Sharon McCarthy

Patent Trials and Appeals Board

Nov 3, 2020

15167651 - (D) (P.T.A.B. Nov. 3, 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.
15/167,651 05/27/2016 Sharon M.E. McCarthy 724223 1016
23460 7590 11/03/2020
LEYDIG VOIT & MAYER, LTD
TWO PRUDENTIAL PLAZA, SUITE 4900
180 NORTH STETSON AVENUE
CHICAGO, IL 60601-6731
EXAMINER
LEWIS, RALPH A
ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
11/03/2020 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):
Chgpatent@leydig.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SHARON M.E. McCARTHY
____________

Appeal 2020-002433
Application 15/167,651
Technology Center 3700
____________

Before BIBHU R. MOHANTY, MICHAEL C. ASTORINO, and
BRADLEY B. BAYAT, Administrative Patent Judges.

MOHANTY, 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 1–10 and 12–21. We have jurisdiction
under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We REVERSE.

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
Sharon M.E. McCarthy and Robert E. McCarthy. (Appeal Br. 1).
Appeal 2020-002433
Application 15/167,651

2

CLAIMED SUBJECT MATTER
The Appellant’s claimed invention relates to an apparatus for
removing a dental appliance (Spec. para. 1). Claim 1, reproduced below, is
representative of the subject matter on appeal.

1. An apparatus for removing a dental appliance
comprising:
a body, the body including a first perimeter defining a
first face having a concave surface and a second perimeter
defining a second face having a convex surface, the first face in
opposing relationship to the second face;
a pry lip, the pry lip extending from one of the first and
second perimeters, the pry lip circumscribing the one of the first
and second perimeters from which the pry lip extends, the pry
lip including an inclined surface and a terminal ridge surface,
the inclined surface disposed between the terminal ridge surface
and the one of the first and second perimeters from which the
pry lip extends, the inclined surface and the terminal ridge
surface defining an oblique bevel angle therebetween.

THE REJECTIONS
1. Claims 1–3, 8–10, 12–14, 16, 17, 20, and 21 are rejected under
35 U.S.C. § 102(b) as anticipated by Nickolds (US 305,839; iss. Sept. 30,
1884).
2. Claims 4–7, 14, 15, and 17–19 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Nickolds.

Appeal 2020-002433
Application 15/167,651

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FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence.2

ANALYSIS
The Appellant argues that the rejection of claim 1 is improper because
the cited prior art fails to disclose the claim limitation for:
a pry lip, the pry lip extending from one of the first and second
perimeters, the pry lip circumscribing the one of the first and
second perimeters from which the pry lip extends.
(Appeal Br. 3, emphasis added).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Act. 2–6; Ans. 3–8).
We agree with the Appellant. The Examiner has determined that the
Nickolds reference discloses a pry lip “circumscribing” one of the first and
second perimeters from which the pry lip extends (Final Act. 2, Ans. 3).
The Examiner has determined that the Specification under a broadest
reasonable interpretation does not require that the claimed pry lips
“circumscribing” to completely surround the perimeter as by a closed
boundary (Ans. 6–8). In support of this position the Examiner provided a
dictionary definition at page 6 of the Answer and citations to the term
“circumscribes” used in other art (Ans. 6).
We first construe the meaning of the word “circumscribing” in the
claims. We determine the scope of the claims in patent applications “not

2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
Appeal 2020-002433
Application 15/167,651

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solely on the basis of the claim language, but upon giving claims their
broadest reasonable construction ‘in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” Phillips v. AWH Corp., 415
F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (quoting In re Am. Acad. of Sci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)).
Here, the Specification at paragraph 54 states that pry lip 54 can
circumscribe the perimeter and cites to Figure 1 as disclosing a pry lip 54
circumscribing the perimeter 81. The Specification at paragraph 77 provides
a similar example for the lip 154 “circumscribing” the body 152 in Figures 8
and 9. The Specification at paragraph 81 provides a similar example for the
lip 154 “circumscribing” the body 185 in Figure 15. The Specification at
paragraph 104 provides a similar example for the lip 254 “circumscribing”
the body 252 in Figures 16 and 17. The Specification at paragraph 60 also
cites to Figure 3 as disclosing a pry lip 54 that extends continuously around
the perimeter. Here, these above citations in the Specification for the
“circumscribing” pry lip all cite to Figures in which the pry lip extends
continuously around. Paragraph 60 also states that other embodiments can
have the pry lip portions be discontinuous. Thus, the Specification at
paragraph 60 makes a distinction between pry lips that are “continuously
around the first perimeter” and those that are “discontinuous.” Here, one of
ordinary skill in the art would have interpreted the term “circumscribing” in
light of the Specification to have the meaning similar to “draw a line
around” as listed in the Dictionary definition provided by the Examiner at
definition 2a. See Ans. 6.
Here, the reference of Nickolds does not disclose a pry lip that
“circumscribes” the perimeter using the term “circumscribing” as
Appeal 2020-002433
Application 15/167,651

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understood in light of the Specification. Accordingly, the rejection of
independent claim 1 and the remaining dependent claims under the rejection
under 35 U.S.C. § 102(b) as anticipated by Nickolds is not sustained.
The rejection of the claims under 35 U.S.C. § 103(a) as unpatentable
over Nickolds fails for the same reasons as given above. Accordingly, the
rejection under 35 U.S.C. § 103 is not sustained as well.

CONCLUSION OF LAW
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 1–3, 8–10, 12–14, 16, 17, 20, and 21 under 35 U.S.C.
§ 102(b) as anticipated by Nickolds
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 4–7, 14, 15, and 17–19 under 35 U.S.C. § 103(a) as
unpatentable over Nickolds.

DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 8–10,
12–14, 16,
17, 20, 21
102(b) Nickolds 1–3, 8–10,
12–14, 16,
17, 20, 21
4–7, 14,
15, 17–19
103(a) Nickolds 4–7, 14, 15,
17–19
Overall
Outcome
1–10, 12–
21

REVERSED