Ex Parte Gillis et al

Patent Trial and Appeal BoardOct 16, 2012

11592452 (P.T.A.B. Oct. 16, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte EDWARD M. GILLIS, RYAN P. BOUCHER, SCOTT A. McGILL, and JOE PARASCHAC ____________________ Appeal 2010-005559 Application 11/592,452 Technology Center 3700 ____________________ Before: JOHN C. KERINS, WILLIAM V. SAINDON, and NEIL T. POWELL, Administrative Patent Judges. SAINDON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-005559 Application 11/592,452 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-14. We have jurisdiction under 35 U.S.C. § 6(b). The Claimed Subject Matter Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. An implant device comprising: a carrier sized and configured for implantation in a tongue, the carrier including a ferromagnetic structure sized and configured to occupy only one lateral side of the tongue when implanted, the ferromagnetic structure adapted to magnetically interact with a magnetized material placed in a desired relationship with the tongue to stabilize a preferred tongue orientation. Rejections I. Claims 1, 2, 4-7, and 9-14 are rejected under 35 U.S.C. § 102(b) as anticipated by Karell (US 6,408,851 B1, iss. Jun. 25, 2002). II. Claims 3 and 8 are rejected under § 103(a) as unpatentable over Karell. SUMMARY OF DECISION We AFFIRM-IN-PART. Appeal 2010-005559 Application 11/592,452 3 OPINION Claims 1, 9, and 14 are independent. Appellants argue claims 1, 2, and 4-7 as a first group (App. Br. 5-7); we select claim 1 as representative. Appellants argue claims 9-13 and 14 separately and indicate that the same arguments presented for claim 1 apply. App. Br. 8. Because the scope of claims 9 and 14 differ from claim 1, we address these claims separately. The structural components of claim 1 include a carrier having a ferromagnetic structure, both sized and configured for implantation in a lateral side of a tongue. The Examiner found that Karell describes a carrier member including a ferromagnetic structure 72 sized and configured to occupy one lateral side (the “top lateral side”) of the tongue. Ans. 3; see Karell, fig. 10. Turning to figure 10, we find the carrier/ferromagnetic structure of Karell depicted as a tongue piercing. Appellants argue that the structure in Karell is not implanted in the tongue and is not on a lateral side of the tongue. App. Br. 6-7. Appellants’ arguments are not commensurate in scope with claim 1. Claim 1 does not require a carrier implanted wholly inside a tongue nor a carrier wholly implanted in a particular side of the tongue. Claim 1 merely requires a structure capable of such placements. Appellants do not set forth any persuasive reasoning as to why the Examiner’s finding that the Karell structure anticipates the claimed structure is in error. Accordingly, we sustain the Examiner’s rejection of claims 1, 2, and 4-7. Appellants separately address claim 9 but rely on the unpersuasive arguments set forth for claim 1. App. Br. 8. As such, we sustain the Examiner’s rejection of claims 9-13. Appeal 2010-005559 Application 11/592,452 4 Appellants separately address claim 14 and rely on the argument of claim 1 that the device of Karell is not configured to occupy only one lateral side of the tongue when implanted. App. Br. 8. Claim 14, in particular, requires a step of “placing the implant device … [on] one lateral side of the tongue.” We agree with Appellants that one of ordinary skill in the art would consider the lateral sides of the tongue to constitute either side of the raphé (midline) of the tongue, not the top and bottom sides.1 The Examiner found that Karell describes an implant having a ferromagnetic structure on the top side of the tongue. Ans. 5. In view of the ordinary meaning of the term “lateral,” the Examiner’s finding is in error. The Examiner makes no findings regarding placing the structure of Karell on a lateral side of the tongue. As such, we do not sustain the rejection of claim 14. Appellants argue the rejection of claims 3 and 8 as a group (App. Br. 10-11); we select claim 3 as representative. Claim 3 requires the implant to have a rudder assembly. The Examiner found that Karell describes a rudder assembly 34. Ans. 4. Appellants argue that element 34 (a restraint bar) is not a rudder but fail to cogently explain why this structure is not a rudder. App. Br. 10. As best gleaned from the Specification, it appears Appellants consider a rudder to be a structure for pushing tissue. See Spec., pp. 74-75. Given that element 34 is intended to restrain the device by fastening it to the tongue (Karell, col. 4, ll. 43-53), it would push tissue in order for it to perform its retaining function. Accordingly, we are not apprised of error in the Examiner’s finding that Karell describes a rudder. 1 See, e.g., “lateral” “of a body part: lying at or extending toward the right or left side.” Webster’s Third New International Dictionary (1993) (lionreference.chadwyck.com) (last visited Oct. 9, 2012). Appeal 2010-005559 Application 11/592,452 5 Appellants also argue that claim 3 requires the rudder to be implanted in the tongue. App. Br. 10. However, even if “implant” were limited to mean “fully enclosed within the body,” which it is not, claim 3 does not require the device to be actually implanted. In other words, Appellants’ argument is not commensurate in scope with claim 3. In view of the above, we are not apprised of error in the Examiner’s rejection of claims 3 and 8. DECISION We affirm the Examiner’s decision regarding claims 1-13. We reverse the Examiner’s decision regarding claim 14. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART Klh