11893291 (B.P.A.I. Apr. 30, 2012)

Ex Parte Aray

Board of Patent Appeals and InterferencesApr 30, 2012

11893291 (B.P.A.I. Apr. 30, 2012)

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. 11/893,291 08/15/2007 Ricardo Alfredo Fuenmayor Aray 4218 7590 04/30/2012 Ricardo A. Fuenmayor Aray 2nd Floor 6318 23 Ave. Brooklyn, NY 11204 EXAMINER HOBAN, MELISSA A ART UNIT PAPER NUMBER 3738 MAIL DATE DELIVERY MODE 04/30/2012 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 RICARDO ALFREDO FUENMAYOR ARAY __________ Appeal 2011-001765 Application 11/893,291 Technology Center 3700 __________ Before TONI R. SCHEINER, ERIC GRIMES, and JACQUELINE WRIGHT BONILLA, Administrative Patent Judges. GRIMES, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a device for carrying out a face-lift, which the Examiner has rejected for indefiniteness and obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal 2011-001765 Application 11/893,291 2 STATEMENT OF THE CASE Claims 1 and 2 are on appeal, and read as follows:1 1. An intra-scalp beautifying device for instantaneous face-lifting consisting of a round or elliptically-shaped device made of solid biocompatible material, measuring 5 12/16" long x 4 12/16" wide, having sloping edges and an ever increasing thickness in the direction from border to center, starting at a negligible thickness at the borders and increasing to a varying maximum thickness of 1 ½" at its center, its upper design following a curve which parallels the shape of the skull as for it to be unnoticeable from the outside. 2. The device according to claim 1, wherein the solid biocompatible material is either flexible or rigid medical grade silicone or other inert synthetic or naturally derived polymeric material or substance. I. The Examiner has rejected claim 1 under 35 U.S.C. § 112, second paragraph, on the basis that the phrase “upper design” lacks antecedent basis and is indefinite (Office Action mailed Dec. 17, 2009, at 2).2 We will reverse this rejection. The Specification describes the disclosed and claimed device as being inserted under the skin of the scalp to helps stretch the skin of the face and provide a face-lifting effect (Spec. 5). 1 The version of the claims in the Appeal Brief includes amendments that were submitted after final rejection and were not entered by the Examiner (see Answer 2). Although Appellant requested that the Board enter the amendment (Appeal Br. 39-40), that issue can only be reviewed by way of petition, not appeal. See Manual of Patent Examining Procedure §1002.02(c). The claims on appeal, therefore, are those that were pending after the amendments filed on Sept. 29, 2009, which are reproduced above. 2 The Examiner did not repeat this rejection in the Answer but stated that all rejections in the final Office Action were maintained unless expressly withdrawn (Answer 2-3). Since the Examiner did not expressly withdraw the indefiniteness rejection, we understand it to be maintained. Appeal 2011-001765 Application 11/893,291 3 The Specification states that the “upper part of the invention follows a curve which parallels the shape of the head so the device remains unnoticed from the outside” (id.). When read in light of the Specification, therefore, the limitation that “its upper design following a curve which parallels the shape of the skull as for it to be unnoticeable from the outside” (claim 1) would be understood to refer to the shape of the top surface of the device. II. The Examiner has rejected claims 1 and 2 under 35 U.S.C. § 103(a) as obvious based on Sasaki3 (Answer 3). The Examiner finds that Sasaki discloses a device that meets the limitations of the claims except for the specific dimensions (id. at 4). The Examiner concludes that it would have been obvious “to include these dimensions since such a modification would have involved a mere change in the size of a component” (id. at 4-5). Appellant argues, among other things, that “the invention is structurally ‘solid’: that is, it is a device having a definite shape and volume, having the interior completely filled up, free from cavities, or not hollow” (Appeal Br. 26-27), while Sasaki describes “an empty silicone envelope with a void pocket to be filled up with fluid” (id. at 27). We agree with Appellant that the claims, when read in light of the Specification, define a device that is solid as opposed to hollow. The claims are directed to a device “consisting of a round or elliptically shaped device made of solid biocompatible material” (claim 1). “[C]losed transition phrases such as ‘consisting of’ are understood to exclude any elements, 3 Sasaki et al., U.S. Patent 4,841,992, June 27, 1989 Appeal 2011-001765 Application 11/893,291 4 steps, or ingredients not specified in the claim.” AFG Indus., Inc. v. Cardinal IG Co., 239 F.3d 1239, 1245 (Fed. Cir. 2001). Thus, a device “consisting of” a solid biocompatible material excludes other materials, such as the fluid that fills Sasaki’s device (see Sasaki, col. 3, ll. 22-27). The Specification confirms that the claimed device is solid and made from a biocompatible material such as silicone. See Spec. 4 (‘the material used in the face-lifter is solid and totally biocompatible medical-grade silicone”); 5 (“flexible, solid, hypo-allergenic medical grade silicone”); 6 (“it consists basically of 100% solid silicone”); and 8 (“flexible, solid, hypo- allergenic medical grade silicone”). “[D]uring examination proceedings, claims are given their broadest reasonable interpretation consistent with the specification.” In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000). In view of the Specification’s consistent description of the disclosed device as solid, the Examiner’s interpretation of the claims as encompassing a hollow device, like that disclosed by Sasaki, is unreasonably broad. The Examiner also points to Sasaki’s citation of Austad4 and argues that this alternative would not require fluid injection (Answer 4). Austad discloses a device similar to Sasaki’s but containing an osmotically active material within a fluid-permeable membrane (Austad, col. 2, ll. 35-42). The device expands as fluid is drawn across the membrane by osmosis (see id. at col. 1, ll. 1-14). The osmotically active material can start out as any of a variety of solid materials (see id. at col. 3, ll.33-50), but the devices disclosed by both Sasaki and Austad are intended to achieve their final shape 4 Austad, U.S. Patent 4,157,085, June 5, 1979 Appeal 2011-001765 Application 11/893,291 5 when they are filled with fluid. The Examiner has not shown that Sasaki’s device, if implemented using Austad’s expansion mechanism, would consist of a solid biocompatible material and have the shape and dimensions recited in the claims on appeal. SUMMARY We reverse the rejection of claim 1 under 35 U.S.C. § 112, second paragraph, and the rejection of claims 1 and 2 under 35 U.S.C. § 103(a). REVERSED lp