Elwha LLC

Patent Trials and Appeals Board

Feb 12, 2020

14252098 - (D) (P.T.A.B. Feb. 12, 2020)

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.
14/252,098 04/14/2014 Jordin T. Kare 0113-004-003-000000 2778
138951 7590 02/12/2020
Advent, LLP/INTELLECTUAL VENTURES
The Advent Building
17838 Burke Street
Suite 200
Omaha, NE 68118
EXAMINER
REICHERT, RACHELLE LEIGH
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
02/12/2020 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):
ISFDocketInbox@intven.com
sloma@adventip.com
uspto@adventip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JORDIN T. KARE, WAYNE R. KINDSVOGEL,
and ELIZABETH A. SWEENEY
__________________

Appeal 2019-003252
Application 14/252,098
Technology Center 3600
____________________

Before MICHAEL L. HOELTER, JAMES P. CALVE, and
LEE L. STEPINA, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the decision
of the Examiner to reject claims 1, 116–28, and 131. See Appeal Br. 7. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies Elwha LLC as the real party in interest. Appeal Br. 3.
Appeal 2019-003252
Application 14/252,098

2
CLAIMED SUBJECT MATTER
1. A system, comprising:
one or more sensors configured to detect at least one biological
characteristic of a subject in a healthcare setting,
a pupillometer configured to measure a pupil of the subject in the
healthcare setting;
a user interface configured to request input from the subject regarding
a plurality of Environmental Supplements to determine a
preference of the subject with respect to the plurality of
Environmental Supplements, the pupillometer configured to
measure the pupil of the subject during presentation of the
plurality of Environmental Supplements to the subject via the
user interface to measure an autonomic response of the subject
to each of the plurality of Environmental Supplements, the
autonomic response associated with the preference of the
subject with respect to the plurality of Environmental
Supplements;
circuitry configured to receive one or more sensed signals from each
of the pupillometer and the one or more sensors, to convert the
one or more sensed signals from at least the one or more
sensors to a personal profile for the subject, and to compare the
personal profile to a database of Environmental Supplements,
the circuitry configured to select an Environmental Supplement
from the database of Environmental Supplements based on the
autonomic response associated with the preference of the
subject with respect to the plurality of Environmental
Supplements and to generate one or more instructions
associated with the selection responsive to comparison of the
personal profile to the database of Environmental Supplements;
a network interface operably coupled to the circuitry and configured
to transmit the one or more instructions responsive to control by
the circuitry; and
an audio delivery device operably coupled to the network interface,
the audio delivery device configured to initiate an audio output
to correspond to the preference of the subject or alter the audio
output to correspond to the preference of the subject responsive
to receipt of the one or more instructions from the network
interface.
Appeal 2019-003252
Application 14/252,098

3
REJECTIONS
Claims 1, 116–25, 127, 128, and 131 are rejected under 35 U.S.C.
§ 103 as unpatentable over Bechtel (US 2012/0323090 A1, pub. Dec. 20,
2012), Berg, Jr. (US 2010/0174586 A1, pub. July 8, 2010) (hereinafter
“Berg”), and Roe (US 2011/0035234 A1, pub. Feb. 10, 2011).
Claim 126 is rejected under 35 U.S.C. § 103 as unpatentable over
Bechtel, Berg, Roe, and Johnson (US 2014/0095181 A1, pub. Apr. 3, 2014).
ANALYSIS
Claims 1, 116–25, 127, 128, and 131
Rejected over Bechtel, Berg, and Roe
Appellant argues the claims as a group. Appeal Br. 15–26. We select
claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv).
Regarding claim 1, the Examiner finds that Bechtel teaches a system
substantially as claimed with sensors, a user interface, circuitry, a network
interface, and an audio delivery device. Final Act. 8–10. The Examiner
relies on Berg to teach a pupillometer configured to measure the pupil of a
subject during the presentation of an Environmental Supplement (ES) and
circuitry configured to receive sensed signals from the pupillometer and
select an ES from a database based on an autonomic response associated
with the subject’s preference. Id. at 10–11.
Appellant challenges the Examiner’s findings that Bechtel teaches “a
user interface configured to request input from the subject regarding a
plurality of Environmental Supplements.” Appeal Br. 20. Appellant argues
that paragraph 158 of Bechtel, cited by the Examiner for this feature, only
teaches a pain management process triggered upon receiving inputs from
ambient sensors rather than from the subject as claimed. Id. at 20–21.
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4
Subject Inputs Plural Environmental Supplements
The rules governing appeals to the PTAB require an appellant to file
an appeal brief containing the following arguments:
The arguments of appellant with respect to each ground of rejection,
and the basis therefor, with citations of the statutes, regulations,
authorities, and parts of the Record relied on. The arguments shall
explain why the examiner erred as to each ground of rejection
contested by appellant.

37 C.F.R. § 41.37(c)(1)(iv). This rule requires an argument in an Appeal
Brief to identify error in an office action/rejection that is appealed. Ex Parte
Frye, 94 USPQ 2d 1072, *4 (BPAI 2010) (precedential) (a panel reviews
rejections for error based on the issues identified by an appellant). Our
reviewing court has upheld this practice of requiring an appellant to identify
error in an Examiner’s rejection. See In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (approving of Board’s practice as set forth in Ex Parte Frye of
requiring appellants to identify Examiner error in a rejection).
On this basis, Appellant’s argument is insufficient because it does not
address the Examiner’s findings for this limitation. The Examiner relies on,
and cites to, paragraphs 21, 30, 117, and 158 in support of his findings that
Bechtel teaches the claimed user interface. Final Act. 8. We agree with the
Examiner that Bechtel teaches this feature in the portions cited in the Office
Action and in other, related portions describing this process.
Paragraph 117 teaches a patient care room that includes components
and/or interfaces that allow a patient, clinician, or other person to manually
input a request regarding a plurality of environmental settings that Bechtel
refers to as real-world tasks. These settings facilitate reading, relaxation,
entertainment, travel, education, personal hygiene, patient care, and the like.
Appeal 2019-003252
Application 14/252,098

5
The Specification describes various Environmental Supplements (ES)
as being designed to alter a subject’s surroundings to enhance the subject’s
health by creating a profile for the subject based on health history and input
from the subject and others such as health care workers. Spec. 2:4–14. For
example, ES include temporal or spatial images of traveling on land, sea, or
air, birds chirping at sunrise, temperature changes, personal or neighborhood
components, ceilings reflecting the sky, and favorite places (e.g., golf
course). Spec. 5:16–6:6. ES may be customized for temperature, lighting,
light intensity, air flow, images of locales or scenes (ocean, beach, and
sunshine), ceilings with the sky’s appearance, and sounds. Id. at 22.
Bechtel allows patients to select the same types of ES as input for the
settings of the patient’s room via patient interactive station component 314,
which displays modules on a patient interactive station. Bechtel ¶ 65. An
environmental module allows a patient to adjust the lighting and temperature
in the room. Id. ¶ 72. Furthermore, a scene module allows a patient to input
and initiate various scenes in the smart clinical care room to facilitate real-
world activities such as reading, watching television, and relaxing. Id. ¶ 76.
The scene module also interacts with other modules of patient interactive
station 314 to control the television module, environmental module, gaming
module, aromatherapy module, and the like to initiate a requested scene. Id.
The patient interactive station is easily accessible as a monitor by the bed, a
pillow speaker, touch screen tablet, or voice command activated. Id. ¶ 77.
For pain management, therapy settings pre-selected by the patient at
patient interactive station are activated to change the room’s ES. Id. ¶ 176.
These therapies include audio therapy (playing sounds) and visual therapy
(displaying pre-selected scenes on digital ceiling/digital window). Id. ¶ 177.
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Bechtel’s audio therapy automatically plays pre-selected sounds such
as white noise, thunderstorms, rain, waves, and the like and music. Id. The
visual therapies display pre-selected cloud scenes on digital ceiling 1810 and
pre-selected beach scenes on digital window 1812. Id. ¶ 179, Fig. 18.
Appellant’s Specification describes similar audio and visual settings
for a room’s ES as sounds of birds singing, ocean waves, rain falling, wind
blowing, animal sounds, music, and the like. Spec. 22:1–12. The visual ES
include lighting, outdoor scenes like the ocean, beach, mountains, sunshine,
rain, and the sky above. Id.
Therefore, we agree with the Examiner that Bechtel provides a user
interface configured to request input from a subject regarding a plurality of
ES to determine the subject’s preference as claimed.
Appellant is correct that Bechtel also describes a clinician-dashboard
display device that presents a graphical user interface configured to receive a
patient’s questions “for a non-present clinician for future retrieval by the
clinician to go through the questions with the patient.” Appeal Br. 21 (citing
Bechtel ¶ 64). However, the Examiner does not rely on this display device
with this particular functionality to teach the claimed user interface. Final
Act. 8; Ans. 4. Thus, this argument does not apprise us of Examiner error.
Pupillometer Measures Pupil During Presentation of ES
Appellant argues that Berg does not cure the deficiencies of Bechtel,
and the Examiner fails to show that Berg teaches a “pupilometer configured
to measure the pupil of the subject during presentation of the plurality of
Environmental Supplements to the subject via the user interface” as
claimed. Appeal Br. 22. Appellant argues that Berg conducts consumer
research for a company’s products rather than ES as claimed. Id. at 22–23.
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7
These arguments are not persuasive for several reasons. First, it does
not address the Examiner’s rejection of claim 1, the Examiner’s reliance on
Berg to teach the claimed pupilometer and circuitry, or the Examiner’s basis
for combining Berg’s pupilometer, sensors, and circuitry with Bechtel “in
order to obtain ‘feedback regarding their selection preference or determine
their probably emotive state in response to the at least one visual stimulus
(Berg, Paragraph [0002]).” Thus, these arguments do not persuade us of
error in the Examiner’s findings regarding Berg or the Examiner’s reasons
for combining Berg’s teachings with Bechtel to render obvious claim 1. See
37 C.F.R. § 41.37(c)(1)(iv); Jung, 637 F.3d at 1365.
Second, these arguments attack the references individually where the
Examiner has relied on their combined teachings to reject claim 1. See In re
Merck, 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references.”).
Third, the Examiner cites teachings of Berg regarding the efficacy of
using sensors with a physiological device “to obtain consumer feedback
regarding their selection preference or determine their probable emotive
state in response to the at least one visual stimulus.” Berg ¶ 2 (cited in Final
Act. 11). The Examiner cites many Berg teachings regarding the accuracy
of feedback obtained from a subject’s inputs of preferences for particular
products displayed on monitors. Final Act. 10–11 (citing Berg ¶¶ 8, 11).
Berg measures autonomic responses such as pupil dilation and other sensed
biometric data. Id. ¶¶ 57, 59. Berg’s real or virtual environments simulate
home, office, restaurants, outdoors, indoors, retail stores, and test facilities to
obtain a subject’s selection preferences. ¶¶ 64, 67, 68.
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Application 14/252,098

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Berg’s use of autonomic response and sensed biometric data to
determine a subject’s preference for visually-displayed information that
relates to consumer products is a distinction without a difference. Berg
teaches the efficacy of using a pupilometer to obtain pupil dilation and
autonomic response data, in addition to autonomic data measured by other
sensors, as a means of obtaining a more accurate measurement of a subject’s
preference for particular environmental settings as claimed. In Berg, the
environmental settings are home, office, restaurants, outdoors, indoors, retail
stores, and test facilities with consumer products discussed above. Bechtel
and the claimed system both measure a subject’s preference for ES in similar
venues for the same reasons, namely, to obtain a more accurate measurement
of a subject’s preference for particular ES in order to provide surroundings
more conducive to medical treatment and pain management.
The Examiner merely proposes to improve Bechtel’s selection system
by modifying it to include Berg’s pupilometer, sensors, and circuity so that
Bechtel’s interactive patient system obtains more accurate measurement of
each patient’s preferences for ES in the patient’s room. In this regard, Berg
teaches that measuring a subject’s preferences by obtaining their written or
oral feedback in response to seeing or interacting with products has some
value but can be misleading, inefficient, incomplete, and inaccurate as a way
to predict their preferences. Berg ¶¶ 4–6. Berg teaches how to improve the
accuracy of determining a subject’s actual preferences for ES by measuring
autonomic responses including pupil dilation and other biometric data in
response to visual imaging. Id. ¶¶ 57–60, 68. This measured biometric data
can be used to adjust databases and models for specific consumers to create
a specific physiological response profile of a subject. See id. ¶¶ 102, 103.
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9
Motivation to Combine Teachings of Bechtel and Berg
We have been instructed that using a known technique that has been
used to improve one device to improve similar devices in the same way is
obvious unless its application is beyond the level of ordinary skill in the art.
See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). An implicit
motivation to combine also exists when an “improvement” makes a product
stronger, cheaper, faster, lighter, smaller, more durable, or more efficient.
See DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co.,
464 F.3d 1356, 1368 (Fed. Cir. 2006). Berg satisfies both of these bases
with Bechtel. See Appeal Br. 23–25.
Bechtel uses sensed autonomic responses of a patient to change and
introduce ES into a patient’s room. Bechtel initiates changes in the ES of a
patient’s room upon detecting the onset of patient discomfort via sensors in
the room that measure a patient’s biometric data and autonomic responses
and compare the data to a patient profile as claimed. Bechtel ¶¶ 158–170. If
ambient sensor data exceeds a patient’s profile threshold, the system changes
the ES to reduce patient discomfort. Id. ¶¶ 172–179. Bechtel continues to
sense the patient’s biometric and autonomic responses to ES stimulus and
can change the first ES scene to a second ES scene and settings taken from a
database of the patient’s preference profile if the sensed data still exceeds a
threshold for the patient. Id. ¶¶ 186–91, Figs. 9, 18, 20.
Although Bechtel teaches to use autonomic and biometric sensed data
to establish and change ES scenes in a patient’s room, Bechtel does not use
such data as part of the patient’s initial selection of ES settings or scenes as
input into a patient interactive station. Berg uses autonomic and biometric
sensed data during an ES selection to improve ES selection accuracy.
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10
Select ES from Database and Generate Instruction(s)
At various places in the Appeal Brief, Appellant quotes large portions
of claim 1 and argues that the Examiner has failed to show that Bechtel or
Berg teaches or suggests these limitations. See Appeal Br. 23–24, 25. These
arguments are not persuasive of Examiner error because they again amount
to piecemeal attacks on the references where the Examiner relies on the
combined teachings of Bechtel, Berg, and Roe for the limitations. The
Examiner cites Roe to teach “generate one or more instructions associated
with the selection responsive to comparison of the personal profile to the
database of Environmental Supplements.” Final Act. 11. Appellant does
not address the Examiner’s findings that Roe teaches this claimed feature.
See Appeal Br. 20–26. Nor does Appellant address the complete findings of
the Examiner as set forth in the Final Office Action that Bechtel and Berg,
either alone or in combination, teach other limitations. See id.
Second, as discussed above, Bechtel selects ES (scenes, settings) from
a database of ES based on a patient’s autonomic response associated with
the patient’s preferences for the ES in the patient’s room and generates one
or more instructions associated with the selection responsive to comparison
of the personal profile to the database. See Bechtel ¶¶ 76, 77, 97, 99, 111,
116–18, 158–191, Figs. 1, 3, 4A–4C, 6, 9, 10, 16, 18, 20.
Third, arguments reciting lengthy portions of a claim with little or no
analysis of the Examiner’s findings do not identify precise issues/limitations
that allegedly are lacking in the prior art. Such arguments that merely recite
limitations and assert that they are not shown in the prior art do not provide a
sufficient basis for us to review the Examiner’s actions for error due to their
lack of specificity.
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11
“A statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim.” 37 C.F.R.
§ 41.37(c)(1)(iv). This rule of the Board’s appeal procedures applies most
directly to arguments made in an appeal brief for the separate patentability
of claims that are grouped together by an appellant for a ground of rejection.
However, the rule reflects more broadly the policy of our rules and practice
to require an appeal brief to provide sufficient detail in its allegation of error
by an examiner so that the Board can adjudicate that matter properly. Mere
generalized arguments make it impossible to determine what an appellant
considers to be lacking from an examiner’s rejection. See also In re Lovin,
652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that the Board reasonably
interpreted 37 C.F.R. § 41.37(c)(1)(vii) (predecessor to § 41.37(c)(1)(iv)) to
require “more substantive arguments in an appeal brief than a mere
recitation of the claim elements and a naked assertion that the corresponding
elements were not found in the prior art.”).
Audio Output Device
Appellant also asserts that there is no record evidence that a skilled
artisan would interpret Bechtel, Berg, or Roe to teach or suggest the claimed
“audio delivery device configured to initiate an audio output to correspond
to the preference of the subject or alter the audio output to correspond to the
preference of the subject responsive to receipt of one or more instructions
from the network interface” and the preferences relate to pupillometer data.
Appeal Br. 23; Reply Br. 5. Appellant recognizes that Bechtel teaches to
play pre-selected music as part of the ES provided to a patient. Appeal Br.
23 (quoting Bechtel ¶ 179). Appellant has not apprised us of error in the
Examiner’s findings in this regard.
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Application 14/252,098

12
As discussed above, Bechtel outputs audio therapy corresponding to a
patient’s preferences input into a patient interactive station. Audio therapy
is output as soothing music over a network interface. See Bechtel ¶¶ 27, 77,
99, 116–18, 177, Figs. 1–3, 9, 18, 20. The Specification describes similar
audio therapy. Spec. 8:15–16, 22:11–12. Thus, Appellant has not persuaded
us of error in the Examiner’s findings and determination of obviousness for
claim 1.
Accordingly, we sustain the rejection of claim 1 and claims 116–25,
127, 128, and 131, which fall with claim 1.
Claim 126 Rejected over Bechtel, Berg, Roe, and Johnson
Appellant argues that claim 126 is patentable for the same reasons as
claim 1 from which it depends. Appeal Br. 26. Because we sustain the
rejection of claim 1, this argument is not persuasive, and we also sustain the
rejection of claim 126.
CONCLUSION
Claims
Rejected
35 U.S.C. § Reference/Basis Affirmed Reversed
1, 116–25,
127, 128,
131
103 Bechtel, Berg,
Roe
1, 116–25,
127, 128,
131

126 103 Bechtel, Berg,
Roe, Johnson
126
Overall
Outcome
1, 116–28,
131

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED