Valencell, Inc.Download PDFPatent Trials and Appeals BoardDec 8, 20212021003335 (P.T.A.B. Dec. 8, 2021) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/949,266 04/10/2018 Steven Francis LeBoeuf 9653-3TSCT13 1705 20792 7590 12/08/2021 MYERS BIGEL, P.A. PO BOX 37428 RALEIGH, NC 27627 EXAMINER STEINBERG, AMANDA L ART UNIT PAPER NUMBER 3792 NOTIFICATION DATE DELIVERY MODE 12/08/2021 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): myersbigel_pair@firsttofile.com uspto@myersbigel.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte STEVEN FRANCIS LEBOEUF, JESSE BERKLEY TUCKER, and MICHAEL EDWARD AUMER Appeal 2021-003335 Application 15/949,266 Technology Center 3700 ____________ Before JOHN C. KERINS, MICHAEL L. HOELTER, and BENJAMIN D. M. WOOD, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–8 and 10–12. See Appeal Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE the Examiner’s rejection of these claims. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as “Valencell, Inc.” Appeal Br. 2. Appeal 2021-003335 Application 15/949,266 2 CLAIMED SUBJECT MATTER The disclosed subject matter “relates generally to health and environmental monitors and, more particularly, to wireless health and environment monitors.” Spec. 1:13–15. Apparatus claim 1 is the sole independent claim, is illustrative of the claims on appeal, and is reproduced below. 1. An apparatus adapted to be worn at or near at least one ear of a subject, comprising: a battery configured to supply power to the apparatus; a reflective pulse oximeter configured to monitor subject pulse rate and pulse intensity; a motion sensor configured to monitor subject body motion; an analog-to-digital convertor configured to convert analog signals from the reflective pulse oximeter and the motion sensor into digitized information; a speaker configured to supply sound to the subject; a digital memory device configured to store at least one algorithm for signal processing; a transceiver configured to enable wireless communication between the apparatus and a remote device; and at least one signal processor configured to: process data from the reflective pulse oximeter to monitor the cardiopulmonary functioning of the subject, process data from the motion sensor to monitor head and body motion of the subject, execute the at least one algorithm for assessing a health state of a subject, poll the reflective pulse oximeter and the motion sensor at certain time intervals to extend life of the battery, and process digital audio information into analog sounds to be presented to the subject via the speaker; and wirelessly download a user preference from the remote device to the apparatus via the transceiver, wherein the user preference causes the at least one signal processor to focus processing resources on extracting physiological information Appeal 2021-003335 Application 15/949,266 3 from the reflective pulse oximeter and to ignore at least some other processing. EVIDENCE Name Reference Date Monfre et al. (“Monfre”) US 2003/0060693 A1 Mar. 27, 2003 Luo et al. (“Luo”) US 2005/0226446 A1 Oct. 13, 2005 Shalon et al. (“Shalon”) US 2006/0064037 A1 Mar. 23, 2006 Kehr et al. (“Kehr”) US 2013/0218588 A1 Aug. 22, 2013 REJECTION Claims 1–8 and 10–12 are rejected under 35 U.S.C. § 103(a) as unpatentable over Shalon, Monfre, Luo, and Kehr. ANALYSIS Sole independent claim 1 recites the limitation, “a reflective pulse oximeter.” The Examiner finds that Shalon teaches a pulse oximeter but acknowledges that Shalon “does not go so far as to teach a reflectance pulse oximeter.”2 Final Act. 4; see also Ans. 5. The Examiner relies on Monfre for teaching a sensor “comprising a reflectance pulse oximeter.” Final Act. 5; see also Ans. 5. The references to Luo and Kehr are relied upon for other teachings. See Final Act. 5, 6. Appellant disputes these findings stating, “[i]n view of the fact that none of the cited references teaches or suggests a ‘reflectance pulse oximeter,’ it also logically follows that the proposed combination of 2 The Examiner relies on Shalon’s Paragraph 284 for teaching “a pulse oximeter” and on Shalon’s Paragraph 299 for teaching a processor configured to “process data from the pulse oximeter.” Final Act. 3, 4. Appeal 2021-003335 Application 15/949,266 4 references, even if proper, fails to teach or suggest a ‘reflectance pulse oximeter.’” Appeal Br. 10; see also Reply Br. 2. As indicated above, the Examiner relies on paragraph 284 of Shalon as teaching “a pulse oximeter.” Final Act. 3. Paragraph 284 of Shalon is replicated below, in its entirety: Caloric expenditure is preferably calculated from measured metabolic rate. For example, system 10 can be configured capable of measuring metabolic rate through any one of several known approaches. System 10 can measure heart rate using one or more vibration sensors, plethysmographs, strain gages, EKG electrodes, accelerometers or microphones, either singly or in combination, in proximity to the carotid artery behind the ear region or at various regions of the external or internal ear and ear canal. As can be seen, this paragraph discusses “system 10” which can measure a metabolic rate and it can also measure a heart rate employing a variety of sensors proximate to the carotid artery behind the ear or at different ear or ear canal regions. Nowhere is there any discussion of measuring the oxygen saturation levels of hemoglobin (“oximeter”) nor is there any discussion of employing a pulse oximeter sensor (whether reflective or not). Paragraph 299 of Shalon, as noted above, was relied upon for teaching the processing of data from a pulse oximeter. See Final Act. 4. This Paragraph 299 teaches that “system 10 can alternatively or additionally measure . . . oxygen saturation . . . through any of the traditional techniques known in the art.” Similar to the above, this paragraph of Shalon teaches the use of an amorphous “system 10,” and it is not clear whether a skilled person, understanding that “traditional techniques” can be employed for determining “oxygen saturation,” would have readily understood this to be a Appeal 2021-003335 Application 15/949,266 5 teaching of specifically using a pulse oximeter or that a pulse oximeter is to be a specific component of Shalon’s “system 10.” The Examiner acknowledges that pulse oximeters determine blood oxygen content and that they “consist of a light source directed at human tissue and a light detector” such that “the blood oxygen content is calculated based on what light from the light source is detected by the light detector.” Ans. 5. The Examiner does not identify where either of Shalon’s paragraphs 284 or 299 discuss, or even mention, using a sensor involving a light source and a detector.3 We have been instructed by our reviewing court that: The Patent Office has the initial duty of supplying the factual basis for its rejection. It may not, because it may doubt that the invention is patentable, resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in its factual basis. To the extent the Patent Office rulings are so supported, there is no basis for resolving doubts against their correctness. Likewise, we may not resolve doubts in favor of the Patent Office determination when there are deficiencies in the record as to the necessary factual bases supporting its legal conclusion of obviousness. In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). In the matter before us, the Examiner seems to be surmising from Shalon’s disclosures that Shalon teaches the use of a pulse oximeter. See Final Act. 3, 4 (referencing Shalon ¶¶ 284, 299); Ans. 5. We are not of the same opinion as the Examiner. 3 Both Paragraphs 284 and 299 of Shalon teach determining “heart-rate” or “pulse” using “plethysmographs” or “plethysmography” which rely on changes in body volume. The Examiner states that “a pulse oximeter is a sensor device . . . that can be generically described as a photo- plethysmograph.” Ans. 5. However, Paragraphs 284 and 299 teach using plethysmographs to detect pulse, not blood oxygen levels. Appeal 2021-003335 Application 15/949,266 6 Instead, as instructed above, there appear to be “deficiencies in the record as to the necessary factual bases supporting [the Examiner’s] legal conclusion of obviousness.” Accordingly, and based on the record presented, we reverse the Examiner’s rejection of these claims. CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § References/Basis Affirmed Reversed 1–8, 10–12 103 Shalon, Monfre, Luo, Kehr 1–8, 10–12 REVERSED Copy with citationCopy as parenthetical citation