Ex Parte Lindenthaler et al

Patent Trial and Appeal Board

Nov 30, 2012

11848108 (P.T.A.B. Nov. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte WERNER LINDENTHALER and ANDREAS MULLER
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Appeal 2010-011887
Application 11/848,108
Technology Center 3700
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Before ERIC GRIMES, FRANCISCO C. PRATS, and
JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.

BONILLA, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims directed to a
method of positioning a laryngeal interface element, such as an electrode, a
sensor, or a catheter, in a subject. The Examiner has rejected claims as
obvious, and has provisionally rejected claims on the ground of nonstatutory
obviousness-type double patenting. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm-in-part.

Appeal 2010-011887
Application 11/848,108

2
STATEMENT OF THE CASE
The Specification describes functional electrical stimulation (―FES‖)
by devices that stimulate laryngeal nerves and muscles, for example to treat
laryngeal paralysis (Spec. [0013] – [0014]). The Specification discloses a
method that ―involves generating a tunnel in geographical relation to the
lateral wing of the cricoid cartilage of the subject and introducing at least
one interface element [e.g., an electrode] via the tunnel for interfacing with
at least one laryngeal structure [e.g., vocal cord] of the subject‖ (id. at
[0037]; see also [0012]).
Claims 56-66 are on appeal. Independent claim 56 is representative
and reads as follows (emphasis added):
56. A method of positioning a laryngeal interface element for
interfacing with a laryngeal structure of a subject, the method
comprising:
tunneling through cricoid cartilage of the subject to generate
an interface insertion path with respect to vocal cord cartilage of the
subject;
positioning the interface element relative to the laryngeal
structure of the subject based on the insertion path.
The claims stand rejected as follows:
(I) Claims 56, 57, and 59-66 under 35 U.S.C. §103(a) as obvious
over Goldfarb;
1

(II) Claim 58 under 35 U.S.C. §103(a) as obvious over Goldfarb in
view of Hafer;
2
and

1
Goldfarb, U.S. Pat. No. 5,111,814, issued May 12, 1992.
2
Hafer et al., U.S. Pat. No. 6,973,346, issued Dec. 6, 2005.
Appeal 2010-011887
Application 11/848,108

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(III) Claims 56-60 as provisionally rejected on the ground of
nonstatutory obviousness-type double patenting over claims 76,
79, and 88-89 of co-pending U.S. Appl. No. 11/848,131.
3,

4

I. Obviousness over Goldfarb
The Examiner rejects claims 56, 57, and 59-66 as obvious over
Goldfarb (Ans. 3-6). As noted above, claim 56, the only independent claim
at issue, recites a method comprising ―tunneling through cricoid cartilage of
the subject to generate an interface insertion path.‖
The Examiner acknowledges that Goldfarb does not teach tunneling
through cricoid cartilage, but instead describes tunneling through thyroid
cartilage (id. at 4 (citing Goldfarb, col. 3, ll. 56-61). The Examiner
concludes, however, that it would have been obvious to an ordinary artisan
to tunnel through cricoid cartilage upon reading Goldfarb because both
cricoid and thyroid cartilage structures:
form part the laryngeal structures, are located in substantially the
same location, both would allow access to the vocal cords, both are
made of cartilage and it would have been within the level of ordinary
skill in the art to surgically tunnel through either type of cartilage,
particularly if stimulating other muscles of the larynx affected by a
stroke.
(Id. at 4; see also 8-9.) In support, the Examiner cites MPEP § 2144.04, and
the finding that ―Goldfarb shows the relationship between the cricoid and

3
Lindenthaler et al., U.S. Appl. No. 11/848,131, which issued on Mar. 20,
2012, as U.S. Pat. No. 8,136,532.
4
The Examiner has withdrawn the provisional rejection of claims 56-60 on
the ground of nonstatutory obviousness-type double patenting over claims
58-62 of co-pending U.S. Appl. No. 11/848,116 (Ans. 3).
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Application 11/848,108

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thyroid cartilage in Fig. 3 and even states, ‗the lateral cricoarytenoid muscle
originates in the upper border of the side of cricoid cartilage ...‘ (col. 2, lines
52-53)‖ (id. at 8).
As noted by Appellants, the ―only articulated reasoning behind this
assertion is that both structures form part of the laryngeal structures, are
located in substantially the same location, both allow access to the vocal
cords, and both are made of cartilage‖ (App. Br. 10). Such facts stated by
the Examiner (and evidence of such) by themselves fail to establish a prima
facie case of obviousness without some specific rational explanation of how
the posited modification would allow Goldfarb‘s device to function as
described. References to MPEP § 2144.04 generally and Goldfarb in
support of the Examiner‘s fact finding regarding laryngeal anatomy and
vocal cord access are insufficient.
Specifically, the Examiner does not explain how/where/why Goldfarb
(or any other evidence of record) discloses or suggests tunneling through
cricoid cartilage, instead of thyroid cartilage, or tunneling though any
cartilage located near thyroid cartilage for that matter. Goldfarb mentions
cricoid cartilage by name in other contexts, e.g., when discussing the lateral
cricoarytenoid muscle (Goldfarb, col. 2, ll. 52-55), and in Figure 3, which
shows relevant anatomy and expressly distinguishes between thyroid and
cricoid cartilage. Nonetheless, relevant portions of Goldfarb cited by the
Examiner (see, e.g., Goldfarb, col. 3, ll. 54-61) only describe tunneling
through the thyroid cartilage without indicating or suggesting that tunneling
in surrounding areas might also work.
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Application 11/848,108

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The Examiner bears the initial burden, on review of the prior art or on
any other ground, of presenting a prima facie case of unpatentability. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). If the Examiner fails to
establish a prima facie case of unpatentability in the first instance, the
rejection must be reversed. Id.; In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir.
1993). Here, the Examiner fails to present a prima facie case that
independent claim 56 is obvious over Goldfarb. As such, we likewise
conclude that the Examiner does not establish a prima facie case of
obviousness of dependent claims 57 and 59-66 over Goldfarb.
II. Obviousness over Goldfarb and Hafer
The Examiner rejects claim 58 as obvious over Goldfarb in view of
Hafer (Ans. 6). Claim 58, which ultimately depends on claim 56, recites that
―interfacing the interface element includes delivering a drug to the laryngeal
structure via the interface element.‖ The Examiner finds that Hafer
discloses this limitation (id. (citing Hafer, col. 2, ll. 41-43)). The Examiner
concludes that it would have been obvious to an ordinary artisan to include
the step described in Hafer in the method of Goldfarb (id.).
The Examiner does not indicate, however, that Hafer teaches or
suggest what is deficient in Goldfarb, as discussed above in relation to claim
56. The Examiner does not state, or explain how, Hafer discloses or
suggests tunneling though any cartilage located near thyroid cartilage, rather
than thyroid cartilage itself, much less through cricoid cartilage in particular,
in a relevant method. Thus, the Examiner fails to present a prima facie case
that claim 58 is obvious over Goldfarb in view of Hafer.
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III. Obviousness-type double patenting
On the ground of nonstatutory obviousness-type double patenting, the
Examiner has provisionally rejected claims 56-60 over claims 76, 79, 88,
and 89 of U.S. Appl. No. 11/848,131 (Ans. 6-8; see also Final Office Action
6). Because Appellants do not contest this rejection, we summarily affirm
the rejection. See Manual of Patent Examining Procedure § 1205.02 (―If a
ground of rejection stated by the examiner is not addressed in the appellant‘s
brief, that ground of rejection will be summarily sustained by the Board.‖);
see also, Ex parte Frye, 2010 WL 889747 *4 (BPAI 2010) (precedential)
(―If an appellant fails to present arguments on a particular issue—or, more
broadly, on a particular rejection—the Board will not, as a general matter,
unilaterally review those uncontested aspects of the rejection‖).
SUMMARY
We reverse the rejection of claims 56, 57, and 59-66 as obvious over
Goldfarb. We also reverse the rejection of claim 58 as obvious over
Goldfarb in view of Hafer. We affirm the provisional rejection of claims 56-
60 on the ground of nonstatutory obviousness-type double patenting over
claims 76, 79, 88, and 89 of U.S. Appl. No. 11/848,131.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART
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