Ex Parte Tschopp et al

Patent Trial and Appeal BoardMar 8, 2019

12632005 (P.T.A.B. Mar. 8, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/632,005 12/07/2009 26936 7590 03/12/2019 SHOEMAKER AND MATT ARE, LTD c/o DA VIS & BUJOLD, P.L.L.C. 112 PLEASANT STREET CONCORD, NH 03301 FIRST NAMED INVENTOR Kurt Tschopp 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. HEPPP90AUS 3006 EXAMINER NGUYEN,CAMTUTRAN ART UNIT PAPER NUMBER 3786 NOTIFICATION DATE DELIVERY MODE 03/12/2019 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): USPTO@SHOMAT.COM patent@nhpat.com tclark@nhpat.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KURT TSCHOPP and MICHAEL BREITENSTEIN Appeal2017-005161 Application 12/632,005 1 Technology Center 3700 Before LINDA E. HORNER, LISA M. GUIJT, and LEE L. STEPINA, Administrative Patent Judges. HORNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. Â§ 134(a) of the Examiner's rejections of claims 4, 5, 7-9, 13, and 17-20. Final Office Action (January 8, 2016, "Final Act."). 2 We have jurisdiction under 35 U.S.C. Â§ 6(b ). 1 Appellants identify Medartis AG as the real party in interest. Appeal Brief (June 8, 2016, "Appeal Br.") 1. 2 Claims 1-3, 6, 10-12, 14-16, 21, and 22 are canceled, and claims 23-28 are pending and withdrawn from consideration. Final Act. 2. Appeal2017-005161 Application 12/632,005 The Examiner rejected all of the claims as being unpatentable over teachings of the prior art. Appellants contest the Examiner's findings underlying the obviousness rejections. For the reasons explained below, we agree with Appellants that the Examiner has failed to show by a preponderance of the evidence that the claimed subject matter would have been obvious in view of the prior art teachings. Thus, we REVERSE. CLAIMED SUBJECT MATTER The claimed subject matter on appeal relates to an implant for a palate that effectively suppresses the fluttering movements of the palate that lead to snoring and prevents falling back of the soft palate, without hindering speaking or swallowing. Specification (December 7, 2009, "Spec.") ,r 6. Claims 5 and 20 are the independent claims. Claim 5 is illustrative of the subject matter on appeal and is reproduced below. 5. An implant adapted for use in a palate, in particular a human palate, said implant comprising a distal portion dimensioned so as to be completely accommodated in a soft palate, and a proximal portion dimensioned so as to be fixed to a hard palate, and a middle portion extending between the proximal portion and the distal portion, wherein the implant is elastic in the middle portion in such a way that the distal portion is resilient in relation to the proximal portion, and the proximal portion extends at an angle of between 15Â° and 75Â° in relation to the distal portion. Appeal Br. 12 (Claims Appendix). Independent claim 20 is directed to a method for selecting an implant from a set of different implants, where each implant "is elastic in the middle 2 Appeal2017-005161 Application 12/632,005 portion in such a way that the distal portion is resilient in relation to the proximal portion." Id. at 13. REJECTIONS The Final Office Action includes the following rejections: 1. Claims 4, 5, 7-9, and 13 are rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Bhat et al. (US 2006/0185680 Al, published August 24, 2006) ("Bhat"). 2. Claim 9 is rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Bhat and Conrad et al. (US 6,401,717 Bl, issued June 11, 2002) ("Conrad"). 3. Claims 17-20 are rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Bhat and Boucher et al. (US 2007 /0000497 Al, published January 4, 2007) ("Boucher"). ISSUE The Examiner found that Bhat discloses, in Figure 34B, an implant for use in a human palate comprising a distal portion dimensioned to be accommodated in a soft palate (84), a proximal portion (6, 18) dimensioned to be accommodated in a hard palate (72) (sic, 74), and a middle portion extending between the proximal portion ( 6, 18) and the distal portion. Final Act. 3-4 (addressing claim 5); see also id. at 8 (relying on Bhat for disclosing the implant of claim 20). The Examiner provided an annotated version of Bhat's Figure 34B, reproduced below, identifying the distal portion and middle portion. 3 Appeal2017-005161 Application 12/632,005 Fig, 348 Id. at 4. Annotated Figure 34B includes an expanded view of the portion of original Figure 34B including hard palate 74, soft palate 84, and Bhat's airway implant device, which consists of first inductor 18, wire lead 6, and deformable element 8c'. In this expanded view, the Examiner identified a proximal end portion of deformable element 8c' as the "middle portion" and a distal end portion of deformable element 8c' as the "distal portion." Id.; see also id. at 3 (noting that claim 5 does not "define where the middle portion begins and where it ends"). The Examiner also found that Bhat discloses making deformable element 8c' of an electroactive polymer, which has an elastic property, so that the identified "middle portion" is elastic "in 4 Appeal2017-005161 Application 12/632,005 such a way that the distal portion is resilient in relation to the proximal portion," as claimed. 3 Id. at 5. Appellants argue that even if deformable element 8c' were considered to meet the claimed "middle portion" and "distal portion" of the implant, "wire lead 6 would still prevent the transmission of lateral forces from ... element 8c['] to the inductor 18" (i.e., the "proximal portion"). Appeal Br. 8. 4 Appellants assert that this transmission of lateral forces is achieved because the middle portion is elastic so that the distal portion is resilient in relation to the proximal portion. Id. Appellants also argue that Bhat's element 8c' is not "elastic" because it requires a source of electricity to cause deformation. Id. at 8-9. The Examiner responds that Bhat's Figures 34A and 34B show that the portion of element 8c' identified as the claimed "middle portion" is resilient in relation to the proximal portion. Ans. 3. The Examiner also responds that the claim as written does not exempt electricity. Id. The question presented in this appeal is whether the proximal portion of Bhat's deformable element 8c', which is made from an electroactive polymer, is "elastic ... in such a way that the distal portion [of the implant] is resilient in relation to the proximal portion [ of the implant]" as recited in claims 5 and 20. 3 All of the obviousness rejections on appeal are based on the Examiner's finding that Bhat's deformable element 8c' is elastic. Final Act. 5-7 (relying on Conrad for the claimed length of the distal portion and relying on Boucher for the claimed set of implants). 4 In addition to the arguments presented in the briefs, Appellants' counsel presented arguments at an oral hearing on February 28, 2019. 5 Appeal2017-005161 Application 12/632,005 ANALYSIS The question presented requires us to construe the claim terms "elastic" and "resilient." The Office "determines the scope of claims ... not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction 'in light of the specification as it would be interpreted by one of ordinary skill in the art."' Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (en bane) (quoting In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)). We first look to the description provided in Appellants' Specification. Appellants' Specification describes the elasticity and resiliency of the middle portion of the implant in terms of its ability to allow the soft palate to move to a certain extent in relation to the hard palate so that the implant does not excessively restrict speaking and swallowing. Spec. ,r,r 24, 68, 80. The Specification describes that the implant is elastic in such a way that pressures typically occurring behind the soft palate during swallowing, of approximately 50-100 cm water column, can still be overcome by an average palate musculature. Id. ,r,r 24, 68. Appellants' Specification uses the terms "elastic" and "resilient" in a manner that is consistent with the ordinary meanings of these terms. The definition of elastic, when used as an adjective, means "capable of recovering size and shape after deformation" and "capable of being easily stretched or expanded and resuming former shape." Merriam-Webster On- Line Dictionary, www.merriam-webster.com/dictionary/elastic, definitions la and 3, last accessed February 28, 2019. According to this same source, "resilient" is a synonym of "elastic" and is defined as "capable of withstanding shock without permanent deformation or rupture" and "tending 6 Appeal2017-005161 Application 12/632,005 to recover from or adjust easily to misfortune or change." Merriam-Webster On-Line Dictionary, www.merriam-webster.com/dictionary/resilient, last accessed February 28, 2019. This source explains that "resilience is the ability of an elastic material ( such as rubber or animal tissue) to absorb energy (such as from a blow) and release that energy as it springs back to its original shape." Merriam-Webster On-Line Dictionary, www.merriam-webster.com/dictionary/resilience, "Using Resilience Outside of Physics," last accessed February 28, 2019. Because the Specification does not define these terms in a way that differs from their ordinary usage, we find that a person having ordinary skill in the art would understand the claim terms "elastic" and "resilient" to have their ordinary meanings. Bhat does not adequately support the Examiner's finding that deformable element 8c' is elastic such that the distal portion of the implant is resilient in relation to the proximal portion. Bhat describes a deformable element made from an electroactive polymer. Bhat ,r 17. Bhat describes that the electroactive polymer element has a low stiffness under normal conditions, and that the polymer stiffens and tends to deform when the electroactive polymer element is energized. Id. ,r,r 17, 18, 69. "When the charge is removed, the [ electroactive polymer] element becomes soft and tends not to interfere with the patient's normal activities like swallowing and speech." Id. ,r 17. Bhat further describes that an "[e]lectroactive polymer is a type of polymer that responds to electrical stimulation by physical deformation, change in tensile properties, and/or change in hardness." Id. ,r 74. Figure 34A depicts the tongue in its normal state. Id. ,r 132. Figure 34B depicts the tongue in a collapsed state during sleep. Id. 7 Appeal2017-005161 Application 12/632,005 Bhat does not expressly disclose that the electroactive polymer material used in deformable element 8c' has the ability to spring back to its original shape after deformation so that it is elastic or resilient. Rather, Bhat describes that when the polymer material of deformable element 8c' is in a normal, de-energized state, the material is "soft." Although a soft material may be flexible or pliable, such that it does not interfere with a patient's swallowing or speech, a soft material is not necessarily capable of springing back to its original shape after deformation. Bhat describes that when the polymer material of the deformable element is energized, the material "stiffens." Bhat is silent about what happens if the material, when in a stiffened state, undergoes deformation. A stiffened material is not necessarily capable of springing back to its original shape after deformation. Thus, we find insufficient evidence in the portions of Bhat relied on by the Examiner to support the Examiner's finding that Bhat's deformable element 8c' is elastic in such a way that the distal portion of its implant is resilient in relation to the proximal portion of its implant. Thus, we do not sustain the rejections under 35 U.S.C. Â§ 103(a) of claims 4, 5, 7-9, 13, and 17-20. DECISION The decision of the Examiner rejecting claims 4, 5, 7-9, 13, and 17- 20 is reversed. REVERSED 8