Ex Parte Isenberg et alDownload PDFPatent Trial and Appeal BoardMay 29, 201411967188 (P.T.A.B. May. 29, 2014) Copy Citation 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 App this r with 8). F inclu seco [021 F comp coup guid pass F Figu with eal 2012-0 lication 11 ejection, A independe F1. Th des a first nd compon ]). F2. Th onent and led togeth ing surface age throug F3. Fi re 11 is an a preferre 04409 /967,188 ppellants nt claim 1 e Specific componen ent havin e Specific the secon er such tha collectiv h the oral gure 11 of isometric d embodim 4 submit th 15 being r F ation disc t having a g a second ation furth d compon t the first ely define airway” (i the Speci view of an ent of the at claims 1 epresentat indings of loses “an o first guid guiding s er disclos ent are ada guiding su and encom d.). fication is oral airw invention 15-134 sta ive of this Fact ral airway ing surface urface” (S es that “th pted to be rface and pass an in reproduce ay 400 in (Spec. ¶ [ nd or fall grouping [that] and a pec. ¶ e first removabl the second terior d below: accordanc 070]). together (App. Br. y e App App F Figu (Spe expl 404 404 (Spe inven requ inven 1336 eal 2012-0 lication 11 F4. Fi re 12 is an c. ¶ [071]) oded view arrived at b in the dire c. ¶ [0110 “The spe tion.” 35 irement do tion in ha , 1352 (Fe A purpo provide technolo descripti for the s 04409 /967,188 gure 12 of exploded . More pa of the firs y decoup ction of ar ]. cification U.S.C. § es not req ec verba.” d. Cir. 20 se of the w the public gy, thereb on of the i cope and c 5 the Speci view of th rticularly, t compone ling and sl row A rela Principles shall cont 112, ¶ 1 (2 uire that “t Ariad Ph 10) (en ban ritten desc with know y to advan nvention p ontent of t fication is e oral airw “FIG. 12 i nt 402 and iding of th tive to the of Law ain a writt 011). Com he specifi arm., Inc. c). As no ription re ledge of t ce the use rovides th he claims, reproduce ay 400 of llustrates second c e second c first comp en descrip pliance w cation reci v. Eli Lilly ted by the quirement he patente ful arts. Th e foundati and serve d below: Fig. 11 an omponent omponent onent 402 tion of the ith this st te the claim & Co., 5 Federal C is to d e on s to ” atutory ed 98 F.3d 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 F Figu emb inser F Figu airw col. requ that eal 2012-0 lication 11 F8. Fi re 15 of B odiment of ted (Berm F9. Fi re 23 of B ay shown 2, ll. 39-42 The Exa irements f plug closu 04409 /967,188 gure 15 of erman is a the intuba an, col. 2, gure 23 of erman is a in Fig. 15 ). miner find or the claim re 40b sati 10 Berman i side view ting airwa ll. 25-26). Berman i cross-sect with the pl Analy s that oral ed “first sfies the re s reproduc of a secon y 10b wit s reproduc ional view ug closure sis airway 10 individual quiremen ed below: d modifie h plug clos ed below: of the int removed b of Berm componen ts for the c 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 cdc Copy with citationCopy as parenthetical citation