Ex Parte Sun

Board of Patent Appeals and Interferences

Mar 8, 2007

10729973 (B.P.A.I. Mar. 8, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte WILLIAM Y. SUN
__________

Appeal 2007-0692
Application 10/729,973
Technology Center 1600
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ON BRIEF
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Before MILLS, GREEN, and LEBOVITZ, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
Claims 1 and 8 are on appeal. We have jurisdiction under 35 U.S.C.
§ 6(b). We reverse.
STATEMENT OF CASE
This appeal involves claims to a tongue stabilizer for a laryngoscope
blade. Laryngoscopes are utilized by physicians to visualize the epiglottis
(Specification 1). In an emergency situation where it is necessary to
establish an artificial airway, a laryngoscope may be used “to keep the
tongue out of the way in order to visualize the epiglottis so that an
endotracheal tube can be inserted into the trachea.” (Id. at 1: 11-12.) “The
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Application No. 10/729,973

problem is that all the laryngoscope blades on the market now are narrow
and can hold only approximately half of the tongue, so that it is very hard to
make the tongue stay on the laryngoscope blade with any degree of
stability.” (Id. at 1: 13-15.) The specification describes the invention as a
“tongue holder or stabilizer” which can be attached to a laryngoscope blade
to control the tongue as the intubation process is performed (Id. at 2-3).
Claims 1-17 are pending (Br. 4). Claims 1 and 8 stand finally rejected
as anticipated under 35 U.S.C. § 102(b) by Panduit (Product Bulletin,
“ABM112 Adhesive Backed Cable Tie Mount,” pp. 28-29, 1999) (Id.).
Claims 2-7 and 9-17 contain allowable subject matter, but are objected to as
being dependent on rejected claim 1 (Id.).
Claim 1 is the broadest claim on appeal. It reads as follows:
1. A tongue stabilizer for a laryngoscope blade comprising:
a tongue-engaging plate having a top surface, a bottom surface,
a forward end, a rear end, a first side, a second side and a central area;
a foam strip support having a top surface and a bottom surface
with said foam top surface attached to said tongue engaging plate
bottom surface between said forward end and said rear end and
between said first side and said second side;
a pressure-sensitive adhesive having a top surface, attached to
and extending along said foam support bottom surface, and a bottom
surface, available for attaching said tongue stabilizer to a
laryngoscope blade.

ISSUE ON APPEAL
Claim 1 is drawn to a “tongue stabilizer for a laryngoscope blade” that
contains three elements: 1) a “tongue-engaging plate”; 2) a “foam strip
support” attached to the plate; and 3) a “pressure-sensitive adhesive”
attached to the foam support.
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The Examiner contends that Panduit’s cable tie mount comprises top
surfaces which are “fully capable of engaging a tongue,” meeting the
claimed requirement of a “tongue-engaging plate.” (Answer 5.) Appellant
contends that Panduit does not disclose a structure that can be utilized to
support and stabilize a tongue, the function required by the tongue-engaging
plate (Br. 9-10).
The issue in this appeal is whether Panduit describes a device which
comprises a tongue-engaging plate as required by claim 1, anticipating the
claim under 35 U.S.C. § 102(b). This issue turns on the proper interpretation
of the phrase “tongue-engaging plate” which is recited in claim 1.

CLAIM INTERPRETATION
In comparing a claim to the prior art, the first step is to interpret the
meaning of the words in the claim. This is essential because it is the claim
language which determines a claim’s proper scope. In this case, the dispute
between the Examiner and the Appellant rests on the proper interpretation of
“tongue-engaging plate” as recited in claim 1.
During patent examination, claims are given their broadest reasonable
interpretation read in light of the specification as they would be understood
by one of ordinary skill in the art. In re Morris, 127 F.3d 1048, 1054,
44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Crish, 393 F.3d 1253, 1256,
73 USPQ2d 1364, 1367 (Fed. Cir. 2004). Using this principle as a guide, we
turn to the claim interpretation issue before us.
The claimed invention is drawn to a “tongue stabilizer for a
laryngoscope blade.” It comprises a “tongue-engaging plate.” We
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understand the term “engaging” in the context of the claim and specification
to mean that the plate “comes into contact with” the tongue. See Primos Inc.
v. Hunter's Specialties Inc., 451 F.3d 841, 847-48, 79 USPQ2d 1129, 1134-
35. When in contact with the tongue, the plate is used “to confine the tongue
and prevent it from slipping and obstructing and/or obscuring the throat
passage.” (Specification 5: 3-5.) This contact is necessary to “support” (Id.
at 4:16) and “confine” the tongue during an intubation procedure (Id. at 6: 4-
7).
In addition to confining the tongue, the tongue-engaging plate also
“holds” the tongue. As pointed out in the “Description of Related Art,” prior
art laryngoscopes “are narrow and can hold only approximately half of the
tongue, so that it is very hard to make the tongue stay on the laryngoscope
blade with any degree of stability.” (Id. at 1: 13-15.) To solve this problem,
Appellant provides a tongue-engaging plate which, when attached to the
laryngoscope, holds the tongue on its surface so it does not slip off and
obscure the throat passage (Id. at 5). Preferred shapes are that of a spoon or
a concave upper surface “to cradle the tongue.” (Id. at 4: 16-17.)
Giving “tongue-engaging plate” its broadest reasonable interpretation
as it would be understood by the skilled worker in view of the specification,
we interpret it as a structure which, when attached to a laryngoscope blade
and in contact with the tongue, must be capable of confining and holding the
tongue on its surface.

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THE PRIOR ART
Panduit discloses an adhesive-backed cable tie mount that is backed
with a pressure-sensitive foam tape adhesive (Answer 4; Panduit at 29). The
mount comprises: a raised open bridge-like structure for inserting wires, a
foam strip support (part of the pressure-sensitive adhesive tape), and a
pressure sensitive adhesive tape which is used to attach the mount to a
surface (Id.). The opening in the mount is “to secure wire bundles or other
light objects to smooth surfaces.” (Panduit at 29.)

DISCUSSION
An anticipating reference must describe the patented subject matter
with sufficient clarity and detail to establish that the subject matter existed in
the prior art and that such existence would be recognized by persons of
ordinary skill in the field of the invention. In re Spada, 911 F.2d 705, 708,
15 USPQ2d 1655, 1657 (Fed. Cir. 1990); Diversitech Corp. v. Century
Steps, Inc., 850 F.2d 675, 678, 7 USPQ2d 1315, 1317 (Fed. Cir. 1988).
The illustration of the cable tie mount in Panduit shows that it
comprises two top surfaces attached to the self-adhesive form tape: an upper
raised platform surface which lies on a wider bottom surface base. (See
Reply Br. 9.) The raised platform is a bridge that forms an opening through
which wires are inserted (Panduit at 28; Reply Br. 10). The Examiner
asserts that the top surfaces of the mount meet the claimed requirement of a
tongue-engaging plate (Answer 5).
We do not agree. The “tongue-engaging plate” is required to confine
and hold the tongue when in contact with it. We are not persuaded that the
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skilled worker would have recognized the two-tiered top surface structure of
Panduit’s cable mount as a “tongue-engaging plate” which is capable of
performing these functions. The Examiner asserts that “the top surfaces of
the plates are fully capable of engaging a tongue.” (Answer 5.) However,
the dispositive issue is not whether the cable mount is capable of contacting
(“engaging”) the tongue, but whether it can confine and hold it on its top
surface. The Examiner provides no evidence to support the position that the
cable mount’s two-tiered top surface would be recognized as capable as
capable of performing this function by persons of ordinary skill in the field
of the invention.
In reaching this determination, we have interpreted the “tongue-
engaging plate” to be more than a statement of purpose or intended use of
the claimed device, but also to require that the plate be capable of confining
holding the tongue in order to control it during an intubation procedure. In
other words, we interpret structure from it. The specification describes this
structure generally as an “elongated” plate having preferred spoon or
concave shapes (Specification 4: 14-17) to hold the tongue in place. The
skilled worker would not have reasonably interpreted the tongue-engaging
plate so broadly that it could cover the two-tiered cable mount surface
described by Panduit. Yes, Panduit’s mount could be adhesively attached to
a laryngoscope blade, inserted into the mouth, and placed in contact with the
tongue. But, we agree with Appellant that there is nothing about its upper
surfaces that would reasonably suggest it could be used to hold the tongue,
rather than damaging and deflecting it from the mount surface (Br. 10). The
purpose of giving claims their broadest reasonable interpretation is to reduce
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“the possibility that claims . . . will be given broader scope than is justified”
by the prior art. In re Bigio, 381 F.3d 1320, 1324, 72 USPQ2d 1209, 1210-
11 (Fed. Cir. 2004) (internal citations omitted). It is not an exercise in
stretching the interpretation of a claim – far beyond what would be
reasonably imagined by the skilled worker in view of the specification – to
read on a prior art structure which could possibly, but not reasonably, be
covered by it.

REVERSED

Demetra J. Mills )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Lora M. Green )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Richard M. Lebovitz )
Administrative Patent Judge )

RML/lbg

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CLYDE I. COUGHENOUR
16607 SUTTON PLACE
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