Valencell, Inc.

Patent Trials and Appeals Board

Dec 17, 2020

2020002200 (P.T.A.B. Dec. 17, 2020)

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.
14/264,898 04/29/2014 Steven Francis LeBoeuf 9653-3TSCT4 3528
20792 7590 12/17/2020
MYERS BIGEL, P.A.
PO BOX 37428
RALEIGH, NC 27627
EXAMINER
STEINBERG, AMANDA L
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
12/17/2020 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 2020-002200
Application 14/264,898
Technology Center 3700
____________________

Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
SEAN P. O’HANLON, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 17–20 and 22–24.2 We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the term “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. 3.
2 The Examiner withdrew the rejection of claim 21. Ans. 3.
Appeal 2020-002200
Application 14/264,898

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THE CLAIMED SUBJECT MATTER
Claim 17, reproduced below, is illustrative of the claimed subject
matter.
17. A system for presenting personal health information to a
person, comprising:
at least one earpiece monitor comprising an earpiece
fitting, wherein the earpiece fitting comprises a plurality of
sensors, wherein the plurality of sensors are configured to
detect physiological information from a body of the person and
to detect motion information from the body of the person,
wherein the physiological information comprises pulse rate and
pulse signature, and wherein the body motion comprises
footsteps, head motion, and jaw motion, wherein the at least
one earpiece monitor is configured to process the physiological
information and the motion information via one or more
physiological algorithms stored within the at least one earpiece
monitor to generate at least one assessment of the person; and
a telecommunications device in communication with the
at least one earpiece monitor, wherein the telecommunications
device is configured to modify the one or more physiological
algorithms stored within the at least one earpiece monitor and
to download additional physiological algorithms to the at least
one earpiece monitor, wherein the telecommunications device is
configured to activate and deactivate the plurality of sensors,
and wherein the telecommunications device is configured to
display a graphical presentation of the at least one assessment
generated by the at least one earpiece monitor.
EVIDENCE
The prior art relied upon by the Examiner is:
Name Reference Date
Zhou US 2003/0149526 A1 Aug. 7, 2003
Aceti US 2005/0059870 A1 Mar. 17, 2005
Shalon US 2006/0064037 A1 Mar. 23, 2006
Martis US 2006/0075257 A1 Apr. 6, 2006

Appeal 2020-002200
Application 14/264,898

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REJECTION
Claims 17–20 and 22–24 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Aceti, Shalon, Martis, and Zhou.
OPINION
The Examiner finds that Aceti discloses a personal health information
system including, in relevant part, “a telecommunications device (Fig. 8,
¶[0040]) in communication with the at least one earpiece monitor wherein
the telecommunications device is configured to download physiological
algorithms to the at least one earpiece monitor (¶[0059] software is
embodied on a carrier wave for installation on the wireless earpiece).”
Non-Final Act. 5. The Examiner finds that Aceti does not disclose, inter
alia, “that the telecommunications device is configured to modify a
previously programmed algorithm on the earpiece monitor.” Id. at 6.
However, the Examiner finds that Zhou discloses
a telecommunications device (¶[0009] ASP and end user access
point ¶¶[0024–0025] which includes telecommunications
devices) . . . configured to modify one or more physiological
algorithms stored within a sensor device (¶¶[0047–0048] the
instructions/control signals transmitted to the sensor device are
changed in response to detected condition such as an asthma
attack).
Id. at 7. The Examiner determines that it would have been obvious to
modify Aceti “to include updateable firmware and the capacity for
modifying or updating the physiological programming because it can then be
updated without recall of the physical device and this minimizes support
issues, and reduces required customer maintenance.” Id. at 8 (citing Zhou
¶ 50).
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Application 14/264,898

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Appellant argues that the Examiner’s rejection is in error because
Zhou fails to disclose a “telecommunications device . . . configured to
modify the one or more physiological algorithms stored within the at least
one earpiece monitor,” as recited in claim 17. See Appeal Br. 14–15; Reply
Br. 7–8. We agree with Appellant that a sustainable case of obviousness has
not been established.
Zhou discloses that application service provider (ASP) 200 serves as
an intermediary link between remote localization and sensing devices 100
and devices of end user 25. Zhou ¶ 24. “ASP 200 provides end users 25 the
ability to access the device data, specify alert threshold values for
comparison to measured sensor values and receive notifications from the
ASP 200.” Id. Zhou discloses that “[d]evice 100 monitors biological
parameters such as blood pressure, heart rate, respiratory rate and/or lung
capacity. Information related to the biological parameters is sent to the ASP
200.” Id. ¶ 48. “If the information is indicative of a condition in need of a
response, a response signal is sent by the qualified person or via the
automated process from the ASP 200 to the [d]evice 100 via the
communication network 35 such as the Internet.” Id. ¶ 47. “The processing
unit 260 processes the response signal and optionally, information retrieved
from the information storage device 270 to formulate a control signal.” Id.
The Examiner takes the position that
paragraphs ¶¶[0047–0048] of Zhou . . . describe[] how not only
does the ASP receive physiological information and analyze it
(in and of itself a physiological algorithm) but that it further
responds to “a condition in need of a response” by the ASP
sending a response signal to the monitoring device which
results [in] a control signal, which is a function of information
supplied by the response signal and it alters the functioning of
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Application 14/264,898

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the device as described in ¶[0048]. This is a modification of a
physiological algorithm because the rules by which the
physiological device was functioning have been changed and it
now functions in a different fashion.
Ans. 7 (emphasis omitted). The Examiner’s position in unsound. We agree
with Appellant that “the cited portions of Zhou describe what would appear
to be normal processing of the monitoring device in response to a message
from Zhou’s ASP, and make no reference to changing an algorithm,
physiological or otherwise, that is stored on the device.” Reply Br. 7. In
other words, although Zhou discloses that device 100 (i.e., monitoring
device) performs a function in response to a signal from ASP 200 (i.e.,
telecommunications device), the Examiner does not identify, nor do we
discern, sufficient evidence or technical reasoning to support a finding that
ASP 200 modifies an algorithm stored on device 100. Thus, the Examiner’s
finding that Zhou discloses a “telecommunications device configured to
modify the one or more physiological algorithms stored within a sensor
device” (Non-Final Act. 7) lacks adequate evidentiary support.
Accordingly, based on the record before us, the Examiner has not met
the burden of establishing a proper case that independent claim 17 is
unpatentable based on the cited references. On this basis, we do not sustain
the rejection of independent claim 17, or dependent claims 18–20 and
22–24, under 35 U.S.C. § 103(a) as unpatentable over Aceti, Shalon, Martis,
and Zhou.
CONCLUSION
In summary:
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Application 14/264,898

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Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
17–20, 22–24 103(a) Aceti, Shalon,
Martis, Zhou
17–20, 22–24
REVERSED