Ex Parte Kateraas et alDownload PDFPatent Trial and Appeal BoardMay 16, 201813505699 (P.T.A.B. May. 16, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/505,699 05/02/2012 Espen D. Kateraas 22852 7590 05/18/2018 FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP 901 NEW YORK A VENUE, NW WASHINGTON, DC 20001-4413 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. 10805.0009 4193 EXAMINER DEJONG, ERIC S ART UNIT PAPER NUMBER 1631 NOTIFICATION DATE DELIVERY MODE 05/18/2018 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): regional-desk@finnegan.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ESPEN D. KA TERAAS and PEDRO J. MEDELIUS Appeal2017-008448 Application 13/505,699 1 Technology Center 1600 Before DONALD E. ADAMS, DEVON ZASTROW NEWMAN, and DAVID COTTA, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL This Appeal under 35 U.S.C. § 134(a) involves claims 1, 2, and 9-20 (Final Act. 2 2).3 Examiner entered rejections under 35 U.S.C. § 112, second paragraph, the written description provision of 35 U.S.C. § 112, and 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellants identify "EspenUSA Holding, LLC" as the real party in interest (App. Br. 2). 2 Office Action mailed January 20, 2016. 3 Pending claims 3-8, 21, and 22 stand withdrawn from consideration (Final Act. 2). Appeal2017-008448 Application 13/505,699 STATEMENT OF THE CASE Appellants' disclosure "relat[ es] to a sensor-based device configured to monitor the physical activity level of an individual, collect data during periods of physical exertion, and transmit the collected data to a data collection portal associated with a physical activity rewards allocation system and/or a physical activity tracking system" (Spec. ,-i 2). Appellants' claim 1 is representative and reproduced below: 1. A physical activity data collection unit, including: two or more infrared sensors configured to provide an output indicative of a pulse rate of a user of the physical activity data collection unit; at least one temperature sensor configured to provide an output indicative of at least a body temperature of the user; at least one accelerometer configured to provide an output indicative of movements of the user; a microcontroller programmed with instructions that when executed cause the microcontroller to: determine a pulse rate of the user based on outputs of the two or more infrared sensors, determine a body temperature of the user based on the output of the at least one temperature sensor, and determine movement characteristics of the user based on the output of the at least one accelerometer; determine a physical exertion level of the user based on one or more of the pulse rate, the body temperature, or the movement characteristics of the user; and store, in a memory, data indicative of the physical exertion level of the user during a time period during which the physical exertion level exceeds a predetermined threshold; and a closure system configured to secure the data collection unit to a wrist of the user such that the two or more infrared sensors are located adjacent to the wrist of the user. (Claims App. 1-2.) 2 Appeal2017-008448 Application 13/505,699 Appellants' claims stand rejected as follows: Claims 1, 2, and 9-20 stand rejected under 35 U.S.C. § 112, second paragraph. Claims 1, 2, and 9-20 stand rejected under the written description provision of 35 U.S.C. § 112, first paragraph. Claims 1, 2, and 9-20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Sagel4 and Kondo.5 Definiteness and Written Description: ISSUE Does the preponderance of evidence support Examiner's: (a) conclusion that Appellants' claim 1 is indefinite and (b) finding that Appellants' Specification fails to provide written descriptive support for the subject matter encompassed by Appellants' claim 1? ANALYSIS The absence of the word "means" in association with an element of a claim "does not automatically prevent that element from being constructed as a means-plus-function element." Cole v. Kimberly-Clark Corp., 102 F. 3d 524, 531 (Fed. Cir. 1996); see also Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580, 1584 (Fed. Cir. 1996) ("We do not mean to suggest that section 112( 6) is triggered only if the claim uses the word 'means"'). "The essential inquiry is not merely the presence or absence of the word 'means' but whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for 4 Sagel, US 6,635,015 B2, issued Oct. 21, 2003. 5 Kondo, US 5,734,625, issued Mar. 31, 1998. 3 Appeal2017-008448 Application 13/505,699 structure." Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1348 (Fed. Cir. 2015); see also Greenberg, 91 F.3d at 1583 ("What is important is ... that the term, as the name for structure, has a reasonably well understood meaning in the art"). Thus, our reviewing court has "traditionally held that when a claim term lacks the word 'means,' ... § 112, para. 6 will apply if the challenger demonstrates that the claim term fails to 'recite[] sufficiently definite structure' or else recites 'function without reciting sufficient structure for performing that function."' Williamson, 792 F.3d at 1348 (citing Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000)). On this record, Examiner finds that Appellants' claim 1 requires a "'microcontroller programmed with instructions that cause the microcontroller to ... ' followed [by] a recitation of function" (Final Act. 5; Ans. 4). In this regard, Examiner finds that "[t]he only structure presented in [Appellants' Specification for] this limitation is a general purpose computer with non-specific programming (id.; see Spec. ,-i 28 ("[ o ]ne suitable microcontroller includes the PIC l 8F series of microcontroller manufactured by Microchip Inc."). We agree. We recognize Appellants' contention that their Specification discloses "that the term 'microcontroller,' ... refers to the microcontroller as a structure having a specific size and a specific name manufactured by MicroChip Inc.[, and] ... is a recognized name for a structure" (App. Br. 8-9). As Examiner explains, however, this microcontroller is "a general purpose computer with non-specific programming" (Final Act. 5; Ans. 4-5). A microcontroller, "microprocessor or general purpose computer lends sufficient structure only to basic functions of a microprocessor. All other computer-implemented functions require disclosure of an algorithm." 4 Appeal2017-008448 Application 13/505,699 EON Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015). Thus, "when[, as on this record,] the disclosed structure is a computer programmed to carry out an algorithm, 'the disclosed structure is not the general purpose computer, but rather that special purpose computer programmed to perform the disclosed algorithm."' In re Aoyama, 656 F.3d 1293, 1297 (Fed. Cir. 2011) (quoting WMS Gaming, Inc. v. Int'! Game Tech., 184 F.3d 1339, 1349 (Fed. Cir. 1999)); see also Aristocrat Techs. Aust!. Pty Ltd. v. Int'! Game Tech., 521F.3d1328, 1338 (Fed. Cir. 2008) (The written description of the Specification must at least disclose the algorithm that transforms the general purpose microprocessor to a special purpose computer programmed to perfonn the disclosed algorithm); cf App. Br. 7 ("Examiner suggests that Section 112, sixth paragraph should be invoked if a claim includes a general purpose computer that merely 'requires specific programming for a specified function.' This is clearly not the standard (nor even the relevant inquiry) for determining whether a claim invokes Section 112, sixth paragraph"). As Examiner explains, Appellants' Specification, at best, discloses a generic computer or "microcontroller [that] 'can be configured to' perform the series of function[ s] described therein" (Ans. 11 ). Appellants' Specification does not disclose the algorithms required to program their general purpose microcontroller, but instead "only reiterates the functional language that is correlated to a generic means as is recited in [Appellants'] ... claim[] [ 1 ]" (id.; cf App. Br. 7-9). Thus, on this record, we find that Examiner properly challenged Appellants' claim, "demonstrate[ ed] that the claim term fails to 'recite[] 5 Appeal2017-008448 Application 13/505,699 sufficiently definite structure' or else recites 'function without reciting sufficient structure for performing that function'," and applied 35 U.S.C. § 112, sixth paragraph. See Williamson, 792 F.3d at 1348 (citing Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000)). For the foregoing reasons, we agree with Examiner's finding that Appellants' Specification fails to provide written descriptive support for Appellants' claimed invention (see Final Act. 4-5; see also Ans. 11-12). We also agree with Examiner's conclusion that Appellants' "functionally defined 'microcontroller []programmed with instructions' causes the metes and bounds of [Appellants' claim 1] ... to be indefinite because there is no accompanying description in [Appellants'] disclosure of what particular programming instructions are or are not encompassed by" Appellants' claim 1 (Final Act. 6; Ans. 12). See Aristocrat, 521 F.3d at 1336-37 (A claim element that is treated as a "means-plus-function" element subject to the requirements of 35 U.S.C. § 112, sixth paragraph, is indefinite under 35 U.S.C. § 112, second paragraph, if the specification does not sufficiently identify adequate structure for performing the recited function). To satisfy the definiteness requirement, a means-plus- function claim requires sufficient disclosure of the underlying structure. That task lies with the patentee. E.g., Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1211 (Fed. Cir. 2003) ("The duty of a patentee to clearly link or associate structure with the claimed function is the quid pro quo for allowing the patentee to express the claim in terms of function under section 112, paragraph 6.") (citing Budde v. Harley-Davidson, Inc., 250 F.3d 1369, 1377 (Fed. Cir. 2001)); Valmont Indus., Inc. v. Reinke Mfg. Co., 983 F.2d 1039, 1042 (Fed. Cir. 1993) ("The applicant must describe in the patent specification some structure which performs the specified function."). In cases involving a computer-implemented 6 Appeal2017-008448 Application 13/505,699 invention, we have held that the structure must be more than a general purpose computer or a microprocessor, Aristocrat Techs. Aust!. Pty Ltd. v. Int'! Game Tech., 521F.3d1328, 1333 (Fed. Cir. 2008), unless, in the rare circumstance, any general purpose computer without any special programming can perform the function, see Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361, 1365 (Fed. Cir. 2012). Where the structure is a general purpose computer or microprocessor, "[ r ]equiring disclosure of an algorithm properly defines the scope of the claim and prevents pure functional claiming." Ergo, 673 F.3d at 1364. An "algorithm" is "a step-by-step procedure for accomplishing a given result," and may be expressed "in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure." Id. at 1365 (citations and internal quotation marks omitted). "Claim definiteness ... depends on the skill level of a person of ordinary skill in the art. In software cases, therefore, algorithms in the specification need only disclose adequate defining structure to render the bounds of the claim understandable to one of ordinary skill in the art." AllVoice Computing PLC v. Nuance Commc 'ns, Inc., 504 F.3d 1236, 1245 (Fed. Cir. 2007) (internal citations omitted). Alfred E. Mann Foundation for Scientific Research v. Cochlear Corporation, 841F.3d1334, 1341--42 (Fed. Cir. 2016). For the reasons set forth above, Appellants failed to carry their burden, under the written description provision of 35 U.S.C. § 112, first paragraph, of demonstrating that their Specification provides written descriptive support for their claimed invention and, correspondingly, failed to reasonably apprise those skilled in the art as to the scope of Appellants' claimed invention in order to satisfy the requirements of 35 U.S.C. § 112, second paragraph. For the reasons set forth above, we are not persuaded by Appellants' contention that Examiner applied the wrong "standard for determining whether Section 112, sixth paragraph is invoked" (App. Br. 7). 7 Appeal2017-008448 Application 13/505,699 For the foregoing reasons, we are not persuaded by Appellants' contention that Examiner conceded that "very specific algorithmic operations ... are at least reiterated in [Appellants' Specification]," by finding that the functionality required by Appellants' claim 1 requires "very specific algorithmic operations (e.g., specific programming included on a microprocessor)" that was not described in Appellants' Specification (see App. Br. 9; cf Final Act. 3--4; Ans. 2--4 and 10-12). We are not persuaded by Appellants' contentions relating to paragraphs 26--41 of Appellants' Specification (see App. Br. 9-10 (citing Spec. ,-i,-i 26-41; see also Reply Br. 3-5). To the contrary, we agree with Examiner's finding that Appellants' Specification, at best, "only reiterates the functional language that is correlated to a generic means as is recited in [Appellants'] ... claims" and "the functionally defined 'microcontroller [] programmed with instructions' has no accompanying description in the disclosure of what particular programming instructions are or are not encompassed by [Appellants'] claims" (Ans. 11-12). CONCLUSION The preponderance of evidence supports Examiner's: (a) conclusion that Appellants' claim 1 is indefinite and (b) finding that Appellants' Specification fails to provide written descriptive support for the subject matter encompassed by Appellants' claim 1. The rejection of claim 1 under 35 U.S.C. § 112, second paragraph is affirmed. Appellants' claims 2 and 9-20 are not separately argued and fall with Appellants' claim 1. 8 Appeal2017-008448 Application 13/505,699 The rejection of claim 1 under the written description provision of 35 U.S.C. § 112, first paragraph is affirmed. Appellants' claims 2 and 9-20 are not separately argued and fall with Appellants' claim 1. Obviousness: ISSUE Does the preponderance of evidence relied upon by Examiner support a conclusion of obviousness? FACTUAL FINDINGS (FF) FF 1. Appellants' Figure 1 is reproduced below: TEMP 22 TRANSCEIVER 26 IR3 18 IR1 14 BATTERY 28 WRIST BAND 12 DCU f 10 HOUSING 20 M!CROCONTROLLER 40 FIG. 1 Appellants' "Fig. 1 is a diagrammatic representation of a data collection unit according to [Appellants'] exemplary disclosed embodiment" (Spec. iJ 4 ). FF 2. Appellants disclose that "data collection unit 10 may include at least one infrared sensor 14, a temperature sensor 22, and/or an accelerometer 24" and illustrate in Appellants' Fig. 1 a "data collection unit 10 [that] includes three infrared sensors 14, 16, 18" (Spec. iii! 13-14). 9 Appeal2017-008448 Application 13/505,699 FF 3. Appellants disclose that "[e]ach infrared sensor may be configured as a transmitter/receiver capable of monitoring the oxygen content of blood passing through nearby blood vessels," wherein "[s]pacing infrared sensors 14, 16, and 18 apart from one another can maximize the possibility that at least one sensor contacts the wearer's skin at all times, even during the movements associated with physical activities" (Spec. iii! 15 and 17). FF 4. Sagel "relates to body weight management systems for subjects including humans and domestic animals" (Sagel 1: 5-6; see generally Final Act. 8-9; Ans. 7-8). FF 5. Sagel' s body weight management system ... comprises a diet-tracking system for estimating the subject's individual energy intake or caloric intake over a set period of time; devices for estimating the energy expenditure of the subject and compositions comprising satiety agents selected from the group consisting of long chain fatty acids, their nonglyceryl esters, hydrolyzable in the presence of gastrointestinal enzymes, and mixtures thereof, wherein said satiety agent releases in the stomach. (Sagel 4: 30-39; see generally Final Act. 8-9; Ans. 7-8.) FF 6. Sagel discloses a pedometer, i.e. an energy expenditure measuring device, "which incorporate[ s] pulse meters for sensing [a] user's heartbeat" (Sagel 9: 18-19; see generally Final Act. 8-9; Ans. 7-8). FF 7. Sagel discloses: In contrast to heart rate monitors that determine the heartbeat in beats per minute (bpm) based on electrical signals from the heart, the pulse meters calculate the heartbeat by sensing blood flow through the user's veins. Typically, pulse meters incorporate an infrared light sensor that is pressed against the user's fingertip or clipped against the user's ear. The infrared light sensor determines how fast the user's blood is pumping through their veins. Unfortunately, such pulse meters 10 Appeal2017-008448 Application 13/505,699 encounter problems in that if the user's finger is pressed too hard against the sensor, the blood flow will slow down. By contrast, if pressed too lightly against the sensor, then even the slightest movement of the user's fingertip can give erratic readings. Similarly, the ear-clip pulse meter models can also provide faulty readings due to poor circulation in the user's ears, or to sensor movements caused by the connecting wires that must dangle from the sensor. While the use of pulse meters is accurate when the user remains very still, they become unstable and inaccurate during a fitness routine. This therefore defeats the purpose of using the pulse meter to determine the user's heartbeat during exercise. Proper use of heart rate measurement requires that the user be aware of the heart rate during the exercise. As noted above, however, accurate readings with the pulse meters are accomplished by interrupting or slowing down the exercise routine, which has its own disadvantages notwithstanding the fact that the user's heart rate instantaneously lowers during a stoppage or slow down. (Sagel 9: 20--48.) FF 8. Examiner finds that Sagel discloses Appellants' claimed invention with the exception of "the specific combination and arrangement of 'two or more infrared sensors configured to provide an output indicative of a pulse rate' and 'that the two or more infrared sensors are located adjacent to the wrist of the user"' (Final Act. 9; see Ans. 8-9). FF 9. Kondo discloses "a watch incorporating a sensor therein for measuring biological data, such as the pulse rate, or environment data incorporated in a wrist watch type wrist side measuring device" (Kondo 1: 8-11; see Final Act. 9-10 (citing Kondo's Abstract, Fig. 2, and Fig. 5); Ans. 9). 11 Appeal2017-008448 Application 13/505,699 FF 10. Kondo's Figure 1 is reproduced below: FIG.-1 Kondo's "FIG. 1 is a plan view illustrating an embodiment of a portable apparatus according to" Kondo' s disclosure (Kondo 3: 46-4 7; see generally Final Act. 9-10; Ans. 9). FF 11. Kondo's Figure 2 is reproduced below: 71 68 680 2 FIG.-2 Kondo's "FIG. 2 [illustrates] a cross-sectional view taken along the line II- II of [Kondo's] FIG. l" (Kondo 3: 48--49; see generally Final Act. 9-10; Ans. 9). FF 12. Kondo's device comprises an "[a]pparatus body l[, which] has a sensor or measuring device 2 such as protruding portion 2 at a side portion thereof. The protruding portion 2 accommodates, for example an infrared radiation sensor 3. The sensor can be biological type sensor for measuring, 12 Appeal2017-008448 Application 13/505,699 for example, pulse rate or body temperature" (Kondo 4: 28-33 (emphasis omitted); see generally Final Act. 9-1 O; Ans. 9). FF 13. Kondo discloses: [W]hen the operator brings, for example, the bulb of his forefinger into abutment with glass plate 66 while the sensor 3 is energized, the light emitted by light-emitting element 61 is reflected by the forefinger. The reflected light is detected by light receiving element 62. At that time, maxima and minima 10 values of the reflected light represent the pulsating flow of a blood are measured, thereby enabling measurement of the pulse rate. (Kondo 5: 5-13; see generally Final Act. 9-10; Ans. 9.) FF 14. Kondo's Figure 6 is reproduced below: FIG.-6 Kondo's FIG. 6 "illustrates another embodiment of [Kondo's] portable apparatus[, which has] an external measuring device mounted on a finger" (Kondo 3: 59-61; see also id. at 7: 7-16; see generally Final Act. 9-10; Ans. 9). 13 Appeal2017-008448 Application 13/505,699 ANALYSIS Appellants' claim 1 is reproduced above. Appellants' claims 2 and 9- 20 depend directly or indirectly from Appellants' claim 1. Based on the combination of Sagel and Kondo, Examiner concludes that, at the time Appellants' invention was made, it would have been prima facie obvious "to rely on the arrangement and use of infrared sensors in a configured closure system as taught by Kondo as the sensor device used in the apparatus and methodology taught by Sagel" (Final Act. 10). In this regard, Examiner asserts that "a person of ordinary skill in this art [would have recognized that] the wrist, ankle, and neck [are] ideal places to measure for a human being's pulse, amongst many, many other locations on [the] surface of the human body" (Final Act. 13; see also Ans. 15). We are not persuaded. Examiner recognizes that Sagel fails to disclose a "specific combination and arrangement of 'two or more infrared sensors configured to provide an output indicative of a pulse rate'[, wherein] '[] the two or more infrared sensors are located adjacent to the wrist of the user"' (FF 8). As Appellants explain, Kondo also fails to teach two or more infrared sensors that are configured to provide an output indicative of a pulse rate and that the infrared sensor disclosed by Kondo "does not measure pulse at the wrist, but rather measures pulse from the finger" (App. Br. 12; see also id. at 11- 14; FF 9-14). Further, although Examiner finds that pulse rate may be obtained from various locations on a body (Final Act. 13; see also Ans. 15), Examiner failed to establish an evidentiary basis on this record that pulse rate may be obtained through the use of an infrared sensor at a location other than an individual's fingertip (see FF 7 and 13-14; see also App. Br. 14 14 Appeal2017-008448 Application 13/505,699 (Examiner's suggestion "that it would have been common sense based on Sagel and Kondo to measure pulse [rate] at many locations on a surface of the human body, including the wrist ... is not supported by the disclosure of either Sagel or Kondo")). "[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Absent some articulated rationale, a finding that a combination of prior art would have been "common sense" or "intuitive" is no different than merely stating the combination "would have been obvious." Such a conclusory assertion with no explanation is inadequate to support a finding that there would have been a motivation to combine. In re Van Os, 844 F.3d 1359, 1361 (Fed. Cir. 2017). CONCLUSION The preponderance of evidence relied upon by Examiner fails to support a conclusion of obviousness. The rejection of claims 1, 2, and 9-20 under 35 U.S.C. § 103(a) as unpatentable over the combination of Sagel and Kondo is reversed. TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § l .136(a). AFFIRMED 15 Copy with citationCopy as parenthetical citation