Ex Parte Chen

Patent Trial and Appeal Board

Jan 29, 2016

11800540 (P.T.A.B. Jan. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111800,540 0510712007 Jianfeng Chen
30589 7590 02/02/2016
DUNLAP CODDING, P.C.
PO BOX 16370
OKLAHOMA CITY, OK 73113
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.
7878.002 8845
EXAMINER
GRAND, JENNIFER LEIGH-STEW AR
ART UNIT PAPER NUMBER
3766
NOTIFICATION DATE DELIVERY MODE
02/02/2016 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):
docketing@dunlapcodding.com
dsorocco@dunlapcodding.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JIANFENG CHEN
Appeal2013-010060
Application 11/800,540 1
Technology Center 3700
Before STEFAN STAICOVICI, MICHELLE R. OSINSKI, and
JAMES J. MAYBERRY, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jianfeng Chen (Appellant) appeals under 35 U.S.C. § 134(a) from the
Examiner's decision rejecting under 35 U.S.C. § 103(a) claims 1, 16, 17, 19,
and 24--27 as unpatentable over Weiss (US 2007/0123809 Al, pub. May 31,
2007), Swain (US 2008/0108868 Al, pub. May 8, 2008), and Chen (US
2005/0021101 Al, pub. Jan. 27, 2005) and claim 28 as unpatentable over
Weiss, Swain, Chen, and Greenstein (US 2004/0015201 Al, pub. Jan. 22,
According to Appellant, the real party in interest is Transtimulation
Research, Inc. Appeal Br. 1 (filed Sept. 28, 2012).
Appeal2013-010060
Application 11/800,540
2004). Claims 2-15, 18, 20-23, and 29-39 have been canceled. See Appeal
Br. 15-16. We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We REVERSE.
INVENTION
Appellant's invention relates to "a method for of using a stimulator
device to emit a medium for treatment of a gastrointestinal disorder." Spec.
7,if 18.
Claim 1, the sole independent claim, is representative of the claimed
invention and reads as follows:
1. A method of using a stimulation device for treatment of
at least one eating disorder, comprising the steps of:
receiving a stimulation device sized and shaped to be
s\~1allo\~1ed by a user, \~1herein the stimulation device includes a
pulse generator and at least a pair of electrodes, at least a
portion of the pulse generator encapsulated within a housing,
the electrodes separated by an insulating material to form the
housing; and
swallowing the stimulation device, by the user to place
the stimulation device in the gastrointestinal tract of the user, to
deliver, by the stimulation device, pulses to at least the stomach
of the gastrointestinal tract to inhibit gastrointestinal
contractions to delay gastric emptying to treat the eating
disorder.
2
Appeal2013-010060
Application 11/800,540
ANALYSIS
Independent claim 1 requires, inter alia, "at least a pair of electrodes
... [wherein] the electrodes [are] separated by an insulating material to form
the housing."
The Examiner finds that arms 52 of Weiss constitute the claimed
electrodes. See Final Act. 2-3. The Examiner further explains that Weiss's
arms 52 "appear ... to be separated by an insulating material forming the
housing," which "may be a metal or plastic." Ans. 6 (citing Weiss i-fi-1 93,
122, Fig. 2).
In response, Appellant argues that "Weiss's arms are separate from
the device body, and do not form a housing of the device body." Appeal Br.
7. According to Appellant, "in Weiss the insulating material forms the
capsule body and the arms of Weiss are separate and distinct from Weiss' [ s]
capsule body." Reply Br. 6.
During examination, "claims ... are to be given their broadest
reasonable interpretation consistent with the specification, [ ] and ... claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art." In re Bond, 910 F .2d 831,
833 (Fed. Cir. 1990) (internal citation and quotations omitted). Here, we
agree with Appellant's position because claim 1 specifically requires that the
electrodes form the housing and not that the electrodes be separated by
insulating material that forms the housing, as the Examiner proposes. See
Ans. 6. Appellant's Specification describes housing 20 as a "sealed
container" "formed with [] electrodes 26 and 28 separated by[] insulating
material 32" and containing "pulse generator 22, the controller 24, and the
3
Appeal2013-010060
Application 11/800,540
power source 30." Spec. i-f 32. Hence, Appellant's Specification describes
housing 20 as formed by electrodes 26, 28 separated by insulating material
32. Likewise, independent claim 1 requires "a pair of electrodes
separated by an insulating material to form the housing." Appeal Br. 15.
In contrast, Weiss discloses a capsule 8 having a plastic or metal body
12 and arms 10 "folded, wrapped, collapsed or otherwise tightly packed
adjacently" to body 12 that can be disengaged from body 12. Weiss, i-f 91;
see also id. i-fi-176, 93, 107, Fig. 1. In a separate embodiment, Weiss further
discloses metal or plastic capsule body 101 and arms 102, 109 attached and
wrapped around body 101, locked thereto, and releasable from body 101.
Id. i-fi-1 122, 124, 128, Fig. 3A. As such, because the arms are attached to and
released from the body of Weiss's capsule, we agree with Appellant that in
Weiss "the arms and the capsule body are separate and distinct from one
another." Reply Br. 6. Thus, in other words, because Weiss's capsule body
12 (housing) is separate from arms 10, capsule body 12 (housing) is not
formed by arms 10, as called for by independent claim 1.
Accordingly, for the foregoing reasons, we agree with Appellant that
Weiss fails to disclose "electrodes separated by an insulating material to
form the housing," as called for by independent claim 1. See id. Rather,
Weiss's capsule body 12 forms the housing of capsule 8 and arms 10 are
separate. The Examiner's use of the disclosures of Swain and Chen does not
remedy the deficiencies of Weiss as described supra. See Final Act. 3-5.
Therefore, for the foregoing reasons, we do not sustain the rejection of
claims 1, 16, 17, 19, and 24--27 over the combined teachings of Weiss,
Swain, and Chen.
4
Appeal2013-010060
Application 11/800,540
With respect to the rejection of claim 28, the Examiner's use of the
disclosure of Greenstein likewise fails to remedy the deficiencies of Weiss
as described above. See id. at 5. We therefore also do not sustain the
rejection of claim 28 under 35 U.S.C. § 103(a) as unpatentable over Weiss,
Swain, Chen, and Greenstein.
SUMMARY
The Examiner's decision to reject claims 1, 16, 17, 19, and 24--28 is
reversed.
REVERSED
em
5