Ex Parte 7285090 et al

Patent Trial and Appeal Board

Sep 16, 2016

95002360 (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.
95/002,360 09/14/2012 7285090 92092-891659 3267
23370 7590 09/19/2016
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
09/19/2016 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 2015-007930
Reexamination Control 95/002,360
Patent 7,285,090 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
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Body Media, Inc. (“Patent Owner” or “Owner”) appeals under
35 U.S.C. §§ 134 and 315 the Examiner’s rejection of claims 1–5, 11, 13,
15–22, 26–29, and 32–59.1 Claims 1–5, 11, 13, 15–22, 26–29, and 32–39
are original. Claims 40–59 were added during the reexamination
proceedings. Original claims 6–10, 12, 14, 23–25, 30, and 31 are not subject
to reexamination. PO App. Br. 1.
We have jurisdiction under 35 U.S.C. §§ 134 and 315. Oral hearing
was held on February 3, 2016, and a transcript has been made of record
March 4, 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 7,285,090 B2, titled “Apparatus for Detecting, Receiving,
Deriving and Displaying Human Physiological and Contextual Information”
and issued to John Stivoric, et. al., on October 23, 2007 (“the ’090 patent”).
The ’090 patent describes
an apparatus [that] includes one or more sensors for collecting
data relating to an individual’s physiological state and various
contextual parameters and a data input and output device for
enabling the individual to enter information and for displaying
information to the individual.

Spec. 1:20–25.

1 Patent Owner Appeal Brief, Inter Partes Reexamination, filed December 1,
2014 (“PO App. Br.”).
2 Request for Reexamination of U.S. Patent No. 7,285,090, filed September
14, 2012 (“Request”).
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Claim 1 reads as follows:3
1. An apparatus for monitoring human status parameters of
an individual, comprising:
a sensor device, said sensor device being in electronic
communication with at least two sensors continually generating
data of a first and second parameter of an individual during
non-sedentary activities, 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;
and
an I/O device in electronic communication with said
sensor device, said I/O device receiving data of said first
parameter and data of said second parameter from said sensor
device, at least one of said first parameter and said second
parameter being physiological, said I/O device in electronic
communication with a processor, said processor generating
derived data using said data of said first parameter and said data
of said second parameter, said derived data comprising a third
parameter of said individual, said third parameter comprising
caloric expenditure data and being an individual status
parameter that cannot be directly detected by any one of said at
least two sensors,
said I/O device comprising a displaying means displaying
information related to said third parameter.

3 We have disregarded a typographical error in claim 1 as it appears in
Owner’s Appeal Brief. PO App. Br. A-1. Specifically, the recitation of
claim 1 included markings from a prior amendment. See id. (“[[at least one
of ]]”); see also Amendment and Response filed February 27, 2013.
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Owner Appeals the following rejections (PO App. Br. 3. See
generally RAN4):
Claims 1–5, 11, 13, 15–19, 37–39, 40, 44, and 47 under 35 U.S.C.
§ 102(e)5 as anticipated by Amano.6 RAN 9 (incorporating: TPR Response7
3–7 and Exhibit A, pp. 1–6 (with respect to amended claim 1); Request 10–
11, 13–14 and Claim Chart in Exhibit A, pp. 23–28 (with respect to claims
2–5, 11–13, 15–19, and 37–39); and TPR Response 15–16 and Exhibit A,
pp. 6–12, 16–17, and 19–20 (with respect to claims 40, 44, and 47).
Claims 1–5, 13, 15, 17, and 37 under 35 U.S.C. § 102(b) as
anticipated by Barney.8 RAN 58 (incorporating Request 11–12, 14–15 and
Exhibit B, pp. 39–45).
Claims 20–22, 26–29, 32–36, 54, and 55 under 35 U.S.C. § 103 as
unpatentable over Amano and Mault.9 RAN 75 (incorporating Request 10–
11, 13, 16–17 and Exhibit E, pp. 49–60 (with respect to claims 20, 22, 26–
29, 32–36); and TPR Response 15–16 and Exhibit A, pp. 27–34 (with
respect to claims 21, 54, and 55)).
Claims 11, 16, 18, and 19 under 35 U.S.C. § 103 as unpatentable over
Barney and Amano. RAN 113 (incorporating Request 10–12, 17–18 and
Exhibit F, pp. 61–66).

4 Right of Appeal Notice, mailed August 7, 2014.
5 All reference to “35 U.S.C.” in this section are to pre–AIA 35 U.S.C.
6 U.S. 6,030,342, issued February 29, 2000 (“Amano”).
7 Comments by Third-Party-Requester filed March 29, 2013 (herein “TPR
Response).
8 U.S. 4,312,358, issued January 26, 1982 (“Barney”).
9 U.S. 6,478,736 B1, issued November 12, 2002 (“Mault”).
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Claims 20–22, 26–29, 32, 33, 36, 40, 54, and 55 under 35 U.S.C.
§ 103 as unpatentable over Barney and Mault. RAN 120 (incorporating
Request 16–17, 19–20, Exhibit E, p. 57, and Exhibit H, pp. 76–80 (with
respect to claims 20, 27, and 36); and Request 11–12, 18–19 and Exhibit G,
p. 67–75 (with respect to claims 21, 22, 26, 28, 29, 32, and 33)); RAN 149–
160 (with respect to claims 40, 54, and 55).
Claims 34, 35, and 47 under 35 U.S.C. § 103 as unpatentable over
Barney, Mault, and Amano. RAN 161 (incorporating Request 10–12, 19–20
and Exhibit H, pp. 78–79 (with respect to claims 34 and 35)); RAN 163–65
(with respect to claim 47).
Claims 41–43, 45, 46, and 48–53 under 35 U.S.C. § 103 as
unpatentable over Amano, Myllymäki,10 and Groff.11 RAN 169
(incorporating TPR Response 15–16 and Exhibit A, pp. 12–27).
Claims 56–59 under 35 U.S.C. § 103 as unpatentable over Amano,
Mault, Myllymäki, and Groff. RAN 192 (incorporating TPR Response 15–
16 and Exhibit A, pp. 35–39).
Claims 41– 46 and 56–58 under 35 U.S.C. § 103 as unpatentable over
Barney, Mault, Myllymäki, and Groff. RAN 210–36.
Claims 48–53 and 59 under 35 U.S.C. § 103 as unpatentable over
Barney, Mault, Myllymäki, Groff, and Amano. RAN 236–43.

10 U.S. 5,670,944, issued September 23, 1997 (“Myllymäki”).
11 U.S. 6,102,856, issued August 15, 2000 (“Groff”).
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ANALYSIS
The Anticipation Rejection of Claims 1–5, 11, 13, 15–19, 37–39, 40, 44,
and 47 over Amano
Claim 1 stands rejected as anticipated by Amano. RAN 9
(incorporating TPR Response 3–7 and Exhibit A, pp. 1–6). Of particular
interest here is the Examiner’s finding that Amano discloses “at least two
sensors continually generating data of a first and second parameter of an
individual” and a “processor generating [caloric expenditure] data using said
data of said first parameter and said data of said second parameter.” RAN
11–14, 17–20 (citing Amano, Figs. 2, 3A, and 17, and 6:53–7:30, 7:43–46,
12:39–44, 61–64, 13:3–7, 14–17, 16:36–42, 18:6–45).
Owner argues that Amano discloses the use of an interrupt signal to
intermittently sample body motion data, which is not the same as claim 1’s
continually generating data. PO App. Br. 6–7; PO Reb. Br. 4–5. Owner
further argues that Amano’s sampling of the body motion data means that
only sampled portions of the data—and not continually generated data—are
used in the caloric expenditure calculation. PO App. Br. 7; PO Reb. Br. 5–6.
Owner relies on similar arguments regarding claim 40. PO App. Br. 7–8;
PO Reb. Br. 4–6.
It is undisputed that Amano discloses a device for measuring calorie
expenditure (Amano, Abstract (“to obtain calorie expenditure with good
accuracy, the device is provided . . .”)) and that Amano discloses using data
from at least two sensors (Amano discloses at least three sensors: a body
motion detector; a pulse wave detector; and a body temperature detector
(Fig. 2)) to calculate caloric expenditure (Fig. 17; 18:6–45). Instead, Owner
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contends that Amano’s sensor data streams being sampled in response to an
interrupt signal from a watch circuit (18:6–12) is not the same as claim 1’s
“sensors continually generating data.” PO App. Br. 6–7; PO Reb. Br. 4–5.
We find this argument unpersuasive. The use of an interrupt signal to
sample a data stream—without regard to the frequency of the interrupt
signal—is inconsequential to the question of whether the data stream itself is
continually generated by a sensor. We are unpersuaded that Amano’s
sensors are not “continually generating data of a first and second parameter
of an individual” because Owner has not established that Amano’s interrupt
processing of a data stream—even if infrequent—is indicative of the data
generation by the sensors being other than continual, as the Examiner finds.
RAN 11–13.
We also are unpersuaded by Owner’s argument that Amano does not
anticipate claim 1 because, according to Owner, Amano’s processor uses
sampled data to calculate caloric expenditure and therefore does not use
“continually generat[ed] data.” PO App. Br. 7; PO Reb. Br. 5–6. Only
using sampled portions of data streams to calculate caloric expenditure does
not negate that Amano’s processor determines caloric expenditure “using
said data of said first parameter and said data of said second parameter.”
Owner confuses claim 1’s generating data continuously by the sensors with
the post-generation processing of the data by the processor. Owner has not
established persuasively that a processor calculating caloric expenditure
“using said data of said first parameter and said data of said second
parameter” requires using all of the continuously generated data in order to
disclose using the continuously generated data as claimed.
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Accordingly, we are unpersuaded of error in the Examiner’s
determination that Amano describes “at least two sensors continually
generating data of a first and second parameter of an individual” and a
“processor generating [caloric expenditure] data using said data of said first
parameter and said data of said second parameter” as recited in claim 1 and
commensurately recited in claim 40.

Claim 16
Claim 16, which depends from claim 1, also stands rejected as
anticipated by Amano. RAN 9. Claim 16 further recites that at least one of
the two sensors continually generating data during non-sedentary activities is
a contextual sensor. The Examiner finds that Amano’s disclosure of a
temperature sensor for measuring the temperature of the external
environment (Amano 25:5–18) meets the claimed contextual sensor.
RAN 31.
Amano discloses that “[i]n addition to the temperature sensor for
measuring the subject’s body temperature, a design is preferable in which a
temperature sensor is provided for measuring the temperature of the external
environment (environmental temperature) as an optional structural
component of the device.” Amano 25:5–10. Amano further discloses that
the external temperature sensor data is usable in conjunction with the body
temperature data for determining the subject’s physical state so that a
suitable regression formula may be selected (active subject vs. subject at rest
(Fig. 17)) when calculating caloric expenditure. Id. at 25:10–18.
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Owner presents several arguments that the Examiner’s rejection of
claim 16 is erroneous. PO App. Br. 8–9; PO Reb. Br. 2–3. None of
Owner’s arguments are persuasive of error.
For instance, Owner argues that the Examiner “concedes that any
disclosure of measuring temperature data in Amano does not occur during
non-sedentary activities.” PO App. Br. 9 (emphasis added); see also
PO Reb. Br. 3 (arguing that the Examiner’s conclusion “clearly excludes any
temperature sensor of Amano from falling within the scope of claim 16”
(emphasis added)).
Owner is referring here to a statement made by the Examiner (“Thus,
the Examiner finds that Amano et al. does not continually generate
temperature data during non-resting activities” (RAN 243 (emphasis in the
original))) while referencing Fig. 17 of Amano during an analysis of
arguments presented with respect to claim 1 (id. at 240–243). That the
Examiner’s statement clearly was not intended as a global finding regarding
the teachings of Amano is evident from the Examiner’s immediately
preceding introductory statement: “in examination of annotated Figure 17
above.” Id. at 242. More importantly, however, the Examiner’s statement
regarding Figure 17 is unrelated to the portions of Amano cited with respect
to claim 16’s contextual sensor (25:5–18), which the Examiner finds to be
met by Amano’s environmental temperature sensor (RAN 31).
We also find unpersuasive Owner’s remaining arguments regarding
claim 16 (see PO App. Br. 8–9; PO. Reb. Br. 2–3 (essentially arguing that
Amano is not specific with respect to a contextual sensor continually
generating data during non-sedentary activities)). Because Amano’s
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environmental temperature sensor is disclosed as being used to select
between one of two caloric expenditure regression formulas based on a
subject’s activity level (25:16–17), we are not persuaded that the sensor is
precluded from providing its data while the subject is active (i.e., non-
sedentary). Otherwise, it would be ineffective at selecting a regression
formula based on activity. Hence, we find that Amano’s environmental
temperature sensor meets the claimed contextual sensor that generates data
during non-sedentary activities. Further, to whatever extent Amano lacks
specificity with respect to the sensor generating data continually, Owner has
not persuasively established that Amano’s environmental sensor is precluded
from continually generating its data.
We also are not persuaded that, because Requester’s Respondent Brief
(TPR Resp. Br. 9–10) refers to Amano’s body temperature sensor, Amano’s
environmental temperature sensor cannot be the claimed “contextual sensor”
(PO Reb. Br. 2–3). This argument is directed to Requester’s unrelated
secondary arguments (see TPR Resp. Br. 9–10) and does not persuasively
rebut the Examiner’s finding that Amano’s environmental temperature
sensor meets the claimed contextual sensor continually generating data
during non-sedentary activities. RAN 31.
In view of the foregoing, we are unpersuaded of error in the
Examiner’s rejection of claims 1, 16, and 40 as anticipated by Amano.
Because Owner does not separately argue the remaining claims rejected as
anticipated by Amano, we also sustain the Examiner’s decision to reject
claims 2–5, 11, 13, 15, 17–19, 37–39, 44, and 47.

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The Obviousness Rejection of Claims 20–22, 26–29, 32–36, 54, and 55 over
Amano and Mault
Claims 20–22, 26–29, 32–36, 54, and 55 stand rejected as obvious
over Amano and Mault. RAN 73–112. Owner argues the rejection is
erroneous because the combination of Amano and Mault is improper.
PO App. Br. 12–13; PO Reb. Br. 12–13. Owner additionally argues that the
rejection of claims 34 and 35 is improper for reasons similar to those
discussed above with respect to claims 1, 16, and 40. PO App. Br. 13–14;
PO Reb. Br. 3–4.
We are unpersuaded the Examiner has fallen short of the requisite
“some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness” (KSR Int’l Co. v. Teleflex, Inc., 550 U.S.
398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)))
based on Owner’s assertion that “Amano nowhere discloses or suggests that
monitoring caloric balance is a desirable feature.” PO App. Br. 12. A
reason to combine prior art teachings need not originate solely from the prior
art references themselves. WMS Gaming Inc. v. Int’l Game Tech., 184 F.3d
1339, 1355 (Fed. Cir. 1999). Hence, even if true, we would not find the
“fact” that “Amano nowhere discloses or suggests that monitoring caloric
balance is a desirable feature” (PO App. Br. 12) to be a persuasive rebuttal
of the Examiner’s reasoning that
[i]t would have been obvious to one of skill in the art to modify
the apparatus of Amano [] to allow individuals to enter
information related to calories consumed, goals, etc. and view
information related to the goals as a part of physiological
monitoring because caloric expenditure relates to caloric
consumption to provide caloric balance.
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RAN 107. Owner’s argument overlooks that the obviousness analysis “need
not seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S.
at 418.
We also are unpersuaded of error based on Owner’s newly presented
argument that
were one to combine the teachings of Amano and Mault in the
manner suggested by the Examiner, the resulting combination
would impermissibly change Amano’s principle of operation
from operating without data other than that which may be
inputted using a simple interface (e.g., two switches) to
operating using complex data that a user must obtain and enter
into the disclosed device using a sophisticated interface.

PO Reb. Br. 13. “The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference . . . . Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill in the art.” In
re Keller, 642 F.2d 413, 425 (CCPA 1981). See also In re Sneed, 710 F.2d
1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the
references be physically combinable to render obvious the invention under
review.”); and In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining
the teachings of references does not involve an ability to combine their
specific structures.”). Rather, “if a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
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unless its actual application is beyond his or her skill.” KSR, 550 U.S. at
417.
Moreover, Owner’s argument that combining the teachings of Amano
and Mault in the manner suggested by the Examiner “would impermissibly
change Amano’s principle of operation” (PO Reb. Br. 13) is unpersuasive.
Because arguments of counsel cannot take the place of factually supported
objective evidence (see, e.g., In re Huang, 100 F.3d 135, 139–40 (Fed. Cir.
1996); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984)), we find this
argument to have little persuasive value in view of the evidence before us.
Owner separately argues the rejection of claims 34 and 35 over
Amano and Mault based on arguments similar to those presented previously
with respect to claim 16, namely that Amano does not teach a contextual
sensor generating data during non-resting (i.e., non-sedentary) activities.
PO App. Br. 13–14; PO Reb. Br. 3–4. We are not persuaded of error for the
reasons previously discussed.
Accordingly, we are unpersuaded of error in the rejection of claims
20–22, 26–29, 32–36, 54, and 55 as obvious over Amano and Mault.

The Obviousness Rejection of Claims 11, 16, 18, and 19 over Barney and
Amano
Owner argues the rejection of claim 16 over Amano and Barney based
on arguments presented with respect to the rejection of claim 16 as
anticipated by Amano. PO App. Br. 14; PO Reb. Br. 2–3. We are not
persuaded of error for the reasons previously discussed. Because Owner
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does not otherwise argue the rejection of claims 11, 18, and 19 as obvious
over Barney and Amano, we sustain the rejection.

The Obviousness Rejection of Claims 34, 35, and 47 over Barney, Mault,
and Amano
Owner argues the rejection of claims 34 and 35 over Barney, Mault,
and Amano based on arguments presented with respect to the rejection of
claims 34 and 35 over Amano and Mault. PO App. Br. 17. We are not
persuaded of error for the reasons previously discussed. Owner does not
otherwise argue the rejection of claim 47 over Barney, Mault, and Amano.

The Obviousness Rejection of Claims 41–43, 45, 46, and 48–53 over Amano,
Myllymäki, and Groff
Claim 41 stands rejected as obvious over Amano, Myllymäki, and
Groff. RAN 169. Claim 41 depends from claim 40 and, according to Owner
preferred construction, requires caloric expenditure to be determined using
skin résistance data. PO App. Br. 18.
Of particular interest here is the Examiner’s finding that, although
Amano discloses using a processor and data from a plurality of sensors to
evaluate a condition of a user, Amano does not disclose “the collecting of
data being indicative of a resistance of said individual’s skin to an electric
current from a GSR sensor; and using the data indicative of a resistance of
the individual’s skin to an electric current to determine a physical condition
(i.e. context of an individual).” RAN 170. The Examiner finds that
Myllymäki discloses a physiological device with a heart rate detector, a
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temperature transducer, and a conductivity transducer, the latter two being in
contact with an individual’s skin, which are monitored by a microprocessor
that “provides a health/physical condition and/or performance condition of
the user.” RAN 171 (citing Myllymäki 2:45–67). The Examiner further
finds that Groff discloses adding other indicators of an individual’s health to
a monitoring device “either for a more complete picture of the wearer’s
health, for corroboration of other data received, or for sensing particular
conditions of the wearer such as insulin shock or epileptic seizures.”
RAN 173 (quoting Groff 4:41–46).
The Examiner reasons that
it would have been obvious to one of ordinary skill in the art at
the time of the invention was made to incorporate collecting
data indicative of a resistance of an individual’s skin to an
electric current from a GSR sensor and using the data indicative
of a resistance of the individual’s skin to an electric current to
automatically determine a physical condition of Myllymäki in
order to compensate for false data from other sensors and
remove anomalies caused by various performance conditions,
thereby providing a more reliable description of the health
and/or physical condition of the user.

RAN 173 (citing Myllymäki 3:8–31). The Examiner reasons further that
A person of ordinary skill in the art would be motivated to
make the above noted modification of Amano et al. since
Myllymäki further teaches the utilization of the conductivity
transducer 6 in addition to the heart rate detector 3 and the
temperature transducer 5 to provide data to the microprocessor
9 for determination of “motoric activity” versus “no motoric
activity” in order to compensate for false data from other
transducers and remove anomalies caused by various
performance conditions, thereby providing a more reliable
description of the health and/or physical condition of the user.
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RAN 174 (citing Myllymäki 3:8–31). The Examiner goes even
further, finding that the claimed invention amounts to
enhancing a particular device (providing the collection of data
indicative of a resistance of an individual’s skin to an electric
current from a GSR sensor and using the data indicative of a
resistance of the individual’s skin to an electric current to
determine a physical condition) [that] was made part of the
ordinary capabilities of one skilled in the art based upon the
teaching of such improvement in Myllymäki. Accordingly, one
of ordinary skill in the art would have been capable of applying
this known “improvement” technique in the same manner to the
prior art control system of Amano et al. and the results would
have been predictable to one of ordinary skill in the art, namely,
one skilled in the art would have readily recognized that
providing the collection of data indicative of a resistance of an
individual’s skin to an electric current from a GSR sensor and
using the data indicative of a resistance of the individual’s skin
to an electric current to determine a physical condition in
Amano et al. would positively provide a means to compensate
for false data from other sensors and remove anomalies caused
by various performance conditions, thereby providing a more
reliable description of the health and/or physical condition of
the user, since such functionality is taught to be highly desirable
by Myllymäki, as set forth above.

RAN 175–76 (basing the obviousness conclusion on the criteria set
forth in KSR, 550 U.S. 417 namely that “if a technique has been used
to improve one device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond
his or her skill”).
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Owner makes numerous assertions regarding the shortcomings of the
references individually (PO App. Br. 19–22; PO Reb. Br. 8–10) with respect
to the rejection of claim 41, none of which persuasively undermines the
Examiner’s reasoning as to what the combined teachings of the references
would have taught or suggested to one skilled in the art at the time of
Owner’s alleged invention. Keller, 642 F.2d at 425 (“the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art”).
Specifically, Owner has not persuaded us that one skilled in the art
would have found claim 41 unobvious in view of combining Amano’s
teachings of a processor for determining caloric expenditure using data
continuously generated during non-sedentary activities from a plurality of
sensors (Amano Figs. 2 and 17) with Myllymäki’s sensor for providing skin
resistance data (Myllymäki 2:45–67) for any of the known purposes of
achieving a more complete picture of a user’s health, corroborating data
from other sensors, or sensing particular conditions of the user as taught by
Groff (Groff 4:41–46).
Owner’s rebuttal arguments (PO Reb. Br. 8–12) also are unpersuasive.
First, Owner argues that Myllymäki fails to disclose the continuous
generation of skin resistance data “during non-sedentary activities” and
Amano fails to cure the deficiency. Id. at 8–9. This is unpersuasive because
the references combined at least suggest that sensors, such as Myllymäki’s
skin resistance sensor, are capable of continuous generation of data, as is the
case with, for example, Amano’s body motion detector, which monitors a
user’s motion during non-sedentary activities. In other words, Owner’s
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argument fails to appreciate what the combined teachings of the references
would have taught or suggested to one skilled in the art. Keller, 642 F.2d at
425.
Next, Owner argues that Amano explicitly excludes the use of skin
resistance data in determining caloric expenditure and that Amano—and
thus the combination of references—teaches away from the claimed
invention. PO Reb. Br. 9–10. We note first that Owner is essentially
attacking an argument raised by Requester in the Respondent Brief—an
argument upon which we do not rely. Id. (“The Requester alleges that
Amano discloses that ‘determining the user’s sweat would be useful in
converting deep body temperature to general body temperature used for
calculating caloric expenditure’ . . . [implying] that the cited portion of
Amano discloses a relationship between generating sweat-related data and
converting deep body temperature to general body temperature.” (Referring
to TPR Resp. Br. 17)).
Further, we are not persuaded that the prior art “teaches away” from
using skin resistance data to calculate caloric expenditure based on Owner’s
argument that “Amano discloses that the calorie calculation process uses a
body temperature measurement in which ‘factors such as . . . the evaporation
of sweat from the body surface do not readily have an effect on this
[temperature] measurement’” (id. at 10 (quoting Amano 25:50–52)), and,
therefore, shows that sweat data (i.e., skin resistance data) would not be
useful in Amano’s process for determining caloric expenditure. “A
reference may be said to teach away when a person of ordinary skill, upon
reading the reference, would be discouraged from following the path set out
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in the reference, or would be led in a direction divergent from the path that
was taken by the applicant.” In re Gurley, 27 F.3d 551, 53 (Fed. Cir. 1994).
We do not find Amano’s mild rebuke of the evaporation of sweat from the
body surface with respect to temperature measurement to, in any material
way, lead one of skill in the art away from the use of skin resistance data in
the determination of caloric expenditure, as otherwise taught by the
combined teachings of the references.
Owner further attacks Requester’s responsive argument based on a
skin conductance sensor being useful for obtaining motion-related data to
thereby obtain caloric expenditure. PO Reb. Br. 10–12 (referring to
Requester’s assertion that “‘[t]he assessment of whether a user is sweating,
such as by skin conductance . . . is an additional input to more accurately
determine whether a user is active or resting’” (TPR Resp. Br. 19–20)). We
find this line of argument by Owner (PO Reb. Br. 10–12) unpersuasive of
error because we see no need to rely on the additional argument by
Requester (TPR Resp. Br. 19–20) in support of the Examiner’s findings with
respect to the references and the Examiner’s reasoning discussed previously
that claim 41 would have been obvious to one skilled in the art. RAN 173–
76.
Owner also argues that the combination of Amano and Myllymäki is
improper. PO App. Br. 24–25. We are unpersuaded of error for the reasons
stated by Requester. See TPR Resp. Br. 19–20. Owner’s assertion that the
rejection is based on hindsight is premised on Owner’s unpersuasive
argument that there is no evidence to support the rejection. PO App. Br. 25
(“given the absence of any evidence disclosing that skin resistance data may
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be used to determine caloric expenditure, the rejections of these claims
clearly rely on impermissible hindsight”). We disagree that there is no
evidence in view of the Examiner’s findings regarding the disclosure of the
references that we restate above and for the reasons articulated by Requester
(TPR Resp. Br. 19–20).
Accordingly, we sustain the rejection of claim 41 for the reasons
stated by the Examiner. RAN 170–76. We also sustain the rejection of
claim 45, which Owner argues based on the same grounds. PO App. Br. 18–
22.
Because Owner does not otherwise argue the Examiner’s rejection of
claims 42, 43, 46, and 49–52 as obvious over Amano, Myllymäki, and
Groff, we sustain the rejection.

Claims 48 and 53
Claim 48 depends from claims 40 and 41 and, according to Owner’s
preferred construction, requires generating an additional derived parameter
indicative of an individual’s sleep using “skin resistance data, movement
data, and data indicative of an individual’s heart.” PO App. Br. 22.
The Examiner finds claim 48 would have been obvious over Amano,
Myllymäki, and Groff, based on Amano’s disclosure of determining “the
deep sleep interval” (RAN 190 (citing Amano 11:22–12:2)) and
Myllymäki’s disclosure of using a plurality of sensors “to provide a
substantially more reliable description than that obtained by traditional
methods” (id. at 191 (quoting Myllymäki 3:9–17). The Examiner reasons
that “it would be obvious to modify the device of Amano to include a skin
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conductance sensor as an additional sensor compensating for false data
cause by one sensor.” Id. The Examiner also concludes that the
combination would be obvious “to add additional sensors to a health
monitoring device to provide a more complete picture of health, corroborate
data, or sense particular conditions” (id. (citing Groff 4:41–46)), which
amounts to using a known technique to improve similar devices. KSR, 550
U.S. at 417.
Owner argues that neither Amano, nor Myllymäki, nor Groff disclose
using skin resistance data or a skin conductivity transducer to determine
sleep-related data or another derived parameter (PO App. Br. 22–24) and
that the Examiner’s “failure to provide evidence of the core factual finding
(i.e., whether the recited features of these claims were known prior art
elements) is clearly erroneous.” Id. at 23.
We disagree with Owner for at least the reasons stated by Requester.
TPR Reb. Br. 18–19. Additionally, we do not find Owner to have
persuasively rebutted the Examiner’s conclusion that the invention of claim
41 amounts to a known technique (using a plurality of sensors to obtain a
more substantially more reliable description of an individual’s physical state
(Myllymäki 3:9–17)) to improve a known device (Amano’s device, which
includes evaluating sleep (Amano 11:22–12:2)), as also taught by Groff
(adding sensors to a health monitoring device to provide a more complete
picture of health, corroborate data, or sense particular conditions (Groff
4:41–46)). KSR, 550 U.S. at 417.
Accordingly, we sustain the Examiner’s rejection of claim 48 and of
claim 53, which Owner argues on the same grounds. PO App. Br. 22–24.
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The Obviousness Rejection of Claims 56–59 over Amano, Mault, Myllymäki,
and Groff
Because Owner argues the rejection of claims 56–59 based on
arguments presented with respect to claim 41 (PO App. Br. 25–26), we
sustain the rejection for reasons discussed previously.

The Obviousness Rejection of Claims 48–53, and 59 over Amano, Mault,
Myllymäki, Barney, and Groff
Because Owner argues the rejection of claims 48–53, and 59 based on
arguments presented with respect to claim 41 (PO App. Br. 29–30), we
sustain the rejection for reasons discussed previously.

The Anticipation Rejection of Claims 1–5, 13, 15, 17,
and 37 over Barney
Claims 1–5, 13, 15, 17, and 37 stand rejected as anticipated by
Barney. Owner argues that Barney does not anticipate claim 1 because “the
use of a selected or intermittent data item for [one of the two parameters] is
different from using data of a first parameter and a second parameter that
is continually generated during non-sedentary activities.” PO App. Br. 9–
11. We are not persuaded.
Using only some of the data of one of the two parameters for
calculating caloric expenditure, as Owner does not dispute Barney does (id.
at 11 (“the device disclosed in Barney computes calorie expenditure by
using one data point out of multiple temperature data points available to the
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device rather than by using continually generated data”)), does not negate
that the data is continuously generated. Owner confuses generating data
continuously with processing the data after it is generated and has not
persuasively established that a processor “generating [caloric expenditure]
data using said data of said first parameter and said data of said second
parameter” requires using all of a continuously generated data stream.
We have reviewed Owner’s rebuttal arguments (PO Reb. Br. 6–7) and
do not find them persuasive of error in the Examiner’s findings that Barney
anticipates claim 1 (RAN 58–66), which we adopt.
Accordingly, we sustain the rejection of claim 1 as anticipated by
Barney. We also sustain the rejection of claims 2–5, 13, 15, 17, and 37 as
anticipated by Barney because Owner does not separately argue these
claims.

The Obviousness Rejection of Claims 20–22, 26–29, 32, 33, 36, 40, 54,
and 55 over Barney and Mault
Claims 20–22, 26–29, 32, 33, 36, 40, 54, and 55 stand rejected as
obvious over Barney and Mault. RAN 120, 149–160. Owner argues that the
combination of Amano and Mault is improper. PO App. Br. 15–16.
Specifically, Owner argues that “[t]he Examiner is incorrect when stating
that the asserted combination would be obvious because adding functionality
for tracking caloric consumption to the Barney device would allow the user
to monitor ‘caloric balance’ in addition to caloric expenditure.” Id. at 15.
We are unpersuaded of error for reasons similar to those discussed
previously with respect to the Examiner’s reasoning for combining Amano
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and Mault and the Examiner’s reasoning here (RAN 143–148). We note
Owner’s rebuttal arguments that the proposed combination of Barney and
Mault would impermissibly change the principle of operation of Mault
(PO Reb. Br. 13–14), but do not find the arguments to be persuasive of error
for reasons similar to those discussed previously with respect to Amano and
Mault.
More specifically, there, as here, Owner’s argument that combining
the teachings of Barney and Mault in the manner suggested by the Examiner
“would impermissibly change [Mault’s] principle of operation” (PO Reb. Br.
13–14) is unpersuasive in view of the evidence before us. Because
arguments of counsel cannot take the place of factually supported objective
evidence (see, e.g., Huang, 100 F.3d at 139–40; De Blauwe, 736 F.2d at
705), we find this argument to have little persuasive value.
Owner additionally argues the rejection of claim 40 as obvious over
Barney and Mault based on reasons similar to those discussed previously
with respect to Amano and Mault. PO App. Br. 16–17 (arguing that the
rejection is improper due to shortcomings with respect to the disclosure of
Mault). We are unpersuaded of error for the reasons discussed previously.

The Obviousness Rejection of Claims 41–46 and 56–58 over Barney, Mault,
Myllymäki, and Groff
Owner argues the rejection of claims 41–46 and 56–58 as obvious
over Barney, Mault, Myllymäki, and Groff because, among other reasons,
the combination of Barney and Myllymäki is improper (PO App. Br. 28–29)
and because the rejection relies “on an erroneous finding that the
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combination of Barney and Myllymäki discloses generating caloric
expenditure data using skin resistance data, movement data, and data
indicative of an individual’s heart” (id. at 26).
We are unpersuaded of error. We adopt the findings and conclusion
of the Examiner that claims 41–46 and 56–58 are obvious over Barney,
Mault, Myllymäki, and Groff. RAN 210–236. Because our decision does
not rely on Requester’s response to Owner’s arguments (TPR Reb. Br. 21),
we need not address Owner’s rebuttal (PO Reb. Br. 12).

CONCLUSION
The Examiner did not err in adopting the following rejections: claims
1–5, 11, 13, 15–19, 37–39, 40, 44, and 47 as anticipated by Amano; claims
1–5, 13, 15, 17, and 37 as anticipated by Barney; claims 20–22, 26–29, 32–
36, 54, and 55 unpatentable over Amano and Mault; claims 11, 16, 18, and
19 as unpatentable over Barney and Amano; claims 20–22, 26–29, 32, 33,
36, 40, 54, and 55 as unpatentable over Barney and Mault; claims 34, 35,
and 47 as unpatentable over Barney, Mault, and Amano; claims 41–43, 45,
46, and 48–53 as unpatentable over Amano, Myllymäki, and Groff; claims
56–59 as unpatentable over Amano, Mault, Myllymäki, and Groff; claims
41–46 and 56–58 as unpatentable over Barney, Mault, Myllymäki, and
Groff; and claims 48–53 and 59 as unpatentable over Barney, Mault,
Myllymäki, Groff, and Amano. RAN 236–43.

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DECISION
We affirm the Examiner’s decision to reject claims 1–5, 11, 13, 15–
22, 26–29, and 32–59.
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

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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