Walter Nistico et al.

Patent Trials and Appeals Board

Jul 8, 2021

2020001527 (P.T.A.B. Jul. 8, 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.
14/005,286 11/14/2013 Walter Nistico 27753-50139US 2186
132324 7590 07/08/2021
Fernando & Partners, LLP
2712 Augustine Drive
Suite 240
Santa Clara, CA 95054
EXAMINER
NASRI, MARYAM A
ART UNIT PAPER NUMBER
2483
NOTIFICATION DATE DELIVERY MODE
07/08/2021 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):
mail@fernando-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WALTER NISTICO, JAN HOFFMANN, and
EBERHARD SCHMIDT
Appeal 2020-001527
Application 14/005,286
Technology Center 2400

Before CAROLYN D. THOMAS, NABEEL U. KHAN, and
DAVID J. CUTITTA II, Administrative Patent Judges.

KHAN, 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 1–15. 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 Apple,
Inc. Appeal Br. 1.

Appeal 2020-001527
Application 14/005,286
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CLAIMED SUBJECT MATTER
Appellant describes the claimed invention as follows:
The invention relates to a method for determining at least one
parameter of two eyes of a test person, the method comprising
the steps of optically capturing of a first eye of the two eyes by
means of a first capturing unit, of optically capturing the second
eye of the two eyes by means of a second capturing unit, of
transmitting first signals concerning the captured first eye from
the first capturing unit to an analysis unit and transmitting second
signals concerning the captured second eye from the second
capturing unit to the analysis unit, and of determining the at least
one parameter of the two eyes on the basis of the transmitted first
and second signals in the analysis unit. The invention also relates
to an optical measuring device for determining at least one
parameter of two eyes of a test person.
Spec. 1:14–23.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method for determining at least one parameter of
two eyes of a test person, the method comprising:
[a] optically capturing of a first eye of the two eyes by a
first capturing unit of an optical device;
[b] optically capturing the second eye of the two eyes by a
second capturing unit of the optical device;
[c] transmitting first signals concerning the captured first
eye from the first capturing unit to a computing processor of the
optical device and transmitting second signals concerning the
captured second eye from the second capturing unit to the
computing processor;
[d] determining the at least one parameter of each eye on
the basis of the respective transmitted first and second signals by
the computing processor; and
[e] setting a first data rate for the first signals concerning
the captured first eye and a second data rate for the second signals
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concerning the captured second eye based on an available
amount of bandwidth, wherein the first and the second data rate
differ from each other, and wherein transmitting of the first
signals is effected at the first data rate and transmitting of the
second signals is effected at the second data rate.

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Chen US 2002/0151290 A1 Oct. 17, 2002
Torch US RE39,539 E Apr. 3, 2007
Tsukada US 2007/0222945 A1 Sept. 27, 2007
Sugio US 2012/0044347 A1 Feb. 23, 2012
Ota US 2012/0069162 A1 Mar. 22, 2012
REJECTIONS
1. Claims 1, 2, 5–7, and 9–15 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Torch, Tsukada, and Chen. Final Act. 5–14.
2. Claims 3 and 8 rejected under 35 U.S.C. § 103 as unpatentable
over Torch, Tsukada, Chen, and Ota. Final Act. 15–16.
3. Claim 4 stands rejected under 35 U.S.C. § 103 as unpatentable
over Torch, Tsukada, Chen, and Sugio. Final Act. 16–17.
OPINION
The Examiner relies on Torch as teaching all the limitations of claim 1
except limitation [e] requiring that the first and second data rates differ from
each other and be set based on an available amount of bandwidth. Final
Act. 6. For this limitation, the Examiner relies on Tsukada and Chen. Final
Act. 7–8. The Examiner finds Tsukada teaches first and second data rates
that differ from each other. Final Act. 7 (citing Tsukada ¶¶ 143, 145). The
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Examiner further finds Chen teaches setting the first and second data rates
based on an available amount of bandwidth. Final Act. 7–8 (citing Chen
¶¶ 14, 27).
The Examiner finds one of ordinary skill in the art would have been
motivated to combine Tsukada with Torch “to perform an effective and
efficient correction process by synchronizing the two imaging devices.”
Final Act. 7 (citing Tsukada ¶ 257). The Examiner finds that a person of
ordinary skill in the art would have been motivated to combine Chen with
Torch and Tsukada “to provide an efficiency enhanced rate determination
system for a high data rate variable rate communications environment . . .
and to eliminating unnecessary transmissions when there is no useful data to
be transmitted.” Final Act. 8 (citing Chen ¶¶ 5, 10).
Appellant does not dispute that the combination of references teaches
the limitations of claim 1.2 See Appeal Br. 3–6. Instead, Appellant argues
that one of ordinary skill would not have been motivated to combine the
references. Appeal Br. 4–5. Specifically, with respect to combining Torch
with Tsukada, Appellant argues “[t]he final Office action does not describe
what information of Torch is in need of correction or how having different
data rates would allow for such correction.” Appeal Br. 4–5. Appellant
further argues “[t]he final Office action fails to explain how modifying
Torch such that the ‘output signals from each biosensor device 132’ have
different data rates would synchronize the biosensor devices.” Appeal
Br. 4–5.

2 Appellant argues that the references individually do not teach the
limitations of claim 1, but addresses the combination only as to the
Examiner’s motivation to combine. See Appeal Br. 3–6.
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We are unpersuaded by Appellant’s argument. To support a finding
of obviousness the Examiner must provide “articulated reasoning with some
rational underpinning” for combining known elements in the manner
required by the claim. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007) (citing In re Kahn, 441 F.3d 977, 977 (Fed. Cir. 2006)). We
determine that the Examiner has articulated a reason with rational
underpinning for combining Torch and Tsukada and that is supported by
evidence drawn from the record. For example, the Examiner finds “both
Torch and Tsukada references are directed toward imaging systems that use
multiple cameras for capturing images of an eye . . . perform image
processing techniques on captured images to obtain information related to
the eye . . . and transmit the image data and/or image information.” Ans. 20
(citing Torch Fig. 8, 2:7–9, 3:44–58; Tsukada Fig. 1, ¶¶ 131, 151). The
Examiner further determines that it would have been obvious to combine
Tsukada and Torch “to perform an effective and efficient correction process
of the image positions by synchronizing the two imaging devices with each
other.” Ans. 20 (citing Tsukada ¶ 257). Appellant does not support its
argument that Torch does not need correction or synchronization with
sufficient evidence or reasoning. Appeal Br. 5. Similarly, Appellant
concludes that the Examiner’s stated motivation to combine “is not
‘articulated reasoning with some rational underpinning’ sufficient to
establish a prima facie case of obviousness” without sufficient evidence or
reasoning. Id. Attorney “argument. . . cannot take the place of evidence.” In
re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). See, e.g., In re Geisler, 116
F.3d 1465, 1470 (Fed. Cir. 1997) (attorney arguments or conclusory
statements are insufficient to rebut a prima facie case).
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With respect to combining Chen with Torch and Tsukada, Appellant
argues
Torch does not disclose a “high data rate variable rate
communications environment.” The final Office action fails to
explain why an “efficiency enhanced rate determination system”
would be desirable in the “detection device 30” of Torch. The
final Office action states that it would have been obvious to
modify Torch with the teachings of Chen “to eliminat[e]
unnecessary transmissions when there is no useful data to be
transmitted” quoting Chen at paragraph [0005]. Eliminating
transmissions would not read on the positively claimed feature
of transmitting at two different data rates. Rather, eliminating
transmissions is not transmitting at any data rate.
Appeal Br. 5.
We find this argument unpersuasive for similar reasons. Appellant
argues that Torch does not disclose a high data rate variable rate
communications environment but does not provide sufficient evidence or
reasoning to support the argument. Furthermore, we disagree with
Appellant’s argument that eliminating unnecessary transmissions would not
read on transmitting at two different data rates. Intermittently eliminating
unnecessary transmissions would reduce the data rate of one of the channels
because less information would be transmitted per time interval compared to
the scenario where both necessary and unnecessary data was transmitted.
This is consistent with Appellant’s Specification which explains that one
benefit of having different data rates, with one rate being smaller than the
other, is that “[c]apturing transmission of redundant and superfluous
information can be avoided” and that “data streams can be kept lean.” Spec.
4:20–22.
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Accordingly, we sustain the Examiner’s rejection of independent
claim 1 and of independent claim 11 which were argued together. Appeal
Br. 3–5. Appellant does not argue the dependent claims separately. Appeal
Br. 6. We therefore also sustain the Examiner’s rejection of dependent
claims 2–10 and 12–15.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 5–7, 9–
15
103(a) Torch, Tsukada,
Chen
1, 2, 5–7, 9–
15

3, 8 103(a) Torch, Tsukada,
Chen, Ota
3, 8
4 103(a) Torch, Tsukada,
Chen, Sugio
4
Overall
Outcome
1–15

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