Ex Parte Juto

Patent Trial and Appeal Board

Jun 2, 2017

12600195 (P.T.A.B. Jun. 2, 2017)

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.
12/600,195 12/10/2009 Jan-Erik Juto 0104-0774PUS1 6607
127226 7590 06/06/2017
BIRCH, STEWART, KOLASCH & BIRCH, LLP
8110 Gatehouse Road
Suite 100 East
Falls Church, VA 22042-1248
EXAMINER
TSAI, MICHAEL JASPER
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
06/06/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAN-ERIK JUTO
Appeal 2015-002618
Application 12/600,195
Technology Center 3700
Before JOHN C. KERINS, NEIL T. POWELL, and
ARTHUR M. PESLAK, Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jan-Erik Juto (Appellant) seeks our review under 35U.S.C. § 134 of
the final rejection of claims 37, 39, 40, 42-45, 47—50, 56, 58, 59, 64, 65, 68,
and 70-86. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2015-002618
Application 12/600,195
THE INVENTION
Appellant’s claimed invention is directed to a vibration device for
stimulation of body tissue in a nasal cavity of a patient. Claim 37,
reproduced below, is illustrative:
37. A vibration device for stimulation of body tissue in a nasal
cavity of a patient, comprising:
an expandable stimulation member;
an expansion member configured to expand the stimulation
member from a first, unexpanded state to a second, expanded
state, wherein the expansion member comprises at least one
channel for supplying fluid to the stimulation member to
achieve said expansion, and the stimulation member is arranged
at least partly around the expansion member such that one end
of the expansion member is located freely inside the stimulation
member; and
an externally arranged vibration source connected to the
expansion member and configured to bring the stimulation
member to vibrate at a frequency of 48—70 Hz,
wherein the stimulation member is configured, in the first,
unexpanded state to be capable of being introduced via a nasal
opening into the nasal cavity, and in the second, expanded state
to be expanded to a volume such that the stimulation member is
capable of abutting against the tissue within the nasal cavity.
THE REJECTIONS
The Examiner rejects:
(i) claims 37, 42-A5, 48, 50, 56, 58, 59, 64, 65, 68, 72, 73, 77, and 84
under 35 U.S.C. § 103(a) as being unpatentable over Limansky (SU
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Application 12/600,195
1560205 Al, published April 30, 1990)1 in view of Avni (WO 2006/129305
A2, published Dec. 7, 2006);
(ii) claims 39, 40, 47, 70, 71, 75, 76, 78, 82, 83, and 85 under 35
U.S.C. § 103(a) as being unpatentable over Limansky in view of Avni and
Hogle (US 7,108,706 B2, issued Sep. 19, 2006);
(iii) claim 49 under 35 U.S.C. § 103(a) as being unpatentable over
Limansky in view of Avni and Kring (US 2003/0087734 Al, published
May 8, 2003);
(iv) claims 74 and 81 under 35 U.S.C. § 103(a) as being unpatentable
over Limansky in view of Avni and Becker (US 8,317,816 B2, issued
Nov. 27, 2012); and
(v) claims 79, 80, and 86 under 35 U.S.C. § 103(a) as being
unpatentable over Limansky in view of Avni and St. Clair (US 3,848,607,
issued Nov. 19, 1974).
A rejection of claims 79 and 80 under the first paragraph of 35 U.S.C.
§112 appearing in the Final Action is withdrawn. Ans. 14.
ANALYSIS
Rejection (i)-Claims 37, 42-45, 48, 50, 56, 58, 59, 64, 65, 68, 72, 73, 77,
and 84— Unpatentability over Limansky and Avni
The Examiner finds that Limansky teaches ah structural limitations of
claim 37, with the exception of having an external vibration source
configured to bring a stimulation member to vibrate at a frequency of 48—70
Hertz.2 Final Act. 3—4. The Examiner cites to Avni as teaching a nasal
1 Reference to the text of Limansky herein are to the English-language
translation of record in this application.
2 Among the claims subject to this rejection, claim 56 is also independent,
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Application 12/600,195
congestion treatment device that vibrates at a frequency of 5-1000 Hertz,
and concludes that it would be obvious to modify Limansky to vibrate at that
range of frequencies, “in order to provide treatment depending on different
conditions with different patients.” Id. at 4.
The articulated reason to combine the teachings of the references
lacks rational underpinnings. Limansky provides its tubular expansion
member with a hole 8, expressly for the purpose of allowing the patient to
“rhythmically close[] and open[] the hole 8 using his finger, aiming to find
the optimal feeling of vibration and pressure produced by the head.”
Limansky 2,11. 13—14. The rejection fails to adequately explain how this
significant feature of the Limansky device would be retained were the
proposed modification made, such that frequencies of from 5-1000 Hertz
would be imposed by the vibration device.
Additionally, in response to Appellant’s argument (Appeal Br. 8—9)
that the Avni device applies vibrations external to the nasal cavity, whereas
the claimed invention and Limansky are directed to applying vibrations
within the nasal cavity, the Examiner maintains that “it is well-known that
vibrations can travel through other mediums. As a result, the vibrations
applied by the Avni [apparatus] are directed to treating the nasal cavity of
the patient.” Ans. 17—18. As Appellants point out, however, “there is no
evidence showing that vibrations applied to the face would have the same
result as vibrations applied internally to the nasal cavity.” Reply Br. 4
and recites a method including the step of bringing the stimulation member
to vibrate in its expanded state at a frequency of 48—70 Hertz. Therefore, the
analysis directed to claim 37 applies as well to claim 56.
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Application 12/600,195
(emphaisis omitted). As such, the Examiner’s position that the combination
would provide effective treatment is speculative.
Finally, the Examiner’s position that the modification of the Limansky
device to attain vibrations in a broad range of from 5-1000 Hertz fails to
adequately address why such a broad frequency range renders obvious the
subject matter of claim 37, which recites the use of a narrow frequency
range of 48—70 Hertz. Evidence in the form of a Declaration of the inventor,
Jan-Erik Juto dated November 29, 2012 (“Declaration”), establishes that, in
patients suffering from non-allergic rhinitis, results were obtained within the
specific frequency range of 48—70 Hertz that were not obtained across a
large sweep of frequency ranges. Declaration, para. 3. Although the
rejection at the time of the execution of the Declaration involved different
references than those now applied, the evidence remains pertinent, and the
Examiner has failed to adequately address the same.
Accordingly, the rejection of claim 37 is not sustained. As noted
previously, independent claim 56 includes substantially the same limitation
addressed above, and the rejection of that claim is also not sustained.
Claims 42-45, 48, 50, 58, 59, 64, 65, 68, 72, 73, 77, and 84 depend from
either claim 37 or claim 56, and the rejection of these claims as being
unpatentable over Limansky and Avni is also not sustained.
Rejections (ii) (v)
The Examiner does not rely on any of Hogle, Becker, Kring, and St.
Clair in any manner that remedies the deficiencies noted above with respect
to the proposed combination of Limansky and Avni. The rejections of
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Application 12/600,195
claims 39, 40, 47, 49, 70, 71, 74—76, 78—83, 85 and 86 are thus not
sustained.
DECISION
The Examiner’s rejections of claims 37, 39, 40, 42-45, 47—50, 56, 58,
59, 64, 65, 68, and 70-86 are reversed.
REVERSED
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