Ex Parte Abraham-Fuchs et al

Patent Trial and Appeal Board

Mar 29, 2016

11995409 (P.T.A.B. Mar. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111995,409 05/27/2008
26574 7590 03/31/2016
SCHIFF HARDIN, LLP
PA TENT DEPARTMENT
233 S. Wacker Drive-Suite 6600
CHICAGO, IL 60606-6473
FIRST NAMED INVENTOR
Klaus Abraham-Fuchs
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.
P07,0406 7598
EXAMINER
TORRES DIAZ, ARNALDO
ART UNIT PAPER NUMBER
3779
NOTIFICATION DATE DELIVERY MODE
03/31/2016 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):
patents-CH@schiffhardin.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte
KLAUS ABRAHAM-FUCHS, RAINER GRAUMANN, RAINER KUTH,
JOHANNES REINSCHKE, RUDOLF ROCKELEIN, and
SEBASTIAN SCHMIDT
Appeal2014-000561
Application 11/995,409
Technology Center 3700
Before ERIC B. GRIMES, ULRIKE W. JENKS, and
ROBERT A. POLLOCK, Administrative Patent Judges.
PERCURIAM
DECISION ON APPEAL
This is a decision on appeal 1 under 35 U.S.C. § 134(a) from the
Examiner's rejection of claims 15, 18-25, and 28-30. We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
The Specification discloses that, "in conventional endoscopy and in
capsule endoscopy it can be that, due to the position of the patient, intestinal
1 Appellants identify the Real Party in Interest as Siemens Aktiengesellschaft
(App. Br. 1 ).
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Application 11/995,409
loops lie in an intestinal section such that obstacles arise that cannot be
surmounted or can be surmounted only with great difficulty by the
endoscope or ... capsule" (Spec. 1 :5-9). The Specification discloses an
endoscopy system that "comprises an external magnet system and at least
one endo-robot as well as a patient positioning system ... [wherein] the
patient positioning system comprises a patient bed that can be rotated ...
[or] inclined in its longitudinal axis ... [or] displaced in at least one spatial
direction" (id. at 3 :22-28).
Claim 15, the only independent claim, is representative of the claims
on appeal and reads as follows (emphasis added):
15. An endoscopy system comprising:
an endo-robot configured for in vivo navigation in an anatomical
lumen of a patient;
an extracorporeal magnet system that generates a temporally variable
and spatially non-homogenous magnetic field that interacts with the endo-
robot to move said endo-robot in said anatomical lumen;
a patient positioning system comprising a patient bed configured to
receive the patient thereon while said endo-robot is in said anatomical
lumen, said patient bed having a longitudinal axis and being operable to
execute at least one movement, and comprising a first supporting shell, and
wherein said patient bed comprises a second supporting shell with said first
supporting shell being supported by an air cushion in said second supporting
shell and tilting on said air cushion relative to said second supporting shell,
as said at least one movement;
an obstacle detector that detects obstacles to the movement of the
endo-robot in the anatomical lumen, said obstacle detector generating a
detector signal upon said endo-robot encountering an obstacle to the
movement of the endo-robot in the anatomical lumen; and
a control unit configured to automatically operate said extracorporeal
magnetic system and said patient positioning system, and being
automatically supplied with said detector signal, said control unit being
configured, upon said detector signal indicating that said endo-robot has
encountered an obstacle, to automatically cause said patient positioning
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Application 11/995,409
system to execute said at least one movement to assist said endo-robot in
overcoming said obstacle and to avoid said magnetic field generated by said
extracorporeal magnet system from having to move the endo-robot, by virtue
of the magnetic field itself, to overcome said obstacle.
App. Br. 16 (Claims Appendix).
Issue
The Examiner has rejected claims 15, 18, 19, 21-25, 29, and 30 under
35 U.S.C. § 103(a) as obvious in view ofMatsumoto2 and Kuth3 (Ans. 3-8).
The Examiner has also rejected claims 20 and 28 under 35 U.S.C. § 103(a)
as obvious in view of Matsumoto and Kuth, and further in view of one of
Glukhovsky4 (claim 20, Ans. 8-9) or Rottinghaus5 (claim 28, Ans. 9-10).
We will consider the rejections together.
The issue presented is: Does the evidence of record support the
Examiner's conclusion that the combination of Matsumoto and Kuth would
have made obvious an endoscopy system with the "obstacle detector" and
"control unit" required by claim 15?
Findings of Fact
1. The Examiner finds that Matsumoto discloses an endoscopy
system comprising an endo-robot and an extracorporeal magnet system as
recited in claim 15 (Ans. 3 (citing Matsumoto, i-fi-126 and 67 and Fig. 2)).
2 US 2004/0181127 Al, published September 16, 2004.
3 US 2001/0012914 Al, published August 9, 2001.
4 US 6,709,387 Bl, March 23, 2004.
5 US 6,076,527, January 20, 2000.
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Application 11/995,409
The Examiner finds that Matsumoto discloses a patient bed "operable to
execute at least one movement" (id. (citing Matsumoto, i-f 35 and Fig. 2)).
2. Matsumoto discloses an endoscope system that includes "a
capsule endoscope, of which movement is controlled by a magnetic field
externally applied" (Matsumoto i-f 14). The system includes a "magnetic-
field generation unit for generating a magnetic field focused on one point to
control the movement of the capsule endoscope travelling in a body cavity
of a subject lying down on an examination table; and a moving unit for
moving the examination table or the magnetic-field generation unit relative
to each other" (id.).
3. Figure 2 of Matsumoto is shown below:
Figure 2 is a block diagram of "a capsule endoscope system" (id. at i-f 17).
The system includes, among other things, a position detection unit 8, an
arithmetic unit 9, a table drive control unit 10, [and] a table drive unit 11"
(id. at ,-r 27).
4. Matsumoto discloses that the "position detection unit 8 detects
the center of the magnetic fields on the subject 100 on the basis of output
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Application 11/995,409
signals outputted from the respective magnetic-field generation units 6 and
7" (id. at i-f 33). "The arithmetic unit 9 performs a predetermined operation
on the basis of a signal outputted from the image processing unit 5 or the
position detection unit 8" (id. at i-f 34)
5. Matsumoto discloses that the "table drive control unit 10
receives a predetermined signal, which is outputted from the arithmetic unit
9 and includes information related to the position of the examination table 3,
and then drives the table drive unit 11 on the basis of the received signal"
(id. at i-f 35). "Thus, the position of the subject 100, lying down on the
examination table 3, relative to the position of the capsule endoscope 2[,] is
adjusted to control the movement of the capsule endoscope 2 in the body
cavity" (id.).
6. Matsumoto discloses that "an operator of the capsule endoscope
system 1 can obtain information related to the position of the capsule
endoscope 2 in the body cavity ... and also observe an endoscopic image
based on image signals captured by the capsule endoscope 2" (id. at i-f 53).
"[W]hile observing the endoscopic image and the information, the operator
changes the position of the examination table 3 relative to the magnetic-field
generation units 6 and 7 by a predetermined operation. Thus, the movement
of the capsule endoscope 2 can be controlled" (id.).
7. Matsumoto discloses that the "movement of the capsule
endoscope 2 is controlled manually" (id. at i-f 59). "In addition, the
arithmetic unit 9 . .. controls the table drive unit 11 on the basis of the
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operation result to automatically move the examination table 3" (id.).
"Thus, the capsule endoscope 2 can be guided to a desired position" (id.).
8. The Examiner finds that Matsumoto does not disclose a "patient
bed comprising a first supporting shell ... [and] a second supporting shell
with said first supporting shell being supported by an air cushion in said
second supporting shell" (Ans. 4). The Examiner finds that Kuth discloses
this limitation (id.).
9. The Examiner concludes that it would have been obvious to one
having ordinary skill in the art to modify Matsumoto's examination table "in
order to provide friction less [sic] pivoting of the patient to positively allow
other inclinable configurations and maximize the magnetic resonance
scanning into the subject as taught by Kuth" (Ans. 4).
Analysis
Claim 15 is directed to an endoscopy system that comprises
an obstacle detector that detects obstacles to the
movement of the endo-robot ... [and] generates a detector signal
upon said endo-robot encountering an obstacle ... and
a control unit ... being automatically supplied with said
detector signal, said control unit being configured, upon said
detector signal indicating . .. an obstacle, to automatically cause
said patient positioning system to execute said at least one
movement to assist said endo-robot in overcoming said obstacle.
The Examiner finds that Matsumoto's position detection unit 8 meets the
"obstacle detector" limitation of claim 15 and "[i]n addition, a detector
signal can be interpreted by image signals captured by the endo-robot" (Ans.
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Application 11/995,409
4--5) (emphasis omitted). The Examiner finds that Matsumoto's table drive
control unit 10 corresponds to the "control unit" of claim 15 (id. at 5).
Appellants argue that Matsumoto discloses moving an endoscope
capsule "along a predetermined path in a subject by the combined operation
of magnetic field generators and patient table movement ... [with] the
assumption that the combined effect of the magnetic fields and table
movement will achieve automated movement of the capsule" along the path
(App. Br. 3--4). Appellants argue that Matsumoto does not disclose "what, if
anything, takes place if and when an obstacle is encountered by the
endorobot" (id. at 5). Appellants argue that Matsumoto does not disclose or
suggest "the execution of an automated table movement ... as a first
response to the encountering of an obstacle by the endoscopy capsule during
its movement through the patient's body" (id. at 7-8).
We agree with Appellants that the Examiner has not adequately
explained how the combination of Matsumoto and Kuth would have made
obvious an endoscopy system that includes the obstacle detector and control
unit required by claim 15. Although Matsumoto discloses the automatic
control of the capsule endoscope so that the capsule follows a path in the
body lumen by movement of a patient table and magnetic field generating
unit relative each other (FFs 5-7), Matsumoto does not disclose what
happens if an obstacle is encountered or how such an obstacle is overcome.
The Examiner points to Matsumoto's disclosure that an operator may take
control of movement of the endocapsule (see FFs 6-7), but such operator
control is not an automatic response by the control unit and patient
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positioning system to a signal from an obstacle detector, as required by
claim 15.
According to the Examiner, Matsumoto's system "can be configured
to automatically guide the capsule to a desired region and [it] is reasonable
to expect a tortuous path which is not anticipated ahead (body lumen) and
that itself can be called an obstacle" (Ans. 13). The Examiner notes that
Matsumoto discloses "the manual control or interruption of the
predetermined desired location in order to allow the operator to return the
capsule endoscope to the region and observe[] it again (i.e. paragraph
[0066])" (id. at 15). The Examiner finds that this feature provides evidence
that "Matsumoto is capable of performing navigation of an endoscope
capsule automatically as well as interact in a manual control fashion to
navigate the endoscope to a desired region (paragraph [0034-0037], [0049-
0053] and [0057-0059])" (id.).
However, while the Examiner has pointed to disclosure in Matsumoto
of features such as coordination between movement of the table and the
magnetic field generating units and capsule rotation that would be useful to
negotiate a tortuous path, the Examiner has not pointed to anything in
Matsumoto to suggest that a change in the operation of such features would
be automatically implemented when an obstacle is encountered.
We agree with Appellants that the Examiner has not adequately
explained how the combination of the cited references would have made
obvious an endoscopy system of claim 15, and we reverse the rejection of
independent claim 15 and dependent claims 18, 19, 21-25, 29, and 30 as
being obvious in view of Matsumoto and Kuth.
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The Examiner has also rejected claims 20 and 28 under 35 U.S.C.
§ 103(a) as obvious over the combination of Matsumoto and Kuth, and
further in view of Glukhovsky (claim 20) or Rottinghaus (claim 28). For
these rejections, the Examiner relies on the combination of Matsumoto and
Kuth, as discussed above, and relies on Glukhovsky and Rottinghaus to
supply dependent claim limitations. Thus, we also reverse these rejections
for the reasons discussed above.
SUMMARY
We reverse the rejection of claims 15, 18-25, and 28-30 under 35
U.S.C. § 103(a).
REVERSED
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