Ex Parte Isenberg et al

Patent Trial and Appeal Board

May 29, 2014

11967188 (P.T.A.B. May. 29, 2014)

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.
11/967,188 12/29/2007 Amy Isenberg 1064.004 6430
36790 7590 05/29/2014
TILLMAN WRIGHT, PLLC
PO BOX 49309
CHARLOTTE, NC 28277-0076
EXAMINER
LOUIS, LATOYA M
ART UNIT PAPER NUMBER
3771
MAIL DATE DELIVERY MODE
05/29/2014 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 AMY ISENBERG and CHRIS HOY
__________

Appeal 2012-004409
Application 11/967,188
Technology Center 3700
__________

Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.

PAULRAJ, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to an oral
airway used for intubation. The Examiner rejected the claims for lack of
written description, anticipation, and obviousness. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm the anticipation and obviousness
rejections.

1 Appellants identify the Real Party in Interest as Isen Innovations,
LLC (see App. Br. 3).
Appeal 2012-004409
Application 11/967,188

2
STATEMENT OF THE CASE
Background
The invention described in the Specification relates to oral airways
used for tracheal intubation, i.e., which facilitate fiber-optic intubation of the
trachea with an endotracheal tube (Spec. ¶¶ [003]-[005]). The Specification
states that oral airways are well known, and notes that “[t]he basic design of
conventional oral airways in use today is that of a hollow plastic tube which,
when placed between the teeth as a bite block, follows a natural curve to the
posterior pharynx to pull the tongue forward to facilitate passage of a fiber-
optic tube bronchoscope to the larynx and through the vocal cords” (id. at ¶
[006]). The Specification further notes that currently available commercial
products are based on the Ovassipian, Berman, and Williams patented oral
airways illustrated as prior art in FIGS. 1-4 (id. at ¶ [008]), and that “[e]ven
in view of the conventional oral airways, it is believed that a need exists for
still yet further improvement in oral airways used to facilitate fiber-optic
intubation of the trachea” (id. at ¶ [012]).
The Claims
Claims 115-134 are on appeal. Independent claim 115 is
representative and reads as follows:
An oral airway, comprising:
(a) a first individual component having a first guiding
surface; and
(b) a second individual component removably coupled
together with the first component, the second component having a
second guiding surface located in opposing relation to the first
guiding surface;
(c) wherein, when the first and second components are
coupled together, the first guiding surface and the second guiding
Appeal 2012-004409
Application 11/967,188

3
surface collectively define and encompass an interior passage
extending through the oral airway for directing a fiber~optic
scope or an endotracheal tube through the oral airway, but when
the first and second components are decoupled, no such passage is
defined.

The Issues

The Examiner has rejected the claims as follows:
I. claims 115-134 under 35 U.S.C. § 112, ¶ 1 as failing to comply
with the written description requirement;
II. claims 115-127 and 130-134 under 35 U.S.C. § 102(b) as
anticipated by Berman;2
III. claim 128 under 35 U.S.C. § 103(a) as being unpatentable over
Berman in view of Greene;3
IV. Claim 129 under 35 U.S.C. § 103(a) as being unpatentable over
Berman in view of Persichetti.4

I. WRITTEN DESCRIPTION
Issue
The Examiner rejected claims 115-134 for failure to comply with the
written description requirement on the grounds that the limitation “when the
first and second components are decoupled, no such passage is defined”
recited in independent claims 115, 130, and 132 does not appear to be
supported by the originally filed Specification (Ans. 5-6). With respect to

2 Berman, US 4,068,658, issued Jan. 17, 1978.
3 Greene et al., US 4,640,273, issued Feb. 3, 1987.
4 Persichetti, US 2003/0075184 A1, published Apr. 24, 2003.
App
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04409
/967,188
ppellants
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together
(App. Br.
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04409
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ircuit:

Appeal 2012-004409
Application 11/967,188

6
demonstrate that the applicant is in possession of the
invention that is claimed. In fulfillment of these
purposes, the applicant may employ “such descriptive
means as words, structures, figures, diagrams,
formulas, etc., that fully set forth the claimed
invention.”

In re Skvorecz, 580 F.3d 1262, 1269 (Fed. Cir. 2009) (citing Lockwood v.
American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)). “The form
and presentation of the description can vary with the nature of the invention;
compliance with the written description requirement is a fact-dependent
inquiry.” Id. (citing In re Alton, 76 F.3d 1168, 1172 (Fed. Cir. 1996)).
Analysis
The Examiner asserts that the claim limitation “when the first and
second components are decoupled, no such passage is defined” does not
appear to be supported by Appellants’ disclosure as originally filed (Ans. 5).
In support of this rejection, the Examiner states that “[i]n fig. 12-14, two
semi-circular passages are still defined when components 466 and 404 are
decoupled,” and further notes that “[t]he two semi-circular passages may be
interpreted as one combined passage lacking a continuous side wall,
however, such passage is still defined” (Ans. 5-6). The Examiner also relies
upon the fact that the Specification does not explicitly recite the claimed
limitation (Ans. 6).
Appellants argue that the Examiner’s conclusory statement in support
of the rejection “fails to provide reasons why a person skilled in the art
would not have recognized that the inventor was in possession of the
invention as claimed in view of the disclosure of the application” (App. Br.
Appeal 2012-004409
Application 11/967,188

7
8-9 (emphasis in original)). We agree that the Examiner failed to make a
prima face case.
The Specification explicitly states that the first component and the
second component are removably coupled together such that they
“collectively define and encompass an interior passage through the oral
airway” (FF1-2). This coupled airway with a defined passage (410) is
illustrated in FIG. 11 (FF3). Moreover, the Specification discloses that the
first and second components of the airway may be decoupled from each
other (FF4). As illustrated in FIG. 12, there is no passage defined and
encompassed by the first and second components when those components
are decoupled from each other. The Examiner nonetheless points to the
drawings of the decoupled components as showing “two semi-circular
passages” (Ans. 5). However, as noted by Appellants, even assuming
arguendo that the “semi-oval channels of each of the components of the
exemplary oral airway could be characterized as ‘passages,’ these still would
not represent such an interior passage through the oral airway as referenced
by the claim” (App. Br. 11).
The Examiner has not explained why one of ordinary skill in the art
would still perceive a passage through the oral airway that is defined and
encompassed by the first and second components when the components are
decoupled. In our view, FIG. 12 provides adequate descriptive support for
this limitation. Cf. Skvorecz, 580 F.3d at 1270 (finding written description
support based on partial structures depicted in the drawings). Accordingly,
we reverse this rejection.
Appeal 2012-004409
Application 11/967,188

8
II. ANTICIPATION
Issue
Did the Examiner establish a prima facie case that claims 115-127 and
130-134 are anticipated by Berman?
With respect to the anticipation rejection, Appellants submit that
claims 115-127 stand or fall together with independent claim 115 (App. Br.
12), that claims 130-131 stand are fall together with independent claim 130
(App. Br. 15), and that claims 132-134 stand or fall together with
independent claim 132 (id.). Appellants, however, have not presented any
separate arguments for claims 130 and 132 beyond those already presented
for claim 115. Accordingly, we choose claim 115 to be representative of all
the claims rejected for anticipation. Claims 116-127 and 130-134 stand or
fall together with this representative claim. 37 C.F.R. § 41.37(c)(1)(vii)
(2011).
Principles of Law
“Anticipation requires that all of the claim elements and their
limitations are shown in a single prior art reference.” Skvorecz, 580 F.3d at
1266. “An anticipatory reference . . . need not duplicate word for word what
is in the claims. Anticipation can occur when a claimed limitation is
‘inherent’ or otherwise implicit in the relevant reference.” Standard Havens
Prods., Inc. v. Gencor Indus. Inc., 953 F.2d 1360, 1369 (Fed. Cir. 1991)
(citing Tyler Refrigeration v. Kysor Indus. Corp., 777 F.2d 687, 689 (Fed.
Cir. 1985)). “Description for the purposes of anticipation can be by
drawings alone as well as by words.” In re Bager, 47 F.2d 951, 953 (CCPA
1931).
Appeal 2012-004409
Application 11/967,188

9
Additional Findings of Fact
FF5. Berman discloses an embodiment of an intubating
airway (10b) that includes a “longitudinal opening 24b [that] may
be closed by a longitudinal plug closure 40b which is adapted to
snap literally or slide longitudinally into longitudinal opening 24b
and thereby close the same” (Berman, col. 3, ll. 60-63).
FF6. Berman also discloses that “[p]lug closure 40b
comprises a longitudinal body section 42b having upper and lower
grooves 44b and 46b, respectively to engage upper and lower jaws
31b and 33b, respectively, of longitudinal opening 24b” (id. at col.
3, ll. 64-67).
FF7. Berman further discloses that “[t]he main body
portion 42b is longitudinally curved in accordance with
longitudinal curvature of tubular section 16b and is provided with a
flanged outer end 48b which acts as a handle for ease of insertion
or removal of plug closure 40b with respect to longitudinal
opening 24b” (id. at col. 3, l. 67 - col. 4, l. 4).

App
App

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Figu
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F8. Fi
re 15 of B
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2, ll. 39-42
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plug closu
04409
/967,188
gure 15 of
erman is a
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erman is a
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).
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or the claim
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cross-sect
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s reproduc
ional view
ug closure
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d modifie
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of the int
removed
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componen
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d
ure 40b

ubating
(Berman,
an satisfie
t” limitati
laimed “s
s the
on, and
econd

Appeal 2012-004409
Application 11/967,188

11
individual component . . . removably coupled together with the first
component” (Ans. 6). The Examiner also finds that these components, when
coupled together, collectively define and encompass a “continuously
enclosed interior passage of the airway as internal passage which is enclosed
by a continuous side wall,” but that “when the components are decoupled a
continuously enclosed interior passage having a continuous surrounding side
wall no longer is defined” and “[i]nstead there exists an opening 24b in the
side wall” (Ans. 6-7). We agree with the Examiner’s findings leading to the
conclusion that Berman anticipates claim 115 (see also FF5-9).
We have considered Appellants’ arguments but are not persuaded.
Appellants do not dispute that Berman discloses an “interior passage
extending through the oral airway for directing a fiber-optic scope or an
endotracheal tube through the oral airway” when the first and second
components are coupled together. Appellants, however, argue that “the
claim simply recites ‘an interior passage extending through the oral
airway,’” and “[a]lthough the claim additionally recites that ‘when the first
and second components are coupled together, the first guiding surface and
the second guiding surface collectively define and encompass [such] interior
passage,’ there is no requirement in the claim regarding definition of such an
interior passage when the components are decoupled” (App. Br. 13).
Appellants further argue that “the claim does not specify that no such
passage is collectively defined, it simply specifies that no such passage is
defined” (id. (emphasis in original)).
We disagree with Appellants’ interpretation of the claim. When
reciting “no such passage is defined” in clause (c), claim 115 is clearly
Appeal 2012-004409
Application 11/967,188

12
referring back to the interior passage that is “collectively define[d] and
encompass[ed]” by the first guiding surface and second guiding surface as
recited earlier within the same clause. No other “passage” is identified in
the claim. The term “such” is an anaphoric term that only finds antecedent
basis in the claim’s earlier recitation of “an interior passage.” Cf. Baldwin
Graphic Sys., Inc. v. Siebert, Inc., 512 F.3d 1338, 1343 (Fed. Cir. 2008) (“In
grammatical terms, the instances of ‘said fabric roll’ in the claim are
anaphoric phrases, referring to the initial antecedent phrase.”).
Applying this interpretation, we find that FIG. 23 of Berman
illustrates that “no such passage is defined” when the plug closure 40b is
removed from the intubating airway 10b. Even assuming that longitudinal
opening 24b qualifies as an “interior passage” when the plug closure is
removed, it is neither “collectively define[d]” nor “encompass[ed]” by both
components as shown in the drawings (FF8-9).
Appellants do not make any arguments concerning any other claim
limitations. We therefore find that the Examiner has made a prima facie
showing that Berman anticipates claim 115. Claims 116-127 and 130-134
fall with claim 115.
III. OBVIOUSNESS
Appellants submit that claims 128 and 129 that are rejected for
obviousness stand or fall together with independent claim 115 (App. Br. 14-
15). Stated differently, Appellants intimate that Greene or Persichetti fail to
make up for the deficiencies they identify in Berman, as discussed above.
Having found no deficiency in Berman we are compelled to affirm the
obviousness rejections of claims 128 and 129.
Appeal 2012-004409
Application 11/967,188

13
SUMMARY
We reverse the Examiner’s rejection of claims 115-134 under
35 U.S.C. § 112, ¶ 1 for failing to comply with the written description
requirement.
We affirm the Examiner’s rejection of claims 115 under 35 U.S.C.
§ 102(b). Claims 116-127 and 130-134 fall with claim 115.
We affirm the Examiner’s rejections of claims 128 and 129 under
35 U.S.C. § 103(a).

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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