Ex Parte Moon et al

Patent Trial and Appeal Board

May 7, 2018

12559392 (P.T.A.B. May. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/559,392 09/14/2009 Jim MOON
35938 7590 05/09/2018
Acuity Law Group, P.C.
12707 High Bluff Drive
Suite 200
San Diego, CA 92130-2037
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.
TWI-15000-UT 8338
EXAMINER
LIU, CHU CHUAN
ART UNIT PAPER NUMBER
3735
NOTIFICATION DATE DELIVERY MODE
05/09/2018 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):
docketing© acuity lg. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JIM MOON, DEVIN MCCOMBIE,
MARSHAL DHILLON, and MATT BANET
Appeal2016-002435 1
Application 12/559,3922
Technology Center 3700
Before PHILIP J. HOFFMANN, BRADLEY B. BAY AT, and
AMEE A. SHAH, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL
Jim Moon et al. (Appellants) seek our review under 35 U.S.C. § 134
of the final rejection of claims 1, 3-12, 15, 16, and 18-23, the only claims
pending in the application. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b). Appellants appeared for oral hearing on April 25, 2018.
We REVERSE.
1 Our Decision references Appellants' Appeal Brief ("Appeal Br.," filed
July 9, 2015), Reply Brief ("Reply Br.," filed December 21, 2015), the
Examiner's Answer ("Ans.," mailed October 22, 2015), and the Final Office
Action ("Final Act.," mailed December 22, 2014).
2 Appellants identify "Sotera Wireless, Inc." as the real party in interest for
this appeal (Appeal Br. 4).
Appeal 2016-002435
Application 12/559,392
STATEMENT OF THE CASE
Claimed Subject Matter
Appellants' claimed "invention relates to medical devices for
monitoring vital signs, e.g., saturation of peripheral oxygen, Sp02"
(Spec. if 3).
Claim 1 is the sole independent claim on appeal, and is reproduced
below with added formatting.
1. A system for monitoring both blood pressure and oxygen
saturation values from a patient, comprising:
a pulse oximetry sensor comprising:
a first radiation source configured to emit a first optical
radiation at a first wavelength;
a second radiation source configured to emit a second
optical radiation at a second wavelength;
a substrate comprising a first substantially planar surface
which comprises the emitting surface of the first and
second radiation sources;
a photodetector configured to detect the first optical
radiation emitted by the first radiation source after the
first optical radiation passes through a portion of the
patient to generate a first signal, and the second optical
radiation emitted by the second radiation source after the
second optical radiation passes through a portion of the
patient to generate a second signal;
a substrate comprising a second substantially planar
surface which comprises the receiving surface of the
photodetector;
and a finger-ring housing comprising the first and second
radiation sources and the photodetector, the finger-ring
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Application 12/559,392
housing configured to attach to a base of the patient's
thumb such that the first optical radiation emitted by the
first radiation source and the second optical radiation
emitted by the second radiation source pass through the
thumb tissue and are received by the princeps pollicis
artery before reaching the photodetector, wherein the first
and second radiation sources are proximal to one another
and separated from the photodetector by an included
angle between 35 - 55 degrees, wherein the included
angle is the angle formed between a first line drawn
parallel to the first planar surface and a second line
drawn parallel to the second planar surface;
a second sensor comprising: at least two electrodes, each
configured to attach to the patient and measure electrical signals
and an electrical circuit configured to receive and process the
electrical signals to determine a time-dependent electrical
signal; and
a processing unit configured to be worn on the patient's arm
and connected to the pulse oximetry sensor to receive the first
and second time-dependent signals, and to the second sensor to
receive the time-dependent electrical signal, the processing unit
comprising a processor configured to process: i) the first and
second time-dependent signals to determine AC signals, or
signals derived therefrom, to determine the oxygen saturation
value; and ii) at least one of the AC signals and the electrical
signal, or signals derived therefrom, to determine the blood
pressure value.
(Appeal Br. 25-26, Claims App.).
Rejections
Claims 1, 3-12, 15, 16, and 18-23 stand rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite.
Claims 1, 5, 15, and 16 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kimball (US 6,879,850 B2, iss. Apr. 12, 2005),
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Application 12/559,392
Polson (US 5,190,038, iss. Mar. 2, 1993), and Banet'517 (US
2006/0122517, pub. June 8, 2006).
Claims 3 and 4 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kimball, Banet'517, Polson, and Banet'298
(US 2005/0228298 Al, pub. Oct. 13, 2005).
Claims 6-11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kimball, Polson, Banet' 517, and Sackner (US 6,551,252,
iss. Apr. 22, 2003).
Claim 12 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kimball, Polson, Banet' 517, Sackner, and Huster
(US 2007/0010719 Al, pub. Jan. 11, 2007).
Claims 18 and 19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kimball, Polson, Banef517, and Tien (US 5,588,427, iss.
Dec. 31, 1996).
Claims 20-23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kimball, Polson, Banet'517, and Yanagi (US 5,873,834,
iss. Feb. 23, 1999).
ANALYSIS
Indefiniteness Rejection
We have reviewed the Examiner's indefiniteness rejection in light of
Appellants' arguments that the Examiner has erred. We concur with
Appellants' conclusion that the Examiner erred in determining that claims 1,
3-12, 15, 16, and 18-23 are indefinite.
"The legal standard for definiteness is whether a claim reasonably
apprises those of skill in the art of its scope." In re Warmerdam, 33 F.3d
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Application 12/559,392
1354, 1361 (Fed. Cir. 1994) (citing Amgen Inc. v. Chugai Pharma. Co.,
927 F.2d 1200, 1217 (Fed. Cir.1991)).
The Examiner's reasoning in support of the indefiniteness rejection
fails to consider the language of the claims within the context of the claimed
invention when viewed in light of the Specification, which includes
Appellants' drawings (e.g., Spec., Figs. 2, 3A). The definiteness of the
claim language employed must be analyzed not in a vacuum, but always in
light of the Specification as it would be interpreted by one possessing the
ordinary level of skill in the pertinent art. See In re Moore, 439 F.2d 1232,
1235 (CCPA 1971); see also Power-One, Inc. v. Artesyn Techs., Inc., 599
F.3d 1343, 1350 (Fed. Cir. 2010).
First, the Examiner's interpretation of the limitation "first line drawn
parallel to the first planar surface and a second line drawn parallel to the
second planar surface" appears not to consider the previously defined
surfaces within the context of the claimed pulse oximetry sensor, regardless
of the number of lines that can be drawn. Second, the use of the terms
"substrate" within the context of the claim language does not render the
claim indefinite because Appellants have broadly claimed this feature to
include either the same substrate or different substrates. "Breadth is not
indefiniteness." In re Gardner, 427 F.2d 786, 788 (CCPA 1970). Finally,
relative terms do not automatically render a claim indefinite and must be
evaluated on a case-by-case basis, the acceptability of which is determined
based on whether an artisan would understand the scope of the claim when
read in light of the specification. We agree with Appellants that the term
substantially planar surface would be understood by a person of ordinary
skill in the art as in light of the Specification, considering the nature of the
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Application 12/559,392
claimed invention. Expressions such as substantially are sometimes
warranted upon consideration of the claimed invention in light of the
disclosure, in order to accommodate minor variations that may be
appropriate to secure the invention. See Verve, LLC v. Crane Cams, Inc.,
311 F.3d 1116 (Fed. Cir. 2002).
Accordingly, for the reasons provided by Appellants in their briefs
(Appeal Br. 9-13; Reply 3--4), we will not sustain the rejection of claims 1,
3-12, 15, 16, and 18-23 under 35 U.S.C. § 112, second paragraph, as
indefinite.
Obviousness Rejections
We are persuaded by Appellants' argument that the Examiner has
failed to account for the limitation "the first and second radiation sources are
proximal to one another and separated from the photodetector by an included
angle between 35 - 55 degrees, wherein the included angle is the angle
formed between a first line drawn parallel to the first planar surface and a
second line drawn parallel to the second planar surface," as recited in
claim 1 (Appeal Br. 15-18; Reply Br. 5---6).
The Examiner finds this disputed limitation as the angle "between at
least a line drawn parallel the surface of element 350a or 550a and at least a
line drawn parallel the surface of element 350b or 550b in Figs. 3B and Fig.
5B" of Kimball. Final Act. 5. In response to Appellants' arguments, the
Examiner submits that Kimball discloses this limitation in Figures 3B
and 5B, "as best understood referring to the 35 USC 112 rejection"
(Ans. 16). As discussed above, we do not find the claim language to be
indefinite. We also do not agree with the Examiner's interpretation of
Kimball as shown in Figures 3B and 5B. Cf Spec., Figs. 3A and 3B.
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Instead, we agree with Appellants that "if one draws a first line drawn
parallel to the first planar surface and a second line drawn parallel to the
second planar surface, [as proffered by the Examiner,] the lines never
intersect; so there is no included angle." Reply Br. 5. Figures 3B and 5B of
Kimball, as interpreted by the Examiner, do not support the finding that "the
first and second radiation sources are proximal to one another and separated
from the photodetector by an included angle between 35 - 55 degrees,
wherein the included angle is the angle formed between a first line drawn
parallel to the first planar surface and a second line drawn parallel to the
second planar surface," as called for in claim 1.
Accordingly, we do not sustain the rejection of independent claim 1.
We also do not sustain the rejections of dependent claims 3-12, 15, 16, and
18-23 for the same reason as claim 1, because the Examiner has not relied
on the additional cited references to cure the above-discussed deficiency in
Kimball.
DECISION
The Examiner's decision to reject claims 1, 3-12, 15, 16, and 18-23 is
reversed.
REVERSED
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