Valencell, Inc.

Patent Trials and Appeals Board

Jan 21, 2022

2021000324 (P.T.A.B. Jan. 21, 2022)

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. 14/063,669 10/25/2013 Steven Francis LeBoeuf 9653-3TSCT 3421 20792 7590 01/21/2022 MYERS BIGEL, P.A. PO BOX 37428 RALEIGH, NC 27627 EXAMINER STEINBERG, AMANDA L ART UNIT PAPER NUMBER 3792 NOTIFICATION DATE DELIVERY MODE 01/21/2022 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 2021-000324 Application 14/063,669 Technology Center 3700 ____________ Before KENNETH G. SCHOPFER, AMEE A. SHAH, and ROBERT J. SILVERMAN, Administrative Patent Judges. SHAH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s final decision to reject claims 12-21 and 24-38.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42 (2019). The Appellant identifies the real party in interest as Valencell, Inc. Appeal Br. 2. 2 Claims 39-41 are indicated as allowable if rewritten in independent form. Final Act. 19. Appeal 2021-000324 Application 14/063,669 2 CLAIMED SUBJECT MATTER The Appellant’s invention “relates generally to health and environmental monitors and, more particularly, to wireless health and environment monitors.” Spec. 1. Claims 12, 20, and 28 are the independent claims on appeal. Claim 12 is illustrative of the subject matter on appeal and is reproduced below (with added paragraphing and bracketing for reference): 12. A method of monitoring a person, the method comprising: [(a)] directing optical energy to a region of a pinna of an ear of the person via at least one optical emitter of an earpiece fitting positioned within the ear of the person, [(a1)] wherein the earpiece fitting is configured to transmit sound to an eardrum of the ear, and [(a2)] wherein the at least one optical emitter is located at a portion of the earpiece fitting that contacts a portion of the pinna of the ear; [(b)] generating, by at least one optical detector located at the portion of the earpiece fitting that contacts the portion of the pinna of the ear, an optical energy signal comprising an indication of sensed optical energy absorbed, scattered, and/or reflected by the region of the pinna of the ear; [(c)] generating, by at least one footstep sensor supported by the earpiece fitting, a footstep signal comprising an indication of sensed footsteps of the person; [(d)] processing, by at least one signal processor supported by the earpiece fitting, the optical energy and footstep signals, [(d1)] wherein the processing comprises using the footstep signal to remove selectively, from the optical energy signal, effects of the sensed footsteps indicated by the footstep signal, and [(d2)] wherein the processing results in a processed physiological signal comprising cleaner physiological information about the person than physiological Appeal 2021-000324 Application 14/063,669 3 information indicated by the optical energy signal alone; and [(e)] transmitting the processed physiological signal to a portable telecommunication device via at least one transmitter supported by the earpiece fitting. Appeal Br. 14, Claims App. REFERENCES The prior art references relied upon by the Examiner are: Name Reference Date Pompei et al. (“Pompei”) US 5,469,855 Nov. 28, 1995 Aceti (“Aceti ’871”) US 6,253,871 B1 July 3, 2001 Chen et al. (“Chen”) US 2005/0033131 A1 Feb. 10, 2005 Yoo US 2005/0058456 A1 Mar. 17, 2005 Aceti US 2005/0059870 A1 Mar. 17, 2005 Takiguchi et al. (“Takiguchi”) US 2005/0192516 A1 Sept. 1, 2005 Shalon et al. (“Shalon”) US 2006/0064037 A1 Mar. 23, 2006 Altshuler et al. (“Altshuler”) US 2007/0060819 A1 Mar. 15, 2007 REJECTIONS Claims 12, 13, 15-17, 19, 20, 27-29, 35, 36, and 38 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Aceti, Takiguchi, Yoo, and Chen. Claims 14, 21, and 37 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Aceti, Takiguchi, Yoo, Chen, and Aceti ’871. Claims 24, 25, and 30-32 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Aceti, Takiguchi, Yoo, Chen, and Pompei. Claims 26, 33, and 34 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Aceti, Takiguchi, Yoo, Chen, and Shalon. Claim 18 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Aceti, Takiguchi, Yoo, Chen, and Altshuler. Appeal 2021-000324 Application 14/063,669 4 OPINION After careful review of the record, we agree with the Appellant that the Examiner does not adequately show and provide reasoning that the combination of Aceti and Takiguchi teaches “generating, by at least on footstep sensor supported by the earpiece fitting, a footstep signal comprising an indication of sensed footsteps,” as recited in limitation (c) of independent claim 12 and similarly recited in independent claims 20 and 28. See Appeal Br. 10-11. Taking claim 12 as representative, the Examiner finds, in relevant part, that Aceti teaches the method of monitoring a person comprising directing optical energy to a region of the ear via an optical emitter of an earpiece configured to transmit sound to an eardrum on the ear as partially recited in limitations (a) and (a1), generating an optical energy signal comprising an indication of sensed optical energy as partially recited in limitation (b), generating a signal by motion/footstep information as partially recited in limitation (c), processing the optical energy and signal resulting in a processed physiological signal, as partially recited in limitations (d) and (d2), and transmitting the processed signal, as recited in limitation (e). See Final Act. 3-4, 8-9. The Examiner further finds that Aceti teaches a microphone, but does not teach “sensing footsteps of the person via at least one footstep sensor supported by the earpiece fitting,” as partially recited in limitation (c). Id. at 4, 9. For limitation (c) of generating by a footstep sensor a footstep signal, the Examiner finds Takiguchi teaches “sensing footsteps of the person via at least one footstep sensor which comprises a microphone.” Final Act. 4, 9 (citing Takiguchi ¶ 20). The Examiner determines Appeal 2021-000324 Application 14/063,669 5 It would have been obvious to one of ordinary skill in the art to modify the monitoring method and device of Aceti to include footstep monitoring via the microphone because Takiguchi teaches that acoustic pedometry is simpler than other technologies (Takiguchi, ¶[0015]) which reduces cost, but also useful for user authentication (Takiguchi, ¶[0138]) which increases security. Id. Aceti discloses, in relevant part, a monitoring device positioned relative to an ear with a processor portion positioned between the auricle of the ear and the head or any location remote to the auditory canal, a conductor portion positioned at least partially within the auditory canal, and electrical components. Aceti ¶¶ 19, 20. The electrical components include a presentation device such as a speaker, a memory, a clock, a transceiver, data input and data output circuitry, and sensors including a pulse oximetry sensor, electrocardiogram sensor, accelerometer, microphone, and thermistor. Id. ¶ 20. The pulse oximetry sensor includes light emitting diodes, a photo detector diode, and pulse oximetry circuitry, and communicates pulse oximetry information to the processor for processing. Id. ¶ 27. The accelerometer detects motion of the monitoring device, such as inclination and activity, and passes signals to the processor portion for processing. Id. ¶¶ 29, 54. The microphone sensor senses sound within the auditory canal, includes a microphone and signal processor, may be positioned in the processor portion or within the conductor portion, and communicates signals to the processor via a wire through the conductor portion. Id. ¶ 30. Takiguchi discloses, in relevant part, a gait detection system including a microphone that picks up vibrations generated and transmitted through a Appeal 2021-000324 Application 14/063,669 6 body when a pedestrian walks. Takiguchi ¶¶ 17, 20. Takiguchi discusses problems with prior art ways of detecting a pedestrian’s gait, including reduced accuracy in mechanical systems using a built-in pendulum due to motion in response to the pendulum being counted as a step, increased complexity and cost in systems using a built-in pendulum and using acceleration and gyro sensors due to specific location required, and the difficulty in analyzing a pedestrian’s gait on the basis of sound from a microphone due to extraneous noise pickup and variations in steps leading to erroneous processing. Id. ¶¶ 9-13. Takiguchi addresses these problems by using a microphone, preferably placed close to the body, to pick up vibrations generated by the pedestrian making ground contact with the right and left legs when a pedestrian walks, converting the vibrations and outputting the resulting digital signal, and analyzing variations in signals corresponding to a predetermined frequency resulting in the pedestrian’s gait being detected and gait information being generated. Id. ¶¶ 17, 20, 52. Stored gait data are used to identify and determine whether the pedestrian is pre-registered and/or a valid user of the apparatus. Id. ¶¶ 138-140. Specific examples of the gait detection apparatus include a wristwatch, a cellular- phone, or other portable device such as a wristwatch-type pedometer without a clock function. Id. ¶¶ 141-153. We understand the Examiner’s rejection to add the functionality of Takiguchi’s microphone to sense footsteps via vibrations to Aceti’s microphone, and not to replace Aceti’s microphone with Takiguchi’s microphone. See Final Act. 4 (“It would have been obvious to one of ordinary skill in the art to modify the monitoring method and device of Aceti to include footstep monitoring via the microphone” (emphasis added)); Appeal 2021-000324 Application 14/063,669 7 Ans. 9 (discussing modifying Aceti’s microphone with Takiguchi’s microphone). Both the Examiner and the Appellant speculate whether Aceti’s microphone could be able to detect sound/vibration made by footsteps. See Appeal Br. 10; Ans. 7-9. However, the Examiner does not provide sufficient support that Aceti’s microphone can be modified to perform both the function of sensing sound within the auditory canal, as described by Aceti (Aceti ¶ 30), and the function of picking up the vibrations transmitted through the body as result of walking, as described by Takiguchi (Takiguchi ¶¶ 18-20), at the same time. For example, the Examiner has not compared and contrasted the microphones of Aceti and Takiguchi, has not considered how Aceti’s microphone that senses sounds within the auditory canal would be affected by the placement of Takiguchi’s microphone in a place close to the body via wristwatch or cell phone, and has not shown that either reference shows a capability to perform both functions of sensing sounds within the auditory canal and sensing vibrations from footsteps. Therefore, we do not sustain the Examiner’s rejections under 35 U.S.C. § 103 of independent claims 12, 20, and 28. As the Examiner relies on these findings for the rejections of dependent claims 13-19, 21, 24-27 (see Final Act. 6-7, 11-19), we also do not sustain the rejection of these claims, as we do not understand the Examiner’s reliance on the other art relied upon to remedy the deficiency in the Examiner’s rejection of independent claims 12, 20, and 28. Appeal 2021-000324 Application 14/063,669 8 CONCLUSION The Examiner’s decision to reject claims 12-21 and 24-38 is not sustained. In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 12, 13, 15-17, 19, 20, 27-29, 35, 36, 38 103(a) Aceti, Takiguchi, Yoo, Chen 12, 13, 15-17, 19, 20, 27-29, 35, 36, 38 14, 21, 37 103(a) Aceti, Takiguchi, Yoo, Chen, Aceti ’871 14, 21, 37 24, 25, 30-32 103(a) Aceti, Takiguchi, Yoo, Chen, Pompei 24, 25, 30-32 26, 33, 34 103(a) Aceti, Takiguchi, Yoo, Chen, Shalon 26, 33, 34 18 103(a) Aceti, Takiguchi, Yoo, Chen, Altshuler 18 Overall Outcome 12-21, 24-38 REVERSED