Ex Parte Gillis et al

Patent Trial and Appeal Board

Mar 4, 2013

11645918 (P.T.A.B. Mar. 4, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte EDWARD M. GILLIS, CRAIG ARTHUR PURDY,
JOE PARASCHAC, SCOTT ANTHONY MCGILL, RYAN P. BOUCHER,
and LIONEL M. NELSON
____________________

Appeal 2011-007483
Application 11/645,918
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 2011-007483
Application 11/645,918
2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-6, 8, and 9. 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. An implant system comprising
a first magnetic component sized and configured to be
implanted in the back of the tongue,
a second magnetic component sized and configured to be
implanted across an airway from the first magnetic component
in a posterior or posterior-lateral pharyngeal wall,
the airway having a midline, a first section and a second
section, each of the first and second magnetic components
having a first portion disposed on a first side of the midline and
a second portion disposed on a second side of the midline
opposite the first portion,
the second portions of the first and second magnetic
components magnetically repelling each other to open the first
section of the airway on the second side of the midline, and
the first portions of the first and second magnetic
components magnetically attracting each other to narrow or
close the second section of the airway on the first side of the
midline, thereby stabilizing the magnetic repulsion force
between the second portions of the first and second magnetic
components and the open first section of the airway.

References
The Examiner relies upon the following prior art references:
Freedman US 5,176,618 Jan. 5, 1993
Shaoulian US 2006/0241746 A1 Oct. 26, 2006
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Rejections
I. Claim 1 is rejected under 35 U.S.C. § 101 for being directed to non-
statutory subject matter. Ans. 5.
II. Claim 8 is rejected under 35 U.S.C. § 101 for not meeting the utility
requirement. Ans. 3.
III. Claim 8 is rejected under 35 U.S.C. § 112, fourth paragraph, for being
an improper dependent claim. Ans. 4.
IV. Claims 1-6 and 9 are rejected under 35 U.S.C. § 102(e) as anticipated
by Shaoulian. Ans. 6.
V. Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Shaoulian and Freedman. Ans. 8.

SUMMARY OF DECISION
We REVERSE.

OPINION
Rejection III presents a unique issue that we wish to highlight. Thus,
we address Rejection III first and then continue with the remaining
rejections.
Rejection III – 35 U.S.C. § 112, fourth paragraph
Claims 1-4 are independent claims that recite similar implant systems.
Claim 8 recites, “[a] method of treating an airway using an implant system
as defined in claim 1, 2, 3, or 4.” The Examiner rejected claim 8 under the
fourth paragraph of section 112 for “failing to include all the limitations of
the claims upon which it depends and for failing to further limit the subject
matter of the claims upon which it depends.” Ans. 4.
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We cannot sustain the Examiner’s 35 U.S.C. § 112, fourth paragraph,
rejection of claim 8 for being an improper dependent claim because claim 8
is written as an independent claim. Claim 8 recites a statutory class (“A
method”), a preamble (“… treating an airway”), and at least one step (“using
…”). Claim 8 refers to claims 1-4 as shorthand for the structure to use in the
method, not to further define the structure claims. Such are clues that a
claim is independent.
Accordingly, claims that refer to other claims are not necessarily
dependent claims.1 35 U.S.C. § 112, fourth paragraph, states two
requirements of dependent claims:
(1) it “shall contain a reference to a claim
previously set forth” and
(2) it shall “then specify a further limitation.”
Such claims “shall be construed to incorporate by reference all the
limitations of the claim to which it refers.” Id. Notably, the statute does not
say that a dependent claim is one that contains a reference to another claim,
merely that a dependent claim shall have a reference to another claim.2 It is
common Office practice to consider such claims dependent for fee purposes,
but the Manual of Patent Examining Procedure (MPEP) acknowledges that
not all claims referencing another claim are dependent:

1 Two law review articles address this issue in depth: Jason M. Nolan,
Formalism and Patent Claim Drafting: The Status of De Facto Independent
Claims Under the Fourth Paragraph of 35 U.S.C. § 112, 19 Tex. Intell.
Prop. L.J., 263-06 (2011); and Tony A. Gayoso and Irving N. Felt, Can a
Patent Claim that Refers to Another Claim be Independent?, 89 JPTOS 9
(2007).
2 This point was made in Ex parte Moelands, 3 USPQ2d 1474, 1476 (BPAI
1987) (Spencer, Examiner-in-Chief, dissenting).
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The initial determination, for fee purposes, as to
whether a claim is dependent must be made by
persons other than examiners; it is necessary, at
that time, to accept as dependent virtually every
claim which refers to another claim, without
determining whether there is actually a true
dependent relationship.
MPEP § 608.01(n)(II) (emphasis added).
The MPEP also instructs Examiners:
A claim which makes reference to a preceding
claim to define a limitation is an acceptable claim
construction which should not necessarily be
rejected as improper or confusing under 35 U.S.C.
112, second paragraph.
MPEP § 2173.05(f) (citing Ex parte Porter, 25 USPQ2d 1144 (BPAI 1992)).
It would make little sense to include this section of the MPEP if every claim
referencing another claim was deemed to be a dependent claim. Perhaps
most tellingly, the MPEP acknowledges, “there is no set statutory form for
claims.” MPEP § 608.01(m).
In Porter, the case cited in MPEP § 2173.05(f), the Board considered
claims like the present claim 8 “an acceptable format for years” and hinted
that such a claim “could be construed as an independent claim, drafted in a
short-hand format.” Porter at 1147 (citing In re Kuehl, 475 F.2d 658
(CCPA 1973)).
We are aware of one analogous Federal Circuit case, Pfizer, Inc. v.
Ranbaxy Labs., Ltd., 457 F.3d 1284 (Fed. Cir. 2006). In Pfizer, the
following claims were relevant:
1. [R-(R*,R*)]-2-(4-fluorophenyl)-β,δ-
dihydroxy-5-(1-methyle thyl)-3-phenyl-4-
(phenylamino)-carbonyl]-1H-pyrrole-1-heptanoic
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acid or (2R-trans)-5-(4-fluorophenyl)-2-(1-
methylethyl)-N,4-diphenyl-1-[2-(tetrah ydro-4-
hydroxy-6-oxo-2H-pyran -2-yl)ethyl]-1H-pyrrole-
3-carboxamide; or pharmaceutically acceptable
salts thereof.
2. A compound of claim 1 which is [R-
(R*R*)]-2-(4-fluorophenyl)-β-δ-dihydroxy-5-(1-
methyle thyl)-3-phenyl-4-
[(phenylamino)carbonyl]-1H-pyrrole-1-heptanoic
acid.
6. The hemicalcium salt of the compound of
claim 2.
Claim 6 in Pfizer ostensibly raises the issue currently before us.
Claim 1 recites an acid and a salt thereof. Claim 2 depends from claim 1 and
recites the acid. Claim 6 recites the salt of the acid of claim 2. In Pfizer, the
Federal Circuit held that claim 6 failed to further limit claim 2 and that it
was invalid under 35 U.S.C. § 112, fourth paragraph. Id. at 1292. Their
reasoning was that claim 2 narrowed claim 1 and no longer included the salt,
such that claim 6 could not then reference a salt. Id. at 1291. The court
acknowledged claim 6 “could have been properly drafted either as
dependent from claim 1 or as an independent claim – i.e., ‘the hemicalcium
salt of atorvastatin acid,’” (id. at 1292) but declined to “rewrite claims to
preserve validity” (id., citing Nazomi Commc’ns, Inc. v. Arm Holdings, PLC,
403 F.3d 1364, 1368 (Fed. Cir. 2005)).
Notably, in Pfizer, the Federal Circuit took as a given that claim 6 was
dependent.3 Indeed, the issue in Pfizer was not whether a particular claim
was dependent, but whether section 112, fourth paragraph, was an

3 Both parties appear to have asserted that claim 6 was dependent. See
Pfizer, Inc. v. Ranbaxy Labs, Ltd., 405 F.Supp.2d 495, 507 (D.Del. 2005).
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invalidating provision. Pfizer at 1291-92 (“at the time the district court
wrote its opinion, there was no applicable Federal Circuit precedent [on
whether a violation of section 112, fourth paragraph, renders a patent
invalid]”). Accordingly, the holding in Pfizer does not preclude us from
interpreting claim 8 of the present application as independent.
Consequently, we interpret claim 8 as an independent claim, and as
such, cannot sustain the Examiner’s section 112, fourth paragraph, rejection
for being an improper dependent claim.

Rejection I – 35 U.S.C. § 101, non-statutory subject matter
Claim 1 recites two magnetic components “to be implanted across an
airway” and further describes certain characteristics of that airway. The
Examiner rejected claim 1 for “claim[ing] the body” and thus for being
directed to non-statutory subject matter. Ans. 5. However, as Appellants
point out (App. Br. 11-12), the claim specifies magnetic components are “to
be implanted across an airway” (emphasis added). Thus, the sections of the
airway are recited to indicate the future location of the magnetic components
and not to claim the body. Accordingly, the Examiner’s basis for rejecting
claim 1 under section 101 is in error and we do not sustain Rejection I.

Rejection II – 35 U.S.C. § 101, lack of utility
The Examiner rejected claim 8 for lack of utility because it “doesn’t
provide any positive method steps and it is unclear as to what the claim
intends.” Ans. 3. Lack of clarity in claim scope, however, is addressed
under section 112, second paragraph. As to the lack of method steps, we
agree with Appellants that the Examiner has failed to meet the burden of
showing “why the claimed invention has no specific and substantial credible
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utility.” Reply Br. 2 (citing MPEP § 2107). Depending on the context,
single steps such as “using” may be considered proper method steps, and if
not, rejection under section 112, second paragraph is appropriate. See
MPEP § 2173.05(f). In either case, the Examiner has failed to set forth
sufficient reasoning in support of why the claimed invention has no specific
and substantial credible utility, and as such, we do not sustain Rejection II.

Rejection IV – 35 U.S.C. § 102(e), anticipation
The Examiner found that Shaoulian describes the claimed magnetic
components implanted in a tissue body. Ans. 6. Shaoulian is directed to
magnets primarily used in heart tissue, as opposed to the airway as claimed.
See, e.g., Shaoulian, Abstr. The Examiner found that the majority of the
claim language was intended use (id.) or functional language not given
patentable weight (Ans. 7). See also Ans. 9-11.
Appellants argue that the Examiner’s interpretation of the claim
language (i.e., giving no patentable weight to certain limitations) is
erroneous. App. Br. 13. Appellants allege that the claimed invention
requires a different structure than the heart valve reshaping implants of
Shaoulian. App. Br. 14.
We do not reach the issue of whether the implanted magnetic
components of Shaoulian satisfy the limitations of the claims. It is well
established that claims directed to an apparatus must be distinguished from
the prior art in terms of structure rather than function. See, e.g., In re
Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997). However, functional
language must be considered for what it conveys to one of ordinary skill in
the art. In order to satisfy the functional limitations in an apparatus claim,
the prior art apparatus must be capable of performing the claimed function.
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Id. at 1478. Thus, functional and intended use language must be evaluated
to the extent it conveys structural requirements. See, e.g., K-2 Corp. v.
Salomon S.A., 191 F.3d 1356, 1363 (Fed. Cir. 1999) (“The functional
language is, of course, an additional limitation in the claim”). The
Examiner’s evaluation of claim language is typically apparent in view of the
art recited and the rejection made in view of it; the Examiner need not
perform a claim construction. In re Jung, 637 F.3d 1356, 1362-63 (Fed. Cir.
2011).
In the present appeal, the Examiner incorrectly states that intended use
language “does not differentiate” and that functional recitations “must be
expressed as a ‘means’ for performing the specified function … to warrant
the presence of the functional language.” Ans. 6-7. The error in the
Examiner’s rejection is that there is no basis, express or implied, to find by a
preponderance of the evidence that the magnetic structures in Shaoulian are
capable of performing the intended uses and functions claimed. The
Examiner’s finding that “magnetic components sized and configured to be
implanted in an airway … is no different than [those] … in the tissue of a
coronary sinus” is speculative and not based on factual findings or technical
analysis. See Ans. 10. The Examiner does make a finding that Shaoulian’s
magnets can be located in other tissue that requires reshaping or reforming,
but the Examiner does not explain how this finding applies to the
anticipation of a structure having the specific uses and functions claimed.
See Ans. 11 (citing Shaoulian, para. [0056]); but see Shaoulian, para. [0051]
(explaining how magnet strength and orientation are variables modifiable to
affect the deformation of the tissue). Accordingly, we cannot sustain
Rejection II.

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Rejection V – 35 U.S.C. § 103(a), obviousness
The Examiner found that “Shaoulian fails to explicitly disclose
utilization of implant system to treat an airway,” as required by claim 8. The
Examiner found that Freedman discloses an apparatus and method that
“utilize[s] either the attracting forces of dissimilar pole magnets, or the
repelling forces of similar pole magnets.” Ans. 8 (citing Freedman, col. 4, ll.
55-60).
Appellants argue that the Examiner’s rejection fails to address the
claim requirements of both attracting and repelling forces. App. Br. 17.
Each of claims 1-4, referenced by claim 8, includes limitations
requiring both attraction and repulsion. The Examiner’s rejection fails to
address these limitations and instead focuses on Freedman’s disclosure of
either attracting or repelling. As such, we do not sustain Rejection V.

DECISION
We REVERSE the Examiner’s decision regarding claims 1-6, 8, and
9.

REVERSED

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