Ex Parte Raybuck

Patent Trial and Appeal Board

Jun 23, 2017

12617457 (P.T.A.B. Jun. 23, 2017)

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.
12/617,457 11/12/2009 John Raybuck 2008P01905US01 4615
24737 7590 06/27/2017
PTTTT TPS TNTFT T FfTTTAT PROPFRTY fr STANDARDS
EXAMINER
465 Columbus Avenue NELSON, MATTHEW M
Suite 340
Valhalla, NY 10595 ART UNIT PAPER NUMBER
3732
NOTIFICATION DATE DELIVERY MODE
06/27/2017 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):
marianne. fox @ philips, com
debbie.henn @philips .com
patti. demichele @ Philips, com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN RAYBUCK
Appeal 2016-000650
Application 12/617,457
Technology Center 3700
Before MICHAEL L. HOELTER, LYNNE H. BROWNE, and
BRENT M. DOUGAL, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner’s final rejection of claims 1, 3, 5—18, and 22. See Office Action
Summary. Claims 2, 4, and 23 have been canceled while claims 19-21 have
been withdrawn. See Amendment mailed September 26, 2013. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2016-000650
Application 12/617,457
THE CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to oral retracting devices in
general. Specifically, the present invention relates to devices utilized for
retraction of the lips, tongue and oral cavity during dental procedures.”
Spec. 11. Claims 1, 6, and 18 are independent. Claim 1 is illustrative of the
claims on appeal and is reproduced below:
1. A lip and cheek retracting device comprising a main
body portion with a front wall, a rear wall and a bottom portion,
the front wall and rear wall together defining a single
continuous concave channel that is adapted for receiving both
lips of a human when the lip and cheek retracting device is
placed into a mouth to retract both of the human's lips, a front
surface of the front wall having alignment features utilized for
alignment to a dental lamp.
REFERENCES RELIED ON BY THE EXAMINER
Hickham US 5,037,298
Garrison US 6,241,521 B1
VanSkiver US 2004/0106970 A1
Rose US 2006/0166161 A1
Anderson US 2007/0148619 A1
Aug. 6, 1991
June 5, 2001
June 3, 2004
July 27, 2006
June 28, 2007
THE REJECTIONS ON APPEAL
Claims 6—15 and 17 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention.
Claim 22 is rejected under 35 U.S.C. § 112, 4th paragraph, as being of
improper dependent form for failing to further limit the subject matter of the
claim upon which it depends.
Claims 1 and 22 are rejected under 35 U.S.C. § 102(b) as anticipated
by Hickham.
2
Appeal 2016-000650
Application 12/617,457
Claim 16 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Hickham and Rose.
Claims 1, 3, 5, 6, 8—10, 17, 18, and 22 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Anderson and Hickham.
Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Anderson, Hickham, and Garrison.
Claim 11 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Anderson, Hickham, and Rose.
Claims 12 and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Anderson, Hickham, Garrison, and VanSkiver.
Claims 13 and 14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Anderson, Hickham, and VanSkiver.
ANALYSIS
The rejection of claims 6—15 and 17 as indefinite
Claims 7—15 and 17 each depend, directly or indirectly, from claim 6.
The Examiner states that claim 6 is indefinite because “it is unclear as
written whether applicant is positively claiming ‘a bite block’ in lines 5—6,
or if this is intended to be part of the preceding functional language in lines
3—5.9,1 Final Act. 3; see also Ans. 11.
appellant sought to amend claim 6 to resolve this matter, but such
amendment was not entered. See Amendment mailed March 25, 2014 and
Advisory Action mailed April 3, 2014 (“Advisory Action”).
3
Appeal 2016-000650
Application 12/617,457
The way claim 6 is presently written and structured, the Examiner’s
statement is reasonable.2 We agree that it is unclear whether the recited “a
bite block” is separate from the “channel,” or whether it is part of the “front
wall and rear wall together” that define a “channel” “and a bite block.”
Accordingly, we sustain the Examiner’s rejection of claims 6—15 and 17 as
being indefinite.
The rejection of claim 22 as being of improper dependent form
Claim 22 depends from claim 1. Claim 1 recites, “a single continuous
concave channel.” Claim 22 states, “wherein the continuous concave
channel is a single continuous concave channel.” Again, Appellant
attempted to resolve this matter by amendment, but such amendment was
not entered. See supra. As presented for review, claim 22 does not further
define the invention of parent claim 1. See Final Act. 4. Accordingly, we
sustain the Examiner’s rejection of claim 22 as being of improper dependent
form.3
The rejection of claims 1 and 22 as anticipated by Hickham
Appellant does not present a separate argument (or any argument, for
that matter) with respect to this rejection of claim 22. Because we address
claim language common to both (see above), the rejection of dependent
claim 22 stands or falls with claim 1. Appellant contends that Hickham fails
2 Appellant requests the Board “to consider claim 6 as having been amended
or to properly read the claim as including the recited bite block.” Br. 11.
We cannot consider claims that have not been entered and thus have not
been rejected. See 37 C.F.R. § 41.31(c).
3 We note that independent claim 18 recites “a continuous concave channel.”
Perhaps Appellant meant for claim 22 to depend from claim 18 thereby
further reciting a “single” continuous concave channel.
4
Appeal 2016-000650
Application 12/617,457
to disclose (1) the “continuous” channel limitation; (2) the “single” channel
limitation; and, (3) the “alignment features” limitation recited in claim 1.
Br. 5-9.
Regarding the “continuous” limitation, Appellant states that one
dictionary definition of “continuous” is “uninterrupted; unbroken” while
another defines this term as “uninterrupted in time, sequence, substance, or
extent.” Br. 7 (citing Webster’s II, New College Dictionary (1995)).
Appellant then states, “[a] channel ‘with a break’ would not have been
considered a channel, but rather would be considered two channels.” Br. 7;
see also Br. 8 (Hickham’s “two channels are not continuous since each has
two ends”). Thus, because “Hickham has a pair of’ channels, Hickham
“lacks a single continuous channel.” Br. 8.
Appellant is obviously focusing on both Hickham’s right and left
channels together (which are spaced apart) and not on either channel
individually.4 This is contrary to the Examiner’s rejection that focuses on
only one of the channels of Hickham (i.e., the left channel). Final Act. 5;
see also Advisory Action p. 2. (“However, it is noted that the rejection
indicated only the left channel as corresponding to the single continuous
channel, and not both.”); Ans. 10 (a continuous channel “on each side”).
Appellant does not explain how Hickham’s left channel is not continuous
since there are no breaks in this channel, nor is it perforated along its extent.
Hence, according to the definitions proffered by Appellant, Hickham’s left
channel is “uninterrupted; unbroken” and further, “uninterrupted in time,
4 Appellant does not dispute that each of Hickham’s channels are “adapted
for receiving both lips of a human” as recited (i.e., upper and lower lips are
received in Hickham’ right channel and, likewise, upper and lower lips are
received in Hickham’s left channel). See Hickham Fig. 1.
5
Appeal 2016-000650
Application 12/617,457
sequence, substance, or extent.” Br. 7. Accordingly, we decline to agree
with Appellant that Hickham fails to disclose a “continuous” channel.
Regarding the “single” limitation, Appellant proffers a first dictionary
definition of “single” as meaning “unaccompanied by another or others,”
“sole,” “consisting of one alone,” and “undivided, unbroken.” Br. 7 (citing
Webster’s II, New College Dictionary (1995)). Appellant also states that an
unnamed online resource defines this term as “only one” and “not one of
several.” Br. 7—8. In the event Appellant is interpreting this term as being
one in number, Hickham also discloses one such channel. See Hickham
Figs. 1,2.
However, Appellant further contends, “[t]he Examiner construes
‘single channel’ as including ‘plural channels’ and thus gives the same
construction to ‘a single channel’ as would be given to ‘a channel.’” Br. 8.
Consequently, “[t]he Examiner thus ignores the limitation ‘single.’” Br. 8.
We agree with the Examiner that “the claim does not state that the
retracting device comprises a single continuous concave channel, but rather
that a front and rear wall define a single continuous concave channel.” Ans.
10 (emphasis added). Thus, even if “single” is a negative limitation,
Hickham discloses a front wall and a rear wall that define only a single
continuous concave channel. The fact that Hickham also discloses a second
front wall and rear wall that define only a single continuous concave channel
is not excluded by the claim language. In short, and based on the above,
Appellant is not persuasive of Examiner error on this point.
Regarding the “alignment features” limitation, the Examiner relies on
Hickham’s teaching of “the L-shaped alignment features on 56.” Final Act.
5; see also Ans. 10 (“Hickham has a front wall that includes the brackets
6
Appeal 2016-000650
Application 12/617,457
near 36 in Fig. 2”). The Examiner states that this structure is “fully capable
of being utilized for alignment to a dental lamp.” Ans. 10.
Appellant disagrees stating that one skilled in the art viewing these
brackets on Hickham’s front wall “would not have expected that such a
location would be suited for ‘alignment to a dental lamp.’” Br. 9. Appellant
does not explain why this front wall location would not be ideally suited for
securing a dental lamp thereto. Appellant provides no evidence supporting
this statement and it is not otherwise self-evident from the record.
Appellant also contends that Hickham’s “brackets move” and that
they are “kept well apart from the field of view.” Appellant’s Specification
similarly discusses a support flange that “may also be semi-flexible so as to
allow for it to flex” (Spec. 9) and further, one might think that a moveable
bracket would accommodate a wider range of dental lamp configurations.
Additionally, Appellant does not explain how keeping the brackets “well
apart from the field of view” is something undesirable. Nevertheless, the
Examiner states, “[wjhether the brackets are moveable or not does not
change that the brackets may still be used to visually align the lamp or aid in
supporting it.” Ans. 11. We agree with the Examiner on this point as well.
Accordingly, and based on the record presented, we are not persuaded
the Examiner erred in finding that claims 1 and 22 are anticipated by
Hickham.
The rejection of claim 16 as unpatentable over Hickham and Rose
Appellant does not dispute the reason stated by the Examiner for
additionally relying on the teachings of Rose. Instead, Appellant contends
that Rose “does not supply the deficiencies of Hickham.” Br. 11.
7
Appeal 2016-000650
Application 12/617,457
Appellant’s contention is not persuasive of Examiner error. We sustain the
Examiner’s rejection of claim 16 as being obvious over Hickham and Rose.
The rejection of claims 1, 3, 5, 6, 8—10, 17, 18, and 22
as unpatentable over Anderson and Hickham
In this rejection, the Examiner primarily relies on the teachings of
Anderson, but acknowledges, “Anderson does not specifically teach the
channel as being a single continuous channel capable of receiving both lips.”
Final Act. 7. The Examiner relies on the teachings of Hickham for this, and
provides a reason to combine the two. Final Act. 7.
Appellant repeats the arguments addressing a “continuous” channel as
discussed and such arguments are not persuasive for the reasons previously
stated. See Br. 12, 13. Appellant also contends that the device of Anderson
“could not perform [its] function if it were to be modified” as suggested by
the Examiner. Br. 10, 12. Appellant focuses on stanchions 37 in this regard
but the Examiner explained that such stanchions are spaced from any such
modification to Anderson’s channels and that such modification “would not
affect the positioning or use” of these stanchions (or Anderson’s saliva
evacuators 20). Br 10 (addressing Advisory Action, p. 2.); see also Final
Act. 12. A review of Anderson’s figures indicates that this is the case.
Appellant further contends, “the aim of Anderson is to keep the
cheeks wide apart” and that modifying Anderson’s channel “would be
expected to defeat the object of Anderson in keeping the cheeks taut.” Br.
10—11. The Examiner explains, “Hickham is similarly directed to keeping
the cheeks taut and wide apart (as seen in Fig. 1 for instance) and therefore it
would be unclear how this would defeat the object of Anderson.” Ans. 11.
We agree with the Examiner that Appellant does not explain how the
8
Appeal 2016-000650
Application 12/617,457
suggested modification to Anderson would preclude Anderson from keeping
the cheeks apart and/or taut.
Accordingly, and based on the record presented, we sustain the
Examiner’s rejection of claims 1, 3, 5, 6, 8—10, 17, 18, and 22 as
unpatentable over Anderson and Hickham.
The rejection of (a) claim 7 as unpatentable over Anderson, Hickham, and
Garrison; (b) claim 11 as unpatentable over Anderson, Hickham and Rose;
(c) claims 12 and 15 as unpatentable over Anderson, Hickham, Garrison,
and VanSkiver; and, (d) claims 13 and 14 as unpatentable over Anderson,
Hickham, and VanSkiver
Appellant contends, “[t]he secondary references, Rose, Garrison, and
VanSkiver, do not supply the deficiencies of Anderson and Hickham.” Br.
12. However, as above, we are not persuaded there are deficiencies with
Anderson and Hickham. Accordingly, we sustain the Examiner’s rejection
of claims 7 and 11—15.
DECISION
The Examiner’s rejections of claims 1, 3, 5—18, and 22 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
9