Ex Parte Dineen et al

Patent Trial and Appeal Board

Dec 21, 2015

11762642 (P.T.A.B. Dec. 21, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111762,642 06/13/2007 Michael Dineen
38107 7590 12/23/2015
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
P. 0. Box 3001
BRIARCLIFF MANOR, NY 10510
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.
2005P03264US01 2143
EXAMINER
NELSON, KERI JESSICA
ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
12/23/2015 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):
debbie.henn@philips.com
marianne.fox@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL DINEEN, MARK HIROTSUKA, JASPER JACKSON,
ANDREW FRAZIER, CHAD ROUE, and ERIK VAN DER BURG
Appeal2013-009083
Application 11/762,642 1
Technology Center 3700
Before CYNTHIA L. MURPHY, BRUCE T. WIEDER, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to tongue
remodeling systems. The Examiner rejected the claims for failing to comply
with the written description requirement or as anticipated. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.
1 According to Appellants, the real party in interest is Koninklijke Philips
Electronics NV. App. Br. 2.
Appeal2013-009083
Application 11/762,642
STATEivIENT OF THE CASE
Background
According to Appellants, "[the] invention relates generally to a system
and method for treating upper airway obstruction, sleep disordered
breathing, upper airway resistance syndrome and snoring by manipulating
the structures of the oropharynx, including the tongue." Spec. i-f 2. More
specifically, the Specification provides embodiments including two tissue
engaging structures attached via an adjustable length tether. See, e.g., id. at
,-r 20.
The Claims
Claims 1, 6, 7, 25, and 26 are on appeal. Claim 1 is illustrative and
recites:
1. A tongue remodeling system, comprising:
a first body-engaging structure;
a second body-engaging structure;
a tether connected and fastened to the first body-
engaging structure and to the second body-engaging structure;
and
means for adjusting a distance between the first body-
engaging structure and the second body-engaging structure
when the first body-engaging structure and the second body-
engaging structure are engaged with a body without
disconnecting and unfastening the tether from either of the
body-engaging structures.
App. Br. 10.
2
Appeal2013-009083
Application 11/762,642
m"J T"t. • ,• 2
1 ne Ke1ecnons-
I. The Examiner rejects claims 1, 6, and 7 under 35 U.S.C. § 112,
first paragraph for failing to comply with the written description
requirement.
2. The Examiner rejects claims 25 and 26 under 35 U.S.C. § 102(b)
as anticipated by Dakin. 3
DISCUSSION
1. Written Description
The Examiner indicates that the Specification only discloses that the
tether is "connected" to body-engaging structures, which requires only an
attachment by contact, and thus, the Examiner asserts that the Specification
fails to provide sufficient support regarding the manner in which the body-
engaging structures of claim 1 are fastened to the tether. Ans. 2, 4. For an
application to comply with the 35 U.S.C. § 112, first paragraph, written
description requirement, the specification must "convey with reasonable
clarity to those skilled in the art that, as of the filing date sought, he or she
was in possession of the invention." Carnegie Mellon Univ. v. Hoffmann-La
Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008) (quoting Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563---64 (Fed. Cir. 1991)). Here, we find that a
person of ordinary skill in the art would readily understand from the
Specification that the tether requires more than a simple contact to perform
the functions of the device. See App. Br. 4 (citing Fig. 77G; i-f 299). In
particular, we agree with Appellants that one of ordinary skill in the art
2 The rejection of claims 1, 6, and 7 under 35 U.S.C. § 102(e) has been
withdrawn. See Ans. 3.
3 Dakin et al, US 2002/0188297 Al, pub. Dec. 12, 2002.
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Appeal2013-009083
Application 11/762,642
would understand from the embodiment depicted in Figure 77G and the
description in paragraph 299, that the tether is connected to both body-
engaging structures by more than just contact between them. Thus, we find
that one of ordinary skill in the art would recognize that the tether may be
described as being not only connected to, but also fastened to, each of the
body-engaging structures.
Based on the foregoing, we determine that the Examiner has not
established that claim 1 fails to comply with the written description
requirement, and thus, we reverse this rejection.
2. Anticipation
With respect to the rejection of claims 25 and 26 as anticipated,
Appellants raise arguments only with respect to claim 25. See App. Br. 7-8.
Accordingly, our analysis is limited to claim 25.
The Examiner finds that Dakin discloses a device as claimed
including a tissue engaging structure, a bone anchor, and an adjustment
mechanism. Ans. 3. In particular, the Examiner identifies Dakin's locking
device 28 as the adjustment mechanism, which is directly attached to a
proximal portion of the bone anchor and is adapted to selectively decrease
the distance between the bone anchor and the tissue engaging structure. Id.
(citing Dakin Figs. 1-3; i-fi-144, 45, 50-52).
Appellants argue that Dakin does not disclose an adjustment
mechanism as claimed because, although Dakin's locking device is capable
of locking the tether at selectively decreased distances, the locking device
"is not capable of actually decreasing the distance between anchors 24 and
20, and thus [] obviously does not constitute 'an adjustment mechanism
adapted to selectively decrease a distance between the bone anchor and the
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Appeal2013-009083
Application 11/762,642
tissue engaging structure."' App. Br. 8. Appellants assert that Dakin's
tensioning instrument is separate from the locking device and is the only
portion of Dakin that is capable of selectively decreasing the distance as
required by the claim. Id. Thus, Appellants conclude that Dakin does not
disclose an adjustment mechanism that is both directly attached to the bone
anchor and is capable of selectively decreasing the distance between the
anchor and the tissue-engaging structure. Id.
We find Appellants' argument unpersuasive for the reasons identified
by the Examiner. Ans. 4--5. Specifically, we find that under the broadest
reasonable interpretation of the claim in light of the Specification, Dakin's
locking device is an adjustment mechanism as claimed. There is no dispute
that this locking device is directly attached to the bone anchor. We disagree
with Appellants that the locking device is not adapted to selectively decrease
the distance between the anchor and the tissue-engaging structure.
Appellants acknowledge that the locking device is capable of locking
anchors 20 and 24 at selectively decreased differences (see App. Br. 8), and
we are not convinced that there is any distinction between that capability and
the capability to "selectively decrease a distance" as claimed. Further, we
find that the claim does not limit the adjustment mechanism to a single
mechanism or part, and thus, the fact that Dakin discloses a separate
tensioning tool does not preclude the locking mechanism from being
interpreted as the claimed adjustment mechanism, either alone or in
combination with the tensioning tool.
For the foregoing reasons, we determine the Examiner established a
prima facie showing of anticipation with respect to claim 25, which
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Appeal2013-009083
Application 11/762,642
Appellants fail to rebut. Accordingly, we affirm the rejection of claim 25,
and dependent claim 26 falls with claim 25.
CONCLUSION
For the reasons set forth above, we reverse the rejection of claims 1, 6,
and 7, and we affirm the rejection of claims 25 and 26.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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