Ex Parte Haworth et al

Patent Trials and Appeals BoardJan 2, 2019

14850279 - (D) (P.T.A.B. Jan. 2, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/850,279 09/10/2015 36844 7590 01/04/2019 Cermak Nakajima & McGowan LLP 127 S. Peyton Street, Suite 200 ALEXANDRIA, VA 22314 FIRST NAMED INVENTOR Randal Haworth 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 067-007Cl 2243 EXAMINER PATEL, TARLA R ART UNIT PAPER NUMBER 3786 NOTIFICATION DATE DELIVERY MODE 01/04/2019 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): CGOODE@cnmiplaw.COM IP@cnmiplaw.com ACERMAK@cnmiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RANDAL HA WORTH and CORBETT W. STONE 1 Appeal2018-003418 Application 14/850,279 Technology Center 3700 Before MICHELLE R. OSINSKI, JILL D. HILL, and JEREMY M. PLENZLER, Administrative Patent Judges. OSINSKI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. Â§ 134(a) from the Examiner's decision rejecting claims 1-3. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. 1 Randal Haworth ("Appellant") is the Applicant as provided in 37 C.F.R. Â§ 1.46 and is identified as the real party in interest. Appeal Br. 3. Appeal2018-003418 Application 14/850,279 THE CLAIMED SUBJECT MATTER Claim 1, the sole independent claim on appeal, is reproduced below. 1. A method for opening a trachea of a patient, the method compnsmg: hyperextending a neck of a patient; and displacing a mandible of the patient anteriorly. EVIDENCE The Examiner relied on the following evidence in rejecting the claims on appeal: Lanier T aimoorazy us 5,524,639 US 7,055,524 B 1 THE REJECTIONS June 11, 1996 June 6, 2006 I. Claims 1-3 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Lanier. Final Act. 2-3. II. Claims 1-3 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Taimoorazy. Id. at 3. OPINION Rejection I The Examiner finds that Lanier et al. explicitly does not disclose a method[], however it would have been obvious to one having skill in art to use the device of Lanier et al. for opening a trachea of a patient, comprising hyperextending a neck of a patient[ ](see figures 1- 2) and displacing a mandible of the patient anteriorly (by means of element 62); base having a pair of upstanding arm ( 68) with free ends, two jaw pads (both[ ]72) and two adjustment mechanisms (30,[ ]34), a jaw pad mounted to each arm free end via one adjustment mechanism (see figures 1-2) and a neck pad (74) positioned on the base (10) and between two jaw pads; wherein hyperextending with said jaw thrust device and 2 Appeal2018-003418 Application 14/850,279 displacing with said jaw thrust device (see figures 1-2) and positioning the neck of patient on the neck support ( see figures 1-2). Final Act. 2-3. The Examiner clarifies that it is the Examiner's position that "when the device[] of Lanier ... push[ es] against the posterior portion of a patient's mandible, it also hyperextends the neck by lifting the chin up and opening the airways to improve the patient's airways"2 or that an "individual using [a] hand to push[]/displac[e] a mandible of the patient anteriorly ... hyperextend[s] a neck of a patient by doing so." Final Act. 4; Ans. 4. The Examiner relies on Appellant's definition of "hyperextension" as "to overextend or to extend a joint or body part beyond its usual limit of . " A 4 mot10n. ns. . The Examiner and Appellant appear to agree that "hyperextend" means "to overextend or to extend a joint or body part beyond its usual limit of motion." Appeal Br. 13 (citing www.thefreedictionary.com); Ans. 4. That is, hyperextending requires some outside force to act upon the neck to force extension beyond its normal limit of motion, not simply that the head is tilted backward. The Examiner and Appellant, however, disagree about whether pushing against the posterior portion of a patient's mandible ( or lifting the chin upward/forward) with Lanier' s device will result in extension of a patient's neck beyond its usual limit of motion. Significantly, Appellant has provided a Declaration under 37 C.F.R. Â§ 1.132 of Dr. Terry D. Krekorian ("Krekorian Deel.") stating that "[i]t is not true that anterior motion of the patient mandible will 'lift the chin of user away from upper body and will hyperextend the neck of user."' Krekorian Deel. ,r 4 ( quoting 2 The Examiner does not explain otherwise how Lanier's device causes hyperextension of a patient's neck. Final Act. 2 (citing Lanier, Figs. 1-2). 3 Appeal2018-003418 Application 14/850,279 Final Act. 2, 6). The declaration states that Lanier' s device "move[ s] the patient's jaw along an anterior-posterior axis" and is "incapable of hyperextending the patient's neck and [is] likely to instead flex the patient's neck." Id. The Examiner responds only that "the device of Lanier ... when used will obviously overextend [the] body part which is [the] neck beyond its usual limit by lifting the chin upward/forward and opening the airways to improve the patient's airways." Ans. 4. Even assuming that use of Lanier's device causes movement of a patient's neck that is different than otherwise would occur usually, we are not persuaded that the Examiner has established by a preponderance of the evidence that pushing against the posterior portion of a patient's mandible ( or lifting the chin upward/forward) with Lanier' s device will result in extension of a patient's neck beyond its usual limit of motion in light of Appellant's supporting declaration evidence that such movement causes flexion, which is the opposite of extension. See Appeal Br. 14 ("in the context of the human neck, those of skill in the art understand that hyperextending the neck includes moving the head backwards (posteriorly) relative to the shoulders and back, .. , while flexion, and thus hyperflexion, includes the opposite motion as compared with the head's normal position, e.g., moving one's head towards one's chest"); Krekorian Deel. ,r 4. As such, the Examiner's conclusion of obviousness of the subject matter of claim 1 is based on an erroneous finding as to the scope and content of Lanier. To the extent the Examiner's rejection may be predicated alternatively, not on Lanier's device hyperextending the neck, but on the obviousness of an individual using a hand to displace a mandible of a patient and hyperextend a neck of a patient by doing so, the Examiner has not 4 Appeal2018-003418 Application 14/850,279 articulated a reason having rational underpinnings that would have led one of ordinary skill in the art to do so. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) ("[R]ejections on obviousness grounds [require] some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.") (cited with approval in KSR Int 'l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)). We agree with Appellant that "[t]he only statement of motivation supplied [is] ... 'for opening a trachea of a patient,'" whereas "[t]he jaw thrust maneuver already performs that function with respect to the position of the patient's jaw and tongue." Appeal Br. 21. Without an articulated reasoning based on rational underpinnings for leading one of ordinary skill in the art to hyperextend a neck of a patient, the Examiner's alternative rejection appears to be the result of impermissible hindsight construction. See id. at 21-22. For the foregoing reasons, we find that the Examiner erred in concluding that the subject matter of claim 1 is rendered obvious by Lanier. We do not sustain the rejection of claim 1, or claims 2 and 3 depending therefrom, under 35 U.S.C. Â§ 103 as unpatentable over Lanier. Rejection II The Examiner finds that Taimoorazy explicitly does not disclose a method[], however it would have been obvious to one having skill in art to use the device of ref B for opening a trachea of a patient, comprising hyperextending a neck of a patient (see figures 1-5) and displacing a mandible of the patient anteriorly (by means of element 50); base having a pair of upstanding arm (18) with free ends, two jaw pads (both[ ]50) and two adjustment mechanisms (54), a jaw pad mounted to each arm free end via one adjustment mechanism (see figures 1-5) and a neck pad (19) positioned on 5 Appeal2018-003418 Application 14/850,279 the base (12) and between two jaw pads; wherein hyperextending with said jaw thrust device and displacing with said jaw thrust device ( see figure 5) and positioning the neck of patient on the neck support (see figures 1-5). Final Act. 3. The Examiner clarifies that it is the Examiner's position that "when the device[] of ... Taimoorazy ... push[ es] against the posterior portion of a patient's mandible, it also hyperextends the neck by lifting the chin up and opening the airways to improve the patient's airways" 3 or that an "individual using [a] hand to push[]/displac[e] a mandible of the patient anteriorly ... hyperextend[s] a neck of a patient by doing so." Final Act. 4. The Examiner again relies on Appellant's definition of "hyperextension" as "to overextend or to extend a joint or body part beyond its usual limit of motion." Ans. 4. Again, the Examiner and Appellant disagree about whether pushing against the posterior portion of a patient's mandible ( or lifting the chin upward/forward) with Taimoorazy' s device will result in extension of a patient's neck beyond its usual limit of motion. Appellant relies on the same Krekorian Declaration described above in connection with Rejection I. The Examiner responds only that "the device of. .. Taimoorazy when used will obviously overextend body part which is neck beyond its usual limit by lifting the chin upward/forward and opening the airways to improve the patient's airways." Ans. 4. Even assuming that use of Taimoorazy' s device causes movement of a patient's neck that is different than otherwise would occur usually, we are not persuaded that the Examiner has established by a preponderance of the 3 The Examiner does not explain otherwise how Taimoorazy's device causes hyperextension of a patient's neck. Final Act. 3 ( citing Taimoorazy, Figs. 1-5). 6 Appeal2018-003418 Application 14/850,279 evidence that pushing against the posterior portion of a patient's mandible ( or lifting the chin upward/forward) with Taimoorazy' s device will result in extension of a patient's neck beyond its usual limit of motion in light of Appellant's supporting declaration evidence that such movement causes flexion, which is the opposite of extension. Krekorian Deel. ,r 4. As such, the Examiner's conclusion of obviousness of the subject matter of claim 1 is based on an erroneous finding as to the scope and content of Taimoorazy. To the extent the Examiner's rejection may be predicated alternatively, not on Taimoorazy's device hyperextending the neck, but on the obviousness of an individual using a hand to displace a mandible of a patient and hyperextend a neck of a patient by doing so, the Examiner has not articulated a reason having rational underpinnings that would have led one of ordinary skill in the art to do so. For the same reasons as described above in connection with Rejection I, we agree with Appellant that the Examiner's alternative rejection appears to be the result of impermissible hindsight construction. See Appeal Br. 23. For the foregoing reasons, we find that the Examiner erred in concluding that the subject matter of claim 1 is rendered obvious by Taimoorazy. We do not sustain the rejection of claim 1, or claims 2 and 3 depending therefrom, under 35 U.S.C. Â§ 103 as unpatentable over Taimoorazy. DECISION The Examiner's decision to reject claims 1-3 under 35 U.S.C. Â§ 103(a) as unpatentable over Lanier is reversed. 7 Appeal2018-003418 Application 14/850,279 The Examiner's decision to reject claims 1-3 under 35 U.S.C. Â§ 103(a) as unpatentable over Taimoorazy is reversed. REVERSED 8