Valencell, Inc.

Patent Trials and Appeals Board

Dec 8, 2021

2021003335 (P.T.A.B. Dec. 8, 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.
15/949,266 04/10/2018 Steven Francis LeBoeuf 9653-3TSCT13 1705
20792 7590 12/08/2021
MYERS BIGEL, P.A.
PO BOX 37428
RALEIGH, NC 27627
EXAMINER
STEINBERG, AMANDA L
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
12/08/2021 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 2021-003335
Application 15/949,266
Technology Center 3700
____________

Before JOHN C. KERINS, MICHAEL L. HOELTER, and
BENJAMIN D. M. WOOD, Administrative Patent Judges.

HOELTER, 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 1–8 and 10–12. See Appeal Br. 2. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE the Examiner’s rejection of these claims.

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. 2.
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Application 15/949,266

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CLAIMED SUBJECT MATTER
The disclosed subject matter “relates generally to health and
environmental monitors and, more particularly, to wireless health and
environment monitors.” Spec. 1:13–15. Apparatus claim 1 is the sole
independent claim, is illustrative of the claims on appeal, and is reproduced
below.
1. An apparatus adapted to be worn at or near at least one
ear of a subject, comprising:
a battery configured to supply power to the apparatus;
a reflective pulse oximeter configured to monitor subject
pulse rate and pulse intensity;
a motion sensor configured to monitor subject body
motion;
an analog-to-digital convertor configured to convert
analog signals from the reflective pulse oximeter and the
motion sensor into digitized information;
a speaker configured to supply sound to the subject;
a digital memory device configured to store at least one
algorithm for signal processing;
a transceiver configured to enable wireless
communication between the apparatus and a remote device; and
at least one signal processor configured to:
process data from the reflective pulse oximeter to
monitor the cardiopulmonary functioning of the subject,
process data from the motion sensor to monitor
head and body motion of the subject,
execute the at least one algorithm for assessing a
health state of a subject,
poll the reflective pulse oximeter and the motion
sensor at certain time intervals to extend life of the battery, and
process digital audio information into analog
sounds to be presented to the subject via the speaker; and
wirelessly download a user preference from the
remote device to the apparatus via the transceiver, wherein the
user preference causes the at least one signal processor to focus
processing resources on extracting physiological information
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from the reflective pulse oximeter and to ignore at least some
other processing.
EVIDENCE
Name Reference Date
Monfre et al.
(“Monfre”)
US 2003/0060693 A1 Mar. 27, 2003
Luo et al. (“Luo”) US 2005/0226446 A1 Oct. 13, 2005
Shalon et al. (“Shalon”) US 2006/0064037 A1 Mar. 23, 2006
Kehr et al. (“Kehr”) US 2013/0218588 A1 Aug. 22, 2013
REJECTION
Claims 1–8 and 10–12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Shalon, Monfre, Luo, and Kehr.
ANALYSIS
Sole independent claim 1 recites the limitation, “a reflective pulse
oximeter.” The Examiner finds that Shalon teaches a pulse oximeter but
acknowledges that Shalon “does not go so far as to teach a reflectance pulse
oximeter.”2 Final Act. 4; see also Ans. 5. The Examiner relies on Monfre
for teaching a sensor “comprising a reflectance pulse oximeter.” Final Act.
5; see also Ans. 5. The references to Luo and Kehr are relied upon for other
teachings. See Final Act. 5, 6.
Appellant disputes these findings stating, “[i]n view of the fact that
none of the cited references teaches or suggests a ‘reflectance pulse
oximeter,’ it also logically follows that the proposed combination of

2 The Examiner relies on Shalon’s Paragraph 284 for teaching “a pulse
oximeter” and on Shalon’s Paragraph 299 for teaching a processor
configured to “process data from the pulse oximeter.” Final Act. 3, 4.
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references, even if proper, fails to teach or suggest a ‘reflectance pulse
oximeter.’” Appeal Br. 10; see also Reply Br. 2.
As indicated above, the Examiner relies on paragraph 284 of Shalon
as teaching “a pulse oximeter.” Final Act. 3. Paragraph 284 of Shalon is
replicated below, in its entirety:
Caloric expenditure is preferably calculated from measured
metabolic rate. For example, system 10 can be configured
capable of measuring metabolic rate through any one of several
known approaches. System 10 can measure heart rate using one
or more vibration sensors, plethysmographs, strain gages, EKG
electrodes, accelerometers or microphones, either singly or in
combination, in proximity to the carotid artery behind the ear
region or at various regions of the external or internal ear and
ear canal.
As can be seen, this paragraph discusses “system 10” which can
measure a metabolic rate and it can also measure a heart rate employing a
variety of sensors proximate to the carotid artery behind the ear or at
different ear or ear canal regions. Nowhere is there any discussion of
measuring the oxygen saturation levels of hemoglobin (“oximeter”) nor is
there any discussion of employing a pulse oximeter sensor (whether
reflective or not).
Paragraph 299 of Shalon, as noted above, was relied upon for teaching
the processing of data from a pulse oximeter. See Final Act. 4. This
Paragraph 299 teaches that “system 10 can alternatively or additionally
measure . . . oxygen saturation . . . through any of the traditional techniques
known in the art.” Similar to the above, this paragraph of Shalon teaches the
use of an amorphous “system 10,” and it is not clear whether a skilled
person, understanding that “traditional techniques” can be employed for
determining “oxygen saturation,” would have readily understood this to be a
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teaching of specifically using a pulse oximeter or that a pulse oximeter is to
be a specific component of Shalon’s “system 10.”
The Examiner acknowledges that pulse oximeters determine blood
oxygen content and that they “consist of a light source directed at human
tissue and a light detector” such that “the blood oxygen content is calculated
based on what light from the light source is detected by the light detector.”
Ans. 5. The Examiner does not identify where either of Shalon’s paragraphs
284 or 299 discuss, or even mention, using a sensor involving a light source
and a detector.3
We have been instructed by our reviewing court that:
The Patent Office has the initial duty of supplying the factual
basis for its rejection. It may not, because it may doubt that the
invention is patentable, resort to speculation, unfounded
assumptions or hindsight reconstruction to supply deficiencies
in its factual basis. To the extent the Patent Office rulings are so
supported, there is no basis for resolving doubts against their
correctness. Likewise, we may not resolve doubts in favor of
the Patent Office determination when there are deficiencies in
the record as to the necessary factual bases supporting its legal
conclusion of obviousness.
In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). In the matter before us,
the Examiner seems to be surmising from Shalon’s disclosures that Shalon
teaches the use of a pulse oximeter. See Final Act. 3, 4 (referencing Shalon
¶¶ 284, 299); Ans. 5. We are not of the same opinion as the Examiner.

3 Both Paragraphs 284 and 299 of Shalon teach determining “heart-rate” or
“pulse” using “plethysmographs” or “plethysmography” which rely on
changes in body volume. The Examiner states that “a pulse oximeter is a
sensor device . . . that can be generically described as a photo-
plethysmograph.” Ans. 5. However, Paragraphs 284 and 299 teach using
plethysmographs to detect pulse, not blood oxygen levels.
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Instead, as instructed above, there appear to be “deficiencies in the record as
to the necessary factual bases supporting [the Examiner’s] legal conclusion
of obviousness.”
Accordingly, and based on the record presented, we reverse the
Examiner’s rejection of these claims.

CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C.
§
References/Basis Affirmed Reversed
1–8, 10–12 103 Shalon, Monfre, Luo,
Kehr
1–8, 10–12

REVERSED