ELWHA LLC

Patent Trials and Appeals Board

Dec 9, 2021

2021002160 (P.T.A.B. Dec. 9, 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.
13/705,311 12/05/2012 Roderick A. Hyde SE2-1341-US 8291
80118 7590 12/09/2021
Constellation Law Group, PLLC
P.O. Box 580
Tracyton, WA 98393
EXAMINER
TIEDEMAN, JASON S
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
12/09/2021 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):
ISFDocketInbox@intven.com
Tyler@constellationlaw.com
admin@constellationlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte RODERICK A. HYDE, EDWARD K.Y. JUNG,
JORDIN T. KARE, ERIC C. LEUTHARDT, ROYCE A. LEVIEN,
RICHARD T. LORD, ROBERT W. LORD, MARK A. MALAMUD,
JOHN D. RINALDO JR., DENNIS J. RIVET,
CLARENCE T. TEGREENE, and LOWELL L. WOOD JR.
__________________

Appeal 2021-002160
Application 13/705,311
Technology Center 3600
____________________

Before JAMES P. CALVE, TARA L. HUTCHINGS, and AMEE A. SHAH,
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, 10, 13, 14, 17, 19–24, 27–33, 35–40, 45,
62, 85, 89, 90, 92, 178, 179, and 183–195.2 See Appeal Br. 1; Non-Final
Act. 2. 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, which is wholly owned by The Invention Science
Fund II, LLC, as the real party in interest. See Appeal Br. 3.
2 Claims 2–9, 11, 12, 15, 16, 18, 25, 26, 34, 41–44, 46–61, 63–84, 86–88,
91, 164–175, and 182 are cancelled, and claims 93–163, 176, 177, 180, and
181 are withdrawn. See Appeal Br. 3, 25–63 (Claims App.).
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CLAIMED SUBJECT MATTER
Claims 1, 40, 62, and 85 are independent. Claim 1 recites:
1. A healthcare information management system
comprising:
(a) at least one wearable article configured to be worn by
an individual, the at least one wearable article including at least
(1) a biometric sensor configured to obtain biometric data from
the individual while the at least one wearable article is worn by
the individual, (2) data indicative of at least a current health
status of the individual, and (3) at least one of a visual interface
for providing a visual notification to the individual responsive
to one or more received communications or an auditory
interface configured for providing an auditory notification to
the individual responsive to one or more received
communications;
(b) one or more compliance sensors configured to obtain
compliance data indicative of non-compliance by the individual
with a health regimen requiring at least one of reduction or
omission of one or more behaviors;
(c) at least one computing device operatively coupled
with the biometric sensor and configured to receive the
biometric data; and
(d) at least one computer-readable medium bearing one
or more instructions that, when implemented in the at least one
computing device, configure the at least one computing device
to perform operations including at least:
(1) obtaining an association between at least some of
the biometric data obtained by the biometric sensor while the at
least one wearable article is worn by the individual and a record
designator, the record designator including a pattern identifying
the individual;
(2) causing the at least one wearable article to display
at least some of the data indicative of the current health status
of the individual responsive to the association between the at
least some of the biometric data obtained by the biometric
sensor and the record designator;
(3) creating a communication for transmission to the
wearable article to notify the individual of an incentive
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3
responsive at least in part to the compliance data indicative of
non-compliance by the individual with the health regimen
requiring at least one of reduction or omission of the one or
more behaviors; and
(4) transmitting a communication to the wearable
article to notify the individual of the incentive responsive at
least in part to the compliance data indicative of noncompliance
by the individual with the health regimen requiring at least one
of reduction or omission of the one or more behaviors, wherein
the incentive is configured to provide an incentive for at least
one of reduction or omission of the one or more behaviors.
Appeal Br. 25–26 (Claims App.).
REJECTIONS
Claims 1, 10, 13, 14, 17, 19–24, 27–33, 35–40, 45, 62, 85, 89, 90, 92,
178, 179, and 183–195 are rejected under 35 U.S.C. § 112, second paragraph
as being indefinite.
Claims 1, 10, 13, 14, 23, 28, 31, 33, 38, 40, 45, 62, 85, 89, 90, 179,
and 186 are rejected under 35 U.S.C. § 103 as unpatentable over Yuen,3
Hinkamp,4 and Douglas.5
Claim 19 is rejected under 35 U.S.C. § 103 as unpatentable over
Yuen, Hinkamp, Douglas, Keppler,6 and Green.7
Claims 20 and 178 are rejected under 35 U.S.C. § 103 as unpatentable
over Yuen, Hinkamp, Douglas, and Keppler.

3 US 2012/0083715 A1, published April 5, 2012.
4 US 2007/0046476 A1, published March 1, 2007.
5 WO 00/75748 A2, published December 14, 2000.
6 US 2008/0045806 A1, published February 21, 2008.
7 US 7,716,072 B1, published May 11, 2010.
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Claims 21, 22, 29, 30, 36, 37, and 92 are rejected under 35 U.S.C.
§ 103 as unpatentable over Yuen, Hinkamp, Douglas, and Koverzin.8
Claim 24 is rejected under 35 U.S.C. § 103 as unpatentable over
Yuen, Hinkamp, Douglas, and Schmidt.9
Claim 27 is rejected under 35 U.S.C. § 103 as unpatentable over
Yuen, Hinkamp, Douglas, and Wendl.10
Claims 32 and 39 are rejected under 35 U.S.C. § 103 as unpatentable
over Yuen, Hinkamp, Douglas, and Jacobs.11
Claim 35 is rejected under 35 U.S.C. § 103 as unpatentable over
Yuen, Hinkamp, Douglas, and Nguyen.12
Claim 183 is rejected under 35 U.S.C. § 103 as unpatentable over
Yuen, Hinkamp, Douglas, and James.13
Claims 184 and 185 are rejected under 35 U.S.C. § 103 as
unpatentable over Yuen, Hinkamp, Douglas, and Applicant’s Admitted Prior
Art (“AAPA”).
Claims 17 and 187 are rejected under 35 U.S.C. § 103 as unpatentable
over Yuen, Hinkamp, Douglas, and Koverzin.
Claims 188 and 189 are rejected under 35 U.S.C. § 103 as
unpatentable over Yuen, Hinkamp, Douglas, and Utley.14

8 US 2010/0286490 A1, published November 11, 2010.
9 US 2009/0112770 A1, published April 30, 2009.
10 US 2006/0004606 A1, published January 5, 2006.
11 US 2012/0330684 A1, published December 27, 2012.
12 US 2008/0303638 A1, published December 11, 2008.
13 US 2008/0176655 A1, published July 24, 2008.
14 US 2011/0263947 A1, published October 27, 2011.
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Claims 190, 191, 194, and 195 are rejected under 35 U.S.C. § 103 as
unpatentable over Yuen, Hinkamp, Douglas, and Brown.15
Claims 192 and 193 are rejected under 35 U.S.C. § 103 as
unpatentable over Yuen, Hinkamp, Douglas, and Benderev.16
ANALYSIS
Indefiniteness Rejection of All Claims
The Examiner determines that independent claims 1, 40, 62, and 85
are indefinite because it is unclear whether “transmitting a communication”
refers to the previously-recited “creating a communication” or to another
communication. Non-Final Act. 4. Appellant does not present argument for
this rejection. See Appeal Br. 8–24 (requesting review only of the rejections
under 35 U.S.C. § 103). Therefore, we summarily sustain this rejection.
Claims 1, 10, 13, 14, 23, 28, 31, 33, 38, 40, 45, 62, 85, 89, 90,
179, and 186 Rejected over Yuen, Hinkamp, and Douglas
Appellant argues the claims as a group. Appeal Br. 10–22. We select
claim 1 as representative. 37 C.F.R. § 41.37(c)(1)(iv) (2019). Regarding
claim 1, the Examiner finds that Yuen teaches a system including a wearable
article and one or more compliance sensors configured to obtain compliance
data indicative of noncompliance by the individual with a health regimen
requiring at least one of reduction or omission of one or more behaviors.
Non-Final Act. 5–7 (citing Yuen ¶¶ 54, 55, 105, 130, Fig. 7). The Examiner
cites Hinkamp to teach biometric pattern association and Douglas to teach
offers of incentives for non-compliance with a health regimen. Id. at 8– 12.

15 US 2007/0016447 A1, published January 18, 2007.
16 US 2004/0133463 A1, published July 8, 2004.
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Appellant argues that Yuen includes motion and altitude sensors but
uses data from those sensors to calculate the calorie burn of the user rather
than non-compliance by the individual with a health regimen requiring at
least one of a reduction or omission of one or more behaviors, as recited in
claims 1, 40, 62, and 85. Appeal Br. 12, 20–22. Appellant also asserts that
Hinkamp and Douglas fail to remedy this deficiency of Yuen. Id. at 12.
The Examiner responds that this limitation only requires the sensor to
be configured to obtain data indicative of noncompliance by the individual
with a health regimen requiring at least one of a reduction or omission of
one or more behaviors, and Yuen collects motion and altitude data that may
be indicative of noncompliance with a health regimen by collecting sensor
data to monitor a user’s activity as it relates to athletic training or weight
control. Ans. 4 (citing Yuen ¶¶ 228, 258).
The Examiner explains that Douglas transmits data, such as the data
that Yuen transfers to a portable device for a health regimen, in response to a
user not complying with a smoking cessation program. Id. at 5 (citing Yuen
¶ 212; Douglas, 12:32–34); see Non-Final Act. 11–12. In this way, the
Examiner determines that the combined teachings of Yuen and Douglas
teach compliance sensors configured to obtain compliance data indicative of
non-compliance with a health regimen requiring at least a reduction and/or
omission of one or more behaviors. See Ans. 5; see also Non-Final Act. 12.
The Specification indicates that a health regimen can have medicinal,
measurement, omission, exercise, and/or other components. Spec. ¶ 279. A
pregnancy regimen may include a no smoking component measured by a
smoke detector and a calories consumed rate. Id. ¶ 280. Another regimen
measures alcohol consumption omission by using a breathalyzer. Id. ¶ 282.
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The Specification also describes a health regimen including an
exercise component (id.), and a health regimen including a weight loss
component that is indicative of a patient with an eating disorder failing to eat
meals (id. ¶ 301) and failing to maintain a body weight (id. ¶ 303).
The Examiner reasonably determines that data from the motion and
altitude sensors of Yuen are used to monitor a user’s compliance with a
health regimen, such as an exercise program (weight training) or a weight
control program, and data are uploaded to websites so health professionals,
trainers, and weight monitoring and health oriented groups can monitor the
data and provide feedback based on the data. Ans. 4 (citing Yuen ¶¶ 228,
258). For a weight training regimen, the sensors monitor the repetitions,
sets, time between repetitions/sets, type of exercise, and form. Yuen ¶ 258.
For other health regimens, the portable monitoring device provides data for
activity levels, steps, and/or sleep quality. Id. ¶ 228. Thus, Yuen teaches
and suggests monitoring user compliance with a health regimen. See Ans. 4.
The Examiner cites Douglas to teach expressly a system that receives
user data and monitors the data for compliance/noncompliance with a health
regimen having a reduction or omission component such as a smoking
cessation program. Non-Final Act. 10–12; Ans. 5 (citing Douglas 12:32–
34). Douglas’ system receives data from a user and monitors progress in a
behavior modification program to include compliance/noncompliance with
program objectives such as smoking cessation. Douglas, 12:24–35, 17:1–13.
The Examiner determines that it would have been obvious to modify
Yuen’s system that monitors users’ activities and provides feedback on their
progress with Douglas’ teachings to offer incentives to individuals when
their activity data indicates noncompliance with the health regimen. Ans. 5.
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Appellant does not dispute or apprise us of error in the Examiner’s
findings that Yuen uses sensors to collect user activity data and monitor that
data to provide feedback to users on their progress in a health program, or
that Douglas provides advertisements to incentivize persons in a health
regimen when their collected activity indicates they are noncompliant with a
health regimen requiring reduction/omission of a behavior such as smoking
cessation. See Non-Final Act. 7–12; Ans. 4–6; Yuen ¶¶ 212, 228, 258;
Douglas, 12:24–35, 17:1–13; see also Appeal Br. 11–12 (Yuen collects user
activity data from motion and altitude sensors to determine a calorie burn);
14 (Douglas monitors a person’s compliance with a behavior modification
program and generates compliance data indicative of the individual’s
progress toward the achievement of the program’s milestones).
Appellant argues that there is no motivation to modify Yuen with the
disclosure of Douglas in the manner suggested by the Examiner because
doing so would require an impermissible change in a principle of operation
of Yuen. Appeal Br. 14–15. In particular, Appellant contends that Douglas
prompts users to enter their health-related data into the system, and these
self-reporting tools (a journal) would impermissibly change a principle of
operation of Yuen, which uses sensors to acquire user data. Id. at 14–15.
This argument is not persuasive because it misperceives the proposed
modification to Yuen. The Examiner is not modifying Yuen’s use of sensors
to collect and monitor user data to assess progress in a health program. The
Examiner is modifying Yuen to determine whether a user is in compliance
with a health regimen based on the collected data from Yuen’s sensors and
to offer incentives (advertisements) to users in noncompliance with a health
regimen as Douglas expressly teaches. Non-Final Act. 10–12; Ans. 5.
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Essentially, the Examiner proposes to improve Yuen, which collects
user data related to a health program (athletic training or weight control), to
determine whether the user complying with the health regimen and to offer
incentives to users whose data indicates that they are not complying with the
health regimen to incentivize the users to comply with the health regimen.
Non-Final Act. 11–12 (citing Douglas, 17:1–13 (serving advertisements to a
user in a smoking cessation program that requires the user to smoke only one
cigarette a day when received data indicates that the user is smoking three
cigarettes a day to help the user to stop smoking); see also KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007) (the use of 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). Yuen already collects user data for a health program and transmits
feedback and suggestions to the user from professionals who monitor that
collected data. Yuen ¶ 228. The Examiner proposes to modify Yuen to
offer incentives when the sensed data indicates noncompliance.
Appellant argues that Douglas does not transmit a communication to a
wearable article to notify a user of an incentive. Appellant asserts that, read
in the context in Appellant’s specification, an “incentive” does not include
notifications or advertisements as discussed by Douglas. Appeal Br. 18–19.
The Examiner responds that “incentives” can include “supplemental
therapies or other such services” (Ans. 12 (quoting Spec. ¶ 250); see also
Non-Final Act. 11), and Douglas sends advertisements “geared towards
nicotine patches or an innovative medication to help kick the smoking habit”
and such advertisements correspond to the claimed “incentives” consistent
with the Specification (Non-Final Act. 11–12 (quoting Douglas, 17:1–13)).
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Appellant’s Specification describes incentives as follows:
With reference now to FIG. 26, shown is a system 2600 in
which one or more technologies may be implemented. System
2600 may include one or more incentives 2640 represented or
manifested (as voltage levels or magnetization states
comprising digital expressions, e.g.) on magnetic or other
storage media 2652, display media 2654, transmission media
2656, or other media 2605. In some contexts, such expressions
may explicitly associate an actual ( accomplished) or
prospective incentive 2640 that is physical and tangible: a card
or other device-readable medium granting a membership or
other temporary access for one or more increments 2611, 2612,
2613 of time; cash or other certificates indicative of points
2616, credits 2617 or other physical media of exchange;
medications, nutritional supplements, exercise equipment, or
other goods transferred as payments in kind 2618; or other such
resources 2619 directly manifesting a physical, tangible benefit
2620 as (at least part of) the incentive. Alternatively or
additionally, such incentives can include one or more discounts
or other terms 2631, 2632 or conditions 2634, 2635;
performance ratings 2638 or favorable referrals 2641, 2642;
policies, rebates, or other eligibilities 2646, 2647; or
supplemental therapies or other such services 2648. In some
contexts, as exemplified below, a combination of such
incentives may be necessary or helpful for motivating qualified
patients to comply with a testing or treatment regimen 2331-
2339 or for motivating others to explain or otherwise facilitate
an individual’s participation or enrollment in a testing or
treatment program.
Spec. ¶ 250 (emphasis added).
Douglas teaches the use of advertisements to incentivize and motivate
persons who are noncompliant with a health regimen to become compliant.
The advertisements may be geared toward “nicotine patches or an innovative
medication to help kick the smoking habit.” Douglas, 17:6–7. The ads may
offer the opportunity to purchase such items via e-commerce. Id. at 13:7–8.
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The Examiner’s finding that advertisements for nicotine patches or
innovative medication in Douglas correspond to the claimed incentive, as
interpreted in light of the Specification’s description of such incentives as
including “supplemental therapies or other such services,” is supported by
a preponderance of evidence. Appellant’s arguments do not apprise us of
error in the Examiner’s findings.
Moreover, advertisements commonly are understood to be used to
incentivize behavior and to offer discounts, credits, rebates, or favorable
referrals, all of which features are described in the Specification as types of
“incentives.” See Spec. ¶ 250. Advertisements also may include “terms and
conditions,” which the Specification describes as another type of incentive.
See id. Douglas’ use of advertisements to incentivize non-compliant users to
comply with a health regimen requiring at least one of reduction or omission
of one or more behaviors, where such advertisements correspond to the
claimed incentives consistent with the Specification’s description of such
incentives, thus teaches and suggests this claimed feature.
Accordingly, we sustain the rejection of claim 1 and claims 10, 13, 14,
23, 28, 31, 33, 38, 40, 45, 62, 85, 89, 90, 179, and 186, which are not argued
separately. See Appeal Br. 19–22; see also 37 C.F.R. § 41.37(c)(1)(iv).
Rejections of Dependent Claims
Appellant does not present arguments for the other rejections of the
remaining dependent claims. See Appeal Br. 19 (arguing the patentability of
claims dependent on claim 1 based on the patentability of claim 1), id. at 22
(arguing the patentability of claims dependent on independent claim 40
based on the patentability of that claim). Thus, we summarily sustain the
rejections of those claims.
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CONCLUSION
The Examiner’s decision to reject claims 1, 10, 13, 14, 17, 19–24, 27–
33, 35–40, 45, 62, 85, 89, 90, 92, 178, 179, and 183–195 is affirmed.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
References/Basis Affirmed Reversed
1, 10, 13, 14,
17, 19–24,
27–33, 35–
40, 45, 62,
85, 89, 90,
92, 178, 179,
183–195
112(b) Indefiniteness 1, 10, 13, 14,
17, 19–24,
27–33, 35–
40, 45, 62,
85, 89, 90,
92, 178, 179,
183–195

1, 10, 13, 14,
23, 28, 31,
33, 38, 40,
45, 62, 85,
89, 90, 179,
186
103 Yuen, Hinkamp,
Douglas
1, 10, 13, 14,
23, 28, 31,
33, 38, 40,
45, 62, 85,
89, 90, 179,
186

19 103 Yuen, Hinkamp,
Douglas,
Keppler, Green
19
20, 178 103 Yuen, Hinkamp,
Douglas, Keppler
20, 178
21, 22, 29,
30, 36, 37,
92
103 Yuen, Hinkamp,
Douglas,
Koverzin
21, 22, 29,
30, 36, 37,
92

24 103 Yuen, Hinkamp,
Douglas, Schmidt
24
27 103 Yuen, Hinkamp,
Douglas, Wendl
27
32, 39 103 Yuen, Hinkamp,
Douglas, Jacobs
32, 39
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Claim(s)
Rejected
35 U.S.C.
§
References/Basis Affirmed Reversed
35 103 Yuen, Hinkamp,
Douglas, Nguyen
35
183 103 Yuen, Hinkamp,
Douglas, James
183
184, 185 103 Yuen, Hinkamp,
Douglas, AAPA
184, 185
17, 187 103 Yuen, Hinkamp,
Douglas,
Koverzin
17, 187
188, 189 103 Yuen, Hinkamp,
Douglas, Utley
188, 189
190, 191,
194, 195
103 Yuen, Hinkamp,
Douglas, Brown
190, 191,
194, 195

192, 193 103 Yuen, Hinkamp,
Douglas,
Benderev
192, 193
Overall
Outcome
1, 10, 13, 14,
17, 19–24,
27–33,
35–40, 45,
62, 85, 89,
90, 92, 178,
179,
183–195

TIME PERIOD FOR RESPONSE
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