Ex Parte Takeuchi et alDownload PDFPatent Trial and Appeal BoardFeb 7, 201712491211 (P.T.A.B. Feb. 7, 2017) Copy Citation 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. 12/491,211 06/24/2009 Masahiro Takeuchi 6002-0036 4969 39083 7590 02/09/2017 KFNF AT Y VATDYA T T P EXAMINER 3000 K Street, N.W. WEARE, MEREDITH H Suite 310 Washington, DC 20007 ART UNIT PAPER NUMBER 3735 NOTIFICATION DATE DELIVERY MODE 02/09/2017 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): avaidya@kviplaw.com u spto @ kviplaw. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MASAHIRO TAKEUCHI and NORIAKI TODOKORO Appeal 2014-008530 Application 12/491,211 Technology Center 3700 Before: EDWARD A. BROWN, WILLIAM A. CAPP, and BRENT M. DOUGAL, Administrative Patent Judges. DOUGAL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from a non-final rejection of claims 1—17. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held on January 23, 2017. We AFFIRM. Appeal 2014-008530 Application 12/491,211 CLAIMED SUBJECT MATTER The claims are directed to a pulse photometry probe. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A pulse photometry probe comprising: a light emitter having a first face from which light is emitted toward a living body; a light receiver having a second face which receives the light from the living body; a surface sheet which faces the first face of the light emitter and the second face of the light receiver; a cover sheet in which at least one slit is formed, the light emitter and the light receiver which are disposed between the surface sheet and the cover sheet; and a lead wire which includes: a first lead wire connected to one of the light emitter and the light receiver; a second lead wire connected to the other one of the light emitter and the light receiver; and a basal portion at which the first lead wire and the second lead wire are bundled, wherein the second lead wire includes at least one slack portion between the basal portion and the other one of the light emitter and the light receiver. The prior art relied upon by the Examiner in rejecting the claims on REFERENCES appeal is: Rich Gorski Chin Delonzor US 4,865,038 Sept. 12, 1989 US 6,622,034 B1 Sept. 16, 2003 US 6,694,160 B2 Feb. 17, 2004 US 7,561,905 B2 July 14, 2009 2 Appeal 2014-008530 Application 12/491,211 REJECTIONS Claims 1—6, 8, and 10-17 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Rich, Gorski, and Chin. Claims 7 and 9 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Rich, Gorski, Chin, and Delonzor. OPINION Appellants argue all of the claims together. Appeal Br. 11—16. We select claim 1, the sole independent claim, as representative. See 37 C.F.R. § 41.37(c)(l)(iv). The Examiner relies on Rich for teaching the basic structure of the claimed pulse photometry probe, but determines that “Rich does not teach the cover sheet comprises at least one slit” or the claimed “lead wire.” Non- Final Act. 3—5. The Examiner concludes that: It would have been obvious to one of ordinary skill in the art at the time of the invention to modify the probe of Rich with providing at least one slit in the cover sheet as taught by Gorski in order to provide the predictable results of facilitating a bend in the cover sheet at the position of the at least one slit so that the emitter and detector are properly aligned during transmissive probe measurements. Id. at 4—5. And that: It would have been obvious to one of ordinary skill in the art at the time of the invention to further modify the probe of Rich with a lead wire comprising a first lead wire, a second lead wire and a basal portion as taught by Chin in order to provide the predictable results of providing a connection to the emitter and detector that does not induce stresses that are known to lead to delamination (Chin, col. 2, lines 36-46). This is a simple substitution of one flexible configuration (e.g., slackened lead wires) for another 3 Appeal 2014-008530 Application 12/491,211 flexible configuration (e.g., flexible circuit board) to yield no more than predictable results. Id. at 6. Appellants argue against the combination of Rich and Gorski (at least one slit) and against the combination of Rich and Chin (lead wire with slack portion). We address each in turn. At Least One Slit Appellants argue that “[ijncreasing the bendability of Rich’s spine 27 at a certain location by adding [Gorski’s] slits would impermissibly render Rich’s sensor appliance unsatisfactory for various of its intended purposes.” Appeal Br. 13. This is because the slits “would only weaken the spine . . . preventing the sensor appliance 1 from remaining in a U-shaped orientation snugly fit over the tip of the user’s finger.” Id. Appellants also argue that the “slits would impede [the] necessary property” of “remain[ing] in a U- shaped orientation snugly fit over the tip of the user’s finger.” Reply Br. 3. Appellants offer no evidence to substantiate these assertions. “Attorney’s argument in a brief cannot take the place of evidence.” In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) Thus, Appellants’ argument is unconvincing as no evidence or support is provided to show that adding a slit to Rich’s metal spine would weaken it to the point of preventing it from maintaining its shape on a user’s finger. Appellants then argue that modifying Rich to include Gorski’s slit is unnecessary and “only relevant in the context of the claimed apparatus, which is wrapped or wound around the users finger and thereby creates the potential problem of aperture formation.” Appeal Br. 13. Appellants argue that increased flexibility is unnecessary because Rich’s device “remains in place based solely on the form sustaining property of the spine 27.” Id. 4 Appeal 2014-008530 Application 12/491,211 We first note that how the pulse photometry probe is wrapped around a finger is not claimed. Thus, this configuration cannot differentiate the claims from the prior art. Appellants’ argument about unnecessary “increased flexibility” is also unconvincing because it does not address the Examiner’s findings or reasoning for making the combination. The Examiner does not make the combination for the benefit of “increased flexibility,” rather it is to position the slit at a particular location “thereby facilitating proper alignment of the emitter and detector when the probe is applied to a user for measurements.” Non-Final Act. 5. Thus, the “increased flexibility” is not just for the spine to “remain[] in place” as asserted by Appellants, but rather for proper positioning of the “emitter and detector.” Appellants argue in the Reply Brief that “Rich’s spine 27 does not need to be weakened to enable it to be bent to achieve proper alignment of the optical elements.” Reply Br. 5. However, this does not address the benefit identified by the Examiner (proper alignment based on positioning the slit at a particular location) as the reason to combine. In short, Appellants’ argument does not identify any errors in the Examiner’s findings or reason to combine Rich and Gorski. Appellants also argue that the modification would “prevent the spine 27 from enhancing ambient light rejection since external light could pass through the slits and thereby contaminate the light measurements.” Appeal Br. 14. The portion of Rich cited by Appellants for support states “[wjhen the malleable spine 27 is employed, it enhances ambient light rejection.” Rich, col. 4,11. 56—59. In other words, as compared to no spine, a spine “enhances 5 Appeal 2014-008530 Application 12/491,211 ambient light rejection.” Id. Appellants do not explain why this would not be the case with a modified spine including a slit. We agree with the Examiner’s findings that a modified spine would still “enhance^ ambient light rejection” as compared to no spine in accordance to Rich’s teachings. See also, Ans. 4. Thus, we are not informed of error in the Examiner’s rejection. Lead Wire with Slack Portion Appellants argue that “replacing Rich’s conductors 9 with Chin’s wires 34 impermissibly renders Rich’s sensor appliance unsatisfactory for its intended purpose, because it increases the size of the perimeter weld necessary to hold the structure together to prevent delamination.” Appeal Br. 15—16. Appellants also argue “that no rationale exists” for such a modification. Reply Br. 7. Appellants explain: The Background Section of Rich confirms their intention to decrease the size in the height direction ... by disclosing that “prior art appliances are subject to contamination and suitable for use only as disposable devices since their discrete LED and photodiode components and wiring are relatively bulky and vulnerable to external contaminants.” Appeal Br. 15 (citing Rich col. 1:37—42). The Examiner responds that Rich does not appear concerned with “the use of lead wires in general, but rather the use of ‘bulky’ LED/photodiodes and associated wiring.” Ans. 5. The Examiner also points out that Rich does not define what “constitute(s) a ‘bulky’ device.” Id. We note that though Chin has wiring connected to a discrete light emitter and photodetector, Chin is not prior art to Rich. Thus, it is not 6 Appeal 2014-008530 Application 12/491,211 apparent whether the electronics of Chin would be considered “bulky” by Rich. Id. Further, as noted by the Examiner, Chin teaches an angular path for its wire connected to the emitter for the express reason of “inhibiting delamination or separation of the layers of the sensor.” Chin, col. 1:58—60; Ans. 6. Thus, Chin deals with the same problem as Rich, but develops an alternative solution. In addition, in Rich’s background section, cited by Appellants, Rich expressly teaches that prior art devices with “discrete LED and photodiode components and wiring” are “suitable for use only as disposable devices.” Appeal Br. 15 (citing Rich col. 1:37—42). Contrary to Appellants’ assertion, Rich’s express teaching, though limited to disposable devices, provides a rationale for the combination and also supports the Examiner’s finding that replacing Rich’s electronics with that of Chin is nothing more than a simple substitution with predictable results. Non-Final Act. 6. Thus, we are not informed of error in the rejection. Similar to the arguments discussed above, Appellants also argue that combining Rich and Chin is unnecessary and that “[t]he slack portion is only relevant in the context of the claimed apparatus, which is wrapped or wound around the user's finger and thereby creates the potential problem of insufficient wiring length.” Appeal Br. 16. As we noted previously, how the pulse photometry probe is wrapped around a finger is not claimed. Thus, this configuration cannot differentiate the claims from the prior art. Further, in response the Examiner finds that “as evidenced by Chin, a slack portion is additionally relevant in the context of preventing 7 Appeal 2014-008530 Application 12/491,211 delamination by stress induced by lead wires in flexible sensors (Chin, [0015]). As noted previously by Appellant, Rich likewise discloses features to prevent delamination (e.g., col. 4, lines 56—68).” Ans. 5—6. In view of these findings we are not informed of error in the Examiner’s rejection. Claims 2—17 depend from claim 1 and are not separately argued. Thus, claims 2—17 fall with claim 1 for the same reasons. DECISION The Examiner’s rejection of claims 1—17 is affirmed. 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 8 Copy with citationCopy as parenthetical citation