Valencell, Inc.

Patent Trials and Appeals Board

Nov 6, 2020

14617234 - (D) (P.T.A.B. Nov. 6, 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.
14/617,234 02/09/2015 Steven Francis LeBoeuf 9653-3TSCT10 4006
20792 7590 11/06/2020
MYERS BIGEL, P.A.
PO BOX 37428
RALEIGH, NC 27627
EXAMINER
STEINBERG, AMANDA L
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
11/06/2020 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 2020-001338
Application 14/617,234
Technology Center 3700
____________

Before STEFAN STAICOVICI, BENJAMIN D. M. WOOD, and
CARL M. DeFRANCO, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE.
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision in the Non-Final Office Action (dated May 16, 2019, hereinafter
“Non-Final Act.”) rejecting claims 1–3, 5–7, 17, and 18.2 We have
jurisdiction over this appeal 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. Valencell, Inc. is identified as the real party in interest in
Appellant’s Appeal Brief (filed July 26, 2019, hereinafter “Appeal Br.”).
Appeal Br. 3.
2 Claims 4 and 8–16 are canceled. Appeal Br. 21, 22 (Claims App’x.).
Appeal 2020-001338
Application 14/617,234

2

SUMMARY OF DECISION
We AFFIRM.

INVENTION
Appellant’s invention relates “to wireless health and environment
monitors.” Spec. 1, ll. 14–15.
Claim 1, the sole independent claim, is representative of the claimed
invention and reads as follows:
1. An audio headset, comprising:
a pair of first and second earpiece modules, each
adapted to be positioned at a respective ear of a person,
each earpiece module comprising:
a speaker configured to provide sound
transmission from a source;
at least one physiological sensor configured
to sense physiological information from the
person; and
a transceiver,
wherein the first and second earpiece modules are
in wireless communication with each other via their
respective transceivers such that the first earpiece module
is configured to wirelessly transmit physiological
information signals produced by its at least one
physiological sensor to the second earpiece module and
the second earpiece module is configured to wirelessly
transmit physiological information signals produced by
its at least one physiological sensor to the first earpiece
module, and
wherein at least one of the first and second
earpiece modules comprises a signal processor
configured to analyze the physiological information
signals produced by the at least one physiological sensor
of the first earpiece module and the physiological
information signals produced by the at least one
physiological sensor of the second earpiece module, and
Appeal 2020-001338
Application 14/617,234

3

further configured to produce a signal indicative of the
analysis.

REJECTION

The Examiner rejects claims 1–3, 5–7, 17, and 18 under 35 U.S.C.
§ 103(a) as being unpatentable over Hong3 and Ellis.4

ANALYSIS
Claims 1 and 5–7
Appellant has not presented arguments for the patentability of claims
5–7 apart from independent claim 1. See Appeal Br. 8–19. Thus, we select
claim 1 as representative, and the remaining claims stand or fall with
claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). Only those arguments actually
made by Appellant have been considered in this decision. Arguments which
Appellant could have made but chose not to make in the Brief have not been
considered and are deemed to be waived. See id.; see also In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011); Ex Parte Frye, 94 USPQ2d 1072, 1075–
76 (BPAI 2010, precedential).
The Examiner finds Hong discloses a headset including, inter alia, a
pair of earpiece modules, physiological sensors located in each earpiece
module to capture physiological data from a user of the headset, a
transceiver, and a signal processor configured to analyze the data from the
physiological sensors and produce a signal indicative of the analysis, i.e.,
heart rate signal. Non-Final Act. 6–7 (citing Hong, paras. 8, 17–19, 21, 27,

3 Hong et al., US 2008/0132798 A1, published June 5, 2008.
4 Ellis et al., US 2004/0215958 A1, published Oct. 28, 2004.
Appeal 2020-001338
Application 14/617,234

4

22, Fig. 2). The Examiner further finds that “Hong does not explicitly teach
that the earpiece modules communicate physiological information to each
other.” Id. at 7. Thus, the Examiner turns to Ellis, and finds that Ellis
discloses a network of physiologically monitoring modules that
communicate physiological and environmental information between each
other in a wireless manner. Id (citing Ellis, paras. 85, 87, 89, 90, 99). The
Examiner concludes that it would have been obvious to a skilled artisan “to
modify the monitoring headset of Hong to include additional wireless
transmission, as taught by Ellis, because Ellis teaches that modular sensing
networks can provide additional functionality per sensing unit . . . and
authentication capability.” Id (citing Ellis, paras. 31, 32, 89–94) (emphasis
added).
Appellant first argues that “Hong does not disclose or suggest an
audio headset comprising ‘a pair of first and second earpiece modules’ with
each earpiece module comprising, in part, ‘a transceiver.’” Appeal Br. 10.
Second, Appellant argues that Ellis does not disclose transmitting
physiological information “in two directions between physiological sensor-
containing modules,” but rather transmitting “in a single direction, such as
to a control unit.” Id. at 12 (citing Ellis, para. 56).
We are not persuaded by Appellant’s arguments because
nonobviousness cannot be shown by attacking Hong and Ellis individually
when the rejection as articulated by the Examiner is based on a combination
of Hong and Ellis. In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986). We agree with the Examiner’s findings that Hong discloses two
earpiece modules 212, wherein each module 212 includes one or more
physiological sensors 216, a wireless transmitter 218, and a processor 222,
Appeal 2020-001338
Application 14/617,234

5

located in one of the earpiece modules 212, which converts sensed
physiological data (sensed heart rate data) into a heart rate signal. See Non-
Final Act. 3–4; see also Hong, paras. 27 (“One or both of the earpieces 212
of the headset 210 may comprise a heart rate sensing assembly 214.”)
(emphasis added), 28 (“The sensing assembly 214 may comprise one or
more hear rate sensors 216.”), 29 (“The headset 210 may include a wireless
communication unit 218 configured to communicate hear rate data to a
gateway device 230 and/or more auxiliary devices 250.”), 33 (“[T]he
headset 210 may include processing unit 222,” which “may be configured to
determine a heart rate of the user/wearer based on the sensed heart rate
data.”), Fig. 2.
“A reference must be considered for everything it teaches by way of
technology and is not limited to the particular invention it is describing and
attempting to protect.” EWP Corp. v. Reliance Universal Inc., 755 F.2d 898,
907 (Fed. Cir. 1985); see also In re Heck, 699 F.2d 1331, 1332–33 (Fed. Cir.
1983). Here, because Hong discloses sensors 216 in each earpiece module
212, a wireless transmitter 218, and a processor 222 in one earpiece module
212 for processing sensed heart rate data into a heart rate signal, we agree
with the Examiner that a skilled artisan would have readily understood that
Hong discloses “transmitting physiological information from one earpiece to
the other.” See Non-Final Act. 3. In other words, Hong discloses
transmitting physiological information, i.e., sensed heart rate data, obtained
from a sensor 216 located in one earpiece module 212 to processor 222
located in the other earpiece module 212, to process the sensed heart rate
data into a heart rate signal. See Examiner Answer (dated Nov. 15, 2019,
hereinafter “Ans.”) 4 (“The embodiment relied upon comprises sensors in
Appeal 2020-001338
Application 14/617,234

6

both earpieces, and a processing device 222 further in one earpiece, as
depicted in Fig. 2.”). Hence, we do not agree with Appellant’s position that
“Hong do[es] not disclose or suggest that its sensors communicate wirelessly
with its processing device. See Reply Brief (filed Dec. 9, 2019, hereinafter
“Reply Br.”) 2.
Furthermore, we do not agree with Appellant that “Ellis does not
describe bi-directional communication of physiological information
between sensors.” Reply Br. 7; see also Appeal Br. 16. Although we
appreciate that Ellis’ paragraph 56 discloses transmitting physiological
information to a controller, nonetheless, Ellis also discloses that “[a]ny of
the modular links or charms may include a wireless transceiver and provide
the functions of any appropriate [module],” such that data is transferred
among the modules of the system. Ellis, paras. 89, 90 (“The modular . . .
system itself may act as the communications bus for transferring data among
the . . . modules in the system.”) (Emphasis added).
Accordingly, as we agree with the Examiner’s position that “[t]he
teachings of Ellis . . . show that it is known for any module of a system to
communicate . . . information with any other one module of the system,” we
agree with the Examiner’s reliance on Ellis “to add additional wireless
transmission functionality” to Hong’s headset 210. Non-Final Act. 3, 4.
Hence, Hong’s headset 210, as modified by Ellis, includes sensors 216 and
wireless transceivers 218 in each earpiece module 212 and a processor 222
located in one of the earpiece modules 212. As discussed supra, Hong
already discloses transmitting wirelessly physiological information from
sensor 216 located in a first earpiece module 212 to processor 222 located in
a second earpiece module 212. Therefore, the headset of Hong, as modified
Appeal 2020-001338
Application 14/617,234

7

by Ellis, results in headset 210 having wireless transmission of physiological
information not only between first and second earpiece modules 212, but
also between second and first earpiece modules 212, in order to “provide[]
additional functionality per unit . . . and authentication capability.” Ans. 4
(citing Ellis, paras. 31, 32, 89–94). Stated differently, the headset of Hong,
as modified by Ellis, results in headset 210 having wireless transmission of
physiological information between both earpiece modules 212.
With respect to the Examiner’s reasoning to combine the teachings of
Hong and Ellis, Appellant argues that the Examiner’s determination of
obviousness is based upon impermissible hindsight. Appeal Br. 13.
According to Appellant, Hong’s configuration is not physically capable of
the ‘additional wireless transmission, as taught by Ellis,’” because Hong’s
headset 210 “only has one wireless transmitter.” Id. at 14. Appellant
contends that a person of ordinary skill in the art would have no motivation
to combine Hong’s static, non-modular system with Hong’s modular system,
which “does not need the intramodular wireless communication of Ellis.”
Id. at 15. Moreover, Appellant argues that “the Examiner provides no
motivation why one of ordinary skill in the art would reasonably believe that
the two earpieces of Hong would need to exchange communication for
‘additional security through authentication protocols.’” Id. at 16. Appellant
explains that because even though authentication may be a reasonable
concern in Ellis’ modular network, where “new modules must be
authenticated before being added to the network, nothing in Hong would
suggest that this was even a remote concern for Hong’s [static, non-modular]
headset.” Id.
Appeal 2020-001338
Application 14/617,234

8

We are not persuaded by Appellant’s argument that a skilled artisan
would not combine the teachings of Hong and Ellis, because although there
are differences between their systems, “[w]hen a work is available in one
field of endeavor, design incentives and other market forces can prompt
variations of it, either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007).
Here, Appellant has not adequately explained why having a single
transceiver 218 in Hong would have dissuaded a person of ordinary skill in
the art from “add[ing] additional wireless transmission functionality,” i.e.,
adding another transceiver 218, according to Ellis, in order to “provide
additional functionality per sensing unit . . . and authentication capability.”
Non-Final Act. 3, 7.
For example, Ellis’ paragraph 89 discloses that one module can act as
a control unit, whereas another module can act as memory. See Non-Final
Act. 7. As such, in the headset of Hong, as modified by Ellis, one earpiece
module 212 includes processor 222 acting as a control unit, and the other
earpiece module 212 provides memory to store sensed heart rate data from
sensors 216, i.e., physiological information. Therefore, the Examiner’s
reasoning to “provide additional functionality per unit” is supported by a
preponderance of the evidence and has rational underpinning. See Ans. 4
(citing Ellis, paras. 89–94).
Furthermore, Ellis’ system recognizes whether a received message
constitutes a stray message from another modular network. See Ellis, para.
31; see also Appeal Br. 15 (“[A] combination of Hong with Ellis would
result in Hong’s headset being merely another module . . . in the modular
Appeal 2020-001338
Application 14/617,234

9

network of Ellis.”). Hence, a skilled artisan would readily understand that
the headset of Hong, as modified by Ellis, likewise recognizes whether
received physiological data, i.e., sensed heart rate, constitutes stray data
from a nearby user using a headset similar to the headset of Hong, as
modified by Ellis. Therefore, the Examiner’s reasoning to “provide . . .
authentication capability,” is supported by a preponderance of the evidence
and has rational underpinning. See Ans. 4 (citing Ellis, paras. 31, 32).
Moreover, we are not persuaded by Appellant’s argument that “nothing in
Hong or Ellis would suggest that such authentication should include
physiological information,” because as discussed supra, the Examiner’s
rejection does not employ physiological data transmitted between earpiece
modules 212 of Hong’s headset, as modified by Ellis, for authentication
purposes. See Appeal Br. 16.
In conclusion, the Examiner’s modification is an improvement to
Hong’s headset to “add additional wireless transmission functionality,” in
the same way as taught by Ellis, to lead to a predictable result, and the
modification is well within the skill of one having ordinary skill in this art.
KSR, 550 U.S. at 417 (“[I]f a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill.”). Therefore, we are
not persuaded that the Examiner relied on impermissible hindsight, rather
than the knowledge of those skilled in the art at the time of the invention.
Accordingly, for the foregoing reasons, we sustain the rejection under
35 U.S.C. § 103(a) of claim 1 as unpatentable over Hong and Ellis. Claims
5–7 fall with claim 1.
Appeal 2020-001338
Application 14/617,234

10

Claim 2
Claim 2, which depends from independent claim 1, adds the limitation
“wherein each earpiece module is configured to transmit physiological
information signals produced by its at least one physiological sensor, via its
transceiver, to the other earpiece module transceiver in substantially real
time.” Appeal Br. 20–21 (Claims App’x.).
The Examiner finds that Hong, as modified by Ellis, discloses the
headset of independent claim 1, and, thus, Ellis discloses “wherein each
earpiece module is configured to transmit physiological information
signals produced by its at least one physiological sensor, via its transceiver,
to the other earpiece module transceiver in substantially real time.” Non-
Final Act. 7–8 (citing Ellis, paras. 85, 87, 89, 90, 99).
In response, Appellant argues that “neither Hong nor Ellis describe
that each module is configured to transmit physiological information to the
other module.” Appeal Br. 17. According to Appellant, “Ellis does not
disclose or suggest that its alleged ‘physiological information’ is sent to
other modules of Ellis containing physiological sensors.” Id.
We are not persuaded by Appellant’s arguments because once more
Appellant is attacking Hong and Ellis individually when the rejection as
articulated by the Examiner is based on a combination of Hong and Ellis.
As discussed supra, Hong discloses transmitting physiological information,
i.e., sensed heart rate data, obtained from a sensor 216 located in one
earpiece module 212 to processor 222 located in the other earpiece module
212, in order to process the heart rate data into a heart rate signal. See Ans.
4. Also discussed above, Ellis is relied upon “to add additional wireless
transmission functionality” to Hong’s headset 210. See Non-Final Act. 3.
Appeal 2020-001338
Application 14/617,234

11

Therefore, the headset of Hong, as modified by Ellis, results in headset 210
having wireless transmission of physiological information between both
earpiece modules 212, as called for by claim 2. See Ans. 4.
Therefore, for the foregoing reasons, we sustain the rejection under
35 U.S.C. § 103(a) of claim 2 as unpatentable over Hong and Ellis.

Claim 3
Claim 3, which depends from independent claim 1, adds the limitation
“wherein each transceiver is a Bluetooth transceiver, Wi-Fi transceiver, or
ZigBee transceiver.” Appeal Br. 21 (Claims App’x.).
The Examiner finds that Hong, as modified by Ellis, discloses the
headset of independent claim 1, and, thus, Hong discloses “wherein each
transceiver is a Bluetooth transceiver, Wi-Fi transceiver, or ZigBee
transceiver.” Non-Final Act. 8.
In response, Appellant argues that “Hong only describes a single
wireless communication unit 218 and, therefore, cannot disclose or suggest
the configuration of more than one transceiver.” Appeal Br. 18.
We agree with the Examiner’s finding that Hong discloses transceiver
218 as “configured to communicate via one or more wireless protocols, such
as . . . Bluetooth, ZigBee, and the like.” See Hong, para. 30; see also Non-
Final Act. 8. Furthermore, for the reasons discussed supra, Hong’s headset
210, as modified by Ellis, includes sensors 216 and wireless transceivers 218
in each earpiece module 212 and a processor 222 located in one of the
earpiece modules 212. As such, each of wireless transceivers 218 of Hong’s
headset 210, as modified by Ellis, constitute Bluetooth or ZigBee
transceivers.
Appeal 2020-001338
Application 14/617,234

12

Therefore, we also sustain the rejection of claim 3 over the combined
teaching of Hong and Ellis.

Claims 17 and 18
Claim 17, which depends from independent claim 1, adds the
limitation “wherein each earpiece module is configured to wirelessly
transmit physiological information signals from its at least one physiological
sensor, via its transceiver, to a remote device.” Appeal Br. 22 (Claims
App’x.).
The Examiner finds that Hong, as modified by Ellis, discloses the
headset of independent claim 1, and, thus, Hong discloses “wherein each
earpiece is configured to wirelessly transmit physiological information
signals from its at least one physiological sensor, via its transceiver, to a
remote device.” Non-Final Act. 9 (citing Hong, paras. 17–19).
In response, Appellant argues that because “Hong merely describe[s]
how the sole wireless communication unit 218 of its headset 210 can
transmit information to a gateway device [2]30,” “Hong only describes a
single wireless communication unit 218 and, therefore, cannot disclose or
suggest the configuration of more than one transceiver.” Appeal Br. 18.
Hong discloses transceiver 218 as “configured to communicate heart
rate data to a gateway device 230 and/or one or more auxiliary devices 250.”
Hong, para. 29; see also id., para. 18, Non-Final Act. 9. Furthermore, for the
reasons discussed supra, Hong’s headset 210, as modified by Ellis, includes
sensors 216 and wireless transceivers 218 in each earpiece module 212 and a
processor 222 located in one of the earpiece modules 212. As such, each of
wireless transceivers 218 of Hong’s headset 210, as modified by Ellis, are
Appeal 2020-001338
Application 14/617,234

13

configured to wirelessly transmit physiological information signals to a
remote device, as called for by claim 17.
Therefore, we sustain the rejection under 35 U.S.C. § 103(a) of claim
17 as unpatentable over Hong and Ellis.
Lastly, with respect to the rejection of claim 18, Appellant relies on
the same arguments discussed above regarding the rejection of claim 17
(“Appellant respectfully submits that Claim 18 is patentable over the cited
references for at least similar reasons as discussed herein with respect to
Claim 17.”). Appeal Br. 19. Thus, for the same reasons discussed supra, we
likewise sustain the rejection of claim 18 over the combined teachings of
Hong and Ellis.

CONCLUSION

Claim(s)
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1–3, 5–7, 17,
18
103(a) Hong, Ellis 1–3, 5–7, 17,
18

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