Ex Parte 6493652 et al

Patent Trial and Appeal Board

Sep 25, 2012

95001275 (P.T.A.B. Sep. 25, 2012)

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.
95/001,275 12/02/2009 6493652 2483.112REX0/DKSC/CMR 8346
22909 7590 09/26/2012
BANNER & WITCOFF, LTD.
1100 13th STREET, N.W.
SUITE 1200
WASHINGTON, DC 20005-4051
EXAMINER
NGUYEN, LINH M
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
09/26/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
______________

NIKE, INC.,
Patent Owner, Appellant, and Cross-Respondent

v.

ADIDAS AG,
Requester, Respondent, and Cross-Appellant
______________

Appeal 2012-009052
Reexamination Control No. 95/001,275
United States Patent 6,493,652
Technology Center 3900
______________

Before JOHN C. MARTIN, KEVIN F. TURNER, and
THOMAS L. GIANNETTI, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL
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Patent Owner Nike, Inc. (hereinafter “Patent Owner”1) appeals under
35 U.S.C. §§ 134(b) and 315(a) from the Examiner’s rejections of claims 1-
12, 14, 35, 37, 38, 40-52, 54-56, 77, 79, 80, 86-89, 92, and 93 of U.S. Patent
6,493,652 (“the ’652 patent”).2 Third Party Requester adidas AG
(hereinafter “Requester”3) cross-appeals under 35 U.S.C. §§ 134(c) and
315(b) from the Examiner’s refusal to adopt proposed rejections of claims 1-
9, 41-49, and 86-89 under 35 U.S.C. § 103(a) for obviousness over Vock4
and under 35 U.S.C. § 112, first and second paragraphs.
We have jurisdiction under 35 U.S.C. §§ 134 and 315.
We affirm-in-part the Examiner’s decision that the rejected claims are
unpatentable over the prior art and affirm the Examiner’s determinations not
to enter the proposed rejections under 35 U.S.C. § 103(a) based on Vock and
under 35 U.S.C. § 112, first and second paragraphs.

1 Nike, Inc. is identified as the real party in interest in Patent Owner’s
June 6, 2011, “Appeal Brief” at 1, para. I.
2 The ’652 patent identifies itself as: “a continuation-in-part of each of
application Ser. Nos. 09/547,975, 09/547,976, 09/547,977, and 09/548,217,
each of which was filed on Apr. 12, 2000, and is now abandoned. Each of
application Ser. Nos. 09/547,975, 09/547,976, 09/547,977, and 09/548,217
is a continuation-in-part of application Ser. No. 09/364,559, filed on Jul. 30,
1999, and now U.S. Pat. No. 6,052,654, which is a continuation of
application Ser. No. 08/942,802, filed Oct. 2, 1997, and now U.S. Pat. No.
6,018,705.” ’652 patent specification at 1:6-14.
3 Adidas AG is identified as the real party in interest in the July 6, 2011,
“Third-Party Requester’s Respondent Brief on Appeal Under 37 C.F.R.
§ 41.68” at 1, para. II.
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I. STATEMENT OF THE CASE
A. This Reexamination Proceeding
1. This proceeding arose from a December 2, 2009, “Request for
Inter Partes Reexamination Under 37 C.F.R. § 1.913” (hereinafter
“Request”).5 The Request proposed rejections (identified therein as Issues
A-J) of claims 1-14, 35, 37-56, 77, and 79-103 of the ’652 patent based on
Willemsen,6 Ebeling,7 Fyfe,8 Levi,9 Richardson,10 and Whalen.11 Request i-
ii. Reexamination of claims 15-34, 36, 57-76, and 78 was not requested.
2. The Request was granted with respect to all of the proposed
rejections in a January 15, 2010, “Order Granting/Denying Request for Inter
Partes Reexamination.”
3. In a March 26, 2010, non-final first Office Action (hereinafter
“first Office action”), the Examiner (at 7-12) adopted all of the proposed
rejections, incorporating by reference the arguments made in the Request.

4 U.S. Patent No. 6,266,623 to Vock et al.
5 No pending litigation involving the ’652 patent has been identified.
6 Willemsen et al., Automatic Stance-Swing Phase Detection from
Accelerometer Data for Peroneal Nerve Stimulation, 37 IEEE Transactions
on Biomedical Engineering 1201-08 (Dec. 1990).
7 U.S. Patent No. 6,145,389 to Ebeling et al.
8 Canadian Patent No. 2 218 242 to Fyfe.
9 U.S. Patent No. 5,583,776 to Levi et al.
10 U.S. Patent No. 5,976,083 to Richardson et al.
11 U.S. Patent No. 6,183,425 to Whalen et al.
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4. In a May 26, 2010, “Response to Office Action in Inter Partes
Reexamination” (hereinafter “First Response”), Patent Owner:
(a) amended independent claims 1, 41, and 86 to recite “a
minimum degree of smoothness for a given period of time” (language
already present in original independent claims 7, 45, and 88);
(b) amended independent claims 10 and 50 to recite, inter alia,
determining whether calculated differences between pairs of a plurality of
samples of the signal satisfy any one of a plurality of predetermined criteria
consistent with the foot of the user engaging in a particular event during a
footstep (language similar to language appearing in original independent
claims 14 and 56); and
(c) canceled claims 13, 53, 84, 85, 90, 91, and 96-103; and
(d) disputed the rejections of the remaining claims.
This response was accompanied by an Information Disclosure Statement
(IDS) listing the Vock patent as document 24.
5. “Comments by Third Party Requester to Patent Owner’s Response
in Inter Partes Reexamination under 37 C.F.R. § 1.947” (hereinafter “First
Comments”) were filed on June 24, 2010, accompanied by a “Declaration of
Richard Greenwald, Ph.D. Under 37 C.F.R. § 1.132” (the “Greenwald
Declaration”). In addition to defending the Examiner’s rejections, Requester
asserted: (a) that the claims reciting “a minimum degree of smoothness” are
indefinite and therefore unpatentable under the first and second paragraphs
of 35 U.S.C. § 112 (First Comments 3, para. 1); and (b) that “Vock discloses
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identifying that an acceleration signal has experienced a minimum degree of
smoothness for at least a given time period indicative of a foot being
airborne.” Id. at 17.
6. In a September 30, 2010, Action Closing Prosecution (“ACP”), the
Examiner, after acknowledging (at 2) the cancelation of claims 13, 53, 84,
85, 90, 91, and 96-103 and the amendment of claims 1, 10, 41, 50, and 86,
repeated the previously entered rejections with respect to the rejected claims
that had not been canceled. ACP 8-14.12 Regarding the 35 U.S.C. § 112
issue raised in the First Comments, the Examiner stated that “this is an issue
that is not within the scope of reexamination proceedings.” Id. at 22.
Regarding the Vock patent, also discussed in those comments, the Examiner
stated:
[T]he suggested rejection is not adopted since Requester only
made general comments such as “Vock discloses the features of
the ‘652 patent claims that recite a [‘]minimum degree of
smoothness[’] or [‘]one of ordinary skill in the art would
appreciate that the methods disclosed . . . could be used in
connection with a footstep taken by a user[’”] (p. 17 [of First
Comments] or Dr. Greenwald Decl. at 36)[.] Requester fails to

12 However, in the statement of the rejection for anticipation by Ebeling, the
Examiner inadvertently included canceled claim 53 and failed to include
claim 93, which was initially rejected on this ground and not among the
rejected claims subsequently canceled. ACP 9 (Issue C). These errors are
repeated in the Right of Appeal Notice (at 6).
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provide a detailed explanation of the pertinency and manner of
applying the cited prior art.
ACP 22 (emphasis omitted).
7. In an October 29, 2010, “Response to Office Action in Inter Partes
Reexamination” (hereinafter “Second Response”), Patent Owner (at 22)
proposed canceling claims 39, 81-83, 94, and 95 and argued the patentability
over the prior art of the remaining rejected claims. Second Response 22-43.
8. “Comments by Third Party Requester Following Patent Owner’s
Response to Action Closing Prosecution in Inter Partes Reexamination
Under 35 U.S.C. § 314(b)(2) and 37 C.F.R. § 1.951(b)” (hereinafter “Second
Comments”) were filed on November 29, 2010. Requester, inter alia,
addressed 35 U.S.C. § 112 as follows: “Requester appreciates the
Examiner’s acknowledgement of its discussion of the issues under 35 U.S.C.
112 outlined in the previous Requester’s Comments. . . . Requester
respectfully invites the Examiner to consider noting these issues for the
record.” Second Comments 2 n.1. Regarding Vock, Requester explained
(id. at 12-13) why Vock raises a substantial new question of patentability
and provided claim charts (id. at 14-35) allegedly demonstrating that “claims
1-9, 41-49, and 86-[8]9 are obvious over Vock.” Id. at 13.
9. In a March 1, 2011, Right of Appeal Notice (“RAN”), the
Examiner, after indicating (at 2) entry of the proposed amendment canceling
claims 39, 81-83, 94, and 95, repeated the rejections of the claims that had
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not been canceled. RAN 5-11.13 The Examiner also explained why the
proposed rejection based on Vock was being refused entry (id. at 21) but did
not mention the proposed rejections under 35 U.S.C. § 112.
10. Notices of Appeal and Cross-Appeal were filed by Patent Owner
and Requester, respectively, on March 31, 2011, and April 12, 2011.
11. Patent Owner’s appeal brief, filed on June 6, 2011, (hereinafter
“P.O. Br.”) addresses (at 27-29) Requester’s cross-appeal issues as well as
expressing disagreement with the rejections entered by the Examiner.
12. Requester’s brief on cross-appeal (hereinafter “Req. Br.”) was
filed on June 13, 2011.
13. “Third-Party Requester’s Respondent Brief on Appeal Under
37 C.F.R. § 41.68” (hereinafter “Req. Resp’t Br.”) was filed on July 6, 2011.
14. Patent Owner did not file a respondent brief addressing
Requester’s cross-appeal brief.
15. In the Answer, dated February 9, 2012, the Right of Appeal
Notice is incorporated by reference without any further comments.
16. On March 8, 2012, a “Third-Party Requester’s Rebuttal Brief
Under 37 C.F.R. § 41.71” was filed, as acknowledged in a June 1, 2012,
communication by the Examiner.

13 Again failing to include claim 93 in the claims rejected for anticipation
(Continued on next page.)
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B. The Invention Described in the Patent Under Reexamination
The ’652 patent states that “[t]he present invention relates to the
monitoring of the activity of a user in locomotion on foot.” ’652 patent
specification 1:18-19.
Figure 1 of the ’652 patent is reproduced below.

Figure 1 is an illustration of various components of an activity monitoring
system mounted to a user’s body in accordance with one embodiment of the

by Ebeling. RAN 6 (Issue C).
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invention. Id. at 17:13-15. As shown in this figure, the system includes a
foot-mounted unit 102, a wrist-mounted unit 104, and a chest-mounted unit
106, all attached to a user 112 in locomotion (i.e., walking or running) on a
surface 108. Id. at 20:4-8. The foot-mounted unit 102 can include a sensor
for sensing motion of a foot 114 of the user 112, such as a solid-state
accelerometer that senses acceleration along an acceleration sensing axis
110. Id. at 20:8-10, 14-17.
Figure 6 is reproduced below.

Figure 6 shows a partial-schematic, partial-block diagram of an example
embodiment of a sensor 418 and a processor 422. Id. at 28:5-7. Sensor
circuit 418 includes an accelerometer 502 and an amplifier 504. Id. at
27:58-60. As shown in this figure, processor input 604 receives a voltage
generated by voltage divider resistors R3 and R4 in amplifier 504, which are
depicted as connected in series between voltage supply node VCC and
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ground. The samples taken at processor input 602, on the other hand,
fluctuate in accordance with the voltage generated by the accelerometer 502
in response to acceleration thereof. Id. at 29:8-11.
Figure 7 of the ’652 patent is reproduced below.

Figure 7 shows an example of signals 712 and 710 provided by the sensor
418 of Figure 6 to processor inputs 602 and 604, respectively, when the user
is in locomotion on foot. Id. at 29:20-23. Signal 710 has a constant digital
value of approximately “128” on the scale labeled “0” to “256.” Id. at
29:23-25. When the level of the signal 712 is greater than the level of the
signal 710, this indicates that the accelerometer is sensing a positive
acceleration along the acceleration sensing axis 110, whereas when the level
of the signal 712 is lower than the level of the signal 710, this indicates that
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the accelerometer 502 is sensing a negative acceleration along the
acceleration axis 110. Id. at 29:35-41.
Signals 710 and 712 are analyzed to identify: (i) occasions when the
user’s toe first leaves the surface 108 after having been in contact with the
ground during a footstep (i.e., “toe-off events” 704a and 704b); and
(ii) occasions when the user’s heel first impacts the ground after having been
airborne (e.g., “heel-strike events” 702a and 702b). Id. at 29:48-54. Toe-off
events 704 can be identified by monitoring the signals 710 and 712 for:
(a) characteristics indicating that a toe-off event 704 may have (i.e.,
potentially) occurred; and (b) characteristics, referred to as an “air signature”
706, indicating that the foot is definitely airborne (i.e., no portion of the foot
114 is in contact with the surface 108). Id. at 29:60-67. As discussed in
greater detail below, air signature 706 corresponds to a signal portion having
“a minimum degree of smoothness,” claim language whose meaning is
discussed below.
Other figures of the ’652 patent that are relevant to the claims (e.g.,
claim 14) that recite calculating differences between pairs of samples in
order to detect “a particular event” (e.g., a heel strike) are addressed below
in the discussion of the rejection of those claims.

C. The Claims on Appeal
The independent claims on appeal are claims 1, 7, 10, 14, 40, 41, 45,
50, 56, 86, 88, and 92. Of these claims, claims 1, 7, 41, 45, 86, and 88,
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which are directed to detecting when a foot is airborne, recite a signal having
“a minimum degree of smoothness for at least a given period of time.” Of
these six independent claims, Patent Owner specifically argues only
amended claim 1,14 which reads as follows:
1. A method, comprising steps of: (a) in response to
movement of a user during at least one footstep taken by the
user, generating a signal that experiences changes during a time
period that the foot is airborne during the at least one footstep;
and (b) identifying that the signal has experienced a minimum
degree of smoothness for at least a given period of time after
the foot has become airborne and before the foot contacts a
surface that is indicative of the foot being airborne during the at
least one footstep.
Claims App. (P.O. Br. 31) (underlining and bracketed information omitted).
Independent claims 10, 14, 50, 56, and 92, which are directed to
detecting a “particular event (e.g., a heel strike), recite calculating
differences between pairs of signal samples in order to either: (i) determine
whether the calculated differences satisfy any one of a plurality of
predetermined criteria consistent with the foot of the user engaging in a
particular event during a footstep (claims 10 and 50 as amended); or (ii)
identify at least one pair of the plurality of samples of the signal having a
difference therebetween that is indicative of a particular event during the at
least one footstep (original claims 14, 56, and 92). Of these five

14 P.O. Br. 8-14.
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independent claims, Patent Owner specifically argues only claim 14,15 which
reads as follows:
14. A method, comprising steps of: (a) generating a
signal in response to movement of a user during the at least one
footstep taken by the user; (b) sampling the signal to obtain a
plurality of samples of the signal; (c) calculating differences
between pairs of the plurality of samples of the signal; and
(d) monitoring the calculated differences between the pairs of
the plurality of samples of the signal to identify at least one pair
of the plurality of samples of the signal having a difference
there between that is indicative of a particular event during the
at least one footstep.
Claims App. (P.O. Br. 34) (emphasis added). As discussed below, the scope
of the phrase “indicative of” in this claim is an issue in this appeal.
The only remaining independent claim is claim 40, whose step (d),
i.e., “waiting a given period of time after performing the step (b) to perform
the step (c),” corresponds to “ignore” times 708a and 708b in Figure 7 (P.O.
Br. 3-4):
40. A method, comprising steps of: (a) generating a
signal in response to movement of a user during a plurality of
footsteps taken by the user; (b) with at least one processor,
analyzing the signal to determine a moment that a foot of the
user makes contact with a surface during one of the plurality of
footsteps taken by the user; (c) after performing the step (b),
with the at least one processor, analyzing the signal to
determine a moment that the foot leaves the surface during the
one of the plurality of footsteps; (d) waiting a given period of

15 P.O. Br. 22-27.
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time after performing the step (b) to perform the step (c); (e)
with the at least one processor, during the given period of time,
performing calculations involving at least one of at least one
determined foot contact time and a determined foot loft time;
and (f) repeating the steps (b), (c), (d), and (e) for each of the
plurality of footsteps.
Claims App. (P.O. Br. 40)(emphasis added). Patent owner also argues step
(e), i.e., performing calculations of the recited type during the “given period
of time.”
The dependent claims are not separately argued by Patent Owner and
therefore will be treated as standing or falling with their respective
independent claims.
“Claims are given ‘their broadest reasonable interpretation, consistent
with the specification, in reexamination proceedings.’” In re Trans Texas
Holdings Corp., 498 F.3d 1290, 1298 (Fed. Cir. 2007)(quoting In re
Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984)).

II. STATUS OF THE ENTERED AND PROPOSED REJECTIONS
A. Expressly Withdrawn Rejections
The following rejections, entered in the first Office Action, were
expressly withdrawn in the Right of Appeal Notice due to cancelation of
their subject claims:
1. Claims 39, 81-83, 94, and 95 under 35 U.S.C. § 102(b) for
anticipation by Richardson. RAN 9, para. (a) (discussing Issue G).
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2. Claims 84 and 85 under 35 U.S.C. § 102(e) for anticipation by
Whalen. Id. at 9, Issue H.

B. The Entered Rejections That Are Allegedly Moot (Issues E and G)
For the following reasons, we agree with Patent Owner (P.O. Br. 29)
that the following rejections have effectively been rendered moot by
amendment of the claims:
1. Claims 1, 5, 6, 10-12, 41, 50-52, 54, 55, 86, and 87 under 35
U.S.C. § 102(b) or § 102(e) for anticipation by Fyfe. RAN 7 (Issue E).16
2. Claims 10-12, 50-52, 54, and 55 under 35 U.S.C. § 102(e) for
anticipation by Richardson. Id. at 9 (Issue G).
The independent claims rejected over these references are claims 1,
10, 41, 50, and 86, all of which were amended by Patent Owner’s First
Response, addressing the first Office Action. As already noted, independent
claims 1, 41, and 86 were amended to recite “a minimum degree of
smoothness for at least a given period of time,” whereas independent claims
10 and 50 were amended to recite calculating differences between pairs of
signal samples in order to identify the occurrence of a particular event (e.g.,
a heel strike) during a footstep.

16 The Request explains at page 2 why all of the claims are not believed to
have the same effective filing date, which is not an issue in this appeal.
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Regarding the rejections based on Fyfe, the Right of Appeal Notice
states:
These rejections were proposed by the third party
requester in the request for reexamination, and they are adopted
for the reasons set forth in the request for reexamination as
shown with explanation at pages 26-30 and 79-83 of the
Request, which is hereby incorporated by reference.
It is noted that claims 1, 41 and 86 have been amended to
include features from item (c) of original claim 7, claim 10 has
been amended to include the entire original claim 13 (currently
canceled), and claim 50 has been amended to include the entire
original claim 53 (currently canceled). The added limitations
are included in the cited pages indicated above.
RAN 7 (emphasis omitted). However, the cited pages of the Request do not
assert that, let alone explain why, the subject matter recited in paragraph (c)
of claim 7 and in claims 13 and 53 is believed to be anticipated by Fyfe.
Similarly, in addressing the rejection based on Richardson, the
Examiner relies on pages 93-98 of the Request for an explanation of where
the subject matter of claims 13 and 53 is described in this reference. RAN 9.
However, these cited pages of the Request contain no such description.
Because neither Requester nor the Examiner has explained why Fyfe
and Richardson are believed to describe all of the limitations of the rejected
independent claims, we do not sustain the rejections of these claims or the
dependent claims based on these references.
However, we do not agree with Patent Owner (P.O. Br. 30) that the
foregoing reasoning also applies to the rejection of claims 10-12, 14, 37, 38,
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50-52, 54-56, 79, 80, 92, and 93 under 35 U.S.C. § 102(b) or § 102(e) for
anticipation by Levi. RAN 8 (Issue F). In discussing amended claims 10
and 50, the Examiner is correct to state (id.) that dependent claims 13 and
53, from which the amendatory subject matter was taken, are discussed at
pages 31-33 and 84-93 of the Request.

C. The Remaining Entered Rejections Challenged by Patent Owner (Issues
A-D, F, I, and J)
The entered rejections that are before us for a decision are as follows:
1. Claims 1-8, 10-12, 14, 35, 37, 38, 41-43, 45, 46, 48-52, 54-56, 77,
79, 80, 86-89, 92, and 93 under 35 U.S.C. § 102(b) for anticipation by
Willemsen. RAN 5 (Issue A).
2. Claims 9 and 47 under 35 U.S.C. § 103(a) for obviousness over
Willemsen. Id. (Issue B).
3. Claims 1-3, 5-7, 10-12, 14, 35, 37, 38, 41-43, 45, 48-52, 54-56, 77,
79, 80, 86-89, 92, and 93 under 35 U.S.C. § 102(e) for anticipation by
Ebeling. Id. at 6 (Issue C).17
4. Claims 44 and 47 under 35 U.S.C. § 103(a) for obviousness over
Ebeling in view of Willemsen. Id. at 6 (Issue D).

17 As explained above, the inclusion of canceled claim 53 and the omission
of claim 93 from the statement of this ground of rejection in the Action
Closing Prosecution and the Right of Appeal Notice are presumed to be
inadvertent errors.
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5. Claims 10-12, 14, 37, 38, 50-52, 54-56, 79, 80, 92, and 93 under
35 U.S.C. § 102(b) or § 102(e) for anticipation by Levi. Id. at 8 (Issue F).
6. Claim 40 under 35 U.S.C. § 103(a) for obviousness over Ebeling in
view of Whalen. Id. at 10 (Issue I).
7. Claim 40 under 35 U.S.C. § 103(a) for obviousness over
Willemsen in view of Whalen. Id. at 11 (Issue J).

D. The Proposed Rejections Whose Non-Adoption Is Challenged by
Requester (Issues K and L)
Requester challenges the Examiner’s determinations not to enter any
of the following proposed rejections:
1. Claims 1-9, 41-49, and 86-89 under 35 U.S.C. § 103(a) for
obviousness over Vock. RAN 21 (Issue K).
2. Claims 1-9, 41-49, and 86-89 under 35 U.S.C. § 112, first
paragraph, written description requirement, and also under § 112, second
paragraph, for being indefinite due to the recitation of “a minimum degree of
smoothness.” ACP 22 (Issue L).18

II. DISCUSSION
We begin our discussion with the proposed rejections that were not

18 Neither of the proposed rejections under 35 U.S.C. § 112 is mentioned in
the Right of Appeal Notice.
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adopted by the Examiner.

A. The Proposed § 112 Rejections (Issue L)
As noted above, the proposed rejections for unpatentability under
35 U.S.C. § 112 are directed to the claim phrase “a minimum degree of
smoothness for a given period of time,” which appears in original
independent claims 7, 45, and 88 and was added by amendment during this
reexamination proceeding to independent claims 1, 41, and 86.19 The
Examiner describes the alleged § 112 issue as “an issue that is not within the
scope of reexamination proceedings. The issue will not be considered in a
reexamination proceeding. 37 CFR 1.906(c).” ACP 22.
Requester argues:
[B]ecause Patent Owner has taken various inconsistent
positions with respect to the meaning of the “minimum degree
of smoothness” limitation and because this term suffers from
written description and indefiniteness issues, the lack of
adoption of the proposed rejections of claims 1-9, 41-49, and
86-89 under 35 U.S.C. § 112, ¶¶ 1 and 2, should be reversed
and these claims should be found unpatentable under this
Section.
Req. Br. 24. We agree with Patent Owner (P.O. Br. 28-29) that adopting
either of the proposed rejections under § 112 would be contrary to 37 C.F.R.

19 This claim language also appears in original dependent claims 13 and 53,
canceled during this proceeding, and in pending dependent claims 17, 22,
32, 35, 59, 64, 69, 74, and 77.
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§ 1.906(a), which provides:
(a) Claims in an inter partes reexamination proceeding
will be examined on the basis of patents or printed publications
and, with respect to subject matter added or deleted in the
reexamination proceeding, on the basis of the requirements of
35 U.S.C. 112.
(Emphasis added.) As explained in MPEP § 2658(II) (8th ed., rev. July
2010):
Where new or amended claims are presented or where
any part of the disclosure is amended, the claims of the
reexamination proceeding are to be examined for compliance
with 35 U.S.C. 112. See MPEP § 2258 for a discussion of the
examination in a reexamination proceeding based upon
35 U.S.C. 112>, which discussion applies to inter partes
reexamination in the same way it applies to ex parte
reexamination<.
MPEP § 2258(II) explains in relevant part that “[i]f a limitation that appears
in an existing patent claim also appears in a claim newly presented in a
reexamination proceeding, that limitation cannot be examined as to 35
U.S.C. 112.” This principle is clearly applicable to the claim phrase “a
minimum degree of smoothness for a given period of time,” which has the
same meaning in amended claims 1, 41, and 86 that it has in original
independent patent claims 7, 45, and 88. Requester has not addressed this
principle, let alone explained why it should not apply to the claim language
in question.
We therefore sustain the Examiner’s determination not to reject any of
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1-9, 41-49, and 86-89 under the first or second paragraph of 35 U.S.C. §
112.

B. The Proposed Rejection Based on Vock (Issue K)
As noted above, Vock was described as relevant to the “minimum
degree of smoothness” limitation in Requester’s First Comments and as the
basis of a proposed rejection under 35 U.S.C. § 103(a) in Requester’s
Second Comments.
We agree with the Examiner (RAN 21) that the proposed rejection
based on Vock is entitled to no consideration because the rejection has not
been shown to be responsive to an issue raised by an Office action or by a
Patent Owner response thereto, as required by 37 C.F.R. § 1.947, which
reads in relevant part:
Each time the patent owner files a response to an Office
action on the merits pursuant to § 1.945, a third party requester
may once file written comments within a period of 30 days
from the date of service of the patent owner’s response. These
comments shall be limited to issues raised by the Office action
or the patent owner’s response.
(Emphasis added.) The amendment of independent claims 1, 41, and 86 to
recite “a minimum degree of smoothness for at least a given period of time”
did not present a new issue, because this added claim language has the same
meaning in the amended claims that it has in original independent claims 7,
45, and 88, which are similar in scope to amended claims 1, 41, and 86,
respectively.
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Requester argues that Patent Owner’s responses raise a new issue
regarding the interpretation of the claim phrase “a minimum degree of
smoothness,” because the arguments in those responses improperly import
limitations into that phrase from examples in the ’652 patent specification.
Req. Br. 14-16. We agree with the Examiner that Patent Owner’s arguments
in the First and Second Responses regarding claim interpretation, including
Patent Owner’s reliance on examples in the ’652 patent specification, do not
raise a new issue that justifies the presentation of Vock as a basis for a new
ground of rejection. RAN 21. Requester should have expected that Patent
Owner might rely on these examples to interpret the claim language in
question. If Requester believes Vock sheds some light on the interpretation
of the claim language at issue, the Request should have relied on Vock for
such a teaching. As stated by the Examiner,
the issue raised by Patent Owner was not whether any art that
may exist reads on the claims; the issue was whether the art
applied in the previous rejections reads on the claims. Adding
[a] new discussion of a never before applied reference goes
beyond what was addressed in Patent Owner’s response.
Id.
Although Requester’s above-noted failure to comply with 37 C.F.R.
§ 1.947 provides a sufficient basis for refusing to enter the proposed
rejection, the proposed rejection is also contrary to 37 C.F.R. § 1.948(a),
which reads:
(a) After the inter partes reexamination order, the third party
requester may only cite additional prior art as defined under
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§ 1.501 if it is filed as part of a comments submission under
§ 1.947 or § 1.951(b) and is limited to prior art:
(1) which is necessary to rebut a finding of fact by the
examiner;
(2) which is necessary to rebut a response of the patent
owner; or
(3) which for the first time became known or available to
the third party requester after the filing of the request for inter
partes reexamination proceeding. Prior art submitted under
paragraph (a)(3) of this section must be accompanied by a
statement as to when the prior art first became known or
available to the third party requester and must include a
discussion of the pertinency of each reference to the
patentability of at least one claim.
(Emphasis added.) As explained above, the citation of the Vock patent is
not responsive to an “issue[] raised by . . . the patent owner’s response” in
the sense of 37 C.F.R. § 1.947, as required for consideration of that patent
under paragraph (a) of § 1.948. For the same reason, Vock also is not
necessary to “rebut” a response of Patent Owner, the condition recited in
paragraph (a)(2). Furthermore, the condition recited in paragraph (a)(1) is
not relevant, and the citation of Vock fails to satisfy the condition recited in
paragraph (a)(3) for the reasons given by Patent Owner. P.O. Br. 27-28.

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Requester, citing 37 C.F.R. § 1.104(a)(1),20 further argues that “if the
proposed rejections were not presented to the Examiner’s satisfaction, the
Examiner has a duty to go beyond the precise articulation of a rejection
spelled out by the Requester.” Req. Br. 20. The general principle set forth
in 37 C.F.R. § 1.104(a)(1) does not override the specific requirements of
37 C.F.R. §§ 1.947 and 1.948.
For the above reasons, we sustain the Examiner’s determination not to
adopt the proposed rejection of any of claims 1-9, 41-49, and 86-89 under
35 U.S.C. § 103(a) for obviousness over Vock.

C. The Meaning of “A Minimum Degree of Smoothness for at Least a
Given Period of Time”
The claim phrase “a minimum degree of smoothness for at least a
given period of time” of independent claims 1, 7, 41, 45, 86, and 87 also
appears in some dependent claims (e.g., claim 17), the “Abstract” (’652

20 37 C.F.R. § 1.104(a)(1) (2011) reads as follows:
(a) Examiner’s Action. (1) On taking up an application
for examination or a patent in a reexamination proceeding, the
examiner shall make a thorough study thereof and shall make a
thorough investigation of the available prior art relating to the
subject matter of the claimed invention. The examination shall
be complete with respect both to compliance of the application
or patent under reexamination with the applicable statutes and
rules and to the patentability of the invention as claimed, as
well as with respect to matters of form, unless otherwise
(Continued on next page.)
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patent specification, cover page), and the “Summary of the Invention” (id. at
4:7-13; 5:7-14; 6:2-8) but is not expressly defined in the specification.
However, as explained below, the specification employs the term terms
“smooth” and “smoothness” is discussing Figure 7, which is reproduced
again below for convenience.

As already noted, toe-off events 704a and 704b can be identified by
monitoring the signals 710 and 712 for: (a) characteristics indicating that a
toe-off event 704a may have occurred; and (b) an “air signature” 706, which
indicates that the foot 114 is definitely airborne (i.e., no portion of the foot

indicated.
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114 is in contact with the surface 108). ‘652 patent specification 29:60-67.
The foot is airborne during foot air time Ta, which when added to foot
contact time Tc yields the step time Ts. Id. at 30:46-50.
The ’652 patent specification in describing accelerometer signal 712
uses the term “relatively smooth condition” to describe the signal during foot
airborne period Ta and the term “relative smoothness” to describe air
signature 706, which occurs during part of airborne period Ta:
As shown in FIG. 7, an air signature 706 of the signal
712 may be identified between each toe-off event 704 and the
subsequent heel-strike event 702. The air signature 706 may,
for example, be an identified period of relative smoothness in
the signal 712. When it is determined that the foot 114 is
airborne (e.g., an air signature 706 is identified), the most
recently identified potential toe-off event is identified as an
“actual” toe-off event 704. . . .
In accordance with another aspect of the invention, heel-
strike events 702 may be identified by monitoring the signals
710 and 712 for sudden, sharp inflections following the
relatively smooth condition of the signal 712 generated while
the foot is airborne.
Id. at 30:8-24 (emphasis added). We note that the term “inflection” is
broadly defined as “3. a bend or angle” at Dictionary.com,
http://dictionary.reference.com/browse/inflection?s=t (last visited Sept. 12,

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2012).21 See Phillips, 415 F.3d at 1322-23 (it is appropriate to rely on a
dictionary definition when construing claim terms so long as the dictionary
definition does not contradict any definition found in or ascertained by a
reading of the patent documents). The term “smooth” is further contrasted
with “sharp transitions” in the explanation that
the period during which the user’s foot 114 is airborne (i.e., the
period between each toe-off event 704 and the subsequent heel-
strike event 702) is characterized by a relatively smooth signal
that is substantially free of sharp transitions. Based upon this
characteristic, one goal of the “heel-strike event?” routine 1408
is to identify when one or more sharp transitions first begin to
appear in the signal 712.
Id. at 50:35-42 (emphasis added).
The above descriptions of air signature 706 do not, however, describe
its amplitude values as being relatively constant, as suggested by Patent
Owner. For such a teaching, Patent Owner (P.O. Br. 9) relies on the ’652
patent’s further explanation that “[a]s shown in FIG. 7, an air signature in
the signals 710 and 712 may be an extended period of relatively constant,

21 The Dictionary.com definitions are licensed “from over 15 trusted and
established sources including Random House and Harper Collins.”
http://content.dictionary.com/about/products. The definitions of general
terms cited herein are believed to accurately reflect the meanings of those
terms as of the effective filing date(s) of the rejected claims. See Phillips v.
AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc) (“the ordinary
and customary meaning of a claim term is the meaning that the term would
have to a person of ordinary skill in the art in question at the time of the
(Continued on next page.)
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negative acceleration during a footstep.” Id. at 48:11-14 (emphasis added).
However, it is evident from the phrase “may be” that this sentence describes
a nonlimiting example of an air signature rather than a requirement for “a
minimum degree of smoothness.” See Phillips, 415 F.3d at 1323
(“[A]lthough the specification often describes very specific embodiments of
the invention, we have repeatedly warned against confining the claims to
those embodiments.”). For this reason, we do not agree with Patent Owner’s
argument that “the specification thus identifies two different time periods
during footsteps, one marked by sharp transitions in an acceleration signal
(i.e., between a heel strike and a toe-off) and the other where the acceleration
signal is relatively constant and lacks sharp transitions (i.e., between a toe-
off and a heel strike).” P.O. Br. 9-10.
The Examiner, after correctly noting that claims under reexamination
must be interpreted as broadly as their terms reasonably allow, agrees with
Dr. Greenwald that one of ordinary skill in the art at the relevant time would
have appreciated that a “minimum degree of smoothness” in a signal
indicative of a foot in motion “can be described by a portion of the signal
that does not undergo large fluctuations during a relevant time period.”
RAN 13 (emphasis added) (quoting Greenwald Decl. ¶ 15). This proposed
interpretation is problematic, however, because the term “fluctuation” is not
defined by the Examiner, Requester, or Patent Owner, which may explain

invention, i.e., as of the effective filing date of the patent application.”).
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why they disagree about whether the signal portions relied on in the
references undergo “large fluctuations.” See, e.g., P.O. Br. 11 (“Willemsen
attempts to identify a sufficiently large fluctuation in an acceleration signal
to determine when a foot has become airborne.”); id. at 14 (“Ebeling’s
system requires identifying a sufficiently large fluctuation in an acceleration
value (i.e., 0.4g greater than an average acceleration) to determine when a
foot has lifted off the ground.”).
We therefore base our interpretation of the claim language in question
on the customary broad definition of “smooth,” which is “1. free from
projections or unevenness of surface; not rough: smooth wood; a smooth
road.” Dictionary.com, http://dictionary.reference.com/browse/ smooth?s=t
(last visited Sept. 12, 2012). See Phillips, 415 F.3d at 1322-23 (it is
appropriate to rely on a dictionary definition when construing claim terms so
long as the dictionary definition does not contradict any definition found in
or ascertained by a reading of the patent documents). We therefore conclude
that the claim phrase “minimum degree of smoothness for at least a given
period of time” as applied to a signal describes a signal that has no
projection or unevenness in excess of a predetermined amount during at least
a given period of time. However, because the claim phrase thus defined
does not specify how smoothness is measured, such as by specifying that the
size of the projection or unevenness is measured along the vertical axis when
the horizontal axis represents time (as in Figure 7), we agree with the
Examiner and Requester’s conclusion that it is broad enough to read on a
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signal that increases (or decreases) in value throughout the “at least a given
period of time.”

D. The § 102 Rejection Based on Willemsen (Issue A)
1. The “Minimum Degree of Smoothness” Claims (Independent
Claims 1, 7, 41, 45, 86, and 88)
Willemsen relates to implantable peroneal nerve stimulators and more
particularly describes a technique for detecting stance and swing phases
during walking. Willemsen at 1201 (Abstract). Willemsen describes
walking as having four phases: stance, push-off, swing, and foot down. Id.
at 1202, 2d col. A peroneal nerve stimulator normally starts its stimulation
in the push-off phase. Id. Accurate detection of the push-off and the heel
strike is essential for the performance of the stimulator. Id. at 1204, 1st col.
Willemsen uses separate detection algorithms to detect each of the
four phases. Id. By including a detection algorithm for the descending and
ascending slopes of the swing phase, the chance of a false push-off or heel
strike during this phase can be minimized. Id. The Examiner agrees with
Requester that he recited “minimum degree of smoothness” reads on
comparing the acceleration signal to linear templates in this swing detection
algorithm, which is described by Willemsen as follows:
Swing detection: As mentioned in the signal description the
swing phase is characterized by a down-up course. The down
and up course are assumed to be linear for some part which
was detected by calculating the cross correlation coefficient
with an arbitrary, but sufficiently long linear template. After
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inspection of the acceleration signal we decided for templates
with slope +1 and -1 lasting 0.2 s each. If detection had not
been achieved within 0.5 s after detection of the push-off
maximum, the push-off detection was assumed to be false and
we returned to the stance phase. After a successful detection of
the descending slope we immediately started searching for the
ascending slope. This had to be accomplished within 0.5 s or
an automatic return to stance was made.
Id. at 1204-05 (emphasis modified). Specifically, the Request, in discussing
claim 7, argues that “by monitoring the signal for a constant linear slope,
Willemsen is monitoring the signal for a ‘minimum degree of smoothness.’”
Request 40. The Examiner apparently agrees, finding that
Willemsen . . . discloses identifying that the foot of the user is
airborne by monitoring the signal to identify the linear slopes
that are indicative of the swing down and swing up phases.
One of ordinary skill in the art, by monitoring these slopes one
of ordinary skill in the art would appreciate that Willemsen is
monitoring the signal for a minimum degree of smoothness
indicative of the foot being airborne.
RAN 13. Thus, we understand the Examiner’s and Requester’s position to
be that detecting a 0.2 second-long match between the acceleration signal
and the -1 slope linear template identifies a minimum degree of smoothness
during a first 0.2 second interval, that detecting a 0.2 second-long match
between the acceleration signal and the +1 slope linear template identifies a
minimum degree of smoothness during a second 0.2 second interval, and
that detecting matches with both linear templates in the correct order within
the allotted time period identifies the acceleration signal as having a
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minimum degree of smoothness during the allotted time period, thereby
indicating that the foot is airborne.
Patent Owner argues that anticipation is lacking because Willemsen,
rather than detecting a minimum degree of smoothness, monitors for
sufficiently large and rapid changes in an acceleration signal to identify
swing up and down phases of a footstep when a foot is off the ground
reference. Id. at 11. As support for this argument, Patent Owner presents
(P.O. Br. 11) an annotated portion, reproduced below, of Willemsen’s
Figure 7.

Patent Owner explains that this annotated figure shows
changes to the acceleration signal over the swing down phase
(i.e., phase 3) and the swing up phase (i.e., phase 4) of the
second footstep. Vertical lines have been added to show the
beginning and ending of the swing down and up phases, and an
arrow points to a hash mark at the approximate location of the
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beginning of the swing down phase. The first of the six
footsteps does not show all five phases and is ignored.
Id. According to Patent Owner,
[i]n percentage terms, one of ordinary skill in the art would
appreciate that the acceleration signals in Figure 7 undergo
large fluctuations (i.e., 50% decrease followed by 300+%
increase) over the course of the swing down/up phases of a
footstep. Further, by using linear templates having a slope of +/
-1 lasting 0.2 seconds, Willemsen is specifying that there must
be a sufficiently large change in the acceleration signal to
identify the swing down/up phases of a footstep. (Willemsen at
p. 1205, col. 2). If the fluctuation of the acceleration signal is
too small, Willemsen’s system determines that the swing
down/up phases did not occur, and hence that a foot did not
become airborne. Id.
P.O. Br. 12 (emphasis added).
Patent Owner’s reasoning is persuasive because it considers the shape
of the acceleration signal as a whole throughout the asserted “given period
of time” in order to determine whether the signal has a minimum degree of
smoothness (i.e., undergoes no large fluctuations), which in our view is the
clear intent of the claim, rather than considering whether individual
segments of the acceleration signal each have a minimum degree of
smoothness during the relevant time period, as urged by the Examiner and
Requester. As explained by Patent Owner, supra, the acceleration signal
during the asserted “given period of time” undergoes a 50% decrease
followed by a 300+% increase over the course of the swing down/up phases
of a footstep (i.e., during the relevant time period). We note that neither the
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Examiner nor Requester contends that the acceleration signal has the
required minimum degree of smoothness when the acceleration signal is
considered as a whole during the period of time that includes the 50%
decrease followed by the 300+% increase.
We therefore do not sustain the rejection of any of independent claims
1, 7, 41, 45, 86, and 88 and dependent claims 2-6, 8, 42-44, 46, 48, 49, 87,
and 89 for anticipation by Willemsen.

2. The “Calculated Differences” Claims (Claims 10, 14, 50, 56,
and 92)
The Examiner (RAN 19) agrees with Requester (Req. Resp’t Br. 6,
citing Greenwald Decl. ¶¶ 22, 23) that “determining the slope of a signal
necessarily involves calculating differences between pairs of signals, which
is then used to determine whether the foot of the user is engaging in a
particular event during a footstep - e.g., whether it is airborne during the
swing phase.” Patent Owner counters that
[a] linear template is completely unnecessary if merely
determining differences between equivalent acceleration . . . at
different times. As Willemsen expressly contemplates using a
microprocessor for “real-time stance-swing phase detection
using cross-correlation techniques” (Willemsen, p. 1207, col.
2), it follows the Willemsen is not merely determining a slope
of an acceleration signal for comparison with the slope of a
linear template, in the manner suggested by Requester.
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P.O. Br. 23. In our view, Patent Owner has the better argument. If, as
alleged by Requester, Willemsen is determining the slope of the acceleration
signal by calculating the difference between samples, how are the templates
and cross-correlation used?
As an alternative basis for the rejection, the Examiner (RAN 19) and
Requester (Req. Resp’t Br. 6) rely on Willemsen’s following discussion of
calculating a time derivative:
Foot-Down Detection: As described before, the start of
the foot-down phase can be detected from the time derivative of
the heel-strike signal. This time derivative was calculated using
three consecutive points (at’= (ai+1 - ai-1)/2Δt and level detection
of the derivative was used to distinguish between heel-strike
and noise. This had to be detected within 0.6 s. or an automatic
return to stance phase was made.
Willemsen 1205, 2d col. Patent Owner responds that
[t]he derivative of the heel strike signal, however, is not
indicative of the foot-down phase.
To identify a heel-strike, Willemsen requires three
things: (1) a time derivative of an acceleration signal; (2) a
sufficient level of the time derivative; and (3) the time
derivative of sufficient level occurring within 0.6 seconds of
detecting the descending slope of the swing phase. (Willemsen,
p. 1205, col. 2). Merely taking a time derivative of an
acceleration signal is not sufficient to be indicative of a heel-
strike.
P.O. Br. 24 (emphasis added). We do not agree with Patent Owner’s
apparent interpretation of the claim 14 phrase “a difference there between
that is indicative of a particular event during the at least one footstep” to be
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referring to a difference whose amplitude is sufficient, without any further
processing, to identify the actual occurrence of a particular event during the
at least one footstep. Patent Owner has not explained why this claim
language should be given this interpretation. Furthermore, as explained
below with the aid of Figures 14, 21, 22, and 24 of the ’652 patent, this
interpretation appears to be inconsistent with the ’652 patent specification,
which describes performing an “is landing qualified?” routine 2112 (Fig. 21)
after calculating differences in an “are any of landing criteria met?” routine
2110 (Fig. 21) in order to determine whether a heel strike has occurred.
Figure 14 is reproduced below.
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Figure 14 shows an illustrative example of a primary routine 1400 that may
be performed by the processor 422 of the foot-mounted unit 102. Id. at
43:48-49. When, during the “toe-off event?” routine 1404, a toe-off event is
identified, the primary routine 1400 next proceeds to a step 1406, wherein a
foot contact time (Tc) is recorded based upon a measured time difference
between the time of the identified toe-off even 704 (Fig. 7) and the time of a
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heel-strike event 702 previously identified in connection with a “heel-strike
event?” routine 1408 of the primary routine 1400. Id. at 44:35-40.
Figure 21 of the ’652 patent is reproduced below.

Figure 21 is a flow diagram illustrating an example implementation of the
“heel-strike event?” routine 1408 shown in Figure 14, wherein it is
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determined when the foot of a user comes into contact with the ground
during a stride taken by a user. Id. at 18:28-31. Following an initializing
step 2101, a sample of signals 710 and 712 is taken in step 2102. Id. at
50:45-51. Next, a variable “threshold” that is updated in step is used in
connection with the steps 2110 and 2112 to determine whether the user’s
foot 114 has, in fact, impacted with the surface 108. Id. at 50:52-57.
Figure 22 of the ’652 patent is reproduced below.

Figure 22 is a flow diagram illustrating an example implementation of the
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“are any of landing criteria met?” routine 2110 shown in Figure 21. Id. at
18:32-34. The routine 2110 begins at step 2202, wherein it is determined
whether the difference between a current sample and the next most recent
sample is greater than the variable “threshold.” Id. at 52:49-52. If the
answer is yes, the routine 2110 proceeds to step 2204, wherein a variable
“down correction value” is set to be equal to the single sample period
between the two samples. Id. at 52:63-53:1. After step 2204, the routine
2110 proceeds immediately to the “is landing qualified?” routine 2112 of the
“heel-strike event?” routine 1408, shown in Figure 21. Id. at 53:5-8.
Figure 24 of the ’652 patent is reproduced below.

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Figure 24 is a flow diagram of an example implementation of the “is landing
qualified?” routine 2112 of the “heel-strike event?” routine 1408 shown in
Figure 21. Id. at 55:3-5. If, at step 2420, it is determined that the value of
the variable “sum_of_diffs” is greater than two times the value of the
variable “threshold,” the “is landing qualified?” routine 2112 proceeds to
steps 2114, 2116, 2118, and 2120 of the “heel-strike event?” routine 1408
(Fig. 21). Id. at 56:40-45.
Because the “is landing qualified?” routine 2112 (Fig. 21) is
performed after sample differences are calculated in the “are any of landing
criteria met?” routine 2110 (Fig. 21) in order to determine whether a heel
strike has occurred, Patent Owner’s above-noted interpretation of “indicative
of” in claim 14 is unduly narrow. We therefore agree with the Examiner and
Requester that this claim is broad enough to read on Willemsen’s description
of calculating a time derivative as part of a process for detecting the
occurrence of a foot-down event.
Of the five “calculated differences” independent claims rejected for
anticipation by Willemsen (viz., claims 10, 14, 50, 56, and 92), the
“indicative of a particular event” language argued by Patent Owner appears
in only claims 14, 56, and 92. Claims 10 and 52 instead recite determining
whether the calculated differences “satisfy any one of the plurality of
predetermined criteria consistent with the foot of the user engaging in the
particular event during a footstep.” (Emphasis added.) Patent Owner does
not specifically argue this or any other language of claims 10 and 50 and
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thus has failed to show error by the Examiner in the rejection of these
claims. We therefore sustain the rejection of independent claims 10, 14,
50, 56, and 92 and dependent claims 11, 12, 35, 37, 38, 51, 52, 54, 55, 77,
79, 80, and 93 for anticipation by Willemsen.

E. The § 103(a) Rejection over Willemsen -- Claims 9 and 47 (Issue B)
The rejection of dependent claim 9 and 47 for obviousness over
Willemsen does not cure the deficiency discussed above in the anticipation
rejection of parent claims 7 and 45 (i.e., that the recited “minimum degree of
smoothness” fails to read on Willemsen’s acceleration signal during the
asserted time period, when it undergoes a 50% decrease followed by a
300+% increase in amplitude). The obviousness rejection is therefore not
sustained.

F. The § 102 Rejection Based on Ebeling (Issue C)
1. The “Minimum Degree of Smoothness” Claims (Independent
Claims 1, 7, 41, 45, 86, and 88)
Ebeling’s invention is a device that includes an accelerometer and
measures the stride length of a person when walking or running. Ebeling
3:56-59.
Figure 4 of Ebeling is reproduced below.
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Figure 4 shows the acceleration data profile for a representative walking
stride. Id. at 6:12-13. The acceleration data is first analyzed to identify the
beginning and end of each stride and is then further analyzed to identify
specific events that occur during the course of a stride. Id. at 6:18-21.
The stride begins with the foot on the ground during the quiescent
phase (402) (id. at 7:13-16), which is defined as an interval of at least 0.25
seconds during which the acceleration of the foot changes by no more than
0.2 g, indicating that the foot is stationary. Id. at 7:28-31. The quiescent
phase ends when the foot is lifted from the ground (403), as evidenced by a
large forward acceleration of the foot whose maximum marks the “lift”
phase (404) of the stride, which is defined as the first peak (404) in the
acceleration data after the quiescent phase. Id. at 7:17-19, 32, and 33. This
peak must have an acceleration value at least 0.4 g greater than the average
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acceleration value during the quiescent phase and must be followed by a
decrease in acceleration of at least 0.4 g. Id. at 7:33-37. A peak that
satisfies these requirements is referred to as the “lift value.” Id. at 7:39-43.
The lift phase is followed by a “coast” phase (406) and then a “kick”
phase (408). Id. at 7:19-26.
The beginning (403) of the stride is defined as the time from which
the acceleration values increase monotonically in value until the lift value,
subject to the constraint that the acceleration value at the beginning of the
stride (403) must be no more than 0.1 g greater than the average acceleration
value in the quiescent region (402). Id. at 7:45-51.22 The Examiner reads
the recited “a minimum degree of smoothness for at least a given period of
time” on the monotonically increasing signal portion between the beginning
of stride (403) and the lift value (404). RAN 13-14.
Patent Owner argues that the Examiner’s reliance on this
monotonically increasing signal portion is misplaced because Ebeling does
not identify that this signal portion is monotonically increasing. P.O. Br. 13.
Rather, Patent Owner argues, “Ebeling merely determines whether an
acceleration signal has changed by a certain amount (i.e., 0.4g) [representing
lift phase 404], without any identification of whether or not the signal has

22 “Monotonic” is broadly defined as “2. Mathematics. a. (of a function or
of a particular set of values of a function) increasing or decreasing.”
Dictionary.com, http://dictionary.reference.com/browse/monotonic (last
visited Sept. 12, 2012).
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increased ‘monotonically.’” Id. at 13-14. Requester responds that
Ebeling explicitly states that the period between the beginning
of a stride and the lift value “is further defined” by a period of
monotonical acceleration increase (Ebeling at 7:45-51). One of
ordinary skill in the art would appreciate that by monitoring an
acceleration signal for a time period defined by a monotonical
increase, Ebeling discloses monitoring the signal and
identifying a minimal degree of smoothness indicative of the
foot being airborne (Greenwald Declaration at ¶ 18).
Req. Resp’t Br. 8. We agree and additionally note Ebeling’s explanation
that “[t]he acceleration data is first analyzed to identify the beginning and
end of each stride” (Ebeling 6:18-21; emphasis added). As noted above,
identifying the beginning of the stride (403) requires identifying the portion
of the signal that increases monotonically to reach the lift phase (404).
We therefore sustain the rejection for anticipation by Ebeling of
independent claims 1, 7, 41, 45, 86, and 88 and dependent claims 2-6, 8, 42-
44, 46, 48, 49, 87, and 89.

2. The “Calculated Differences” Claims (Independent Claims 10, 14,
50, 56, and 92)
In rejecting claim 14 for anticipation by Ebeling, the Examiner reads
the claimed “particular event” on quiescent phase 402 (Fig. 4) and explains
that
Ebeling teaches monitoring an acceleration signal to identify a
period when the acceleration of the foot changes by no more
than 0.2g. See, e.g., Ebeling, col. 7, 11.27-31. Monitoring a
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signal to identify when the acceleration of the foot changes by
no more than 0.2g, as described by Ebeling, necessarily and
inherently involves calculating differences between pairs of
signal samples, as would be well understood by one of ordinary
skill in the art.
RAN 20, para. B. Patent Owner argues that an acceleration change of no
more than 0.2 g is not “indicative of” a quiescent state, as required to satisfy
the claim because “[t]o be indicative of a quiescent phase, Ebeling places a
temporal requirement on acceleration changes, namely being less than 0.2g
for at least 0.25 seconds.” P.O. Br. 25. Requester responds that “simply
because sometimes there are instances in which the criteria are not met,
Ebeling still clearly discloses calculating differences that are indicative of
the quiescent phase during the footstep at other times . . . . This is all that is
required for Ebeling to be anticipatory.” Req. Resp’t Br. 8-9.
For reasons like those given above in the discussion of the rejection
for anticipation of claim 14 by Willemsen, that claim does not preclude
further processing of the calculated differences. The claim language is
therefore broad enough to read on repeatedly calculating the difference
between the highest and lowest sample amplitudes (i.e., a pair of samples) in
a moving window 0.25 seconds wide.
Furthermore, of the “calculated differences” independent claims
rejected for anticipation by Ebeling (viz., claims 10, 14, 50, 56, and 92), the
“indicative of a particular event” claim language argued Patent Owner
appears in only claims 14, 56, and 92, as noted above. Patent Owner does
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not specifically argue the “consistent with” or any other language of claims
10 and 50 and for this reason has failed to show error by the Examiner in the
rejection of these claims.
We therefore sustain the rejection for anticipation by Ebeling of
independent claims 10, 14, 50, 56, and 92 and dependent claims 11, 12,
35, 37, 38, 51, 52, 54, 55, 77, 79, 80, and 93.

G. The § 103(a) Rejection Based on Ebeling -- Claims 44 and 47 (Issue D)
Patent Owner does not separately argue the § 103(a) rejection of
dependent claims 44 and 47 for obviousness over Ebeling. This rejection is
therefore sustained for the same reason that the rejection of parent claims 41
and 45 for anticipation by this reference is sustained.

H. The §102 Rejections for Anticipation by Levi -- Independent Claims 10,
14, 50, 56, and 92 (Issue F).
Levi discloses a dead reckoning navigational system using an
accelerometer to measure foot impacts. Levi, title.
Figure 2 of Levi is reproduced below.

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Figure 2 illustrates raw data from a silicon accelerometer plotted on a time
axis. Id. at 2:27-28. This figure shows that the fundamental frequency is
about 1.8 Hz when the hiker’s speed is 3.3 mph. Id. at 3:59-61. Peaks in the
acceleration correspond to individual steps, and the fundamental period of
the data is the step frequency for that speed. Id. at 4:20-22.
The Examiner and Requester read claim 14 onto Figure 4, which is
reproduced below.
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Figure 4 illustrates a flow chart for a peak detection algorithm according to a
preferred embodiment. Id. at 2:32-33; 4:29. A sliding window of the data is
maintained with an odd number of samples, thereby ensuring that there is
always a central sample. Id. at 4:31-34. The central sample in the window
is tested. Id. at 4:34. Specifically, after initialization step 401, the next
sample is retrieved in step 402. Id. at 4:36-39. Steps 403-06 are described
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as follows:
Step 403: The samples in the sliding window are shifted, the
oldest falls off the far end, the new sample is placed in
the near end.
Step 404: The middle sample is compared to all the others. If it
is greater than the rest, then there is a potential step or
peak in the data. If not, another sample is taken.
Step 405: The magnitude of the peak must be above a minimum
threshold to prevent false detection on small fluctuations
that could not have been caused by footfalls. If the
magnitude of the peak is below the threshold, another
sample is taken.
Step 406: The time since the last peak must be greater than
some minimum period. If it is expected that steps will occur no
more often than three times per second, for example, then
peaks that are closer in time than 1/3-second are not
allowed. If the period is too small, another sample is
taken.
Id. at 4:40-57.
The Examiner, in discussing claim 10 (which recites “predetermined
criteria”), finds that Levi
teaches calculating differences between pairs of signal samples
and determining that a difference is indicative of a particular
event. In particular, Levi discloses comparing a middle signal
sample with other signal samples. . . . If the middle sample is
greater, the middle sample is compared to a threshold (i.e., a
predetermined criteria) to determine a particular event during a
footstep.
RAN 20, para. C. Patent Owner argues that claim 14 fails to reads on Levi
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because
[i]n Levi, a difference between a middle sample and the
other samples is not indicative of a peak corresponding to a
footstep. Rather, the middle sample exceeding a minimum
threshold, and another peak not being identified within a certain
amount of time, are both required to be indicative of a peak
corresponding to a footstep.
P.O. Br. 26. This argument rests on an interpretation of the phrase
“indicative of a particular event” in claims 14, 56, and 92 that is unduly
narrow for the reasons given above. As also pointed out above, this claim
language does not appear in independent claims 10 and, 50, and Patent
Owner has not specifically argued the “consistent with” language or any
other language of these claims.
We therefore sustain the rejection for anticipation by Levi of
independent claims 10, 14, 50, 56, and 92 and dependent claims 11, 12,
37, 38, 51, 52, 54, 55, 79, 80, and 93.

I. The § 103(a) Rejection Based on Willemsen and Whalen – Independent
Claim 40 (Issue J)
Claim 40 recites two features at issue. The first feature (hereinafter
the “waiting” step) is to wait a given period of time (i.e., “ignore time” 708a
or 708b in Figure 7 of the ’652 patent) after detection of a heel strike event
702a to detect a toe-off event 704a, recited as follows in claim 40:
(b) with at least one processor, analyzing the signal to
determine a moment that a foot of the user makes contact with a
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surface during one of the plurality of footsteps taken by the
user; (c) after performing the step (b), with the at least one
processor, analyzing the signal to determine a moment that the
foot leaves the surface during the one of the plurality of
footsteps; (d) waiting a given period of time after performing
the step (b) to perform the step (c); . . .
(Emphasis added.) The second feature (hereinafter the “calculating while
waiting” step) is to use the at least one processor during the recited “given
period of time” to “perform[] calculations involving at least one of at least
one determined foot contact time and a determined foot loft time,” as recited
in step (e) of claim 40.

1. The “Waiting” Step
Regarding the waiting step, the Examiner (RAN 15) relies on Figure 6
of Willemsen, which is reproduced below.

Figure 6, as stated in the caption, is a “[s]chematic diagram for a state-space
controller showing five normal transitions and three correction paths.”
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Specifically, the Examiner relies on the “Time delay” shown in Figure 6 and
described in the following passage in the reference:
Stance Detection: Because the transition of foot-down to stance
can not be detected directly from the acceleration signal (see
signal description)[,] stance was assumed to begin 0.25 s after
the foot-down detection. This ends the stimulation. The
accurate timing of the end of stimulation is a parameter for
patient comfort, so the accurate detection of the heel strike is
important.
Willemsen 1205, 2d col. Because Figure 6 shows that push-off detection
begins no sooner that entry into the stance state, which starts 0.25 seconds
after detection of a heel strike, we agree with the Examiner’s finding that
“[a]s clearly shown in Figure 6, Willemsen discloses waiting a period of
time (0.25 s) after determining the moment a foot of a user contacts the
ground (heel strike) before analyzing the signal to determine a moment that
the foot leaves the surface.” RAN 14-15.
Patent Owner argues that this interpretation ignores Willemsen’s
admonition (at 1204, 1st col., 3d full para.) that “the push-off must be
detected as soon as possible.” P.O. Br. 16. This and similar other arguments
overlook the fact that, as shown in Figure 6, push-off detection does not
begin until entry into the “stance” state, which begins 0.25 seconds after
detection of a heel strike. Thus, by “as soon as possible” Willemsen means
as soon as possible after entering the “stance” state, not as soon as possible
after a heel strike.

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2. The “Calculating While Waiting” Step
We note that the ’652 patent, referring to Figure 7, explains that
“calculations involving data accumulated by the foot-mounted unit 102 may
be made only during the ignore times 708, thereby consuming processing
power only during time periods when the signals 710 and 712 need not be
actively analyzed.” ’652 patent specification 31:15-19 (emphasis added).
Claim 40, however, recites performing “calculations involving at least one
of at least one determined foot contact time and a determined foot loft time”
during the “given period of time” without restricting these calculations to
the “given period of time.”
The Examiner has offered several alternative rationales for the
obviousness of the “calculation while waiting” step. One rationale is based
on a finding that “Whalen discloses a digital timer driven by a clock circuit
such that the processor may be adapted to make calculations at any particular
time.” RAN 15. As support for this finding, the Examiner cites the
following passage in Whalen:
On system reset, the microprocessor’s internal address
pointer is set to the beginning of the starting address of RAM,
and the system waits for the first foot-down event such that the
first time stored is that of a foot-down event. Consequently, the
data in memory will consist of a predictable sequence of event
times. Referring to the first datum as #0, all even-numbered
data will be foot-down times; all odd-numbered data, foot-up
times.
Whalen 10:18-25 (emphasis added). Although these lines describe waiting
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until the occurrence of the first foot-down event to begin recording data in
memory, they do not describe or suggest using the processor to make
calculations involving foot-down events or foot-up events during a time
period that occurs after detection of a foot-down event and prior to detection
of a foot-up event, as is necessary to satisfy the claim. However, this would
be the effect of the Examiner’s second rationale, which is that it would have
been obvious to modify Willemsen to include Whalen’s teaching of
“performing calculations including foot contact time to determine, for
example, the stride period of the user.” RAN 15 (citing Whalen 11:17-30).
This cited passage reads in part as follows:
Depending on the identification of the cycle as either walking
or running, the appropriate regression equation (see FIG. 5)
relating stride period to the reciprocal of contact time is used to
determine the “expected” stride period for the ground contact
time in question. If the actual stride period, measured as the
difference in time between successive foot-down events, is
outside of the expected value and its 95% confidence interval,
then the ground contact-time event (foot-down and foot-up) is
discarded.
Whalen 11:17-25. In our view, modifying Willemsen in view of Whalen to
calculate the stride period is consistent with the KSR rationale that “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.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007). Furthermore, in Willemsen thus modified it would have been
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obvious to perform stride period calculations whenever the required
acceleration data are available, and more particularly would have been
obvious to perform at least some of these calculations during the 0.25 second
period between detection of a heel strike and entry into the “stance” state.
Finally, we note that Patent Owner has not addressed, let alone
demonstrated error in, the Examiner’s third alternative rationale, which is
that “[a]s even Patent Owner has suggested - but noticeably omits in its
Response - Requester further submits that one of ordinary skill in the art at
the relevant time of the ’652 patent invention would have recognized the
desire for power saving.” RAN 16. Specifically, Requester argued that
“[a]s even Patent Owner has suggested, Requester further submits that one
of ordinary skill in the art at the relevant time of the ’652 patent invention
would have recognized the desire for power saving. See Declaration of Dr.
Greenwald at ¶ 35.” First Comments 16-17.
For the foregoing reasons, we sustain the Examiner’s rejection of
claim 40 for obviousness over Willemsen in view of Whalen.

J. The § 103(a) Rejection Based on Ebeling and Whalen – Independent
Claim 40 (Issue I)
1. The “Waiting” Step
The Examiner reads the recited “waiting” step on quiescent phase 402
in Ebeling’s Figure 4, reproduced again below for convenience.
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Negative peak 410 represents when the foot is placed on the ground.
Ebeling 7:25-26. As already noted, the quiescent phase (402) is defined as
an interval of at least 0.25 seconds during which the acceleration of the foot
changes by no more than 0.2 g, indicating that the foot is stationary. Id. at
7:28-31. The quiescent phase ends when the foot is lifted from the ground
(403). Id. at 7:15-16.
We agree with the Examiner that because detection of the initial foot
contact time 410 and foot loft time 403 are separated by a quiescent phase
that is at least 0.25 seconds long, Ebeling discloses the claimed “waiting”
step. RAN 16. Specifically, step (b), i.e., “determin[ing] a moment that a
foot of the user makes contact with the surface,” reads on detecting initial
contact time 410, whereas step (c), i.e., “determin[ing] a moment that the
foot surface,” reads on foot loft time 403. The recited “given period of time”
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recited in step (d) as occurring between steps (b) and (c) reads on quiescent
phase 402, which is at least 0.25 seconds long. Patent Owner’s argument
that “[t]he 0.25 second interval is used to identify a quiescent phase (i.e.,
when the foot is stationary during a stride), and is not a time period
occurring after the quiescent phase and before a lift-off phase” (P.O. Br. 20)
is unpersuasive because it reads step (b) on quiescent phase 402 rather than
on initial foot contact time 410.

2. The “Calculating While Waiting” Step
The Examiner provides alternative rationales for satisfying the
“calculation while waiting” step.
One of the rationales for obviousness given by the Examiner is that
“Ebeling describes that its stride analysis process may wait a given period
before continuing calculations. Ebeling, 10:1-18.” RAN 17. However,
these cited lines (reproduced in relevant part below) do not describe
performing calculations during the quiescent phase, as is necessary when the
recited “given period of time” is read on the quiescent phase. Instead, these
lines merely explain that the processor may have to wait for acceleration
data to be generated:
The stride analysis process (608) [Fig. 6] begins again at the
beginning of the acceleration data array, examining the data for
the next stride. Processing speeds of current data processors is
sufficiently high that the stride analysis can be done much faster
than the data is collected. Thus the stride analysis process may
at times have to wait for acceleration data samples before
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continuing.
Ebeling 10:11-18.
The Examiner alternatively finds that it would have been obvious to
perform the claimed calculations during the quiescent phase for the
following reasons:
Given that Ebeling expressly describes waiting a given period
of time in between the completion of a first stride and the
beginning of the next stride, it would have been obvious to
conduct calculations during this period. For example, one of
ordinary skill in the art would understand to appropriately use
processor resources and would appreciate that calculations may
be performed during the waiting period to conserve these
resources. It is well understood that one of ordinary skill in the
art recognizes the desire for power saving.
RAN 17-18. We agree that it would have been obvious to use Ebeling’s
processor to the perform stride period calculations whenever the required
acceleration data are available and that it more particularly would have been
obvious to perform at least some of these calculations during quiescent
phase 402. Furthermore, Patent Owner has not addressed, let alone shown
error in, the Examiner’s finding regarding power savings.
For the above reasons, we sustain the Examiner’s rejection of claim
40 for obviousness over Ebeling in view of Whalen (with Whalen being
cumulative to Ebeling).

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IV. SUMMARY
A. Sustained Rejections
The following rejections are sustained:
1. Claims 10-12, 14, 35, 37, 38, 50-52, 54-56, 77, 79, 80, 92, and 93
under 35 U.S.C. § 102(b) or § 102(e) for anticipation by Willemsen
(Issue A).
2. Claims 1-3, 5-7, 10-12, 14, 35, 37, 38, 41-43, 45, 48-52, 54-56, 77,
79, 80, 86-89, 92, and 93 under 35 U.S.C. § 102(e) for anticipation by
Ebeling (Issue C).
3. Claims 44 and 47 under 35 U.S.C. § 103(a) for obviousness over
Ebeling in view of Willemsen (Issue D).
4. Claims 10-12, 14, 37, 38, 50-52, 54-56, 79, 80, 92, and 93 under
35 U.S.C. § 102(b) or § 102(e) for anticipation by Levi (Issue F).
5. Claim 40 under 35 U.S.C. § 103(a) for obviousness over Ebeling in
view of Whalen (Issue I).
5. Claim 40 under 35 U.S.C. § 103(a) for obviousness over
Willemsen in view of Whalen (Issue J).

B. Rejections Not Sustained
The following rejections are not sustained:
1. Claims 1-8, 41-43, 45, 46, 48, 49, and 86-89 under 35 U.S.C.
§ 102(b) for anticipation by Willemsen (Issue A).
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2. Claims 9 and 47 under 35 U.S.C. § 103(a) for obviousness over
Willemsen (Issue B).
3. Claims 1, 5, 6, 10-12, 41, 50-52, 54, 55, 86, and 87 under 35
U.S.C. § 102(b) or § 102(e) for anticipation by Fyfe (Issue E).
4. Claims 10-12, 50-52, 54, and 55 under 35 U.S.C. § 102(e) for
anticipation by Richardson (Issue G).

C. Conclusions Regarding Determinations Not to Enter Proposed
Rejections
The Examiner’s determinations not to enter following proposed
rejections of claims 1-9, 41-49 and 86-89 on any of the following grounds is
sustained:
1. Under 35 U.S.C. § 103(a) for obviousness over Vock (Issue K).
2. Under 35 U.S.C. § 112, first paragraph, written description
requirement (Issue L).
3. Under 35 U.S.C. § 112, second paragraph (also Issue L).

V. DECISION
Regarding the subject matter of the Patent Owner’s appeal, the
Examiner’s decision that claims 1-3, 5-7, 10-12, 14, 35, 37, 38, 40-45, 47-
52, 54-56, 77, 79, 80, 86-89, 92, and 93 are unpatentable over the prior art is
sustained. However, the Examiner’s decision that claims 4, 8, 9, and 46 are
unpatentable over the prior art is not sustained. As a result, the Examiner’s
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decision that all of these claims are unpatentable over the prior art is
affirmed-in-part.
Regarding the subject matter of Requester’s appeal, the Examiner’s
determinations not to enter the proposed rejections of claims 1-9, 41-49, and
86-89 for unpatentability over Vock and also under the first and second
paragraphs of 35 U.S.C. § 112 are sustained. Thus, the Examiner’s decision
not to enter any of these rejections is affirmed.
Requests for rehearing in this inter partes reexamination proceeding
are governed by 37 C.F.R. § 41.79. See § 41.79(e) regarding extensions of
time in connection with requests for rehearing.

AFFIRMED-IN-PART

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For Patent Owner:

BANNER & WITCOFF, LTD.
1100 13th STREET, N.W.
SUITE 1200
WASHINGTON DC 20005-4051

For Third Party Requester:

STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 New York Avenue, N.W.
Washington, D.C. 20005-3934