Ex Parte 8,157,731 et al

Patent Trial and Appeal Board

Jul 16, 2015

95002367 (P.T.A.B. Jul. 16, 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.
95/002,367 09/14/2012 8,157,731 92092-891658 7978
23370 7590 07/16/2015
KILPATRICK TOWNSEND & STOCKTON LLP
1100 PEACHTREE STREET
SUITE 2800
ATLANTA, GA 30309
EXAMINER
RALIS, STEPHEN J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
07/16/2015 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 and Respondent

v.

BODY MEDIA, INC.
Patent Owner and Appellant
____________________

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Technology Center 3900
____________

Before BRADLEY W. BAUMEISTER, ANDREW J. DILLON, and
JEREMY J. CURCURI, Administrative Patent Judges.

DILLON, Administrative Patent Judge

DECISION ON APPEAL

STATEMENT OF THE CASE
This proceeding arose from a request by Basis Science (“Requester”)
for an Inter Partes reexamination under 35 U.S.C. §§ 311–318 and
37 C.F.R. § 1.913 (“Request”) of claims 1–25 of United States Patent
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Number 8,157,731, which issued on April 17, 2012 to Eric Teller et al.1 A
hearing was held on June 24, 2015. A copy of the transcript will be added to
the record in due course. We have jurisdiction under 35 U.S.C. § 315
(2002).
Invention
The ’731 patent describes “methods and apparatuses for measuring a
state parameter of an individual using signals based on one or more sensors.
The present invention also relates to various methods for making such
apparatuses.” ’731 Patent, col. 1, ll. 15–18.
Claims
Claims 1–42 are subject to reexamination and have been rejected.
Claims 1–25 are original patent claims. Claims 26–42 are proposed new
claims. Claims 1, 9, 17, and 26 are independent. Claim 1 is illustrative.
1. An apparatus for deriving a state parameter of an individual,
comprising:

a processor;

a sensor for generating a sensor output signal comprising data
indicative of a rate of heat flowing off said individual’s body,
and a sensor for generating a sensor output signal comprising
data indicative of a resistance of said individual’s skin to an
electric current, said sensor output signals being directed to an
electronic communication link with said processor;

wherein said processor automatically determines a context of
said individual with a naïve Bayesian classifier and a linear
regression by using said data indicative of the rate of heat

1 Body Media, Inc. (“Owner”) is asserted to be the real party in interest.
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flowing off said individual’s body, and said data indicative of
the resistance of said individual’s skin to an electric current;

and wherein said processor utilizes said context to predict the
energy expenditure of said individual.

Prior Art
Pottgen et al. US 5,524,618 June 11, 1996
Myllymäki US 5,670,944 Sept. 23, 1997
Amano et al. US 6,030,342 Feb. 29, 2000
Mault US 6,478,736 B1 Nov. 12, 2002
Bridger et al. US 6,491,647 B1 Dec. 10, 2002
Shusterman US 6,925,324 B2 Aug. 2, 2005

Statement of Rejections
Claims 1–42 are being reexamined. RAN 2.2
Owner contends that the Examiner erred in adopting the following
grounds of rejections against claims 1–42 (PO App. Br. 4):
A. The rejection of claims 9, 10, 17, 22, 24, and 26 under 35 U.S.C.
§ 103(a) as unpatentable over Amano, Myllymäki, and Pottgen (PO App. Br.
8–21);
B. The rejection of claims 1, 2, 8, 11, 18, and 19 under 35 U.S.C.
§ 103(a) as unpatentable over Amano, Myllymäki, Pottgen, and Shusterman
(PO App. Br. 22–26);

2 Throughout this opinion we refer to (1) the Inter Partes Reexamination
Request for U.S. Patent No. 8,156,731 filed October 9, 2003 (“Request”);
(2) the Action Closing Prosecution mailed October 23, 2013 (“ACP”);
(3) the Right of Appeal Notice mailed April 15, 2014 (“RAN”); (4) Patent
Owner’s Appeal Brief filed July 15, 2014 (“PO App. Br.”); (5) Requester’s
Respondent Brief filed August 15, 2014 (“3PR Resp. Br.”); (6) the
Examiner’s Answer mailed October 31, 2014 (“Ans.”); and, (7) Patent
Owner’s Rebuttal Brief filed December 1, 2014 (“PO Reb. Br.”).
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C. The rejection of claims 29-41 under 35 U.S.C. § 103(a) as
unpatentable over Amano, Myllymäki, Pottgen, Mault, and Bridger
(PO App. Br. 26–28); and
D. The rejection of dependent claims 3–7, 12–16, 20, 27, 28, and 42
under 35 U.S.C. § 103(a) over various references by virtue of their
dependency from the independent claims argued above (PO App. Br. 28–
30).

Related Litigation
According to Owner, “U.S. Patent No. 8,157,731 to Teller et al. (the
patent at issue in this reexamination) is asserted against third party requester
Basis Science in a lawsuit filed in the United States District Court for the
District of Delaware, BodyMedia, Inc. v. Basis Science, Inc., Civil Action
No. 1: 12-cv-00133 (GMS).” (PO App. Br. 1).

Standard of Review and Decision
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)).
We affirm.

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CONTENTIONS AND ANALYSIS
Ground of Rejection A
Owner argues the Examiner erred in rejecting claims 9, 10, 17, 22, 24,
and 26 under 35 U.S.C. § 103(a) as unpatentable over Amano, Myllymäki,
and Pottgen. Specifically, Owner notes that each of independent claims 9,
17, and 26 recites using a context of an individual “determined from skin
resistance data and heat flow to predict the energy expenditure of the
individual” and argues that the suggested combination of references “lacks
any disclosure or suggestion regarding the use of skin resistance data for
predicting energy expenditure.” PO App. Br. 8–9; PO Reb. Br. 4–7.
Addressing the Myllymäki reference, Owner urges the Examiner’s
findings that “Myllymaki sufficiently teaches using the data indicative of a
resistance of the individual’s skin to an electric current to automatically
determine a context/physical condition (i.e. ‘motoric activity’ versus ‘no
motoric activity’. . . )” are clearly erroneous. PO App. Br. 9–10. In support
of this position Owner lists various excerpts from Myllymäki, which Owner
asserts fail to disclose using skin resistance data to predict energy
expenditure. Id.
Owner asserts there is no evidence establishing that a skin
conductivity transducer, such as that disclosed by Myllymäki, can be used in
conjunction with the disclosed calorie expenditure measurement process
performed by the Amano device. Id. at 10.
In response, Requester argues that Myllymäki discloses that using a
single sensor may provide false data regarding the physical condition of an
individual, and using additional sensors, such as skin conductivity, may
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provide a more reliable description of the physical conditions of a human
body. 3PR Resp. Br. 10 (citing Myllymäki, col. 3, ll. 12–17).
The Examiner finds that Myllymäki sufficiently teaches utilizing skin
resistance as one of several sensors for determining the “context” of a user.
RAN 10.
With respect to Owner’s argument that there is no evidence that the
skin conductivity transducer of Myllymäki could be utilized in conjunction
with the calorie expenditure measurement process disclosed by Amano, we
hold that “[I]t is not necessary that the inventions of the references be
physically combinable to render obvious the invention under review.” In re
Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (citing Orthopedic Equip. Co.
v. United States, 702 F.2d 1005, 1013 (Fed. Cir. 1983)); In re Andersen, 391
F.2d 953, 958 (CCPA 1968); see also In re Nievelt, 482 F.2d 965, 968
(CCPA 1973) (“Combining the teachings of references does not involve an
ability to combine their specific structures.”). “The test for obviousness is
not whether the features of a secondary reference may be bodily
incorporated into the structure of the primary reference . . . . Rather, the test
is what the combined teachings of the references would have suggested to
those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA
1981) (citations omitted).
Here, the Examiner does not propose that the skin conductivity sensor
of Myllymäki be physically incorporated into the structure of Amano.
Instead, the Examiner concludes that the combined teachings of the
references would have suggested to one of ordinary skill in the art that the
use of multiple transducers, such as skin conductivity sensors, would
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provide greater reliability in the system disclosed by Amano. Owner’s
argument overlooks “the relevant combined teachings of the . . . references.”
Andersen, 391 F.2d at 958 (dismissing the argument that a combination
would result in an inoperative structure).
Owner’s arguments with respect to Pottgen are similarly unavailing.
Owner argues that Pottgen fails to disclose skin resistance data and merely
discloses the use of heat flux to measure caloric expenditure. PO App. Br.
13. However, the Examiner relies upon Pottgen only for a suggestion that
the use of data indicative of the rate of heat flow off an individual is a
known method of determining caloric expenditure. RAN 10.
“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986) (citing Keller, 642 F.2d at 425). In determining obviousness,
furthermore, a reference “must be read, not in isolation, but for what it fairly
teaches in combination with the prior art as a whole.” Id.
Here, the Examiner relies on the combined teachings of Amano,
Myllymäki, and Pottgen (in combination with the prior art as a whole) to
reject the limitations at issue. (RAN 9–10.) Consequently, Owner’s
individual attacks on Amano, Myllymäki, and Pottgen cannot establish non-
obviousness. Owner’s arguments fail to address the Examiner’s
aforementioned findings that a person of ordinary skill in the art would find
the suggestion in the cited art that using multiple sensors (including skin
conductivity and the heat flowing off an individual’s body) is a known
technique for determining a “context” of that individual.
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Owner also alleges that the combination of Amano, Myllymäki, and
Pottgen is improper, arguing that the Examiner’s rationale for combining
these teachings is clearly erroneous. PO App. Br. 18–21, PO Reb. Br. 8–11.
The Examiner sets forth, as the basis for this combination
Thus, in light of the ‘731 disclosure (‘731 patent column
63, lines 4–18), Amano et al., Myllymäki and Pottgen et al., the
Examiner finds that a person of ordinary skill in the art would
be motivated to make the above noted modification (i.e. include
the heat flow sensor, determination of caloric expenditure data
thereof; and modifying the processor of Amano et al. to
additionally use the heat flow measured by the heat flow sensor
to determine the context of a user of Pottgen et al.) of Amano et
al., since Amano et al. teaches utilizing multiple sensors with
selection of a respective regression formula indicative thereof;
and Myllymäki teaches such utilization of multiple sensors
compensates for false data from other sensors and remove
anomalies caused by various performance conditions, thereby
providing a more reliable description of the health and/or
physical condition of the user. (Myllymäki; column 3, lines 8–
31).
RAN 21–22.
We find no error in the Examiner’s rationale for this combination.
Each of the cited references is directed to a system for monitoring subjects to
determine a physical context of those subjects. It is well settled that “[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” KSR Int’l v.
Teleflex Inc., 550 U.S. 398, 416 (2007). “Obviousness does not require
absolute predictability. Only a reasonable expectation that the beneficial
result will be achieved is necessary to show obviousness.” In re Merck &
Co., 800 F.2d 1091, 1097 (Fed.Cir. 1986) (internal citations omitted).
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Ground of Rejection B
Owner argues the Examiner erred in rejecting claims 1, 2, 8, 11, 18,
and 19 under 35 U.S.C. § 103(a) as unpatentable over Amano, Myllymäki,
Pottgen, and Shusterman. In addition the arguments set forth above with
respect to Ground of Rejection A, Owner argues that the citation of
Shusterman fails to cure the deficiencies argued above regarding a
determination of a context of an individual subject to predict energy
expenditure based upon skin resistance data. PO App. Br. 22, PO Reb. Br.
11–12.
Owner further argues that Shusterman “lacks any disclosure of using
skin resistance data, predicting or otherwise determining energy expenditure,
or any combination of these features.” PO App. Br. 22.
Owner’s arguments are unpersuasive for the reasons set forth above.
As we noted, Owner argues the references individually and fails to address
the Examiner’s arguments regarding what this combination of references
would suggest to a person of ordinary skill in the art. We find a clear
suggestion that it was known at the time of the invention to use multiple
physiological sensors to provide greater reliability in measurement. When
viewed as a whole, the cited references not only suggest the use of multiple
sensors, they also suggest the use of skin conductivity and heat flow among
the possible sensors.
Owner also alleges that the Examiner erred by improperly combining
these references, arguing against the Examiner’s position that
It would have been obvious to one of ordinary skill in the
art at the time of the invention was made to modify the
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Fourier analysis of data of Amano et al. in view of
Myllymäki and Pottgen et al. with the linear regression
and Bayesian model analysis of Shusterman in order to:
provide smaller residual error when compared to Fourier
analysis . . .

Owner argues this position of the Examiner is improper as the Bayesian
probabilistic methods disclosed by Shusterman are unrelated to and provide
no improvement over the Fourier-related processing disclosed in Amano.
PO App. Br. 23 (emphasis omitted); PO Reb. Br 12–13.
We agree that the Examiner’s stated basis for this combination is not a
hallmark of clarity; however, Shusterman describes the use of orthogonal
transformations in the analysis of physiological data, such as principal
component analysis (PCA), which, when compared to fixed form basis
function (such as Fourier representations), provide a smaller residual error.
Shusterman, col. 8, ll. 19–37. Shusterman, then, clearly describes the use of
multidimensional scaling techniques, beyond PCA and lists among the
possible techniques Bayesian probability. Id. at col. 12, ll. 27–50. The use
of Bayesian probability methods to analyze physiological data was thus
known in the art, as evidenced by the aforementioned disclosure of
Shusterman. However, in an abundance of caution we designate our
affirmance of the Examiner’s rationale for combining the Amano,
Myllymäki, Pottgen, and Shusterman references as a new ground of
rejection.
Ground of Rejection C
Owner argues the Examiner erred in rejecting claims 29–41 under
35 U.S.C. § 103(a) as unpatentable over Amano, Myllymäki, Pottgen, Mault,
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and Bridger. Specifically, Owner argues that the cited references fail to
show or suggest deriving data based upon heat flow and skin conductivity
“wherein the derived data is also comprised of data relating to sleep of the
individual.” PO App. Br. 26; PO Reb. Br. 14–15.
Requester argues that the cited references, when considered by one of
ordinary skill in the art, disclose the use of multiple sensors to determine a
physiological state of an individual. Requester notes that Owner argues the
failure of either Amano or Bridger to generate data relating to sleep based
upon skin resistance or heat flow, urging that Owner is attacking the cited
references piecemeal, rather than pointing out errors in what the Examiner
and Requester argue would be suggested to one of ordinary skill in the art
when reviewing all of these references.
We concur with Requester for the same reasons we set forth above.

Ground of Rejection D
Owner argues the Examiner erred in rejecting claims 3–7, 12–16, 20,
27, 28, and 42 under 35 U.S.C. § 103(a) over various references by virtue of
their dependency from the independent claims argued above.
For the reasons we set forth above we find no error in the Examiner’s
rejection of claims 3–7, 12–16, 20, 27, 28, and 42 under 35 U.S.C. § 103(a).

Claims 21, 23, and 25
Owner submits no arguments regarding claims 21, 23, and 25.
Consequently the Examiner’s rejection of those claims is summarily
affirmed.
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DECISION
The Examiner’s decision adverse to the patentability of claims 1–42 is
affirmed.
Pursuant to 37 C.F.R. § 41.77(a), the above-noted affirmance of the
rejection of claims 1, 2, 8, 11, 18, and 19 under 35 U.S.C. § 103(a) as
unpatentable over Amano, Myllymäki, Pottgen, and Shusterman constitutes
a new ground of rejection solely with respect to the Examiner’s rationale for
combining these references. Section 41.77(b) provides that “[a] new ground
of rejection . . . shall not be considered final for judicial review.” That
section also provides that Patent Owner, WITHIN ONE MONTH FROM
THE DATE OF THE DECISION, must exercise one of the following two
options with respect to the new grounds of rejection to avoid termination of
the appeal proceeding as to the rejected claims:

(1) Reopen prosecution. The owner may file a response
requesting reopening of prosecution before the examiner.
Such a response must be either an amendment of the
claims so rejected or new evidence relating to the claims
so rejected, or both.

(2) Request rehearing. The owner may request that the
proceeding be reheard under § 41.79 by the Board upon
the same record. The request for rehearing must address
any new ground of rejection and state with particularity
the points believed to have been misapprehended or
overlooked in entering the new ground of rejection and
also state all other grounds upon which rehearing is
sought.
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In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he original decision of the Board under § 41.77(a).” A
request for rehearing must be in compliance with 37 C.F.R. § 41.79(b).
Comments in opposition to the request and additional requests for rehearing
must be in accordance with 37 C.F.R. § 41.79(c)–(d), respectively. Under
37 C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a)
of this section, for requesting further rehearing under paragraph (c) of this
section, and for submitting comments under paragraph (b) of this section
may not be extended.
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141–144 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding “commenced” on or after November
2, 2002 may not be taken “until all parties’ rights to request rehearing have
been exhausted, at which time the decision of the Board is final and
appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See
also MPEP § 2682 (8th ed., Rev. 8, July 2010).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
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.

AFFIRMED

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Patent Owner:
KILPATRICK TOWNSEND & STOCKTONLLP
1100 PEACHTREE STREET
SUITE 2800
ATLANTA, GA 30309

Third Party Requester:
RAJIV P PATEL
FENWICK & WEST LLP
801 CALIFORNIA STREET
MOUNTAIN VIEW, CA 94041