Ex Parte Haworth et al

Patent Trials and Appeals Board

Jan 2, 2019

14850279 - (D) (P.T.A.B. Jan. 2, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/850,279 09/10/2015
36844 7590 01/04/2019
Cermak Nakajima & McGowan LLP
127 S. Peyton Street, Suite 200
ALEXANDRIA, VA 22314
FIRST NAMED INVENTOR
Randal Haworth
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.
067-007Cl 2243
EXAMINER
PATEL, TARLA R
ART UNIT PAPER NUMBER
3786
NOTIFICATION DATE DELIVERY MODE
01/04/2019 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):
CGOODE@cnmiplaw.COM
IP@cnmiplaw.com
ACERMAK@cnmiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RANDAL HA WORTH and CORBETT W. STONE 1
Appeal2018-003418
Application 14/850,279
Technology Center 3700
Before MICHELLE R. OSINSKI, JILL D. HILL, and
JEREMY M. PLENZLER, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-3. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Randal Haworth ("Appellant") is the Applicant as provided in 37 C.F.R.
§ 1.46 and is identified as the real party in interest. Appeal Br. 3.
Appeal2018-003418
Application 14/850,279
THE CLAIMED SUBJECT MATTER
Claim 1, the sole independent claim on appeal, is reproduced below.
1. A method for opening a trachea of a patient, the method
compnsmg:
hyperextending a neck of a patient; and
displacing a mandible of the patient anteriorly.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Lanier
T aimoorazy
us 5,524,639
US 7,055,524 B 1
THE REJECTIONS
June 11, 1996
June 6, 2006
I. Claims 1-3 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Lanier. Final Act. 2-3.
II. Claims 1-3 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Taimoorazy. Id. at 3.
OPINION
Rejection I
The Examiner finds that
Lanier et al. explicitly does not disclose a method[],
however it would have been obvious to one having skill in art to
use the device of Lanier et al. for opening a trachea of a patient,
comprising hyperextending a neck of a patient[ ](see figures 1-
2) and displacing a mandible of the patient anteriorly (by means
of element 62); base having a pair of upstanding arm ( 68) with
free ends, two jaw pads (both[ ]72) and two adjustment
mechanisms (30,[ ]34), a jaw pad mounted to each arm free end
via one adjustment mechanism (see figures 1-2) and a neck pad
(74) positioned on the base (10) and between two jaw pads;
wherein hyperextending with said jaw thrust device and
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Application 14/850,279
displacing with said jaw thrust device (see figures 1-2) and
positioning the neck of patient on the neck support ( see figures
1-2).
Final Act. 2-3. The Examiner clarifies that it is the Examiner's position that
"when the device[] of Lanier ... push[ es] against the posterior portion of a
patient's mandible, it also hyperextends the neck by lifting the chin up and
opening the airways to improve the patient's airways"2 or that an "individual
using [a] hand to push[]/displac[e] a mandible of the patient anteriorly ...
hyperextend[s] a neck of a patient by doing so." Final Act. 4; Ans. 4. The
Examiner relies on Appellant's definition of "hyperextension" as "to
overextend or to extend a joint or body part beyond its usual limit of
. " A 4 mot10n. ns. .
The Examiner and Appellant appear to agree that "hyperextend"
means "to overextend or to extend a joint or body part beyond its usual limit
of motion." Appeal Br. 13 (citing www.thefreedictionary.com); Ans. 4.
That is, hyperextending requires some outside force to act upon the neck to
force extension beyond its normal limit of motion, not simply that the head
is tilted backward. The Examiner and Appellant, however, disagree about
whether pushing against the posterior portion of a patient's mandible ( or
lifting the chin upward/forward) with Lanier' s device will result in extension
of a patient's neck beyond its usual limit of motion. Significantly, Appellant
has provided a Declaration under 37 C.F.R. § 1.132 of Dr. Terry D.
Krekorian ("Krekorian Deel.") stating that "[i]t is not true that anterior
motion of the patient mandible will 'lift the chin of user away from upper
body and will hyperextend the neck of user."' Krekorian Deel. ,r 4 ( quoting
2 The Examiner does not explain otherwise how Lanier's device causes
hyperextension of a patient's neck. Final Act. 2 (citing Lanier, Figs. 1-2).
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Application 14/850,279
Final Act. 2, 6). The declaration states that Lanier' s device "move[ s] the
patient's jaw along an anterior-posterior axis" and is "incapable of
hyperextending the patient's neck and [is] likely to instead flex the patient's
neck." Id. The Examiner responds only that "the device of Lanier ... when
used will obviously overextend [the] body part which is [the] neck beyond
its usual limit by lifting the chin upward/forward and opening the airways to
improve the patient's airways." Ans. 4. Even assuming that use of Lanier's
device causes movement of a patient's neck that is different than otherwise
would occur usually, we are not persuaded that the Examiner has established
by a preponderance of the evidence that pushing against the posterior portion
of a patient's mandible ( or lifting the chin upward/forward) with Lanier' s
device will result in extension of a patient's neck beyond its usual limit of
motion in light of Appellant's supporting declaration evidence that such
movement causes flexion, which is the opposite of extension. See Appeal
Br. 14 ("in the context of the human neck, those of skill in the art understand
that hyperextending the neck includes moving the head backwards
(posteriorly) relative to the shoulders and back, .. , while flexion, and thus
hyperflexion, includes the opposite motion as compared with the head's
normal position, e.g., moving one's head towards one's chest"); Krekorian
Deel. ,r 4. As such, the Examiner's conclusion of obviousness of the subject
matter of claim 1 is based on an erroneous finding as to the scope and
content of Lanier.
To the extent the Examiner's rejection may be predicated
alternatively, not on Lanier's device hyperextending the neck, but on the
obviousness of an individual using a hand to displace a mandible of a patient
and hyperextend a neck of a patient by doing so, the Examiner has not
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Application 14/850,279
articulated a reason having rational underpinnings that would have led one
of ordinary skill in the art to do so. See In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) ("[R]ejections on obviousness grounds [require] some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.") (cited with approval in KSR Int 'l Co. v. Teleflex, Inc., 550
U.S. 398, 418 (2007)). We agree with Appellant that "[t]he only statement
of motivation supplied [is] ... 'for opening a trachea of a patient,'" whereas
"[t]he jaw thrust maneuver already performs that function with respect to the
position of the patient's jaw and tongue." Appeal Br. 21. Without an
articulated reasoning based on rational underpinnings for leading one of
ordinary skill in the art to hyperextend a neck of a patient, the Examiner's
alternative rejection appears to be the result of impermissible hindsight
construction. See id. at 21-22.
For the foregoing reasons, we find that the Examiner erred in
concluding that the subject matter of claim 1 is rendered obvious by Lanier.
We do not sustain the rejection of claim 1, or claims 2 and 3 depending
therefrom, under 35 U.S.C. § 103 as unpatentable over Lanier.
Rejection II
The Examiner finds that
Taimoorazy explicitly does not disclose a method[],
however it would have been obvious to one having skill in art to
use the device of ref B for opening a trachea of a patient,
comprising hyperextending a neck of a patient (see figures 1-5)
and displacing a mandible of the patient anteriorly (by means of
element 50); base having a pair of upstanding arm (18) with free
ends, two jaw pads (both[ ]50) and two adjustment mechanisms
(54), a jaw pad mounted to each arm free end via one adjustment
mechanism (see figures 1-5) and a neck pad (19) positioned on
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the base (12) and between two jaw pads; wherein hyperextending
with said jaw thrust device and displacing with said jaw thrust
device ( see figure 5) and positioning the neck of patient on the
neck support (see figures 1-5).
Final Act. 3. The Examiner clarifies that it is the Examiner's position that
"when the device[] of ... Taimoorazy ... push[ es] against the posterior
portion of a patient's mandible, it also hyperextends the neck by lifting the
chin up and opening the airways to improve the patient's airways" 3 or that
an "individual using [a] hand to push[]/displac[e] a mandible of the patient
anteriorly ... hyperextend[s] a neck of a patient by doing so." Final Act. 4.
The Examiner again relies on Appellant's definition of "hyperextension" as
"to overextend or to extend a joint or body part beyond its usual limit of
motion." Ans. 4. Again, the Examiner and Appellant disagree about
whether pushing against the posterior portion of a patient's mandible ( or
lifting the chin upward/forward) with Taimoorazy' s device will result in
extension of a patient's neck beyond its usual limit of motion.
Appellant relies on the same Krekorian Declaration described above
in connection with Rejection I. The Examiner responds only that "the
device of. .. Taimoorazy when used will obviously overextend body part
which is neck beyond its usual limit by lifting the chin upward/forward and
opening the airways to improve the patient's airways." Ans. 4. Even
assuming that use of Taimoorazy' s device causes movement of a patient's
neck that is different than otherwise would occur usually, we are not
persuaded that the Examiner has established by a preponderance of the
3 The Examiner does not explain otherwise how Taimoorazy's device
causes hyperextension of a patient's neck. Final Act. 3 ( citing Taimoorazy,
Figs. 1-5).
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evidence that pushing against the posterior portion of a patient's mandible
( or lifting the chin upward/forward) with Taimoorazy' s device will result in
extension of a patient's neck beyond its usual limit of motion in light of
Appellant's supporting declaration evidence that such movement causes
flexion, which is the opposite of extension. Krekorian Deel. ,r 4. As such,
the Examiner's conclusion of obviousness of the subject matter of claim 1 is
based on an erroneous finding as to the scope and content of Taimoorazy.
To the extent the Examiner's rejection may be predicated
alternatively, not on Taimoorazy's device hyperextending the neck, but on
the obviousness of an individual using a hand to displace a mandible of a
patient and hyperextend a neck of a patient by doing so, the Examiner has
not articulated a reason having rational underpinnings that would have led
one of ordinary skill in the art to do so. For the same reasons as described
above in connection with Rejection I, we agree with Appellant that the
Examiner's alternative rejection appears to be the result of impermissible
hindsight construction. See Appeal Br. 23.
For the foregoing reasons, we find that the Examiner erred in
concluding that the subject matter of claim 1 is rendered obvious by
Taimoorazy. We do not sustain the rejection of claim 1, or claims 2 and 3
depending therefrom, under 35 U.S.C. § 103 as unpatentable over
Taimoorazy.
DECISION
The Examiner's decision to reject claims 1-3 under 35 U.S.C.
§ 103(a) as unpatentable over Lanier is reversed.
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Application 14/850,279
The Examiner's decision to reject claims 1-3 under 35 U.S.C.
§ 103(a) as unpatentable over Taimoorazy is reversed.
REVERSED
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