J&M SHULER, INC.

Patent Trials and Appeals Board

Oct 1, 2020

15818541 - (D) (P.T.A.B. Oct. 1, 2020)

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.
15/818,541 11/20/2017 MICHAEL SIMMS SHULER 19081.001U10 (SPW) 9293
35856 7590 10/01/2020
SMITH TEMPEL BLAHA LLC
Docketing Department
50 Glenlake Parkway
Suite 340
Atlanta, GA 30328
EXAMINER
WEARE, MEREDITH H
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
10/01/2020 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):
docket@srtslaw.com
gsmith@srtslaw.com
mtempel@srtslaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL SIMMS SHULER
Appeal 2020-000792
Application 15/818,541
Technology Center 3700
BEFORE MICHAEL L. HOELTER, JEREMY M. PLENZLER, and
LEE L. STEPINA, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 21–27 and 29–40. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as J&M Shuler, Inc.
Appeal Br. 2.
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Application 15/818,541

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CLAIMED SUBJECT MATTER
The claims are directed to a wireless near-infrared spectrometry
sensor system. Claim 21, reproduced below, is illustrative of the claimed
subject matter:
21. A wireless near-infrared spectrometry sensor system
comprising:
a first sensor for monitoring healthy tissue;
a second sensor for monitoring injured tissue of a
compartment separate and different from the healthy tissue, the
first sensor providing information relating to perfusion of an
entire body while the second sensor provides information
relating to perfusion specific to the injured tissue of the
compartment;
the second sensor detecting oxygenation levels of the
compartment in a continuous manner;
the first sensor detecting oxygenation levels of the healthy
tissue in a continuous manner, the first sensor detecting systemic
perfusion of the human body from the healthy tissue; and
a first alarm being activated to indicate a potential acute
compartment syndrome when oxygenation levels detected by the
second sensor for the injured tissue of the compartment start
decreasing in value compared to the oxygenation levels detected
by the first sensor for the healthy tissue;
wherein each first and second sensor comprise:
a light source for emitting near-infrared energy into tissue;
a light receiver for receiving the near-infrared energy after
it exits the tissue;
a portable energy source coupled to the light source and
for supplying energy to the light source;
a mechanism for activating the portable energy source, the
portable energy source being inactive and not supplying energy
to the light source until activated by the mechanism for activating
the portable energy source, the mechanism for activating the
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portable energy source comprising a material that is removed
from a respective sensor to activate the portable energy source,
the portable energy source providing continuous energy once
activated by the mechanism for activating the portable energy
source and providing the continuous energy until its depleted of
energy;
a processing module coupled to the light source and for
controlling the light source and processing readings in
connection with the light source, the processing module
monitoring an energy level of the portable energy source and
generating a warning message if the energy level produced by
the portable energy source falls below a predetermined threshold;
a wireless transceiver coupled to the processing module
for at least one of transmitting and receiving information,
wherein the light source emits near-infrared energy at
predetermined intervals in order to conserve energy in the
portable energy source, the sensor being assigned a unique
identifier which may be transmitted by the transceiver, the
unique identifier being permanent and unique to a sensor; and
a substrate for supporting the light source, portable energy
source, the processing module, and wireless transceiver; the
portable energy source comprises at least one of a battery, a
capacitor, a thermoelectric generator, a kinetic energy
transducer, electricity derived from RF energy, and any
combination thereof; the portable energy source having a
physical size which is substantially smaller than the substrate for
supporting the light source, the processing module, and wireless
transceiver; wherein the first and second sensor each comprises
an adhesive material to securely fasten the first sensor to the
healthy tissue and the second sensor to the injured tissue; and
the light source of the first sensor being activated at
different times relative to the light source of the second sensor in
order to substantially reduce any optical interference between the
first sensor and second sensor when readings are taken from
respective sensors; each processing module of a sensor
determining if its wireless transceiver is within range for
establishing communications, each processing module of a
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sensor activating a second alarm if a wireless transceiver is out
of range for establishing communications.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Ferguson US 6,454,708 B1 Sept. 24, 2002
Bomba US 2005/0137464 A1 June 23, 2005
Drinan US 2006/0058593 A1 Mar. 16, 2006
Kern US 2007/0199262 A1 Aug. 30, 2007
Meyer US 2008/0081978 A1 Apr. 3, 2008
Shuler US 2008/0208011 A1 Aug. 28, 2008
Greiner ’595 US 2009/0118595 A1 May 7, 2009
Greiner ’879 WO 2005/122879 A1 Dec. 29, 2005
REJECTIONS
Claims 21, 24–27, 29–36, 38, and 40 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Shuler, Drinan and/or Bomba, Greiner
’595 and ’879 (“Greiner”), and Kern.
Claims 22 and 37 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shuler, Drinan, Bomba, Greiner, Kern, and Ferguson.
Claims 23 and 39 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shuler, Drinan, Bomba, Greiner, Kern, and Meyer.
OPINION
Appellant presents argument for claim 21. Appeal Br. 13–40.
Appellant addresses claim 36 under a separate heading, but simply
reproduces the language of claim 36 and reasserts the arguments presented
regarding claim 21. Id. at 40–43. Appellant relies on the argument related
to independent claims 21 and 36 for the patentability of claims 24–27, 29–
35, 38, and 40, which each depend from claim 21 or claim 36. Id. at 43.
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Appellant’s contentions do not apprise us of Examiner error because
they do not address the actual findings or reasoning provided by the
Examiner. Appellant contends that the “Examiner . . . is improperly
combining various exemplary embodiments of the prior art, especially those
found in the Drinan reference, which is in violation of established PTAB
precedent.” Appeal Br. 14. Initially, we note that the “precedent” cited by
Appellant is a non-precedential decision denying institution of inter partes
review. Moreover, that decision was decided based on the particular facts of
that case, which Appellant makes no attempt to compare to the facts before
us in this appeal.
The Examiner proposes modifying the teachings of Shuler based on
those from the other cited references. See Final Act. 3–10. Appellant’s
contentions regarding modifications to the teachings of those other cited
references are misplaced and not persuasive of error. Appellant discusses
the intended purposes of Drinan and Bomba, ultimately contending that
proposed modifications to those references made by the Examiner render
those references unsatisfactory for their intended purposes. See Appeal Br.
20–26, 31–34 (citing Dr. Shuler’s Declaration under 37 C.F.R. § 1.1322).
Those contentions are not persuasive because they address issues that are not
the basis for the Examiner’s rejection. See, e.g., Ans. 5 (noting that “the
‘prior art being modified’ in the rejection of record is Shuler” when
addressing Appellant’s contentions related to Drinan), 7 (again explaining

2 Appellant does not include the Declaration with the Appeal Brief, nor does
Appellant reference any particular portion of that declaration. We
understand Appellant to be referring to the declaration entered December 19,
2018 (“the Shuler Declaration”).
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that “[a]s noted above Shuler is the prior art invention being modified in the
rejection of record” when addressing Appellant’s contentions regarding
Bomba).
Appellant’s only contention regarding the proposed modification of
Shuler’s teachings is with respect to that involving the teachings of Drinan.
Appeal Br. 34–36. Specifically, Appellant contends that “one of ordinary
skill in the art would not be motivated in any way to combine the teachings
of references in order to make a patient more ambulatory or movable while
the patient is being monitored for a potential acute compartment syndrome.”
Id. at 36 (citing the Shuler Declaration without reference to any particular
portion of that declaration). This is not persuasive of error because, as the
Examiner notes in the Answer, “monitoring for ACS is not limited
specifically to leg injuries . . . and Appellant’s own disclosure indicates that
ACS commonly develops in locations other than the legs (pg. 103, lines 8–
17, where ACS commonly develops in the forearm).” Ans. 6. Further, as
the Examiner additionally explains, “there is no clear discouragement for . . .
enabling said individual to be moved within a hospital for additional testing,
imaging, operations; permitting said individual to go to the restroom;
permitting said individual to more freely move about within his/her bed; etc.
while continually monitoring for ACS.” Id. Without further response from
Appellant, we are not apprised of Examiner error.3
Appellant’s discussion of Greiner does not allege any particular error
in the Examiner’s findings based on Greiner or the proposed modification to
Shuler’s teachings based on those findings. See Appeal Br. 26–27.

3 Appellant did not file a Reply Brief in response to the Examiner’s Answer.
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Appellant contends that Kern is non-analogous art. Appeal Br. 36–40.
“A reference qualifies as prior art for an obviousness determination under
§ 103 only when it is analogous to the claimed invention.” In re Klein, 647
F.3d 1343, 1348 (Fed. Cir. 2011) (citing Innovention Toys, LLC v. MGA
Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011), and In re Bigio, 381 F.3d
1320, 1325 (Fed. Cir. 2004)).
Two separate tests define the scope of analogous prior art:
(1) whether the art is from the same field of endeavor, regardless
of the problem addressed and, (2) if the reference is not within
the field of the inventor’s endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the
inventor is involved.
In re Klein, 647 F.3d at 1348 (quoting In re Bigio, 381 F.3d at 1325).
Appellant contends that “[t]he Kern reference would not have logically
commended itself to Dr. Shuler’s attention in considering his problem
outlined on page 8, line 32 through page 9, line 14 of the present application
as filed.” Appeal Br. 38. Appellant again references the Shuler Declaration,
generally, and without citation to any specific portion, in support of its
contentions. See id.
The Examiner responds that “Appellant does not indicate which of
these problems specifically is addressed by each processing module being
configured for determining if its wireless transceiver is within range for
establishing communications and activating an alarm if its wireless
transceiver is out of range for establishing communications,” which “[are]
the feature(s) that Kern is relied upon to teach.” Ans. 9. Nevertheless, the
Examiner identifies one of the problems noted by Appellant as the most
relevant to the features Kern is cited for, namely, “the problem[] noted by
Appellant [a]s the need to monitor multiple compartments ‘in a continual
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and orchestrated manner by a single system.’” Id. The Examiner finds that
Kern teaches “monitoring a plurality of vital sign sensors . . . by a single
system . . . in a clinical setting” and includes “embodiment(s) wherein said
sensors communicate with the system wirelessly, [with] a limited range in
which these elements can communicate.” Id. The Examiner further finds
that “one of ordinary skill in art would readily appreciate that continuous
monitoring, such as the monitoring taught and/or suggested by Shuler, could
only occur within this limited range” and “Kern teaches/suggests providing
said sensors with an alarm which may be triggered in the event the patient
carrying the at least one sensor moves outside the wireless range of the
associated wireless communication link.” Id. Based on those findings,
which are unrebutted by Appellant, the Examiner determines that Kern is
analogous art. With no response to these findings, we are not apprised of
Examiner error.
For the reasons explained above, Appellant fails to apprise us of error
in the Examiner’s rejections.

CONCLUSION
The Examiner’s rejections are affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
21, 24–27,
29–36, 38,
40
103 Shuler, Drinan,
Bomba, Greiner
’595, Greiner ’879,
Kern
21, 24–27,
29–36, 38, 40

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22, 37 103 Shuler, Drinan,
Bomba, Greiner
’595, Greiner ’879,
Kern, Ferguson
22, 37
23, 39 103 Shuler, Drinan,
Bomba, Greiner
’595, Greiner ’879,
Kern, Meyer
23, 39
Overall
Outcome
21–27, 29–40

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. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED