Ex Parte Van Den Heuvel et al

Patent Trial and Appeal Board

Nov 19, 2018

13810913 (P.T.A.B. Nov. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/810,913 01/18/2013 Teun Van Den Heuvel
24737 7590 11/21/2018
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus A venue
Suite 340
Valhalla, NY 10595
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.
201 OP00682WOUS 7586
EXAMINER
KREMER, MATTHEW
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
11/21/2018 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):
patti. demichele@Philips.com
marianne.fox@philips.com
katelyn.mulroy@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TEUN VANDENHEUVEL and HARIS DURIC
Appeal2017-000083
Application 13/810,913
Technology Center 3700
Before DEBORAH KATZ, ULRIKE W. JENKS, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
KATZ, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-000083
Application 13/810,913
Introduction
Appellants 1 seek our review, under 35 U.S.C. § 134(a), of the
Examiner's decision to reject claims 1, 2, 5-11, 13, 14, 17-19, and 21-28.
We have jurisdiction under 35 U.S.C. § 6(b).
Appellant's Specification is directed to means for detecting the
orientation, in three dimensions, of a device implanted or mounted on a
subject relative to the body of the subject. (Specification ("Spec.") 3:20-
25.) According to the Specification, Appellants' claimed devices, systems,
and methods use characteristics other than a subject's posture to determine
relative orientation for calibration of an orientation detection unit. (See
Specification ("Spec.") 3:26-32.)
The Examiner rejected claims 1, 2, 5-11, 13, 14, 17-19, and 21-28 as
lacking sufficient written description under 35 U.S.C. § 112, first paragraph.
(See Ans. 2 2-8.) The Examiner also rejected claims 1, 2, 5-11, 14, 17, 18,
and 22-28, as being indefinite under 35 U.S.C. § 112, second paragraph.
In addition, the Examiner made several rejections of the claims
( except claims 22-25), as being either anticipated by or rendered obvious
over the prior art. (See Ans. 12-31.)
We AFFIRM the rejections under 35 U.S.C. § 112, first and second
paragraphs, which reach all of the claims. As explained below, we reverse
proforma the rejections under§§ 102 and 103 at this time.
1 Appellants report that the real party in interest is Koninklijke Philips, N.V.
(App. Br. 1.)
2 Examiner's Answer, issued July 21, 2016.
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Analysis
A.
The Examiner rejects Appellants' claims 1, 2, 5-11, 17, and 22 under
35 U.S.C. § 112, first paragraph, as failing to be sufficiently supported by a
written description of calculations, algorithms, or flowcharts required to
perform the functions recited. Appellants' claim 1 recites:
A device implantable or mountable to a body for
determining a relative orientation of the device with respect to
the body, comprising:
a three-dimensional orientation detection unit adapted to
measure orientation data in a reference system of the orientation
detection unit; and
a control unit adapted to determine the relative
orientation of the device with respect to the body by
determining a transformation relation between a body reference
system and the reference system of the orientation detection
unit by at least one predetermined reference condition defined
in the body reference system and the measured orientation data;
wherein the at least one predetermined reference
condition comprises one of a reference posture and a reference
posture range;
the reference posture and the reference posture range are
defined in the body reference system having at least one
predetermined characteristic;
the at least one predetermined characteristic includes at
least one of a prevalence level and a physical activity level; and
the prevalence level is associated with a probability that
the body is in a particular posture.
(App. Br. 30, Claims App'x.) Claims 2, 5-11, 17, and 22 depend from claim
I. (See App. Br. 3 30-34.)
3 Appeal Brief, filed May 25, 2016.
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Claim 1 is drawn to a device for determining the relative orientation
of the device with respect to the body. The device comprises a three-
dimensional orientation unit for measuring orientation data and a control
unit, which determines the relative orientation of the device with respect to
the body. To determine the relative orientation, the control unit determines a
"transformation relation" between a body reference system and the reference
system of the orientation detection unit "by at least one predetermined
reference condition defined in the body reference system and the measured
orientation data." Claim 1 requires, further, that the "predetermined
reference condition" comprises one of a "reference posture" and a "reference
posture range," and that the "reference posture" and the "reference posture
range" are defined in the body reference system as "having at least one
predetermined characteristic." Furthermore, the "predetermined
characteristic" includes at least one of a "prevalence level" and a "physical
activity level" and the "prevalence level" is associated with a probability that
the body is in a particular posture. (See App. Br. 30, Claims App'x.) Thus,
claim 1 recites a device with an orientation detection unit and a control unit
defined by a function, limited by a series of associations between conditions,
characteristics, and measurements.
The test for written description under 35 U.S.C. § 112, first paragraph,
"is whether the disclosure of the application relied upon reasonably conveys
to those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date." Ariad Pharms., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010).
Even if a claim is supported by the specification, the language
of the specification, to the extent possible, must describe the
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claimed invention so that one skilled in the art can recognize
what is claimed. The appearance of mere indistinct words in a
specification or a claim, even an original claim, does not
necessarily satisfy that requirement.
Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 968 (Fed. Cir. 2002).
The Examiner rejects claim 1, finding that the Specification discusses
the concepts recited in claim 1 without providing steps specifying the nature
of the "transformation relation" determined by the control unit or how one
would arrive at it. (See Ans. 3--4.) The Examiner also finds that the
Specification fails to describe using the "transformation relation" with the
measured orientation data to determine the relative orientation of the device
within the body. (See id.) Furthermore, the Examiner finds that the
Specification does not make the distinction between the measurements used
in determining the "transformation relation" and the measurements used in
determining the "relative orientation of the device." (See id.)
Appellants point to portions of the Specification for description of the
asserted steps. (See App. Br. 10-11, citing Spec. 4:1-16.) The first portion
cited merely reiterates the claim language. (See Spec. 4:5-7 (e.g., "the
device comprises a control unit in order to determine the orientation of the
device relative to the body by means of the measured orientation data and at
least one predetermined reference condition defined in a body reference
system.") The cited portion continues by discussing the role of a "reference
condition," wherein
in a most preferred embodiment, the orientation detection unit
measures orientation data in its reference system without any
condition or assumption. The control unit may apply the at least
one reference condition defined in the body reference system to
the measured orientation data and identify or calculate a first
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and a second axis of the body reference system in the measured
orientation data by means of the reference condition. Thus, the
control unit can determine the orientation of the device relative
to the body by determining a transformation relation between
the body reference system and the reference system of the
orientation detection unit by means of the reference condition
and the measured orientation data.
(Spec. 4:7-16 (emphasis added).) According to Appellants, this portion
shows that an ordinarily skilled artisan would have known the steps of (i)
measuring orientation data, (ii) defining a predetermined reference condition
defined in a body reference system, (iii) identifying or calculating a first and
a second axis of the body reference system, and (iv) determining a
transformation relation between the body reference system and the reference
system of the orientation detection unit by means of a reference condition
and the measured orientation data. (See App. Br. 11; see Reply Br. 4 3.) We
are not persuaded that this portion of the Specification describes claim 1
sufficiently.
The portion of the Specification cited by Appellants on page four does
not describe the function required to "apply" a reference condition, how they
identified or calculated axis "by means of the reference condition," or
determined a transformation relation "by means of the reference condition."
(Spec. 4:7-16.) The terms "apply" and "by means of' are not defined as
specific actions or calculations. It is unclear, and the Specification does not
sufficiently describe, how Appellants "appl[ied]" a reference condition or
determined a transformation "by means of' a reference condition.
4 Reply Brief filed September 21, 2016.
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Appellants argue that one of ordinary skill in the art would have
concluded that the inventors invented the claimed subject matter and also
would have known how to program a computer to perform the necessary
steps. (See App. Br. 11; see Reply Br. 3.) We are unpersuaded because the
Specification does not describe the necessary calculations, algorithms, or
steps and Appellants fail to cite other evidence in support. See In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974) ("Attorney's argument in a
brief cannot take the place of evidence.").
Appellants also cite to the disclosure in the Specification that "it may
be assumed that the origins of both coordinate systems coincide. In this case,
a translation from one coordinate system to the other will refer to a rotation."
(Spec. 5:8-10; see App. Br. 11.) Appellants cite further to the "worked out
examples" on pages 12-14 of their Specification. (See App. Br. 11-13.)
According to Appellants, the at least one predetermined reference condition
defined in the body reference system is described at page 12, lines 20-31.
(See id.) Appellants argue that "in the first step, using the predefined
reference condition for upright posture with b-coordinates (0, 1,0) having
highest prevalence and activity level, the cluster of measured orientation
data corresponding to the upright position is identified." (App. Br. 12.)
Appellants continue by discussing transformations in the other two
remaining dimensions. (See id.)
We are not persuaded that pages 12-14 of the Specification provide a
sufficient written description of the device recited in claim 1 because
Appellants do not explain how a transformation relation is determined "by"
at least one predetermined reference condition, as required. Neither
Appellants' argument nor pages 12-14 of the Specification describe what
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steps Appellants followed to determine a transformation relation "by at least
one predetermined reference condition." The Specification states:
Considering now the reference condition, a unique cluster of
high activity is identified as upright posture. The data may then
be transformed such that the cluster of high activity is aligned
with the axis of the b-system (xb, Yb, zb) corresponding to the
upright posture, in the example shown Yb·
(Spec. 13:5-8.) Although this portion of the Specification refers to a
"reference condition" it does not describe that Appellants performed any
particular calculation or algorithm to achieve a transformation relation. The
Specification merely states that the "reference condition" is "consider[ ed]."
Appellants' Specification refers to rotating points to align them and to
achieve transformation of the orientation data of the device into that of the
body, as depicted in Figure 5. (See Spec. 13-14.) Appellants do not
explain, though, how the "predetermined reference condition" is part of this
final result. Accordingly, we are not persuaded that the Examiner erred in
determining that Appellants' Specification does not provide the steps
specifying what the nature of the resultant transformation relation is or how
an ordinarily skilled artisan would arrive at it. (See Ans. 34--38.) We agree
with the Examiner that ordinarily skilled artisans would not have understood
from the Specification that the inventors were in possession of a device as
claimed for determining a relative orientation of the device with respect to
the body.
Appellants argue that the Manual for Patent Examining Procedure
("MPEP") states that if a skilled artisan would know how to program a
computer to perform the necessary steps to achieve the claimed invention
and the inventor was in possession of the knowledge, the written description
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requirement would be satisfied. (See App. Br. 10, quoting MPEP
§ 2161.01.) We are not persuaded that Appellants' Specification indicates
that the inventors were in possession of a device that relies on a "reference
condition" because the necessary calculations, algorithms, or steps are not
described sufficiently. Absent such a description, Appellants' attorney
argument fails to persuade us the ordinarily skilled person would know how
to program the device and its control and detection units to carry out the
functionalities recited in the claim. In short, Appellants' argument fails to
persuade us that the Examiner erred.
Accordingly, we are not persuaded that the Examiner erred in
rejecting claims 1, 2, 5-11, 17, and 22 under 35 U.S.C. § 112, first
paragraph.
B.
The Examiner also rejects claims 13 and 23 as not being supported by
a sufficient written description. (See Ans. 4--5.) Claim 13 recites:
A system for determining an orientation of a device
relative to a body, comprising:
a device configured to be implanted or attached to the
body, the device having a three-dimensional accelerometer
configured to measure orientation data in a reference system of
the three-dimensional accelerometer, the device including a
device transceiver configured to wirelessly transmit the
orientation data; and
a control processor connected with a control transceiver
to wirelessly receive the orientation data transmitted by the
device transceiver, the control processor being configured to:
determine a transformation relation between a body
reference system and the reference system of the three-
dimensional accelerometer when the body is in a reference
posture;
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select sampling points with distances therebetween, the
distances based on a rate of posture changes;
using the sampling points, determine an orientation in the
body reference system based on the received orientation data
and the determined transformed relationship; and
from the determined orientation in the body reference
system, determine a current posture.
(App. Br. 31-32, Claims App'x.) Claim 23 depends on claim 13 and
includes further limitations on the configuration of the control processor.
The Examiner determines that although the Specification discloses
maximal spatial distances that can be set to filter out rapidly changing
positions, there is no description of how Appellants "select sampling points
with distances therebetween, the distances based on a rate of posture
changes" to determine an orientation of a device relative to a body, as
recited in claim 13. (See Ans. 4--5.)
We agree with the Examiner. Appellants point to page 13, lines 11-
18, and page 16, lines 12-14, of the Specification, but these passages
provide only what Appellants characterize as the "non-limiting example[s]"
of minimal average distance, minimal median distance, maximal spatial
distance, and small spatial distance between points. (See App. Br. 13-14.)
These portions of the Specification do not sufficiently describe the steps
Appellants used to arrive at these determinations.
Appellants also point to page 6, lines 9-22, of the Specification,
which discusses performing cluster analysis, with the example of a cluster
being defined by a maximal distance between data points. (See App. Br.
14.) Appellants do not explain how defining a cluster describes selecting the
distance between sampling points or by what determinations the distance is
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set. (See Ans. 38-39.) The portions of the Specification cited by the
Examiner do not persuade us that this element is sufficiently described.
Accordingly, we are not persuaded that the Examiner erred in
rejecting claims 13 and 23 under 35 U.S.C. § 112, first paragraph.
C.
The Examiner rejects claims 14, 18, 24, and 26-28 as lacking
sufficient written description under 35 U.S.C. § 112, first paragraph. Claim
14 recites:
A method for determining an orientation of a body
mounted or implanted device relative to a body, for determining
a current posture, for use with taking a measurement, or for use
with generating an alarm, the method comprising:
obtaining orientation data measured with a three-
dimensional accelerometer in a reference system of the three-
dimensional accelerometer; and
determining, with an orientation detection device, the
orientation of the body mounted or implanted device relative to
the body by determining a transformation relation between a
body reference system and the reference system of the three-
dimensional accelerometer when the body is in a predefined
reference posture in the body reference system;
wherein the transformation relation is determined based
on a prevalence level which comprises a probability that the
body is in a particular posture.
(App. Br. 32, Claims App'x.) Claims 18, 24, and 26-28 depend, ultimately
from claim 14. (See App. Br. 32-35, Claims App'x.)
The Examiner finds that the steps recited in claim 14 directed to
obtaining accelerometer data and determining an orientation of the device
are not sufficient for "determining a current posture" or for "use with
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generating an alarm." (See Ans. 6 and 40.) The Examiner finds that more
steps would be required to perform these methods and that, alternatively, no
algorithm is presented in the Specification to show otherwise. (See Ans. 40.)
Appellants argue that the Specification describes obtaining orientation
data and a two-rotation transformation. (See App. Br. 15 and Reply Br. 5---6,
citing Spec. 5: 17---6:3 and pages 12-14.)
We are not persuaded by Appellants' argument at least because none
of the portions of the Specification cited refer to generating an alarm.
Although Appellants cite to discussion of an alarm in the Specification (see
Spec. 10-11 ), it is directed to using an alarm in a patient monitoring system,
not generating an alarm.
Accordingly, we are not persuaded that the Examiner erred in
rejecting claims 14, 18, 24, and 26-28 under 35 U.S.C. § 112, first
paragraph.
D.
The Examiner rejects claims 18 and 26-28 as lacking sufficient
written description under 35 U.S.C. § 112, first paragraph, under an
additional basis. (See Ans. 6-7.) Claim 18 recites:
The method of claim 14, further comprising:
at intervals, determining an orientation in the body
reference system using sampled points in the obtained
orientation data and the determined transformed relationship,
wherein distances between the sampled points are selected
based on a rate of posture changes; and
from the determined orientation of the body mounted or
implanted device relative to the body, determining the current
posture.
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(App. Br. 32-33, Claims App'x.) Claims 26-28 depend from claim 18.
(See App. Br. 35, Claims App'x.)
The Examiner finds that the Specification does not provide a
sufficient written description of the claim limitation "wherein distances
between the sampled points are selected based on a rate of posture changes."
(See Ans. 6.) The Examiner acknowledges that the Specification discloses
that maximal spatial distance can be set to filter out rapidly changing
postures, but finds that no algorithm or calculation is provided to show how
distances are determined based on a rate of posture changes. (See Ans. 6-7.)
Appellants argue that in a non-limiting example the Specification
teaches at least the use of minimal average distance between points, a
minimal median distance between points, and a maximal spatial distance
between points. (See App. Br. 16, citing Spec. 13:11-18.)
We are not persuaded that this portion of the Specification provides
sufficient written description because a non-limiting example of choosing a
certain distance does not necessarily describe how Appellants select a
distance between sampling points based on a rate of posture change under
other circumstances. Appellants do not explain how one of ordinary skill in
the art would have understood the calculations or algorithms for choosing
the distance from this example.
Appellants also point to a portion of the Specification that describes
statistical manipulations on the measured orientation data for a
predetermined time interval, arguing that this portion demonstrates how an
ordinarily skilled artisan would know how to program a computer to perform
the necessary steps of claim 18. (See App. Br. 16, citing Spec. 6:9-22.)
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This portion of the Specification does not persuade us. Appellants do
not explain how the statistical manipulations performed on time data
indicates a method that involves selecting distances between sampled points.
Appellants' argument that one of ordinary skill in the art would have known
how to program a computer to do so is unsupported by evidence.
Accordingly, we are not persuaded that the Examiner erred in
rejecting claims 18 and 26-28 under 35 U.S.C. § 112, first paragraph.
E.
The Examiner rejects claims 19, 21, and 25 as lacking sufficient
written description under 35 U.S.C. § 112, first paragraph. (See Ans. 7-8.)
Claim 19 recites:
A system, comprising:
a device configured to be implanted or attached to a
body, the device including an accelerometer and one or more
processors configured to:
define a reference condition including a reference
posture, a prevalence level, and a physical activity level;
record accelerometer data; and
based on the reference condition and the recorded
accelerometer data, determine an orientation of the device
relative to the body;
wherein
the prevalence level comprises a probability that the body
is in a particular posture.
(App. Br. 33.) Claims 21 and 25 depend on claim 19. (App. Br. 33 and 35,
Claims App'x.)
The Examiner finds that the Specification does not describe defining a
"reference condition including a reference posture, a prevalence level, and a
physical activity level" to arrive at an orientation of the device relative to the
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body. (See Ans. 7-8 and 42.) The Examiner explains further that there is no
explanation in the Specification of how a reference posture, a prevalence
level, and a physical activity are combined to achieve a metric and that,
further, there is no explanation of how metrics are used to determine an
orientation of the device relative to the body. (See Ans. 42--44.)
Appellants cite to page 5, line 17, through page 6, line 3, of the
Specification for written description support of claim 19. (See App. Br. 17-
18.) According to Appellants, this portion teaches the steps recited in claim
19 and demonstrate that one of ordinary skill in the art would know how to
program a computer to perform them. (See id.)
We are not persuaded. The portion of the Specification cited by
Appellants refers to the prevalence of a posture, but does not provide a
description of how Appellants use it to determine an orientation of a device
relative to the body as broadly as recited in claim 19. The portion of the
Specification cited by Appellants provides that "the reference condition
comprises a reference posture or a reference posture range in the body
coordinate system, which has at least one predetermined characteristic."
(Spec. 5: 17-19.) We agree with the Examiner that this portion of the
Specification merely provides definitions and abstract examples, but does
not demonstrate that Appellants were in possession of a device configured to
use a reference condition to determine an orientation of a device relative to
the body, as required in claim 19. (See Ans. 42--43.)
Appellants also cite to a portion of the Specification that states
[t]he reference condition should allow the determination
of a unique relation between the reference system of the
orientation detection unit and the body reference system. Such a
reference condition may relate to a certain activity pattern
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associated with a body posture, a certain prevalence level for a
body posture considering the situation or the physical condition
of the user, the absence or negligible likelihood for certain body
postures (upside down), etc. Preferably, the reference condition
is set according to the measurement circumstances or
application. By defining a reference condition in the body
coordinate system, a relation is defined between the data
measured in the reference system of the orientation detection
unit and the body coordinate system.
(Spec. 4:23-31.) This portion further describes what a reference condition
might be, but fails to describe how Appellants determined an orientation of a
device relative to the body using it. The Specification states that "[b ]y
defining a reference condition in the body coordinate system ... " a relation
between the orientation detection unit and the body coordinate system may
be defined. (Id. at 29-31.) The calculations or algorithms required to do so
are not described. Appellants do not provide an explanation to the contrary,
arguing only that the passage "teaches that one skilled in the art would know
how to program a computer to perform the necessary steps to achieve the
claimed function." (App. Br. 18, see also App. Br. 17.) Because the
Specification does not describe these necessary steps, we are not persuaded
that the inventors were in possession of them or that the Examiner erred.
F.
The Examiner rejects claims 26, 27, and 28 under 35 U.S.C. § 112,
first paragraph, determining that the limitations to "evaluating a heart rate of
the body based on the determined current posture" ( claim 26), "evaluating a
respiration rate of the body based on the determined current posture" ( claim
27), and "generating an alarm based on the determined current posture"
( claim 28) are not sufficiently described in the Specification. (See Ans. 8.)
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Appellants argue that examples are provided in the Specification as
description of the limitations in these claims. (See App. Br. 18-19.)
Specifically, Appellants point to page 11, lines 15-1 7, as description of
claim 26, page 18, lines 30-33, as description of claim 27, and page 11, lines
15-1 7, as description of claim 2 8.
We are not persuaded that the Examiner erred because the portions of
the Specification cited by Appellants merely mention the possibility of
evaluating heart and respiration rates or generating an alarm. There is no
explanation of how Appellants achieved a method that reached these results,
for instance what algorithms or steps were undertaken. (See Ans. 44.)
Accordingly, we are not persuaded that the inventors were in possession of
the invention or that the Examiner erred in rejecting claims 19, 21, and 25
under 35 U.S.C. § 112, first paragraph.
G.
The Examiner also entered rejections of Appellants' claims under
35 U.S.C. § 112, second paragraph, as being indefinite. Specifically, the
Examiner rejects claims 1, 2, 5-11, 14, 17, 18, and 22-28, determining that
the limitation of "the at least one predetermined characteristic includes at
least one of a prevalence level and a physical activity level" and the
limitation of "the prevalence level is associated with a probability that the
body is in a particular posture" are inconsistent with each other. (See Ans.
9.) According to the Examiner, the first of these limitations indicates that
the "at least one predetermined characteristic" does not necessarily include a
"prevalence level," but that the second of these limitations indicates the
"prevalence level" must be included. (See id.)
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Appellants argue that the second limitation is definite because it
further defines the prevalence level. (See App. Br. 19.)
We agree with Examiner. If the at least one predetermined
characteristic is a physical activity level, not a prevalence level, it is unclear
what significance the probability that the body is in a particular position has
to the claimed device, even though this is recited, at least under one
reasonable interpretation, as a necessary limitation of the device. If the final
clause of claim 1 is wholly optional ( e.g., because a prevalence level and not
a physical activity level is used), appropriate clarification of the claim
should be made. In re Zietz, 893 F.2d 319,321 (Fed. Cir. 1989).
Accordingly, we are not persuaded that the Examiner erred.
H.
The Examiner also rejects claim 14 as being indefinite under
35 U.S.C. § 112, second paragraph, determining that the enumerated steps
are not connected with each other or the intended result of determining an
orientation, determining a posture, taking a measurement, or generating an
alarm. (See Ans. 10.)
Appellants argue only that
one having ordinary skill in the art would know, for example,
uses of applying a determined orientation of an implanted
device relative to a body and a determined current posture to
taking measurements ( e.g. with the device) and for generating
an alarm (e.g. as to a critical condition of a patient).
(App. Br. 20; see also Reply Br. 8.)
We are not persuaded by this argument because knowing the intended
results of the claimed method is insufficient, on this record, to clarify how
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the recited steps are connected to each other and to the results. Furthermore,
we are not persuaded because of Appellants' failure to cite evidence in
support of this argument.
I.
The Examiner rejects claim 22, and claims 23-25 as being indefinite
under 35 U.S.C. § 112, second paragraph. (See Ans. 10.) Claim 22 recites:
The device of claim 1, wherein the control unit includes
at least one processor configured to:
calculate averages and calculate variances of the
measured orientation data;
based on the calculated averages, detect clusters;
identify an Xb based on the predetermined reference
condition and the detected clusters;
generate a list of clustered high activity data points based
on the calculated averages and calculated variances; and
identify a Yb based on the generated list of clustered high
activity data points;
wherein the control unit is further adapted to determine
the relative orientation of the device based on the identified Xb
and Yb.
(App. Br. 32-33, Claims App'x.) Claims 23-25 recited similar limitations,
but depend from claims 13, 14, and 19, respectively. (See App. Br. 34--35,
Claims App'x.)
The Examiner determines that the terms "Xb" and "Yb" are not
defined, rendering them indefinite. (See Ans. 10.) In response, Appellants
point to page 15, line 20, through page 17, line 9, and Figures 8-12, of the
Specification as examples of the identities of Xb and Yb. (See App. Br. 20.)
The Examiner notes that these passages are not part of the claim
language of claim 22 and that limitations cannot be imported from the
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Specification. (See Ans. 46.) The Examiner finds, further, that the terms Xb
and Yb are only reference characters in claim 22, without any ascertainable
meaning relative to the other limitations of the claim. (See Ans. 46.)
Appellants state that "the features of identifying an Xb and Yb ... may
be part of' the step of determining a transformation relation is unpersuasive.
(See Ans. 46, quoting App. Br. 20.) We agree with the Examiner that the
language "may be part of' uses hedge words that do not explain how the
claim is definite. Appellants' attempt to clarify their response by stating that
"the features of identifying an Xb and Yb ... are part of' the step of
determining a transformation (Reply Br. 9), but this language provides no
more explanation than "may be a part of." Neither phrase explains the
actual, specific relationship between Xb and Yb and the step of determining a
transformation.
J.
The Examiner enters several rejections under 35 U.S.C. §§ 102 and
103 over the prior art, including Wang, 5 Sheldon, 6 and numerous secondary
references, of claims 1, 2, 5-11, 13, 14, 17-19, 21, and 26-28. (See Ans.
12-31.) The Examiner determines that the claim limitations cited in the
rejections under 35 U.S.C. § 112, first paragraph, do not limit Appellants'
claims under their broadest reasonable interpretation. For example, the
Examiner holds that the language of claim 1 does not require that the
predetermined characteristic, the prevalence level, and the physical activity
5 U.S. Patent Application Publication No. 2007/0118056 Al, published May
24, 2007.
6 U.S. Patent No. 6,044,297, issued March 28, 2000.
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level be calculated values used in a formula to determine a transformation
relation under the broadest reasonable interpretation. (See Ans. 47--49.)
Similarly, the Examiner finds that claim 14 does not require that
determining a transformation relation, based on a prevalence level
comprising a probability, is achieved through any calculation or calculated
value under the broadest reasonable interpretation. (See Ans. 53.)
The Examiner finds that the limitation in claim 19 of determining an
orientation of the device relative to the body and based on the reference
condition and recorded accelerometer data does not mean the reference
condition is a calculated value in a formula or calculation. (See Ans. 53-
54.)
Regarding claim 13, the Examiner concludes that the determination of
a sampling rate is a result-effective variable that could be optimized through
routine experimentation based on the desired computational time and
resources, the nature of the results, such as distances between sample points,
and the desired accuracy. (See Ans. 21 and 56.) When considering the
language of claim 13, though, we agree with the Examiner that the limitation
of "select[ing] sampling points with distances there between, the distances
based on a rate of posture changes" is not supported by a sufficient written
description in Appellants' Specification. (See Ans. 4--5.)
Because we agree that each of independent claims 1, 13, 14, and 19
lacks sufficient written description in Appellants' Specification due to lack
of explanation of the actual device, system, or method claimed, we are
unable to discern if the prior art is within the scope of Appellants' claims. In
light of the rejections for lack of written description and indefiniteness as
addressed above, substantial confusion exists in the record as to the proper
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interpretation and scope of the appealed claims. Presently, the claims on
appeal do not adequately and clearly reflect what the disclosed invention is.
Rather than speculate further about how the present claims compare to the
devices and methods disclosed in the cited prior art, we reverse proforma
the rejections under§§ 102 and 103 at this time. Cf In re Steele, 305 F.2d
859, 863 (CCPA 1962) ("We believe that this confusion arose and has
continued because the claims do not particularly point out and distinctly
claim the invention as required by 35 U.S.C. § 112."). This proforma
reversal does not limit the citation of the same ( or different) prior art against
the claims in the future, should the rejections under§ 112 be overcome
through continued prosecution. As in Steele, ''[o]ur decision is not to be
construed as meaning that we consider the claims on appeal to be patentable
[ over the prior art] as presently drawn." id.
Conclusion
Upon consideration of the record and for the reasons given, the
rejections of claims 1, 2, 5-11, 13, 14, 17-19, and 21-28 under 35 U.S.C.
§ 112, first and second paragraphs, are sustained.
Therefore, we affirm the decision of the Examiner.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.
AFFIRMED
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