Ex Parte 6,605,038 B1 et al

Patent Trial and Appeal Board

Sep 16, 2016

95002354 (P.T.A.B. Sep. 16, 2016)

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.
95/002,354 09/14/2012 6,605,038 B1 92092-891657 3404
23370 7590 09/16/2016
KILPATRICK TOWNSEND & STOCKTON LLP
Mailstop: IP Docketing - 22
1100 PEACHTREE STREET
SUITE 2800
ATLANTA, GA 30309
EXAMINER
BANANKHAH, MAJID A
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
09/16/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

BASIS SCIENCE, INC.,
Requester,

v.

BODY MEDIA, INC.,
Patent Owner.
____________

Appeal 2015-004784
Reexamination Control 95/002,354
Patent 6,605,038 B1
Technology Center 3900
____________

Before BRADLEY W. BAUMEISTER, JENNIFER L. McKEOWN, and
IRVIN E. BRANCH, Administrative Patent Judges.

BRANCH, Administrative Patent Judge

DECISION ON APPEAL
Body Media, Inc. (“Patent Owner”) appeals under 35 U.S.C. §§ 134
and 315 the Examiner’s rejections of claims 1, 2, 14, 15, 19–22, 24–28, 30–
35, 38–46, and 74–100, all claims subject to reexamination. Claims 74–100
were added during reexamination. Corrected PO App. Br. 1.1 Original

1 The distinction between the originally filed Patent Owner’s Appeal Brief in
Inter Partes Reexamination, dated May 19, 2014 (“Original PO App. Br.”)
and the Corrected Patent Owner’s Appeal Brief in Inter Partes
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claims 3–13, 16–18, 23, 29, 36, 37, and 47–73 are not subject to
reexamination. We have jurisdiction under 35 U.S.C. §§ 134 and 315.
An oral hearing was conducted on October 14, 2015, and a transcript
(“Tr.”) of the hearing was entered into the record on December 18, 2015.

ORDER TO SHOW CAUSE
Background
In Section II, RELATED APPEALS AND INTERFERENCES, of its original
Appeal Brief, Patent Owner states only that
The following proceeding is identified as related to the instant
reexamination. U.S. Patent No. 6,605,038 to Teller et al. (the
patent at issue in this reexamination) is asserted against third
party requester Basis Science in a lawsuit filed in the United
States District Court for the District of Delaware, Body Media,
Inc. v. Basis Science, Inc., Civil Action No. 1: 12-cv-00133
(GMS).
Original PO App. Br. 1. Patent Owner’s Rebuttal Brief does not supplement
this information. See generally Patent Owner’s Rebuttal Brief in Inter
Partes Reexamination (filed Sept. 22, 2014). Nor does Requester dispute
this statement in its Respondent Brief. See Respondent Brief by Third-Party
Requester 2 (filed June 19, 2014).
Prior to Oral Hearing, the Panel became aware of various
reexamination appeals that potentially appeared to be “related” to the present
appeal within the meaning of 37 C.F.R. § 41.67(c)(1)(ii). At Oral Hearing,
the Panel asked Patent Owner if there were any other related cases. Tr. 31.

Reexamination, dated November 24, 2015 (“Corrected PO App. Br.”) is
explained in this Opinion, below.
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Counsel for Patent Owner responded that the present reexamination belongs
to
a family of seven reexams. At present [appeal] will be the fourth
one that’s been before the Board. There are two on appeal to the
Federal Circuit. There are another two. They’re in the briefing
stage. Actually, no, there are three that are in the briefing stage
for appeal to the Board.
Id.
Following the Oral Hearing, this Panel issued an Order to Show Cause
(“Order,” mailed November 10, 2015) asking Patent Owner “why the Board
should not dismiss [Owner’s] . . . appeal in this inter partes reexamination
for failing to properly identify the inter parties reexaminations related to this
inter partes reexamination proceeding.” Order 6. In response, Patent
Owner filed the Corrected Appeal Brief identifying six related inter parties
reexaminations to which the Order referred. Corrected PO App. Br. 1.
Patent Owner also filed Patent Owner’s Response to Order to Show
Cause (“PO Resp. to Order,” filed November 24, 2015). Therein, Patent
Owner asserts, among other arguments, that “Patent Owner [mistakenly]
understood Rule 41. 67(c) to require identification of other appeals and
judicial proceedings involving the patent currently on appeal to the Board,
i.e., the U.S. Patent No. 6,605,038 patent and any counterparts thereof,” and
submits “that [for various reasons] its interpretation was not unreasonable.”
PO Resp. to Order 3.
Patent Owner further argues, though, that Rule 41.69 separately
requires the Examiner to make of record determinations of non-compliance
with the provisions of, inter alia, Rule 41.67. Id. at 6. Patent Owner notes
that the Examiner’s Answer in the present reexamination was signed by
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three Examiners, that these same three examiners signed the Examiner’s
Answers of at least one of the other related BodyMedia reexaminations, but
that none of these Examiners identified the deficiency in the Appeal Brief’s
compliance with Rule 41.67. Id. at 6–7.
Patent Owner then argues that
With respect to appeal briefs, Rule 41.67(d) requires that “[i]f a
brief is filed [that] . . . does not comply with all the requirements
of paragraph (a) and paragraph (c) of this section, appellant will
be notified of the reasons for non-compliance and given a non-
extendable time period within which to file an amended brief.
PO Resp. to Order 6.
Principles of Law
Rule 37 C.F.R. § 41.8(a) reads as follows:
(a) In an appeal brief (§§ 41.37, 41.67, or 41.68) or at the
initiation of a contested case (§ 41.101), and within 20 days of
any change during the proceeding, a party must identify:
(1) Its real party-in-interest, and
(2) Each judicial or administrative proceeding that could
affect, or be affected by, the Board proceeding.

Rules 41.67(c) and (d)—addressing Appeal Briefs for inter partes
reexaminations—read, in part, as follows:
(c)
(1) The appellant’s brief shall contain the following items
under appropriate headings. . . .
(ii) Related appeals, interferences, and trials. A statement
identifying by application, patent, appeal, interference, or
trial number all other prior and pending appeals,
interferences, trials before the Board, or judicial
proceedings known to appellant, the appellant’s legal
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representative, or assignee [that] . . . may be related to,
directly affect or be directly affected by or have a bearing
on the Board’s decision in the pending appeal. Copies of
any decisions rendered by a court or the Board in any
proceeding identified under this paragraph must be
included in an appendix as required by paragraph
(c)(1)[(x)] of this section. . . .
(x) Related proceedings appendix. An appendix
containing copies of decisions rendered by a court or the
Board in any proceeding identified pursuant to paragraph
(c)(1)(ii) of this section.
(d) If a brief is filed [that] does not comply with all the
requirements of paragraph (a) and paragraph (c) of this section,
appellant will be notified of the reasons for non-compliance and
given a non-extendable time period within which to file an
amended brief. If appellant does not file an amended brief within
the set time period, or files an amended brief [that] does not
overcome all the reasons for non-compliance stated in the
notification, that appellant’s appeal will stand dismissed.

Rule 41.68(b)(1)—addressing Respondent Briefs for inter partes
reexaminations—reads, in part, as follows:
(1) The respondent brief shall contain the following items under
appropriate headings. . . .
(ii) Related appeals, Interferences, and trials. A statement
identifying by application, patent, appeal, interference, or
trail number all other prior and pending appeals,
interferences or judicial proceedings known to respondent,
the respondent’s legal representative, or assignee [that] . . .
may be related to, directly affect or be directly affected by
or have a bearing on the Board’s decision in the pending
appeal. Copies of any decisions rendered by a court or the
Board in any proceeding identified under this paragraph
must be included in an appendix as required by paragraph
(b)(1)(ix) of this section. . . .
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(ix) Related proceedings appendix. An appendix
containing copies of decisions rendered by a court or the
Board in any proceeding identified pursuant to paragraph
(b)(1)(ii) of this section.

Rule 41.69(a)—addressing Examiner’s Answers for inter partes
reexaminations—reads, in part, as follows (emphasis added):
(a) The primary examiner may. . . furnish a written answer to the
owner’s and/or requester’s appellant brief or respondent
brief . . . . A copy of the answer shall be supplied to the owner
and all requesters. If the primary examiner determines that the
appeal does not comply with the provisions of §§ 41.61, 41.66,
41.67 and 41.68. . . , the primary examiner shall make such
determination of record.

Analysis
We disagree with Patent Owner’s assertions (PO Resp. to Order 3;
accord id. at 4) that it is reasonable to interpret Rule 41.67(c) as requiring
only that an appeal brief identify “appeals and judicial proceedings
involving the patent currently on appeal to the Board. . . and any
counterparts thereof.” The language of Rule 41.67 expressly states that the
appeals, interferences, and judicial proceedings (hereafter referred to as
adjudicatory proceedings, for simplicity) to be listed in an appeal brief is of
a broader class—those adjudicatory proceedings that “may be related to,
directly affect or be directly affected by[,] or have a bearing on the Board’s
decision in the pending appeal.” 37 C.F.R. § 41.68(b)(1)(ii). Thus,
Rule 41.67 is to be interpreted broadly as casting a wide net, rather than
interpreted narrowly in the manner advanced by Patent Owner. That is, the
duty to disclose related adjudicatory proceedings extends to all of a party’s
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various adjudicatory proceedings before the Board involving common
subject matter, regardless of whether these proceedings arise from the same
patent. In addition, Rule 41.8 imposes an obligation on the parties to notify
the Board within 20 days of any change during the proceeding, each judicial
or administrative proceeding that could affect, or be affected by, the Board
proceeding. Thus, notice of any new related proceeding or any change in
status of the related proceeding must be provided to the Board within 20
days in the affected proceeding.
Moreover, by setting forth that the briefs “shall contain. . . . [a]
statement identifying . . . all other prior and pending appeals, interferences
or judicial proceedings” (emphasis added), Rules 41.67 and 41.68 make it
unambiguously clear that the parties’ disclosure duty is mandatory—not
merely recommended. These rules make this disclosure duty mandatory
because the parties’ compliance is critical to helping the Board fulfill its
mission of timely reviewing adverse decisions. Listing the related appeals
within the appeal briefs and respondent briefs ensures that the Board is
aware of all information necessary to timely determine the most appropriate
manner in which to handle the appeal.
Due to the number of trials and appeals adjudicated by the Board, as
well as the number of Administrative Patent Judges who are charged with
adjudicating these proceedings, parties filing briefs before the Board are in a
better position to be aware of the existence of any related proceedings. As
such, economic efficiency requires that the burden of disclosure rest
primarily on parties filing briefs.
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Patent Owner is correct that Rule 41.69 does place a parallel
mandatory duty on the Examiner. Rule 41.69 states that an Examiner
“may. . . furnish a written answer to the owner’s and/or requester’s appellant
brief or respondent brief.” 37 C.F.R. § 41.69(a). The use of the permissive
word “may” indicates that an Examiner is not required to issue an
Examiner’s Answer in an inter partes reexamination appeal. Rule 41.69
additionally sets forth a separate requirement, though, that is mandatory—
not permissive: “If the primary examiner determines that the appeal does not
comply with the provisions of §§41.61, 41.66, 41.67 and 41.68 or does not
relate to an appealable action, the primary examiner shall make such
determination of record.” Id. (emphasis added).
To be sure, the three Examiners did not set forth a non-compliance
determination in the present Examiner’s Answer. But this omission does not
necessarily imply that the Examiners agree with Patent Owner’s
interpretation of “related.” Regardless of what any examiner’s reason may
be for omitting a non-compliance determination, parties filing briefs have a
separate disclosure duty that is independent of, and not contingent upon, the
examiners’ duty to make a compliance determination. As noted above, the
parties filing briefs are in a better position than the Examiner to be aware of
the existence of any related proceedings.
Although Patent Owner’s mistaken interpretation of “related” was
unreasonable, that is not the end of the inquiry. As Patent Owner further
noted, Rule 41.67(d) requires that “an appellant will be notified of the
reasons for non-compliance and given a non-extendable time period within
which to file an amended brief.” But this does not relieve a party of its
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obligation to disclose related proceedings in the first instance. In the present
case, both Patent Owner and Requester failed to identify related proceedings
as required in Rule 41.67(c)(1)(ii) and Rule 41.68(b)(1), as well as to update
the related proceedings as required by Rule 41.8(a)(2). Patent Owner,
however, timely responded to the Order To Show Cause by filing the
Corrected Patent Owner’s Appeal Brief. Accordingly, the totality of the
circumstances indicate that the original Appeal Brief’s omission of a listing
of related appeals does not warrant dismissing Patent Owner’s appeal.
We specifically note, though, that our holding in no way limits the
Board’s authority, in any given future appeal, to hold a party’s brief non-
compliant for failing to disclose related appeals or to dismiss an appeal
based upon a party’s failure to identify related proceedings or to timely
update the related proceedings as required by the rules, and explained above.

STATEMENT OF THE CASE
We now turn to the merits of the appeal. This proceeding arose from
a September 14, 2012 Request for Reexamination by Basic Science, Inc.
(“Requester”) for an inter partes reexamination of claims of U.S. Patent
6,605,038 B1, titled “SYSTEM FOR MONITORING HEALTH,
WELLNESS AND FITNESS” and issued to Eric Teller, et al., on August
12, 2003 (“the ’038 patent”).
The ’038 patent describes
[a] system for detecting, monitoring and reporting
physiological information [that] includes a sensor device adapted
to be worn on the upper arm that includes at least one of an
accelerometer, a GSR sensor, and a heat flux sensor, and [that]
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generates data indicative of at least one of activity, galvanic skin
response and heat flow.
Abstract.
Claim 1 read as follows (formatting and emphasis added):
1. A system for detecting, monitoring and reporting
human physiological information, comprising:
a sensor device adapted to be placed in contact with an
individual’s upper arm, said sensor device including at least two
of an accelerometer, a GSR sensor and a heat flux sensor, said
sensor device being adapted to generate:
(i) data indicative of at least two of motion, the
resistance of said individual's skin to electric current, and
heat flow of said individual and
(ii) derived data from at least a portion of said data
indicative of at least two of motion, resistance of said
individual’s skin to electric current and heat flow,
said derived data comprising a physiological parameter of said
individual that cannot be wholly measured directly by any one of
said accelerometer, said GSR sensor and said heat flux sensor;
a central monitoring unit remote from said sensor device
adapted for the generation of analytical status data from at least
a portion of at least one of:
(i) said data indicative of at least two of motion,
resistance of said in individual’s skin to electric current
and heat flow,
(ii) said derived data and
(iii) said analytical status data,
said central monitoring unit including a data storage
device for retrievably storing at least one of:
(i) said data indicative of at least two of motion,
resistance of said individual’s skin to electric current and
heat flow
(ii) said derived data and
(iii) said analytical status data;
data transfer means for establishing at least temporary
electronic communication between said sensor device and said
central monitoring unit; and
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means for transmitting at least one of:
(i) said data indicative of at least two of motion,
resistance of said individual’s skin to electric current and
heat flow,
(ii) said derived data and
(iii) said analytical status data to a recipient.

The cited references are as follows:

Myllymäki et al. US 5,670,944 Sept. 23, 1997
(“Myllymäki”)
Mault et al. US 6,478,736 B1 Nov. 12, 2002
(“Mault”)
Root et al. US 6,013,007 Jan. 11, 2000
(“Root”)
Pottgen et al. US 5,524,618 June 11, 1996
(“Pottgen”)
Rosenberg et al. US 5,142,485 Aug. 25, 1992
(“Rosenberg”)
Bridger et al. US 6,491,647 B1 Dec. 10, 2002
(“Bridger”)

The Examiner rejected the claims as follows (RAN 2–4):

1) Claims 1, 2, 14, 15, 19, 20, 21, 24–28, 33–35, 38–41, and
44–46 are rejected as obvious over Myllymäki and Root under
35 U.S.C. § 103(a);

2) Claims 30, 31, and 32 are rejected as obvious over
Myllymäki, Root, and Mault under 35 U.S.C. § 103(a);

3) Claims 22, 42, and 43 are rejected as obvious over
Myllymäki, Root, and Pottgen under 35 U.S.C. § 103(a);

4) Claims 39 and 40 are rejected as obvious over
Myllymäki, Root, and Rosenberg under 35 U.S.C. § 103(a);

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5) New claims 74–77 are rejected as obvious over
Myllymäki, Root, and Pottgen under 35 U.S.C. § 103(a);

6) New claims 78–83, 92–94, and 99 are rejected as obvious
over Myllymäki and Root under 35 U.S.C. § 103(a);

7) New claims 84–91 are rejected as obvious over
Myllymäki, Root, and Mault under 35 U.S.C. § 103(a);

8) New claims 95–98 are rejected as obvious over
Myllymäki, Root, and Bridger under 35 U.S.C. § 103(a); and

9) New claim 100 is rejected as obvious over Myllymäki in
view of Root under 35 U.S.C. § 103(a).

RELATED PROCEEDINGS
We are informed of the related appeals in the “Related Appeals”
section of Patent Owner’s Corrected Appeal Brief. Corrected PO App. Br.
1.

PRINCIPLES OF LAW
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co., 383 U.S. 1, 17–
18 (1966).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).

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CONTENTIONS AND ANALYSIS
The Obviousness Rejections over Myllymäki and Root (Rejections 1, 6, and
9)
Patent Owner initially argues claims 1, 83, 99, and 100 collectively
(Corrected PO App. Br. 8–18), then presents additional arguments regarding
claims 83 and 99 (id. at 18–21). Patent Owner’s collective arguments center
around the following limitations of claim 1:2
a sensor device adapted to be placed in contact with an
individual’s upper arm, said sensor device including at least two
of an accelerometer, a GSR sensor and a heat flux sensor, said
sensor device being adapted to generate:
(i) data indicative of at least two of motion, the
resistance of said individual’s skin to electric current, and
heat flow of said individual [(hereinafter “indicative
data”)] and
(ii) derived data from at least a portion of said data
indicative of at least two of motion, resistance of said
individual’s skin to electric current and heat flow, said
derived data comprising a physiological parameter of said
individual that cannot be wholly measured directly by any
one of said accelerometer, said GSR sensor and said heat
flux sensor [(hereinafter “derived data”)].
Claim 1 (formatting added). Claims 83, 99, and 100 include similar
recitations.
Patent Owner argues that the Examiner erred in rejecting claim 1
because the combination of Myllymäki and Root fails to teach or suggest at
least the claim 1 limitations quoted above. Corrected PO App. Br. 9–18.
See, e.g., Corrected PO App. Br. 18 (“the combination of Myllym[ä]ki and

2 See 37 C.F.R. § 41.37(c)(1)(iv)(2012) (authorizing the Board to designate a
single claim as representative of a group of claims not argued separately).
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Root does not disclose or suggest generating derived data that includes a
physiological parameter that cannot be wholly measured directly by any one
of an accelerometer, a GSR sensor, and a heat flux sensor and that is
generated by using data from at least two of these sensors.”).
Patent Owner first argues that the derived data must include a portion
of data from each of two different sources of the indicative data (i.e., “data
indicative of at least two of motion, the resistance of said individual’s skin to
electric current, and heat flow of said individual”). Id. at 8–11. Patent
Owner argues that the Examiner’s construction of the indicative data and
derived data “impermissibly failed to give all terms of claim 1 their
appropriate patentable weights” by “equat[ing] the phrase ‘at least a portion
of’ with ‘at least one of,’ and thereby render[ing] the phrases ‘at least two
of’ and ‘at least one of’ in claim 1 to be superfluous.” Id. at 9. Patent
Owner bolsters the argument—that one of ordinary skill in the art would
interpret the claim such that the derived data must be derived from a portion
of data from at least two of the indicative data’s constituent parts—by
arguing that “every party to the present action has previously taken . . . [this]
position (either explicitly or implicitly).” Id. at 10; see also id. at 10–11
(referring to “the Office” (the original Examiner of the ’038 patent and the
Examiner in this reexamination) and the Requester, as having construed the
claim to require that the derived data must be derived exclusively from a
portion of data from at least two of the indicative data’s constituent parts).
We disagree with Patent Owner’s assertion that the present
Examiner’s construction is flawed, and we decline to adopt the prior
interpretations in view of our reasoning below wherein we explain why the
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present Examiner’s interpretation is the more persuasive choice. But even if
we were to agree with Patent Owner’s claim construction arguments, we
would nevertheless affirm the Examiner’s obviousness rejections over
Myllymäki and Root (rejections 1, 6, and 9) for the reasons we discuss infra.
We first address Patent Owner’s arguments that the Examiner has
improperly equated “at least a portion of” to “at least one of.” See Corrected
PO App. Br. 9. As stated above, we do not agree.
The Examiner reasonably equated the derived data’s “said data
indicative of at least two of motion, resistance of said individual’s skin to
electric current and heat flow” to “data indicative of at least two of motion,
the resistance of said individual’s skin to electric current, and heat flow of
said individual.” RAN 8 (emphasis added). In other words, the Examiner
reasonably interpreted the derived data’s “at least a portion of” as modifying
a restatement of the indicative data (the immediately preceding limitation),
which restatement is signaled by the word “said.” As such, the derived data
need be derived from only a portion of the indicative data as a whole, and
not from a portion of at least two of the indicative data’s constituent parts.
Hence, “at least a portion of,” within the restatement of the indicative
data, is no more superfluous than the restatement generally. In other words,
while the entire restatement could be replaced with something shorter, “at
least a portion of” is afforded appropriate patentable weight and is thus
consistent with the Federal Circuit cases Owner cites in support of the
proposition that claim constructions that render claim terms superfluous
should be rejected. Corrected PO App. Br. 9 (citing Cat Tech LLC v.
TubeMaster, Inc., 528 F.3d 871, 885 (Fed. Cir. 2008); Bicon, Inc. v.
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Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006); and Elekta Instrument
S.A. v. O.U.R. Scientific Int’l, Inc., 214 F.3d 1302, 1305, 1307 (Fed. Cir.
2000)).
We further note that Patent Owner’s preferred construction—that
derived data must be derived “from at least a portion of [] at least two of”
the indicative data’s constituent parts—also would require reading words out
of the claim. In this case, “said data indicative of” (i.e., the portion of the
claim replaced by the brackets here) would be rendered superfluous. Hence,
because the Examiner’s construction gives weight to the derived data’s “at
least a portion of” as modifying a restatement of the indicative data, we find
the Examiner’s construction to be more in line with the case law cited by
Patent Owner. Id.
In coming to our decision, we have considered Patent Owner’s further
“evidence” in support of the narrower construction, namely that one skilled
in the art would adopt the narrower construction because the Office and the
Requester are said to have done so during initial prosecution and earlier in
this reexamination. See Corrected PO App. Br. 10–11. But while we
considered this evidence, we ultimately found it unpersuasive of error in the
Examiner’s present interpretation in this reexamination for the reasons stated
above.
Patent Owner also argues that the ensuing limitation—“said derived
data comprising a physiological parameter of said individual that cannot be
wholly measured directly by any one of said accelerometer, said GSR sensor
and said heat flux sensor”—supports the position that the derived data must
be derived from data from each of at least two of the indicative data’s
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constituent parts. See Corrected PO App. Br. 11–18. Specifically, Patent
Owner argues that their interpretation is required by the constraints that
1) the “physiological parameter” is comprised of the “derived data,” and
2) the “physiological parameter” “cannot be wholly measured directly by
any one of said accelerometer, said GSR sensor and said heat flux sensor.”
Id. at 14–18. We disagree.
First, the claim does not require the derived data to be derived
exclusively from the indicative data. Had Patent Owner intended the claim
to require such a construction, the claim could have recited “derived data
only from at least a portion of said data indicative of at least two of . . . ,” or
something similar. But the claim language does not impose such a limitation
on the source of the derived data.
Furthermore, because the derived data need not be derived exclusively
from the indicative data, the claim does not preclude the “psychological
parameter,” which “cannot be wholly measured directly by any one of said
accelerometer, said GSR sensor and said heat flux sensor,” from being
derived from other factors. In other words, not being “wholly measured” by
any one named sensor, in and of itself, does not require the use of two or
more of the named sensors. In fact, the claim even would be satisfied if the
physiological parameter is “wholly measured” by only one of the named
sensors as long as the measurement is not a direct measurement, as the claim
requires.
Hence, Patent Owner’s argument that the physiological parameter,
which “cannot be wholly measured directly by any one of said
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accelerometer, said GSR sensor and said heat flux sensor,” requires the use
of data from two different sources of the indicative data is unpersuasive.
Because Patent Owner’s arguments that the Examiner erred are
premised on Patent Owner’s flawed construction, we are unpersuaded of
error. But even if we were to adopt Patent Owner’s unnecessarily narrower
proposed construction that the “derived data [is derived] . . . from at least a
portion of . . . at least two of” the indicative data’s constituent parts, the
Examiner’s mapping of the claims to specific parts of Myllymäki,
nevertheless, renders the claim obvious.
The Examiner cited Myllymäki for a wearable sensor device that
collects at least motion data from a motion sensor and skin conductivity data
from a conductivity sensor. RAN 7–9 (citing Myllymäki 1:5–9, 2:23–25,
2:47–52, and 2:58–67). In particular, the Examiner noted Myllymäki’s
disclosure,
A device of the invention only includes a detector and
transducer unit 1 fastenable to some part of the body and/or a
wrist- held display and detector unit 2. The body-held detector
and transducer unit 1 may include a heart rate detector 3 and/or
a movement transducer 4 such as an acceleration transducer,
temperature transducer 5 and a conductivity transducer 6, which
are in contact with the skin of a user. The transducer unit 1 may
include a belt 8 to be worn around the chest. The wrist unit 2
may include just a display and sound signal device as well as a
communication unit for a wireless communication with the
transducer unit 1. The wrist unit 2 can also be provided with
some of the transducers 3-6 in view of performing some of the
necessary analysis. The wrist unit 1 may include e.g. all
transducers required for the surveillance of performance
condition and, thus, its operation can be concentrated on a user.
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RAN 8–9 (citing Myllymäki 2:45–60) (some emphasis added, some
emphasis omitted).
The Examiner cited Myllymäki for the claimed derived data,
including a physiological parameter of said individual that cannot be wholly
measured directly by any one of said accelerometer, said GSR sensor, and
said heat flux sensor. Id. at 9. Specifically the Examiner cited the passage,
The transducers 3-6 are monitored by means of a
microprocessor 9, which uses its algorithm to provide a
description of the health or physical condition and/or
performance condition of a user by using a plurality of different
transducer signals to compensate for false data caused by an
individual transducer. A characterizing feature in the signal
processing is that it takes into consideration a combined effect of
the motoric activity and biophysical indicators as well as the
heart rate of a user when producing a description of the physical
condition of the user. That is, by monitoring the interrelations
between various indicators and by compensating the anomalies
caused by various performance conditions of a body in the
analyzing process, it is possible to provide a substantially more
reliable description than that obtained by traditional methods.
Id. (citing Myllymäki: 3:3–17) (some emphasis added, some emphasis
omitted).
Patent Owner argues that the Examiner’s mapping is erroneous
because “Myllymäki fails to explicitly disclose generating any derived data
from data generated by at least two of the specific sensors recited in claims
1, 83, 99, and 100” and also argues that Root does not cure this deficiency.
Corrected PO App. Br. 11; see also id. at 11–14. We are unpersuaded.
In arguing that Myllymäki does not teach or suggest the claim
limitation because Myllymäki does not disclose specific derived data from
the specifically-identified sensors (id. at 11–14), Patent Owner fails to
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consider what the reference as a whole would have taught or suggested to
one skilled in the art. “A reference may be relied upon for all that it would
have reasonably suggested to one having ordinary skill the art, including
nonpreferred embodiments.” Merck & Co. v. Biocraft Labs., 874 F.2d 804
(Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989).
Myllymäki discloses a sensing unit stated to have two of the three
claimed sensors. Myllymäki generally. Myllymäki also expressly discloses
that a feature of its signal processing is that it takes into consideration the
“combined effect of the motoric activity and biophysical indicators as well
as the heart rate of a user when producing a description of the physical
condition of a user.” Id. at 3:9–12. Myllymäki also discloses monitoring a
“performance condition,” which “relates to a condition resulting from
physical and mental stress[, and] which is measurable as chemical and
physical changes caused by the sympathetic nervous system (e.g. a stress
condition).” Id. at 1:15–20.
In view of these teachings, we are unpersuaded that one skilled in the
art would not have found obvious claim 1’s limitations:
a sensor device adapted to be placed in contact with an
individual’s upper arm, said sensor device including at least two
of an accelerometer, a GSR sensor and a heat flux sensor, said
sensor device being adapted to generate:
(i) data indicative of at least two of motion, the
resistance of said individual’s skin to electric current, and
heat flow of said individual and
(ii) derived data from at least a portion of said data
indicative of at least two of motion, resistance of said
individual’s skin to electric current and heat flow, said
derived data comprising a physiological parameter of said
individual that cannot be wholly measured directly by any
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one of said accelerometer, said GSR sensor and said heat
flux sensor.

We find that it would not have been beyond the skill of the ordinarily
skilled artisan in view of Myllymäki’s teachings to combine data from a
plurality of sensors to derive a parameter that cannot be directly measured
by any one of them. Patent Owner’s arguments that Myllymäki fails to
teach the claimed “parameter” (Corrected PO App. Br. 14–18) are
unavailing for the additional reasons articulated by Requester. See
Respondent Brief By Third-Party Requester (filed June 19, 2014) (herein
“3PR Resp. Br.”) 8–12.
Patent Owner further argues that the Examiner erred in rejecting
claims 83 and 99 over Myllymäki and Root because the combination of
Myllymäki and Root does not teach or suggest generating information
identifying “calories burned” from “data indicative of at least two of motion,
skin resistance to electric current, and heat flow.” Corrected PO App. Br.
18–21. We are unpersuaded, though, that the claims require generating
calories burned from “data indicative of at least two of motion, skin
resistance to electric current, and heat flow.”
Claims 83 and 99 both recite, in relevant part (formatting and
emphasis added),
a central monitoring unit remote from said sensor device
adapted for the generation of analytical status data from at least
a portion of at least two of:
(i) said data indicative of at least two of motion,
resistance of said in individual’s skin to electric current
and heat flow,
(ii) said derived data and
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(iii) said analytical status data,
wherein said analytical status data is comprised of
information identifying calories burned by the individual over at
least one period of time, and wherein the central monitoring unit
generates the analytical status data.
Contrary to Patent Owner’s assertions, the plain language of the
claims requires only that the analytical status data is derived from at
least a portion of two of the three recited possibilities. Patent Owner
does not argue persuasively that calories burned must be generated
specifically from “data indicative of at least two of motion, skin
resistance to electric current, and heat flow.”
Patent Owner argues error in the Examiner’s rejection of claims 93
and 94 over Myllymäki and Root because “[a] proper construction of
‘updat[ing] firmware of the sensor device’ includes reprogramming the
sensor device by installing new firmware on the device.” Corrected PO
App. Br. 27. Both of claims 93 and 94 recite “wherein the central
monitoring unit communicates data to the sensor device to update firmware
of the sensor device.” For at least the reasons stated by Requester (3PR
Resp. Br. 19), we are unpersuaded that Patent Owner’s Specification
requires such a narrow construction. Specifically, we agree with Requester
that “claims 93 and 94 do not recite reprogramming the sensor device” (id.),
and we are unpersuaded by Patent Owner that limitations from Patent
Owner’s Specification should be read into the claims.
Patent Owner does not further argue the rejections over Myllymäki
and Root. Accordingly, in view of the foregoing, we are unpersuaded of
error in the Examiner’s rejections of claims 1, 2, 14, 15, 19, 20, 21, 24–28,
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33–35, 38–41, 44–46, 78–83, 92–94, 99, and 100 over Myllymäki and Root
(rejections 1, 6, and 9).

The Obviousness Rejections over Myllymäki, Root, and Pottgen (Rejections
3 and 5)
Patent Owner argues the Examiner erred in rejecting claim 43 because
“none of the references of record disclose the use of data indicative of the
resistance of an individual's skin to electric current to generate . . . derived
data about calories burned,” and because the combination of Myllymäki,
Root, and Pottgen is improper. Corrected PO App. Br. 21–24. We are
unpersuaded of error.
Claim 42 depends from claim 1 and recites that “said derived data
comprises calories burned and is based on said data indicative of motion and
said data indicative of heat flow.” Claim 43 depends from claim 42 and
recites “wherein said derived data is also based on said data indicative of
resistance of said individual’s skin to electric current.”
We note that claim 42 adds “calories burned” to the set of “derived
data,” and that claims 42 and 43 together require that the derived data is
“based on said data indicative of motion and said data indicative of heat
flow” and “is also based on said data indicative of resistance of said
individual’s skin to electric current.” But for reasons similar to those
articulated previously, we find insufficient persuasive argument or evidence
that calories burned must be based on “data indicative of motion,” “data
indicative of heat flow,” and “data indicative of resistance of said
individual’s skin to electric current,” or that “calories burned” must be based
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specifically on “data indicative of resistance of said individual’s skin to
electric current.” In short, Patent Owner’s arguments are not commensurate
with the scope of the claims.
We also do not find the combination of Myllymäki, Root, and Pottgen
to be improper because, as Requester states, “the disclosure of Pottgen . . . ,
clearly discusses the challenges in accurately measuring caloric expenditure
with wearable devices” and “[t]he disclosure of Myllymäki teaches using
multiple sensors to correct for false data.” 3PR Resp. Br. 16–17.
Accordingly, we are unpersuaded of error in the Examiner’s rejection of
claims 22, 42, and 43 as obvious over Myllymäki, Root, and Pottgen
(rejection 3).
Regarding claim 77, Patent Owner argues error because “[a] device
that includes different sensors used for different purposes is not the same as
or suggestive of . . . generating derived data from motion data, heart rate
data, skin resistance data, and heat flow data, as recited in claim 77.”
Corrected PO App. Br. 25–26 (emphasis omitted). We are unpersuaded of
error because, as Requester points out (3PR Resp. Br. 18), Patent Owner
fails to appreciate what the combined teachings of the references would have
taught or suggested to one skilled in the art.
Patent Owner does not further argue the rejections over Myllymäki,
Root, and Pottgen. Id. Accordingly, in view of the foregoing, we are
unpersuaded of error in the Examiner’s rejections of claims 22, 42, 43, and
74–77.

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The Obviousness Rejections over Myllymäki, Root, and Rosenberg
(Rejection 4)
Patent Owner argues error in the Examiner’s rejection of claim 40
because the prior art does not disclose that the accelerometer is mounted so
as to form specifically an angle of substantially 45 degrees with a
longitudinal axis of a user’s arm. Corrected PO App. Br. 24–25. We are
unpersuaded of error because, as Requester points out (3PR Resp. Br. 17),
the claimed angle of 45 degrees amounts to an obvious optimization within
the range of 0–180 degrees disclosed by the prior art. See Rosenberg 2:51–
52.

The Obviousness Rejections over Myllymäki, Root, and Bridger (Rejection
8)
Patent Owner argues error in the Examiner’s rejection of claim 95
because “Bridger fails to disclose or suggest generating analytical status data
relating to the sleep of an individual from at least two of skin resistance
data, heat flow data, and motion data, as required by claim 95.” Corrected
PO App. Br. 29. We are unpersuaded of error and agree with Requester that
“while Bridger uses movement and pulse to assess sleep, the skin
conductance sensor of Myllymäki could provide additional useful
information in such assessment because it could identify sweating[,] which
would be indicative of a sleep interruption similar to restlessness or
agitation.” 3PR Resp. Br. 19–20. Patent Owner again fails to appreciate
what the combined teachings of the references would have taught or
suggested to one skilled in the art.
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Patent Owner does not otherwise argue the rejections over Myllymäki,
Root, and Bridger. Accordingly, we see no error in the Examiner’s rejection
of claims 95–98.
Patent Owner relies on arguments presented with respect to other
rejections for the rejections of claims 30–32 and 84–91. See Corrected PO
App. Br. 29–30. Accordingly, we see no error in the Examiner’s rejections
of these claims.

CONCLUSION
The Examiner did not err in rejecting claims 1, 2, 14, 15, 19, 20, 21,
24–28, 33–35, 38–41, 44–46, 78–83, 92–94, 99, and 100 as obvious over
Myllymäki and Root; claims 30, 31, 32, and 84–91 as obvious over
Myllymäki, Root, and Mault; claims 22, 42, 43, and 74–77 as obvious over
Myllymäki, Root, and Pottgen; claims 39 and 40 as obvious over
Myllymäki, Root, and Rosenberg; and claims 95–98 as obvious over
Myllymäki, Root, and Bridger.

DECISION
We affirm the Examiner’s decision to reject claims 1, 2, 14, 15, 19–
22, 24–28, 30–35, 38–46, and 74–100.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.
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In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

AFFIRMED

bar

PATENT OWNER:

KILPATRICK TOWNSEND & STOCKTON LLP
Mailstop: IP Docketing – 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309

THIRD PARTY REQUESTER:

FENWICK & WEST LLP
Silicon Valley Center
801 California Street
Mountain View, CA 94041