IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Poeze et al.
`In re Patent of:
`10,258,265 Attorney Docket No.: 50095-00006IP1
`U.S. Patent No.:
`April 16, 2019
`Issue Date:
`Appl. Serial No.: 16/212,440
`Filing Date:
`December 6, 2018
`Title:
`MULTI-STREAM DATA COLLECTION SYSTEM FOR
`NONINVASIVE MEASUREMENT OF BLOOD
`CONSTITUENTS
`
`DECLARATION OF DR. THOMAS W. KENNY
`
`Declaration
`
`I declare that all statements made herein on my own knowledge are true and
`
`that all statements made on information and belief are believed to be true, and
`
`further, that these statements were made with the knowledge that willful false
`
`statements and the like so made are punishable under Section 1001 of Title 18 of
`
`the United States Code.
`
`By: ________________________________
`
`Thomas W. Kenny, Ph.D.
`
`1
`
`Masimo Ex. 2020
`Apple v. Masimo
`IPR2021-00208
`
`

`

`Contents
`
`I. QUALIFICATIONS AND BACKGROUND INFORMATION ........................ 5
`II. OVERVIEW OF CONCLUSIONS FORMED ................................................. 11
`III. LEVEL OF ORDINARY SKILL IN THE ART ............................................... 13
`IV. LEGAL STANDARDS ..................................................................................... 14
`A. Terminology ................................................................................................... 14
`B. Legal Standards for Anticipation.................................................................... 14
`C. Legal Standards for Obviousness ................................................................... 15
`V. HISTORICAL AND TECHNICAL OVERVIEW ............................................ 20
`VI. THE ’265 patent ................................................................................................ 20
`A. Overview of the ’265 patent ........................................................................... 20
`VII. SUMMARY OF THE PRIOR ART ................................................................. 25
`A. Overview of Aizawa ....................................................................................... 25
`B. Overview of Inokawa ..................................................................................... 28
`C. Overview of Ohsaki ........................................................................................ 32
`D. Overview of Mendelson-1988 ........................................................................ 34
`E. Overview of Mendelson-2006 ........................................................................ 36
`F. Overview of Beyer, Jr. .................................................................................... 40
`VIII. GROUND 1A – Claims 1-4, 6-14, 16, 17, 19-23, and 26-29 Are Rendered
`Obvious by Aizawa in view of Inokawa .................................................................. 41
`A. Claim 1 ........................................................................................................... 41
`B. Claim 2 ........................................................................................................... 58
`C. Claim 3 ........................................................................................................... 59
`D. Claim 4 ........................................................................................................... 60
`E. Claim 6 ........................................................................................................... 63
`F. Claim 7 ........................................................................................................... 63
`G. Claim 8 ........................................................................................................... 64
`H. Claim 9 ........................................................................................................... 65
`I. Claim 10 ......................................................................................................... 67
`J. Claim 11 ......................................................................................................... 68
`
`2
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`

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`K. Claim 12 ......................................................................................................... 69
`L. Claim 13 ......................................................................................................... 71
`M. Claim 14 ......................................................................................................... 71
`N. Claim 16 ......................................................................................................... 72
`O. Claim 17 ......................................................................................................... 72
`P. Claim 19 ......................................................................................................... 73
`Q. Claim 20 ......................................................................................................... 73
`R. Claim 21 ......................................................................................................... 74
`S. Claim 22 ......................................................................................................... 75
`T. Claim 23 ......................................................................................................... 76
`U. Claim 26 ......................................................................................................... 77
`V. Claim 27 ......................................................................................................... 79
`W. Claim 28 ......................................................................................................... 80
`X. Claim 29 ......................................................................................................... 81
`IX. GROUND 1B –Claims 1-4, 6-14, 16, 17, 19-23, and 26-29 Are Rendered
`Obvious by Aizawa in view of Inokawa and Ohsaki .............................................. 81
`A. Claims 1-4, 6-14, 16, 17, 19-23, and 26-29 ................................................... 81
`X. GROUND 1C – Claims 23-24 Are Rendered Obvious by Aizawa in view of
`Inokawa and Mendelson-2006 ................................................................................. 84
`A. Claim 23 ......................................................................................................... 84
`B. Claim 24 ......................................................................................................... 88
`XI. GROUND 1D – Claims 23-24 Are Rendered Obvious by Aizawa in view of
`Inokawa, Goldsmith, and Lo .................................................................................... 89
`A. Claim 23 ......................................................................................................... 89
`B. Claim 24 ......................................................................................................... 93
`XII. GROUND 1E – Claim 25 Is Rendered Obvious by Aizawa in view of
`Inokawa, Mendelson-2006, and Beyer, Jr. .............................................................. 93
`A. Claim 25 ......................................................................................................... 93
`XIII. GROUND 2A – Claims 1-4, 6-14, 16-22, and 26-30 Are Rendered Obvious
`by Mendelson-1988 in View of Inokawa ................................................................ 96
`A. Claim 1 ........................................................................................................... 97
`B. Claim 2 .........................................................................................................108
`
`3
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`

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`C. Claim 3 .........................................................................................................109
`D. Claim 4 .........................................................................................................110
`E. Claim 6 .........................................................................................................111
`F. Claim 7 .........................................................................................................111
`G. Claim 8 .........................................................................................................112
`H. Claim 9 .........................................................................................................113
`I. Claim 10 .......................................................................................................113
`J. Claim 11 .......................................................................................................114
`K. Claim 12 .......................................................................................................115
`L. Claim 13 .......................................................................................................117
`M. Claim 14 .......................................................................................................118
`N. Claim 16 .......................................................................................................118
`O. Claim 17 .......................................................................................................118
`P. Claim 18 .......................................................................................................119
`Q. Claim 19 .......................................................................................................119
`R. Claim 20 .......................................................................................................120
`S. Claim 21 .......................................................................................................121
`T. Claim 22 .......................................................................................................122
`U. Claim 26 .......................................................................................................123
`V. Claim 27 .......................................................................................................126
`W. Claim 28 .......................................................................................................127
`X. Claim 29 .......................................................................................................130
`Y. Claim 30 .......................................................................................................130
`XIV. GROUND 2B – Claims 23-24 Are Rendered Obvious by Mendelson-1988 in
`view of Inokawa and Mendelson-2006. .................................................................131
`A. Claim 23 .......................................................................................................131
`B. Claim 24 .......................................................................................................133
`XV. GROUND 2C – Claim 25 Is Rendered Obvious by Mendelson-1988 in view of
`Inokawa, Mendelson-2006, and Beyer, Jr. ............................................................134
`A. Claim 25 .......................................................................................................134
`XVI. CONCLUSION ............................................................................................138
`
`4
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`

`

`I.
`
`1.
`
`QUALIFICATIONS AND BACKGROUND INFORMATION
`
`My education and experience are described more fully in the attached
`
`curriculum vitae (APPLE-1004). For ease of reference, I have highlighted certain
`
`information below.
`
`2.
`
`My academic and professional background is in Physics, Mechanical
`
`Engineering, Sensing, and Robotics, with a research specialization focused on
`
`microfabricated physical sensors, and I have been working in those fields since the
`
`completion of my Ph.D. more than 30 years ago. The details of my background
`
`and education and a listing of all publications I have authored in the past 35 years
`
`are provided in my curriculum vitae, attached as Exhibit A. Below I provide a
`
`short summary of my education and experience which I believe to be most
`
`pertinent to the opinions that I express here.
`
`3.
`
`I received a B.S. in Physics from University of Minnesota, Minneapolis in
`
`1983, and a Ph.D. in Physics from University of California at Berkeley in 1989. I
`
`was educated as a Physicist specializing in sensors and measurement. My Physics
`
`Ph.D. thesis involved measurements of the heat capacity of monolayers of atoms
`
`on surfaces, and relied on precision measurements of temperature and power using
`
`time-varying electrical signals, and also on the design and construction of
`
`miniature sensor components and associated electrical circuits for conditioning and
`
`conversion to digital format.
`
`5
`
`

`

`4.
`
`After completion of my Ph.D. in Physics at U.C. Berkeley in 1989, I joined
`
`the Jet Propulsion Laboratory (JPL) in Pasadena, CA, as a staff scientist, and began
`
`working on miniature sensors and instruments for small spacecraft. This work
`
`involved the use of silicon microfabrication technologies for miniaturization of the
`
`sensors, and served as my introduction to the field of micro-electromechanical
`
`systems (MEMS), or the study of very small mechanical sensors powered by
`
`electricity and used for detection of physical and chemical signals.
`
`5. While at JPL, we developed accelerometers, uncooled infrared sensors,
`
`magnetometers, seismometers, force and displacement sensors, soil chemistry
`
`sensors, miniature structures for trapping interstellar dust, and many other
`
`miniature devices. Some of these projects led to devices that were launched with
`
`spacecraft headed for Mars and for other interplanetary missions. Much of this
`
`work involved the use of physical sensors for detection of small forces and
`
`displacements using micromechanical sensors.
`
`6.
`
`I am presently the Richard Weiland Professor at the Department of
`
`Mechanical Engineering at Stanford University, where I have taught for the past 26
`
`years. I am also currently the Senior Associate Dean of Engineering for Student
`
`Affairs at Stanford.
`
`7.
`
`For 26 years, I have taught courses on Sensors and Mechatronics at Stanford
`
`University. The “Introduction to Sensors” course is a broad overview of all
`
`6
`
`

`

`sensing technologies, from thermometers, to inertial sensors, ultrasound devices,
`
`flow sensors, optical and IR sensors, chemical sensors, pressure sensors, and many
`
`others, and has included sensors based on changes in capacitance, resistance,
`
`piezoelectricity. This course specifically included different mechanisms for
`
`sensing heart rate, blood pressure, blood chemistry, cardiovascular blood flow and
`
`pressure drops, intraocular pressure and other physiological measurements, as well
`
`as activity monitoring (step counting, stair-counting, etc). I first taught this course
`
`at Stanford in the Spring of 1994, and I offered this course at least annually until
`
`2016, when my duties as Senior Associate Dean made this impractical.
`
`8.
`
`The “Introduction to Mechatronics” course is a review of the mechanical,
`
`electrical and computing technologies necessary to build systems with these
`
`contents, which include everything from cars and robots to cellphones and other
`
`consumer electronics devices. In this class, we routinely use IR, LEDs, and
`
`photosensors as a way of detecting proximity to objects in the space around
`
`miniature robots. We also use inertial sensors to detect movement, and a number
`
`of sensors, such as encoders to measure changes in position and trajectory. I was
`
`one of the instructors for the first offering of this course in 1995, and this course
`
`has been offered at least once each year ever since, with plans already underway
`
`for the Winter 2021 offering. The 2020 offering was just completed, and was
`
`7
`
`

`

`highly-successful with 120 undergraduate and graduate students from many
`
`engineering and science disciplines.
`
`9.
`
`I am co-author of a textbook titled “Introduction to Mechatronic Design,”
`
`which broadly covers the topic of integration of mechanical, electronic and
`
`computer systems design into “smart products.” This textbook includes chapters
`
`on Microprocessors, Programming Languages, Software Design, Electronics,
`
`Sensors, Signal Conditioning, and Motors, as well as topics such as Project
`
`Management, Troubleshooting, and Synthesis.
`
`10. My research group has focused on the area of microsensors and
`
`microfabrication—a domain in which we design and build micromechanical
`
`sensors using silicon microfabrication technologies. The various applications for
`
`these technologies are numerous.
`
`11.
`
`I have advised 69 Ph.D. students that have completed Ph.D. degrees and
`
`many more M.S. and B.S. students in Engineering during my time at Stanford.
`
`12.
`
`I have published over 250 technical papers in refereed journals and
`
`conferences in the field of sensors, MEMS, and measurements. I have further
`
`presented numerous conference abstracts, posters, and talks in my field. I am a
`
`named inventor on 50 patents in my areas of work.
`
`13.
`
`I have previously served as an expert on a patent infringement case
`
`involving the mounting and use of pressure sensors on guidewire catheters for
`
`8
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`

`

`cardiovascular procedures that included a number of sensing aspects, such as
`
`recording static and dynamic pressure signals, and compensating for electrical and
`
`mechanical errors. I have also previously served as an expert on a patent
`
`infringement case involving the design and use of miniature inertial sensors. That
`
`case involved the design and operations of micromechanical sensors, and
`
`particularly the use of inertial sensors for detection of states of movement and rest.
`
`I have also served as an expert in a patent infringement case involving the use of
`
`sensors on athletic shoes for determining athletic performance. More recently, I
`
`served as an expert in a patent infringement case involving optical proximity
`
`sensors in smartphones. My CV is attached as APPLE-1004 and includes a full
`
`listing of all cases in which I have testified at deposition or trial in the preceding
`
`four years.
`
`14.
`
`I have been retained on behalf of Apple Inc. to offer technical opinions
`
`relating to U.S. Patent No. 10,258,265 (“the ’265 patent”) and prior art references
`
`relating to its subject matter. I have reviewed the ’265 patent, relevant excerpts of
`
`the prosecution history of the ’265 patent. I have also reviewed the following prior
`
`art references:
`
`Prior Art Reference
`
`U.S. Pub. No. 2002/0188210 to Aizawa (“Aizawa”) (APPLE-1006)
`
`9
`
`

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`English translation of JP 2006-296564 to Inokawa et al. (“Inokawa”)
`(APPLE-1007, APPLE-1008)
`
`U.S. Pub. No. 2001/0056243 to Ohsaki et al. (“Ohsaki”) (APPLE-
`1014)
`
`“Design and Evaluation of a New Reflectance Pulse Oximeter
`Sensor,” Y. Mendelson, et al.; Worcester Polytechnic Institute,
`Biomedical Engineering Program, Worcester, MA 01609;
`Association for the Advancement of Medical Instrumentation, vol. 22,
`No. 4, 1988; pp. 167-173 (“Mendelson-1988”) (APPLE-1015)
`
`“A Wearable Reflectance Pulse Oximeter for Remote Physio-logical
`Monitoring,” Y. Mendelson, et al.; Proceedings of the 28th IEEE
`EMBS Annual International Conference, 2006; pp. 912-915
`(“Mendelson-2006”) (APPLE-1016)
`
`U.S. Pat. No. 7,031,728 (“Beyer, Jr.”) (APPLE-1019)
`
`U.S. Pub. No. 2007/0093786 to Goldsmith et al. (“Goldsmith”)
`(APPLE-1027)
`
`U.S. Pub. No. 2004/0138568 to Lo et al. (“Lo”) (APPLE-1028)
`
`15.
`
`I have also reviewed various supporting references and other documentation
`
`as further noted in my opinions below.
`
`16. Counsel has informed me that I should consider these materials through the
`
`lens of one of ordinary skill in the art related to the ’265 patent at the time of the
`
`earliest possible priority date of the ’265 patent, and I have done so during my
`
`review of these materials. The application leading to the ’265 patent was filed on
`
`December 6, 2018, and claims the benefit of priority to a provisional application
`
`filed July 3, 2008 (“the Critical Date”). Counsel has informed me that the Critical
`
`Date represents the earliest possible priority date to which the challenged claims of
`
`10
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`

`

`’265 patent are entitled, and I have therefore used that Critical Date in my analysis
`
`below.
`
`17.
`
`I have no financial interest in the party or in the outcome of this proceeding.
`
`I am being compensated for my work as an expert on an hourly basis. My
`
`compensation is not dependent on the outcome of these proceedings or the content
`
`of my opinions.
`
`18.
`
`In writing this declaration, I have considered the following: my own
`
`knowledge and experience, including my work experience in the fields of
`
`mechanical engineering, computer science, biomedical engineering, and electrical
`
`engineer; my experience in teaching those subjects; and my experience in working
`
`with others involved in those fields. In addition, I have analyzed various
`
`publications and materials, in addition to other materials I cite in my declaration.
`
`19. My opinions, as explained below, are based on my education, experience,
`
`and expertise in the fields relating to the ’265 patent. Unless otherwise stated, my
`
`testimony below refers to the knowledge of one of ordinary skill in the fields as of
`
`the Critical Date, or before. Any figures that appear within this document have
`
`been prepared with the assistance of Counsel and reflect my understanding of the
`
`’265 patent and the prior art discussed below.
`
`II. OVERVIEW OF CONCLUSIONS FORMED
`
`11
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`

`

`20. This declaration explains the conclusions that I have formed based on my
`
`analysis. To summarize those conclusions, based upon my knowledge and
`
`experience and my review of the prior art publications listed above, I believe that:
`
` Claims 1-4, 6-14, 16, 17, 19-23, 26-29 are rendered obvious by Aizawa and
`
`Inokawa.
`
` Claims 1-4, 6-14, 16, 17, 19-23, 26-29 are rendered obvious by Aizawa,
`
`Inokawa, and Ohsaki.
`
` Claims 23 and 24 are rendered obvious by Aizawa, Inokawa, and
`
`Mendelson-2006.
`
` Claims 23 and 24 are rendered obvious by Aizawa, Inokawa, Goldsmith, and
`
`Lo
`
` Claim 25 is rendered obvious by Aizawa, Inokawa, Mendelson-2006, and
`
`Beyer, Jr.
`
` Claims 1-4, 6-14, 16-22, 26-30 are rendered obvious by Mendelson-1988
`
`and Inokawa.
`
` Claims 23 and 24 are rendered obvious by Mendelson-1988, Inokawa, and
`
`Mendelson-2006.
`
` Claim 25 is rendered obvious by Mendelson-1988, Inokawa, Mendelson-
`
`2006, and Beyer, Jr.
`
`
`
`12
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`

`

`III. LEVEL OF ORDINARY SKILL IN THE ART
`21.
`In my opinion, one of ordinary skill in the art relating to, and at the time of,
`
`the invention of the ’265 patent would have been someone with a working
`
`knowledge of physiological monitoring technologies. The person would have had
`
`a Bachelor of Science degree in an academic discipline emphasizing the design of
`
`electrical, computer, or software technologies, in combination with training or at
`
`least one to two years of related work experience with capture and processing of
`
`data or information, including but not limited to physiological monitoring
`
`technologies. Alternatively, the person could have also had a Master of Science
`
`degree in a relevant academic discipline with less than a year of related work
`
`experience in the same discipline.
`
`22. Based on my experiences, I have a good understanding of the capabilities of
`
`one of ordinary skill. Indeed, I have taught, participated in organizations, and
`
`worked closely with many such persons over the course of my career. Based on
`
`my knowledge, skill, and experience, I have an understanding of the capabilities of
`
`one of ordinary skill. For example, from my industry experience, I am familiar
`
`with what an engineer would have known and found predictable in the art. From
`
`teaching and supervising my post-graduate students, I also have an understanding
`
`of the knowledge that a person with this academic experience possesses.
`
`Furthermore, I possess those capabilities myself.
`
`13
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`

`

`IV. LEGAL STANDARDS
`A. Terminology
`I have been informed by Counsel and understand that the best indicator of
`
`23.
`
`claim meaning is its usage in the context of the patent specification as understood
`
`by one of ordinary skill. I further understand that the words of the claims should
`
`be given their plain meaning unless that meaning is inconsistent with the patent
`
`specification or the patent’s history of examination before the Patent Office.
`
`Counsel has also informed me, and I understand that, the words of the claims
`
`should be interpreted as they would have been interpreted by one of ordinary skill
`
`at the time of the invention was made (not today). Because I do not know at what
`
`date the invention as claimed was made, I have used the earliest priority date of the
`
`’265 patent as the point in time for claim interpretation purposes. That date was
`
`July 3, 2008.
`
`B.
`Legal Standards for Anticipation
`I have been informed by Counsel and understand that documents and
`
`24.
`
`materials that qualify as prior art can render a patent claim unpatentable as
`
`anticipated. I am informed by Counsel and understand that all prior art references
`
`are to be looked at from the viewpoint of a person of ordinary skill in the art.
`
`25.
`
`I am informed by Counsel and understand that a challenged claim is
`
`unpatentable as “anticipated” under 35 U.S.C. § 102 if it is determined that all the
`
`limitations of the claim are described in a single prior art reference. I am informed
`
`14
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`

`

`by Counsel and understand that, to anticipate a claim, a prior art reference must
`
`disclose, either expressly or inherently, each and every limitation of that claim and
`
`enable one of ordinary skill in the art to make and use the invention.
`
`26.
`
`I have been informed by Counsel and understand that in an inter partes
`
`review, “the petitioner shall have the burden of proving a proposition of
`
`unpatentability,” including a proposition of anticipation, “by a preponderance of
`
`the evidence.” 35 U.S.C. §316(e).
`
`C. Legal Standards for Obviousness
`I have been informed by Counsel and understand that documents and
`
`27.
`
`materials that qualify as prior art can render a patent claim unpatentable as
`
`obvious. I am informed by Counsel and understand that all prior art references are
`
`to be looked at from the viewpoint of a person of ordinary skill in the art at the
`
`time of the invention, and that this viewpoint prevents one from using his or her
`
`own insight or hindsight in deciding whether a claim is obvious.
`
`28.
`
`I have been informed by Counsel and understand that a claim is unpatentable
`
`for obviousness under 35 U.S.C. § 103 (in the pre-AIA form of that statute that
`
`applies to the ’265 patent) “if the differences between the subject matter sought to
`
`be patented and the prior art are such that the subject matter as a whole would have
`
`been obvious at the time the invention was made to a person having ordinary skill
`
`in the art to which said subject matter pertains.” I am informed by Counsel and
`
`15
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`

`

`understand that obviousness may be based upon a combination of references. I am
`
`informed by Counsel and understand that the combination of familiar elements
`
`according to known methods is likely to be obvious when it does no more than
`
`yield predictable results. However, I am informed by Counsel and understand that
`
`a patent claim composed of several elements is not proved obvious merely by
`
`demonstrating that each of its elements was, independently, known in the prior art.
`
`29.
`
`I am informed by Counsel and understand that when a patented invention is
`
`a combination of known elements, a court must determine whether there was an
`
`apparent reason to combine the known elements in the fashion claimed by the
`
`patent at issue by considering the teachings of prior art references, the effects of
`
`demands known to people working in the field or present in the marketplace, and
`
`the background knowledge possessed by a person having ordinary skill in the art.
`
`30.
`
`I am informed by Counsel and understand that a patent claim composed of
`
`several limitations is not proved obvious merely by demonstrating that each of its
`
`limitations was independently known in the prior art. I am informed by counsel for
`
`the Patent Owner and understand that identifying a reason those elements would be
`
`combined can be important because inventions in many instances rely upon
`
`building blocks long since uncovered, and claimed discoveries almost of necessity
`
`will be combinations of what, in some sense, is already known. I am informed by
`
`16
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`

`

`Counsel and understand that it is improper to use hindsight in an obviousness
`
`analysis, and that a patent’s claims should not be used as a “roadmap.”
`
`31.
`
`I am informed by Counsel and understand that an obviousness inquiry
`
`requires consideration of the following factors: (1) the scope and content of the
`
`prior art; (2) the differences between the claims and the prior art; (3) the level of
`
`ordinary skill in the pertinent art; and (4) any objective indicia of non-obviousness,
`
`such as commercial success, long-felt but unresolved need, failure of others,
`
`industry recognition, copying, and unexpected results. I understand that the
`
`foregoing factors are sometimes referred to as the “Graham factors.”
`
`32.
`
`I have been informed by Counsel and understand that an obviousness
`
`evaluation can be based on a combination of multiple prior art references. I
`
`understand that the prior art references themselves may provide a suggestion,
`
`motivation, or reason to combine, but that the nexus linking two or more prior art
`
`references is sometimes simple common sense. I have been informed by Counsel
`
`and understand that obviousness analysis recognizes that market demand, rather
`
`than scientific literature, often drives innovation, and that a motivation to combine
`
`references may be supplied by the direction of the marketplace.
`
`33.
`
`I have been informed by Counsel and understand that if a technique has been
`
`used to improve one device, and a person of ordinary skill at the time of invention
`
`would have recognized that it would improve similar devices in the same way,
`
`17
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`

`

`using the technique is obvious unless its actual application is beyond his or her
`
`skill.
`
`34.
`
`I have been informed by Counsel and understand that practical and common
`
`sense considerations should guide a proper obviousness analysis, because familiar
`
`items may have obvious uses beyond their primary purposes. I have been
`
`informed by Counsel and understand that a person of ordinary skill looking to
`
`overcome a problem will often be able to fit together the teachings of multiple
`
`prior art references. I have been informed by Counsel and understand that
`
`obviousness analysis therefore takes into account the inferences and creative steps
`
`that a person of ordinary skill would have employed at the time of invention.
`
`35.
`
`I have been informed by Counsel and understand that a proper obviousness
`
`analysis focuses on what was known or obvious to a person of ordinary skill at the
`
`time of invention, not just the patentee. Accordingly, I understand that any need or
`
`problem known in the field of endeavor at the time of invention and addressed by
`
`the patent can provide a reason for combining the elements in the manner claimed.
`
`36.
`
`I have been informed by Counsel and understand that a claim can be obvious
`
`in light of a single reference, without the need to combine references, if the
`
`elements of the claim that are not found explicitly or inherently in the reference
`
`can be supplied by the common sense of one of skill in the art.
`
`18
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`

`

`37.
`
`I have been informed by Counsel and understand that secondary indicia of
`
`non-obviousness may include (1) a long felt but unmet need in the prior art that
`
`was satisfied by the invention of the patent; (2) commercial success of processes
`
`covered by the patent; (3) unexpected results achieved by the invention; (4) praise
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`of the invention by others skilled in the art; (5) taking of licenses under the patent
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`by others; (6) deliberate copying of the invention; (7) failure of others to find a
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`solution to the long felt need; and (8) skepticism by experts. I understand that
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`evidence of secondary indicia of non-obviousness, if available, should be
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`considered as part of the obviousness analysis.
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`38.
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`I have been informed by Counsel and understand that there must be a
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`relationship between any such secondary considerations and the invention, and that
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`contemporaneous and independent invention by others is a secondary consideration
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`supporting an obviousness determinatio