Ex Parte Uchiyama

Patent Trial and Appeal BoardMar 31, 2017

11629344 (P.T.A.B. Mar. 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. 11/629,344 02/26/2007 Akio Uchiyama 20511 4497 23389 7590 04/04/2017 SCULLY SCOTT MURPHY & PRESSER, PC 400 GARDEN CITY PLAZA SUITE 300 GARDEN CITY, NY 11530 EXAMINER REMALY, MARK DONALD ART UNIT PAPER NUMBER 3777 NOTIFICATION DATE DELIVERY MODE 04/04/2017 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 AKIO UCHIYAMA Appeal 2014-009495 Application 11/629,344 Technology Center 3700 Before DANIEL S. SONG, BRANDON J. WARNER, and ARTHUR M. PESLAK, Administrative Patent Judges. WARNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Akio Uchiyama (“Appellant”)1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1 and 5—23, which are all the pending claims. Br. 2. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellant, the real party in interest is Olympus Corporation. Br. 2. Appeal 2014-009495 Application 11/629,344 CLAIMED SUBJECT MATTER Appellant’s disclosed invention “relates to a position detection system for a medical device and to a medical-device guidance system.” Spec. 1.2 Claims 1, 6, and 16 are independent. Claim 1, reproduced below, is illustrative of the subject matter on appeal.3 1. A position detection system for a medical device that is inserted into a body of a subject, comprising: at least one driving coil, disposed outside an operating region of the medical device, that generates induced magnetism in a magnetic induction coil installed in the medical device; a plurality of magnetic sensors, disposed outside the operating region of the medical device, that detect an induced magnetism generated by the magnetic induction coil and that generate an AC voltage containing a position information of the medical device in response to the induced magnetism field; a magnetic-sensor selection unit that selectively uses the output of a sensor detected to have a high intensity of the induced magnetism among induced magnetisms detected by the plurality of magnetic sensors; and 2 We note that Appellant’s Specification does not provide line or paragraph numbering; accordingly, reference herein is made only to page numbers. 3 We note that the Claims Appendix of the Appeal Brief does not contain an accurate recitation of the claims on appeal (see Br. 19-25, Claims App.), and that the Summary of Claimed Subject Matter section appears to correspond with this incorrect version of the claims such that a concise explanation of some claimed subject matter has not been provided {see id. at 5—11). We refer to the claims as presented in the After-Final Amendment filed December 27, 2012 (“Amendment”), which was entered into the official record upon submission of the subsequent Request for Continued Examination filed January 28, 2013 (see Non-Final Act. 2), for an accurate listing of the claims currently pending in the subject application. 2 Appeal 2014-009495 Application 11/629,344 a position calculating device that determines, by repeated calculation, the position and orientation of the medical device, wherein, the driving coil causes magnetism to act on the magnetic induction coil from three or more different directions when the medical device is disposed at individual positions in the operating region of the medical device, among the three or more directions in which the magnetism acts, at least one of the directions is arranged to be a direction intersecting a plane formed by the other two directions, the driving coil generates induced magnetism in the magnetic induction coil over a frequency range near a resonance frequency causing resonance of a resonance circuit that includes the magnetic induction coil, the plurality of the magnetic sensors are disposed facing the operating region of the medical device in a plurality of directions, and the position calculating device calculates position and orientation of the medical device based on an amplitude difference between a maximum value and a minimum value of an amplitude value of the AC voltage which varies depending on the relationship between the AC magnetic field that the drive coil generates and the resonance frequency of the resonance circuit, in a range of frequencies near the resonance frequency in the resonance circuit obtained from the plurality of the magnetic sensors. EVIDENCE The Examiner relied on the following evidence in rejecting the claims appeal: Mednikov US 5,629,619 May 13, 1997 Acker US 5,729,129 Mar. 17, 1998 Uchiyama US 2003/0229268 A1 Dec. 11,2003 Dimmer US 2004/0127787 A1 July 1,2004 3 Appeal 2014-009495 Application 11/629,344 REJECTIONS The following rejections are before us for review: I. Claims 1 and 5—23 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement. Non-Final Act. 3—A. II. Claims 1 and 5—23 stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. Id. at 5—6. III. Claims 1, 5, 15, 16, 18—21, and 23 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Uchiyama, Dimmer, and Mednikov. Id. at 6—9. IV. Claims 6—14, 17, and 22 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Uchiyama, Dimmer, Mednikov, and Acker. Id. at 9-11. ANALYSIS Rejections I and II— Claims 1 and 5—23 as failing to comply with the enablement requirement and as being indefinite The Examiner determined that all the claims fail to comply with the enablement requirement due to a lack of clarity regarding purely functional recitations to be performed by schematic blocks (e.g., elements recited as a unit, device, etc.), without sufficient disclosure of how the corresponding structure would actually perform these functional recitations. Non-Final Act. 2-4. Regarding the Examiner’s concern for whether the “resonance circuit” is positively recited as part of the claimed position detection system for a medical device (which includes a resonance circuit) to be inserted in a body 4 Appeal 2014-009495 Application 11/629,344 of a subject, and what structural relationship exists between the “resonance circuit” and the “magnetic induction coil” of the detection system, Appellant refers to a “Draft Response,” which is not part of the official record, as proposing amendments to claim 1 that “would overcome” this portion of the rejection. Br. 12. However, this “Draft Response” is not part of the official record, and Appellant does not offer any other clarification for any required structural relationship in claim 1 to address the Examiner’s concern. Regarding the remainder of the Examiner’s concerns for the functional recitations of the claims—regardless of whether such recitations invoke construction under 35 U.S.C. § 112, sixth paragraph—Appellant simply asserts that each of schematic blocks (e.g., elements recited as a unit, device, etc.) is “clearly described and supported in the specification in a manner fully compliant with 35 U.S.C. § 112, first paragraph.” Br. 12. However, Appellant does not direct us to any disclosure to explain how any of the recited schematic blocks actually performs the functional recitations. Appellant also refers to the “Draft Response,” as perhaps indicating that a proposed amendment from, for example, a “position calculating device” to a “hardware processor” or a “processor comprising hardware,” to include a more structural name for these elements may resolve the enablement issue. Br. 12-13. We are unpersuaded by Appellant’s assertions. Regardless of which labeling names may be used for these schematic blocks, the enablement concern raised by the Examiner—namely, how such schematic blocks would actually perform the functional recitations—remains unaddressed. See Ans. 3—5. 5 Appeal 2014-009495 Application 11/629,344 Insofar as the substance of the enablement requirement is concerned, the dispositive issue is whether Appellant’s disclosure, considering the level of ordinary skill in the art as of the date of the application, would have enabled a person of such skill to make and use the claimed invention without undue experimentation. In re Strahilevitz, 668 F.2d 1229, 1232 (CCPA 1982); see also In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988) (setting forth some factors to be considered in determining whether a disclosure would require undue experimentation). Here, it is unclear where the disclosure explains how the disclosed schematic blocks identified by the Examiner actually perform the functional recitations so as to enable those having ordinary skill in the art to make and/or use the claimed invention without undue experimentation. Appellant’s general assertion that these elements “are clearly described and supported” (Br. 12) is insufficient to apprise us of error in the Examiner’s determination that the present claims are not enabled (see Non-Final Act. 2-4; Ans. 3—5). When some of these schematic blocks are literally depicted as black boxes (see, e.g., Fig. 1), the Examiner is on solid ground to question where the corresponding functional recitations are enabled. However, Appellant does not adequately explain how such schematic blocks (or, for that matter, a “processor” as proposed) must be structured or configured (for example, by specific programming) in order to be able to accomplish the recited functions. The Examiner also determined that all the claims are indefinite, noting that many of the same concerns regarding the purely functional recitations of the claims result in claims with indefinite scope. Non-Final Act. 5—6. 6 Appeal 2014-009495 Application 11/629,344 The essence of the requirement under 35 U.S.C. § 112, second paragraph, that the claims must be definite, is that the language of the claims must provide clarity to those skilled in the art regarding the scope of the subject matter which the claims encompass. See In re Hammack, 427 F.2d 1378 (CCPA 1970). The test for definiteness under 35 U.S.C. § 112, second paragraph, is “whether those skilled in the art would understand what is claimed when the claim is read in light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). Of course, it is not categorically indefinite to include functional limitations in an apparatus claim, but the reliance on functional language in a claim may fail “to provide a clear-cut indication of the scope of the subject matter embraced by the claim,” and thus be indefinite. In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). Such is the case here. When a claim merely recites a function to be achieved by an illustrated schematic block—here, for example, a position calculating device that determines, by some undisclosed and unspecified repeated calculation, the position and orientation of the medical device—the boundaries of the claim scope are unclear. See Halliburton Energy Servs., Inc. v. M-ILLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008) (noting that the Supreme Court has explained that a vice of functional claiming occurs “when the inventor is painstaking when he recites what has already been seen, and then uses conveniently functional language at the exact point of novelty”) (quoting General Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364, 371 (1938)). Regarding the Examiner’s concerns for determining the scope of the functional recitations of the claims, Appellant simply references “the same 7 Appeal 2014-009495 Application 11/629,344 reasons as set forth above” with regard to the enablement concerns. Br. 14. However, Appellant does not explain how one of ordinary skill in the art would determine the metes and bounds of the claims. In short, Appellant does not apprise us of error in the Examiner’s conclusion that the claims appear to cover computer or software implemented functions, but that Appellant “has failed to point to an explicit disclosure of structure or the algorithmic disclosure that would be required [for the claims] to be both enabled and definite.” Ans. 5. After careful consideration of the record before us, Appellant’s conclusory assertions do not apprise us of error in the Examiner’s determination that the claims lack an enabling disclosure and are indefinite. Accordingly, we sustain the rejections of claims 1 and 5—23 under 35 U.S.C. §112, first paragraph, as failing to comply with the enablement requirement, and under 35 U.S.C. § 112, second paragraph, as being indefinite. Rejections III and IV— Claims 1, 5, 15, 16, 18—21, and 23 as unpatentable over Uchiyama, Dimmer, and Mednikov, and Claims 6—14, 17, and 22 as unpatentable over Uchiyama, Dimmer, Mednikov, and Acker We shall not sustain the Examiner’s rejections of claims 1 and 5—23 under 35 U.S.C. § 103(a). For the reasons explained by the Examiner (see Non-Final Act. 3—6; Ans. 3—5) and reiterated supra, the claims are indefinite. Before a proper review of these rejections can be performed, the subject matter encompassed by the claims on appeal must be reasonably understood without resort to speculation. Therefore, since the claims fail to satisfy the requirements of the second paragraph of 35 U.S.C. § 112, we are constrained to reverse, pro forma, the prior art rejections because they necessarily are based on speculative assumptions as to the scope of the 8 Appeal 2014-009495 Application 11/629,344 claims. See In re Steele, 305 F.2d 859, 862—63 (CCPA 1962) (holding that the Board erred in affirming a rejection of indefinite claims because the rejection was based on speculative assumptions as to the meaning of the claims). We emphasize, however, that our decision in this regard is based solely on the indefmiteness of the claimed subject matter, and does not reflect on the adequacy of the prior art evidence applied in support of the rejections. In particular, we note that Appellant’s argument contending a deficiency from Uchiyama individually (see Br. 15—17) is not responsive to the rejection articulated by the Examiner, which relies on a combination of teachings from multiple references (see Non-Final Act. 5—6), including specific teachings from Mednikov (see id. at 9; Ans. 5—6) that are not addressed by Appellant’s argument. Such a contention by Appellant is insufficient to apprise us of error when the rejection is predicated upon a combination of prior art teachings. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d413, 425 (CCPA 1981)). Further, Appellant does not submit a Reply Brief to assert any error with the Examiner’s reiteration of the applicable teachings from Mednikov, or how such teachings are applied to the claim limitations. See Ans. 5—6. Accordingly, Appellant does not apprise us of error in the Examiner’s factual findings, or the reasoning provided for the conclusion of obviousness with respect to the claims. 9 Appeal 2014-009495 Application 11/629,344 DECISION We AFFIRM the Examiner’s decision rejecting claims 1 and 5—23 under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement. We AFFIRM the Examiner’s decision rejecting claims 1 and 5—23 under 35 U.S.C. § 112, second paragraph, as being indefinite. We REVERSE, pro forma, the Examiner’s decision rejecting claims 1, 5, 15, 16, 18—21, and 23 under 35 U.S.C. § 103(a) as being unpatentable over Uchiyama, Dimmer, and Mednikov. We REVERSE, pro forma, the Examiner’s decision rejecting claims 6—14, 17, and 22 under 35 U.S.C. § 103(a) as being unpatentable over Uchiyama, Dimmer, Mednikov, and Acker. 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 10