Ex Parte Gilad et alDownload PDFPatent Trial and Appeal BoardJun 27, 201311284915 (P.T.A.B. Jun. 27, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte ZVIKA GILAD and AMIT PASCAL __________ Appeal 2012-000222 Application 11/284,915 Technology Center 3700 __________ Before LORA M. GREEN, FRANCISCO C. PRATS, and SHERIDAN K. SNEDDEN, Administrative Patent Judges. PRATS, Administrative Patent Judge. DECISION ON APPEAL This appeal1 under 35 U.S.C. § 134 involves claims to a floatable device for in vivo imaging. The Examiner entered rejections for obviousness and a rejection for indefiniteness. We have jurisdiction under 35 U.S.C. § 6(b). We reverse the obviousness rejections and summarily affirm the indefiniteness rejection. STATEMENT OF THE CASE Appellants’ invention is directed to a swallowable device for imaging liquid filled body lumens, such as the stomach. 1 The Real Party in Interest is GIVEN IMAGING LTD (App. Br. 1). Appeal 2012-000222 Application 11/284,915 2 Claims 1-20 and 23 stand rejected and appealed (App. Br. 1). Claim 1 illustrates the appealed subject matter and reads as follows: 1. A floatable device for in-vivo imaging, said device comprising: a first optical system placed behind a first optical dome of said device; a second optical system placed behind a second optical dome of said device; said first and second optical domes are located at a first and second opposite ends of said device; said device having a specific gravity of about 1; wherein the center of gravity of said device is located closer to said first end than to said second end; wherein said first optical system is compatible with the refractive index of body lumen liquid; and wherein said second optical system is compatible with the refractive index of a non liquid medium; and wherein when said device is placed in said body lumen liquid, said center of gravity is to cause said first end to be submerged, while said second end is afloat. The following rejections are before us for review: (1) Claim 23, under 35 U.S.C. § 112, second paragraph, as indefinite (Ans. 3-4); (2) Claims 1-3, 7, 8, 10-14, 16, 17, and 23, under 35 U.S.C. § 103(a) as obvious over Meron2 and Lewkowicz3 (Ans. 4-6); (3) Claims 4-6, under 35 U.S.C. § 103(a) as obvious over Meron, Lewkowicz, and Suzuki4 (Ans. 6-7); 2 Meron et al., U.S. Patent App. Pub. No. 2002/0109774 A1 (published Aug. 15, 2002). 3 Lewkowicz et al., U.S. Patent No. 7,192,397 B2 (filed May 20, 2002). 4 Suzuki et al., U.S. Patent No. 4,867,136 (issued Sep. 19, 1989). Appeal 2012-000222 Application 11/284,915 3 (4) Claim 9, under 35 U.S.C. § 103(a) as obvious over Meron, Lewkowicz, and Kowel5 (Ans. 7); (5) Claim 15, under 35 U.S.C. § 103(a) as obvious over Meron, Lewkowicz, and Glukhovsky6 (Ans. 7-8); and (6) Claims 18-20, under 35 U.S.C. § 103(a) as obvious over Meron, Lewkowicz, and Killmann7 (Ans. 8). As Appellants do not address the Examiner’s indefiniteness rejection of claim 23, we summarily affirm it. See MPEP § 1205.02 (“If a ground of rejection stated by the examiner is not addressed in the appellant’s brief, that ground of rejection will be summarily sustained by the Board.”). DISCUSSION In rejecting claim 1 as obvious over Meron and Lewkowicz, the Examiner found that Meron described a capsule endoscope device having all of the claimed features, “except for wherein the device has a specific gravity of about 1 or a volume to weight ratio that enables it to float. However, it is well known for capsule endoscopes to float” (Ans. 5). To support that assertion, the Examiner cited Lewkowicz as teaching “an in-vivo imaging device having a specific gravity of about 1 or a volume to weight ratio that enables it to float” (id.). Based on the references’ combined teachings, the Examiner reasoned that an ordinary artisan would have considered it obvious to modify “the device of Meron et al. as taught 5 Kowel et al.,U.S. Patent No. 4,572,616 (issued Feb. 25, 1986). 6 Glukhovsky, U.S. Patent App. Pub. No. 2004/0181155 A1 (filed Mar. 25, 2004). 7 Killmann, U.S. Patent App. Pub. No. 2005/0043583 A1 (filed May 21, 2004). Appeal 2012-000222 Application 11/284,915 4 by Lewkowicz in order for the device to be floatable and can thus be carried by liquid though a lumen” (id.). Appellants argue, among other things, that Meron “does not teach or suggest ‘wherein the center of gravity of said device is located closer to said first end than to said second end’, as recited in independent claims 1, 17 and 23” (App. Br. 5). In particular, Appellants argue, the Examiner improperly relied on Figure 4 of Meron as teaching this feature because Meron “does not disclose that the drawings are to scale, and is completely silent as to the dimensions and specific gravity of each component” (id. at 6 (citing Hockerson-Halberstadt, Inc. v. Avia Group Int’l, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000))). In response, the Examiner provided an annotated version of Meron’s Figure 4, reproduced below: Appeal 2012-000222 Application 11/284,915 5 The Examiner-annotated version of Meron’s Figure 4 shows that “Line C separates the two ends, End A and B. End A and B comprises the same optical components (e.g. 41 =401, 42=402, 43=403, etc.) except for End B comprising the additional components 46 and 47” (Ans. 10). The Examiner reasons that, since “End B of the device comprises more components than End A, the examiner interprets End B to be the side in which the center of gravity is closest to” (id.). The Examiner further reasons that Meron “uses the same components on both sides of the device therefore the components on either end have the same weigh/specific gravity except for the side that has the extra components not found on the other side” (id.). Appellants reply that, when one actually measures Meron’s Figure 4, even discounting components 46 and 47, each side of the device does not contain precisely the same number of components (see Reply. Br. 3-5). As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992): [T]he examiner bears the initial burden . . . of presenting a prima facie case of unpatentability. . . . After evidence or argument is submitted by the applicant in response, patentability is determined on the totality of the record, by a preponderance of evidence with due consideration to persuasiveness of argument. We find that a preponderance of the evidence does not support the Examiner’s prima facie case of obviousness. Independent claims 1 and 17 both recite a device in which “the center of gravity of the device “is located closer to said first end than to said second end;. . . and wherein when said device is placed in said body lumen liquid, said center of gravity is to cause said first end to be submerged, while said Appeal 2012-000222 Application 11/284,915 6 second end is afloat” (App. Br. 11 (claim 1), id. at 13 (claim 17)). The other independent claim, claim 23, recites an in vivo imaging method that uses a device in which “the center of gravity of said device [is] closer to said first optical dome than to said second optical dome to cause said first optical dome to be submerged, while said second optical dome is afloat, when said device is placed in said body lumen liquid” (id. at 14). As noted above, the Examiner argues, based on the relative positioning of the components shown in Meron’s Figure 4, that Meron necessarily teaches a device and method of using a device having a center of gravity closer to one end of the device. As Appellants point out, however, “it is well established that patent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue.” Hockerson-Halberstadt v. Avia, 222 F.3d at 956. In this instance, the Examiner points to no disclosure in Meron suggesting that Figure 4 is drawn to scale. Thus, the precise relative positions of the various components shown in Figure 4 cannot be relied upon to establish that Meron describes a device inherently having components with the precise relative positions shown in the Figure. See Hockerson- Halberstadt v. Avia, 222 F.3d at 956. Because the relative positions of the various components shown in Figure 4 cannot be relied upon to establish that Meron describes a device inherently having components with the precise relative positions shown in Figure 4, we are not persuaded that the Examiner has provided an adequate evidentiary basis for concluding that Meron teaches a device having the offset center of gravity required by each of Appellants’ independent claims. Appeal 2012-000222 Application 11/284,915 7 The Examiner argues: [A]ppellant has failed to disclose the specific dimensions of the ends (e.g. the ends are not limited to be equal in dimension) and location of the center of gravity in respect to any component within the device. Appellant has further failed to disclose the degree of ‘closeness’ with respect to the location of the center of gravity. Therefore, the examiner's interpretation (above) is a reasonable interpretation of the location of the center of gravity. (Ans. 11-12.) We are not persuaded. We acknowledge that the broadest reasonable interpretation of Appellants’ claims in light of the Specification could encompass a very small offset in the center of gravity, as well as a device having one relatively small end and one relatively large end, provided the device floats in the orientation required by the claims. That interpretation does not, however, negate the fact that the Examiner’s sole foundation for finding this feature as being taught in the prior art is based, essentially, on determining relative positions of components on a figure which has not been shown to be drawn to scale. Moreover, the Examiner has not explained why the prior art would have suggested modifying Meron’s device to have the claimed offset center of gravity, even if it were true that Meron’s device did not necessarily have that feature. Accordingly, as we are not persuaded that the Examiner has provided an adequate evidentiary basis for finding that Meron teaches or suggests a device having the offset center of gravity required by each of Appellants’ independent claims, we reverse the Examiner’s rejection of those claims and their dependents, over Meron and Lewkowicz. Appeal 2012-000222 Application 11/284,915 8 As to the remaining rejections, the Examiner relied on Suzuki, Kowel, Glukhovsky, and Killmann as evidence that the features recited in the dependent claims would have been obvious to include on a device such as that described by Meron and/or Lewkowicz (see Ans. 6-8). As the Examiner did not, however, explain how the teachings of Suzuki, Kowel, Glukhovsky, and Killmann remedy the deficiencies discussed above of Meron and Lewkowicz as to claims 1, 17, and 23, we reverse the Examiner’s remaining obviousness rejections as well. SUMMARY We affirm the Examiner’s rejection of claim 23, under 35 U.S.C. § 112, second paragraph, as indefinite. For the reasons discussed, however, we reverse the Examiner’s rejection of claims 1-3, 7, 8, 10-14, 16, 17, and 23 as obvious over Meron and Lewkowicz. We also reverse the Examiner’s rejection of claims 4-6, as obvious over Meron, Lewkowicz, and Suzuki. We also reverse the Examiner’s rejection of claim 9 as obvious over Meron, Lewkowicz, and Kowel. We also reverse the Examiner’s rejection of claim 15 as obvious over Meron, Lewkowicz, and Glukhovsky. We also reverse the Examiner’s rejection of claims 18-20 as obvious over Meron, Lewkowicz, and Killmann. Appeal 2012-000222 Application 11/284,915 9 TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED-IN-PART lp Copy with citationCopy as parenthetical citation