Ex Parte ÀWENGEN et al

Patent Trial and Appeal Board

Aug 14, 2017

13955321 (P.T.A.B. Aug. 14, 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.
13/955,321 07/31/2013 Daniel Felix AWENGEN 5171 1038
278 7590 08/16/2017
MICHAEL J STRIKER EXAMINER
103 EAST NECK ROAD
HUNTINGTON, NY 11743
BISSING, DANIEL J
ART UNIT PAPER NUMBER
3738
NOTIFICATION DATE DELIVERY MODE
08/16/2017 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):
striker@strikerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL FELIX AWENGEN and
UWE STEINHARDT1
Appeal 2016-004287
Application 13/955,321
Technology Center 3700
Before DONALD E. ADAMS, ERIC B. GRIMES, and TIMOTHY G.
MAJORS, Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134 involving claims to a
rhinological implant, which have been rejected as obvious. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
“In functional and cosmetic nasal surgery, the objective in many cases
is to straighten the septum in order to improve the air flow within the nasal
1 Appellants identify the Real Party in Interest as Heinz Kurz GmbH
Medizintechnik. (Br. 3.)
Appeal 2016-004287
Application 13/955,321
passage or, to simply improve the appearance of the nose.” (Spec. 2:22 to
3:1.)
Claims 1—4 and 7—20 are on appeal.2 Claim 1 is illustrative and reads
as follows:
1. A rhinological implant for straightening a nasal septum
(S) is configured to be fastened on both sides of the septum (S),
separating left and right sides of a nasal cavity of a human nose,
on an outer surface of the septum (S), in the left and the right
sides of the nasal cavity, and is configured so that before
implantation, the implant is folded up from an initially flat
blank into an implantable three-dimensional shape, the implant
comprising:
a central back section that is flat or curved upwardly
from a horizontal plane, angled at a splaying angle (to) >100° or
has a shape of a barrel having a radius of curvature (r) >0.5 mm
from the horizontal plane, wherein in an implanted state the
central back section wraps around a free lower edge of the
septum, and
two side sections provided on either side of the central
back section that extend symmetrically with respect to the
central back section, and are angled upwardly at an angle (cp) of
approximately 90° relative to the central back section, wherein
the two side sections are configured to bear via the entire
surface against two diametrically opposed outer surfaces of the
septum (S) in the implanted state.
2 Claims 6 and 21 are also pending; the Examiner indicates that they are
allowable. (Ans. 4.)
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Application 13/955,321
The claims stand rejected as follows:
Claims 1, 2, 4, 8, 11, 12, and 17 under 35 U.S.C. § 103(a) as obvious
based on Ersek3 and Hwang4 (Final Action5 5);
Claim 3 under 35 U.S.C. § 103(a) as obvious based on Ersek, Hwang,
and Guastella6 (Final Action 8);
Claim 7 under 35 U.S.C. § 103(a) as obvious based on Ersek, Hwang,
and Gonzales7 (Final Action 10);
Claims 9, 13—16, 19, and 20 under 35 U.S.C. § 103(a) as obvious
based on Ersek, Hwang, and aWengen8 (Final Action 11); and
Claims 10 and 18 under 35 U.S.C. § 103(a) as obvious based on
Ersek, Hwang, and Ellis9 (Final Action 15).
DISCUSSION
The Examiner has rejected claims 1, 2, 4, 8, 11, 12, and 17 as obvious
based on Ersek and Hwang. The Examiner has rejected claims 3, 7, 9, 10,
13—16, and 18—20 as obvious based on Ersek and Hwang, combined with
one of Guastella, Gonzales, aWengen, or Ellis. Because Appellants’
arguments are limited to the combination of Ersek and Hwang, the same
issue is dispositive for all of the rejections. (See Br. 17, 21—23.)
3 US 4,592,357, issued June 3, 1986
4 Hwang et al., Mapping thickness of nasal septal cartilage,
21(1) J. Craniofac. Surg. 243-244 (2010).
5 Office Action mailed April 17, 2015.
6 US 5,931,799, issued Aug. 3, 1999
7 US 2011/0251634 Al, published Oct. 13, 2011
8 US 2007/0270899 Al, published Nov. 22, 2007
9 US 7,695,501 B2, issued Apr. 13, 2010
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Application 13/955,321
The Examiner finds that Ersek discloses a rhinological implant
meeting all of the limitations of claim 1 except for: (a) the central back
section being angled at a splaying angle (to) >100°; (b) the central back
section having the shape of a barrel having a radius of curvature of (r) >0.5
mm from the horizontal plane; and (c) the two side sections being
configured to bear via the entire surface against the septum in the implanted
state. (Final Action 5—6.)
The Examiner finds that Hwang teaches that the “thickness of the
septum at the base is between 2.19 and 3.03 mm” and concludes that a
radius of curvature greater than 0.5 mm would have been obvious in order
for Ersek’s device to fit around the septum of most patients. (Id. at 6.)
Regarding the requirement that the two side sections are configured to
bear via their entire surfaces against the septum when implanted, the
Examiner finds that “the two side sections (30) [of Ersek’s device] are
capable of bearing via the entire surface thereof against the two
diametrically opposed outer surfaces of the septum.” (Id. at 6—7.) In
response to Appellants’ arguments, the Examiner makes clear that “only
element 21 (shown in Fig. 4) of Ersek is being used to reject Appellant’s
claims. The side sections of Ersek (elements 26, 27) are fully capable of
bearing the entirety of their inward facing surfaces against the diametrically
opposed surfaces a user’s septum when implanted.” (Ans. 3^4.10)
10 Elements 30 of Ersek’s device are optional reinforcing ribs of struts 26
and 27. (Ersek 2:61—68.) Thus, both the rejection and the response to
arguments are referring to the same struts of Ersek’s device.
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Application 13/955,321
We agree with the Examiner that claim 1 would have been obvious to
a person of ordinary skill in the art based on Ersek and Hwang. Ersek
discloses “a splint which can be inserted into the nose to apply moderate
pressure to both sides of the septum.” (Ersek 1:38-40.) “In one
embodiment the spli[n]t comprises a pair of generally rigid plate
members. ... In that embodiment, a clip member may optionally be used to
maintain the two plate members in a desired alignment.” {Id. at 1:43—51.)
Ersek’s Figure 1 is reproduced below:
Figure 1 shows a perspective view of Ersek’s splint. {Id. at 2:25—26.)
The splint “comprise[s] a clip member 21 and a pair of plate members 22
and 23 connected to the clip member.” {Id. at 2:58—60.)
Ersek’s Figure 4 is reproduced below:
Figure 4 shows a perspective view of clip member 21. {Id. at 2:29-
31.) “Clip member 21 is formed of a strip of material such as aluminum
having a central loop 25 from which a pair of parallel struts 26 and 27
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Application 13/955,321
extend in the same direction, the stmts being spaced by less than the
diameter of the loop.” {Id. at 2:61—65.) “Loop 25 is large enough to
encircle the patient’s columella.” {Id. at 3:20-21.)
Hwang describes a study “to elucidate the thickness of the septal
cartilage.” (Hwang, abstract.) Hwang discloses that “[t]he thickness of the
septal cartilage varied according to the site. . . . The thickest area was the
septal base (0% of the septal height) anterior to the vomer (2.19—3.03 mm).”
{Id.)
In view of these teachings, it would have been obvious to make loop
25 of Ersek’s device with a diameter of 2.19-3.03 mm, because a loop of
that size would be large enough to fit around the septal base and Ersek
teaches that loop 25 should be large enough to fit around the columella (the
septal base; see Ersek’s Figure 6). Because the radius of a circle is one-half
its diameter, a diameter of 2.19—3.03 mm corresponds to a radius of 1.095—
1.515, which meets the limitation of claim 1 of a radius of curvature >0.5
mm.
Appellants argue that, “[a]s disclosed in Figs. 1-7, Ersek cannot be
said to start from an initial flat blank that is folded up to an implantable 3-D
shape, found in an implanted state, as claimed.” (Br. 13.)
Appellants, however, provide no evidence or reasoning to support this
conclusion, and in our view the evidence supports the Examiner’s finding
that Ersek’s clip 21 “is configured so that before implantation, the implant is
folded up from an initially flat blank into an implantable three-dimensional
shape (see Fig. 4).” (Final Action 5.) Specifically, Ersek’s Figure 4 shows
that clip 21 is a single piece of metal bent into the desired shape. Appellants
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Application 13/955,321
have not explained why that desired shape could not be achieved by starting
with a flat piece of metal and folding it around a mandrel to achieve the
three-dimensional shape shown in Ersek’s Figure 4.
Appellants also argue that loop 25 of clip 21 cannot “be said to be
slightly curved as it follows the outer circumference of a circle or sphere; nor
can the central loop 25 be said to follow a shape of a barrel with a radius of
curvature of r >0.5 mm.” (Br. 14.)
These arguments are also unpersuasive. First, claim 1 includes no
claim language requiring the central back section to be “slightly curved.”
Second, while Ersek does not specify the dimensions of loop 25, a radius of
curvature >0.5 mm would have been obvious based on the combined
teachings of Ersek and Hwang for the reasons discussed above.
Appellants also argue that “the parallel struts 26, 27 of Ersek’s clip
member 21 do not come into contact with the septum parts when septal
splint 20 is implanted as designed.” (Br. 14.) This argument is unpersuasive
because, as pointed out by the Examiner, Ersek’s clip 21 is capable of use in
the recited fashion (Ans. 3—4), and is therefore “configured to bear via the
entire surface against two diametrically opposed outer surfaces of the
septum (S) in the implanted state,” as recited in claim 1.
Appellants argue that, while they
agree that implanting only clip 21 (Fig. 4), without plates 22, 23
(Fig. 5), might allow the inner surfaces of struts 26, 27 to bear
against [“a portion of’] two diametrically opposed outer surfaces
of the septum (S), doing so still would not realize side sections
that bear against [“all of the”] two diametrically opposed outer
surfaces of the septum (S), as claimed.
(Br. 14, bracketed material in original.)
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This argument is also unpersuasive. Claim 1 states that “the two side
sections are configured to bear via the entire surface against two
diametrically opposed outer surfaces of the septum (S) in the implanted
state.” (Claim 1.) The claim does not require that the side sections are
configured to bear against the entire surface of the septum, only that the
“side sections are configured to bear via the entire surface”—that is, to bear
via the entire surfaces of the side sections—against opposite sides of the
septum. Appellants’ argument is based on a limitation that is not in claim 1,
and is therefore unpersuasive.
Appellants argue that “the skilled artisan would not have found it
obvious to modify the Ersek septal splint 20 to utilize only clip 21 and struts
26, 27, without opposing plates 22, 23 riveted thereto.” (Br. 15.)
However, claim 1 is directed to a product, not a specific method of
using that product. Ersek discloses that clip 21 is made as a separate product
from the plates of its finished device. Clip 21 meets most of the limitations
of claim 1, and the dimensions of loop 25 would have been obvious based on
Ersek and Hwang. The product made obvious by the references therefore
meets all of the limitations of claim 1 on appeal. See Hewlett-Packard Co.
v. Bausch &Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990) (“[Apparatus
claims cover what a device is, not what a device does.”).
Appellants argue that, even if Hwang suggests modifying Ersek to
include the radius of curvature recited in claim 1, “Ersek so modified still
would not include the 2nd ‘missing’ limitation: ‘that in the implanted state
the two side sections bear via the entire surface thereof against the two outer
surfaces of the septum (S)’, as claimed.” (Br. 15) Appellants, however,
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Application 13/955,321
provide no evidence or reasoning to support this conclusion, which we
disagree with for the reasons discussed above. The argument is therefore
unpersuasive.
Finally, Appellants argue that “Hwang is a document memorializing a
study of cartilage sizes on Korean cadavers. . . . There is no reason for the
skilled artisan to have looked to Hwang to modify Ersek’s septal splint, still
less to do so and realize the invention as claimed.” (Br. 15—16.)
This argument is unpersuasive because, as discussed above, Ersek
teaches that loop 25 should be large enough to encircle the base of the
septum, and Hwang teaches that encircling the base of the septum would
require loop 25 to have a diameter of 2.19 to 3.03 mm, corresponding to a
radius of greater than 0.5 mm. The cited references therefore would have
made obvious the disputed limitation.
We affirm the rejection of claim 1 under 35 U.S.C. § 103(a) based on
Ersek and Hwang. Claims 2, 4, 8, 11, 12, and 17 have not been argued
separately and therefore fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
With regard to the rejections of claims 3, 7, 9, 10, 13—16, and 18—20
as obvious based on Ersek and Hwang, combined with one of Guastella,
Gonzales, aWengen, or Ellis, Appellants argue only that these claims depend
from claim 1 and are patentable for the same reasons as claim 1. (Br. 17,
21—23.) For the reasons discussed above, we conclude that claim 1 is
unpatentable under § 103(a) based on Ersek and Hwang. Because
Appellants present no arguments to show the separate patentability of claims
3, 7, 9, 10, 13—16, and 18—20, we affirm the rejection of these claims under
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35 U.S.C. § 103(a) based on Ersek and Hwang, combined with one of
Guastella, Gonzales, aWengen, or Ellis for the reasons discussed above.
SUMMARY
We affirm all of the rejections on appeal.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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