Ex Parte Herbert et al

Patent Trial and Appeal Board

Mar 22, 2013

11414515 (P.T.A.B. Mar. 22, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte TIMOTHY P. HERBERT and WARREN L. STARKEBAUM
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Appeal 2011-001404
Application 11/414,515
Technology Center 3700
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Before: WILLIAM V. SAINDON, SCOTT A. DANIELS, and
JEREMY M. PLENZLER, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-001404
Application 11/414,515
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-10, 12-24, and 26-36. We have jurisdiction
under 35 U.S.C. § 6(b).

The Claimed Subject Matter
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. An implantable medical device comprising:
a gastric constriction device positioned to constrict a
portion of a gastrointestinal tract of a patient;
a plurality of first electrodes carried by the gastric
constriction device;
a stimulation generator that generates first electrical
stimulation energy and second electrical stimulation energy;
a switch device that selects one or more of the first
electrodes and couples the first stimulation energy to the
selected first electrodes to deliver the first stimulation energy to
the patient; and
one or more second electrodes located separately from
the first electrodes carried by the gastric constriction device,
wherein the one or more second electrodes are implantable
within a wall of a stomach of the patient, and wherein the
stimulation generator delivers the second stimulation energy to
the gastrointestinal tract of the patient via the separately located
second electrodes.
Rejections
I. Claims 1-10, 12-24, and 26-36 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Knudson (US 7,167,750 B2, iss. Jan. 23, 2007).
Ans. 4.
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II. Claims 1-10, 12-24, and 26-36 are rejected under § 103(a) as
unpatentable over Knudson and Flesler (US 6,600,953 B2, iss. Jul. 29,
2003). Ans. 9.

SUMMARY OF DECISION
We AFFIRM.

OPINION
Rejection I
The Examiner found that Knudson describes each element of claim 1
except for the second electrodes being implantable within a wall of a
stomach. Ans. 4. The Examiner concluded that it would have been obvious
to include this feature in Knudson as a matter of obvious design choice
“since Appellant has asserted no specific purpose, nor any inherent
advantage in the claimed location over Knudson’s stomach surface
location….” Ans. 5.
Appellants dispute the Examiner’s position that “advantage or
criticality need be presented,” and points out that “the burden is on the
Examiner” to show obviousness. Reply Br. 6. We agree with Appellants
that the Examiner is prematurely trying to shift the burden to Appellants to
demonstrate non-obviousness. The Examiner must first present a prima
facie case of obviousness. Because the Examiner’s initial position is that
“Appellant has asserted no specific purpose [or] inherent advantage,”
Appellants are correct that the Examiner is impermissibly shifting the initial
burden to Appellants. As such, we cannot sustain Rejection I.

Appeal 2011-001404
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Rejection II
As in Rejection I, the Examiner found that Knudson describes each
element of claim 1 except for the second electrodes being implantable within
a wall a stomach. Ans. 9-10. 1 The Examiner turns to Flesler for describing
implantable gastric control electrodes. Ans. 10. The Examiner concluded it
would have been obvious to include the implantable electrodes “to more
effectively treat specific manifestations of a patient’s condition.” Ans. 11
(emphasis removed).
Appellants argue that the Examiner’s rational underpinning is lacking.
Reply Br. 13-15. Appellants first argue that neither reference suggests the
modification. Reply Br. 13. This argument is inconsistent with controlling
case law, which requires neither a suggestion nor one disclosed in the cited
references. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 419 (2007) (“The
obviousness analysis cannot be confined by a formalistic conception of the
words teaching, suggestion, and motivation, or by overemphasis on the
importance of published articles and the explicit content of issued patents.”).
Appellants allege that the Examiner’s proposed modification would
“change the basic principle of operation of the Knudson device,” but provide
no analysis as to what the basic principle is or how it would be changed.
Reply Br. 15. Appellants merely point out that the Knudson device would
not be the same, but such is the case for every proposed modification.
Accordingly, this argument does not apprise us of error.
Appellants further allege that the Examiner has not established why a
person of ordinary skill in the art would have modified Knudson as proposed
(Reply Br. 13) and if they did, they would have modified both bands of

1 But see Knudson, claim 19, “wherein the electrode is imbedded within a
tissue of the organ” and claim 17, “wherein the organ is a stomach.”
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Knudson (Reply Br. 14). Neither of these arguments is persuasive. First,
while an explanation of why a particular modification may have been
desirable would tend to show a particular modification was obvious, lack of
the former does not compel lack of the latter. All that is required is some
explanation as to “why the conclusion of obviousness is correct.” In re
Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006) (“provide some rationale,
articulation, or reasoned basis to explain why the conclusion of obviousness
is correct.”). Second, Appellants’ argument that one of ordinary skill in the
art would have considered one potential modification as, essentially, more
obvious than the one proposed is also not persuasive. We are aware of no
basis (nor has Appellants set forth one) why we are constrained to conclude
only that which is most obvious is obvious under section 103.
On the other hand, the Examiner has provided ample evidence that
one of ordinary skill in the art is aware of certain options when it comes to
treating obesity with bands and electrodes. These options include a
mechanical gastric restriction device having electrodes (Ans. 9; Knudson
col. 19, ll. 60-62) and electrodes directly implanted into the stomach (Ans.
10-11; Flesler, col. 9, ll. 57-59; see also n. 1). The Examiner’s conclusion
that one of ordinary skill would have found it obvious to arrive at the
claimed subject matter by selecting among them to most effectively treat
specific conditions squares with established precedent. KSR, 550 U.S. at
417 (“a court must ask whether the improvement is more than the
predictable use of prior art elements according to their established
functions”). Reviewing Appellants’ Briefs, we are not apprised of error in
the Examiner’s rejection of claim 1 as unpatentable over Knudson and
Flesler.
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Appellants argue claims 1-10, 12, and 13 as a group. Thus, claims 2-
10, 12, and 13 will fall with claim 1. While Appellants address claims 14-
24, 26, and 27 as well as claims 28-36 separately (Reply Br. 15), Appellants
rely on the unpersuasive arguments set forth with respect to claim 1. Thus,
we are likewise not apprised of error in the Examiner’s rejection of claims
14-24 and 26-36.
DECISION
We AFFIRM the Examiner’s decision regarding claims 1-10, 12-24,
and 26-36.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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