Sarah Chin

Patent Trials and Appeals BoardJun 2, 2021

2020005970 (P.T.A.B. Jun. 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. 14/658,101 03/13/2015 Sarah Chin SCHIN01 3996 98262 7590 06/02/2021 David E. Crites 15900 Rochin Terrace Los Gatos, CA 95032 EXAMINER MARLEN, TAMMIE K ART UNIT PAPER NUMBER 3792 NOTIFICATION DATE DELIVERY MODE 06/02/2021 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): critesd@umich.edu davidcrites@frontier.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SARAH CHIN Appeal 2020-005970 Application 14/658,101 Technology Center 3700 ____________ Before MICHAEL J. FITZPATRICK, WILLIAM A. CAPP, and JILL D. HILL, Administrative Patent Judges. FITZPATRICK, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant, Sarah Chin, requests rehearing under 37 C.F.R. § 41.52 of our Decision of May 3, 2021 (“Decision”), wherein we affirmed the Examiner’s rejection of claims 1–20. See Request for Rehearing filed May 22, 2021 (“Request”). The Request is denied. Appeal 2020-005970 Application 14/658,101 2 DISCUSSION A “request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board.” 37 C.F.R. § 41.52(a)(1). Appellant’s Request identifies two such alleged points: “(A) The Decision misapprehends the meaning of ‘contradictory’ as applied to negative claim limitations[; and] (B) The Decision overlooks paragraph [0029] of the subject specification.” Request 1. With respect to Appellant’s first point, the word “contradictory” is not recited in the claims. Rather, “contradictory” is a word that the Examiner and the Board have used to characterize the following claim language: “wherein the microcontroller is not configured to collect, in the high risk mode, an additional datum from a blood pressure sensor, wherein the microcontroller is not configured to not collect, in the high risk mode, an additional datum from a blood pressure sensor.” Appeal Br. 11 (Claim 1, emphasis added); see also Appeal Br. 13 (claim 11, the only other independent claim, reciting the same). The Request argues: “To correctly construe the two subject clauses, it is helpful to apply both clauses to an example, because if even one example can be found that does not result in a contradiction, then then the two subject clauses are proven to be not-contradictory, by definition.” Request 2. The Request then discusses US 2016/0100805 A1, published Apr. 14, 2016 (“Muehlsteff”) and argues that it discloses a “device that assesses the risk of arrhythmia and chooses to collect a cuff-deflation blood pressure measurement when risk is high” but not when “risk is too high.” Request 2. This argument is not persuasive. Indeed, our prior Decision already Appeal 2020-005970 Application 14/658,101 3 considered essentially the same argument, and found it to be not persuasive, stating: Appellant argues that “the two clauses that the [Examiner] mistakenly calls ‘contradictory’ need not be true simultaneously.” Appeal Br. 8. Appellant expounds, arguing: Indeed, a microcontroller can be configured to collect a datum in certain circumstances and configured not to collect a datum in other circumstances. Furthermore, a microcontroller that is not configured in this way, excludes these features. For example, a microcontroller may be configured with instructions that cause it to collect a datum under certain conditions and not to collect a datum under other conditions. Thus, a microcontroller not configured in such a way would comprise no such instructions. Id. at 8–9. Appellant’s arguments do not apprise us of error because they are not commensurate with the scope of the claim. The “certain conditions” that Appellant’s argument invokes are not recited in the claim. Dec. 5 (quoting Appeal Br. 8–9). As recited in claims 1 and 11, both clauses apply “in the high risk mode” and without any further limitation, let alone differentiation. The Request additionally argues that the two clauses are not contradictory because the claims require only one clause to be met at any given time or for any given situation. See Request 3 (“For their part, the two subject clauses of Claims 1 and 11 distinguish any circumstance wherein a microcontroller in high risk mode is either ‘configured to collect’, or ‘configured to not collect’, an additional datum from a blood pressure sensor.” (emphasis added)). However, Appellant’s proposed construction is erroneous. Neither claim 1 nor claim 11 connects the two clauses using a disjunctive term such as “either” or “or.” And the Examiner previously disabused Appellant of any such argument, stating: Appeal 2020-005970 Application 14/658,101 4 Regarding the discussion in the rejection that the “wherein” clauses are contradictory, the Appellant argues that the two “wherein” clauses “need not be true simultaneously” and “a microcontroller can be considered to collect a datum in certain circumstances and configured not to collect a datum in other circumstances.” However, the use of the word “and” on line 16 of claim 1 to join the three wherein clauses together means that all three configurations must be true. As such, according to the claim, the microcontroller must be “not configured to collect, in the high risk mode, an additional datum from a blood pressure”, “not configured to not collect, in the high risk mode, an additional datum from a blood pressure sensor”, and the high risk mode “does not comprise encouraging the user to change their posture.” As such, these wherein clauses are in fact contradictory. Ans. 7. In sum, with respect to the indefiniteness rejection, Appellant’s arguments that the two clauses are not contradictory because the claim requires satisfaction of only clause for a particular circumstance, and further without specifying such circumstance, is not persuasive. With respect to Appellant’s second point, the Decision did not overlook paragraph 29 of the Specification. Rather, the Decision cited our previous holding “that Paragraph 19 is the only portion of the Specification that describes what the [high] risk mode may be.” Dec. 6 (citing Ex Parte Chin, Appeal No. 2019-002062, at 5 (PTAB Sept. 25, 2019)). Appellant was obligated to disclose Ex Parte Chin with its Appeal Brief but did not do so. Dec. 3; 37 C.F.R. § 41.37(c)(1)(ii). In any event, Appellant’s argument about what paragraph 29 discloses, in conjunction with paragraph 19, is not persuasive. After quoting portions of those two paragraphs, the Appeal Brief asserted: “As a whole, these paragraphs teach a high risk mode of the apparatus wherein the apparatus collects additional data from a sensor that Appeal 2020-005970 Application 14/658,101 5 measures blood pressure (aka ‘a blood pressure sensor’).” Appeal Br. 5 (citing Spec. 19, 29). However, the cited disclosure, at best, would render the claimed subject matter obvious. But that is not sufficient. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010) (en banc) (“[W]hile the description requirement does not demand any particular form of disclosure, or that the specification recite the claimed invention in haec verba, a description that merely renders the invention obvious does not satisfy the requirement.”) (citations omitted). In order to satisfy the written description requirement, the Specification as filed must convey with reasonable clarity to those skilled in the art that the inventor was in possession of the invention, as now claimed. Purdue Pharma L.P. v. Faulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000). The Specification does not. For the foregoing reasons, Appellant’s Request is denied. SUMMARY Outcome of Decision on Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/Basis Denied Granted 1–20 112(a) written description 1–20 1–20 112(b) indefiniteness 1–20 Appeal 2020-005970 Application 14/658,101 6 Final Outcome of Appeal after Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–20 112(a) written description 1–20 1–20 112(b) indefiniteness 1–20 Overall Outcome 1–20 DENIED