Ex Parte Muller et al

Patent Trial and Appeal Board

Nov 26, 2012

11848116 (P.T.A.B. Nov. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte ANDREAS MULLER and GERHARD FORSTER
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Appeal 2010-010620
Application 11/848,116
Technology Center 3700
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Before: STEVEN D.A. McCARTHY, JOHN W. MORRISON, and
NEIL T. POWELL, Administrative Patent Judges.

POWELL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Andreas Muller et al. (Appellants) appeal under 35 U.S.C. § 134 from
a rejection of claims 58-66. We have jurisdiction under 35 U.S.C. § 6(b).

Appeal 2010-010620
Application 11/848,116

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The Claimed Subject Matter
Claim 58, reproduced below, is illustrative of the claimed subject
matter:
58. A method of positioning a laryngeal
interface element for interfacing with a laryngeal
structure of a subject, the method comprising:
forming a tunnel through thyroid cartilage
and forming a subperichondral tunnel on an inside
of the thyroid cartilage toward a cricothyroid joint
of the subject to generate an interface insertion
path with respect to vocal cord cartilage of the
subject; and
positioning the interface element relative to
the laryngeal structure of the subject based on the
insertion path.

The Rejections
The Examiner relies upon the following as evidence of
unpatentability:
Goldfarb
Hafer
Zealear
US 5,111,814
US 6,973,346 B2
US 2006/0282127 A1
May 12, 1992
Dec. 6, 2005
Dec. 14, 2006

The Examiner made the following rejections:

Claims 58, 59, and 61-66 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Goldfarb and Zealear.
Claim 60 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Goldfarb, Zealear, and Hafer.1

1 The Examiner had also previously advanced double-patenting rejections,
but he withdrew them in the Answer. Ans. 3.
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ANALYSIS
Rejection of Claims 58, 59, and 61-66
Appellants assert that Goldfarb and Zealear fail to teach or suggest the
limitation in independent claim 58 of “forming a subperichondral tunnel on
an inside of the thyroid cartilage toward a cricothyroid joint.” Br. 14. The
Examiner suggests that Goldfarb’s disclosure would have made it obvious to
form a tunnel through the thyroid cartilage and then through laryngeal tissue
inward of the thyroid cartilage toward the posterior cricoarytenoid muscle
(“PCA muscle”) and, thus, toward the cricothyroid joint. See Ans. 4 and 7-
8. But the Examiner concedes that Goldfarb does not suggest forming any
subperichondral tunnel. Id. at 4. The Examiner finds that “Zealear teaches
forming a subperichondral tunnel.” Id. at 5. The Examiner concludes that
“[i]t would have been obvious to one of ordinary skill in the art at the time
the invention was made to have included the subperichondral tunnel of
Zealear in the laryngeal interface method of Goldfarb.” Id.
But the Examiner does not squarely address Appellants’ correct
observation that Zealear does not suggest a subperichondral tunnel in the
claimed location “on an inside of the thyroid cartilage.” Rather, Zealear
discloses a subperichondral opening (irrespective of whether it constitutes a
“tunnel”) in a location beneath a PCA muscle. Zealear, ¶ 0057. Thus, if one
literally “included the subperichondral tunnel of Zealear in the . . . method of
Goldfarb” as stated by the Examiner, it would not result in the claimed
invention.
It appears that the Examiner relies wholly on Goldfarb as rendering
obvious the claimed location of a subperichondral tunnel. See Id. at 4-5. If
we accept the Examiner’s position that Goldfarb suggests making an
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insertion path through the thyroid cartilage and to the PCA muscle, Goldfarb
still fails to suggest any particular path between the hole in the thyroid
cartilage and the PCA muscle. See Goldfarb, col. 3, ll. 56-61; and col. 4,
ll. 20-41. Even if Goldfarb suggests routing a tunnel somewhere inward of
the thyroid cartilage, it does not suggest routing a subperichondral tunnel in
the specific claimed location “on an inside of the thyroid cartilage.”
Because the Examiner has not squarely addressed Appellants’ correct
observation that Goldfarb and Zealear fail to teach or suggest these claim
features, we cannot sustain the rejection of independent claim 58 or the
rejection of claims 59 and 61-66 depending therefrom.
Rejection of Claim 60
In the rejection of claim 60, which depends from claims 58 and 59,
the Examiner relies on the assertions in the rejection of claim 58 to support
the position that the claim features “forming a subperichondral tunnel on an
inside of the thyroid cartilage toward a cricothyroid joint” would have been
obvious at the time of the invention. See Ans. 5-6 and 11. Nothing in the
additional reference, Hafer, cures the above-discussed deficiency in the
underlying rejection of claims 58 and 59. Accordingly, we cannot sustain
the rejection of claim 60.

DECISION
We reverse the Examiner’s decision regarding claims 58-66.

REVERSED

mls