PTO/SB/58 (02-09)
`Approved for use through 02/28/2013. OMB 0651-0064
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number.
`(Also referred to as FORM PT0-1465)
`REQUEST FOR INTER PARTES REEXAMINATION TRANSMITTAL FORM
`
`Address to:
`Mail Stop Inter Partes Reexam
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Attorney Docket No.: 28043-21099
`-------------------------
`Date: September 14, 2012
`
`8,073,707
`1. ~ This is a request for inter partes reexamination pursuant to 37 CFR 1.913 of patent number
`issued December 6, 2011
`. The request is made by a third party requester, identified herein below.
`
`2. ~ a. The name and address of the person requesting reexamination is:
`
`3. D
`~
`
`b. The real party in interest (37 CFR 1.915(b)(8)) is: BASIS Science, Inc.
`-------------------------------------------
`a. A check in the amount of$ ______ is enclosed to cover the reexamination fee, 37 CFR 1.20( c)(2);
`
`b.
`
`The Director is hereby authorized to charge the fee as set forth in 37 CFR 1.20( c)(2)
`to Deposit Account No. 19-2555
`; or
`
`D
`4. ~ Any refund should be made by D check or ~ credit to Deposit Account No. _1_9_-_2_5_5_5 ______ _
`
`c.
`
`Payment by credit card. Form PT0-2038 is attached.
`
`37 CFR 1.26(c). If payment is made by credit card, refund must be to credit card account.
`
`5. ~ A copy of the patent to be reexamined having a double column format on one side of a separate paper is
`enclosed. 37 CFR 1.915(b )(5)
`
`6. D
`7. D
`
`CD-ROM or CD-R in duplicate, Computer Program (Appendix) or large table
`D Landscape Table on CD
`
`b. Specification Sequence Listing on:
`
`Nucleotide and/or Amino Acid Sequence Submission
`If applicable, items a. - c. are required.
`a. D Computer Readable Form (CRF)
`i. D CD-ROM (2 copies) or CD-R (2 copies); or
`ii. D paper
`c. D Statements verifying identity of above copies
`8. ~ A copy of any disclaimer, certificate of correction or reexamination certificate issued in the patent is included.
`9. ~ Reexamination of claim(s) _1_-_1_8_,_2 __ 0_-2 __ 2 _________________________________ is requested.
`
`10. ~ A copy of every patent or printed publication relied upon is submitted herewith including a listing thereof on
`Form PTO/SB/08, PT0-1449, or equivalent.
`11. D An English language translation of all necessary and pertinent non-English language patents and/or printed
`publications is included.
`
`[Page 1 of 2]
`This collection of information is required by 37 CFR 1.915. The information is required to obtain or retain a benefit by the public which is to file (and by the USPTO to
`process) an application. Confidentiality is governed by 35 U.S.C. 122 and 37 CFR 1.11 and 1.14. This collection is estimated to take 18 minutes to complete, including
`gathering, preparing, and submitting the completed application form to the USPTO. Time will vary depending upon the individual case. Any comments on the amount
`of time you require to complete this form and/or suggestions for reducing this burden, should be sent to the Chief Information Officer, U.S. Patent and Trademark
`Office, U.S. Department of Commerce, P.O. Box 1450, Alexandria, VA 22313-1450. DO NOT SEND FEES OR COMPLETED FORMS TO THIS ADDRESS. SEND
`TO: Mail Stop Inter Partes Reexam, Commissioner for Patents, P.O. Box 1450, Alexandria, VA 22313-1450.
`If you need assistance in completing the form. ca/11-800-PT0-9199 and select option 2.
`
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`FITBIT EXHIBIT 1014
`
`

`
`PTO/SB/58 (02-09)
`Approved for use through 02/28/2013. OMB 0651-0064
`U.S. Patent and Trademark Office; U.S. DEPARTMENT OF COMMERCE
`Under the Paperwork Reduction Act of 1995, no persons are required to respond to a collection of information unless it displays a valid OMB control number.
`
`12. ~ The attached detailed request includes at least the following items:
`
`a. A statement identifying each substantial new question of patentability based on prior patents and printed
`publications. 37 CFR 1.915(b )(3)
`b. An identification of every claim for which reexamination is requested, and a detailed explanation of the pertinency
`and manner of applying the cited art to every claim for which reexamination is requested. 37 CFR 1.915(b )(1) & (3).
`13. ~ It is certified that the estoppel provisions of 37 CFR 1.907 do not prohibit this reexamination. 37 CFR 1.915(b )(7)
`14. ~ a. It is certified that a copy of this request has been served in its entirety on the patent owner as provided in
`37 CFR 1.33(c).
`The name and address of the party served and the date of service are:
`GTC Law Group LLP & Affiliates c/o CPA Global
`
`P.O. Box 52050
`
`Minneapolis MN 55402
`
`Date of Service:
`
`September 14, 2012
`
`; or
`
`Db. A duplicate copy is enclosed because service on patent owner was not possible. An explanation of the efforts
`made to serve patent owner is attached. See MPEP 2620.
`
`15. Third Party Requester Correspondence Address: Direct all communications about the reexamination to:
`
`~ The address associated with Customer Number:
`OR
`
`I
`
`00758
`
`I
`
`Firm or
`Individual Name
`
`D
`Address
`
`City
`
`Country
`
`Telephone
`
`I State
`
`I Email
`
`I Zip
`
`16. ~ The patent is currently the subject of the following concurrent proceeding(s):
`a. Copending reissue Application No.
`D
`
`b. Copending reexamination Control No.
`
`D
`
`c. Copending Interference No.
`D
`~ d. Copending litigation styled:
`BodyMedia, Inc. V. BASIS Science, Inc.
`District of Delaware, C.A. No. 12-133-GMS
`
`WARNING: Information on this form may become public. Credit card information should not be
`included on this form. Provide credit card information and authorization on PT0-2038.
`September 14, 2012
`/Rajiv P. Patel/
`Authorized Signature
`Date
`39,327
`Rajiv P. Patel
`Typed/Printed Name
`Registration No., if applicable
`
`[Page 2 of 2]
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`2 of 821
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`violation of law or regulation.
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`

`
`IN THE
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`U.S. PATENT NO.:
`
`8,073,707
`
`ISSUE DATE:
`
`SERIAL NO.:
`
`December 6, 2011
`
`11/247,049
`
`FILING DATE:
`
`October 11, 2005
`
`TITLE:
`
`System for detecting, monitoring, and reporting an individual's
`physiological or contextual status
`
`EXAMINER:
`
`Not Yet Known
`
`GROUP ART UNIT:
`
`Not Yet Known
`
`ATTY DKT NO.:
`
`28043-21099
`
`CERTIFICATE OF ELECTRONIC (EFS-WEB) TRANSMISSION AND MAILING
`I hereby certify that this correspondence is being transmitted via the Office electronic filing system in accordance
`with 37 C.F.R. § 1.8(a)(i)(C) from the Pacific Time Zone of the United States on the local date shown below. I
`hereby certify that this correspondence is also being deposited on the date shown below via United States Postal
`Service First Class Mail to: GTC Law Group LLP & Affiliates, c/o CPA Global, P. 0. Box 52050, Minneapolis,
`MN 55402.
`
`Dated: September 14, 2012
`
`By: /Rajiv P. Patel/
`Ra.iv P. Patel, Re . No. 39,327
`
`REQUEST FOR REEXAMINATION OF U.S. PATENT NO. 8,073,707
`UNDER 35 U.S.C. §§ 311-318 AND 37 C.F.R. § 1.913
`
`Third-party requester, BASIS Science ("Requester"), respectfully requests Inter Partes
`
`reexamination under 35 U.S.C. §§ 311-318 and 37 C.P.R.§ 1.913 ("Request") of claims 1-18
`
`and 20-22 ofUnited States Patent Number 8,073,707 which issued on December 6, 2011 to Eric
`
`Teller et al. ("Teller"). As set forth in this Request, there is a reasonable likelihood that
`
`Requester will prevail with respect to at least one of the claims challenged in this Request.
`
`Reexamination Request for U.S. Patent No. 8,073,707
`(28043-21099)
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`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION ............................................................................................................ 4
`
`REQUEST REQUIREMENTS UNDER 37 C.F.R. § 1.915(A) ("REQUEST") ......... 5
`
`III.
`
`REQUEST REQUIREMENTS UNDER 37 C.F.R. § 1.915(8) .................................... 5
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`§ 1.915(B)(1)- An Identification of the Patent by Patent Number and
`Every Claim for Which Reexamination is Requested ........................................... 5
`
`§ 1.915(B)(2) -A Citation of the Patents and Printed Publications Which
`Are Presented to Provide a Substantial New Question of Patentability ................ 5
`
`§ 1.915(B)(3)- Statement Pointing Out That Requester Will Prevail with
`Respect To At Least One Claim Challenged in the Request Based on the
`Cited Patents and Printed Publications, and a Detailed Explanation of the
`Pertinency and Manner of Applying the Patents and Printed Publications
`to Every Claim for Which Reexamination is Requested ....................................... 6
`
`a.
`
`b.
`
`1.
`
`2.
`
`3.
`
`4.
`
`5.
`
`6.
`
`Summary of Teller ........................................................................................... 7
`
`Prosecution History .......................................................................................... 8
`
`Summary of the Prior Art ................................................................................ 9
`
`Prior Art Reference Amano ..................................................................... 1 0
`
`Prior Art Reference Mault ....................................................................... 11
`
`First Basis on which Requester Will Prevail on At Least One
`Challenged Claim ........................................................................................... 11
`
`Second Basis on which Requester Will Prevail on At Least One
`Challenged Claim ........................................................................................... 12
`
`Third Basis on which Requester Will Prevail on At Least One
`Challenged Claim ........................................................................................... 13
`
`§ 1.915(B)(4)- Copy ofEvery Patent and Printed Publication Relied
`Upon or Referred To ............................................................................................ 14
`
`§ 1.915(B)( 5) - Copy of the Entire Patent for which Reexamination is
`Requested ............................................................................................................. 14
`
`§ 1.915(B)( 6) - Certificate of Service on the Patent Owner at the Address
`Specified in 37 CFR § 1.33(C) ............................................................................ 14
`
`Reexamination Request for U.S. Patent No. 8,073,707
`(28043-21099)
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`G.
`
`H.
`
`§ 1.915(8)(7)- A Certification by the Requester That The Estoppel
`Provisions of§ 1.907 Do Not Prohibit the Inter Partes Reexamination ............. 15
`
`§ 1.915(8)(8) -A Statement Identifying the Real Party In Interest to the
`Extent Necessary for a Subsequent Person Filing An Inter Partes
`Reexamination Request to Determine Whether That Person is A Privy ............. 15
`
`IV.
`
`REQUEST REQUIREMENTS UNDER 37 C.F.R. § 1.915(C) .................................. 15
`
`V.
`
`CONCLUSION .............................................................................................................. 15
`
`EXHIBIT A: Anticipation Based on U.S. Patent Nos. 6,030,342 (Amano, et al.) ................ 17
`
`EXHIBIT B: Obviousness Based on U.S. Patent Nos. 6,030,342 (Amano et. al.) ................. 32
`
`EXHIBIT C: Obviousness Based on U.S. Patent Nos. 6,030,342 (Amano et. al.) and
`6,478,736 (Mault) ........................................................................................................... 36
`
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`(28043-21099)
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`I.
`
`INTRODUCTION
`
`A patent to Teller was issued on December 6, 20 11. Teller describes a system for
`
`detecting, monitoring and reporting physiological information and recites claims for a system
`
`that detects, monitors and reports status of an individual. The independent claim recites a system
`
`that has two sensors, a processing unit, central monitoring unit and an output device.
`
`Either the processing unit or the central monitoring unit in the system is programmed to
`
`generate a derived parameter from physiological data generated by each of the two sensors. The
`
`independent claim recites that the derived parameter is either: (i) derived physiological status
`
`parameter or (ii) a derived parameter related to an activity in which the monitored individual has
`
`engaged. The processing unit or central monitoring unit is also programmed to cause the output
`
`device to present one of the derived parameters in relation to physiological data generated by one
`
`of the two sensors.
`
`Devices with these feature existed well before June, 16, 2000, which is the earliest
`
`possible priority date Teller could claim. For example, U.S. Patent No. 6,030,342 to Amano et
`
`al. ("Amano"), which was filed on June 12, 1997 (with a §102(e) date ofFebruary 9, 1998) and
`
`issued on February 29, 2000, described a device to measure human physiological information.
`
`In particular, Amano described a sensor device having at least two sensors, for example, to
`
`determine pulse rate data and body temperature data, from which data from these sensors was
`
`processed to generate a derived parameter.
`
`Although Amano was disclosed by the Applicants during the prosecution of Teller, it was
`
`disclosed as one of more than 300 references. Further Amano was not applied by the Examiner
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`(28043-21099)
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`during prosecution. As Amano does disclose two sensors which gather physiological data to
`
`then derive additional physiological data, there is a reasonable likelihood that Requester vvlll
`
`prevail with respect to at least one of the dairns challenged in this Request.
`
`II.
`
`REQUEST REQUIREMENTS UNDER 37 C.F.R. § 1.915(A) ("REQUEST")
`
`Requester respectfully requests reexamination of claims 1-18 and 20-22 of Teller on the
`
`basis of the prior art as set forth herein. Each reference relied upon in this Request is noted in
`
`Section III.B below.
`
`The fee set forth in 37 CFR § 1.20(C)(2) of $8,800 for this Request is submitted herewith.
`
`III. REQUEST REQUIREMENTS UNDER 37 C.F.R. § 1.915(B)
`
`A.
`
`§ 1.915(B)(l)- An Identification of the Patent by Patent Number and Every
`Claim for Which Reexamination is Requested
`
`Requester respectfully requests inter partes reexamination of claims 1-18 and 20-22 of
`
`United States Patent Number 8,073,707, which issued on December 6, 2011 to Eric Teller, et al.,
`
`in view a reasonable likelihood Requester will prevail with respect to at least one of claims
`
`challenged in this Request.
`
`B.
`
`§ 1.915(B)(2) -A Citation of the Patents and Printed Publications Which Are
`Presented to Provide a Substantial New Question of Patentability
`
`The following patents (collectively, the "Prior Art") provide the basis on which there is a
`
`reasonable likelihood Requester will prevail with respect to at least one of claims of Teller
`
`challenged in this Request. These references were among about 3 00 references provided to the
`
`Examiner by the Patent Owner but neither were cited by the Examiner in prosecution.
`
`Reexamination Request for U.S. Patent No. 8,073,707
`(28043-21099)
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`1) U.S. Patent No. 6,030,342, filed July 12, 1997 (§ 1 02( e) date is February 9, 1998) and
`
`issued on February 29, 2000, to Kazuhiko Amano, et al. ("Amano"). Amano is prior
`
`art under 35 U.S.C. §102(e). This reexamination request applies Amano as an
`
`anticipatory prior art under 35 U.S.C. §102, and as an obviousness combination with
`
`Mault under 35 U.S.C. §103.
`
`2) U.S. Patent No. 6,478,736, filed October 10, 2000 (which is based on 13 provisional
`
`applications filed between October 8, 1999 and August 29, 2000) and issued on
`
`November 12,2002, to Mault ("Mault"). Mault is prior art under 35 U.S.C. §102(e).
`
`This reexamination request applies Mault as an obviousness combination with
`
`Amano under 35 U.S.C. §103(a).
`
`C.
`
`§ 1.915(B)(3) - Statement Pointing Out That Requester Will Prevail with
`Respect To At Least One Claim Challenged in the Request Based on the Cited
`Patents and Printed Publications, and a Detailed Explanation of the Pertinency
`and Manner of Applying the Patents and Printed Publications to Every Claim
`for Which Reexamination is Requested
`
`In view of the Prior Art listed in the section above, this Request sets forth a substantial
`
`likelihood that Requester will prevail on at least one claim with regard to the patentability of
`
`claims 1-18 and 20-22 ofTeller. As noted previously, the claimed invention in Teller is for a
`
`system for detecting, monitoring and reporting physiological information.
`
`During examination the claimed invention was distinguished from the cited prior art by
`
`claiming as part of the system, generation of a derived parameter based on two measured
`
`physiological parameters. However, before the priority date of Teller, Amano disclosed these
`
`features. Amano anticipates the independent claim and several dependent claims ofTeHer.
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`(28043-21099)
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`Amano renders the remaining challenged dependent claims obvious and provides the grounds on
`
`which Requester will prevail on at least one, if not all, the challenged claims.
`
`1. Summary of Teller
`
`As noted above, Teller describes a system for detecting, monitoring and reporting
`
`physiological information. The system includes a first and second sensor adapted to generate
`
`derived data indicative of a first and second physiological parameter of the monitored individual.
`
`Teller was filed on October 11, 2005. The application was a continuation ofU.S. Patent
`
`Application No. 09/595,660 (now U.S. Patent No. 7,689,437), which was filed on June 16, 2000.
`
`Teller includes one independent claim, 1. Claims 2-18 and 20-22 ultimately are
`
`dependent from claim 1.
`
`Claim 1 is directed to a system comprising a first and second sensor adapted to generate
`
`data indicative of first and second physiological parameters of the individual. The system
`
`further comprises a processing unit, a central monitoring unit and an output device. Either the
`
`processing unit or the central monitoring unit in the system is programmed to generate a derived
`
`parameter from physiological data generated by each of the two sensors. The independent claim
`
`recites that the derived parameter is either: (i) derived physiological status parameter or (ii) a
`
`derived parameter related to an activity in which the monitored individual has engaged. The
`
`processing unit or central monitoring unit is also programmed to cause the output device to
`
`present one of the derived parameters in relation to physiological data generated by one of the
`
`two sensors.
`
`More particularly, claim 1 recites:
`
`Reexamination Request for U.S. Patent No. 8,073,707
`(28043-21099)
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`A system for detecting, monitoring, and reporting a status of an individual to a user,
`the system comprising:
`
`a first sensor adapted to generate data indicative of a first physiological parameter of
`the individual if said first sensor is in proximity to the individual;
`
`a second sensor adapted to generate data indicative of a second physiological
`parameter of the individual if said second sensor is in proximity to the individual;
`
`a processing unit in electronic communication with said first sensor and said second
`sensor;
`
`a central monitoring unit in electronic communication with at least one of said
`sensors and said processing unit; and
`
`an output device in electronic communication with at least one of said processing unit
`and said central monitoring unit,
`
`wherein at least one of said processing unit and said central monitoring unit is
`programmed
`
`(a) to generate at least one of a derived physiological status parameter of the
`individual and a derived parameter related to an activity in which the individual
`has engaged said derived parameters based on both of said data indicative of said
`first physiological parameter of the individual and said data indicative of said
`second physiological parameter of the individual, and
`
`(b) to cause said output device to present to a user indicators of at least one of
`said derived parameters of the individual in relation to indicators of at least one of
`(i) said data indicative of said first physiological parameter of the individual, and
`(ii) said data indicative of said second physiological parameter of the individual.
`
`In the Reasons for Allowance of the above independent claim the Examiner described
`
`U.S. Patent No. 6,468,222 to Mault ("Mault '222") as the closest prior art of record and stated
`
`that this did not disclose deriving a physiological status parameter or deriving a parameter
`
`related to an activity in which the individual has engaged from multiple raw parameters. These
`
`grounds for allowance were not challenged by the Applicants.
`
`2. Prosecution History
`
`As stated above, Teller was filed on October 11, 2005. In a first, non-final Office action,
`
`the claims were rejected under 35 U.S.C. §§ 112, 102 and 103. (Office action, Jan. 21, 2010)
`
`Reexamination Request for U.S. Patent No. 8,073,707
`(28043-21099)
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`The Applicants filed a response amending the claims to include the generation of one of a
`
`derived physiological status parameter and a derived contextual status parameter based on both
`
`of the data generated by the first and second sensor. (Amendment, June 21, 2010). On AprilS,
`
`2011, the Applicants filed a terminal disclaimer over the parent application, U.S. Patent No.
`
`7,689,437. After an Examiner Interview, the Applicants filed a further amendment amending the
`
`derived contextual status parameter to be a derived parameter related to an activity in which the
`
`individual has engaged.
`
`The Examiner then allowed the claims. In allowing the claims, the Examiner articulated
`
`the Reasons for Allowance as the being that the prior art did not disclose:
`
`the system generating, from multiple measured raw parameters, one or
`more of a derived physiological status parameter of the individual and a
`derived parameter related to an activity in which the individual has
`engaged, or an output device presenting to the user indicators of at least
`one of the derived parameters of the individual in relation to indicators of
`at least one of the measured raw physiological parameters of the
`individual.
`
`(Notice of Allowance, May 18, 2011, p. 3). Essentially, the prosecution history set forth the
`
`basis of patentability as the generation of derived data from data from two sensors. These
`
`Reasons for Allowance were not challenged or further addressed by the Applicant prior to
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`issuance of the application.
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`3. Summary of the Prior Art
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`Amano clearly discloses the claimed features of Teller that were determined to be
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`allowable during prosecution of Teller. Specifically, issued claims 1-18 and 20-22 of Teller are
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`either anticipated by U.S. Patent No. 6,030,342 ("Amano") of obvious over Amano and U.S.
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`Reexamination Request for U.S. Patent No. 8,073,707
`(28043-21099)
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`9
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`12 of 821
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`Patent No. 6,478,736 ("Mault"). It is noted that Mault was an unapplied reference that is distinct
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`from Mault '222, which was applied in prosecution.
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`Amano, titled "Device for Measuring Calorie Expenditure and Device for Measuring
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`Body Temperature," was filed on June 12, 1997 and issued on February 29, 2000. Amano
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`discloses a system that derives caloric expenditure of an individual based on measuring body
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`motion, pulse, and temperature parameters. Amano, which was provided by the Applicants but
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`not applied by the Examiner in prosecution, discloses a device that derives caloric expenditure
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`from two pieces of physiological data from two sensors. Mault, titled "Integrated Calorie
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`Management System," was filed on October 10, 2000 (claiming priority back to October 8,
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`1999) and issued on November 12, 2002. Mault, provided by the Applicants but not applied by
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`the Examiner in prosecution, discloses a portable electronic device for a health management
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`system that is used as a caloric intake and expenditure calculator.
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`Both references were among more than 300 references provided by the Applicants to the
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`Examiner during prosecution but were not cited by the Examiner during prosecution. Moreover,
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`as set forth below, each is pertinent with respect to what is disclosed within them such that the
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`challenged claims of Teller are anticipated by Amano or obvious over the combination of
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`Amano and Mault. Accordingly, as further described below, the Prior Art references provide
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`new teachings and the basis on which Requester will prevail with respect to at least one of the
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`claims challenged in this Request.
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`a. Prior Art Reference Amano
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`Reexamination Request for U.S. Patent No. 8,073,707
`(28043-21099)
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`10
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`13 of 821
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`Filed more than a year before Teller and not cited during the course of prosecution,
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`Amano is a prior art reference under 35 U.S.C. § 1 02( e). It describes a physiological monitoring
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`device that measures caloric expenditure using, inter alia, body motion, pulse rate, and body
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`temperature. (Amano, Abstract). Amano discloses a pressure sensor which generates pulse rate
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`data and a temperature sensor which generates body temperature data. (Amano, 12:66-13:23).
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`Amano further discloses a processing unit programmed to generate a derived parameter,
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`specifically, caloric expenditure, based on both pulse rate data and body temperature data. The
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`caloric expenditure is shown on a display. (Amano, 18:6-44). Thus Amano discloses generating
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`a derived parameter from multiple measured raw parameters and displaying that on a display.
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`These were the key features of the claims in Teller that were considered distinguishable over the
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`prior art of record at the time of prosecution. Moreover, as explained in more detail below,
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`Amano discloses the limitations of the challenged dependent claims alone or in combination with
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`Mault.
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`b. Prior Art Reference Mault
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`Mault is a prior art reference under 35 U.S.C. §102(e). While Mault was provided to the
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`Examiner by the Applicants, it was not cited by the Examiner during prosecution. Like Amano,
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`Mault discloses a physiological monitoring device. Mault discloses obtaining life activities data,
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`for example, as recited in claim 5 of Teller. (Mault, 7:25-26; 37-40).
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`4. First Basis on which Requester Will Prevail on At Least One Challenged Claim
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`A first basis on which Requester will prevail on at least one challenged claim is on
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`application of Amano, which provides a technological teaching not previously recognized by the
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`Examiner. As discussed above, Amano discloses a physiological monitoring device as is
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`Reexamination Request for U.S. Patent No. 8,073,707
`(28043-21099)
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`11
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`14 of 821
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`

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`claimed. As noted previously, Amano was one of more than 300 references provided by the
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`Applicants to the Examiner, but not applied in prosecution of these claims of Teller. As set forth
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`in Exhibit A, Amano anticipates claims 1-4, 7, 11, 14-18, and 22 of Teller under 35 U.S.C.
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`§ 1 02( e) because Amano discloses each and every limitation of the claims. Exhibit A shows that
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`had the Examiner been made fully aware of the scope and content of Amano, the Examiner
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`would not have allowed these claims in Teller. Accordingly, Amano provides a technological
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`teaching not previously recognized by the Examiner on which Requester is likely to prevail with
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`respect to at least one of these claims for which reexamination is requested.
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`In accordance with 37 C.P.R. §1.915(8)(3), Requester has set forth a claim chart in
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`Exhibit A that provides a detailed explanation of the pertinence and manner of applying Amano
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`to claims 1-4, 7, 11, 14-18, and 22 of Teller. Exhibit A sets forth the basis on which Requester
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`likely will prevail with respect to at least one of these claims in reexamination, and accordingly,
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`reexamination of these claims is requested.
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`5. Second Basis on which Requester Will Prevail on At Least One Challenged
`Claim
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`A second basis on which Requester will prevail on at least one challenged claim is on
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`application of Amano, which provides a technological teaching not previously recognized by the
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`Examiner. As discussed above, Amano discloses a physiological monitoring device as is
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`claimed. Amano was one of more than 300 references provided by the Applicants to the
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`Examiner, but not applied in prosecution of these claims of Teller. Exhibit B sets forth how
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`Amano renders obvious claims 8, 9, and 13 of Teller under 35 U.S.C. §103(a) because Amano
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`discloses o