Ex Parte Aarestad et al

Patent Trial and Appeal Board

Aug 22, 2018

12838669 (P.T.A.B. Aug. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/838,669 07/19/2010 Jerome Aarestad
35938 7590 08/24/2018
Acuity Law Group, P.C.
12707 High Bluff Drive
Suite 200
San Diego, CA 92130-2037
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.
5IS-002-CT 6783
EXAMINER
HICKS, VICTORIA J
ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
08/24/2018 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):
docketing© acuity lg. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEROME AARESTAD, RICHARD ROSE, JOHN NELSON, and
DONNA PALMER
Appeal 2016-007311
Application 12/838,669 1
Technology Center 3700
Before LISAM. GUIJT, BRADLEYB. BAY AT, and
FREDERICK C. LANEY, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the decision
rejecting claims 1-18 under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim subject
matter which Appellants regard as the invention. See Answer 2-3 (mailed
May 20, 2016) (modified rejections). 2 We have jurisdiction under 35 U.S.C.
§ 6(b ). Appellants' counsel appeared at oral hearing held on August 14,
2018.
We REVERSE.
1 Appellants identify "Sommetrics, Inc." as the real party in interest. Appeal
Brief 4 (filed Dec. 29, 2015).
2 Other indefiniteness rejections have been withdrawn. Answer 4---6.
Appeal 2016-007311
Application 12/838,669
STATEMENT OF THE CASE
Claimed Subject Matter
Appellants' invention relates to a medical device "for creating and
maintaining an obstruction free upper airway." Spec. 1. According to
Appellants, "[o]bstruction of the upper airway (that portion of the breathing
passage which is outside of the thoracic cage)" can occur due to sleep apnea,
airway tumors, and inflammatory or traumatic damage to the upper airway."
Id.
Claims 1, 1 7, and 18 are the only independent claims on appeal.
Claim 1, reproduced below, is illustrative of the subject matter on appeal:
1. A therapeutic apparatus for relieving obstruction to the
upper airway of a patient, comprising:
a vessel having a vessel edge and a vessel internal
surface, the vessel edge configured to seat against the chin and
neck of the patient, thereby defining a chamber at an external
location of the patient associated with the anterior triangle of
the neck;
a means for reducing contact pressure of the vessel and
the neck of the patient, wherein the means for reducing contact
pressure is unitary with and extends away from the vessel edge,
the vessel edge and means for reducing contact pressure being
configured to seat against the chin and neck of the patient to
define the chamber at an external location approximately at the
internal soft tissue of the patient associated with the anterior
triangle of the neck and to create a seal with the skin of the
patient upon application of a negative pressure within the
chamber; and
a means for producing a negative pressure within the
chamber to apply a force of 0.5 kg to 6.68 kg to a surface of the
neck of the patient.
Appeal Brief 10, Claims App.
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Application 12/838,669
ANALYSIS
Indefiniteness
The Examiner determines that the terms "the upper airway of a
patient" as recited in the preamble of independent claims 1, 17, and 18, and
"the full periphery of the vessel" as recited in claim 6, lack proper
antecedent basis and, as such, render those claims indefinite under 35 U.S.C.
§ 112, second paragraph. See Answer 2-3.
Independent claims 1, 17, and 18
Appellants contend the legal standard for definiteness under 35 U.S.C.
§ 112, second paragraph, is whether a skilled artisan would understand what
is claimed when the claim is read in light of the specification. Appeal Brief
5---6. According to Appellants, the failure to provide explicit antecedent
basis for terms does not always render a claim indefinite under§ 112,
second paragraph, particularly "[i]f the scope of a claim would be
reasonably ascertainable by those skilled in the art." Reply Brief 6 (filed
July 19, 2016). For example, Appellants argue the term "the upper airway
of a patient" as recited in claims 1, 1 7, and 18, when read in light of the
Specification, is an unambiguous anatomical term, which is an inherent
characteristic of a patient. Appeal Brief 5---6.
The Examiner responds:
It is unclear what specific anatomical structure( s) that Appellant
is attempting to refer to by reciting "the upper airway of the
patient." For instance, it is unclear if this anatomical limitation
refers to the uppermost edge of the airway of the patient, or the
upper half of the airway of the patient, for instance. As
Appellant has not previously recited and defined this claimed
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Application 12/838,669
"the upper airway of the patient" in the claim( s ), the limitation
does not have proper antecedent basis in the claim( s ).
Answer 6. We agree with Appellants.
Whether a claim is indefinite is an issue of law. Credle v. Bond, 25
F.3d 1566, 1576 (Fed. Cir. 1994). The second paragraph of§ 112, requires
that a patent's claims, viewed in light of the specification and prosecution
history, inform those skilled in the art about the scope of the invention with
reasonable certainty. Nautilus, Inc. v. Biosig, Insts., Inc., 134 S. Ct. 2120,
2129-30 (2014). "Indefiniteness is to be evaluated from the perspective of a
person with ordinary skill in the relevant art at the time of the invention-
when the patent application was filed." Id. at 2128. In other words, "a
patent must be precise enough to afford clear notice of what is claimed,
thereby apprising the public of what is still open to them." Id. at 2129. The
mere fact that a term or phrase used in the claim has no antecedent basis
does not mean, necessarily, that the term or phrase is indefinite. As
correctly pointed out by Appellants, the failure to provide explicit antecedent
basis for terms does not always render a claim indefinite. If the scope of a
claim would be reasonably ascertainable by those skilled in the art, then the
claim is not indefinite. See Energizer Holdings Inc. v. Int'! Trade Comm 'n,
435 F.3d 1366, 1371 (Fed. Cir. 2006) (holding that "anode gel" provided by
implication the antecedent basis for "zinc anode"); Ex parte Porter, 25
USPQ2d 1144, 1145 (Bd. Pat. App. & Inter. 1992) ("controlled stream of
fluid" provided reasonable antecedent basis for "the controlled fluid").
Moreover, inherent components of elements recited have antecedent basis in
the recitation of the components themselves. See MPEP 2173.05(e). For
example, reciting "the outer surface of said sphere" would not require an
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Application 12/838,669
antecedent recitation that the sphere has an outer surface. See Bose Corp. v.
JBL, Inc., 274 F.3d 1354, 1359 (Fed. Cir 2001) (holding that recitation of
"an ellipse" provided antecedent basis for "an ellipse having a major
diameter" because "[t]here can be no dispute that mathematically an inherent
characteristic of an ellipse is a major diameter").
Appellants' arguments are persuasive that when the term "the upper
airway of a patient" of claims 1, 1 7, and 18 are read in light of the
Specification, a skilled artisan would understand their scope and meaning
with reasonable certainty. As indicated above, the Specification discloses
that the obstruction of "the upper airway" is "that portion of the breathing
passage which is outside of the thoracic cage" (Spec. 1 ). "The respiratory
tract is divided into the upper airways and lower airways." Reply Brief 3.
And, Figures 1 F and 1 H of Appellants' Specification show a sagittal view of
a subject's upper airway. Moreover, "the upper airway of a patient" refers to
an inherent characteristic of the respiratory system in humans, which has
antecedent basis in the recitation of the component itself.
The Examiner's response in the Answer as to which part of the upper
airway the claim is defining appears to be concerned with claim breadth,
because Appellants have chosen to recite the entire rather than a portion of
the upper airway or upper respiratory tract, which "includes the nose and
nasal passages, paranasal sinuses, the pharynx, and the portion of the larynx
above the vocal cords." Reply Brief 3. It is well settled that claim breadth is
not a basis for indefiniteness. In re Gardner, 427 F.2d 786, 788 (CCP A
1970) ("Breadth is not indefiniteness.").
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On the record before us, we conclude Appellants have demonstrated
the Examiner erred in rejecting claims 1, 1 7, and 18 under 3 5 U.S. C. § 112,
second paragraph, for lacking antecedent basis as to the term "the upper
airway of a patient." Thus, we do not sustain the rejection.
Dependent claim 6
We reach the same conclusion as to the rejection of dependent claim 6
under 35 U.S.C. § 112, second paragraph. For similar reasons discussed
above, we determine that when the term "the full periphery of the vessel" of
claim 6 is read in light of the Specification, a skilled artisan would
understand its scope and meaning with reasonable certainty. Claim 6 recites
"wherein the elastomeric external flap extends around the full periphery of
the vessel." Appeal Brief 11 (Claim App.). The Examiner acknowledges
"that a periphery is defined to be 'the outside edge of an area' or 'the
external boundary or surface of a body."' Answer 6. Independent claim 1,
which claim 6 depends from, defines "a vessel having a vessel edge and a
vessel internal surface, the vessel edge configured to seat against the chin
and neck of the patient, thereby defining a chamber at an external location of
the patient associated with the anterior triangle of the neck." Appeal Brief
10 (Claims App.). Figure lB of Appellants' Specification shows vessel 105
having an elastomeric external flap 107 that extends around the entire
periphery of the vessel. As such, the claimed vessel as defined and shown
inherently has a periphery or outside edge, and thus, would not require an
antecedent recitation to define the invention with a reasonable degree of
clarity and precision. Accordingly, we do not sustain the rejection of claim
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6 as indefinite for lacking proper antecedent basis as to term "the full
periphery of the vessel."
DECISION
The decision of the Examiner to reject claims 1-18 is reversed.
REVERSED
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