Ex Parte Snow

Patent Trial and Appeal Board

Sep 29, 2016

13103767 (P.T.A.B. Sep. 29, 2016)

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.
13/103,767 05/09/2011 Sean Snow A-8919 9918
119800 7590 09/29/2016
Gordon & Jacobson, P.C.
60 Long Ridge Road
Suite 407
Stamford, CT 06902
EXAMINER
PARK, PATRICIA JOO YOUNG
ART UNIT PAPER NUMBER
3777
MAIL DATE DELIVERY MODE
09/29/2016 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 SEAN SNOW
____________________

Appeal 2015-000361
Application 13/103,767
Technology Center 3700
____________________

Before BRETT C. MARTIN, JILL D. HILL, and PAUL J. KORNICZKY,
Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 from a rejection of
claims 1–8, 10–19, 21, and 22. Claims 9 and 20 were indicated as
containing allowable subject matter. We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.

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CLAIMED SUBJECT MATTER
The claims are directed to “a system for detecting whether a needle
inserted into a body or a patient has come into contact with or in close
proximity to a sensitive portion of the implanted gastric banding system
(e.g., the tube connecting the access port to the gastric band).” Spec. ¶ 1.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. An implant detection system for detecting whether a
needle is in contact with a conductive component of a gastric
banding system for the treatment of obesity and/or obesity-
related diseases, the implant detection system comprising:
a gastric band having an inflatable portion disposed about
a stomach of a patient;
a tubing having an exterior surface and fluidly coupled to
the inflatable portion of the gastric band at a first end;
a conductive film covering the exterior surface of the
tubing, the conductive film serving as the conductive component;
an access port having a septum, the access port coupled to
the tubing at a position located at a second end of the tubing, and
for the addition or removal of fluid from the inflatable portion of
the gastric band via the tubing;
a syringe having a plunger and a barrel, the syringe for
storing the fluid to be added or the fluid to be removed;
a needle having a base and a tip, the base of the needle
coupled to the barrel of the syringe, the needle further having a
channel for carrying the fluid between the base and the tip; and
an electronic indicator coupled to an outside surface of the
needle, such that when the tip of the needle contacts the
conductive film of the tubing, the electronic indicator is
activated.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Doody US 2003/0088186 A1 May 8, 2003
Toly US 2004/0126746 A1 July 1, 2004
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Hacker US 2005/0085743 A1 Apr. 21, 2005
Dlugos US 2006/0211913 A1 Sept. 21, 2006
Dlugos1 US 2007/0167672 A1 July 19, 2007
(hereinafter “Dlugos ’672”)
Strother US 2007/0191915 A1 Aug. 16, 2007
Chandler US 2008/0161884 A1 July 3, 2008

REJECTIONS
Claims 1–3 and 13–21 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Dlugos and Toly. Ans. 3.
Claims 4 and 5 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dlugos, Toly, and Strother. Id. at 6.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dlugos, Toly, and Doody. Id. at 7.
Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dlugos, Toly, and Chandler. Id.
Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dlugos, Toly, Chandler, and Halsey. Id. at 8.
Claims 10 and 12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dlugos, Toly, and Hacker. Id. at 9.
Claim 11 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Dlugos, Toly, and Dlugos ’672. Id. at 10.

1 The Examiner erroneously lists the second Dlugos reference as
2007/0167675 when it is in fact 2007/0167672. See Information Disclosure
Statement submitted September 30, 2011.

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OPINION
Independent Claims 1 and 17
In arguing the rejection of claim 1, the Appellant initially points out
that the Examiner concedes that “Dlugos does not explicitly teach a
conductive film covering the exterior surface of the tubing” and notes that
the Examiner relies on “Toly as remedying the deficiencies of Dlugos.” App.
Br. 10–11 (citing Final Act. 5). The Appellant then provides lengthy
argument as to why the Examiner’s combination is improper. Id. at 10–16.
The Appellant correctly points out that, in the Answer, the Examiner newly
alleges that Dlugos teaches all of the claimed limitations relating to the
gastric band “including conductive tubing (connector is integrally molded
from a metal [0057]).” Reply Br. 2 (emphasis omitted) (citing Ans. 11).
The Appellant next argues that the combination is deficient because neither
Toly nor Dlugos teach the claimed “conductive film.” App. Br 3.
As the Appellant correctly argues, claim 1 “recites ‘a conductive film’
that covers the exterior surface of tubing,” rather than conductive tubing.
Reply Br. 3. Further, while Dlugos may teach a housing that is made of a
conductive material of which port 82 is a part, as the Appellant correctly
argues “Dlugos’ tubing 44…is not described as being conductive and does
not have a conductive film.” Id. Accordingly, regardless of the material of
port 82, it would be covered by tubing 44 that is neither conductive nor
covered by a conductive film as required by claim 1. As such, we do not
sustain the Examiner’s rejection of claim 1 nor its dependent claims 2–8 and
10–12.
Similarly, with regard to claim 17, the Examiner relies on port 82
being made of a conductive material to meet the limitation of “tubing having
a conductive outer layer.” We agree with the Appellant that “housing 80
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and connector 82 are not tubing” as claimed, and that “Dlugos’ tubing 44
[a]s shown in Fig. 1, is not described as being conductive, and is not
described as having a conductive outer layer.” Reply Br. 6. Similarly, as
noted above, tubing 44 “is pushed over the connector 82 and surrounds the
outer surface of the connector 82,” such that there is no conductive outer
layer. Id. Accordingly, we agree with the Appellant that the Examiner erred
in rejecting claim 17 and its dependent claims 18 and 19.
Independent Claims 13 and 21
Claims 13 and 21 do not specifically recite a conductive film or an
outer conductive layer as discussed above, but more generally claim
“activating a warning light when the needle is in contact with the first
portion of the gastric banding system” and “having a warning light that is
activated when the needle is in contact with the conductive element,”
respectively. In other words, these claims relate to feedback to a user as to
when the needle is inserted into an undesirable area, such as the gastric
banding system’s tubing.
The Appellant argues that the Examiner’s combination of Dlugos and
Toly is improper because “[o]ne of ordinary skill in the art would appreciate
that Dlugos is not at all concerned about the position of the needle after it is
inserted through a patient’s skin.” App. Br. 24. This is “because Dlugos
teaches that, when window 302 of sense head 300 is properly aligned with
respect to the port 42, the needle will be injected into septum 76 of port 42
with confidence, and not with any other structure in the body.” Id. We
agree with the Appellant that “one of ordinary skill in the art would not have
been motivated or even interested in the proposed modification of Dlugos
with Toly.” App. Br. 25. Essentially, there is no reason to improve Dlugos
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as asserted by the Examiner because, as the Appellant points out, “Dlugos
teaches away from a condition where a needle is injected when the needle
window 302 of sense head 300 is misaligned.” App. Br. 24 (citing Dlugos
¶ 95).
In other words, Dlugos and the claimed systems are actually
completely opposite in that the claims relate to guiding a needle after
insertion into the body and warning the user if the needle improperly
contacts an undesired portion, while Dlugos is concerned with properly
aligning a needle outside the body to ensure that the needle is properly
inserted through an opening inside the body, thus also obviating any need to
guide the needle after insertion. As stated by the Appellant, Dlugos would
never get to the step of guiding the needle after insertion, because if the
guide is misaligned, then a user of Dlugos’ device would never insert the
needle to begin with. Once the user in Dlugos gets to the point of insertion,
he/she is already confident that the needle is properly located.
Additionally, even if Dlugos were combined with Toly, the needle
would not contact an undesired portion and, thus, provide a warning as
claimed, but rather it would contact a desired portion because the device of
Dlugos would have already properly aligned the needle for insertion. In
either instance, the alleged combination fails to teach the invention claimed
in either of claims 13 or 21. Furthermore, we note that Toly is a teaching aid
and the conductive circuits described therein would and could not be present
in a patient even if Toly were properly combinable with Dlugos because the
conductive portions of Toly do not represent implanted devices as claimed,
but are positioned in simulated tissue to provide feedback as to whether a
user had inserted a needle through the proper portions of human tissue to
arrive at a desired location of the human body, not in relation to implanted
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devices as claimed. Accordingly, we do not sustain the rejection of
independent claims 13 and 21, nor of their dependent claims 14–16 and 22.
DECISION
The Examiner’s rejections of claims 1–8, 10-19, 21, and 22 are
reversed.
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)(1)(iv).

REVERSED