Ex parte Baker

Decision Date13 September 2021
Docket NumberApplication 15/019,497,Appeal 2021-002880
PartiesEx parte RANDAL S. BAKER and JAMES A. FOOTE Technology Center 3700
CourtPatent Trial and Appeal Board
FILING DATE: 02/09/2016

Before CHARLES N. GREENHUT, MICHELLE R. OSINSKI, and JEREMY M PLENZLER, Administrative Patent Judges.

DECISION ON APPEAL

GREENHUT, Administrative Patent Judge

STATEMENT OF THE CASE

Pursuant to 35 U.S.C. § 134(a), Appellant[1] appeals from the Examiner's decision to reject claims 1-13, 16-24 and 49-59. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was conducted August 23, 2021. We AFFIRM.

CLAIMED SUBJECT MATTER

The claims are directed to a method and device for treating metabolic disease. Claim 1, reproduced below, is illustrative of the claimed subject matter:

1. An organic method of treating metabolic disease in a patient having a metabolic disease, comprising:
deploying a device having a member with a surface that is shaped to a portion of the gastrointestinal tract of the patient;
applying stress with the surface of the deployed device to the portion of the gastrointestinal tract to thereby treat the metabolic disease and produce satiety in the patient; and
titrating the stress applied with the surface of the deployed device, including titrating the stress according to activity of the patient to regulate caloric intake, wherein said titrating the stress comprises titrating the stress applied based on the patient's activity to avoid satiety from the applied stress interfering with the patient's consumption of calories if the patient does not have significant excess body mass.
REFERENCES

The prior art relied upon by the Examiner is:

Name

Reference

Date

Forsell

US 2001/0011543 A1

Aug. 9, 2001

Saadat

US 2005/0192629 A1

Sept. 1, 2005

Baker

US 2007/0293716 A1

Dec. 20, 2007

Birk

US 2012/0203061 A1

Aug. 9, 2012

Dixon

Health Outcomes of Severely ObeseType 2 Diabetic Subjects 1 Year After Laparoscopic Adjustable Gastric Banding

Feb. 2002
REJECTIONS

Claims 1-11, 13, 16-24, and 49 are rejected under 35 U.S.C. § 103 as being unpatentable over Birk, Dixon and Forsell. Final Act. 3.

Claim 12 is rejected under 35 U.S.C. § 103 as being unpatentable over Birk, Dixon and Forsell, and Baker and Saadat. Final Act. 10.

Claims 50-59 are rejected under 35 U.S.C. § 103 as being unpatentable over Birk and Dixon. Final Act. 11.

OPINION

The rejection of independent claims 1 and 50

The Examiner rejected independent claim 1 based on the combination of Birk, Dixon, and Forsell. Final Act. 3-5. In that rejection Birk was essentially relied on for the basic device used in the method and basic aspects of its operation. Final Act. 3. There is no structural distinction asserted between the device used to practice Appellant's invention and that of Birk. Rather, Appellant is attempting to secure claims directed to new uses of the Birk device. Hearing Transcript 5-6. The Examiner cites Dixon as linking obesity the condition with which Birk is concerned, with type 2 diabeties-a metabolic disease. Final Act. 3-4; Birk paras. 3-4. Appellant does not raise any issues concerning the Examiner's reliance on Dixon in this regard and Appellant's Specification appears to acknowledge this relationship was known. Spec. 3:7. The Examiner relies on Birk for the general ability to titrate the applied stress. Final Act. 3 (citing Birk para. 108[2]). The Examiner's reliance on Birk in that regard is not disputed. The Examiner relies on Forsell for the titrating step to specifically be "according to activity of the patient to regulate caloric intake." Final Act. 4 (citing Forsell para. 38). The Examiner reasons that it would have been obvious to incorporate that teaching of Forsell into Birk "in order to help treat patients suffering from heartburn and reflux disease." Final Act. 4 (citing Forsell para. 38). The Examiner relies on substantially similar fact findings and reasoning with regard to claim 50, the other independent claim before us. Claim 50, however, does not recite a titrating step, and the Examiner did not rely on Forsell in the rejection of claim 50. Appellant separately argues each independent claim.

The motivation for incorporating Forsell's teachings

Initially Appellant makes a somewhat tangential attack on the Examiner's stated motivation for combining the references, in that Appellant does not actually address the motivation stated by the Examiner of treating "heartburn and reflux." Rather, Appellant asserts that one seeking to treat obesity, as is the case with Birk, would not seek to "regulate caloric intake to avoid satiety" in the manner Appellant sought. Appeal Br. 9. This argument does not address the Examiner's proposed reason for combining the teachings of Forsell with Birk. See 37 C.F.R. § 41.37(c)(1)(iv) ("The arguments shall explain why the examiner erred . . ."). Appellant makes no assertion that a patient suffering from, or having a history of, obesity or metabolic disease, would or could not additionally, or at another time, also suffer from heartburn or reflux, and therefore benefit from a method of treating such ailments.

It is well-settled that it is not necessary for the prior art to serve the same purpose as that disclosed in Appellants' Specification in order to support the conclusion that the claimed subject matter would have been obvious. See In re Lintner, 458 F.2d 1013, 1016 (CCPA 1972); see also KSR Int'l. v. Teleflex, 550 U.S. 398, 419 (2007) ("[N]either the particular motivation nor the avowed purpose of the [Appellants] controls" in an obviousness analysis.) "[A]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed" KSR Int'l. v. Teleflex 550 U.S. at 420; In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992) ("As long as some motivation or suggestion to combine the references is provided by the prior art taken as a whole, the law does not require that the references be combined for the reasons contemplated by the inventor."). Here, the Examiner's position that one would have been motivated to make the proposed combination in order to be able to treat heartburn or reflux stands uncontroverted.

To the extent Appellant is arguing the statement of purpose "to regulate caloric intake" must be an expressly stated goal of the prior art because it is recited in the claim, we first note that claim 1 does not actually include any language indicating that the "regulat[ion of] caloric intake" must always be "to avoid satiety." Claim 1 uses the open-ended transitional phrase "comprises" to define a further aspect of the "titrating the stress." According to the language following the term "comprises," the avoidance of satiety must only be an aspect of titrating "if the patient does not have significant excess body mass." We will discuss issues related to contingent limitations and intended purposes or results in greater detail where we address Appellant's arguments more directly related to those issues. See Appeal Br. 12-14; Reply Br. 5-6.

Appellant's argument that (the heartburn/reflux embodiment) of Forsell teaches away from Birk (Appeal Br. 9) is unpersuasive because Forsell clearly and undisputedly teaches alternatives and it is well-settled that "the prior art's mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution . . ."In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Appellant's argument that "Forsell could not treat obesity and reflux in the same paitent at the same time, '''' (Reply Br. 2) apparently refers to the exact same moment in time (Reply Br. 4). The Examiner does not actually attempt to assert Forsell could be used in such a manner. To the extent this is an argument that the heartburn/reflux embodiment of Forsell would be incompatible with Birk's obesity treatment, Appellant does not apprise us of any reason why both conditions could not be treated at different instances over the same or sequential time periods while the device is implanted. Again, as noted above, there is nothing of record to suggest a patient suffering from, or having a history of, obesity or metabolic disease would or could not additionally, or at another time, also suffer from heartburn or reflux, and therefore benefit from a method of treating such ailments.

Analogousness

Appellant next contends that Forsell, or at least the portion of Forsell directed to teaching the treatment of heartburn and reflux disease, should be considered nonanalogous art. Appeal Br. 10-12. Appellant does not cite, and we are not aware of any, authority for treating only a portion of a reference as nonanalogous art. Indeed, the presence of different embodiments in the same reference evinces the fact that one skilled in the art would consider the subject matter associated with those embodiments analogous. In any case Forsell clearly satisfies the structure and function test associated with the field of endeavor prong of the analogous art inquiry.

There is no dispute that the device Forsell employs for treating obesity is structurally identical to that used for treating heartburn or reflux. The distinction Appellant attempts to draw between the methods of Forsell are rooted more in their intended use rather than actual function. In both methods the manipulative steps associated with the devices are essentially the same:

[0035] In accordance with another aspect of the present invention there is provided a method of controlling the food flow in the stomach or esophagus of a patient, comprising: (a) Surgically
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