Ex Parte IKAI et alDownload PDFPatent Trial and Appeal BoardMar 14, 201613180005 (P.T.A.B. Mar. 14, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/180,005 07 /11/2011 23389 7590 03/16/2016 SCULLY SCOTT MURPHY & PRESSER, PC 400 GARDEN CITY PLAZA SUITE 300 GARDEN CITY, NY 11530 FIRST NAMED INVENTOR Takuto IKAI 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. 27829Z 1617 EXAMINER BERHANU, ETSUB D ART UNIT PAPER NUMBER 3735 NOTIFICATION DATE DELIVERY MODE 03/16/2016 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 Ex parte T AKUTO IKAI and ATSUSHI CHIBA Appeal2014-002136 Application 13/180,005 1 Technology Center 3700 Before STEFAN STAICOVICI, EDWARD A. BROWN, and LEE L. STEPINA, Administrative Patent Judges. ST AI CO VICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Takuto Ikai and Atsushi Chiba (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner's final decision rejecting claims 27, 29, and 37.2 We have jurisdiction over this appeal under 35 U.S.C. § 6(b). SUMMARY OF DECISION We AFFIRM. According to Appellants, the real party in interest is Olympus Medical Systems Corporation. Br. 2 (filed Sept. 3, 2013). 2 Claims 2-19 and 28 have been canceled and claims 1, 20-26, and 30- 36 have been withdrawn. Id. at 3. Appeal2014-002136 Application 13/180,005 INVENTION Appellants' invention relates to "an in-vivo information acquiring system." Spec. 1. Claim 27, the sole independent claim on appeal, is representative of the claimed invention and reads as follows: 27. An in-vivo information acquiring system comprising: a body-insertable apparatus that includes a magnetic field responding unit, acquires in-vivo information, and transmits the acquired in-vivo information to the outside thereof; a magnetic field generator that generates a magnetic field for the magnetic field responding unit; a magnetic field control unit that controls a generation of the magnetic field using the magnetic field generator; a receiving unit that receives the in-vivo information transmitted from the body-insertable apparatus; a processing unit that processes the in-vivo information received by the receiving unit; a display unit that displays the in-vivo information processed by the processing unit on a predetermined display screen; an alarm lamp that notifies a generation state of the magnetic field using the magnetic field generator by use of light; and a control unit that controls a light emission process of the alarm lamp such that an operator who visually identifies the in- vivo information is less disturbed by the light from the alarm lamp, wherein the control unit, while the magnetic field generator is generating a magnetic field, detects a value of an intensity of the magnetic field in a state in which the magnetic field generator is generating and generates light in the alarm lamp when the detected value of the intensity of the magnetic field generated by the magnetic field generator becomes more than a predetermined threshold value. 2 Appeal2014-002136 Application 13/180,005 REJECTIONS The following rejections are before us for review: I. The Examiner rejected claim 37 under 35 U.S.C. § 112, second paragraph, as being indefinite. II. The Examiner rejected claims 27 and 37 under 35 U.S.C. § 103(a) as being unpatentable over Kawano (EP 2 143 371 Al, pub. Jan. 13, 2010). III. The Examiner rejected claim 29 under 35 U.S.C. § 103(a) as being unpatentable over Kawano and Minai (US 2008/0306358 Al, pub. Dec. 11, 2008). ANALYSIS The indefiniteness rejection The Examiner finds that in claim 3 7, there is insufficient antecedent basis for the limitation "the magnetic field sensor." Final Act. 2. Appellants have elected not to present arguments contesting this rejection. Br. 7 ("[Appellants] request that such rejection be held in abeyance until a decision is rendered with regard to independent claim 27."). Accordingly, as Appellants have not presented substantive arguments contesting this rejection, we summarily affirm the rejection of claim 37 under 35 U.S.C. § 112, second paragraph, as being indefinite. See In re Berger, 279 F.3d 975, 984, 985 (Fed. Cir. 2002) (holding that the Board did not err in sustaining a rejection under 35 U.S.C. § 112, second paragraph, when the applicant failed to contest the rejection on appeal). 3 Appeal2014-002136 Application 13/180,005 The obviousness rejections Independent claim 27 requires, inter alia, a control unit that detects the intensity of a magnetic field generated by a magnetic field generator and generates light in an alarm lamp when the intensity of the magnetic field is above a threshold value. See Br. 13-14. The Examiner finds that although Kawano discloses a controller 14 for notifying the generation of a magnetic field, Kawano fails to disclose "how the 'magnetic field on-state' and 'magnetic field off-state' indications are provided." Final Act. 3 (citing Kawano, i-f 82; Figs. 1, 2, and 11 ). Nonetheless, because the Examiner finds that "it is well known in the art to provide indications/notifications/alarms/alerts as alarm lamps," the Examiner concludes that, "it would have been well within the skill of the art to use an alarm lamp to illuminate the 'magnetic field on' and 'magnetic field off' display sections of Figure 11 of Kawano." Id. According to the Examiner, Kawano . . . provides an alarm lamp that notifies a generation state of a magnetic field by use of light, and a control unit that generates the light when an intensity of the magnetic field becomes more than a predetermined threshold value (in order for the system of Kawano . . . to recognize that the magnetic field generator is in a state of generating a guidance magnetic field, an intensity of the magnetic field generated must inherently be more than a predetermined threshold value, i.e. 0). Id. (emphasis added); see also Ans. 3. In other words, the Examiner takes the position that claim 27 merely requires that a light is turned ON when a 4 Appeal2014-002136 Application 13/180,005 detected value of the "intensity of the magnetic field is greater than 0 (a predetermined threshold value)." Ans. 6. In response, Appellants argue that claim 27 requires that "the light must [] remain turned off while the magnetic field is being generated unless the detected value of the intensity of the magnetic field becomes more than a predetermined threshold value." Br. 6. In other words, Appellants contend that, [I]t is inherent in claim 27 that the light is turned off while the magnetic field is being generated if the detected value of the intensity of the magnetic field becomes not more than the predetermined threshold value since the light is turned on when the detected value of the intensity of the magnetic field becomes more than predetermined threshold value. Id. (emphasis added). We do not agree with Appellants' position because as stated by our reviewing court inin re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998), "the name of the game is the claim." It is well established that limitations not appearing in the claims cannot be relied upon for patentability. In re Self, 671F.2d1344, 1348 (CCPA 1982). In a first instance, we agree with the Examiner that claim 27 does not require "that the light must tum off if it has been turned on and then the intensity of the magnetic field decreases below the predetermined threshold." Ans. 5 (emphasis added). For example, as the Examiner correctly finds, if the threshold value is zero, the control unit of claim 27 detects a magnetic field intensity while the generator generates a magnetic field and then generates a light in the alarm lamp, because the detected magnetic field intensity satisfies the condition that it is 5 Appeal2014-002136 Application 13/180,005 above a threshold value of zero. See id. at 6. Although we appreciate that Appellants' Specification describes a lamp control unit 810 that turns an alarm lamp 811 ON when the intensity of the magnetic field generated by a magnetic field generator is above a threshold value and turns it OFF when it falls below the threshold value (see Spec. 138-140; Figs. 55 and 56 of Appellants' Drawings), nonetheless, we must be careful not to read a particular embodiment appearing in the written description into the claim if the claim language is broader than the embodiment. See Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). In the Examiner's modification of Kawano's system, Kawano's controller 14 detects a magnetic field intensity and turns ON a lamp to illuminate "magnetic field on," because the detected magnetic field intensity is above a threshold value of zero. See Ans. 3; see also Kawano, i-f 82; Fig. 11. Accordingly, Kawano, as modified by the Examiner, discloses a control unit, as called for by claim 27. See Ans. 6. In conclusion, for the foregoing reasons, we sustain the rejection under 35 U.S.C. § 103(a) of independent claim 27 as unpatentable over Kawano. In regard to the rejections of claims 29 and 37, Appellants rely on the arguments presented supra with respect to the rejection of independent claim 27 for patentability. See Br. 6. Therefore, we also sustain the rejections under 35 U.S.C. § 103(a) of claim 37 as unpatentable over Kawano and of claim 29 as unpatentable over Kawano and Minai. 6 Appeal2014-002136 Application 13/180,005 SUMMARY The Examiner's decision to reject claim 37 under 35 U.S.C. § 112, second paragraph, as being indefinite, is affirmed. The Examiner's decision to reject claims 27 and 37 under 35 U.S.C. § 103(a) as unpatentable over Kawano is affirmed. The Examiner's decision to reject claim 29 under 35 U.S.C. § 103(a) as unpatentable over Kawano and Minai 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 7 Copy with citationCopy as parenthetical citation