Ex parte Fabrizio

Board of Patent Appeals and Interferences

Feb 25, 2000

08595282 (B.P.A.I. Feb. 25, 2000)

-1-
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte ROBERT A. FABRIZIO
________________
Appeal No. 1998-2825
Application No. 08/595,282
________________
HEARD: JANUARY 27, 2000
________________
Before STAAB, NASE, and GONZALES, Administrative Patent
Judges.
GONZALES, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 9, which are all of the claims
pending in this application.
Appeal No. 1998-2825
Application No. 08/595,282
-2-
We AFFIRM-IN-PART.
The appellant's invention relates to a method and an
apparatus for monitoring the heart rate of a person. An
understanding of the invention can be derived from a reading
of exemplary claims 1 and 2 which appear in the appendix to
appellant's substitute brief filed August 1, 1997 (Paper No.
9).
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Brink et al. (Brink) 4,788,983 Dec. 6,
1988
Crossing et al. (Crossing) 5,458,548 Oct. 17,
1995
(filed Nov. 29,
1993)
The appealed claims stand finally rejected under 35
U.S.C. § 103(a) on the following grounds:
(1) Claims 1, 3, 5, 7 and 9, unpatentable over Crossing; and
(2) Claims 2, 4, 6 and 8, unpatentable over Crossing in view
of Brink.
Rejection (1)
Appeal No. 1998-2825
Application No. 08/595,282
-3-
In accordance with 37 CFR § 1.192(c)(7), we have selected
claim 1 as the representative claim from the appellant's
grouping of claims 1, 3, 5, 7 and 9 to decide the appeal on
this rejection under 35 U.S.C. § 103. See page 9 of the
appellant’s substitute brief.
Crossing discloses an exercise device including a
microprocessor 30 programmed to determine a minimum and a
maximum heart rate limit for the user based on a desired
exercise level and the age of the user. The device includes a
keyboard 15 and liquid crystal display 14 (Figure 8).
Crossing explains the mode of operation of the device as
follows:
When a user is about to commence an exercise,
after turning the machihe [sic] on, the LCD
transmits a message "ENTER MODE." The user then sets
the mode 1, 2, 3 or 4, (or 5 for more specific
parameters which may be adjusted to suit an
individual's requirements) and presses an ENTER
button. The next message on the LCD 14 is asking the
age of the user, that is entered and again the ENTER
button is depressed. The next message on the LCD
will be to identify the training time and if, for
example, it is ten minutes the user presses "10" and
then enters that again by depressing the ENTER
button. The next message on the screen is to press
the START button and when that is pressed, the
screen will show on the top line the training mode,
age, heart rate range (which it will calculate on
the abovementioned formula) and as the exercise
Appeal No. 1998-2825
Application No. 08/595,282
-4-
commences the actual heart rate of the user. The
timer in the microprocessor will then "stopwatch" by
counting down from 10 to 0 whilst within the
selected heart rate range. The number of impulses
will record the "distance" which is a proportion
thereof. If the user moves out of this range, the
LCD will freeze, as mentioned above, or optionally
will cause the audio beeper alarm to sound. (Col.
4, line 50 through col. 5, line 4, emphasis added)
With regard to the “abovementioned formula,” Crossing
teaches that:
The maximum heart rate recommended for a user
can be calculated as 220 less the age, so that
for example a person aged 60 should not exercise
with a heart rate beyond 160, even if he is very
fit. That heart rate range needs to be reduced
as the perceived fitness of the user diminishes,
as said, into one of five modes. These are
identified as mode 1, mode 2, mode 3, mode 4 and
mode 5. However, the effectiveness of exercising
with the aid of this invention can be diminished
if the heart rate is too low, and therefore
there is a precalculated range of heart rates
between minimum and maximum within which a user
must control his exercise. The minimum figure is
arbitrarily determined, but within a range
generally accepted by health authorities. (Col.
4, lines 23-36)
The examiner determined that Crossing discloses each and
Appeal No. 1998-2825
Application No. 08/595,282
-5-
every step of method claim 1, except for the step of “(b)
electronically obtaining a target zone consisting of an upper
limit and lower limit of the heart rate based solely on the
person’s age” (emphasis added). Instead, Crossing teaches the
step of electronically obtaining a target zone consisting of
an upper limit and lower limit of the heart rate based on (1)
the perceived fitness of the user, identified as a “mode,” and
(2) the age of the user. However, the examiner stated that
“one of ordinary skill in the art would interpret the Crossing
invention as having the ability to have only one mode. That
is, only an obvious modification would be needed; one where
unnecessary steps would be avoided thus yielding simpler
operability.”
(Answer, page 4)
In evaluating references it is proper to take into
account not only the specific teachings of the references but
also the inferences which one skilled in the art would
reasonably be expected to draw therefrom. In re Preda, 401
F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968). Additionally,
we observe that an artisan must be presumed to know something
about the art apart from what the references disclose (see In
Appeal No. 1998-2825
Application No. 08/595,282
-6-
re Jacoby, 309 F.2d 513, 516, 135 USPQ 317, 319 (CCPA 1962))
and the conclusion of obviousness may be made from "common
knowledge and common sense" of the person of ordinary skill in
the art (see In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545,
549 (CCPA 1969)). Moreover, skill is presumed on the part of
those practicing in the art, not the converse. See In re
Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774 (Fed. Cir. 1985).
Appellant acknowledges that formulas were known in the
art prior to his invention for calculating a heart rate range
for an individual of average physical fitness based solely on
the individual’s age (see, for example, the substitute brief,
page 3, lines 1-9). Crossing uses such a conventional formula
to obtain a heart rate range, but varies the range to suit the
perceived fitness of the individual user. In other words,
Crossing provides a refining feature which allows the user to
tailor the exercise session to his or her particular physical
condition, rather than to the specific fitness level upon
which the conventional formula is based. Thus, even in the
absence of any specific teaching by Crossing that a heart rate
range may be obtained with the disclosed apparatus and method
Appeal No. 1998-2825
Application No. 08/595,282
-7-
without inputting an exercise mode representing the fitness of
the user, we are satisfied that it would have been obvious to
one of ordinary skill in the art at the time appellant made
his invention to have eliminated the step of entering a
fitness/exercise mode in the apparatus and method taught by
Crossing in order to obtain a target zone or heart rate range
for a user of average fitness based solely of the user’s age.
In this regard, we view the proposed modification of Crossing,
that is, the elimination of the step of entering a fitness
mode, as the elimination of a feature along with its attendant
advantage. It is well settled that it is a matter of
obviousness for one of ordinary skill in the art to eliminate
a feature of the prior art along with its attendant advantage.
In re Thompson, 545 F.2d 1290, 1294, 192 USPQ 275, 277 (CCPA
1976); In re Larson, 340 F.2d 965, 969, 144 USPQ 347, 350
(CCPA 1965); In re Keegan, 331 F.2d 315, 319, 141 USPQ 512,
515 (CCPA 1964). In addition, a person of ordinary skill in
the art would have recognized that the proposed modification
to Crossing would have resulted in a simpler circuit and
software, thus, in a less expensive overall system. Cost and
simplicity are factors that inherently motive modification or
Appeal No. 1998-2825
Application No. 08/595,282
-8-
combination of prior art references. See Motorola, Inc. v.
Interdigital Tech. Corp., 121 F.3d 1461, 1472, 43 USPQ2d 1481,
1489 (Fed. Cir. 1997).
The arguments advanced in the brief relative to the
obviousness rejection based on Crossing alone (pages 9-12) do
not convince us that the examiner erred in rejecting claim 1
under
35 U.S.C. § 103.
We are not persuaded by appellant’s argument (page 10)
that the present invention provides a much simpler method and
apparatus which allows it to be used in portable monitors.
First, there is nothing in the method of claim 1 limiting the
method to only portable monitors. Thus, appellant is arguing
a feature or limitation that does not appear in the claim.
Second, while claim 1 may appear simple, it contains the
transitional term "comprising,” which is inclusive or
open-ended and does not exclude additional, unrecited elements
or method steps.
Appellant also argues (pages 11 and 12) that the examiner
has misinterpreted Crossing as having only one mode. However,
Appeal No. 1998-2825
Application No. 08/595,282
-9-
the examiner did not suggest that Crossing could be so
interpreted. Rather, the examiner concluded that it would
have been obvious to a person of ordinary skill in the art to
modify the method disclosed in Crossing by eliminating the
step of entering a fitness mode and, thus, providing a heart
rate target zone based solely on a person’s age. For the
reason discussed above, we agree with the examiner.
Furthermore, Crossing explicitly teaches that the user
does not have to enter an exercise time, in which case “the
unit times up and not down” (col. 5, lines 44-46). Even if
time is entered after age is entered, it plays no part in the
calculation of the target heart zone in Crossing.
For the above reasons, the examiner's rejection of claim
1 is sustained. Appellant has grouped claims 1, 3, 5, 7 and 9
as standing or falling together. Thereby, in accordance with
37 CFR § 1.192(c)(7), claims 3, 5, 7 and 9 fall with claim 1.
Thus, it follows that the examiner's rejection of claims 3, 5,
7 and 9 under 35 U.S.C. § 103 is also sustained.
Rejection (2)
Appeal No. 1998-2825
Application No. 08/595,282
Claim 6 actually reads “[a]n apparatus apparatus for monitoring” This1
informality is worthy of correction upon return of the application to the
jurisdiction of the examiner.
-10-
Independent claim 2 is directed to a method for
monitoring the heart rate of a person including, inter alia,
the steps of:
(b) electronically obtaining a target zone
consisting of an upper limit and lower limit of the
heart rate based on the person’s age; and
(c) issuing a signal when the heart rate is outside
the target zone, wherein at least one of the upper
limit and the lower limit is selectively changeable
by the person after obtaining the target zone in
step (b). (Emphasis added).
Claim 4 is indirectly dependent on claim 1 and contains
the same “wherein” clause as claim 2.
Independent claim 6 is directed to an apparatus for1
monitoring the heart rate of a person including
means for displaying the measured heart rate,
wherein the displaying means includes electronic
circuitry for setting a target zone having an upper
heart rate limit and a lower heart rate limit based
solely upon inputted age of the person, wherein the
displaying means is configured to allow selective
change of the target zone after setting the target
zone based upon inputted age. (Emphasis added)
Claim 8 is indirectly dependent on claim 5 and contains
the same “wherein” clause emphasized above in claim 6.
Appeal No. 1998-2825
Application No. 08/595,282
-11-
The examiner acknowledges (Paper No. 2, pages 2 and 3)
that Crossing does not teach or suggest either a method step
or any apparatus by which the user may selectively change the
upper heart rate and/or the lower heart rate limits after the
limits are calculated by microprocessor 30. The examiner
describes Brink as having the ability to input via a keyboard
the upper and lower rate limits and takes the position that:
[t]o change [the upper limit and the lower limit] is
analogous to inputting them initially. To have such
a feature in the invention of Crossing would have
been seen to have been desirable and obvious since
such a feature allows greater flexibility and
therefore applicability to a greater number of
patients who do not fit into the standard heart rate
ranges.
(Office action, dated 5/23/96, pg. 3)
Our review of Brink reveals that the reference discloses
an apparatus which allows an entertainment device, e.g., a
portable radio, to play only so long as the user's heart rate
lies within a range of heart rates. EKG signals are picked up
by suitably placed electrodes 32, 34, amplified, filtered,
shaped and applied in one arrangement to a programmable
microprocessor 208 (Fig. 3) and in another arrangement to a
Appeal No. 1998-2825
Application No. 08/595,282
-12-
linear circuit phase lock loop and window comparator (Fig. 2).
In each instance, a determination is made as to whether the
user's heart rate is between a lower limit of effective
exercise and an upper limit of safe exercise. When the heart
rate is outside the limit, the entertainment device is
rendered inoperative, thus providing an incentive to tailor
the level of exertion so that the heart rate will lie within
the desired range. The upper and lower heart rate limits are
manually set by the user via a keypad, thumb wheels, dip
switches or the like (col. 4, lines 11-16 and 25-29).
Like appellant, we find no teaching or suggestion in
Brink of either (1) a displaying means including electronic
circuitry for setting a target zone having an upper heart rate
limit and a lower heart rate limit based upon inputted age of
the person and configured to allow selective change of the
target zone after setting the target zone based upon inputted
age or (2) electronically obtaining a target zone consisting
of an upper limit and lower limit of the heart rate based on
the person’s age, wherein at least one of the upper limit and
the lower limit is selectively changeable by the person after
obtaining the target zone. Considering the combined teachings
Appeal No. 1998-2825
Application No. 08/595,282
-13-
of Crossing and Brink, it is our opinion that Brink, at best,
would have suggested replacing Crossing’s electronic circuit
and software for determining the upper and lower heart rate
limits based on a general fitness level and age with a simple
keypad for manually setting the upper and lower limits. Like
appellant, we find no disclosure in Brink which would have
motivated an artisan to add to Crossing’s disclosed apparatus
a means for adjusting the upper and lower heart rate limits
after being initially set electronically in response to the
user’s age.
Since all the limitations of claims 2, 4, 6 and 8 are not
taught or suggested by the combined teachings of Crossing and
Brink, the examiner has failed to establish a prima facie case
of obviousness. Accordingly, we will not sustain the
standing
§ 103 rejection of claims 2, 4, 6 and 8.
SUMMARY
The rejection of claims 1, 3, 5, 7 and 9 under 35 U.S.C.
§ 103 as being unpatentable over Crossing is affirmed.
The rejection of claims 2, 4, 6 and 8 under 35 U.S.C. §
Appeal No. 1998-2825
Application No. 08/595,282
-14-
103 as being unpatentable over Crossing and Brink is reversed.
The decision of the examiner is affirmed-in-part.
Appeal No. 1998-2825
Application No. 08/595,282
-15-
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
LAWRENCE J. STAAB )
Administrative Patent Judge )
)
)
)
)
JEFFREY V. NASE ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
JOHN F. GONZALES )
Administrative Patent Judge )
rwk
Appeal No. 1998-2825
Application No. 08/595,282
-16-
EVENSON MCKEOWN EDWARDS & LENAHAN
SUITE 700
1200 G STREET NW
WASHINGTON DC 20005