Ex Parte Tamura et al

Patent Trial and Appeal Board

Mar 31, 2016

12698414 (P.T.A.B. Mar. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/698,414 02/02/2010
23389 7590 04/04/2016
SCULLY SCOTT MURPHY & PRESSER, PC
400 GARDEN CITY PLAZA
SUITE 300
GARDEN CITY, NY 11530
FIRST NAMED INVENTOR
Kazuaki TAMURA
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.
24934 3964
EXAMINER
ALTER, MITCHELLE
ART UNIT PAPER NUMBER
3735
NOTIFICATION DATE DELIVERY MODE
04/04/2016 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
Exparte KAZUAKI TAMURA, TAKESHI MORI,
TETSUO MINAI, and AKIO UCHIYAMA
Appeal2014-003659
Application 12/698,414
Technology Center 3700
Before EDWARD A. BROWN, LEE L. STEPINA, AND
AMANDA F. WIEKER, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Kazuaki Tamura et al. (Appellants) 1 appeal under 35 U.S.C. § 134(a)
from the Examiner's decision rejecting claims 1-13. Br. 2. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
CLAIMED SUBJECT MATTER
Appellants' disclosure relates to "an intra-subject position detection
system and an intra-subject position detection method capable of deriving
positional information of an intra-subject introduction device introduced into
1 The Appeal Brief identifies Olympus Corporation and Olympus Medical
Systems Corporation as the real parties in interest. Br. 2.
Appeal2014-003659
Application 12/698,414
a test subject." Spec. 1, 11. 16-20. Claims 1 and 13 are independent. Claim
1 illustrates the claimed subject matter:
1. An intra-subject position detection system comprising:
an intra-subject introduction device that is adapted to be
introduced into a test subject and obtains an intra-subject
information; and
a position detection device that is provided outside the test
subject and derives a positional information of the intra-subject
introduction device inside the test subject, wherein
the intra-subject introduction device comprises transmitter
electrodes that are positioned on an outer circumferential surface
of the intra-subject introduction device, to transmit the intra-
subject information to outside of the test subject, and
the position detection device comprises
a plurality of receiver electrodes provided on an
outer surface of the test subject,
a receiver electrode selection circuit that selects
receiver electrodes for receiving the intra-subject
information, from among the plurality of receiver
electrodes,
a position detection electrode selection circuit that
selects receiver electrodes for position detection of the
intra-subject introduction device, from among the other
receiver electrodes of the plurality of receiver electrodes
than the receiver electrodes selected by the receiver
electrode selection circuit, and
a positional information derivation section that
derives the positional information of the intra-subject
introduction device, based on an electric signal from the
receiver electrodes selected by the position detection
electrode selection circuit.
Br. 11 (Claims App.).
REJECTIONS
The claims stand rejected as follows:
1. Claim 13 under 35 U.S.C. § 101 as directed to non-statutory
subject matter.
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Application 12/698,414
2. Claims 1-8 and 10-13 under 35 U.S.C. § 103(a) as
unpatentable over Kim (US 2006/0173265 Al, published Aug. 3, 2006),
Fukuda (US 2004/0210131 A 1, published Oct. 21, 2004 ), and Shim (US
2009/0304093 Al, published Dec. 10, 2009).
3. Claim 9 under 35 U.S.C. § 103(a) as unpatentable over Kim,
Fukuda, Shim, and Frisch (US 2002/0173718 Al, published Nov. 21, 2002).
ANALYSIS
Non-Statutory Subject Matter- Claim 13
In rejecting claim 13 as being directed to non-statutory subject matter,
the Examiner also suggested how claim 13 could be amended to overcome
the rejection. Final Act. 2. Appellants filed a Response to the Final Office
Action ("Response"), including proposed amendments to claim 13. See
Response 5---6 (dated Apr. 11, 2013). Subsequently, the Examiner issued an
Advisory Action, indicating that for purposes of appeal, the proposed
amendments to claim 13 would not be entered because they raise new issues.
See Adv. Act. 2-3 (mailed May 2, 2013).
Appellants contend that the Advisory Action did not state that this
rejection is maintained. Br. 8. Appellants are correct that the Advisory
Action did not explicitly state this. See Adv. Act. 3. However, the Advisory
Action also did not indicate that the rejection was withdrawn. Rather, the
Examiner's non-entry of the proposed amendments to claim 13 implied that
the rejection was maintained.2 Consistent with this implicit indication, the
Examiner confirms in the Examiner's Answer that claim 13 remains rejected
under 35 U.S.C. § 101. See Ans. 2-3. As Appellants present no argument
2 The Examiner's refusal to enter the claim amendments is not reviewable by
the Board. See In re Berger, 279 F.3d 975, 984--85 (Fed. Cir. 2002).
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Application 12/698,414
that apprises us of error in the rejection of current claim 13 (i.e., without the
proposed amendments), we sustain the rejection of claim 13 under 35 U.S.C.
§ 101.
Obviousness over Kim, Fukuda, and Shim - Claims 1-8 and 10--13
Appellants present arguments for patentability for only claims 1 and
13. Br. 5-9. For claims 2-8, 11, and 12, Appellants rely solely on their
dependency from claim 1 or 11 for patentability. Id. at 9. Accordingly, we
select claims 1 and 13 as representative to decide the appeal with respect to
the group. Claims 2-8, 11, and 12 stand or fall with claim 1 or 11. See 37
C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Kim's first switching circuit 21 corresponds
to the claimed "receiver electrode selection circuit," and Kim's second
switching circuit 22 corresponds to the claimed "position detection electrode
selection circuit." Final Act. 4 (citing Kim, paras. 25-27); Ans. 3--4. The
Examiner notes that paragraph 27 of Kim discloses the following:
Likewise, as the first switching circuit 21 maintains selection of
the receiving electrode 2, the second switching circuit 22 selects
the other receiving electrodes 1, 3, ... and N sequentially, and
then signal voltages between the receiving electrode 2 and the
other receiving electrodes are sequentially stored in the memory
27. As described above, if the first switching circuit 21 selects
the receiving electrode 3, 4, ... and N sequentially and the
second switching circuit 22 selects the other receiving electrodes
sequentially, finally the (N-1 )2 number of signal voltages are
stored in the memory 2 7.
Final Act. 4--5. The Examiner relies on Fukuda and Shim for disclosure in
relation to the claimed "positional information derivation section." Id. at 5.
Appellants contest the Examiner's finding that Kim discloses the
claimed position detection electrode selection circuit. Br. 5. Appellants
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Application 12/698,414
contend that "Kim is directed to a technique of selecting a suitable pair of
electrodes for position detection based on signal strength, and therefore, both
'first switching circuit 21' and 'second switching circuit 22' of Kim
correspond to a receiver electrode selection circuit of the present invention."
Id. at 6. Appellants assert that, in contrast, the claims recite independently
"a receiver electrode selection circuit" and "a position detection electrode
selection circuit." Id. According to Appellants, "Kim selects one receiving
electrode by the first switching circuit 21 and selects the other receiving
electrode by the second switching circuit 22 (two receiving electrodes are
selected in total)," whereas the claims "recite selecting two receiving
electrodes by the receiver electrode selection circuit and selecting another
two receiving electrodes by the position detection electrode selection circuit
(four receiving electrodes are selected in total)." Id. (emphases added).
These contentions are not persuasive. Claim 1 recites that the receiver
electrode selection circuit "selects receiver electrodes," and the position
detection electrode selection circuit "selects receiver electrodes." Claim 1
does not use the phrase "selects receiver electrodes" to refer to the number
of electrodes selected at any one time by either circuit, but more broadly
uses this phrase to refer to electrodes selected by the circuits at any or all
times. Contrary to Appellants' contention, claim 1 does not recite that each
circuit selects two receiving electrodes at any one time. A person of
ordinary skill in the art giving claim 1 its broadest reasonable construction
consistent with the Specification would not limit the claim scope to "a
receiver electrode selection circuit that selects [two] receiver electrodes" and
"a position detection electrode selection circuit that selects [two] receiver
electrodes," such that a total of four receiver electrodes are selected by the
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Application 12/698,414
two circuits at any time, to "derive[] the positional information of the intra-
subject introduction device," as Appellants contend.
We also note that Appellants presented proposed amendments to
claim 1 in the Response. Particularly, claim 1 was amended to recite "a
receiver electrode selection circuit that selects pairs of receiver electrodes"
and "a position detection electrode selection circuit that selects pairs of
receiver electrodes." See Response 2. Clearly, these amendments change
the claim scope by specifying the number of electrodes selected by each
circuit. However, these claim amendments were not entered by the
Examiner. See Adv. Act. 2-3; Ans. 4. Accordingly, we do not construe
claim 1 to require the proposed "pairs of' limitation for either circuit.
Appellants also contend that Kim does not disclose or suggest the two
claimed electrode selection circuits "independently for selecting receiving
electrodes so as to divide receiving electrodes into those for detecting intra-
subject information and those for detecting a position of an intra-subject
introduction device." Br. 7. In Kim, the receiving electrodes selected with
first switching circuit 21 and second switching circuit 22 are used to
determine positional information for capsule type endoscope 10 (Kim, para.
28), and to receive information from capsule type endoscope 10 (id. para.
29). Accordingly, Kim discloses that a receiving electrode selected with
first switching circuit 21 is used "for receiving the intra-subject
information," and another electrode selected with second switching circuit
22 is used "for position detection of the intra-subject information device."
Claim 1 does not recite any limitation that precludes receiver electrodes that
are selected by the position detection electrode selection circuit from
"receiving the intra-subject information," in addition to use in "position
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detection of the intra-subject introduction device." Accordingly, this
contention is also not persuasive.
Thus, we sustain the rejection of claims 1-8, 10, and 11 as
unpatentable over Kim, Fukuda, and Shim.
Appellants present substantially the same arguments for claim 13 as
those discussed above for claim 1. Accordingly, we also sustain the
rejection of claim 13 as unpatentable over Kim, Fukuda, and Shim.
Obviousness over Kim, Fukuda, Shim, and Frisch - Claim 9
Appellants do not present any separate argument for patentability of
claim 9. Accordingly, we sustain the rejection of claim 9 as unpatentable
over Kim, Fukuda, Shim, and Frisch.
DECISION
The Examiner's decision to reject claims 1-13 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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