Ex Parte Tschopp et al

Patent Trial and Appeal Board

Mar 8, 2019

12632005 (P.T.A.B. Mar. 8, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/632,005 12/07/2009
26936 7590 03/12/2019
SHOEMAKER AND MATT ARE, LTD
c/o DA VIS & BUJOLD, P.L.L.C.
112 PLEASANT STREET
CONCORD, NH 03301
FIRST NAMED INVENTOR
Kurt Tschopp
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.
HEPPP90AUS 3006
EXAMINER
NGUYEN,CAMTUTRAN
ART UNIT PAPER NUMBER
3786
NOTIFICATION DATE DELIVERY MODE
03/12/2019 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):
USPTO@SHOMAT.COM
patent@nhpat.com
tclark@nhpat.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KURT TSCHOPP and MICHAEL BREITENSTEIN
Appeal2017-005161
Application 12/632,005 1
Technology Center 3700
Before LINDA E. HORNER, LISA M. GUIJT, and LEE L. STEPINA,
Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's rejections of claims 4, 5, 7-9, 13, and 17-20. Final Office
Action (January 8, 2016, "Final Act."). 2 We have jurisdiction under
35 U.S.C. § 6(b ).
1 Appellants identify Medartis AG as the real party in interest. Appeal Brief
(June 8, 2016, "Appeal Br.") 1.
2 Claims 1-3, 6, 10-12, 14-16, 21, and 22 are canceled, and claims 23-28
are pending and withdrawn from consideration. Final Act. 2.
Appeal2017-005161
Application 12/632,005
The Examiner rejected all of the claims as being unpatentable over
teachings of the prior art. Appellants contest the Examiner's findings
underlying the obviousness rejections. For the reasons explained below, we
agree with Appellants that the Examiner has failed to show by a
preponderance of the evidence that the claimed subject matter would have
been obvious in view of the prior art teachings. Thus, we REVERSE.
CLAIMED SUBJECT MATTER
The claimed subject matter on appeal relates to an implant for a palate
that effectively suppresses the fluttering movements of the palate that lead to
snoring and prevents falling back of the soft palate, without hindering
speaking or swallowing. Specification (December 7, 2009, "Spec.") ,r 6.
Claims 5 and 20 are the independent claims. Claim 5 is illustrative of the
subject matter on appeal and is reproduced below.
5. An implant adapted for use in a palate, in
particular a human palate, said implant comprising
a distal portion dimensioned so as to be completely
accommodated in a soft palate, and
a proximal portion dimensioned so as to be fixed to a
hard palate, and
a middle portion extending between the proximal portion
and the distal portion,
wherein the implant is elastic in the middle portion in
such a way that the distal portion is resilient in relation to the
proximal portion, and
the proximal portion extends at an angle of between 15°
and 75° in relation to the distal portion.
Appeal Br. 12 (Claims Appendix).
Independent claim 20 is directed to a method for selecting an implant
from a set of different implants, where each implant "is elastic in the middle
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Application 12/632,005
portion in such a way that the distal portion is resilient in relation to the
proximal portion." Id. at 13.
REJECTIONS
The Final Office Action includes the following rejections:
1. Claims 4, 5, 7-9, and 13 are rejected under 35 U.S.C. § I03(a) as
being unpatentable over Bhat et al. (US 2006/0185680 Al,
published August 24, 2006) ("Bhat").
2. Claim 9 is rejected under 35 U.S.C. § I03(a) as unpatentable over
Bhat and Conrad et al. (US 6,401,717 Bl, issued June 11, 2002)
("Conrad").
3. Claims 17-20 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Bhat and Boucher et al. (US 2007 /0000497 Al,
published January 4, 2007) ("Boucher").
ISSUE
The Examiner found that Bhat discloses, in Figure 34B, an implant for
use in a human palate comprising a distal portion dimensioned to be
accommodated in a soft palate (84), a proximal portion (6, 18) dimensioned
to be accommodated in a hard palate (72) (sic, 74), and a middle portion
extending between the proximal portion ( 6, 18) and the distal portion. Final
Act. 3-4 (addressing claim 5); see also id. at 8 (relying on Bhat for
disclosing the implant of claim 20). The Examiner provided an annotated
version of Bhat's Figure 34B, reproduced below, identifying the distal
portion and middle portion.
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Application 12/632,005
Fig, 348
Id. at 4. Annotated Figure 34B includes an expanded view of the portion of
original Figure 34B including hard palate 74, soft palate 84, and Bhat's
airway implant device, which consists of first inductor 18, wire lead 6, and
deformable element 8c'. In this expanded view, the Examiner identified a
proximal end portion of deformable element 8c' as the "middle portion" and
a distal end portion of deformable element 8c' as the "distal portion." Id.;
see also id. at 3 (noting that claim 5 does not "define where the middle
portion begins and where it ends"). The Examiner also found that Bhat
discloses making deformable element 8c' of an electroactive polymer, which
has an elastic property, so that the identified "middle portion" is elastic "in
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Application 12/632,005
such a way that the distal portion is resilient in relation to the proximal
portion," as claimed. 3 Id. at 5.
Appellants argue that even if deformable element 8c' were considered
to meet the claimed "middle portion" and "distal portion" of the implant,
"wire lead 6 would still prevent the transmission of lateral forces from ...
element 8c['] to the inductor 18" (i.e., the "proximal portion"). Appeal
Br. 8. 4 Appellants assert that this transmission of lateral forces is achieved
because the middle portion is elastic so that the distal portion is resilient in
relation to the proximal portion. Id. Appellants also argue that Bhat's
element 8c' is not "elastic" because it requires a source of electricity to cause
deformation. Id. at 8-9.
The Examiner responds that Bhat's Figures 34A and 34B show that
the portion of element 8c' identified as the claimed "middle portion" is
resilient in relation to the proximal portion. Ans. 3. The Examiner also
responds that the claim as written does not exempt electricity. Id.
The question presented in this appeal is whether the proximal portion
of Bhat's deformable element 8c', which is made from an electroactive
polymer, is "elastic ... in such a way that the distal portion [of the implant]
is resilient in relation to the proximal portion [ of the implant]" as recited in
claims 5 and 20.
3 All of the obviousness rejections on appeal are based on the Examiner's
finding that Bhat's deformable element 8c' is elastic. Final Act. 5-7 (relying
on Conrad for the claimed length of the distal portion and relying on
Boucher for the claimed set of implants).
4 In addition to the arguments presented in the briefs, Appellants' counsel
presented arguments at an oral hearing on February 28, 2019.
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Application 12/632,005
ANALYSIS
The question presented requires us to construe the claim terms
"elastic" and "resilient." The Office "determines the scope of claims ... not
solely on the basis of the claim language, but upon giving claims their
broadest reasonable construction 'in light of the specification as it would be
interpreted by one of ordinary skill in the art."' Phillips v. AWH Corp., 415
F.3d 1303, 1316 (Fed. Cir. 2005) (en bane) (quoting In re Am. Acad. of Sci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)). We first look to the
description provided in Appellants' Specification.
Appellants' Specification describes the elasticity and resiliency of the
middle portion of the implant in terms of its ability to allow the soft palate to
move to a certain extent in relation to the hard palate so that the implant does
not excessively restrict speaking and swallowing. Spec. ,r,r 24, 68, 80. The
Specification describes that the implant is elastic in such a way that
pressures typically occurring behind the soft palate during swallowing, of
approximately 50-100 cm water column, can still be overcome by an
average palate musculature. Id. ,r,r 24, 68.
Appellants' Specification uses the terms "elastic" and "resilient" in a
manner that is consistent with the ordinary meanings of these terms. The
definition of elastic, when used as an adjective, means "capable of
recovering size and shape after deformation" and "capable of being easily
stretched or expanded and resuming former shape." Merriam-Webster On-
Line Dictionary, www.merriam-webster.com/dictionary/elastic, definitions
la and 3, last accessed February 28, 2019. According to this same source,
"resilient" is a synonym of "elastic" and is defined as "capable of
withstanding shock without permanent deformation or rupture" and "tending
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Application 12/632,005
to recover from or adjust easily to misfortune or change." Merriam-Webster
On-Line Dictionary, www.merriam-webster.com/dictionary/resilient, last
accessed February 28, 2019. This source explains that "resilience is the
ability of an elastic material ( such as rubber or animal tissue) to absorb
energy (such as from a blow) and release that energy as it springs back to its
original shape." Merriam-Webster On-Line Dictionary,
www.merriam-webster.com/dictionary/resilience, "Using Resilience Outside
of Physics," last accessed February 28, 2019. Because the Specification
does not define these terms in a way that differs from their ordinary usage,
we find that a person having ordinary skill in the art would understand the
claim terms "elastic" and "resilient" to have their ordinary meanings.
Bhat does not adequately support the Examiner's finding that
deformable element 8c' is elastic such that the distal portion of the implant is
resilient in relation to the proximal portion. Bhat describes a deformable
element made from an electroactive polymer. Bhat ,r 17. Bhat describes
that the electroactive polymer element has a low stiffness under normal
conditions, and that the polymer stiffens and tends to deform when the
electroactive polymer element is energized. Id. ,r,r 17, 18, 69. "When the
charge is removed, the [ electroactive polymer] element becomes soft and
tends not to interfere with the patient's normal activities like swallowing and
speech." Id. ,r 17. Bhat further describes that an "[e]lectroactive polymer is
a type of polymer that responds to electrical stimulation by physical
deformation, change in tensile properties, and/or change in hardness." Id.
,r 74. Figure 34A depicts the tongue in its normal state. Id. ,r 132. Figure
34B depicts the tongue in a collapsed state during sleep. Id.
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Bhat does not expressly disclose that the electroactive polymer
material used in deformable element 8c' has the ability to spring back to its
original shape after deformation so that it is elastic or resilient. Rather, Bhat
describes that when the polymer material of deformable element 8c' is in a
normal, de-energized state, the material is "soft." Although a soft material
may be flexible or pliable, such that it does not interfere with a patient's
swallowing or speech, a soft material is not necessarily capable of springing
back to its original shape after deformation. Bhat describes that when the
polymer material of the deformable element is energized, the material
"stiffens." Bhat is silent about what happens if the material, when in a
stiffened state, undergoes deformation. A stiffened material is not
necessarily capable of springing back to its original shape after deformation.
Thus, we find insufficient evidence in the portions of Bhat relied on by the
Examiner to support the Examiner's finding that Bhat's deformable element
8c' is elastic in such a way that the distal portion of its implant is resilient in
relation to the proximal portion of its implant. Thus, we do not sustain the
rejections under 35 U.S.C. § 103(a) of claims 4, 5, 7-9, 13, and 17-20.
DECISION
The decision of the Examiner rejecting claims 4, 5, 7-9, 13, and 17-
20 is reversed.
REVERSED
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