Ex Parte Laufer

Patent Trial and Appeal Board

Jan 11, 2013

11546458 (P.T.A.B. Jan. 11, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MICHAEL D. LAUFER
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Appeal 2011-011870
Application 11/546,458
Technology Center 3700
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Before DONALD E. ADAMS, ERIC GRIMES, and
ERICA A. FRANKLIN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims 1-8, 10-12, and
23-27 (App. Br. 5; Ans. 2). We have jurisdiction under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
The claims are directed to a system (i.e., an apparatus) for modifying
the location at which bodily fluids interact with nutrients in a gastrointestinal
tract. Claim 1 is representative and is reproduced in the Claims Appendix of
Appellant’s Brief.

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Claims 1-4, 6-8, 10, 24, and 25 stand rejected under 35 U.S.C.
§ 102(a)/(e) as being anticipated by Stack.
1

Claim 5 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
the combination of Stack and Geitz.
2

Claims 11 and 12 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Stack and Ravo.
3

Claims 23, 26, and 27 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Stack and Smit.
4

We affirm.

Anticipation:
ISSUE
Does the preponderance of evidence on this record support
Examiner’s finding that Stack teaches Appellant’s claimed invention?
FACTUAL FINDINGS (FF)
FF 1. Examiner finds that the device of Appellant’s claim 1 “has only two
structural elements: a conduit having a first end and a second end; and a
means for attaching” (Ans. 9).
FF 2. Examiner finds that Stack teaches a device comprising a conduit
having a first end and a second end, wherein the second end comprises a
means for attaching the conduit to the gastrointestinal tract (Ans. 4-5 and 9;
Stack 2: ¶ [0038] and 5: ¶ [0076] and ¶ [0078]).

1
Stack et al., US 2003/0040804 A1, published February 27, 2003.
2
Geitz, US 2003/0109931 A1, published June 12, 2003.

3
Ravo, US 4,719,916, issued January 19, 1988.

4
Smit, US 4,134,405, issued January 16, 1979.

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ANALYSIS
The claims were not separately argued. Claim 1 is representative. 37
C.F.R. § 41.37(c)(1)(iv).
Examiner finds that Stack teaches a device that meets the structural
requirements of Appellant’s claimed invention, which is not disputed by
Appellant (FF 1-2; Ans. 9 (“Appellant has not presented any arguments that
the device of Stack does not have a conduit or a means for attaching”)). In
addition, Appellant does not dispute that Stack’s device could have been
used in the manner intended by Appellant, but instead contends that Stack
did not use the device in the manner intended by Appellant (App. Br. 9-10;
Cf. Ans. 10).
In sum, we agree with Examiner’s reasoning that “a recitation with
respect to the manner in which a claimed apparatus is intended to be
employed does not differentiate the claimed apparatus from a prior art
apparatus satisfying the claimed structural limitations” (Ans. 10). Catalina
Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir.
2002) (“[T]he patentability of [an] apparatus … claim[] depends on the
claimed structure, not on the use or purpose of that structure.”).
To be complete, we adopt Examiner’s response to Appellant’s
contentions regarding the use of Stack’s device as our own (see Ans. 10-12).
CONCLUSION OF LAW
The preponderance of evidence on this record supports Examiner’s
finding that Stack teaches Appellant’s claimed invention. The rejection of
claim 1 under 35 U.S.C. § 102(a)/(e) as being anticipated by Stack is
affirmed. Claims 2-4, 6-8, 10, 14, and 25 are not separately argued and fall
with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
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Obviousness:
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 3. We adopt the Examiner’s findings concerning the scope and content
of the prior art (Ans. 6-9).
ANALYSIS
Appellant contends that Geitz, Ravo, or Smit fail to make up for the
deficiencies in Stack, addressed above (App. Br. 10-11). For the reasons set
forth above, having found no deficiency in Stack we are not persuaded by
Appellant’s contention to the contrary.
CONCLUSION OF LAW
The preponderance of evidence on this record supports a conclusion
of obviousness.
The rejection of claim 5 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Stack and Geitz is affirmed.
The rejection of claim 11 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Stack and Ravo is affirmed. Claim 12 was not
separately argued and falls with claim 11. 37 C.F.R. § 41.37(c)(1)(vii).
The rejection of claim 23 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Stack and Smit is affirmed. Claims 26 and 27 were
not separately argued and fall with claim 23. 37 C.F.R. § 41.37(c)(1)(vii).
TIME PERIOD FOR RESPONSE
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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Application 11/546,458

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