Ex Parte Roth et al

Board of Patent Appeals and Interferences

Jul 12, 2012

10991140 (B.P.A.I. Jul. 12, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ALEX T. ROTH, GARY WELLER, JAMES GANNOE, CRAIG
GERBI, CHRISTOPHER JULIAN, and ANDREW H. HANCOCK
____________

Appeal 2010-004927
Application 10/991,140
Technology Center 3700
____________

Before LINDA E. HORNER, MICHAEL C. ASTORINO, and
JOHN W. MORRISON, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 31 and 32 under 35 U.S.C. § 102(e) as anticipated
by Smith (US 2005/0080435 A1, pub. Apr. 14, 2005). We have jurisdiction
over the appeal under 35 U.S.C. § 6(b). We AFFIRM.

Appeal 2010-004927
Application 10/991,140

2
CLAIMED SUBJECT MATTER
Claim 31 is the sole independent claim on appeal, is representative of
the subject matter on appeal, and with emphasis added, recites:
31. A method of providing therapy to the stomach
of a patient, comprising:
inserting a retraction device transorally to
the stomach;
inserting a tissue treatment device
transorally to the stomach along the side of the
retraction device;
deploying the retraction device to move
portions of the stomach tissue relative to the tissue
treatment device, wherein the deployed retraction
device blocks tissue away from the tissue treatment
device, allowing a target region of the stomach to
be approximated for treatment; and
acquiring stomach tissue at the target region
for treatment with the tissue treatment device.

OPINION
The Appellants argue claims 31 and 32 as a group. See App. Br. 3-4,
Reply Br. 2-3.1 We select independent claim 31 as the representative claim
and claim 32 stands or falls with claim 31. See 37 C.F.R. § 41.37(c)(1)(vii)
(2011).
Smith discloses a distal end effector 2020 having a sleeve 3200 that is
slidably coupled about 20 cm back from the distal end of an endoscope
4000, where “[t]he distal end of the endoscope 4000 is . . . inserted into the

1 Throughout this Opinion we shall refer to Appellants’ Appeal Brief, filed
June 18, 2009, as “App. Br.”; Appellants’ Response to Notice of Non-
Compliant Appeal Brief, filed August. 24, 2009, as “Corrected App. Br.”;
and Appellants’ Reply Brief, filed January 22, 2010, as “Reply Br.”
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Appeal 2010-004927
Application 10/991,140

4
Examiner’s reference to “general tissue” is directed to the tissue recited in
the deploying step of claim 31, i.e., “wherein the deployed retraction device
blocks tissue away from the tissue treatment device,” (hereinafter “wherein
clause”). It is notable that the wherein clause does not specify the type of
tissue that is blocked away from the claimed tissue treatment device.
The Appellants contend that Smith’s endoscope 4000 as depicted in
Figure 27 does not block the Examiner-identified “general tissue” because
“in order to ‘block’ the tissue away it logically must be shown that the
‘general tissue’ without the blocking would interfere with the tissue
treatment device” and “the ‘general tissue’ remains in place, unblocked, and
far distanced from the ‘target region’ of tissue.” Reply Br. 2-3. The
Appellants support their contention by pointing out that Smith’s Figure 27
depicts a gap between the endoscope 4000 and the Examiner-identified
“general tissue.” The Appellants’ contention is not persuasive for the
following reasons.
First, the Appellants’ Specification lacks a definition for the term
“blocks tissue away” and “blocks.” A claim under examination is given its
broadest reasonable interpretation consistent with the underlying
specification. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004). The Appellants offer a citation to the Specification at paragraph
[000150] and Figure 52 as representative of the subject matter of the
deploying step, including the wherein clause (Corrected App. Br. 2);
paragraph [000150], with emphasis added, states, in relevant part:
Appeal 2010-004927
Application 10/991,140

5
FIG. 52 shows a balloon catheter 411 with an
expanded balloon that is inflated on the front side
of a tissue treatment device 300. . . . Once the
tissue treatment device is placed within the
stomach near a target area, the balloon can be
inflated to hold tissue in place or to block
unwanted tissue from the tissue treatment device.

It is notable that, like Smith’s Figure 27, the Appellants’ Figure 52 depicts a
gap between balloon 410 and the tissue of the stomach. In light of the
Appellants’ Specification the presence of a gap between endoscope 4000
and the “general tissue” in Smith’s Figure 27 does not preclude the
Examiner from correctly finding correspondence to the wherein clause.
Second, the term “blocks” in the wherein clause, i.e., “wherein the
deployed retraction device blocks tissue away from the tissue treatment
device,” is understood to mean “to obstruct ( . . . something) by placing
obstacles in the way.”2 This definition is consistent with the Appellants’
Figure 52, which depicts deployed balloon 410 blocking tissue away from a
tissue treatment device 300. Smith’s endoscope 4000 obstructs the general
tissue away from the end effector 2020 because the endoscope 4000 is
placed in the way of the “general tissue” and the effector 2020. See Ans. 4.
In light of the foregoing, the Examiner’s finding that Smith’s endoscope
4000 blocks tissue away from the end effector 2020 is adequately supported.
Thus, the Examiner’s rejection of claims 31 and 32 under 35 U.S.C.
§ 102(e) as anticipated by Smith is sustained.

2 (DICTIONARY.COM UNABRIDGED,
http://dictionary.reference.com/browse/block?s=t (last visited July 2,
2012)(“block,” verb (used with object), def. 32)).
Appeal 2010-004927
Application 10/991,140

6
DECISION
We AFFIRM the rejection of claims 31 and 32.
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).

AFFIRMED

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