Ex Parte Ciardullo

Patent Trial and Appeal Board

Dec 28, 2017

12803244 (P.T.A.B. Dec. 28, 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.
33196-2000 9006
EXAMINER
NIA, ALIREZA
ART UNIT PAPER NUMBER
3772
MAIL DATE DELIVERY MODE
12/803,244 06/22/2010
7590
Jean-Paul Ciardullo
3245 Tareco Drive
Los Angeles, CA 90068
Jean-Paul Ciardullo
12/28/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEAN-PAUL CIARDULLO
Appeal 2017-002537
Application 12/803,244
Technology Center 3700
Before JAMES P. CALVE, WILLIAM A. CAPP and
SEAN P. O’HANLON, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 25, 29—31, 35, 39, 41, 42, 47, 48, and 53.1 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Claims 34 and 46 have been withdrawn. Appeal Br., Claims App.
Appeal 2017-002537
Application 12/803,244
THE INVENTION
Appellant’s invention relates to methods and devices for alleviating
sleep apnea. Spec. 1. Claim 25 is illustrative of the subject matter on appeal
and is reproduced below with the language in dispute highlighted.
25. A device for urging a person’s lower jaw forward, said
device comprising:
(a) a jaw strap dimensioned for crossing under
said lower jaw from the middle left side of said
lower jaw to the middle right side of said lower
jaw, wherein said jaw strap is constructed of a
flexible material that visibly deforms when worn
by said person to automatically conform to the
shape of said lower jaw,
(b) a head strap dimensioned for extending
around the back of said person’s head,
(c) a face strap dimensioned for crossing said
person’s face at a location above said lower jaw
and below said person’s forehead,
(d) each of said straps connected to the other
two of said straps, and
(e) wherein said straps are capable of being
held in tension when said device is worn to cause
said face strap to pull on said jaw strap, and
wherein the opening between said jaw strap
and said head strap is capable of being sized such
that said jaw strap will not be able to move past
said person’s chin when said tension is applied,
thereby causing said jaw strap to pull forwardly on
said lower jaw.
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Application 12/803,244
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Pulford
Smith
Bush
Matsuda
US 512,324
US 5,277,700
US 6,553,569 B2
US 6,918,394 B2
Jan. 9, 1894
Jan 11, 1994
Apr. 29, 2003
July 19, 2005
The following rejections are before us for review:
1. Claims 25, 29—31, 35, 39, 41, 42, 47, 48, and 53 are rejected under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
2. Claims 25, 29—31, 35, 39, 41, 42, 47, 48, and 53 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 the
applicant regards as the invention.
3. Claims 25, 31, 35, and 42 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Matsuda.
4. Claim 25 is rejected under 35 U.S.C. § 102(b) as being anticipated
by Pulford.
5. Claim 29 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pulford and Bush.
6. Claims 30, 39, and 41 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Matsuda and Bush.
7. Claim 48 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Matsuda and Smith.
8. Claims 47 and 53 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Matsuda and Pulford.
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Application 12/803,244
OPINION
Written Description
Claims 25 and 35
Claims 25 and 35 are independent claims and each contains a
limitation directed to a strap opening that is capable of being sized such that
the jaw strap will not be able to move past a person’s chin. Claims App.
Appellant argues these two claims together. Appeal Br. 13—16.
The Examiner determines that the following limitation from claim 25
lacks written description support in the Specification:
the opening between said jaw strap and said head strap is sized
such that said jaw strap will not be able to move past said
person's chin when tension is applied to said jaw strap by said
face strap.
Final Action 3—A. Appellant argues that the Examiner’s rejection is not only
incorrect, but “defies basic logic.” Appeal Br. 13. Appellant argues that the
concept of being sized such that the jaw strap cannot move past the person’s
chin is a “necessary inherent property of the invention.” Id. Appellant
argues that it is “clear as day” from looking at the drawings. Id.', Reply
Br. 3. Appellant directs our attention to paragraph 12 of the Specification
where it states:
In one embodiment, the device for urging the jaw forwardly
includes a jaw strap and head strap joined to form a single
closed loop to which a face strap is attached, preferably made of
soft elastic material. The face strap extends across the front of
the head of the wearer and is attached to the single closed loop
to pull it forwardly and thereby hold the jaw in a forward
position.
Appeal Br. 13; Spec. 4.
The specification of a patent as filed must “contain a written
description of the invention.” 35 U.S.C. § 112. A specification has an
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Application 12/803,244
adequate written description when it “reasonably conveys to those skilled in
the art that the inventor had possession of the claimed subject matter as of
the filing date” of the patent. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d
1336, 1351 (Fed. Cir. 2010) (en banc). “[T]he test requires an objective
inquiry into the four comers of the specification from the perspective of a
person of ordinary skill in the art. . . . [to] show that the inventor actually
invented the invention claimed.” Id.
However, when a written description cannot be found in the
specification, as filed, the only thing the PTO can reasonably be expected to
do is to point out its non-existence. Hyatt v. Dudas, 492 F.3d 1365, 1370
(Fed. Cir. 2007); In re Smith, 2008 WL 4998624 (BPAI, Nov. 24, 2008).
Appellant does not direct our attention to any explicit disclosure in the
Specification that demonstrates possession of the claimed subject matter.
Indeed, Appellant discloses that the straps of the invention are “preferably
elastic.” Spec. 3, 5, 6, 7, 10.
It should be understood that, by the use of the term “elastic” for
any strap, it is intended to include straps which have woven
cloth or other inelastic sections combined with elastic sections
so that the composite strap can be stretched in length and will
return to its original condition when released.
Id. at 11. A person of ordinary skill in the art would understand that an
elastic jaw strap might be capable of stretching so that it can be pulled past a
person’s chin. Contrary to Appellant’s arguments, the drawings are
susceptible to an interpretation of the invention which would allow the jaw
strap to stretch past a person’s chin.2 Therefore, we are not able to agree
2 Indeed, Appellant discloses coating 22 to increase the coefficient of
friction of jaw strap 21 to resist slippage. Id.
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Application 12/803,244
with Appellant that the claimed subject matter is “inherent” in the
Specification and drawings.
The Examiner’s determination that the limitation directed to a jaw
strap that cannot move past a person’s chin due to the opening size lacks
written description in Appellant’s disclosure is amply supported by the
record before us. Accordingly, we sustain the Examiner’s Section 112, first
paragraph, lack of written description rejection of claims 25 and 35.
Claims 29—31, 39, 41, 42, 47, 48, and 53
These claims depend from either claim 25 or claim 35. Claims App.
These claims suffer from the same infirmity that was identified above with
respect to claims 25 and 35. Thus, for essentially the same reason expressed
above in connection with claims 25 and 35, we sustain the rejection of 29-
31,39,41,42, 47,48, and 53.
Indefiniteness
Inasmuch as we sustain the Section 112, first paragraph, written
description rejection of claims 25, 29-31, 35, 39, 41, 42, 47, 48, and 53, we
do not reach the Examiner’s alternative ground of rejection under 35 U.S.C.
§ 112, second paragraph. See 37 C.F.R. § 41.50(a)(1) (“The affirmance of
the rejection of a claim on any of the grounds specified constitutes a general
affirmance of the decision of the examiner on that claim, except as to any
ground specifically reversed.”).
Prior Art Rejections
Inasmuch as we sustain the Section 112, first paragraph, written
description rejection of claims 25, 29-31, 35, 39, 41, 42, 47, 48, and 53, we
do not reach the Examiner’s alternative grounds of rejection under 35 U.S.C.
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§§ 102 and 103. 37 C.F.R. § 41.50(a)(1). There is no need to address the
novelty or obviousness of claims that contain a limitation not described by
the specification, as filed. See Smith, supra.
DECISION
The decision of the Examiner to reject claims 25, 29—31, 35, 39, 41,
42, 47, 48, and 53 is 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
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