Case: 19-1334    Document: 47    Page: 1    Filed: 02/06/2020




        NOTE: This disposition is nonprecedential.


   United States Court of Appeals
       for the Federal Circuit
                  ______________________

           IN RE: DENNIS S. FERNANDEZ,
                       Appellant
                ______________________

                        2019-1334
                  ______________________

     Appeal from the United States Patent and Trademark
 Office, Patent Trial and Appeal Board in No. 11/385,054.
                   ______________________

                Decided: February 6, 2020
                 ______________________

    DENNIS S. FERNANDEZ, Fernandez & Associates, LLP,
 Atherton, CA, pro se.

    MONICA BARNES LATEEF, Office of the Solicitor, United
 States Patent and Trademark Office, Alexandria, VA, for
 appellee Andrei Iancu. Also represented by THOMAS W.
 KRAUSE, JOSEPH MATAL, AMY J. NELSON, MAUREEN
 DONOVAN QUELER.
                 ______________________

    Before REYNA, TARANTO, and STOLL, Circuit Judges.
 PER CURIAM.
     Pro se appellant Dennis S. Fernandez appeals from a
 decision of the Patent Trial and Appeal Board affirming an
 examiner’s rejection of Fernandez’s applied-for claims as
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 2                                           IN RE: FERNANDEZ




 obvious.   Because substantial evidence supports the
 Board’s obviousness determination, we affirm.
                        BACKGROUND
                             I.

     Inventor Fernandez filed U.S. Patent Application
 No. 11/385,054 (“the ’054 application”) with the United
 States Patent and Trademark Office on March 20, 2006.
 The ’054 application is directed to implantable network-bi-
 osensors and software for monitoring and analyzing biolog-
 ical hosts. According to the ’054 application, biosensors
 and software were both known in the art but were not eas-
 ily integrated or reconfigurable. The ’054 application aims
 to overcome this difficulty by disclosing “an integrated bio-
 sensor-simulation system” that encompasses sensors with
 a software platform and that provides the user with a di-
 agnosis or proposed therapy.

    Figure 1(a), reproduced below, illustrates an implanta-
 ble network biosensor.




 J.A. 106.
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 IN RE: FERNANDEZ                                           3



     Central to this appeal are the “simulation” and “recon-
 figurable” limitations of independent claim 11 of the ’054
 application. Claim 11 recites:

    11. Implantable network-biosensor comprising:
        a sensor unit for receiving a multi-sensor signal
           from a biosensor platform for detecting a bio-
           logical material of a host;
        a controller comprising multi-levels of incorpo-
           rations of computational and/or simulation
           data for processing a systems-biology plat-
           form for configuring said sensor unit and/or
           analyzing said multi-sensor signal; and
        a wireless communication unit, whereby said
          multi-sensor signal and/or data generated by
          said controller could be communicated wire-
          lessly with external sources, devices or ser-
          vices, from which a suggested diagnosis or
          therapy is accessible to patients or medical
          professionals;
        wherein the suggested diagnosis or therapy is
          generated automatically by the controller
          running the systems-biology platform as a
          computer-automated multi-model simulation
          application that computationally models a di-
          agnostic or therapeutic computer-modeling of
          the biological material or host automatically
          in response to the multi-sensor signal repre-
          senting actually sensed stimuli to the biologi-
          cal material or host, whereby the systems-
          biology platform automatically simulates to
          generate the diagnostic or therapeutic sugges-
          tion in response to the actually sensed multi-
          sensor signal stimuli using computationally
          modeled simulation of the biological material
          or host as a whole biological system using
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           multiple levels of simulation modeling; [i.e.,
           the “simulation limitation”]
         wherein the sensor unit couples to the systems-
           biology platform via a hardware-reconfigura-
           ble logical interconnect, thereby enabling sig-
           nal switching of such interconnect that is
           logically multiplexed between the sensor unit
           and the systems-biology platform, such that
           the systems-biology platform provides elec-
           tronic feedback automatically to reconfigure
           the hardware-reconfigurable logical intercon-
           nect according to the computationally mod-
           eled simulation of the biological material or
           host as a whole biological system using both
           multifunctional sensing by the sensor unit
           and multiple levels of simulation modeling by
           the systems-biology simulation unit [i.e., the
           “reconfiguration limitation”].
 J.A. 2682-2683 (disputed limitations emphasized).
                              II.

     The examiner rejected appellant’s claims 11-12, 15, 18,
 21, 32-33 and 35 as obvious over Arent 1 in view of Petrella 2,
 Parker 3, Brown 4, and Halperin 5. Arent discloses an im-
 plantable medical device for real-time monitoring of a
 host’s physiological parameters at multiple anatomical lo-
 cations. The device can also be mounted externally on the


     1  U.S. Patent No. 6,358,202 BA.
     2  U.S.    Patent Application      Publication No.
 2003/0184577 A1.
    3   U.S. Patent No. 6,997,882 B1.
    4   U.S. Patent No. 7,167,818 B2 (“Brown ’818”) and
 U.S. Patent No. 7,877, 274 B2 (“Brown ’274”). Hereinafter,
 Brown ’818 and Brown ’274 will be referred to as “Brown.”
    5   U.S. Patent No. 5,810,735.
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 IN RE: FERNANDEZ                                          5



 host. The examiner found, and no party disputes, that Ar-
 ent discloses most of the limitations in claim 11. The only
 two limitations that Arent does not disclose are the simu-
 lation and reconfigurable limitations emphasized above.
     The examiner found that Petrella, Parker, and Brown
 each disclose the simulation limitation. Petrella discloses
 a method of using simulation to analyze a prosthetic de-
 vice. Parker discloses a device and method that uses sim-
 ulation to monitor and analyze a host’s movements and
 physiological status. Brown discloses a system that moni-
 tors the physiological status of a host through monitoring
 certain parameters, such as blood glucose and blood pres-
 sure. The Brown system also simulates and predicts the
 effects of an action on a disease parameter.
     The examiner found that Halperin discloses the recon-
 figuration limitation. Halperin discloses a system for long-
 term monitoring of a host’s physiological status through
 sensors and a monitoring apparatus. In a preferred em-
 bodiment, Halperin teaches that a sensor is implanted in
 the host and the data collected from the sensor can be used
 to “adaptively reconfigure or change the functioning of the
 implanted device.” J.A. 2839. The examiner found that a
 person of ordinary skill in the art (“POSITA”) would have
 been motivated to combine the five references with a rea-
 sonable expectation of success.
     The Board affirmed the examiner’s rejection of claim
 11 as obvious and adopted the findings and rationale pro-
 vided by the examiner. Fernandez appeals the Board’s de-
 termination. This court has jurisdiction under 28 U.S.C.
 § 1295(a)(4) and 35 U.S.C. § 141.
                        DISCUSSION
     Fernandez challenges the Board’s obviousness rejec-
 tion on three separate grounds. First, Fernandez chal-
 lenges the Board’s findings as to the scope and content of
 Petrella.   Second, Fernandez challenges the Board’s
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 6                                           IN RE: FERNANDEZ




 motivation-to-combine finding by arguing that Halperin
 teaches away from the claimed invention. Third, Fernan-
 dez argues that the Board failed to articulate a motivation
 to combine the references.
     We review the Board’s factual determinations for sub-
 stantial evidence and its legal determinations de novo. Li-
 qwd, Inc. v. L’Oreal USA, Inc., 941 F.3d 1133, 1136 (Fed.
 Cir. 2019). Whether an invention would have been obvious
 is a legal conclusion based on underlying factual findings.
 Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). De-
 terminations about the scope and content of prior art, and
 whether an artisan would be motivated to modify prior art
 with a reasonable expectation of success, are questions of
 fact. Id.
                             I.

     Fernandez argues that the Board erred when it
 adopted the examiner’s findings as to the scope and content
 of Petrella. Fernandez asserts that the Board should have
 engaged in its own analysis of Petrella and rendered its
 own factual findings. We reject this argument. As this
 court has explained:
     It is commonplace in administrative law for a re-
     viewing body within an agency to adopt a fact-find-
     ing body’s findings. On judicial review, the adopted
     material is treated as if it were part of the review-
     ing body’s opinion. This court does the same in the
     case of Board opinions adopting patent examiners’
     findings.
 In re Cree, Inc., 818 F.3d 694, 698 n. 2 (Fed. Cir. 2016) (in-
 ternal citations omitted); see also In re Hyatt, 211 F.3d
 1367, 1370-71 (Fed. Cir. 2000); In re Kulling, 897 F.2d
 1147, 1149 (Fed. Cir. 1990).
     Fernandez also argues that in adopting the examiner’s
 findings, the Board erred by improperly shifting the bur-
 den to Fernandez to prove patentability. This is not true.
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 IN RE: FERNANDEZ                                             7



 When examining patent claims, the examiner has the ini-
 tial burden to set out a prima facie case that the claims at
 issue are obvious over the prior art. ACCO Brands Corp.
 v. Fellowes, Inc., 813 F.3d 1361, 1365 (Fed. Cir. 2016). The
 burden then shifts to the applicant to produce evidence or
 argument supporting patentability. Id. Here, the Board
 did not shift the burden to Fernandez but instead found
 that the examiner made out his prima facie case and that
 Fernandez failed to rebut it.
     Fernandez next argues that even if the Board articu-
 lated sufficient factual findings, Petrella does not disclose
 the simulation limitation because it does not control a pros-
 thetic device. The examiner found that Petrella discloses a
 method for controlling a prosthetic device. Fernandez did
 not challenge this factual finding before the Board and in-
 stead raised it for the first time in its opening brief in this
 appeal. Therefore, Fernandez waived this argument. In re
 Watts, 354 F.3d 1362, 1367 (Fed. Cir. 2004) (“[I]it is im-
 portant that the applicant challenging a decision not be
 permitted to raise arguments on appeal that were not pre-
 sented to the Board. We have frequently declined to hear
 arguments that the applicant failed to present to the
 Board.”).
                              II.
     Fernandez argues that claim 11 is not obvious because
 Halperin teaches away from the claimed invention. He as-
 serts that Halperin teaches “against a solely internal sys-
 tem-biology monitoring platform and require[s] an external
 monitoring system.” Appellant Br. 25 (emphasis in origi-
 nal). We reject this argument. Fernandez’s claimed inven-
 tion is not limited to a solely internal system-biology
 monitoring platform. Claim 11 provides that the biosensor
 comprising a monitoring platform be “implantable.” It does
 not state that the biosensor must be implanted. Addition-
 ally, the specification of the ’054 application indicates that
 the “implantable network biosensor” can “also operate
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 8                                           IN RE: FERNANDEZ




 without being implanted” and can function “through exter-
 nal contact or attachment thereto.” J.A. 33. Accordingly,
 Halperin’s external monitoring system does not conflict
 with or teach away from claim 11.
                            III.
     Lastly, Fernandez summarily argues that substantial
 evidence does not support the Board’s finding of a motiva-
 tion to combine. We disagree.
     As an initial matter, Fernandez argues that the Board
 erred because it “rubber stamped” the examiner’s motiva-
 tion-to-combine finding and did not present its own. As
 noted above, the Board may adopt the examiner’s factual
 findings and analysis as its own. In re Cree, Inc., 818 F.3d
 at 698 n. 2. Here, the Board adopted the examiner’s moti-
 vation-to-combine finding. Because this finding was sup-
 ported by substantial evidence, the Board committed no
 reversable error.
      No party disputes that Arent discloses all of claim 11’s
 limitations except for the simulation and reconfigurable
 limitations. Regarding the simulation limitation, the ex-
 aminer found that Arent meets most of this limitation’s re-
 quirements, including a biosensor that interacts
 physiologically with the host, collects data, and produces a
 therapeutic response such as the monitoring or controlling
 of artificial organs and prosthetic devices and the dispens-
 ing of medicine. The examiner noted that what was miss-
 ing from Arent was disclosure of computational modeling
 necessary to process Arent’s data. The examiner found
 that Petrella, Parker, and Brown all disclose methods of
 computational modeling for controlling prosthetics, artifi-
 cial organs, and monitoring of a host’s vitals. The examiner
 explained that a POSITA would have been motivated to
 combine the known data processing of computational mod-
 eling taught by these three references with Arent’s inven-
 tion because, in order to perform the functions taught by
 Arent, “a required amount of data processing is necessary.”
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 IN RE: FERNANDEZ                                          9



 This is substantial evidence that supports the examiner’s
 motivation-to-combine finding for the simulation limita-
 tion.
     Regarding the reconfiguration limitation, the examiner
 found that Arent does not explicitly disclose a reconfigura-
 ble sensor. The examiner, however, found that Arent sug-
 gests this limitation because Arent discloses implantable
 devices capable of dispensing or delivering medicine. The
 examiner explained that Arent teaches the delivery or dis-
 pensing of medicine based on the host’s current conditions.
 The examiner also found that a POSITA would have recog-
 nized that because a host’s conditions change, an implant-
 able device that dispenses medicine would need to be
 reconfigured. As a result, the examiner found that a
 POSITA would have been motivated to combine Halperin’s
 reconfigurable and reprogrammable implantable sensor
 with the implantable biosensor network system disclosed
 by the combination of Arent, Petrella, Parker, and Brown.
 Taken together, this is substantial evidence that supports
 the examiner’s motivation-to-combine finding for the re-
 configuration limitation.
                        CONCLUSION
     We have considered Fernandez’s other arguments and
 find them unpersuasive. We affirm.
                        AFFIRMED
                           COSTS
    No costs.
