Ex Parte JutoDownload PDFPatent Trial and Appeal BoardJun 2, 201712600195 (P.T.A.B. Jun. 2, 2017) 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. 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 following e-mail address(es): mailroom @ bskb. com 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 2 Appeal 2015-002618 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, 3 Appeal 2015-002618 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. 4 Appeal 2015-002618 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 5 Appeal 2015-002618 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 6 Copy with citationCopy as parenthetical citation