Ex Parte Kalloo et al

Patent Trial and Appeal Board

May 25, 2017

12659087 (P.T.A.B. May. 25, 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.
APO-2784-50 2633
EXAMINER
MENDOZA, MICHAEL G
ART UNIT PAPER NUMBER
3731
MAIL DATE DELIVERY MODE
12/659,087 02/24/2010
119800 7590
Gordon & Jacobson, P.C.
60 Long Ridge Road
Suite 407
Stamford, CT 06902
05/25/2017
Anthony N. Kalloo
05/25/2017 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 ANTHONY N. KALLOO and
SERGEY VENIAMINOVICH KANTSEVOY
Appeal 2015-003556
Application 12/659,087
Technology Center 3700
Before JENNIFER D. BAHR, AMANDA F. WIEKER, and
FREDERICK C. LANEY, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Anthony N. Kalloo and Sergey Veniaminovich Kantsevoy
(Appellants)1 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision
rejecting claims 1—5 and 12—172 under 35 U.S.C. § 103(a) as unpatentable
over Kalloo (US 2001/0049497 Al, pub. Dec. 6, 2001) and Adair (US
5,290,284, iss. Mar. 1, 1994). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 The Appeal Brief identifies Apollo Endosurgery, Inc. as the real party in
interest. Appeal Br. 3.
2 Although the Office Action Summary omits claims 12 and 13 from the list
of pending and rejected claims, these claims are rejected. Final Act. 3^4.
Appeal 2015-003556
Application 12/659,087
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is the only independent claim.
1. A method for ligation of a fallopian tube of a patient,
comprising:
using a flexible endoscope to orally access a gastric wall
of a patient, the flexible endoscope having a length sufficient to
extend from outside a mouth of the patient, transgastrically to the
gastric wall and through the gastric wall into the peritoneal
cavity, a longitudinal passageway extending the length, and a
distal end;
puncturing the gastric wall to provide access to a
peritoneal cavity;
advancing the flexible endoscope into the peritoneal cavity
through the puncture;
locating the fallopian tube;
extending a first loop through the longitudinal passageway
and beyond the distal end of the flexible endoscope;
ligating the fallopian tube using the first loop, wherein
when the first loop is extending over a portion of the fallopian
tube and reduced in diameter, the first loop is configured to block
a patency of the fallopian tube; and
removing the endoscope.
DISCUSSION
Claims 1—5, 12—14, 16, and 17:
The Examiner finds that Kalloo discloses all elements of independent
claim 1, including “locating and ligating the fallopian tube (Paragraph 49),
. . . except for the fallopian tube being ligated using a first loop coupled to
the endoscope and configured to block a patency of the fallopian tube.”
Final Act. 3. The Examiner finds that “Adair discloses a related ligation
device for ligating a fallopian tube and teaches that it was known to use a
loop 20 coupled to the ligation device for blocking a patency of the fallopian
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Application 12/659,087
tube.” Id. (citing Adair, Figs. 10-17); see Adair 4:44—65 (describing a tubal
ligation procedure using suture loop 20). The Examiner determines it would
have been obvious to modify Kalloo’s tubal ligation method “by using a first
loop coupled to the endoscope and configured to block a patency of the
fallopian tube since Adair teaches that this was a known means for tubal
ligation of a fallopian tube” and because “simple substitution of one known
technique for another to obtain predictable result[,] namely ligation with a
loop as opposed to a clip, would have been obvious under KSR rationale.”
Final Act. 3^1 (citing KSR Int 7 Co. v. Teleflex, Inc., 550 U.S. 398 (2007));
see KSR, 550 U.S. at 416 (“[W]hen a patent claims a structure already
known in the prior art that is altered by the mere substitution of one element
for another known in the field, the combination must do more than yield a
predictable result.”).
Appellants argue that Kalloo’s teachings with respect to transgastric
endoscopic ligation of fallopian tubes are limited to the specific procedures
set forth therein, and that “there is no suggestion to carry out the method
taught by any ligating structure other than ‘the ligating clip’ taught therein
for the purpose of ligating the fallopian tubes.” Appeal Br. 7. Appellants
add that “Kalloo does not offer any predictable alternatives or solutions.”
Id.
Appellants’ argument is unavailing because it insists that a teaching,
suggestion, or motivation to make the combination be found in the prior art
references. The Supreme Court has stated that a rigid insistence on teaching,
suggestion, or motivation is incompatible with its precedent concerning
obviousness. KSR, 550 U.S. at 419. Appellants do not direct our attention
to, nor do we discern, any teaching in Kalloo suggesting that clips are the
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Application 12/659,087
only type of ligating mechanism that would be suitable for transgastric tubal
ligation purposes. See Kalloo, para. 49 (teaching the application of ligating
clips to fallopian tubes for tubal ligation).
Appellants also allege that the Examiner has resorted to hindsight in
reaching a conclusion of obviousness, contending that Adair’s loop system is
only taught for use in laparoscopic surgery, and not for use in transgastric
surgery in which the surgical instrument is advanced to the gastric wall in a
peroral procedure. Appeal Br. 8. Appellants add that substituting Adair’s
loop into Kalloo’s method will not yield predictable results because Adair’s
method couples its suture loop to a rigid instrument inserted through a trocar
tube from outside the body directly through the abdomen. Id. Appellants
also point out that Adair discloses a method in which multiple incisions are
made and multiple ports are used. Id. at 9. Thus, Appellants assert that
Adair’s systems and methods are not suitable for a peroral transgastric
approach using a flexible endoscope, as taught in Kalloo. Id. In summary,
Appellants submit that, in light of these distinctions between Kalloo’s
method and that disclosed by Adair, “there is no suggestion to use the loop
closure mechanism and associated method taught in Adair ... in
combination with Kalloo’s transgastric method to render the claimed method
unpatentable.” Id. at 9—10.
Appellants’ arguments are not convincing because, once again, they
insist that a teaching, suggestion, or motivation to make the combination be
found in the prior art references. As already noted, the Supreme Court has
rejected such a rigid approach to obviousness. KSR, 550 U.S. at 419.
Appellants assert that Adair’s ligation technique would not be suitable for
use in Kalloo’s peroral, transgastric method using a flexible catheter.
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Application 12/659,087
Appeal Br. 8—9. However, Appellants do not direct our attention to any
teaching in Adair or Kalloo that supports this assertion. Although Adair’s
ligation device may comprise a rigid applicator tube (handle 12), we do not
find, and Appellants do not point to, any teaching in Adair suggesting that
this technique could not be used with a flexible applicator tube extending
through a channel of a flexible endoscope in a peroral transgastric
procedure.
Appellants’ argument that the Examiner has resorted to hindsight also
is unfounded, as the Examiner’s articulated reason for making the
combination is not derived from teachings in Appellants’ Specification.
Rather, the Examiner’s rationale is based on teachings found in Kalloo (use
of ligating clips in a peroral, transgastric tubal ligation procedure), teachings
found in Adair (use of a suture loop for performing a tubal ligation), and the
principle articulated by the Supreme Court in KSR that the simple
substitution of one known technique for another known in the field to yield a
predictable result is obvious. Final Act. 3; see KSR, 550 U.S. at 416.
Appellants argue that, even if Adair’s ligation technique, i.e., loop,
were used in Kalloo’s tubal ligation procedure, instead of the clip, the
combination still would not satisfy the limitation in claim 1 of “extending a
first loop through the longitudinal passageway” of the endoscope. Appeal
Br. 7—8; id. at 12 (Claims App.). As Appellants point out, slip knot 22 of
Adair’s suture 18 “is necessarily larger than the passageway [(16)] for the
suture in order for the Adair system to properly function.” Id. at 7; see
Adair, 3:65—67 (disclosing that slip knot 22 “has a diameter larger than that
of passageway 16”). As the physician pulls on handle 24 of suture 18 to pull
suture 18 in the proximal direction, slip knot 22, by virtue of having a larger
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Application 12/659,087
diameter than passageway 16, engages and is held by the distal end of
handle 12 as suture 18 “is drawn through knot 22 to draw loop 20 tightly
about tubal section 52.” Adair, 4:54—59. As Appellants explain, “[b]y
providing the slip knot with a larger diameter than the distal end of the
passageway, the distal end of the instrument is permitted to act as a stop for
the slip knot.” Appeal Br. 8.
Appellants’ characterization of the operation of Adair’s ligation
device is correct. However, for the reasons discussed more fully below,
Appellants’ argument that the claimed invention would not result from the
combination is not persuasive, as it fails to appreciate how Adair’s ligation
device would be used in the combination with Kalloo proposed by the
Examiner.
While Adair’s suture 18 is drawn into passageway 16, loop 20 is not
drawn into (i.e., is not extended through) passageway 16 of ligation handle
12. However, claim 1 does not require that the loop be extended through the
passageway of the ligation handle. Rather, claim 1 recites a step of
“extending a first loop through the longitudinal passageway [of the
endoscope] and beyond the distal end of the flexible endoscope.” Appeal Br.
12 (emphasis added) (Claims App.). As illustrated, for example, in Figure
13 of Kalloo, the ligating device applicator (clip fixing device applicator 70)
of Kalloo extends through channel 64 of endoscope 40 and, when used for
ligating tissue, is advanced so that its distal end, as well as the ligation
device (clip) gripped at the distal end of the applicator, projects beyond the
distal end of the endoscope. Kalloo, paras. 50, 51. Thus, when Kalloo’s
method is modified as proposed by the Examiner, by replacing the ligating
technique of Kalloo (i.e., the clip fixing device applicator 70 and clip) with
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Application 12/659,087
the ligating technique of Adair (ligation handle 12 and suture 18), loop 20 of
suture 18 extends through channel 64 (i.e., longitudinal passageway) of
endoscope 40. Cf. Ans. 3 (noting that Adair’s ligation device would be
passed through the overtube of Kalloo).
For the above reasons, Appellants’ arguments do not apprise us of
error in the rejection of claim 1. Accordingly, we sustain the rejection of
claim 1, as well as claims 2—5, 12—14, 16, and 17, for which Appellants do
not present any separate arguments and which, thus, fall with claim l,3 under
35 U.S.C. § 103(a) as unpatentable over Kalloo and Adair.
Claim 15:
Claim 15 recites that “the first loop is a continuous band.” Appeal Br.
13 (Claims App.). Appellants argue that Adair’s loop 20 is not “a
continuous band,” as called for in claim 15. Id. at 10. According to
Appellants, because Adair’s suture has slip knot 22 designed to allow one
end of loop 20 to be pulled relative to the other end to draw the loop tightly
about a tubal section, Adair’s loop “clearly does not have the claimed
continuous construct” and, in fact, “teaches away from such continuous
structure.” Id. at 10-11.
Citing definitions of “band” and “loop,” the Examiner finds that
Adair’s loop 20 satisfies the definition of a band, and that loop 20 satisfies
the definition of a loop because it “is circular or curve [s] over on itself’ and,
thus, has “no end.” Ans. 5—A. Further, the Examiner finds that because
3 See 37 C.F.R. § 41.37(c)(l)(iv) (permitting the Board to select a single
claim to decide the appeal as to a single ground of rejection of a group of
claims argued together).
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Application 12/659,087
“[cjircles are continuous and have no end,” Adair’s suture loop “is therefore
continuous.” Id. at 4.
Appellants contend that because Adair’s loop changes diameter when
one end of suture 18 “is pulled relative to the other, it cannot be continuous.”
Reply Br. 2. Appellants do not provide a definition of “continuous,” nor do
they point to any definition of “continuous” in their Specification that would
exclude a loop extending 360° but having an adjustable diameter. Notably,
we do not find the term “continuous” in Appellants’ Specification, outside of
claim 15, which was added in the Amendment submitted September 20,
2012.
As shown, for example, in Figures 1,3, and 8—11 of Adair, Adair’s
loop 20 fully closes upon itself, forming a closed structure. Appellants fail
to persuade us that the Examiner’s position that this is a “continuous loop” is
unreasonable. Accordingly, we sustain the rejection of claim 15 under 35
U.S.C. § 103(a) as unpatentable over Kalloo and Adair.
DECISION
The Examiner’s decision rejecting claims 1—5 and 12—17 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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