Ex Parte aWengen et alDownload PDFPatent Trial and Appeal BoardDec 17, 201311748779 (P.T.A.B. Dec. 17, 2013) Copy Citation 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. 11/748,779 05/15/2007 Daniel aWengen 4106 7054 7590 12/17/2013 STRIKER, STRIKER & STENBY 103 EAST NECK ROAD HUNTINGTON, NY 11743 EXAMINER SHARMA, YASHITA ART UNIT PAPER NUMBER 3774 MAIL DATE DELIVERY MODE 12/17/2013 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 PATENT TRIAL AND APPEAL BOARD __________ Ex parte DANIEL AWENGEN and UWE STEINHARDT1 __________ Appeal 2011-013428 Application 11/748,779 Technology Center 3700 __________ Before DONALD E. ADAMS, ERIC GRIMES, and ULRIKE W. JENKS, Administrative Patent Judges. GRIMES, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a nasal implant, which have been rejected for anticipation and obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We affirm the rejections for obviousness. 1 Appellants identify the Real Party in Interest as Heinz Kurz GmbH Medizintechnik (Appeal Br. 2). Appeal 2011-013428 Application 11/748,779 2 STATEMENT OF THE CASE “Spreading the nasal wings can, for example, be indicated in the case of stenosis, i.e. narrowing, of the nasal valve, or in the case of a collapse of the soft tissue of the nasal wings” (Spec. 3). “A simple and known method of spreading the nasal wings involves the use of an adhesive plaster that provides nasal support, which plaster is in particular also used by high- performance athletes,” but this method is not suitable for permanent application because it can cause skin problems (id.). The Specification discloses “a roof-shaped implant for spreading the nasal wings, which implant is attachable to the triangular cartilage of the human nose” (id. at 2). Claims 1-17 are on appeal. Claim 1 is the only independent claim and reads as follows:2 1. A roof-shaped implant for spreading nasal wings, attachable to a triangular cartilage at a dorsum of a human nose, the implant comprising: a dorsal section being adapted to a predetermined shape of the triangular cartilage and rested closely against the triangular cartilage without a hollow space between the implant and the triangular cartilage, the dorsal section to be located above the dorsum and having a shape selected from the group consisting of a flat shape and a curved shape so as to be only slightly angled toward a plateau region of the triangular cartilage at an angle of spread of ω>160°, or curved around the plateau region in a barrel shape at a radius of curvature of r>4cm; and two lateral sections to be arranged on both sides of the nasal wings and extending so as to be essentially parallel in relation to a respective nasal wing. 2 As noted by the Examiner (Answer 4), the copy of the claims in the Claims Appendix of the Appeal Brief is incorrect because it includes amendments that were not entered. The claim language reproduced above is as amended Dec. 14, 2009, in the last claim amendment that was entered. Appeal 2011-013428 Application 11/748,779 3 The claims stand rejected as follows: • Claims 1, 3-5, 7, 11, and 15 under 35 U.S.C. § 102(b) as anticipated by Khanna3 (Answer 4); • Claims 1-11, 13, 16, and 17 under 35 U.S.C. § 103(a) as obvious based on Brusis4 and Catone5 (Answer 5); • Claims 12 and 14 under 35 U.S.C. § 103(a) as obvious based on Brusis, Catone, and Lind6 (Answer 6); and • Claim 15 under 35 U.S.C. § 103(a) as obvious based on Brusis, Catone, and Ventura7 (Answer 7). I. The Examiner has rejected claims 1, 3-5, 7, 11, and 15 as anticipated by Khanna. The Examiner finds that Khanna discloses an implant meeting the structural limitations of the rejected claims and “capable of being attached to a triangular cartilage for spreading the nasal wings” (Answer 4). Appellants argue that the preamble of claim 1 requires the claimed implant to be capable of being implanted in a human nose, and that “the implant of Khanna . . . is configured for attachment to a spine bone (col. 1 lines 32-34), but unable for attachment to a triangular cartilage at a dorsum of a human nose” (App. Br. 8-9). We agree with Appellants that the Examiner has not provided sufficient evidence to show that the device disclosed by Khanna meets all of 3 Khanna, US 6,660,007 B2, Dec. 9, 2003 4 Brusis, EP 1 475 056 A1, Nov. 10, 2004. 5 Catone, US 5,373,860, Dec. 20, 1994. 6 Lind, US 2,509,157, May 23, 1950. 7 Ventura, US 2004/0044399 A1, Mar. 4, 2004. Appeal 2011-013428 Application 11/748,779 4 the limitations of claim 1. Claim 1 is directed to an implant that is “attachable to a triangular cartilage at a dorsum of a human nose.” Although this phrase is found in the preamble of the claim, it nonetheless limits the claimed device to one that is capable of being implanted in the nose of a human patient. See Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997) (“Where a patentee uses the claim preamble to recite structural limitations of his claimed invention, the PTO and courts give effect to that usage.”). Khanna discloses a “lamina fixation device [that] consists of a plate contoured at each end with a hollow spacer in the middle with variable length but uniform width and thickness specific for the cervical, thoracic or lumbar spine” (Khanna, col. 1, ll. 63-66 (emphasis added)). The Examiner reasons that “[o]ne skilled in the art would understand that an implant with the physical structure of Khanna would be operable as intended at any location in the body if fabricated with the proper size” (Answer 10). However, “anticipation requires that all of the elements and limitations of the claim are found within a single prior art reference.” Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1576 (Fed. Cir. 1991). Thus, if Khanna’s device must be modified in order to be “attachable to a triangular cartilage at a dorsum of a human nose,” as required by claim 1, Khanna is not an anticipatory disclosure. “[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). Here, the Examiner has not provided sufficient evidence to show that Khanna’s device, as disclosed and without modification, has a structure that is “attachable to a triangular Appeal 2011-013428 Application 11/748,779 5 cartilage at a dorsum of a human nose,” as required by the claims. Because the rejection of claims 1, 3-5, 7, 11, and 15 as anticipated by Khanna is not supported by a preponderance of the evidence of record, it is reversed. II. Issue The Examiner has rejected all of the claims as obvious based on Brusis and Catone, alone or combined with another reference. The same issue is dispositive for all of the § 103 rejections. The Examiner finds that Brusis “discloses a roof shaped implant for spreading nasal wings . . . comprising a barrel shape 31 configured to curve around a region of cartilage and two lateral sections 32 and 33 extending on both sides and canted downwards” (Answer 5) but “is silent on the radius of curvature of the barrel shaped section” (id. at 6). The Examiner finds that “Catone teaches a method of appropriately contouring a bone fixation element to an implant site to ensure accurate fixation” (id.) and concludes that it would have been obvious “to form the Brusis et al implant to optimize the radius of curvature to r > 4cm at the barrel shaped section . . . since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.” (Id.) Appellants contend that Brusis does not disclose “the ongoing problem of uncontrolled proliferation of tissue aggregations after nasal implant surgery, the cause of the problem as the undesired hollow space between the dorsal section and the cartilage after the surgery, and solution to the problem by eliminating the undesired hollow space” (Appeal Br. 12-13). Appeal 2011-013428 Application 11/748,779 6 Appellants argue that Brusis “fail[s] to disclose the limitation of a dorsal section being rested closely against the triangular cartilage without a hollow space between the implant and the triangular cartilage” (id. at 13). The issue presented is whether Brusis and Catone would have made obvious, to a person of ordinary skill in the art, an implant meeting the structural limitations of claim 1. Findings of Fact 1. Brusis discloses an implant for spreading of the nasal wings (Brusis 1, ¶ 1).8 2. Figure 5 of Brusis is reproduced below: 8 Our citations to the text of Brusis refer to the English-language translation of record. The figures of Brusis that are reproduced in this opinion are from the German-language original document. Appeal 2011-013428 Application 11/748,779 7 Figure 5 shows one embodiment of Brusis’ implant (id. 2, ¶ 19). The implant has a rounded V-shape and widened ends 32, 33 on the straight strips 31 (id. at 3, ¶ 24). 3. Figure 3 of Brusis is reproduced below: Figure 3 shows another embodiment of Brusis’ implant (id. at 2, ¶ 19). The implant consists of a central strip 21 and two branching out strips 22, 23, which together result in a trapezoidal contour (id. at 2, ¶ 22). 4. Figure 4 of Brusis is reproduced below: App App Prin burd obvi presu taugh prov Spor Anal later sprea secti whic eal 2011-0 lication 11 Figure 4 ciples of L “[T]he e en to the a ous.” In r mption of t away fro ides new a ts, Inc., 39 ysis Claim 1 al sections d of ω>16 ons extend Brusis d h has a do 13428 /748,779 shows the aw xistence o pplicant to e Peterson obviousn m the cla nd unexpe 2 F.3d 13 is directed . The dors 0° or with so as to b iscloses se rsal sectio implant o f overlapp show tha , 315 F.3d ess can be imed inven cted resul 17, 1322 (F to a nasal al section a radius o e essentia veral emb n and two 8 f Figure 3 ing or enco t his inven 1325, 133 rebutted b tion or th ts. See Iro ed. Cir. 2 implant h is either f f curvatur lly parallel odiments lateral sec in situ (id mpassing tion would 0 (Fed. C y a showi at the claim n Grip Ba 004). aving a do lat or curv e of r>4cm to a respe of nasal im tions. In o . at 2, ¶ 19 ranges sh not have ir. 2003). ng that the ed invent rbell Co. v rsal sectio ed with an , and the ctive nasa plants, ea ne embod ). ifts the been The prior art ion . USA n and two angle of lateral l wing. ch of iment, the Appeal 2011-013428 Application 11/748,779 9 dorsal section is curved (FF 2), although Brusis does not disclose its angle of spread or radius of curvature. In another embodiment, the dorsal section is flat (FF 3). Thus, Brusis discloses embodiments in which the radius of curvature in the dorsal section ranges from infinite (because it is flat; FF 3) to what can be presumed to be r<4cm (FF 2).9 In other words, Brusis discloses a range of curvature that encompasses the range recited in claim 1. “[W]here there is a range disclosed in the prior art, and the claimed invention falls within that range, there is a presumption of obviousness.” Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004). That presumption can be rebutted by a showing that the prior art taught away from the claimed range or that the claimed range provides unexpected results. Id. Appellants have not provided rebuttal evidence showing either a teaching away or unexpected results. Rather, Appellants argue that Brusis does not disclose “the ongoing problem of uncontrolled proliferation of tissue aggregations after nasal implant surgery, the cause of the problem as the undesired hollow space between the dorsal section and the cartilage after the surgery, and solution to the problem by eliminating the undesired hollow space” (Appeal Br. 12-13). Appellants also argue that Brusis does not disclose “a dorsal section being rested closely against the triangular cartilage without a hollow space between the implant and the triangular cartilage . . . , cited in claim 1” (id. at 13). 9 We will presume that the radius of curvature in the Figure 5 embodiment is r<4cm because Brusis is silent as to this parameter and because if r>4cm in that embodiment, it would meet all of the structural limitations of claim 1 and therefore anticipate. Appeal 2011-013428 Application 11/748,779 10 This argument is not persuasive. The function of resting closely against the triangular cartilage without a hollow space results from the shape of the implant; specifically, a dorsal section having the shape recited in claim 1. See Spec. 6 (“[A] dorsal section of the implant . . . is flat or curved . . . at an angle of spread of ω>160°, or curved . . . at a radius of curvature of r>4cm. . . . In this way . . . no hollow spaces between the implant and the triangular cartilage arise after surgery.”). Appellants have not provided a persuasive basis for concluding that the implant made obvious by Brusis, which meets the structural limitations of claim 1, would not function as recited in the claim when implanted into a patient’s nose. Conclusion of Law Brusis and Catone would have made obvious, to a person of ordinary skill in the art, an implant meeting the structural limitations of claim 1. Claims 2-11, 13, 16, and 17 have not been argued separately and therefore fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii). Appellants have waived arguments based on Lind or Ventura (App. Br. 14). We therefore affirm the rejections of 12, 14, and 15 as well. See Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008). SUMMARY We reverse the rejection of claims 1, 3-5, 7, 11, and 15 as anticipated by Khanna. We affirm the rejection of claims 1-11, 13, 16, and 17 as obvious based on Brusis and Catone; the rejection of claims 12 and 14 as obvious Appeal 2011-013428 Application 11/748,779 11 based on Brusis, Catone, and Lind; and the rejection of claim 15 as obvious based on Brusis, Catone, and Ventura. TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED lp Copy with citationCopy as parenthetical citation