Ex Parte Kawano et al

Patent Trial and Appeal Board

May 20, 2016

12514401 (P.T.A.B. May. 20, 2016)

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).
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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
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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
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