Ex Parte 8073707 et al

Patent Trial and Appeal Board

Mar 26, 2015

95002376 (P.T.A.B. Mar. 26, 2015)

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.
95/002,376 09/14/2012 8073707 92092-891575 7381
23370 7590 03/27/2015
KILPATRICK TOWNSEND & STOCKTON LLP
1100 PEACHTREE STREET
SUITE 2800
ATLANTA, GA 30309
EXAMINER
DEB, ANJAN K
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
03/27/2015 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.

BODYMEDIA, INC.
Patent Owner and Appellant
________________

Appeal 2014-008959
Reexamination Control 95/002,376
Patent 8,073,707 B2
Technology Center 3900
________________

Before JOHN A. JEFFERY, ERIC B. CHEN, and
JEREMY J. CURCURI, Administrative Patent Judges.

CURCURI, Administrative Patent Judge.

DECISION ON APPEAL
Patent Owner appeals the Examiner’s decision to reject claims 1-18,
20-22, and 25-43. PO App. Br. 1. We have jurisdiction under 35 U.S.C.
§§ 134 and 315, and we heard the appeal on March 4, 2015.
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Claims 1-4, 7, 11, 14-18, and 22 are rejected under 35 U.S.C. 102(e)
as anticipated by Amano (US 6,030,342; issued Feb. 29, 2000). RAN 6-15,
46-49.
Claims 8, 9, and 13 are rejected under 35 U.S.C. 103(a) as obvious
over Amano. RAN 15-16, 50.
Claims 5, 6, 10, 12, 20, and 21 are rejected under 35 U.S.C. 103(a) as
obvious over Amano and Mault (US 6,478,736; issued Nov. 12, 2002). RAN
17-24, 50-52.
Claims 25-40, 42, and 43 are rejected under 35 U.S.C. 103(a) as
obvious over Amano and Myllymaki (US 5,670,944; issued Sep. 23, 1997).
RAN 24-44, 52-55.
Claim 41 is rejected under 35 U.S.C. 103(a) as obvious over Amano,
Mault, and Myllymaki. RAN 45-46, 55.
We affirm.

STATEMENT OF THE CASE
This proceeding arose from a request by BASIS Science, Inc. for an
inter partes reexamination of Patent 8,073,707 B2, titled “System for
Detecting, Monitoring, and Reporting an Individual’s Physiological or
Contextual Status (“the ’707 patent”). The ’707 patent describes
“present[ing a] derived [physiological or contextual] parameter in relation to
any other sensed parameters, entered information, life activities data, or
other derived data.” Abstract. Claim 1, which is reproduced below with the
disputed limitation emphasized, is illustrative:
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1. A system for detecting, monitoring, and reporting a status of an
individual to a user, the system comprising:
a first sensor adapted to generate data indicative of a first
physiological parameter of the individual if said first sensor is in proximity
to the individual;
a second sensor adapted to generate data indicative of a second
physiological parameter of the individual if said second sensor is in
proximity to the individual;
a processing unit in electronic communication with said first sensor
and said second sensor;
a central monitoring unit in electronic communication with at least
one of said sensors and said processing unit; and
an output device in electronic communication with at least one of said
processing unit and said central monitoring unit, wherein at least one of said
processing unit and said central monitoring unit is programmed
(a) to generate at least one of a derived physiological status parameter
of the individual and a derived parameter related to an activity in which the
individual has engaged said derived parameters based on both of said data
indicative of said first physiological parameter of the individual and said
data indicative of said second physiological parameter of the individual, and
(b) to cause said output device to present to a user indicators of at
least one of said derived parameters of the individual in relation to
indicators of at least one of (i) said data indicative of said first physiological
parameter of the individual, and (ii) said data indicative of said second
physiological parameter of the individual.
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ANALYSIS
THE ANTICIPATION REJECTION OF CLAIMS 1-4, 7, 11, 14-18, AND 22 BY
AMANO
The Examiner finds Amano describes all limitations of claims 1-4, 7,
11, 14-18, and 22. RAN 6-15, 46-59.
Regarding claim 1, the Examiner maps Amano’s pulse rate data to the
recited first physiological parameter, Amano’s body temperature data to the
recited second physiological parameter, and Amano’s caloric expenditure to
the recited derived parameter. RAN 6-9 (citing Amano, col. 12, l. 66-col. 13,
l. 23; col. 18, ll. 6-44; Fig. 2).
Patent Owner presents the following principal arguments:
i.
Amano further discloses that the display can be used to
separately display either the calorie expenditure without any
reference to other physiological parameters or physiological
parameters (e.g., pulse rate, body temperature) without any
reference to a derived parameter, but lacks any disclosure that
the display can be used to present the calorie expenditure and
the physiological parameters in relation to one another.
PO App. Br. 10; see also PO Reb. Br. 10-13.
ii.
This distinction between the invention claimed in [the ’707
patent] and the Amano device is significant in that the claimed
invention allows an individual to easily monitor and readily
determine the impact of changes to various measured
physiological parameters on the status of the individual’s
health, as indicated by the displayed derived parameter.
PO App. Br. 12-13.
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We are not persuaded of any error in the Examiner’s findings.
Regarding Patent Owner’s arguments (i) and (ii), we agree with and
adopt as our own the Examiner’ explanation:
Amano disclose[s] that the [indicator] of a derived parameter
(calculated calorie expenditure) (see Fig. 17, step Sa8) is
presented to the user on display 205 (col. 18 lines 6-44) and
data indicative of the physiological parameter (measured
temperature value at temperature sensor Ts3) [are] presented to
the user on display 205 (col. 23 line 66 to col. 24 line 2). Thus
Amano disclose[s] that it presents to a user “indicators of at
least one of said derived parameters of the individual in relation
to indicators of at least one of (i) said data indicative of said
first physiological parameter of the individual, and (ii) said data
indicative of said second physiological parameter of the
individual” as recited in claim 1.
RAN 49; see also Amano, Fig. 19 (display 205 presenting calorie
expenditure), Fig. 37 (display 205 displaying body temperature).
In addition, we agree with Third Party Requester that “the claim
language itself does not state that the indicator of the derived parameter and
the indicator of the physiological parameter be displayed anywhere. The
claim only recites that these indicators be presented one in relation to the
other.” 3PR Resp. Br. 5.
Claim 1 does not require simultaneous presentation to the user of the
parameters, rather claim 1 only requires that indicators of at least one
derived parameter are presented in relation to indicators of data indicative of
at least one physiological parameter. Amano (Fig. 19) displays calorie
expenditure with respect to time, and Amano (Fig. 37) displays body
temperature with respect to time. Because both calorie expenditure and body
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temperature are displayed with respect to time, calorie expenditure is
presented in relation to body temperature.
We, therefore, sustain the anticipation rejection of claim 1 based on
Amano, as well as the rejection of claims 2-4, 7, 11, 14-18, and 22, which
are not separately argued with particularity.

THE OBVIOUSNESS REJECTION OF CLAIMS 25-40, 42, AND 43 OVER AMANO
AND MYLLYMAKI
The Examiner finds Amano and Myllymaki teach all limitations of
claims 25-40, 42, and 43. RAN 24-44, 52-55 (incorporating by reference
TPR Comments filed March 15, 2013, pages 12-14 and Exhibit C: claim
charts pages 1-31).
Regarding claims 25 and 37, Patent Owner presents the following
principal arguments:
i.
Amano’s cited disclosure of displaying calorie expenditure
alone is not the same as or suggestive of presenting indicators
of a derived parameter of an individual in relation to indicators
of a first or second physiological parameter of the individual (as
recited in claim 25) or indicators of data generated by a
galvanic skin response sensor, an accelerometer, a sensor
generating data indicative of an individual’s heart, or a skin
temperature sensor (as recited in claim 37).
PO App. Br. 14; see also PO Reb. Br. 13-15.
ii. Myllymaki does not cure the deficiencies of Amano. PO App.
Br. 15.
We find Patent Owner’s arguments (i) and (ii) unpersuasive of any
error in the Examiner’s findings and conclusions for the same reasons
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discussed above with respect to claim 1. Amano describes claim 25’s recited
presenting an indicator of a derived parameter (Amano’s (Fig. 19) calorie
expenditure) in relation to an indicator of data indicative of a physiological
parameter (Amano’s (Fig. 37) body temperature). Amano describes claim
37’s recited presenting an indicator of a derived physiological parameter
(Amano’s (Fig. 19) calorie expenditure) in relation to an indicator of an
indicator of data generated by a skin temperature sensor (Amano’s (Fig. 37)
body temperature).
With further regard to claim 25, Patent Owner presents the following
principal arguments:
iii.
Even if the teachings of Amano and Myllymaki were properly
combined, the resulting system would not be capable of
generating derived parameters using data generated by a GSR
sensor, an accelerometer, and a heart sensor. Instead, the
proposed combination would, at best, result in a device capable
of using different subsets of a group of sensors to perform
different functions, i.e. determine calorie expenditure as taught
by Amano (see Amano FIG. 1, 6:57-67[;] 7:8-36; 18:43-45) and
provide an alarm as taught by Myllymaki (see Myllymaki 2:47-
52; 3:3-6). But neither function would involve generating
derived parameters using data generated by a GSR sensor, an
accelerometer, and a heart sensor, as recited in claim 25.
PO App. Br. 16-17; see also PO Reb. Br. 6-9.
iv. “[N]o evidence of record supports a finding that an indication
of whether a subject is sweating or any other data obtained with a
conductivity transducer can be used with a pulse rate, temperature, and/or []
accelerometer data to determine calorie expenditure, as disclosed in
Amano.” PO App. Br. 17; see also PO Reb. Br. 1-6.
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v. “Myllymaki’s disclosure of monitoring a physical or
performance condition is not the same as or suggestive of a derived
parameter related to an activity in which the individual has engaged, as
recited in claim 25.” PO App. Br. 18. “Myllymaki’s disclosure of outputting
an alarm after compensating for false data from a sensor is not the same as
or suggestive of generating a derived parameter that indicates the status of
the individual or relates to an activity in which the individual has engaged,
as required by claim 25.” Id.
Regarding Patent Owner’s arguments (iii) and (iv), we find these
arguments unpersuasive of any error in the Examiner’s findings and
conclusions. We agree with and adopt as our own the Examiner’s
explanation that Myllymaki’s conductivity transducer discloses the recited
galvanic skin response sensor, Amano’s body motion detector discloses the
recited accelerometer, and Amano’s pressure sensors disclose the recited
heart sensor. See TPR Comments filed March 15, 2013, Exhibit C: claim
charts pages 2-3. We see no error in the Examiner’s conclusion that “it
would [have been] obvious to modify the device of Amano to include a skin
conductance sensor as an additional sensor compensating for false data
cause[d] by one sensor. It is prima facie obvious to use a known technique to
improve similar devices.” TPR Comments filed March 15, 2013, Exhibit C:
claim charts page 10; see RAN 54 (“GSR sensor would provide a more
accurate determination of user’s state and therefore more accurate
determination of caloric expenditure.”).
We also agree with and adopt as our own Third Party Requester’s
further explanation: “The disclosure of the combination of Amano and
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Myllymaki is a system for determining caloric expenditure with a more
accurate determination of whether a user is at rest or active prior to
calculating caloric expenditure. Thus, the resulting determination of caloric
expenditure is more accurate.” 3PR Resp. Br. 8-9.
Regarding Patent Owner’s argument (v), we find this argument
unpersuasive of any error in the Examiner’s findings and conclusions.
Claim 25 (emphasis added) recites “generate at least one of a derived
physiological status parameter of the individual and a derived parameter
related to an activity in which the individual has engaged.”
We agree with and adopt as our own the Examiner’s explanation that
Amano describes the recited derived physiological status parameter
(Amano’s (Fig. 19) calorie expenditure) based on data indicative of the first
physiological parameter (Myllymaki’s conductivity transducer’s data) and
data indicative of the second physiological parameter (Amano’s body
motion detector’s data) and also data indicative of the third physiological
parameter (Amano’s pressure sensors’ data). See TPR Comments filed
March 15, 2013, Exhibit C: claim charts pages 8-9.
With further regard to claim 37, Patent Owner presents additional
arguments (PO App. Br. 30-21; PO Reb. Br. 12), which are principally the
same as the further arguments presented for claim 25. Thus, we also we find
these additional arguments for claim 37 unpersuasive of any error in the
Examiner’s findings and conclusions for the same reasons discussed above
with respect to the additional arguments for claim 25.
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We, therefore, sustain the obviousness rejection of claims 25 and 37
based on Amano and Myllymaki, as well as the rejection of claims 26-36,
38-40, 42, and 43, which are not separately argued with particularity.

THE OBVIOUSNESS REJECTION OF CLAIMS 8, 9, AND 13 OVER AMANO
The Examiner finds Amano teaches all limitations of claims 8, 9, and
13. RAN 15-16, 50.
Patent Owner does not argue claims 8, 9, and 13 with particularity.
See PO App. Br. 22-23.
We, therefore, sustain the obviousness rejection of claims 8, 9, and 13
based on Amano.

THE OBVIOUSNESS REJECTION OF CLAIMS 5, 6, 10, 12, 20, AND 21 OVER
AMANO AND MAULT
The Examiner finds Amano and Mault teach all limitations of claims
5, 6, 10, 12, 20, and 21. RAN 17-24, 50-52.
Patent Owner does not argue claims 5, 6, 10, 12, 20, and 21 with
particularity. See PO App. Br. 22-23.
We, therefore, sustain the obviousness rejection of claims 5, 6, 10, 12,
20, and 21 based on Amano and Mault.

THE OBVIOUSNESS REJECTION OF CLAIM 41 OVER AMANO, MAULT, AND
MYLLYMAKI
The Examiner finds Amano, Mault, and Myllymaki teach all
limitations of claim 41. RAN 45-46, 55.
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Patent Owner does not argue claim 41 with particularity. See PO App.
Br. 22-23.
We, therefore, sustain the obviousness rejection of claim 41 based on
Amano, Mault, and Myllymaki.

ORDER
The Examiner’s decision rejecting claims 1-18, 20-22, and 25-43 is
affirmed.
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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For Patent Owner:

KILPATRICK TOWNSEND & STOCKTON LLP
1100 PEACHTREE STREET
SUITE 2800
ATLANTA, GA 30309

For Third Party Requester:

FENWICK & WEST LLP
SILICON VALLEY CENTER
801 CALIFORNIA STREET
MOUNTAIN VIEW, CA 94041