Sarah Chin

Patent Trials and Appeals BoardMay 3, 2021

2020005970 (P.T.A.B. May. 3, 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 05/03/2021 David E. Crites 15900 Rochin Terrace Los Gatos, CA 95032 EXAMINER MARLEN, TAMMIE K ART UNIT PAPER NUMBER 3792 NOTIFICATION DATE DELIVERY MODE 05/03/2021 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 APPEAL Appellant, Sarah Chin, appeals under 35 U.S.C. § 134(a) from the Examiner’s non-final decision rejecting claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2020-005970 Application 14/658,101 2 STATEMENT OF THE CASE The Specification The “disclosure relates generally to a technical field of health-related mobile devices that address or monitor biosignals (e.g. bioelectrical signals) and, in one embodiment, to a method and apparatus of anticipating cardiac arrhythmias.” Spec. ¶2. The Rejected Claims Claims 1–20 are rejected; no other claims are pending. Non-Final Act. 1. Claim 1 is representative and reproduced below. 1. A mobile apparatus for anticipating a cardiac arrhythmia of a user, the apparatus comprising: a microcontroller; and a memory communicatively coupled to the microcontroller wherein the memory is configured to store a non-physiological risk factor of the user and a contemporary non-physiological datum of the user, wherein the microcontroller is configured to: compare the risk factor with the contemporary datum, anticipate the cardiac arrhythmia when the risk factor is correlated with the contemporary datum, and enter a high risk mode when the arrhythmia is anticipated, wherein anticipating the cardiac arrhythmia comprises predicting the cardiac arrhythmia in advance of the cardiac arrhythmia, 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, and wherein the high risk mode does not comprise encouraging the user to change their posture. Appeal Br. 11 (emphasis added). Appeal 2020-005970 Application 14/658,101 3 The Examiner’s Rejections The following rejections are before us: (1) claims 1–20 under 35 U.S.C. § 112(a) as failing to comply with the written description requirement (Non-Final Act. 2); and (2) claims 1–20 under 35 U.S.C. § 112(b) as indefinite (id. at 6). Related Cases Our Rules require an appellant to include as part of the appeal brief: [a] statement identifying . . . all other prior and pending appeals, interferences, trials before the Board, or judicial proceedings (collectively, “related cases”) which satisfy all of the following conditions: involve an application or patent owned by the appellant or assignee, are known to appellant, the appellant’s legal representative, or assignee, and may be related to, directly affect or be directly affected by or have a bearing on the Board’s decision in the pending appeal. 37 C.F.R. § 41.37(c)(1)(ii). Appellant included a statement purporting to comply with this requirement but—incredibly—failed to identify Appeal No. 2019-002062 involving the instant Application. In Appeal No. 2019- 002062, we affirmed a written description rejection under 35 U.S.C. § 112(a) not much unlike the § 112(a) rejection at issue in the instant Appeal. Decision, Appeal No. 2019-002062, mailed Sept. 25, 2019 (“Prior Decision” or “Prior Dec.”); see also Decision Denying Request for Rehearing, Appeal No. 2019-002062, mailed Nov. 8, 2019 (“Prior Rehearing Decision” or “Prior Reh’g Dec.”). The rejections at issue here, like that at issue in Appeal No. 2019-002062, relate to Appellant’s limitations regarding a “high risk mode” and “blood pressure” measurement/data. The instant Appeal Brief was filed on March 16, 2020, approximately four months after our Prior Rehearing Decision and only after Appeal 2020-005970 Application 14/658,101 4 a single subsequent and non-final office action. It would be reasonable to conclude from these circumstances that Appellant’s failure to identify the Prior Decision and Prior Rehearing Decision was not inadvertent. DISCUSSION We consider the appeal of the indefiniteness rejection first. Ex parte Moore, 439 F.2d 1232, 1235 (CCPA 1971) (“For the sake of completeness we will treat the claims on appeal as if they were rejected under both the first and second paragraphs of § 112. Any analysis in this regard should begin with the determination of whether the claims satisfy the requirements of the second paragraph.”). Rejection 2—Indefiniteness A claim is indefinite if, after applying the broadest reasonable interpretation in light of the specification, the metes and bounds of a claim are not clear because the claim contains words or phrases whose meaning is unclear. In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014) (per curiam); see also Ex parte McAward, No. 2015-006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential) (adopting the approach for assessing indefiniteness approved by the Federal Circuit in Packard). The Examiner determined claim 1 was indefinite for multiple reasons. Non-Final Act. 6–7. One such reason is based on the combined recitations of “wherein the microcontroller is not configured to collect, in the high risk mode, an additional datum from a blood pressure sensor” and “wherein the microcontroller is not configured to not collect, in the high risk mode, an additional datum from a blood pressure sensor.” Id. at 6. As immediately discernable, “[t]hese ‘wherein’ clauses contradict one another.” Id. The Appeal 2020-005970 Application 14/658,101 5 Examiner adds: “It is not possible for the microcontroller to both be not configured to collect and not configure[d] to not collect.” Id. 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. Thus, claim 1 encompasses the microcontroller, in the high risk mode, not configured to collect an additional datum from a blood pressure sensor but also the microcontroller, in the high risk mode, not configured to not collect an additional datum from a blood pressure sensor. Those clauses are clearly contradictory and render the metes and bounds of claim 1 unclear. For at least that reason, claim 1 is indefinite and we affirm the rejection of claim 1 under 35 U.S.C. § 112(b). Claim 11, the only other independent claim, recites the same contradictory limitations. Appeal Br. 13. Claims 2–10 and claims 12–20 respectively depend from claim 1 and claim 11 and incorporate the same infirmity. Id. at 11–15. Thus, we also affirm the rejection of claims 2–20 under 35 U.S.C. § 112(b). Appeal 2020-005970 Application 14/658,101 6 Rejection 1—Lack of Adequate Written Description Section 112(a) states: The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such 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. 35 U.S.C. § 112(a). “In order to satisfy the written description requirement, the disclosure as originally filed does not have to provide in haec verba support for the claimed subject matter at issue.” Purdue Pharma L.P. v. Faulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000). Nonetheless, the disclosure must convey with reasonable clarity to those skilled in the art that the inventor was in possession of the invention. See id. Whether it does is a question of fact. Id. at 1329. The Examiner found that the Specification as filed fails to describe either of the limitations discussed above in connection with the § 112(b) rejection. Non-Final Act. 2–3. The Examiner explained that “the specification at paragraph [0019] is the only disclosure of what the high risk mode may be.” Id. at 3. The Examiner is correct. See Prior Dec. 5 (“The Examiner is correct that Paragraph 19 is the only portion of the Specification that describes what the [high] risk mode may be.”). And, as pointed out by the Examiner, “paragraph [19] fails to describe collecting or not collecting an additional datum from a blood pressure sensor.” Non-Final Act. 3. Again, the Examiner is correct. As we previously held in the Prior Decision, which Appellant failed in its duty to bring to our attention: Paragraph 19 includes fifteen sentences that begin as follows: “A high risk mode [] may comprise . . . .” Spec. ¶19. In none of those sentences is blood pressure mentioned. Id. Appeal 2020-005970 Application 14/658,101 7 Prior Dec. 5. As we also previously held in the Prior Decision, “the Specification [as a whole] does not describe a high risk mode as either excluding or including, specifically, the timing or collecting of a blood pressure measurement.” Id. at 5–6. We affirm the rejection of claims 1–20 under 35 U.S.C. § 112(a). SUMMARY 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 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