner’s anticipation rejection of independent claim 28.
Rejection II—Obviousness rejection of claims 16–20, 22–27,
and 29–33
Dependent claims 16–20 and 22
Claims 16–20 and 22 depend from independent claim 14. The
Examiner does not support adequately that an obvious variation of Sosnay
remedies the above-discussed deficiency in claim 14’s anticipation rejection.
Thus, we do not sustain the Examiner’s obviousness rejection, based solely
of Sosnay, of dependent claims 16–20 and 22.
Independent claim 23 and dependent claims 24–27
Independent claim 23 recites the following:
23. An orthodontic torquing spring device, consisting
essentially of:
a first spring coil portion having active coils;
a second spring coil portion having active coils, wherein
each of the active coils of the first spring coil portion and the
second spring coil portion have a common outer diameter; and
a loop portion extending between the first and second
spring coil portions, where each of the first spring coil portion,
the second spring coil portion, and the loop portion are formed
of a wire having a diameter of 0.330 to 0.356 millimeters.
Appeal Br., Claims App. (emphasis added).
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We note that claim 23 recites the orthodontic torquing spring device
“consisting essentially of” certain elements. Id. We agree with Appellant
(see id. at 9–10) that the transitional phrase “consisting essentially of” limits
the scope of a claim to the specified elements “and those that do not
materially affect the basic and novel characteristic(s)” of the claimed
invention (In re Herz, 537 F.2d 549, 551–552 (CCPA 1976) (emphasis
added)). This is because, as Appellant points out (Appeal Br. 10), “[a]
‘consisting essentially of’ claim occupies a middle ground between closed
claims that are written in a ‘consisting of’ format and fully open claims that
are drafted in a ‘comprising’ format” (PPG Industries v. Guardian
Industries, 156 F.3d 1351, 1354 (Fed. Cir. 1998)).
With reference to our discussion of independent claim 14 above, we
determine that the basic and novel characteristics of the claimed invention
recited in independent claim 23 are first and second spring coil portions that
have only active coils of a common outer diameter, and exclude any active
coil or coils having a different outer diameter than any other coil, and
exclude any inactive coil or coils. Appeal Br. 9–11. This is because, to the
extent that Appellant shows and describes the first and second spring coil
portions prior to installation, the spring coil portions are only shown and
described as having active coils all of the same size—that is, Appellant does
not show a device with active coils of any other outer diameter, and does not
show a device with inactive coils. See, e.g., Figs. 1, 4; see Spec. ¶ 29.
With further reference to our discussion of claim 14, the Examiner
does not support adequately that Sosnay discloses a device having active
coils with a common diameter, without inactive coils. Additionally, the
Examiner does not support adequately that it would have been obvious to
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modify Sosnay so that Sosnay’s device includes active coils with a common
diameter, and excludes inactive coils. Accordingly, we do not sustain the
Examiner’s obviousness rejection of independent claim 23. Further, we also
do not sustain the Examiner’s rejection of claims 24–27 that depend from,
and the Examiner rejects with, claim 23.
Dependent claims 29–33
Claims 29–33 depend from independent claim 28. The Examiner does
not support adequately that an obvious variation of Sosnay remedies the
above-discussed deficiency in claim 28’s anticipation rejection. Thus, we do
not sustain the Examiner’s obviousness rejection, based solely of Sosnay, of
dependent claims 29–33.
CONCLUSION
We REVERSE the Examiner’s anticipation and obviousness rejection
of claims 14–20 and 22–33.
In summary:
REVERSED

Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
14, 15, 28 102(b) Sosnay 14, 15, 28
16–20, 22–27,
29–33
103(a) Sosnay 16–20, 22–27,
29–33
Overall
Outcome:
14–20, 22–33