Ex Parte Nelson et al

Patent Trial and Appeal Board

Feb 7, 2013

11592529 (P.T.A.B. Feb. 7, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte LIONEL M. NELSON, OCTAVIAN IANCEA,
BRIAN K. MCCOLLUM, and ANDRES D. TOMAS
____________________

Appeal 2011-001020
Application 11/592,529
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 2011-001020
Application 11/592,529
2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-3, 14, and 17-20. 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. A system comprising:
at least one ferromagnetic structure adapted to be
implanted within a first region of a tissue,
at least one anchoring structure adapted to be implanted
within a second region of the same tissue spaced from the at
least one ferromagnetic structure, the at least one anchoring
structure including an expandable structure having a collapsed
position prior to implantation and an expanded position after
being implanted within the tissue, and
at least one attachment element coupling the at least one
anchoring structure to the at least one ferromagnetic structure to
stabilize the at least one ferromagnetic structure in the first
region of the tissue.

References
The Examiner relies upon the following prior art references:
Nelson US 7,188,627 B2 Mar. 13, 2007
Conrad
Atkinson
US 2005/0092334 A1
US 2006/0266369 A1
May 5, 2005
Nov. 30, 2006

Rejections
I. Claims 1-3, 14, 17, 18, and 19 are rejected under 35 U.S.C. § 102(e)
as anticipated by Atkinson. Ans. 4.
Appeal 2011-001020
Application 11/592,529
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II. Claims 1-3 and 14 are rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claims
7 and 34 of U.S. Patent No. 7,188,627. Ans. 6.
III. Claim 20 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Atkinson and Conrad. Ans. 7.

SUMMARY OF DECISION
We REVERSE.

OPINION
Claim 1 is the sole independent claim. It requires at least two
structures adapted to be implanted within different regions of the same
tissue. The first structure is a ferromagnetic structure and the second is an
anchoring structure.
The Examiner found that Atkinson discloses a ferromagnetic structure
(a magnet in magnetic mechanism 93) and an anchoring structure
(expandable anchor 94’’). Ans. 4; Atkinson, para. [0057] (“alternative
anchoring mechanisms … for attachment to the hyoid bone”).
Appellants argue that the magnetic mechanism 93 is disposed
externally of the tissue, between the anchoring screws 94, and thus is
disposed in a different tissue. App. Br. 11; Reply Br. 5.
The Examiner responds that the magnetic mechanism 93 is “capable
of being adapted to be implanted” in the same tissue. Ans. 9. The Examiner
also responds, “the claim in no way precludes the system element from
being implanted in different bones for instance” and, “all bones are a rigid
organ,” i.e., are the same tissue. Ans. 11.
Appeal 2011-001020
Application 11/592,529
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While we agree with the Examiner that the functional nature of the
claims merely require a structure capable of satisfying the claimed functions,
the Examiner has not shown that Atkinson discloses such a structure. The
Examiner’s statement that Atkinson is “capable of being adapted to be
implanted” does not speak to whether Atkinson is “adapted to be implanted”
as claimed. In addition, the claim requires the two structures to be capable
of being implanted in the same tissue. Even assuming “tissue” reads on the
skeleton as a whole (an interpretation with which we do not agree), only the
anchors would be implanted in that tissue. It is not apparent to us how the
magnetic structure imparting a biasing force on the anchors could be inside
the bone; the Examiner offers no explanation to elucidate. Similarly, the
anchors of Atkinson may be capable of anchoring in other tissues besides
bone, in which the magnetic structure may also be implanted, but the
Examiner makes no findings or technical explanation to support such a
proposition.
Thus, the Examiner has not set forth a prima facie case of anticipation
that adequately supports the position that the structure of Atkinson is
actually capable of performing the claimed functions.
Rejections I and III both include this factual deficiency, and cannot be
sustained.
We do not address Rejection II (obviousness-type double patenting)
because a terminal disclaimer has been filed (Jul. 22, 2010) and approved
(Aug. 19, 2010).

Appeal 2011-001020
Application 11/592,529
5
DECISION
We REVERSE the Examiner’s decision regarding the prior art
rejections of claims 1-3, 14, and 17-20.
We do not reach the obviousness-type double patenting rejection.

REVERSED

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