Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 EX PARTE ROBERT A. MEYER
Appeal No. 639-10
January 13, 1988
Application for Patent filed March 21, 1983, Serial No. 477,519. Dental Vacuum Source Assembly.
Robert A. Vanderhye, et al. for Appellant
John J. Wilson
James M. Meister
This is an appeal from the final rejection of claims 1 through 9 and 12 through 16. Claims 10, 11, 17 and 18 have been indicated as being allowable if rewritten in independent form. Claims 19 and 20 stand allowed.
Appellant's disclosure pertains to a dental vacuum assembly which includes a vacuum reservoir, a rotary vane vacuum pump and a motor for powering the pump. The vacuum reservoir is operatively connected to a number of different dental stations, each including a dental aspirator tip.
Claim 1 is representative of the appealed subject matter and reads as follows:
1. A dental vacuum source assembly comprising:
a plurality of dental aspirator tips;
a vacuum reservoir;
a motor for powering said rotary vane vacuum pump;
a vacuum line interconnecting said vacuum reservoir and said rotary vane vacuum pump; and
vacuum conduit means interconnecting said plurality of dental aspirator tips to said vacuum reservoir.
The references of record relied on by the examiner:
Hunt 1,349,766 Aug. 17, 1920
Browne 2,136,098 Nov. 8, 1938
Buckbee 2,264,616 Dec. 2, 1941
Johnston, et al. (Johnston) 2,895,220 July 21, 1959
Bishop 3,138,873 June 30, 1964
Romanelli 3,429,313 Feb. 25, 1969
Gandrud 3,988,134 Oct. 26, 1976
Vacudent, Multiple Operatory Systems, Brochure, Salt Lake City, Utah (1980).
Claim 1 stands rejected under 35 U.S.C. 103 as being unpatentable over Gandrud in view of Hunt.
Claim 2 stands rejected under 35 U.S.C. 103 as being unpatentable over Gandrud in view of Hunt and Romanelli.
Claims 4, 5 and 7 stand rejected under 35 U.S.C. 103 as being unpatentable over Gandrud in view of Hunt, Buckbee and Vacudent.
Claim 6 stands rejected under 35 U.S.C. 103 as being unpatentable over Gandrud in view of Hunt, Buckbee, Vacudent and Browne.
*2 Claims 8 and 9 stand rejected under 35 U.S.C. 103 as being unpatentable over Gandrud in view of Hunt, Buckbee and Bishop.
Claim 12 stands rejected under 35 U.S.C. 103 as being unpatentable over Gandrud in view of Hunt, Buckbee, Bishop and Johnston.
Claim 13 stands rejected under 35 U.S.C. 103 as being unpatentable over Gandrud in view of Hunt and Vacudent.
Claims 14 and 15 stand rejected under 35 U.S.C. 103 as being unpatentable over Gandrud in view of Hunt, Vacudent and Browne.
Claim 16 stands rejected under 35 U.S.C. 103 as being unpatentable over Gandrud in view of Hunt, Buckbee and Romanelli.
In each of the above rejections, the examiner has relied on the combined teachings of Gandrud and Hunt. The examiner points out that Gandrud shows a dental vacuum assembly which includes a vacuum reservoir, a pump and a plurality of aspirator tips and that Hunt shows a rotary vane pump powered by a motor utilized in a vacuum assembly for removing blood from the throat of a patient during surgical procedures such as tonsillectomies. The examiner considers that it would have been obvious to one of ordinary skill in the art to substitute in Gandrud for his vacuum pump the rotary vane vacuum pump powered by a motor as shown by Hunt.
It is appellant's position: (brief, page 6):
. . . that any prima facie case of obviousness that may exist for the combination of Gandrud and Hunt to teach the invention has clearly been overcome by the evidence applicant has presented, and the invention is clearly unobvious over the references.
In support of this position, appellant has submitted two declarations under 37 CFR 1.132 of the inventor, Robert A. Meyer, and twelve copies of letters by practicing dentists who have utilized appellant's device.
Appellant additionally urges that improved results, commerical success and acceptance in the trade is 'most important evidence' to be considered and that the long period of time which elapsed between the issuance of the Hunt and Gandrud patents is a clear indication of unobviousness. Reference is made to pages 6 through 13 of the brief for a full statement of appellant's arguments.
As a preliminary matter, we note that the examiner in the final rejection and the inventor, Robert A. Meyer, in his second declaration refer to page 6 of a 'portfolio' submitted with the amendment filed June 14, 1984. We do not find a portfolio with a page number 6 attached to this amendment but we do find copies of twelve letters from dentists attached thereto and assume these copies constitute the referred to portfolio. In this regard, we also note that appellant in the brief (page 7) has referred to 'thirteen letters from practicing dentists,' however, there are only twelve copies letters in the file for our consideration.
*3 We observe that appellant has not chosen to argue the dependent claims separately from independent claim 1. Accordingly, these claims will stand or fall with independent claim 1. In re Sernaker, 702 F.2d 989, 217 USPQ 1 (Fed. Cir. 1983).
In arriving at our decision in this appeal, we have given careful consideration to appellant's specification and claims and to the respective positions advanced by the appellant in the brief and reply brief and by the examiner in the answer. Upon evaluation of all evidence before us, we are satisfied that the references support a conclusion of prima facie obviousness with respect to the claims as outlined by the examiner. See In re Rinehart, 531 F.2d 1084, 189 USPQ 143 (CCPA 1976).
Appellant has argued that the long period of time which elapsed between the issuance of the Gandrud and Hunt patents is evidence of unobviousness and has cited decisions in support of this position. However, the mere age of a reference is not persuasive of unobviousness absent evidence that the art tried and failed to solve the problem notwithstanding knowledge of the references. See In re Wright, 569 F.2d 1124, 193 USPQ 332 (CCPA 1977); In re McGuire, 416 F.2d 1322 163 USPQ 417 (CCPA 1969).
As evidence of nonobviousness, appellant has relied upon two declarations under 37 CFR 1.132 by the inventor, Robert A. Meyer, and upon the above-mentioned copies of twelve letters which purport to be from practicing dentists who have utilized appellant's device. In considering these documents, we are mindful of our duty to reweigh the entire merits of the application and hence consider all the evidence of record anew. In re Piasecki, 745 F.2d 1468, 223 USPQ 785 (Fed. Cir. 1984); In re Rinehart, supra. We are also mindful that the objective evidence of nonobviousness in any given case may be entitled to more or less weight, depending upon its nature and the merits of the invention. Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 218 USPQ 871 (Fed Cir. 1983).
Considering first the twelve copies of letters from practicing dentists, which are not even referred to in the Meyer declarations, we note that 37 CFR 1.132 permits the provision of affidavits or declarations to traverse grounds of rejection. However, since these copies of letters are neither sworn to nor in the form of declarations, they do not comply with the rule. We therefore have given them no consideration. See In re Hunter, 167 F.2d 1006, 77 USPQ 610 (CCPA 1948).
Considering next the first Meyer declaration, the declaration and the attachments thereto refer to comparative tests between appellant's device and certain water ring pumps. However, there is nothing to indicate that the ring pump attested to in the declaration represents the closest prior art. An applicant relying upon a comparative showing to rebut a prima facie case of obviousness must compare his claimed invention with the closest prior art. In re Merchant, 575 F.2d 865, 197 USPQ 785 (CCPA 1978); In re Wright, supra. To the contrary, appellant states (specification, page 1) that typical commercially available dental vacuum systems 'include water ring or burbine vacuum pumps' (emphasis ours). While the declaration states (paragraph 2) that comparative tests between appellant's device and 'commercially available other dental vacuum systems, including those having water ring pumps and turbines' have been performed, no test data other than for the ring pump have been submitted.
*4 The first Meyer declaration states that despite not having the capability of national distribution there are twelve commercial installations. However, we do not find the fact that there are twelve 'commercial installations' to be indicative of commercial success and aceptance in the trade particularly when compared to the thousands of dentists who utilize vacuum systems. Moreover, there is no evidence that the twelve 'commercial installations' were the result of sales and, if in fact they were the result of sales, that such sales were the result of the merits of appellant's invention rather than other factors.
Meyer in his first declaration also states that in his opinion that there has been a need for a dental vacuum system that has 'good reliability, low noise, and good vacuum intensity and flow rate characteristics and that his device fulfills that need.' However, we do not find this conclusionary statement that there has been a need and that appellant's device fulfills that need, without objective supporting evidence, to be entitled to substantial weight.
Turning to the second Meyer declaration, Meyer therein points out various differences between dental procedures and those encountered in tonsillectomies and concludes that the teachings of Hunt would not provide any suggestion to one in the dental art for the use of a rotary vane pump in a dental vacuum system. While we respect Mayer's lay opinion on patentability, we note that the question of obviousness is a legal conclusion which we must decide. We recognize that differences exist between surgical and dental procedures. However, we find little or no relationship between the claimed subject matter and the size of opening in the aspirator tip used in tonsillectomies vis-a-vis the size opening used in dental procedures since no opening of a particular size has been claimed.
As to the conclusionary statement in subparagraph G of the second Meyer declaration that the equipment 'used in surgical procedures such as tonsillectomies will likely be maintained by . . . hospital personnel' whereas 'dental vacuum equipment requires infrequent, simple servicing,' it does not follow that the hospital equipment is not, or should not be, of the type that 'requires infrequent simple servicing' merely because there may possibly be service personnel available. As to the conclusionary statement in subparagraph H that hospital equipment 'is not required to operate for long periods of time' whereas equipment in dental offices is routinely used for long period of time, we note that there is no objective evidence submitted that is supportive of such a statement. Various hospitals and dental offices obviously have varying requirements dependent upon the scheduled time and number of patients to be processed during a given period. Therefore, we do not find these conclusionary statements to be of substantial weight.
We have carefully considered the evidence of nonobviousness supplied by appellant and conclude that the evidence of nonobviousness submitted by appellant taken as a whole is insufficient to overcome the case of obviousness established by the examiner. See EWP Corp. v. Reliance Universal, Inc., 755 F.2d 898, 225 USPQ 20 (Fed. Cir. 1985). Accordingly, we will sustain the examiner's rejection of claims 1 through 9 and 12 through 16 under 35 U.S.C. 103.
*5 37 CFR 1.136(a) does not apply to the times for taking any subsequent action in connection with this appeal.
Ian A. Calvert
Bruce H. Stoner, Jr.
James M. Meister