In Re Pond , 466 F. App'x 876 ( 2012 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
__________________________
(Serial No. 11/073,914)
IN RE GARY J. POND
__________________________
2011-1179
__________________________
Appeal from the United States Patent and Trademark
Office, Board of Patent Appeals and Interferences.
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Decided: January 18, 2012
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PATRICK J. FLEIS, Ryan Kromholz & Manion, S.C., of
Milwaukee, Wisconsin, for appellant.
RAYMOND T. CHEN, Solicitor, Office of the Solicitor,
United States Patent and Office, of Alexandria, Virginia,
for appellee. With him on the brief were KRISTI L. R.
SAWERT, Associate Solicitor, and JOSEPH G. PICCOLO,
Associate Solicitor.
__________________________
Before RADER, Chief Judge, DYK and REYNA, Circuit
Judges.
IN RE POND 2
PER CURIAM.
Gary J. Pond (“Pond”) appeals the decision of the
Board of Patent Appeals and Interferences (“Board”)
affirming the U.S. Patent and Trademark Office’s (“PTO”)
rejection of all claims of U.S. Patent Application Serial
No. 11/073,914 (“’914 application”) as anticipated under
35 U.S.C. § 102(b) by U.S. Patent No. 5,127,831 to Bab
(“’831 patent” or “Bab”). In re Pond, No. 2009-008521,
2010 Pat. App. LEXIS 18283 (B.P.A.I. Oct. 12, 2010).
Because substantial evidence supports the Board’s deter-
mination, this court affirms.
I
The ’914 application claims a “unitary, one-piece” den-
tal irrigation tip that can be used to deliver fluids to a
dental site, e.g., for delivery of dental fluid into a gingival
pocket. ’914 app. pp.1-2; J.A. 110. According to the
specification, the claimed invention’s “unitary, one-piece
construction” is accomplished by “integrally form[ing]” the
rigid proximal section 102 and flexible distal section 106
via a molding process,” such as insert molding. ’914 app.
p.4 ll.1-2, 15-18; p.6 ll.5-9. Claim 1 is representative and
reads as follows.
A unitary, one-piece dental irrigation tip for
delivering fluids from a dental tool to a dental
site, said tip comprising:
a proximal section, said proximal section pro-
viding releasable locking means to said dental
tool;
a distal section, said distal section providing
at least one opening for fluid delivery;
a fluid passageway passing from said proxi-
mal section to said at least one opening;
3 IN RE POND
said proximal section and said distal section
being of unitary, one-piece construction.
’914 app. p.7 ll.2-12 (emphasis added).
In the First Office Action, in relevant part, the PTO
rejected claims 1-9 of the ’914 application under 35 U.S.C.
§ 102(b) as anticipated by Bab. The rejection explains:
Bab discloses a unitary, one-piece dental irriga-
tion tip . . . for delivering fluids from a dental tool
to a dental site, said dental tip formed by an in-
sert molding process . . . , said tip comprising: a
proximal section . . . ; a distal section . . . ; a fluid
passageway passing from said proximal section to
said at least one opening; and said proximal sec-
tion and said distal section being of unitary,
one-piece construction; wherein said distal end
has a first end and a second end, said first end be-
ing integrally formed with said proximal sec-
tion, . . . , said fluid passageway passing from said
proximal section to said plurality of openings;
wherein said distal section is flexible; [and]
wherein said proximal section is substantially
rigid.
J.A. 58. In response, Pond asserted that Bab comprised a
two-piece dental tip, not a unitary, one-piece dental
irrigation tip. In the Second Office Action, the PTO found
Pond’s arguments concerning Bab to be unconvincing and
noted that, in addition to its earlier statements, Bab
“specifically teaches that the flexible part section is fixed
to the arm section by means such as . . . insert molding.”
J.A. 99. Pond then filed an appeal with the Board and
made a variety of arguments, e.g., fixing two pieces to-
gether was not the same as one piece and that “[u]nitary
means a single, whole section.” J.A. 112. The examiner
responded that Bab taught the elements of claims 1-9 of
IN RE POND 4
the ’914 application. Specifically, the examiner noted that
the Bab reference formed a dental tip with the same
process claimed in the ’914 application, and that the Bab
tip was a single piece and not two separate pieces to-
gether. The Board affirmed the examiner’s rejection of
claims 1-9 of the ’914 application under 35 U.S.C.
§ 102(b). Pond, 2010 Pat. App. LEXIS 18283, at *4. The
Board also did not find a “structural difference” between
Bab and the ’914 application and noted that Pond had not
“adequately pointed to any structural difference.” Id.
Pond timely filed this appeal. Pond did not contest
the PTO’s findings that Bab disclosed “a dental irrigation
tip having a proximal section having a releasable locking
means (a luer lock), a distal section having at least one
opening for fluid delivery, and a fluid passageway passing
from said proximal section to said at least one opening.”
Pond, 2010 Pat. App. LEXIS 18283, at *2-3. As such, the
only claim limitation Pond contends that Bab does not
disclose is the “unitary, one-piece construction” in inde-
pendent claims 1 and 5. As acknowledged by Pond in its
Appeal Brief to the Board, claim 5 “delineat[es] the proc-
ess used to form the tip.” J.A. 110.
The examiner properly noted that a prod-
uct-by-process claim does not add a patentable distinction
when the claimed product is the same as the cited art’s
product. See In re Thorpe, 777 F.2d 695, 697 (Fed. Cir.
1985). As such, this court need only address claim 1
because the remaining claims stand or fall with it. There-
fore, the only issue presented is whether the irrigation tip
disclosed by Bab is of a “unitary, one-piece construction”
as required by all claims in the ’914 application. This
court has jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
5 IN RE POND
II
This court reviews factual findings of the Board to de-
termine if they are supported by substantial evidence.
See In re Gartside, 203 F.3d 1305, 1312-16 (Fed. Cir.
2000). The teachings of a reference and whether a claim
is anticipated are questions of fact. In re Suitco Surface,
Inc., 603 F.3d 1255, 1259 (Fed. Cir. 2010); In re Beattie,
974 F.2d 1309, 1311 (Fed. Cir. 1992). “Substantial evi-
dence is something less than the weight of the evidence
but more than a mere scintilla of evidence, and means
such relevant evidence as a reasonable mind might accept
as adequate to support a conclusion." Suitco, 603 F.3d at
1259 (internal citations omitted).
This court must address whether the Board’s inter-
pretation of “unitary, one-piece construction” is reason-
able. The Board found “that the process of insert molding
of two materials having similar properties results in
bonding of the two parts such that the end product is of a
unitary, one-piece construction.” Pond, 2010 Pat. App.
LEXIS 18283, at *3 (citing ’914 app. p.2 ll.19-22, p.6 ll.5-
19).
The specification for the ’914 application does not con-
tain an express definition of “unitary, one-piece construc-
tion.” Therefore Pond did not act as a lexicographer and
define the phrase “unitary, one-piece construction.”
Moreover the ’914 application does not contain any disclo-
sure that renders the PTO’s interpretation of that term
unreasonable. See In re Morris, 127 F.3d 1048, 1056 (Fed.
Cir. 1997).
During examination, the PTO gives claims “their
broadest reasonable construction consistent with the
specification.” Suitco, 603 F.3d at 1259 (quoting In re
ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed.
Cir. 2007)). In this case, the PTO properly reviewed the
IN RE POND 6
specification of the ’914 application to verify the meaning
of “unitary, one-piece construction.” See Phillips v. AWH
Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005) (en banc)
(“[T]he specification ‘is always highly relevant to the
claim construction analysis. Usually, it is dispositive; it is
the single best guide to the meaning of a disputed term.’”).
The specification of the ’914 application describes an
embodiment that constructs the dental tip by insert
molding. Thus, under the broadest reasonable construc-
tion the “unitary, one-piece construction” includes prod-
ucts made by insert molding. The specification describes
the insert molding process as “injecting a polymer around
a core material, which could be another polymer, a ce-
ramic perform [sic] or a metal component.” ’914 app. p.6
ll.10-12. With insert molding, a separate piece, i.e., the
“insert,” is placed in the cavity prior to injection, and the
fluidized plastic is injected around it such that the insert
becomes encapsulated in the final piece. See Chambers
Dictionary of Science and Technology 607 (Peter M B
Walker ed., 1999) (defining “insert”). Thus, the Board
gave a reasonable reading to the contested claim term.
“To anticipate a claim, a single prior art reference
must expressly or inherently disclose each claim limita-
tion.” Finisar Corp. v. DirecTV Group, Inc., 523 F.3d
1323, 1334 (Fed. Cir. 2008). See also, Verdegaal Bros. v.
Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987).
The Board discovered no error in the examiner’s finding
that “Bab disclose[d] the proximal and distal sections can
both be made of polyethylene and that the tip can be
formed by an insert molding process,” which “results in a
unitary, one-piece dental irrigation tip.” Pond, 2010 Pat.
App. LEXIS 18283, at *3. According to the ’914 applica-
tion, insert molding had “not [been] previously used for
forming dental tips,” ’914 app. p.6 ll.12-13; however, Bab
repeatedly discloses using insert molding to form dental
7 IN RE POND
tips. Indeed, Pond cited Bab in the ’914 application as
“[a]n example” of a flexible end dental tip, ’914 app. p.1
ll.13-18.
Turning to the cited art, Bab discloses a flexible-end
irrigation probe consisting of two parts: “a rigid, straight,
or bent, metal or plastic arm with a proximal connection,”
e.g., luer lock, and “a short, flexible, plastic distal end
with a blunt tapered or round tip.” ’831 patent col.2
ll.41-46. Further, Bab discloses that, based on the combi-
nation of materials, the flexible end may be fixed to the
arm by a variety of means, including insert molding. Id.
col.2 ll.46-49, col.3 ll.14-23. The probe is used “for the
delivery of antibiotic/antiseptic or other physiologic and
medically compatible solutions” and the distal end is
“designed for the atraumatic nonsensitizing penetration
into the gingival sulcus/periodontal pockets.” Id. col.2
ll.51-60. Pond repeatedly argues that Bab does not an-
ticipate the ’914 application because Bab discloses two
separate parts that are joined together and cannot dis-
close a “unitary, one-piece construction.” To the contrary,
Bab recites a plastic distal end that may be fixed to a
plastic arm using insert molding. See id. col.3 ll.5-23.
The examiner and the Board discerned no structural
difference between Bab and the claimed invention of the
’914 application. Figure 2 of the ’914 application illus-
trates a front perspective view of the claimed invention.
IN RE POND 8
According to the specification the “unitary, one-piece
construction” is made by “integrally form[ing]” the rigid
proximal section 102 and flexible distal section 106 using
a molding process and includes “insert molding” as an
example. ’914 app. p.4 ll.1, 15-18; p.6 ll.5-9. Figures
1(a)-(c) of Bab illustrate side views of the claimed device,
where Figures 1(b)-(c) illustrate bent probes. ’831 patent
col.2 ll.24-30.
Bab discloses a dental irrigation probe having a flexible
distal end 1 with a blunt tapered/round tip 2 that is fixed
to a rigid arm 3 and a connection hub 4, where the distal
end can be fixed to the rigid arm by insert molding. Id.
col.2 ll.24-30, 46-48. Further, comparison between the
specifications reveals that Bab describes the claimed
invention in like fashion to the ’914 application. There-
fore the record shows that Bab does describe a “unitary,
one-piece construction.” See ’914 app. p.4 ll.20-22 (“While
the sections [ ] are described as individual sections, they
are nonetheless formed as a single unitary dental tip
100.”). Thus, the record shows that the Board correctly
found that Bab contains all limitations of claims 1-9 of the
’914 application.
For the aforementioned reasons, this court determines
that the Board did not err in either its interpretation of
the contested claim term or anticipation analysis. There-
fore, this court affirms because substantial evidence
9 IN RE POND
supports the Board’s determination that claims 1-9 of the
’914 application are anticipated under 35 U.S.C. § 102(b)
by Bab.
AFFIRMED.