Ex Parte Takizawa et alDownload PDFPatent Trial and Appeal BoardMar 27, 201711665086 (P.T.A.B. Mar. 27, 2017) Copy Citation 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. 11/665,086 04/10/2007 Hironobu Takizawa 21012 5951 23389 7590 03/29/2017 SCULLY SCOTT MURPHY & PRESSER, PC 400 GARDEN CITY PLAZA SUITE 300 GARDEN CITY, NY 11530 EXAMINER BOLER, RYNAE E ART UNIT PAPER NUMBER 3779 NOTIFICATION DATE DELIVERY MODE 03/29/2017 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): Docket@SSMP.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HIRONOBU TAKIZAWA, SHINSUKE TANAKA, KATSUMIHIRAKAWA, AKIO UCHIYAMA, and TAKESHI YOKOI Appeal 2015-004349 Application 11/665,086 Technology Center 3700 Before LINDA E. HORNER, THOMAS F. SMEGAL, and NATHAN A. ENGELS, Administrative Patent Judges. HORNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Hironobu Takizawa et al. (Appellants)1 seek our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1, 2, 4, 24, 26, 27, 29-31, 38, 42, 44-46, 48, 49, 57, and 63-65.2 We have jurisdiction under 35 U.S.C. § 6(b). 1 Appellants identify Olympus Corporation and Olympus Medical Systems Corporation as the real parties in interest. Appeal Br. 2, dated Sept. 15, 2014 (“Br.”). 2 Claims 23, 34, 35, 41, 50, 55, and 60 are canceled, and claims 5-22, 25, 28, 32, 33, 36, 37, 39, 40, 43, 47, 51-54, 56, 58, 59, 61, and 62 are withdrawn from consideration. Br. 3-6. Appeal 2015-004349 Application 11/665,086 We AFFIRM. CLAIMED SUBJECT MATTER Appellants’ claimed subject matter relates to “an indwelling device for an encapsulated medical device.” Spec. para. 1. Claim 1 is the sole independent claim and is reproduced below, as currently pending in the application on appeal. 1. An encapsulated medical device system comprising: an encapsulated medical device having an observation optical system, the encapsulated medical device being capable of being introduced into a body cavity of a subject to obtain information of the body cavity, and to wirelessly transmit and output the information of the body cavity to an outside of the subject while traveling in the body cavity; and an indwelling device for retaining the encapsulated medical device in a state in which the encapsulated medical device is fixed to a body cavity tissue together with the indwelling device; wherein the indwelling device includes: a retaining unit that is disposed on an exterior surface of the encapsulated medical device; and a latching unit fixed to an exterior surface of the retaining unit and capable of fixing the retaining unit disposed on the exterior surface of the encapsulated medical device to the body cavity tissue so that the encapsulated medical device is fixed to the body cavity tissue together with the indwelling device. 2 Appeal 2015-004349 Application 11/665,086 REJECTIONS The Final Action, dated March 11, 2014, from which this appeal is taken, includes the following grounds of rejection: 1. Claims 1-3 and 24 under 35 U.S.C. § 102(b) as anticipated by Yokoi (US 2003/0060734 Al, published March 27, 2003). 2. Claims 1, 2, 4, 24, 26, 27, 29-31, 38, 42, 44^16, 48, 49, 57, and 63-65 under 35 U.S.C. § 103(a) as unpatentable over Yokoi and Schwartz (US 6,783,499 B2, issued August 31, 2004). ANALYSIS Appellants filed an amendment to claim 1 after the Examiner had issued the Final Action. Amendment and Response Under 37 C.F.R. § 1.116, dated June 10, 2014 (“the Amendment”). The Amendment sought to revise claim 1 to recite that “the encapsulated medical device is fixed to and left alone in a body cavity tissue together with the indwelling device.” Id. (added claim language underlined). The Examiner refused to enter the Amendment. Advisory Action, dated June 16, 2014 (“Adv. Act.”). The Examiner explained that the Amendment would not be entered because it raises new issues that would require further consideration and/or search. Id. at 1. Appellants then filed a Notice of Appeal on July 11, 2014 and an Appeal Brief on September 15, 2014. In the Appeal Brief, Appellants acknowledge the Examiner’s refusal to enter the Amendment. Br. 6, 12. Nonetheless, Appellants request the Board consider this proposed amended claim language and whether it distinguishes the claimed subject matter over 3 Appeal 2015-004349 Application 11/665,086 the references. Id. (noting the Examiner indicated in the Advisory Action that the Amendment does not distinguish over the references); id. at 16 (presenting non-admitted, amended claim 1 in Claims Appendix). Appellants offered to “submit such amendments for entry upon a favorable Decision by the PTAB.” Id. at 6. Appellants do not appear to be seeking the Board’s review of the Examiner’s refusal to enter the Amendment.3 4Rather, Appellants appear to be requesting that the Board render an advisory opinion as to a proposed claim that has not been entered into the application. The Board will not entertain such a request. The Board decides appeals as to rejected claims. 37 C.F.R. §§ 41.31(a)(1), (c). Board rules proscribe that an Appeal Brief “shall not include any new or non-admitted amendment. . . .” 37 C.F.R. § 41.37(c)(2) (emphasis added). Appellants present arguments directed to the non- admitted Amendment in the argument section of their Brief and present the non-admitted, amended claim 1 in the Claims Appendix to the Brief. Br. 11-14, 16. Appellants’ only argument presented to distinguish the claims on appeal over the prior art is based on the newly proposed limitation to claim 1 submitted in the non-admitted Amendment. Id. Because Appellants present no arguments directed to patentable distinctions of the subject matter of the currently pending claim 1, reproduced above, over the 3 As noted by the Examiner in the Answer (Ans. 3), review of an Examiner’s refusal to enter an amendment after final is sought by petition to the Director under 37 C.F.R. § 1.181. See 37 C.F.R. § 41.37(c)(2). 4 Appeal 2015-004349 Application 11/665,086 prior art, we summarily sustain the Examiner’s rejections under 35 U.S.C. §§ 102(b) and 103(a). Ex parte Frye, 94 USPQ2d 1072, 1075 (PTAB 2010) (precedential) (holding that on appeal, the Board reviews rejections “for error based upon the issues identified by appellant, and in light of the arguments and evidence produced thereon” and the Board will not, as a general matter, unilaterally review uncontested aspects of a rejection). DECISION The Examiner’s decision rejecting claims 1, 2, 4, 24, 26, 27, 29-31, 38, 42, 44^16, 48, 49, 57, and 63-65 is AFFIRMED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 5 Copy with citationCopy as parenthetical citation