Ex Parte Martin et al

Patent Trial and Appeal Board

Jan 24, 2018

12322562 (P.T.A.B. Jan. 24, 2018)

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.
6298-648 1833
EXAMINER
STUART, COLIN W
ART UNIT PAPER NUMBER
3771
MAIL DATE DELIVERY MODE
12/322,562 02/04/2009
7590757
BGL
P.O. BOX 10395
CHICAGO, IL 60610
Ruth E. Martin
01/24/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RUTH E. MARTIN and PETER SOROS
Appeal 2016-007440
Application 12/322,562
Technology Center 3700
Before: STEVEN D.A. MCCARTHY, ANNETTE R. REIMERS, and
BRENT M. DOUGAL, Administrative Patent Judges.
DOUGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a final rejection of
claims 1, 3—6, 10—12, and 15. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2016-007440
Application 12/322,562
CLAIMED SUBJECT MATTER
The claims are directed to a method of brain activation. Claim 1,
reproduced below, is the sole independent claim and is illustrative of the
claimed subject matter:
1. A method of activating the brain of a subject comprising:
delivering a train of fluid air pulses of a predetermined
frequency and duration at a pressure between 25 mmHg and 250
miriHg with an oral device to one or more predetermined areas
on the subject’s body selected from the group consisting of a
peritonsillar area, tongue, mouth, oral cavity, oropharynx, nasal
cavities, pharynx and neck of the subject;
eliciting swallowing by the subject in response to the
delivering of the train of fluid air pulses; and
activating a brain of the subject directly in response to the
delivering of the train of fluid air pulses, or the swallowing that
was elicited in response to the delivery of the train of fluid air
pulses.
EVIDENCE
The Examiner’s decision relies upon the following evidence:
Martin ’065 US 7,935,065 B2 May 3, 2011
Martin ’010 US 2006/0282010 A1 Dec. 14, 2006
Aviv, Jonathan E., A Symposium: Clinical Assessment of
Pharyngolaryngeal Sensitivity/Aviv, American Journal Medicine, Vol. 108,
68S-72S (2000).
REJECTIONS
Claims 1, 3—6, 10—12, and 15 are rejected under 35 U.S.C. §103 (a) as
being unpatentable over Martin ’010 and Aviv.
Claims 1, 3—6, 10—12, and 15 are rejected under nonstatutory double
patenting over claims 1—3, 8 and 22 of Martin ’065 and Aviv.
2
Appeal 2016-007440
Application 12/322,562
OPINION
The Examiner finds that Martin ’010 teaches “a method of activating
the brain of a subject” including all of the features of claim 1, except that
“Martin is silent as to the pressure of the air pulses being between 25 miriHg
and 250 mmHg.” Final Act. 2—3. The Examiner finds that “Aviv teaches
assessment of pharyngolaryngeal sensitivity which indicates that stroke
patients with dysphagia have higher sensitivity thresholds than that of less
impaired patients.” Id. at 3. In particular, the Examiner finds that Aviv
teaches that “Pharyngolaryngeal sensitivity in stroke patients with
dysphagia, [is] greater than 6 mmHg.” Id.
The Examiner then determines that in view of Aviv “[i]t would have
been an obvious matter of design choice ... to provide air pulse trains at a
pressure between 25 mmHg and 250 mmHg in order [to] provide
rehabilitation therapy to severely impaired stroke patient[s] experiencing
extreme cases of dysphagia.” Id. The Examiner further explains that
“[w]hile both the Martin and Aviv references are silent as to the particular
pressure range of the air-pulse being between 25 mmHg and 250 mmHg”
this range would be obvious to try “in order to elicit a reflex from patients
exhibiting extreme cases of dysphagia as they would require higher levels of
stimulation” as taught by Aviv. Id. at 9.
Martin ’010 discusses an oral device which can be used in a “method
of creating a gas bolus pulse train, delivering it to a predetermined mouth
area, and monitoring the subject’s responses to it.” Martin ’010, Abstract.
Martin ’010 also teaches that the oral device is used with “a control system
50 as shown in FIG. 11,” where “[i]n most cases” the pressure to be used “is
in a range from 3 cm to 15 cm water.” Id. at 136. This converts to a
3
Appeal 2016-007440
Application 12/322,562
pressure range of 2.2—11.0 mmHg. See Appeal Br. 4, 5. The control system
50 of Figure 11 of Martin ’010 shows a pressure control 52 with an upper
limit of 15 mm. Martin ’010, Fig. 11. One of skill in the art could
reasonably understand 15 mm to be a typographical error that should have
read 15 cm, to be consistent with the upper limit of 15 cm of water taught in
the Specification. At the same time, one of skill in the art could reasonably
understand 15 mm to refer to 15 mmHg where mmHg is a common unit for
measuring pressure and where the converted specified range of 2.2—11.0
mmHg is still within the limit of the control system 50.
Aviv provides a “review [of] the ongoing clinical research on
assessment of laryngeal and pharyngeal sensitivity with particular emphasis
on the technique of endoscopic air pulse stimulation of the
laryngopharyngeal mucosa.” Aviv, Abstract (bolding omitted). Aviv
teaches that the air pulses studied “varied in intensity from 0 to 12 mm Fig.”
Id. at 69S; see also Appeal Br. 4, 5. Aviv also states that
“Laryngopharyngeal sensory discrimination thresholds are defined as either
normal (< 4.0 mm Hg air pulse pressure), moderately impaired (4.0 to 6.0
mm Hg air pulse pressure) or severely impaired (> 6.0 mm Hg air pulse
pressure).” Aviv 70S.
As discussed above, the upper pressure limits taught by Martin ’010
and Aviv are 15 mmHg and 12 mmHg, respectively. Aviv does teach the
pressure needs to greater than 6.0 mmHg to stimulate a severely impaired
patient when testing laryngopharyngeal sensory discrimination. However,
when the cited references are viewed as a whole, neither reference includes
any suggestion of a pressure range with its lower limit almost twice that of
upper limit of Martin ’010 and Aviv. Further, at least the control system 50
4
Appeal 2016-007440
Application 12/322,562
of Martin ’010 illustrated in Figure 11 is not capable of providing a pressure
between 25 mmHg and 250 mmHg as the upper limit is 15 imnHg under one
reasonable interpretation, and even less than this under another. Thus, the
Examiner’s position that providing a pressure between 25 mmHg and 250
mmHg would have been an obvious matter of design choice or would have
been obvious to try is not supported by the cited prior art. For this reason,
we do not sustain the rejection of the claims under 35 U.S.C. § 103(a) as
being unpatentable over Martin ’010 and Aviv.
The Examiner also rejects the claims under nonstatutory double
patenting over claims 1—3, 8 and 22 of Martin ’065 and Aviv. Martin ’065 is
the patent that issued based on the patent application published as Martin
’010. Thus, the Examiner’s nonstatutory double patenting rejection is based
on the same faulty reasoning discussed above. As such, we do not sustain
the rejection of the claims under nonstatutory double patenting over claims
1—3, 8 and 22 of Martin ’065 and Aviv.
DECISION
The Examiner’s rejection of claims 1, 3—6, 10-12, and 15 under 35
U.S.C. §103 (a) is reversed.
The Examiner’s rejection of claims 1, 3—6, 10-12, and 15 under
nonstatutory double patenting is reversed.
REVERSED
5