SAMSUNG ELECTRONICS CO., LTD.

Patent Trials and Appeals Board

Feb 1, 2022

2021004608 (P.T.A.B. Feb. 1, 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. 14/966,053 12/11/2015 Myounghoon JUNG Q221008 5969 23373 7590 02/01/2022 SUGHRUE MION, PLLC 2000 PENNSYLVANIA AVENUE, N.W. SUITE 9000 WASHINGTON, DC 20006 EXAMINER TOWA, RENE T ART UNIT PAPER NUMBER 3791 NOTIFICATION DATE DELIVERY MODE 02/01/2022 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): PPROCESSING@SUGHRUE.COM USPTO@sughrue.com sughrue@sughrue.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MYOUNGHOON JUNG, EUNSUNG PARK, KAK NAMKOONG, KUNSUN EOM, YEOLHO LEE, and SEONGHO CHO Appeal 2021-004608 Application 14/966,053 Technology Center 3700 Before BENJAMIN D. M. WOOD, BRETT C. MARTIN, and LISA M. GUIJT, Administrative Patent Judges. MARTIN, 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, 8, 12-14, and 16, which are the only claims currently pending. Final Act. 2. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 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 Samsung Electronics Co., Ltd. Appeal Br. 3. Appeal 2021-004608 Application 14/966,053 2 CLAIMED SUBJECT MATTER The claims are directed to an apparatus for obtaining biological information. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An apparatus for obtaining bio information, the apparatus comprising: a first electrode portion comprising a first current electrode and a first voltage electrode, the first current electrode and the first voltage electrode being disposed on a front surface of the apparatus, and arranged to be simultaneously touchable by a single finger of a subject; a second electrode portion comprising a second current electrode and a second voltage electrode, the second current electrode and the second voltage being disposed on a rear surface of the apparatus, and arranged to contact a wrist of the subject; and a measuring circuit configured to measure a body fat of the subject by applying a current to the first and the second current electrodes and detecting a voltage at the first and the second voltage electrodes while the first current electrode and the first voltage electrode are in contact with the single finger and the second current electrode and the second voltage electrode are in contact with the wrist, wherein the first current electrode on the front surface and the second current electrode on the rear surface have a circular shape, wherein the first voltage electrode on the front surface and the second voltage electrode on the rear surface have a circular ring shape, and are disposed to surround a perimeter of the first current electrode and a perimeter of the second current electrode, respectively, and wherein the first voltage electrode on the front surface directly opposes the second voltage electrode on the rear surface and is electrically connected, through a body of the subject, to the second voltage electrode having the same circular ring shape as the first voltage electrode when a voltage measurement loop circuit is formed through the body of the subject, and the first Appeal 2021-004608 Application 14/966,053 3 current electrode on the front surface directly opposes the second current electrode on the rear surface and is electrically connected, through the body of the subject, to the second current electrode having the same circular shape as the first current electrode when a current measurement loop circuit is formed through the body of the subject, and wherein the first current electrode has an area greater than an area of the first voltage electrode, and the second current electrode has an area greater than an area of the second voltage electrode. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Sullivan US 2004/0215271 A1 Oct. 28, 2004 Chan US 2010/0076331 A1 Mar. 25, 2010 Caytak US 2015/0025352 A1 Jan. 22, 2015 MacGregor GB 2 390 429 A Jan. 7, 2004 REJECTION Claims 1, 8, 12-14, and 16 stand rejected under 35 U.S.C. § 103 as being unpatentable over MacGregor, Caytak, Chan, and Sullivan. Final Act. 2. OPINION Obviousness In general, the Examiner’s rejection treats electrodes as essentially universally interchangeable regardless of application or specific type of electrode (i.e., voltage or current). We agree generally with Appellant that the Examiner “applied inappropriate hindsight reasoning in [the] application of the four cited references” and that “the only motivation to combine the teachings of all four of the above references is the recreation of Appellant’s invention, and not from the references themselves.” Appeal Br. 22. The Appeal 2021-004608 Application 14/966,053 4 Examiner has found a device, in MacGregor, that is similar to Appellant’s claimed invention in that it measures body fat and has the correct number and type of electrode. See, e.g., Final Act. 2-3. The Examiner then admits to various deficiencies in MacGregor relating to size, shape/configuration, and placement of the electrodes in MacGregor and looks to each of Caytak, Chan, and Sullivan to remedy those deficiencies. Caytak The Examiner utilizes Caytak for teaching the claimed shape/configuration of the electrodes that is lacking in MacGregor. Final Act. 3. As Appellant points out, however, “Caytak’s electrodes 400 and 420 both are voltage electrodes (as opposed to a pair of a current electrode and a voltage electrode) that are used to measure a voltage drop between the ring- shaped electrode 400 and the circle-shaped electrode 420.” Appeal Br. 11 (citing Caytak ¶ 60). The Examiner takes issue with Appellant’s alleged bodily incorporation argument whereby Appellant points out the differences in type and function of Caytak’s electrodes and asserts that Appellant is improperly importing the “method of Caytak using the apparatus of MacGregor.” Ans. 8-9. The Examiner then points out that the rejection is “a mere substitution of one type of electrode (i.e. conductor) pairs for another type of electrode (i.e., conductor) pairs” and that the electrodes would “perform the same function as they did before, i.e., notably ‘to establish electrical contact with a non-metallic part of a circuit.” See Ans. 9, 8. This explanation of the “mere substitution” does not take into account how the electrodes in Caytak are being used. Appellant’s argument does not suggest an importation of Caytak’s method, but merely points out that the electrodes in Caytak are both voltage electrodes as opposed to pairs of Appeal 2021-004608 Application 14/966,053 5 current and voltage electrodes and that the use of the electrodes in Caytak is for a different purpose, namely measuring a brain state, rather than measuring body fat. Other than the fact that both Caytak and MacGregor disclose the general use of electrodes, the Examiner has not provided any reason as to why one of skill in the art would have looked to Caytak’s electrodes for modification of MacGregor. The Examiner cannot simply rely on the fact that the general purpose of an electrode is to establish electric contact with a non-metallic part of a circuit and then deem all electrodes interchangeable regardless of type or purpose. The Examiner has provided no explanation as to why one of skill in the art would have looked to the configuration of two voltage electrodes to modify pairs of current and voltage electrodes, nor why one of skill in the art would look to brain-state measuring electrodes to modify body fat measuring electrodes other than the fact that that is what the claims recite. Chan As to Chan, the Examiner characterizes the placement of the electrodes as being opposing as merely a design or aesthetic choice. Final Act. 5. As with Caytak, Appellant points out that Chan utilizes voltage electrodes rather than pairs of voltage and current electrodes and Chan is used to generate an ECG signal rather than measuring body fat. Appeal Br. 15-16. As Appellant correctly argues, “Chan does not teach or suggest how to rearrange MacGregor’s current electrodes 22 and 26.” Appeal Br. 16. Nor does the Examiner explain why one of skill in the art would have looked to ECG signal generating electrode placement to modify body fat measuring electrode placement. As with Caytak, the Examiner simply assumes universal interchangeability of all electrodes without thought to type or function. Additionally, Appellant has asserted that “the circuit structure for Appeal 2021-004608 Application 14/966,053 6 the body fat measurement is different from the circuit structures for the brain-state-measurement and the ECG measurement.” Appeal Br. 21 (emphasis removed). This alone is sufficient to overcome the Examiner’s design choice rationale because the configuration of electrodes for various purposes is not a mere design choice, but is directly related to the function being achieved. As such, one cannot simply find different electrode configurations for disparate functions and assert that the configuration is a mere design choice. Sullivan As with both Caytak and Chan, Appellant points out that Sullivan does not disclose a voltage and current electrode pair, but actually teaches a pulse input part and a pulse detecting part of the same electrode. Appeal Br. 17 (citing Sullivan ¶ 29). Appellant also notes that Sullivan is for detecting an ECG signal rather than for measuring body fat. Appeal Br. 18. The Examiner asserts that Appellant’s characterization of Sullivan as disclosing a single electrode with two separate conductors is inappropriate because Sullivan’s conductors are electrically insulated and could function as two separate electrodes. Ans. 13. Although this may be true, the Examiner has provided no explanation as to why one of skill in the art would look to the shape of two conductors of a single electrode for use in monitoring ECG signals for use in body fat measurement whereby the conductors are acting as separate electrodes. The Examiner calls this a simple substitution, but converting a single electrode with two conductors for use in monitoring ECG signals is not a simple substitution for voltage/current conducting pairs for use in body fat measurement. The Examiner has provided no reasoning other than that is what the claims require. This is classic hindsight reasoning. Appeal 2021-004608 Application 14/966,053 7 Furthermore, Appellant has submitted a Declaration and argued the criticality of the size of the claimed electrodes. See Appeal Br. 18. The Examiner does not mention the Declaration in the Answer and provides no response to the criticality argument. The Examiner asserts that the claim language does not “require smaller than conventional-body-fat-sized electrodes,” but this response is inapt to Appellant’s argument. Ans. 15. It does not necessarily matter what the claims require in that the argument is that the size claimed was specifically chosen based on experimentation performed by Appellant in relation to the desired function. Thus, the size is not merely a design choice or a matter of simple substitution, but was a carefully considered aspect of the design, which the Examiner has not addressed. As noted above, we generally agree with Appellant that the Examiner’s rejection is replete with prohibited hindsight reasoning only motivated by the content of the claims rather than motivated by the teachings found in the prior art. Accordingly, we do not sustain the Examiner’s rejection. CONCLUSION The Examiner’s rejection is reversed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 8, 12-14, 16 103 MacGregor, Caytak, Chan, Sullivan 1, 8, 12-14, 16 Appeal 2021-004608 Application 14/966,053 8 REVERSED