Ex Parte Chiba et al

Patent Trial and Appeal Board

Sep 29, 2016

13072149 (P.T.A.B. Sep. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/072,149 03/25/2011
23389 7590 10/03/2016
SCULLY SCOTT MURPHY & PRESSER, PC
400 GARDEN CITY PLAZA
SUITE 300
GARDEN CITY, NY 11530
FIRST NAMED INVENTOR
Atsushi CHIBA
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
27323Z 5382
EXAMINER
TOWA,RENET
ART UNIT PAPER NUMBER
3736
NOTIFICATION DATE DELIVERY MODE
10/03/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
Docket@SSMP.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ATSUSHI CHIBA, MIRO KAT A Y AMA, and
TAKE SHI NISHIYAMA
Appeal2015-000353
Application 13/072, 149
Technology Center 3700
Before MICHAEL L. HOELTER, BRETT C. MARTIN, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from a rejection of
claims 2, 3, 5-7, 9-13, 21, and 22. Claims 1, 4, 8, and 14--20 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
Appeal2015-000353
Application 13/072, 149
CLAIMED SUBJECT MATTER
The claims are directed to "a medical apparatus system that acquires
information on a subject, a capsule medical apparatus system, and a method
of displaying a posture item of a subject." Spec. 1. Claims 21 and 22 are
independent. Claim 21, reproduced below, is illustrative of the claimed
subject matter:
21. A medical apparatus system, comprising:
a capsule medical apparatus that includes a magnet and is
configured to be inserted into a subject to acquire image
information on the subject, wherein the acquired information
includes an in-vivo image of the subject;
a magnetic field generation device that generates a
magnetic field to be applied to the magnet of the capsule medical
apparatus to control a position of the capsule medical apparatus;
a posture item display unit that displays multiple
recommended posture items of the subject in which the capsule
medical apparatus acquires the information on the subject, at the
controlled position of the capsule medical apparatus;
an input unit that inputs information on a posture item of
the subject among the recommended posture items that are
displayed by the posture item display unit;
a display controller that includes recommended-posture
information that defines the recommended posture items in
which acquisition of the information is recommended and that,
in response to the input of the input unit, changes a display mode
of the posture item of the subject that is displayed by the posture
item display unit on the basis of the recommended-posture
information, such that the display mode indicates that the posture
item is input by the input unit; and
a storage unit that stores both the in-vivo image which is
taken by the capsule medical apparatus and the information on
the posture of the subject which is input by the input unit such
that the in-vivo image and the information on the posture of the
subject are associated with one another.
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Appeal2015-000353
Application 13/072, 149
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Onoda
Uchiyama
Shigemori 1
US 2002/0091331 Al
US 2003/0229268 Al
US 2009/0292174 Al
REJECTION
July 11, 2002
Dec. 11, 2003
Nov. 26, 2009
Claims 2, 3, 5-7, 9-13, 21, and 22 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Shigemori, Onoda, and Uchiyama. Ans.
3.
OPINION
According to the Appellants, the Examiner's rejection is improper
because the Examiner does not give appropriate weight to features in each of
independent claims 21 and 22 relating to "acquiring information at the
controlled position of the capsule" and "displaying multiple recommended
posture items of the subject," also at the controlled position. App. Br. 8.
The Appellants make no separate argument for the dependent claims. Id.
Accordingly, all of the claims stand or fall with our disposition of the
rejection of claims 21 and 22, which are argued together.
First, Appellants' argument amounts to a bald assertion that the claim
limitations are not present without any explanation as to why the references
fail to teach the limitations. Merely reciting the language of the claims and
asserting that the prior art reference or combination does not disclose or
teach each claim limitation is insufficient. See 37 C.F.R. § 41.37(c)(vii) ("A
1 The Examiner actually bases the rejection on Shigemori W0/2008/096744,
but refers to the English translation in the US printed publication above.
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Appeal2015-000353
Application 13/072, 149
statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim."); see also In
re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold that the Board
reasonably interpreted Rule 41.37 to require more substantive arguments in
an appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art.").
Second, Appellants' statement that Uchiyama does not teach the
limitations at issue is also not persuasive because the original rejection relies
upon Shigemori for the disputed limitations. See Final Rej. 6-7.
Notwithstanding the fact that the Appellants address the wrong reference,
the Examiner explains not only how Uchiyama teaches the allegedly missing
limitations (Ans. 12-13), but additionally explains in detail how Shigemori
also teaches these limitations (Ans. 13-20). We adopt the Examiner's
findings and conclusions as our own and deem the arguments presented by
the Appellants as unpersuasive. Accordingly, we sustain the Examiner's
rejection of claims independent claims 21 and 22 as well as dependent
claims 2, 3, 5-7, and 9-13, 21 as unpatentable over Shigemori, Onoda, and
Uchiyama.
DECISION
The Examiner's rejection of claims 2, 3, 5-7, 9-13, 21, and22 is
affirmed.
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)(l )(iv).
AFFIRMED
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