Ex Parte Purdy et al

Board of Patent Appeals and Interferences

Jul 26, 2012

11397489 (B.P.A.I. Jul. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte CRAIG A. PURDY, CHARLES R. RAMPERSAUD,
JOE PARASCHAC, SCOTT A. McGILL,
EDWARD M. GILLIS and RYAN P. BOUCHER
________________

Appeal 2010-004753
Application 11/397,489
Technology Center 3700
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Before EDWARD A. BROWN, MICHAEL L. HOELTER, and
BENJAMIN D. M. WOOD, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 1-9 (App. Br. 2). We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

The Claimed Subject Matter
The claimed subject matter is directed to a tissue implant device
having a structure with first and second magnetic regions, the second
magnetic region being spaced from and magnetically interacting with the
first magnetic region to shape the structure and thereby stabilize the tissue.
Sole independent claim 1 is representative of the claims on appeal and is
reproduced below:
1. An implant device comprising:
a structure sized and configured for placement in or on a
single tissue mass in an airway,
a first magnetic region on the structure, and
a second magnetic region on the structure spaced from
the first magnetic region, the second magnetic region
magnetically interacting with the first magnetic region to shape
the structure within the single tissue mass and thereby stabilize
a desired orientation for the single tissue mass.

References Relied on by the Examiner
Beck US 4,197,840 Apr. 15, 1980
Freedman US 4,978,323 Dec. 18, 1990

The Rejections on Appeal
1. Claims 1-8 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Beck (Ans. 3).
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2. Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Beck and Freedman (Ans. 5).

ANALYSIS
The rejection of claims 1-8 as being anticipated by Beck
Appellants argue claims 1, 2 and 4-8 together (App. Br. 4).
We select independent claim 1 for review, with dependent claims 2 and 4-8
standing or falling with claim 1 (see 37 C.F.R. § 41.37(c)(1)(vii) (2011)).
The Examiner finds that Beck discloses the structure recited in claim
1 (Ans. 3, 4). The Examiner also identifies certain limitations in claim 1 that
“have been treated as intended use recitations1” (Ans. 4). The Examiner
states that a recitation of “the manner in which an apparatus is intended to be
employed does not differentiate the claimed apparatus from a prior art
apparatus satisfying the claimed structural limitations” (Ans. 4). Since the
Examiner finds that Beck satisfies the claimed structural limitations, the
Examiner concludes that “the implant device of Beck is capable of
performing the recited function” (Ans. 5).
Appellants dispute that Beck teaches “each and every element of the
claim” because “the Beck reference, at best, explicitly teaches a permanent
magnet device implanted in eyelids” and not in an airway (App. Br. 4).
Further, Appellants contend that Beck’s structure does “not magnetically
interact to shape the structure with the tissue mass (i.e., eyelid), as claimed”

1 More specifically, the Examiner finds the limitations of “sized and
configured for placement in or on a single tissue mass in an airway” and “to
shape the structure within the single tissue mass and thereby stabilize a
desired orientation for the single tissue mass” to be intended use recitations
(Ans. 4).
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(App. Br. 4). In essence, Appellants contend that Beck does not teach,
disclose or suggest the functional limitations associated with the intended
use identified by the Examiner.
Our reviewing court has provided instruction in matters such as this to
the effect that once the Examiner finds that the prior art structure would be
capable of performing all of the functions claimed, the burden shifts to
Appellants to show that this is not the case (see In re Schreiber, 128 F.3d
1474, 1478 (Fed. Cir. 1997)). We do not find that Appellants have shown
that Beck’s structure is incapable of performing the recited limitations.
For example, in addressing the claim limitation of the second
magnetic region magnetically interacting with the first magnetic region “to
shape the structure within the single tissue mass,” Appellants contend that
Beck’s structure has a “fixed shape” and “is adjusted to the desired fixed
curved form prior to implantation” (App. Br. 6, see also Reply Br. 4-5, 8).
However, the Examiner references Beck’s spacers 7 and 8 located between
Beck’s magnets which “consist of synthetic rubber material and are
accordingly deformable” (Ans. 6 referencing Beck 2:39-43, see also Fig. 1).
As if to emphasize the deformability of spacers 7 and 8, Beck also discloses
an alternate embodiment whose spacers 70 “need not necessarily be
deformable” (Beck 2:44-46, Fig. 2). Beck also discloses that the body which
envelopes these magnets is itself “ductile” (Beck 1:53-55). Accordingly, we
agree with the Examiner that Beck’s device “is not ‘fixed shape’” as
Appellants assert (Ans. 6).
Regarding the requirement of the two magnetic regions “magnetically
interacting,” Appellants contend that due to the “fixed shape” of Beck’s
structure, Beck’s magnets “do not magnetically interact” and “cannot
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properly be said to interact” to shape the structure within the single tissue
mass (App. Br. 4, 6). Appellants’ fixed-shape premise for this contention is
not persuasive for the reasons stated supra. Furthermore, we agree with the
Examiner’s finding that each of Beck’s “high performance magnets (1, 2,
and 3) emit a magnetic field of high magnetic force which is inherently
capable of interacting with the magnetic field of high magnetic force of the
adjacent magnet to shape the structure within the tissue mass regardless of
what the ‘shape’ may actually be” (Ans. 7 citing Beck 1:45-49 and 2:61-65).
Appellants also dispute the orientation of Beck’s magnetic regions and that
Beck’s regions “being oriented in the same manner, do not result in
attraction, as claimed” (Reply Br. 2, see also 5). The claims do not specify
any particular orientation and also, the claims require magnetic interaction,
not attraction. Appellants have not shown that Beck’s magnetic regions do
not magnetically interact. Further, and in view of our previous analysis, we
are not persuaded that Appellants have shown that Beck’s magnetic regions
are unable “to shape the structure within the single tissue mass” as claimed.
Appellants also contend that Beck’s implant “does not shape the
structure (e.g., curve it) within the single tissue mass, as claimed, to
establish an open airway” and instead, Beck’s “implant remains constant” to
move uniformly with the eyelid (App. Br. 6 (emphasis in original), see also
Reply Br. 7, 8). Appellants’ contention is again premised on Beck’s
structure being fixed in shape, which is not persuasive. Further, the
Examiner reiterates that Beck’s device, while intended for use in eyelids, “is
clearly sized and configured for implantation for placement in or on a single
tissue mass in an airway which encompasses various sizes depending on the
user” (Ans. 4, 8, see also 10). Appellants do not persuasively argue or
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present evidence explaining how Beck’s magnetic implant is incapable of
shaping the structure within the claimed tissue in an airway.
Regarding claim 3, Appellants further contend that Beck, directed to
an eyelid implant, fails to disclose or suggest “the additional recital of the
single tissue mass being shaped to form an open air passage through the
single tissue mass” (App. Br. 7 (emphasis in original)). The Examiner has
repeatedly identified the limitation of “to form an open air passage through
the single tissue mass” as being an intended use recitation and that Beck’s
structure is capable of performing this recited function (Ans. 4, 8). For
reasons similar to those provided above, we are not persuaded that
Appellants have persuasively argued or presented evidence showing that
Beck’s implant is incapable of performing this limitation.
Appellants present an argument specifically pertaining to claim 4 for
the first time in the Reply Brief (Reply Br. 4). The Examiner rejected claim
4 under the first ground of rejection pertaining to claims 1-8 being
anticipated by Beck (Ans. 4). Since claim 4 was not separately argued in the
Appeal Brief, we continue to treat claim 4 as standing or falling with claim 1
(see 37 C.F.R. § 41.37(c)(1)(vii) (2011)). We also note the Board’s
informative decision of Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI
2010) stating that “the reply brief [is not] an opportunity to make arguments
that could have been made in the principal brief on appeal to rebut the
Examiner's rejections, but were not.”
We have considered Appellants’ remaining arguments but do not find
them persuasive. In view of the above and the record presented, the
rejection of claims 1-8 is sustained.
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The rejection of claim 9 as being unpatentable over Beck and Freedman
Claim 9 is a method claim which depends from apparatus claim 1.
Claim 9 specifies the step of “implanting the implant device, at least in part,
in a soft palate to stabilize a desired tissue orientation.” The Examiner relies
on Freedman for this recited method step (Ans. 5). Appellants present
arguments that Freedman does not disclose limitations the Examiner
previously found in Beck (App. Br. 8-10). We do not find these arguments
persuasive. Additionally, Appellants contend that Freedman teaches
separate magnetic structures disposed on separate, different tissues “in direct
contravention to a structure sized and configured for placement in or on a
single tissue mass” (App. Br. 10). Appellants’ contention is not persuasive
as Freedman’s Figure 5 clearly discloses a single magnet 10 as the sole
implant on soft palate 3 (see Ans. 5-6). Appellants also contend that the
references to Beck and Freedman are directed to different parts of the human
anatomy (App. Br. 10). Appellants have not persuaded us of error in the
Examiner’s finding that it would have been obvious to utilize “a tissue
implant device as taught by Beck to stabilize a desired tissue orientation by
implantation in a soft palate of a user as disclosed by Freedman” (Ans. 12).
Accordingly, we sustain the rejection of claim 9.

DECISION
The rejections of claims 1-9 are affirmed.
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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