Ex Parte Snow et al

Patent Trial and Appeal BoardAug 9, 2017

12770617 (P.T.A.B. Aug. 9, 2017)

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. A-8733 1069 EXAMINER COX, THADDEUS B ART UNIT PAPER NUMBER 3735 MAIL DATE DELIVERY MODE 12/770,617 04/29/2010 119800 7590 Gordon & Jacobson, P.C. 60 Long Ridge Road Suite 407 Stamford, CT 06902 Sean Snow 08/10/2017 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 PATENT TRIAL AND APPEAL BOARD Ex parte SEAN SNOW, BABAK HONARYAR, and CHRISTIAN Y. PERRON1 Appeal 2016-003884 Application 12/770,617 Technology Center 3700 Before RICHARD J. SMITH, TAWEN CHANG, and JOHN E. SCHNEIDER, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35U.S.C. § 134 involving claims to a self- adjusting gastric band. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 According to Appellants, the real party in interest is Apollo Endosurgery, Inc. (Br. 3.) Appeal 2016-003884 Application 12/770,617 STATEMENT OF THE CASE Claims on Appeal Claims 1, 6—9, 12—14, and 21 are on appeal. (Claims Appendix, Br. 8—10.) Claim 1, the only independent claim, is illustrative and reads as follows (emphasis added): 1. A self-adjusting gastric band that adjusts to allow a large bolus of food to pass through a constriction in a patient’s stomach formed by the self-adjusting gastric band, the self- adjusting gastric band comprising: an inflatable portion bandable about an esophageal- gastric junction of the patient; an access port fluidly coupled to the inflatable portion via tubing to fill and drain the inflatable portion; and a flexible ring coupled to the inflatable portion for providing structure and support to the inflatable portion, wherein the ring facilitates disposing the inflatable portion about the esophageal-gastric junction, wherein when the band is in a banded configuration, the inflatable portion defines a radially inner diameter of the band and, wherein when the band is in the banded configuration, the flexible ring defines a radially outer diameter of the band that expands radially outwardly when a predetermined pressure is generated in the inflatable portion in response to the large bolus passing through the esophageal-gastric junction, the flexible ring expanding to automatically relax the constriction formed by the self-adjusting gastric band, and wherein to carry out the adjustment to allow the large bolus of food to pass the self-adjusting gastric band does not use electrical power or power external to the patient. 2 Appeal 2016-003884 Application 12/770,617 Examiner’s Rejections 1. Claim 1 stands rejected under pre-AIA 35 U.S.C. § 102(b) as anticipated by Jakobsson.2 (Non-Final Act. 3 4.)3 2. Claims 6—8 and 21 stand rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Jakobsson and Steffen.4 (Id. at 5—6.) 3. Claims 9 and 12—14 stand rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Jakobsson, Steffen, and Birk.5 (Id. at 6—7.) DISCUSSION Rejection No. 1 Issue Whether a preponderance of evidence of record supports the Examiner’s rejection under pre-AIA 35 U.S.C. § 102(b). Analysis The issue turns on the penultimate “wherein” clause of claim 1 that includes the recitation that “the flexible ring . . . expands radially outwardly.” (Br. 8.) The Examiner’s anticipation rejection is based on a self-adjusting gastric band of Jakobsson that includes an “outer wall 13 of a substantially non-expansible and flexible material.” (Non-Final Act. 3^4; see Jakobsson col. 6,11. 17—19 and Fig. 2.) According to the Examiner, “Jakobsson’s disclosure of a substantially non-expansible material means that this wall is 2 Jakobsson et al., US 6,102,922, issued Aug. 15, 2000 (“Jakobsson”). 3 Office Action dated May 20, 2015. 4 Steffen, US 2009/0062826 Al, pub. March 5, 2009 (“Steffen”). 5 Birk, WO 2007/081304 A2, pub. July 19, 2007 (“Birk”). 3 Appeal 2016-003884 Application 12/770,617 mostly non-expansible, but not completely non-expansible.6 Accordingly, it is capable of expanding radially outwardly to a small extent.” (Ans. 3.) Appellants argue that Jakobsson does not disclose the flexible ring recited in claim 1, which “expands radially outwardly when a predetermined pressure is generated in the inflatable portion in response to the large bolus passing through the esophageal-gastric junction.” (Br. 5.) Moreover, Appellants contend that “the outer wall 13 of Jakobsson cannot expand [radially outwardly] because it is ‘substantially non-expansible.’” (Id.) We find that Appellants have the better position. Anticipation requires that a prior art reference disclose every limitation of the claimed invention, either explicitly or inherently. In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). Moreover, “the examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). As relevant here, that burden includes a showing that the outer wall of Jakobsson performs in the manner recited for the flexible ring in the penultimate “wherein” clause of claim 1. See In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). The Examiner’s focus on the word “substantially,” as used in Jakobsson, is inapt.7 Because the Examiner does not assert and has not 6 The Examiner states (without evidentiary support) that “substantially” means “mostly, but not completely.” (Ans. 2—3.) 7 Jakobsson also refers to the outer wall 13 as “the relatively hard non- expansible supporting outer wall” (i.e., without using the word “substantially”). See Jakobsson col. 3,11. 10-11. 4 Appeal 2016-003884 Application 12/770,617 shown that the particular limitation at issue is inherent in Jakobsson,8 the pertinent inquiry is whether Jakobsson explicitly or expressly discloses that the flexible ring defines a radially outer diameter of the band that expands radially outwardly when a predetermined pressure is generated in the inflatable portion in response to the large bolus passing through the esophageal-gastric junction, the flexible ring expanding to automatically relax the constriction formed by the self-adjusting gastric band. (Br. 8.) Here, Jakobsson indicates that it is the addition or withdrawal of fluid from a cavity that expands the flexible inner wall “to decrease the size of said restriction opening” and deflates the flexible inner wall “to increase the size of said restriction opening.” (Jakobsson col. 3,11. 4—8.) Accordingly, we are not persuaded that Jakobsson expressly or explicitly discloses the limitation recited by the penultimate wherein clause of claim 1 set forth above. In sum, because the Examiner has failed to present a prima facie case of anticipation, the rejection of claim 1 is reversed. Rejection Nos. 2 and 3 The Examiner’s rejections of dependent claims 6—9, 12—14, and 21 for obviousness are premised on Jakobsson’s teachings, which lack the limitation of claim 1 discussed above. (Non-Final Act. 5—7.) Appellants respond to those rejections by relying on the same arguments regarding the missing limitation of claim 1, as discussed above. (Br. 6.) Accordingly, 8 The mere fact that a certain thing may result from a given set of circumstances is not sufficient to establish inherency. See In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citing cases). 5 Appeal 2016-003884 Application 12/770,617 because a prima facie case for obviousness “requires a suggestion of all limitations in a claim,” CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003), and the Examiner’s has not established a suggestion of all the limitations of claim 1, the rejections of claims 6—9, 12—14, and 21 are reversed. Conclusions of Law A preponderance of evidence of record fails to support the Examiner’s rejection of claim 1 for anticipation. A preponderance of evidence of record fails to support the Examiner’s rejection of claims 6—9, 12—14, and 21 for obviousness. SUMMARY We reverse the rejections of all claims on appeal. REVERSED 6