Matthew BANET et al.

Patent Trials and Appeals Board

Dec 2, 2021

2021000611 (P.T.A.B. Dec. 2, 2021)

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.
12/487,283 06/18/2009 Matthew J. BANET TWI-80400-UT 6872
35938 7590 12/02/2021
Acuity Law Group, P.C.
12707 High Bluff Drive
Suite 200
San Diego, CA 92130-2037
EXAMINER
BLOCH, MICHAEL RYAN
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
12/02/2021 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@acuitylg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MATTHEW J. BANET, KENNETH R. HUNT,
and HENK VISSER II
____________

Appeal 2021-000611
Application 12/487,283
Technology Center 3700
____________

Before MICHAEL C. ASTORINO, BRADLEY B. BAYAT, and
AMEE A. SHAH, Administrative Patent Judges.

SHAH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s final decision to reject claims 1–16, 20, and 21, which are all of
the pending claims.2 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. The Appellant identifies the real party in interest as Sotera
Wireless, Inc. Appeal Br. 4.
2 The Appellant waived Oral Argument scheduled for September 28, 2021.
See Appellant Response to Notice of Hearing, Aug. 26, 2021.
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CLAIMED SUBJECT MATTER
The Appellant’s invention relates generally “to medical devices for
monitoring vital signs, e.g., blood pressure” (Spec. ¶ 2) and more
particularly to “a system for measuring a blood pressure value from a patient
[that] features a sensor configured to be worn on the patient’s thumb” (id.
¶ 7).
Claim 1 is the only independent claim on appeal, is representative of
the subject matter on appeal, and is reproduced below (with added
paragraphing and bracketed notations for reference):
1. A system for measuring a blood pressure value from a
patient, said system comprising:
[(a)] a sensor configured to be worn on the patient’s thumb
comprising
[(a1)] a light source that emits optical radiation, and
[(a2)] a photodetector that detects the optical
radiation after passing through a portion of a vessel in the
patient’s thumb to generate a first time-dependent signal,
[(a3)] wherein the sensor is configured to position
the light source and photodetector on the lower inner
portion of the thumb while leaving the tip of the thumb
uncovered such that optical radiation emitted by the light
source is directed towards, and is reflected by, the patient’s
princeps pollicis artery before reaching the photodetector,
[(a4)] wherein the sensor comprises a flexible
housing and a flexible circuit board comprising the light
source and the photodetector embedded within the flexible
housing,
[(a4i)] wherein the flexible housing and
flexible circuit board are configured to conform to
the shape of the inner portion of the thumb without
encircling the thumb, and
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[(a4ii)] wherein the light source comprises a
first light emitting diode that emits radiation
between 400 and 700 nm and a second light
emitting diode that emits radiation between
700–1000 nm;
[(b)] at least two electrodes configured to be worn on the
patient’s body and detect electrical signals, each electrode
connected to an electrical circuit configured to generate a second
time-dependent signal; and
[(c)] a processing system configured to be worn on a
patient’s arm and collectively process both the first and second
time-dependent signals to determine the blood pressure value,
the processing system attached to a second housing comprising
[(c1)] a first input port that receives the first time-
dependent signal, and
[(c2)] a second input port that receives the second
time-dependent signal, or a signal used to generate the
second time-dependent signal,
[(c3)] the second housing comprising the first input
port on one side portion and the second port on a second
side portion opposite to the first side portion.
Appeal Br. 22 (Claims App.).
REFERENCES
The prior art references relied upon by the Examiner are:
Name Reference Date
Ukawa et al. (“Ukawa”) US 5,485,838 Jan. 23, 1996
Ono et al. (“Ono”) US 2005/0171444 A1 Aug. 4, 2005
Zhang et al. (“Zhang”) US 2005/0261593 A1 Nov. 24, 2005
Banet et al. (“Banet”) US 2007/0276261 A1 Nov. 29, 2007
Flessland et al.
(“Flessland”)
US 7,460,897 B1 Dec. 2, 2008
Teller et al. (“Teller”) US 2009/0118590 A1 May 7, 2009

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REJECTIONS3
Claims 1–10, 13–15, 20, and 21 stand rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Ono, Zhang, Banet, and
Flessland.
Claims 11 and 12 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Ono, Zhang, Banet, Flessland, and Teller.
Claim 16 stands rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Ono, Zhang, Banet, Flessland, and Ukawa.
OPINION
The Appellant contends that the Examiner’s rejection of independent
claim 1 is in error because the prior art does not teach or suggest the “sensor
recited in the present claims is configured to be worn on the patient’s thumb
such that (i) the light source is directed towards the princeps pollicis artery,
and (ii) the emitted light interacts with the princeps pollicis artery before
reaching the photodetector.” Appeal Br. 14; see also id. at 15–17. After
careful review of the record, we are not persuaded of error on the part of the
Examiner.
The Appellant argues that Banet’s
patch sensor . . . is not depicted as being configured to position
the light source and photodetector on the lower inner portion of
the thumb while leaving the tip of the thumb uncovered such that
optical radiation emitted by the light source is directed towards,
and is reflected by, the patient’s princeps pollicis artery before
reaching the photodetector.
Appeal Br. 15. We are unpersuaded of error by this argument at least
because the Examiner’s findings regarding Banet are adequately supported.

3 The Examiner withdrew the rejections under 35 U.S.C. § 112. Ans. 3.
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Specifically, Banet’s Figure 7A depicts an adhesive patch sensor 20 having a
flexible printed circuit board comprising at least one light source (“LED”)
and photodetector, Figure 8 depicts sensor 20 placed on a digit with the tip
of the digit uncovered, and Figure 9 depicts sensor 20 on a thumb. See also
Banet ¶ 53. When the sensor is attached, the LEDs generate radiation that
passes through the digit’s underlying arteries and reflected back to the
photodetector to generate time-dependent optical waveforms that are
processed to measure a patient’s vital sign information. Id. ¶¶ 45, 52, 53.
We agree with and adopt the Examiner’s finding that Banet’s structures are
configured to be placed on the base of a thumb while leaving the tip
uncovered and while not completely encircling the thumb to “perform[] the
functions of measuring light interactions with the underlining arterial
components of the body location,” i.e., the princeps pollicis artery.
Ans. 5–6; see also Final Act. 10–11.
The Appellant argues that Banet’s “‘capability’ is not, however,
sufficient to provide a motivation to modify this sensor such that it provides
the limitations in the claims that are missing from the primary Ono
reference.” Appeal Br. 16 (emphasis omitted). Specifically, the Appellant
argues that “the Examiner fails to consider that one of skill in the art would
not be motivated to place the oximetry sensor taught by Banet et al. on the
base of the thumb.” Id. We are not persuaded of error by these arguments.
First, this is an argument against Banet individually. The test for
obviousness is not what any one reference would have suggested, but rather
what the combined teachings of the references would have suggested to
those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 426 (CCPA
1981). “[O]ne cannot show non-obviousness by attacking references
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individually where, as here, the rejections are based on combinations of
references.” Id. Here, the Examiner relies on Banet for teaching the sensor
being configured to position the light source and photodetector on the lower
portion of the thumb while leaving the thumb tip uncovered and having an
arrangement whereby “optical radiation emitted by the light source is
directed towards, and is reflected by, the patient’s princeps pollicis artery
before reaching the photodetector,” as recited in limitation (a3). Final
Act. 9–11. The Examiner relies on Flessland for teaching the flexible
housing structure and positioning the sensor at the lower inner portion of
thumb while leaving the tip uncovered and without fully encircling the
thumb, as claimed. See id. at. 11–12; Ans. 6. Thus, the Examiner relies on
the combination of Banet and Flessland for teaching the sensor configured to
position the light source and photodetector on the lower inner portion of the
thumb while leaving the tip uncovered and comprising a flexible housing
and flexible circuit board with the light source and photodetector embedded
within and configured to conform to the inner portion of the thumb without
encircling it, as recited in limitations (a3), (a4), and (a4i). The Appellant
does not provide argument against the proposed combination.
Second, the Appellant does not provide argument why the Examiner’s
provided “motivation,” i.e., reasoning (see Final Act. 11–12; Ans. 10), is in
error. Rather, the Appellant submits evidence to support the general use of
pulse oximeters at locations rich in capillaries. Appeal Br. 16. However, the
Appellant’s provided evidence of Booker4 is not considered as it has not
been timely submitted. Booker was not provided prior to the filing of the

4 Booker R., “Pulse Oximetry,” Nursing Standard vol. 22, no. 30, pp. 39–41
(Apr. 2, 2008) (“Booker”).
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appeal but as part of “Appendix 2: Evidence Appendix” with the Appeal
Brief. 37 C.F.R. § 41.33(d) provides:
(1) An affidavit or other Evidence filed after the date of
filing an appeal pursuant to § 41.31(a)(1) through (a)(3) and
prior to the date of filing a brief pursuant to § 41.37 may be
admitted if the examiner determines that the affidavit or other
Evidence overcomes all rejections under appeal and that a
showing of good and sufficient reasons why the affidavit or other
Evidence is necessary and was not earlier presented has been
made.
(2) All other affidavits or other Evidence filed after the
date of filing an appeal pursuant to § 41.31(a)(1) through (a)(3)
will not be admitted except as permitted by §§ 41.39(b)(1),
41.50(a)(2)(i), and 41.50(b)(1).
Here, not only was the Booker evidence not filed prior to the Appeal
Brief, the Appellant does not provide a showing of good and sufficient
reasons why it is necessary and was not presented earlier. Thus, it is
untimely and not considered.5
Third, as discussed above, Banet teaches using a sensor with LEDs
emitting radiation through the finger and its underlying arteries, exposing the

5 We note that Booker merely provides for a general description of how
pulse oximeters work, that “[t]he sensor, positioned opposite the probe,
detects the amount of red and infrared light that has passed through the
capillary bed,” and factors that affect the accuracy of pulse oximetry (as of
1999) include nail varnish, dark skin, high bilirubin, poor positioning of the
probe, cardiac arrhythmias, lighting, shivering, and calibration. Booker
39–40. It further discusses instructions on using a pulse oximeter and
interpreting its readings. Id. at 40–41. We see nothing in Booker that would
lead one of ordinary skill in the art away from modifying Ono’s finger
sensor with Banet’s sensor patch that emits radiation through a finger’s
arteries and modifying the Ono/Banet sensor with Flessland’s sensor that is
configured to be placed at the base of the thumb, leaving the tip exposed and
not encircling the thumb.
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photodetector that in response, generates a pair of time-dependent optical
waveforms. Banet ¶ 52; see also Ans. 9–10. The Appellant does not
explain why an artery of a finger as opposed to the princeps pollicis artery of
the thumb would lead to a structural difference between Banet and Ono. In
fact, as discussed above, the Specification provides that a capillary or an
artery can be used. Spec. ¶ 7. Although the Specification discusses benefits
with placing the sensor on the thumb and using the princeps pollicis artery
(see id. ¶ 35), there is no discussion of how the structure of the claimed
invention would change based on that particular artery. In other words, even
assuming arguendo that Banet’s sensor is designed for the arteries on a
finger, there is no reason to believe from the record before us that Banet’s
sensor is not also designed for the thumb. See Ans. 5–6, 10.
The Appellant also argues that “[n]othing of record indicates that one
interested in measuring pulse oximetry (Ono et al. or Banet et al.) would
consider the spectrometry devices described in Flessland et al. to be
relevant.” Appeal Br. 17. Specifically, the Appellant argues
nothing in Flessland et al. even indicates that the described
device measures pulsatile blood flow at all. Given this, it is
unclear why one of skill in the art would apply the teachings of
Flessland et al. to a pulse oximeter as described in Ono et al. or
Banet et al., as the requirements are completely different.
Id. (emphasis omitted). We are unpersuaded of error by this argument for
the reasons discussed by the Examiner in the Answer at pages 11–13.
The Appellant’s argument that “at no point does Flessland et al. depict
or suggest placing a light source and detector on the inner aspect of the
thumb such that optical radiation emitted by the light source is directed
towards, and is reflected by, the patient’s princeps pollicis artery before
reaching the photodetector” (Appeal Br. 17; see also id. at 18) is
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unpersuasive as it is an argument against Flessland individually when the
Examiner relies on the combination of Banet and Flessland for teaching the
limitation. The Examiner is clear “Flessland was relied upon for teaching
optical components (such teaching of embedding optical components in a
housing would suggest to one of ordinary skill that the chip and optical
components of Banet be embedded) be embedded within the flexible
housing (see For example Figure IA, IF, Figure 3A-C),” that Flessland’s
structure
teaches a housing that does not encircle the thumb which these
identified features as presented in the rejection include teaching
the required structures and the intended use features as the
structures includes tabs which do not fully encircle the thumb
when in use, and as discussed prior includes teaching of
embedding optical components within a flexible housing,
and that Flessland “is not relied upon for teaching anything related to the
processing of light as argued by Appellant or that the light sensors of Banet
are being replaced by those of Flessland.” Ans. 11; see also id. at 13–14;
Final Act. 12. The Appellant does not provide argument why the
Examiner’s findings that Flessland teaches embedding optical components
in a flexible housing configured to conform to the shape of the lower inner
portion of the thumb without fully encircling the thumb are in error.
Finally, we are not persuaded of Examiner error by the Appellant’s
argument that “[t]he Examiner’s obviousness analysis, which is not
grounded in what a skilled artisan would glean from the prior art, is
indicative of an impermissible exercise of hindsight using the present claims
as a guide.” Appeal Br. 19. Here, the Examiner articulates reasons why it
would have been obvious to one of ordinary skill in the art to incorporate the
teachings of Banet and Flessland into Ono’s system. As also discussed
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above, the Appellant’s arguments regarding “a motivation to modify” the
sensor (Appeal Br. 16) is not persuasive. The Appellant’s argument that
“the Examiner has provided no ‘articulated reasoning with some rational
underpinning’ to support the assertion that the design of Banet et al. meets
the limitations of the present claims, or that one would be motivated to
modify the teachings of Banet et al. in order to do so” (Appeal Br. 17
(citation omitted)) is unpersuasive of error because the Appellant does not
provide argument or reasoning why the Examiner’s articulated reasoning as
provided (see Final Action 11; Ans. 10) is in error. And, the Appellant does
not provide argument or reasoning to show that the Examiner’s articulated
reasoning is gleaned only from the Appellant’s Specification. See In re
McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
Thus, we sustain the Examiner’s rejection under 35 U.S.C. § 103 of
independent claim 1 and dependent claims 2–10, 13–15, 20, and 21, for
which the Appellant does not provide separate argument. See Appeal Br. 19.
The Appellant argues that the Examiner’s rejections under 35 U.S.C.
§ 103 of dependent claims 11, 12, and 16 are in error because the cited art
Teller and Ukawa do “not cure the deficiencies in the underlying prima facie
case, nor is it suggested that [they] do[] so.” Appeal Br. 19–20. The
Appellant also argues the rejections are in error because
For the reasons discussed above, there is no teaching or
suggestion in the cited art to arrive at the invention as claimed.
Moreover, even if combined as suggested, the combination of
references fails to teach the invention as presently claimed.
Appellants respectfully submit that there is no articulated
reasoning, either in the cited art or in the general knowledge of
the artisan, to arrive at the invention as claimed.
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Id. Having found no deficiencies in the “underlying prima facie case” of
independent claim 1, and because the Appellant does not present further
argument why the references, alone or in combination, do not teach the
limitations of claims 11, 12, and 16 or why the Examiner’s findings or
articulated reasoning (see Final Act. 16–18) are in error, we also sustain the
Examiner’s rejections of claims 11, 12, and 16.
CONCLUSION
The Examiner’s decision to reject claims 1–16, 20, and 21 under
35 U.S.C. § 103 is affirmed.
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–10, 13–15,
20, 21
103(a) Ono, Zhang, Banet,
Flessland
1–10, 13–15,
20, 21

11, 12 103(a) Ono, Zhang, Banet,
Flessland, Teller
11, 12
16 103(a) Ono, Zhang, Banet,
Flessland, Ukawa
16
Overall
Outcome
1–16, 20, 21
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) (2019).
AFFIRMED