Ex Parte Eifler et alDownload PDFPatent Trial and Appeal BoardAug 22, 201612455678 (P.T.A.B. Aug. 22, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/455,678 0610412009 13897 7590 08/24/2016 Abel Law Group, LLP 8911 N. Capital of Texas Hwy Bldg 4, Suite 4200 Austin, TX 78759 FIRST NAMED INVENTOR Martin Eifler 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. 6580-P50122 6288 EXAMINER LEE, DANIEL H. ART UNIT PAPER NUMBER 1746 NOTIFICATION DATE DELIVERY MODE 08/24/2016 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): mail@Abel-IP.com hmuensterer@abel-ip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MAR TIN EIFLER,MARTIN BECHTEL, ARNOLD FRERICHS, MATTHIAS PULLA, HENRY HAHN, and JOACHIM GARDEIN Appeal2014-009855 Application 12/455,678 Technology Center 1700 Before ADRIENE LEPIANE HANLON, GEORGE C. BEST, and JULIA HEANEY, Administrative Patent Judges. HANLON, Administrative Patent Judge. DECISION ON APPEAL A. STATEMENT OF THE CASE The Appellants filed an appeal under 35 U.S.C. § 134 from an Examiner's decision finally rejecting claims 26-49. We have jurisdiction under 35 U.S.C. § 6(b ). We REVERSE. Appeal2014-009855 Application 12/455,678 Claim 26, the sole independent claim on appeal, is reproduced below from the Claims Appendix of the Appeal Brief dated June 10, 2014 ("App. Br."). The limitation at issue is italicized. 26. A method for producing a patient interface for resting on an outer surface of a patient's body and containing a gel filling, wherein a gel covering formed from a flexible material has a cavity at least in some areas and has at least one dedicated opening through which the cavity is filled with gel in liquid form, which then cures in the gel covering to a hardness, at least in some areas, of from about 10 Shore 00 to about 3 0 Shore 00, the opening being situated in the gel covering in areas that do not come into contact with the patient's skin. App. Br. 20 (emphasis added). The claims on appeal stand rejected as follows: (1) claims 26, 27, 29, 33-36, and 44--49 under 35 U.S.C. § 103(a) as unpatentable over McGhan et al. 1 in view of Schulz et al. 2 and Lang et al. ;3 (2) claim 28 under 35 U.S.C. § 103(a) as unpatentable over McGhan in view of Schulz and Lang, and further in view of Herzfeld;4 (3) claim 31 under 35 U.S.C. § 103(a) as unpatentable over McGhan in view of Schulz and Lang, and further in view of V askys et al.; 5 (4) claim 32 under 35 U.S.C. § 103(a) as unpatentable over McGhan in view of Schulz and Lang, and further in view of Sado;6 1 US 3,852,832, issued December 10, 1974 ("McGhan"). 2 US 5,370,688, issued December 6, 1994 ("Schulz"). 3 US 2005/0199239 Al, published September 15, 2005 ("Lang"). 4 US 3,942,423, issued March 9, 1976 ("Herzfeld"). 5 US 4,086,666, issued May 2, 1978 ("Vaskys"). 6 US 3,715,047, issued February 6, 1973 ("Sado"). 2 Appeal2014-009855 Application 12/455,678 (5) claims 30 and 37--40 under 35 U.S.C. § 103(a) as unpatentable over McGhan in view of Schulz and Lang, and further in view of Vaskys and Herzfeld; and (6) claims 41--43 under 35 U.S.C. § 103(a) as unpatentable over McGhan in view of Schulz and Lang, and further in view of Van Aken Redinger et al. 7 B. DISCUSSION The Examiner finds that McGhan discloses a prosthesis comprising a fluid- impermeable envelope filled with silicone gel. Ans. 28 (citing McGhan, col. 2, 11. 29-38); see also McGhan, col. 1, 11. 2-5 ("invention relates to ... prostheses which are used to fill a cavity left by the removal of a portion of the anatomy or to reshape an existing contour, such as by enlargement of a female breast"). The Examiner finds McGhan does not expressly teach that the gel is cured. The Examiner, however, relies on Schulz to show that "it was well known and conventional at the time of the invention that prostheses were cured to a gelatinous state." Ans. 2 (citing Schulz, col. 1, 11. 11-12). The Examiner also finds McGhan, as modified by Schulz, "does not expressly teach the cured gel has a hardness of about 10 Shore 00 to about 30 Shore 00" as recited in claim 26. Ans. 3. Thus, the Examiner turns to Lang. The Examiner finds Lang discloses a respiratory mask wherein an elastomer material is introduced into a cavity and "is heated to effect crosslinking to differing degrees." Ans. 3 (citing Lang i-f 41 ). The Examiner concludes: [I]t would have been obvious to one of ordinary skill in the art to control the Shore hardness of the gel to achieve a desired hardness in 7 US 4,455,691, issued June 26, 1984 ("Redinger"). 8 Examiner's Answer dated July 31, 2014. 3 Appeal2014-009855 Application 12/455,678 McGhan and Schulz by using different preparation of gel compositions or different levels of crosslinking, as taught by Lang. Ans. 3 (emphasis added); Ans. 8 ("it would have been within the level of ordinary skill to vary the hardness of the gel filling to a desired hardness"). The Appellants argue that "LANG does not appear to disclose any Shore hardness values." App. Br. 9. Moreover, the Appellants argue that "an implant for filing a cavity in the human body (McGHAN) and a mask cushioning and forehead pad for a respiratory mask ( ... LANG) ... have to satisfy completely different requirements." App. Br. 9 (emphasis omitted). For these reasons, the Appellants argue that "it is not seen that LANG renders it obvious to one of ordinary skill in the art to provide the 'patient interface' of McGHAN with a cured gel that has a hardness of from about 10 Shore 00 [to] about 30 Shore 00" as recited in claim 26. App. Br. 8; see also Reply Br. 2. 9 The Appellants' argument is persuasive of reversible error. On this record, the Examiner has failed to explain, in any detail, why the teachings of Lang (or any other prior art of record) would have led one of ordinary skill in the art to select a hardness within the range recited in claim 26. While it may have been within the skill of the ordinary artisan to vary the hardness of the silicone gel in McGhan's breast prosthesis to obtain a desired hardness (Ans. 8), the Examiner has failed to show, in the first instance, that a desired hardness would have been within the range recited in claim 26. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir, 1992) ("the examiner bears the initial burden ... of presenting a prima facie case of unpatentabili ty"). The§ 103(a) rejections on appeal are not sustained. 9 Reply Brief dated September 12, 2014. 4 Appeal2014-009855 Application 12/455,678 C. DECISION The Examiner's decision is reversed. REVERSED 5 Copy with citationCopy as parenthetical citation