Ex Parte Albrecht et al

Patent Trial and Appeal Board

May 30, 2018

14100218 (P.T.A.B. May. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/100,218 12/09/2013 Thomas E. Albrecht
100709 7590 06/01/2018
Ethicon Endo-Surgery, Inc.
c/o Frost Brown Todd LLC
3300 Great American Tower
301 East Fourth Street
Cincinnati, OH 45202
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
END6769USCNT1.0612453 3101
EXAMINER
MENSH, ANDREW J
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
06/01/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
patents@fbtlaw.com
lgroves@fbtlaw.com
jdewar@fbtlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS E. ALBRECHT, MICHAELS. CROPPER,
JASON L. HARRIS, CHRISTOPHER J. HESS,
JOHN V. HUNT, MARK D. OVERMYER,
FREDERICK E. SHEL TON IV, MICHAEL J. STOKES,
WILLIAM B. WEISENBURGH II,
TAMARA S. VETRO WIDENHOUSE, and
ANDREW M. ZWOLINSKI 1
Appeal2017-009126
Application 14/100,218
Technology Center 3700
Before: STEFAN STAICOVICI, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Thomas E. Albrecht et al. ("Appellants") appeal under 35 U.S.C.
§ 134(a) from the Examiner's decision rejecting claims 21, 23-38, and 40.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION under
37 C.F.R. §41.50(b).
1 Appellants' Appeal Brief lists the real party in interest as Ethicon Endo-
Surgery, LLC, a wholly owned subsidiary of Johnson & Johnson. Br. 3.
Appeal2017-009126
Application 14/100,218
THE CLAIMED SUBJECT MATTER
The claims are directed to methods that elute a therapeutic substance
which aids in inducing an intestinal braking effect. Spec. i-f 2. Claim 21,
reproduced below, is illustrative of the claimed subject matter:
21. A method of inducing satiety in a patient, the method
compnsmg:
(a) folding a portion of the patient's intestine to create a
folded portion, wherein the folded portion of the intestine
extends transversely from adjacent sections of the intestine;
(b) implanting a therapeutic device inside an intestinal
lumen in the folded portion of the intestine; and
( c) securing the therapeutic device inside the intestinal
lumen in the folded portion of the intestine.
Bell
Karasik
Zeiner
Lavi
Shalon
REFERENCES RELIED ON BY THE EXAMINER
US 2005/0222259 Al Oct. 6, 2005
US 2007/0265598 Al Nov. 15, 2007
US 2009/0024163 Al Jan. 22, 2009
US 2011/0029000 Al Feb. 3, 2011
WO 2010/125570 Al Nov. 4, 2010
REJECTIONS
(I) Claims 21, 23-26, 28-33, 37, and 38 are rejected under 35
U.S.C. § 103(a) as unpatentable over Zeiner and Lavi.
(II) Claims 35, 36, and 40 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Zeiner, Lavi, and Karasik.
(III) Claim 27 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Zeiner, Lavi, and Shalon.
(IV) Claim 34 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Zeiner, Lavi, and Bell.
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Application 14/100,218
OPINION
NEW GROUNDS OF REJECTION
For the reasons discussed below, claims 21, 23-38, and 40 are
indefinite. We do not sustain the rejections of these claims under 35 U.S.C.
§ 103(a) because to do so would require speculation as to the scope of the
claims. See In re Steele, 305 F.2d 859, 862-63 (CCP A 1962) (holding that
the Board erred in affirming a rejection of indefinite claims under 35 U.S.C.
§ 103(a), because the rejection was based on speculative assumptions as to
the meaning of the claims).
Independent claims 21 and 40 are amenable to at least two plausible
claim constructions as explained below. 2
Appellants argue that "the 'therapeutic devices' of Zeiner are not
secured within the lumen, but rather, they are deployed around and through
the gastric cavity wall (40)." Br. 10.
The Examiner responds that because the recited method does not
include "forming a lumen within the folded portion," under a broadest
reasonable interpretation, "the gastric cavity itself is considered a lumen ...
Zeiner discloses implanting a therapeutic device inside a lumen in the folded
portion of the gastric cavity." Ans. 4--5. The Examiner states that when
Zeiner is combined with Lavi, "the therapeutic device would, in fact, be
2 See Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential)
("if a claim is amenable to two or more plausible claim constructions, the
US PTO is justified in requiring the applicant to more precisely define the
metes and bounds of the claimed invention by holding the claim ...
indefinite").
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Appeal2017-009126
Application 14/100,218
implanted inside an intestinal lumen in the folded portion of the intestine, as
claimed." Ans. 5.
As such, the Examiner interprets step (b) of "implanting a therapeutic
device inside an intestinal lumen in the folded portion of the intestine" as 1)
implanting a therapeutic device inside a lumen of the organ (intestine), i.e.,
inside cavity 32, and 2) the device is in the folded portion of the organ, i.e.,
in the fold or crease at 110. See Zeiner, Fig. 23. We agree with the
Examiner that "there is no recited method step in the independent claim of
forming a lumen within the folded portion of the intestine for the therapeutic
device to be implanted." Although the process depicted in Appellants'
Figures 16A-16H depicts the device inside a lumen formed by the folded
portion, the device is also depicted as inside a lumen of the intestine. Ans. 4.
Accordingly, the Examiner's interpretation is plausible.
A second plausible interpretation of step (b) of claim 21 is to require
the lumen to be structure defined by the folding process. In other words, the
lumen is created by the folded portion and is not just a lumen of the
intestine. As mentioned above, this second interpretation of step (b) in claim
21 is consistent with Appellants' Figure 16H. The same lack of clarity
exists in independent claim 40.
We make the following new ground of rejection pursuant to our
authority under 3 7 C.F .R. § 41. 50(b ). As discussed above, claim 21 is
subject to at least two plausible claim interpretations. Because those skilled
in the art would not understand what is required by claim 21, we reject claim
21under35 U.S.C. § 112, second paragraph, as indefinite. For the same
reasons, we also reject claims 22-38, which depend from claim 21 and do
not contain limitations that fully resolve the above-noted deficiencies in step
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Application 14/100,218
(b) of claim 21, under 35 U.S.C. § 112, second paragraph. Additionally, as
independent claim 40 recites similar language as that discussed above for
claim 21, we also reject claim 40 under 35 U.S.C. § 112, second paragraph,
as indefinite.
DECISION
The Examiner's rejection of claims 21-26, 28-33, 37, and 38 under
35 U.S.C. § 103(a) as unpatentable over Zeiner and Lavi is reversed.
The Examiner's rejection of claims 35, 36, and 40 under 35 U.S.C.
§ 103(a) as unpatentable over Zeiner, Lavi, and Karasik is reversed.
The Examiner's rejection of claim 27 under 35 U.S.C. § 103(a) as
unpatentable over Zeiner, Lavi, and Shalon is reversed.
The Examiner's rejection of claim 34 under 35 U.S.C. § 103(a) as
unpatentable over Zeiner, Lavi, and Bell is reversed.
NEW GROUND OF REJECTION
Claims 21, 23-38, and 40 are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.
FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to 3 7
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
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Application 14/100,218
37 C.F.R. § 41.50(b) also provides:
When the Board enters such a non-final decision, [Appellants],
within two months from the date of the decision, must exercise
one of the following two options with respect to the new
ground[s] of rejection to avoid termination of the appeal as to the
rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the [E]xaminer, in which event the prosecution will be
remanded to the [E]xaminer. The new ground of rejection is
binding upon the [E]xaminer unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the [E]xaminer, overcomes the new ground of rejection
designated in [this] decision. Should the Examiner reject the
claims, [Appellants] may again appeal to the Board pursuant to
this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
REVERSED; 37 C.F.R. § 41.50(b)
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