Valencell, Inc.

Patent Trials and Appeals Board

Jan 25, 2021

2020003511 (P.T.A.B. Jan. 25, 2021)

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.
14/264,850 04/29/2014 Steven Francis LeBoeuf 9653-3TSCT7 1959
20792 7590 01/25/2021
MYERS BIGEL, P.A.
PO BOX 37428
RALEIGH, NC 27627
EXAMINER
BALDWIN, NATHAN AARON
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
01/25/2021 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
myersbigel_pair@firsttofile.com
uspto@myersbigel.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN FRANCIS LEBOEUF, JESSE BERKLEY TUCKER,
and MICHAEL EDWARD AUMER
Appeal 2020-003511
Application 14/264,850
Technology Center 3700
Before JOHN C. KERINS, CHARLES N. GREENHUT, and
MICHAEL L. HOELTER, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 15–26.2 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Valencell, Inc.
Appeal Br. 2.
2 The remaining rejected claims having been cancelled or their rejections
withdrawn.
Appeal 2020-003511
Application 14/264,850

2
CLAIMED SUBJECT MATTER
The claims are directed to a wearable earpiece having integrated
footstep sensors. Claim 15, reproduced below, is the sole independent claim
before us:
15. An earpiece module, comprising:
an earpiece fitting adapted to be positioned within an ear
of a subject;
a power source;
a processor;
at least one footstep sensor configured to sense footstep
information from an ear canal of the ear of the subject; and
a sensor module integrated within the earpiece fitting,
wherein the sensor module is coupled to the power source and
the processor, wherein the sensor module comprises at least one
optical emitter configured to direct optical energy to a region of
the ear and at least one optical detector configured to sense
absorbed, scattered, and/or reflected optical energy emanating
from the ear region, and wherein the processor is configured to
process signals produced by the at least one optical detector to
produce processed signals containing physiological information
of the subject.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Aceti US 6,283,915 B1 Sep.4, 2001
Schulze 6,556,852 B1 Apr. 29, 2003
Takiguchi US 2005/0192516 A1 Sept. 1, 2005
Berg US 2006/0140425 Al Jun. 29, 2006
Nielsen US 2009/0069645 A1 Mar. 12, 2009

Appeal 2020-003511
Application 14/264,850

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REJECTIONS3
Claims 15, 21, 23, 25, and 26 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Nielsen and Takiguchi. Non-Final Act. 10.
Claim 20 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Nielsen, Takiguchi, and Berg. Final Act. 12.
Claims 16, 17 and 19 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nielsen, Takiguchi, and Aceti. Final Act. 13.
Claims 18 and 24 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Nielsen, Takiguchi, and Schulze. Final Act. 14.
Claim 22 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Nielsen, Takiguchi, and Luo. Final Act. 15.
OPINION
The Examiner correctly found Nielsen to disclose the basic device of
claim 15, albeit without a footstep sensor. Non-Final Act. 10–11. The
Examiner correctly found Takiguchi to disclose a footstep sensor, which can
be used as a pedometer to estimate the speed and distance traveled by the
wearer and also to identify the wearer based on their gait pattern. Final Act.
11. The Examiner concluded that it would have been obvious to incorporate
Takiguchi’s footstep sensor in order to achieve these stated objectives with
Nielsen’s device. Final Act. 11. Appellant contends the Examiner’s
proposed combination is flawed for several reasons.

3 The Examiner withdrew the rejections of claims 1–4, 6, and 8–10. Ans. 10.
Presumably, the Examiner also intended to withdraw the rejections against
claims 27 and 28 which build upon the rejection of parent independent claim
1. See Ans. 3–10 (reproducing pending rejections and omitting any rejection
against claims 27 and 28). Claims 11 and 12, rejected in the appealed action,
were cancelled September 20, 2019.
Appeal 2020-003511
Application 14/264,850

4
Appellant first contends that Takiguchi’s “microphone must be
external” and therefore Takiguchi’s sensor and associated detection method
would not operate with Nielsen’s internal microphone. Appeal Br. 11; Reply
Br 2–3. Appellant premises this argument, in part, on an asserted broadest
reasonable interpretation of “vicinity” as that term is employed by
Takiguchi. Appeal Br. 12 (citing Takiguchi para. 20). The broadest
reasonable interpretation is a standard used for construing claim language,
not for assessing subject matter disclosed in a reference. When considering
the prior art, a decision maker must consider what it teaches or fairly
suggests to the skilled artisan. Here, as the Examiner correctly points out,
Nielsen is relied upon for positioning the device “within an ear” and sensing
or retrieving information “from an ear canal of the ear of the subject.” Ans.
12. Thus, the proper inquiry under § 103(a) with regard to Takiguchi’s use
of the term “vicinity” is not whether “vicinity” is reasonably interpreted to
include locations within the ear. Ans. 12. Something along those lines might
be required to establish anticipation based on Takiguchi alone, but not
obviousness predicated on the combined teachings of Nielsen and
Takiguchi. The more relevant question with regard to Takiguchi’s use of the
term “vicinity” is whether Takiguchi’s disclosure in this regard teaches away
from sensor placement internal to the ear, or if it does not rise to the level of
teaching away, whether one skilled in the art would not have at least had a
reasonable expectation of success in making the proposed combination in
light of this teaching.
The weight of evidence supports the Examiner’s position that
Takiguchi does not teach away and the skilled artisan would have had a
reasonable expectation of success in employing Takiguchi’s footstep
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Application 14/264,850

5
detection method using Nielsen’s internally located sensors (e.g.,
microphone). As the Examiner correctly points out, the very purpose for the
“vicinity” language is so Takiguchi’s microphone can pick up “vibrations
[that] are transmitted through the body.” Ans. 12 (quoting Takiguchi para.
20). We are not apprised of any evidence or technical reasoning
demonstrating that an internal microphone location could not operate as
well, if not better, in achieving this stated purpose.
Appellant emphasizes that Takiguchi’s microphone picks up “sound
transmitted through the air.” Appeal Br. 12 (quoting Takiguchi para. 50).
However, noticeably absent from Appellant’s quotation is any discussion of
the context in which Takiguchi makes that statement: the filtering out of
unwanted or undesirable portions of the ambient sounds. If anything,
internalizing the microphone would appear to further Takiguchi’s objective
of filtering out unwanted portions of the ambient sound while being able to
analyze vibrations transmitted through the body.
Appellant next argues that inner ear microphone placement would not
be expected to work for Takiguchi’s footstep sensor because Takiguchi is
looking for a footstep frequency of about one per second (1 Hz), similar to
that of the human pulse. Appeal Br. 13 (citing Takiguchi para. 72). This
argument is based on an oversimplification of Takiguchi’s system. To the
extent it is used, simple gait frequency or steps the user takes per second, is
clearly not the only factor used in Takiguchi’s process for determining
whether a sound originates from a foot strike. Ans. 14 (citing Takiguchi
para. 77; figs. 7–11). Rather, the pattern and intensity distribution
(Takiguchi figs. 4, 5) of frequencies within each potential foot strike sound
is analyzed. Takiguchi para. 77. Takiguchi initially applies a low-pass filter
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Application 14/264,850

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for removing frequencies above, for example, 200 Hz (para. 50; Fig. 7)
and/or band pass filters centered around 10, 20, and 30 Hz (para. 90; Fig. 9).
It is the intensity levels of the sounds in those ranges that Takiguchi analyzes
by comparing to a known dataset in a gait database (Fig. 10; paras. 83, 92–
94). Further, it is not only the intensity levels, but the pattern of intensity
levels caused by the heel-strike portion of the gait, followed by the toe-strike
portion of the gait, that Takiguchi’s system takes into consideration.
Takiguchi para. 58. Takiguchi’s system clearly provides a more careful and
complex analysis than just considering “one second per step” or noises
occurring at approximately 1 Hz, or in a range similar to that of a human
pulse as Appellant argues. Furthermore, in addition to the pattern analysis,
the frequencies Takiguchi actually focuses on do not themselves even appear
to be within the range of the human pulse of 1–1.66 Hz according to
Appellant’s own evidence (Appeal Br. 13 (citing mayoclinic.org)). We are
not apprised of sufficient evidence or technical reasoning to support
Appellant’s contention that the human pulse would interfere with
Takiguchi’s gait detection schema. The weight of evidence before us
strongly favors the opposite conclusion that Takiguchi’s method would be
able to easily distinguish pulse sounds from those produced by footsteps.
Lastly, Appellant argues there would have been no reason to
incorporate Takiguchi’s footstep sensor into Nielsen’s device. This argument
is premised on the assertion that the “only discussed usage in Nielsen” is
peripheral shutdown, and that would occur 1) at a time when there is no need
or desire to track steps and 2) in a medical environment where there are
better methods of identifying a wearer. Appeal Br. 14. Appellant’s argument
fails because we do not accept the premise that peripheral shutdown is the
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Application 14/264,850

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“only” usage that can be reasonably inferred from Neilson. Peripheral
shutdown is mentioned in Nielsen only as an example of a particular
instance when a sensor located in the ear would provide advantages over
sensors located elsewhere due to the ear canal’s proximity to the Carotid
arteries. Para. 27. One skilled in the art would not reasonably understand this
discussion in Neilson to imply that Nielsen’s device is “only” intended to be
used during peripheral shutdown. Of course, there are many other
applications where it is useful to sense “blood pressure, respiration,
perfusion index, blood oxygen, pulse rate, and body temperature.” Nielsen
para. 1. We agree with the Examiner that there would be a clear motivation
to couple the information obtained in Nielsen with information such as that
which can be obtained via Takiguchi’s device, about the user’s activity level
(Non-Final Act. 11) because a user’s activity level can influence some, if not
all, of the physiological parameters measured by Nielsen. We also agree
with the Examiner that Nielsen may benefit from an additional or alternative
mechanism by which to determine the identity of the user (Final Act. 11)
particularly, for example, where Nielsen’s device transmits its data for
remote monitoring (See Nielsen para. 36 (cited at Final Act. 10 and 11)).
For the foregoing reasons, we sustain the Examiner’s rejections.
CONCLUSION
The Examiner’s rejections are AFFIRMED.
Appeal 2020-003511
Application 14/264,850

8
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
15, 21, 23,
25, 26
103(a) Nielsen, Takiguchi 15, 21, 23,
25, 26

20 103(a) Nielsen,
Takiguchi, Berg
20
16, 17, 19 103(a) Nielsen,
Takiguchi, Aceti
16, 17, 19
18, 24 103(a) Nielsen,
Takiguchi, Schulze
18, 24
22 103(a) Nielsen,
Takiguchi, Luo
22
Overall
Outcome
15–26

RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED