12666262 - (D) (P.T.A.B. Apr. 22, 2020)

Phillips, Heather

Patent Trials and Appeals BoardApr 22, 2020

12666262 - (D) (P.T.A.B. Apr. 22, 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. 12/666,262 12/22/2009 Heather Phillips 25277.26 7963 122269 7590 04/22/2020 Brian Tucker Kirton McConkie 36 South State Street, Suite 1900 Salt Lake City, UT 84111 EXAMINER SCRUGGS, ROBERT J ART UNIT PAPER NUMBER 3723 NOTIFICATION DATE DELIVERY MODE 04/22/2020 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): btucker@kmclaw.com ipdocket@kmclaw.com klyon@kmclaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HEATHER PHILLIPS Appeal 2019-003639 Application 12/666,262 Technology Center 3700 Before CHARLES N. GREENHUT, MICHELLE R. OSINSKI, and BRENT M. DOUGAL, Administrative Patent Judges. DOUGAL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s Non-Final Rejection of claims 19–21 and 23–38. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Live-Right, LLC. Appeal Br. 4. Appeal 2019-003639 Application 12/666,262 2 PRIOR APPEALS The Board issued a January 10, 2017 Decision in the present application affirming-in-part the Examiner’s rejections from a January 27, 2014 Final Office Action. In response, Appellant cancelled all of the claims and submitted new claims in a May 2, 2017 Amendment and Response. After additional prosecution, Appellant filed an Appeal Brief on September 5, 2018 of an April 11, 2018 Final Office Action. In response, the Examiner issued a November 9, 2018 Non-Final Office Action (Non- Final Act.). Appellant filed the present Appeal Brief (Appeal Br.) on November 13, 2018 appealing the rejections of the Non-Final Office Action, which includes “all of the content of the appeal brief filed on September 5, 2018.” Appeal Br. 15. CLAIMED SUBJECT MATTER The claims are directed to an infant toothbrush. Claims 19 and 37 are independent. Claim 19, reproduced below, is illustrative of the claimed subject matter: 19. A toothbrush comprising: a handle having a grasping region, the grasping region having a proximal end and a distal end; a head having a proximal end and a distal end, the distal end of the head forming the distal end of the toothbrush, the proximal end of the head being coupled to the distal end of the grasping region; and bristles that emanate from the head, wherein the handle, head, and bristles are all formed of silicone; wherein the handle and the head have a face, a back, and opposing sides that extend between the face and the back, each of the face, the back and the opposing sides forming a different surface that is oriented at a different angle; Appeal 2019-003639 Application 12/666,262 3 wherein the handle and the head have a crescent shape such that the face is concave between the proximal end of the grasping region and the distal end of the head and the back is convex from the proximal end of the grasping region to the distal end of the head, the bristles emanating from the face. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Amodeo Halm Rohrig ’583 Stvartak US 3,120,670 US 5,813,079 US 6,546,583 B1 US 6,601,272 B2 Feb. 11, 1964 Sept. 29, 1998 Apr. 15, 2003 Aug. 5, 2003 Rohrig Davis Kemp Kayser Foster Wong Hohlbein US 2003/0014825 A1 US 2003/0046780 A1 US 2004/0187889 A1 US 2006/0037160 A1 US 2007/0006411 A1 US 2007/0163064 A1 US 2009/0178219 A1 Jan. 23, 2003 Mar. 13, 2003 Sept. 30, 2004 Feb. 23, 2006 Jan. 11, 2007 July 19, 2007 July 16, 2009 Schneider Moskovich US D358,938 US D514,321 June 6, 1995 Feb. 7, 2006 REJECTIONS Claims 19–21, 25, and 37 are rejected under 35 U.S.C. § 112, Second Paragraph as being indefinite. Claims 19–21 and 23–38 are rejected under 35 U.S.C. § 103(a) as being unpatentable over the following references: I. Rohrig Grounds a) Claims 19–21, 23–26, 31, 33, 34, 37, and 38 – Rohrig, Halm, Kayser, Davis, and Foster. b) Claims 27 and 28 – Rohrig, Halm, Kayser, Davis, Foster, and Moskovich. Appeal 2019-003639 Application 12/666,262 4 c) Claims 29 and 30 – Rohrig, Halm, Kayser, Davis, Foster, Moskovich, Stvartak, and Schneider. d) Claims 31 and 32 – Rohrig, Halm, Kayser, Davis, Foster, and Rohrig ’583. e) Claim 35 – Rohrig, Halm, Kayser, Davis, Foster, Hohlbein, and Kemp. f) Claim 36 – Rohrig, Halm, Kayser, Davis, Foster, Wong, and Amodeo. II. Kayser Grounds a) Claims 19–21, 23,2 24, 31, 33, 34, and 37 – Kayser, Davis, and Foster. b) Claims 25, 26, and 38 – Kayser, Davis, Foster, and Rohrig. c) Claims 27 and 28 – Kayser, Davis, Foster, and Moskovich. d) Claims 29 and 30 – Kayser, Davis, Foster, Moskovich, Stvartak, and Schneider. e) Claims 31 and 32 – Kayser, Davis, Foster, and Rohrig ’583. f) Claim 35 – Kayser, Davis, Foster, Hohlbein, and Kemp. g) Claim 36 – Kayser, Davis, Foster, Wong, and Amodeo. 2 Claim 23 is not included in the listing of the rejection, but is addressed in the body thereof. Appeal 2019-003639 Application 12/666,262 5 OPINION 35 U.S.C. § 112, ¶2 The Examiner rejects claims 19–21, 25, and 37 as indefinite. Non- Final Act. 3–4. Appellant argues, and we agree, that the dispute centers on claim construction. Appeal Br. 15. In particular, Appellant argues that the claims require a single face, while the Examiner takes the position that the claims require that both the handle and the head have separate faces, which introduces confusion rendering the claims indefinite. See e.g., Appeal Br. 16; Non-Final Act. 3. As explained by the Examiner: Claim 19 (and also 37), discloses “wherein the handle and the head have a face (see line 9) . . . wherein the handle and the head have a crescent shape such that the face is concave (see line 12).[”] Since, both the handle and the head have a face, it is not clear which face is actually concave. Ans. 5 (emphasis omitted); see also, Non-Final Act. 3 (“Which face is the applicant trying to disclose? Is it the face of the head, the face of the handle or both?”). If the claims merely stated “wherein the handle and the head have a face,” we would agree that the claims could be interpreted as unclear. However, the claims also require that “the handle and the head have a crescent shape such that the face is concave between the proximal end of the grasping region [of the handle] and the distal end of the head, . . . the bristles emanating from the face [at the head].” See Claim 19. We determine that this clarifying statement makes clear that the phrase “the handle and the head have a face” refers to a single face, and not two different faces. See Appeal Br. 16–17. Other than questioning which “face” is claimed, it is not clear whether the Examiner has determined that other aspects of the claims are indefinite. Appeal 2019-003639 Application 12/666,262 6 See Non-Final Act. 3–4. The Examiner does raise a number of questions concerning what is shown in Appellant’s figures, for example with respect to claims 25 and 37, however, this does not raise a question of definiteness. Id. at 4. As the Examiner’s indefinite rejection of the claims rely on an incorrect understanding of the term “face,” we reverse this rejection. 35 U.S.C. § 103(a) – Rohrig Grounds Under the first obviousness rejection of independent claims 19 and 37, the Examiner relies on Rohrig for teaching most of the features of the claims. Non-Final Act. 7, 13. Claims 19 and 37 both include “wherein the handle and the head have a face, a back, and opposing sides that extend between the face and the back, each of the face, the back and the opposing sides forming a different surface that is oriented at a different angle.” Appellant argues that this claimed feature is missing from Rohrig. Appeal Br. 22. In particular, Appellant argues Rohrig’s “outer surface of gripping zone 4 and the outer surface of connecting zone 5 are round. There are no separate surfaces oriented at different angles as required by the claims. Likewise, bristle portion 6 has a flat upper surface and a rounded bottom.” Id. Appellant continues, “[a] rounded handle does not have different surfaces oriented at different angles. To the contrary, a rounded handle has a continuous, rounded outer surface.” Id. at 23. The Examiner takes the position that “[a] rounded handle does have different surfaces oriented at different angles.” Ans. 12. Accordingly, the Examiner divides up the surface of Rohrig’s toothbrush based on its orientation to identify the different portions. See id. at 12–13. But, ultimately, the Examiner does not show how a rounded surface in Rohrig is Appeal 2019-003639 Application 12/666,262 7 different surfaces, or how a round surface forms multiple “different surface[s] . . . oriented at . . . different angle[s]” as required by the claims. As none of the other references are relied upon by the Examiner, in this rejection, to overcome this deficiency of Rohrig, we do not sustain the Examiner’s obvious rejection of claims 19 and 37 over Rohrig, Halm, Kayser, Davis, and Foster. We do not sustain the rejections of the dependent claims under the Rohrig Grounds for this same reason. 35 U.S.C. § 103(a) – Kayser Grounds The Examiner rejects claims 19–21, 24, 31, 33, 34, and 37 as obvious over Kayser, Davis, and Foster. Non-Final Act. 13. Appellant does not address this rejection, nor do they address the teachings of Kayser, Davis, or Foster. See generally, Appeal Br. The Examiner also rejects claims 25–32, 35, 36, and 38 as obvious over Kayser, Davis, Foster and one or more of Rohrig, Moskovich, Stvartak, Schneider, Rohrig ’583, Hohlbein, Kemp, Wong, and Amodeo. Non-Final Act. 17, 19, 22, 24, 26, 27. Appellant also does not address these rejections or combinations of references. See generally, Appeal Br. Appellant does argue that the Examiner must consider evidence of secondary considerations when making an obvious determination. Appeal Br. 39. Though no evidence was filed with the Appeal Brief, Appellant previously filed two affidavits on June 6, 2018 in response to a prior office action. In the Appeal Brief, Appellant argues that one of these affidavits “provides evidence of the commercial success of toothbrushes that look exactly like those disclosed in the present application and covered by the claims,” and that the other shows that “[t]here were also no other toothbrushes like the claimed toothbrush.” Id. at 39, 41. Appeal 2019-003639 Application 12/666,262 8 However, other than identifying the statements in the affidavits, Appellant does not identify how the Examiner erred in rejecting the claims in view of the affidavits. In response to the affidavits, the Examiner previously determined: the objective evidence of nonobviousness [as shown by the affidavits] is not sufficient to outweigh the evidence of obviousness because the references above provide a toothbrush meeting the limitations/features as currently being claimed. One of ordinary skill in the art would have had knowledge about these features and could have combined these features (as in the above) and since each feature was within the same field of endeavor (toothbrushes) and also included clear motivation for using each feature (as previously discussed above) the declaration has been deemed unpersuasive and the examiner maintains that the rejection is proper. Non-Final Act. 33. Appellant does not show that these determinations by the Examiner are incorrect with respect to the Kayser Grounds, nor do they provide a direct response to this statement by the Examiner. The Board “reviews the obviousness rejection for error based upon the issues identified by the appellant, and in light of the arguments and evidence produced thereon.” Ex Parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)). As no errors have been identified by Appellant in the Kayser Grounds we are not apprised of error in these rejections. Appeal 2019-003639 Application 12/666,262 9 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 19–21, 25, 37 112, ¶ 2 Indefiniteness 19–21, 25, 37 19–21, 23–26, 31, 33, 34, 37, 38 103 Rohrig, Halm, Kayser, Davis, Foster 19–21, 23– 26, 31, 33, 34, 37, 38 27, 28 103 Rohrig, Halm, Kayser, Davis, Foster, Moskovich 27, 28 29, 30 103 Rohrig, Halm, Kayser, Davis, Foster, Moskovich, Stvartak, Schneider 29, 30 31, 32 103 Rohrig, Halm, Kayser, Davis, Foster, Rohrig ’583 31, 32 35 103 Rohrig, Halm, Kayser, Davis, Foster, Hohlbein, Kemp 35 36 103 Rohrig, Halm, Kayser, Davis, Foster, Wong, Amodeo 36 19–21, 23, 24, 31, 33, 34, 37 103 Kayser, Davis, Foster 19–21, 23, 24, 31, 33, 34, 37 25, 26, 38 103 Kayser, Davis, Foster, Rohrig 25, 26, 38 27, 28 103 Kayser, Davis, Foster, Moskovich 27, 28 29, 30 103 Kayser, Davis, Foster, Moskovich, Stvartak, Schneider 29, 30 31, 32 103 Kayser, Davis, Foster, Rohrig ’583 31, 32 Appeal 2019-003639 Application 12/666,262 10 Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 35 103 Kayser, Davis, Foster, Hohlbein, Kemp 35 36 103 Kayser, Davis, Foster, Wong, Amodeo 36 Overall Outcome3 19–21, 23– 38 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED 3 37 C.F.R. § 41.50(a)(1) states: “The affirmance of the rejection of a claim on any of the grounds specified constitutes a general affirmance of the decision of the examiner on that claim.”