Ex Parte Nelson et alDownload PDFPatent Trial and Appeal BoardFeb 7, 201311592529 (P.T.A.B. Feb. 7, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte LIONEL M. NELSON, OCTAVIAN IANCEA, BRIAN K. MCCOLLUM, and ANDRES D. TOMAS ____________________ Appeal 2011-001020 Application 11/592,529 Technology Center 3700 ____________________ Before: JOHN C. KERINS, WILLIAM V. SAINDON, and NEIL T. POWELL, Administrative Patent Judges. SAINDON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-001020 Application 11/592,529 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-3, 14, and 17-20. We have jurisdiction under 35 U.S.C. § 6(b). The Claimed Subject Matter Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A system comprising: at least one ferromagnetic structure adapted to be implanted within a first region of a tissue, at least one anchoring structure adapted to be implanted within a second region of the same tissue spaced from the at least one ferromagnetic structure, the at least one anchoring structure including an expandable structure having a collapsed position prior to implantation and an expanded position after being implanted within the tissue, and at least one attachment element coupling the at least one anchoring structure to the at least one ferromagnetic structure to stabilize the at least one ferromagnetic structure in the first region of the tissue. References The Examiner relies upon the following prior art references: Nelson US 7,188,627 B2 Mar. 13, 2007 Conrad Atkinson US 2005/0092334 A1 US 2006/0266369 A1 May 5, 2005 Nov. 30, 2006 Rejections I. Claims 1-3, 14, 17, 18, and 19 are rejected under 35 U.S.C. § 102(e) as anticipated by Atkinson. Ans. 4. Appeal 2011-001020 Application 11/592,529 3 II. Claims 1-3 and 14 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 7 and 34 of U.S. Patent No. 7,188,627. Ans. 6. III. Claim 20 is rejected under 35 U.S.C. § 103(a) as unpatentable over Atkinson and Conrad. Ans. 7. SUMMARY OF DECISION We REVERSE. OPINION Claim 1 is the sole independent claim. It requires at least two structures adapted to be implanted within different regions of the same tissue. The first structure is a ferromagnetic structure and the second is an anchoring structure. The Examiner found that Atkinson discloses a ferromagnetic structure (a magnet in magnetic mechanism 93) and an anchoring structure (expandable anchor 94’’). Ans. 4; Atkinson, para. [0057] (“alternative anchoring mechanisms … for attachment to the hyoid bone”). Appellants argue that the magnetic mechanism 93 is disposed externally of the tissue, between the anchoring screws 94, and thus is disposed in a different tissue. App. Br. 11; Reply Br. 5. The Examiner responds that the magnetic mechanism 93 is “capable of being adapted to be implanted” in the same tissue. Ans. 9. The Examiner also responds, “the claim in no way precludes the system element from being implanted in different bones for instance” and, “all bones are a rigid organ,” i.e., are the same tissue. Ans. 11. Appeal 2011-001020 Application 11/592,529 4 While we agree with the Examiner that the functional nature of the claims merely require a structure capable of satisfying the claimed functions, the Examiner has not shown that Atkinson discloses such a structure. The Examiner’s statement that Atkinson is “capable of being adapted to be implanted” does not speak to whether Atkinson is “adapted to be implanted” as claimed. In addition, the claim requires the two structures to be capable of being implanted in the same tissue. Even assuming “tissue” reads on the skeleton as a whole (an interpretation with which we do not agree), only the anchors would be implanted in that tissue. It is not apparent to us how the magnetic structure imparting a biasing force on the anchors could be inside the bone; the Examiner offers no explanation to elucidate. Similarly, the anchors of Atkinson may be capable of anchoring in other tissues besides bone, in which the magnetic structure may also be implanted, but the Examiner makes no findings or technical explanation to support such a proposition. Thus, the Examiner has not set forth a prima facie case of anticipation that adequately supports the position that the structure of Atkinson is actually capable of performing the claimed functions. Rejections I and III both include this factual deficiency, and cannot be sustained. We do not address Rejection II (obviousness-type double patenting) because a terminal disclaimer has been filed (Jul. 22, 2010) and approved (Aug. 19, 2010). Appeal 2011-001020 Application 11/592,529 5 DECISION We REVERSE the Examiner’s decision regarding the prior art rejections of claims 1-3, 14, and 17-20. We do not reach the obviousness-type double patenting rejection. REVERSED hh Copy with citationCopy as parenthetical citation