Ex Parte Kobayashi et al

Patent Trials and Appeals Board

Jan 7, 2019

14557806 - (D) (P.T.A.B. Jan. 7, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/557,806 12/02/2014 Naoki Kobayashi
116 7590 01/09/2019
PEARNE & GORDON LLP
1801 EAST 9TH STREET
SUITE 1200
CLEVELAND, OH 44114-3108
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
55637 6037
EXAMINER
WINAKUR, ERIC FRANK
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
01/09/2019 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):
patdocket@peame.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NAO KI KOBAYASHI, TEIJI UKA WA,
KAZUMASA ITO, MASAHIRO TAKEUCHI,
YOSHINORI UEDA, and HIROKO HAGIWARA
Appeal2017-010132
Application 14/557,806
Technology Center 3700
Before ULRIKE W. JENKS, TIMOTHY G. MAJORS, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
MAJORS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 submit this appeal under 35 U.S.C. § 134 involving
claims to a biological signal measuring system. The Examiner rejected the
claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify the Real Party in Interest as Nihon Kohden
Corporation. App. Br. 2.
Appeal2017-010132
Application 14/557,806
STATEMENT OF THE CASE
Appellants' disclosure "relates to a biological signal measuring
system which is used in congenital heart disease screening in neonates."
Spec. 1:12-14. According to the Specification, when a "subject has
congenital heart disease, a difference occurs between the values of arterial
oxygen saturations (Sp02) which are detected in the first and second body
portions," such as at the subject's fingertip and toe using pulse oximetry. Id.
at 1: 15-23. Because arterial oxygen saturation varies every moment, the
Specification explains, it is difficult for medical personnel to compare and
correctly identify the numerical values displayed on two pulse oximeters at
certain timing. Id. at 2: 12-16. Appellants' disclosed and claimed
monitoring system is aimed at addressing this problem - "reducing the
burden of a medical person in, for example, congenital heart disease
screening, and supporting correct determination" of differences in the
averages of Sp02 values taken from different portions of the subject's body.
Id. at 2:20-4:8; see also id. at 11 :3-23, Fig. 1 (depicting, among other
features, a first average value (Al) displaying section (32), a second average
value (A2) displaying section (33), and a difference value displaying section
(31), which displays the difference between Al and A2 (e.g., 7%)).
Claims 1-9 are on appeal. Claim 1, the only independent claim, is
illustrative and is reproduced below:
1. A biological signal measuring system comprising:
a first optical sensor which is to be attached to a first body
portion of a subject;
a first attenuation ratio acquiring section which is
configured to acquire a temporal change of a first attenuation
ratio corresponding to an attenuation ratio of a plurality of
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Application 14/557,806
wavelengths in the first body portion, based on a first signal
output from the first optical sensor;
a first oxygen saturation acquiring section which is
configured to acquire a temporal change of a first oxygen
saturation corresponding to an arterial oxygen saturation in the
first body portion, based on the temporal change of the first
attenuation ratio;
a second optical sensor which is to be attached to a second
body portion of the subject;
a second attenuation ratio acquiring section which is
configured to acquire a temporal change of a second attenuation
ratio corresponding to an attenuation ratio of a plurality of
wavelengths in the second body portion, based on a second signal
output from the second optical sensor;
a second oxygen saturation acquiring section which is
configured to acquire a temporal change of a second oxygen
saturation corresponding to an arterial oxygen saturation in the
second body portion, based on the temporal change of the second
attenuation ratio;
a first average oxygen saturation acquiring section which
is configured to acquire a first average value corresponding to an
average value of the first oxygen saturation in a predetermined
time period starting at a first time;
a second average oxygen saturation acquiring section
which is configured to acquire a second average value
corresponding to an average value of the second oxygen
saturation in the predetermined time period starting at a second
time that is different from the first time;
a difference value acquiring section which is configured to
acquire a difference value between the first average value and the
second average value; and
a difference value displaying section which is configured
to display the difference value.
App. Br. 12 (Claims App.).
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Application 14/557,806
The claims stand rejected as follows:
Claims 1-7 under 35 U.S.C. § 103 as obvious over Kobayashi,2
Melker, 3 and Kiani. 4
Claim 8 under 35 U.S.C. § 103 as obvious over Kobayashi, Melker,
Kiani, and Chen. 5
Claim 9 under 35 U.S.C. § 103 as obvious over Kobayashi, Melker,
Kiani, and Bindszus. 6
DISCUSSION
Claim 1
The Examiner has rejected independent claim 1 as obvious over
Kobayashi, Melker, and Kiani. Ans. 4---6. The issue on appeal is whether a
preponderance of the evidence on this record supports the Examiner's
conclusion of obviousness.
At the outset, the Examiner states that several limitations of claim 1
are being interpreted under 35 U.S.C. § 112(±) for invoking means-plus-
function terminology. Ans. 2-3. Those limitations include, inter alia, the
recited "acquiring section[ s] which [are] configured to acquire," for
example, "a first average value corresponding to an average value of the first
oxygen saturation in a predetermined time period starting at a first time." Id.
Accordingly, the Examiner states that those limitations have "been
interpreted to cover the corresponding structure described in the
2 Kobayashi et al., US 7,376,452 B2, issued May 20, 2008.
3 Melker et al., US 2003/0236452 Al, published Dec. 25, 2003.
4 Kiani, US 2008/0071155 Al, published Mar. 20, 2008.
5 Chen et al., US 2013/0338519 Al, published Dec. 19, 2013.
6 Bindszus et al., US 6,178,343 Bl, issued Jan. 23, 2001.
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Application 14/557,806
specification that achieves the claimed function, and equivalents thereof."
Id. at 3. 7 Appellants provide no argument that it was inappropriate for the
Examiner to interpret claim 1 under§ 112(f).
Despite some apparent confusion about whether, by reason of the
Examiner's comments on means-plus-function terminology, the Examiner
was making an inchoate rejection for indefiniteness under§ 112(b ), the
Examiner has since confirmed "[t]here were no rejections given under
35 U.S.C. 112(b) in the [Examiner's] comments" and that Appellants'
arguments on that issue are, thus, "moot." Ans. 10; see also App. Br. 6-7;
Final Act. 2-3.
According to the Examiner, Kobayashi teaches most of claim 1 's
limitations, but fails to teach the recited first and second average oxygen
saturation acquiring sections that are, respectively, configured to acquire
first and second average values that correspond to average values of the first
and second oxygen saturations for different time periods. Ans. 4--5.
Further, the Examiner finds that Kobayashi does not teach the "difference
value acquiring section which is configured to acquire a difference value
between the first average value and the second average value," nor the
displaying section for displaying the difference in values. Id. at 5.
The Examiner finds that Melker teaches the first and second average
oxygen saturation acquiring sections, configured as claimed. Ans. 5---6
7 As we discuss further below, although the Examiner states that the claims
are being interpreted under§ 112(f), the Examiner neither cites any specific
portion of the Specification nor identifies what the Examiner regards as the
corresponding structures/algorithms described therein.
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( citing Melker ,r 80, Fig. 7). And the Examiner finds that Kiani teaches a
displaying section for visually displaying measurement differences. Id. at 6.
The Examiner concludes the subject matter of claim 1 would have
been obvious over Kobayashi, Melker, and Kiani. Id. at 5---6. More
specifically, the Examiner reasons that the ordinarily skilled person would
have modified Kobayashi's pulse oximetry system "with an average
acquiring section and difference value acquiring section, as taught in
Melker, in order to monitor any presence or absence of impaired peripheral
perfusion in the subject." Id. at 5---6. And the Examiner reasons it would
have been obvious to display calculated differences on a displaying section,
as suggested in Kiani, to provide a visual indication of the subject's
condition. Id. at 6.
Appellants argue that the averaging performed in Melker' s system is
not the same as providing an average value of the first and second oxygen
saturation as required by claim 1 's first and second average oxygen
saturation acquiring sections. App. Br. 8. Instead, according to Appellants,
"Melker is directed to averaging sensor signals to determine blood oxygen
saturation," whereas "claim 1 is directed to averaging blood oxygen
saturation levels over a period of time." Id. Put differently, Appellants
contend the cited disclosures of Melker describe averaging certain inputs
(probe signals) used in the calculation of an oxygen saturation (Sp02 value),
yet the claims require averaging calculated outputs (Sp02 values) over
different times to provide, respectively, first and second average Sp02
values for comparison and display. Id. ("Mathematically, a single calculated
result based on average input values [in Melker] is not the same as an
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average of multiple calculated results. . . . Without averaging the saturation
values, Melker cannot teach the claimed feature.").
For reasons explained below, on the record before us, Appellants'
argument is persuasive.
The Examiner acknowledges that averaging the input sensor signals
that are used to find blood oxygen saturation values, as in Melker, is not the
same as averaging the blood oxygen saturation values themselves. Ans. 11
("[T]he Examiner understands the mathematical difference between the two
aforementioned methods of 'averaging' .... "). Nevertheless, the Examiner
asserts that "claim 1 does not specify the algorithms the average oxygen
saturation acquiring sections perform in order to obtain the 'average value'
of the first and second oxygen saturation." Id. So, the Examiner states,
"Melker' s averaging the acquired input signals, which is then used to
calculate an oxygen saturation value, can definitely be interpreted as
acquiring an average oxygen saturation value." Id. But it was the Examiner
who indicated that claim 1 's "acquiring sections" were means-plus-function
limitations under§ 112(f), and therefore it was not required for the claim
itself to recite a corresponding algorithm for those limitations. 8 And the
Examiner did not, as a threshold matter, set forth any analysis of the
disclosures in the Specification to identify the corresponding
8 35 U.S.C. § 112(f) ("An element in a claim for a combination may be
expressed as a means or step for performing a specified function without the
recital of structure, material, or acts in support thereof .... ") ( emphasis
added). "A computer-implemented means-plus-function term is limited to
the corresponding structure disclosed in the specification and equivalents
thereof, and the corresponding structure is the algorithm." Harris Corp. v.
Ericsson Inc., 417 F.3d 1241, 1253 (Fed. Cir. 2005).
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structure/algorithm for providing the functionality of those acquiring
sections - acquiring first and second average values that correspond to
average values of the first and second oxygen saturations. Without such
analysis, the Examiner did not meet the burden to show that averaging of
input signals acquired from sensors, as in Melker, is in any way consistent
with Appellants' disclosure or encompassed by the "average oxygen
acquiring section[ s ]" of claim 1.
Moreover, based on our review of claim 1 in light of the Specification,
Appellants' reading of the claim as requiring the system to be configured to
first determine oxygen saturations, and then average those oxygen saturation
values, is the more persuasive interpretation. Reply Br. 2. Claim 1 provides
optical sensors, which output sensor signals to other portions of the system
for further processing. Attenuation ratios are determined based on the
signals from the sensors. The system then includes sections configured to
acquire first and second oxygen saturations based on changes in the earlier-
determined attenuation ratios. The average oxygen saturation acquiring
sections are configured to then acquire average values of the first and second
oxygen saturations, which as a matter of logic and antecedence, means that
the first and second oxygen saturations (Sp02 values) must have already
been determined. See also Spec. Fig. 2 (block diagram showing sensor
signals (G 1 and G2) further processed to determine attenuation ratios and
oxygen saturation values before oxygen saturation values (S 1, S2) are output
for averaging and the average values (Al, A2) computed)). 9 The notion that
9 See also, e.g., Spec. 13:16-19 ("The difference value is acquired based on
the values of the arterial oxygen saturations which are averaged over the
predetermined time periods T, respectively.").
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claim 1 's average oxygen saturation acquiring sections are met merely by an
averaging of signals from the optical sensors, as suggested by the Examiner,
reads the system of claim 1 in a nonsensical manner and for which the
Examiner provides, and we discern, no support in the Specification.
For the above reasons, the Examiner has not met the burden to show a
disclosure in Melker of the first and second "average oxygen saturation
acquiring section[ s ]" as recited in claim 1. CFMT, Inc. v. YieldUp Int 'l
Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) ("[O]bviousness requires a
suggestion of all limitations in a claim."). 10 Neither did the Examiner assert
that those limitations are disclosed in Kobayashi or Kiani. Hence, we
reverse the rejection of claim 1 (and dependent claims 2-7) as obvious over
Kobayashi, Melker, and Kiani. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir.
1992) ("[D]ependent claims are nonobvious if the independent claims from
which they depend are nonobvious."). The rejections of dependent claims 8
and 9 rely on the same Kobayashi, Melker, and Kiani combination, which
remains deficient as explained for independent claim 1, and the Examiner
has not shown that the additional references (Chen and/or Bindszus) make
up for those deficiencies. Ans. 9-10.
SUMMARY
We reverse the rejections of claims 1-9 for obviousness on appeal.
REVERSED
10 We need not reach Appellants' second argument related to the Examiner's
rationale for combining the references. App. Br. 9-10; Reply Br. 2-3.
9