Ex Parte COX et al

Patent Trial and Appeal Board

Aug 3, 2017

12876029 (P.T.A.B. Aug. 3, 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.
12/876,029 09/03/2010 John A. COX 61579.8045.US00/7302 1453
34055 7590 08/07/2017
PERKINS COIE LLP - LOS General
POST OFFICE BOX 1247
SEATTLE, WA 98111 -1247
EXAMINER
OU, JING RUI
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
08/07/2017 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):
patentprocurement @perkinscoie. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN A. COX,
TRACY D. MAAHS, and
JAMES WHITE
Appeal 2016-000652
Application 12/876,029
Technology Center 3700
Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
THOMAS F. SMEGAL, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-000652
Application 12/876,029
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1, 11, 22, 25—27, and 30-32. Final Act. 1, 2. Claims 2—10, 12—21, 23, 24,
28, and 29 have been canceled. Final Act. 2. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
THE CFAIMED SUBJECT MATTER
The disclosed subject matter “pertains to devices and methods for the
endolumenal treatment of obesity.” Spec. 12. Method claims 1, 25, and 27
are independent. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. An endolumenal treatment method of the stomach of a patient,
with the stomach having a fundus with internal fundus tissue, a
proximal antrum, a distal body, and a gastroesophageal junction
(GEJ), comprising:
A. ) advancing a tissue fastener deployment mechanism through
a patient's mouth and esophagus and into the patient's stomach;
B. ) forming a fundus tissue fold in the fundus tissue by
grasping tissue between first and second jaws of the deployment
mechanism;
C. ) piercing the fundus tissue fold with a needle projecting from
the deployment mechanism and deploying a tissue fastener by pushing
the tissue fastener out of the needle, with the tissue fastener expanding
after being pushed out of the needle, to secure the tissue fold;
D. ) repeating steps B and C at least once;
E. ) forming a first elongated invagination of tissue in a lateral
direction across a lower region of the stomach adjacent to both the
proximal antrum and the distal body;
F. ) securing the elongated invagination by deploying a plurality
of tissue fasteners from the deployment mechanism through the first
elongated invagination of tissue; and with tissue fasteners deployed at
the stomach fundus and at the lower region of the stomach adjacent to
both the proximal antrum and the distal body.
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REFERENCES
Ewers US 2005/0245945 A1 Nov. 3, 2005
Gannoe US 2007/0181138 A1 Aug. 9, 2007
REJECTION
Claims 1, 11, 22, 25—27, and 30-32 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Gannoe and Ewers.
ANALYSIS
Appellants argue all the claims together (App. Br. 6—10) but also
present an additional argument specific to claims 27, 31, and 32 (App. Br.
10). We select claims 1 and 27 for review with the remaining claims
standing or falling therewith. See 37 C.F.R. § 41.37(c)(l)(iv).
Regarding claim 1, the Examiner references different treatment
configurations in Gannoe that occur in different areas of the stomach. Final
Act. 3^4; Ans. 2-4 (both referencing the configurations disclosed in Gannoe
Figs. 3 and 4B). The Examiner states that it would have been obvious to
combine the configurations shown in Figures 3 and 4B of Gannoe “in order
to obtain the advantage” identified in Gannoe that arise from each. Final
Act. 4, Ans. 4 (both referencing Gannoe 26, 31).1 Accordingly, the
Examiner states, “Gannoe discloses [] substantially all the limitations of the
claims” except that “Gannoe does not disclose forming the tissue folds” as
recited. Final Act. 5. The Examiner relies on Ewers for such teaching and
concludes that it would have been obvious to combine the combined
1 Paragraph 26 of Gannoe describes the benefits arising from treating
different areas of the stomach and Paragraph 31 of Gannoe states that
treatments “may vary from those depicted herein” and may include
“additional plications.”
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Application 12/876,029
teachings of Gannoe’s Figs. 3 and 4B with Ewers “in order to obtain the
advantage of forming the stomach fold by piercing the tough stomach wall
in a manner that reduces a possibility of injuring adjacent tissue and/or
neighboring organs.” Final Act. 6 (referencing Ewers H 7, 11, 17). The
Examiner further states that such a combination also “enabl[es] delivering an
anchor in a reduced delivery profile.” Final Act. 6 (referencing Ewers 115).
Appellants acknowledge, “Ewers is applied in combination with
Gannoe only as disclosing the specific way of forming and securing tissue
folds” and does not otherwise dispute the Examiner’s reliance thereon. App.
Br. 6. However, regarding the Examiner’s reliance on Gannoe, Appellants
state, “[t]he error in the rejection[] arises because Gannoe does not
reasonably disclose forming tissue folds in the fundus and the antrum”
regions of the stomach. App. Br. 6. This is because “all that Gannoe
teaches is making plications anywhere in the stomach” and that one skilled
in the art “is left to guess as to where to locate plications, or to engage in
undue experimentation to determine where to locate plications.” App. Br. 8.
Indeed, Gannoe illustrates plications in different areas of the stomach,
but Gannoe also describes the various purposes or end-effects these
differently-located plications have on the patient. Gannoe Figs. 2, 3, 4A—B,
5, 6, 8, and 9; H 17—19, 21, 22, 26.2 Furthermore, Gannoe states, “[t]he
devices and methods disclosed herein may be used alone or in conjunction
with each other.” Gannoe 14; see also id. 131; Ans. 2, 5. Appellants do
2 Paragraphs 17—19, 21, and 22 describe the expected end-effect. Paragraph
26 states, “[ejach configuration may have a potential clinical application
depending on the preference of the physician and clinical needs of the
patient.” See also Gannoe 131 and Ans. 2.
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Application 12/876,029
not explain how the Examiner erred by following Gannoe’s instructions
which teach combining plications in different areas of the stomach (such as
those depicted in Figures 3 and 4B of Gannoe) to accommodate a particular
need of a patient.3 In other words, Appellants’ contention that the physician
is “left to guess as to where to locate plications” (App. Br. 8) is not
persuasive because of Gannoe’s teaching of plications in different regions of
the stomach providing different benefits that may be selected based on
patient need. Furthermore, the Examiner states (and we agree) that “Gannoe
explicitly identifies a finite number of combination of methods for forming
plications in the stomach.” Ans. 5. As a consequence, Appellants’ “undue
experimentation” argument (App. Br. 8) is likewise not persuasive,
especially when Gannoe identifies the different benefits associated with
plications in the different areas of the stomach. See supra.
Appellants also contend, “the claimed plications in the fundus are not
equivalents of the plications adjacent to the antrum” (Reply Br. 2) yet it is
not clear where the Examiner equated the two plications in the different
stomach regions. However, as discussed above, the Examiner has identified
where each plication in each region provides its own benefit. Nevertheless,
Appellants contend that their “claimed plications” are not intended for the
purposes expressed in Gannoe, “[rjather, the claimed plications in the fundus
are designed to limit the ability of the fundus to stretch and accommodate a
3 Appellants argue, “Gannoe does not contemplate placing plications in two
different regions of the stomach, i.e., in both the fundus and at the antrum.”
App. Br. 9. However, this is contrary to the express teachings of Gannoe as
discussed above.
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meal, and then cause the stretch receptors in the fundus to fire sooner to start
the process of pushing to the antrum.”4 Reply Br. 2.
It is noted that Appellants’ reason for the claimed design is not
recited, nor is the avowed purpose of the claimed device controlling in an
obviousness determination.5 Furthermore, Appellants’ stated purpose of
limiting the ability of the fundus to stretch and accommodate a meal is
strikingly similar, if not identical, to Gannoe’s teaching of placating the
fundus to “lessen distension of that region in response to food intake.”
Gannoe 126.
Appellants also contend that “[f]rom the discussion at 0003 of
Gannoe, it may be inferred that placing plications in the fundus may be
useful for weight loss.” App. Br. 8. However, Appellants continue, “this is
Gannoe discussing the background prior art, and not the invention of
Gannoe” and that “[t]he rest of Gannoe proceeds away from this teaching
and suggests placing plications [in] various other parts of the stomach.”
App. Br. 8. First, Appellants’ attempt to distinguish Gannoe because this
paragraph purportedly addresses “background prior art” is not persuasive.
4 Appellants contend, “[t]he fundus is at the top of the stomach” and that one
skilled in the art would understand that “contractions of the fundus have
little physical influence on pushing to the antrum.” Reply Br. 2. However,
this is seemingly contrary to Gannoe’s teaching of plications that “inhibit the
fimdle reservoir’s ability to produce contractions by either attenuating or
baffling the frequency and/or intensity of the contractions to slow digestion
and reduce gastric emptying time.” Gannoe 126.
5 The Supreme Court has stated, “[i]n determining whether the subject
matter of a patent claim is obvious, neither the particular motivation nor the
avowed purpose of the patentee controls. What matters is the objective
reach of the claim.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419
(2007).
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This is because of instructions that, “[t]he use of patents as references is not
limited to what the patentees describe as their own inventions or to the
problems with which they are concerned. They are part of the literature of
the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1333 (Fed.
Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009 (CCPA 1968))
(emphasis added). Furthermore, the Examiner states, “other paragraphs
(such as Para. [0011], [0012], and/or [0026]) clearly describes forming
plications in the fundus of the stomach and other regions of the stomach for
weight loss.” Ans. 3. Accordingly, we are not persuaded by Appellants’
assertions (a) that Paragraph 3’s discussion of weight loss is not a disclosure
thereof; or (b) that “[t]he rest of Gannoe proceeds away from this teaching.”
Appellants also contend the Examiner’s rejection “is analogous to
examination of claims directed to a species based on a single prior art
reference disclosing a genus.” App. Br. 9 (referencing MPEP § 2144.08).
Appellants contend, “[n]o additional prior art was found in this case. The
fact that a claimed species of subgenus is encompassed by a prior art genus
is not sufficient by itself to establish a prima facie case of obviousness.”
App. Br. 10. Assuming, for the sake of argument, Appellants’ analogy is
correct, Appellants’ argument is not persuasive because the prior art relied
upon (Gannoe) does not only disclose a “genus” (i.e., stomach plications)
but also discusses several “species” thereof (i.e., specific locations in the
stomach where plications can be made). Thus, Appellants’ argument that
the rejection is “based on a single prior art reference disclosing a genus” and
that this “genus is not sufficient by itself’ is not persuasive because
Appellants do not address Gannoe’s disclosure of several “species” as well.
Furthermore, Appellants do not dispute Gannoe’s instructions that these
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different “species” may be used alone “or in conjunction with each other.”
Gannoe 14; see also Ans. 2, 5. Nor do Appellants dispute Gannoe’s
teaching that “[i]t is anticipated that the placement of partitions or fastening
lines, as described above, may vary from those depicted herein as necessary
for a physician to achieve a desired clinical effect, or to overcome variations
in the anatomy of the patient.” Gannoe 131.
We further note the absence by Appellants as to any assertion of
criticality or unexpected result arising from locating the plications as recited.
Regarding claim 27, Appellants contend that this claim is patentable
because it “exclude[s] placing tissue anchors in locations expressly taught by
Gannoe.” App. Br. 10. The Examiner is not relying on all the locations
expressly taught by Gannoe for teaching the limitations of claim 27, but
instead only the combination of the locations depicted in Figures 3 and 4B of
Gannoe. See Final Act. 3—5; Ans. 5. In other words, Appellants are not
arguing the Examiner’s rejection because the Examiner is not proposing the
additional placement of anchors at other locations disclosed in Gannoe.
Hence, Appellants do not explain how the placement of anchors as depicted
in Figures 3 and 4B of Gannoe fails to meet the limitation of folds in the
fundus and the antrum “while leaving the stomach otherwise free of tissue
fasteners” as recited.
Accordingly, and based on the record presented, we are not persuaded
the Examiner erred in rejecting claims 1 and 27 as being obvious over
Gannoe and Ewers. We sustain the rejection of claims 1 and 27 as
unpatentable over Gannoe and Ewers. We further sustain the rejection of the
remaining claims, which fall therewith.
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DECISION
The Examiner’s rejection of claims 1, 11, 22, 25—27, and 30-32 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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