Ex Parte Kawano et alDownload PDFPatent Trial and Appeal BoardMay 20, 201612514401 (P.T.A.B. May. 20, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/514,401 0910212009 23389 7590 05/24/2016 SCULLY SCOTT MURPHY & PRESSER, PC 400 GARDEN CITY PLAZA SUITE 300 GARDEN CITY, NY 11530 FIRST NAMED INVENTOR Hironao Kawano 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. 24063 1282 EXAMINER SANTOS RODRIGUEZ, JOSEPH M ART UNIT PAPER NUMBER 3737 NOTIFICATION DATE DELIVERY MODE 05/24/2016 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) u-NITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HIRONAO KA WANO, ATSUSHI KIMURA, AK.IO UCHIYAMA, and ATSUSHI CHIBA Appeal2014-003570 Application 12/514,401 1 Technology Center 3700 Before ANNETTE R. REIMERS, JILL D. HILL, and JASON W. MEL VIN, Administrative Patent Judges. MEL VIN, Administrative Patent Judge. DECISION ON APPEAL This appeal arises under 35 U.S.C. § 134(a), from the Examiner's rejection of claims 1-14. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify Olympus Medical Systems Corp. as the real party in interest. Br. 2. Appeal2014-003570 Application 12/514,401 BACKGROUND The claims are directed to a medical device position detection system, medical device guidance system. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A medical device position detection system for use with a subject's body, comprising: a medical device introduced into the subject's body; a magnetic field response part that is disposed in the medical device, responds to a magnetic field by virtue of possessing a magnetization direction, and guides the medical device; a magnetic field generation part generating a magnetic field within the subject's body; a direction detection magnetic field control part generating a direction detection magnetic field, from the magnetic field generation part, for detecting a direction of the medical device; a response detection part, disposed external to the medical device, detecting the response of the magnetic field response part due to the direction detection magnetic field; and a direction calculation part calculating the direction of the medical device according to a direction of the direction detection magnetic field and a detection result of the response detection part. REJECTIONS Appellants seek our review of the following rejections: 1. Claims 1-9 and 11-14 stand rejected under 35 U.S.C. § 102(b) as anticipated by Uchiyama (US 2005/0085696 Al, pub. Apr. 21, 2005). 2 Appeal2014-003570 Application 12/514,401 2. Claim 10 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Uchiyama and Kawano (US 2005/0183733 Al, pub. Aug. 25, 2005). DISCUSSION The Examiner finds that Uchiyama teaches the claimed system, in part through its use of the Aurora tracking system described as an embodiment of the "position detection means" in paragraphs 170 and 171 of Uchiyama. Final Act. 3; Uchiyama i-fi-f 170-171. Appellants first argue that Uchiyama does not disclose "a direction detection magnetic field (that is, for detecting direction of a medical device), as claimed." Br. 11. Though Appellants do not further explain the argument, it appears that Appellants contend that because Uchiyama "discloses control of a direction of an electromagnetic field," the field is not for detecting the direction of a medical device. Id. The Examiner responds by pointing out that paragraph 170 of Uchiyama discloses a "position direction detection means" calculating angles from the magnetic field to determine position. Ans. 7. Thus, the Examiner has identified a teaching in Uchiyama that uses a magnetic field to detect position. We do not read Appellants' abbreviated argument on this point to apprise us of error in the rejection. Appellants submitted that the "NDI Aurora® reference" ("Aurora") in a March 4, 2013, Information Disclosure Statement and, on appeal, primarily argue that Aurora shows that Uchiyama does not teach a "response detection part disposed external to the medical device." Br. 12-13. According to Appellants, Aurora "utilizes a magnetic field sensor disposed 3 Appeal2014-003570 Application 12/514,401 directly in an object." Br. 12. The Examiner responds by pointing out that the Aurora discloses a detection part comprising a sensor inside the medical device and a processing part outside the patient. Ans. 7. The Examiner reasons that the broadest-reasonable interpretation of the claims does not require the entire detection part to be outside the medical device, and that the claims therefore read on the device described in Aurora and Uchiyama. Final Act. 3; see Ans. 7. We agree with the Examiner that the broadest- reasonable interpretation of the claim language "a response detection part, disposed external to the medical device" includes parts entirely and partially external to the medical device. See Cannon Rubber Ltd. v. The First Years, Inc., 163 F. Appx. 870, 875 (Fed. Cir. 2005) (nonprecedential) ("[U]nder its ordinary meaning, a 'diaphragm disposed in the body' includes both diaphragms contained entirely and partially in the body."). Accordingly, Appellants have not apprised us of error with the Examiner's rejection of claim 1, which we therefore sustain. For all other claims-independent claims 11, 13, and 14, and dependent claims 2-10 and 12-Appellants rely on the argument made for claim 1. Br. 13. Accordingly we also sustain the rejection of those claims. DECISION For the above reasons, the Examiner's rejection of claims 1-14 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)(l )(iv). AFFIRMED 4 Copy with citationCopy as parenthetical citation