Ex Parte Damen

Board of Patent Appeals and Interferences

Jul 27, 2009

10477165 (B.P.A.I. Jul. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ERIK PETRUS NICOLAAS DAMEN
____________________

Appeal 2009-006874
Application 10/477,165
Technology Center
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Decided: July 27, 20091
____________________

Before HOWARD B. BLANKENSHIP, ST. JOHN COURTENAY III, and
THU A. DANG, Administrative Patent Judges.

DANG, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-006874
Application 10/477,165

I. STATEMENT OF THE CASE
Appellant appeals from the Examiner’s final rejection of claims 1, 3-
11, 14, and 15 under 35 U.S.C. § 134(a) (2002). Claims 2, 10, 12, 13, 16,
and 17 were previously cancelled during prosecution of the application.
Claim 18 has recently been cancelled. We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.

A. INVENTION
According to Appellant, the invention pertains to a portable device
comprising a housing, a display, a storage medium, at least one acceleration
sensor means for calculating an activity parameter based on the signal
generated by the acceleration sensor, storing the calculated parameter in the
storage medium, and showing the same in the display (Spec. 1, ll. 1-6).

B. ILLUSTRATIVE CLAIM
Claim 1 is exemplary and is reproduced below:
1. A portable device comprising:

a housing;

a display;

a storage medium;

at least one acceleration sensor; and

means arranged for calculating an activity parameter
based on a signal generated by the at least one acceleration
sensor, storing the calculated parameter in the storage medium,
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and showing the same in the display, wherein said parameter is
the Physical Activity Index (PAI) or a derivative thereof, which
is solely calculated by multiplying an average of the absolute
values of a signal or samples of a signal of the at least one
acceleration sensor with at least one constant, which at least one
constant is independent of personal data of a user of the
portable device, whereby the constant is a universal metric that
is not related to age, weight, or gender, the portable device
being immediately operable after being powered ON such that
the user that uses the portable device is not required to calibrate
the portable device nor input his personal data to allow the
portable device to accurately function.

C. REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Brejnik US 4,101,071 Jul. 18, 1978
Matsumoto US 4,911,427 Mar. 27, 1990
Sutton US 5,117,444 May 26, 1992
Yoshimura US 5,788,655 Aug. 4, 1998
Kadhiresan US 6,021,351 Feb. 1, 2000
Brown US 6,240,393 B1 May 29, 2001
Mault (Mault II) US 6,513,532 B2 Feb. 4, 2003
Mault (Mault) US 6,571,200 B1 May 27, 2003
Teller US 6,605,038 B1 Aug. 12, 2003

Claims 1, 3-9, 11, 14, and 152 stand rejected under 35 U.S.C. § 112,
first paragraph as failing to comply with written description requirement;
Claims 1, 3, 7, and 11 stand rejected under 35 U.S.C. § 103(a) over
the teachings of Yoshimura in view of Mault and Brejnik;

2 Though the Examiner Answer repeats the rejections of claim 18, claim 18
has been recently canceled by Appellant, and thus, the rejections of claim 18
are not addressed on this Appeal.
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Claim 4 stands rejected under 35 U.S.C. § 103(a) over the teachings
of Yoshimura in view of Mault, Brejnik, and Kadhiresan;
Claim 5 stands rejected under 35 U.S.C. § 103(a) over the teachings
of Yoshimura in view of Mault, Brejnik and Mault II;
Claim 6 stands rejected under 35 U.S.C. § 103(a) over the teachings
of Yoshimura in view of Mault, Brejnik and Sutton; and
Claims 8, 9, 14, and 15 stand rejected under 35 U.S.C. § 103(a) over
the teachings of Yoshimura in view of Mault, Brejnik and Teller.

II. ISSUE
Has Appellant shown that the Examiner erred in finding that:
(1) The limitation “such that the user that uses the portable device is
not required to calibrate the portable device nor input his personal data to
allow the portable device to accurately function” (claims 1, 7 and 11) lacks a
written description in full, clear, concise, and exact terms in the
Specification ; and
(2) The combination of Yoshimura in view of Mault and Brejnik
teaches or would have suggested “means arranged for calculating an activity
parameter… wherein said parameter is the Physical Activity Index (PAI) or
a derivative thereof, which is solely calculated by multiplying an average of
the absolute values of a signal or samples of a signal of the at least one
acceleration sensor with at least one constant,” and wherein “the constant is
a universal metric that is not related to age, weight, or gender” (claim 1)?

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III. FINDINGS OF FACT
The following Findings of Fact (FF) are shown by a preponderance of
the evidence.
Yoshimura
1. Yoshimura discloses calculating a life activity index to classify the
index as one of ranks that are associated with preset life activity
intensities, and a user can recognize whether his exercise is at an
appropriate level (col. 2, ll. 10-14).
2. The MPU has a function of calculating an exercise amount based on
the received digital signal from an acceleration sensor, a function of
calculating a life activity index, and other functions (col. 4, ll. 40-47).
3. The life activity index (χ) is expressed as
χ = 0.9(A/B)-1
where B is the basal metabolism, and A is the total energy metabolism
(col. 5, ll. 7-22).
4. The basal metabolism is determined as a function of Bs, the standard
value of basal metabolism per body surface, and S, the body surface
area, wherein Bs depends on the gender and age (col. 4, ll. 57-67).

Mault
5. Mault discloses body activity detectors including a detector which
detects physical activity, such as a pedometer or accelerometer, and an
exertion level detector which indicates the exertion level (col. 4, ll.
31-36).
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6. A personal correlation factor (PCF) is computed that is personal to
that subject for the respective body activity and for the respective
activity rate (col. 5, ll. 57-60).
7. The body activity rate is detected by the detector while the subject is
undergoing a particular body activity at a particular rate, and the PCF
for the respective body activity and rate is then utilized to compute the
actual caloric expenditure rate applicable to the particular subject for
the particular activity at the particular activity rate (col. 6, ll. 3-26).

Brejnik
8. Brejnik discloses a calorie counter and recognizes that the pulse rate
of an individual at any given time is related to the number of calories
burned by the person (col. 1, ll. 5-13).

IV. PRINCIPLES OF LAW
35 U.S.C. § 112, 1st paragraph
“The specification shall contain a written description of the
invention… in such full, clear, concise, and exact terms as to enable any
person skill in the art to which it pertains, or with which it is most nearly
connected, to make and use the same” 35 U.S.C. § 112, first paragraph.
35 U.S.C. § 103
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so
doing, the Examiner must make the factual determinations set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966). “[T]he examiner bears
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the initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). “On appeal to the Board, an applicant can
overcome a rejection [under § 103] by showing insufficient evidence of
prima facie obviousness or by rebutting the prima facie case with evidence
of secondary indicia of nonobviousness.” In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)).

V. ANALYSIS
35 U.S.C. § 112, first paragraph
The Examiner finds that claims 1, 3-9, 11, 14, and 15 fail to comply
with the written description requirement. In particular, the Examiner finds
that there are no “limitations or embodiment in the instant disclosure
wherein the user may calibrate the portable device or input his personal data
to allow the portable device to accurately function” (Ans. 4). Thus, the
Examiner finds that the limitation “such that a user that uses the portable
device is not required to calibrate the portable device nor input his personal
data” is not described in the Specification in such a way as to reasonably
convey to one skill in the relevant art that the inventor had possession of the
claimed invention at the time the application was filed (Ans. 3-4).
Appellant contends that “[o]n page 2, beginning at line 12, Applicant
explains: ‘Personal data of a user, such as gender, age, height, and weight,
need not be inputted thus further enabling straightforward construction and
enhancing ease of use’” (App. Br. 4). Furthermore, Appellant contends that
“Applicant continues to explain that ‘the PAI is universal in the e.g., a PAI
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of 1.5 indicates a sedentary lifestyle independent of personal data” (id.).
Accordingly, Appellant argues that “the natural conclusion to these
discussions is that there is no need to input information as part of the
operational process” (id.).
Thus, we address on appeal whether independent claims 1, 7 and 11,
comply with the written description requirement. In particular, we
determine whether the limitation “such that a user that uses the portable
device is not required to calibrate the portable device nor input his personal
data” (claim 1) is described in the Specification in such a way as to
reasonably convey to one skill in the relevant art that the inventor had
possession of the claimed invention at the time the application was filed.
Appellant’s Specification discloses that “[p]ersonal data of a user,
such as gender, age, height, and weight, need not be inputted” (Spec. 2, ll.
14-15), and that “a PAI of 1.5 indicates a sedentary lifestyle independent of
personal data” (id. at 17-19). We find that this written description in the
Specification indicates that a user that uses the portable device is not
required to calibrate or input personal data. Accordingly, we disagree with
the Examiner and conclude that the Specification does contain a written
description of the invention in full, clear, concise, and exact terms as
required by under 35 U.S.C. § 112, first paragraph.
Therefore, Appellant has shown that the Examiner erred in concluding
that claims 1, 7, and 11, and claims 3-6, 8, 9, 14, and 15 depending
therefrom fail to comply with written description requirement under 35
U.S.C. § 112, first paragraph.

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35 U.S.C. § 103(a)
Claims 1, 3, 7, and 11
Appellant contends that:
Currently, no reference of record, including Mault, Yoshimura, and
Brejnik, offers an architecture in which there is a “…Physical Activity
index (PAI), which is solely calculated by multiplying an average of
the absolute values of a signal or samples of a signal of the at least
one acceleration sensor with at least one constant, which at least one
constant is independent of personal data of a user of the portable
device, whereby the constant is a universal metric that is not related
to age, weight, or gender, the portable device being immediately
operable after being powered ON such that the user that uses the
portable device is not required to calibrate the portable device nor
input his personal data to allow the portable device to accurately
function [as required by claim 1]”

(App. Br. 6).
In particular, Appellant argues that “there are no devices in the cited
references in which there is a constant being used and that constant is
independent of age, weight, or gender (id.). Thus, Appellant contends that
“the Examiner (to support his rejection) needs to show a constant that is
being multiplied by an average of the absolute values of a signal of the
acceleration sensor” and “that constant must be a universal constant,
which is insulated from personal data” (App. Br. 7). Appellant adds that
“the cited references are irreparably flawed because they fail to include this
constant in the context of providing a PAI and, further, in the context of
using an accelerometer” (App. Br. 8).
In response, the Examiner finds that “while Yoshimura et al. teach
PAI and a derivative thereof, Mault, on the other hand, teaches a system
wherein Caloric Expenditure Rate (CER)(i.e. an activity related energy
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expenditure) can be directly measured by computing a body activity of a
user via a body activity detector” (Ans. 16). In particular, the Examiner
finds that “Mault achieves this goal by computing a Personal Correlation
Factor (PCF) in the training mode representing the correlation between CER
and body activity measurement for each of the body activities and rates”
(Ans. 16-17). Thus, the Examiner concludes that “the combination of
Yoshimura et al. and Mault teaches and/or suggest[s] a PAI that is solely
calculated by multiplying samples of a signal of a body activity detector…
with at least one constant” (Ans. 18). According to the Examiner, in view of
Brejnik, “the PCFs would pertain to Universal or Population Correlation
Factors, replacing the Personal Correlation Factors of Mault . . . wherein the
factors are stored in the device in advance in the same way that the Brejnik
device comes with a pre-stored equation without any calibration since the
factors are universal” (Ans. 22).
Accordingly, an issue we address on appeal is whether the
combination of Yoshimura in view of Mault and Brejnik teaches or would
have suggested “means arranged for calculating an activity parameter…
wherein said parameter is the Physical Activity Index (PAI) or a derivative
thereof, which is solely calculated by multiplying an average of the absolute
values of a signal or samples of a signal of the at least one acceleration
sensor with at least one constant,” and wherein “the constant is a universal
metric that is not related to age, weight, or gender” (claim 1).
After reviewing the record on appeal, we agree with Appellant.
Yoshimura discloses calculating a life activity index (FF 1), wherein the
MPU calculates the exercise amount based on received signals from an
acceleration sensor as well as the life activity index (FF 2). The life activity
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index is expressed as a function of the total energy metabolism and the basal
metabolism (FF 3).
In Yoshimura, the basal metabolism is dependent on the personal data
of the user (FF 4). Thus, even if the life activity index is interpreted to be an
activity parameter, the life activity index that is a function of the basal
metabolism is calculated based on the age, weight, or gender of the user,
contrary to the requirements of claim 1.
Further, there is no teaching in Yoshimura that the life activity index
is calculated by multiplying an average of the absolute values of the signals
or samples of the signals. In fact, Yoshimura discusses using the sensed
signals to calculate the exercise amount, but is silent as to using signals to
calculate the life activity index (FF 1-3), let alone the average of the absolute
values of the signals. Thus, we find that Yoshimura does not disclose any
calculation of an activity parameter by multiplying an average of the
absolute values of a signal or samples of a signal and a universal metric that
is not related to age, weight or gender, as required by claim 1.
Mault discloses detecting the body activity rate by a detector, and
using a constant, PCF, for the respective body activity and rate to compute
the actual caloric expenditure rate applicable to the particular subject for the
particular activity at the particular activity rate (FF 5-7). Caloric
expenditure is the burning of calories by a particular user, and an artisan
would have understood that a caloric expenditure rate is dependent of the
age, weight or gender of the user. Though the PCF is constant, the PCF is
used to compute the caloric expenditure rate applicable to the particular
subject that would be dependent of the age, weight or gender of the user,
contrary to the requirements of claim 1. Thus, even if the caloric
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expenditure rate is interpreted to be an activity parameter, like the life
activity index of Yoshimura, the caloric expenditure rate of Mault is
calculated based on the age, weight, or gender of the user, contrary to the
requirements of claim 1.
Moreover, there is no teaching in Mault that caloric expenditure rate is
calculated by multiplying an average of the absolute values of the signals or
samples of the signals. In fact, Mault does not even discuss any averaging
of absolute values of signals.
Thus, like Yoshimura, Mault does not disclose any calculation of an
activity parameter by multiplying an average of the absolute values of a
signal or samples of a signal and a universal metric that is not related to age,
weight or gender, as required by claim 1. We agree with Appellant that “the
Examiner (to support his rejection) needs to show a constant that is being
multiplied by an average of the absolute values of a signal of the
acceleration sensor” and “that constant must be a universal constant,
which is insulated from personal data” (App. Br. 7).
We find Brejnik does not cure the deficiencies of Yoshimura and
Mault. Brejnik merely recognizes that the pulse rate of an individual at any
given time is related to the number of calories burned by the person (FF 8).
Accordingly, even if combined, Yoshimura in view of Mault and
Brejnik does not teach or suggest “means arranged for calculating an activity
parameter… wherein said parameter is the Physical Activity Index (PAI) or
a derivative thereof, which is solely calculated by multiplying an average of
the absolute values of a signal or samples of a signal of the at least one
acceleration sensor with at least one constant,” and wherein “the constant is
a universal metric that is not related to age, weight, or gender” (claim 1). As
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such, we reverse the rejection of representative claim 1 and claims 3, 7 and
11 standing therewith over Yashimura in view of Mault and Brejnik.

Claims 4-6, 8-10, 14, and 15
We also find that Kadhiresan, Mault II, Sutton, and Teller do not cure
these deficiencies of Yashimura, Mault and Brejnik. As such, we will
reverse the rejection of claim 4 over Yoshimura in view of Mault, Brejnik,
and Kadhiresan; will reverse the rejection of claim 5 over Yoshimura in
view of Mault, Brejnik and Mault II; will reverse the rejection of claim 6
over Yoshimura in view of Mault, Brejnik and Sutton; and will reverse the
rejection of claims 8, 9, 14, and 15 over Yoshimura in view of Mault,
Brejnik and Teller.

VII. CONCLUSION
Appellants have shown that the Examiner erred in finding claims 1, 3-
9, 11, 14, and 15 fail to comply with the written description requirement and
finding claims 1, 3-11, 14, and 15 unpatentable over the teachings of the
prior art under 35 U.S.C. § 103(a).

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VIII. DECISION
We have not sustained the Examiner's rejection with respect to any
claim on appeal. Therefore, the Examiner’s decision rejecting claims 1, 3-
11, 14, and 15 is reversed.

REVERSED

PEB

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