Ex Parte Dlugos et al

Patent Trial and Appeal Board

Dec 29, 2015

12562267 (P.T.A.B. Dec. 29, 2015)

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.
12/562,267 09/18/2009 Daniel F. Dlugos JR. END-6482 3898
21884 7590 12/30/2015
WELSH FLAXMAN & GITLER LLC
2000 DUKE STREET, SUITE 100
ALEXANDRIA, VA 22314
EXAMINER
REDDY, SUNITA
ART UNIT PAPER NUMBER
3735
MAIL DATE DELIVERY MODE
12/30/2015 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 DANIEL F. DLUGOS, JR., RANDAL T. BYRUM,
BRET W. SMITH, LAUREN S. WEANER, TORALF BORK,
JEFFREY D. MESSERLY, ROCCO CRIVELLI, DEAN L. GARNER,
FREDERICK E. SHELTON IV, ALEC J. GINGGEN,
GEOFFREY C. HUEIL, ERIC W. THOMPSON, DONNA L. KORVICK,
MARK S. ORTIZ, DAVID T. KRUMANAKER, DANIEL J. MUMAW,
AMY L. MARCOTTE, KYLE P. MOORE, ANIL K. NALAGATLA,
JEFFREY S. SWAYZE, PATRICK J. SWINDON, and
RICHARD W. TIMM
____________________

Appeal 2013-006174
Application 12/562,267
Technology Center 3700
____________________

Before THOMAS F. SMEGAL, LISA M. GUIJT, and ERIC C. JESCHKE,
Administrative Patent Judges.

GUIJT, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Daniel F. Dlugos, Jr. et al. (“Appellants”)1 appeal under 35 U.S.C.
§ 134(a) from the Examiner’s decision to reject claims 1–4 and 15–20.2 We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

CLAIMED SUBJECT MATTER
Claim 1 is the sole independent claim on appeal. Claim 1, reproduced
below with disputed limitations italicized for emphasis, is representative of
the subject matter on appeal.
1. Apparatus for regulating the functioning of a patient’s
organ or duct, comprising:
an elongated member having a first end and a second
end;
a fastener disposed on the first end of the elongated
member, the fastener configured to engage the second end of
the elongated member so that the elongated member forms a
loop around the organ or duct;
a tension element disposed for movement within the
elongated member and in engagement with the elongated
member;
a drive element associated with and engaging the tension
element for causing the tension element to control the tension
applied by the elongated member against a patient’s body organ
or duct; and
a tension release mechanism associated with the tension
element selectively releasing the tension element from
engagement with the elongated member.

1 According to Appellants, the real party in interest is Ethicon Endo-
Surgery, Inc. Br. 1.
2 Claims 13 and 14 are objected to (see Final Action 23 (mailed May 25,
2012)), and there are no standing rejections against pending claims 5–12.
See Answer 11–15.
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THE REJECTIONS3
Claims 1 and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bachmann (US 2005/0143766 A1; pub. June 30, 2005)
and Kuzmak (US 5,449,368; iss. Sept. 12, 1995).
Claims 2–4 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Bachmann, Kuzmak, and Shaolian (US 2009/0248148 A1; pub. Oct. 1,
2009).
Claims 15 and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bachmann, Kuzmak, and Forsell (US 6,470,892 B1; iss.
Oct. 29, 2002).
Claim 16 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Bachmann, Kuzmak, Forsell, and Hassler (US 2006/0252982 A1; pub.
Nov. 9, 2006).
Claims 18 and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bachmann, Kuzmak, and Dlugos (US 2007/0167672 A1;
pub. July 19, 2007).

ANALYSIS
Claims 1 and 20 — Unpatentability over Bachmann and Kuzmak
Regarding independent claim 1, the Examiner finds, inter alia, that
Bachmann’s ring with first and second ends 26, 28 corresponds to the

3 The rejections of claims 5–10 under 35 U.S.C. § 103(a) as unpatentable
over Bachmann, Kuzmak, and Kasetty (US 5,448,438; iss. Sept. 5, 1995),
and claims 11 and 12 under 35 U.S.C. § 103(a) as unpatentable over
Bachmann, Kuzmak, Kasetty, and Dlugos have been withdrawn. Ans. 11–
14.
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claimed elongated member, and that Bachmann’s clip 27 corresponds to the
claimed fastener disposed on the first end of the elongated member. Final
Act. 3 (citing Bachmann ¶¶ 71, 69–70, 93–95, Figs. 1–2, 20). The Examiner
further finds that Bachmann’s tension element 32 corresponds to the claimed
tension element, and also that Bachmann “discloses a release mechanism
that facilitates removal of the gastric ring.” Final Act. 3–4 (citing Bachmann
¶¶ 74, 134, Fig. 2). The Examiner also finds that “Bachmann does not
explicitly disclose, however[,] Kuzmak discloses a tension release
mechanism selectively releasing the tension element from engagement with
the elongated member.” Id. at 4 (emphasis added) (citing Kuzmak, col. 7, ll.
1–7, 25–27, Figs. 3–5). The Examiner reasons that it would have been
obvious “to modify [Bachmann’s] implantable ring device that encircles and
provides control of [the] degree of constriction to an organ or duct . . . , as
modified with [Kuzmak’s] mechanism of releasing the gastric banding
device[s] . . . in order to allow easy release of the constricting gastric band.”
Id. (citing Kuzmak, Abstract).
Appellants argue, inter alia, that
[w]hile Kuzmak does disclose a locking mechanism that
allows for locking the distal end of the gastric band in place, the
mechanism of Kuzmak merely locks a locking member 20 at
the distal end of the gastric band within a recess or slot 22
formed in the gastric band. As such, it is left unanswered as to
how and why one of ordinary skill in the art would modify
Bachmann so as to include a tension release mechanism
selectively releasing the tension element from engagement with
the elongated member. Similarly, the manner in which one of
ordinary skill in the art would go about modifying Bachmann
based upon the teachings of Kuzmak has not been fully
explained such that one could appreciate the likelihood of
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success in modifying [] Bachmann based upon [the] teachings
of Kuzmak.
Br. 10.
The Examiner responds that “the manner in which the tension release
mechanism is ‘associated’ with the tension element is not defined” in claim
1, and “thus includes direct and indirect associations,” and “[t]he manner in
which the tension release mechanism ‘engagement’ with the elongated
member is not defined either, thus including both direct and indirect
engagement.” Ans. 16. The Examiner further responds that “[t]he structures
in the claim language ‘tension release mechanism,’ ‘tension element[,]’
[and] ‘elongated member’ are not limited to a particular structure[],” and
therefore, “‘tension release mechanism’ could encompass a clip-slot/flange
mechanism as in Bachmann or bolt/slot mechanism as in Kuzmak . . . .” Id.
We find Appellants’ argument persuasive. Claim 1 requires “a
tension release mechanism associated with the tension element selectively
releasing the tension element from engagement with the elongated member.”
Br. 20 (emphasis added). The Examiner’s finding of “a release mechanism
that facilitates removal of the gastric ring” is not what is claimed. See Final
Act. 4 (emphasis added). Moreover, independent claim 1 requires a
mechanism for releasing the tension element from the ring that is separate
and distinct from the fastener that engages the ends of the ring to form a
loop.
As stated supra, the Examiner finds Bachmann’s tension element 32
corresponds to the claimed tension element, and the Examiner refers to
paragraph 134 in Bachmann for disclosing the claimed tension release
mechanism. Consistent with the Examiner’s finding in the Answer,
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Bachmann’s paragraph 134 discloses that “the clip of the gastric ring may be
unclipped and the elongated member removed from a position encircling the
patient’s stomach.” See Ans. 16 (finding the claimed “‘tension release
mechanism’ could encompass a clip-slot/flange mechanism as in
Bachmann”). However, in each instance, Bachmann discloses that the clip,
which is disposed on the first end of the ring, slides over and engages the
second end of the ring, for locking and releasing the ring, and thus,
corresponds to the claimed fastener, as originally indicated by the Examiner,
and not to the separately claimed tension release mechanism. See Bachmann
¶¶ 69, 71, 94, 95, 132, 134; Final Act. 3.
Further, Bachmann’s tension element 32 is described and depicted as
being fixed or mounted to the elongated member (or ring 22), and we cannot
find support in Bachmann for the Examiner’s finding of a mechanism that
selectively releases tension element 32 from engagement with ring 22, as
claimed. For example, Bachmann discloses that “ring 22 includes flexible
tension element 32 having fixed end 33 mounted to first end 26 of the ring
and free end 34 that is engaged with motor-driven actuator 35 and extends
into a cavity in housing 29.” Bachmann ¶ 74 (discussing Fig. 2A), see also
¶ 82 (loop 48 mounts fixed end of tension element 32 to ring 22) (discussing
Fig. 6).4
Regarding the Examiner’s finding that Kuzmak discloses a tension
release mechanism selectively releasing the tension element from
engagement with the elongated member, we again disagree. The Examiner’s

4 Bachmann’s motor-driven actuator 35 corresponds to the claimed drive
element and is not the separately claimed tension release mechanism. See
Final Act. 3.
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reliance on Kuzmak’s threaded bolt 30 suffers from the same deficiency as
the Examiner’s reliance on Bachmann’s clip, in that Kuzmak describes
elongate control member 18 for securing or locking the elongated member
(or ring or loop) via threaded bolt 30. See Kuzmak, col. 4, ll. 52–56, col. 7,
ll. 3–7) (“Through displacement of the threaded bolt 30 . . . , the band
locking mechanism (comprising locking element 20 and slot or recess 22)
can be released.”). Thus, we agree with Appellants that the Examiner’s
proposed modification of Bachmann’s ring with Kuzmak’s “mechanism of
releasing the gastric banding device” does not explain how Bachmann’s
device would selectively release tension element 32 from ring 22. Final Act.
4.
Accordingly, we do not sustain the Examiner’s rejection of
independent claim 1 and claim 20 depending therefrom.

Claims 2–4 and 15–19 — Unpatentability over Bachmann, Kuzmak,
Shaolian, Forsell, Dlugos, and/or Hassler
The Examiner’s findings with respect to Shaolian, Forsell, Dlugos
and/or Hassler do not cure the deficiencies in the Examiner’s findings with
respect to claim 1. Therefore, we also do not sustain the Examiner’s
rejection of claims 2–4 and 15–19 depending therefrom.

DECISION
The Examiner’s decision to reject claims 1–4 and 15–20 under 35
U.S.C. § 103(a) is REVERSED.

REVERSED