Steven J. Young

Patent Trials and Appeals Board

Jan 31, 2020

13035397 - (D) (P.T.A.B. Jan. 31, 2020)

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.
13/035,397 02/25/2011 Steven J. Young 42495-0008001 2703
26191 7590 01/31/2020
FISH & RICHARDSON P.C. (TC)
PO BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
WEARE, MEREDITH H
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
01/31/2020 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STEVEN J. YOUNG, MARCO KENNETH DELLA TORRE,
YURI ZHOVNIROVSKY, and RICHARD V. RIFREDI
____________

Appeal 2018-005156
Application 13/035,397
Technology Center 3700
____________

Before JENNIFER D. BAHR, LINDA E. HORNER, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–10, 24, 25, and 29–32.2 An oral hearing was
held on January 7, 2020.3 We have jurisdiction over the appeal under
35 U.S.C. § 6(b).

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real parties in interest as Sleep Number
Corporation (fka Select Comfort Corporation) and SleepIQ Labs Inc.
Appeal Br. 1.
2 Claims 11–23 and 26–28 are cancelled. Appeal Br. 12 (Claims App.).
3 The record includes a transcript of the oral hearing (“Tr.”).
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We AFFIRM.

THE CLAIMED SUBJECT MATTER
Claims 1 and 32 are independent. Claim 1 is reproduced below.
1. A device for touchless monitoring of a subject at rest
comprising:
a sensing unit having a fluid-filled bladder configured to
be placed under a substrate on which the subject lays and a sensor
in fluid communication with the bladder, wherein the sensor is
configured to sense pressure variations within the bladder and a
change in static pressure within the bladder with no contact with
the subject;
a processor configured to:
when the subject rests on the bladder:
receive signals from the sensor representing
the pressure variations and the changes in static
pressure;
determine, based on the received signals, that
the subject is laying on the substrate;
generate a plurality of measures from the
signals, each of the measures representing a
biological aspect of the subject;
determine, from the plurality of measures, an
identity of the subject;
determine an assigned subject, wherein the
assigned subject is assigned to the device; and
determine that the identified subject is the
assigned subject based on the determined identity
that was determined from the generated measures
that each represent a biological aspect of the
subject; and
an external device configured to display an indication that
the assigned subject is laying on the substrate, based on a
determination that the identified subject is the assigned subject.

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EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Wridge US 4,995,124 Feb. 26, 1991
Chaco US 5,291,399 Mar. 1, 1994
Toms US 6,036,660 Mar. 14, 2000
Wiederhold US 2003/0135097 A1 July 17, 2003
Sullivan US 2004/0111045 A1 June 10, 2004
Partin US 2005/0022606 A1 Feb. 3, 2005
Sotos US 2006/0020178 A1 Jan. 26, 2006
Higgins US 2006/0206011 A1 Sept. 14, 2006

REJECTIONS4
I. Claims 1–3, 6, 7, 24, 25, 29, 30, and 32 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Sullivan, Partin, Wiederhold, and
Chaco. Final Act. 4–10.
II. Claims 4 and 5 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sullivan, Partin, Wiederhold, Chaco, and Toms.
Id. at 11–12.
III. Claims 8 and 9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sullivan, Partin, Wiederhold, Chaco, and Higgins.
Id. at 12–14.
IV. Claim 10 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Sullivan, Partin, Wiederhold, Chaco, Higgins, and Sotos.
Id. at 14.

4 A rejection of claims 1–10, 24, 25, and 29–32 under 35 U.S.C. § 112,
second paragraph as being indefinite (Final Act. 2–3) has been withdrawn
and is not before us on appeal (Ans. 2).
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V. Claim 31 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Sullivan, Partin, Wiederhold, Chaco, and Wridge. Id. at 15–16.

OPINION
Rejection I
Appellant argues independent claims 1 and 32 as a group, and does
not present any separate arguments for dependent claims 2, 3, 6, 7, 24, 25,
29, and 30. Appeal Br. 4–8. We select claim 1 as the representative claim,
and claims 2, 3, 6, 7, 24, 25, 29, 30, and 32 stand or fall therewith.
37 C.F.R. § 41.37(c)(1)(iv).
The Examiner relies on Sullivan for teaching many of the limitations
of independent claim 1, including, among other things, a sensing unit having
sensors configured to sense pressure variations and a change in static
pressure with no contact with a subject; a processor configured to receive
signals from the sensors, determine that the subject is lying on a substrate,
and generate a plurality of measures representing a biological aspect of the
subject; and an external device configured to display an indication pertaining
to the subject. Final Act. 4–5 (citing Sullivan ¶¶ 11, 16, 25, 26, 44, 48, 70).
The Examiner acknowledges that Sullivan does not teach the sensing
unit comprises a fluid-filled bladder and that the sensors are in fluid
communication with the bladder. Final Act. 6. The Examiner turns to Partin
for teaching “a similar device for touchless monitoring of a subject at rest
comprising: a sensing unit having a fluid-filled bladder (bladder 12)
configured to be placed under a substrate on which the subject lays.” Id.
(citing Partin ¶¶ 5, 10). The Examiner concludes that it would have been
obvious to modify Sullivan’s device to have the sensing unit comprise a
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fluid-filled bladder and have the sensors be in fluid communication with the
bladder “as taught/suggested by Partin in order to utilize a predictable
alternative/additional means for identifying pressure variations
representative of physiological parameters . . . and/or to increase the surface
area capable of being measured by a single sensor element, thereby
permitting a small number of sensors to cover a large area of a surface on
which the subject is positioned.” Id. (citing Partin Abstract).
The Examiner acknowledges that Sullivan/Partin “does not expressly
disclose the processor is . . . configured to determine, from the plurality of
measures [representative of biological aspects of a subject], an identity of
the subject.” Final Act. 7. The Examiner finds that “Wiederhold teaches a
device comprising a processor . . . configured to determine, from a plurality
of monitored measures, an identity of a subject by comparing data including
the plurality of measures with data that uniquely identifies the subject.” Id.
(citing Wiederhold ¶¶ 45, 52, 81–85). The Examiner concludes that it would
have been obvious to further modify the device of Sullivan/Partin such that
the processor is “further configured to determine, from the plurality of
measures, an identity of the subject by comparing data including the
plurality of the measures with data that uniquely identifies the subject as
taught/suggested by Weiderhold [sic] in order to accurately confirm the
identity of the subject currently being monitored via the sensing unit.” Id.
(citing Wiederhold ¶ 44). The Examiner explains that Sullivan teaches the
device can be used in a nursing home or long-term care facility “in which
said device is accessible by multiple individuals or subjects” (id. at 6–7), and
the further modification based on the teachings of Wiederhold would help
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ensure that the “monitored data can be appropriately associated with the
correct subject and this data provided to a health care professional” (id. at 7).
Although the Sullivan/Partin/Wiederhold device is described by the
Examiner as being configured to determine the identity of the subject from
the plurality of measures (e.g., through comparison of measured data with
biometric data in an established data collection), the Examiner
acknowledges that Sullivan/Partin/Wiederhold is not necessarily configured
to determine whether the identified subject is an assigned subject (i.e., a
subject that has been assigned to the device). Final Act. 7. The Examiner
finds that Chaco teaches or suggests “determin[ing] an assigned subject,
wherein the assigned subject is assigned to the device . . . and determin[ing]
that the identified subject is the assigned subject.” Id. at 8 (citing Chaco
5:11–19; 14:1–12). Specifically, the Examiner points out that Chaco teaches
“means for conveying any mismatch between the information [i.e., scanned
identifying information and stored identifying information]. . . , where if the
data is correct/matches, it is acknowledged with a beep and if the data is
incorrect/does not match, an alarm is sounded or error message displayed.”
Id. (citing Chaco 5:11–19, 14:13–36).
More specifically, Chaco describes, with respect to medication, that a
nurse may scan a patient arm band and then compare the scanned data to
identification data stored on a patient’s memory card. According to Chaco,
“[i]f these two codes do not match then either the patient is in the wrong bed
or the wrong memory card is inserted in the call station.” Chaco 14:6–12.
With respect to “radiographic images, food trays and other material that is
simply to be delivered to the patient’s bed,” Chaco describes that “a bar-
code identifying the patient is scanned from the image, tray or other
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material” and if the scanned data matches data stored on a patient’s memory
card, “the scan is acknowledged with a beep” or “[o]therwise[,] the alarm is
sounded and an error message is sent.” Id. at 14:28–34.
The Examiner concludes that it would have been obvious to
determine that the identified subject (who has been identified by
the generated measures, as discussed above [i.e., the measures of
Sullivan/Partin/Wiederhold] is or is not the assigned subject and
the external device being configured to provide an indication that
the assigned subject is laying on the substrate as taught/suggested
by Chaco in order to determine whether or not the identified
subject is in/on the correct substrate (e.g., in the correct, assigned
bed), and relay this information to a user.
Final Act. 8 (citing Chaco 14:1–12). The Examiner explains that:
[o]ne of ordinary skill in the art would recognize that the subject
ID determination made by the device of Sullivan as modified
could be utilized as disclosed/suggested by Chaco (comparing
the subject ID to assigned ID to determine a match/mismatch) to
provide the same advantage or benefit, i.e., to determine whether
or not the identified subject is in/on the correct substrate (e.g., in
the correct, assigned bed), and provide this information to a user.
Id. at 17 (citing Chaco 14:1–12).
In other words, Sullivan/Partin/Wiederhold “utilizes an alternative ID
determining element (i.e., the sensing unit and associated processor)”
(Ans. 3), and the Examiner is relying on Chaco, not for its ID determining
element per se, but rather solely for the idea that the ID determining element
already existing in Sullivan/Partin/Wiederhold could be used to “verify[]
[that] the correct subject is associated with/on the correct substrate/sensing
unit” (id.). That is, “the proposed modification is to utilize the subject
identification data determined by Sullivan as modified (by Partin and
Wiederhold) in the manner Chaco discloses utilizing subject ID data, e.g., to
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ensure . . . the correct subject is lying in the correct substrate/bed.” Id. at 2–
3. The Examiner further explains in the Answer that:
Sullivan suggests use of the system in environments in which a
plurality of subjects would have access to the system, e.g., a
hospital, long-term care facility, nursing home, etc. (¶ [0014]).
Chaco teaches/suggests verifying the identity of subjects in such
an environment (e.g., a hospital) in order to identify when/if a
patient is in the wrong bed, to ensure patients receive the correct
medication, diagnostic information, etc. (col. 14, lines 1–12).
Accordingly, one of ordinary skill in the art would recognize that
utilizing the subject ID determination made by the device of
Sullivan as modified in the manner taught and/or suggested by
Chaco (i.e., comparing the determined subject ID to an assigned
ID associated with the sensor unit to determine a
match/mismatch) would provide a similar, predictable advantage
or benefit; in particular, determining whether or not the identified
subject is in/on the correct substrate (e.g., in the correct, assigned
bed), and providing this information to a user so that appropriate
action may be taken, medication is delivered to the proper
person, etc. in environments in which the system is intended for
use.
Id. at 5.
Appellant argues that “the present claims are unobvious because they
retain the function of Chaco relied upon in the Office Action, but they
eliminate the element of Chaco, that is, the arm band scanning.” Appeal
Br. 5 (emphasis omitted); see also id. (referencing MPEP § 2144.04(II)(B)
entitled “Omission of an Element with Retention of the Element’s Function
is an Indicia of Unobviousness” and In re Edge, 359 F.2d 896 (CCPA 1966)
cited therein). Appellant’s reliance on MPEP § 2144.04(II)(B) and Edge is
misplaced. The Examiner’s combination of Sullivan, Partin, Wiederhold,
and Chaco does not retain the functionality of Chaco and at the same time
eliminate Chaco’s arm band scanning. Instead, the Examiner’s proposed
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modification never utilizes Chaco’s arm band scanning at all, but merely the
idea of determining whether an identified patient is an assigned patient—i.e.,
a patient assigned to an item. In other words, the Examiner’s rejection is
based on the sensing unit and associated processor of
Sullivan/Partin/Wiederhold, which already determines an identity of a
subject, being “modifi[ed] in view of Chaco . . . to utilize this determined
identify information in the manner Chaco utilizes determined identity
information, i.e., compare the determined subject ID to an assigned subject
ID to determine if the IDs match.” Ans. 3.
Appellant argues that “[t]he Examiner does not contend that Sullivan,
Partin, or Wiederhold teach the element that provides the functionality of
Chaco—which is why the Examiner looked to find Chaco to add to the
combination.” Appeal Br. 5. We disagree that the Examiner relied on
Chaco for an element that provides the functionality of Chaco. Instead, the
Examiner finds that the apparatus of Sullivan/Partin/Wiederhold is capable
of the functionality of Chaco, namely, determining if an identified individual
is an assigned individual, and Chaco is merely used to suggest the
desirability of the functionality that Sullivan/Partin/Wiederhold is already
capable of, not to enable such functionality. We have also considered
Appellant’s argument that “the process recognizable by Sullivan as modified
by Chaco would be the use of the technology of . . . Chaco—an arm band
scan to determine if a user is or is not on the correct substrate.” Id. at 6. We
do not find this argument persuasive in that the Examiner has already
explained how Sullivan/Partin/Wiederhold is configured to determine an
identity of a subject in a way that does not involve scanning of an armband.
Further modification to determine whether the subject that has been so
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identified is in the correct, assigned bed for the purpose of “providing this
information to a user so that appropriate action may be taken, medication . . .
delivered to the proper person, etc. in environments in which the system is
intended for use” (Ans. 5) has rational underpinnings.
Appellant argues that the advantage of “a medical facility . . .
ensur[ing] that a patient is on the proper substrate” “is an advantage drawn
from Appellant’s own [S]pecification” and “not an advantage the Examiner
draws from the prior art.” Reply Br. 2. We do not find this argument to be
persuasive in that Chaco explicitly references the desirability of “conveying
any mismatch between” scanned identifying information and stored
identifying information, and specifically in the context of providing
medication, suggests that such a mismatch can be indicative of the patient
being in the wrong bed, and suggests providing the medication to the patient
only if there is no mismatch. Chaco 5:11–19, 14:1–12.
Appellant also argues that “the Examiner is engaging in impermissible
hindsight reasoning and using [Appellant’s] own [S]pecification and claims
as a roadmap to construct a rejection using not the information from the
cited references, but information learned from reading [Appellant’s] own
application.” Appeal Br. 6. More specifically, Appellant argues that “[t]he
only way in which any of the combined references determine the identi[t]y
of a person on a substrate is through the use of a device attached to the
subject.” Id. Although Appellant contends that the Examiner has engaged
in impermissible hindsight, Appellant does not address with any specificity
the reasoning provided by the Examiner to modify Sullivan with each of
Partin, Wiederhold, and Chaco. Final Act. 4–8; Ans. 2–5; see also In re
Cree, Inc., 818 F.3d 694, 702 n.3 (Fed. Cir. 2016) (viewing an
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“impermissible hindsight” argument as “essentially a repackaging of the
argument that there was insufficient evidence of a motivation to combine the
references”). By not addressing the reasoning provided, Appellant has not
shown error in the relevant findings or the conclusion as to obviousness,
which we determine to be supported by rational underpinnings.5
As to the argument that the only way any of the combined references
determines the identity of a person on a substrate is through a device
attached to the subject, we find such an argument unpersuasive in that it
attacks the references individually. That none of the cited references alone
teaches determining the identity of a person on a substrate without the use of
a device attached to the subject does not address the Examiner’s findings
and reasoning for the conclusion of the obviousness of such a feature
presented in the rejection. See, e.g., Final Act. 7 (modifying the sensing
system of Sullivan/Partin which senses without contacting the subject so that
the processor identifies the subject based on the sensed measurements as
taught by Wiederhold). “Nonobviousness cannot be established by attacking

5 Appellant’s representative at the oral hearing advanced a new argument
that had not been presented to the Examiner in the Appeal Brief or Reply
Brief. In particular, Appellant’s representative argued specifically against
the Examiner’s stated rationale for modifying Sullivan with Partin’s teaching
of a fluid-filled bladder and sensor in fluid communication with the
bladder—namely, “to increase the surface area capable of being measured
by a single sensor element.” Tr. 13:10–14:11. We need only consider
arguments presented by Appellant in the briefs. See 37 C.F.R. § 41.47(e)(1).
Even if we were to consider the argument, we do not find it persuasive
because it does not address the Examiner’s additional stated rationale of
“utiliz[ing] a predictable alternative/additional means for identifying
pressure variations representative of physiological parameters.” Final Act. 6
(citing Partin Abstract).
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references individually where the rejection is based upon the teachings of a
combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Moreover,
we note Wiederhold’s teaching that “[t]he illustrative biometrics disclosed
herein . . . may be measured at a distance (using standoff techniques),
providing the potential for non-intrusive means of identifying individuals.”
Wiederhold ¶ 44. Thus, Wiederhold contemplates obtaining biometric data
for use in identifying individual subjects “either from contact sensors or at a
distance.” Id. at Abstract.
We have also considered Appellant’s argument that “the mere fact
that the Examiner has plucked four different references each related to
different technology for combination is further evidence of hindsight.”
Appeal Br. 7. As an initial matter, this argument does not apprise us of error
in the rejection, because the number of references applied is not relevant to
the propriety of the combination of references. In re Gorman, 933 F.2d 982,
986 (Fed. Cir. 1991). Moreover, the presence of differences between the
references does not necessarily undermine a prima facie case of obviousness.
See In re Beattie, 974 F.2d 1309, 1312–13 (Fed. Cir. 1992).
For the foregoing reasons, Appellant does not apprise us of error in
the Examiner’s determination that Sullivan/Partin/Wiederhold/Chaco
renders obvious the subject matter of independent claim 1. Accordingly, we
sustain the rejection of claim 1, and claims 2, 3, 6, 7, 24, 25, 29, 30, and 32
falling therewith, under 35 U.S.C. § 103(a) as unpatentable over Sullivan,
Partin, Wiederhold, and Chaco.
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Rejections II–V
Appellant relies on the same arguments and reasoning we found
unpersuasive in connection with independent claim 1 as the basis for seeking
reversal of the rejections of claims 4, 5, 8–10, and 31. Appeal Br. 9.
Accordingly, for the same reasons discussed above in connection with the
rejection of claim 1, we also sustain the rejections, under 35 U.S.C. § 103(a),
of claims 4 and 5 as unpatentable over Sullivan, Partin, Wiederhold, Chaco,
and Toms; claims 8 and 9 as unpatentable over Sullivan, Partin, Wiederhold,
Chaco, and Higgins; claim 10 as unpatentable over Sullivan, Partin,
Wiederhold, Chaco, Higgins, and Sotos; and claim 31 as unpatentable over
Sullivan, Partin, Wiederhold, Chaco, and Wridge.

CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1–3, 6, 7, 24,
25, 29, 30, 32
103(a) Sullivan, Partin,
Wiederhold, Chaco
1–3, 6, 7,
24, 25, 29,
30, 32

4, 5 103(a) Sullivan, Partin,
Wiederhold, Chaco,
Toms
4, 5
8, 9 103(a) Sullivan, Partin,
Wiederhold, Chaco,
Higgins
8, 9
10 103(a) Sullivan, Partin,
Wiederhold, Chaco,
Higgins, Sotos
10
31 103(a) Sullivan, Partin,
Wiederhold, Chaco,
Wridge
31
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Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
Overall
Outcome
1–10, 24,
25, 29–32

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