Samsung Electronics Co., Ltd.

Patent Trials and Appeals Board

Jul 30, 2021

2020000981 (P.T.A.B. Jul. 30, 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.
15/297,271 10/19/2016 Jeong-Gwan KANG 5000-1-1722CON 6240
33942 7590 07/30/2021
Cha & Reiter, LLC
17 Arcadian Avenue
Suite 208
Paramus, NJ 07652
EXAMINER
SINGH, HIRDEPAL
ART UNIT PAPER NUMBER
2631
MAIL DATE DELIVERY MODE
07/30/2021 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEONG-GWAN KANG, BYUNG-JUN LEE, HYUN-SU HONG,
SEUNG-HYUCK SHIN, and SUN-YOUNG PARK
Appeal 2020-000981
Application 15/297,271
Technology Center 2600
Before ELENI MANTIS MERCADER, JAMES R. HUGHES, and
MICHAEL T. CYGAN, Administrative Patent Judges.
MANTIS MERCADER, 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 1–2, and 4–6. See Final Act. 1. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Samsung Industrial
Electronics Co., Ltd. Appeal Br. 3.
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Application 15/297,271
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CLAIMED SUBJECT MATTER
The claimed invention is directed to an electronic device that
computes a movement value according to the movement of the electronic
device using the acceleration sensor and computes the movement strength of
the electronic device using the computed movement value. Spec. 35:6–9.
Subsequently, the electronic device determines whether the computed
movement strength is less than a first threshold in operation 905. Spec.
35:10–11; see Fig. 9 element 905. When the movement strength is less than
the first threshold, the electronic device determines whether the movement
strength less than the first threshold lasts for a first time period or more in
operation 910. Spec. 35:11–13 and see Fig. 9 element 910. When the
movement strength is not less than the first threshold or when the movement
strength less than the first threshold does not last for the first time period or
more, the electronic device 101 may go back to operation 900. Spec. 35:13–
16 and see Fig. 9 element 915.
When the movement of the electronic device 101 is less than the first
threshold, and for more than the first time period, would indicate that the
user is at rest. Spec. 35:17–19. However, if this immediately follows a
period of strenuous exercise, there will be a significant increase in the heart
rate as compared to a routine time when the movement of the electronic
device 101 being less than the first threshold, for more than the first time
period. Spec. 35:19–21. To alleviate this, the electronic device determines
whether during a second time period, prior to the first time period, whether
there was movement that unusually large, or larger than a second threshold,
the second threshold larger than the first threshold. Spec. 35:21–24.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
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1. A wearable electronic device, comprising:
a first sensor configured to sense a movement of the
wearable electronic device;
a second sensor configured to sense a biological signal of
a user wearing the wearable electronic device; and
a processor configured to:
receive, via the first sensor, information relating to
the movement of the wearable electronic device,
receive, via the second sensor, the biological
signal,
in response to the movement of the wearable
electronic device being less than a predetermined first
threshold during a first time period before a first time, identify
at least one pulse rate of the user periodically from the first
time based on the biological signal, and
in response to the movement of the electronic
device being equal to or greater than the predetermined first
threshold during the first time period, wait to identify the pulse
rate of the user at a second time after the first time, following a
second time period during which the movement of the electronic
device is less than the predetermined first threshold.
Appeal Br. 13 (emphasis added). Claims App.
REJECTION
Claims 1–2, 4–6 are rejected under 35 U.S.C. § 112(a) or 35 U.S.C.
§ 112 (pre-AIA), first paragraph, as failing to comply with the written
description requirement. The Claims contains subject matter which was not
described in the specification in such a way as to reasonably convey to one
skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA
the inventor(s), at the time the application was filed, had possession of the
claimed invention. Final Act. 3.

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Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis
1, 2, 4–6 112(a) Written Description

OPINION
The Examiner finds that the newly added limitation in independent
claims 1 and 5 reciting:
in response to the movement of the electronic device being equal
to or greater than the predetermined first threshold during the
first time period, waiting to identify the pulse rate of the user at
a second time after the first time, following a second time period
during which the movement of the electronic device is less than
the predetermined first threshold

is not supported by Appellant’s original disclosure. Final Act. 3. The
Examiner finds that the Specification does not contain a written description
of the invention, in full, clear, concise, and exact terms as to enable any
person skilled in the art to which it pertains, or with which it is most nearly
connected, to make and use the same; as required. Ans. 10. More
particularly, the Examiner finds that the “first time period,” “first threshold,”
and the “second time period” are key features of the claim language and are
critical in the execution of the embodiment, along with the unclaimed
“second threshold” related or connected to a second time period. Ans. 11–
12.
The Examiner finds that if for these key elements as argued by
Appellant, “second” can refer to “first” and vice versa for the not clearly
described iteration in the Specification, this would lead to a person of
ordinary skill to guessing, contrary to the full, clear, concise, and exact terms
to make and use the invention. Ans. 12. Making the assumptions about the
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possibilities leads to the claimed invention not clearly defined in the
disclosure, makes the present claims failing to comply with the written
description requirement; the claimed subject matter not being described in
the Specification in such a way as to reasonably convey to one skilled in the
relevant art that the inventor, at the time the application was filed, had
possession of the claimed invention. Id. The Examiner refers us to different
sections from Appellant’s own Specification and highlights pertinent
sections. Ans. 13–16.
The highlighted sections of the Specification by the Examiner include:

Subsequently, the electronic device 101 may determine whether
the computed movement strength is less than a first threshold in
operation 905. When the movement strength is less than the
first threshold, the electronic device 101 may determine
whether the movement strength less than the first threshold
lasts for a first time period or more in operation 910. When the
movement strength is not less than the first threshold or when
the movement strength less than the first threshold does not last
for the first time period or more, the electronic device 101 may
go back to operation 900.
It is noted that when the movement of the electronic
device 101 is less than the first threshold, and for more than
the first time period, the foregoing would normally indicate
that the user is at rest. However, if this immediately follows a
period of strenuous exercise, there will be a significant increase
in the heart rate as compared to a routine time when the
movement of the electronic device 101 being less than the first
threshold, for more than the first time period. To alleviate
this, the electronic device determines whether during a second
time period, prior to the first time period, whether there was
movement that unusually large, or larger than a second
threshold, the second threshold larger than the first
threshold. . . .
When the movement strength less than the first
threshold lasts for the first time period or more in operation
910, the electronic device 101 may determine whether the
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movement strength during the second time period before the
first time period is a second threshold or more in operation
915. In other words, the electronic device 101 may determine
whether there is a larger movement during the second time
period before the first time period. By contrast, unless the
movement strength during the second time period before the
first time period is the second threshold or more, the
electronic device 101 may activate a sensor for measuring a
heart rate in operation 920 and store a heart rate measured in the
resting state in operation 925. On the contrary, when the
movement strength during the second time period before the
first time period is the second threshold or more, the electronic
device 101 may return to operation 900. Here, according to an
embodiment of the present disclosure, when the movement
during the second time period is larger, e.g., the second
threshold or more, the electronic device 101 may be
implemented to increase the duration of the first time period to
recover the cardiac function when going back to operation 900.
This is to increase the first time period, if the user has recently
engaged in strenuous exercise.

Ans. 13–15 (citing Spec. 35–36 and Figs. 9, 10A, and 10B).
Appellant argues that the disputed limitation is supported by at least
Figure 9 as annotated below. Appeal Br. 7. Appellant argues that steps
900–915 can be executed numerous times. Id. Appellant explains that if the
condition at 915 in Figure 9 is YES, operations 900–915 are repeated. Id.
Appellant annotated Figure 9 with “First Iteration” and “Second Iteration.”
Id.
Appellant’s Annotated Figure 9 is reproduced below.

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Appellant’s Annotated Figure 9 shows a “First Iteration” starting from step
905 and looping from step 915 back to step 905 and a “Second Iteration”
starting from step 905 and going through step 915 to step 920.
We address the Second Iteration first, as that was the iteration
addressed by Appellant first, and then the First Iteration.

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Second Iteration
Appellant argues that “second threshold” in Figure 9, step 915
corresponds to the claimed “first threshold.” Id. Appellant argues that as
noted in the Specification, “[f]or example, a first component may be denoted
a second component, and vice versa without departing from the scope of the
present disclosure.” Id. (citing Spec. 6, ll. 11–12). According to Appellant,
the claimed “first time period” is the “second time period” of step 915
during a first iteration, and the claimed “second time period” is the “second
time period” of step 915 during a second or later iteration. Id.
According to Appellant, this can be seen in that the limitation “in
response to the movement of the wearable electronic device being less than
the predetermined first threshold” (i.e., in Figure 9, “Not less than second
threshold?” if condition is “NO,” Appellant notes the double negative)
during the claimed first time period (i.e., second time period of Figure 9)
before the claimed first time (i.e., first time period of Figure 9), identifying
at least one pulse rate of the user periodically from the first time (Step 920,
“Activate Sensor for Heart Rate Measurement,” since step 920 is executed
after step 915, the time step 920 is executed in the “first time”) based on the
biological signal, is supported by at least Figure 9. Appeal Br. 8.
To comply with the “written description” requirement of 35 U.S.C.
§ 112, first paragraph, an applicant must convey with reasonable clarity to
those skilled in the art that, as of the filing date sought, he or she was in
possession of the invention. The invention is, for purposes of the “written
description” inquiry, whatever is now claimed. Vas-Cath, Inc. v. Mahurkar,
935 F.2d 1555, 1563-64 (Fed. Cir. 1991). The invention claimed does not
have to be described in ipsis verbis in order to satisfy the written description
requirement. Union Oil Co. of Cal. v. Atl. Richfield Co., 208 F.3d 989, 1000
Appeal 2020-000981
Application 15/297,271
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(Fed. Cir. 2000). However, one skilled in the art, reading the original
disclosure, must be able to immediately discern the limitations now claimed.
See Waldemar Link v. Osteonics Corp., 32 F.3d 556, 558 (Fed. Cir. 1994).
A claim that omits an element which applicant describes as an
essential or critical feature of the invention originally disclosed does not
comply with the written description requirement. See Gentry Gallery, Inc. v.
Berkline Corp., 134 F.3d 1473, 1480 (Fed. Cir. 1998); In re Sus, 306 F.2d
494, 504, (CCPA 1962) (“[O]ne skilled in this art would not be taught by the
written description of the invention in the specification that any ‘aryl or
substituted aryl radical’ would be suitable for the purposes of the invention
but rather that only certain aryl radicals and certain specifically substituted
aryl radicals [i.e., aryl azides] would be suitable for such purposes.”).
At the outset, claim 1 recites “in response to the movement of the
wearable electronic device being less than a predetermined first threshold
during a first time period before a first time, identify at least one pulse rate
of the user periodically from the first time based on the biological signal”
(emphasis added). We agree with Appellant that as noted in the
Specification, “[f]or example, a first component may be denoted a second
component, and vice versa without departing from the scope of the present
disclosure” and there is no in ipsis verbis in order to satisfy the written
description requirement. See Appeal Br. 7 (citing Spec. 6, ll. 11–12) and
Union Oil Co., 208 F.3d at 1000. Thus, claiming “a first time period before a
first time” as opposed to a first time period and a second time period of
elements 915 and 920, is supported by the original disclosure because ipsis
verbis is not required to satisfy the written description requirement. See
Union Oil Co., 208 F.3d at 1000.
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However, omitting one of the two thresholds of elements 910 and 915
by calling the second threshold of element 915 as the claimed “first
threshold” and then omitting the essential element of the first threshold of
element 910, claim 1 omits an element which Appellant describes as an
essential or critical feature of the invention originally disclosed, and thus,
does not comply with the written description requirement. See Gentry
Gallery, 134 F.3d at 1480; In re Sus, 306 F.2d at 504.
In particular, Appellant’s Specification states “unless the movement
strength during the second time period before the first time period is the
second threshold or more, the electronic device 101 may activate a sensor
for measuring a heart rate in operation 920 and store a heart rate measured in
the resting state in operation 925.” Spec. 36. More importantly, the
Specification states a critical relationship between the first threshold and the
second threshold by stating “the electronic device determines whether during
a second time period, prior to the first time period, whether there was
movement that unusually large, or larger than a second threshold, the
second threshold larger than the first threshold.” Spec. 35:22–24.
Similarly, in Figure 9, elements 910 and 915 do not recite a single threshold
but rather a first threshold in element 910 and a second threshold in element
915. See Appellant’s Annotated Figure 9.
Accordingly, the Second Iteration as claimed lacks written support
because even in the best light in favor of Appellant’s argument, the claimed
limitation of “in response to the movement of the wearable electronic device
being less than a predetermined first threshold during a first time period
before a first time, identify at least one pulse rate of the user periodically
from the first time based on the biological signal” omits being less than a
second threshold as indicated in element 915 after being less than a first
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threshold in element 910 of Figure 9. Appellant proffers no written support
for this discrepancy with respect to Appellant’s Annotated Figure 9.2
First Iteration
We turn now, to the disputed limitation of claim 1 reciting
in response to the movement of the electronic device being
equal to or greater than the predetermined first threshold
during the first time period, waiting to identify the pulse rate of
the user at a second time after the first time, following a second
time period during which the movement of the electronic device
is less than the predetermined first threshold.

See claim 1. Appellant argues that there is written description for “in
response to the movement of the electronic device being equal to or
greater than the predetermined first threshold” (“Not less than the
second threshold” Yes Condition of step 915) during the first time
period (second time period of step 915, during a first iteration).
Appeal Br. 9. Appellant argues that as written in claim 1, Figure 9
shows “waiting” occurs by virtue of the repeating the loop 900-915
until the condition of 915 is NO. Id. At a later iteration, step 915
again compares “the movement strength during second period” to
“second threshold” which is the claimed “first threshold.” Id.
However, according to Appellant, in a later iteration, the second
time period of step 915 is different from the second time period of

2 We note that the undisputed limitation of “in response to the movement of
the wearable electronic device being less than a predetermined first
threshold during a first time period before a first time, identify at least one
pulse rate of the user periodically from the first time based on the biological
signal” finds support in the embodiment of Figure 8 and corresponding
Specification disclosure of the electronic device monitoring the resting state
when the device is worn and when the movement strength is less than a
threshold for at least a predetermined time. See Spec. 29:1–24; Fig. 8.
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step 915 during the first iteration. Id. Thus, the claimed “first time
period” is the “second time period” during a first iteration of 915 and
the claimed “second time period” is the “second time period” of the
last iteration of 915 when the condition becomes “NO.” Id.
Appellant concludes that the Specification discloses waiting
(repeating loop 900-915) to identify the pulse rate (step 920) of the user at a
second time (time that step 920 is performed) after the first time, following a
second time period (second time period of step 920) during which the
movement of the electronic device is less than the predetermined first
threshold (Condition of step 915 -YES). Id.
Again, Appellant’s argument addresses the iteration with respect to a
“first threshold” and omits the disclosure of Figure 9, element 915 stating
“MOVEMENT STRENGTH DURING SECOND TIME PERIOD BEFORE
FIRST TIME PERIOD NOT LESS THAN SECOND THRESHOLD.” See
Fig. 9, element 915 (emphasis added). Figure 9, element 910 states
“MOVEMENT STRENGTH LESS THAN FIRST THRESHOLD LASTS
FOR FIRST TIME PERIOD OR MORE.” See Fig. 9, element 915
(emphasis added). Even if we were to agree with Appellant that
the “second threshold” in Figure 9, step 915 corresponds to the claimed
“first threshold,” Appellant does not explain what constitutes the “first
threshold” of element 910 if we were to find support of the “first threshold”
as claimed to the “second threshold” of element 915. See Appeal Br. 7.
Even if we were to assume that different elements change their
notation of “first” and “second” depending on the iteration, element 910
refers to the “FIRST THRESHOLD” and element 915 refers to “SECOND
THRESHOLD” regardless of whether it is the First or the Second Iteration.
See Fig. 9, elements 910 and 915. As we stated above, both the “first
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threshold” and the “second threshold” are required for the embodiment of
Figure 9.
Thus, we agree with the Examiner that the “first time period,”
“first threshold,” and the “second time period” are key features of the
claim language and are critical in the execution of the embodiment,
along with the unclaimed “second threshold” related or connected to a
second time period. See Ans. 11–12.
Appellant’s reference to Figure 10 makes no connections to Figure 9
and do not address how the claimed language finds support in the
Specification. See Appeal Br. 9–10.
Accordingly, we agree with the Examiner that the disputed limitation
is not supported by appellant’s original disclosure. See Final Act. 3. Thus,
we affirm the Examiner’s rejection of claims 1, 2, and 4–6 under lack of
written description.

CONCLUSION
The Examiner’s decision to reject claims 1, 2, and 4–6 is AFFIRMED.

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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4–6 112(a) Written
Description
1, 2, 4–6
Overall
Outcome
1, 2, 4–6

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