10820637 (B.P.A.I. Mar. 29, 2012)

Ex Parte Debreczeny

Board of Patent Appeals and InterferencesMar 29, 2012

10820637 (B.P.A.I. Mar. 29, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte MARTIN DEBRECZENY __________ Appeal 2010-001520 Application 10/820,637 Technology Center 3700 ___________ Before JOSEPH F. RUGGIERO, SCOTT R. BOALICK, and BRADLEY W. BAUMEISTER, Administrative Patent Judges. BAUMEISTER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-001520 Application 10/820,637 - 2 - SUMMARY Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejections of claims 1-20: (i) Claims 5-9, 11-16, and 18-20 stand rejected under 35 U.S.C. § 103(a) as obvious over Vari (US 5,701,902; issued Dec. 30, 1997) and Reynolds (US 3,825,335; issued July 23, 1974). (ii) Claims 10 and 17 stand rejected under 35 U.S.C. § 103(a) as obvious over Vari, Reynolds, and Jeffcoat (US 5,036,853; issued Aug. 6, 1991). (iii) Claims 1-4 and 13 stand rejected under 35 U.S.C. § 102(b) as anticipated by Reynolds. We affirm. THE INVENTION Appellant discloses an illuminator for photoplethysmography. (Spec. ¶ 0001). An exemplary application is pulse oximetry, which determines a tissue region’s oxygen concentration by measuring the region’s absorption of light at two different wavelengths, e.g., 660 nm and 890 nm. (Spec. ¶¶ 0002-04). The different wavelengths of light must be emitted onto the same tissue region (Spec. ¶ 0004) or, in Appellant’s words, “homogenously or evenly or uniformly distributed” (Spec. ¶ 0015). To increase such homogeneity, “the embodiments of present invention separately couple multiple optical fibers to each light source, and then combine and spatially mix the fibers into a bundle.” (Spec. ¶ 0021). Appellant’s Fig. 2, reproduced below, shows an exemplary structure with first and second fiber bundles 210, 220 coupled to respective light sources, Appeal 2010-001520 Application 10/820,637 - 3 - combined to form a composite fiber bundle, and co-terminated at the same outlet 206. (Spec. ¶ 0022). Appellant’s Fig. 2 shows a perspective view of the invention. To distinguish the invention over Vari, the Specification and claims were amended in view of Fig. 2 to express the “nonrandom configuration” of the fibers 210, 220 at the outlet 206. (Amendment filed May 2, 2007, pp. 3- 7 and 13). The Specification was particularly amended to state, “As can be seen in Fig. 2, the optical fibers 210 and the optical fibers 220 may be arranged in an alternating, symmetrical, or nonrandom configuration to ensure spatial homogeneity of the electromagnetic energy at the outlet 206.” (Id. at 3.) I. OBVIOUSNESS REJECTION OF CLAIMS 5-9, 11-16, AND 18-20 OVER VARI AND REYNOLDS Appellant argues claims 5-9, 11-16, and 18-20 together as a group. (App. Br. 12-17). We select independent claim 15 as representative. Claims 5-9, 11-14, 16, and 18-20 accordingly stand or fall with claim 15. 37 C.F.R. § 41.37(c)(1)(vii). Appeal 2010-001520 Application 10/820,637 - 4 - Claim 15 is reproduced below with emphasis on the language regarding the nonrandom configuration of fibers. 15. A system comprising: a first source of electromagnetic energy; a second source of electromagnetic energy; a monitor configured to calculate a physiological parameter; and a sensor adapted to be operatively coupled to the monitor, the sensor comprising: a first plurality of optical fibers configured to receive and to transmit electromagnetic energy from the first source, the first plurality of optical fibers having proximal ends and distal ends; and a second plurality of optical fibers configured to receive and to transmit electromagnetic energy from the second source, the second plurality of optical fibers having proximal ends and distal ends; wherein the proximal ends of the first plurality of optical fibers are segregated from the proximal ends of the second plurality of optical fibers, and wherein the distal ends of the first plurality of optical fibers are arranged in a spatially mixed nonrandom configuration with the distal ends of the second plurality of optical fibers such that the transmitted electromagnetic energy from the first source is spatially homogenized with the transmitted electromagnetic energy from the second source. Like Appellant’s invention, Vari’s device uses a composite fiber bundle to spatially homogenize different wavelengths of emitted light. (Col. 4, ll. 16-28; Fig. 2). Unlike in the claimed invention, Vari’s fibers are “randomly dispersed” within the composite fiber bundle (col. 5, ll. 24-27) and at its outlet; not “arranged in a spatially mixed nonrandom configuration” as claimed. Appeal 2010-001520 Application 10/820,637 - 5 - The Examiner bridges this difference by replacing Vari’s random fiber distribution with a nonrandom fiber distribution in view of Reynolds. (Ans. 4). Reynolds uses a composite fiber bundle to spatially homogenize red, green, and blue wavelengths of emitted light. (Abstract; col. 2, ll. 17-33; col. 7, ll. 52-56). Reynold’s Fig. 2, reproduced below, shows an exemplary structure. (Col. 4, ll. 13-16). As shown, the red, green, and blue fibers are have a nonrandom distribution within the composite fiber bundle and at its outlet 77.1 Reynold’s Fig. 2 shows a perspective view of the reference’s light-emitting structure. Like the Examiner, we find that Vari and Reynolds teach alternative structures for spatially homogenizing different wavelengths of light. Vari 1 We use the terms “red fiber,” “green fiber,” and “blue fiber” to merely distinguish among the referenced groups of fibers based upon the light intended to be carried by a particular fiber, i.e., the light source to which a fiber is intended to be coupled. Appeal 2010-001520 Application 10/820,637 - 6 - uses a random fiber distribution, and Reynolds uses a nonrandom fiber distribution within their respective composite fiber bundles and outlets. (Ans. 4). Appellant seems to concur, arguing (App. Br. 17 (original emphasis)): [T]he Vari reference teaches random dispersion of optical fiber bundles 48-54. See Vari et al., col. 5, lines 24-27. In contrast, the Reynolds reference specifically discloses ordered distribution of optical fibers carrying red, green, and blue light. See Reynolds, col. 6, lines 43-48. The Examiner suggested that these references teach alternative manners in which to achieve the same result and therefore can be interchanged/combined. However, as the Examiner argued that each reference provides a different method to solve an electromagnetic energy homogeneity problem, there is clearly no reason to combine the references. The thrust of Appellant’s argument is that since Vari’s and Reynold’s fiber distributions each address the same need, there is no reason to replace one distribution with the other. This argument is unpersuasive. It is prima facie obvious to substitute a structure known to perform a given function with another structure known to also perform that function. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“[W]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” (quotation marks and citation omitted)). Contrary to Appellant’s argument, there is no requirement for the proposed modification to be justified by a deficiency of the replaced structure (the random fiber distribution) or an advantage of the substituted structure (the nonrandom fiber distribution). And, contrary to additional Appeal 2010-001520 Application 10/820,637 - 7 - arguments of Appellant, there is no requirement for the replaced and substituted structures to be explicitly compared as equivalents within the art. (App. Br. 19-20; Reply Br. 11-12). Rather, it is sufficient that both structures were known to spatially homogenize different wavelengths of light (as taught by Vari and Reynolds) 2 and that both structures would have been recognized as interchangeable (as is self-evident from the structural similarities of Vari’s and Reynolds’ composite fiber bundles). See In re Ruff, 256 F.2d 590, 599 (“The equivalence must be disclosed in the prior art or be obvious within the terms of Section 103.”). Though there is no requirement for the proposed modification to be advantageous, we also note that Reynolds implicitly suggests an advantage. See In re Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom”). Reynolds does so by randomly distributing fibers of the same light source within their respective bundles (e.g., the red fibers are randomly distributed within the red bundle) to reduce hot spots (Reynolds, col. 6, ll. 15-40) and, conversely, by nonrandomly distributing the red, green, and blue fibers within the composite fiber bundle to spatially homogenize their emitted light. (Reynolds, col. 6, ll. 42-47). By switching from the random distribution to the nonrandom fiber distributions in this manner, Reynolds shows that a nonrandom fiber distribution was thought to better homogenize different 2 It is self-evident and uncontested that Vari’s subject matter falls within the art of the claimed invention. We explain, infra, that Reynolds’ subject matter also falls within the art of the claimed invention. Appeal 2010-001520 Application 10/820,637 - 8 - wavelengths of light than a random fiber distribution. This implicit advantage provides further reason for the proposed replacement. See KSR, 550 U.S. at 417 (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.”). Appellant also argues that the claimed invention and Reynolds are directed to nonanalogous arts (App. Br. 14-16). The Examiner addresses only the second step of the well-established test for determining whether a reference is from non-analogous art (Ans. 7-8), which Appellant correctly states to be a determination of “whether the reference is reasonably pertinent to the particular problem with which the inventor was involved” (App. Br. 14 (quoting Union Carbide Corp. v. American Can Co., 724 F.2d 1567 (Fed. Cir. 1984)). With respect to this determination, Appellant argues (App. Br. 15): There is no objective reason that one skilled in the art of physiological sensors would consider a color photography lighting system in attempting to solve problems associated with the measurement of physiological parameters. That is, the variable color lighting system of Reynolds has no bearing on the problem of inputting homogeneous light into a tissue location solved by the present disclosure. We disagree. One objective reason would have been as follows: as a consequence of ordinary skill and even common sense, an inventor would have expected many photography illumination systems to spatially homogenize light from different sources. Citing a district court case for support, Appellant argues that Reynolds does not satisfy the second step because a skilled artisan of the claimed Appeal 2010-001520 Application 10/820,637 - 9 - subject matter would not be “apt to reference” Reynolds. (App. Br. 14 (citing Bott v. Four Star Corp., 218 U.S.P.Q. 358 (E.D. Mich. 1983)). This argument is unpersuasive. It seems reasonable that an inventor, in addressing a need to homogenously overlap the emissions of multiple light sources, would have been “apt” to consider teachings from any area of optics, specifically including the photography arts. Appellant has not provided persuasive evidence to the contrary. Appellant further argues that Reynolds’s invention and the claimed invention illuminate objects at disparate distances, such that a skilled artisan would not expect Reynolds’ teachings to be applicable to the claimed invention. (App. Br. 15). However, Reynolds teaches that “the adjacent red, green, and blue cones of light overlap at a very short distance from composite output end 70.” (Col. 7, ll. 52-56). Moreover, even assuming that disparate distances of illumination could place the claimed invention and Reynolds’s invention within nonanalogous arts, claim 15 does not recite a particular distance of illumination. To summarize, Appellant has not demonstrated error in the Examiner’s conclusion that the cited art is reasonably pertinent to the particular problem with which the inventor was involved. As such, we need not address the first, alternative prong of the test for whether a reference is from nonanalogous art. That is, we need not decide whether Reynolds is in the field of Appellant’s endeavor. For the reasons above, we sustain the obviousness rejections of claim 15, as well as claims 5-9, 11-14, 16, and 18-20, which are not separately argued. Appeal 2010-001520 Application 10/820,637 - 10 - II. OBVIOUSNESS REJECTION OF CLAIMS 10 AND 17 OVER VARI, REYNOLDS, AND JEFFCOAT Claims 10 and 17 respectively depend from claims 5 and 15. Appellant argues only that the Jeffcoat reference does not obviate the deficiencies of the Vari and Reynolds references. (App. Br. 21). Appellant has not shown a deficiency in the application of Vari and Reynolds. We therefore sustain the obviousness rejection of claims 10 and 17. III. ANTICIPATION REJECTION OF CLAIMS 1-4 AND 13 OVER REYNOLDS Independent claims 1 and 13 recite several functional limitations. Namely, both claims are directed to a “physiological sensor” and recite an included outlet that is configured to emit light onto tissue for measurement of a physiological parameter. Appellant argues that the Examiner must, but did not, properly address these functional limitations. (App. Br. 10-12; Reply Br. 1-8). A. PHYSIOLOGICAL SENSOR The Examiner determined that the “physiological sensor” of claims 1 and 13, recited within their preambles, does not limit the scope of the invention. We agree because the bodies of claims 1 and 13 clearly set forth a complete invention (compare the recited elements against the illustrated elements of Appellant’s Fig. 2). Further, the “physiological sensor” language does not define (much less distinctively define) the bodies’ recited elements, but merely expresses an intended use of those elements that is already embodied by their emission of light configured for measurement of a physiological parameter. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999) (“If … the body of the claim fully and Appeal 2010-001520 Application 10/820,637 - 11 - intrinsically sets forth the complete invention, including all of its limitations, and the preamble offers no distinct definition of any of the claimed invention’s limitations, but rather merely states, for example, the purpose or intended use of the invention, then the preamble is of no significance to claim construction because it cannot be said to constitute or explain a claim limitation.” (citations omitted)); In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). Presumably, if the “physiological sensor” language further defined the light-emitting elements of claims 1 and 13, Appellant would have identified the resulting structure. Appellant has not identified any such structure, but states only that “a physiological sensor is a physical structure which can be distinguished from other structures that are not physiological sensors (e.g., windows, trees, apples, desks, and so forth).” (App. Br. 11 (emphasis omitted)). Thus, even assuming that the “physiological sensor” language is limiting, Appellant would still fail to identify a required structure that distinguishes over Reynolds. To traverse an anticipation rejection, Appellant must identify distinguishing structure; not just its corresponding claim language. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“Before the examiner, Jung merely argued that the claims differed from Kalnitsky, and chose not to proffer a serious explanation of this difference.”); In re Baxter Travenol Labs, 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of this court to examine the claims in greater detail than argued by an appellant, looking for nonobvious distinctions over the prior art.”); 37 C.F.R. § 41.37(c)(1)(vii) (“A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.”). Appeal 2010-001520 Application 10/820,637 - 12 - B. OUTLET As noted, claims 1 and 13 recite outlets that emit light configured for measurement of a physiological parameter. Like all functional claim language, the above limitation invokes two considerations. First, as explained in In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (quoting In re Swinehart, 439 F.2d 210, 212 (CCPA 1971): [W]here the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on. Second, the Patent Office need only show that applied prior art is capable of performing the recited function. See Schreiber, 128 F.3d at 1478-79 (“The Board’s finding that the … [prior art] would be capable of performing all of the functions recited in Schreiber’s claim 1 is a factual finding, which has not been shown to be clearly erroneous. On this ground alone, the Board’s anticipation ruling must be upheld.”). Given the above considerations, the Examiner has presented a prima facie case of anticipation. Namely, in view of the structural similarities of Reynolds’s and Appellant’s composite fiber bundles, the Examiner reasonably found that Reynolds’ composite fiber bundle would inherently be capable of emitting light configured for measurement of a physiological parameter. (Ans. 6). The Examiner’s finding was reasonable since: (i) both inventions have multiple fiber bundles that are coupled to respective light sources, combined to form a composite fiber bundle, and co-terminated at a single outlet; and (ii) the inventions’ fibers carry comparable spectral ranges of light. Appeal 2010-001520 Application 10/820,637 - 13 - Despite an expertise in photoplethysmography, Appellant presents no compelling evidence or even argument that Reynolds’s composite fiber bundle is incapable of emitting light configured for measurement of a physiological parameter. Appellant merely addresses the coupling of Reynolds’s composite fiber bundle to the red, green, and blue light sources (App. Br. 11-12), which has no bearing on whether the bundle could emit light as claimed. For these reasons, we find Appellant’s arguments unpersuasive and, accordingly, sustain the rejection of independent claims 1 and 13, as well as dependent claims 2-4, which are not separately argued (App. Br. 12).3 DECISION The rejections of claims 1-20 are affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2010). AFFIRMED rwk 3 We note that independent claims 1 and 13 are broader than claims 5 and 15, which are rejected under 35 U.S.C. § 103(a) over Vari and Reynolds. See Ormco Corp. v. Align Tech., Inc., 498 F.3d 1307, 1319 (Fed. Cir. 2007) (noting that where dependent claims “were found to have been obvious, the broader . . . must also have been obvious”).