Ex Parte Trovato et al

Patent Trial and Appeal Board

Mar 27, 2013

12306017 (P.T.A.B. Mar. 27, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte KAREN I. TROVATO and JEFF SHIMIZU
__________

Appeal 2011-012424
Application 12/306,017
Technology Center 3700
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Before LORA M. GREEN, MELANIE L. McCOLLUM, and
ERICA A. FRANKLIN, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
system for delivering a substance to a selected site in an alimentary canal of
a body of a human or animal. The Patent Examiner rejected the claims as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.

STATEMENT OF THE CASE
Claims 1-15 are on appeal. Claim 1 is representative and reads as
follows:

Appeal 2011-012424
Application 12/306,017

2
1. A system for delivering a substance to a selected site in an alimentary
canal of a body of a human or animal, the system comprising:
at least one transmitter disposed in a housing in proximity to a
medically relevant site on the body and transmitting signals; and
an ingestible capsule for receiving the signals, collecting data, and
releasing the substance, the capsule comprising:
a compartment for storing the substance;
a releasing device for releasing the substance from the
compartment;
a receiver suitable for receiving the signals through a tissue of
the body;
a processor for storing a programmed set of instructions for
recognizing patterns of the signals, each pattern is designed to identify
a site in the body, and for initiating the releasing of the substance
upon recognizing of a specific pattern; and
an electronic power source;
wherein the receiver comprises a proximity based detector for measuring
proximity of the receiver to the at least one transmitter.

The Examiner rejected the claims as follows:
• claims 1, 2, 4, 6, 8-10 and 12-15 under 35 U.S.C. § 103(a) as
unpatentable over von Alten
1
and Fujita;
2

• claim 3 under 35 U.S.C. § 103(a) as unpatentable over von Alten,
Fujita, and Casper;
3

• claim 5 under 35 U.S.C. § 103(a) as unpatentable over von Alten,
Fujita, and Palti;
4

1
Patent No. US 6,929,636 B1 issued to Thomas W. von Alten, Aug. 16,
2005.
2
Patent Application Publication No. US 2003/0085994 A1 by Manabu
Fujita et al., published May 8, 2003.
3
US Patent No. 5,170,801 issued to Robert A. Casper et al., Dec. 15, 1992.
4
US Patent No. 5,846,188 issued to Yoram Palti, Dec. 8, 1998.
Appeal 2011-012424
Application 12/306,017

3
• claim 7 under 35 U.S.C. § 103(a) as unpatentable over von Alten,
Fujita, and Krill;
5
and
• claim 11 under 35 U.S.C. § 103(a) as unpatentable over von Alten,
Fujita, and Glukhovsky.
6

OBVIOUSNESS
The Examiner found that von Alten taught a system for delivering a
substance to a selected site in an alimentary canal of a body of a human or
animal, as recited in rejected claim 1, except that von Alten was “silent
about whether the receiver [66] comprises a proximity based detector for
measuring proximity of the receiver to the at least one transmitter.” (Ans. 4-
5.) However, the Examiner found that Fujita taught a system having a
receiver comprising a proximity based detector, which is a signal strength
meter, for measuring proximity of the receiver to at least one transmitter.
(Id.at 5.)
According to the Examiner, it would have been obvious to a person of
ordinary skill in the art at the time the invention was made to have modified
von Alten‟s receiver with a proximity based sensor, as taught by Fujita, so
that “the proximity based sensor will detect the radio wave strength of the
transmitted signals, which is related to the distance between the receiver and
the transmitter, such that proper transmission power can be adjusted and
set.” (Id.)

5
Patent Application Publication No. US 2004/0122315 A1 by Jerry A. Krill,
published Jun. 24, 2004.
6
Patent Application Publication No. US 2006/0155174 A1 by Arkady
Glukhovsky et al., published Jul. 13, 2006.
Appeal 2011-012424
Application 12/306,017

4
Appellants contend,
In Alten, any activation to release drug from the capsule
10, even when in response to activation commands from an
external transmitter such as a wireless communication system
20 …, is based on internal biologic data sensed by the capsule
10, such as temperature or pH within the digestive tract, and
NOT based on recognizing patterns of the signals from external
transmitter, where „each pattern is designed to identify a site
in the body,‟ as recited in independent claims 1, and similarly
recited in independent claim 13.

(Reply Br. 3.) Further, Appellants assert that Fujita does not cure this
deficiency by disclosing a capsule that uses the strength of a signal received
from an external unit to set the proper transmission power from the capsule
for transmitting information from the capsule to the external unit. (App. Br.
10-11.)
We agree with Appellants. For each of the obviousness rejections, the
Examiner relied on Alten as teaching “identifying a site in the body and
initiating the releasing of a substance upon recognizing a specific pattern.”
(Ans. 12-13.) However, Alten‟s capsule dispenses a stored substance in
response to biologic information sensed by a sensing module disposed in the
capsule (Alten, col. 2, ll. 19-43) and not in response to a pattern of
transmitted signals, wherein each pattern is designed to identify a site in the
body, as required by the claimed invention.
Accordingly, we reverse each of the Examiner‟s obviousness
rejections.
REVERSED

cdc