Ex Parte Kimura et alDownload PDFPatent Trial and Appeal BoardJul 29, 201613370646 (P.T.A.B. Jul. 29, 2016) 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. 13/370,646 02/10/2012 Atsushi KIMURA P/4955-9 7458 2352 7590 07/29/2016 OSTROLENK FABER LLP 1180 AVENUE OF THE AMERICAS NEW YORK, NY 10036-8403 EXAMINER SIRIPURAPU, RAJEEV P ART UNIT PAPER NUMBER 3737 MAIL DATE DELIVERY MODE 07/29/2016 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 ATSUSHI KIMURA, AKIO UCHIYAMA, and RYOJI SATO ____________ Appeal 2013-010778 Application 13/370,6461 Technology Center 3700 ____________ Before JOSEPH A. FISCHETTI, KENNETH G. SCHOPFER, and MATTHEW S. MEYERS, Administrative Patent Judges. SCHOPFER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 from the rejection of claims 1–13. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. BACKGROUND According to Appellants, “[t]he present invention relates to a position detection apparatus and a [medical]-apparatus-position detection system.” Spec. 1. 1 According to Appellants, the real party in interest is Olympus Corporation. Appeal Br. 1. Appeal 2013-010778 Application 13/370,646 2 CLAIMS Claims 1–13 are on appeal. Claim 1 is the only independent claim and recites: 1. A medical-device-position detection system comprising: a medical device including a circuit having at least one embedded coil, and a magnet; a first magnetic-field generating unit configured for generating a first magnetic field; a magnetic-field detecting unit configured for detecting an induced magnetic field excited at the embedded coil by the first magnetic field; and a second magnetic-field generating unit configured for generating a second magnetic field having a phase substantially opposite to the phase of the first magnetic field, wherein the second magnetic-field generating unit is configured to generate a third magnetic field for controlling the position and orientation of the magnet included in the medical device. Appeal Br. 8. REJECTIONS 1. The Examiner rejects claims 1–4, 7–10, and 12 under 35 U.S.C. § 103(a) as unpatentable over Tokunaga2 in view of Sadaaki3 and Jin.4 2. The Examiner rejects claims 5 and 6 under 35 U.S.C. § 102(b) as anticipated by Tokunaga in view of Sadaaki, Jin, and Charles.5 2 Tokunaga, et al., “Precision Position-Detecting System Using an LC Resonant Magnetic Marker,” Journal of Magnetics Society of Japan, vol. 29, pp. 153–156, 2005. 3 Sadaaki, JP 2001/027676 A, pub. Jan. 30, 2001. 4 Jin, US 6,776,165 B2, iss. Aug. 17, 2004. 5 Charles et al., US 6,665,554 B1, iss. Dec. 16, 2003. Appeal 2013-010778 Application 13/370,646 3 3. The Examiner rejects claims 1–13 on the grounds of nonstatutory obviousness-type double patenting as unpatentable over claims 1, 3–8, 10–18, 20–26, and 39–44 of Kimura.6 DISCUSSION Rejection 1 Appellants raise only one argument, that the Examiner has not shown that the prior art teaches or suggests a second magnetic-field generating unit that is configured to both generate a second magnetic field and a third magnetic field as claimed. Appeal Br. 4–6. Appellants do not refute the Examiner’s characterization of the art. However, Appellants assert that the Examiner has not shown any teaching or suggestion that the art includes a “dual function second magnetic-field generating unit” or that it would have been obvious to combine the references to provide such a unit. Id. We are not persuaded of error. In the rejection, the Examiner relies on Tokunaga as disclosing a device with an embedded coil, a first magnetic- field generating unit, and a magnetic field detecting unit. Final Action 4. The Examiner relies on Sadaaki as disclosing a second magnetic-field generating unit configured to generate a second magnetic field as claimed, and the Examiner relies on Jin as disclosing a magnetic navigation and tracking device including a magnet and a third magnetic field as claimed. Id. at 4–5. The Examiner concludes that it would have been obvious to combine Tokunaga, Sadaaki, and Jin, but the Examiner does not specifically state that it would have been obvious to combine the references to produce a 6 Kimura et al., U.S. Application No. 11/571,232, which issued as U.S. Patent No. 8,140,145 on Mar. 20, 2012. Appeal 2013-010778 Application 13/370,646 4 second magnetic-field generating unit configured to produce both the second and third magnetic fields. Id. Although the Examiner does not make a specific finding that the combined device would result in a second magnetic field generating unit as claimed, we find that the combination would result in the claimed device, and thus, the rejection covers all elements of the claim. Further, the Examiner elaborates in the Answer that “a skilled artisan would have found it obvious to integrate into a single unit the magnetic devices of Sadaaki and Jin because doing so would reduce the number of magnetic devices required to perform the well-established functions” of the units individually. Ans. 7. Appellants did not provide a Reply, so the Examiner’s conclusion in the Answer is left unrebutted. Further, we agree with the Examiner that the term “unit” does not require that a single magnetic device create both the second and third fields. See id. at 5. Rather, under the broadest reasonable interpretation of the claim, two magnetic devices may be combined to form a unit to create these fields. Under that interpretation, combining Sadaaki and Jin to form a single unit that creates second and third magnetic fields would require no more than routine skill. Based on the foregoing, we find that the Examiner established a prima facie showing of obviousness with respect to claim 1 without error. Accordingly, we sustain the rejection of claim 1 as obvious over Tokunaga in view of Sadaaki and Jin. Appellants did not raise any separate arguments with respect to dependent claims 2–4, 7–10, and 12, and thus, we sustain the rejection of those claims for the same reasons. Appeal 2013-010778 Application 13/370,646 5 Rejection 2 With respect to this rejection, Appellants argue only that Charles does not cure the alleged deficiency in the rejection of claim 1, as discussed above. We found no deficiency in the rejection of claim 1, and thus, Appellants have not shown any error in the rejection of claims 5 and 6. Accordingly, we sustain the rejection of those claims. Rejection 3 With respect to the double patenting rejections, App. No. 11/571,232 has issued as US Patent No. 8,140,145 with the following claim: 1. A position detection apparatus comprising: a circuit provided inside an object to be detected, the circuit including at least one embedded coil; a first magnetic-field generating unit for generating a first magnetic field; a magnetic-field detecting unit for detecting an induced magnetic field generated at the embedded coil based on the first magnetic field; and a second magnetic-field generating unit for generating a second magnetic field having a phase substantially opposite to the phase of the first magnetic field, wherein the second magnetic-field generating unit includes a mutually-induced-magnetic-field generating coil for generating a mutually induced magnetic field based on the first magnetic field and a second magnetic-field generating coil for generating the second magnetic field, wherein the mutually-induced-magnetic-field generating coil is positioned in the vicinity of the first magnetic-field generating unit and the second magnetic-field generating coil is positioned in the vicinity of the magnetic-field detecting unit, and wherein the mutually-induced-magnetic-field generating coil and the second magnetic-field generating coil are electrically connected in series. Appeal 2013-010778 Application 13/370,646 6 This claim is substantially similar to the present claim 1, lacking only the limitation related to the creation of a third magnetic field. In the rejection, the Examiner states: Claims 1-13 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over Claims 1, 3-8, 10-18, 20-26, and 39-44 of U.S. App. Serial No. 11/571232. Although the conflicting claims are not identical, they are not patentably distinct from each other because the additional element of the current claims, positing a medical device with a magnetic field is well-known in the art and would have been an obvious improvement for the purpose of moving a medical device within the body. Final Action 3. In the Answer, the Examiner elaborates: Regarding the obviousness-type double patenting rejections of Claims 1-13, Appellant argues that Examiner has not provided a sufficient basis his rejection because the Examiner has not shown the specific arrangement of fields and detection devices shown. Examiner disagrees with Appellant’s naked conclusions because the only difference the commonly owned application and the current claims is the addition of a positioning and orienting device for manipulating the medical device within the body of the patient using a magnetic field. As noted above in this brief and in the previous actions, Jin discloses such a positioning and orienting device using a magnet, which would have been obvious in combination with commonly owned application claim 1 and reads on the current claims in a similar fashion to that suggested hereinabove. Ans. 7–8. Appellants assert that the Examiner failed to provide a prima facie showing of obviousness double patenting because “sole independent claim 1 is not directed simply to the use of a magnetic field with a medical device but rather a specific arrangement of magnetic fields and detection device and this is not well known in the art.” Appeal Br. 3. However, we are not Appeal 2013-010778 Application 13/370,646 7 persuaded of error in the light of the totality of the Examiner’s findings, including the unrebutted findings of the Examiner presented in the Answer, which show that it was it was known in the art to use a magnetic field for controlling position and orientation of a magnet in a medical device. Accordingly, we sustain this rejection. CONCLUSION For the reasons set forth above, we sustain the rejections of claims 1– 13. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation