Valencell, Inc.

Patent Trials and Appeals Board

Feb 2, 2021

2020002855 (P.T.A.B. Feb. 2, 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.
14/606,454 01/27/2015 Steven Francis LeBoeuf 9653-3TSCT9 1011
20792 7590 02/02/2021
MYERS BIGEL, P.A.
PO BOX 37428
RALEIGH, NC 27627
EXAMINER
DOWNEY, JOHN R
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
02/02/2021 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 2020-002855
Application 14/606,454
Technology Center 3700
____________

Before EDWARD A. BROWN, BRETT C. MARTIN, and
BRANDON J. WARNER, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks review under 35 U.S.C. § 134(a) of the Examiner’s
decision rejecting claims 1–5, 7–14, 16–20, 22, 24, and 26–28, which are all
the pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Valencell, Inc. as the real party in
interest. Appeal Br. 2.
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CLAIMS
Appellant’s disclosure “relates generally to health and environmental
monitors and, more particularly, to wireless health and environment
monitors.” Spec. 1, ll. 13–15.
Claims 1, 10, and 16 are independent. Claim 1, reproduced below,
illustrates the claimed subject matter.
1. An earpiece module configured to be attached to an ear
of a subject, the earpiece module comprising:
a telemetric module configured to wirelessly transmit and
receive data;
an energy-harvesting power source configured to collect
and store at least one of solar energy, mechanical energy,
energy from movement of the subject, electromagnetic energy,
or thermal energy, wherein the energy-harvesting power source
is mounted directly to the telemetric module;
a sensor module rigidly mounted directly to the
telemetric module and coupled to the energy-harvesting power
source, wherein the sensor module comprises at least one
sensor configured to sense physiological information from the
subject, wherein the at least one sensor comprises at least one
optical emitter configured to direct optical energy to at least one
region of the ear and at least one optical detector configured to
sense absorbed, scattered, and/or reflected optical energy
emanating from the at least one ear region; and
an additional sensor module electrically connected to the
sensor module via a contact lead and flexibly mounted to a
housing of the earpiece module at a location different from a
location of the sensor module.

Appeal Br. 19 (Claims App.).

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Ozguz US 2002/0180605 A1 Dec. 5, 2002
Schulze US 6,556,852 B1 Apr. 29, 2003
Mansy US 2004/0032957 A1 Feb. 19, 2004
Shalon US 2006/0064037 A1 Mar. 23, 2006

REJECTIONS
Claims 1, 2, 4, 5, 7–11, 13, 14, 16, 17, 19, 20, 22, 24, and 26–28 are
rejected under 35 U.S.C. § 103(a) as being unpatentable over Shalon,
Schulze, and Ozguz.
Claims 3, 12, and 18 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shalon, Schulze, Ozguz, and Mansy.

ANALYSIS
Obviousness over Shalon, Schulze, and Ozguz
Claims 1, 2, 4, 5, 7–9, and 24
Claim 1 calls for “an energy-harvesting power source . . . mounted
directly to the telemetric module,” “a sensor module rigidly mounted directly
to the telemetric module and coupled to the energy-harvesting power
source,” and “an additional sensor module electrically connected to the
sensor module via a contact lead and flexibly mounted to a housing of the
earpiece module at a location different from a location of the sensor
module” (herein, also “additional sensor module limitation”). Appeal Br. 19
(Claims App.) (emphasis added).
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The Examiner finds that Shalon discloses an earpiece module
comprising a telemetric module, an energy-harvesting power source, at least
one sensor coupled to the energy-harvesting power source and configured to
sense physiological information from the subject, and the inclusion of
multiple sensors. Final Act. 5–8 (citing Shalon ¶¶ 18, 115–116, 251, 284,
Figs. 1C, 2). The Examiner acknowledges that Shalon does not specifically
teach that the sensors and energy source are “rigidly mounted directly to the
telemetric module.” Id. at 8.
The Examiner finds that Ozguz teaches a wearable biomonitor
including sensors (electrodes 80) and a power source (battery 105)
incorporated onto a telemetric module (sensor module 10). Final Act. 8; see
Ozguz Figs. 2A, 3A. The Examiner determines:
it would have been obvious to one of ordinary skill . . . to
modify Shalon . . . to provide an integrated telemetric module
having the other components, e.g. sensor(s), energy source,
processors, etc. integrated directly thereon, as taught by Ozguz,
for the purpose and advantage of providing a more compact,
integrated device in which more functionality is achieved by
the single, portable device, and further because doing so would
amount to merely adapting known improvements demonstrated
in similar devices in a similar way.
Id. at 8–9 (emphasis added). The Examiner explains that “Ozguz is merely
used to illustrate that it was known to provide components such as sensors,
power sources etc. integrated with a telemetric module, i.e. all provided in a
common module in an integrated fashion.” Ans. 24.
The Examiner relies on Schulze for the additional sensor module
limitation of claim 1. Particularly, the Examiner finds that Figures 1 and 3
of Schulze show sensors mounted at external portions of the earpiece
housing and using flexible leads to transmit collected data. Final Act. 9.
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The Examiner determines that it would have been obvious to further modify
Shalon “to provide flexibly mounted additional sensor(s) which transmit
their data via flexible leads, as taught by Schulze, to allow such sensor(s) to
be mounted at a greater variety of locations in the device housing.” Id.
Appellant contests the Examiner’s proposed combination of teachings.
First, Appellant contests the Examiner’s reliance on Ozguz to address the
deficiency in Shalon that the battery (power source) and sensor unit are not
disclosed as being mounted directly to a telemetric module, as claimed.
Appeal Br. 8. Appellant contends that “Ozguz provides the module 10 as a
flexible ambulatory/self-contained bio-sensor module in a form similar to an
adhesive bandage.” Id. (boldface omitted). Appellant notes that Ozguz
discloses that prior art sensor systems comprise sensor modules with rigid,
inflexible circuity, making them “unsuitable for comfortably adhering and
conforming to a localized portion of a human body.” Id. (citing Ozguz ¶ 5)
(boldface omitted). Appellant contends that Ozguz discloses that including
the flexible battery within module 10 permits a person to be monitored
without being unencumbered by cords or battery packs, and also reduces
circuit path length, reducing noise. Id. at 8–9 (citing Ozguz ¶¶ 8–9).
According to Appellant, Ozguz emphasizes “the importance of the flexibility
and integrated nature of the entire device provided therein” (id. at 9), and
“[o]nly the electrodes are described as being either rigid or flexible, while
‘all of the other elements [including the battery pack] of the sensor module
are flexible’” (id. at 10 (citing Ozguz ¶¶ 19–20)).
Appellant also contends that the Examiner’s position that “the various
advantages of flexible mounting as seen in e.g. Schulze (as opposed to direct
integration as seen in [e.g.] Ozguz) are readily visible, i.e., a greater range of
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mounting locations are possible,” is an admission that Schulze’s
“advantages” include advantages that are opposed to the advantages of
Ozguz. Appeal Br. 10–11; Final Act. 9. Appellant asserts, “[w]here the
teachings of two or more prior art references conflict, the [E]xaminer must
weigh the power of each reference to suggest solutions to one of ordinary
skill in the art, considering the degree to which one reference might
accurately discredit another.” Id. at 11 (citing MPEP § 2143.01, which cites
In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991)) (boldface omitted).
As to Appellant’s contention that the teachings of Ozguz and Schulze
conflict with each other, the Examiner states:
[Appellant’s] argument is not persuasive because in the
proposed modification, one or more of Shalon’s sensors would
be integrated with the telemetric module in view of Ozguz, and
would thus provide the benefits of Ozguz’[s] teachings,
whereas one or more other of Shalon’s sensors (i.e. the
equivalent to Applicant’s claimed “additional” sensor) would
be provided along the device housing via a flexible connection
as taught by Schulze, to thereby provide Shalon the benefit of
Schulze’s configuration. In other words, some portions of the
proposed modification yield the benefit of Ozguz’s
configuration, whereas other portions of the proposed
modification yield the benefit of Schulze’s configuration.
Neither of these modification[s] is rendering Ozguz or Schulze
unsatisfactory for its intended purpose because neither Ozguz
[n]or Schulze [is] being modified since neither of them is the
base/primary reference. Rather, the proposed modification
takes the base reference, Shalon, and provides different
modifications in view of advantages present in other prior art
references (i.e. Ozguz and Schulze). Furthermore, since these
teachings are modifying different underlying parts of Shalon,
the modifications themselves do not cancel each other out or
somehow render each other inoperable.
Final Act. 3–4 (boldface omitted).
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Appellant contends that the Examiner’s statement shows hindsight
bias. Appeal Br. 12. According to Appellant, “adding ‘flexible leads,’ as
taught by Schulze, would defeat the reason why the Examiner is citing to
Ozguz in the first place. The flexible leads would create a less compact
and less integrated device.” Id. Appellant also contends that “the
teachings of Ozguz and Schulze diverge to such a degree that, while each
may have advantages, each document rejects the teachings of the other in
favor of its own. It follows that one of ordinary skill in the art might
combine one of Ozguz or Schulze into Shalon, but not both.” Id. at 12–13.
Appellant further contends that “Ozguz’s discussion of the problems of
‘longer circuit paths between the monitoring circuitry and the physiological
interface elements’ is a clear suggestion to one of ordinary skill in the art
that longer paths, such as the flexible lead system of Schulze, would have
noise issues, because that is explicitly what is taught by Ozguz.” Id. at 13.
Appellant contends that “[a] prior art reference must be considered in its
entirety, i.e., as a whole, including portions that would lead away from the
claimed invention.” Id. (citing W.L. Gore & Assoc., Inc. v. Garlock, Inc.,
721 F.2d 1540 (Fed. Cir. 1983)).
The Examiner responds that Ozguz shows “that it was . . . known to
provide sensors integrated and rigidly mounted with a telemetric module,
thereby providing a more compact and integrated device” and Schulze
shows “that it was known to provide sensors flexibly mounted at different
positions of an earpiece housing so that they may be properly aimed toward
the wearer’s skin.” Ans. 22. The Examiner explains that the rejection
“simply combine[s] these two known configurations in a single device, i.e. to
simultaneously provide (1) a first sensor(s) rigidly mounted (as in Ozguz)
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and (2) a second other/additional sensor(s) flexibly mounted to the earpiece
housing (as in Schulze).” Id. (boldface omitted).
The Examiner submits:
Contrary to Appellant’s argument, the recognizable
benefits of each configuration do not cancel each other out
when combined in a single device, nor do they necessarily
discourage combining both approaches into a single device.
For instance, one of the taught benefits of the compact
integration in Ozguz is the reduction of wires/ cables (i.e.
between the sensor and the other components of the module,
e.g. the processor). In the proposed combination, this benefit
IS STILL PRESENT for the one or more integrated sensors
(i.e. for those sensors, the need to have wires is avoided, and
thus the benefit is realized). Contrary to Appellant’s argument,
the fact that the additional flexibly mounted sensor(s) (the
one(s) modified in view of Schulze) would require a wired
connection does not negate the fact that the actual
advantage/benefit of compactness and reduction in total wiring
was realized for the integrated sensors (in other words, taking
away some of the wires is still predictably advantageous,
even if not all of them are removed).
Ans. 22–23. Further, the Examiner submits that the advantages provided by
Schulze would likewise be present despite other sensors being integrated
with the telemetric module. Id. at 23. The Examiner further submits that
one of ordinary skill in the art would have weighed the pros and cons of each
approach. Id.
We agree with the Examiner. Even though the proposed combination
would result in the additional sensor module being flexibly mounted to the
housing and having a wired connection, we agree with the Examiner that this
does not alone negate the advantage/benefit of compactness and reduction in
total wiring that would be realized for the integrated sensors. Ans. 22–23.
The flexible mounting of the additional sensor module would provide
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associated advantages of Schulze. A combination of references may
simultaneously have both advantages and disadvantages, and the benefits,
both lost and gained, are to be weighed against each other. See Medichem,
S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006); see also In re
Urbanski, 809 F.3d 1237, 1244 (Fed. Cir. 2016) (“As the Board properly
found, one of ordinary skill would have been motivated to pursue the
desirable properties taught by Wong, even if that meant foregoing the
benefit taught by Gross. And Urbanski’s claims do not require Gross’s
benefit that is arguably lost by combination with Wong.”). The proposed
combination of teachings provides advantages of both Ozguz and Schulze,
even if it may simultaneously have some disadvantage.
In the Reply Brief, Appellant disagrees with the Examiner’s reasoning
for the reduction of wires in the combination, stating that Ozguz discloses
that “‘[t]he sensor module has no wires or cords extending to
monitoring/receiving equipment.’” Reply Br. 3 (citing Ozguz ¶ 7). As
noted by Appellant, Ozguz also discloses, “‘[a]s can be appreciated from
FIG. 1, the sensor module 10 is completely unobtrusive, is self-contained,
and is void of the monitor wires and other encumbrances that have
conventionally entangled arms 35 and other parts of the subject body 20
during monitoring.’” Id. (citing Ozguz ¶ 38). Appellant does not, however,
persuasively explain the relevance of such “wires or cords extending to
monitoring/receiving equipment,” “monitor wires,” or “other encumbrances”
as to the Examiner’s actual proposed combination, which would not appear
to include them, and thus, would not have such disadvantages.
We are also not persuaded by Appellant that the teachings of Ozguz
and Schulze conflict with each other in the modified device. In Young the
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court stated that “[w]hen prior art contains apparently conflicting references,
the Board must weigh each reference for its power to suggest solutions to an
artisan of ordinary skill” and that “[t]he Board, in weighing the suggestive
power of each reference, must consider the degree to which one reference
might accurately discredit another.” Young, 927 F.2d at 591. In Young, the
potential “discrediting” related to statements in a prior art article expressly
discussing aspects of the primary reference in the rejection. See id. at 591–
92. Here, neither Ozguz nor Schulze discusses the other. We are not
persuaded that the differences between their teachings, as relied on by the
Examiner, result in a “conflict[]” precluding the combination of references.
See id. at 591.
Appellant also contends that the Examiner’s statement that one would
look to Schulze for “the advantages of mounting the additional sensors in the
earpiece housing in view of Schulze, namely to position those sensors to aim
directly at the wearer’s skin,” ignores that Ozguz already satisfies these
advantages, albeit not in the way claimed. Reply Br. 3–4. However, even if
Ozguz provides such teachings, the Examiner has also provided additional
reasons for modifying Shalon in view of Schulze. See Final Act. 9.
Accordingly, we are not persuaded that the Examiner’s application of
Schulze in the combination is merely redundant.
Second, Appellant contends that “a primary component of the self-
contained module of Ozguz is the inclusion of the flexible power source, as
providing the flexible battery within the module 10 permits a person to be
monitored while unencumbered by cords or battery packs,” but the proposed
combination fails to teach or suggest making flexible any “energy-harvesting
power source” allegedly taught by Shalon. Appeal Br. 13. Although
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Appellant acknowledges that the claim does not require a flexible energy-
harvesting power source, Appellant asserts that “Ozguz discusses at length
the importance of the flexibility and integrated nature of the entire device
provided therein.” Id. at 13–14 (citing Ozguz ¶ 5). According to Appellant:
If the person of ordinary skill in the art is motivated to “provide
a more compact, integrated device,” as alleged by the
Examiner, and the only way that a “more compact, integrated
device” is provided in Ozguz is through a device in which all
elements (except the skin-contacting electrodes) are flexible,
then the resultant modified device from Shalon that is a “more
compact, integrated device” is one in which all elements
(including the power source) is flexible. However, there is no
finding on record that one of ordinary skill in the art would
have a reasonable expectation of success in making the “power-
harvesting” components of Shalon flexible, and as such, there
can be no finding of obviousness.
Appeal Br. 14.
It appears to be Appellant’s position that there is no reasonable
expectation of success for a modification the Examiner is not proposing, but,
nonetheless, is required. The Examiner responds:
Despite the fact that Ozguz’s particular device is flexible, it is
abundantly clear that integrated components do not have to
necessarily be flexible. Any one of ordinary skill would
immediately understand that non-flexible systems can still be
integrated, i.e. with components rigidly mounted to each other,
and thus provide the advantages of e.g. compactness
WITHOUT necessarily also having to be flexible.
Ans. 24. The Examiner explains that the primary reason Ozguz teaches a
flexible device is because it is directed to devices that adhere to the skin, and
one of ordinary skill in the art would understand that flexibility is extremely
important for such devices. Id. Conversely, the Examiner submits, Shalon
is directed to an ear-worn device having components located within the
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housing, which is not necessarily flexible, and thus, there is no immediate
need to add flexibility to internal, rigidly-mounted components, such as
Shalon’s power source. Id. The Examiner asserts, “[M]ore importantly, it is
clear the flexibility would not be required for Shalon’s power source to
function in an integrated fashion in the proposed combination of references.”
Id. at 24–25. Appellant does not apprise us of error in this reasoning.
Appellant replies that the Examiner’s position “ignores the simple fact
that the device of Ozguz achieves its integration and compactness by making
every component therein flexible.” Reply Br. 4 (citing Ozguz ¶ 10). This
contention is unpersuasive for reasons discussed above.
For the above reasons, we sustain the rejection of claim 1, and claims
2, 4, 5, 7–9, and 24, as unpatentable over Shalon, Schulze, and Ozguz.
Claims 10–14 and 26
Appellant reproduces claim 10 with added emphasis and contends that
it is patentable for at least the same reasons as claim 1. Appeal Br. 14–15.
As we are unpersuaded of a deficiency in the rejection of claim 1, we sustain
the rejection of claim 10, and dependent claims 11–14 and 26, as
unpatentable over Shalon, Schulze, and Ozguz for the same reasons as for
claim 1.
Claims 16–20, 22, 27, and 28
Appellant reproduces claim 16 with added emphasis and contends that
it is patentable for at least the same reasons as claim 1. Appeal Br. 15–16.
Accordingly, we sustain the rejection of claim 16, and dependent claims 17–
20, 22, 27, and 28, as unpatentable over Shalon, Schulze, and Ozguz for the
same reasons as for claim 1.

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Obviousness over Shalon, Schulze, Ozguz, and Mansy
For dependent claims 3, 12, and 18, Appellant contends that Mansy
does not cure the deficiency in the rejection of parent claims 1, 10, and 16,
respectively. Appeal Br. 16–17. As we are unpersuaded of a deficiency in
the rejection of claims 1, 10, and 16, we sustain the rejection of claims 3, 12,
and 18 as unpatentable over Shalon, Schulze, Ozguz, and Mancy for the
same reasons as for claims 1, 10, and 16, respectively.

CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4, 5, 7–
11, 13, 14,
16, 17, 19,
20, 22, 24,
26–28
103(a) Shalon, Schulze,
Ozguz
1, 2, 4, 5,
7–11, 13,
14, 16, 17,
19, 20, 22,
24, 26–28

3, 12, 18 103(a) Shalon, Schulze,
Ozguz, Mansy
3, 12, 18
Overall
Outcome
1–5, 7–14,
16–20, 22,
24, 26–28

TIME PERIOD FOR 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