2019003891 (P.T.A.B. Aug. 4, 2020)

Fellus, Patrick André

Patent Trials and Appeals BoardAug 4, 2020

2019003891 (P.T.A.B. Aug. 4, 2020)

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. 14/000,652 10/04/2013 Patrick André Fellus 250875.000002 4924 6980 7590 08/04/2020 TROUTMAN PEPPER HAMILTON SANDERS LLP 600 PEACHTREE ST NE STE 3000 ATLANTA, GA 30308 EXAMINER HULL, JAMES B ART UNIT PAPER NUMBER 3715 NOTIFICATION DATE DELIVERY MODE 08/04/2020 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): jim.schutz@troutman.com patents@troutman.com ryan.schneider@troutman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte PATRICK ANDRÉ FELLUS Appeal 2019-003891 Application 14/000,652 Technology Center 3700 ____________ Before MICHAEL C. ASTORINO, PHILIP J. HOFFMANN, and CYNTHIA L. MURPHY, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s decision to reject claims 1, 2, 5–7, 9, 10, 13, 16, 17, and 20–27. We have jurisdiction under 35 U.S.C. § 6(b). We heard the Appellant’s arguments on July 21, 2020. We REVERSE and enter a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Dr. Patrick André Fellus. Appeal Br. 1. Appeal 2019-003891 Application 14/000,652 2 STATEMENT OF THE CASE Subject Matter on Appeal The Specification describes that “[t]he invention relates to the field of facial growth in children.” Spec. 1:6; see id. at 1:37 – 2:14. Claims 1 and 23 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. An oral device configured to be worn by a person in the mouth to stress the trigeminal nerve when swallowing, the oral device comprising: an upper portion having a substantially gutter shape and configured to be disposed between an upper lip and an upper dental arch, the upper portion comprising an outer limb and an inner limb, the inner limb of the upper portion having a cut-out shaped to accommodate a frenulum of the upper lip; a lower portion having a substantially gutter shape and configured to be disposed between a lower lip and a lower dental arch, the lower portion comprising an outer limb and an inner limb, the inner limb of the lower portion having a cut-out shaped to accommodate a frenulum of the lower lip; and an opening between the upper portion and the lower portion, the opening having a maximum height of 1.5 cm, wherein the upper portion and the lower portion are connected together at respective extremities so that when the device is positioned in the mouth a labial musculature is substantially at rest and at least part of the opening remains unobstructed, wherein the upper and lower portions prevent the lips from closing and elevates an arch of the tongue when the user swallows so that the trigeminal nerve (V) is mainly stimulated; and wherein the connection between the upper portion and the lower portion is at least partially discontinuous. Appeal Br., Claims App. Appeal 2019-003891 Application 14/000,652 3 Rejection Claims 1, 2, 5–7, 9, 10, 13, 16, 17, and 20–27 are rejected under 35 U.S.C. § 103(a) as unpatentable over Akihiro (US 6,203,471 B1, issued Mar. 20, 2001). ANALYSIS Independent Claim 1 and Dependent Claims 2, 5–7, 9, 10, 13, 16, 17, and 20–22 Independent claim 1 recites, “[a]n oral device configured to be worn by a person in the mouth to stress the trigeminal nerve when swallowing, the oral device comprising . . . an opening between the upper portion and the lower portion, the opening having a maximum height of 1.5 cm.” Appeal Br., Claims App. The Examiner finds that “Akihiro teaches an oral device configured to be worn by a person in the mouth,” including “an opening between the upper portion and the lower portion.” Ans. 3–4 (citing Akihiro, Abstract, col. 1:66 – col. 2, l. 40; Figs. 1–4). Id.2 More specifically, the Examiner finds that Akihiro’s oral lip and chin muscle rehabilitating device has an opening between upper lip rest section 11 and lower lip rest section 12. Id. However, the Examiner also finds that Akihiro fails to expressly disclose that the opening between upper lip rest section 11 and lower lip rest 2 The Examiner’s citation to Akihiro’s “col. 1, line 66-col. 2” does not specify a line in column 2 to end the citation. Ans. 3, 4. We understand line 40 of column 2 to be end of the citation because the Examiner relies on first embodiment of Akihiro’s oral rehabilitation device. The first embodiment, which is shown in Figures 1–4, is described between Akihiro’s column 1, line 66 and column 2, line 40. See also Akihiro, col. 1:36–43. Appeal 2019-003891 Application 14/000,652 4 section 12 has a maximum height of 1.5 cm. Ans. 6. To remedy this deficiency, the Examiner does not rely on a separate reference, rather the Examiner determines: [I]t would have been obvious to one of ordinary skill in the art at the time of the claimed invention to provide an oral device with an opening, as taught by Akihiro, with the claimed dimensions, as a matter of design choice, as Applicant has not disclosed that these specific opening sizes solves any stated problem or is for any particular purpose. In fact, the written description describes the maximum height of the opening can be ‘approximately 2[]cm’ (specification, page 7, lines 12-14) and that ‘these dimensions may vary according to the selected size of device 2, that is in relation to the dimensions of a child’s mouth’ (specification, page 7, lines 18-19). Moreover, it appears that the device of Akihiro, or applicant’s invention, would perform equally well with any opening size, so long as the mouth is held open while allowing the user to breath. Akihiro expressly teaches the disclosed structure holds the lips open (col. 2, lines 30-31) and shows the device in a user’s mouth with the opening unobstructed while holding the upper and lower lips of the user apart (FIG. 4). Accordingly, it would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made to have modified Akihiro such that the opening had dimensions as claimed because such a modification would have been considered a mere design consideration which fails to patentably distinguish over Akihiro. Id. at 6–7 (emphasis added). The Appellant points out that Akihiro’s oral rehabilitation device serves to train lip and chin muscles. Appeal Br. 3 (citing Akihiro, col. 2, ll. 30–35). The Appellant argues that one of ordinary skill in the art armed with Akihiro’s teachings would never remove the callisthenic benefit to the user. See id. at 5. The Appellant contends that having an opening between upper lip rest section 11 and lower lip rest section 12 with a maximum Appeal 2019-003891 Application 14/000,652 5 height of 1.5 cm “may lead to no considerable advantage to the user.” Appeal Br. 5. Accordingly, an issue presented in this appeal is whether Akihiro’s device –– specifically, the first embodiment as shown in Figures 1–4 –– would be able to function as an oral lip and chin rehabilitation device, if the opening between upper lip rest section 11 and lower lip rest section 12 had a maximum height of 1.5 cm. At the outset, we note that Akihiro describes “[t]he oral lip and chin muscle rehabilitating device is applicable to those patients suffering disturbance in chewing, swallowing and speaking caused by injury or stroke.” Akihiro, col. 1, ll. 8–11. Therefore, one of ordinary skill in the art would understand that the intended patients of Akihiro’s oral rehabilitation device lack the ability to properly chew, swallow, or speak due to a condition or injury. Akihiro describes the first embodiment of oral lip and chin rehabilitation device is a “special design” that a patient can use to rehabilitate and restore the oral cavity function. Id. at col. 2, ll. 35–36. The design of the rehabilitation device provides a stretching force to a patient’s lips to stretch open the patient’s lips, and then the patient practices the pressing and mating the lips together to train the muscles of the lips and chin. See id. at col. 2, ll. 30–36. Akihiro fails to describe the maximum height of the opening between upper lip rest section 11 and lower lip rest section 12. However, the relative size of Akihiro’s device, as well as the maximum height of the opening, can be inferred from Figures 3 and 4, which show the first embodiment of the oral rehabilitation device stretching Appeal 2019-003891 Application 14/000,652 6 out the patient’s upper and lower lips 91, 92. See id. at col. 1, ll. 40–43, col. 2, ll. 28–36. In this case, it is not clear if Akihiro’s device would be able to function as an oral lip and chin rehabilitation device if the maximum height of the opening between upper lip rest section 11 and lower lip rest section 12 was fixed at 1.5 cm (approximately 0.59 inches). Stated otherwise, even assuming Akihiro’s device had an opening with a maximum height of 1.5 cm –– while keeping the relative dimensions of the remainder of the oral rehabilitation device intact –– it is unclear if the device would be able to properly apply a stretching force to a patient’s lips to stretch open the lips so that the patient can practice pressing and mating their lips together to train the muscles of the lips and chin and restore the patient’s ability to chew, swallow, or speak due to a condition or injury. Further, we note that the Appellant submitted a Declaration under 37 C.F.R. § 1.132 from the inventor Dr. Patrick Fellus (“Fellus Declaration”) as evidence, with Exhibits A and B attached.3 Exhibit A shows a receipt for a lip trainer product having a size for an infant/child. Decl. ¶ 5. According to the Appellant, the product is from a website linked to assignee listed on the Akihiro reference, Actwell Technology, Inc. See id. Exhibit B shows the height of the opening of the lip trainer product to be greater than 2.5 cm. See Decl. ¶ 7. The Examiner stipulates that the opening is greater than 2.5 cm. Ans. 12. 3 The Declaration attaches a Dr. Patrick Fellus’ Curriculum Vitae (CV) as well as Exhibits A–E. Appeal 2019-003891 Application 14/000,652 7 It is the Examiner’s position that shrinking the opening size 1.1 cm would not prevent a wearer of the device from performing lip exercises (i.e., flexing their facial muscles). See Ans. 16. However, it appears that the Examiner’s position is based on speculation as there is no explanation why 1.5 cm is a sufficient maximum height for the opening of the first embodiment of Akihiro’s oral lip and chin rehabilitation device. More specifically, the Examiner fails to adequately explain –– using evidence and/or technical reasoning –– why an opening with a 1.5 cm maximum height would retain the functionality of Akihiro’s special design, i.e., an oral lip and chin rehabilitation device that applies a stretching force to a patient’s lips to stretch open the lips so that the patient can practice pressing and mating their lips together to train the muscles of the lips and chin and restore the patient’s ability to chew, swallow, or speak due to a condition or injury. Thus, we do not sustain the Examiner’s rejection of independent claim 1 and claims 2, 5–7, 9, 10, 13, 16, 17, and 20–22, which depend therefrom. Independent Claim 23 and Dependent Claims 24–27 Claim 23 recites, “[a] method to stress a trigeminal nerve in a user during swallowing, comprising . . . preventing, using the oral device, lips of the user from closing and elevating an arch of the tongue when the user swallows, while keeping lips substantially at rest so that the trigeminal nerve (V) is mainly stimulated.” Appeal Br., Claims App. (emphasis added). The Examiner construes the recitation “while keeping lips substantially at rest,” among other language in claim 23, as an intended use. See Ans. 10 (citing Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 Appeal 2019-003891 Application 14/000,652 8 F.3d 1373, 1381 (Fed. Cir. 2003); Hoffer v. Microsoft Corp., 405 F.3d 1326, 1329, (Fed. Cir. 2005)). The Appellant argues against the Examiner’s position. Reply Br. 7–9. The Appellant has the better position. We construe the plain language of the recited language of claim 23, when read in light of the context of claim 23, to require the user of the oral device to keep their lips substantially at rest during swallowing. The Examiner finds that Akihiro’s Figures 3 and 4 shows the oral lip and chin rehabilitation device having upper and lower lip rest sections 11, 12, and that these sections provide a user the ability to “rest their labial musculature while the device maintains an unobstructed opening.” Ans. 10. It is the Examiner’s position is that “whether or not the user’s lips are at rest while wearing . . . Akihiro’s device is solely dependent on the actual end user’s conscious decision to exercise their facial muscles by tensing their lips or not.” Id. at 13. Akihiro’s oral rehabilitation device applies a stretching force to the patient’s lips so that the lips are stretched open. Akihiro, col. 2, ll. 30–35. One of ordinary skill in the art would understand that when the lips are stretched open by a stretching force, the stretching force is also being applied to the muscles around the lips and chin, i.e., the oral cavity. See Akihiro, col. 1, ll. 23–25, col. 2, ll. 30–36. This stretching force applied to the muscles around the lips and chin is the exact opposite of these muscles being at rest. See Appeal Br. 6. The ability for a patient to consciously relax does not remove the stretching force applied to the muscles around the lips and chin. Thus, we do not sustain the Examiner’s rejection of independent claim 23 and claims 24–27, which depend therefrom. Appeal 2019-003891 Application 14/000,652 9 NEW GROUND OF REJECTION We reject claim 16 under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre- AIA), second paragraph, as failing to set forth the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant(s) regard as their invention. Independent claim 1 recites, “an opening between the upper portion and the lower portion, the opening having a maximum height of 1.5 cm.” Appeal Br., Claims App. Claim 1 requires a maximum height of 1.5 cm. Claim 16, which depends from claims 1 and 5, further recites “wherein the opening has a maximum height of between 3 mm and 4.5 cm.” Id. Claim 16 includes a range for the maximum height that exceeds the maximum height explicitly recited in claim 1. Logically, any further defined value for maximum height that is greater than 1.5 cm (claim 16) is not consistent with an opening having a maximum height of 1.5 cm (claim 1). Otherwise, the meaning of the term “maximum” in “maximum height” has no significance and would need to be read out of claim 1 for the recitation of claim 16 to make sense. Therefore, claim 16’s recitation of a range that includes values greater than 1.5 cm is indefinite. See In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014) (during prosecution a claim is indefinite when it contains words or phrases whose meaning is unclear); Ex parte McAward, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential) (explaining that the USPTO considers a claim indefinite when it “contains words or phrases whose meaning is unclear”). Stated differently, the inconsistency in this case concerns the order of how the maximum height is being claimed. The claims would be definite if, for example, an independent claim recited a range for the maximum height of Appeal 2019-003891 Application 14/000,652 10 the opening between 3 mm and 4.5 cm, and a claim depending from the independent claim recited the opening having a maximum height of 1.5 cm. However, the opposite order, which is the order that is claimed, is indefinite. We also note that the Specification describes a first embodiment, as shown in Figures 1–5, where the opening has a maximum height of approximately 1.5 cm, and a second embodiment, as shown in Figures 6–10, where the “opening [] may have . . . a maximum height of between 3 mm and 4.5 cm.” Spec. 2:22–33; 6:15–16, 38, 7:20–21. The Specification also describes that the dimensions of the second embodiment may be applied to the first embodiment. Id. at 7:25–26 (“These dimensions may be applied to the embodiment in Figures 1 to 5.”). CONCLUSION We REVERSE the Examiner’s rejection of claims 1, 2, 5–7, 9, 10, 13, 16, 17, and 20–27 under 35 U.S.C. § 103(a) as unpatentable over Akihiro. We enter a NEW GROUND OF REJECTION of claim 16 under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph, as indefinite. 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter Appeal 2019-003891 Application 14/000,652 11 reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). In summary: Claims Rejected 35 U.S.C. § Reference/ Basis Affirmed Reversed New Ground 1, 2, 5–7, 9, 10, 13, 16, 17, 20–27 103(a) Akihiro 1, 2, 5–7, 9, 10, 13, 16, 17, 20–27 112(b) / 112 (pre- AIA), second paragraph Indefinite 16 Overall Outcome 1, 2, 5–7, 9, 10, 13, 16, 17, 20–27 16 REVERSED; 37 C.F.R. § 41.50(b)