Allen B. Kantrowitz et al.

Patent Trials and Appeals Board

Aug 29, 2019

11560021 - (D) (P.T.A.B. Aug. 29, 2019)

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.
11/560,021 11/15/2006 Allen B. Kantrowitz KAB-10002/38 5052
13173 7590 08/29/2019
Blue Filament Law
700 E. Maple Road
Suite 450
Birmingham, MI 48009
EXAMINER
BARSKY, JARED
ART UNIT PAPER NUMBER
1628
NOTIFICATION DATE DELIVERY MODE
08/29/2019 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):
ag@bluefilamentlaw.com
ap@bluefilamentlaw.com
patentdocketing@bluefilamentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte ALLAN B. KANTROWITZ and ROBERT D. FANELLI
__________

Appeal 2017-010077
Application 11/560,021
Technology Center 1600
__________

Before ULRIKE W. JENKS, TIMOTHY G. MAJORS, and
MICHAEL A. VALEK, Administrative Patent Judges.

MAJORS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 submit this appeal under 35 U.S.C. § 134(a) involving
claims to a digestive tract barrier. The Examiner rejected the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 Appellants identify the Real Parties in Interest as the named inventors,
Allan B. Kantrowitz and Robert D. Fanelli. App. Br. 2.
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STATEMENT OF THE CASE
Appellants’ “invention in general relates to an intestinal nutrient
absorption barrier and in particular to a disintegratable or segmentable
barrier.” Spec. ¶ 2.
As the Specification explains, obesity is one of the leading causes of
death in the United States, and is associated with various co-morbidities
such as higher incidences of depression and several cancers. Id. ¶¶ 3–4.
Some approaches to addressing obesity include placement of an intestinal
barrier that creates a physical impediment between the ingested material and
the intestinal epithelial cells, thus limiting absorption of caloric intake. Id.
¶ 6. According to the Specification, some of the known barriers raise safety
concerns, such as unintentional dislodgment or kinking, which can block
portions of the gastrointestinal tract and require emergency surgery. Id.
Moreover, concerns remain over the need for subsequent surgical procedures
to safely collapse and retrieve the barrier. Id.
In light of the above issues, the Specification explains, “there exists a
need for a digestive tract barrier that disintegrates in a controlled manner
after deployment.” Id. ¶ 8. According to the Specification, “[t]he material
or stitches that make up the barrier [of the invention] disintegrate in a
controlled manner from a distal end to proximal end relative to a securement
that affixes the tube in a preselected position with the subject digestive
tract.” Id. The Specification explains that “[d]isintegration is facilitated by
formation of the barrier from biodegradable material, stitching non-
degradable swatches with disintegrating stitching, or the use of a MEMS
cutter.” Id.; see also id. ¶ 16 (“The barrier wall 18 is composed of multiple
swatches 20 of implant-compatible non-degradable fabric or sheet
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polymer.”), ¶ 17 (“The stitching 22 is in the form of a biodegradable fiber or
a scissionable nonbiodegradable fiber.”).
Claims 2, 28, 29, 31, and 36–47 are on appeal. Claim 2 is illustrative,
and reads:
2. A digestive tract barrier having an upper end and a lower end
relative to a subject digestive tract comprising:
a material having dimensions of a tube, said tube sized to
deploy within the subject digestive tract, said tube comprising a
plurality of material swatches of implant-compatible non-
degradable polymer dimensioned such that more than one of said
plurality of swatches are joined to define a diameter of the tube;
a securement affixed to said tube to retain said tube in a
preselected position within the subject digestive tract;
stitching joining said plurality of swatches;
a stitch cutter adjacent to said stitching; and
a passive radiofrequency identification (RFID) tag having
a RFID frequency in operative control of said stitch cutter.

App. Br. 18 (Claims App.).
Claim 40, the other independent claim on appeal, is similar to claim 2,
but recites first and second stitch cutters adjacent, respectively, to a first and
a second stitch. App. Br. 20. And, claim 40 also recites first and second
passive RFID tags with different frequencies in operative control of the
respective first and second stitch cutters. Id.

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The claims stand rejected2 as follows:
Claims 2, 28, 29, 31, 36–38, and 40–46 under 35 U.S.C. § 103(a) as
obvious over Berry,3 Kagan,4 Ertas,5 and Smith.6 Final Act. 5–10; Adv. Act.
4–9; Ans. 3–8.
Claims 39 and 47 under 35 U.S.C. § 103(a) as obvious over Berry,
Kagan, Ertas, Smith, Zhang,7 and Xinli.8 Final Act. 10–17; Ans. 8–15.
DISCUSSION
Claim Construction
We begin with claim interpretation because it is a prerequisite to
comparing the claims to the prior art. During prosecution, claim terms are
given their broadest reasonable interpretation as understood by a person of
ordinary skill in the art in light of the specification. In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997).
Claim 2 recites, inter alia, “[a] digestive tract barrier having an upper
end and a lower end relative to a subject digestive tract comprising: . . .
stitching joining a plurality of swatches; a stitch cutter adjacent to said
stitching; and a passive radiofrequency identification (RFID) tag having a

2 Claims 2, 28, 29, 31, and 36–47 were also rejected under 35 U.S.C. § 112,
first paragraph, for failure to comply with the written description
requirement. Final Act. 5. The Examiner withdrew that rejection in the
Advisory Action dated October 27, 2016 (“Adv. Act.”). Adv. Act. 2.
3 Berry, US 5,306,300, issued Apr. 26, 1994.
4 Kagan et al., US 2005/0177181 A1, published Aug. 11, 2005.
5 Ertas et al., US 7,976,461 B2, issued July 12, 2011.
6 Smith et al., US 2006/0087442 A1, published Apr. 27, 2006.
7 Zhang et al., Electrostatic micromotor and its reliability, 45
MICROELECTRONICS RELIABILITY 1230–1242 (2005).
8 Xinli et al., Advantages of Electrostatic Micromotor and Its Application to
Medical Instruments, IEEE 2466–2468 (2002).
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RFID frequency in operative control of said stitch cutter.” The issue is
whether claim 2 is reasonably interpreted, in light of the Specification, to
encompass a collection of separate, disconnected parts of separate devices or
whether the claims requires that the parts of the barrier are connected in such
a way that they form a single unit.
Based on our review of the Specification, we conclude that the
claims9 on appeal require the recited “stitch cutter” and RFID “tag” be
structures that are integral to the claimed “digestive tract barrier” itself.
Claim 2, for example, requires a digestive tract barrier “comprising” a stitch
cutter. Claim 2 also requires “a stitch cutter adjacent to said stitching” of the
barrier, which language the Examiner earlier (and correctly) interpreted “to
mean that the stitch cutter is [an] integral component of the claimed
‘digestive tract barrier.’” November 27, 2015 Office Action 3.10 As we
explain below, however, in attempting to show a disclosure in the prior art
satisfying this claim element, the Examiner later cites structures that are part

9 We note that the interpretation of the pending claims has been a subject of
dispute on numerous occasions throughout prosecution. See July 9, 2014
Office Action 2–3 (rejecting the claims as indefinite for purportedly
including components “extraneous to the digestive tract barrier itself”),
November 27, 2015 Office Action 2–3 (rejecting the claims for lack of
written description because the Specification allegedly “does not support ‘a
digestive tract barrier’ comprising ‘a stitch cutter.’”). Although the § 112
rejections are not expressly appealed here, those rejections illustrate a lack
of clarity about the proper interpretation of the claims, and prudence dictates
that we get to the root of, and resolve, the claim construction issue before
turning to the prior art.
10 The Examiner, however, then proceeded to reject the claims, so
interpreted, as lacking written description support—apparently believing that
the Specification only supported the stitch cutter being part of an extraneous
device, such as on part of an endoscope. Nov. 27, 2015 Office Action 3.
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of a separate endoscopic device, and the Examiner provides no rationale to
explain why it would have been obvious to include such separate structures
as part of the digestive tract barrier itself. See, e.g., Ans. 6–8 (citing Ertas
and Smith). Accordingly, after earlier in prosecution stating what we
conclude is the correct interpretation, the Examiner later applies the prior art
against the claims, advancing an incorrect interpretation, where explicitly
recited claim structures need not be part of the claimed digestive tract
barrier.
Appellants earlier urged the correct interpretation and later amended
their claims in an effort to make the integral nature of the claim elements
even more clear and explicit. Indeed, in response to a statement from the
Examiner that it was “unclear if Applicant is intending to include a stitch
cutter as part of the implantable barrier or merely mentioning it as an
additional component that is near the claimed barrier,”11 Appellants stated:
Applicants do intend to include a stitch cutter as part of the
implantable barrier, and this feature should be afforded
patentable weight. As the pending claims are article claims in
form, it is submitted that the association of the stitch cutter as
part of the claimed invention represents a clear and
unambiguous recitation that is consistent with the specification
as[] filed.

June 29, 2015 Appeal Br. 8 (emphasis added); see also March 28, 2016
Amendment and Remarks (“Claims 2 and 40 have been amended to
explicitly recite that the stitch cutter is adjacent to the stitching and mounted
to the tube. Thus, the stitch cutter is an integral component of the claimed
digestive tract barrier[.]”). Based on the Applicants’ (Appellants’)

11 July 9, 2014 Office Action 3.
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arguments, the Examiner withdrew the action from an earlier appeal,
withdrew a rejection for indefiniteness, and proceeded with further
prosecution. November 27, 2015 Office Action.
The Examiner, nevertheless, then rejected the claims for lack of
written description support under 35 U.S.C. § 112, first paragraph. Id. at 2–
3. The Examiner’s position was that the Specification, specifically
paragraph 18, described a stitch cutter as “separate and extraneous to” the
digestive tract barrier, such as being part of an endoscopic cutting
implement—not part of the barrier as required by the claims. Id. at 3.
The Examiner’s position, however, is based on an overly narrow
reading of what the Specification describes. The Examiner correctly notes
that the Specification’s paragraph 18 describes “[s]cission of a
nonbiodegradable fiber stitching” may involve “deployment of an
endoscopic cutting implement to selectively cut portions of the barrier.”
Spec. ¶ 18. But paragraph 18 plainly describes other and alternative
embodiments, including embodiments that include a MEMS cutter, where
the Specification describes “activating radiofrequency to the RFID tag
engages the stitch cutter positioned proximal to a stich to cut the stitch
thereby releasing a portion of the barrier device.” Id. And the Specification
describes embodiments that comprise “deployment of multiple stitch cutters
along the length of the inventive barrier.” Id. (emphasis added). On this
record, we conclude the skilled artisan would reasonably understand the
stitch cutters and RFID tags disposed along and integral to the barrier itself,
and that the broadest reasonable interpretation of claims 2 and 40 is that the
claims are drawn to such embodiments—not embodiments where the
required structures are split among multiple and separate devices, such as
might be implemented with a system where features of an endoscope in
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some way interoperative with features that are integral to a digestive tract
barrier.12
Obviousness
Turning to the asserted obviousness of the claims over Berry, Kagan,
Ertas, and Smith,13 the rejection of record fails under the correct
interpretation of the claims, which is discussed above.
Appellants contend “[a] review of the prior art of record finds NO
contemplation, teaching or motivation of RFID or microcutters in the
context of, or associated with an intestinal barrier device.” App. Br. 9. We
agree on this record. The Examiner does not cite any teachings in the art of
using RFID tags or stitch cutters that are integral to a digestive tract barrier.
Nor has the Examiner provided any persuasive, evidence-backed reasoning
to demonstrate why it would have been obvious to modify the digestive
barriers of Berry and/or Kagan such that the modified barriers would

12 Were it otherwise, the definiteness of the claims would be called into
question. Although the earlier amendment offered by Applicants (that the
structures are “mounted” to the tube/barrier) may have made the claims
more explicit or clear, such additional language is not necessary as the
claims already make sufficiently clear (and the Applicants argued) that the
recited structures are integral to the barrier itself. See June 29, 2015 Appeal
Br. 8. The Appellants apparently withdrew the proposed amended language
(regarding “mounting”), which they earlier added to overcome the
Examiner’s indefiniteness rejection, in order to overcome the Examiner’s
later written description rejection. See Adv. Act. 2 (noting that the written
description/new matter rejection was being withdrawn in view of
Applicants’ claim amendments, which struck (see Ans. 15) the “mounted to
said tube” language).
13 Zhang and Xinli are further relied upon only to address discrete elements
of dependent claims 39 and 47. The rejection of claims 39 and 47, thus,
relies on the same findings and reasoning for combining Berry, Kagan,
Ertas, and Smith as pertinent to independent claims 2 and 40.
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include, for example, a stitch cutter on the barrier itself. To the contrary, the
Examiner cites the combined disclosures of Ertas and Smith to show that
endoscopes having RFID and cutting features would have been obvious.
Ans. 6–8. But, as explained above concerning claim construction, that an
endoscope may include such features does not render obvious the inclusion
of those features in the digestive tract barrier itself, as recited in independent
claims 2 and 40.
The rejection of record also fails for at least three additional reasons.
First, the Examiner does not demonstrate persuasively that the prior art
discloses the claimed “plurality of material swatches . . . dimensioned such
that more than one of said plurality of swatches are joined to define a
diameter of the tube.” This claimed feature is illustrated in, for example, the
Specification’s Figure 3, which shows multiple swatches (20) disposed
around and forming the circumference of the barrier tube. Spec. Fig. 3;
Reply Br. 2. As claimed, at least one swatch is on one side of the tube and a
different swatch (together a “plurality” of swatches) is disposed directly
opposite the first swatch on the other side of the tube—the collection of
swatches together defining a “diameter” of the tube/barrier. The Examiner,
citing Kagan’s teaching of a gastrointestinal sleeve comprising “segments”
that may themselves biodegrade or otherwise be separated from each other
by degradation of biodegradable material holding the segments together,
finds that this disclosure meets the relevant claim language concerning
swatches. Ans. 4–6 (citing Kagan ¶ 73). But even if Kagan’s segments
were interpreted as being swatches, the Examiner fails to explain how such a
structure represents a “plurality of swatches” and that “more than one of said
plurality of swatches are joined to define a diameter of the tube” as claimed.
The fact that Kagan’s segments (the alleged swatches) might be “small” is
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not a sufficient explanation. Ans. 19–20. And, if Kagan’s teaching is
reasonably read as suggesting cylindrical or ring-shaped segments, as
Appellants point out, that would not meet the claim language. Reply 3. A
single ring-shaped segment is not a plurality of segments defining a diameter
of the tube.
Second, the Examiner does not explain where the art teaches or
suggests the recited “stitching joining said plurality of swatches” as in both
claims 2 and 40. Indeed, the Examiner admits that neither Berry nor Kagan
disclose “stitching” as claimed. Final Act. 6 (“Berry does not teach
biodegradable stitching joining said plurality of swatches”); 8 (Kagan “does
not explicitly teach said biodegradable joining material is in the form of
stitches.”). A vague (and seemingly inapposite) reference to use of sutures
and surgical fasteners for a different purpose in Kagan is insufficient to
show that the claim language is taught or suggested in the art. Final Act. 7
(citing Kagan ¶ 13). The Examiner also does not explain where, if at all, any
of the remaining references disclose this claim element. Hence, there is a
failure of proof on this record as to one of the explicitly recited claim
elements. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (The
Examiner “bears the initial burden . . . of presenting a prima facie case of
unpatentability.”).
Third and finally, even if we found that Kagan’s segments were non-
bio-degradable “swatches” as claimed and that Kagan’s “biodegradable
attachment portions,” which attach the segments, could be considered
“stitching,” the rejection would still fail. The Examiner provides no
persuasive, non-hindsight-based rationale for adding a mechanical cutting
means—specifically, a stitch cutter—to the modified gastrointestinal sleeve
of Berry and Kagan, which so modified would purport to include Kagan’s
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small non-biodegradable segments and its biodegradable attachment
portions. See, e.g., Final Act. 8–9. Assuming the biodegradable attachment
portions could be considered “stitching,” those portions would biodegrade at
the planned degradation rate and release the non-biodegradable segments so
that the segments could then pass through the rest of the gastrointestinal tract
and be excreted as taught by Kagan. Why would a “stitch cutter” be
necessary to mechanically cut through biodegradable portions of the
gastrointestinal sleeve that would biodegrade in due course in the manner
expected? The present record does not answer this question. Instead, the
Examiner reasons that the skilled person would consider endoscopes with
cameras and cutting devices (such as disclosed in Ertas) to remove a
securement, such as sutures, set at implantation to hold a device in place.
Final Act. 9. But that reasoning is detached from what is actually claimed.
Absent hindsight, we see no sufficient reason provided for adding a stitch
cutter to the modified sleeve of Berry and Kagan.
For all the above reasons, the preponderance of the evidence on this
record does not support the Examiner’s conclusion that claims 2 and 40
would have been obvious over Berry, Kagan, Ertas, and Smith.
Accordingly, we reverse the rejection of claims 2 and 40 as well as the
rejection of the appealed dependent claims. In re Fritch, 972 F.2d 1260,
1266 (Fed. Cir. 1992) (“[D]ependent claims are nonobvious if the
independent claims from which they depend are nonobvious.”). The
Examiner did not assert or show that Zhang and Xinli make up for the
above-noted deficiencies of Berry, Kagan, Ertas, and Smith.

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SUMMARY
We reverse the rejection for obviousness on appeal.

REVERSED