Ex Parte AOKI et alDownload PDFPatent Trial and Appeal BoardFeb 11, 201512418780 (P.T.A.B. Feb. 11, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/418,780 04/06/2009 Isao AOKI 23983 9245 23389 7590 02/11/2015 SCULLY SCOTT MURPHY & PRESSER, PC 400 GARDEN CITY PLAZA SUITE 300 GARDEN CITY, NY 11530 EXAMINER HOEKSTRA, JEFFREY GERBEN ART UNIT PAPER NUMBER 3736 MAIL DATE DELIVERY MODE 02/11/2015 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte ISAO AOKI and MIHO KATAYAMA __________ Appeal 2012-007790 Application 12/418,780 Technology Center 3700 __________ Before DEMETRA J. MILLS, CHRISTOPHER G. PAULRAJ, and KENNETH G. SCHOPFER, Administrative Patent Judges. PER CURIAM. DECISION ON APPEAL This is a decision on appeal1 under 35 U.S.C. § 134 from the Examiner’s rejection of claims 1, 3, and 8. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 Appellants identify the Real Party in Interest as Olympus Medical Systems Corporation (see App. Br. 2). App App intro in or show Figu caps caps unit 24” whet appe subje eal 2012-0 lication 12 The Spe duced into der to perf n below: re 2 shows ule medica ule medica 21, a signa (id.). The her there i Claim 1, al and read 1. A ca a capsul a tissue o ct; 07790 /418,780 ST cification a subject orm a biop a “schem l apparatu l apparatu l processo Specificat s a tissue o the only i s as follow psule med e casing: btaining u ATEMEN discloses a to obtain a sy” (Spec atic diagra s” (id. at 1 s 2 . . . inc r 22, a bio ion disclos btained b ndependen s (empha ical appara nit that ob 2 T OF TH “capsule tissue fro . 1). Figu m of a con 9). The S ludes a ca psy mecha es that the y the biop t claim, is sis added) tus compr tains a tis E CASE medical ap m a body re 2 of the figuration pecificatio psule casin nism 23, “photosen sy mechan represent : ising: sue from a paratus th site (to be Specificat example n disclose g 20, an i and a phot sor 24 de ism 23” (i ative of th body site at is examined ion is of the s that “the maging osensor tects d. at 20). e claims o of a ) n Appeal 2012-007790 Application 12/418,780 3 a detecting unit that detects a state of the tissue obtaining unit that varies depending on whether the tissue obtaining unit succeeds in obtaining the tissue; an output unit that outputs information representing whether the tissue obtaining unit succeeds in obtaining the tissue to outside of the subject; and a control unit that determines whether the tissue obtaining unit succeeds in obtaining the tissue based on the state of the tissue obtaining unit, which is detected by the detecting unit, and causes the output unit to output the information representing whether the tissue obtaining unit succeeds in obtaining the tissue, the control unit being arranged in the capsule casing, wherein if the tissue obtaining unit does not succeed in obtaining the tissue, the control unit causes the tissue obtaining unit to perform a tissue obtaining operation again and causes the output unit to output the information representing the success in obtaining the tissue when the tissue obtaining unit succeeds in obtaining the tissue. Issue The Examiner has rejected claims 1, 3, and 8 under 35 U.S.C. § 102(b) as anticipated by Mullick.2 Findings of Fact FF1. The Examiner finds that Mullick discloses [A] capsule medical apparatus . . . comprising . . . a capsule casing (12 and 302) . . . a tissue obtaining unit (300) that obtains a tissue from a body site of a subject . . . [and] a detecting unit (14) that detects a state of the tissue obtaining unit that varies depending on whether the tissue obtaining unit succeeds in obtaining the tissue (Ans. 5 (citing Mullick, Figs. 1 and 10, ¶¶ 53–67, 79, 80, 86, and 87)). 2 Mullick et al., US 2003/0167000 A1, published Sept. 4, 2003 (hereinafter “Mullick”). Appeal 2012-007790 Application 12/418,780 4 FF2. The Examiner finds that Mullick discloses “an output unit (16) that outputs information representing whether the tissue obtaining unit succeeds . . . to outside of the subject” (id.). FF3. The Examiner finds that Mullick discloses a “control unit (18 and 32) that determines whether the tissue obtaining unit succeeds in obtaining the tissue based on the state of the tissue obtaining unit, which is detected by the detecting unit . . . [wherein] the control unit . . . [is] arranged in the capsule casing” (id.). FF4. The Examiner finds that Mullick discloses that, “if the tissue obtaining unit does not succeed . . . the control unit causes the tissue obtaining unit to perform a tissue obtaining operation again” (id. at 5–6.) FF5. Mullick discloses “a miniature ingestible capsule for imaging the gastrointestinal tract for medical diagnosis or diagnosis and/or therapy for the human body” (Mullick 1, ¶ 2). FF6. Figure 1 of Mullick is shown below: Figure 1 shows a block diagram for the device and indicates “the main components and signal flow for the imaging system” (id. at 3, ¶ 35). FF7. Mullick discloses that the “imaging device, such as a CCD array and lens . . . provide real-time color images of the gastrointestinal tract” (id. at 2, ¶ 19). App App 14, i trans (id. a relay Figu as ex retra or ot at 3, “a tr 302. 300. with eal 2012-0 lication 12 FF8. Mu mpinging mitted by t 4, ¶ 005 FF9. Mu ed to a rec FF10. F re 10 show tendable b ctable rat t her miniat ¶ 0047). FF11. M eatment to A retracta Upon com in the caps 07790 /418,780 llick disc on an imag a transceiv 3). llick disc ording an igure 10 o s “a persp iopsy forc ooth force ure device ullick dis ol 300 is a ble lever pletion o ule” (id. a loses that “ ing array er 18 to a loses that t d display d f Mullick ective vie eps or ext ps, retract s for diagn closes that dded to a p 304 protru f the treatm t 6, ¶ 0079 5 [i]mages 16, the sig transceive he “data f evice 24” is shown b w of a cap endable ba able cyt[o] osis and t , in the em ort in the des from t ent opera ). enter the c nal from w r 20 outsi rom the tra (id.). elow: sule with a sket, retra logy brush herapy in t bodiment front port he capsule tion, the to apsule thr hich is th de of the c nsceiver 1 treatmen ctable bas , retractab he human shown in ion of the exposing ol may be ough a len en apsule” 8 is then t tool such ket, le snares body” (id Figure 10, capsule the tool retracted s . Appeal 2012-007790 Application 12/418,780 6 FF12. Mullick discloses that the [S]pecialized tool 300 can include biopsy forceps or retractable snares (with cold and hot snares with coagulation and cutting current) for purposes like polypectomy. Alternatively, tool 300 can include an extendable basket, retractable basket, retractable rat tooth forceps, retractable cytology brush, which can be used for diagnosis and therapy in the human body. (Id. at 6, ¶ 0080.) FF13. Mullick discloses that the capsules can be used for “diagnosis and treatment in the biliary and pancreatic trees, pancreas, liver, and gastrointestinal system, and human body” (id.). Analysis Appellants argue that the Examiner cites the Mullick lens 14 as “the detecting unit without identifying how such lens can operate as recited in claim 1” (App. Br. 6). Appellants argue that there is no teaching or suggestion in Mullick “of the lens being used to detect a state of the tissue obtaining unit that varies depending on whether the tissue obtaining unit succeeds in obtaining the tissue” (id.). Appellants argue that “although Mullick discloses that the lens 14 is used for capturing an image of the gastrointestinal tract . . . Mullick does not disclose or suggest capturing an image of the treatment tool 300 through the lens 14 to detect a state of the treatment tool 300” (Reply Br. 3 (citing Mullick 4, ¶ 0053)). The Examiner responds that Mullick’s lens 14 is the “structural equivalent of the claimed ‘detecting unit’ . . . in light of the instant Specification” (Ans. 7). The Examiner finds that the Specification states that a photosensor 24 detects the state of the biopsy mechanism 23 and Appeal 2012-007790 Application 12/418,780 7 whether tissue was successfully obtained and thus functions as a detecting unit (id. at 7–8 (citing the Spec. at 24)). The Examiner finds that the Specification also discloses that the “‘detecting unit’” may be “proximity sensors . . . a pressure sensor . . . or [an] electrode sensor” (id. at 8 (citing the Spec. at 45–46, 56, and 63)). The Examiner reasons that “[i]mages enter Mullick’s lens 14 and it may be reasonably considered at least ‘a photosensor’ because the lens is optically detecting whether tissue is obtained or not” (id. (emphasis removed)). The Examiner reasons that the “images entering through the lens . . . must necessarily show . . . when the biopsy forceps 300 succeed or fail in capturing tissue . . . [when] viewed on the exterior display” (id.). We agree with Appellants that the Examiner has not adequately explained how Mullick discloses the detecting unit of claim 1. In particular, the Examiner fails to identify any teaching in Mullick indicating Mullick’s lens 14 is used to detect “a state of the tissue obtaining unit that varies depending on whether the tissue obtaining unit succeeds in obtaining the tissue,” as required by claim 1. Rather, Mullick only teaches that the lens provides real-time images of the gastrointestinal tract (FF7), but not that the lens is used to determine the success of the treatment tools in obtaining tissues. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (to find anticipation “all limitations in the claims must be found in the reference since the claims measure the invention”). To the extent that the Examiner is relying on an inherency rationale wherein a specific configuration of the lens and imaging system and the treatment tool would allow the lens to detect the success of the treatment tools in obtaining tissues, this reasoning is also not Appeal 2012-007790 Application 12/418,780 8 persuasive because the Examiner has not pointed to anything in Mullick as disclosing this configuration, and inherency may be not be established merely because the lens of Mullick could be configured to perform the same function as the photosensor taught in the Specification as one example of the detecting unit. See MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999) (“Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.”) We thus agree with Appellants that the Examiner has not adequately explained how Mullick discloses the capsule medical apparatus of claims 1, 3, and 8.3 SUMMARY We reverse the rejection of claims 1, 3, and 8 under 35 U.S.C. § 102(b). REVERSED cdc 3 Because our conclusion is based on Mullick’s failure to teach the functional requirements of the claimed “detecting unit,” we do not reach the issue of whether the claim language requires any particular structure in accordance with 35 U.S.C. § 112 ¶ 6. We also do not reach Appellants’ arguments concerning any other claim limitations. Copy with citationCopy as parenthetical citation