Filed on Behalf of Valencell, Inc.
`By: Sanford E. Warren Jr. (SWarren@wriplaw.com)
`
`R. Scott Rhoades (SRhoades@wriplaw.com)
`
`Warren Rhoades LLP
`1212 Corporate Drive, Suite 250
`Irving, Texas 75038
`Telephone: 972-550-2955
`Fax: 469-442-0091
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE, INC.
`Petitioner
`
`v.
`
`VALENCELL, INC.
`Patent Owner
`
`
`Case IPR2017-00321
`U.S. Patent No. 8,923,941
`
`
`
`
`
`PATENT OWNER’S CONDITIONAL
`MOTION TO AMEND UNDER 37 C.F.R. § 42.121
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`
`
`i
`
`

`

`Case IPR2017-00321
`U.S. Patent No. 8,923,941
`
`TABLE OF CONTENTS
`I. STATEMENT OF RELIEF REQUESTED ................................................ 1
`II. THE SUBSTITUTE CLAIMS DO NOT EXPAND THE SCOPE OF
`
`THE CLAIMS ............................................................................................. 2
`III. THE SPECIFICATION SUPPORTS THE NEW LIMITATIONS OF
`
`THE SUBSTITUTE CLAIMS ................................................................. 4
`IV. THE SUBSTITUTE CLAIMS ARE PATENTABLE OVER THE
`
`PRIOR ART ............................................................................................. 7
`A. Summary of the Invention ........................................................................ 7
`B. Claim Construction .................................................................................10
`C. Level of Ordinary Skill in the Art ..........................................................11
`D. The Claim Amendments Overcome the Asserted Grounds of
`
`Patentability .........................................................................................11
`1. Closest Prior Art ..................................................................................12
`a. Luo - 2008/0200774 (Ex. 2126) .......................................................13
`b. Mault - 6,513,532 (Ex. 2136) ...........................................................14
`c. Craw – 2008/0133699 (Ex. 2127) ....................................................15
`d. Al-Ali – 2003/0181798 (Ex. 2137) ..................................................17
`e. Lee – A Mobile Care System with Alert Mechanism ......................18
` (Ex. 2138) .........................................................................................18
`2. Other Art..............................................................................................19
`V. CONCLUSION .........................................................................................20
`APPENDIX A: CLAIM LISTING ..................................................................23
`
`
`
`
`
`
`
`ii
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`

`Case IPR2017-00321
`U.S. Patent No. 8,923,941
`
`TABLE OF AUTHORITIES
`
`Cases
`Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016) ............. 10
`Idle Free Sys. Inc. v. Bergstrom, Inc., IPR2012-00027 Decision Motion to
`Amend Claims, Paper 26, June 11, 2013 ....................................................... 2
`IPR2017-00319, Institution of Inter Partes Review, Paper 10 at p. 12 ............ 9
`MasterImage 3D, Inc. v. RealD, Inc., Case No. IPR 2015-00040 (Paper No.
`42) ................................................................................................................ 12
`Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1350-51 (Fed. Cir. 2016) ................. 2
`Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) ............................................... 11
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) ....................... 10
`Statutes
`35 U.S.C. § 316(d) ............................................................................................ 1
`Other Authorities
`AIA §§ 102(a)–102(f) ..................................................................................... 13
`Rules
`37 C.F.R. § 42.100(b) ..................................................................................... 10
`37 C.F.R. § 42.12 .............................................................................................. 1
`37 C.F.R. § 42.121 ...................................................................................... 1, 20
`37 C.F.R. § 42.121(a)(2)(i) ............................................................................... 1
`37 C.F.R. § 42.121(a)-(b) ................................................................................. 2
`37 C.F.R. § 42.22(a)(2) ..................................................................................... 1
`37 C.F.R. §§ 42.121(b)(1)-(2)........................................................................... 4
`
`
`
`
`
`iii
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`

`Case IPR2017-00321
`U.S. Patent No. 8,923,941
`
`TABLE OF EXHIBITS
`
`Description
`
`U.S. Patent Application No. 12/691,388, now U.S. Patent No.
`8,700,111, original specification, claims, and figures.
`
`Provisional Application No. 61/274,191, filed on August 14,
`2009, original specification, claims, and figures.
`
`U.S. Patent No. 8,923,941 to LeBoeuf et al., issued December
`30, 2014
`
`U.S. Patent Application No. 14/184,396, now U.S. Patent No.
`8,923,941, original specification, claims, and figures.
`
`U.S. Patent Application Publication No. 2008/0200774 to Luo,
`published August 21, 2008
`
`U.S. Patent Application Publication No. 2008/0133699 to Craw
`et al., published June 5, 2008
`
`U.S. Patent No. 6,513,532 to Mault et al., issued February 4,
`2003
`
`U.S. Patent Application Publication No. 2003/0181798 to Al-
`Ali, published September 25, 2003
`
`R.G. Lee et al. “A Mobile Care System With Alert
`Mechanism” IEEE Transactions on Information Technology in
`Biomedicine, Vol. 11, Issue 5, September 2007
`
`iv
`
`Exhibit
`No.
`
`2108
`
`2109
`
`2115
`
`2116
`
`2126
`
`2127
`
`2136
`
`2137
`
`2138
`
`
`
`
`
`
`
`

`

`I.
`
`STATEMENT OF RELIEF REQUESTED
`Patent Owner, Valencell, Inc. (“Valencell” or “Patent Owner”), moves under
`
`37 C.F.R. § 42.12, to amend the claims of U.S. Patent No. 8,923,941 (the “’941
`
`Patent”) (Ex. 2115) contingent on the outcome of the trial. If original claims 14-21
`
`are found unpatentable, the Patent Trial and Appeal Board (“the Board”) is requested
`
`to cancel claims 14-21 and replace them with proposed substitute claims 22-29. See
`
`37 C.F.R. § 42.22(a)(2); 35 U.S.C. § 316(d). The proposed substitute claims do not
`
`broaden the scope of the claims, and the disclosure supports each proposed
`
`amendment. 37 C.F.R. § 42.121. Moreover, Substitute Claim 22, which is proposed
`
`to replace original Independent Claim 14, incorporates specific limitations that
`
`distinguish the substitute claim over the prior art. Similarly, Substitute Claim 26,
`
`which is proposed to replace Dependent claim 18, also incorporates specific
`
`limitations. Substitute claims 23-25 and 27-29, which are proposed to replace
`
`Dependent Claims 15-17 and 19-21, merely change dependency from original Claim
`
`14 to Substitute Claim 22, and correct for antecedent basis. Patent Owner’s
`
`proposed amendments are responsive to a ground of unpatentability because trial
`
`was instituted on claims 14–21, and the proposed amendments are to claims 14 and
`
`18 with changes to dependency for claims 15-17 and 19-21. See 37 C.F.R. §
`
`42.121(a)(2)(i).
`
`
`
`1
`
`

`

`Case IPR2017-00321
`U.S. Patent No. 8,923,941
`The references asserted in this Inter Partes Review, and all other references
`
`known to Valencell, fail to anticipate or render the substitute claims obvious. See
`
`Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1350-51 (Fed. Cir. 2016). For the reasons
`
`set forth herein, Valencell has met its burden of establishing patentability of the
`
`substitute claims and respectfully requests that this motion to amend be granted. Idle
`
`Free Sys. Inc. v. Bergstrom, Inc., IPR2012-00027 Decision Motion to Amend
`
`Claims, Paper 26, June 11, 2013.
`
`II. THE SUBSTITUTE CLAIMS DO NOT EXPAND THE SCOPE OF
`
`THE CLAIMS
`Patent Owner’s claim listing is attached hereto as Appendix A. See 37 C.F.R.
`
`§ 42.121(a)-(b). Proposed Substitute Independent Claim 22 includes all of the
`
`limitations of original Independent Claim 14, as well as several additional elements.
`
`In particular, Substitute Claim 22 retains or narrows all the limitations of claim 1, as
`
`shown below (proposed amendments underlined):
`
`22. (Substitute for original claim 14, if found unpatentable) A wearable
`device, comprising:
` a housing; and
`a chipset enclosed within the housing, the chipset comprising at
`least one PPG sensor, at least one motion sensor, and at
`least one signal processor configured to process signals
`from the at least one motion sensor and signals from the at
`least one PPG sensor to reduce motion artifacts from the
`PPG signals and to extract physiological and motion
`parameters;
`
`
`
`2
`
`

`

`Case IPR2017-00321
`U.S. Patent No. 8,923,941
`wherein the at least one signal processor configured to process
`data to be output, wherein the output data comprises
`physiological
`information
`and
`motion-related
`information, and wherein the output data is parsed out
`such that an application-specific interface (API) can utilize
`the physiological
`information and motion-related
`information for an application;
`wherein the housing comprises at least one window that
`optically exposes the at least one PPG sensor to a body of
`a subject wearing the device, and wherein the housing
`comprises non-air light transmissive material in optical
`communication with the at least one PPG sensor and the
`window.
`Substitute claim 22 includes the additional limitation of the PPG sensor “to
`
`extract physiological and motion parameters.” Claim 22 further requires that
`
`“wherein at least one signal processor is configured to process data to be output,
`
`wherein the output data comprises physiological information and motion-related
`
`information, and wherein the output data is parsed out such that an application-
`
`specific interface (API) can utilize the physiological information and motion-related
`
`information for an application.”
`
`Each of dependent claims 23-29 incorporates the new limitations by virtue of
`
`their dependence from Substitute Claim 22. In addition, Dependent Claim 18 is
`
`amended to require at least one processor to be configured “to generate the parsed
`
`output data by executing one or more processing methods to provide information
`
`that is fed into a multiplexed output serial data string of motion-related and
`
`physiological information.”
`
`
`
`3
`
`

`

`Case IPR2017-00321
`U.S. Patent No. 8,923,941
`Because the scope of substitute claims 13-24 are narrower than the scope of
`
`each corresponding original claim, the substitute claims do not enlarge the scope of
`
`the patent.
`
`III. THE SPECIFICATION SUPPORTS THE NEW LIMITATIONS OF
`
`THE SUBSTITUTE CLAIMS
`Each of the proposed substitute claims are supported by the original disclosure
`
`of the ’941 Patent (Ex. 2116), the original disclosure of the parent application,
`
`Application No. 12/691,388, now U.S. Patent No. 8,700,111 (filed on Jan. 21, 2010,
`
`the “’111 Application”) (Ex. 2108) and the priority application, Application No.
`
`61/274,191 (filed on Aug. 14, 2009, the “191 Prov. Application”) (Ex. 2109). 37
`
`C.F.R. §§ 42.121(b)(1)-(2).
`
`For the Board’s convenience, the changes in proposed substitute claims,
`
`relative to the original claims are shown in the chart below with underling and strike-
`
`through (a full claim list is provided in the appendix). Support for the proposed
`
`substitute claims and each new element is provided below with reference to the
`
`original ’941 Application, the ’111 Application and the 191 Provisional Application.
`
`Element
`Substitute Claim 22
`A wearable device, comprising:
`
`Exemplary Support1
`
`
`’941 Application 16:16-20
`
`’111 Application p. 16, at lines 1-5 of
`the first full paragraph.
`
`
`1 The notation, XX:YY-YY and XX:YY-XX:YY, cites the written description of the
`exemplary support at XX page and YY lines.
`4
`
`
`
`

`

`Case IPR2017-00321
`U.S. Patent No. 8,923,941
`
`
`191 Prov. Application 14:6-8
`191 Prov. Application 2:33 - 3:3
`’941 Application 2:14-18
`
`’111 Application p. 2, at lines 1-5 of
`the second full paragraph.
`
`191 Prov. Application 2:33-3:3
`’941 Application 3:14-17
`’941 Application 5:23-28
`’941 Application 7:32-8:1
`’941 Application 41:34-42:6
`’941 Application Fig. 20
`
`’111 Application pg. 3, at lines 7-9 of
`the continued paragraph from pg. 2.
`’111 Application pg. 7, at lines 1-4 of
`the second full paragraph.
`’111 Application p.41, at lines 1-2 of
`the beginning of
`the
`third
`full
`paragraph continuing on to pg. 42, at
`lines 1-3.
`’111 Application Fig. 20
`
`191 Prov. Application 7:18-22
`191 Prov. Application 27:10-22
`191 Prov. Application 30:20-23
`191 Prov. Application 30:28-30
`191 Prov. Application Figs. 20 & 21
`’941 Application 39:20-40:2
`
`’111 Application pg. 39, at lines 5-13
`of the second full paragraph and at
`lines 1-3 of the beginning of the third
`full paragraph continuing on to pg. 40,
`at line 1.
`
`191 Prov. Application 28:11-22
`
`a housing; and
`
`a chipset enclosed within the housing, the
`chipset comprising at least one PPG sensor,
`at least one motion sensor, and at least one
`signal processor configured
`to process
`signals from the at least one motion sensor
`and signals from the at least one PPG sensor
`to reduce motion artifacts from the PPG
`signals and to extract physiological and
`motion parameters;
`
`wherein the at least one signal processor
`configured to process data to be output,
`wherein
`the
`output
`data
`comprises
`physiological
`information and motion-
`related information, and wherein the output
`data is parsed out such that an application-
`specific interface (API) can utilize the
`physiological
`information and motion-
`related information for an application;
`
`
`
`5
`
`

`

`wherein the housing comprises at least one
`window that optically exposes the at least
`one PPG sensor to a body of a subject
`wearing the device, and wherein the housing
`comprises non-air light transmissive material
`in optical communication with the at least
`one PPG sensor and the window.
`
`Substitute Claim 26
`The device of claim 14 22, wherein the at
`least one processor is configured to:
`
`(i) reduce motion artifacts by removing
`frequency bands from the signals that are
`outside of a range of interest using at least
`one band-pass
`filter
`to produce pre-
`conditioned signals and
`
`(ii) to generate the parsed output data by
`executing one or more processing methods to
`provide information that is fed into a
`multiplexed output serial data string of
`
`
`
`6
`
`Case IPR2017-00321
`U.S. Patent No. 8,923,941
`’941 Application 4:25-31
`’941 Application 24:27-31
`
`’111 Application p. 4, at lines 1-7 of
`the seventh full paragraph.
`’111 Application p. 24, at lines 5-9 of
`the third full paragraph.
`
`191 Prov. Application 28:11-22
`
`’941 Application 39:5-9
`’941 Application 39:24-40:2
`’941 Application Fig. 16
`
`’111 Application p. 39, at lines 4-8 of
`the first full paragraph.
`’111 Application p. 39, at lines 5-13 of
`the second full paragraph and at lines
`1-3 of the beginning of the third full
`paragraph continuing to page 40, at
`line 1.
`’111 Application Fig. 16
`
`191 Prov. Application 27:27-30
`191 Prov. Application 28:11-22
`191 Prov. Application Fig. 14
`’941 Application 39:5-9
`’941 Application Fig. 16
`
`’111 Application p. 39, at lines 4-8 of
`the first full paragraph.
`’111 Application Fig. 16
`
`191 Prov. Application 27:27-30
`191 Prov. Application Fig. 14
`’941 Application 39:24-40:2
`
`’111 Application p. 39, at lines 5-13 of
`the second full paragraph and at lines
`1-3 of the beginning of the third full
`
`

`

`motion-related
`information.
`
`and
`
`physiological
`
`Case IPR2017-00321
`U.S. Patent No. 8,923,941
`paragraph continuing to page 40, at
`line 1.
`
`191 Prov. Application 28:11-22
`
`IV. THE SUBSTITUTE CLAIMS ARE PATENTABLE OVER THE
`
`PRIOR ART
`A.
`Summary of the Invention
`The objective of the ’941 Patent is to provide an improved heart rate monitor
`
`that delivers more accurate results. A significant issue with wearable heart rate
`
`monitors is managing the signal-to-noise ratio. Prior to Valencell’s invention, the
`
`industry focused on designs such as those disclosed in Numaga, measuring as much
`
`light as possible. The reasoning was simply: the more light you send in to the body,
`
`the more light you collect, the more signal you collect. But while this observation
`
`was true, the reasoning was ultimately flawed because it failed to appreciate the
`
`impact of motion related noise. Valencell recognized this flawed reasoning, realizing
`
`that if you deliver light to the wrong places (i.e., places that have a lot of motion
`
`noise) and if you collect light from the wrong places (i.e., places that have a lot of
`
`motion noise), then the signal-to-noise ratio (S/N) becomes too high. In short, the
`
`increased motion noise offset any gains from increased light collection.
`
`The ’941 Patent discloses a novel method for generating a data string
`
`containing both motion-based or physical activity information and physiological
`
`information. Ex. 2115, at Abstract. The ’941 Patent discusses using a motion sensor
`
`to capture motion-based activity and a photoplethysmography (“PPG”) sensor to
`
`
`
`7
`
`

`

`Case IPR2017-00321
`U.S. Patent No. 8,923,941
`capture physiological information. Id., at Col. 30, Lns. 35-61. The PPG sensor uses
`
`an optical emitter to emit light into the body of the user via a light-guiding region
`
`and “light transmissive material.” Then, an optical detector detects the scattered light
`
`that is produced upon the emitted light penetrating the skin of the user. Id., at Col.
`
`13, Lns. 4-14; Col. 14, Lns. 40-49.
`
`The ’941 Patent discloses that multiple physical activity and physiological
`
`parameters can be determined based on data obtained from the respective sensors.
`
`Id. at Abstract. Once the data string is obtained, it is parsed such that an application-
`
`specific interface can use both sets of data to generate statistical relationships
`
`between the physiological parameters and the physical activity parameters. Id.
`
`One technique the ’941 Patent uses for improving the signal-to-noise ratio at
`
`the physical layer is through the use of processors/multiplexors to analyze and parse
`
`out the physiological and motion-related information contained within the output
`
`data for use by an application specific interface (API). The ’941 patent provides as
`
`follows:
`
`The multiplexed data outputs 604 may be a serial data string of activity
`and physiological information 700 (FIG. 18) parsed out specifically
`such that an application-specific interface (API) can utilize the data as
`required for a particular application. The applications may use this
`data to generate high-level assessments, such as overall fitness or
`overall health. Furthermore, the individual data elements of the data
`string can be used to facilitate better assessments of other individual
`data elements of the data string.
`
`
`
`
`8
`
`

`

`Case IPR2017-00321
`U.S. Patent No. 8,923,941
`Id., at Col. 26, Lns. 15–23 (emphasis added). The use of the application
`
`specific interface (API) was discussed at length in the briefing related to co-pending
`
`IPR2017-00319 challenging claims 1 – 13 of the ‘941 patent. The Board, in that
`
`proceeding, denied institution of inter partes review of claim 3 on all of the asserted
`
`grounds. Specifically, the Board, stated that the institution of the inter partes review
`
`for Claim 3 was being denied, reasoning that:
`
`[T]he Specification explains that the ‘application-specific interface
`(API)’ is directed to a ‘particular application,’ rather than broadly to
`different applications. See Phillips v. WH Corp., 415 F.3d 1303, 1321
`(Fed. Cir. 2005) (en banc) (internal quotation marks and citations
`omitted) (noting that the specification is the single best guide to a
`disputed term’s meaning). Consequently, we decline to accept
`Petitioner’s overly broad construction of the term ‘application-specific
`interface (API).’ Because Petitioner’s assertions challenging claim 3
`are based on its construction of this term, we do not consider further
`Petitioner’s challenges to claim 3 as rendered obvious over Luo and
`Craw (Pet. 27) or over Mault, Al-Ali, and Lee (id. at. 55–59); and we
`deny institution of inter partes review of claim 3 on either asserted
`ground.
`
`See IPR2017-00319, Institution of Inter Partes Review, Paper 10 at p. 12.
`
`
`Patent Owner has added this “API” limitation of Claim 3 of the ‘941 Patent to
`
`the prior Independent Claim 14, now Substitute Claim 22. Additionally, Patent
`
`Owner has added an additional element to Substitute Claim 26, prior Claim 18, to
`
`more distinctly claim the invention. Specifically, Patent Owner has added an
`
`element directed toward the multiplexing of the physiological and motion-related
`
`information. This element further identifies the actions by the processor when the
`
`
`
`9
`
`

`

`Case IPR2017-00321
`U.S. Patent No. 8,923,941
`output data is parsed. Patent Owner has added the language that the processor is
`
`configured “to generate the parsed output data by executing one or more processing
`
`methods to provide information that is fed into a multiplexed output serial data string
`
`of motion-related and physiological information.” This language further explains
`
`the information sent for utilization by the application-specific interface (API). The
`
`Patent Owner disclosed this element in the ‘941 Patent:
`
`
`
`Ex. 2115, at Col. 26, Lns. 7–14.
`
`B. Claim Construction
`The Board interprets claims of an unexpired patent using the broadest
`
`reasonable interpretation in light of the specification of the patent in which they
`
`appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs. LLC v. Lee, 136 S. Ct. 2131,
`
`2144–46 (2016). In applying a broadest reasonable interpretation, claim terms
`
`generally are given their ordinary and customary meaning, as would be understood
`
`by one of ordinary skill in the art in the context of the entire disclosure. See In re
`
`Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special definition
`
`
`
`10
`
`

`

`Case IPR2017-00321
`U.S. Patent No. 8,923,941
`for a claim term must be set forth in the specification with reasonable clarity,
`
`deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`
`Patent Owner contends that no additional claim terms need construction
`
`beyond the terms previously construed by the Board in its Decision to Institute
`
`Proceeding (Paper 10).
`
`Level of Ordinary Skill in the Art
`C.
`Valencell does not take issue with the level of ordinary skill in the art as set
`
`forth by Petitioner, as explained in the declaration of Majid Sarrafzadeh (Ex. 1003,
`
`¶ 54), i.e., a person of ordinary skill in the art (“POSITA”) would have had (i) at
`
`least a four-year degree in electrical engineering, computer engineering, or related
`
`field of study, or equivalent experience, and at least two years of experience in
`
`studying or developing physiological sensors and (ii) would also be familiar with
`
`optical system design and signal processing.
`
`D. The Claim Amendments Overcome the Asserted Grounds of
`Patentability
`
`
`Patent Owner has reviewed the prior art of which it is aware, including the
`
`prior art of record in the ’941 Patent and the prior art cited in this proceeding
`
`(whether forming the basis for institution or not) and in the prosecution of the
`
`application that led to the issuance of the ‘941 Patent. Additionally, Patent Owner
`
`has reviewed the prior art of record in co-pending proceedings for additional Patent
`
`Owner patents, U.S. Patent Nos. 8,989,830 (IPR2017-00317); 8,886,269 (IPR2017-
`
`
`
`11
`
`

`

`Case IPR2017-00321
`U.S. Patent No. 8,923,941
`00318); U.S. Patent Nos. 8,929,965 (IPR2017-00315); and 8,923,941 (IPR2017-
`
`00319) (whether forming the basis for institution or not); prior art of record in the
`
`prosecutions of the additional Patent Owner patents; prior art identified in patent
`
`applications related to the Patent Owner patents; and prior art identified in the
`
`concurrent patent infringement litigation. Provided below is discussion of what
`
`Patent Owner believes to be the most relevant prior art.
`
`Closest Prior Art
`1.
`The Board recently explained that the “prior art of record” refers to “any
`
`material art in the prosecution history of the patent… in the current proceeding…
`
`and in any other proceeding before the Office involving the patent.” MasterImage
`
`3D, Inc. v. RealD, Inc., Case No. IPR 2015-00040 (Paper No. 42). Patent Owner
`
`submits that the prior art does not anticipate or render obvious the Substitute Claims.
`
`The prior art does not disclose a signal processor configured to process data to be
`
`output, wherein the output data comprises physiological and motion-related
`
`information, and wherein the output data is parsed out such that an application-
`
`specific interface (API) can utilize the physiological information and motion-related
`
`information for an application. The prior art also does not disclose a processor that
`
`generates the parsed output data by executing one or more processing methods to
`
`provide information that is fed into a multiplexed output serial data string of motion-
`
`related and physiological information. Without conceding that any prior art
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`approach anticipates or renders obvious any proposed substitute claim of the ’941
`
`patent—or, indeed that these references actually qualify as prior art under pre-AIA
`
`§§ 102(a)–102(f)—the material art of record includes:
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`Luo
`
`Mault
`
`Craw
`
`Al-Ali
`
`United States Patent Application Publication No.
`2008/0200774 (Ex. 2126)
`
`United States Patent No. 6,513,532 (Ex. 2136)
`
`United States Patent Application Publication No.
`2008/0133699 (Ex. 2127)
`
`United States Patent Application Publication No.
`2003/0181798 (Ex. 2137)
`
`Lee
`
`
`
`A Mobile Care System With Alert Mechanism (Ex. 2138)
`
`Luo - 2008/0200774 (Ex. 2126)
`a.
`Lou does not disclose, teach, or suggest the Substitute Claims. Luo discloses
`
`a “wearable mini-size intelligent healthcare system for continuous monitoring and
`
`care of a subject.” Ex. 2126 ¶ 1. Unlike the ’941 Patent and Substitute Claims, Luo
`
`does not disclose obtaining physiological information from a PPG sensor wherein
`
`subject heart rate and subject respiration rate can be extracted from the physiological
`
`information. Instead, Luo focuses on the use of multiple sensors to separately obtain
`
`physiological information.
`
`Luo does not disclose that both physiological and physical activity (motion-
`
`related) signals are processed into a data output that is parsed out such that an
`
`application-specific interface (API) can utilize the physiological information and
`
`motion-related information for an application. Additionally, Luo does not disclose
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`that the processor is configured to generate the parsed output data by executing one
`
`or more processing methods to provide information that is fed into a multiplexed
`
`output serial data string of motion-related and physiological information. Luo
`
`merely discloses that physiological signals and physical activity signals are
`
`monitored, but not that either, let alone both, are output in a specific format. Ex.
`
`2126 ¶¶ 28-29. This is insufficient to meet the limitations of the Substitute Claims.
`
`In the absence of both parameters being outputted or extracted together and in the
`
`absence of the processor being configured to parse the output data through
`
`processing methods, Luo cannot meet these elements, even if a different reference
`
`were to teach the serialized data output element. Significantly, Luo lacks any
`
`discussion regarding parsing out the output data such that an application-specific
`
`interface (API) can utilize the physiological information and motion-related
`
`information for an application. Accordingly, Luo does not anticipate the Substitute
`
`Claims and Luo, alone or in combination with the other prior art, does not render the
`
`Substitute Claims obvious to a POSITA.
`
`b. Mault - 6,513,532 (Ex. 2136)
`Mault does not disclose, teach, or suggest the Substitute Claims. Although
`
`Mault discloses “activity monitoring,” its field relates “to a device that combines
`
`both diet and activity monitoring.” Ex. 2136, 1:23-25. Unlike the ’941 Patent and
`
`the Substitute Claims, Mault does not teach obtaining physiological information
`
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`from a PPG sensor wherein subject heart rate and subject respiration rate can be
`
`extracted from the physiological information.
`
`Mault also does not disclose that both physiological and physical activity
`
`(motion-related) signals are processed into a data output that is parsed out such that
`
`an application-specific interface (API) can utilize the physiological information and
`
`motion-related information for an application. Additionally, Mault does not disclose
`
`that the processor is configured to generate the parsed output data by executing one
`
`or more processing methods to provide information that is fed into a multiplexed
`
`output serial data string of motion-related and physiological information. Mault also
`
`does not even teach processing the signals into a data output. Mault does not
`
`contemplate a plurality of physiological parameters and physical activity parameters
`
`being extracted from the data output, instead Mault focuses on using the monitors to
`
`output “a signal indicative of the body activity of the subject.” Id., 19:47-50. Mault
`
`also fails to contemplate the processor being configured to parse the output data
`
`through processing methods. Accordingly, Mault does not anticipate the Substitute
`
`Claims and Mault, alone or in combination with the other prior art, does not render
`
`the Substitute Claims obvious to a POSITA.
`
`Craw – 2008/0133699 (Ex. 2127)
`c.
`Craw does not disclose, teach, or suggest the Substitute Claims. Craw differs
`
`significantly from the claimed subject matter in the Substitute Claims. The field of
`
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`invention in Craw “relates generally to methods, apparatus and systems for the
`
`communication of information among a plurality of network elements, and
`
`specifically to a dynamic medical object information base for interoperability of
`
`devices and systems.” Ex. 2127 ¶ 2. Unlike the ’941 Patent, Craw has nothing to do
`
`with physiological or physical activity monitoring of any kind. Craw is instead
`
`directed to solving the problem of “improved communications protocols for
`
`acquisition and communication of data between network elements,” id. ¶ 9,
`
`particularly across electronic medical systems. Craw purports to solve this problem
`
`by “providing methods including initiating a communication link with a network
`
`device, receiving standard device data from the network device comprising a global
`
`unique identifier, and requesting a self-describing data dictionary from the network
`
`device, wherein the self-describing data dictionary comprises one or more data
`
`definitions.” Id. ¶ 11. Craw thus generally discloses systems for “interoperability of
`
`medical devices on a network.” Id. ¶ 51. Once data has been communicated based
`
`on the disclosures of Craw, “the dictionary table may describe how to extract the
`
`information received.” Id. ¶ 148.
`
`Unlike the ’941 Patent and the Substitute Claims, Craw does not teach
`
`obtaining physiological information from a PPG sensor wherein subject heart rate
`
`and subject respiration rate can be extracted from the physiological information.
`
`Craw also does not disclose that both physiological and physical activity (motion-
`
`
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`related) signals are processed into a data output that is parsed out such that an
`
`application-specific interface (API) can utilize the physiological information and
`
`motion-related information for an application. Additionally, Craw does not disclose
`
`that the processor is configured to generate the parsed output data by executing one
`
`or more processing methods to provide information that is fed into a multiplexed
`
`output serial data string of motion-related and physiological information. Craw is
`
`directed toward improved communication protocols between network elements.
`
`Craw does not disclose, teach, or suggest the inventions as set forth in