Ex Parte Belson

Patent Trial and Appeal Board

Aug 31, 2017

11631277 (P.T.A.B. Aug. 31, 2017)

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.
11/631,277 02/18/2010 Amir Bel son P-71133-US 5255
137540 7590 09/05/2017
Pearl Cohen Zedek Latzer Baratz LLP
Given Imaging Ltd.
1500 Broadway, 12th Floor
New York, NY 10036
EXAMINER
FAIRCHILD, AARON BENJAMIN
ART UNIT PAPER NUMBER
3779
NOTIFICATION DATE DELIVERY MODE
09/05/2017 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):
uspto@pearlcohen.com
medtronic_mitg-et_docketing@cardinal-ip.com
SurgicalUS@covidien.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AMIR BEL SON
Appeal 2016-000109
Application 11/631,277
Technology Center 3700
Before MICHAEL C. ASTORINO, AMEE A. SHAH, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL1
The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1—6, 9-11, 21, and 22.3 We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Throughout this opinion, we refer to the Appellant’s Appeal Brief
(“Appeal Br.,” filed June 16, 2014), Reply Brief (“Reply Br.,” filed June 24,
2015), and Specification (“Spec.,” filed Dec. 29, 2006), and to the
Examiner’s Answer (“Ans.,” mailed Apr. 24, 2015) and Non-Final Office
Action (“Office Act.,” mailed Dec. 5, 2013).
2 According to the Appellant, the real party in interest is Given Imaging, Ltd.
Appeal Br. 1.
3 Claims 12—20 have been withdrawn and are not on appeal.
Appeal 2016-000109
Application 11/631,277
STATEMENT OF THE CASE
The Appellant’s invention relates “generally to apparatus and methods
for performing capsule endoscopy. More specifically, it relates to apparatus
and methods for locating, positioning, steering, aiming and tracking of an
endoscopy capsule within a patient’s esophagus and stomach.” Spec. p. 1,
11. 14—16.
Claim 1 is the only independent claims on appeal, is representative of
the subject matter on appeal, and is reproduced below (with emphasis on the
limitation at issue).
1. An endoscopic imaging apparatus, comprising:
an ingestible endoscopy capsule including a magnetically
attracted element; and
an external capsule positioning system comprising a first
track and a first magnet moveable on the first track, wherein said
first track is configured to be fastened to a patient in a position
approximately parallel with the patient’s esophagus.
Appeal Br. 8 (Claims App.).
REJECTIONS
Claims 1—3, 6, 9, 10, 21, and 22 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Udea et al. (US 5,681,260, iss. Oct. 28, 1997)
(“Udea”). Office Act. 3.
Claim 11 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Udea. Id. at 5.
Claims 4 and 5 stand rejected under § 35 U.S.C. 103(a) as being
unpatentable over Udea and Mori et al. (US 5,270,675, iss. Dec. 14, 1993)
(“Mori”). Id. at 6.
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Appeal 2016-000109
Application 11/631,277
ANALYSIS
The Appellant contends that the Examiner’s rejection of independent
claim 1 is in error because “Ueda does not teach a track that is ‘configured to
be fastened to a patient in a position approximately parallel with the
patient’s esophagus,”’ as recited in the claim. Appeal Br. 3. Specifically,
the Appellant argues that “[njeither of Ueda’s system 11 (per, e.g.,
Fig. 1(a). . .) and system 10, 61, 62 (per, e.g., Fig. 7 . . .) is designed, nor
intended, to be fastened to the patient’s body, not to mention to be operated
while it is fastened to the patient’s body.” Id. at 5. We find the Appellant’s
argument persuasive.
The Examiner finds, in relevant part, that Ueda discloses the
limitation at Figures 21b and 23 in that the track “could be so fastened.”
Office Act. 3. The Examiner determines that “[t]he functional limitation of
being ‘configured to be fastened to a patient’ as recited in claim 1 is a very
broad one” such that “immobilizing the track to the patient’s bed and
immobilizing the patient to the bed would suffice.” Ans. 3. The Examiner
further finds that “as the claim does not recite any structure specifically for
the purpose of fastening the track to the patient,. . . the limitation
‘configured to be fastened to a patient in a position approximately parallel
with the patient’s esophagus’, by itself, is broad enough to be applied to
almost any conceivable human manufactured object.” Id. The Examiner
thus finds that “it is plainly not unreasonable to fasten the magnetic force
generating apparatus of Ueda to a patient, as an (unclaimed) apparatus may
be imagined which could fasten the apparatus to the patient as set forth in
the claim.” Id.
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Appeal 2016-000109
Application 11/631,277
As an initial matter, we note that the Examiner appears to apply a
broad meaning to the phrase “configured to” to mean “could,” i.e., “capable
of.” Ans. 3. However, we find the ordinary and customary meaning of this
phrase, especially in light of the Appellant’s Specification, supports a
narrower meaning for this phrase to require that the first track is designed to
the particular use, purpose, or situation. See In re Giannelli, 739 F.3d 1375,
1381 (Fed. Cir. 2014) (the phrase “adapted to” construed narrowly to mean
“configured to,” as opposed to “capable of’ or “having the capacity to,”
citing Asp ex Eyewear, Inc. v. Marchon Eyewear, Inc., 672 F.3d 1335, 1349
(Fed. Cir. 2012)); Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376,
1380 (Fed. Cir. 2011) (construing “memory . . . configured to” as “memory
that must perform the recited function”); Boston Sci. Corp. v. Cordis Corp.,
2006 WF 3782840 (N.D. Cal. 2006) (“A widely accepted dictionary
definition of the word ‘configure’ means ‘[t]o design, arrange, set up, or
shape with a view to specific applications or uses.’ American Heritage
Dictionary 386 (4th ed. 2000).”).
The broadest reasonable interpretation in light of the Specification of
the limitation is that the first track is designed to (configured to) fasten to a
patient in the claimed position. This interpretation is supported by the
Specification which provides that the track comprises fastening means that
may include a collar and waist belt, a garment, or “using adhesive tape or the
like.” Spec. p. 14,11.9-15.
Ueda discloses an endoscopic apparatus comprising an endoscope, a
light source apparatus, a TV camera, a camera controlling unit, a TV
monitor, and a magnetic force generating apparatus arranged below a bed on
which a patient lies. Ueda, col. 7,11. 29-42. The bed can be mounted on a
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Appeal 2016-000109
Application 11/631,277
rail. Id. at Fig. 7. First paired guide rails are fitted to the parallelly opposed
upper end sides of a chassis within which the power source is housed. Id. at
col. 15,11. 26—32, Fig. 2 IB. A second guide rail is mounted between and
connected to each of the first paired guide rails. Id. at col. 15,11. 32—33, Fig.
2 IB. A stage, on which the magnetic force generating part and hall sensor
are fitted, is fitted movably on the second guide rail through rotors that move
the second guide rail in the lengthwise direction of the paired guide rails and
the stage in the lengthwise direction of the second guide rail. Id. at col. 15,
11. 33—46, col. 16,11. 44-47, Fig. 2IB. In one embodiment, the hall sensor is
incorporated onto the bed instead of on the stage. Id. at col. 17,11. 12—14,
Fig. 23.
However, Ueda does not explicitly disclose that the paired rails or the
second rail, i.e., first track, is designed or configured to be fastened to a
patient. And the Examiner does not adequately explain or show how Ueda
discloses or teaches that any rail/track is designed to or is even capable of
being fastened to the patient. Rather, we find persuasive the Appellant’s
argument that, even assuming arguendo, that Ueda’s rails cause the patient
to be immobilized to the bed, as the Examiner finds (Ans. 3), this is not
equivalent to the track being fastened to the patient. Reply Br. 1—2. We
further find persuasive the Appellant’s argument that having the patient
fastened to the floor by gravity via the magnetic force generating apparatus
(Ans. 4) is also not equivalent to the track configured to be fastened the
patient. Reply Br. 2. Therefore, we agree that Udea does not disclose a first
track configured to be fastened to the patient in the claimed position.
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Appeal 2016-000109
Application 11/631,277
Based on the foregoing, we do not sustain the Examiner’s rejection of
independent claim 1 and the rejections of its dependent claims 2—6, 9—11,
21, and 22, that rely on the same inadequate finding.
DECISION
The Examiner’s decision to reject claims 1—6, 9—11, 21, and 22 is
REVERSED.
REVERSED
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