Rolf Neumann et al.

Patent Trials and Appeals Board

Nov 24, 2020

2020001673 (P.T.A.B. Nov. 24, 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.
11/908,133 09/10/2007 Rolf Neumann 2005P00493WOUS 1067
24737 7590 11/24/2020
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
BLOCH, MICHAEL RYAN
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
11/24/2020 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):
katelyn.mulroy@philips.com
marianne.fox@philips.com
patti.demichele@Philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ROLF NEUMANN and FRIEDEMANN NOLLER
____________

Appeal 2020-001673
Application 11/908,133
Technology Center 3700
____________

Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
SEAN P. O’HANLON, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 3–10, and 12–20.2 We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Koninklijke Philips
N.V. Appeal Br. 2.
2 Claims 2, 11, and 21 are cancelled. Appeal Br. 15, 17, 20 (Claims App.).
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THE CLAIMED SUBJECT MATTER
Claims 1, 8, 10, and 17 are independent. Claim 8, reproduced below,
is illustrative of the subject matter on appeal.
8. A device for determining a perfusion index of blood in a body, the
device comprising:
a non-invasive photometric measuring device sensor having at
least two diodes, the noninvasive photometric measuring device
configured to produce a plurality of electrical measuring signals
corresponding to light pulses of different wavelengths emitted into the
body member, and
a computer processor configured to:
determine a perfusion index with an integral over a cardiac
pulse of absorption of light absorbed by hemoglobin and
oxygenated hemoglobin adjusted for variations in temporal
blood vessel thickness during the cardiac pulse and normalized
by a duration of the cardiac pulse.

EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Ogura US 5,752,920 May 19, 1998
Diab US 2003/0220576 A1 Nov. 27, 2003

THE REJECTIONS
I. Claims 1, 3–10, and 12–20 stand rejected under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter.
Final Act. 2–5.
II. Claims 8–10 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Ogura. Id. at 6–7.
III. Claim 17 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Ogura and Diab. Id. at 8–9.
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OPINION
Rejection I – Subject Matter Eligibility
Principles of Law
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with
that framework, we first determine what concept the claim is “directed to.”
See id. at 219 (“On their face, the claims before us are drawn to the concept
of intermediated settlement, i.e., the use of a third party to mitigate
settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010)
(“Claims 1 and 4 in petitioners’ application explain the basic concept of
hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
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(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77).
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“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The USPTO published revised guidance on the application of § 101.
See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
50 (Jan. 7, 2019) (the “2019 Eligibility Guidance” or “Guidance”). Under
the Guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See 2019 Eligibility Guidance.
Analysis
In contesting the 35 U.S.C. § 101 rejection, Appellant presents
arguments with respect to independent claim 8 (Appeal Br. 5–8), and relies
on the same arguments for independent claims 1, 10, and 17, and dependent
claims 3–7, 9, 12–16, and 18–20 (id. at 8). See also id. at 4 (explaining that
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independent “[c]laims 1, 8, 10 and 17 recite substantially similar
limitations”). We select claim 8 as representative to decide the appeal of
this rejection, and claims 1, 3–7, 9, 10, and 12–20 stand or fall with claim 8.
See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that the claims recite limitations that include
“calculating/producing/estimating a perfusion index and estimating an area
under a curve.” Final Act. 2. The Examiner determines that these
limitations fall within the mathematical concepts and mental processes
groupings of abstract ideas identified in the 2019 Eligibility Guidance. Id.
With respect to limitations recited in claim 8, specifically, the Examiner
explains that “the claimed function completing an integral is a mathematical
concept as claimed. Furthermore, the step of normalization is commonly
used in math, imaging, and signal processing fields and involves
mathematical concepts using particular variables to form a standard.”
Ans. 4.
The Examiner also finds that “the additional features beyond the
judicial exception are: [a] measuring device to gather data, and a processor
to process the data.” Final Act. 2. The Examiner determines that “[t]hese
features in the claim do not integrate the exception into a practical
application of the exception as the additional elements in the claim do not
apply, rely on, or use the judicial exception in a manner that imposes a
meaningful limit on the judicial exception.” Id. at 3. The Examiner explains
“[t]he claim amounts to acquiring data which is extra solution to the
exception, and processing the data on a generic computer (i.e. black box
where the computer is merely used as a tool).” Id.; see also Ans. 5–6
(explaining that “[t]he computer is merely used as a tool to implement the
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judicial exception. The sensor is merely used for extra-solution data
gathering.”).
The Examiner also determines that “[t]he claim(s) does/do not include
additional elements that are sufficient to amount to significantly more than
the judicial exception because, when considered separately and in
combination, they do not add significantly more to the exception.” Final
Act. 4. The Examiner explains that the measuring device emitter and
detector limitations “are conventional and routine in the art for generating
pulse oximetry/photoplethysmographic data, and thus do not add a
meaningful limitation to the method and system as it would be routinely
used by those of ordinary skill in the art in order to gather data for the
mathematical algorithm.” Id. at 5; see also Ans. 7 (explaining that the
sensor and processor elements in claim 8 “are claimed as well-known,
convention[al], and routine structures performing known, conventional, and
routine functions. For example, the computer completing mathematical
functions of integration and division are routinely completed by computers.
The sensors as claimed are merely conventional oximetry/
photoplethysmography light sensors acquiring routine data.”).
Step 1: Does Claim 8 Fall within a Statutory Category of § 101?
We examine whether claim 8 recites one of the enumerated statutory
classes of subject matter, i.e., process, machine, manufacture, or
composition of matter, eligible for patenting under 35 U.S.C. § 101.
Claim 8 refers to “[a] device for determining a perfusion index of blood in a
body,” which recites one of the statutory classes (i.e., a machine) under
35 U.S.C. § 101.
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Step 2A, Prong One: Does Claim 8 Recite a Judicial Exception?
Appellant argues that claim 8 does not recite an abstract idea that falls
within any of the groupings identified in the 2019 Eligibility Guidance.
Appeal Br. 5. Appellant asserts that “[t]he Examiner has not explained how
the non-invasive photometric measuring device recites either a Mathematical
Concept or a Mental Process.” Appeal Br. 5; see also id. (asserting that “the
non-invasive photometric measuring device is a structural component
performing an operation that is not abstract in any sense”). This argument is
unpersuasive.
Claim 8 recites a device that determines a perfusion index of blood in
a body. Appeal Br. 16 (Claims App.). The device comprises a processor
configured to “determine a perfusion index with an integral over a cardiac
pulse of absorption of light absorbed by hemoglobin and oxygenated
hemoglobin adjusted for variations in temporal blood vessel thickness during
the cardiac pulse and normalized by a duration of the cardiac pulse.” Id. In
other words, the computer processor of the claimed device mathematically
calculates a perfusion index of blood using an integral. This limitation
amounts to what the 2019 Eligibility Guidance calls “mathematical
calculations,” which is a type of judicially excepted abstract idea—
specifically, “[m]athematical concepts.” 2019 Eligibility Guidance, 84 Fed.
Reg. at 52. Thus, the Examiner correctly determines that claim 8 recites a
judicial exception, namely, an abstract idea. See Final Act. 2. We note that
“performance of a claim limitation using generic computer components does
not necessarily preclude the claim limitation from being in the mathematical
concepts grouping.” 2019 Eligibility Guidance, 84 Fed. Reg. at 52 n.14
(citing Benson, 409 U.S. at 67). In our view, the Examiner has properly
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identified the specific limitation that recites an abstract idea and properly
determined that the specific limitation falls within one of the subject matter
groupings in the Guidance.
Step 2A, Prong Two: Is There Integration into a Practical Application?
Having found that claim 8 recites a judicial exception, namely, an
abstract idea, we are instructed by the 2019 Eligibility Guidance to
determine whether each claim recites “additional elements that integrate the
exception into a practical application.” See 2019 Eligibility Guidance,
84 Fed. Reg. at 54; see also MPEP § 2106.05(a)–(c), (e)–(h). This
evaluation requires us to determine whether an additional element or a
combination of additional elements in a claim applies, relies on, or uses the
judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the exception. If the recited judicial exception is integrated
into a practical application, the claim is not “directed to” the judicial
exception.
Here, the additional elements recited in claim 8 beyond the judicial
exception are “a non-invasive photometric measuring device sensor having
at least two diodes . . . [and] configured to produce a plurality of electrical
measuring signals corresponding to light pulses of different wavelengths
emitted into the body member,” and “a computer processor” that determines
the perfusion index using the integral calculation. Appeal Br. 16 (Claims
App.). As to the sensor, the Examiner finds that such a recitation relates to
“producing, receiving, [and] generat[ing] signals” which constitutes “routine
data gathering in order to input data to the mathematical algorithm, and thus,
do not add a meaningful limitation to the . . . system as it would be routinely
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used by those of ordinary skill in the art in order to apply the mathematical
algorithm.” Final Act. 3. We agree with the Examiner that the recited non-
invasive photometric measuring device sensor that is configured to produce
a plurality of electrical measuring signals corresponding to light pulses of
different wavelengths merely adds insignificant extra-solution activity to the
judicial exception. That is, the sensors are merely used for gathering
electrical measuring signals to ultimately be used by the computer processor
to take an integral over a cardiac pulse. In other words, the production of
electrical measuring signals appears to represent simply a generic data
gathering step, which constitutes insignificant extra-solution activity. See,
e.g., CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed.
Cir. 2011) (“We have held that mere ‘[data-gathering] step[s] cannot make
an otherwise nonstatutory claim statutory.’” (alterations in original) (quoting
In re Grams, 888 F.2d 835, 840 (Fed. Cir. 1989))); see also 2019 Eligibility
Guidance, 84 Fed. Reg. at 55 (identifying “add[ing] insignificant extra-
solution activity to the” abstract idea as an example of when an abstract idea
has not been integrated into a practical application).
As to the computer processor, the Examiner finds that such a
recitation amounts to “processing the data on a generic computer (i.e. black
box where the computer is merely used as a tool).” Final Act. 3. We agree
that the computer processor element is merely a generically-recited
computer component that does “no more than generally link the use of a
judicial exception to a particular technological environment or field of use.”
2019 Eligibility Guidance, 84 Fed. Reg. at 55; see also Bilski, 561 U.S. at
610–11 (“[T]he prohibition against patenting abstract ideas ‘cannot be
circumvented by attempting to limit the use of the formula to a particular
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technological environment’ or adding ‘insignificant postsolution activity.”’)
(quoting Diehr, 450 U.S. at 191–92).
Moreover, the measuring device sensor and computer processor
elements are described only generically in the Specification. See, e.g., Spec.
1:18–20, 3:2–3, 5:18–20, 6:1–6, 13:10–13. We find no indication in the
Specification, nor does Appellant direct us to any evidence, that the sensor,
through its data gathering, contributes significantly to the device. See MPEP
§ 2106.05(b) (“Use of a machine that contributes only nominally or
insignificantly to the execution of the claimed method (e.g., in a data
gathering step . . .) would not integrate a judicial exception.”). Additionally,
we find no indication in the Specification, nor does Appellant direct us to
any evidence that the computer processor is anything other than generic
computer components performing generic computer functions. See DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir.
2014) (“[A]fter Alice, there can remain no doubt: recitation of generic
computer limitations does not make an otherwise ineligible claim patent-
eligible.”).
Appellant argues that “[t]he claimed subject matter focuses on the
treatment of disease which falls under the practical applications of the
second Prong of Step 2A.” Appeal Br. 6; see also id. at 7 (asserting that the
claim “recite[s] additional elements that integrate[] it into a practical
application beyond the judicial exception. A system that is able to assist in
the treatment of disease according to the second Prong of Step 2A is patent
eligible.”). Appellant asserts that
[t]his practical application is specifically written into claim 8 as
a “device for determining a perfusion index of blood in a body
... a computer processor configured to: determine a perfusion
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index with an integral over a cardiac pulse of absorption of light
absorbed by hemoglobin and oxygenated hemoglobin adjusted
for variations in temporal blood vessel thickness during the
cardiac pulse and normalized by a duration of the cardiac
pulse.”
Id. at 7 (second alteration in original). This argument is unpersuasive.
Here, the additional elements recited in claim 8 merely gather data
(i.e., measuring electrical signals) and perform a mathematical calculation
(i.e., determining a perfusion index with an integral), and the claim does not
recite a treatment method that practically applies natural relationships. See
October 2019 Update: Subject Matter Eligibility, (available at https://
www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.pdf),
13–14 (Oct. 17, 2019) (“The 2019 [Eligibility Guidance] includes a
‘treatment/prophylaxis’ consideration, under which a claim can integrate a
judicial exception into a practical application by applying or using the
judicial exception to effect a particular treatment or prophylaxis for a disease
or medical condition. . . . This consideration encompasses both treatment
and prophylaxis limitations, including, e.g., acupuncture, administration of
medication, dialysis, organ transplants, phototherapy, physiotherapy,
radiation therapy, surgery, and the like.”). Claim 8 stops at the
determination of a perfusion index and does not recite that the perfusion
index is actually used in a way that provides a treatment or prophylaxis for a
disease or medical condition. Consequently, claim 8 is not analogous to the
eligible claims in Vanda Pharms. Inc. v. West-Ward Pharms. Int’l Ltd., 887
F.3d 1117 (Fed. Cir. 2018). See Vanda, 887 F.3d at 1136 (“At bottom, the
claims here are directed to a specific method of treatment for specific
patients using a specific compound at specific doses to achieve a specific
outcome.”).
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In short, the claims do not recite any additional elements that
(1) improve the functioning of a computer or other technology, (2) are
applied with any particular machine, (3) effect a transformation of a
particular article to a different state, and (4) are applied in any meaningful
way beyond generally linking the use of the judicial exception to a particular
technological environment, such that the claim as a whole is more than a
drafting effort designed to monopolize the exception. See MPEP
§ 2106.05(a)–(c), (e)–(h).
For the above reasons, we determine that the additional elements
recited in independent claim 8 beyond the judicial exception, whether
considered alone or in combination, do not integrate the abstract idea into a
practical application.
Step 2B: Does Claim 8 Recite an Inventive Concept?
Because we determine that claim 8 fails to recite additional elements
that integrate the judicial exception into a practical application, in
accordance with the 2019 Eligibility Guidance, we next consider whether the
claim adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field or instead “simply
appends well-understood, routine, conventional activities previously known
to the industry, specified at a high level of generality, to the judicial
exception.” See 2019 Eligibility Guidance, 84 Fed. Reg. at 56.
Appellant argues that the claimed subject matter
is unconventional and is directed to significantly more than the
abstract idea. The claimed subject matter accounts for different
variations in the transparency of measurement sites for different
patients instead of using the same light intensity for different
patients. [Spec. 7:10–13.] The system accounts for the
different pulse shapes of the electrical measuring signals that
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depends on different patient conditions. Id. at [3:12–22]. For
example, sharp peaks or flat pulses is an indication of a patient's
disease. Id. Thus, the current system presents a technique that
provides perfusion index values that take into account the
energy content value of a signal pulse corresponding to an area
under the pulse curve leading to a perfusion index value that is
independent of the specific pulse shape. Id.
Appeal Br. 8; see also id. at 6 (Appellant pointing to the last limitation of
claim 8 and asserting that “[t]his system of determining the perfusion index
presents a technique that provides perfusion index values that take into
account an energy content value of the signal pulse that corresponds to an
area under the pulse curve, thus leading to a perfusion index value that is
independent of the specific pulse shape”). We are not persuaded by this
argument.
Appellant is relying upon a claim element that is part of the identified
abstract idea, as addressed above—i.e., claim 8’s limitation of
“determin[ing] a perfusion index with an integral over a cardiac pulse of
absorption of light absorbed by hemoglobin and oxygenated hemoglobin
which is adjusted for variations in temporal blood vessel thickness during
the cardiac pulse.” Accordingly, Appellant does not rely upon “additional
elements” in attempting to establish significantly more than the identified
abstract idea (i.e., a mathematical concept involving an integral calculation).
However, the inventive concept under step two of the Mayo/Alice test cannot
be the abstract idea itself. See Berkheimer, 890 F.3d at 1374 (Moore, J.,
concurring) (“It is clear from Mayo that the ‘inventive concept’ cannot be
the abstract idea itself, and Berkheimer . . . leave[s] untouched the numerous
cases from this court which have held claims ineligible because the only
alleged ‘inventive concept’ is the abstract idea.”); see also BSG Tech LLC v.
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BuySeasons, Inc., 899 F.3d 1281, 1290–91 (Fed. Cir. 2018) (“Our precedent
has consistently employed this same approach. If a claim’s only ‘inventive
concept’ is the application of an abstract idea using conventional and well-
understood techniques, the claim has not been transformed into a patent-
eligible application of an abstract idea.”).
Appellant argues that the claimed elements of a non-invasive
photometric measuring device sensor producing electrical measuring signals
and a processor determining the perfusion index are “novel” features.
Appeal Br. 8. This argument is unpersuasive because neither a finding of
novelty nor a non-obviousness determination automatically leads to the
conclusion that the claimed subject matter is patent-eligible. Although the
second step in the Mayo/Alice framework is termed a search for an
“inventive concept,” the analysis is not an evaluation of novelty or non-
obviousness, but rather, a search for “an element or combination of elements
that is ‘sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself.”’ Alice,
573 U.S. at 217–18 (citation omitted). “Groundbreaking, innovative, or
even brilliant discovery does not by itself satisfy the § 101 inquiry.” Ass’n
for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013).
A novel and non-obvious claim directed to a purely abstract idea is,
nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90; see Diehr, 450
U.S. at 188–89 (“The ‘novelty’ of any element or steps in a process, or even
of the process itself, is of no relevance in determining whether the subject
matter of a claim falls within the § 101 categories of possibly patentable
subject matter.”).
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For the reasons discussed above, we find no element or combination
of elements recited in claim 8 that contains any “inventive concept” or adds
anything “significantly more” to transform the abstract concept into a patent-
eligible application. Alice, 573 U.S. at 221. Accordingly, we sustain the
rejection of claim 8, and of claims 1, 3–7, 9, 10, and 12–20 falling therewith,
under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter.

Rejection II – Anticipation by Ogura
In contesting this rejection, Appellant presents arguments with respect
to independent claim 8 (Appeal Br. 9–11), and relies on the same arguments
for independent claim 10 and dependent claim 9 (id. at 11). We select claim
8 as representative to decide the appeal of this rejection, and claims 9 and 10
stand or fall with claim 8.
The Examiner finds that Ogura discloses a device for determining a
blood perfusion index having all of the limitations recited in claim 8,
including, in relevant part,
a computer processor configured to: determine a perfusion
index with an integral over a cardiac pulse of absorption of light
absorbed by hemoglobin and oxygenated hemoglobin adjusted
for variations in temporal blood vessel thickness during the
cardiac pulse and normalized by a duration of the cardiac pulse
(see entire document, especially Figures 1, 5, elements 28, 29,
31, 33 col. 7 lines 38–59, col. 9 lines 12–36: perfusion index
reasonably reads on VR, which is determined from integrated
area S and normalized with respect to both period and
amplitude, which anticipates the claim requiring duration of
pulse).
Final Act. 6.
Appellant argues that the “Ogura fails to disclose or suggest
‘determin[ing] a perfusion index with an integral over a cardiac pulse of
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absorption of light absorbed by hemoglobin and oxygenated hemoglobin
adjusted for variations in temporal blood vessel thickness during the cardiac
pulse and normalized by duration of the cardiac pulse.’” Appeal Br. 11. In
particular, Appellant asserts that the “system of Ogura does not disclose
anything related to blood vessel thickness let alone being used to determine
a perfusion index.” Id. We are not persuaded by this argument.
The Examiner responds that, in view of Appellant’s Specification, the
claimed feature of adjusting for variations in temporal blood vessel thickness
“appear[s] to be an inherent property . . . [of] the integral process.” Ans. 9;
see also id. (quoting Spec. 5:29–6:1, 8:26–9:2, 9:20–23). That is, “the
integral or area is what accounts for the variations in temporal blood vessel
thickness (as claimed).” Id. at 8. The Examiner takes the position that, “as
Ogura determines the integral of the light pulse signal and then normalizes
the integral of such signal with at least the pulse period, the claimed
determination of a perfusion index is reasonably taught th[r]ough such
mathematical processing in Ogura.” Id. at 10. In this regard, Appellant does
not persuasively refute the Examiner’s position. Appellant alleges “that the
Examiner has not met the burden for proving inherency” (Reply Br. 7), but
does not set forth any evidence or technical reasoning to apprise us of error
in the Examiner’s findings as to the disclosure of Ogura.
Appellant argues that the Examiner’s inherency position articulated in
the Answer constitutes a new ground of rejection. See Reply Br. 6 (“This is
the first mention of inherency with respect to Ogura. The Final Office
Action does not use the term inherency whatsoever. Thus, this is a new
grounds of rejection.”). However, we note that the issue of whether an
Examiner’s Answer includes a new ground of rejection is a petitionable
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matter that does not fall within the Board’s jurisdiction, and, therefore, we
do not address this matter. See 37 C.F.R. § 41.40(a) (“Any request to seek
review of the primary examiner’s failure to designate a rejection as
a new ground of rejection in an examiner’s answer must be by way of a
petition to the Director under §1.181.”); Ex Parte Frye, 94 USPQ2d 1072,
1077–78 (BPAI 2010) (precedential) (petitionable matters are not within the
jurisdiction of the Board). Moreover, because Appellant filed a Reply Brief
instead of a petition to the Director, Appellant’s argument regarding any
such alleged new ground of rejection in the Answer is, therefore, waived.
See 37 C.F.R. § 41.40(a) (“Failure of appellant to timely file such a petition
will constitute waiver of any arguments that a rejection must be designated
as a new ground of rejection.”).
For the above reasons, Appellant does not apprise us of error in the
Examiner’s determination that Ogura anticipates the subject matter of claim
8. Accordingly, we sustain the rejection of claim 8, and claims 9 and 10
falling therewith, under 35 U.S.C. § 102(b) as anticipated by Ogura.

Rejection III – Obviousness based on Ogura and Diab
In rejecting claim 17, the Examiner finds that Ogura discloses a
device for measuring a blood perfusion index including, in relevant part,
a computer processor programmed to measure a perfusion index
value: signals are capable of being pre-filtered and artifact-
reduced, integrating the normalized first and second signals
over at least a heart beat to obtain a value of at least one area
under a curve of the integration that represents an energy value
of a pulse, independent of specific shape of the pulse (see entire
document, especially Figures 1, 5, elements 28, 29, 31, 33, 52
col. 7 lines 10–59, col. 9 lines 12–36: perfusion index
reasonably reads on VR, which is determined from integrated
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area S and normalized with respect to both period and
amplitude, which anticipates the claim requiring duration of
pulse).
Final Act. 8–9. The Examiner finds that Ogura fails to disclose
“normalizing the first and second signals using light intensity attenuations of
the first and second signals.” Id. at 9. However, the Examiner finds that
Diab teaches a similar method, where oximeter signals are
normalized by DC component to create a normalized
[photoplethysmography] [(]PPG[)] and then the normalized
PPG is further processed by a processor (see Figure 4
normalized 470, such as by dividing the AC by the DC, as
described above, to generate a normalized
photoplethysmograph (NPP) 472), abstract a processor is
configured to calculate a ratio of fractional volumes of analytes
in the blood volume based upon the normalized
plethysmographs).
Id. The Examiner determines that it would have been obvious “to combine
prior art elements according to known methods to yield predictable results of
forming normalized PPG signal in order to monitor blood volume variations
of a patient.” Id.
Appellant argues that Diab fails to disclose “normalizing the first and
second signals using light intensity attenuations of the first and second
signals that are pre-filtered and artifact-reduced,” as recited in claim 17.
Appeal Br. 12–13. In particular, Appellant asserts that “[t]here is no
disclosure [in Diab] of the system measuring the perfusion index wherein the
signals that are normalized are pre[-]filtered and artifact-reduced.” Id. at 13.
This argument is unpersuasive because it attacks Diab individually, rather
than the combination of reference teachings relied on by the Examiner in the
rejection. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (one cannot
show nonobviousness by attacking references individually when the
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rejection is based on a combination of the references). As discussed above,
the Examiner relies on Ogura for disclosing “signals [that] are capable of
being pre-filtered and artifact-reduced.” Final Act. 8. The Examiner finds
that Ogura fails to disclose only “normalizing the first and second signals
using light intensity attenuations of the first and second signals,” and cites
Diab to cure this deficiency. Id. at 9. In other words, the rejection presented
does not appear to rely on Diab for teaching “signals that are pre-filtered and
artifact-reduced.” Thus, Appellant’s argument against Diab individually
does not identify us of error in the Examiner’s findings and reasoning in the
rejection as presented.
For the above reasons, Appellant does not apprise us of error in the
Examiner’s conclusion of obviousness with respect to claim 17.
Accordingly, we sustain the rejection of claim 17 under 35 U.S.C. § 103(a)
as unpatentable over Ogura and Diab.

CONCLUSION
In summary:
Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–10, 12–20 101 Eligibility 1, 3–10,
12–20

8–10 102(b) Ogura 8–10
17 103(a) Ogura, Diab 17
Overall
Outcome
1, 3–10,
12–20

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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