11197544 (B.P.A.I. Jan. 30, 2012)

Ex Parte Ortiz et al

Board of Patent Appeals and InterferencesJan 30, 2012

11197544 (B.P.A.I. Jan. 30, 2012)

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. 11/197,544 08/05/2005 Mark S. Ortiz END-5412 5880 21884 7590 01/30/2012 WELSH FLAXMAN & GITLER LLC 2000 DUKE STREET, SUITE 100 ALEXANDRIA, VA 22314 EXAMINER BACHMAN, LINDSEY MICHELE ART UNIT PAPER NUMBER 3734 MAIL DATE DELIVERY MODE 01/30/2012 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 MARK S. ORTIZ and DAVID B. GRIFFITH __________ Appeal 2010-009935 Application 11/197,544 Technology Center 3700 __________ Before TONI R. SCHEINER, FRANCISCO C. PRATS, and STEPHEN WALSH, Administrative Patent Judges. WALSH, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from the rejection of claims directed to gastric reduction apparatus. The Patent Examiner rejected the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal 2010-009935 Application 11/197,544 2 STATEMENT OF THE CASE Claims 1 and 4-7 are on appeal. Claim 1 is representative and reads as follows: 1. A gastric reduction apparatus for endoscopically drawing stomach walls into apposition, comprising: at least an anterior corkscrew anchor and a posterior corkscrew anchor; an applicator body including a proximal end and a distal end and longitudinally extending exterior side wall therebetween, the applicator body also includes an anterior suction slot defining an opening in the exterior side wall and a posterior suction slot defining an opening in the exterior side wall, the anterior suction slot and the posterior suction slot being diametrically opposed along the exterior side wall of the applicator body which are shaped and dimensioned for housing the respective anterior corkscrew anchor and posterior corkscrew anchor and a suction line for the creation of a vacuum in the respective anterior suction slot and posterior suction slot; and a firing mechanism associated with the anterior corkscrew anchor and posterior corkscrew anchor for rotation of the corkscrew anchors in a manner causing the anterior corkscrew anchor and the posterior corkscrew anchor to penetrate and engage tissue brought adjacent the respective anterior suction slot and the posterior suction slot[.] The Examiner rejected the claims as follows:  claims 1, 4, and 7 under 35 U.S.C. § 103(a) as unpatentable over Weller1 and Deem;2 and  claims 5 and 6 under 35 U.S.C. § 103(a) as unpatentable over Weller, Deem, and Bolduc.3 1 Gary Weller et al., US 2003/0065359 A1, published Apr. 3, 2003. 2 Mark E. Deem et al., US 6,558,400 B2, issued May 6, 2003. 3 Lee Bolduc et al., US 5,582,616, issued Dec. 10, 1996. Appeal 2010-009935 Application 11/197,544 3 OBVIOUSNESS The Issue Weller and Deem taught gastric reduction apparatuses. The Examiner’s position is that Weller’s apparatus comprised anterior and posterior anchors, but not corkscrew anchors, whereas Deem’s apparatus comprised one corkscrew anchor. (Ans. 3-4.) According to the Examiner, “[t]he claim would have been obvious because the substitution of one known element for another would have yielded predictable results to one of ordinary skill in the art at the time of the invention.” (Id. at 4.) Concerning claims 5 and 6, which further define the firing mechanism associated with the corkscrew anchors, the Examiner found that Bolduc disclosed a gear assembly firing mechanism and concluded that it would have been obvious to use Bolduc’s firing mechanism in the device suggested by Weller and Deem “because the substitution of one known element for another would have yielded predictable results.” (Id. at 5.) Appellants contend that “the modification proposed by the Examiner is not supported by either Weller or Deem [and] is also not supported by common principles of medical device design.” (App. Br. 11.) More specifically, Appellants argue: Weller explicitly discloses a single spiral fastener 44 may be replaced with the dual fasteners 132. While Weller contemplates both dual and single fastener systems, Weller at no time contemplates a dual fastener system employing corkscrew anchors. This is due to the function of the device disclosed by Weller which employs fasteners to directly and simultaneously engage adjacent tissue for the purpose of direct fastening without the use of additional structure (for example, a suture as claimed). Also, and in an effort to achieve a similar goal, Deem utilizes a single screw 289. . . . The utilization of dual corkscrew anchors allows one to draw apposed tissue surfaces Appeal 2010-009935 Application 11/197,544 4 together without overlapping the tissues prior to the attachment of a fastener. Neither Weller nor Deem contemplates this advantage. Both the systems disclosed by Deem and Weller require that the tissue be drawn very close together during the fastening stage so as to ensure that the tissue is fastened in a desirable manner. . . . In contrast, however, the claimed invention operates in a completely different manner by allowing one to draw tissue toward the gastric reduction apparatus, attach the fasteners and then subsequently draw the tissue together as desired by the medical practitioner. Such structure or associated functionality is neither disclosed nor suggested by either Weller or Deem. (Id. at 12-13.) (Emphasis added.) The issues are: whether the rejection established that Weller or Deem suggested dual corkscrew anchors to draw apposed tissue surfaces together without overlapping the tissues prior to attachment of a fastener; and whether the rejection established that the prior art apparatus allowed drawing tissue together after attaching a fastener. Findings of Fact 1. The Examiner’s findings concerning the scope and content of the prior art may be found at Answer 3-5. Principles of Law An invention composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art….[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Appeal 2010-009935 Application 11/197,544 5 Analysis Appellants contend that the proposed modification of Weller is not supported by “common principles of medical device design when one fairly looks at the devices of Deem and Weller.” (App. Br. 11.) Looking to the Weller and Deem disclosures, Appellants point out that “Weller explicitly discloses a single spiral fastener 44 may be replaced with dual fasteners 132” and “in an effort to achieve a similar goal, Deem utilizes a single screw 289.” (Id. at 12.) Thus, Weller teaches that a single corkscrew anchor is the equivalent of two skewer anchors. Contrarily, the rejection proposes that two corkscrew anchors should be considered the equivalent of two skewer anchors. Because Weller taught the opposite, the rejection’s proposed reason for modifying Weller’s apparatus lacks an evidentiary foundation. We conclude that the rejection must be reversed for failure to provide a sound reason for making the change. The separate rejection of claims 5 and 6 relies on the rejection over Weller and Deem and is therefore also reversed. SUMMARY We reverse the rejection of claims 1, 4, and 7 under 35 U.S.C. § 103(a) as unpatentable over Weller and Deem. We reverse the rejection of claims 5 and 6 under 35 U.S.C. § 103(a) as unpatentable over Weller, Deem, and Bolduc. REVERSED lp