Ex Parte Kimoto et al

Patent Trial and Appeal Board

Dec 18, 2014

11642234 (P.T.A.B. Dec. 18, 2014)

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.
11/642,234 12/20/2006 Seiichiro Kimoto 20568 1649
23389 7590 12/19/2014
SCULLY SCOTT MURPHY & PRESSER, PC
400 GARDEN CITY PLAZA
SUITE 300
GARDEN CITY, NY 11530
EXAMINER
NEWTON, ALEXANDRA L
ART UNIT PAPER NUMBER
3779
MAIL DATE DELIVERY MODE
12/19/2014 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 SEIICHIRO KIMOTO and TOSHIMASA AKAGI
_________

Appeal 2012-006155
Application 11/642,234
Technology Center 3700
__________

Before ERIC B. GRIMES, ULRIKE W. JENKS, and
CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.

PAULRAJ, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to an in-
vivo image capturing system. The Examiner rejected the claims on
anticipation grounds. 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).
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Application 11/642,234

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STATEMENT OF THE CASE
Background
According to the Specification, “[t]he invention relates to an in-vivo
image capturing system such as a capsule endoscope which is inserted into a
body of a subject in order to obtain images of inside the subject” (Spec. 1).
The Claims
Claims 1–3, 7, and 12 are under appeal. Independent claim 1 is
representative, and reads as follows:
l. An in-vivo image capturing system comprising:
a capsule casing insertable into a subject from an oral cavity, the
capsule casing including an imaging optical system capable of capturing
images only in one end direction;
an analyzing unit which determines whether an imaging direction of
the capsule casing is heading for the throat side or teeth side of the subject
by analyzing image components captured by the imaging optical system
within the oral cavity; and
a warning unit which issues a warning to a user about a direction of
the capsule casing based on the determination by the analyzing unit.

The Rejection

The Examiner rejected the claims under 35 U.S.C. § 102(b) as being
anticipated by Takizawa.2
FINDINGS OF FACT
FF1. Takizawa teaches “[a] capsule medical apparatus for medical
actions such as examination [that] detects by a sensor or the like
whether it is just being evacuated from the body or it has already
been evacuated” (Takizawa, Abstract).

2 Takizawa et al., US 2004/0176685 A1, published Sept. 9, 2004.
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Application 11/642,234

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FF2. Takizawa teaches that “[a]n image pick-up element 25 for picking
up an image such as a COMS imager is arranged at the image
forming position” of the capsule (id., ¶ 52). Takizawa further
teaches:
The image pick-up element 25 has, on the back side
thereof, a processing circuit 27 which drives the white
LEDs 26, drives the image pick-up element 25, and
performs the signal processing and controlling of the
image pick-up element 25, a communication circuit 28
which transmits, to the extracorporeal unit 5, the image
signal picked up by the image pick-up element 25 and
demodulates the signal transmitted from the
extracorporeal unit 5, a battery 29 which supplies power
for operation to the circuits, a buzzer circuit 30 as sound
notifying means for notifying, and a switch 31 which
switches on and off the battery 29.

(Id., ¶ 55.) Takizawa also teaches that “the image pick-up element
25 may be used as the optical sensor without the optical sensor 41”
(id., ¶ 89).
ANALYSIS
The Examiner finds that
Takizawa discloses an in-vivo image capturing system
comprising:
[03a] a capsule casing (“capsule 3B” [0087])
insertable into a subject from an oral cavity, the capsule
casing including an imaging optical system (“image
pickup element 25” [0089]) capable of capturing images
only in one end direction;
[03b] an analyzing unit which determines whether
an imaging direction of the capsule casing is heading for
the throat side or teeth side of the subject by analyzing
image components (“image pickup element 25 may be
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Application 11/642,234

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used as the optical sensor” [0089]) captured by the
imaging optical system within the oral cavity; and
[03c] a warning unit (“notifying means” [0087])
which issues a warning to a user about a direction of the
capsule casing based on the determination by the
analyzing unit.

(Ans. 4–5.)
Appellants argue that “Takizawa (1) is not capable of carrying out the
function recited in claim 1 and also (2) does not disclose or suggest the
structural features recited in claim 1” (App. Br. 5). More particularly,
Appellants assert that “the apparatus of Takizawa does not include ‘an
analyzing unit which determines whether an imaging direction of the capsule
casing is heading for the throat side or teeth side of the subject by analyzing
image components captured by the imaging optical system within the oral
cavity’ as recited in claim 1” (id.). Appellants further assert that “the
Examiner is silent with regard to the disclosure of the determination of the
imaging direction of the capsule casing in Takizawa” (id. at 6).
Additionally, Appellants draw a distinction on the basis that “the system of
the claimed invention detects the imaging direction of the capsule casing in
the throat, i.e., a dark area, whereas the apparatus of Takizawa detects the
evacuation of the capsule outside of the subject, i.e., a bright area” and
“[a]ccordingly, the former requires light to illuminate the throat to capture
images but the latter does not” (id.).
The Examiner responds that “the true function of the analyzing unit,
as enabled by the specification, is recognition of brightness, not teeth per
se,” and therefore maintains “that Takizawa discloses the function of
detecting brightness, which is the only function enabled by the specification”
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(Ans. 6). The Examiner further asserts that “the analyzing unit of Takizawa
structurally anticipates the analyzing unit recited by Appellant” as “[b]oth
elements are capable of quantifying a brightness component of an image”
(id.).
We find that Appellants have the better position. As an initial matter,
we disagree with the Examiner’s treatment of the claimed analyzing unit as
merely requiring the detection of brightness, not teeth per se. The claim
language specifically requires “an analyzing unit which determines whether
an imaging direction of the capsule casing is heading for the throat side or
teeth side of the subject by analyzing image components captured by the
imaging optical system within the oral cavity” (Cl. 1). Although this
function may be performed by analyzing brightness levels (Spec. 41–42), the
analyzing unit must nevertheless make a determination of which direction
the capsule is traveling (i.e., toward the throat side or teeth side). The
Examiner fails to identify any teaching indicating that the image pick-up
element 25 of Takizawa can determine the direction of the capsule. Rather,
Takizawa only teaches sensing whether the capsule “is just being evacuated
from the body or it has already been evacuated” (FF1–2). 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’”).
We also disagree with the Examiner’s treatment of the claimed
functional language for the analyzing unit as merely an intended use that
“does not differentiate the claimed apparatus from a prior art apparatus
satisfying the claimed structural limitations” (Ans. 6). We consider the
claimed “analyzing unit” to be akin to a processor programmed to perform
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the particular function of determining the direction of the capsule. When the
functional language of a claim is associated with programming or some
other structure required to perform the function, that programming or
structure must be present in order to meet the claim limitation. See Typhoon
Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1380 (Fed. Cir. 2011); see
also Vizio, Inc. v. Int'l Trade Comm’n, 605 F.3d 1330, 1341 (Fed. Cir. 2010)
(“[T]he ‘for decoding’ language . . . is properly construed as a limitation,
and not merely a statement of purpose or intended use for the invention,
because ‘decoding’ is the essence or a fundamental characteristic of the
claimed invention.”).
We therefore reverse the anticipation rejection based on Takizawa.

REVERSED

cdc