CRYOSA, INC

Patent Trials and Appeals Board

Mar 30, 2022

2021004505 (P.T.A.B. Mar. 30, 2022)

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. 15/510,879 03/13/2017 Donald A. GONZALES 13941-701.US0 5978 66854 7590 03/30/2022 SHAY GLENN LLP 2929 CAMPUS DRIVE SUITE 225 SAN MATEO, CA 94403 EXAMINER PREMRAJ, CATHERINE C ART UNIT PAPER NUMBER 3794 NOTIFICATION DATE DELIVERY MODE 03/30/2022 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): info@shayglenn.com shayglenn_pair@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DONALD A. GONZALES and MITCHELL ELLIOTT LEVINSON Appeal 2021-004505 Application 15/510,879 Technology Center 3700 Before STEFAN STAICOVICI, MICHAEL J. FITZPATRICK, and JEREMY M. PLENZLER, Administrative Patent Judges. PLENZLER, 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 1-20 and 29-34. We have jurisdiction under 35 U.S.C. § 6(b). 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 Cryosa, Inc. Appeal Br. 2. Appeal 2021-004505 Application 15/510,879 2 CLAIMED SUBJECT MATTER The claims relate to a heat exchanger. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A heat exchanger for causing cryolysis of adipose tissue of a human tongue, the heat exchanger comprising: a cooling inlet; a cooling outlet; a body having one or more channels for circulating a heat-transfer fluid therein, the one or more channels connecting the cooling inlet and cooling outlet, wherein the body comprises (i) a first region having a first contact surface configured to contact a portion of a dorsal surface of the tongue and (ii) a second region having a second contact surface configured to contact a portion of a base of the tongue, the second region extending from the first region; and a pair of side walls extending from the body and forming a pair of side contact surfaces, wherein the pair of side walls are dimensioned so that they contact the dorsal and lateral surfaces of the tongue in a manner so as to constrict the tongue when the first and second contact surfaces are in contact with the tongue. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Rosen US 2008/0287839 A1 Nov. 20, 2008 Sun US 7,458,932 B2 Dec. 2, 2008 Sanders US 2009/0014012 A1 Jan. 15, 2009 Shantha US 2011/0155143 A1 June 30, 2011 Gonzales US 2012/0197361 A1 Aug. 2, 2012 Appeal 2021-004505 Application 15/510,879 3 REJECTIONS Claims 1, 2, 4-14, 16-18, and 29-34 are rejected under 35 U.S.C. § 103 as being unpatentable over Gonzales and Shantha.2 Claim 3 is rejected under 35 U.S.C. § 103 as being unpatentable over Gonzales, Shantha, and Sun. Claim 15 is rejected under 35 U.S.C. § 103 as being unpatentable over Gonzales, Shantha, and Rosen. Claims 19 and 20 are rejected under 35 U.S.C. § 103 as being unpatentable over Gonzales, Shantha, and Sanders. OPINION Claims 1 and 17 are independent. Claim 1 relates to a heat exchanger. Claim 17 relates to use of a heat exchanger like that recited in claim 1. We reference claim 1 below for simplicity, with the understanding that our discussion applies equally to the features and findings related to claim 17. The Examiner finds that Gonzales teaches most of the features recited in claim 1, including that its “body comprises (i) a first region having a first contact surface configured to contact a portion of the dorsal surface of the tongue (the body of heat exchanger 215 has shaft 230 which depresses the tongue to contact a portion of the dorsal surface of the tongue;[0029]).” Final Act. 3. Appellant responds that “[u]nlike the device and method recited in the instant claims, the Gonzales device does not engage the dorsal surface . . . of the tongue to cool those surfaces, nor does Gonzales constrict 2 Although not referenced in the rejection heading, claim 13 is addressed in the body of the rejection. Final Act. 7-8. Appeal 2021-004505 Application 15/510,879 4 the tongue to reduce blood flow through the tongue during the therapy.” Appeal Br. 3. The Examiner’s Answer does not address directly Appellant’s dispute regarding the finding noted above. The closest the Examiner comes to addressing this dispute is a statement that, generally, “Gonzales discloses that the engagement member of the device may be a number of shapes capable of grasping or pinching anatomical structures associated with OSA []which includes the tongue as a whole as.” Ans. 11. The Examiner’s rejection is unclear as to what actually constitutes the first region of the body that contacts a portion of a dorsal surface of the tongue recited in claim 1. If the Examiner considers shaft 230 as corresponding to the first portion of the body, Appellant correctly notes that “element 230 is not part of the heat exchanger body.” Reply Br. 2. Rather, element 230 is a shaft that serves as a conduit to provide fluid to engagement member 220 in Gonzales. See Gonzales ¶¶ 31, 39, Fig. 3.3 The Examiner offers no explanation as to why one skilled in the art would consider shaft 230 to be part of the body of the heat exchanger in Gonzales, as the Examiner finds. See Final Act. 3 (“body of heat exchanger 215 has a shaft 230”). Moreover, there is no detail as to the structure of shaft 230, or what anatomical structure is contacted by shaft 230. To the extent the Examiner intended to modify the structure of Gonzales based on Shantha’s teachings to arrive at the recited first portion of 3 Reference numeral 230 from Figure 3 does not appear in the description from Gonzales, but the reference to shaft 130 appears to correspond to numeral 230 in Figure 3. See Gonzales ¶ 39. It also appears that reference numeral 210 is mistakenly used in Figure 3 and, should instead, be reference numeral 215. Appeal 2021-004505 Application 15/510,879 5 the base contacting a dorsal surface of the tongue,4 this is not sufficiently clear based on the findings and rationale before us. The Examiner finds that Shantha teaches . . . side walls extending from the body and forming a pair of side contact surfaces (a short skirt 136 and a cap 104, which are a pair of side walls . . . forming a cover of the tip, the sides and free margins of the tongue . . . dimensioned so that they contact the dorsal and lateral surfaces. Final Act. 4. But, as previously noted, the Examiner expressly finds that Gonzales teaches the recited first portion of the body. And the Examiner’s rationale says nothing about modifying the teachings of Gonzales based on any teaching from Shantha related to a body portion contacting the dorsal surface of the tongue. See id. at 4-5 (“It would have been obvious . . . to modify Gonzales to include a pair of side walls . . . as taught by Shantha.”). Based on the record before us, the Examiner’s findings are insufficient for the reasons set forth above. Accordingly, we do not sustain the Examiner’s decision to reject claims 1 and 17, or the rejections of dependent claims 2-16, 18-20, and 29-34, which suffer from similar deficiencies. CONCLUSION The Examiner’s rejections are reversed. 4 The sidewalls recited in claim 1 are recited as elements separate, and in addition to, the body that includes the first portion that contacts the dorsal surface of the tongue. Appeal 2021-004505 Application 15/510,879 6 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4-14, 16-18, 29- 34 103 Gonzales, Shantha 1, 2, 4-14, 16-18, 29- 34 3 103 Gonzales, Shantha, Sun 3 15 103 Gonzales, Shantha, Rosen 15 19, 20 103 Gonzales, Shantha, Sanders 19, 20 Overall Outcome 1-20, 29-34 REVERSED