Ex Parte Dlugos

Board of Patent Appeals and Interferences

Nov 30, 2010

11182070 (B.P.A.I. Nov. 30, 2010)

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.
11/182,070 07/15/2005 Daniel F. Dlugos END-5527 4806
21884 7590 11/30/2010
WELSH FLAXMAN & GITLER LLC
2000 DUKE STREET, SUITE 100
ALEXANDRIA, VA 22314
EXAMINER
LACYK, JOHN P
ART UNIT PAPER NUMBER
3735
MAIL DATE DELIVERY MODE
11/30/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DANIEL F. DLUGOS
____________

Appeal 2009-008739
Application 11/182,070
Technology Center 3700
____________

Before JOHN C. KERINS, STEFAN STAICOVICI, and
FRED A. SILVERBERG, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-008739
Application 11/182,070

STATEMENT OF THE CASE
Daniel F. Dlugos (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision finally rejecting claims 1 and 4-21. Claims 2 and 3
have been canceled. We have jurisdiction over this appeal under 35 U.S.C.
§ 6.

THE INVENTION
Appellant’s invention relates to a balloon based gastric band having
mating ends ensuring a complete loop about the stomach wall. Spec. 2: 2-4
and figs. 1 and 2.
Claim 14 is representative of the claimed invention and reads as
follows:
14. A gastric band, comprising:
a balloon shaped and dimensioned to circumscribe the
stomach at a predetermined location;
the balloon includes a longitudinally extending body
having a first end and second end, which when aligned create a
generally continuous surface along an inner surface of the
gastric band as the inner surface transitions between the first
and second ends of the balloon.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Robert US 2002/0198548 A1 Dec. 26, 2002
Benchetrit US 2003/0158564 A1 Aug. 21, 2003

The following rejections are before us for review:
The Examiner rejected claims 1, 4, 5, 9, 14-17, 19 and 21 under 35
U.S.C. § 103(a) as being unpatentable over Benchetrit.
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The Examiner rejected claims 6-8, 10-13, 18 and 20 under 35 U.S.C.
§ 103(a) as being unpatentable over Benchetrit and Robert.

THE ISSUES
1. Whether Benchetrit teaches a gastric band including a balloon having
first and second ends, wherein alignment of the first and second ends
create “a generally continuous surface along an inner surface of the
gastric band as the inner surface transitions between the first and
second ends of the balloon,” as required by independent claim 14.
2. Whether the combined teachings of Benchetrit and Robert would have
prompted a person of ordinary skill in the art to provide the gastric
band of Benchetrit with a belt, as taught by Robert.
3. Whether the Examiner has provided an adequate reason based on
rational underpinning to show why a person of ordinary skill in the art
would have used a tongue and groove profile or an angled surface
profile to mate the first and second ends of the gastric band of
Benchetrit.

SUMMARY OF DECISION
We AFFIRM-IN-PART and ENTER NEW GROUNDS OF
REJECTION PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R. §
41.50(b).

OPINION
Issue (1)
Appellant argues the rejection of claims 14, 17 and 19 under 35
U.S.C. § 103(a) together as a group. App. Br. 9-12. Therefore, in
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Application 11/182,070

accordance with 37 C.F.R. § 41.37(c)(1)(vii), we have selected claim 14 as
the representative claim to decide the appeal, with claims 17 and 19 standing
or falling with claim 14.
Appellant argues that Benchetrit fails to disclose a balloon having first
and second ends, which when aligned, create a generally continuous surface
along an inner surface as the inner surface transitions between the first end
and second end of the balloon. App. Br. 9-10, Reply Br. 1-2. According to
Appellant, “[w]hile end portions 5, 6 do define where the compression
chamber 3 begins and ends, the end portions 5, 6 are not actually part of the
compression chamber 3” and as such, the compression chamber 3 “does not
create a generally continuous surface along an inner surface of the gastric
band.” App. Br. 10-11. Appellant further argues that the first and second
ends of the compression chamber of Benchetrit “never actually mate.” App.
Br. 11.
We find Appellant’s arguments unpersuasive for essentially the same
reasons as the Examiner. The Examiner found, and we agree, that in Figure
1 of Benchetrit, “the ends of the chamber (generally elements 5 and 6) do
‘mate’ to form the continuous and uniform inner surface.” Ans. 5.
Moreover, Benchetrit specifically states that compression chamber 3 is
“defined by the walls 4 of the flexible strip 2 and by two end portions 5 and
6.” Benchetrit, para. [0028]. Thus, in contrast to Appellant’s position, we
find that end portions 5 and 6 are part of compression chamber 3.
Furthermore, as pointed out by the Examiner:
Benchetrit specifically states (paragraph 0028) that
the compression chamber forms having a profile
that avoids any pinch zones that could nip the
walls of the stomach, which would clearly be an
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inner surface since that is the surface that is in
contact with the stomach. Benchetrit further states
that this implies a contact surface with the stomach
being continuous and uniform to form a
compression zone the (sic, that) is almost perfect.”
Ans. 4-5. Emphasis added.
Since Benchetrit discloses that the end portions 5 and 6 of
compression chamber 3 mate to form a uniform and continuous contact
surface with the stomach so as to avoid any pinch zones, we find that
Benchetrit discloses a balloon in which its first and second ends are aligned
to create a generally continuous surface along an inner surface as the inner
surface transitions between the first end and second end of the balloon, as
called for by claim 14. Accordingly, the rejection of claim 14, and of claims
17 and 19, which fall with claim 14, is sustained.

Issue (2)
Appellant argues that the Examiner’s proposed combination of the
gastric band of Benchetrit and the belt of Robert is improper because there is
“no reason for making such a modification.” App. Br. 14. According to
Appellant,
In particular, Benchetrit discloses a rather
distinctive gastric band construction in which the
end portions 5, 6 interact with an adjustment
catheter 7 to locking the gastric band in a desired
orientation. Since these components are highly
distinctive and their interplay dictates the
construction employed by Benchetrit there is no
reason one would contemplate the addition of a
belt to the structure disclosed by Benchetrit. If one
were to contemplate the use of a belt as disclosed
by Robert, the manner in which the belt would be
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incorporated into the structure of Benchetrit is
entirely unsupported by the references.
App. Br. 15.
We disagree with Appellant’s arguments because obviousness does
not require that all of the features of the secondary reference be bodily
incorporated into the primary reference. In re Keller, 642 F.2d 413, 425
(CCPA 1981). Moreover, the artisan is not compelled to blindly follow the
teaching of one prior art reference over the other without the exercise of
independent judgment. Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881,
889 (Fed. Cir. 1984). In this case, we agree with the Examiner that
Benchetrit discloses all of the features of claim 10 with the exception of “a
belt attached to the balloon or compression chamber.” Ans. 6.
We further agree with the Examiner that Robert discloses a gastric band
including a balloon or compression chamber 21 and that the outer surface
of the balloon or compression chamber 21 is provided with a non-
extensible outer retaining strap 42, i.e., a belt. Ans. 6. See also, Robert,
para. [0020] and fig. 4. As such, Appellant’s claimed gastric band is
nothing more than Benchetrit’s gastric band to which the belt of Robert’s
gastric band has been added. Moreover, the Examiner has articulated a
reasoning with rational underpinning to modify Benchetrit’s gastric band
with the belt of Robert’s gastric band, namely, to “allow for the device to
operate more efficiently by preventing the outer surface from extending
and thereby allowing the device to operate better.” Ans. 7. As such,
modifying the gastric band of Benchetrit to include the belt of Robert’s
gastric band would not have been uniquely challenging to a person of
ordinary skill in the art, because it is “the mere application of a known
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technique to a piece of prior art ready for the improvement.” KSR Int'l.
Co. v. Teleflex lnc., 550 U.S. 398, 417 (2007). The modification appears to
be the product not of innovation but of ordinary skill and common sense.
An improvement that is nothing more than the predictable use of prior art
elements according to their established functions is likely to be obvious.
Id. Moreover, Appellant has not alleged, much less shown, that the
modification of Benchetrit to provide the belt of Robert’s gastric band
would have been beyond the skill of a person of ordinary skill in the art. In
conclusion, we agree with the Examiner that it would have been obvious
for a person of ordinary skill in the art to provide the belt of Robert to the
gastric band of Benchetrit in order to “allow for the device to operate more
efficiently by preventing the outer surface from extending and thereby
allowing the device to operate better.” Ans. 7.
As such, for the foregoing reasons, the rejection of claim 10 under
35 U.S.C. § 103(a) as being unpatentable over Benchetrit and Robert is
sustained. Appellant does not present any additional arguments with
respect to dependent claim 13. Accordingly, the rejection of claim 13 is
likewise sustained.
Lastly, with respect to claims 18 and 20, Appellant merely relies on
the same arguments as those presented with respect to independent claim
14, from which claims 18 and 20 depend. App. Br. 11. Therefore, for the
reasons discussed supra, we shall also sustain the rejection of claims 18
and 20 over the combined teachings of Benchetrit and Robert.

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Issue (3)
Claims 1, 4-9, 12, and 16
Each of claims 1, 4-9, 12 and 16, requires that the first and second
ends of the claimed gastric band be formed with tongue and groove profiles
that mate when brought together. App. Br., Claims Appendix. The
Examiner takes the position that “Benchetrit does not specifically teach
using a tongue and groove profile … to mate the end portions of the device.”
Ans. 5. The Examiner then merely states that the modification of Benchetrit
“would have been an obvious matter of design choice.” Ans. 5. Appellant
argues that the Examiner has not provided an adequate reason based on
rational underpinning to show why a person of ordinary skill in the art would
have used a tongue and groove profile to mate the end portions of the gastric
band of Benchetrit. App. Br. 12 and 16; Reply Br. 2-3.
We find Appellant’s argument persuasive because the Examiner has
not provided any factual evidence to show why a person of ordinary skill in
the art would have specifically chosen a tongue and groove profile instead of
other types of mating profiles to mate the end portions of Benchetrit’s
gastric band. Moreover, it is not clear how the Examiner is proposing to
modify the gastric band of Benchetrit or that of Benchetrit as modified by
Robert, so as to include a tongue and groove profile. Such a modification
would require further modification to the structure of Benchetrit to include a
tongue and groove profile on ends 5, 6 of compression chamber 3. The
Examiner does not make findings regarding modifying the structure of
Benchetrit to include a tongue and groove profile so as to mate the ends 5, 6,
together, nor does the Examiner explain why it would have been obvious to
modify Benchetrit as such when the structure of Benchetrit already includes
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projection 13 for reversibly locking the gastric band. See Benchetrit, paras.
[0037] and [0050]. Therefore, the Examiner’s legal conclusion of
obviousness is not supported by facts, and thus, cannot stand. See In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967) (holding that “[t]he legal
conclusion of obviousness must be supported by facts. Where the legal
conclusion is not supported by facts it cannot stand.”)
Accordingly, the rejection of claims 1, 4, 5, 9 and 16 under 35 U.S.C.
§ 103(a) as unpatentable over Benchetrit cannot be sustained. For the same
reasons, the rejection of claims 6-8 and 12 under 35 U.S.C. § 103(a) as
unpatentable over Benchetrit and Robert likewise cannot be sustained.

Claims 11, 15, and 21
Each of claims 11, 15, and 21, requires that the first and second ends
of the claimed gastric band be formed with angled surfaces, which mate
when brought together. App. Br., Claims Appendix. The Examiner takes
the position that “Benchetrit does not specifically teach using . . . angled
surfaces to mate the end portions of the device.” Ans. 5. The Examiner then
merely states that the modification of Benchetrit “would have been an
obvious matter of design choice.” Ans. 5. Appellant argues that the
Examiner has not provided an adequate reason based on rational
underpinning to show why a person of ordinary skill in the art would have
used an angled surface to mate the end portions of the gastric band of
Benchetrit. App. Br. 12 and 16; Reply Br. 2-3.
We find the Examiner’s interpretation of the disclosure of Benchetrit
to be unreasonably narrow. It is well established that claims are to be given
their broadest reasonable interpretation consistent with the specification. In
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re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). In
this case, we find that the first and second ends 5 and 6 of Benchetrit’s
gastric band are formed with angled surfaces, i.e., 90° angles, which mate
when the first and second ends are brought together. See Benchetrit, figs. 1
and 2. As such, we conclude that the recitation of “angled surfaces” in
claims 11, 15 and 21, when given its broadest reasonable interpretation, does
not in fact distinguish the subject matter of claims 11, 15 and 21,
respectively.
Accordingly, the rejection of claims 15 and 21 under 35 U.S.C.
§ 103(a) as unpatentable over Benchetrit is affirmed. For the same reasons,
the rejection of claim 11 under 35 U.S.C. § 103(a) as unpatentable over
Benchetrit and Robert is likewise affirmed. However, we denominate the
affirmance of these rejections as new grounds of rejection pursuant to
37 C.F.R. § 41.50(b), because our interpretation of the disclosure of
Benchetrit as well as our interpretation of the claim limitation directed to
“angled surfaces” are different from those of the Examiner.

CONCLUSIONS
1. Benchetrit teaches a gastric band including a balloon having
first and second ends, wherein alignment of the first and second
ends creates “a generally continuous surface along an inner
surface of the gastric band as the inner surface transitions
between the first and second ends of the balloon,” as required
by independent claim 14.
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2. The combined teachings of Benchetrit and Robert would have
prompted a person of ordinary skill in the art to provide the
gastric band of Benchetrit with a belt, as taught by Robert.
3. The Examiner has not provided an adequate reason based on
rational underpinning to show why a person of ordinary skill in
the art would have used a tongue and groove profile or an
angled surface profile to mate the first and second ends of the
gastric band of Benchetrit.

DECISION
The Examiner’s decision is affirmed as to claims 10, 11, 13-15, and
17-21 and reversed as to claims 1, 4-9, 12, and 16.
For the reasons discussed above, we denominate our affirmance of the
rejections of claims 11, 15, and 21 as new grounds of rejection pursuant to
37 C.F.R. §41.50(b).
Regarding the affirmed rejection(s) that have not been denominated as
new grounds of rejection, 37 C.F.R. § 41.52(a)(1) provides "Appellant may
file a single request for rehearing within two months from the date of the
original decision of the Board."
In addition to affirming the Examiner's rejection(s) of one or more
claims, this decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
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the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an
appropriate amendment of the claims so rejected or
new evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the
examiner, in which event the proceeding will be
remanded to the examiner. . . .
(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board
upon the same record. . . .
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.
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)(2009).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

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WELSH FLAXMAN & GITLER LLC
2000 DUKE STREET, SUITE 100
ALEXANDRIA, VA 22314
13