Ex Parte Smith

Patent Trial and Appeal Board

Dec 31, 2018

15138306 (P.T.A.B. Dec. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/138,306 04/26/2016
28078 7590 01/02/2019
MAGINOT, MOORE & BECK, LLP
One Indiana Square, Suite 2200
INDIANAPOLIS, IN 46204
FIRST NAMED INVENTOR
David Smith
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1951-0004 2265
EXAMINER
STICE,PAULAJ
ART UNIT PAPER NUMBER
3792
MAIL DATE DELIVERY MODE
01/02/2019 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 DAVID SMITH
Appeal 2018-002 87 4
Application 15/13 8,306
Technology Center 3700
Before KEVINF. TURNER, BRETT C. MARTIN, and
WILLIAM A. CAPP, Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2018-002874
Application 15/138,306
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner's
rejection of claims 19--25. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
THE INVENTION
Appellant's' claims are directed "to devices and methods for
producing bradycardia, increased systemic vascular resistance, decreased
cardiac work, and increased cerebral blood flow through the autonomic
nervous system in the animal or human body." Spec. 1. Claim 19,
reproduced below, is illustrative of the claimed subject matter:
19. A method for providing a treatment to a person comprising
providing controlled stimulation of a branch of a trigeminal
nerve of the person to induce a dive reflex response in the person.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Saadat
Friedman
US 2007/0025781 Al Sep. 27, 2007
US 2007 /0032547 Al Feb. 8, 2007
REJECTIONS
The Examiner made the following rejections:
Claims 19--21 and 23-25 stand rejected under 35 U.S.C. § I02(b) as
being anticipated by Friedman. Ans. 2.
Claim 22 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over Friedman and Saadat. Id.
2
Appeal2018-002874
Application 15/138,306
ANALYSIS
The main issue in this case is whether the prior art teaches the claimed
induction of a dive reflex response. The Examiner treats this limitation as an
intended use and asserts that because it is a reflex, it must occur as a result of
the treatment in Friedman because Friedman applies stimulation to a branch
of the trigeminal nerve as claimed. Ans. 3. There are several problems with
the Examiner's application of the prior art.
First, although intended uses do not have to be explicit in the prior art,
the Examiner must still prove that the prior art device is capable of
producing the intended use. Here, the Examiner has provided no evidence
that Friedman's application of cold to an area around the maxillary branch of
the trigeminal nerve would produce the intended dive reflex response. In
fact, as Appellant points out, "the dive reflex response is activated through
the ophthalmic division of the trigeminal nerve, not the maxillary." Reply
Br. 3. As such, not only is there no evidence that Friedman is capable of
producing the dive reflex response, it appears that Friedman's treatment
actually could not produce the intended result at all because it is applied to
the wrong branch of the trigeminal nerve. 1
Further, we agree with Appellant that Friedman's treatment is not a
stimulation of the trigeminal nerve branch as claimed, but "is intended to
remove the stimulation of the nerve to alleviate the headache" by reducing
inflammation around the nerve. Reply Br. 4. As the Examiner points out,
Friedman teaches that "[ t ]he thermoelectrical cooler is applied indirectly to
1 We note that this may raise enablement issues given that the claim
language covers branches of the trigeminal nerve that apparently cannot
achieve the claimed result. We leave it to the Examiner to deal with this in
future examination.
3
Appeal2018-002874
Application 15/138,306
an accessible segment of the maxillary nerve." Ans. 4 (citing Friedman ,r 4,
emphasis added). In other words, Friedman applies cooling to the area
around the nerve, but as Appellant points out, this is actually to reduce
inflammation around the nerve and to reduce or remove stimulation of the
nerve, which in tum alleviates the headache.
Although the claim is brief and broad, the Examiner must still find the
claimed elements in the prior art. Here, the Examiner found application of
cold in the area of one branch of the trigeminal nerve, but has failed to find
evidence that this amounts to stimulation of the nerve as well as that the
method in Friedman could induce the claimed dive reflex response.
Accordingly, we do not sustain the Examiner's rejections.
DECISION
For the above reasons, we REVERSE the Examiner's decision to
reject claims 19--2 5.
REVERSED
4