Ex Parte Ohki et al

Patent Trial and Appeal Board

Aug 11, 2016

12110537 (P.T.A.B. Aug. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/110,537 04/28/2008 Mitsuharu Ohki
22850 7590 08/15/2016
OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP,
1940 DUKE STREET
ALEXANDRIA, VA 22314
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.
325769US8 5667
EXAMINER
EISEMAN, ADAM JARED
ART UNIT PAPER NUMBER
3736
NOTIFICATION DATE DELIVERY MODE
08/15/2016 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):
patentdocket@oblon.com
oblonpat@oblon.com
ahudgens@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MITSUHARU OHKI and TOMONORI MASUNO
Appeal2014-001375
Application 12/110,537
Technology Center 3700
Before JOHN C. KERINS, ANNETTE R. REIMERS, and
BRANDON J. WARNER, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Mitsuharu Ohki and Tomonori Masuno ("Appellants")1 appeal under
35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1-9,
which are all the pending claims. Appeal Br. 1. We have jurisdiction over
the appeal under 35 U.S.C. § 6(b). An oral hearing was held on June 16,
2016.
We REVERSE.
According to Appellants, the real party in interest is Sony
Corporation. Appeal Br. 1.
Appeal2014-001375
Application 12/110,537
CLAIMED SUBJECT MATTER
Appellants' disclosed invention "relates to a biological-information
obtaining apparatus, particularly to a biological-information obtaining
apparatus capable of obtaining information on oxygen saturation and a
processing method thereof." Spec. 1. 2 Claims 1 and 6-9 are independent.
Claim 1, reproduced below with emphasis added, is illustrative of the subject
matter on appeal.
1. A biological-information obtaining apparatus
compnsmg:
light-emitting means for emitting light;
image-capturing means for capturing images, in time
sequence, obtained by irradiating a living body with the light
emitted and by causing the light to be transmitted through or
reflected by the living body, the image-capturing means being
sensitive to at least two color components;
extreme generation means for generating a maximum
value and a minimum value, in time sequence, of each of the
color cornponents for certain regions of the captured irnages;
and
oxygen-saturation calculation means for calculating
oxygen saturation on the basis of the maximum value and the
minimum value of each of the color components.
2 We note that Appellants' Specification does not provide line or
paragraph numbering; accordingly, reference herein is made only to page
numbers.
2
Appeal2014-001375
Application 12/110,537
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Segman WO 2006/100685 A2 Sept. 28, 2006
REJECTIONS
The following rejections are before us for review:
I. Claims 1-3, 5, and 8 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Segman. Final Act. 2-3.
II. Claims 4, 6, 7, and 9 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Segman. Id. at 4--5.
ANALYSIS
Independent claim 1 recites, in relevant part, an apparatus for
obtaining biological information that includes "image-capturing means for
capturing images" that is "sensitive to at least two color components," as
well as "extreme generation means for generating a maximum value and a
minimum value, in time sequence, of each of the color components for
certain regions of the captured images," and "oxygen-saturation calculation
means for calculating oxygen saturation on the basis of the maximum value
and the minimum value of each of the color components." See Appeal Br.,
Claims App. (emphasis added). Each of the other independent claims
includes substantially similar recitations regarding these emphasized
functions. 3 Appellants argue that Segman does not disclose structure that
3 In particular, we note that claim 6 recites, in relevant part, an
apparatus that includes the same "extreme generation means" for performing
3
Appeal2014-001375
Application 12/110,537
actually performs these emphasized functions. See Appeal Br. 7-11; Reply
Br. 2--4. We agree.
In rejecting the independent claims, the Examiner relies on Segman
for disclosing an image processing unit that "is capable of performing
maximum and minimum value detecting operations from temporal data."
Final Act. 3 (citing Segman, p. 8, 1. 30-p. 9, 1. 5; p. 62, 1. 27-p. 63, 1. 6)
(emphasis added); see also Ans. 5-6. Regarding actual performance of this
function, however, the Examiner erroneously characterizes the recitation
here as an intended use, stating that "a recitation of the intended use of the
claimed invention must result in a structural difference between the claimed
invention and the prior art in order to patentably distinguish the claimed
invention from the prior art. If the prior art structure is capable of
performing the intended use, then it meets the claim." Id. at 5; see id. at 2;
see also Ans. 5---6. Although the Examiner's statement regarding intended
use is correct in the abstract, the Examiner improperly applies it to a
functional recitation in the present claims. As a result, the Examiner
erroneously "contends that Segman meets the limitations of the currently
recited claims." Id. at 5; see also Ans. 5---6.
the identical function, and "oxygen-saturation calculation means" for
performing a more specific recitation of a substantially similar function;
claim 7 recites, in relevant part, a method that positively recites the active
steps of "generating a maximum value and a minimum value," as in claims 1
and 6, and "calculating oxygen saturation," as in claim 6; and each of claims
8 and 9 recites, in relevant part, an apparatus substantially similar to that
recited in claims 1 and 6, respectively, but with an "extreme generation
unit," instead of "extreme generation means," and an "oxygen-saturation
calculation unit," instead of "oxygen-saturation calculation means," where
the units are configured to perform the same functions as those recited in
claims 1 and 6. See Appeal Br., Claims App.
4
Appeal2014-001375
Application 12/110,537
Appellants are correct that for prior art to disclose a functional
recitation, as opposed to an intended use, mere capability to perform the
function is insufficient. See Appeal Br. 8-10. Here, the emphasized
functions recited in the claims are not intended uses; they are functions that
must actually be performed---either by the corresponding structure of either
the "extreme generation means" and the "oxygen-saturation calculation
means" (claims 1 and 6) or the "extreme generating unit" and the "oxygen-
saturation calculation unit" (claims 8 and 9), or by direct performance in the
course of performing the method (claim 7).
In other words, the corresponding structure cannot simply be a
processing unit (computer) that may be programmed to perform the function,
but it must actually be a special purpose processing unit (computer) that is
programmed to perform the recited function, such as by inclusion of an
algorithm. 4 Thus, based on a proper understanding of the claims, we agree
with Appellants that "Segman discloses no structure that performs the
function of [Appellants'] extreme generation means"-namely, "generating
a maximum value and a minimum value, in time sequence, of each of the
color components for certain regions of the captured images." Appeal Br. 8
(underlining omitted); see id., Claims App.
4 The ability of identified structure to be so programmed is not a
sufficient finding for a functional recitation. Indeed, many conventional
computer processors can be programmed to perform any number of various
tasks. Regardless of whether Segman's image processing unit may be
programmed to perform the emphasized function, unless and until it is
actually so programmed (here, the Examiner has not identified a finding in
this regard), it cannot actually perform the emphasized functions.
5
Appeal2014-001375
Application 12/110,537
Accordingly, based on the record before us, because both the finding
of anticipation in Rejection I and the determination of obviousness in
Rejection II are premised on a purported finding from Segman that is not
supported by a preponderance of the evidence, as explained above, we do
not sustain these rejections.
DECISION
We REVERSE the Examiner's decision rejecting claims 1-9.
REVERSED
6