Ex Parte Ferren et al

Patent Trial and Appeal Board

Mar 5, 2013

11726031 (P.T.A.B. Mar. 5, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte BRAN FERREN, W. DANIEL HILLIS, RODERICK A. HYDE,
MURIEL Y. ISHIKAWA, EDWARD K. Y. JUNG, ERIC C.
LEUTHARDT, NATHAN P. MYHRVOLD, CLARENCE T. TEGREENE,
LOWELL L. WOOD JR., and VICTORIA Y. H. WOOD
__________

Appeal 2011-000153
Application 11/726,031
Technology Center 3700
__________

Before DEMETRA J. MILLS, ERIC GRIMES, and LORA M. GREEN,
Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for obviousness-type double patenting, anticipation and
obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
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STATEMENT OF CASE
Claim 1 is reproduced below. Other rejected claims can be found in
Appellants’ Claim Appendix to the Brief.

1. A method of emplacing an electromagnetic stimulation device,
comprising:
causing a self-propelling electromagnetic stimulation device to travel
within a body tube tree of a subject toward a target site;
if a branch point including two or more branches within the body tube
tree is reached by the self-propelling electromagnetic stimulation device,
causing the self propelling electromagnetic stimulation device to enter a
selected branch; and
causing the self-propelling electromagnetic stimulation device to stop
traveling upon reaching the target site.

Cited References

Alfano et al., US 6,240,312 B1, May 29, 2001
Combs et al., US 6,512,949 B1, Jan. 28, 2003
Mosse et al., US 6,709,388 B1, Mar. 23, 2004
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Grounds of Rejection
1. Claims 1-4, 17, 31, 32, 40, 66, 122-125, 129, 131, 132, 135 and
146-165 are rejected on the ground of nonstatutory obviousness-
type double patenting as being unpatentable over the claims of
copending Application No. 11/645,358.1

2. Claims 1-4, 17, 31, 32, 40, 66, 122-125, 129, 131, 132, 135 and
146-165 are provisionally rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over
claims 1, 2, 51, 68, 83, 95, 96, 125 and 134-152 of copending
Application No. 11/645,357, now U.S. Patent 7,857,767.

3. Claims 1-4, 17, 31, 32, 40, 66, 122-125, 129, 131, 132, 135 and
146-165 are provisionally rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over
claims 1-4, 17, 21, 23, 35, 38, 39, 50, 51, 62 and 83-97 of
copending Application No. 11/651,946 now U.S. Patent 7,998,060.

4. Claims 1-4, 17, 31, 32, 40, 122-125, 146-152, 154-158, 164 and
165 are rejected under 35 U.S.C. 102(b) as being anticipated by
Alfano.

5. Claims 1-4, 17, 31, 32, 40, 129, 131, 132, 135, 154, 155, 158-163
and 165 are rejected under 35 U.S.C. 102(b) as being anticipated
by Mosse.

6. Claim 66 is rejected under 35 U.S.C. 103(a) as being unpatentable
over Alfano or Mosse.

7. Claim 153 is rejected under 35 U.S.C. 103(a) as being
unpatentable over Mosse in view of Combs.

1 The ‘358 application has issued as U.S. Patent No. 8,000,784, so the
rejection is no longer provisional.
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FINDINGS OF FACT
The Examiner’s findings of fact are set forth in the Answer at pages 3-
10.

Discussion Obviousness-Type Double Patenting
1. Claims 1-4, 17, 31, 32, 40, 66, 122-125, 129, 131, 132, 135 and
146-165 are provisionally rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over
claims 1, 62, 66, 74, 84, 89, 95 and 103-125 of copending
Application No. 11/645,358, now U.S. Patent No. 8,000,784.

2. Claims 1-4, 17, 31, 32, 40, 66, 122-125, 129, 131, 132, 135 and
146-165 are provisionally rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over
claims 1, 2, 51, 68, 83, 95, 96, 125 and 134-152 of copending
Application No. 11/645,357, now U.S. Patent 7,857,767.

3. Claims 1-4, 17, 31, 32, 40, 66, 122-125, 129, 131, 132, 135 and
146-165 are provisionally rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over
claims 1-4, 17, 21, 23, 35, 38, 39, 50, 51, 62 and 83-97 of
copending Application No. 11/651,946, now U.S. Patent
7,998,060.

ISSUE
The Examiner concludes that although the conflicting claims are not
identical, they are not patentably distinct from each other because both the
pending application and patented applications recite methods of propelling a
lumen-traveling, electromagnetic stimulation device through a body lumen.
Appellants argue that
The Examiner repeatedly concluded that claim recitations
are "obvious variants of each other," without providing the
"reasons why a person of ordinary skill in the art would
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conclude that the invention defined in the claim at issue would
have been an obvious variation of, the invention defined in a
claim in the patent."
Appellant provisionally states that if in the future, claims
are patented in a copending application and claims in the instant
application are allowed, and if an appropriate nonprovisional
nonstatutory obviousness-type double patenting objection is
raised, Appellant will file an appropriate terminal disclaimer.

(App. Br. 74).

The issue is: Do the claims of the pending application claim an
obvious variant of the now patented applications?
PRINCIPLES OF LAW
“Obviousness-type double patenting is a judge-made
doctrine that prevents an extension of the patent right beyond
the statutory time limit. It requires rejection of an application
claim when the claimed subject matter is not patentably distinct
from the subject matter claimed in a commonly owned patent.
Its purpose is to prevent an unjustified extension of the term of
the right to exclude granted by a patent by allowing a second
patent claiming an obvious variant of the same invention to
issue to the same owner later.” In re Berg, 140 F.3d 1428, 1431
(Fed. Cir. 1998) (citation omitted).

“All proper double patenting rejections, of either type,
rest on the fact that a patent has been issued and later issuance
of a second patent will continue protection, beyond the date of
expiration of the first patent, of the very same invention
claimed therein (same invention type double patenting) or of a
mere variation of that invention which would have been
obvious to those of ordinary skill in the relevant art
(obviousness-type double patenting). In the latter case, there
must be some clear evidence to establish why the variation
would have been obvious which can properly qualify as ‘prior
art.’” In re Kaplan, 789 F.2d 1574, 1579-80 (Fed. Cir. 1986)
(emphasis in original).
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PATENTED CLAIMS
A epresentative claim from Application 11/645,358, filed Dec. 21,
2006, now US 8,000,784, follows.

1. A method implemented with a lumen-traveling device,
comprising:
moving the lumen-traveling device through a body lumen using
a propelling mechanism and a steering mechanism on the lumen-
traveling device, based at least in part upon a pre-programmed motion
pattern;
at least intermittently permitting flow of fluid through the body
lumen and past a fluid-contacting portion of the lumen-traveling
device;
detecting a condition of interest with a sensor on the lumen
traveling device;
producing a response initiation signal with response initiation
circuitry located at least in part on the lumen-traveling device at least
partially in response to detection of the condition of interest,
wherein the response initiation signal is configured for
controlling performance of an action by an active portion of the
lumen-traveling device based at least in part on a pre-progranmed
pattern; and
performing the action with the active portion of the lumen
traveling device in response to the response initiation signal.
(Emphasis added.)

Representative claims from Application No. 11/645,357, filed Dec.
21, 2006, now U.S. Patent 7,857,767, follow.

1. A lumen-traveling device, comprising:
a motion-arresting portion;
a fluid-contacting portion configured to contact fluid within the
body lumen and to at least intermittently permit flow of fluid through
the body lumen;
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a propelling mechanism configured to produce movement of
the lumen-traveling device through a body lumen in which the lumen-
traveling device is deployed;
motion control circuitry carried at least in part by said lumen-
traveling device and configured to control the propelling mechanism
to control movement of the lumen-traveling device through the body
lumen;
a sensor configured to detect a condition of interest in the body
lumen and to generate a sense signal indicating detection of the
condition of interest;
response initiation circuitry operatively connected to the sensor
and configured to generate a response initiation signal upon receipt of
the sense signal indicating detection of the condition of interest in the
body lumen; and
an active portion operatively connected to the response
initiation circuitry and configured to produce a response upon receipt
of the response initiation signal.

8. The device of claim 1, including:
a steering mechanism configured to modify the direction of
movement of the lumen-traveling device;
wherein the motion control circuitry is configured to control the
steering mechanism to control movement of the lumen-traveling
device through the body lumen. (Emphasis added.)

Representative claims from Application No. 11/651,946, filed Jan. 9,
2007, now U.S. Patent 7,998,060, follow.

1. A lumen-traveling delivery device comprising:
a propelling mechanism;
a material release portion configured to release a deliverable
material;
a capture portion distinct from the material release portion and
capable of capturing the deliverable material released from the
material release portion;
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an expanding or extending portion positioned downstream of
the material release portion and the capture portion and configured to
at least temporarily seal with a wall of a body lumen in the vicinity of
a treatment target to completely block a flow of fluid through the body
lumen to keep the deliverable material released from the material
release portion in the vicinity of the delivery device to be captured by
the capture portion; and
control circuitry located at least in part on the delivery device,
the control circuitry capable of controlling the operation of the
propelling mechanism to move the delivery device through the body
lumen to the treatment target, controlling the material release portion
to release a deliverable material and controlling the capture portion.

6. The device of claim 1, including a steering mechanism
capable of modifying the movement of the delivery device. (Emphasis
added.)

ANALYSIS
Appellants now claim:
1. A method of emplacing an electromagnetic stimulation
device, comprising:
causing a self-propelling electromagnetic stimulation device to
travel within a body tube tree of a subject toward a target site;
if a branch point including two or more branches within the
body tube tree is reached by the self-propelling electromagnetic
stimulation device, causing the self propelling electromagnetic
stimulation device to enter a selected branch; and
causing the self-propelling electromagnetic stimulation device
to stop traveling upon reaching the target site.

We agree with the Examiner that the subject matter of the pending
claims is an obvious variant of each of the cited, now patented applications.
In particular, pending claim 1 recites a method wherein “if a branch point
including two or more branches within the body tube tree is reached by the
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self-propelling electromagnetic stimulation device, causing the self
propelling electromagnetic stimulation device to enter a selected branch.”
At least one claim of each of the cited patents includes a steering
mechanism and the patents generally disclose the concept of self-propulsion.
We agree with the Examiner that “causing the self propelling
electromagnetic stimulation device to enter a selected branch” as presently
claimed, is equivalent of steering the device into a branch, and therefore
claim 1 is an obvious variant of the patented claims. Claims 2-4, 17, 31, 32,
40, 66, 122-125, 129, 131, 132, 135 and 146-165 fall with claim 1. 37
C.F.R. § 41.37(c)(1)(iv).
Appellants argue that the Examiner has not provided reasons why a
person of ordinary skill in the art would consider the conflicting claims to be
obvious variants (Appeal Br. 74). However, the Examiner provides
adequate reasoning to support the rejections (Answer 3-5), and for the
reasons discussed above, we agree with the Examiner’s reasoning.

Discussion Anticipation and Obviousness Rejections
4. Claims 1-4, 17, 31, 32, 40, 122-125, 146-152,154-158,
164 and 165 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Alfano.

5. Claims 1-4, 17, 31, 32, 40, 129, 131, 132, 135 and 154,
155, 158-163 and 165 are rejected under 35 U.S.C. § 102(b)
as being anticipated by Mosse.

6. Claim 66 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Alfano or Mosse.

7. Claim 153 is rejected under 35 U.S.C. §103(a) as being
unpatentable over Mosse in view of Combs.
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PRINCIPLES OF LAW
In order for a prior art reference to serve as an anticipatory reference,
it must disclose every limitation of the claimed invention, either explicitly or
inherently. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). To
anticipate, every element and limitation of the claimed invention must be
found in a single prior art reference, arranged as in the claim. Karsten Mfg.
Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001).
In order to determine whether a prima facie case of obviousness has
been established, we consider the factors set forth in Graham v. John Deere
Co., 383 U.S. 1, 17 (1966): (1) the scope and content of the prior art; (2) the
differences between the prior art and the claims at issue; (3) the level of
ordinary skill in the relevant art; and (4) objective evidence of
nonobviousness, if present.
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).

ANALYSIS
For rejection 4, Appellants provide separate argument for claims 3,
14, 17, 31, 32, 40, 124, 125, 148, 149, 151, 152 154-156, 158 and 164. For
rejection 5, Appellants provide separate argument for claims 2, 3, 17, 31, 32,
40, 129, 131, 132, 155, 158, 160-161, 163 and 165. The Examiner has
addressed each of these claims in the Answer.
We agree with the Examiner’s fact finding, statement of the rejection
and responses to Appellants’ arguments as set forth in the Answer, including
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those of the separately argued claims. We find that the Examiner has
provided evidence to support a prima facie case of anticipation and
obviousness and adopt the Examiner’s arguments as our own. We provide
the following additional comment.
Appellants argue that
The Examiner mischaracterizes Appellant's claim
1 by asserting that "every point in the body can be
considered a branch point, because the device can be
controlled to move forward (branch one) or backward
(branch two) in order to reach a target site" (emphasis
added). The Examiner failed to establish how one of
ordinary skill in the art would interpret the term "branch
point" as including "every point in the body" (emphasis
added). Clearly, the Examiner's finding that "every point
in the body can be considered a branch point" rests on an
unreasonably broad interpretation of "branch point."

(App. Br. 28.)

Appellants define the term “body tube tree” as follows.
The term ''body tube tree", as used herein,
refers to a body lumen having a branching
structure, i.e., that it includes at least one branch
point where a first region of a lumen splits into two
or more branches, or where a side lumen branches
off from a main lumen. "Body tube tree" is not
intended to convey any particular structure,
configuration, level or organization, or level of
complexity, beyond that indicated above.
Examples of body tube trees include, but are not
limited, the cardiovascular system, the respiratory
system, and the CSF -space, for example.

(Spec. 16, emphasis added).

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The Examiner finds that

Alfano discloses that the device enters the body through
the mouth and eventually exits the rectum (see Fig. 9 and Col.
7, lines 4-7). By traversing this entire path, the device of
Alfano necessarily reaches a plurality of branch points with two
lumens, and chooses one lumen to pass through. As but one
example, Fig. 8 of Alfano shows the bile duct branching off
from the duodenum.

(Ans. 11.)

Consistent with this interpretation, and notwithstanding the
Examiner’s earlier interpretation of the term “branch point” as encompassing
any point allowing forward or backward movement, both the Specification
and Alfano contemplate a body tube tree such as the gastrointestinal tract
having a side lumen branching off from a main lumen. Alfano, Fig. 8,
evidences that the gastrointestinal tract includes a plurality of branches
including the common bile duct and duodenum. According to Alfano, the
laser head can be mounted on a snake like cable and the laser pulse can be
impinged onto the target area. (Col 6, l. 55-col. 7, l. 3.)
Therefore, we agree with the Examiner that the device of Alfano is
intended for gastrointestinal use (col. 4, l. 37), has complete freedom to
move about inside a patient (col. 4, ll. 7-8), may be turned in the
gastrointestinal tract by a build in gas flow (col. 4, ll. 57-58) and therefore is
capable of entering a selected branch at a branch point, or
if a branch point including two or more branches within the
body tube tree is reached by the self-propelling electromagnetic
stimulation device, causing the self propelling electromagnetic
stimulation device to enter a selected branch; and causing the
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self-propelling electromagnetic stimulation device to stop
traveling upon reaching the target site[,]

as claimed. That is, the point at which the bile duct merges with the
duodenum is a branch point according to the Specification’s
definition, and continuing the progress of Alfano’s device in the
intestine is causing it to enter a selected branch.
With respect to claim 32, we agree with the Examiner, that a
physiological parameter includes the physiology of a specific organ as
differentiated from the physiology of another organ. Thus, when Alfano is
targeting the gallbladder he is measuring a visual physiological parameter, as
claimed.
With respect to claim 149, Alfano, claim 25, discloses diagnosis of the
heart and blood vessels.
All other claims separately argued by Appellants are affirmed for the
reasons given by the Examiner in the record.

Regarding the anticipation rejection over Mosse, the Appellants
provide similar argument with respect to the definition of “branch points.”
We agree with the Examiner that
Mosse discloses that the device enters the body in the gut
and eventually reaches the small bowel or colon (see Col. 2,
lines 40-42). By traversing this entire path, the device of Mosse
necessarily reaches a plurality of branch points with two
lumens, and chooses one lumen to pass through. As but one
example, in order to reach the colon or small bowel, the bile
duct branching off from the duodenum will be reached.
However, in order to reach the colon or small bowel, the device
of Mosse is directed into the duodenum and the intestines, and
does not enter the lumen of the bile duct. The appellant
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discloses the GI tract to be a body tube tree (Par. 0298 of the
specification).

(Ans. 15.) Appellants fail to provide evidence that the gut does not include
branch points or the device of Mosse cannot traverse such branch points.
Appellants further argue that

nowhere does the Examiner allege that Mosse discloses
"causing the self-propelling electromagnetic stimulation device
to stop traveling upon reaching the target site," as recited in
claim 1. Moreover, there is no teaching, and the Examiner has
pointed to none, in column 2, line 5 through column 3, line 35
of Mosse of "causing the self-propelling electromagnetic
stimulation device to stop traveling upon reaching the target
site."

(App. Br. 56.)

Mosse discloses that the walls of the bowel are the target site of
stimulation. (See Ans. 16.) Mosse discloses that once the device has
advanced sufficiently far along the passage, for example the colon or small
bowel, the current may be switched off and the bowel viewed with a camera.
(Col. 2, l. 40-42.) Thus, the device of Mosse is stopped when it reaches a
target site.
Therefore, we affirm all the rejections of the Examiner for the reasons
of record.

CONCLUSION OF LAW
The cited references support the Examiner’s anticipation and
obviousness rejections.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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