Valencell, Inc.

Patent Trials and Appeals Board

May 4, 2021

2020002711 (P.T.A.B. May. 4, 2021)

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.
15/318,449 12/13/2016 Steven Matthew Just 9653-28 6924
20792 7590 05/04/2021
MYERS BIGEL, P.A.
PO BOX 37428
RALEIGH, NC 27627
EXAMINER
STEINBERG, AMANDA L
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
05/04/2021 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 MATTHEW JUST, STEVEN FRANCIS LEBOEUF,
JESSE BERKLEY TUCKER, MICHAEL EDWARD AUMER, and
MARK ANDREW FELICE
__________

Appeal 2020-002711
Application 15/318,449
Technology Center 3700
__________

Before PHILLIP J. KAUFFMAN, ANNETTE R. REIMERS, and
TARA L. HUTCHINGS, Administrative Patent Judges.

REIMERS, 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 1–6, 8–18, and 20–26. Claims 7 and 19
have been withdrawn from consideration. Final Act. 1.2 We have
jurisdiction under 35 U.S.C. § 6(b).

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 Brief (“Appeal Br.”) 2, filed Aug. 21, 2019.
2 Final Office Action (“Final Act.”), dated Mar. 29, 2019.
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We REVERSE.
CLAIMED SUBJECT MATTER
The claimed subject matter relates to “monitoring devices for
measuring physiological information.” Spec. 1:9–10. Claims 1, 12, 16, and
24 are independent. Claims 1 and 16 are illustrative of the claimed subject
matter and recite:
1. A monitoring device configured to be attached to a body
of a subject, the monitoring device comprising:
at least one physiological sensor configured to detect
and/or measure physiological information from the subject;
at least one activity sensor configured to detect a change
in physical activity of the subject as the subject is exercising or
beginning to exercise;
at least one actuator configured to adjust stability of the
monitoring device relative to the body of the subject; and
at least one processor in communication with the at least
one activity sensor and the at least one actuator, wherein the at
least one processor is configured to control the at least one
actuator to adjust the stability of the monitoring device relative
to the body of the subject in response to the at least one activity
sensor detecting a change in the physical activity of the subject.

16. A monitoring device configured to be attached to a body
of a subject, the monitoring device comprising:
at least one physiological sensor configured to detect
and/or measure physiological information from the subject;
at least one environmental sensor configured to detect
and/or measure at least one environmental condition in a vicinity
of the subject;
at least one actuator configured to adjust stability of the
monitoring device relative to the body of the subject; and
at least one processor in communication with the at least
one environmental sensor and the at least one actuator, wherein
the at least one processor is configured to control the at least one
actuator to adjust stability of the monitoring device relative to the
body of the subject in response to the at least one environmental
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sensor detecting a change in the at least one environmental
condition.

THE REJECTIONS
Claims 1–6 and 8–15 stand rejected under 35 U.S.C. § 103 as
unpatentable over Jackson (US 5,485,848, issued Jan. 23, 1996) and Beers
(US 2014/0070042 A1, published Mar. 13, 2014).
Claims 16–18 and 20–26 stand rejected under 35 U.S.C. § 103 as
unpatentable over Jackson and Stivoric (US 2008/0167572 A1, published
July 10, 2008).

ANALYSIS
Obviousness over Jackson and Beers
Claims 1–6 and 8–15
Independent claim 1 is directed to a monitoring device including “at
least one activity sensor configured to detect a change in physical activity of
the subject as the subject is exercising or beginning to exercise.” Appeal Br.
18 (Claims App.). The monitoring device also includes at least one
processor “configured to control . . . at least one actuator to adjust the
stability of the monitoring device relative to the body of the subject in
response to the at least one activity sensor detecting a change in the physical
activity of the subject.” Id. Independent claim 12 is directed to a method
including steps carrying out the functions assigned by claim 1 to the at least
one activity sensor and to the at least one processor. Id. at 20.
The Examiner finds that Jackson discloses the recited monitoring
device substantially as claimed. Final Act. 5; see also id. at 9. The
Examiner further finds that “[a]lthough Jackson does contemplate motion
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sensing transducers . . . , Jackson does not teach adjusting the stability of the
monitoring device in response to detection of a change in subject activity.”
Id. at 5 (citing Jackson 7:36–42). The Examiner turns to teachings of Beers
for this limitation. Id. at 5–6. In particular, the Examiner finds that Beers
discloses “a shoe lace tension adjustment actuator which operates in
response to detected subject activity.” Id. at 5 (citing Beers ¶¶ 84, 163, 175,
178). The Examiner reasons that “[a]lthough the wrist band of Jackson and
the shoe laces of Beers are not identical mechanism [sic], Beers teaches
processor algorithms for adjusting fit of a wearable item based on activity,
the laces and other mechanical features are not required in combination,
merely the computer implemented method.” Id. at 5–6. The Examiner
further reasons that “this modification does require motion sensing
transducers, which the additional optical sensors of Jackson would provide.”
Id. at 6. The Examiner concludes that it would have been obvious to one of
ordinary skill in the art
to modify the automatic tensioning of Jackson to include control
for modifying tension based on detected subject activity, as
taught by Beers, because Jackson teaches that accurate blood
pressure measurements should not be taken unless the
appropriate transducer-skin contact pressure is achieved . . . and
Beers teaches that automated motorized tensioning on any type
of wearable can improve user experience for disadvantaged
patients.
Id. (citing Jackson, Fig. 10A, Beers ¶ 199); see also Ans. 5.3
In this case, we agree with Appellant that the Examiner has not
articulated a reason based on rational underpinnings as to why one of
ordinary skill in the art would have been motivated to modify Jackson’s

3 Examiner’s Answer (“Ans.”), dated Dec. 27, 2019.
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monitoring device with the teachings of Beers to “adjust the stability of the
monitoring device . . . in response to the at least one activity sensor detecting
a change in the physical activity of the subject,” as recited in the claims.
Appeal Br. 6–11.
First, Appellant correctly points out that Jackson does not teach
simply that accurate blood pressure measurements should not be taken
unless an appropriate transducer-skin contact pressure is achieved. Instead,
Jackson teaches maintaining a constant tension in the band holding
Jackson’s monitoring device on the user’s arm in order to maintain a
constant base pressure that helps ensure the accuracy of the systolic and
diastolic pressure measurements. See Appeal Br. 6–7; see also
Jackson 12:31–40. Second, Appellant correctly points out that Jackson
inherently achieves appropriate transducer-skin contact pressure, but only in
the context of also keeping the base pressure within a predetermined range
regardless of the user’s level of activity. See Appeal Br. 9; see also Jackson
7:28–31, 11:29–12:23; Reply Br. 3–4 (pointing out that steps 504–512 of the
calibration technique outlined in Figure 10A of Jackson are consistent with
this reading of Jackson).4
Additionally, paragraph 199 of Beers does not support the Examiner’s
conclusion. Beers teaches that tensioning system 150 could be applied to a
medical brace. Beers ¶ 197. In paragraph 199, Beers teaches that a person
having limited dexterity might find it easier to use a motorized tensioning
device to tighten the brace than to manually tighten a strap or fastener. Id. at
¶ 199. The Examiner has not persuasively explained how this teaching

4 Reply Brief (“Reply Br.”), filed Feb. 24, 2020.
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might have suggested “adjust[ing] the stability of the monitoring device . . .
in response to the at least one activity sensor detecting a change in the
physical activity of the subject,” as recited in claim 1.
Furthermore, as Appellant correctly points out, Beers teaches
tightening or loosening the lace in response to the user’s physical activity to
promote comfort or athletic performance, but not to maintain a constant
tension in the lace. Appeal Br. 7. More specifically, Beers’ tensioning
system 150 may include a control board having an internal memory capable
of storing lace tension preferences. Beers ¶ 84. The wearer may then
manipulate the control board to tighten lace 152 to one or another of the
stored lace tension preferences, depending on whether the wearer prefers a
tighter fit for physical activities, such as playing sports or a looser fit for
casual activities. Id. In addition, tensioning system 150 may include a
pressure sensor to detect if the wearer moves from a standing position to a
sitting position. Id. ¶ 163. Motorized tensioning device 160 may loosen the
tension in lace 152 when the wearer is sitting in order to promote blood
circulation or tighten the lace when the wearer is standing for safety
purposes. Id. Alternatively, tensioning system 150 may include a gyroscope
or accelerometer to detect sudden movements by the wearer. Id. ¶ 165.
Motorized tensioning device 160 may tighten lace 152 when the wearer is
active or loosen lace 152 when the wearer is inactive. Id.; see also id.
¶ 202.
None of these paragraphs of Beers addresses adjusting the lace to
maintain a constant tension. Rather, in each of these cases, Beers suggests
varying the tension in lace 152 in order to promote comfort (such as by
increasing blood circulation during periods of reduced activity) or athletic
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performance (by tightening the lace to improve safety). This suggestion is
less compelling when one seeks to apply it to a blood pressure monitoring
device worn on a user’s arm rather than to an article of footwear. See
Appeal Br. 7 (pointing out that Beers teaches a lace tensioning system rather
than a blood pressure monitoring device). The Examiner has not adequately
explained why one of ordinary skill in the art would have been motivated to
modify Jackson’s device to vary the tension in the bands in response to a
user’s level of activity, as discussed in Beers, particularly when Jackson
teaches keeping the tension constant to maintain the accuracy of pressure
measurements. See Jackson 6:52–53, 12:31–40.
For all these reasons, we do not sustain the Examiner’s rejection of
claims 1–6 and 8–15 as unpatentable over Jackson and Beers.

Obviousness over Jackson and Stivoric
Claims 16–18 and 20–26
Independent claim 16 is directed to a monitoring device including “at
least one environmental sensor configured to detect and/or measure at least
one environmental condition in a vicinity of the subject.” Appeal Br. 21
(Claims App.). The monitoring device also includes at least one processor
“configured to control . . . at least one actuator to adjust stability of the
monitoring device relative to the body of the subject in response to the at
least one environmental sensor detecting a change in the at least one
environmental condition.” Id. Independent claim 24 is directed to a method
including steps carrying out the functions assigned by claim 16 to the at least
one environmental sensor and to the at least one processor. Id. at 22.
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The Examiner finds that Jackson discloses the recited monitoring
device substantially as claimed. Final Act. 10; see also id. at 13. The
Examiner further finds that although Jackson teaches “adjusting band
tension for swelling in extremities,” such as a user’s arm (Ans. 8 (citing
Jackson 5:16–19, 9:13–19)), Jackson fails to disclose “adjusting the stability
of the monitoring device in response to detection of a change environmental
conditions as sensed by at least one environmental sensor configured to
detect and/or measure at least one environmental condition in a vicinity of
the subject” (Final Act. 10). The Examiner turns to the teachings of Stivoric
for this limitation. Final Act. 10–11. In particular, the Examiner finds that
Stivoric teaches that environmental conditions such as ambient temperature
may affect blood perfusion through a user’s limbs. Ans. 7 (citing Stivoric
¶¶ 9–10); see also Final Act. 10–11. The Examiner additionally finds that
Stivoric teaches processing physiological signals in order to detect
conditions such as edema, that is, an accumulation of fluid in body tissue.
Ans. 8 (citing Stivoric ¶ 216); see also Final Act. 10–11. The Examiner
concludes that it would have been obvious to one of ordinary skill in the art
to modify the automatic tensioning of Jackson to include control
for modifying tension based on detected environmental context,
because Stivoric teaches that environmental context changes the
physiological mechanisms in the body, such as swelling, . . .and
because Jackson teaches that accurate blood pressure
measurements should not be taken unless the appropriate
transducer-skin contact pressure is achieved . . . , including
adjustments for swelling in the extremities.
Final Act. 11 (citing Stivoric ¶ 107; Jackson 5:16–19, 9:13–19, Fig. 10A).
There are several problems with the findings underlying the
Examiner’s conclusion. First, the Examiner has not shown how blood
perfusion may be related to edema (i.e., swelling). Consequently, the
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Examiner has not established a correlation between any particular
environmental condition, or set of conditions, and swelling of a user’s arm.
See Appeal Br. 14–15. Lacking such proof, the Examiner has not
demonstrated that one of ordinary skill in the art would have had reason to
modify Jackson’s monitoring device to adjust the stability of the device
based on ambient temperature or any other environmental condition to
address the problem of swelling of a user’s arm. Id.
Second, Jackson teaches adjusting band portions 212, 216 to maintain
constant tension in the band if the user’s wrist swells or shrinks over the
course of a day or night. Jackson 11:10–20. Nevertheless, the Examiner has
not adequately explained why one of ordinary skill in the art would seek to
determine how to compensate for swelling or shrinkage in a patient’s arm by
measuring an environmental condition, such as ambient temperature, rather
than by just measuring the swelling or shrinkage itself. See Appeal Br. 15.
As such, the Examiner has not persuasively explained why one of ordinary
skill in the art would have been motivated to modify Jackson’s monitoring
device in a manner satisfying the limitations of claim 16.
Third, as discussed earlier, Jackson teaches maintaining a constant
tension in the band holding Jackson’s monitoring device on the user’s arm in
order to maintain a constant base pressure that helps ensure the accuracy of
the systolic and diastolic pressure measurements. See Appeal Br. 6–7, 12;
see also Jackson 12:31–40. As also discussed earlier, Jackson inherently
achieves appropriate transducer-skin contact pressure, but only in the
context of also keeping the base pressure within a predetermined range
regardless of the user’s level of activity. See Appeal Br. 9, 15; see also
Reply Br. 3–4; Jackson 7:28–31. In view of Jackson’s teaching of keeping
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the tension constant to maintain the accuracy of pressure measurements, the
Examiner has not persuasively explained why one of ordinary skill in the art
would have had reason to modify Jackson’s monitoring device to “adjust the
stability of the monitoring device . . . in response to the at least one
environmental sensor detecting a change in the at least one environmental
condition,” as recited in claim 16. See Appeal Br. 12; see also Jackson
6:52–53, 12:31–40.
For all these reasons, we do not sustain the Examiner’s rejection of
claims 16–18 and 20–26 as unpatentable over Jackson and Stivoric.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§ 
Reference(s)/Basis Affirmed Reversed
1–6, 8–15 103 Jackson, Beers 1–6, 8–15
16–18, 20–26 103 Jackson, Stivoric 16–18, 20–
26
Overall
Outcome
1–6, 8–18,
20–26

REVERSED