Valencell, Inc.Download PDFPatent Trials and Appeals BoardMar 31, 20212020005340 (P.T.A.B. Mar. 31, 2021) Copy Citation 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. 14/820,910 08/07/2015 Steven Francis LeBoeuf 9653-8TSDVCTDV 6041 20792 7590 03/31/2021 MYERS BIGEL, P.A. PO BOX 37428 RALEIGH, NC 27627 EXAMINER STEINBERG, AMANDA L ART UNIT PAPER NUMBER 3792 NOTIFICATION DATE DELIVERY MODE 03/31/2021 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 2020-005340 Application 14/820,910 Technology Center 3700 ____________ Before BIBHU R. MOHANTY, MICHAEL C. ASTORINO, and BRUCE T. WIEDER, Administrative Patent Judges. WIEDER, Administrative Patent Judge. DECISION ON APPEAL Appellant1 seeks review under 35 U.S.C. § 134 from the Examiner’s final rejection of claims 1–5, 8–13, and 19–26. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 We use the word “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. 3.) Appeal 2020-005340 Application 14/820,910 2 CLAIMED SUBJECT MATTER Appellant’s “invention relates generally to health and environmental monitoring and, more particularly, to health and environmental monitoring apparatus.” (Spec. 1, ll. 15–17.) Claims 1, 8, and 21 are the independent claims on appeal. Claim 8 is illustrative. It recites: 8. A method of monitoring a subject via an earbud module, the method comprising: positioning the earbud module within an ear of the subject, wherein the earbud module comprises a housing, wherein the earbud module housing comprises a sensor region with an optical sensor, and wherein the sensor region is contoured to matingly engage a respective selected region of the ear; and detecting or measuring subject physiological information from the selected ear region via the optical sensor and producing a physiological information signal, and detecting or measuring subject motion information from the selected ear region via the optical sensor and producing a motion noise information signal that is separate from the physiological information signal. REJECTIONS Claims 8–13 and 20–26 are rejected under 35 U.S.C. § 102(e) as anticipated by Ma (US 2009/0177097 A1, pub. July 9, 2009). Claims 1–5 and 19 are rejected under 35 U.S.C. § 103(a) as unpatentable in view of Ma, Rallison (WO 96/07947, pub. Mar. 14, 1996), and Hisano (US 2002/0091049 A1, pub. July 11, 2002). Appeal 2020-005340 Application 14/820,910 3 ANALYSIS The § 102(e) rejection “[A]n invention is anticipated if the same device, including all the claim limitations, is shown in a single prior art reference. Every element of the claimed invention must be literally present, arranged as in the claim.” Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1236 (Fed. Cir. 1989). “Anticipation can occur when a claimed limitation is ‘inherent’ or otherwise implicit in the relevant reference.” Standard Havens Prods., Inc. v. Gencor Indus., Inc., 953 F.2d 1360, 1369 (Fed. Cir. 1991). “[T]he mere recitation of a newly discovered function or property, inherently possessed by things in the prior art, does not cause a claim drawn to those things to distinguish over the prior art.” In re Swinehart, 439 F.2d 210, 212–13 (CCPA 1971). The Examiner finds that Ma teaches “detecting or measuring subject physiological information from the selected ear region via the optical sensor and producing a physiological information signal (¶[0035] the optical elements are configured for heart rate and percent oxygen saturation detection . . .)” (Final Action 4), and “detecting or measuring subject motion information from the selected ear region via the optical sensor” (id. (citing Ma ¶10, Fig. 2)). Appellant argues that “the Examiner cites to a single signal, illustrated in Ma’s Figure 2 . . . for both the subject physiological information and the subject motion information.” (Appeal Br. 19.) Appellant argues that “the recitation of two separate sets of information, as well as the ‘detecting or measuring’ of these separately recited pieces of information may not reasonably be interpreted as the single signal represented in Ma.” (Id.) Appeal 2020-005340 Application 14/820,910 4 Ma would therefore be reasonably interpreted as only describing a single mixed signal in which the components of the mixed signal are incapable of being easily distinguished. Also . . . , Appellant’s specification confirms the interpretation that these two pieces of information are portions of separate signals, thus providing additional support for the conclusion that the Examiner’s application of Ma is unreasonable.” (Id.) As an initial matter, we construe the claim terms “detecting or measuring” in claim 8. Claims are construed in light of the specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990) (“During examination, ‘claims . . . are to be given their broadest reasonable interpretation consistent with the specification, and . . . claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art.’”)). We are also mindful that “[t]he general rule . . . is that the claims of a patent are not limited to the preferred embodiment.” Karlin Tech., Inc. v. Surgical Dynamics, Inc., 177 F.3d 968, 973 (Fed. Cir. 1999). Claim 8 recites “detecting or measuring subject physiological information from the selected ear region via the optical sensor and producing a physiological information signal” and “detecting or measuring subject motion information from the selected ear region via the optical sensor and producing a motion noise information signal.” (Emphasis added.) In claim 8, both of the detecting or measuring steps obtain information from the same selected ear region and from the same optical sensor. Claim 8 does not specifically recite that the detecting or measuring of the subject physiological information must be performed separately from the detecting Appeal 2020-005340 Application 14/820,910 5 or measuring of the subject motion information. Claim 8 does not specify how the information is detected or measured by the optical sensor, nor does it restrict other information from being detected or measured simultaneously. It is with only with regard to the produced information signals that claim 8 specifies that there be a separation, i.e., that the produced motion noise information signal is separate from the produced physiological information signal. Nonetheless, Appellant argues that “[i]t is improper to rely on the same structure as disclosing two separate claimed elements for the purposes of anticipation.” (Appeal Br. 14 (emphasis omitted).) Appellant cites, e.g., Lantech, Inc. v. Keip Machine Co., 32 F.3d 542 (Fed. Cir. 1994) and In re Robertson, 169 F.3d 743 (Fed. Cir. 1999) in support of the argument. (Id.) Unlike the system claims in Lantech, claim 8 recites a method. Moreover, the system claims in Lantech recited “[a]t least two conveyers.” Lantech, 32 F.3d at 544–45. The Federal Circuit determined that [t]he district court’s error can be traced to its reiteration of the claims just prior to its analysis wherein it omitted the “at least two” language from the claims. Based on the thus redacted claims, the district court stated: “[T]here is no word or phrase which requires the conveyor means or conveyors to be structurally independent of each other.” That omission effectively read out the “at least two” limitation which is clearly stated in the claims. Id. at 546. Here, Appellant’s claim 8 does not recite, e.g., “at least two” detecting or measuring steps. In re Robertson, like Lantech, claimed a device. The device claim in Robertson was to a mechanical fastening system. The claim specifically recited “a first mechanical fastening means,” “a second mechanical fastening Appeal 2020-005340 Application 14/820,910 6 means,” and “a third mechanical fastening means.” In re Robertson, 169 F.3d at 744. The cited prior art did not include a third fastening means. We do not see any recitation in Appellant’s claim 8 of, e.g., a first detecting or measuring step separate from a second detecting or measuring step. Claim 8 simply recites that the detecting or measuring steps obtain information from the same selected ear region and from the same optical sensor. It is the produced motion noise information signal and the produced physiological information signal that claim 8 requires be separate. Appellant’s argument that “Appellant’s specification makes clear that the extracting of physiological information and the extracting of motion information are separate operations” merely cites to certain embodiments of the invention. (Appeal Br. 14–15 (referring to Figures 11A and 11B which relate to “some embodiments” (see Appeal Br. 7)).) But, even if we agreed that the embodiment relied on by Appellant discloses separate extractions, Appellant does not persuasively argue why the broadest reasonable interpretation of claim 8 should be limited to a particular embodiment. See Karlin Tech., Inc., 177 F.3d at 973. Applying a broadest reasonable interpretation consistent with the Specification, we agree with the Examiner that claim 8 does not require two separate collections of different data streams. (See Final Action 4.) Ma discloses “[a] noninvasive light sensor for detecting heart beat signals ha[ving] a circular support member engageable circumferentially with a body part of a person.” (Ma, Abstract.) By way of background, Ma explains that “[m]easuring heartbeat rate and SpO2 (blood oxygenation) is based on the absorption of red and infrared light. The technology is very Appeal 2020-005340 Application 14/820,910 7 sensitive to motion . . . .” (Id. ¶ 9). By way of further background, Ma discusses a prior art device comprising two light sources, typically using LEDs of known wavelength. The wavelengths of the two light sources are 880-920 nm (Infrared or IR) and 660 nm (Red) respectively. To obtain heart rate (HR) only the IR light source is needed. To calculate blood oxygen levels (pulse oximetry) both the Red and the IR LED’s would need to be used. In either case a photo detector is used to sense the light that has been transmitted or reflected into the skin or application sight. This transmission of light into an area of the body that is carrying blood and reflected back to the photo detector will be effected by the pulsiltile [sic] flow caused by each heartbeat. This slight change in light intensity is detected and extracted to create a waveform commonly known as a plethysmograph. This waveform or the actual detection of the pulsiltile [sic] flow can be converted into heart rate in the absent [sic] of motion. To calculate pulse oximetry the IR and the red light emissions are separately analyzed and then used in an empirical calculation to generate a predetermined blood oxygen level. (Id.) Figure 2 of Ma is reproduced below. Appeal 2020-005340 Application 14/820,910 8 Figure 2 “is a graphical illustration of the heartbeat signal with motion noise for a prior art earphone sensor.” (Id. ¶ 17.) Figure 2 “shows an example of noise induced by motion in an IR LED and IR heartbeat/SpO2 sensor. This noise signal may be of similar or even larger amplitude than the heartbeat signal . . . .” (Id. ¶ 10.) Ma explains that “[t]here is no easy method to extract the heartbeat signal from the mixture of the motion signal and heartbeat signal.” (Id.) In describing Ma’s invention, Ma discloses an ear bud with a “substantially cylindrical shape for insertion within the outer ear canal” that includes “emitter and detector devices [that] may be either Red or Infrared (IR) or both for detecting heartbeat and optionally SpO2.” (Id. ¶ 35.) Ma discloses 3 pairs of emitter/detectors “located 120 degrees apart about the circumferential periphery [] of the ear bud.” (Id.) In operating Ma’s device, “[t]he signal amplitude of the heartbeat signal on each sensor is identified when there is no user motion. This is done by calculating the standard deviation of the 3 input signals when there is no motion. The 3 signal paths are then normalized.” (Id. ¶ 68.) Ma then determine[s] whether there is motion. The signal[s] are check[ed] in the time domain. If the heartbeat signal dominates, all the 3 signals should be synchronous and in-phase. If the motion of the user is big enough, it is expected that the signal from motion dominates and sensor signals should not be all in phase. (Id. ¶ 69.) After Ma determines that there is motion, calculations are performed on the signals and “the signal due to motion should be canceled out and preserve the heartbeat signal.” (Id. ¶ 77.) In short, Ma discloses detecting or measuring heartbeat information and producing a heartbeat Appeal 2020-005340 Application 14/820,910 9 signal, and detecting or measuring motion information and producing a separate motion signal that is then canceled out to preserve the heartbeat signal. Appellant argues that “[t]he mere fact that Ma ‘mathematically recognizes’ that the signal include [sic] a motion noise component does not disclose or suggest that this motion noise component is ever solved for to ‘produc[e] a motion noise information signal.’” (Reply Br. 5 (second brackets in original).) We do not find this argument persuasive. Ma specifically discloses “obtaining a plurality of sensor signals from multiple locations about a body part of the person, the sensor signals comprising heart beat signals and movement signals, comparing the sensor signals to separate the heart beat signals and movement signals, and determining heart rate from the heart beat signals.” (Ma, Claim 24 (emphasis added).) In view of the above, we are not persuaded that the Examiner erred in rejecting claim 8. Claim 21 recites similar language and Appellant makes similar arguments. (See Appeal Br. 11–18.) Dependent claims 9–13, 20, and 22–26 are not separately argued and fall with their corresponding independent claims 8 and 21. See 37 C.F.R. § 41.37(c)(1)(iv). The § 103(a) rejection Obviousness is a legal conclusion involving a determination of underlying facts. Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness Appeal 2020-005340 Application 14/820,910 10 or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966)). In relevant part, claim 1 recites “[a] method of monitoring a subject via an earbud module, the method comprising: positioning the earbud module within an ear of the subject, wherein the earbud module comprises a housing containing at least one motion sensor and at least one signal processor.” (Emphasis added.) With regard to the scope and content of the prior art, the Examiner finds that Ma does not teach a signal processor located within the earbud module. (Final Action 8.) The Examiner relies on Rallison, “which teaches a head-worn sensor device comprising a processor within the housing of the sensor device (p. 21 lines 30-38 and p. 22 lines 1-2).” (Final Action 9.) The Examiner determines that it would have been obvious to modify the earbud sensing module and separate processing system of Ma to incorporate a microprocessor into the sensing module for preliminary signal processing, as taught by Rallison in p. 30, lines 32-38 and p. 31 lines 1-7 because it allows for elimination of a tether to an external computer, which improves user experience (Rallison, p. 32, lines 10-14). (Id.; see also Answer 7.) The Examiner explains that “Ma already teaches an earbud, so Rallison is not relied upon in any way to teach an earbud. Instead, Rallison is looked to for an improvement of locating the signal processor inside the worn sensor device (in this case a head tracker,) because it eliminates a cable tether and improves user comfort.” (Answer 7–8.) Appeal 2020-005340 Application 14/820,910 11 Appellant argues that “the microprocessor 522 to which the Examiner refers is part of Rallison’s head tracker 100 and is not part of Rallison’s earbud and, thus, cannot be reasonably interpreted as being a part of a housing of an earbud module.” (Appeal Br. 22 (emphasis omitted).) Appellant also argues that “[t]he Examiner has not provided a mechanism or interpretation by which one of ordinary skill in the art could implement Rallison’s detachable processor with the earbuds of Ma.” (Id. at 25.) Rallison discloses [a] visual display device . . . for delivering a generated image, preferably combinable with environment light, to the eye of a user. . . . A tracker (100) for outputting an indication of the orientation, attitude and/or position of a head-mounted display (HMD) may be provided. The tracker (100) can be configured so that it is incorporated in the HMD housing and/or can be easily decoupled from the HMD, so that the HMD can be used without the tracker (e.g. for watching movies). (Rallison, Abstract.) Rallison discloses an embodiment in which “audio devices such as earphone-type loudspeakers 52a, 52b are provided. Other audio devices can be used such as ‘earbud’ devices worn in the ear.” (Id. at 9, ll. 24–25.) Rallison further discloses that [b]y providing a tracker which the end user can readily detach from the HMD, preferably without the need to use tools, the user can, if desired, easily use the HMD without a tracker attached (e.g. for uses that do not need and/or support a tracker), providing a reduction in weight of the device. Since only a single cable or other link is needed for connection to the host computer (or other image generator), regardless of whether or not the tracker is being used, the inconvenience associated with being tethered by multiple cables or other links is avoided. (Id. at 32, ll. 6–11 (emphasis added).) Appeal 2020-005340 Application 14/820,910 12 As an initial matter, we agree with Appellant that the cited portion of Rallison does not disclose the elimination of all tethers to the host computer (see Reply Br. 14; see also Final Action 9, Answer 7); rather, it discloses the elimination of multiple cables, leaving a single cable or other link to connect to the host computer (Rallison, p. 32, ll. 9–11). We also note that the cited portions of Rallison do not disclose including a signal processor within an earbud or earphone-type speakers. The Supreme Court in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 . . . (2007), explained that, “because inventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known,” “it can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” Id. at 418– 19. Personal Web Techs., LLC v. Apple, Inc., 848 F.3d 987, 991–92 (Fed. Cir. 2017). Here, the Examiner does not sufficiently explain where Rallison discloses the elimination of all tethers to a host computer. In view thereof, we determine that the Examiner has not sufficiently explained the reasoning with rational underpinnings why it would have been obvious to one of ordinary skill in the art to have modified Ma by locating a signal processor within the earbud module housing containing a motion sensor to eliminate any tethers to a host system. The Examiner does not rely on Hisano to cure this deficiency. Therefore, we will reverse the rejection of claim 1 and of dependent claims 2–5 and 19. Appeal 2020-005340 Application 14/820,910 13 CONCLUSION The Examiner’s rejection of claims 8–13 and 20–26 under 35 U.S.C. § 102(e) is affirmed. The Examiner’s rejection of claims 1–5 and 19 under 35 U.S.C. § 103(a) is reversed. Specifically: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 8–13, 20– 26 102(e) Ma 8–13, 20–26 1–5, 19 103(a) Ma, Rallison, Hisano 1–5, 19 Overall Outcome 8–13, 20–26 1–5, 19 AFFIRMED-IN-PART Copy with citationCopy as parenthetical citation