Valencell, Inc.

Patent Trials and Appeals Board

Jan 3, 2020

14101468 - (D) (P.T.A.B. Jan. 3, 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.
14/101,468 12/10/2013 Steven Francis LeBoeuf 9653-3TSCT3 1058
20792 7590 01/03/2020
MYERS BIGEL, P.A.
PO BOX 37428
RALEIGH, NC 27627
EXAMINER
HOUGH, JESSANDRA F
ART UNIT PAPER NUMBER
3792
MAIL DATE DELIVERY MODE
01/03/2020 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
____________________

Ex parte STEVEN FRANCIS LEBOEUF, JESSE BERKLEY TUCKER,
and MICHAEL EDWARD AUMER
____________________

Appeal 2019-0042381
Application 14/101,468
Technology Center 3700
____________________

Before PHILLIP J. KAUFFMAN, TARA L. HUTCHINGS, and
ALYSSA A. FINAMORE, Administrative Patent Judges.

FINAMORE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–6, 9–17, and 19. We have
jurisdiction under § 6(b).
We AFFIRM IN PART.

1 We reference herein the Specification filed December 10, 2013 (“Spec.”),
Non-Final Office Action mailed December 11, 2018 (“Non-Final Act.”),
Appeal Brief filed January 29, 2019 (“Appeal Br.”), Examiner’s Answer
mailed April 16, 2019 (“Ans.”), and Reply Brief filed May 8, 2019 (“Reply
Br.”).
2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies Valencell, Inc. as the real party in interest. Appeal Br. 3.
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SUBJECT MATTER ON APPEAL
The invention “relates generally to health and environmental monitors
and, more particularly, to wireless health and environment monitors.”
Spec. 1:11–13. Claims 1, 12, and 19 are independent. Independent claim 1
is illustrative of the subject matter on appeal, and we reproduce it below,
emphasizing the limitation at issue.
1. A system for evaluating the cardiopulmonary
functioning of a person, the system comprising:
a portable telecommunication device; and
a sensor module configured to be worn by the person, the
sensor module comprising:
at least one auscultatory sensor that is pointed in a
direction of the person when the sensor module is being
worn, wherein the at least one auscultatory sensor is
configured to sense physiological sounds from the person
that are related to cardiopulmonary functioning;
at least one external acoustical sensor pointing away
from the person and towards an environment around the
person, wherein the at least one external acoustical sensor
is configured to sense external sounds from the
environment;
a signal processor configured to process signals
from the at least one auscultatory sensor and the at least
one external acoustical sensor to at least partially remove
external sounds from the physiological sounds and
generate new signals containing cleaner physiological
information about the cardiopulmonary functioning of the
person; and
a transmitter in communication with the signal
processor and configured to transmit the new signals from
the signal processor to the portable telecommunication
device;
wherein the at least one auscultatory sensor, the at
least one external acoustical sensor, the signal processor,
and the transmitter combined operate with less than
100 mW of total operating power;
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wherein the portable telecommunication device comprises
a user interface configured to display the cleaner physiological
information about the cardiopulmonary functioning information
for the person.
Appeal Br., Claims App. (emphasis added).

REJECTIONS
Rejection Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis
I 17 112, second paragraph indefiniteness
II 1–3 103(a) Aceti,3 Shalon,4 Gazdzinski5
III 4 103(a) Aceti, Shalon, Gazdzinski, Moroney6
IV 5 103(a) Aceti, Shalon, Gazdzinski, Kosuda7
V 6 103(a) Aceti, Shalon, Gazdzinski, Ghouri8
VI 9, 10 103(a) Aceti, Shalon, Gazdzinski, Tran9
VII 11 103(a) Aceti, Shalon, Gazdzinski, Mault10
VIII 12–16 103(a) Aceti, Abreu,11 Gazdzinski
IX 17 103(a) Aceti, Abreu, Gazdzinski, Mault
X 19 103(a) Aceti, Shalon, Barney,
12
Gazdzinski

3 US 2005/0059870 A1, published Mar. 17, 2005.
4 US 2006/0064037 A1, published Mar. 23, 2006.
5 US 2001/0051766 A1, published Dec. 13, 2001.
6 US 2009/0131761 A1, published May 21, 2009.
7 US 6,155,983, issued Dec. 5, 2000.
8 US 2005/0021519 A1, published Jan. 27, 2005.
9 US 2008/0001735 A1, published Jan. 3, 2008.
10 US 2001/0044588 A1, published Nov. 22, 2001.
11 US 2009/0105605 A1, published Apr. 23, 2009.
12 US 4,312,358, issued Jan. 26, 1982.
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ANALYSIS
Rejection I: Indefiniteness
The Examiner rejects claim 17 under 35 U.S.C. § 112, second
paragraph, concluding that the limitation “the at least one blood flow sensor”
lacks antecedent basis. Non-Final Act. 3. Appellant does not argue this
rejection on appeal, and, indeed, it is unclear to what “the at least one blood
flow sensor” refers. Accordingly, we sustain the rejection of claim 17 under
35 U.S.C. § 112, second paragraph.

Rejection II: Obviousness Based on Aceti, Shalon, and Gazdzinski
Independent claim 1 recites “wherein the at least one auscultatory
sensor, the at least one external acoustical sensor, the signal processor, and
the transmitter combined operate with less than 100 mW of total operating
power.” Appeal Br., Claims App. The Examiner finds Gazdzinski’s smart
probe, which includes at least one sensor, a signal processor, and a
transmitter, operates with less than 100 mW of power. Non-Final Act. 6
(citing Gazdzinski ¶ 366). The Examiner then determines it would have
been obvious to use Gazdzinski’s operating power for Aceti’s disclosed
device “for the purpose of ensuring an efficient device with long lasting
power.” Id.
Appellant argues “[o]ne of ordinary skill in the art would have little
reason to combine the teachings of Gazdzinski, much less any expectation
that the power system of Gazdzinski would have any reasonable chance of
success at powering the different structures of Aceti and/or Shalon.” Reply
Br. 7. Appellant’s argument is persuasive.
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As Appellant points out, Aceti discloses a wearable monitoring
device, whereas Gazdzinski teaches an ingested inspection device. Reply
Br. 6. Namely, Aceti discloses an apparatus for monitoring physiological
parameters in an unobtrusive manner by using physiological characteristics
present within an auditory canal of an animal (Aceti ¶¶ 2–3), and Gazdzinski
teaches a smart probe configured as a capsule to be swallowed by a patient
for inspection of the intestinal wall (Gazdzinski ¶ 42, Figs. 11, 27a). Given
the different ways in which the devices are used, the Examiner’s rationale
for combining the teachings of Aceti and Gazdzinski, i.e., “ensuring an
efficient device with long lasting power” (Non-Final Act. 6), is speculative
and lacks rational underpinnings.
In view of the foregoing, the Examiner has not demonstrated
persuasively that the combined teachings of Aceti, Shalon, and Gazdzinski
render obvious the subject matter of independent claim 1. We, therefore, do
not sustain the rejection of independent claim 1 and claims 2 and 3
depending therefrom under 35 U.S.C. § 103(a).

Rejections III–VII: Obviousness Based on Aceti, Shalon, Gazdzinski, and
Moroney, Kosuda, Ghouri, Tran, or Mault
Each of claims 4–11 depends from independent claim 1. Appeal Br.,
Claims App. The rejections of these claims are based on the same rationale
for combining the teachings of Aceti and Gazdzinski discussed above with
respect to independent claim 1 such that these rejections suffer from the
same deficiency as the rejection of independent claim 1. Consequently, for
the same reason as independent claim 1, we do not sustain the rejections of
claims 4–11 under 35 U.S.C. § 103(a).

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Rejection VIII: Obviousness Based on Aceti, Abreu, and Gazdzinski
Similar to independent claim 1, independent claim 12 recites “wherein
the plurality of electrodes, the at least one signal processor, and the at least
one transmitter combined operate with less than 100 mW of total operating
power.” Appeal Br., Claims App. The rejection of this claim is based on the
same rationale for combining the teachings of Aceti and Gazdzinski
discussed above with respect to independent claim 1 (Non-Final Act. 12),
and, as a result, the rejection suffers from the same deficiency as the
rejection of independent claim 1. Thus, for the same reason as independent
claim 1, we do not sustain the rejection of independent claim 12 and
claims 13–16 depending therefrom under 35 U.S.C. § 103(a).

Rejections IX: Obviousness Based on Aceti, Abreu, Gazdzinski, and Mault
Claim 17 depends from claim 16, which depends from independent
claim 12. Appeal Br., Claims App. The rejection of claim 17 is based on
the same rationale for combining the teachings of Aceti and Gazdzinski
discussed above with respect to independent claim 12 such that the rejection
suffers from the same deficiency as the rejection of independent claim 12.
Consequently, for the same reason as independent claim 12, we do not
sustain the rejection of claim 17 under 35 U.S.C. § 103(a).

Rejection X: Obviousness Based on Aceti, Shalon, Barney, and Gazdzinski
Similar to independent claim 1, independent claim 19 recites “wherein
the at least one physiological sensor, the at least one signal processor, the at
least one transmitter combined operate with less than 100 mW of total
operating power.” Appeal Br., Claims App. The rejection of this claim is
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based on the same rationale for combining the teachings of Aceti and
Gazdzinski discussed above with respect to independent claim 1 (Non-Final
Act. 15–16), and, thus, the rejection suffers from the same deficiency as the
rejection of independent claim 1.
Claim 19 also recites “at least one physiological sensor configured to
sense the following types of physiological information generated by the
person: pulse rate, blood flow, and blood pressure.” Appeal Br., Claims
App. As Appellant correctly points out, this limitation can be satisfied only
by a sensor or sensors configured to sense all three types of information,
namely, pulse rate, blood flow, and blood pressure. Appeal Br. 18.
The Examiner relies on Aceti for teaching the recited physiological
sensor. Non-Final Act. 14 (citing Aceti ¶¶ 18, 23, 30, Fig. 3, reference
numerals 314, 344). Aceti teaches monitoring device 100 includes processor
portion 102 and conductor portion 104. Aceti ¶ 16. Conductor portion 104
includes first end 112 configured for insertion within the auditory canal and
second end 114 coupled to processor portion 102. Id. ¶ 17. When
positioned in the auditory canal, monitoring device 100 detects one or more
physiological characteristics at first end 112 and passes the physiological
characteristics through conductor portion 104 to second end 114 for
processing by processor portion 102 to determine a physiological parameter.
Id. Paragraph 18 discloses that processor portion 102 determines the
following physiological parameters: temperature, pulse, blood-oxygen
content, and respiration rate. This list includes only one of the three
physiological parameters recited in independent claim 19. Paragraph 23
discloses that conductor portion 104 of monitoring device 100 has an
acoustic tube for communicating aural signals, such as those produced by
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respiration, through conductor portion 104 to processor portion 102. The
paragraph does not mention any of the recited physiological parameters.
Paragraph 30 discloses that microphone sensor 308 uses microphone 344
and signal processor 346 to sense sound within the auditory canal, but does
not mention any particular physiological parameter detected using the
microphone and signal processor. Consequently, the Examiner has not
shown that Aceti discloses at least one physiological sensor configured to
sense all three of pulse rate, blood flow, and blood pressure, as independent
claim 19 requires.
For these reasons, the Examiner has not demonstrated persuasively
that the combined teachings of Aceti, Shalon, Barney, and Gazdzinski render
obvious the subject matter of independent claim 19. We, therefore, do not to
sustain the rejection of independent claim 19 under 35 U.S.C. § 103(a).

CONCLUSION
Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
17 112, second paragraph Indefiniteness 17
1–3 103(a) Aceti, Shalon, Gazdzinski 1–3
4 103(a) Aceti, Shalon, Gazdzinski, Moroney 4
5 103(a) Aceti, Shalon, Gazdzinski, Kosuda 5
6 103(a) Aceti, Shalon, Gazdzinski, Ghouri 6
9, 10 103(a) Aceti, Shalon, Gazdzinski, Tran 9, 10
11 103(a) Aceti, Shalon, Gazdzinski, Mault 11
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12–16 103(a) Aceti, Abreu, Gazdzinski 12–16
17 103(a) Aceti, Abreu, Gazdzinski, Mault 17
19 103(a) Aceti, Shalon, Barney, Gazdzinski 19
Overall
Outcome 17
1–6,
9–17, 19

TIME PERIOD FOR RESPONSE
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 IN PART