Ex Parte Paraschac et alDownload PDFPatent Trial and Appeal BoardFeb 7, 201311820174 (P.T.A.B. Feb. 7, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte JOSEPH PARASCHAC and LIONEL M. NELSON ____________________ Appeal 2011-006825 Application 11/820,174 Technology Center 3700 ____________________ Before: JOHN C. KERINS, WILLIAM V. SAINDON, and NEIL T. POWELL, Administrative Patent Judges. SAINDON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-006825 Application 11/820,174 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-41. We have jurisdiction under 35 U.S.C. § 6(b). The Claimed Subject Matter Claims 1 and 35 are independent. Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. An implant system comprising at least one implant structure sized and configured for surgical implantation in, on, or near an extrinsic muscle region affecting movement and/or shape of a tongue, and means for stabilizing the position of the implant structure relative to the extrinsic muscle region to maintain the tongue in a desired orientation, wherein the means for stabilizing is adapted to be surgically implemented. References The Examiner relies upon the following prior art references: Keller Karell Halstrom US 4,723,910 US 6,408,851 B1 US 6,729,335 B1 Feb. 9, 1988 Jun. 25, 2002 May 4, 2004 Rejections I. Claims 1-3, 6, 10-13, 29, 30, and 34-36 are rejected under 35 U.S.C. § 102(b) as anticipated by Karell. Ans. 4. II. Claims 4, 8, 23-25, 31, and 37 are rejected under § 103(a) as unpatentable over Karell and Keller. Ans. 5. III. Claims 5, 9, 26-28, 32, and 38 are rejected under § 103(a) as unpatentable over Karell and Halstrom. Ans. 5. Appeal 2011-006825 Application 11/820,174 3 IV. Claims 7, 16-22, 33, and 39-41 are rejected under § 103(a) as unpatentable over Karell in view of Karell. Ans. 6. V. Claims 14 and 15 are rejected under § 103(a) as unpatentable over Karell in view of Karell. Ans. 7. SUMMARY OF DECISION We REVERSE. OPINION The Examiner rejects independent claims 1 and 35 as anticipated by Karell. Ans. 4. The Examiner found that support structure 20 corresponds to the claimed “implant structure” and that releasable holder 30 corresponds to the claimed “means for stabilizing.” Id. Karell depicts support structure 20 as a mouthpiece, and notes it “may be molded to a user’s teeth and is for insertion into the user’s mouth.” Karell, col. 4, ll. 33-34. Karell depicts releasable holder 30 as a structure that passes through a user’s tongue, akin to a body piercing. Karell, col. 4, ll. 34-37, col. 2, ll. 49-52. Appellants argue that the support 20 in Karell (i.e., the mouthpiece) is not “sized and configured for surgical implantation” as required by the claim. App. Br. 5; Reply Br. 2-4. We agree. Simply put, the broadest reasonable interpretation of an “implant structure sized and configured for surgical implantation in, on, or near an extrinsic muscle region affecting movement and/or shape of a tongue” does not extend to such a large and readily removable object such as the mouthpiece (support structure 20) in Karell. The Examiner appears to interpret “surgical implantation” to read on placing the mouthpiece in the user’s mouth. Ans. 7-8. If the Examiner’s Appeal 2011-006825 Application 11/820,174 4 interpretation were adopted, then football players taking their mouth guards in and out during the course of the game would be surgically implanting and removing the guards. Such an interpretation strikes us as implausible, and the Examiner has not offered a reasonable basis for such a claim construction. Accordingly, we are apprised of error in the Examiner’s rejection of the independent claims. The rejections of the remaining claims include the same error. DECISION We REVERSE the Examiner’s decision regarding claims 1-41. REVERSED hh Copy with citationCopy as parenthetical citation