11332233 (B.P.A.I. Sep. 24, 2010)

Ex Parte Posnick

Board of Patent Appeals and InterferencesSep 24, 2010

11332233 (B.P.A.I. Sep. 24, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/332,233 01/17/2006 Jeffrey C. Posnick 15330.0002 2924 27890 7590 09/24/2010 STEPTOE & JOHNSON LLP 1330 CONNECTICUT AVENUE, N.W. WASHINGTON, DC 20036 EXAMINER HAMMOND, ELLEN CHRISTINA ART UNIT PAPER NUMBER 3733 MAIL DATE DELIVERY MODE 09/24/2010 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte JEFFREY C. POSNICK ____________________ Appeal 2009-013867 Application 11/332,233 Technology Center 3700 ____________________ Before: WILLIAM F. PATE III, JOHN C. KERINS, and KEN B. BARRETT, Administrative Patent Judges. PATE III, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-013867 Application 11/332,233 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from the rejection of claims 1-28 and 47. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The claims are directed to a midface external distraction method and apparatus. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for distracting a region of a facial skeleton, comprising: attaching a curved temporal bar of a device to a skull such that the posterior temporal end of the temporal bar is attached to the skull at substantially eye- and temple-level, and the anterior maxillary end curves around in front of the facial skeleton at the level of a midfacial or maxillofacial region; and securing the anterior maxillary end of the temporal bar to a midface or craniomaxillofacial region of the facial skeleton, thereby applying a force to the attached region sufficient to effect distraction. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Schendel Greene US 6,589,250 B2 US 7,011,642 B2 Jul. 8, 2003 Mar. 14, 2006 REJECTIONS Claims 1, 4, 5, 8-17, 20, 21, 24-28 and 47 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Schendel. Ans. 3. Claims 2, 3, 6, 7, 18, 19, 22 and 23 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Schendel and Greene. Ans. 8. Appeal 2009-013867 Application 11/332,233 3 OPINION We have carefully reviewed the rejections on appeal in light of the arguments of the Appellant and the Examiner. As a result of this review we have determined that the Schendel reference does not establish the lack of novelty of the claimed subject matter, nor does Schendel in view of Greene establish a prima facie case of obviousness with respect to the claimed subject matter. Therefore, the rejections on appeal are reversed. Our reasons follow. With respect to claim construction, the claimed term “substantially” is often construed in patent claims as “‘largely but not wholly that which is specified.’” See, e.g., York Prods., Inc. v. Cent. Tractor Farm & Family Ctr., 99 F.3d 1568, 1572-73 (Fed. Cir. 1996) (citation omitted). Accordingly, we will construe Appellant’s limitation of “at substantially eye- and temple- level” as being largely but not wholly at the level of the temple or the temporal region on a human skull. Turning to the disclosure of Schendel, Schendel discloses a maxillary distraction device with the posterior free end 16 connected to implantable anchors 20 which are implanted in the maxillary bones at the malar region with the free ends or the heads of the screws positioned within the mouth. See col. 3, ll. 3-17. While it appears that these free ends or heads of the screws are located at the upper extremity of the mouth, it is our finding that this region is relatively far from the temporal region of the skull, whereas Appellant’s claimed method or article claims require attachment substantially at eye- and temple- level. As shown in Figure 5 of Schendel, the posterior end 16 and implantable anchors 20 are somewhat below the orbital socket in the skull. This is a further illustration that the method of Appeal 2009-013867 Application 11/332,233 4 Schendel cannot anticipate a method which requires the connection of a bar at substantially eye- or temporal-level. It is our further finding that Greene discloses in Figure 1 a conventional halo bar and in the remaining Figures a helmet for the fixation of a distraction arrangement. We are in agreement with Appellant’s argument that the Examiner did not attempt to provide articulated reasoning with rational underpinnings as to how the internal maxillary distraction device of Schendel, which is placed interior to the mouth, could be combined with an exterior maxillary distraction device which is totally outside the user’s skull. Therefore the patent to Greene cannot provide the missing teaching of the posterior securement at eye level or in the temporal region of the skull. For this reason, the Examiner has not established the prima facie obviousness of claims 2, 3, 6, 7, 18, 19, 22, and 23 rejected under 35 U.S.C. § 103. DECISION The rejection of claims 1, 4, 5, 8-17, 20, 21, 24-28 and 47 under 35 U.S.C. § 102 is reversed. The rejection of claims 2, 3, 6, 7, 18, 19, 22 and 23 under 35 U.S.C. § 103 is reversed. REVERSED nlk STEPTOE & JOHNSON LLP 1330 CONNECTICUT AVENUE, N.W. WASHINGTON DC 20036