NIHON KOHDEN CORPORATION

Patent Trials and Appeals Board

Mar 7, 2022

2020006305 (P.T.A.B. Mar. 7, 2022)

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. 14/624,166 02/17/2015 Yoshinobu ONO 55611 4066 116 7590 03/07/2022 PEARNE & GORDON LLP 1801 EAST 9TH STREET SUITE 1200 CLEVELAND, OH 44114-3108 EXAMINER ALTER, MITCHELL E ART UNIT PAPER NUMBER 3791 NOTIFICATION DATE DELIVERY MODE 03/07/2022 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): patdocket@pearne.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte YOSHINOBU ONO, JUN MOTOGI, and IZUMI NAKAGIRI ____________ Appeal 2020-006305 Application 14/624,166 Technology Center 3700 ____________ Before JEREMEY M. PLENZLER, GEORGE R. HOSKINS, and MICHAEL L. WOODS, Administrative Patent Judges. HOSKINS, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant has timely filed a Request for Rehearing (“Request” or “Req.”) of the Decision on Appeal entered December 16, 2021 (“Decision” or “Dec.”) in this application. This decision on rehearing assumes the reader is familiar with the Decision being reheard. Appellant’s Request seeks reconsideration of our affirmance of the rejection of claims 1 and 8 under 35 U.S.C. § 103 as unpatentable over Banet, Nihon Kohden, McCombie, Stergiou, and Foo, with potential carry-through effects to the other claims and rejections of record. See Req. 2-4; Dec. 3-4. For the following reasons, we deny the Request. Appeal 2020-006305 Application 14/624,166 2 OPINION The Request maintains that “the prior art references do not teach or render obvious ‘display[ing] the moving average of the measured pulse wave transit time [PWTT] in a given time period of a time axis’ as recited by” the two independent claims 1 and 8 on appeal. Req. 2 (emphasis added). The Request focuses on Foo, which according to the Request does not “relate to any moving average” and would not have motivated a person of ordinary skill in the art “to use a moving average.” Id. The Request initially asserts “Foo only ever describes the calculation of PWTT itself, not a moving average” of PWTT. Id. at 2-3. We agree. Indeed, the Decision correspondingly finds that Figure 6 of Foo displays PWTT, including “fluctuations observed from the [PWTT] baseline,” but not the moving average of PWTT. Dec. 8-9, 11 (citing Foo, pgs. 510-511). The Request next objects to the Decision’s finding that: “A person of ordinary skill in the art would understand that Foo’s PWTT baseline is directly analogous to, if not identical to, a moving average of PWTT.” Dec. 11 (emphasis added); Req. 3. Appellant argues “Foo never describes the meaning of the referenced PWTT baseline,” and contends it is therefore “impossible to know whether it is analogous, let alone identical to, the claimed moving average.” Req. 3. Appellant speculates that Foo’s PWTT baseline could be an unspecified “resting value of PWTT” or “[a] static average” of PWTT. Id. Appellant additionally contends that, when one reads Foo as a whole, “Foo suggests the referenced baseline is not a moving average” because Foo expressly refers to calculating a “moving average” (not a baseline) during analysis of photoplethysmography (PPG) and electrocardiogram (ECG) signals. Id. Appeal 2020-006305 Application 14/624,166 3 We maintain the Decision’s finding that Foo’s PWTT baseline is directly analogous to, but not identical to, a moving average of PWTT as recited in claims 1 and 8. The Request acknowledges that “a moving average is understood to be a series of averages of different subsets of a full data set that produces, in effect, a ‘smoothed’ data set.” Req. 3 (emphases added). Foo describes how its Figure 6 illustrates “that [PWTT] measurement can fluctuate from its baseline values” (Foo, pg. 511, col. 1 (emphasis added)), indicating that the baseline is analogous to a moving average because both represent a smoothed data set. This is true regardless of the precise mathematics used to generate the smoothed data set-whether it is a moving average calculation, or some other smoothing calculation. The Request moreover argues “Foo identifies a desire to display the fluctuations [in PWTT] so that respiratory effort can be monitored.” Req. 3 (citing Foo, pg. 511 col. 1 (“From the results obtained, the marginal [PWTT] fluctuations observed during tidal breathing signified the capability of the designed [PWTT] device to monitor changes in respiratory efforts.”)). Based on this disclosure in Foo, Appellant asserts that “if one of were to determine and display the moving average of PWTT as the Board alleges, the ‘observed fluctuations’ [of Foo] would be lost to smoothing and it would no longer be possible to monitor respiratory effort,” so displaying the moving average of PWTT “would not have any recognized benefit to Foo.” Id. at 3-4. Therefore, Appellant concludes “Foo does not support a finding that it would have been obvious to include a display of the moving average, as claimed.” Id. We are not persuaded. Obviousness here is premised on modifying Banet to display the moving average of PWTT, not on modifying Foo to Appeal 2020-006305 Application 14/624,166 4 display the moving average of PWTT. Foo’s disclosure of the utility of displaying fluctuations from a baseline of PWTT supports our determination of obviousness in this regard, as discussed in the Decision at pages 8-11. Further, adding the display of a smoothed PWTT data set such as a moving average to Banet’s display does not preclude additionally displaying the individual PWTT fluctuations that are being smoothed, if that is desired, as Foo itself establishes. See Foo, 511, col. 1 (describing how “[i]t can be seen [from Figure 6] that [PWTT] measurement can fluctuate from its baseline values”). Appellant finally and more broadly contends that “none of the [Examiner’s cited prior art] references recognize the independent utility/medical significance of [a] moving average of PWTT and thus do not teach or render obvious the determination and display of the moving average.” Req. 4. According to Appellant: “Banet only utilizes the moving average as an intermediate calculation for determining cNIBP”; “Nihon Kohden recognizes that ‘change in PWTT correlates with change in blood pressure’” and “describes that those changes can be monitored by PWTT itself”; and Foo’s disclosure is limited as already discussed above. Id. We are not persuaded of error in the Decision’s conclusion that claims 1 and 8 would have been obvious over the combination of Banet, Nihon Kohden, McCombie, Stergiou, and Foo. In particular, the Decision was based on the combination of these disclosures as obviously leading to Appellant’s claimed invention. See, e.g., Dec. 11 (“[T]he combination of Nihon Kohden, Stergiou, and Foo would have led a person of ordinary skill in the art to modify Banet’s apparatus to display the moving average of Appeal 2020-006305 Application 14/624,166 5 PWTT[.]”), 12 (“The combination of prior art references thus leads to the invention of claim 1.”). In the Decision, we summarized the combination of these disclosures as reflecting “the utility of displaying a subject’s PWTT over time (Nihon Kohden, McCombie, Stergiou, and Foo),” and “the utility of calculating a moving average of the subject’s PWTT over time (Banet to calculate and display the subject’s cNIBP, and Foo to eliminate aberrations and reveal the real trend in the PWTT measurements themselves).” Id. at 9 (emphases added); id. at 4-10 (discussing the evidence leading to the indicated findings). The conclusory nature of the Request’s assertion that the prior art does not “recognize the independent utility/medical significance of moving average of PWTT” (Req. 4) does not persuade us of error in the Decision’s findings. Based on those findings, we concluded in the Decision that “it would have been obvious to modify Banet’s apparatus to display the subject’s PWTT, in addition to the subject’s cNIBP, because the prior art recognizes that PWTT is a useful vital sign to be tracked by medical professionals monitoring a patient’s blood pressure as part of providing medical care.” Dec. 10 (emphases added). The Request does not cite to any evidence of record that would suggest error in this conclusion. We finally concluded in the Decision that: “It would, additionally, have been obvious to modify Banet’s apparatus to display the moving average of PWTT, either rather than or in addition to the individual PWTT data points.” Id. at 11 (emphasis added). This determination relied on Foo’s Figure 6, which “illustrates the utility of monitoring a subject’s vital signs by displaying PWTT ‘in adjunct with other physiological parameters’ such as Appeal 2020-006305 Application 14/624,166 6 various respiratory parameters, arterial blood oxygen saturation, and heart rate.” Id. (citations omitted). The Request does not challenge that particular finding. Obviousness does not require “‘some motivation or suggestion to combine the prior art teachings’ [to] be found in the prior art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 415-418 (2007). Moreover, the test for obviousness is not whether the features of one reference (such as Foo) may be bodily incorporated into the structure of the other reference (such as Banet), but rather is “what the combined teachings of the references would have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981); see also In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (nonobviousness is not established by attacking references individually when unpatentability is predicated upon a combination of prior art disclosures). Instead, “[a] person of ordinary skill is also a person of ordinary creativity, not an automaton,” and “in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” KSR, 550 U.S. at 420-421. Thus, we continue to maintain that “the combination of Nihon Kohden, Stergiou, and Foo would have led a person of ordinary skill in the art to modify Banet’s apparatus to display the moving average of PWTT, because a moving average of PWTT is a useful vital sign to be tracked by medical professionals monitoring a patient’s subject’s [sic] blood pressure as part of providing medical care.” Dec. 11 (emphasis added). Appeal 2020-006305 Application 14/624,166 7 CONCLUSION In summary, we deny Appellant’s Request for rehearing, as set forth in the following two tables. The first table reflects the outcome of this decision on rehearing: Claims 35 U.S.C. § References Denied Granted 1, 8 103 Banet, Nihon Kohden, McCombie, Stergiou, Foo 1, 8 The second table reflects the final outcome of the appeal after rehearing: Claims 35 U.S.C. § References Affirmed Reversed 1-3, 5, 7, 8, 10, 12, 15, 16 103 Banet, Nihon Kohden, McCombie, Stergiou, Foo 1-3, 5, 7, 8, 10, 12, 15, 16 4, 9 103 Banet, Nihon Kohden, McCombie, Stergiou, Foo, Eide 4, 9 13, 14 103 Banet, Nihon Kohden, McCombie, Stergiou, Foo, Batkin 13, 14 19, 20 103 Banet, Nihon Kohden, McCombie, Stergiou, Foo, Greenwald 19, 20 Overall Outcome 1-5, 7-10, 12-16, 19, 20 Appeal 2020-006305 Application 14/624,166 8 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). DENIED