Ex Parte Albrecht et al

Patent Trials and Appeals Board

Jan 17, 2019

13644175 - (D) (P.T.A.B. Jan. 17, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/644,175 10/03/2012
27777 7590 01/22/2019
JOSEPH F. SHIRTZ
JOHNSON & JOHNSON
ONE JOHNSON & JOHNSON PLAZA
NEW BRUNSWICK, NJ 08933-7003
FIRST NAMED INVENTOR
Thomas E. Albrecht
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.
END5953USCIP3 1151
EXAMINER
BACHMAN, LINDSEY MICHELE
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
01/22/2019 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):
jnjuspatent@corus.jnj.com
lhowd@its.jnj.com
pairjnj@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS E. ALBRECHT,
MARKS. ZEINER, JASON L. HARRIS,
MICHAEL J. STOKES, MARKS. ORTIZ, KEVIN D. FELDER,
MICHELE D'ARCANGELO, and JAMES W. VOEGELE
(APPLICANT: ETHICON ENDO-SURGERY, INC.)
Appeal2018-005412
Application 13/644, 17 5 1
Technology Center 3700
Before DONALD E. ADAMS, MICHAEL J. FITZPATRICK, and
DAVID COTTA, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL
This Appeal under 35 U.S.C. § 134(a) involves claims 1, 7, 8, 10-13,
and 16-21 (App. Br. 3). Examiner entered a rejections under 35 U.S.C.
§ 102(b) and 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
1 Appellants identify "Ethicon Endo-Surgery, Inc." as the real party in
interest (Appellants' May 5, 2017 Appeal Brief (App. Br.) 3).
Appeal2018-005412
Application 13/644, 175
STATEMENT OF THE CASE
Appellants' disclosure "relates generally to medical apparatuses and
methods and more particularly to devices and methods for positioning and
anchoring a lining to a hollow body organ, such as a stomach, intestine or
gastrointestinal tract" (Spec. 1:10-12). Appellants' claims 1 and 16 are
representative and reproduced below:
1. An endoluminal sleeve device for internally lining a section
of the GI tract, comprising:
a sleeve configured for deployment inside a duodenum, the
sleeve having walls of a flexible material defining a
sleeve lumen, a proximal end defining a proximal lumen
opening, and a distal end defining a distal lumen
opening; and
a ring attached to the proximal end of the sleeve, sized to
remain within the stomach and having a circumferential
outer surface;
wherein the circumferential outer surface of the ring is
oriented perpendicular to the orientation of the proximal
lumen opening of the sleeve.
(App. Br. 9 ( emphasis added).)
16. An endoluminal sleeve device for internally lining a section
of the GI tract, comprising:
a sleeve configured for deployment inside a duodenum, the
sleeve comprising a proximal end and a distal end: and
a ring attached to the proximal end of the sleeve, the sleeve
extending radially outward from the ring.
(Id. at 10.)
2
Appeal2018-005412
Application 13/644, 175
Grounds of rejection before this Panel for review:
Claims 1, 7, 10-13, 16-19, and 21 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Smit. 2
Claims 8 and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Smit and Levine. 3
ANTICIPATION:
ISSUE
Does the preponderance of evidence on this record support
Examiner's finding that Smit teaches Appellants' claimed invention?
FACTUAL FINDINGS (FF)
FF 1. Smit "relates to medical appliances and more particularly to devices
for lining body passages, especially-although not exclusively-to devices
for lining portions of the human alimentary canal" (Smit 1: 10-13; Final
Act. 4 3).
2 Smit, US 4,315,509, issued Feb. 16, 1982.
3 Levine et al., US 7,608,114 B2, issued Oct. 27, 2009.
4 Examiner's November 25, 2016 Final Office Action.
3
Appeal2018-005412
Application 13/644, 175
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Smit's "FIG. 10 schematically shows, somewhat in perspective, a long
balloon-like tube [228] which is held a predetermined, desired distance [230]
away from its anchoring means[, i.e., crescent anchor means 224,] by an
elongated spring section [220] which bypasses the tubular lining around
areas of the gastrointestinal tract" (Smit 3:40--44; see also id. at 13:22-50;
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Application 13/644, 175
Final Act. 3 (Smit's "Figure 10 shows the ... [anchor sized to remain within
the stomach] is crescent-shaped, not ring-shaped")).
FF 3. Smit's FIG 10 illustrates tethers, or spring sections 238, 240 attached
to opposite sides of "contour ring 242 which forms the beginning of the
balloon-like tube 228" (Smit 14: 14--18 ( emphasis omitted); see also id. at
17:22-27 (discussing tethers attached to opposite sides of a ring)).
FF 4. Smit's Figure 12B is reproduced below:
Smit's "FIG. 12B shows an alternative ring shaped anchor means" attached
to tethers branching from cord 330 (Smit 3:64--65; see generally id. at 16:
67-68; see Final Act. 3; Ans. 5 3).
FF 5. Examiner finds that when Smit's "ring shaped anchor means" is
attached, through a tether ( e.g., similar to spring section 220), to the
remainder of Smit' s device ( e.g., sleeve or tube 228), the ring shaped anchor
will necessarily be "oriented perpendicular to the orientation of the proximal
lumen [ opening of the sleeve] because the ring is attached via two tethers ...
along only one side of the ring which are then connected to [the] tether"
(Final Act 3--4; Ans. 3--4).
5 Examiner's March 1, 2018 Answer.
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Application 13/644, 175
FF 6. Appellants' Figure 17 is reproduced below:
FIG, 17
Appellants' FIG. 17 "illustrates an embodiment of a sleeve attached to an
anchoring ring," wherein the sleeve 55 extends radially outward from ring
56 (Spec. 4:6; see App. Br. 3--4).
ANALYSIS
Claim 1:
Appellants' independent claim 1, reproduced above, requires, inter
alia, that "the circumferential outer surface of the ring [ shaped anchor
means] is oriented perpendicular to the orientation of the proximal lumen
opening of the sleeve" (App. Br. 9). Appellants' claims 7 and 10-13 depend
directly or indirectly from Appellants' claim 1.
According to Examiner, Smit necessarily teaches that the ring shaped
anchor means is "oriented perpendicular to the orientation of the proximal
lumen [ opening of the sleeve] because the ring is attached via two tethers ...
along only one side of the ring which are then connected to [the] tether" (FF
4--5). We are not persuaded.
Notwithstanding Smit's express disclosure that tethers are attached to
opposite sides of a ring structure (see FF 3), Examiner finds that Smit
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Appeal2018-005412
Application 13/644, 175
discloses attaching tethers to a single side of Smit' s ring shaped anchor (FF
5; cf FF 3--4). According to Examiner, because "the ring is merely an
extension of the crescent-shape shown in [Smit's] Figure 12, and as a result,
larger in size than the crescent-shaped tether, it makes sense [that] ... tether
330 is attached at two locations in Figure 12b, instead of one for the
crescent-shaped tether shown in Figure 12b" (Ans. 3). Although Examiner's
rationale regarding the number of tethers may be true, Examiner's reasoning
fails to support Examiner's assertion that multiple tethers will necessarily or
inherently be attached to the same side of a ring. See In re Robertson, 169
F.3d 743, 745 (Fed. Cir. 1999) (Inherency "may not be established by
probabilities or possibilities. The mere fact that a certain thing may result
from a given set of circumstances is not sufficient.") ( citations omitted).
To the contrary, Appellants provide a reasonable interpretation of
Smit's FIG. 12b that refutes Examiner's interpretation. Specifically,
Appellants contend that "[t]hroughout Smit .. , the rings are all ... shown
with two points of attachment through a single split tether. The attachment
points are shown on the inner diameter of the circular rings and at locations
on opposite sides spanning the diameter of the ring" (App. Br. 5; see FF 3).
Appellants contend that "[t]his attachment scheme is consistent throughout
the images in the figures of Smit ... " (App. Br. 5). Thus, Appellants
contend:
Given that [Smit's] Fig. 12b shows a ring in the same
perspective view as the rings in Figures 10 and 12 and has a
tethering scheme that, although obscured, is consistent ... with
other tethering means shown, the ring in [Smit's] Fig. 12b has
an orientation that is parallel to, not perpendicular to the other
rings or perpendicular to the proximal lumen of the sleeve,
which is in contrast to the requirements of Appellant's claim 1 (App. Br. 6).
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Application 13/644, 175
We find that the weight of the evidence on this record falls in favor of
Appellants.
Claim 16:
Appellants' independent claim 16, reproduced above, requires, inter
alia, a ring attached to the proximal end of the sleeve, wherein the sleeve
extends radially outward from the ring (see App. Br. 10; see also FF 6). For
the same reasons set forth above with respect to Appellants' claim 1,
Examiner failed to establish that Smit teaches the endoluminal sleeve device
of Appellants' claim 16 (see Ans. 5---6).
CONCLUSION
The preponderance of evidence on this record fails to support
Examiner's finding that Smit teaches Appellants' claimed invention. The
rejection of claims 1, 7, 10-13, 16-19, and 21 under 35 U.S.C. § 102(b) as
being anticipated by Smit is reversed.
OBVIOUSNESS:
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS
FF 7. Examiner relies on Smit as discussed above (see Ans. 6; FF 1-5)
FF 8. Examiner finds that Smit "fails to disclose ... [a] spread ring ...
supported in a deformed wavy shape with longitudinal undulations" and
relies upon Levine to disclose a sleeve, intended for deployment in the
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Application 13/644, 175
duodenum, that comprises a proximal opening having a deformed wavy
shape with undulations in the longitudinal direction of the sleeve (Ans. 6).
ANALYSIS
Appellants' claim 8 depends ultimately from Appellants' claim 1 and
"further compris[ es] at least one elastic spread ring supported by the
proximal sleeve end in a deformed wavy shape with undulations in a sleeve
longitudinal direction, wherein the spread ring elastically biases the
proximal sleeve end in a radially spread configuration while preserving a
continuously convex outer contour" (see App. Br. 9). Appellants' claim 20
depends ultimately from Appellants' claim 16 and requires that an elastic
spread ring, which biases the proximal end of the sleeve in a radially spread
configuration, "comprises a spring with longitudinal undulations supported
by the proximal end of the sleeve" (see id. at 10).
Based on the combination of Smit and Levine, Examiner concludes
that, at the time Appellants' invention was made, Appellants' claimed
invention would have been prima facie "obvious to one of ordinary skill in
the art ... because the particular known technique of providing the proximal
end of a bariatric sleeve with undulations in the longitudinal direction of the
sleeve was recognized as part of the ordinary capabilities of one skilled in
the art" (Final Act. 6). We are not persuaded.
To the contrary, as Appellants explain, Examiner failed to establish
that Levine makes up for the deficiencies in Smit discussed above (see App.
Br. 8).
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Application 13/644, 175
CONCLUSION
The preponderance of evidence relied upon by Examiner fails to
support a conclusion of obviousness. The rejection of claims 8 and 20 under
35 U.S.C. § 103(a) as unpatentable over the combination of Smit and Levine
is reversed.
REVERSED
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