Ex Parte 7261690 et alDownload PDFPatent Trial and Appeal BoardDec 29, 201695002366 (P.T.A.B. Dec. 29, 2016) Copy Citation 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. 95/002,366 09/14/2012 7261690 92092-891706 2056 23370 7590 12/30/2016 KILPATRICK TOWNSEND & STOCKTON LLP Mailstop: IP Docketing - 22 1100 PEACHTREE STREET SUITE 2800 ATLANTA, GA 30309 EXAMINER RALIS, STEPHEN J ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 12/30/2016 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 2016-002967 Reexamination Control 95/002,366 Patent 7,261,690 B2 Technology Center 3900 ____________ Before BRADLEY W. BAUMEISTER, JENNIFER L. McKEOWN, and IRVIN E. BRANCH, Administrative Patent Judges. BRANCH, Administrative Patent Judge DECISION ON APPEAL Appeal 2016-002967 Reexamination Control 95/002,366 Patent 7,261,690 B2 2 Body Media, Inc. (“Patent Owner”) appeals under 35 U.S.C. §§ 134 and 315 the Examiner’s rejection of claims 1–16, 18–39, 41–70, 72–101, 103–144, and 146–162.1 Claims 1–16, 18–39, 41–70, 72–101, 103–144, and 146 are original. Claims 147–165 were added during the reexamination proceedings. Original claims 17, 40, 71, 102, and 145 are not subject to reexamination. The rejections of claims 163–165 have been withdrawn from the appeal. PO App. Br. 1. We have jurisdiction under 35 U.S.C. §§ 134 and 315. An oral hearing was held on May 11, 2016, and a transcript was made of record June 6, 2016. STATEMENT OF THE CASE This proceeding arose from a September 14, 2012 Request2 by Basis Science, Inc. (“Requester”) for an inter partes reexamination of claims of U.S. Patent 7,261,690 B2, titled “Apparatus for Monitoring Health, Wellness, and Fitness” and issued to Eric Teller, et. al., on August 28, 2007 (“the ’690 patent”). The ’690 patent describes a system for monitoring health, wellness and fitness, and in particular, to a system for collecting, using a sensor device, and storing at a remote site data relating to an individual’s physiological state, lifestyle, and various contextual parameters, and making such data and analytical information based on such 1 Patent Owner Appeal Brief, Inter Partes Reexamination, filed September 14, 2015 (“PO App. Br.”). 2 Request for Reexamination of U.S. Patent No. 7,261,690 B2, filed September 14, 2012 (“Request”). Appeal 2016-002967 Reexamination Control 95/002,366 Patent 7,261,690 B2 3 data available to the individual, preferably over an electronic network. Spec. 1:14–20. Claim 1 reads as follows: 1. An apparatus for detecting, monitoring and reporting human status information, comprising: at least two sensors selected from the group consisting of physiological sensors and contextual sensors, said sensors generating data of a first parameter and a second parameter of an individual and said sensors generating data during non-sedentary activities; a processor in electronic communication with said at least two sensors, said processor generating (a) derived data based on said data of a first parameter and a second parameter, said derived data comprising a third parameter of said individual, and (b) analytical status data from at least a portion of at least one of (i) said data of a first parameter, (ii) said data of a second parameter, and (iii) said derived data; and means for transmitting to said individual at least one of said data of a first parameter and a second parameter said derived data and said analytical status data, wherein said third parameter comprises caloric expenditure data; and wherein said first and second parameters are produced by at least one of said individual’s body and the environment adjacent to said individual’s body. Patent Owner appeals the following rejections (PO App. Br. 4– 5. See, generally, RAN3): Claims 1, 6, 7, 9–16, 18, 19, 32, 37–39, 41, 42, 44–49, 63, 68–70, 72, 73, 75–80, and 137 under 35 U.S.C. § 102(b)4 as anticipated by Barney.5 3 Right of Appeal Notice, mailed May 12, 2015 (“RAN”). 4 All reference to “35 U.S.C.” in this section are to pre–AIA 35 U.S.C. 5 U.S. 4,312,358, issued January 26, 1982 (“Barney”). Appeal 2016-002967 Reexamination Control 95/002,366 Patent 7,261,690 B2 4 Claims 26, 27, 57, 58, 88, 89, 94–101, 103–112, 117–124, 136, 140 and 146 under 35 U.S.C. § 103(a) as obvious over Barney and Amano.6 Claim 162 under 25 U.S.C. § 102(e) as anticipated by Amano. Claims 147–149 and 152–156 under 35 U.S.C. § 103(a) as unpatentable over Amano and Mault.7 Claims 159–161 under 35 U.S.C. § 103(a) as unpatentable over Amano, Mault, Myllymäki,8 Groff,9 and Bridger.10 Claim 162 under 35 U.S.C. § 112, second paragraph, as indefinite. ANALYSIS The Anticipation Rejection of Claims 1, 6, 7, 9–16, 18, 19, 32, 37–39, 41, 42, 44–49, 63, 68–70, 72, 73, 75–80, and 137 over Barney Patent Owner argues collectively the rejection of all claims rejected as anticipated by Barney. PO App. Br. 7–14. Patent Owner’s arguments as to claim 1 are illustrative of the question before us: whether Barney describes generating “caloric expenditure data” “based on” data generated from two sensors during “non-sedentary activities.” Patent Owner first argues error because the Examiner’s construction of the argued limitation is unreasonably broad. PO App. Br. 9–11. According to Patent Owner, the Examiner did not consider sufficiently 6 U.S. 6,030,342, issued February 29, 2000 (“Amano”). 7 U.S. 6,478,736 B1, issued November 12, 2002 (“Mault”). 8 U.S. 5,670,944, issued September 23, 1997 (“Myllymäki”). 9 U.S. 6,102,856, issued August 15, 2000 (“Groff”). 10 U.S. 6,491,647 B1, issued December 10, 2002 (“Bridger”). Appeal 2016-002967 Reexamination Control 95/002,366 Patent 7,261,690 B2 5 Patent Owner’s evidence that the claims “clearly require calculating calorie expenditure from an equation that takes non-sedentary data of at least two physiological or environmental parameters as independent variables and outputs the derived data as a dependent variable.” Id. at 10 (citing the declaration of Dr. David Andre, signed March 6, 2013). The Examiner found that Dr. Andre’s declaration “lacks persuasive factual support because [Dr.] Andre does not cite to any corroborating evidence.” RAN 156. We are not persuaded of error. In reexamination proceedings, the Board is to give claims their broadest reasonable interpretation, consistent with the specification. In re Yamamoto, 740 F.2d 1569, 1571 (Fed Cir. 1984). Here, the question is whether generating caloric expenditure data “based on” data generated from two sensors must be limited to solving an equation using the data from the sensors as independent variables to output caloric expenditure as a dependent variable. We are not persuaded that it must be so limited. Patent Owner does not provide a definition of “based on” that requires such a narrow interpretation of the term. See, generally, PO App. Br. 9–11. Further, Patent Owner does not direct us to a special definition in the Specification that defines the term as narrowly as Patent Owner argues. Id. We also note that Dr. Andre does not overtly construe the limitation in asserting that “[e]ven if one assumes, arguendo, that velocity is based on pulse rate, it in no way follows that caloric expenditure, as disclosed by Barney, is based on pulse rate and body temperature.” Andre Declaration ¶ 13. Appeal 2016-002967 Reexamination Control 95/002,366 Patent 7,261,690 B2 6 Instead, Patent Owner’s Specification states the following: Calories burned maybe [sic] calculated in a variety of manners, including: the multiplication of the type of exercise input by the user by the duration of exercise input by the user; sensed motion multiplied by time of motion multiplied by a filter constant; or sensed heat flux multiplied by time multiplied by a filter constant. Spec. 18:50–56. Patent Owner does not direct us to other evidence in the Specification that requires the interpretation for which Patent Owner argues. Accordingly, we are not persuaded that the Examiner erred by failing to sufficiently consider Dr. Andre’s declaration. The Examiner considered it and found that it lacked “corroborating evidence.” RAN 156. We agree, and find Patent Owner’s arguments unpersuasive. We also are not persuaded that the evidence of record, particularly Patent Owner’s Specification, requires the narrow construction Dr. Andre presumably applied to come to the conclusion that Barney does not describe generating “caloric expenditure data” “based on” data generated from two sensors during “non-sedentary activities.” Because Patent Owner does not provide a limiting definition and because the Specification says nothing that expressly limits calculating caloric expenditure as a dependent variable of an equation using two independent variables, we are not persuaded that the narrow interpretation argued by Patent Owner is the broadest reasonable construction. Patent Owner also argues error because “Barney discloses generating caloric expenditure data using (as independent variables used to estimate velocity) data of only one parameter generated during non-sedentary Appeal 2016-002967 Reexamination Control 95/002,366 Patent 7,261,690 B2 7 activities (i.e., pulse) and using a singular datum of another parameter (i.e. temperature) generated during non-sedentary activities.” PO App. Br. 12. In view of this statement, which amounts to a concession that Barney describes using information from two sensors to generate caloric expenditure, we are faced with the following issue: whether the “processor generating [] derived data based on said data of a first parameter and a second parameter” means that the processor must use multiple data samples of each parameter to calculate caloric expenditure. We do not find such a construction to be the broadest reasonable construction. Requester points out that Patent Owner’s Specification states that “the data indicative of the various physiological parameters is the signal or signals themselves generated by the one or more sensors.” TPR Resp. Br. 8 (quoting Spec. 7:43–48). Hence, according to the Specification, the “processor generating [] derived data based on said data of a first parameter and a second parameter” must include an interpretation wherein “data” means “the data signal.” So a construction that requires “data” to mean multiple samples of the data signal, as Patent Owner argues, would not afford the claim its broadest reasonable construction consistent with the Specification. Nevertheless, Barney describes using multiple samples of temperature data to generate caloric expenditure data. Barney discloses that a sensor monitors core temperature. Barney 10:3–6 (“At the start of the exercise period, start/stop switch 19 is pressed; thereby activating digital processor 27 to begin counting pulses and monitoring core temperature.”) Barney also discloses that “alternating at one second intervals with the total number of Appeal 2016-002967 Reexamination Control 95/002,366 Patent 7,261,690 B2 8 pulses on lower display 15b in mode 3 are indications of the number of calories expended and aerobics points earned.” Barney 10:24–28. Barney also discloses that “[d]istance travelled, velocity, minutes per mile, aerobics points earned and calories expended are calculated based on temperature and pulse data, displayed on a real-time basis during an exercise period and stored for display after the exercise has been completed.” Barney 12:57–60 (emphasis added). In other words, because Barney discloses calculating calories expended on a real time basis based on temperature and pulse data, Barney describes generating “caloric expenditure data” “based on” data generated from two sensors during “non-sedentary activities.” In view of the foregoing, we are unpersuaded of error in the Examiner’s rejection of claim 1 as anticipated by Barney and of the rejection of claims 6, 7, 9–16, 18, 19, 32, 37–39, 41, 42, 44–49, 63, 68–70, 72, 73, 75–80, and 137, argued by Patent Owner on the same basis. PO App. Br. 7– 14; PO Reb. Br. 6–10. The Obviousness Rejection of Claims 26, 27, 57, 58, 88, 89, 94–101, 103–112, 117–124, 136, 140 and 146 over Barney and Amano Patent Owner argues the Examiner erred in rejecting claim 26 because Amano does not disclose a processor providing feedback, in a plurality of categories, with respect to the degree to which a predetermined routine has been followed. PO App. Br. 14–18. Patent Owner argues claims 27, 57, 58, 88, 89, 119, and 120 on the same basis. Id. Patent Owner acknowledges that Amano discloses an “achievement rate” with respect a target rate for calorie expenditure. Id. at 16 (referring to Appeal 2016-002967 Reexamination Control 95/002,366 Patent 7,261,690 B2 9 Amano 19:34–46). Patent Owner also states that “Amano discloses a flashing display of maximum and minimum pulse rate, respiration rate, and body temperature values taken during a sedate period.” Id. (referring to Amano 26:57–27:2, 27:5–12). Patent Owner makes the following assertion with respect to this disclosure of Amano: Nothing in this disclosure teaches that Amano’s device includes a processor that (a) identifies a predetermined routine with respect to the user or (b) determines a degree to which that predetermined routine has been followed, as required by claim 26. Instead, a user, not a processing device, can determine from these flashing values whether “[a] physiological state while sedate is abnormal.” Unlike the claimed invention, Amano’s device only provides raw physiological data about a user during a sedate period and requires a user to decipher whether that raw physiological data indicates an abnormality. Id. We are unpersuaded of error at least because Patent Owner’s arguments are not commensurate with the scope of the claim. Claim 26 does not state that the processor “identifies a predetermined routine” or that the processor “determines a degree to which the predetermined routine has been followed.” Instead, claim 26—by virtue of its dependency from claims 25, 12, and 1—states that the processor “generat[es] … feedback to said individual relating to the degree to which said individual has followed said predetermined routine.” In our view, Amano’s disclosure of “a flashing display of maximum and minimum pulse rate, respiration rate, and body temperature values taken during a sedate period” (id. at 16) meets claim 26. We are, therefore unpersuaded of error in the Examiner’s rejections of claim 26 and of claims 27, 57, 58, 88, 89, 119, and 120, argued on the same basis. Appeal 2016-002967 Reexamination Control 95/002,366 Patent 7,261,690 B2 10 Patent Owner also argues error in the Examiner’s rejection of claim 94, rejected as obvious over Barney and Amano. Patent Owner argues claims 95–101, 103–112, 117–124, 136, 140 and 146 on the same basis. PO App. Br. 18–22. Claim 94 recites, in relevant part, a graphical utility “graphically displaying any of said derived data in relation to at least one of said [data] of a first parameter, said data of a second parameter, and any of said derived data.” Patent Owner acknowledges that Amano discloses displaying “calorie expenditure” (PO App. Br. 19–20 (citing Amano Figs. 17, 19, 20, and 21)) and body temperature (id. at 21 (citing Amano Fig. 37), both in relation to time. Patent Owner also acknowledges that Amano discloses presenting physiological parameters “in relation to” one another. Id. at 21– 22 (citing Amano Fig. 40). Patent Owner argues error, however, because “Amano’s disclosure of displaying calorie expenditure alone is not the same as or suggestive of graphically displaying calorie expenditure data in relation to one or more of a parameter used to generate the calorie expenditure data or other derived data, as recited in claim 94.” Id. at 19. Requester points out that another panel of this Board found that, because Amano discloses “both calorie expenditure and body temperature [] displayed with respect to time, calorie expenditure [derived data] is presented in relation to body temperature [physiological parameter].” TPR Reb. Br. 14 (citing Decision on Appeal, Reexam Control No. 95/002,376 (decided July 16, 2015) 5–6 (“the ’376 appeal”). We agree with this analysis. Appeal 2016-002967 Reexamination Control 95/002,366 Patent 7,261,690 B2 11 Patent Owner argues that “[t]o teach the feature of claim 94, Amano’s device must display both derived data (e.g., the caloric expenditure data cited by the Examiner) and the data of a parameter used to generate that caloric expenditure data (e.g., the body temperature data cited by the Examiner).” We disagree with this construction because it is not commensurate with the scope of the claim. Claim 94 does not require the simultaneous display of both derived data and the data used to generate it. Claim 94 recites displaying derived data “in relation to” another parameter but does not specify that the other parameter is displayed. Because Amano discloses displaying calorie expenditure, which is a derived parameter calculated based on temperature and pulse, calorie expenditure is displayed “in relation to” temperature and/or pulse. In other words, as temperature (or pulse) changes, the displayed calorie expenditure changes in relation to the change. This is the case whether the change in calorie expenditure happens in direct relationship to one parameter, or in relationship to multiple parameters (i.e., temperature and pulse) because the claim recites “in relation to at least one … parameter.” But as the Panel in the ’376 Appeal found, Amano also discloses displaying temperature. In view of the foregoing, we are unpersuaded of error in the Examiner’s rejection of claim 94 or in claims 95–101, 103–112, 117–124, 136, 140 and 146 argued on the same basis. Appeal 2016-002967 Reexamination Control 95/002,366 Patent 7,261,690 B2 12 The Alleged “New Ground” of rejection of Claims 113–116, 131, 132, and 144 Patent Owner argues that the Examiner improperly included a new ground of rejection against claims 113–116, 131, 132, and 144 in the RAN. PO App. Br. 23–24. This issue is not properly before us. Whether an action includes an improper new ground of rejection is a question to be decided by petition. See 37 CFR § 1.181. The Anticipation Rejection of Claim 162 over Amano Patent Owner argues the Examiner’s rejection of claim 162 on the same basis as claim 1, namely that the broadest reasonable construction of generating derived data “based on” two parameters requires generating the derived data (calorie expenditure) from an equation that takes the two parameters as independent variables and outputs the derived data as a dependent variable. PO App. Br. 24–26. We are unpersuaded of error for the reasons discussed previously. The Obviousness Rejection of Claims 147–149 and 152–156 over Amano and Mault Patent Owner argues the Examiner’s rejection of claims 147–149 and 152–156 on the same basis as claim 1, namely that the broadest reasonable construction of generating derived data “based on” two parameters requires generating the derived data (calorie expenditure) from an equation that takes the two parameters as independent variables and outputs the derived data as Appeal 2016-002967 Reexamination Control 95/002,366 Patent 7,261,690 B2 13 a dependent variable. PO App. Br. 26–28. We are unpersuaded of error for the reasons discussed previously. The Obviousness Rejection of Claims 159–161 over Amano, Mault, Myllymäki, Groff, and Bridger Claim 159 depends from claims 158, 157, and 147 and recites generating sleep data based on analyzing data from sensors, including a galvanic skin response sensor. Patent Owner acknowledges that Amano discloses generating sleep data from an accelerometer and a temperature sensor (PO App. Br. 28 (citing Amano 11:22–20)) and acknowledges that Myllymäki discloses the use of a skin conductivity sensor (id. (citing Myllymäki 1:5–9, 2:27–31, 2:48–67)). Patent Owner argues, however, that the combination of references does not cure the deficiencies of the references individually because Myllymäki’s disclosure of a skin conductivity sensor is “for a purpose unrelated to generating sleep data.” Id. at 29. Patent Owner argues the rejection of claims 158–161 on this same basis. Id. at 28–29. We are unpersuaded of error because Patent Owner’s argument fails to consider what the combined teachings of the references would have taught or suggested to a person of ordinary skill in the art. In re Keller, 642 F.2d 413, 425 (C.C.P.A. 1981). The Examiner’s determination of obviousness is not premised on Myllymäki’s skin conductivity sensor being used for sleep data. We agree with Requester that “the combined teachings [of the references] would have suggested that use of multiple sensors, including Appeal 2016-002967 Reexamination Control 95/002,366 Patent 7,261,690 B2 14 skin conductivity sensors, could be used to generate sleep data as was done with other sensors in Amano.” TPR Reb. Br. 18. Accordingly, we are unpersuaded of error in the rejection of claim 159 and claims 158–161, argued on the same basis. CONCLUSION The Examiner did not err in rejecting claims 1, 6, 7, 9–16, 18, 19, 32, 37–39, 41, 42, 44–49, 63, 68–70, 72, 73, 75–80, and 137 as anticipated by Barney; claims 26, 27, 57, 58, 88, 89, 94–101, 103–112, 117–124, 136, 140 and 146 as obvious over Barney and Amano; claim 162 as anticipated by Amano; claims 147–149 and 152–156 as obvious over Amano and Mault; and Claims 159–161 as obvious over Amano, Mault, Myllymäki, Groff, and Bridger. Patent Owner does not separately argue the rejections of claims 2–5, 8, 20–25, 28–31, 33–36, 43, 50–56, 59–62, 64–67, 74, 81–87, 90–93, 113– 116, 125–135, 138, 139, 141–144, 150, 151, 157, and 158 except by virtue of their dependency from argued claims. PO App. Br. 30. Accordingly, we sustain those rejections. See, generally, RAN. Because we agree with the Examiner’s anticipation rejection of claim 162, we need not reach the rejection of claim 162 on other grounds. DECISION We affirm the Examiner’s decision to reject claims 1–16, 18–39, 41– 70, 72–101, 103–144, and 146–162. Appeal 2016-002967 Reexamination Control 95/002,366 Patent 7,261,690 B2 15 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. 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 PATENT OWNER: KILPATRICK TOWNSEND & STOCKTON LLP 1100 Peachtree Street Suite 2800 Atlanta, GA 30309 THIRD PARTY REQUESTER: Rajiv P. Patel FENWICK & WEST LLP 801 California Street Silicon Valley Center Mountain View, CA 94041 Copy with citationCopy as parenthetical citation