Ex Parte 8073707 et al

Patent Trial and Appeal BoardMar 26, 2015

95002376 (P.T.A.B. Mar. 26, 2015)

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. 95/002,376 09/14/2012 8073707 92092-891575 7381 23370 7590 03/27/2015 KILPATRICK TOWNSEND & STOCKTON LLP 1100 PEACHTREE STREET SUITE 2800 ATLANTA, GA 30309 EXAMINER DEB, ANJAN K ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 03/27/2015 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 ________________ BASIS SCIENCE, INC. Requester v. BODYMEDIA, INC. Patent Owner and Appellant ________________ Appeal 2014-008959 Reexamination Control 95/002,376 Patent 8,073,707 B2 Technology Center 3900 ________________ Before JOHN A. JEFFERY, ERIC B. CHEN, and JEREMY J. CURCURI, Administrative Patent Judges. CURCURI, Administrative Patent Judge. DECISION ON APPEAL Patent Owner appeals the Examiner’s decision to reject claims 1-18, 20-22, and 25-43. PO App. Br. 1. We have jurisdiction under 35 U.S.C. §§ 134 and 315, and we heard the appeal on March 4, 2015. Appeal 2014-008959 Reexamination Control 95/002,376 Patent 8,073,707 B2 2 Claims 1-4, 7, 11, 14-18, and 22 are rejected under 35 U.S.C. 102(e) as anticipated by Amano (US 6,030,342; issued Feb. 29, 2000). RAN 6-15, 46-49. Claims 8, 9, and 13 are rejected under 35 U.S.C. 103(a) as obvious over Amano. RAN 15-16, 50. Claims 5, 6, 10, 12, 20, and 21 are rejected under 35 U.S.C. 103(a) as obvious over Amano and Mault (US 6,478,736; issued Nov. 12, 2002). RAN 17-24, 50-52. Claims 25-40, 42, and 43 are rejected under 35 U.S.C. 103(a) as obvious over Amano and Myllymaki (US 5,670,944; issued Sep. 23, 1997). RAN 24-44, 52-55. Claim 41 is rejected under 35 U.S.C. 103(a) as obvious over Amano, Mault, and Myllymaki. RAN 45-46, 55. We affirm. STATEMENT OF THE CASE This proceeding arose from a request by BASIS Science, Inc. for an inter partes reexamination of Patent 8,073,707 B2, titled “System for Detecting, Monitoring, and Reporting an Individual’s Physiological or Contextual Status (“the ’707 patent”). The ’707 patent describes “present[ing a] derived [physiological or contextual] parameter in relation to any other sensed parameters, entered information, life activities data, or other derived data.” Abstract. Claim 1, which is reproduced below with the disputed limitation emphasized, is illustrative: Appeal 2014-008959 Reexamination Control 95/002,376 Patent 8,073,707 B2 3 1. A system for detecting, monitoring, and reporting a status of an individual to a user, the system comprising: a first sensor adapted to generate data indicative of a first physiological parameter of the individual if said first sensor is in proximity to the individual; a second sensor adapted to generate data indicative of a second physiological parameter of the individual if said second sensor is in proximity to the individual; a processing unit in electronic communication with said first sensor and said second sensor; a central monitoring unit in electronic communication with at least one of said sensors and said processing unit; and an output device in electronic communication with at least one of said processing unit and said central monitoring unit, wherein at least one of said processing unit and said central monitoring unit is programmed (a) to generate at least one of a derived physiological status parameter of the individual and a derived parameter related to an activity in which the individual has engaged said derived parameters based on both of said data indicative of said first physiological parameter of the individual and said data indicative of said second physiological parameter of the individual, and (b) to cause said output device to present to a user indicators of at least one of said derived parameters of the individual in relation to indicators of at least one of (i) said data indicative of said first physiological parameter of the individual, and (ii) said data indicative of said second physiological parameter of the individual. Appeal 2014-008959 Reexamination Control 95/002,376 Patent 8,073,707 B2 4 ANALYSIS THE ANTICIPATION REJECTION OF CLAIMS 1-4, 7, 11, 14-18, AND 22 BY AMANO The Examiner finds Amano describes all limitations of claims 1-4, 7, 11, 14-18, and 22. RAN 6-15, 46-59. Regarding claim 1, the Examiner maps Amano’s pulse rate data to the recited first physiological parameter, Amano’s body temperature data to the recited second physiological parameter, and Amano’s caloric expenditure to the recited derived parameter. RAN 6-9 (citing Amano, col. 12, l. 66-col. 13, l. 23; col. 18, ll. 6-44; Fig. 2). Patent Owner presents the following principal arguments: i. Amano further discloses that the display can be used to separately display either the calorie expenditure without any reference to other physiological parameters or physiological parameters (e.g., pulse rate, body temperature) without any reference to a derived parameter, but lacks any disclosure that the display can be used to present the calorie expenditure and the physiological parameters in relation to one another. PO App. Br. 10; see also PO Reb. Br. 10-13. ii. This distinction between the invention claimed in [the ’707 patent] and the Amano device is significant in that the claimed invention allows an individual to easily monitor and readily determine the impact of changes to various measured physiological parameters on the status of the individual’s health, as indicated by the displayed derived parameter. PO App. Br. 12-13. Appeal 2014-008959 Reexamination Control 95/002,376 Patent 8,073,707 B2 5 We are not persuaded of any error in the Examiner’s findings. Regarding Patent Owner’s arguments (i) and (ii), we agree with and adopt as our own the Examiner’ explanation: Amano disclose[s] that the [indicator] of a derived parameter (calculated calorie expenditure) (see Fig. 17, step Sa8) is presented to the user on display 205 (col. 18 lines 6-44) and data indicative of the physiological parameter (measured temperature value at temperature sensor Ts3) [are] presented to the user on display 205 (col. 23 line 66 to col. 24 line 2). Thus Amano disclose[s] that it presents to a user “indicators of at least one of said derived parameters of the individual in relation to indicators of at least one of (i) said data indicative of said first physiological parameter of the individual, and (ii) said data indicative of said second physiological parameter of the individual” as recited in claim 1. RAN 49; see also Amano, Fig. 19 (display 205 presenting calorie expenditure), Fig. 37 (display 205 displaying body temperature). In addition, we agree with Third Party Requester that “the claim language itself does not state that the indicator of the derived parameter and the indicator of the physiological parameter be displayed anywhere. The claim only recites that these indicators be presented one in relation to the other.” 3PR Resp. Br. 5. Claim 1 does not require simultaneous presentation to the user of the parameters, rather claim 1 only requires that indicators of at least one derived parameter are presented in relation to indicators of data indicative of at least one physiological parameter. Amano (Fig. 19) displays calorie expenditure with respect to time, and Amano (Fig. 37) displays body temperature with respect to time. Because both calorie expenditure and body Appeal 2014-008959 Reexamination Control 95/002,376 Patent 8,073,707 B2 6 temperature are displayed with respect to time, calorie expenditure is presented in relation to body temperature. We, therefore, sustain the anticipation rejection of claim 1 based on Amano, as well as the rejection of claims 2-4, 7, 11, 14-18, and 22, which are not separately argued with particularity. THE OBVIOUSNESS REJECTION OF CLAIMS 25-40, 42, AND 43 OVER AMANO AND MYLLYMAKI The Examiner finds Amano and Myllymaki teach all limitations of claims 25-40, 42, and 43. RAN 24-44, 52-55 (incorporating by reference TPR Comments filed March 15, 2013, pages 12-14 and Exhibit C: claim charts pages 1-31). Regarding claims 25 and 37, Patent Owner presents the following principal arguments: i. Amano’s cited disclosure of displaying calorie expenditure alone is not the same as or suggestive of presenting indicators of a derived parameter of an individual in relation to indicators of a first or second physiological parameter of the individual (as recited in claim 25) or indicators of data generated by a galvanic skin response sensor, an accelerometer, a sensor generating data indicative of an individual’s heart, or a skin temperature sensor (as recited in claim 37). PO App. Br. 14; see also PO Reb. Br. 13-15. ii. Myllymaki does not cure the deficiencies of Amano. PO App. Br. 15. We find Patent Owner’s arguments (i) and (ii) unpersuasive of any error in the Examiner’s findings and conclusions for the same reasons Appeal 2014-008959 Reexamination Control 95/002,376 Patent 8,073,707 B2 7 discussed above with respect to claim 1. Amano describes claim 25’s recited presenting an indicator of a derived parameter (Amano’s (Fig. 19) calorie expenditure) in relation to an indicator of data indicative of a physiological parameter (Amano’s (Fig. 37) body temperature). Amano describes claim 37’s recited presenting an indicator of a derived physiological parameter (Amano’s (Fig. 19) calorie expenditure) in relation to an indicator of an indicator of data generated by a skin temperature sensor (Amano’s (Fig. 37) body temperature). With further regard to claim 25, Patent Owner presents the following principal arguments: iii. Even if the teachings of Amano and Myllymaki were properly combined, the resulting system would not be capable of generating derived parameters using data generated by a GSR sensor, an accelerometer, and a heart sensor. Instead, the proposed combination would, at best, result in a device capable of using different subsets of a group of sensors to perform different functions, i.e. determine calorie expenditure as taught by Amano (see Amano FIG. 1, 6:57-67[;] 7:8-36; 18:43-45) and provide an alarm as taught by Myllymaki (see Myllymaki 2:47- 52; 3:3-6). But neither function would involve generating derived parameters using data generated by a GSR sensor, an accelerometer, and a heart sensor, as recited in claim 25. PO App. Br. 16-17; see also PO Reb. Br. 6-9. iv. “[N]o evidence of record supports a finding that an indication of whether a subject is sweating or any other data obtained with a conductivity transducer can be used with a pulse rate, temperature, and/or [] accelerometer data to determine calorie expenditure, as disclosed in Amano.” PO App. Br. 17; see also PO Reb. Br. 1-6. Appeal 2014-008959 Reexamination Control 95/002,376 Patent 8,073,707 B2 8 v. “Myllymaki’s disclosure of monitoring a physical or performance condition is not the same as or suggestive of a derived parameter related to an activity in which the individual has engaged, as recited in claim 25.” PO App. Br. 18. “Myllymaki’s disclosure of outputting an alarm after compensating for false data from a sensor is not the same as or suggestive of generating a derived parameter that indicates the status of the individual or relates to an activity in which the individual has engaged, as required by claim 25.” Id. Regarding Patent Owner’s arguments (iii) and (iv), we find these arguments unpersuasive of any error in the Examiner’s findings and conclusions. We agree with and adopt as our own the Examiner’s explanation that Myllymaki’s conductivity transducer discloses the recited galvanic skin response sensor, Amano’s body motion detector discloses the recited accelerometer, and Amano’s pressure sensors disclose the recited heart sensor. See TPR Comments filed March 15, 2013, Exhibit C: claim charts pages 2-3. We see no error in the Examiner’s conclusion that “it would [have been] obvious to modify the device of Amano to include a skin conductance sensor as an additional sensor compensating for false data cause[d] by one sensor. It is prima facie obvious to use a known technique to improve similar devices.” TPR Comments filed March 15, 2013, Exhibit C: claim charts page 10; see RAN 54 (“GSR sensor would provide a more accurate determination of user’s state and therefore more accurate determination of caloric expenditure.”). We also agree with and adopt as our own Third Party Requester’s further explanation: “The disclosure of the combination of Amano and Appeal 2014-008959 Reexamination Control 95/002,376 Patent 8,073,707 B2 9 Myllymaki is a system for determining caloric expenditure with a more accurate determination of whether a user is at rest or active prior to calculating caloric expenditure. Thus, the resulting determination of caloric expenditure is more accurate.” 3PR Resp. Br. 8-9. Regarding Patent Owner’s argument (v), we find this argument unpersuasive of any error in the Examiner’s findings and conclusions. Claim 25 (emphasis added) recites “generate at least one of a derived physiological status parameter of the individual and a derived parameter related to an activity in which the individual has engaged.” We agree with and adopt as our own the Examiner’s explanation that Amano describes the recited derived physiological status parameter (Amano’s (Fig. 19) calorie expenditure) based on data indicative of the first physiological parameter (Myllymaki’s conductivity transducer’s data) and data indicative of the second physiological parameter (Amano’s body motion detector’s data) and also data indicative of the third physiological parameter (Amano’s pressure sensors’ data). See TPR Comments filed March 15, 2013, Exhibit C: claim charts pages 8-9. With further regard to claim 37, Patent Owner presents additional arguments (PO App. Br. 30-21; PO Reb. Br. 12), which are principally the same as the further arguments presented for claim 25. Thus, we also we find these additional arguments for claim 37 unpersuasive of any error in the Examiner’s findings and conclusions for the same reasons discussed above with respect to the additional arguments for claim 25. Appeal 2014-008959 Reexamination Control 95/002,376 Patent 8,073,707 B2 10 We, therefore, sustain the obviousness rejection of claims 25 and 37 based on Amano and Myllymaki, as well as the rejection of claims 26-36, 38-40, 42, and 43, which are not separately argued with particularity. THE OBVIOUSNESS REJECTION OF CLAIMS 8, 9, AND 13 OVER AMANO The Examiner finds Amano teaches all limitations of claims 8, 9, and 13. RAN 15-16, 50. Patent Owner does not argue claims 8, 9, and 13 with particularity. See PO App. Br. 22-23. We, therefore, sustain the obviousness rejection of claims 8, 9, and 13 based on Amano. THE OBVIOUSNESS REJECTION OF CLAIMS 5, 6, 10, 12, 20, AND 21 OVER AMANO AND MAULT The Examiner finds Amano and Mault teach all limitations of claims 5, 6, 10, 12, 20, and 21. RAN 17-24, 50-52. Patent Owner does not argue claims 5, 6, 10, 12, 20, and 21 with particularity. See PO App. Br. 22-23. We, therefore, sustain the obviousness rejection of claims 5, 6, 10, 12, 20, and 21 based on Amano and Mault. THE OBVIOUSNESS REJECTION OF CLAIM 41 OVER AMANO, MAULT, AND MYLLYMAKI The Examiner finds Amano, Mault, and Myllymaki teach all limitations of claim 41. RAN 45-46, 55. Appeal 2014-008959 Reexamination Control 95/002,376 Patent 8,073,707 B2 11 Patent Owner does not argue claim 41 with particularity. See PO App. Br. 22-23. We, therefore, sustain the obviousness rejection of claim 41 based on Amano, Mault, and Myllymaki. ORDER The Examiner’s decision rejecting claims 1-18, 20-22, and 25-43 is affirmed. Requests for extensions of time in this inter partes reexamination proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79. In the event neither party files a request for rehearing within the time provided in 37 C.F.R. § 41.79, and this decision becomes final and appealable under 37 C.F.R. § 41.81, a party seeking judicial review must timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983. AFFIRMED Appeal 2014-008959 Reexamination Control 95/002,376 Patent 8,073,707 B2 12 For Patent Owner: KILPATRICK TOWNSEND & STOCKTON LLP 1100 PEACHTREE STREET SUITE 2800 ATLANTA, GA 30309 For Third Party Requester: FENWICK & WEST LLP SILICON VALLEY CENTER 801 CALIFORNIA STREET MOUNTAIN VIEW, CA 94041