Ex Parte Baker

Board of Patent Appeals and Interferences

Jun 15, 2012

11716778 (B.P.A.I. Jun. 15, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte CLARK R. BAKER
__________

Appeal 2011-004822
Application 11/716,778
Technology Center 3700
__________

Before TONI R. SCHEINER, ERIC GRIMES, and ERICA A. FRANKLIN,
Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
system for determining a water reserve index. The Patent Examiner rejected
the claims as anticipated and obvious. We have jurisdiction under 35 U.S.C.
§ 6(b). We reverse.

STATEMENT OF THE CASE
The invention concerns a system for combining a lean water fraction
value (ratio of the water-to-protein in the tissue) and a skin thickness value
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Application 11/716,778

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to determine a water reserve index for a subject. (Spec. 9, ll. 1-2; 14, ll. 1-
2.) The Specification states that “[t]he computed water reserve index is
indicative of the amount of water in the body and may be correlated to a
clinically determined dehydrated condition.” (Id. at ll. 8-9.)
Claims 20-28 are on appeal. Claim 20, the only independent claim, is
representative and reads as follows:
20. A system for determining a water reserve index comprising:
a sensor, the sensor comprising:
an emitter configured to emit near-infrared light;
a detector located between 1 to 5mm from the emitter
configured to detect the emitted light and generate a
signal representative of the detected light, wherein the
emitter and the detector are configured to optically
couple with an individual's skin;
a monitor communicatively coupled to the sensor and configured
to receive the generated signal, the monitor comprising:
a microprocessor configured to calculate a lean water fraction
based on the received signal, the microprocessor
combining the lean water fraction with a skin thickness
value to determine a water reserve index; and
a display configured to display the determined water reserve
index to the user.

The Examiner rejected the claims as follows:
• claims 20, 22, and 26-28 under 35 U.S.C. §102(b) as anticipated by
Schmitt;1 and
• claims 23-25 under 35 U.S.C. § 103(a) as unpatentable over Schmitt
and Pruche.2

1 Patent Application Publication No. US 2004/0230106 A1 by Joseph M.
Schmitt et al., published Nov. 18, 2004.
2 Patent No. US 7,211,043 B2 issued to Francis Pruche et al., May 1, 2007.
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Because the same issue is dispositive for both of these rejections, we will
consider them together.
For both the anticipation and obviousness rejections, the Examiner’s
position is that Schmitt taught a system including a microprocessor
configured to calculate a lean water fraction based on the received signal, the
microprocessor combining the lean water fraction with a skin thickness
value to determine a water reserve index. (Ans. 3-4.)
Appellant contends that Schmitt neither disclosed a “skin thickness
value” nor using a “skin thickness value” to determine a “water reserve
index.” (App. Br. 4.)
In the Response to Argument, the Examiner reasoned that “the
microprocessor is inherently considering the penetration depth which will be
the skin thickness… when calculating the water reserve index” because
Schmitt taught that the system “‘targets the dermis’ by avoiding shallow
penetration of the spectroscopic device which would only account for dead
skin and penetration that is too deep which would account for undesirable
high fat tissue and bone layers [0032].” (Ans. 5.) Additionally, the
Examiner explained that Schmitt further taught that its system was “able to
cancel or add reflected values coming from desirable or undesirable depths
(thicknesses) of the skin as another way of accounting for skin thickness
[0031].” (Id.)
However, these teachings in Schmitt do not reasonably support the
Examiner’s determination that Schmitt’s microprocessor inherently
combined the lean water fraction with a skin thickness value to determine a
water reserve index. See Ex Parte Levy, 17 USPQ2d 1461, 1463-64 (BPAI
1990) (When relying upon a theory of inherency, an Examiner must provide
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basis in fact and/or technical reasoning to reasonably support determination
that allegedly inherent characteristic necessarily flows from teachings of the
applied prior art.). We agree with Appellant (Reply Br. 2) that Schmitt
taught that its system “targets the dermis” in an effort to ensure that the
wavelengths of emitted light are absorbed by the desired tissue components,
i.e., “including and excluding certain tissue constituents” (Schmitt [0032])
rather than to provide a skin thickness value, or to combine such a value
with the lean water fraction to determine a water reserve index.
Accordingly, we reverse the Examiner’s anticipation and obviousness
rejections.

REVERSED

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