Valencell, Inc.

Patent Trials and Appeals Board

Sep 21, 2021

2020006640 (P.T.A.B. Sep. 21, 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.
16/011,985 06/19/2018 Wolfgang Wagner 9653-27CT3 4089
20792 7590 09/21/2021
MYERS BIGEL, P.A.
PO BOX 37428
RALEIGH, NC 27627
EXAMINER
AMARA, MOHAMED K
ART UNIT PAPER NUMBER
2886
NOTIFICATION DATE DELIVERY MODE
09/21/2021 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 WOLFGANG WAGNER, SHAWN STEPHENSON,
STEVEN MATTHEW JUST, MICHAEL EDWARD AUMER,
JESSE BERKLEY TUCKER, LAWRENCE CHRISTOPHER ESCHBACH,
and STEVEN FRANCIS LEBOEUF
Appeal 2020-006640
Application 16/011,985
Technology Center 2800
Before JEFFREY T. SMITH, N. WHITNEY WILSON, and LILAN REN,
Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s January 31, 2020 decision to reject claims 1–6 and 17–30
(“Non-Final Act.”). We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

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 Br. 3).
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Application 16/011,985

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CLAIMED SUBJECT MATTER
Appellant’s disclosure is directed to health/environmental monitors
that are comfortable to wear and can accurately detect physiological data
(Appeal Br. 4). In particular, the Specification discloses headsets that may
be inserted into the ear and perform health monitoring via optical access to
portions of the ear surface (id.). Claim 1, reproduced below, is illustrative of
the claimed subject matter:
1. A headset, comprising:
a housing;
a speaker driver within the housing;
a printed circuit board (PCB) directly mounted on a
surface of the speaker driver; and
a sensor module supported by the PCB and electrically
connected to the speaker driver, wherein the sensor module
comprises an optical source and an optical detector, and
wherein the sensor module is configured to detect and/or
measure physiological information from a subject wearing the
headset,
wherein the PCB is an elongated, flexible PCB having a
distal end portion, and wherein the optical source and optical
detector are secured to the PCB at the distal end portion.
REFERENCE
The prior art relied upon by the Examiner is:
Name Reference Date
LeBoeuf et al. US 2013/0131519 A1 May 23, 2013

REJECTIONS
The Examiner rejects claims 1–6 and 17–30 under 35 U.S.C. § 102(a)(1)
as anticipated by LeBoeuf.
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Application 16/011,985

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The Examiner has withdrawn the non-statutory, obviousness-type
double patenting rejection over LeBoeuf, US 8,788,002 B2 (July 22, 2014)
(Ans. 3).
OPINION
Claim Interpretation. The Examiner has interpreted the terms “first
portion” and “front portion” as used in claims 17 and 22 respectively as
invoking the provisions of 35 U.S.C. § 112(f) as means plus function claims
(Non-Final Act. 5–8). Appellant has disputed this interpretation. Claims 17
and 22 read as follows (emphasis added):
17. A speaker driver of an earpiece that is configured to be
worn within an ear of a subject, the speaker driver comprising:
a first portion configured to emit sounds;
a second portion integrated within the first portion; and
at least one sensor circuit on the second portion of the speaker
driver and electrically connected to the speaker driver, wherein
the at least one sensor circuit comprises an optical source and
an optical detector, and wherein the at least one sensor circuit is
configured to detect and/or measure physiological information
from the subject wearing the speaker driver.

22. A speaker driver configured to be worn within an ear of a
subject, the speaker driver comprising:
a front portion of the speaker driver configured to emit
sounds;
a rear portion of the speaker driver; and
at least one sensor circuit on the rear portion of the
speaker driver and electrically connected to the speaker driver,
wherein the at least one sensor circuit comprises an optical
source and an optical detector, and wherein the at least one
sensor circuit is configured to detect and/or measure
physiological information from the subject wearing the speaker
driver,
wherein the rear portion is on an opposite side of the
speaker driver from the front portion.
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A claim element that does not include the term “means” or “step”
triggers a rebuttable presumption that 35 U.S.C. § 112(f) does not apply.
MPEP § 2181(1)(A). Because, in this instance, the claim terms in question
do not use the word “means,” there is a presumption that § 112(f) does not
apply. The Examiner maintains that although “portion” is claimed as part of
the speaker driver, that wording does not sufficiently identify a structure
because “the ‘portion’ can be a piece of software that drives the ‘speaker
driver’ to generate/control the emitted sounds” (Ans. 6). Moreover,
according to the Examiner, even if the speaker driver is considered to be
hardware, the claim language does not provide sufficient structure to permit
the first/front portion to “emit sounds,” which necessitates invoking §112(f)
(Ans. 7).
We disagree with the Examiner. As noted by Appellant (Appeal Br.
9), and acknowledged by the Examiner (Ans. 7), the term “speaker driver”
does not invoke §112(f). Both “first portion” and “front portion” refer to
parts of the speaker driver. With regards to claim 17, the claim language
specifically recites the presence of a “second portion,” which is separate
from the “first portion.” Each “portion” is a part of the claimed “speaker
driver.” Thus, the claim language recites sufficient structure so that the
presumption that §112(f) is not invoked has not been overcome. Similarly,
with respect to claim 22, the claimed “front portion” is structurally defined
relative to the claimed “rear portion” in both in terms of the configuration of
the components and the position of each portion on the speaker driver. This
is sufficient structure such that the presumption against invoking §112(f) has
not been overcome.
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Anticipation Rejection. “A prior art reference anticipates a patent
claim under 35 U.S.C. § 102(b) if it discloses every claim limitation.” In re
Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012) (citing Verizon Servs.
Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1336–37 (Fed. Cir. 2010)).
Claim 1. In this instance, Appellant contends, inter alia, that LeBoeuf
does not teach or disclose a system in which “the optical source and optical
detector are secured to the PCB at the distal end of the platform” (Appeal Br.
19). The Examiner finds that this element is disclosed as LeBoeuf’s optical
source 24 and optical detector 26 where these elements “are mounted
thereon at one of the end where board 50 is placed, i.e.[,] distal end portion,”
as shown in FIG. 7A (Non-Final Act. 13):

FIG. 7A is a side section view of a light-guiding earbud for a headset,
according to some embodiments of the LeBoeuf’s disclosure.

However, LeBoeuf describes board 50 as an “ear bud base” (LeBoeuf
¶ 165), and the Examiner has not made findings indicating that this ear bud
base may be considered to be a flexible PCB, as required by the claim.
While LeBoeuf does describe optical source 24 as potentially being a
flexible PCB (LeBoeuf ¶ 165), as can be seen in FIG. 7A above, optical
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detector 26 is not secured to optical source 24 at all, much less to the distal
end of optical source 24.
Accordingly, we determine that Appellant has shown that the
preponderance of the evidence of record does not support the Examiner’s
finding that claim 1 is anticipated by LeBoeuf. Accordingly, we reverse the
anticipation rejection of claim 1, as well as the anticipation rejection of
claims 2–6, which depend from claim 1.
Claim 17. The Examiner finds that LeBoeuf’s board 50 – described
as an “ear bud base – and speaker 22 correspond to the claimed first portion,
and that electric and electronic parts on the speaker driver circuit are
integrated within board 50, and correspond to the claimed second portion.
(Non-Final Act. 14)
Appellant argues that LeBoeuf does not disclose a speaker driver with
a first portion configured to emit sounds and a second portion integrated
within the first portion, where the second portion has a sensor circuit
comprising an optical source and an optical detector (Appeal Br. 27–28).
Appellant argues that the Examiner appears to rely on board 50 as including
both the claimed first and second portions, but LeBoeuf’s board 50 is not
configured to emit sound. Appellant further argues that to the extent that the
Examiner relies on speaker 22 as corresponding to the claimed requirement
to be configured to emit sound, there is no finding that that portion of the
system includes a sensor circuit as required by the claims. Therefore,
according to Appellant, the evidence does not support the Examiner’s
finding of anticipation.
In response, the Examiner finds that both speaker 22 and board 50
should be considered as a single unit, the claimed speaker driver (Ans. 23).
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The Examiner also argues that, for purposes of the rejection of claim 17,
“Fig. 1 is used in combination with either Figs. 3 or 4” because “Fig. 1
presents the general aspect of the headset, whereas Figs. 3 and 4 disclose
separate specifics of Fig. 1 in different embodiment” (Ans. 22). According
to the Examiner “a combination of Figs. 1 and 3, or Figs. 1 and 4 are deemed
to be not erroneous but pointing each to different embodiments, each of
which appearing to teach the claimed invention” (Ans. 22–23). The
Examiner has stated:
the Examiner has pointed to speaker 22 with base 50 and the
electronics associated with them on boards 20/32 (as shown in
Figs. 3-4 but not particularly indicated in Fig. 1) as reading on
the claimed speaker driver. More explicitly, the first portion of
the speaker driver has been mapped to only the mechanical
part(s) of the speaker that generate and emit sounds into the ear.
The second portion of the speaker driver has been mapped to
the electric/electronic parts of the speaker driver circuits of
50/32, which appear on Figs. 1, 3–4, and which has to be on the
other portion of the speaker driver 22/50, with parts that are
totally or partially integrated within the first portion, such as the
electric terminals that drive the mechanical parts of the speaker,
in addition to source(s) 24 and detector(s) 26. The electronics of
these source(s) and detector(s) appear also to be, partially or
totally, on that same second portion of the system 22/50.

(Ans. 23). However, as persuasively argued by Appellant (Reply Br. 15–
16), the electronic components cited by the Examiner as corresponding to
the second portion are not “integrated within” the mechanical parts of
LeBoeuf’s speaker cited by the Examiner as corresponding to the claimed
“first portion.” Therefore, the structure of LeBoeuf’s speaker does not meet
the structural requirements of claim 17.
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Moreover, to the extent that the Examiner finds that LeBoeuf’s
speaker 22 and base 50 are combined to correspond to the claimed speaker
driver (Ans. 23), the electronics recited in claim 17 as being “on” the
claimed second portion of the speaker driver are said to include LeBoeuf’s
source 24 and detector 26 (id.). It is apparent from a review of Fig. 7, or
Fig. 3, that neither source 24 nor detector 26 is “integrated within” what the
Examiner describes as “the first portion” of the speaker driver (the
mechanical parts which generate the sound).
Accordingly, we determine that the preponderance of the evidence of
record does not support the Examiner’s finding that claim 17 is anticipated
by LeBoeuf.
Claim 22. Claim 22 recites, inter alia, that the speaker driver has a
front portion and a rear portion, and that the front portion is on the opposite
side of the speaker driver from the front portion. In this instance, Appellant
argues that LeBoeuf’s optical sensor 24 and detector 26 are not located on
“the opposite side” of the speaker driver from the front portion (which is the
described as the portion configured to emit sounds). We agree with
Appellant.
The Examiner finds that “[t]he rear portion of the speaker driver has
been mapped to the electric/electronic parts of the speaker driver circuits of
50/32, which appear on Figs. 1, 3–4, and which has to be on the other
portion of the speaker driver 22/50 even though it has connections to
source(s) 24 and detector(s) 26,” and further finds that “[t]he electronics of
these source(s) and detector(s) appear to be also on that same rear side of the
system 22/50.” However, there is no citation for to support this assertion,
and we are unable to ascertain precisely what the Examiner considers “the
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electronics.” Moreover, the claim requires that “the sensor circuit” be
located on the “rear portion” of the speaker driver, on an “opposite side”
from the front portion which is “configured to emit sounds.” The part of
LeBoeuf’s system configured to emit sounds (item 22 in Fig. 7) is located on
the same side as the optical sensor 24 and detector 26, not the opposite side.
Accordingly, we determine that Appellant has demonstrated reversible
error in the Examiner’s finding of anticipation for claim 22.
Claim 24. Claim 24 recites, inter alia, a sensor module that is
“flexibly coupled to” the speaker driver. The Examiner’s findings with
regard to claim 24 are set forth in the Non-Final Action at pages 16–17.
With regard to the “flexibly coupled to” limitation, the Examiner does not
make specific findings that show how LeBoeuf’s system meets this
limitation. In particular, the Examiner makes a finding that LeBoeuf’s
speaker driver is flexible because it is made of plastics “which are
necessarily flexible with increasing temperatures” (Non-Final Act. 17).
Appellant contests this finding (Appeal Br. 22–23), but we need not resolve
this dispute. Appellant also argues that the Examiner has not established
that the components are “flexibly coupled,” as opposed to merely being
flexible (Appeal Br. 23). In response, the Examiner finds that various
components in LeBoeuf’s system are resin based and that, therefore, they
must necessarily meet the “flexibly coupled” limitation (Ans. 18–19).
Appellant persuasively argues that the Examiner’s position is not
adequate to support a finding of anticipation. Regardless of what the
specific components are made of, claim 24 requires “a sensor module that is
flexibly coupled to the speaker driver” (emphasis added). The Examiner has
not made adequately supported findings that LeBoeuf’s optical circuit is
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flexibly coupled to its speaker driver. Accordingly, we reverse the
anticipation rejection of claim 24.
Dependent claims. Because we reverse the anticipation rejections of
the independent claims, we necessarily also reverse the anticipation
rejections of the dependent claims.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–6, 17–30 102(a)(2) LeBoeuf 1–6, 17–30

REVERSED