Ex Parte Weaner et alDownload PDFPatent Trial and Appeal BoardSep 18, 201511798501 (P.T.A.B. Sep. 18, 2015) 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. 11/798,501 05/14/2007 Lauren S. Weaner END-6043 5811 21884 7590 09/21/2015 WELSH FLAXMAN & GITLER LLC 2000 DUKE STREET, SUITE 100 ALEXANDRIA, VA 22314 EXAMINER DORNA, CARRIE R ART UNIT PAPER NUMBER 3735 MAIL DATE DELIVERY MODE 09/21/2015 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 LAUREN S. WEANER, JEFFREY P. WILEY, KRISTIN L. JAMBOR, CHRISTOPHER W. WIDENHOUSE, and PATRICK J. SWINDON ____________________ Appeal 2013-009813 Application 11/798,501 Technology Center 3700 ____________________ Before: CHARLES N. GREENHUT, ANNETTE R. REIMERS, and GEORGE R. HOSKINS, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1, 12–14, and 16–18. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The claims are directed to a gastric band with an engagement member. Claim 1, reproduced below, the sole independent claim on appeal, is illustrative of the claimed subject matter: Appeal 2013-009813 Application 11/798,501 2 1. A gastric band, comprising: a gastric band body including a belt and an elongated balloon; the belt includes an inner surface and an outer surface, the outer surface being substantially smooth and forming a substantial portion of an outer surface of the gastric band when the gastric band is secured to a patient and the inner surface of the belt is shaped and dimensioned for attachment to an outer surface of the balloon, the belt having a first end and second end, the first end and the second end being provided with a respective first latching member and a second latching member relatively moveable between a latched position and an unlatched position wherein the second latching member is shaped and dimensioned for passage through the first latching member when the first latching member and the second latching member are in the latched position, the first end including a tip and an engagement member proximal to the first latching member such that the engagement member is on a side of the first latching member opposite the tip; and wherein the engagement member includes a bottom surface adjacent to and protecting the balloon and a top surface shaped and dimensioned for gripping of the engagement member. REJECTIONS Claim 1 is rejected under 35 U.S.C. § 102(b) as being anticipated by U.S. Patent Application Publication No. 2004/0267288 A1, pub. Dec. 30, 2004 (Byrum ’288). Final Act. 2. Claims 12–14 and 16–18 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Byrum ’288 and U.S. Patent Application Publication No. 2004/0267293 A1, pub. Dec. 30, 2004 (Byrum ’293). Final Act. 3. Appeal 2013-009813 Application 11/798,501 3 OPINION Regarding the disputed “engagement member” limitation (Reply Br. 1–2) the Examiner found that The bottom surface (Figure 5, 46b) of the enlarged portion (46) is located between the balloon and the remainder of the enlarged portion (46) and external environment when the first and second ends of the gastric band of Byrum et al. '288 are secured, as shown in Figure 5. Thus, the bottom surface offers protection of the balloon at that location. Ans. 2 (emphasis omitted). First, it is not clear what type of “protection” the Examiner believes is afforded by the bottom surface of the enlarged portion 46 of the strap 32 disclosed by Byrum ’288. The Examiner’s finding in this regard relates to a functional recitation in claim 1 and, as Byrum ’288 is silent on the matter, ultimately relates to a factual question of inherency. See MPEP § 2112. In order for us to provide any meaningful appellate review, such facts must necessarily be made of record. In re Zurko, 258 F.3d 1379, 1386 (Fed. Cir. 2001). Second, claim 1 requires the bottom surface of the engagement member to be “adjacent to” the balloon, not merely “between” the balloon and some other portion of the engagement member. The Examiner fails to address this language of the claim. In light of the location of the balloon 38 relative to strap portion 46, as is evident when viewing the cited Figure 5 in conjunction with Figure 3, is not apparent why the Examiner believes this limitation to be satisfied by the device of Byrum ’288. As the Examiner has not established that each and every limitation of claim 1 is met by Byrum’228, the anticipation rejection cannot be sustained. Appeal 2013-009813 Application 11/798,501 4 As the Examiner does not apply Byrum’293 in a manner that cures this deficiency, we also reverse the rejection under 35 U.S.C. § 103(a). DECISION The Examiner’s rejections are reversed. REVERSED Klh Copy with citationCopy as parenthetical citation