10834492 (B.P.A.I. Apr. 22, 2012)

Ex Parte Strait

Board of Patent Appeals and InterferencesApr 22, 2012

10834492 (B.P.A.I. Apr. 22, 2012)

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. 10/834,492 04/28/2004 James R. Strait 52427/RRP/S1119 7325 23363 7590 04/23/2012 CHRISTIE, PARKER & HALE, LLP PO BOX 29001 Glendale, CA 91209-9001 EXAMINER NGUYEN, CAMTU TRAN ART UNIT PAPER NUMBER 3772 MAIL DATE DELIVERY MODE 04/23/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte JAMES R. STRAIT ____________________ Appeal 2010-005138 Application 10/834,492 Technology Center 3700 ____________________ Before: PHILLIP J. KAUFFMAN, CHARLES N. GREENHUT, and WILLIAM V. SAINDON, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-005138 Application 10/834,492 2 STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1- 7. Notice of App. filed Jun. 30, 2005. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The claims are directed to an intraoral weight-control appliance. Claim 1, reproduced below, is representative of the claimed subject matter, and is the sole independent claim on appeal: 1. An intraoral weight-control dental appliance configured for fixed mounting on a patient's opposed maxillary upper molar teeth, and to extend around an inner lingual surface of the patient's upper dental arch, the mounted appliance extending below an occlusal plane of the upper arch, and having spaces admitting liquids and small-particle foods, but blocking ingestion of solid foods, the installed appliance being immovable with respect to the patient's maxillary teeth. REJECTIONS Claim 1 is rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Ans. 3. Claims 1-4 are rejected under 35 U.S.C. § 102(b) as being anticipated by Steven (U.S. Pat. No. 4,471,771, iss. Sep. 18, 1984). Ans. 4. Claims 5-7 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Steven and Williams (U.S. Pat. No. 5,645,422, iss. Jul. 8, 1997). Ans. 4. Claims 5-7 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Steven and Knoderer (U.S. Pat. No. 4,727,867, iss. Mar. 1, 1988). Ans. 4. Appeal 2010-005138 Application 10/834,492 3 OPINION Concerning the Examiner’s rejection under 35 U.S.C. § 112, first paragraph, we adopt the Appellant’s position (App. Br. 3) as our own. Specifically, we fail to see how mobility during installation or removal (Ans. 3-4, 5-7) is germane to whether Appellant possessed a device that was immovable when installed, as claimed. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (“[T]he test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date”). Since the Examiner has failed to present sufficient evidence or reasoning to establish why persons skilled in the art would not recognize in the original disclosure a description of the invention defined by the claims, the Examiner’s rejection under 35 U.S.C. § 112, first paragraph cannot be sustained. See In re Wertheim, 541 F.2d 257, 263 (CCPA 1976). Regarding the rejection of claim 1 as anticipated by Steven, the Examiner found that braces 40, 42 are maintained in a fixed position once installed. Appellant correctly points out that “[c]laim 1, however, is directed to an appliance, the ‘installed appliance being immovable with respect to the patient’s maxillary teeth.’ Whether Steven depicts one small part of a device, that one small part being fixed, is irrelevant.” Reply Br. 5. Since the Examiner interprets portions of Steven, such as “a guard (14) realized from stiff wires (18) and formed with openings (16),” (Ans. 4), which are not immovable (See Steven col. 4, ll. 26-32) as part of the claimed appliance, the Examiner has failed to establish that Steven anticipates the subject matter claimed. Accordingly, the Examiner’s rejection of claim 1 as being anticipated by Steven cannot be sustained. Appeal 2010-005138 Application 10/834,492 4 For purposes of this appeal we will presume Appellant intended to argue the rejections of claims 2-7 by virtue of their dependence from claim 11. See App. Br. 1 (“all claims are being appealed”); see also Reply Br. 6-8 (further evidencing such intent by directly addressing Williams and Knoderer). Since the Examiner has not offered any evidence or articulated any reasoning based on Williams, Knoderer, or otherwise, to remedy the deficiencies noted regarding claim 1, the Examiner’s rejections of claims 2-7 also will not be sustained. DECISION The Examiner’s rejections of claims 1-7 are reversed. REVERSED hh 1 37 C.F.R. § 41.37(c)(vii), in part, provides, “Any arguments or authorities not included in the brief or a reply brief filed pursuant to § 41.41 will be refused consideration by the Board, unless good cause is shown. Each ground of rejection must be treated under a separate heading.”