INDIANA UNIVERSITY RESEARCH & TECHNOLOGY CORPORATION

Patent Trials and Appeals Board

Feb 1, 2022

2021004641 (P.T.A.B. Feb. 1, 2022)

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. 15/490,230 04/18/2017 Peng-Sheng Chen IURTC-2015-058-08-US 4097 43556 7590 02/01/2022 Faegre Drinker Biddle & Reath LLP (IU) PATENT DOCKETING - INTELLECTUAL PROPERTY 300 NORTH MERIDIAN STREET SUITE 2500 INDIANAPOLIS, IN 46204 EXAMINER CERIONI, DANIEL LEE ART UNIT PAPER NUMBER 3791 NOTIFICATION DATE DELIVERY MODE 02/01/2022 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): IU@faegredrinker.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PENG-SHENG CHEN Appeal 2021-004641 Application 15/490,230 Technology Center 3700 Before DANIEL S. SONG, STEFAN STAICOVICI, and BRETT C. MARTIN, Administrative Patent Judges. MARTIN, 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 to reject claims 1-3, 6, 12, and 34. Claims 13, 14, 17, and 21 were withdrawn and claims 4, 5, 7-11, 15, 16, 18-20, and 22-33 were cancelled during prosecution. Final Act. 1; Claims App’x. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Indiana University Research and Technology Corp. Appeal Br. 3. Appeal 2021-004641 Application 15/490,230 2 CLAIMED SUBJECT MATTER The claims are directed to “systems and methods for non-invasive monitoring and/or controlling nerve activity using cutaneous and/or subcutaneous electrodes.” Spec. ¶ 3. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A system for monitoring nerve activity in a subject, the system comprising: a plurality of electrodes configured for placement at locations proximate to a subject's skin; a signal detector configured to sample electrical signals detected by the plurality of electrodes; and a signal processor configured to: receive signal data corresponding to the electrical signals sampled by the signal detector; apply a filter to the received signal data to generate filtered signal data, the filter configured to attenuate at least signals having frequencies that correspond to heart muscle activity during a heartbeat, wherein the filter includes a high-pass filter with a cutoff frequency from 500 Hz to 700 Hz; assemble, using the filtered signal data, a waveform corresponding to a skin nerve activity; estimate a sympathetic nerve activity using the waveform corresponding to the skin nerve activity and a predetermined correlation, wherein the predetermined correlation relates skin nerve activity and sympathetic nerve activity; generate a report indicative of the estimated sympathetic nerve activity. Appeal 2021-004641 Application 15/490,230 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Chen WO 2014/089549 A1 June 12, 2014 McCaughan US 2014/0316297 A1 Oct. 23, 2014 Miyaho US 2017/0063458 A1 Mar. 2, 2017 REJECTIONS Claims 1-3, 6, 12, and 34 stand rejected under 35 U.S.C. § 103 as being unpatentable over Chen and Miyaho. Final Act. 6. Claims 1-3, 6, 12, and 34 stand rejected under 35 U.S.C. § 103 as being unpatentable over Chen, Miyaho, and McCaughan. Final Act. 9. OPINION Obviousness Chen The Examiner admits that Chen does not teach a high-pass filter with a cutoff frequency from 500 Hz to 700 Hz. Final Act. 7. The Examiner points out that Chen teaches a cutoff of 100 Hz to 150 Hz and asserts “the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art.’” Id. (citing In re Wertheim, 541 F.2d 257 (CCPA 1976). We fail to see how a cutoff of 500 to 700 overlaps with a range of 100 to 150. The Examiner appears to assert that because a system with a cutoff at 150 would likewise also still be cutoff at 500 to 700 means that the ranges overlap. This is not the purpose of allowing for overlapping ranges to obviate. Overlapping ranges, properly understood would be something like a range of 100-550 obviating a range of 500-700. In such a case, the upper end of one range overlaps with the lower end. The rationale of a case like Wertheim is such that the Examiner need not find the entire range of a claim Appeal 2021-004641 Application 15/490,230 4 in order for it to be obvious. Here, there is also the difference between a cutoff point and a range. The claims require a cutoff that is more than three times the cutoff point disclosed in Chen. A cutoff point does not create an open-ended range such that anything above the upper end of one cutoff range is obvious because both systems would be cutoff according to those criteria. The salient feature of a cutoff point is when the cutoff occurs. We do not agree that one of skill in the art would consider a cutoff point of at least three times greater than Chen to be obvious. As Appellant also points out, “the Examiner’s answer for the first time asserts that an important feature of the claimed embodiments - the high-pass filter cutoff frequency from 500 Hz to 700 Hz - ‘does not appear to be critical.” Reply Br. 1 (citing Ans. 4). As Appellant points out, however, the range correlates to specific signals related to muscle activity. Reply Br. 2. Appellant points to the Specification, which states that “a cutoff at 700 Hz would be more specific to nerve activity, as the muscle noise does not generate signals with frequencies above 500Hz.” Id. (citing Spec. ¶ 51). Accordingly, the claimed range coincides with specific thresholds that correlate to certain muscle activity signals not recognized by Chen. The Examiner asserts that the Specification discloses cutoff frequencies in the range of 100 Hz to 1kHz and 150 Hz to 700 Hz. Ans. 5. Although this may be true, this does not make the claimed range less critical. As noted above, the bounds of 500 Hz and 700 Hz are specifically tied to particular signals associated with certain muscle activity. Appellant has not merely arbitrarily selected a range within the broader range, but has chosen an embodiment that achieves specific results tied to certain muscle activity. Other disclosed ranges would not discriminate in the same way as the specifically claimed range. Simply because an Appellant discloses multiple Appeal 2021-004641 Application 15/490,230 5 ranges or broader and narrower ranges does not necessarily mean that any specifically claimed range within the broad range is less critical. McCaughan The Examiner also rejects the claims as obvious over Chen, Miyaho, and McCaughan, admitting that neither Chen nor Miyaho teaches the claimed range of 500 Hz to 700 Hz, but asserting that McCaughan teaches a cutoff at 500 Hz that is used for DC bias removal. Final Act. 10. Appellant, however, points out that in McCaughan “the DC bias is removed to eliminate a specific safety issue associated with a particular AD5933 circuit” and that “Chen does not include and has no reason to include a 12 Bit Impedance Converter, Network Analyzer, such as the AD5933.” Appeal Br. 8. We agree with Appellant that “one skilled in the art would have no reason to apply the teachings of McCaughan to Chen at least because Chen does not include the AD5933 circuit in the system for monitoring nerve activity, and does not recognize the DC bias associated with the inclusion of that circuit. The Examiner also asserts that “[t]he removal of DC bias is still an advantage for the system disclosed in Chen” because “[a]ny electronic device that has a DC power source with an AC signal…is going to have a DC bias.” We agree with Appellant, however, that Chen already teaches a high-pass filter in the range of 100 Hz to 150 Hz and so there is no reason to move the filter range to 500 Hz as in McCaughan to solve a problem that is specific to McCaughan and which is not present in Chen. Appeal Br. 11. Additionally, the specific value of 500 Hz disclosed in McCaughan deals with a specific issue related to the AD5933 circuit and the Examiner has shown no evidence that a completely different device not having the AD5933 circuit would benefit from the specific cutoff at 500 Hz. Thus, the Appeal 2021-004641 Application 15/490,230 6 Examiner has expressed no adequate reason with rational underpinning for using the same cutoff as disclosed in McCaughan other than that it is the same value found in the claims. Thus, without an articulated rationale based on rational underpinning for modifying Chen, according to McCaughan, the Examiner’s rejection appears to be the result of hindsight analysis. We also agree with Appellant that the “the DC offset voltage is specifically disclosed in a context exclusive to ECG measurements” and is “unrelated to monitoring nerve activity.” Id. We further agree that “[o]ne skilled in the art, and having knowledge of Chen and McCaughan, but no knowledge of the present application, would have no reason to modify Chen in view of the teachings of McCaughan.” Id. Accordingly, we do not sustain the Examiner’s rejection over Chen, Miyaho, and McCaughan. CONCLUSION The Examiner’s rejections are reversed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-3, 6, 12, 34 103 Chen, Miyaho 1-3, 6, 12, 34 1-3, 6, 12, 34 103 Chen, Miyaho, McCaughan 1-3, 6, 12, 34 Overall Outcome 1-3, 6, 12, 34 REVERSED