Bhangoo, Amrit Pal Singh.

Patent Trials and Appeals Board

May 28, 2020

2019005521 (P.T.A.B. May. 28, 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.
13/439,826 04/04/2012 Amrit Pal Singh Bhangoo ASGREWAL001BHANGOO 9861
7590 05/28/2020
Amardeep S. Grewal
1447 Rittenhouse St. NW
Washington, DC 20011
EXAMINER
FERNANDES, PATRICK M
ART UNIT PAPER NUMBER
3791
MAIL DATE DELIVERY MODE
05/28/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AMRIT PAL SINGH BHANGOO
Appeal 2019-005521
Application 13/439,826
Technology Center 3700
Before JENNIFER D. BAHR, JOHN C. KERINS, and
MICHAEL L. WOODS, Administrative Patent Judges.
BAHR, 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, set forth in the Non-Final Action dated August 8, 2017
(hereinafter “Non-Final Act.”), to reject claims 1–13, 23, and 24.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM and enter a NEW GROUND OF REJECTION.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Amrit Pal
Singh Bhangoo. Appeal Br. 1.
2 Claims 14–17 and 19, which are the only other pending claims, have been
withdrawn from consideration. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
Appellant’s invention is directed to “a measurement device used to
identify health risk factors in children and adults.” Spec. ¶ 2. Claim 1,
reproduced below, is illustrative of the claimed subject matter.
1. A measurement device incorporating health related markers,
comprising:
a plurality of health related markers disposed on the
measurement device, wherein each health related marker in the
plurality of health related markers indicates a numerical age and
corresponds to a gender, such that at least two different
numerical ages are represented on the measurement device;
wherein each health related marker in the plurality of
health related markers is disposed at a position on the
measurement device which corresponds to a health risk for a
person of the corresponding gender who is of the numerical age
indicated by that marker, and who possesses a body part
measurement which is equal to the length of the measurement
device at the location of the health related marker.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Lynberg US D444,082 S June 26, 2001
Chen US 2006/0025706 A1 Feb. 2, 2006
Claudio Maffeis et al., Waist Circumference and Cardiovascular Risk
Factors in Prepubertal Children, 9 Obesity Research 3, 179–187
(Mar. 2001) (hereinafter “Maffeis”)
DHHS, 2000 CDC Growth Charts for the United States: Methods and
Development, Vital & Health Statistics Series 11, No. 246, 1–190
(May 2002) (hereinafter “CDC Growth Charts”)
DHHS, Anthropometric Reference Data for Children and Adults: United
States 1988–1994, Vital & Health Statistics Series 11, No. 249, 1–68
(Apr. 2009) (hereinafter “Anthropometric”)
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BMI Calculator, Calculator.net webpage on wayback archive, available at
http://www.calculator.net/bmi-calculator.html (Wayback archive date,
Dec. 8, 2008) (hereinafter “BMI Calculator”)
Moumita Ghosh et al., Brief Report—Designing Color-Coded Measuring
Tapes Based on Mid-arm and Chest Circumference to Predict Low Birth
Weight in the Field, 57 J. Trop. Ped. 6, 464–467 (2011) (hereinafter
“Ghosh”)

REJECTIONS3
Claims 1 and 24 stand rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.
Claims 1, 23, and 24 stand rejected under 35 U.S.C. § 101 as directed
to non-statutory subject matter.
Claims 1, 23, and 24 stand rejected under 35 U.S.C. § 102(b) as
anticipated by CDC Growth Charts.
Claims 1, 23, and 24 stand rejected under 35 U.S.C. § 102(b) as
anticipated by BMI Calculator.
Claims 1–3, 9, 11–13, 23, and 24 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Lynberg, Ghosh, and Anthropometric.
Claims 4–6, 8, and 10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Lynberg, Ghosh, Anthropometric, and Chen.
Claim 7 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Lynberg, Ghosh, Anthropometric, Chen, and Maffeis.

3 The Examiner withdrew a rejection of claims 1, 4–13, 23, and 24 under
35 U.S.C. § 112, fourth paragraph, and both grounds of rejection of claims
2–13 under 35 U.S.C. § 101. Ans. 17; see Non-Final Act. 3, 4.
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OPINION
Indefiniteness
According to the Examiner, it is unclear if the “health related
markers” in the preambles of claims 1 and 24 and the “plurality of health
related markers” recited in the body of claims 1 and 24 “are meant to be the
same term/element or not.” Non-Final Act. 3.
Appellant contends that “[t]he term ‘health related markers’ in this
case is an attribute of the recited ‘measurement device,’ as evidenced by the
word ‘incorporating.’ In other words, the preamble recites a single element
– that of a measurement device that incorporates health related markers.”
Appeal Br. 6. According to Appellant, it “is abundantly clear from the plain
language of the claims” that “the plurality of health related markers recited
in the body of the claims are the same health related markers referenced as
an attribute of the measurement device in the preamble of the claims.” Id.
In response, the Examiner points out that subsequent dependent
claims “refer back to claim 1 as ‘The measurement device of claim 1,’ not
‘[t]he measurement device incorporating health related markers of claim
1[.]’” Ans. 18. According to the Examiner, this “leads one to believe that
‘measurement device’ and ‘health related markers’ as recited in the
preamble of the independent claims are two separate elements rather than
one single element.” Id.
A claim is properly rejected as indefinite under 35 U.S.C. § 112
second paragraph if, after applying the broadest reasonable interpretation in
light of the specification, the metes and bounds of a claim are not clear
because the claim “contains words or phrases whose meaning is unclear.” In
re Packard, 751 F.3d 1307, 1310, 1314 (Fed. Cir. 2014) (per curiam)
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(approving, for pre-issuance claims, the standard from MPEP § 2173.05(e));
see also Ex parte McAward, Appeal 2015-006416, 2017 WL 3669566, at *5
(PTAB Aug. 25, 2017) (precedential) (adopting the approach for assessing
indefiniteness approved by the Federal Circuit in Packard).
Proper construction of “measurement device”
Appellant and the Examiner have different views as to whether the
measurement device and the markers are a single element or two separate
elements. Looking first to the language of claims 1 and 24, the recitation
“measurement device incorporating[4] health related markers” suggests that
the health related markers are part of the measurement device, which is
consistent with Appellant’s asserted position that the markers are an
“attribute” of the measurement device. However, for reasons explained in
more detail below, it is not clear whether the “measurement device” of
claims 1 and 24 should be construed as requiring anything other than “health
related markers.”
To the extent that the “measurement device” and the “health related
markers” are not one and the same, it is not entirely clear whether the term
“comprising” at the end of the preamble modifies “health related markers”
or “measurement device.” If it is the former, then the “plurality of health
related markers” recited in the body of claims 1 and 24 are the same as, or at
least included within, the “health related markers” in the preamble. If, on
the other hand, “comprising” modifies “measurement device,” then it is not
clear whether the “plurality of health related markers” recited in the body are
the same as, or included within, the “health related markers” in the

4 The term “incorporating” is generally understood to mean including,
encompassing, or containing.
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preamble, or whether the “plurality of health related markers” in the body
are distinct from the “health related markers” in the preamble. Although, at
first blush, this may appear to be, and may in fact be, a distinction without a
difference, it begs the question of whether claims 1 and 24 require the
“plurality of health related markers” to be disposed on the “health related
markers” of the “measurement device,” particularly if the “measurement
device” of claims 1 and 24 does not require anything more than “health
related markers.”
With respect to whether the “measurement device” requires more than
“health related markers,” the term “device” does not connote any particular
structure, and the only features of the “measurement device” specifically
recited in claims 1 and 24 are the “health related markers” and the “plurality
of health related markers.” We turn to Appellant’s Specification for
guidance as to how to construe “measurement device” in claims 1 and 24.
The Specification refers to “a body part circumference measurement
device that incorporates a plurality of health risk markers.” Spec. ¶ 8. The
only features of the measurement device mentioned in the BRIEF
SUMMARY OF THE INVENTION section of the Specification are the
markers. In describing the invention in more detail, the Specification states
that “[t]he measurement device can be in the form of a measuring tape which
is marked with multiple Health Risk Markers (HRMs).” Id. ¶ 19. The
Specification also discloses that measurement device 100 “includes units of
measurement, 111, and a plurality of HRMs.” Id. ¶ 20. This suggests that
the essence of the “measurement device” is an arrangement of markings
including units of measurement and a plurality of HRMs. Thus, given that
the only feature(s) of the “measurement device” that claims 1 and 24 recite
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are “health related markers,” a person having ordinary skill in the art,
reading claims 1 and 24 in light of the Specification, could reasonably
understand the “measurement device” of Appellant’s invention to be an
arrangement of markings, including health related markers. On the other
hand, one might also infer that the “measurement device” includes some sort
of substrate, such as a tape, on which the arrangement of markings is
disposed.
Indeed, a substantial majority of Appellant’s Specification, in
describing the “measurement device,” discusses only the markers and their
arrangement. See Spec. ¶¶ 8–27. The Specification, however, adds
disclosure relating to “Measurement Device Construction.” In particular, the
Specification discloses that “[t]he measurement device . . . can be comprised
of any suitable material such as plastics, cloths, leathers, fabrics, fiber
glass[,] metals,” or “paper” and “can be implemented as a tape or a
retractable tape.” Id. ¶ 28. According to the Specification, the
“[m]easurement device can also be implemented on a flexible electronic
display using e-ink or a bendable light emitting diode,” such that the “HRMs
on the display could be dynamically updated with current information
reflecting at-risk demographic information in patient populations.” Id.
Thus, the Specification contemplates that the “measurement device” can
comprise a suitable substrate material, and can be implemented as a tape or
retractable tape, but also contemplates that the “measurement device” can be
implemented on a flexible electronic display. This disclosure creates
ambiguity as to whether “measurement device” as used in the present
application connotes the presence of a physical substrate on which the health
related markers, or HRMs, are disposed or connotes, more broadly, a pattern
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or arrangement on which the markers are disposed and which could be
implemented on a substrate.
Claims, when read in light of the specification, must “reasonably
apprise those skilled in the art both of the utilization and scope of the
invention” using language “as precise as the subject matter permits.”
Packard, 751 F.3d at 1313. The use of the language “markers disposed on
the measurement device” in claims 1 and 24 might weigh slightly in favor of
construing “measurement device” as requiring some sort of physical body or
substrate, rather than just an arrangement, especially when read in light of
the Specification’s disclosure of possible substrates that the “measurement
device” can comprise. However, in contrast to claims 2–13, for example,
claims 1 and 24 do not recite a substrate, and it would be improper for us to
speculate that this is what was intended when, during prosecution, there is
still opportunity to amend the claims to resolve unnecessary ambiguities and
achieve reasonable precision. After all, “[t]he USPTO, in examining an
application, is obliged to test the claims for reasonable precision according
to [the principles set forth in Packard].” Id.
For the above reasons, claims 1 and 24 are indefinite.
“[L]ength of the measurement device at the location” recitation
The recitation “disposed at a position on the measurement device
which corresponds to a health risk for a person . . . who possesses a body
part measurement which is equal to the length of the measurement device at
the location of the health related marker” in claims 1 and 24 is another
source of confusion as to the scope of these claims. It is unclear how a
measurement device has a length at a location, unless the measurement
device has a length that varies over its width, for example, which does not
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appear to be the case in Appellant’s disclosed invention. Reading the claims
in light of Appellant’s underlying disclosure, we presume that Appellant
intended to claim that each health related marker is disposed at a position on
the measurement device that lies a length/distance from one end of the
measurement device corresponding to a health risk for a person of the
gender and age indicated by that marker who possesses a body part
measurement equal to this length/distance. However, this is not what claims
1 and 24 recite.
Health risk for a person “who possesses a body part measurement”
Claims 1 and 24 also lack reasonable precision in that they do not
recite an association between the body part and the measurement
device/health related markers. Merely by way of example, a fourteen-year-
old boy having a 28-inch waist would not be considered obese, but likely
would be considered morbidly obese with a 28-inch neck or arm
circumference. This boy does possess a body part measurement equal to the
length/distance to the marker for a measurement device scaled for neck or
arm measurements, but this really should not signal a health risk for this boy.
Claim 23, which depends from claim 1, inherits the aforementioned
problems with respect to indefiniteness, and, thus, is likewise indefinite.
Although additional recitations in claims 2–13 appear to resolve the
ambiguity as to the meaning of “measurement device,” these claims inherit
the additional problems with respect to the “length of the measurement
device at the location” and “person . . . who possesses a body part
measurement” recitations, and, thus, are likewise indefinite.
For the above reasons, we sustain the rejection of claims 1 and 24
under 35 U.S.C. § 112, second paragraph, as indefinite, but we designate this
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a new ground of rejection pursuant to 37 C.F.R. § 41.50(b) because our
reasoning expands significantly on that set forth by the Examiner. Further,
pursuant to 37 C.F.R. § 41.50(b), we add a new ground of rejection under
35 U.S.C. § 112, second paragraph, of claims 2–13 and 23, which the
Examiner did not include in the indefiniteness rejection.
Patent Eligibility
The basis of the Examiner’s rejection under 35 U.S.C. § 101 is that
claims 1, 23, and 24 “are directed to ‘a mere arrangement of printed
matter,’” and, thus, do not fall within at least one of the four categories of
eligible subject matter set forth in 35 U.S.C. § 101. Non-Final Act. 4. For
the reasons discussed above, these claims are indefinite. We cannot sustain
the rejection of these claims as being a mere arrangement of printed matter
because to do so would require speculation as to the scope of claims 1, 23,
and 24, particularly with respect to the construction of “measurement
device.” Cf. In re Steele, 305 F.2d 859, 862–63 (CCPA 1962) (holding that
the Board erred in affirming a rejection of indefinite claims under 35 U.S.C.
§ 103(a), because the rejection was based on speculative assumptions as to
the meaning of the claims); In re Moore, 439 F.2d 1232, 1235 (CCPA 1971)
(stating that one is not in a position to determine whether a claim is enabled
under the first paragraph of 35 U.S.C. § 112 until the metes and bounds of
that claim are determined under the second paragraph of this section of the
statute.). It should be understood, however, that our decision in this regard
is based solely on the indefiniteness of the claimed subject matter.
Anticipation Rejections
For the reasons discussed above, claims 1, 23, and 24 are indefinite.
We cannot sustain the rejections of these claims under 35 U.S.C. § 102(b)
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because to do so would require speculation as to the scope of these claims.
See In re Aoyama, 656 F.3d 1293, 1300 (Fed. Cir. 2011) (holding that the
Board erred in affirming an anticipation rejection of indefinite claims). It
should be understood, however, that our decision in this regard is based
solely on the indefiniteness of the claimed subject matter, and does not
reflect on the adequacy of the prior art evidence applied in support of the
rejections.
Obviousness Rejections
We recognize a potential inconsistency implicit in our holding that
claims 1–13, 23, and 24 are indefinite with a determination of patentability
of these claims under 35 U.S.C. § 103(a). Normally, when substantial
confusion exists as to the interpretation of a claim and no reasonably definite
meaning can be ascribed to the terms in a claim, a determination as to
patentability under 35 U.S.C. § 103 is not made. See Steele, 305 F.2d at
862–63. However, in this instance, we consider it desirable to address the
rejections under 35 U.S.C. § 103(a) to avoid the inefficiency of piecemeal
appellate review because, for the reasons discussed in more detail below,
even if we interpret claims 1 and 24 as we believe Appellant intended
(namely, with the “measurement device” including a substrate on which the
markers are disposed at a position on the substrate that lies a length/distance
from one end of the substrate corresponding to a health risk for a person of
the gender and age indicated by that marker who possesses a body part
measurement equal to this length/distance, wherein this length/distance is
dimensioned specifically for this body part), Appellant’s arguments fail to
apprise us of error in the Examiner’s conclusion that the combination of
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prior art references applied in the rejections renders obvious the claimed
subject matter.
Lynberg, Ghosh, and Anthropometric
In addressing the rejections of claims 1 and 24, the Examiner finds
that Lynberg discloses a measurement device incorporating health related
markers, including a plurality of health related markers indicating a
numerical age (or age group) and gender, such that at least two different
ages are represented on the measurement device, with at least a first marker
indicating a first age group and a first gender and disposed at a position
which corresponds to a health measurement for a person in the first age
group and first gender, and a second marker indicating a second age group
and a second gender and disposed at a position which corresponds to a
health measurement for a person in the second age group and second gender.
See Non-Final Act. 10, 13–14.
The Examiner finds that “Lynberg is silent on the health measurement
being a health risk,” but finds that “Ghosh teaches a measuring device that
has markers (seen as the colored zones) that correlate to a health risk.”
Non-Final Act. 10 (citing Ghosh 466); see also id. at 14. The Examiner
determines it would have been obvious to modify “Lynberg with Ghosh
because it is a simple to use device that is easy to carry and is durable and is
inexpensive and can be used by even people having no skill in the art.” Id.
at 10, 14; see Ghosh 464, col. 2 (teaching use of color coded measuring
tapes based on mid-arm circumference (MAC) and chest circumference
(CC) as surrogate markers of birthweight; also teaching that merits of the
tape include ability to identify low birth weight infants correctly, simplicity
of use even by illiterate birth attendants, low cost, portability, and
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durability); id. at 466 (teaching three color zones marking mid-arm or chest
circumference zones that indicate no risk (green), low risk (yellow), and
high risk (red) requiring referral and admission in a Level II neonatal care
unit, respectively, and reiterating the merits of the tape).
The Examiner also finds that Anthropometric “teaches waist
circumferences averages and percentiles for two genders ages 2 to 19 (Table
47)” and that “[o]ne of ordinary skill in the art could use that data to
determine health risks (specifically be the percentiles) and determine the
positioning of markers on a health measuring tape of Lynberg.” Non-Final
Act. 10; see id. at 14. The Examiner determines it would have been obvious
to further modify Lynberg “with [Anthropometric] because doing so would
only require the routine skill of substitution of the measurements of Lynberg
(and/or Ghosh) with the data ascertained from the CDC,” as discussed in
Anthropometric. Id. at 10–11, 14.
In summary, the Examiner adds:
To be clear Lynberg teaches a measurement device that
has markers for different points for different ages and genders.
Ghosh teaches being able to create a measurement device based
on data to show health risk zones. Thus in combination with
[Anthropometric] one of ordinary skill in the art could make a
measurement device with different health zones/markers
depending on what specific health measurement the user
desired. One of ordinary skill in the art would understand how
to use the CDC data [in Anthropometric] to create the zones for
specific ages and genders as needed and further to create a
measuring device as taught by Lynberg and Ghosh.
Non-Final Act. 11, 14–15.
The Examiner explains that the selection of the body dimension for
which the markers are used, and, thus, the selection of the markers
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themselves, are a matter of design choice, and one of ordinary skill in the art
need only look to Anthropometric to get CDC data related to measurements
and health risks. Non-Final Act. 11, 15. Thus, according to the Examiner,
in essence, one of ordinary skill in the art would fully understand how to
combine the teachings of Lynberg and Ghosh in view of the CDC data in
Anthropometric to design a measurement device appropriate for the intended
purpose. Id.
Appellant argues that Ghosh does not qualify as prior art under
35 U.S.C. § 103(a). Appeal Br. 19–20. This argument is unsound because
Appellant admits, and, in fact, provides evidence to support, that the issue of
the Journal of Tropical Pediatrics in which the Ghosh article appears was
released in December of 2011, which is four months prior to the filing date
(April 4, 2012) of the present application. Thus, Ghosh qualifies as prior art
under 35 U.S.C. § 102(a), and, consequently, is available under
35 U.S.C. § 103(a).
Appellant next argues that the proposed combination lacks the feature
of claim 1 that each health related marker is
disposed at a position on the measurement device which
corresponds to a health risk for a person of the corresponding
gender who is of the numerical age indicated by that marker,
and who possesses a body part measurement which is equal to
the length of the measurement device at the location of the
health related marker.
Appeal Br. 22; see id. at 27 (asserting that the combination also lacks the
substantially similar feature of claim 24). In particular, Appellant points out
that each indicator on Lynberg’s measuring board “is disposed at the
average height corresponding to the indicated gender and age.” Id. at 25.
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According to Appellant, even if Lynberg’s “‘average height’ markers” were
considered to be “‘health related markers,’ Lynberg does not disclose that
these markers are disposed at a position on the measurement device which
corresponds to a health risk for a person of the corresponding gender who is
of the numerical age indicated by that marker” possessing “a body part
measurement which is equal to the length of the measurement device at the
location of the health related marker.” Id.; see id. at 26–27. Appellant
acknowledges that the Examiner relies on Ghosh to teach this missing
feature, but contends that “the Examiner’s explanation does not address the
actual recited claim limitation.” Id. at 25.
Appellant’s arguments appear to attack the references individually.
“Non-obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). In responding to
Appellant’s arguments, the Examiner explains that one of ordinary skill in
the art would merely need to look to Anthropometric to get data related to
body part measurements and health risks, and, using that data, would know
to place markers at designated points on the measurement device of Lynberg
modified in view of Ghosh based on numerical age and gender. Ans. 27–28.
Further, Ghosh would have provided ample suggestion to modify Lynberg’s
measurement device, in the first place, to measure body parts known to be
indicators of potential health risks, with markers placed at positions on the
device corresponding to lengths indicative of health risks.
Appellant also argues that “Ghosh does not disclose multiple age
groups, and therefore could not disclose multiple markers corresponding to
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health risks for persons belonging to multiple age groups,” as required in
claim 24. Appeal Br. 27. This argument is unavailing because it attacks
Ghosh individually. As discussed above, the Examiner finds that Lynberg
discloses multiple markers indicating multiple age groups for each gender,
Ghosh teaches providing markers identifying health risks corresponding to
body part measurements, and Anthropometric provides body part
measurement data for different age groups and genders in terms of
percentiles, which the Examiner finds can be correlated to potential for
health risks. See Non-Final Act. 10. The Examiner’s conclusion of
obviousness is based on the combined teachings of these references, not on
any one of them individually. See id. at 10–11.
Appellant contends that the Examiner has not articulated a legitimate
rational underpinning for combining Lynberg, Ghosh, and Anthropometric.
Appeal Br. 28. In particular, Appellant submits that it is unclear why the
merits “of being ‘easy to carry,’ ‘durable,’ and ‘inexpensive,’ in Lynberg
would lead one of skill in the art to then combine the birthweight measuring
tape of Ghosh with the height measuring board of Lynberg.” Id. Appellant
asserts that substituting waist or neck circumferences into Lynberg’s height
chart would not yield a measurement device that could be used to diagnose
health risks in children based on circumference “because Lynberg discloses
a measurement board.” Id. at 29. According to Appellant, “[i]t is unclear
how a board, which is a rigid object, would be utilized to ascertain a
circumference measurement of a child, which requires that the measurement
device be able to wrap around a body part.” Id.
The Examiner counters by challenging Appellant’s assertion that
“Lynberg is directed to a ‘rigid’ board.’” Ans. 31 (stating that “nowhere . . .
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does Lynberg mention that the board is rigid or that it is made of any
material that could be considered rigid.”) Id. Even assuming that a person
having ordinary skill in the art would have understood from Lynberg’s use
of the term “board” that Lynberg’s “measuring board” is rigid, this does not
undermine the Examiner’s rejection, which is not based on Lynberg alone.
To the extent that Lynberg’s measuring board would need to be modified, as
by constructing it as a tape as taught by Ghosh, for example, to adapt it for
measuring body part circumferences, a person having ordinary skill in the art
would have understood from Ghosh how to do so, and, further, would have
readily appreciated the advantages that a tape would afford—namely, ease of
use, portability, durability, and low cost of manufacture. See Ghosh 464,
466. “A person of ordinary skill is also a person of ordinary creativity, not
an automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
Moreover, the skilled artisan would have readily appreciated that providing
in the health related markings some visual indication of health risk, such as
the color coding taught by Ghosh, would make the measurement device easy
to use for unskilled or uneducated personnel. See Ghosh 464, 466.
For the above reasons, Appellant does not apprise us of error in the
rejection of independent claims 1 and 24. Accordingly, we sustain the
rejection of claims 1 and 24 as unpatentable over Lynberg, Ghosh, and
Anthropometric. We also sustain the rejection of claims 2, 3, 9, 11–13, and
23, for which Appellant does not present any separate arguments and which
thus fall with claim 1, from which they depend, as unpatentable over
Lynberg, Ghosh, and Anthropometric. See Appeal Br. 18–29; 37 C.F.R.
§ 41.37(c)(1)(iv) (permitting the Board to select a single claim to decide the
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appeal as to a single ground of rejection of a group of claims argued
together).
Lynberg, Ghosh, Anthropometric, and either Chen or Maffeis
Appellant does not present any separate arguments specifically
directed to the rejections of claims 4–8 and 10. See Appeal Br. 18–29.
Rather, Appellant relies on the arguments presented against the rejection of
claim 1 in contesting the rejection of the dependent claims. See Appeal
Br. 29. For the reasons discussed above, Appellant’s arguments do not
apprise us of error in the rejection of claim 1 as unpatentable over Lynberg,
Ghosh, and Anthropometric, and, likewise, fail to apprise us of error in the
rejection of claims 4–8 and 10. Accordingly, we sustain the rejection of
claims 4–6, 8, and 10 as unpatentable over Lynberg, Ghosh,
Anthropometric, and Chen. We also sustain the rejection of claim 7 as
unpatentable over Lynberg, Ghosh, Anthropometric, and Maffeis.

CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed New
Ground
1, 24 112,
second
paragraph
Indefiniteness 1, 24 1–13,
23, 24
1, 23, 24 101 Eligibility 1, 23, 24
1, 23, 24 102(b) CDC Growth
Charts
1, 23, 24
1, 23, 24 102(b) BMI Calculator 1, 23, 24
1–3, 9,
11–13,
23, 24
103(a) Lynberg, Ghosh,
Anthropometric
1–3, 9,
11–13,
23, 24

Appeal 2019-005521
Application 13/439,826

19
4–6, 8, 10 103(a) Lynberg, Ghosh,
Anthropometric,
Chen
4–6, 8, 10
7 103(a) Lynberg, Ghosh,
Anthropometric,
Chen, Maffeis
7
Overall
Outcome
1–13, 23,
24
1–13,
23, 24

FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
Appeal 2019-005521
Application 13/439,826

20
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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; 37 C.F.R. § 41.50(b)