Ex Parte Reydel

Patent Trial and Appeal Board

Jun 16, 2017

14538283 (P.T.A.B. Jun. 16, 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.
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.
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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.
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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.
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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
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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.”).
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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
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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.)
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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.
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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
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