Ex Parte Gillis et al

Patent Trial and Appeal Board

Oct 16, 2012

11592452 (P.T.A.B. Oct. 16, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte EDWARD M. GILLIS, RYAN P. BOUCHER,
SCOTT A. McGILL, and JOE PARASCHAC
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Appeal 2010-005559
Application 11/592,452
Technology Center 3700
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Before: JOHN C. KERINS, WILLIAM V. SAINDON, and
NEIL T. POWELL, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-005559
Application 11/592,452

2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-14. We have jurisdiction under 35 U.S.C. § 6(b).

The Claimed Subject Matter
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. An implant device comprising:
a carrier sized and configured for
implantation in a tongue, the carrier including a
ferromagnetic structure sized and configured to
occupy only one lateral side of the tongue when
implanted, the ferromagnetic structure adapted to
magnetically interact with a magnetized material
placed in a desired relationship with the tongue to
stabilize a preferred tongue orientation.

Rejections
I. Claims 1, 2, 4-7, and 9-14 are rejected under 35 U.S.C. § 102(b) as
anticipated by Karell (US 6,408,851 B1, iss. Jun. 25, 2002).
II. Claims 3 and 8 are rejected under § 103(a) as unpatentable over
Karell.

SUMMARY OF DECISION
We AFFIRM-IN-PART.

Appeal 2010-005559
Application 11/592,452

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OPINION
Claims 1, 9, and 14 are independent. Appellants argue claims 1, 2,
and 4-7 as a first group (App. Br. 5-7); we select claim 1 as representative.
Appellants argue claims 9-13 and 14 separately and indicate that the same
arguments presented for claim 1 apply. App. Br. 8. Because the scope of
claims 9 and 14 differ from claim 1, we address these claims separately.
The structural components of claim 1 include a carrier having a
ferromagnetic structure, both sized and configured for implantation in a
lateral side of a tongue. The Examiner found that Karell describes a carrier
member including a ferromagnetic structure 72 sized and configured to
occupy one lateral side (the “top lateral side”) of the tongue. Ans. 3; see
Karell, fig. 10. Turning to figure 10, we find the carrier/ferromagnetic
structure of Karell depicted as a tongue piercing.
Appellants argue that the structure in Karell is not implanted in the
tongue and is not on a lateral side of the tongue. App. Br. 6-7. Appellants’
arguments are not commensurate in scope with claim 1. Claim 1 does not
require a carrier implanted wholly inside a tongue nor a carrier wholly
implanted in a particular side of the tongue. Claim 1 merely requires a
structure capable of such placements. Appellants do not set forth any
persuasive reasoning as to why the Examiner’s finding that the Karell
structure anticipates the claimed structure is in error. Accordingly, we
sustain the Examiner’s rejection of claims 1, 2, and 4-7.
Appellants separately address claim 9 but rely on the unpersuasive
arguments set forth for claim 1. App. Br. 8. As such, we sustain the
Examiner’s rejection of claims 9-13.
Appeal 2010-005559
Application 11/592,452

4
Appellants separately address claim 14 and rely on the argument of
claim 1 that the device of Karell is not configured to occupy only one lateral
side of the tongue when implanted. App. Br. 8. Claim 14, in particular,
requires a step of “placing the implant device … [on] one lateral side of the
tongue.” We agree with Appellants that one of ordinary skill in the art
would consider the lateral sides of the tongue to constitute either side of the
raphé (midline) of the tongue, not the top and bottom sides.1 The Examiner
found that Karell describes an implant having a ferromagnetic structure on
the top side of the tongue. Ans. 5. In view of the ordinary meaning of the
term “lateral,” the Examiner’s finding is in error. The Examiner makes no
findings regarding placing the structure of Karell on a lateral side of the
tongue. As such, we do not sustain the rejection of claim 14.
Appellants argue the rejection of claims 3 and 8 as a group (App. Br.
10-11); we select claim 3 as representative. Claim 3 requires the implant to
have a rudder assembly. The Examiner found that Karell describes a rudder
assembly 34. Ans. 4. Appellants argue that element 34 (a restraint bar) is
not a rudder but fail to cogently explain why this structure is not a rudder.
App. Br. 10. As best gleaned from the Specification, it appears Appellants
consider a rudder to be a structure for pushing tissue. See Spec., pp. 74-75.
Given that element 34 is intended to restrain the device by fastening it to the
tongue (Karell, col. 4, ll. 43-53), it would push tissue in order for it to
perform its retaining function. Accordingly, we are not apprised of error in
the Examiner’s finding that Karell describes a rudder.

1 See, e.g., “lateral” “of a body part: lying at or extending toward the right or
left side.” Webster’s Third New International Dictionary (1993)
(lionreference.chadwyck.com) (last visited Oct. 9, 2012).
Appeal 2010-005559
Application 11/592,452

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Appellants also argue that claim 3 requires the rudder to be implanted
in the tongue. App. Br. 10. However, even if “implant” were limited to
mean “fully enclosed within the body,” which it is not, claim 3 does not
require the device to be actually implanted. In other words, Appellants’
argument is not commensurate in scope with claim 3.
In view of the above, we are not apprised of error in the Examiner’s
rejection of claims 3 and 8.

DECISION
We affirm the Examiner’s decision regarding claims 1-13.
We reverse the Examiner’s decision regarding claim 14.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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