Ex Parte Moon et al

Patent Trial and Appeal Board

Jul 10, 2018

13292923 (P.T.A.B. Jul. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/292,923 11/09/2011 Jim Moon
35938 7590 07/12/2018
Acuity Law Group, P.C.
12707 High Bluff Drive
Suite 200
San Diego, CA 92130-2037
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
TWI-60700-UT 4752
EXAMINER
BLOCH, MICHAEL RYAN
ART UNIT PAPER NUMBER
3735
NOTIFICATION DATE DELIVERY MODE
07/12/2018 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):
docketing© acuity lg. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JIM MOON, DEVIN MCCOMBIE,
MATT BANET, and MARSHAL DHILLON
Appeal2016-006002
Application 13/292,923 1
Technology Center 3700
Before PHILIP J. HOFFMANN, BRADLEY B. BAY AT, and
AMEE A. SHAH, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1, 3, 4, and 6-10, which constitute all the claims
pending in this application. Claims 2, 5, and 11-13 have been cancelled.
We have jurisdiction under 35 U.S.C. § 6(b ). A hearing was held on July 3,
2018.
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to our authority under 3 7 C.F .R. § 41. 50(b ).
1 Appellants identify "Sotera Wireless, Inc." as the real party in interest.
Appeal Br. 4 (filed Oct. 11, 2015).
Appeal2016-006002
Application 13/292,923
CLAIMED SUBJECT MATTER
"The present invention relates to medical devices for monitoring vital
signs, e.g., saturation of peripheral oxygen, or Sp02." Spec. i-f2.
Independent claim 1, reproduced below, is illustrative of the subject matter
on appeal.
1. An optical sensor configured to be worn on a patient's
finger and determine an optical signal indicative of a
photoplethysmograph waveform, the sensor comprising:
a flexible housing configured to wrap around a portion of
the base of the patient's thumb and position over the interior base
of the thumb proximate to the princeps pollicis artery, the
flexible housing comprising (i) a first light source that emits
optical radiation, (ii) a photodetector configured to detect the
optical radiation and to generate the optical signal, and (iii) a
plurality of living hinges, wherein the flexible housing positions
the first light source such that the optical radiation is emitted at
an angle of between 35 and 55 degrees relative to the
photodetector.
Appeal Br. 14, Claims App. ( emphasis added).
THE REFERENCES AND REJECTIONS ON APPEAL
I. Claims 1 and 6-8 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Hurtubise2 and Lindekugel. 3
II. Claims 3, 4, 9, and 10 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Hurtubise, Lindekugel, and Diab. 4
2 Hurtubise et al., WO 2006/005169 Al, pub. Jan. 19, 2006.
3 Lindekugel, US 2005/0075550 Al, pub. Apr. 7, 2005.
4 Diab et al., US 5,482,036, iss. Jan. 9, 1996.
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Application 13/292,923
ANALYSIS
As set forth below, pursuant to our authority under 37 C.F.R.
§ 4I.50(b), we enter a new ground of rejection of claims 1, 3, 4, and 6-10
under pre-AIA 35 U.S.C. § 112, second paragraph, as being indefinite. In
light of this new rejection, it would be premature to reach the merits of the
rejections under 35 U.S.C. § 103(a) at this time.
Before a proper review of the rejections under§ 103(a) can be made,
the subject matter encompassed by the claims on appeal must be reasonably
understood without resort to speculation. Because the claims fail to satisfy
the requirements under 35 U.S.C. § 112, second paragraph, we are
constrained to reverse, proforma, the Examiner's rejections under 35 U.S.C.
§ 103(a). See In re Steele, 305 F.2d 859, 862 (CCPA 1962) (A prior art
rejection cannot be sustained if the hypothetical person of ordinary skill in
the art would have to make speculative assumptions concerning the meaning
of claim language). It should be understood that our decision to reverse the
rejections of claims 1, 3, 4, and 6-10 under 35 U.S.C. § 103(a) is based
solely on the indefiniteness of the claims, and does not reflect on the merits
of the underlying rejections.
New Ground of Re} ection-Jndefiniteness
In determining whether a claim is definite under 35 U.S.C. § 112,
second paragraph, "[t]he USPTO, in examining an application, is obliged to
test the claims for reasonable precision." In re Packard, 751 F.3d 1307,
1313 (Fed. Cir. 2014 ). "[A] claim is indefinite when it contains words or
phrases whose meaning is unclear." Id. at 1322; Ex Parte McAward, No.
2015-006416, 11 (PTAB Aug. 25, 2017) (precedential) (quoting In re
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Appeal2016-006002
Application 13/292,923
Packard, 751 F.3d at 1314). The USPTO "determines the scope of claims ..
. not solely on the basis of the claim language, but upon giving claims their
broadest reasonable construction 'in light of the specification as it would be
interpreted by one of ordinary skill in the art."' Phillips v. A WH Corp., 415
F.3d 1303, 1316 (Fed. Cir. 2005) (en bane) (quoting In re Am. Acad. of Sci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). During examination, an
applicant must "clearly and precisely set out the metes and bounds of the
claimed [subject matter]." See Ex parte Miyazaki, 89 USPQ2d 1207, 1211-
13 (BP AI 2008) (precedential) (holding that "if a claim is amenable to two
or more plausible claim constructions, the USPTO is justified in requiring
the applicant to more precisely define the metes and bounds of the claimed
invention by holding the claim unpatentable under 35 U.S.C. § 112, second
paragraph, as indefinite.").
Here, the claims on appeal "utilize a pulse oximetry sensor in the form
of a finger ring having a specific configuration" for monitoring blood
pressure and oxygen saturation (Appeal Br. 4). The limitation "wherein the
flexible housing positions the first light source such that the optical radiation
is emitted at an angle of between 35 and 55 degrees relative to the
photodetector," as recited in independent claims 1 and 8 (id. at 14--15,
Claims App.), appears central to Appellants' arguments against the art
rejections (see id. at 9-11; see also Reply Br. 3-5 (filed May 25, 2016)).
Regarding this limitation, the Specification provides:
As shown in FIGS. 3A and B, during a pulse oximetry
measurement the LEDs 9, 10 intermittently emit beams 28, 29 of
radiation at 660 nm and 905 nm at roughly 500 Hz according to
the timing diagram in FIG. 20. Once emitted, the beams 28, 29
pass through the base of the thumb 3 and rapidly diverge to
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Appeal2016-006002
Application 13/292,923
scatter off tissue such as skin 24, bone 25, capillaries 26 near the
thumb's outer surface, and a portion of the princeps pollicis
artery 27 before reaching the photodetector 12. To increase the
amount of radiation that passes through the artery 27 and
capillaries 26, and thereby optimize signal quality, the LEDs 9,
10 and photodiode 12 are separated by approximately 35-55
degrees. Optical components separated at this angle tend to
increase the relative contribution of signal coming from the
artery 27; ultimately this improves the accuracy of the cNIBP
measurement, as PTT values measured from arterial components
correlate better to blood pressure than those measured from
capillary components.
Spec. ,r 59.
"-.. "'-.,
•.._..,~----•n~~-
Figs. 3A and 3B, reproduced above, show the angle theta (8) of 35°-55°
between the LEDs and photodetector and the divergence and scattering of
emitted beams 28 and 29.
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Application 13/292,923
It is not clear from the plain language of claims 1 and 8, in view of the
Specification, how "the optical radiation is emitted at an angle of between 3 5
and 55 degrees relative to the photodetector." Appellants' Specification
attributes this claimed angle to the positioning of the optical elements, such
that "LEDs 9, 10 and photodiode 12 are separated by approximately 35-55
degrees." See supra. In contesting the rejections, Appellants also rely on
the positioning of the light source and the detector as being separated by an
angle between 35 and 55 degrees. See Appeal Br. 10; see also Reply Br. 4--
5. And, as shown in Figure 3B above, it is unclear how beams 28 and 29 are
emitted at an angle between 35 and 55 degrees relative to the photodetector,
particularly when considering that they "rapidly diverge to scatter off tissue"
before reaching photodetector 12. Spec. ,r 59.
The language of the limitation includes substantial ambiguity
regarding the scope of the claims as one of ordinary skill in the art would not
understand precisely what angle is claimed. Such ambiguity is not
permitted, and renders the claim indefinite, because a person of ordinary
skill in the art would be unable to determine the metes and bounds of the
claim so as to understand how to avoid infringement. See Morton Int 'l, Inc.
v. Cardinal Chem. Co., 5 F.3d 1464, 1470 (Fed. Cir. 1993). Section 112
places the burden of precise claim drafting on applicants. See Packard, 751
F.3d at 1313 ("Given the role of the applicant in the process, it is a
reasonable implementation of the examination responsibility, as applied to
§ 112[, second paragraph], for the [USPTO], upon providing the applicant a
well-grounded identification of clarity problems, to demand persuasive
responses on pain of rejection."). Accordingly, we enter a New Ground of
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Application 13/292,923
Rejection of independent claim 1 and 8 as indefinite under 35 U.S.C. § 112,
second paragraph, including claims 3, 4, 6, 7, 9, and 10 dependent thereon.
DECISION
The Examiner's rejections of claims 1, 3, 4, and 6-10 under 35 U.S.C.
§ 103(a) are reversed proforma.
A NEW GROUND OF REJECTION is entered for claims 1, 3, 4,
and 6-10 as indefinite under 35 U.S.C. § 112, second paragraph.
Section 4I.50(b) provides that "[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review." Thus,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION,
Appellants 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
newly 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 proceeding will be remanded to the
Examiner; or
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
REVERSED; 37 C.F.R. § 4I.50(b)
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Application 13/292,923
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