Ex Parte Uchiyama et al

Patent Trial and Appeal Board

May 3, 2016

12394695 (P.T.A.B. May. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/394,695 0212712009
23389 7590 05/05/2016
SCULLY SCOTT MURPHY & PRESSER, PC
400 GARDEN CITY PLAZA
SUITE 300
GARDEN CITY, NY 11530
FIRST NAMED INVENTOR
Akio Uchiyama
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.
23873 3019
EXAMINER
WOO, JAE KYUN
ART UNIT PAPER NUMBER
3779
NOTIFICATION DATE DELIVERY MODE
05/05/2016 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 AKIO UCHIYAMA, RYOJI SATO,
ATSUSHI KIMURA, ATSUSHI CHIBA,
HIRONOBU TAKIZAWA,
TAKES HI MORI, and TETSUO MINAI
Appeal2014-005499
Application 12/394,695
Technology Center 3700
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
JACQUELINE T. HARLOW, Administrative Patent Judges.
PER CURIAM
DECISION ON APPEAL
This is an appeal 1 under 35 U.S.C. § 134 involving claims to a capsule
guiding system. The Examiner rejected the claims as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
1 Appellants identify the Real Party in Interest as OLYMPUS
CORPORATION and OLYMPUS MEDICAL SYSTEMS CORP. (see Br.
3).
Appeal2014-005499
Application 12/394,695
Statement of the Case
Background
Appellants' invention "relates to a capsule guiding system and a
capsule guiding method which allow a communication with a capsule
endoscope via a human body communication and a guidance of the capsule
endoscope through a detection of at least one of a position and a direction of
the capsule endoscope" (Spec. 1: 11-16).
The Claims
Claims 13, 15, 22, and 23 are on appeal. Independent claim 13 is
representative and reads as follows (emphasis added):
13. A capsule guiding system comprising:
an electrode pad which is arranged at an outside of a
human body to perform a human body communication with a
capsule endoscope and detect at least one of a position and a
direction of the capsule endoscope;
a rigid part of a human body arranging device and a
conductive soft part of the human body arranging device, the
electrode pad being fixedly arranged between the conductive soft
part and the rigid part so that during use, the electrode pad and
the human body are electrically in contact with each other via
the conductive soft part;
a magnetically guiding device which moves the capsule
endoscope;
a calculator which calculates at least one of the position
and the direction of the capsule endoscope based on a detection
value of the electrode pad, mathematically adds at least one of a
position and a direction of the rigid part of the human body
arranging device with respect to the magnetically guiding device
to at least one of the position and the direction of the capsule
endoscope, and calculates at least one of an absolute position and
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Application 12/394,695
an absolute direction of the capsule endoscope with respect to the
magnetically guiding device;
a receiver configured to receive voltages induced in the
electrode pad and to output the voltages to the calculator; and
a control unit which controls the magnetically guiding
device based on at least one of the absolute position and the
absolute direction.
The Issue
The Examiner rejected claims 13, 15, 22, and 23 under 35 U.S.C.
§ 103(a) as obvious over Kawano,2 Kim, 3 and Reinhold4 (Ans. 2-7).
The Examiner finds that Kawano teaches "a capsule guiding system
('magnetic guiding medical system 71 ', [0096]), comprising: [] a pad
arranged outside of a human body and detects at least one of a position and a
direction of a capsule endoscope ('sensing coils 182', [0302], Figure 59.
See also [0299] - [0360])" (id. at 2).
The Examiner concludes that it would have been obvious to
"incorporate Kim's human body communication electrodes into the
invention of Kawano, specifically arranging the modified pad on the bed
surface to allow human body communication because as Kim describes, it
overcomes the limitations of radio wave communication such as high power
consumption, reduced operational time, and reduced sensitivity ([0005])"
(id. at 2-3).
2 Kawano et al., US 2007/0270628 Al, published Nov. 22, 2007.
3 Kim et al., US 2006/0173265 Al, published Aug. 3, 2006.
4 Reinhold, Jr. et al., US 3,888,240, issued June 10, 1975.
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Application 12/394,695
The Examiner concludes that it would have been obvious "using
Reinhold's disclosure to fashion an electrode pad where the soft conductive
part is made from the electrically conductive yams because as Reinhold
motivates, 'the utilization of flexible sheet form electrodes enables a reliable
electrical connection', column 2, lines 3-5" (id. at 3).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner's conclusion that Kawano, Kim, and Reinhold
render the claims prima facie obvious?
Findings of Fact
1. Figure 1 of Kawano is reproduced below:
FIG .1
Figure 1 shows
a magnetic guiding medical system 71 comprises: a capsule
medical apparatus 72 which examines, by endoscopy, a patient
23 ... , laid on the top of a bed 31; a magnetic field generating
unit 2 which generates the magnetic field for guiding the capsule
medical apparatus 72 and a receiving antenna unit 73 arranged in
a casing inside the bed 31; a planar moving mechanism unit 74
(serving as position/posture varying means) which moves the
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Application 12/394,695
receiving antenna unit 73 and the magnetic field generating unit
2 on the plane; and a control unit 76 ...
(Kawano i-f 96; see also Ans. 2-5).
2. Kawano teaches that
[a]lthough the position/posture varying unit mainly moves the
magnetic field generating unit 2, thereby changing the
position/posture according to the first embodiment, the magnetic
field generating unit 2 is fixed and a position/posture varying unit
74D of the bed 31 varies the position/posture in the magnetic
guiding medical system 180 according to the fifth embodiment,
thereby magnetically guiding the system. The position/posture
varying unit 74D is controlled by a position/posture control unit
192 forming a control unit 191. The magnetic field generating
unit 2 is controlled by a magnetic field control unit 95.
(Kawano i-f 299; see also Ans. 2-5.)
3. Figure 2 of Kim is reproduced below:
FIG·. 2
Figure 2 "is a plane view illustrating plural receiving electrodes installed on
the surface of the human body" and shows that "[ w ]hen current generated by
electric potential difference between transmitting electrodes 11 of a capsule
type endoscope 10 reaches plural receiving electrodes through the human
body, a voltage is induced between the two receiving electrodes in
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Application 12/394,695
proportion to the current and distance between the two receiving electrodes"
(Kim i-f 20; see also Ans. 2-3).
Principles of Law
"The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results."
KSR!nt'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). "If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability." Id. at 41 7.
Analysis
We adopt the Examiner's findings of fact and reasoning regarding the
scope and content of the prior art (Ans. 2-10; FF 1-3) and agree that the
claims are obvious over Kawano, Kim, and Reinhold. We address
Appellants' arguments below.
Claim 13
Appellants contend that "the Examiner improperly construed the
claim as requiring a 'soft electrode pad' when no such element is recited"
(Br. 8 (emphasis removed)).
We are not persuaded and agree with the Examiner that the claim was
not improperly construed (Ans. 7). As the Examiner explains,
[i]n the rejection, the examiner does not take the position that the
claim requires a "soft electrode pad", but merely provides an
obvious configuration where the electrode pad has a soft
conductive part, since the soft conductive part of an electrode can
read on the claim by acting as the "conductive soft part of the
human body arranging device".
(Id. (emphasis removed).) We also agree with the Examiner that "[i]n the
rejection, the conductive soft part is merely configured on the electrode itself
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Application 12/394,695
as a soft part on the electrode, therefore referred to as the soft part of the
electrode pad, but still reads upon the claim" (id. at 8 (emphasis removed)).
Appellants contend that
the Examiner improperly construed Reinhold's disclosure of
electrically conductive yams as suggesting (i) "an electrode pad
which is arranged at an outside of a human body to perform a
human body communication with a capsule endoscope and
detect at least one of a position and a direction of the capsule
endoscope"; and a second element of (ii) "a conductive soft part"
that is a separate element from the "electrode pad."
(Br. 8 (emphasis removed).)
We are not persuaded. We agree with the Examiner that "Kim is the
reference that provides electrodes for human body communication, and that
it is the combination of the references that discloses the claimed invention"
(Ans. 9 (emphasis removed); FF 3). As the Examiner explains,
Reinhold provides motivation and teaching for a soft component
that can contact the body in a comfortable manner onto which
electrodes can be configured. Reinhold also discloses such a soft
component can be configured from electrically conductive yam.
Based on this, one skilled in the art could configure an
electrically conductive soft part in order to hold electrodes, and
in order to maintain the comfort Reinhold aims to provide,
configure the human body communication electrodes of Kim on
the outside of the conductive soft part to arrive at a comfortable
electrode pad that can be used in human body communication.
This provides a possible configuration where the conductive soft
part and electrodes are separate, distinct elements.
(Id.) "Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references []. [The reference] must be read, not in isolation,
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but for what it fairly teaches in combination with the prior art as a whole."
In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Appellants argue that "the Examiner improperly construed Reinhold's
disclosure as suggesting the recited arrangement of fixedly arranging the
electrode pad between the conductive soft part and the rigid part so that
during use, the electrode pad and the human body are electrically in contact
with each other via the conductive soft part" (Br. 8 (emphasis removed)).
We do not find this argument persuasive because we agree with the
Examiner that
Reinhold discloses fixedly arranging an electrode pad by
securely wrapping the pad around the body (figure 2), and the
body configured on the bed. Applying this teaching to the
modified invention ... , the electrode pad is clearly considered
to be fixedly arranged between the conductive soft part and the
rigid hard part as limited by the claim.
(Ans. 9-10.)
Appellants also contend that
[f]rom Reinhold's description of electrically conductive yams, it
must be concluded that there is no express or inherent teaching,
absent improper hindsight, of a first portion of the electrically
conductive yams (as an electrode pad) performing human body
communication with a capsule endoscope and detecting at least
one of a position and a direction of the capsule endoscope, the
first portion and a human body being electrically in contact with
each other via a second portion of the electrically conductive
yams (as a conductive soft part).
(Br. 9 (emphasis removed).)
We are not persuaded. This argument fails to account for the
contributions of Kim and Kawano as explained by the Examiner and
discussed above. "[T]he test [for obviousness] is what the combined
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teachings of the references [as a whole] would have suggested to those of
ordinary skill in the art." In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Claim 23
Appellants contend that "Kawano merely describes position/posture
detecting unit 184 calculating the position/posture of a capsule medical
apparatus based on inputted detected data" and that "Kawano does not
expressly or inherently describe position/posture detecting unit 184,
without further programming or modification, as being capable of
calculating at least one of an absolute position and an absolute direction of a
capsule endoscope with respect to a magnetically guiding device which
moves the capsule endoscope" (Br. 11-12 (emphasis removed)).
We do not find this argument persuasive and agree with the Examiner
that Appellants "attempt[] to give patentable weight based on what an
element is called" (Ans. 10). As the Examiner explains,
[e]ssentially, the calculator of the application determines the
position and direction of the capsule endoscope with respect to
the magnetically guiding device. The applicant calls this data,
the "absolute" position and direction. Kawano ([O 117]) refers to
the capsule position and direction with respect to the magnetic
field generating unit (2) as the "relative position" ([O 117],
located on line 12 from the top of page 5. The embodiment in
[O 117] is the first embodiment referred to in the paragraph [0299]
of the fifth embodiment which is the embodiment of the specific
posture/position detecting unit 184). This data in Kawano is the
same as the data of the application, i.e. the capsule position with
respect to the magnetically guiding device, but is merely called
something different. Again, a patent cannot be granted by simply
naming something differently.
(Id.; see also FF 1-2 (emphasis removed).)
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Conclusion ofLaw
The evidence of record supports the Examiner's conclusion that
Kawano, Kim, and Reinhold render claims 13 and 23 prima facie obvious.
SUMMARY
In summary, we affirm the rejection of claims 13 and 23 under
35 U.S.C. § 103(a) as obvious over Kawano, Kim, and Reinhold. Claims 15
and 22 fall with claim 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).
AFFIRMED
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