Valencell, Inc.

Patent Trials and Appeals Board

Mar 31, 2021

2020005340 (P.T.A.B. Mar. 31, 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.
14/820,910 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.)
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Application 14/820,910

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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).

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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.)
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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
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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
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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
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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.

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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
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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
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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.)
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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).)
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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.
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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