Ex Parte D et al

Board of Patent Appeals and Interferences

Mar 11, 2010

10395602 - (D) (B.P.A.I. Mar. 11, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DAVID T. D'ANDREA, JOHN R. SEMLER
and THOMAS H. WHITE
____________________

Appeal 2009-006580
Application 10/395,602
Technology Center 3700
____________________

Decided: March 11, 2010
____________________

Before MICHAEL W. O’NEILL, KEN B. BARRETT, and
FRED A. SILVERBERG, Administrative Patent Judges.

SILVERBERG, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
David T. D'Andrea et al. (Appellants) seek our review under
35 U.S.C. § 134 of the final rejection of claims 1-6, 11-21, 26-36 and 41-45,
which are all of the pending claims. We have jurisdiction under 35 U.S.C.
§ 6(b) (2002).
Appeal 2009-006580
Application 10/395,602

2

SUMMARY OF DECISION
We REVERSE.

THE INVENTION
Appellants’ claimed invention is directed to determining the real-time
location of a capsule in a tract of a mammal (Spec. 4:4-11).
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A method of determining the real-time
location of a capsule in a tract of a mammal,
comprising the steps of:
providing a capsule, said capsule having
sensors to determine at least a first physiological
parameters of said tract and a second physiological
parameter of said tract that is different from said
first physiological parameter, said capsule also
having a transmitter operatively arranged to
transmit a signal reflecting such sensed
parameters;
inserting said capsule into said tract;
transmitting a first said signal from said
transmitter;
receiving said first transmitted signal
exteriorly of said tract;
determining the value of said first sensed
parameters;
determining the phase or amplitude of said
first signal;
determining a first location of said capsule
within said tract as a function of both (i) said
determined phase or amplitude of said received
signal and (ii) said determined value of said first
sensed parameter;
Appeal 2009-006580
Application 10/395,602

3
transmitting a second said signal from said
transmitter;
receiving said second transmitted signal
exterior of said tract;
determining the value of said second sensed
parameter;
determining the phase or amplitude of said
second signal; and
determining a second location of said
capsule within said tract as a function of both (j)
said determined phase or amplitude of said
received signal and (jj) said determined value of
said second sensed parameter.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Iddan US 2002/0111544 A1 Aug. 15, 2002
Imran US 2002/0198470 A1 Dec. 26, 2002
Mullick US 2003/0167000 A1 Sep. 4, 2003

The following rejections by the Examiner are before us for review:
1. Claims 1-6, 11, 12, 14-21, 26, 27, 29-36, 41, 42, 44 and 45 are
rejected under 35 U.S.C. § 103(a) as being unpatentable over Mullick
in view of Imran.
2. Claims 13, 28 and 43 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mullick in view of Imran, and further in view of
Iddan.

Appeal 2009-006580
Application 10/395,602

4
ISSUE
The issue before us is whether the Examiner erred in finding that the
combined teachings of Mullick and Imran would have rendered obvious the
steps of: (1) providing a capsule having sensors to determine a first and a
second physiological parameter of a tract, wherein the first and second
physiological parameters are different; (2) determining a first location of the
capsule as a function of the first sensed parameter; and (3) determining a
second location of the capsule as a function of the second sensed parameter
as called for in independent claims 1, 16 and 31 (Reply Br. 2, App. Br. 9).

ANALYSIS
Regarding claims 1-6, 11, 12, 14-21, 26, 27, 29-36, 41, 42, 44 and 45:
Claims 1, 16 and 31 call for, inter alia, steps of: (1) providing a
capsule having sensors to determine a first and a second physiological
parameter of a tract, wherein the first and second physiological parameters
are different; (2) determining a first location of the capsule as a function of
the first sensed parameter; and (3) determining a second location of the
capsule as a function of the second sensed parameter.
Appellants’ Specification describes that “the capsule has multiple
sensors to determine at least three physiological parameters . . . Some of
these sense[d] parameters may be used to determine a first location and
others of the parameters are used to determine a second location of the
capsule.” (Spec. 11:1-6).
We find that Appellants’ Specification describes, and independent
claims 1, 16 and 31 call for, the first and second physiological parameters as
being two different parameters. See In re Am. Acad. of Sci. Tech. Ctr., 367
Appeal 2009-006580
Application 10/395,602

5
F.3d 1359, 1364 (Fed. Cir. 2004) (holding that when construing claim
terminology in the United States Patent and Trademark Office, claims are to
be given their broadest reasonable interpretation consistent with the
specification, reading claim language in light of the specification as it would
be interpreted by one of ordinary skill in the art.)
Appellants contend that the combined teachings of Mullick and Imran
do not describe using a first parameter in determining a first location of a
capsule and using a second parameter, which is different than the first
parameter, in determining a second location of the capsule as called for in
independent claims 1, 16 and 31 (Reply Br. 3; App. Br. 9-11). Appellants
further contend that Imran does not describe using different parameters, as
Imran only describes “determining a capsule’s initial location with pressure
or pH, and then tracking from there using acoustic transmission time.”
(Reply Br. 3).
The Examiner found that Mullick describes, inter alia, a Heidelberg
pH capsule which can sense parameters such as pH and transmit signals
indicating the values of the parameters (Mullick, p. 2, [0012]) (Ans. 3) and a
pose detection system, which produces an RF signal that allows the real-time
position of the capsule to be tracked (Mullick, pp. 4-5, [0061]) (Ans. 3). The
Examiner further found that Mullick does not describe “how the pose
detection system processes the signal in order to determine the location.”
(Ans. 3).
The Examiner concluded that if the claims were interpreted as
requiring the second physiological parameter to be a different type of
parameter from the first parameter, the combination of teachings of Mullick
and Imran would still render obvious the claimed invention. (Ans. 6). The
Appeal 2009-006580
Application 10/395,602

6
Examiner further found that “to locate the pylorus (a first location) Imran
would use a first physiological parameter of a pressure, and then to locate
the duodenum (a second location) Imran would need to use a different type
of physiological parameter of pH.” (Ans. 7).
Mullick describes that “[t]here are several prior systems that use an
ingestible device to provide data on the internal state of a patient. The
Heidelberg capsule relays pH information through a radio frequency (RF)
link, and can release medicament on a signal from an external transmitter.”
(Mullick, p. 2, [0012]).
Mullick’s invention is directed to, inter alia, a pose detection system
26 that tracks a beacon 28, 52 located inside capsule 12, 40. (Mullick, p. 4,
[0053]).
We find that Mullick does not describe using two different parameters
to determine two locations of the capsule.
Imran describes that “[a]lternatively a capsule’s initial location may
be determined, for example by pressure, which changes when the capsule
passes through the pylorus, or pH, which changes when the capsule enters
the duodenum.” (Imran, p. 3, [0022]).
We find that the Examiner’s finding regarding Imran using two
different parameters to locate two locations is flawed, as Imran describes
alternative ways of determining an initial location of a capsule, and not ways
of determining two locations of a capsule.
We find that the combined teachings of Mullick and Imran do not
describe using two different parameters to determine two locations of the
capsule as called for in independent claims 1, 16 and 31.
Appeal 2009-006580
Application 10/395,602

7
We conclude that Appellants have demonstrated that the Examiner
erred in rejecting claims 1, 16 and 31 over Mullick in view of Imran.
Appellants have likewise demonstrated error in the Examiner’s rejection of
claims 2-6, 11, 12, 14, 15, 17-21, 26, 27, 29, 30, 32-36, 41, 42, 44 and 45,
which depend from claims 1, 16 and 31, respectively.
Regarding claims 13, 28 and 43: The Examiner has not relied on
Iddan for any teaching that would remedy the deficiency in the combined
teachings of Mullick and Imran (Ans. 4). We thus conclude that the
Examiner also erred in rejecting claims 13, 28 and 43 as being unpatentable
over Mullick in view of Imran, and further in view of Iddan.

CONCLUSION
The Examiner has erred in finding that the combined teachings of
Mullick and Imran would have rendered obvious the steps of: (1) providing
a capsule having sensors to determine a first and a second physiological
parameter of a tract, wherein the first and second physiological parameters
are different; (2) determining a first location of the capsule as a function of
the first sensed parameter; and (3) determining a second location of the
capsule as a function of the second sensed parameter as called for in
independent claims 1, 16 and 31.

DECISION
The decision of the Examiner to reject claims 1-6, 11-21, 26-36 and
41-45 is reversed.

REVERSED

Appeal 2009-006580
Application 10/395,602

8

mls

PETER K. SOMMER, ESQ.
PHILLIPS, LYTLE, HITCHCOCK, BLAINE & HUBER LLP
INTELLECTUAL PROPERTY GROUP
3400 HSBC CENTER
BUFFALO, NY 14203