Ex Parte Scirica et al

Patent Trials and Appeals Board

Feb 27, 2013

11374573 - (D) (P.T.A.B. Feb. 27, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte PAUL A. SCIRICA, HENRY E. HOLSTEN, BRIAN CRESTON,
FRANK J. VIOLA, and KEITH L. MILLIMAN
__________

Appeal 2011-008296
Application 11/374,573
Technology Center 3700
__________

Before TONI R. SCHEINER, DONALD E. ADAMS, and
LORA M. GREEN, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner‟s rejection of claims 16-23 and 26. We have jurisdiction under 35
U.S.C. § 6(b).
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Application 11/374,573

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STATEMENT OF THE CASE
The invention relates to an “adjustable gastric band configured to be
positioned about a portion of the digestive tract of the patient, a driver
assembly operatively associated with the gastric band and a transmission
assembly configured to affect movement between the driver assembly and
the adjustable gastric band” (Spec. 2). The Specification teaches:
The driver assembly includes an internal component or
driver configured to be positioned within the patient and an
external component or key operatively associated with the
internal component. The external component is configured to
transdermally move the internal component. The external
and/or internal components include one or more magnetized
members so as to affect movement of the internal component in
response to movement of the external component. In one
embodiment, both the internal and external components include
one or more magnetized members of opposing polarities. The
internal component is rotatably mounted within a housing.
Manual rotation of the external component when positioned
adjacent the internal component causes the internal component
to rotate within the housing.

(Id.) The Specification teaches that the drive assembly may “contain a
plurality of magnets that can be oriented in various ways both symmetrically
and/or asymmetrically” (id. at 7).
Claim 16 is the only independent claim on appeal, and reads as
follows:
16. A transdermally operated gastric banding assembly comprising:
an adjustable gastric band comprising slots disposed along the
circumference of the gastric band;
a drive assembly having an internal component and an external
component, the external component being spaced from the internal
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component and being movable to effect corresponding movement of the
internal component; and
a transmission assembly for transferring movement of the internal
component to the adjustable gastric band,
wherein the external component effects movement of the internal
component by a magnetic force,
wherein the internal component and the external component include at
least two magnetized fingers which are oriented relative to each other such
that the internal component and external component so configured will only
function together,
wherein the external component acts as a key to effect movement of
the internal component within the body,
wherein the gastric band is configured to retain a substantially circular
configuration as the gastric band moves between an expanded position and a
contracted position,
wherein the at least two magnetized fingers of the internal and
external components includes at least three magnetized fingers having
different polarities, and
wherein the at least three magnetized fingers are oriented
asymmetrically about a circumference of the internal or external component.

The following ground of rejection is before us for review:
Claims 16-23 and 26
1
stand rejected under 35 U.S.C. § 103(a) as
being rendered obvious by the combination of De Bennetot,
2
Dargent,
3
and
Sohn.
4

We affirm.

1
The statement of the rejection includes claim 15 (Ans. 4), but claim 15 has
been cancelled (App. Br. 9).
2
De Bennetot, US 3,749,098, issued July 31, 1973.
3
Dargent et al., US 6,547,801 B1, issued Apr. 15, 2003.
4
Sohn, US 5,762,599, issued Jun. 9, 1998.
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ANALYSIS
The Examiner relies on De Bennetot for teaching a “transdermally
operated gastric banding assembly” (Ans. 3). Specifically, relying on Figure
2 of De Bennetot, the Examiner finds that the patent teaches internal and
external components that comprise at least three magnetized fingers which
are oriented asymmetrically about a circumference (id. at 4).
The Examiner relies on Dargent for teaching a gastric band that
comprises slots disposed along the circumference of a gastric band (id.).
The Examiner relies on Sohn for teaching “magnetically-coupled
implantable medical devices comprising multiple magnets with opposite
poles positioned adjacent to each other” (id. at 5).
The Examiner concludes “it would have been obvious to one of
ordinary skill in the art at the time of the invention to modify the band of De
Bennetot with the mechanism of Dargent in order to provide a reliable, safe
means of constricting a hollow organ” (id. at 4 (emphasis removed)). The
Examiner concludes further that positioning the magnets by alternating
polarities as taught by Sohn would have yielded predictable results (id. at 5).
Appellants argue Figure 2 of De Bennetot shows “four pole pieces 12-
15 which are symmetrically positioned around a circumference of a driving
rotor/driven rotor 16 with teeth 16a-16d” (App. Br. 11). Appellants assert
that De Bennetot does not teach or suggest orienting the poles
asymmetrically, and the use of the transitional phrase does not cure that
deficiency (id. at 11-12). Appellants also assert that Dargent also does not
teach that requirement of claim 16 (id. at 12).
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The Examiner responds that independent claim 16 uses the
transitional term of “comprising,” and thus even though the embodiment
shown in Figure 2 of De Bennetot has four fingers, it “comprises” “at least
three magnetized fingers … which are oriented asymmetrically around a
circumference” (Ans. 5). That is, the claim language does not “exclude the
fourth magnetized finger of De Bennetot reference” (id.).
We conclude that the Examiner has established a prima facie case of
obviousness. Our mandate is to give claims their broadest reasonable
interpretation in view of the Specification. In re American Academy Of
Science Tech Center, 367 F.3d 1359, 1364 (Fed. Cir. 2004). “An essential
purpose of patent examination is to fashion claims that are precise, clear,
correct, and unambiguous. Only in this way can uncertainties of claim scope
be removed, as much as possible, during the administrative process.” In re
Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989). In addition, “[i]n the patent claim
context, the term „comprising‟ is well understood to mean „including but not
limited to.‟” CIAS, Inc. v. Alliance Gaming Corp., 504 F.3d 1356, 1360
(Fed. Cir. 2007).

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Figure 2 of De Bennetot is reproduced below:

Figure 2 shows a driving rotor that has four permanent magnets 8-11 having
pole pieces 12-15 that cooperate with teeth 16a to 16d of the driven rotor
(De Bennetot, col. 2, ll. 22-25). While the four teeth 16a-16d are oriented
symmetrically around the circumference, the driven rotor comprises “at least
three magnetized fingers [that] are oriented asymmetrically about a
circumference,” as required by claim 16. That is, any three of the teeth 16a-
16d are oriented asymmetrically around the circumference. In addition, that
interpretation is consistent with the present Specification, as the
Specification teaches that the drive assembly may “contain a plurality of
magnets that can be oriented in various ways both symmetrically and/or
asymmetrically” (Spec. 7).
Appellants argue further that Sohn fails to teach or suggest “the
limitations of „the internal component and the external component include at
least two magnetized fingers which are oriented relative to each other such
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that the internal component and external component so configured will only
function together, wherein the external component acts as a key to effect
movement of the internal component within the body …‟” (App. Br. 16).
Specifically, Appellants assert that Sohn discloses discs or cylinders having
magnetic poles formed therein, and does not teach or suggest magnetized
fingers that
are oriented relative to each other such that the internal
component and external component so configured will only
function together, wherein the external component acts as a key
to effect movement of the internal component within the body,
nor does Sohn disclose, teach or suggest at least three
magnetized fingers that are oriented asymmetrically about a
circumference of the internal or external component, as recited
by claim 16.

(id. at 17-18).
The Examiner responds that “coupling the fingers of De Bennetot
with sequential poles as shown by Sohn would facilitate the rotational
engagement of the internal component and Sohn teaches that the ratio of the
internal/external poles can vary depending on the desire torque and speed
(Col 6, Lines 29-37)” (Ans. 6-7 (emphasis removed)).
We agree with the Examiner‟s response. In addition, while
Appellants emphasize the term “key,” they point to no definition in the
Specification that limits the structure of either the internal component or the
external component based on the use of that term. In fact, the Specification
teaches that the driver assembly comprises an internal component positioned
within the patient, and an external component or „key‟ operatively associated
with the internal component, which is “configured to transdermally move the
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internal component” (Spec. 2). Thus, all that is required is that the external
component is operatively associated with the internal component, such that
the internal component may be moved transdermally. That limitation is met
by the combination as set forth by the Examiner.

SUMMARY
We affirm the rejection of claims 16-23 and under 35 U.S.C. § 103(a)
as being rendered obvious by the combination of De Bennetot, Dargent, and
Sohn.

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

cdc