KONINKLIJKE PHILIPS N.V.

Patent Trials and Appeals Board

Dec 2, 2021

2021001875 (P.T.A.B. Dec. 2, 2021)

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.
14/413,424 01/08/2015 Stefan Benjamin Reuter 2012P00339WOUS 7449
24737 7590 12/02/2021
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
1600 Summer Street
5th Floor
Stamford, CT 06905
EXAMINER
GHAND, JENNIFER LEIGH-STEWAR
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
12/02/2021 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):
katelyn.mulroy@philips.com
marianne.fox@philips.com
patti.demichele@Philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEFAN BENJAMIN REUTER, MARKUS WOHLSCHLAGER,
and HANSJOERG GEYWITZ
Appeal 2021-001875
Application 14/413,424
Technology Center 3700

Before JENNIFER D. BAHR, CHARLES N. GREENHUT,
and SUSAN L. C. MITCHELL, Administrative Patent Judges.

BAHR, 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, 5, 7–9, 11, 13–15, 18, 21, 22, and 24.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART and enter NEW GROUNDS OF REJECTION.

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
KӦNINKLIJKE PHILIPS N.V. Appeal Br. iii.
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CLAIMED SUBJECT MATTER
Appellant’s invention is directed to “a method for determining at least
one maternal physiological parameter out of a heart rate and a breathing rate
by using a fetal monitoring system, to a fetal monitoring system, and to a
sensor unit for use in a fetal monitoring system.” Spec. 1:2–4. Of the
claims on appeal, claims 1, 13, 14, and 24 are independent. Claim 1,
reproduced below, is illustrative of the claimed subject matter.
1. A method, comprising:
with a first transducer unit attached to a first location of
an abdomen of an expecting mother, generating one or more
signals corresponding to a first vital sign of the mother,
including:
detecting a pulsation of a dermal blood vessel to
derive a maternal heart rate,
converting, by a first acceleration sensor,
mechanical movement of an abdomen of the mother into
a first acceleration signal, and
processing, by a first signal processing unit, the
maternal heart rate and the acceleration signal to provide
a first measurement of the first vital sign of the expecting
mother;
with a second transducer unit attached to a second
location of the abdomen of the expecting mother, generating
two or more signals corresponding to the first vital sign or a
second vital sign of the mother and at least one vital sign of a
fetus, including:
detecting, by an ultrasonic sensor, a fetal heart
rate,
converting, by a second acceleration sensor,
mechanical movement of maternal abdomen movement
into a second acceleration signal, and
processing, by a second signal processing unit, the
fetal heart rate and the second acceleration signal to
provide a second measurement of the first vital sign or a
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first measurement of the second vital sign of the mother
and the at least one vital sign of the fetus;
with a signal monitoring unit including at least one
processor,
receiving the generated the vital signs of the
mother and the at least one vital sign of the fetus from the
first and second transducer units;
selecting at least one of the first vital sign or the
second vital sign of the mother and the at least one of the
vital sign of the fetus;
computing a difference between a frequency of the
selected vital sign of the mother and the selected vital
sign of the fetus;
comparing the computed difference to a
predetermined threshold; and
determining an accuracy of the selected at least
one vital sign of the mother and the at least one vital sign
of the fetus when the computed difference is greater than
the predetermined threshold.
Appeal Br. 15–16 (Claims App.).
REJECTIONS2
Claims 8 and 14 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.

2 Appellant contends that the Examiner “improperly failed to enter” the
amendment, submitted March 12, 2020, subsequent to the Final Office
Action, canceling claims 8 and 14. Appeal Br. 13. To the extent that
Appellant may be seeking the Board’s review of this decision, we note that
this is a matter reviewable by petition under 37 C.F.R. § 1.181, and is not
within the jurisdiction of the Board. See Manual of Patent Examining
Procedure (“MPEP”) § 1201 (9th Ed., Rev. 10.2019 (June 2020)) (stating that
the Board will not ordinarily hear a question that is reviewable by petition);
In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002) (stating that there are many
kinds of decisions made by examiners that are not appealable to the Board
when they are not directly connected with the merits of issues involving
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Claims 1, 5, 7–9, 11, 13–15, 18, 21, 22, and 24 stand rejected under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.3
Claims 1, 5, 7–9, 11, 13–15, 18, 21, 22, and 24 stand rejected under
35 U.S.C. § 112, first paragraph, as failing to comply with the enablement
requirement.4
OPINION
Claims 1, 15, 18, 21, and 22
Written Description
The fundamental factual inquiry for ascertaining compliance with the
written description requirement 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. See Ariad
Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
banc). “This inquiry . . . is a question of fact,” and “the level of detail

rejections of claims) (citing In re Hengehold, 440 F.2d 1395, 1403 (CCPA
1971))); In re Mindick, 371 F.2d 892, 894 (CCPA 1967) (holding that the
refusal of an examiner to enter an amendment of claims is reviewable by
petition under 37 C.F.R. § 1.181, and not by appeal to the Board)); see also
37 C.F.R. § 41.37(c)(2). Accordingly, claims 8 and 14 remain pending and
rejected.
3 Although not included in the statement of the rejection on page 3 of the
Answer (“Ans.”) or page 2 of the Final Office Action (“Final Act.”), the
Examiner includes claim 9 in this rejection based on its dependence from
claim 24. See Ans. 7; Final Act. 6.
4 Although not included in the statement of the rejection on page 7 of the
Answer or page 6 of the Final Office Action, the Examiner includes claim 9
in this rejection based on its dependence from claim 24. See Ans. 12; Final
Act. 11.
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required to satisfy the written description requirement varies depending on
the nature and scope of the claims and on the complexity and predictability
of the relevant technology.” Id. “[T]he specification must describe an
invention understandable to that skilled artisan and show that the inventor
actually invented the invention claimed.” Id. In addition, the specification
must “demonstrate that the patentee possessed the full scope of the invention
recited in [the] claim.” LizardTech, Inc. v. Earth Resource Mapping, Inc.,
424 F.3d 1336, 1345 (Fed. Cir. 2005).
The Examiner finds that the disclosure of the present application does
not reasonably convey that Appellant had possession of the invention now
recited in claim 1, particularly the steps of
processing the maternal heart rate and the acceleration signal to
provide a first measurement of the first vital sign of the
expecting mother and processing the fetal heart rate and the
second acceleration signal to provide a second measurement of
the first vital signal or a first measurement of the second vital
[sign] of the mother and the at least one vital sign of the fetus.
Ans. 3.
According to the Examiner, the aforementioned limitations of claim 1
cover
any method/process/step(s) that processes the maternal heart
rate and the acceleration signal to provide a first measurement
of the first vital sign of the expecting mother and processes the
fetal heart rate and the second acceleration signal to provide a
second measurement of the first vital [sign] or a first
measurement of the second vital [sign] of the mother and the at
least one vital sign of the fetus.
Ans. 3–4. The Examiner finds, however, that Appellant’s Specification fails
to disclose any method steps carried out by the transducer units of
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Appellant’s invention to process the maternal heart rate derived from the
detected pulsation of a dermal blood vessel and the first acceleration signal
to provide a first measurement of a first vital sign of the mother and to
process the fetal heart rate from the ultrasonic sensor and the second
acceleration signal to provide a second measurement of the first vital sign of
the mother or a first measurement of a second vital sign of the mother and
the at least one vital sign of the fetus. Ans. 4. Further, the Examiner finds
that Appellant’s Specification does not disclose “what is evaluated within
the acceleration signals and heart rate signals to provide the measurements
of the first vital sign of the mother and/or second vital sign of the mother and
vital sign of the fetus.” Ans. 4. The Examiner points out that paragraph 42
of the Specification “states that further explanation for evaluating the
acceleration signal regarding at least one out of frequency, amplitude and
signal pattern to derive a processed acceleration signal corresponding to at
least one maternal parameter (heart rate or breathing rate) will be provided,”
but the Specification “does not provide any further explanation.” Ans. 4.
The Examiner characterizes this disclosure as “merely an outline of a desired
solution without actually disclosing how to achieve it.” Ans. 4. Citing
MPEP § 2163(II)(A)(3)(a), the Examiner states that “[d]isclosure of function
alone is little more than a wish for possession” and that “[t]he written
description requirement is not satisfied by merely outlining the goals or
results one hopes to achieve with the invention.” Ans. 4–5.
Appellant argues that Appellant need not “provide full, exhaustive,
detailed support for items that are known to a person of ordinary skill in the
art.” Appeal Br. 3. Appellant also submits that the Specification describes
that “(1) the acceleration signals are processed by converting mechanical
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acceleration at the maternal abdomen into a corresponding acceleration
signal; (2) at least one of a frequency, amplitude, and signal pattern of the
acceleration signal is evaluated; and (3) a cross-channel verification may be
employed . . . .” Appeal Br. 4. Appellant also cites several passages in the
Specification as purportedly describing “how the acceleration signals are
processed, what features are identified, and how cross-channel verification is
employed with respect to maternal and fetal physiological parameters.”
Appeal Br. 8. Thus, Appellant contends that the disclosure of the present
application “reasonably conveys to those skilled in the art that the inventor
had possession of the claimed subject matter as of the filing date,” thereby
fulfilling the written description requirement. Appeal Br. 8–9.
The passages that Appellant cites disclose signal processing units to
evaluate the acceleration signals regarding at least one out of frequency,
amplitude, and signal pattern to derive an acceleration signal corresponding
to at least one maternal physiological parameter. See, e.g., Spec. 2:28–29;
3:1–3; 4:8–15; 7:21–24. However, contrary to Appellant’s assertion, the
Specification does not provide any details as to how the acceleration signals
are processed in regard to frequency, amplitude, or signal pattern.
Furthermore, Appellant’s Specification does not describe a signal processing
unit for processing the maternal heart rate from the dermal blood vessel
pulsation signal and the acceleration signal to provide a measurement of the
first vital sign of the mother. To the contrary, the Specification suggests that
each of the transducer signals (from tocodynamometer 24 and/or optical
sensor 26) and acceleration signals (from accelerations sensors 30 and 32) is
independently processed by signal processing unit(s) 34 and sent, as signals
MHR1, MHR2, and MHR3, to signal monitoring unit 36 for selection of the
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best signal by signal selector unit 38 and for cross-channel verification with
the processed fetal heart rate signal from ultrasonic Doppler sensor 28 by
cross-channel verification unit 42. Spec. 7:17–9:6; Fig. 2.5
The passages of the Specification that Appellant cites discussing the
cross-channel verification unit are not pertinent to features of claim 1 that
the Examiner finds lack written description support—namely, the processing
steps of claim 1 performed with the first transducer unit and the second
transducer unit. See Appeal Br. 5 (citing Spec. 3:23–30), 7–8 (citing
Spec. 8:3–13, 8:21–9:6). These passages relate to a different feature recited
in claim 1—namely, steps performed with a signal monitoring unit. See
Spec. 7:26–27 (disclosing that “transducer units 16, 18 provide processed
signals to a signal monitoring unit 36 via cabling or, alternatively, via a
wireless connection”); Fig. 2 (illustrating signal monitoring unit 36 as
distinct from first transducer unit 16 and second transducer 18, in which
processing units 34 for processing acceleration signals, dermal blood vessel
pulsation signals from an optical sensor, and fetal heart rate signals from an
ultrasonic Doppler sensor are included).
In short, Appellant’s claim 1 and Specification, at best, “merely recite
a description of the problem to be solved while claiming all solutions to it,”
leaving the industry to “complete an unfinished invention.” See Ariad, 598
F.3d at 1353. Thus, Appellant’s disclosure fails to convey that, at the time
the present application was filed, Appellant had possession of a method

5 Figure 2 depicts arrows between signal processing unit 34 for processing
the signal from acceleration sensor 30 and signal processing unit 34 for
processing the signal from optical sensor 26, suggesting flow of information
between these two signal processing units, but neither the drawings nor the
Specification elaborates on what such communication might entail.
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including a step, performed by a first processing unit in the first transducer
unit, of processing the maternal heart rate and the first acceleration signal to
provide a first measurement of the first vital sign of the mother, and a step,
performed by a second processing unit in the second transducer unit, of
processing the fetal heart rate and the second acceleration signal to provide a
second measurement of the first vital sign or a first measurement of a second
vital sign of the mother and at least one vital sign of the fetus, as called for
in claim 1.
Appellant submits that the application need not disclose in full,
exhaustive detail items that are known to those of ordinary skill in the art.
Appeal Br. 3. However, Appellant does not provide any evidence showing
that those of ordinary skill in the art would have known, with sufficient
specificity to be able to visualize Appellant’s claimed invention, the details
of the processing performed by processing unit(s) 34 on the dermal blood
vessel pulsation signal from optical sensor 26 and the acceleration signal
from acceleration sensor 30 to provide a measurement of a first vital sign of
the mother or on the fetal heart rate from ultrasonic Doppler sensor 28 and
second acceleration signal from acceleration sensor 32 to provide a second
measurement of the first vital sign or first measurement of a second vital
sign of the mother and at least one vital sign of the fetus.
Moreover, even assuming that those of ordinary skill in the field of
Appellant’s invention would have been aware of algorithms for processing a
dermal blood vessel pulsation signal and an acceleration signal to provide a
measurement of a vital sign of the expecting mother, as claimed, for the
reasons discussed above, Appellant’s Specification does not reasonably
convey that Appellant was in possession of such an algorithm (processing
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unit) for processing the signals generated by the disclosed sensors to provide
such a measurement. “It is not sufficient for purposes of the written
description requirement of § 112 that the disclosure, when combined with
the knowledge in the art, would lead one to speculate as to modifications
that the inventor might have envisioned, but failed to disclose.” Lockwood
v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997).
For the above reasons, Appellant does not apprise us of error in the
Examiner’s finding that the disclosure of the present application does not
reasonably convey that Appellant had possession of the invention now
recited in claim 1, particularly the “processing” steps. Appellant does not
present any separate arguments contesting the rejection of claims 15, 18, 21,
and 22, which depend from claim 1 and, thus, incorporate the limitations of
claim 1 at issue in the rejection, for failing to comply with the written
description requirement. See Appeal Br. 1–9. Thus, claims 15, 18, 21, and
22 fall with claim 1. Accordingly, we sustain the rejection of claims 1, 15,
18, 21, and 22 under 35 U.S.C. § 112, first paragraph, as failing to comply
with the written description requirement.
Enablement
“The enablement requirement [of 35 U.S.C. § 112, first paragraph,]
ensures that the public knowledge is enriched by the patent specification to a
degree at least commensurate with the scope of the claims.” Nat’l Recovery
Techs., Inc. v. Magnetic Separation Sys., Inc., 166 F.3d 1190, 1195–96 (Fed.
Cir. 1999). Accordingly, the specification must provide sufficient teaching
such that one skilled in the art could make and use the full scope of the
invention without undue experimentation. CFMT, Inc. v. Yieldup Int’l
Corp., 349 F.3d 1333, 1338 (Fed. Cir. 2003); Genentech, Inc. v. Novo
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Nordisk A/S, 108 F.3d 1361, 1365 (Fed. Cir. 1997); In re Wands, 858 F.2d
731, 736–37 (Fed. Cir. 1988). “The key word is ‘undue,’ not
‘experimentation.’” Wands, 858 F.2d at 737 (quoting In re Angstadt, 537
F.2d 498, 504 (CCPA 1976)). That is, the specification need only teach
those aspects of the invention that one skilled in the art could not figure out
without undue experimentation. See, e.g., Nat’l Recovery Techs., 166 F.3d
at 1196 (“The scope of enablement . . . is that which is disclosed in the
specification plus the scope of what would be known to one of ordinary skill
in the art without undue experimentation.”); Wands, 858 F.2d at 736–37
(“Enablement is not precluded by the necessity for some experimentation
such as routine screening”). In calling into question the enablement of an
applicant’s disclosure, the examiner has the initial burden of advancing
acceptable reasoning inconsistent with enablement so as to shift the burden
to the applicant to show that one of ordinary skill in the art could have
practiced the claimed invention without undue experimentation. In re
Strahilevitz, 668 F.2d 1229, 1232 (CCPA 1982).
Factors to be considered in determining whether a disclosure would
require undue experimentation include (1) the quantity of experimentation
necessary, (2) the amount of direction or guidance presented, (3) the
presence or absence of working examples, (4) the nature of the invention, (5)
the state of the prior art, (6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth of the claims.
Wands, 858 F.2d at 737. These factors are illustrative; what is relevant to an
enablement determination depends upon the facts of the particular case. See
Amgen, Inc. v. Chugai Pharm. Co., Ltd., 927 F.2d 1200, 1213 (Fed. Cir.
1991).
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The Examiner’s analysis in rejecting claim 1 as failing to comply with
the enablement requirement substantially mirrors the Examiner’s analysis,
discussed above, regarding failure to comply with the written description
requirement. Compare Ans. 7–9, with Ans. 3–5. The Examiner additionally
finds that “[t]he state of the art used acceleration signals to remove artifacts
from other measured electrophysiological signals,” and thus,
one of ordinary skill in the art would be left with the tasks of
figuring out a way of evaluating the maternal heart rate and the
acceleration signal to provide a first measurement of the first
vital sign of the expecting mother and evaluating the fetal heart
rate and the second acceleration signal to provide a second
measurement of the first vital signal or a first measurement of
the second vital signal of the mother and the at least one vital
sign of the fetus.
Ans. 9 (citing Hayes-Gill, US 2012/0150010 A1, published June 14, 2012).
Appellant argues that the Examiner has failed to adequately consider
all of the Wands factors and has failed to meet the initial burden of
establishing that the processing steps recited in claim 1 lack sufficient
enablement. Appeal Br. 10. We do not agree with Appellant that an
examiner must discuss all eight Wands factors in all cases; rather, as noted
above, the factors relevant to an enablement determination depend upon the
facts of the particular case. See Amgen, 927 F.2d at 1213. Nevertheless, for
the reasons that follow, we agree with Appellant that, in the present case, the
Examiner does not set forth sufficient factual findings and/or reasoning to
satisfy “the initial burden to establish a reasonable basis to question the
enablement provided for” claim 1, as instructed in MPEP § 2164.04 (citing
In re Wright, 999 F.2d 1557, 1562 (Fed. Cir. 1993)). See Appeal Br. 10.
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In essence, the Examiner correctly finds that Appellant’s Specification
does not disclose any details of the processing performed by signal
processing units 34 on the accelerations signals, dermal blood vessel
pulsation signals, or fetal heart rate signals, aside from a broad mention of
“evaluating the acceleration signal regarding at least one out of frequency,
amplitude and signal pattern to derive a processed acceleration signal
corresponding to at least one maternal parameter.” Ans. 8. However, the
Examiner does not set forth sufficient findings and/or technical explanation
assessing whether Appellant’s disclosure would have enabled a person
having ordinary skill in the art (i.e., a person possessing knowledge of that
which is disclosed in the present application plus the scope of what would be
known to one of ordinary skill in the art) to make and/or use the claimed
invention, including the processing steps, without undue experimentation.
Merely by way of example, the Examiner finds that it was known in the art
at the time the present application was filed to “use[] acceleration signals to
remove artifacts from other measured electrophysiological signals” and
reasons that, “therefore[,] one of ordinary skill in the art would be left with
the tasks of figuring out a way of evaluating the maternal heart rate,” fetal
heart rate, and acceleration signals to provide the measurements of the vital
sign(s) of the mother and the at least one vital sign of the fetus as recited in
claim 1. Ans. 9 (citing Hayes-Gill); see Hayes-Gill ¶¶ 98–100. However,
the Examiner does not set forth specific findings or technical reasoning to
explain how the Examiner reaches this conclusion. In other words, the
Examiner does not sufficiently explain why the Examiner believes a person
possessing both the knowledge of the state of the prior art, including that
evidenced by Hayes-Gill, and the disclosure in the present application would
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have been unable to practice the invention of claim 1, including the
processing steps recited therein, without undue experimentation.
Accordingly, we do not sustain the rejection of claim 1, or of claims
15, 18, 21, and 22, which are rejected as lacking enablement based on their
dependence from claim 1 (Ans. 12), under 35 U.S.C. § 112, first paragraph,
as failing to comply with the enablement requirement.
Claims 5, 7, 8, 13, and 14
Indefiniteness
Before addressing the Examiner’s indefiniteness rejections of
claim 14, and claim 8, which depends from claim 14, we first attempt to
construe claim 13, from which claim 14 depends indirectly via claim 5.
Claim 13 is directed to “[a] signal monitoring system.” Appeal Br. 17
(Claims App.). This terminology maps closely to the terminology “signal
monitoring unit 36” described in Appellant’s Specification. See, e.g.,
Spec. 7:26–27 (disclosing that “transducer units 16, 18 provide processed
signals to a signal monitoring unit 36 via cabling or, alternatively, via a
wireless connection”). Appellant’s Specification describes signal
monitoring unit 36 as including: (1) signal selector 38, which comprises
software module 40 for carrying out specific steps of a method for selecting
the best of the maternal heart rate signals based on parameters like logical
considerations, heart rate history, signal quality, etc. (Spec. 7:29–8:2;
28:24–27), and (2) cross-channel verification unit 42 for determining a
cross-channel verification between traces of the maternal heart rate signal
selected by signal selector 38 and the fetal heart rate signal to determine if
the difference between the frequencies of the two signals is larger than a
predetermined threshold and for activating alert signal 44 if the determined
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difference in frequency falls below the predetermined threshold
(Spec. 8:3–8; 8:27–9:2). As described in the Specification, and as illustrated
in Figure 2 of the present application, the “signal monitoring unit” is
separate and distinct from the two transducer units, which include
transducers, such as an ultrasonic sensor for providing a fetal heart rate and
acceleration sensors for providing acceleration signals, and signal processing
units for processing the transducer signals and acceleration signals to be
received by the “signal monitoring unit.” See Spec. 7:26–27 (disclosing that
“transducer units 16, 18 provide processed signals to a signal monitoring
unit 36 via cabling or, alternatively, via a wireless connection”); Fig. 2
(illustrating signal monitoring unit 36 as distinct from first transducer unit 16
and second transducer 18, in which processing units 34 for processing
accelerations signals, dermal blood vessel pulsation signals from an optical
sensor, and fetal heart rate signals from an ultrasonic Doppler sensor are
included).
Consistent with the underlying disclosure in the Specification and
drawings, claim 13 positively recites: (1) a signal selector unit programmed
to receive a processed acceleration signal and a fetal heart rate and (2) a
cross-channel verification unit for determining and tracking a cross-channel
verification between the processed acceleration signal and the fetal heart rate
and, depending on the result of the verification, activating an alert signal.
See Appeal Br. 17–18 (Claims App.). However, claim 13 also recites:
the [fetal heart rate] being provided by an ultrasonic sensor, and
the processed acceleration signal being provided by a
signal processing unit provided to process the [fetal heart rate]
and an acceleration signal,
the processed acceleration signal being generated by the
acceleration signal being acquired by an acceleration sensor
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provided for converting mechanical movement of a maternal
abdomen into a corresponding acceleration signal, wherein the
acceleration sensor is different from the ultrasonic sensor and
wherein the acceleration sensor in at least one operating mode,
is rigidly mounted inside a housing that at least partially
encompasses the ultrasonic sensor.
Appeal Br. 17–18 (Claims App.).
These additional recitations are styled as descriptions of how the
signals (the fetal heart rate and the processed acceleration signal) that the
claimed signal selector unit is programmed to receive are created before they
are received, rather than as positive structural limitations of the signal
monitoring system or its components. The signals themselves are operated
on by the structure of the signal monitoring system; they are not components
of the signal monitoring system. Thus, it is not clear how, if at all, these
recitations further limit the structure of claim 13.
Several factors point toward construing claim 13 as not requiring the
ultrasonic sensor, the signal processing unit, the acceleration sensor, or the
housing referred to in the claim. First, the preamble of claim 13 states that
the claim is directed to “[a] signal monitoring system,” which, as described
in the Specification, is separate and distinct from the transducer units that
include the acceleration sensors and ultrasonic sensor. The broadest
reasonable interpretation of a claim is one “that corresponds with what and
how the inventor describes his invention in the specification, i.e., an
interpretation that is ‘consistent with the specification.” In re Smith Int'l,
Inc., 871 F.3d 1375, 1383 (Fed. Cir. 2017) (quoting In re Morris, 127 F.3d
1048, 1054 (Fed. Cir. 1997)). Thus, construing the “signal monitoring
system” in the preamble of claim 13 according to its broadest reasonable
interpretation, and construing the body of claim 13 consistently with the
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preamble, suggests that claim 13 does not include the ultrasonic sensor, the
signal processing unit, the acceleration sensor, or the housing referred to
therein as positively recited elements of the claim. This is in contrast to
claim 14, for example, which recites “[a] fetal monitoring system”
comprising at least two transducer units including at least one transducer and
at least one acceleration sensor, and at least one signal processing unit for
processing the transducer signal from the transducer and the acceleration
signal from the acceleration sensor; and “a signal monitoring system as
claimed in claim 5,” thereby clearly encompassing a combination (i.e., a
fetal monitoring system) of the transducer units and the signal monitoring
system. See Appeal Br. 18 (Claims App.). Further, the fact that these
elements (i.e., the ultrasonic sensor and acceleration sensor) are referred to
in claim 13 in describing how the signals that the positively recited signal
selector unit of the signal monitoring unit is programmed to receive are
created, rather than being introduced positively as elements of the signal
monitoring system, suggests that claim 13 does not include these elements as
positive claim limitations.
On the other hand, however, we are mindful that “interpretations that
render some portion of the claim language superfluous are disfavored.”
Power Mosfet Techs., L.L.C. v. Siemens AG, 378 F.3d 1396, 1410 (Fed.
Cir. 2004); see also Merck & Co. v. Teva Pharm. USA, Inc., 395 F.3d 1364,
1372 (Fed. Cir. 2005) (“A claim construction that gives meaning to all
the terms of the claim is preferred over one that does not do so.”
(citations omitted)); Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362
(Fed. Cir. 2007) (denouncing claim constructions which render phrases in
claims superfluous); Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed.
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Cir. 2006) (“[C]laims are interpreted with an eye toward giving effect to all
terms in the claim.”); Cardiac Pacemakers, Inc. v. St. Jude Med., Inc., 296
F.3d 1106, 1115 (Fed. Cir. 2002) (holding a proposed construction that
rendered a portion of the claim language meaningless improper). The
preference for giving meaning to all terms, however, is not an inflexible
rule that supersedes all other principles of claim construction. See Power
Mosfet, 378 F.3d at 1410.
The recitations “the [fetal heart rate] being provided by an ultrasonic
sensor,” “the processed acceleration signal being generated by the
acceleration signal being acquired by an acceleration sensor,”6 and “wherein
the acceleration sensor in at least one operating mode, is rigidly mounted
inside a housing that at least partially encompasses the ultrasonic sensor”
suggest the presence of an ultrasonic sensor to provide the fetal heart rate
and an acceleration sensor to provide the acceleration signal, as well as a
housing for the ultrasonic sensor and the acceleration sensor. Construing
these recitations as positively reciting an ultrasonic sensor, acceleration
sensor, and housing creates an inconsistency between the body of claim 13
and its preamble, for the reasons discussed above. However, it is unclear
how to give meaning to these recitations otherwise. If these recitations are
somehow construed merely as functional limitations of the signal selector
unit and/or cross-channel verification unit, by, for example, specifying

6 There also does not appear to be antecedent basis for “the acceleration
signal being acquired by an acceleration sensor” because the claim never
previously indicated that the acceleration signal was acquired by an
acceleration sensor. See, e.g., MPEP 2173.05(e) (“A claim which refers to
‘said aluminum lever,’ but recites only ‘a lever’ earlier in the claim, is
indefinite because it is uncertain as to the lever to which reference is made”).
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something about the attributes of the signals that are received and processed
by these elements of the signal monitoring system, the implications of such
limitations on the structure of the signal selector unit and/or cross-channel
verification unit are not apparent. Indeed, it is not apparent that these
limitations have any relevance to the metes and bounds of claim 13. Thus,
the significance of these recitations in claim 13 is unclear.
For the above reasons, the metes and bounds of claim 13 are not clear.
Accordingly, pursuant to our authority under 37 C.F.R. § 41.50(b), we reject
claim 13, as well as claims 5, 7, 8, and 14, which depend from claim 13,
under 35 U.S.C. § 112, second paragraph, as being indefinite.
The Examiner rejects claim 14 as being indefinite because it “recites
‘a signal monitoring system as claimed in claim 5 for processing the
processed acceleration signal and the transducer signal’” and, according to
the Examiner, “it is unclear what components within the system of claim 5
are used to process the transducer signal as no transducer signals are
currently recited within claim 5.” Ans. 12. The second basis for the
rejection of claim 14 is that the recitation “at least one acceleration sensor”
in claim 14 raises an ambiguity as to “how this acceleration sensor relates to
the acceleration sensor already recited within claim 13,” from which claim 5
depends. Ans. 12. The Examiner rejects claim 8 as indefinite because it
depends from claim 14 and, thus, incorporates the limitations of claim 14
giving rise to the indefiniteness rejection of claim 14. Ans. 12. For the
reasons that follow, the issues underlying the Examiner’s rejections are
effectively subsumed within the issues addressed above in our new ground
of rejection of claim 13 as being indefinite.
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As for the first stated basis for rejection, Appellant submits that the
absence of a positive recitation of a “transducer signal” in claim 5 or
claim 13 does not render claim 14 indefinite. Appeal Br. 13. To the extent
that the signal monitoring system of claim 13, from which claim 5 depends,
is interpreted as including a signal selector unit programmed to receive two
signals and a cross-channel verification unit for determining and tracking a
cross-channel verification between the two signals, and nothing more,
claim 14’s incorporation of “a signal monitoring system as claimed in
claim 5 for processing the processed acceleration signal and the transducer
signal” is not problematic. We agree with Appellant that claim 5 (or claim
13) need not recite a transducer signal to render claim 14 definite. However,
as discussed above, the scope of claim 13, and thus its dependent claim 5, is
unclear, particularly with respect to whether an ultrasonic sensor and an
acceleration sensor are part of the claimed “signal monitoring system.” If “a
signal monitoring system as claimed in claim 5” includes an ultrasonic
sensor and an acceleration sensor for providing a fetal heart rate and an
acceleration signal, respectively, to the signal selector unit programmed to
receive a fetal heart rate and an acceleration signal, it is not clear how such a
signal monitoring unit could also be used for processing the processed
acceleration signal and the transducer signal of claim 14 as well (i.e., the
signal monitoring system of claim 5, so construed, already has the two
inputs it is programmed to receive).
As for the second basis for rejection (lack of clarity as to how the
acceleration sensor recited in claim 14 relates to the acceleration sensor
already recited in claim 13, from which claim 14 depends indirectly via
claim 5), Appellant submits that “the acceleration sensor of claim 13 and the
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acceleration sensor of claim 14 can be either the same or different
acceleration sensors, without rendering the claim indefinite.” Appeal Br. 13.
In response to Appellant’s argument, the Examiner merely repeats the
explanation provided in the rejection itself. Ans. 29. For essentially the
same reasons set forth in addressing the first basis of rejection set forth by
the Examiner, the ambiguity as to the scope of “a signal monitoring system
as claimed in claim 5” renders claim 14 indefinite.
Accordingly, we sustain the Examiner’s rejections of claims 8 and 14,
but we designate them new grounds of rejection because our decision
sustaining them is predicated in part on the additional analysis set forth
above in the new ground of rejection of claim 13, and its dependent claim 5,
under 35 U.S.C. § 112, second paragraph, as being indefinite.
Written Description and Enablement
The Examiner’s rejections of claims 5, 7, 8, 13, and 14 for failing to
comply with the written description and enablement requirements of
35 U.S.C. § 112, first paragraph, focus on the recitation in claim 13 “the
processed acceleration signal being provided by a signal processing unit
provided to process the [fetal heart rate] and an acceleration signal.” See
Ans. 5–6, 9–11. For the reasons discussed above in the new ground of
rejection of claims 5, 7, 8, 13, and 14 under 35 U.S.C. § 112, second
paragraph, this language renders these claims indefinite. Thus, we cannot
sustain the rejections of these claims under 35 U.S.C. § 112, first paragraph,
because to do so would require speculation as to the scope of the
claims. See In re Moore, 439 F.2d 1232, 1235 (CCPA 1971) (holding that
one is not in a position to determine whether a claim is enabled under the
first paragraph of 35 U.S.C. § 112 until the metes and bounds of that claim
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are determined under the second paragraph of this section of the
statute.). We find the reasoning in Moore to be applicable to the written
description rejection because reaching a decision as to whether the claims
have adequate written description support requires that we first understand
the metes and bounds of the claims. It should be understood, however, that
our decision in this regard is based solely on the indefiniteness of the
claimed subject matter, and does not reflect on the sufficiency of the
disclosure in the present application vis-à-vis the signal processing units
referred to in the claims.
Claims 9, 11, and 24
Indefiniteness
Claim 24 recites, in the preamble, “[a] method for determining at least
one maternal physiological parameter out of a heart rate and a breathing
rate,” and then recites “processing, with a first signal processing unit, the
acceleration signal to generate a processed acceleration signal corresponding
to at least one maternal physiological parameter.” Appeal Br. 20 (Claims
App.). It is not clear whether “at least one maternal physiological
parameter” as recited in the “processing” step refers back to the “at least one
maternal physiological parameter out of a heart rate and a breathing rate” in
the preamble. This creates an ambiguity as to whether the processed
acceleration signal in the “processing” step corresponds to any maternal
physiological parameter or is limited to either a heart rate or a breathing rate.
Thus, claim 24, and claims 9 and 11 depending from claim 24, are indefinite.
Accordingly, pursuant to our authority under 37 C.F.R. § 41.50(b), we
reject claims 9, 11, and 24 under 35 U.S.C. § 112, second paragraph, as
being indefinite.
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We recognize a potential inconsistency implicit in our rejection of
claims 9, 11, and 24 under 35 U.S.C. § 112, second paragraph, as being
indefinite with a determination as to the propriety of rejections of these
claims as failing to comply with the written description and enablement
requirements of 35 U.S.C. § 112, first paragraph. As discussed above,
normally, when substantial confusion exists as to the interpretation of a
claim and no reasonably definite meaning can be ascribed to terms in a claim
related to issues arising under 35 U.S.C. § 112, first paragraph, a
determination as to compliance with 35 U.S.C. § 112, first paragraph, is not
made. However, in this instance, we consider it to be desirable to address
the rejections under 35 U.S.C. § 112, first paragraph, to avoid the
inefficiency of piecemeal appellate review. Cf. Ex parte Ionescu, 222 USPQ
537, 540 (Bd. App. 1984) (expressing the view that where a claim is subject
to more than one interpretation, one of which would render the claims
unpatentable over the prior art, the USPTO should enter simultaneous
rejections under 35 U.S.C. § 112, second paragraph, and under 35 U.S.C.
§ 102 or § 103, to avoid piecemeal appellate review). For purposes of
addressing the rejections under 35 U.S.C. § 112, first paragraph, we interpret
“at least one maternal physiological parameter” as recited in the
“processing” step as referring back to the “at least one maternal
physiological parameter out of a heart rate and a breathing rate” in the
preamble. Therefore, we reach determinations as to the propriety of the
Examiner’s rejections of claims 9, 11, and 24 under 35 U.S.C. § 112, first
paragraph, in the interest of administrative economy.
Written Description
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The Examiner finds that the disclosure of the present application does
not reasonably convey that Appellant had possession of the invention now
recited in claim 24, particularly the step of “processing, with a first signal
processing unit, the acceleration signal to generate a processed acceleration
signal corresponding to at least one maternal physiological parameter.”
Ans. 6–7; see Appeal Br. 20 (Claims App.). The Examiner’s findings and
analysis in support of this rejection are substantially similar to those set forth
in support of the like rejection of claim 1, discussed above. Appellant relies
on the same arguments asserted in contesting the rejection of claim 1. See
Appeal Br. 1–9. These arguments fail to apprise us of error in the rejection
of claim 1 as failing to comply with the written description requirement and,
for essentially the same reasons, fail to apprise us of error in the rejection of
claim 24.
Appellant submits that the application need not disclose in full,
exhaustive detail items that are known to those of ordinary skill in the art.
Appeal Br. 3. However, Appellant does not provide any evidence showing
that those of ordinary skill in the art would have known, with sufficient
specificity to visualize the claimed invention, the details of the processing
performed by processing unit(s) 34 on the acceleration signal from
acceleration sensor 32 to generate a signal corresponding to at least one
maternal physiological parameter out of either a heart rate or a breathing
rate. In short, Appellant’s claim 24 and Specification, at best, “merely recite
a description of the problem to be solved while claiming all solutions to it,”
leaving the industry to “complete an unfinished invention.” See Ariad, 598
F.3d at 1353. A functional claim that simply claims a desired result without
describing species that achieve that result is insufficient, by itself, to satisfy
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the written description requirement. Id. at 1349. Thus, Appellant’s
disclosure fails to convey that, at the time the present application was filed,
Appellant had possession of a method as recited in claim 24.
Accordingly, we sustain the rejection of claim 24, and of claims 9
and 11, which depend from claim 24 and for which Appellant does not
present any separate arguments, under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
Enablement
The Examiner determines that the present application does not
provide a sufficiently enabling disclosure of the invention now recited in
claim 24, particularly the step of “processing, with a first signal processing
unit, the acceleration signal to generate a processed acceleration signal
corresponding to at least one maternal physiological parameter.”
Ans. 11–12; see Appeal Br. 20 (Claims App.). The Examiner’s rejection
suffers from substantially the same deficiency discussed above in regard to
the like rejection of claim 1. In short, the Examiner correctly finds that
Appellant’s Specification does not disclose any details of the processing
performed by signal processing units 34 on the acceleration signal(s), aside
from a broad mention of “evaluating the acceleration signal regarding at
least one out of frequency, amplitude and signal pattern to derive a
processed acceleration signal corresponding to at least one maternal
parameter.” Ans. 11. However, the Examiner does not set forth sufficient
findings and/or technical explanation assessing whether Appellant’s
disclosure would have enabled a person having ordinary skill in the art (i.e.,
a person possessing knowledge of that which is disclosed in the present
application plus the scope of what would be known to one of ordinary skill
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in the art) to make and/or use the claimed invention, including the
processing step, without undue experimentation. The Examiner does not
sufficiently explain why the Examiner believes a person possessing both the
knowledge of the state of the prior art and the disclosure in the present
application would have been unable to practice the invention, including the
processing step recited therein, without undue experimentation.
Accordingly, we do not sustain the rejection of claim 24, or its
dependent claims 9 and 11, under 35 U.S.C. § 112, first paragraph, as failing
to comply with the enablement requirement.
CONCLUSION
The Examiner’s rejections of claims 8 and 14 under 35 U.S.C. § 112,
second paragraph, as being indefinite are AFFIRMED, but we designate
them as NEW GROUNDS OF REJECTION. We also enter a NEW
GROUND OF REJECTION of claims 5, 7–9, 11, 13, 14, and 24 under
35 U.S.C. § 112, second paragraph, as being indefinite.
The Examiner’s rejection of claims 1, 5, 7–9, 11, 13–15, 18, 21, 22,
and 24 under 35 U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement is AFFIRMED as to claims 1, 9, 11, 15, 18,
21, 22, and 24, and REVERSED as to claims 5, 7, 8, 13, and 14.
The Examiner’s rejection of claims 1, 5, 7–9, 11, 13–15, 18, 21, 22,
and 24 under 35 U.S.C. § 112, first paragraph, as failing to comply with the
enablement requirement is REVERSED.
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DECISION SUMMARY
In summary:
Claim(s)
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed New
Ground
8, 14 112, ¶
2
Indefiniteness 8, 14 8, 14
1, 5, 7–9,
11, 13–
15, 18,
21, 22,
24
112, ¶
1
Written
Description
1, 9, 11,
15, 18,
21, 22, 24
5, 7, 8,
13, 14

1, 5, 7–9,
11, 13–
15, 18,
21, 22,
24
112, ¶
1
Enablement 1, 5, 7–9,
11, 13–
15, 18,
21, 22, 24

5, 7–9,
11, 13,
14, 24
112, ¶
2
Indefiniteness 5, 7–9,
11, 13,
14, 24
Overall
Outcome
1, 8, 9,
11, 14,
15, 18,
21, 22, 24
5, 7, 13 5, 7–9,
11, 13,
14, 24

FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, 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 rejected
claims:
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(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 prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in MPEP § 1214.01.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED IN PART; 37 C.F.R. § 41.50(b)