Ex Parte 8,157,731 et al

Patent Trial and Appeal Board

Apr 26, 2017

95002367 (P.T.A.B. Apr. 26, 2017)

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.
92092-891658 7978
EXAMINER
RALIS, STEPHEN J
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
95/002,367 09/14/2012 8,157,731
23370 7590 04/26/2017
KILPATRICK TOWNSEND & STOCKTON LLP
Mailstop: IP Docketing - 22
1100 PEACHTREE STREET
SUITE 2800
ATLANTA, GA 30309
04/26/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
BASIS SCIENCE INC.,
Requester,
v.
BODYMEDIA, INC.,
Patent Owner.
Appeal 2017-000042
Reexamination Control 95/002,367
Patent 8,157,731 B2
Technology Center 3900
Before BRADLEY W. BAUMEISTER, JEREMY J. CURCURI, and
IRVIN E. BRANCH, Administrative Patent Judges.
BAUMEISTER, Administrative Patent Judge.
DECISION UNDER 37 C.F.R. § 41.77(f)
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SUMMARY
Jurisdiction of the present inter partes reexamination has been
returned to the Board pursuant to 37 C.F.R. § 41.77(f) for reconsideration of
the Examiner’s most recent decision adverse to patentability of claims 1—8,
11, 18, 19, and 42. Previously, the Board also had affirmed the Examiner’s
decision adverse to patentability of claims 9, 10, 12—17, and 20-41, but our
affirmance in relation to those was not designated as new grounds, so we do
not further consider the rejection of those claims.
We reverse the Examiner’s decision adverse to patentability of claims
1-8, 11, 18, 19, and 42.
BACKGROUND
In an earlier Decision, the Board affirmed the Examiner’s decision
adverse to patentability of claims 1—42. Decision 12.1 These claims were
rejected as follows (see Examiner’s Answer mailed Oct. 24, 2014, as
modified by the Replacement Examiner’s Answer mailed Oct. 31, 2014
(“Ans.”) (incorporating by reference the Right of Appeal Notice mailed
Apr. 15, 2014 (“RAN”), which, in turn (RAN 7), incorporates by reference
the Action Closing Prosecution mailed October 23, 2013 (“ACP”))):
A. Claims 9, 10, 17, 22, 24, and 26 were rejected under 35 U.S.C.
§ 103(a) as unpatentable over Amano (US 6,030,342; issued Feb. 29, 2000),
1 Basis Science, Inc. v. Body Media, Inc., Appeal 2015-003467 (PTAB
July 16, 2015), https://e-foia.uspto.gov/Foia/RetrievePdf?system=
BPAI&flNm=fd2015003467-07-16-2015-1.
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Myllymaki (US 5,670,944; issued Sept. 23, 1997), and Pottgen
(US 5,524,618; issued June 11, 1996). ACP 5-70.
B. Claims 12—16, 27, and 28 were rejected under 35 U.S.C. § 103(a) as
unpatentable over Amano, Myllymaki, Pottgen, and Mault
(US 6,478,736 Bl; issued Nov. 12, 2002). ACP 71-87.
C. Claims 1, 2, 8, 11, 18, and 19 were rejected under 35 U.S.C. § 103(a)
as unpatentable over Amano, Myllymaki, Pottgen, and Shusterman
(US 6,925,324 B2; issued Aug. 2, 2005). ACP 87-94.
D. Claims 3—7 were rejected under 35 U.S.C. § 103(a) as unpatentable
over Amano, Myllymaki, Pottgen, Shusterman, and Mault. ACP 94—106.
E. Claim 20 was rejected under 35 U.S.C. § 103(a) as unpatentable over
Amano, Myllymaki, Pottgen, and Roncalez (US 2003/0138763 Al;
published July 24, 2003). ACP 106-110.
F. Claims 29-41 were rejected under 35 U.S.C. § 103(a) as unpatentable
over Amano, Myllymaki, Pottgen, Mault, and Bridger (US 6,491,647 Bl;
issued Dec. 10,2002). ACP 111.
G. Claim 42 was rejected under 35 U.S.C. § 103(a) as unpatentable over
Amano, Myllymaki, Pottgen, Mault, and Bridger and Shusterman.
ACP 111.
In so affirming these rejections, the Board designated the obviousness
rejections of claims 1—8, 11, 18, 19, and 42—the rejections that were based,
in part, upon Shusterman—as constituting new grounds of rejection.2
Decision 9, 10, and 12.
2 The Decision expressly states that claims 1, 2, 8, 11, 18, and 19 are
designated as a new ground of rejection. Decision 12. While express
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Following the Board’s Decision, Patent Owner further amended
independent claim 1, as well as dependent claims 11, 18, and 19. Patent
Owner Response Pursuant to 37 C.F.R. § 41.77(b)(1) at 14 (filed Aug. 17,
2015) (“PO 41.77(b)(1) Response”). Patent Owner requested that
prosecution be reopened pursuant to 37 C.F.R § 41.77(b)(1) {id. at 1), argued
that these claim amendments overcame the new grounds of rejection {id. at
16—31), requested that the rejections be withdrawn {id. at 31), and requested
that the claims subject to the new grounds should be indicated to be
patentable {id.).
The Board subsequently issued an Order Remanding Inter Partes
Reexamination Under 37 C.F.R. § 41.77(d) to the Examiner (mailed
Oct. 27, 2015) (“Remand Order”). The Remand Order granted Patent
Owner’s request to reopen prosecution, entered Patent Owner’s proposed
claim amendments and comments, and remanded the case to the Examiner
for further consideration. Remand Order 6.
Upon further examination, the Examiner determined that Patent
Owner’s claim amendments overcame the new grounds of rejection that
were set forth in the Board’s Decision. Determination Under 37 C.F.R.
§ 41.77(d) at 6 (mailed Dec. 2, 2015) (“Ex’r 41.77(d) Determ’n”).
However, in response to Patent Owner’s 41.77(b)(1) Response, Requester
reference to claims 3—7 and 42 was omitted, the Decision makes reasonably
clear that “no error in the Examiner’s rejection[s of these dependent claims]
under 35 U.S.C. § 103(a)” were found “[f]or the reasons we set forth” in
relation to the independent claims from which claims 3—7 and 42 depend.
Decision 11. That is, the Decision makes reasonably clear that the rejections
of claims 3—7 and 42 were also deemed to constitute new grounds of
rejection.
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had proposed a new ground of unpatentability for the amended claims over
the combination of Amano, Myllymaki, Pottgen, Shusterman, and Gutta
(US 6,968,294 B2; issued Nov. 22, 2005) (“the five-reference
combination”). Comments by Third Party Requester 6—10 (filed
Sept. 17, 2015) (“Requester 41.77(c) Comments”). The Examiner agreed
with Requester that the new claims are unpatentable over the newly
proposed five-reference combination. Ex’r 41.77(d) Determ’n 4—11.
Subsequent to the Examiner issuing this § 41.77(d) Determination,
Patent Owner submitted its Comments in Response to Examiner’s
Determination Pursuant to 37 C.F.R. § 41.77(e) (filed January 4, 2016)
(“PO 41.77(e) Comments”). Requester then timely submitted its Third-Party
Requester’s Reply to Patent Owner’s Comments in Response to Examiner’s
Determination Pursuant to 37 C.F.R. § 41.77(e) (filed February 2, 2016)
(“Requester 41.77(e) Reply”). The reexamination proceeding is now
returned to the Board for reconsideration pursuant to 37 C.F.R. § 41.77(f).
Ex’r 41.77(d) Determ’n 11.
We review the appealed rejections for error based upon the issues
identified by Patent Owner and in light of the arguments and evidence
produced thereon. See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential).
ILLUSTRATIVE CLAIM 1
Claim 1 is illustrative of the claimed subject matter in dispute.
Claim 1 is reproduced below with amended claim language underlined and
deleted claim language appearing in brackets:
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1. An apparatus for deriving a state parameter of an
individual, comprising:
a processor;
a sensor for generating a sensor output signal comprising
data indicative of a rate of heat flowing off said individual’s
body, and a sensor for generating a sensor output signal
comprising data indicative of a resistance of said individual’s
skin to an electric current, said sensor output signals being
directed to an electronic communication link with said processor;
wherein said processor automatically determines a context
of said individual by:
determining with a naive Bayesian classifier[ and a
linear regression by usingh a first weight indicating a
probability that the individual is in a resting state and a
second weight indicating a probability that the individual
is in an active state, the naive Bayesian classifier having
inputs comprising said data indicative of the rate of heat
flowing off said individual’s body, [ and]
calculating a first linear regression for the resting
state of the individual, the first linear regression having
inputs comprising said data indicative of the rate of heat
flowing off said individual’s body and said data indicative
of the resistance of said individual’s skin to an electric
current, and
calculating a second linear regression for the active
state of the individual having inputs comprising said data
indicative of the rate of heat flowing off said individual’s
body and said data indicative of the resistance of said
individual’s skin to an electric current; and
wherein said processor utilizes said context to predict the
energy expenditure of said individual by calculating a weighted
sum of the first linear regression and the second linear regression,
wherein the weighted sum is weighted with the first weight and
the second weight from the context.
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FINDINGS AND CONTENTIONS
The Examiner finds, inter alia, that the five-reference combination
proposed by Requester supports the conclusion that claims 1, 2, 8, 11, 18,
and 19 lack patentability under 35 U.S.C. § 103(a). Ex’r 41.77(d) Determ’n
6—11. Towards this end, the Examiner finds that Amano teaches claim 1 ’s
newly added language “calculating a weighted sum of the first linear
regression and the second linear regression, wherein the weighted sum is
weighted with the first weight and the second weight from the context.” Id.
at 8—11.
Amano’s protocols entail determining a context (e.g., whether a
subject is active or at rest) (e.g., Amano FIG. 17, steps Sal—Sa4), selecting
one of two potential regression formulas based on the determined context
(id. at steps Sa5, Sa6), and then calculating the calorie expenditure using just
the one selected regression formula (id. at step Sa7). Neither Requester nor
the Examiner disputes that Amano calculates the calorie expenditure using
only one regression formula. Requester 41.77(c) Comments 9;
Ex’r 41.77(d) Determ’n 8—9. The Examiner reasons as follows, though, for
why Amano’s protocol satisfies claim l’s requirement of using a weighted
sum:
The Examiner finds that Amano et al. explicitly discloses
a processor CPU 201 that automatically determines a “resting”
or “active” state (i.e., context of an individual) based on collected
data indicative of a certain measurements of an individual’s skin
(i.e., body motion, pressure and temperature) by the device.
(Amano et al. col. 8,1. 62—col. 9,1. 14; col. 12,11. 21—28; col. 18,
11. 6—38). By teaching the use of either a resting or active
regression formula, Requester [contends] that Amano et al.’s
determination is a weighted sum with the weights being either a
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“zero” or “one” for each regression formula selection, depending
on an individual’s activity level. ([Requester 41.77(c)
Comments] 9). Requester specifically states,
[because] a probability quantifies the likelihood of an
event occurrence with a numeric value ranging from zero
to one, Amano’s binary weights (i.e., a weight of zero or
one) qualify as the probabilistic weights of the amended
claims. In essence, Amano teaches the use of each
regression formula based on a person’s activity level,
while assessing the activity level with a binary probability
distribution of the person being active or resting.
(Id.). The Examiner agrees. The Examiner concludes that
Amano et al. sufficiently teaches the binary selection of using
either the “resting” or “active[” Regression formula with
weighing the probability of each state (i.e., a weight of zero or
one).
Ex’r 41.77(d) Determ’n 8—9.
The Examiner then makes the following findings in relation to Gutta:
The Examiner finds that Gutta explicitly teaches a
classifier being a trained Bayesian network that is “capable of
taking many different inputs and predicting a probability of the
occupant being in a given emotional state and having a given
personality.” (Gutta col. 7, 11. 1—6). The Examiner finds that
Gutta further teaches the utilization of multiple classifiers, and
the combination of state data provide[d] by each classifier
thereof, to generate a combined state signal and a combined
event signal. (Gutta col. 9,11. 19—31).
Ex’r 41.77(d) Determ’n 9 (emphasis added).
The Examiner concludes that the combined teachings of Amano and
Gutta reasonably would have suggested “modify[ing] Amano et aids binary
probability distribution with Gutta’s Bayesian probabilities for selecting and
weighing each regression formula to predict caloric expenditure, [because]
both references teach classifying a subject’s physiological condition and,
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whether implicitly or explicitly, determining a corresponding probability.”
Id. at 9—10 (quoting Requester 41.77(c) Comments 9).
The Examiner further concludes that the combined teachings of
Amano and Gutta would suggest “modifying Amano ’v] single derivation of
caloric expenditure based on binary probability distribution with Gutta’s
combination of data from multiple state/health status Bayesian probability
classifiers for deriving a combined caloric expenditure using data from each
of the respective probability weighted “resting” and “active” state regression
formulas.” Id. at 10. The Examiner reasons that such a modification would
be suggested because “both references teach classifying a subject’s
physiological condition and, whether implicitly or explicitly, determining a
corresponding probability” {id. (citing Requester 41.77(c) Comments 9)),
and also because “Gutta explicitly teaches the requirement of combining
data from multiple state/health status classifiers to get the true current status
indicative of the monitored person” {id. (citing Gutta col. 9,11. 19—31)).
Patent Owner disputes that Amano’s binary selection of one of the
resting regression formula or the active regression formula reasonably may
be interpreted as calculating the weighted sum of the outputs of first and
second linear regression formulas. PO 41.77(e) Comments 19—21. Patent
Owner instead urges that such an interpretation is unreasonably broad. Id.
In response, Requester urges that “[t]here is nothing in the
specification [of Patent Owner’s ’731 Patent] indicating that the weights
cannot be binary, ‘zero’ and ‘one.’” Requester 41.77(e) Reply 10.
Requester further reiterates support for the Examiner’s position: “it would
have been obvious, after replacing Amano’s threshold classifier with a
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probabilistic method, to use the probabilities as non-binary weights applied
to the two regression formulas to make use of the output of a Bayesian
classifier.” Id.
ANALYSIS
The Examiner points to no evidence in support of the finding that a
binary selection of one of two potential outcomes reasonably would have
been interpreted as constituting a weighted sum of the two options’
outcomes. That is, the Examiner points to no evidence in support of the
finding that a calorie expenditure derived from a single regression formula
reasonably may be interpreted as constituting a weighted sum of the
outcomes of two regression formulas. See Ex’r 41.77(d) Determ’n. 9—11.
Absent evidence to the contrary, we find this interpretation to be
unreasonably broad. Under the Examiner’s logic, any given number, alone,
could be interpreted as constituting a weighted sum by virtue of the fact that
it could be summed with another number and weighted in some manner.
Moreover, modifying Amano’s teachings with those of Gutta does not
overcome this shortcoming. To be sure, Gutta does teach using multiple
Bayesian classifiers (e.g., Gutta col. 6,1. 66-col. 9,1. 34), as well as
“combin[ing] state data from multiple classifiers to generate a combined
state signal and a combined event signal” (id. col. 9,11. 29—31, cited in Ex’r
31.77(d) Determ’n 9). However, claim 1 does not recite calculating the
weighted sum of the most likely outcomes of plural Bayesian classifiers.
Claim 1 instead requires using a single Bayesian classifier to determine the
respective likelihoods of mutually exclusive contexts or states (e.g., rest state
vs. active state), calculating distinct outcomes for each of these mutually
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exclusive contexts (e.g., via distinct linear regressions), and then weighting
the sum of these distinct outcomes, which are associated with the mutually
exclusive contexts.
The Examiner does not sufficiently establish why the recited protocol
of claim 1 would have been obvious in view of the alternative protocol that
would result from the combined teachings of Amano and Gutta. As such,
the Examiner has not established the unpatentability of independent claim 1
over the recited five-reference combination of prior art proposed by
Requester.
Independent claim 11, as well as dependent claims 18 and 19,
likewise, similarly recite using weights in relation to the mutually exclusive
contexts that are generated by a Bayesian classifier. Accordingly, we do not
sustain the Examiner’s decision adverse to patentability of claims 1, 2, 8, 11,
18, and 19.
Furthermore, the Examiner does not make any findings or conclusions
in this regard in relation to Mault or Bridger. See generally Ex’r 41.77(d)
Determ’n. Accordingly, we likewise do not sustain the Examiner’s further
decision adverse to patentability of dependent claims 3—7 and 42.
DECISION
The Examiner’s decision adverse to patentability of claims 1—8, 11,
18, 19, and 42 is reversed.
In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he original decision of the Board under § 41.77(a).”
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A request for rehearing must be in compliance with 37 C.F.R. § 41.79(b).
Comments in opposition to the request and additional requests for rehearing
must be in accordance with 37 C.F.R. § 41.79(c)—(d), respectively. Under
37 C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a)
of this section, for requesting further rehearing under paragraph (d) of this
section, and for submitting comments under paragraph (c) of this section
may not be extended.
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141—44 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding “commenced” on or after
November 2, 2002, may not be taken “until all parties’ rights to request
rehearing have been exhausted, at which time the decision of the Board is
final and appealable by any party to the appeal to the Board.” 37 C.F.R.
§ 41.81. See also MPEP § 2682 (9th ed., Rev. 7, July 2015).
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
REVERSED
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PATENT OWNER:
KILPATRICK TOWNSEND & STOCKTON LLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
THIRD PARTY REQUESTER:
Rajiv P. Patel
FENWICK & WEST LLP
801 California Street
Mountain View, CA 94041
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