Valencell, Inc.

Patent Trials and Appeals Board

Feb 2, 2022

2021003370 (P.T.A.B. Feb. 2, 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. 15/910,711 03/02/2018 Steven Francis LeBoeuf 9653-3TSCT12 1021 20792 7590 02/02/2022 MYERS BIGEL, P.A. PO BOX 37428 RALEIGH, NC 27627 EXAMINER STEINBERG, AMANDA L ART UNIT PAPER NUMBER 3792 NOTIFICATION DATE DELIVERY MODE 02/02/2022 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 2021-003370 Application 15/910,711 Technology Center 3700 Before JENNIFER D. BAHR, CHARLES N. GREENHUT, and WILLIAM A. CAPP, Administrative Patent Judges. BAHR, 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 1-21. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Valencell, Inc. Appeal Br. 2. Appeal 2021-003370 Application 15/910,711 2 CLAIMED SUBJECT MATTER Appellant’s invention is directed “generally to health and environmental monitors and, more particularly, to wireless health and environment monitors.” Spec. 1:14-15. Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. An earpiece module configured to be worn at an ear of a subject, the earpiece module comprising: at least one physiological sensor configured to monitor subject pulse rate; at least one external energy sensor configured to monitor temperature, sound, or light in an environment external to the ear of the subject; a transceiver configured to wirelessly transmit and receive data; a communication module comprising a microphone, a speaker, and a signal processor, wherein the signal processor is configured to process audio information received from a remote source via the transceiver and to communicate the processed audio information to the subject via the speaker, wherein the signal processor is configured to process information in real time from the at least one physiological sensor and the at least one external energy sensor, and wherein the signal processor is configured to provide biofeedback to the subject based on signals produced by the at least one physiological sensor; a data storage component comprising a plurality of algorithms configured to be utilized by the signal processor, wherein at least one algorithm is configured to focus processing resources on extracting physiological information from the at least one physiological sensor, wherein at least one algorithm is configured to be modified or uploaded wirelessly via the transceiver, and wherein at least one algorithm is a compression/decompression (CODEC) algorithm; and a power source configured to supply power to the earpiece module. Appeal 2021-003370 Application 15/910,711 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Nemirovski US 2002/0143242 A1 Oct. 3, 2002 Monfre US 2003/0060693 A1 Mar. 27, 2003 Goodman US 6,616,613 B1 Sept. 9, 2003 Shalon US 2006/0064037 A1 Mar. 23, 2006 Sukkar US 2006/0217988 Al Sept. 28, 2006 REJECTIONS Claims 1, 3-12, and 15-18 stand rejected under 35 U.S.C. § 103 as being unpatentable over Shalon and Sukkar. Claims 19-21 stand rejected under 35 U.S.C. § 103 as being unpatentable over Shalon, Sukkar, and Nemirovski. Claim 2 stands rejected under 35 U.S.C. § 103 as being unpatentable over Shalon, Sukkar, and Goodman. Claims 13 and 14 stand rejected under 35 U.S.C. § 103 as being unpatentable over Shalon, Sukkar, and Monfre. OPINION Obviousness-Shalon and Sukkar Appellant presents arguments for independent claim 1 and relies on these arguments for independent claim 18 as well. Appeal Br. 5-12. Appellant does not present any separate arguments for dependent claims 3-12, and 15-17, apart from their dependence from claim 1 or claim 18. See Appeal Br. 15-16. We decide the appeal of this rejection on the basis of claim 1, and claims 3-12 and 15-18 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv) (permitting the Board to select a single claim Appeal 2021-003370 Application 15/910,711 4 to decide the appeal as to a single ground of rejection of a group of claims argued together). The Examiner finds that Shalon discloses an earpiece module substantially as recited in claim 1, except that “Shalon does not explicitly teach use of a CODEC algorithm.” Final Act. 5-6. The Examiner finds that Sukkar teaches a CODEC algorithm for transmitting speech data and determines it would have been obvious to modify the speech and audio transmission of Shalon to include Sukkar’s CODEC transmission algorithm to avoid degradation in speech quality and reduce computational resources. Id. at 6-7 (citing Sukkar ¶¶ 9, 11; code (57)). Appellant argues that there would be no reason for a person of ordinary skill in the art to look to a reference for performing voice quality enhancement (VQE) in telecommunications networks (i.e., Sukkar) for guidance regarding algorithms performed by a signal processor of an earpiece sensor module in a system concerned with monitoring and modifying eating behavior (i.e., Shalon). Appeal Br. 10. According to Appellant, the purported improved CODEC transmission aspects of Sukkar would be irrelevant to or not needed in Shalon’s earpiece, and, thus, it would not have been obvious to include them. Id. The Examiner points out that Shalon monitors not only non-verbal eating sounds, but also verbal speech of the subject to acquire feedback or interaction from the user through an audio sensor. See Ans. 4-5. For example, Shalon discloses monitoring acoustic energy generated by the user’s voice or speech. Shalon ¶ 117. Further, Shalon teaches that “[v]oice detection and speaker units of [Shalon’s] system can be interfaced with a communication system such as a cell phone or satellite based Appeal 2021-003370 Application 15/910,711 5 communication . . . service” so that “[a] third party can call the user and the user can talk immediately without the need to affix a headset or press a button.” Id. ¶ 331. Additionally, Shalon discloses the system acting as a wireless communication system for users in potentially dangerous situations and discusses using encoded transmission technology to relay channels of information, including a user’s voice and a user’s vital signs coded in an analogue or digital format. Id. ¶ 337. Thus, the speech transmission techniques taught by Sukkar for improving the speech quality of the transmission would be relevant to Shalon’s device. Appellant also submits that Sukkar teaches performing the improved CODEC transmission technique in an intermediate network device within a cellular network and, thus, “does not provide a reason to use a [CODEC] within the earpiece of Shalon.” Appeal Br. 10. Rather, Appellant contends that “the offered motivation from Sukkar provides a reason to perform coded-level voice quality enhancement within a telecommunications ‘core network.’” Id. Moreover, Appellant asserts that “Sukkar actually teaches avoiding the use of a decoding/re-encoding step because the decoding/re-encoding step ‘can degrade overall speech quality[,’] because ‘computational resources required for encoding are relatively high[,’] and because ‘encoding adds significant delays.’” Id. (citing Sukkar ¶ 9). Appellant’s arguments are not persuasive. Appellant’s assertions regarding the location of Sukkar’s improved CODEC transmission being in an intermediate network device within a cellular network appear to be directed to Sukkar’s Coded-Domain Voice Quality Enhancement system (CD-VQE) 130a. Sukkar’s CD-VQE 130a performs Voice Quality Enhancement (VQE) directly in the coded domain without performing any Appeal 2021-003370 Application 15/910,711 6 intermediate decoding/re-encoding on the coded signals transmitted from near end coder 115a or far end coder 115b, thereby avoiding speech degradation and significant additional delays if both sides of the call are capable of compressing/decompressing the speech. See Sukkar ¶¶ 2, 9, 11, 46-48. In other words, where the near end and far end devices are provided with means, such as near end coder 115a or far end encoder 115b, for compressing/decompressing the speech, Sukkar’s CD-VQE 130a performs VQE on the coded signals directly in the coded domain without decoding/re-encoding them. See id. ¶¶ 2, 46. Thus, Sukkar teaches providing the coding/decoding device (CODEC) in the device to or from which speech is being transmitted-Shalon’s earpiece module in the case of the combination proposed in the rejection. Further, as the Examiner points out, Sukkar’s teaching of avoiding additional or intermediate decode/re-encode processes (i.e., in addition to the coding and decoding performed at the device to which or from which speech is transmitted) does not teach away from the proposed combination, which does not call for any such additional or intermediate decode/re-encode processes. For the above reasons, Appellant fails to apprise us of error in the rejection of claim 1 as being unpatentable over Shalon and Sukkar. Accordingly, we sustain the rejection of claim 1, and of claims 3-12 and 15-18, which fall with claim 1, as being unpatentable over Shalon and Sukkar. Obviousness-Shalon, Sukkar, and Nemirovski The Examiner finds that Shalon discloses an earpiece module comprising all of the elements recited in claim 19, including, in pertinent part, “an acoustic sensor configured to monitor sound in an environment Appeal 2021-003370 Application 15/910,711 7 external to the ear of the subject.” Final Act. 11-12 (citing Shalon ¶¶ 117, 121, 337, 340). Further, the Examiner finds that Shalon teaches placing the sensors for ambient noise detection at different positions or orientations than those for sensing internal sounds. Id. at 12 (citing Shalon ¶ 117). The Examiner finds, however, that “Shalon does not discuss explicitly what direction the ambient sound sensor should face other than generally towards or away (different positions/orientations).”2 Id. After first observing that Appellant’s Specification discloses no criticality for the direction in which the external acoustical sensor faces, the Examiner finds that Nemirovski teaches a sensor device including a sensor element for sensing internal body sounds (internal microphone element 34) and a sensor element for sensing external ambient sounds (external microphone 54), wherein the ambient sound sensor faces away from the person being monitored. Id. at 13 (citing Spec. 34; Nemirovski ¶¶ 60, 63-64). The Examiner determines it would have been obvious “to modify the secondary sound sensors of Shalon to specifically face explicitly away from a subject’s body because Nemirovski teaches that the use of both an internal and external microphone in opposite orientations improves the performance of internal microphone sensing by about six times.”3 Id. (citing Nemirovski ¶¶ 82-83). 2 The Examiner also finds that “Shalon does not explicitly teach use of a CODEC algorithm” and relies on Sukkar for this. Final Act. 12, 13. However, this finding, along with the findings and reasoning regarding the teachings of Sukkar, are not germane to claim 19, which does not recite a CODEC algorithm. 3 We understand the Examiner’s reference to “the secondary sound sensors of Shalon” (Final Act. 13) to be a reference to Shalon’s external microphone 54 for sensing external ambient sounds. Appeal 2021-003370 Application 15/910,711 8 Appellant submits that the Examiner is incorrect regarding paragraphs 82 and 83 of Nemirovski “and thus provides an improper motivation to combine the references.” Appeal Br. 12. The Examiner’s response to Appellant’s argument suggests that the Examiner’s rationale for modifying Shalon to have the ambient sound sensor (external microphone) face away from the user is based primarily on Nemirovski’s teaching in paragraph 60 that external microphone 54 for detecting ambient or externally generated sounds (other people’s speech, environmental noise, etc.) “generally points away from the person wearing the sensor 12.” See Ans. 7 (adding also that the benefit of providing an additional sensor for detecting additional information applies to an additional microphone on an in-ear sensor as well as to duplicate in-ear sensors). We agree with Appellant that the teachings of Nemirovski in paragraph 83 regarding the “about six times” improvement derived from using two sensors 12, one in each ear, as compared with using one sensor 12 in one ear, are not particularly availing or instructive as to which direction to orient the acoustic sensor for monitoring sound in an environment external to the ear of the subject (i.e., the person wearing the sensor). However, as the Examiner points out in the rejection (Final Act. 13), Nemirovski teaches in paragraph 60 that external microphone 54, which monitors sound in an environment external to the ear of the subject by detecting air pressure changes outside the ear of the subject, “generally points away from the person wearing the sensor.” Nemirovski, much like Shalon, teaches comparing the signal from external microphone 54 with the signal from internal microphone 34, which detects air pressure changes located within the ear of the person wearing the sensor, in order to obtain a relatively Appeal 2021-003370 Application 15/910,711 9 noise-free speech signal or to distinguish between the subject’s signal and other people’s speech. Nemirovski ¶¶ 60, 63-64; Shalon ¶ 121. Thus, Nemirovski’s teachings in paragraph 60 as to the direction in which the external microphone is directed is expressly instructive as to the direction in which the ambient sound sensing microphone disclosed by Shalon should face. Consequently, Appellant does not apprise us of error in the Examiner’s determination that it would have been obvious, in view of the teachings of Nemirovski, to orient Shalon’s external microphone for monitoring external or ambient noise in a direction facing away from the subject. Accordingly, we sustain the rejection of claim 19, and of its dependent claims 20 and 21, for which Appellant does not present any separate arguments, as being unpatentable over Shalon, Sukkar, and Nemirovski. See Appeal Br. 12-13, 15-16. Obviousness-Shalon, Sukkar, and Goodman Appellant does not present any arguments specifically challenging the rejection of claim 2, apart from its dependence from independent claim 1. See Appeal Br. 15-16. For the reasons discussed above, Appellant does not apprise us of error in the rejection of claim 1 as being unpatentable over Shalon and Sukkar, and likewise, fails to apprise us of error in the rejection of claim 2. Accordingly, we sustain the rejection of claim 2 as being unpatentable over Shalon, Sukkar, and Goodman. Obviousness- Shalon, Sukkar, and Monfre In addressing claims 13 and 14, which call for the at least one physiological sensor to comprise “a reflectance pulse oximeter” (Appeal Br. 19 (Claims App.)), the Examiner finds that “Shalon teaches plethysmography and oxygen saturation, but does not go so far as to teach a Appeal 2021-003370 Application 15/910,711 10 reflectance pulse oximeter.” Final Act. 15; see Shalon ¶ 126 (disclosing induction plethysmography or sound analysis to measure swallow apnea), ¶ 299 (disclosing measuring oxygen saturation and using plethysmography on the earlobe to determine the pulse of the user). The Examiner finds that Monfre teaches a reflectance pulse oximeter configured to monitor hydration level of a subject. Id. (citing Monfre ¶ 55). The Examiner determines it would have been obvious “to use a reflectance pulse oximeter for measuring tissue hydration, as taught by Monfre, because Shalon discloses that monitoring hydration level reduces the risk of dehydration . . . and Monfre improves tissue state evaluation and analyte estimation.” Id. at 15-16 (citing Shalon ¶ 329; Monfre ¶¶ 14, 24-52). Appellant contends that the Examiner’s finding that Monfre teaches a reflectance pulse oximeter is incorrect. Appeal Br. 14. Appellant submits that Monfre does not teach or suggest quantifying or monitoring oxygen saturation in the blood.” Id. Appellant asserts that “[t]issue hydration and oxygen saturation are different physiological characteristics that are sensed using different sensors of different configurations.” Id. Appellant also points out that “although Monfre discusses over twenty different uses for the ‘invented apparatus,’ [in paragraphs 25-52], there is no mention or discussion anywhere in Monfre of ‘oxygen,’ ‘oxygen saturation,’ ‘pulse,’ or ‘pulse oximetry.’” Id. Further, Appellant contends that “there is no teaching or suggestion in the record that one of ordinary skill in the art would select or use the Monfre ‘tissue hydration’ apparatus as a ‘pulse oximeter.’” Id. at 15. The Examiner asserts that “Monfre teaches a reflectance photo-plethysmography technique.” Ans. 8. According to the Examiner, Appeal 2021-003370 Application 15/910,711 11 when combined with Shalon’s pulse oximetry, the specific methodology of which is not disclosed by Shalon, “reflectance photo-plethysmography also yields tissue hydration.” Id. The Examiner reasons that Shalon’s teaching of the importance of monitoring to avoid dehydration (Shalon ¶ 329) and Monfre’s teaching of a technique for improved tissue state evaluation and analyte estimation (Monfre ¶¶ 14, 24-52) provide motivation for such a modification. Id. Appellant submits that “Monfre is directed to Near infrared (NIR) tissue spectroscopy” and asserts that “NIR tissue spectroscopy differs from photoplethysmography” (PPG), which is a technique used in pulse oximetry. Reply Br. 5 (citing articles that address similarities and differences between NIR and PPG). Appellant’s arguments are persuasive. The Examiner fails to provide evidence showing that Monfre’s NIR tissue spectroscopy apparatus could be used to monitor oxygen saturation, in other words, as a pulse oximeter. Consequently, the Examiner fails to establish that the invention recited in claims 13 and 14 would have been obvious. Accordingly, we do not sustain the rejection of claims 13 and 14 as being unpatentable over Shalon, Sukkar, and Monfre. CONCLUSION The Examiner’s rejections of claims 1-12 and 15-21 are AFFIRMED; the rejection of claims 13 and 14 is REVERSED. Appeal 2021-003370 Application 15/910,711 12 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3-12, 15- 18 103 Shalon, Sukkar 1, 3-12, 15- 18 19-21 103 Shalon, Sukkar, Nemirovski 19-21 2 103 Shalon, Sukkar, Goodman 2 13, 14 103 Shalon, Sukkar, Monfre 13, 14 Overall Outcome 1-12, 15-21 13, 14 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED IN PART