Ex Parte ReydelDownload PDFPatent Trial and Appeal BoardJun 16, 201714538283 (P.T.A.B. Jun. 16, 2017) Copy Citation 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. 14/538,283 11/11/2014 Boris Reydel 10544-002US2 3555 96039 7590 06/20/2017 Mennier Parlin Rr Piirfman T T C EXAMINER 999 Peachtree Street NE KASZTEJNA, MATTHEW JOHN Suite 1300 Atlanta, GA 30309 ART UNIT PAPER NUMBER 3779 NOTIFICATION DATE DELIVERY MODE 06/20/2017 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): docketing@mcciplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BORIS REYDEL1 Appeal 2016-001928 Application 14/538,283 Technology Center 3700 Before ERIC B. GRIMES, RYAN H. FLAX, and TIMOTHY G. MAJORS, Administrative Patent Judges. MAJORS, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) involving claims to methods for performing a gastrointestinal endoscopic imaging procedure, which have been rejected as not enabled, anticipated, and obvious. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. STATEMENT OF THE CASE Appellant’s “invention relates generally to medical imaging systems and, more particularly, to imaging systems for insertion into a lumen of a 1 Appellant identifies the Real Party in Interest as Visualization Balloons, LLC. (App. Br. 3.) Appeal 2016-001928 Application 14/538,283 patient for viewing the lumen through a transparent dome at the tip of the system, and to methods of use of such systems.” (Spec. 1:6—8.) Claims 49-63 are on appeal. Claim 49 is the only independent claim and reads as follows: 49. A method for performing a gastrointestinal endoscopic imaging procedure within a non-insufflated bowel of a subject, comprising: a. inserting a gastrointestinal endoscope into the non- insufflated bowel of the subject, wherein the gastrointestinal endoscope comprises a distal face and a visual transmission channel for transmitting images or video information of the endoscope’s operation through the transmission channel; b. providing an inflatable balloon; c. inflating the balloon; d. inserting the inflatable balloon into the non- insufflated bowel of the subject; e. positioning the inflated balloon in contact with the distal face of the gastrointestinal endoscope such that imaging using the visual transmission channel occurs through the inflated balloon; f. moving the gastrointestinal endoscope within the non-insufflated bowel while the inflated balloon is in contact with the distal face to image portions of the bowel wall along a length of the bowel and though [sic through] the inflated balloon using the visual transmission channel. (App. Br. 18 (Claims App’x). The claims stand rejected as follows: I. Claims 55—58 under 35 U.S.C. § 112, first paragraph (pre- A1A), for failure to satisfy the enablement requirement. II. Claims 49-51 and 54 under 35 U.S.C. § 102(b) by Barthel.2 2 Barthel, US 6,953,431 B2, issued Oct. 11, 2005. 2 Appeal 2016-001928 Application 14/538,283 III. Claims 49-51 and 54 under 35 U.S.C. § 102(b) by Wilk.3 IV. Claims 53 and 59-62 under 35 U.S.C. § 103(a) over Wilk and Niwa.4 V. Claim 52 under 35 U.S.C. § 103(a) over Wilk and Vennes.5 VI. Claim 63 under 35 U.S.C. § 103(a) over Wilk, Niwa, and Barthel. I-ENABLEMENT The Examiner rejected claims 55—58 as not enabled. (Final Act. 2—3.) The Examiner finds “[cjlaim 55 recites ‘wherein the balloon is inflated prior to insertion into the non-insufflated bowel’ which directly contradicts the method steps of independent claim 49.” {Id. at 2 (emphasis added by Examiner).) The Examiner similarly finds claim 57 contradicts claim 49. {Id. at 3.) According to the Examiner, claim 49, from which claims 55—58 depend, “recites the steps of inserting a[n] endoscope into the non- insufflated bow[e]l, followed by providing an inflatable balloon and then inflating the balloon (see Figs. 13a-e). Thus, it is unclear how the balloon can be inflated prior to insertion of the endoscope into the bowel?” {Id. at 2-3.) We are not persuaded the Examiner met the burden to show claims 55—58 are not enabled. In making the rejection, the Examiner essentially interprets independent claim 49 as requiring the steps (“a” through “f’) be performed 3 Wilk, US 5,271,383, issued Dec. 21, 1993. 4 Niwa et al., US 8,273,013 B2, issued Sept. 25, 2012. 5 Vennes et al., US 5,620,408, issued Apr. 15, 1997. 3 Appeal 2016-001928 Application 14/538,283 in the exact order listed. (Ans. 3—4.) The Examiner thus interprets claim 49 as requiring the step of “inserting a gastrointestinal endoscope into the non- insufflated bowel” (step “a”) to precede the step of “inflating the balloon” (step “c”). Looking at the language of the claim, however, neither “logic [n]or grammar” requires that interpretation. See Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369 (Fed. Cir. 2003).6 As Appellant points out, steps “a” and “c” “contain no express language of order, and there is no implication in the plain language that any of these steps must necessarily be performed in any order either (or even simultaneously).” (App. Br. 9.) In contrast, some steps in claim 49 do require an order. For example, step “b” of “providing an inflatable balloon” logically precedes step “c” of “inflating the balloon,” and step “e” recites “positioning the inflated balloon . . .,” which logically and grammatically means “inflating the balloon” must have already taken place. (App. Br. 18 (emphasis added); see also App. Br. 9; Reply Br. 3.) The Specification also supports an interpretation where the balloon may be inflated before or after the endoscope and balloon are inserted. As Appellant notes, the Specification discloses “[ijnitial inflation and/or 6 The Federal Circuit in Altiris describes the “two-part test” for determining if steps of a method claim must be performed in the order recited. Altiris, 318 F.3d at 1369. According to the court, “[f]irst, we look to the claim language to determine if, as a matter of logic or grammar, they [the steps] must be performed in the order written. ... If not, we look to the rest of the specification to determine whether it directly or implicitly requires such a narrow construction.” Id. at 1369—70 (citations and internal quotation marks omitted). Upon applying this test, the court held that certain steps of the claim required an order, while other steps in that claim did not. Id. at 1370. 4 Appeal 2016-001928 Application 14/538,283 hyperinflation of the transparent dome 1210 [e.g., balloon] may occur after inserting the scope 120 and the transparent dome 1210 into the bodily cavity, or they may occur beforehand.” (Spec. 10:10-12; App. Br. 9.) So, the Specification is consistent with a broadest reasonable interpretation of claim 49 that encompasses, inter alia, inflation of the balloon before the endoscope and balloon are inserted into the non-insufflated bowel. In other words, steps “b” and “c” may occur before steps “a” and “d” of claim 49, such as logically and grammatically required in claims 55—58. The Examiner responds that, if the steps of claim 49 are not intended to be performed in order, “there would be no need to explicitly list ‘steps a- f, as doing so would only lead to confusion.” (Ans. 3.) We considered the alphabetical labeling of the steps, but we are not persuaded this labeling overrides other factors supporting a broader interpretation of claim 49 — where all the steps need not be performed in order. As explained, there is no logical or grammatical link requiring the “inserting” step(s) come before the “inflating” step, and dependent claims (e.g., 55) and the Specification indicate the balloon may be inflated first, then inserted. The Examiner focuses on the embodiment shown in Figure 13 in making the enablement rejection. (Final Act. 3; Ans. 4 (“Figures 13a-e of the current specification . . . fail[] to clearly illustrate o[r] disclose that the balloon is inflated prior to being inserted through a channel of the endoscope.”).) Fooking only at that embodiment, it is somewhat unclear how an inflated balloon would be inserted through a lumen/channel of the 5 Appeal 2016-001928 Application 14/538,283 endoscope that is already inserted into the bowel.7 Appellant’s Specification and claim 49 are not, however, limited to the single embodiment shown in Figure 13. And, for the reasons explained, claim 49 does not require inserting the endoscope and inflatable balloon before inflating the balloon. For these reasons, we reverse the rejection of claims 55—58 as not enabled. II & III - ANTICIPATION The Examiner rejected claims 49—51 and 54 as anticipated by Barthel or Wilk (Rejections II and III). Both rejections turn on a single issue — whether Barthel or Wilk disclose performing a gastrointestinal endoscopic procedure within the “non-insufflated bowel” of the subject as required by the method recited in claim 49. We thus address the rejections together. The Examiner finds, and Appellant does not dispute, that Barthel and Wilk disclose an endoscope that is structurally indistinguishable from the gastrointestinal endoscope used in method claim 49. (Final Act. 3—5; App. Br. 11—16.) The Examiner also finds Barthel and Wilk disclose all steps of the claimed method, including, for example, “inserting the inflatable balloon into the non-insufflated bowel” and “moving the gastrointestinal endoscope within the non-insufflated bowel.” (Final Act. 3^4 (citing Figs. 1—5 and 6:38—7:29 from Barthel) and 5 (citing Figs. 2a—d and 4:1—37 of Wilk).) Appellant argues “Barthel and Wilk neither expressly nor inherently discloses the repeated limitations of independent claim 49 that the various 7 See Atlas Powder Co. v. E.I. Du Pont De Nemours & Co., 750 F.2d 1569, 1576 (Fed. Cir. 1984) (“Even if some of the claimed combinations were inoperative, the claims are not necessarily invalid.”). 6 Appeal 2016-001928 Application 14/538,283 method steps are performed with respect to a ‘non-insufflated bowel.’” (App. Br. 11.) Appellant points out that “neither reference makes any mention of insufflation of the bowel.” (Id. at 14.) Appellant contends the Examiner, in demanding evidence for the alleged absence of this limitation in Barthel and Wilk, “appears to reverse the burden” and improperly place it on Appellant. (Id. at 13.) According to Appellant, “it is the Office’s burden to show—using ‘supporting evidence’—where the reference discloses each and every limitation of the claims.” (Id. (quoting portion of Final Act. 10).) Appellant also argues the Examiner provided no evidence “establish[ing] that Barthel or Wilk necessarily disclose the recited limitations,” yet “there is evidence in the record to support the opposite conclusion.” (Id. at 14—15.) Appellant cites Figures in Barthel and Wilk and contends the spaces/gaps between the inserted endoscope and lumen walls that are depicted “is more consistent with an insufflated bowel than a non-insufflated bowel.” (Id. at 15 (citing Figs. 1 and 2A of Barthel and Fig. 2C of Wilk).) Appellant contends the “Specification provides additional evidence that the cited art would not necessarily disclose non-insufflation” because the Specification describes the “use [of] air or water insufflation to ‘open up’ the lumen or colon from ‘its normally collapsed state resembling a collapsed tortuous hose’” and further describes insufflation as the “conventional” approach to endoscopy of the bowel. (Id. at 15—16 (quoting Spec. 1:12—22, 1:26—29, and 6:9—15).)8 Thus, according to Appellant, a 8 The Specification states that “the present invention is very useful in small bowel enteroscopy, the procedure being performed in a much shorter time 7 Appeal 2016-001928 Application 14/538,283 skilled artisan reviewing the teachings of Barthel and Wilk “would more likely expect insufflation, and he would view the figures as illustrating insufflation as would be conventional in those procedures.” {Id. at 16.) Appellant’s arguments are persuasive. “Anticipation requires that all of the claim elements and their limitations are shown in a single prior art reference.” In re Skvorecz, 580 F.3d 1262, 1266 (Fed. Cir. 2009). Yet the Examiner failed to show, by a preponderance of the evidence on this record, that Barthel or Wilk disclose an endoscopic procedure in a “non-insufflated bowel of a subject” as required in method claim 49. Appellant’s Specification suggests the colon and bowel are normally in a collapsed state and that insufflation is conventionally used to open up the lumen for traversal and imaging by an endoscope. (See Spec. 1:12—29 and 6:9—15.) The Figures of Barthel and Wilk do not clearly show an endoscope within a collapsed bowel, and arguably show an endoscope within a dilated lumen consistent with insufflation as Appellant asserts. The Examiner responds that “one can NOT assume the bowel is insufflated merely due to ‘spaces’ shown in the figures.” (Ans. 5—6.) But the burden to show each limitation of claim 49 in Barthel or Wilk is upon the Examiner. That burden is not discharged by assuming the references disclose use of an endoscope in a non-insufflated bowel. We also recognize the Examiner’s assertions that insufflation is complex, expensive, and may cause bloating and pain. Those disadvantages might provide reasons to modify conventional procedures and avoid and with less technical complexity than with conventional methods involving insufflations of the bowel.” (Spec. 6:9-15.) 8 Appeal 2016-001928 Application 14/538,283 insufflation. Indeed, problems with insufflation appear, at least in part, to have motivated Appellant’s invention. (See, e.g., Spec. 6:9-15.) This is, however, a rejection for anticipation — not obviousness. And the Examiner did not persuasively respond to Appellant’s argument that insufflation is conventional practice in endoscopy of the bowel, and that Barthel and Wilk appear consistent with this interpretation. In short, we are unpersuaded that Barthel or Wilk expressly or inherently disclose the various steps being carried out in the “non-insufflated bowel” as required in claim 49. For the above reasons, we reverse the rejection of claims 49-51 and 54 as anticipated by Barthel or Wilk. IV, V, & VI - OBVIOUSNESS Rejections IV and V rely on the Examiner’s findings with respect to Wilk, which we found unpersuasive as explained above. (Final Act. 6—7.) The Examiner does not show that the secondary references of Niwa or Vennes remedy Wilk’s deficiencies with respect to independent claim 49. (Id.) Rejection VI is based on the combination of Wilk, Vennes, and Barthel, but the Examiner again relies on Wilk as teaching the method of claim 49. (Id. at 8.) The Examiner does not show that Vennes or Barthel make up for Wilk’s deficiencies as to claim 49. (Id.) Accordingly, we reverse Rejections IV, V, and VI. 9 Appeal 2016-001928 Application 14/538,283 SUMMARY We reverse the rejection of claims 55—58 as not enabled. We reverse the rejection of claims 49—51 and 54 as anticipated. We reverse the rejection of claims 52, 53, and 59—63 as obvious. REVERSED 10 Copy with citationCopy as parenthetical citation