Ex Parte Maxwell et al

Board of Patent Appeals and Interferences

May 9, 2012

10471490 (B.P.A.I. May. 9, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DOUGLAS JAMES MAXWELL,
MALCOLM HOWARD GRANAT, and JOSEPH CYRIL BARBENEL
____________

Appeal 2010-003039
Application 10/471,490
Technology Center 2800
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Before CARL W. WHITEHEAD, JR., GREGORY J. GONSALVES, and
ANDREW J. DILLON, Administrative Patent Judges.

GONSALVES, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-003039
Application 10/471,490

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the rejection of
claims 1-14. (App. Br. 1.) We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
The Invention
Exemplary claim 1 follows:
1. A system for recording and processing data
relating to the activities of a subject, the system comprising: an
accelerometer adapted to be maintained in a single location
about a thigh of a subject and operable to generate inclination
and motion sensitive data that reflects the inclination and
motion of the thigh; recording means for recording the
inclination and motion sensitive data from the accelerometer;
and a processor for processing the recorded inclination and
motion sensitive data so as to classify activities into discrete
ones of sitting, walking and standing activities based on the
inclination and motion sensitive data.

Exemplary claim 8 follows:
8. A system as claimed in claim 1, wherein the
processor is programmed to calculate an estimate of the
calorific expenditure of the subject for a specified period.

Claims 1, 3-6, and 10-14 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Kelly (U.S. Patent No. 6,611,783 B2 (filed Jan. 5,
2001)). (Ans. 3-5.)
Claims 1-6 and 10-14 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Friedman (U.S. Patent No. 6,129,686 (filed June 3,
1999)). (Ans. 5-8.)
Claims 7-9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over either Kelly or Friedman. (Ans. 8-9.)
Appeal 2010-003039
Application 10/471,490

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ISSUES
Appellants’ responses to the Examiner’s positions present the
following issues:
1. Can the prior art be distinguished from the claimed invention
on the basis of the claim limitation of processing data “so as to classify
activities into discrete ones of sitting, walking and standing activities based
on the inclination and motion sensitive data,” as recited in independent claim
1, and as similarly recited in independent claim 10?
2. Does Kelly or Friedman render obvious the claim limitation
that “the processor is programmed to calculate an estimate of the calorific
expenditure of the subject for a specified period,” as recited in dependent
claim 8?

ANALYSIS
We disagree with Appellants’ conclusion regarding the anticipation of
claims 1-6 and 10-14 and the obviousness of claims 7 and 9. We adopt as
our own (1) the findings and reasons set forth by the Examiner in the action
from which this appeal is taken and (2) the reasons set forth by the Examiner
in the Examiner’s Answer (Ans. 3-14) in response to the Appellants’ Appeal
Brief. We concur with the conclusion reached by the Examiner.
We highlight and address specific findings and arguments regarding
the claim limitation or processing data “so as to classify activities into
discrete ones of sitting, walking and standing activities based on the
inclination and motion sensitive data” (claim 1). Appellants contend with
respect to independent claims 1 and 10 that neither Kelly nor Friedman
discloses this claim limitation. (App. Br. 5-8.) Appellants also contend with
Appeal 2010-003039
Application 10/471,490

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respect to claim 7 that neither Kelly nor Friedman teaches or suggests
distinguishing data in order to produce information relating to the “cadence
of a walking activity or counting the steps of a walking activity.” (Id. at 9.)
But the claim limitations recited in claims 1, 7 and 10 indicate an intended
use or purpose. “An intended use or purpose usually will not limit the scope
of the claim because such statements usually do no more than define a
context in which the invention operates.”' Boehringer Ingelheim Vetmedica,
Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed.Cir. 2003).
Moreover, a “clause in a method claim is not given weight when it simply
expresses the intended result of a process step positively recited.” Minton v.
Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381 (Fed. Cir. 2003)
(citation omitted). Accordingly, we will sustain the Examiner’s rejections of
claims 1, 7, and 10 because the portions of the claims relied upon by
Appellants to distinguish over the prior art simply express an intended
purpose or result. We will also sustain the Examiner’s rejections of
dependent claims 2-6, 9, and 11-14 because Appellants did not set forth any
separate patentability arguments for these dependent claims. (See App. Br.
5-12.)
Appellants also assert that claim 8 is not rendered obvious by either
Kelly or Friedman because neither reference teaches or suggests a processor
that is programmed to calculate “calories spent by any activity or in any
specified period.” (App. Br. 10.) We agree. The Examiner has not
identified any portion of either Kelly or Friedman that mentions a processor
that is programmed to calculate spent calories. (See Ans. 8-9 and 14.)
Accordingly, we will not sustain the Examiner’s obviousness rejection of
claim 8.
Appeal 2010-003039
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DECISION
We affirm the Examiner’s decision rejecting claims 1-7 and 9-14 and
reverse the Examiner’s decision rejecting claim 8 as obvious.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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