Valencell, Inc.

Patent Trials and Appeals Board

Apr 29, 2021

2020004720 (P.T.A.B. Apr. 29, 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.
14/839,093 08/28/2015 Steven Francis LeBoeuf 9653-3TSCT11 1442
20792 7590 04/29/2021
MYERS BIGEL, P.A.
PO BOX 37428
RALEIGH, NC 27627
EXAMINER
DOWNEY, JOHN R
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
04/29/2021 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 2020-004720
Application 14/839,093
Technology Center 3700
Before JOHN C. KERINS, DANIEL S. SONG, and EDWARD A. BROWN,
Administrative Patent Judges.
SONG, 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 1–4, 8, 11, 12, 14–18, 22–25, and 29–
32.2 Appeal Br. 2. 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(a). The Appellant identifies the real party in interest as
Valencell, Inc. Appeal Br. 2.
2 Claims 6, 7, 10, 13, 20, 21, 27, 28, 34, and 35 have been withdrawn.
Appeal Br. 2.
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Application 14/839,093

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CLAIMED SUBJECT MATTER
The claims are directed to a method and apparatus for physiological
and environmental monitoring. Claim 1, reproduced below, is illustrative of
the claimed subject matter:
1. A sensor module configured to be worn by a subject, the
sensor module comprising:
at least one physiological sensor configured to measure
physiological information from the subject;
at least one environmental sensor configured to measure
environmental information from a vicinity of the subject, wherein
the at least one environmental sensor is pointed away from the
subject and towards an environment around the subject when the
sensor module is worn;
a power source coupled to the plurality of sensors; and
at least one processor configured to poll the at least one
physiological sensor and the at least one environmental sensor
only at certain time intervals to obtain sensor data therefrom.
Appeal Br. 7 (emphasis added).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Aceti 5,881,159 Mar. 9, 1999
Schulze US 2001/0027384 A1 Oct. 4, 2001
Shen US 2005/0177029 A1 Aug. 11, 2005
Kearby US 2005/0192514 A1 Sept. 1, 2005
Shalon US 2006/0064037 A1 Mar. 23, 2006
Jackson US 2006/0212316 A1 Sept. 21, 2006

REJECTIONS
The Examiner rejects various claims under 35 U.S.C. § 103(a) as
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Application 14/839,093

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follows:3
1. Claims 1–4, 11, 12, and 23–25 as being unpatentable over
Shalon in view of Kearby and Schulze. Non-Final Act. 7.
2. Claims 8 and 29–32 as being unpatentable over Shalon in view
of Kearby, Schulze, and Shen. Non-Final Act. 10.
3. Claim 14 as being unpatentable over Shalon in view of Kearby,
Schulze, and Aceti. Non-Final Act. 11.
4. Claims 15–18 as being unpatentable over Shalon in view of
Kearby, Schulze, and Jackson. Non-Final Act. 12.
5. Claim 22 as being unpatentable over Shalon in view of Kearby,
Schulze, Jackson, and Shen. Non-Final Act. 13.

OPINION
Rejection 1: Shalon in view of Kearby and Schulze
As to independent claim 1, the Examiner finds that Shalon discloses
the invention substantially as claimed, but “fails to specifically teach at least
one environmental sensor” as recited. Non-Final Act. 8. The Examiner
relies on Kearby as disclosing an earpiece having ambient conditions sensors
48 together with biometric sensors 52, and concludes that it would have been
obvious to one of ordinary skill in the art to have modified Shalon “to
further include ambient condition sensor(s) integrated into the earpiece” as
claimed “because it would enhance Shalon’s device” by allowing collection
and analysis of additional data to provide “useful information about a

3 All previous rejections that did not rely on Schulze have been withdrawn.
Ans. 3, 11–17; Reply Br. 2.
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subject’s current condition.” Non-Final Act. 8–9; see also Ans. 20
(“enhance Shalon’s device by allowing Shalon’s earpiece to evaluate
ambient/external conditions near the user.”).
As to the polling limitation in claim 1, the Examiner finds that
Schulze discloses “a patient biometric monitor including biosensors which
are periodically polled,” and concludes that it would have been obvious to
one of ordinary skill in the art to have modified Shalon to periodically poll
the sensors “because this would conserve power compared to continuous
data collection and transmission from the sensors to the processor.” Non-
Final Act. 9; see also Ans. 20. According to the Examiner, a person of
ordinary skill and creativity “would be fully capable of experimenting and
selecting a suitable polling frequency that could save power compared to
continuous monitoring without sacrificing the ability to detect eating
events.” Non-Final Act. 9.
We agree with the Examiner’s findings and conclusion of obviousness
as to independent claim 1, and address the Appellant’s arguments directed to
claim 1 below. The Appellant relies on the same arguments in support of
patentability of independent claims 15, 23, and 29, which recite limitations
that are substantively the same as those of claim 1, and further relies on
dependency for patentability of the remaining dependent claims. Appeal Br.
11–13. Therefore, all of the claims fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv).
The Appellant initially argues that although Kearby discloses an
ambient conditions sensor 48 within its earpiece 32 that can “sense ‘ambient
sound frequency and/or amplitude,’” Kearby does not provide “explicit
teaching or suggestion of any data collected by the ‘ambient conditions
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sensor’ actually being used by the local device or the earpiece.” Appeal Br.
7–8 (citing Kearby ¶ 58). However, as the Examiner points out, “Kearby
explicitly teaches at least one use of the ambient conditions data in Para.
[0086] (‘The local device’s software can adjust the volume based on the
ambient noise level.’).” Ans. 21 (quoting Kearby ¶ 86); see also Kearby
¶ 94.
The Appellant responds that the portion of Kearby relied upon by the
Examiner “is directed to using data collected by the local device, not the
earpiece device.” Reply Br. 2. However, the Appellant’s argument is
unpersuasive because paragraph 86 of Kearby merely teaches what the local
device 8 does with the collected ambient noise level data, and does not
specify that it was collected by the local device. Kearby ¶ 86 (“The local
device’s software can adjust the volume based on the ambient noise level.”).
In that regard, Kearby discloses provision of sensed signals from the
earpiece to the local device 8 via leads 50, earpiece connector 60, and local
device connector 30. Kearby ¶¶ 58, 60–61; Figs. 1–4. The Examiner is
correct in reasoning that “[o]ne of ordinary skill in the art looking at
references such as Shalon and Kearby would readily understand that data is
not collected arbitrarily and for no good reason,” but instead, so that such
physiological and environmental data collected can be used by the local
device 8. Ans. 21. Kearby would not provide an ambient conditions sensor
48, and further connect it to the local device 8 if the sensor and the data
therefrom is not used. It is well established that in considering the scope and
content of the prior art, “it is proper to take into account not only specific
teachings of the reference but also the inferences which one skilled in the art
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would reasonably be expected to draw therefrom.” In re Preda, 401 F.2d
825, 826 (CCPA 1968).
The Appellant also points out that “local device 8 can have external
transducers 26 which can sense a greater number of ambient conditions,”
and argues that “the Examiner fails to explain why one of ordinary skill in
the art would use the ‘ambient conditions sensor 48’ from Kearby that
detects less information than the ‘external transducer’ 26 of the local device
8.” Appeal Br. 8; see also Reply Br. 3–4. Based thereon, the Appellant
asserts that the rejection “appear[s] to be the product of the application of
hindsight bias.” Appeal Br. 8.
However, as the Examiner explains, this argument is not persuasive
because:
there is at least one very compelling and immediately
recognizable benefit that ambient conditions sensor 48 has over
the external transducers 26: its integration into (and fixed
location within) the earpiece. Put simply, by being integrated
into the earpiece, ambient conditions sensor is always
maintained in the proper position to be able to sense the
environment immediately adjacent to the wearer’s ears.
Ans. 23.
The Appellant further notes that “the device of Shalon can already
‘monitor or have communicated to it,’” environmental factors such as air
temperature, ambient lighting conditions, etc., and argues that applying the
teachings of Kearby into the system of Shalon “appears to be the result of
hindsight analysis, as the motivation merely provides a redundant
advantage.” Appeal Br. 8 (quoting Shalon ¶ 217).
However, as the Examiner points out, “Shalon teaches that such
environmental information can be sensed or acquired but is highly vague as
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to how this is accomplished. . . . Kearby provides a more specific teaching
of how to specifically place such a sensor within a similar earpiece.” Ans.
25. Accordingly, the modification of Shalon in view of Kearby as proposed
by the Examiner does not simply provide a redundant advantage as asserted,
but instead, provides a specific manner of implementing the device of
Shalon. Ans. 25. In view of the above, the Appellant’s further assertion that
“the Examiner has not provided an objective reason to combine the
teachings of the references” is unpersuasive. Reply Br. 4.
As to the limitation regarding polling of the sensors, the Appellant
argues that Shalon “solves the problem of extending battery life by engaging
in a low power standby mode, in which data is continuously collected but
minimally processed to determine the start of an eating event.” Appeal Br.
11. Thus, according to the Appellant, the motivation for applying the
teachings of Schulze to poll the data of Shalon “provides only a redundant
advantage.” Appeal Br. 11. However, as the Examiner explains, “the
modification in view of Schulze is not ‘redundant’ with the power savings of
Shalon because it provides even more power conservation compared to
Shalon’s methodology alone.” Ans. 26. Indeed, nothing precludes
providing low power standby mode in conjunction with polling, which
would result in greater power savings than over standby or polling alone.
In addition, the Appellant argues that “[o]nly periodically collecting
data would have a potential problem of missing some or all of an eating
event, which would be contrary to the primary purpose of Shalon.” Appeal
Br. 11; see also Reply Br. 6. The Appellant points out that “a person may
eat at different times of day, a variable number of times a day, in different
environments or locations, with different people present.” Appeal Br. 11.
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However, we agree with the Examiner that “a suitable polling
frequency can be chosen in which any eating event, despite being
‘spontaneous’ or ‘sporadic,’ would always be detected” so as to attain a
“balance between power conservation and adequate sensing.” Ans. 26. In
that regard, we also agree that:
one skilled in the art would be fully capable of experimenting
and choosing an appropriate frequency that conserves power
while also not sacrificing the ability to detect a spontaneous
and/or sporadic eating event. For example, polling frequencies
of e.g.[,] once per second, once per two seconds etc. could be
chosen which would conserve power compared to continuous
polling/collection of sensor data, but are also sufficiently
frequent that an eating event could not realistically occur
between consecutive polls.
Ans. 27.
The Appellant argues that “such experimentation is beyond the scope
of those of ordinary skill in the art.” Reply Br. 5. However, this argument is
unpersuasive considering the high level of skill evidenced by Shalon itself,
which, as the Appellant concedes, discloses minimally processing the
collected data to determine the start of an eating event. Appeal Br. 11.
The Appellant further points out that modifying Shalon to poll the
sensors “changes the device of Shalon from one that works in real-time to
one that does not.” Reply Br. 5. Although that may be true, the Examiner
has articulated a reason with rational underpinnings for such a modification.
See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). In that regard,
as the Supreme Court also explained “if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize
that it would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.” Id. at 417;
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c.f. Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n. 8 (Fed. Cir.
2000) (“The fact that the motivating benefit comes at the expense of another
benefit, however, should not nullify its use as a basis to modify the
disclosure of one reference with the teachings of another. Instead, the
benefits, both lost and gained, should be weighed against one another.”). As
discussed above, we agree with the Examiner that a person of ordinary skill
would have found it obvious to select “a suitable polling frequency . . . in
which any eating event . . . would always be detected,” while also
conserving power. Ans. 26.
Therefore, in view of the considerations above, we affirm the
Examiner’s rejection of claim 1, and the remaining claims 2–4, 8, 11, 12,
14–18, 22–25, and 29–32 fall therewith.
CONCLUSION
The Examiner’s rejections are affirmed.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–4, 11, 12,
23–25
103(a) Shalon, Kearby,
Schulze
1–4, 11, 12,
23–25

8, 29–32 103(a) Shalon, Kearby,
Schulze, Shen
8, 29–32
14 103(a) Shalon, Kearby,
Schulze, Aceti
14
15–18 103(a) Shalon, Kearby,
Schulze, Jackson
15–18
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22 103(a) Shalon, Kearby,
Schulze, Jackson,
Shen
22
Overall
Outcome
1–4, 8, 11,
12, 14–18,
22–25, 29–
32

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