Ex Parte Guerra

Patent Trial and Appeal Board

Jan 30, 2017

13296092 (P.T.A.B. Jan. 30, 2017)

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.
13/296,092 11/14/2011 David A. Guerra DG077-11 1028
29689 7590
DAVID A. GUERRA
INTERNATIONAL PATENT GROUP, LLC
Suite 700
1816 Crowchild Trail N.W.
CALGARY, AB T2M 3Y7
CANADA
EXAMINER
NGUYEN, VI X
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
02/01/2017 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):
davidguerra@internationalpatentgroup.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID A. GUERRA
Appeal 2015-000649
Application 13/296,092
Technology Center 3700
Before JILL D. HILL, THOMAS F. SMEGAL, and GORDON D. KINDER,
Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
David A. Guerra (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 17, 18, and 20.1 We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
1 Claims 1—16 have been withdrawn (Appeal Br. 11—12 (Claims App.)), and
claim 19 is indicated as containing allowable subject matter (Final Act. 3).
Appeal No. 2015-000649
Application No. 13/296,092
BACKGROUND
Sole independent claim 17, reproduced below, represents the claimed
invention, the key disputed limitation italicized.
17. A pacifier comprising:
a base section;
an upper mouth member having a first portion extending
from said base section, said upper mouth member being
configured to be positioned adjacent a roof of a mouth of a user;
a sublingual member having a first portion extending
from said base section, said sublingual member being
configured to be received in a sublingual pocket of the mouth of
the user;
a transition section between a second portion of said
upper mouth member and a second portion of said sublingual
member, said transition section having a profile that defines a
pocket configured to receive a portion of a tongue of the user;
and
a temperature sensor unit fitted to said sublingual
member and configured to come in contact with the sublingual
pocket of the user when said pacifier is received in the mouth of
the user.
REJECTION
Claims 17, 18, and 20 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Zeindler (US 5,534,013, iss. July 9, 1996). Final Act. 2.
OPINION
Independent claim 17 recites, inter alia, an upper mouth member
configured to be positioned adjacent a roof of a mouth, a sublingual member
configured to be received in a sublingual pocket of the mouth, and a
transition section therebetween having a profile defining a pocket configured
to receive a tongue. The Examiner finds that Zeindler discloses the subject
2
Appeal No. 2015-000649
Application No. 13/296,092
matter of claim 17, including the recited “transition section (the area of 5).”
Final Act. 2.
Appellant argues that Zeindler’s head 4 has a flattened head section 4’
on its tongue side, comprising a continuous wall without a pocket
“configured to receive a portion of a tongue.” Appeal Br. 6. Appellant
further contends that Zeindler’s head 4 cannot be both “configured to be
positioned adjacent a roof of [a] mouth” and “configured to be received in a
sublingual pocket[] of the mouth” while its transition section (alleged by the
Examiner to be the hollow space 5) is a configured to “receive a portion of a
tongue.” Id.
The Examiner responds that Zeindler’s “area of 5 is equivalent [to] a
transition section” because it lies “between the upper mouth member 4 and
the sublingual member (the lower area of 4)” and has “a profile that defines
a pocket (the area of 8 and 9 which are embedded in a flexible plastic tube
12[, which] has some sort of flexibility in the area 12 in order to be
considered as a pocket)” that is considered by the Examiner to be
“configured to receive a portion of a tongue of the user.” Ans. 3^4. The
Examiner contends that the recited “configured to” language in claim 17
amounts to a statement of intended use, which “are deemed not to impose
any structural limitations on the claims” because Zeindler’s device is
capable of being used as claimed. Id. at 4.
Appellant replies that the Examiner is relying on Zeindler’s parts 8
and 9 to disclose the claimed pocket defined by the transition section,
whereas Zeindler states that “parts 8 and 9 form a kind of press button in
which the temperature sensor 7 is encased.” Reply Br. 2—3 (citing Zeindler
2:22-23).
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Appeal No. 2015-000649
Application No. 13/296,092
We agree with Appellant that Zeindler fails to disclose a transition
section between an upper mouth member configured to rest adjacent the
mouth roof, and a sublingual member configured to be received in the
sublingual pocket, the transition section having “a profile that defines a
pocket configured to receive a portion of a tongue of the user.” First,
Zeindler fails to disclose a defined pocket. In addition, we disagree with the
Examiner that the functional language of claim 17 fails to impose any
structural limitations on the claims.
There is nothing intrinsically wrong with defining something by what
it does rather than what it is while drafting a patent claim. See In re
Swinehart, 439 F.2d 210, 212—213 (CCPA 1971). When applicants use
functional language to differentiate the claimed subject matter from the prior
art, it is incumbent upon the Examiner to show that the prior art is capable of
performing the claimed function. See id.
The structure of Zeindler must be capable of (1) being positioned
adjacent a roof of a mouth of a user, (2) being received in a sublingual
pocket of the mouth of the user, and (3) defining a pocket configured to
receive a portion of a tongue of the user. The Examiner has failed to support
a finding that the structure of Zeindler is capable of performing these three
functions. We therefore do not sustain the pending rejection.
DECISION
We REVERSE the rejection of claims 13—17 under 35 U.S.C.
§ 102(b) as anticipated by Zeindler.
4
Appeal No. 2015-000649
Application No. 13/296,092
REVERSED
5