Ex Parte Al-Terki

Patent Trial and Appeal Board

Mar 30, 2018

13784719 (P.T.A.B. Mar. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/784,719
37833 7590
Richard C. Litman
FILING DATE
03/04/2013
04/03/2018
112 S. West Street
Alexandria, VA 22314
FIRST NAMED INVENTOR
ABDULMOHSEN E.A.H. AL-TERKI
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.
32600.81 2135
EXAMINER
PENG, BO JOSEPH
ART UNIT PAPER NUMBER
3786
NOTIFICATION DATE DELIVERY MODE
04/03/2018 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):
uspto@4patent.com
uspto@nathlaw.com
mbashah@nathlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ABDULMOHSEN E.A.H. AL-TERKI
Appeal2016-000352
Application 13/784,719
Technology Center 3700
Before CHARLES N. GREENHUT, ANNETTE R. REIMERS, and
PAUL J. KORNICZKY, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Abduhnohsen E.A.H. Al-Terki (Appellant) appeals appeal under 35
U.S.C. § 134(a) from the Examiner's decision to reject claims 6-10. Claims
1-5 and 11-15 have been canceled. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We REVERSE.
Appeal 2016-000352
Application 13/784,719
CLAIMED SUBJECT MATTER
The claimed subject matter relates to "a multiple oral and nasal
surgical procedure[]." Spec. i12, Figs. 10, 11.
Claim 6, the sole independent claim on appeal, is representative of the
claimed subject matter and recites:
6. A method of evaluating the oral and nasal organs of a
person having obstructive sleep apnea, comprising the steps of:
(a) performing a nasal endoscopy of the person;
(b) performing a computerized tomography scan of the
sinuses of the person;
( c) performing a sleep study of the person;
( d) performing a sleep endoscopy of the person;
( e) performing a quantitative evaluation of the left and
right frontal sinuses in accordance with the findings of steps (a)
through (d);
(t) recording the results of the frontal sinus evaluation
as a value;
(g) performing a quantitative evaluation of the left and
right ethmoid sinuses in accordance with the findings of steps (a)
through (d);
(g) recording the results of the ethmoid sinus evaluation
as a value;
(i) performing a quantitative evaluation of the left and
right maxillary sinuses in accordance with the findings of steps
(a) through (d);
(j) recording the results of the maxillary sinus evaluation
as a value;
(k) performing a quantitative evaluation of the left and
right sphenoid sinuses in accordance with the findings of steps
(a) through (d);
(1) recording the results of the sphenoid sinus evaluation
as a value;
(m) performing a quantitative evaluation of the nasal
septum in accordance with the findings of steps (a) through (d);
(n) recording the results of the nasal septum evaluation as
a value;
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Application 13/784,719
( o) performing a quantitative evaluation for nasal polyps
in accordance with the findings of steps (a) through (d);
(p) recording the results of the nasal polyp evaluation as
a value;
( q) performing a quantitative evaluation of the nasal valve
in accordance with the findings of steps (a) through (d);
(r) recording the results of the nasal valve evaluation as
a value;
( s) performing a quantitative evaluation of the left and
right inferior nasal turbinates in accordance with the findings of
steps (a) through (d);
(t) recording the results of the inferior nasal turbinate
evaluation as a value;
(u) performing a quantitative evaluation of the left and
right middle nasal turbinates in accordance with the findings of
steps (a) through (d);
( v) recording the results of the middle nasal turbinate
evaluation as a value;
(w) adding the quantitative values for the sinonasal
evaluations of steps ( e) through ( v );
(x) performing a visual examination of the tonsils;
(y) performing a quantitative evaluation of the tonsils in
accordance with the findings of the visual examination of step
(x);
value;
(z) recording the results of the tonsil evaluation as a
(aa) adding the quantitative values of steps (w) and (z);
(bb) performing a nasal endoscopy of the adenoids;
(cc) performing a quantitative evaluation of the adenoids
in accordance with the findings of the nasal endoscopy of step
(bb);
( dd) recording the results of the adenoid evaluation as a
value;
(ee) adding the quantitative values of steps (aa) and (dd);
(ff) performing a visual examination of the tongue base,
epiglottis, and lateral pharyngeal walls;
(gg) performing a quantitative evaluation of the tongue
base in accordance with the findings of the visual examination of
step (dd);
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Appeal 2016-000352
Application 13/784,719
(hh) recording the results of the tongue base evaluation as
a value;
(ii) performing a quantitative evaluation of the epiglottis
in accordance with the findings of the visual examination of step
(ft);
(jj) recording the results of the epiglottis evaluation as a
value;
(kk) performing a quantitative evaluation of the lateral
pharyngeal walls in accordance with the findings of the visual
examination of step (ft);
(ll) recording the results of the lateral pharyngeal wall
evaluation as a value;
(ll);
(mm) adding the quantitative values of steps (hh), (jj), and
(nn) adding the quantitative values of steps ( ee) and (mm);
( oo) performing a visual examination of the soft palate;
(pp) performing a quantitative evaluation of the soft palate
in accordance with the findings of the examinations of steps ( c ),
(d), and (oo);
( qq) recording the results of the soft palate evaluation as
a value;
(rr) adding the quantitative values of steps (nn) and (qq),
thereby arriving at a total score; and
(ss) determining the appropriate obstructive sleep apnea
treatment for the person, from the quantitative values
determined.
REJECTIONS
I. Claims 6 and 8 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Makower (US 2005/0240147 Al, published Oct. 27,
2005), Doelling (US 2011/0295083 Al, published Dec. 1, 2011), van der
Burg (US 2008/0027480 Al, published Jan. 31, 2008), Underwood (US
2005/0234439 Al, published Oct. 20, 2005), Moore (US 2007/0239056 Al,
published Oct. 11, 2007), Mechlenburg (US 2006/0112959 Al, published
June 1, 2006), Rowlandson (US 2005/0234313 Al, published Oct. 20,
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Appeal 2016-000352
Application 13/784,719
2005), Cahali 1 and Injury '2001. 2
II. Claim 7 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Makower, Doelling, van der Burg, Underwood, Moore, Mechlenburg,
Rowlandson, Cahali, Injury '2001, and Richardson. 3
III. Claim 9 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Makower, Doelling, van der Burg, Underwood, Moore, Mechlenburg,
Rowlandson, Richardson, Cahali, Injury '2001, Richardson, Zucconi, 4 and
Chan. 5
IV. Claim 10 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Makower, Doelling, van der Burg, Underwood, Moore, Mechlenburg,
Rowlandson, Richardson, Cahali, Injury '2001, and Westbrook (US
2002/0165462 Al, published Nov. 7, 2002)
1 Cahali et al., Tonsil volume, tonsil grade and obstructive sleep apnea: is
there any meaningful correlation? 66 CLINICS 1347-1351 (2011)
(hereinafter "Cahali").
2 Injury Severity Scoring (http://www.surgicalcriticalcare.netiResources
/iniury severity scoring.pdf, pages 1-12, 05/29/2001 (hereinafter "Injury
'2001 ").
3 Richardson et al., Protocol for the Examination of Specimens from
Patients with Carcinomas of the Lip and Oral Cavity AJCC/UICC TNM,
7th edition, web posting date: Oct 2009 (hereinafter "Richardson").
4 Zucconi et al., Habitual snoring with and without obstructive sleep apnoea:
the importance of cephalometric variables 47 Thorax 157-161 (1992)
(hereinafter "Zucconi").
5 Chan et al., Obstructive Sleep Apnea in Children 69 Am Fam Physician
1147-54, 1159-60 (2004) (hereinafter "Chan").
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Appeal 2016-000352
Application 13/784,719
Claims 6 and 8
ANALYSIS
Rejection I
Appellant contends "[ t ]he Examiner states that the base reference to
Makower possesses quantitative evaluations ... as disclosed in paragraphs
... , [0021] [and] [0131]. However, [neither] oftheseparagraphshave [the]
disclosure as stated by the Examiner." Appeal Br. 10;6 see also Reply Br.
2; 7 Non-Final Act. 3--4; 8 Ans. 15. 9
Appellant's argument is persuasive. Paragraph 21 ofMakower
merely discusses "Reduction/Removal of Nasal Turbinates." See Makower
i-fi-120, 21. Paragraph 131 of Makower merely describes the anatomy of the
human nose. See Makower i-f 131. Neither of these paragraphs discusses an
"evaluation" of any kind let alone a "quantitative evaluation" of various
organs, as called for in claim 6.
In response to Appellant's contention, the Examiner states that "[a]ny
diagnostic images of the left and right frontal sinuses are a quantitative
evaluation while recorded as imaging because any diagnostic image is
made of the contrast of different tissues (i.e. a certain contrast ratio) and
boundary or outline of different tissue (i.e. SNR of the image)." Ans. 15.
However, the Examiner fails to adequately explain how "contrast of different
tissues" (i.e., the light and dark areas of a diagnostic image) correlates to a
6 Appeal Brief (hereinafter "Appeal Br.") (filed Sept. 29, 2014).
7 Reply Brief (hereinafter "Reply Br.") (filed Oct. 5, 2015).
8 Non-Final Office Action (hereinafter "Non-Final Act.") (mailed Apr. 4,
2014).
9 Examiner's Answer (hereinafter "Ans.") (mailed Aug. 18, 2015).
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Application 13/784,719
"quantitative/numeric" evaluation of various organs. See Ans. 15; see also
Reply Br. 4 ("It is unclear how diagnostic images can be added together, as
can the instantly claimed scores from a quantitative evaluation."). 10
Accordingly, for the foregoing reasons, we do not sustain the
Examiner's rejection of claims 6 and 8 as unpatentable over Makower,
Doelling, van der Burg, Underwood, Moore, Mechlenburg, Rowlandson,
Cahali, and Injury '2001.
Rejections II-IV
Claims 7, 9, and 10
The Examiner's obviousness rejections of claims 7, 9, and 10 are each
based on the same unsupported findings discussed above with respect to
independent claim 6. See Final Act. 8-11. The Examiner does not rely on
Richardson, Zucconi, Chan, or Westbrook to remedy the deficiency of
Makower. Accordingly, for reasons similar to those discussed above for
claim 6, we do not sustain the Examiner's obviousness rejections of claims
7, 9, and 10.
10 Appellant's Specification describes that "[ e Jach of the letters of the
mnemonic ST ATS is assigned a numerical value in accordance with the point
value or score [i.e., the quantitative evaluation] determined during the
examination of the patient" and "[ t ]he results of the examination of each area,
organ, or organ group are recorded quantitatively, i.e., as either a zero
(indicating normal structure and function, no correction is needed) or one
(indicating that some form of correction is needed). The results are recorded
in the STATS format described further above." Spec. i-fi-165, 66, respectively
(emphasis added).
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Appeal 2016-000352
Application 13/784,719
DECISION
We REVERSE the decision of the Examiner to reject claims 6-10.
REVERSED
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