Dymedix Diagnostics, Inc.

Patent Trials and Appeals Board

Jan 13, 2021

2020003795 (P.T.A.B. Jan. 13, 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.
15/456,949 03/13/2017 Todd M. Eiken 61400.014 5407
23595 7590 01/13/2021
DeWitt LLP
2100 AT&T Tower
901 Marquette Avenue
Minneapolis, MN 55402
EXAMINER
KINGSLEY, SARAH R
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
01/13/2021 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):
ip-dnm@dewittllp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte TODD M. EIKEN
____________

Appeal 2020-003795
Application 15/456,949
Technology Center 3700
____________

Before STEFAN STAICOVICI, MICHAEL J. FITZPATRICK, and
WILLIAM A. CAPP, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1–5 under 35 U.S.C. § 103 over Stasz (US 2008/0275356
Al, pub. Nov. 6, 2008) and Vanmarcke (US 2008/0214078 Al, pub.
Sept. 4, 2008). 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(a). Appellant identifies Dymedix Diagnostics, Inc., as the
Applicant and real party in interest. Appeal Br. 2.
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THE INVENTION
Appellant’s invention is a respiratory belt. Spec. 1. Claim 1,
reproduced below with emphasis added, is illustrative of the subject matter
on appeal.
1. A respiratory effort belt comprising:
(a) an elastic band of a length sufficient to encircle a
person’s torso
(b) a transducer comprising a strip of PVDF film having a
layer of metallization on opposed major surfaces of the strip;
(c) first and second electrical leads individually connected
to the layers of metallization; and
(d) an inelastic cover layer adhesively bonded to the
transducer and having a greater area than that of the PVDF film,
the cover layer being adhesively bonded onto the elastic band
whereby an electrical output on said leads results primarily
from rubbing contact between the elastic band and the PVDF
film as the elastic band is stretched and contracts and not from
tensile stress acting on the PVDF film.

OPINION
Claim 1
The Examiner finds that Stasz discloses the invention substantially as
claimed except for the claimed adhesive bonding, for which the Examiner
relies on Vanmarcke. Final Action 2–3. In particular, The Examiner finds
that the rubbing contact limitation in claim 1 is merely intended use. Id.
at 3. The Examiner considers the prior art to be capable of performing the
intended use. Id. Examiner concludes that it would have been obvious to a
person of ordinary skill in the art at the time of the invention to modify Stasz
by the teachings of Vanmarcke to achieve the claimed invention. Id.
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According to the Examiner, a person of ordinary skill in the art would have
done this to increase the creep resistance of the adhesive label. Id.
Appellant argues that the claimed invention differs from Stasz in that
it uses an inelastic substrate that serves to inhibit tensile forces from
stretching the PVDF transducer element during respiration cycles. Appeal
Br. 8. Appellant emphasizes that its design employs rubbing by frictional
contact between the elastic band and the PVDF film, i.e., transducer. Id. In
contrast, according to Appellant, Stasz mounts the transducer on a belt such
that it is subject to tensile forces. Id.
In response to Appellant’s argument regarding an inelastic substrate,
the Examiner essentially states that nothing in Stasz prevents or precludes
the use of an inelastic material. Ans. 7. The Examiner further states that
there is no teaching in Stasz that it would be rendered inoperable through the
use of an inelastic label. Id. Therefore, according to the Examiner, “it
would have been within the skill of the art that the label of Stasz ’356 be
inelastic.” Id.
In reply, Appellant argues that there is nothing in Vanmarcke to
suggest changing Stasz so that it would use an inelastic substrate in place of
an elastic one. Reply Br. 4.
Stasz is directed to a respiratory belt sensing device. Stasz, Abstract.
The belt is made of an elasticized nylon material that allows for stretching
along its length. Id. ¶ 20. The belt is typically worn in sleep labs that
monitor persons with breathing disorders such as sleep apnea. Id. ¶ 4. Stasz
also features PVDF film member 12 that has piezoelectric properties. Id.
¶¶ 9, 15. The assembly that incorporates the film member is capable of
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Application 15/456,949
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being stretched. Id. A label is used to conceal the film member. Id. The
label is made from stretchable material. Id. ¶ 20.
In operation, when belt member 12 is stretched, such as through
expansion and contraction of the torso through breathing, an output signal is
generated from the PVDF film transducer.
When assembled, this sensor member 10 will be attached to the
outside surface of a belt member 12 such that when the belt is
stretched an output signal is generated from the PVDF film.
These signals are received by tabbed wire leads 18 and 20, and
passed to circuitry allowing for analysis of the signals
transmitted.
Id. ¶ 15.
Appellant’s respiratory belt is substantially similar to that of Stasz
except that the assembly that incorporates the PVDF transducer is covered
by in inelastic cover layer that is adhesively bonded to the PVDF transducer.
Spec. 2, ll. 11–13. In contrast to Stasz, Appellant’s PVDF transducer 12
resists stretching due to the limited ability of the cover sheet to stretch.
Id. 3, ll. 26–28. In operation, when elastic band 10 stretches and contracts, it
rubs against PVDF transducer strip 14 causing the piezoelectric material to
produce a voltage signal output on leads 16 and 18. Id. 4, ll. 2–5, Figs. l–3.
In summary, Appellant’s invention generates a signal from rubbing a
stretchable belt against a substantially inelastic piezoelectric transducer
whereas Stasz generates a signal by the stretching and relaxation of the
transducer element itself. Id. 4, ll. 5–7. This difference between the prior art
and the claimed invention is captured in claim 1, which requires an “inelastic
cover layer.” Claims App. claim 1 (element d). This difference between the
prior art and the claimed invention is also captured in the “rubbing contact”
limitation in claim 1. Id. Contrary to the Examiner’s position, the “rubbing
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contact” limitation is not mere intended use, it is a functional limitation in
the claim that is entitled to patentable weight. See K-2 Corp. v. Salomon
S.A., 191 F.3d 1356, 1363 (Fed. Cir. 1999) (explaining that functional
language may constitute an additional limitation to a claim).
There is no support in the factual record before us to sustain a finding
that Stasz possesses the requisite “inelastic cover layer.” In the Answer, the
Examiner merely finds that Stasz does not expressly preclude the use of an
inelastic material for the label. Ans. 7. Similarly, the Examiner finds that
Stasz does not expressly disclose that it would be rendered inoperable if an
inelastic label were used. Id. However, we are not inclined to make a
factual finding based on silence or omission under the facts and
circumstances in this case. Appellant’s Specification teaches that its
transducer is “greatly restricted” from stretching by the inelastic label.
Spec. 3, ll. 26–28. The Examiner presents neither evidence nor persuasive
technical reasoning that Stasz would generate a signal from stretching the
PVDF transducer if an inelastic cover label is used that “greatly restricted”
the transducer from stretching.
The Examiner’s finding that Vanmarcke’s adhesive and inelastic
paper are “capable of” performing the intended function of facilitating
rubbing contact between a piezoelectric transducer and elastic belt is beside
the point. Final Act. 3. The mere existence of such capability, by itself, is
insufficient to establish a motivation to make the proposed combination to
take advantage of such capability. The principle of operation of Stasz is
generating a piezoelectric signal by stretching a transducer. The principle of
operation of Appellant’s invention is generating a piezoelectric signal by
rubbing an elastic belt against a transducer that resists stretching. Thus, the
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Examiner’s proposed combination fundamentally alters the principle of
operation of Stasz. Such a change in a reference’s “principle of operation”
is unlikely to motivate a person of ordinary skill to pursue a combination
with that reference. Plast-Pak Industries, Inc. v. Sulzer Mixpac AG, 600
Fed. Appx. 755, 759 (Fed. Cir. 2015) following In re Ratti, 270 F.2d 810,
814 (CCPA 1959).
The Examiner criticizes Appellant’s Figure 4 waveform graph which
compares the signal strength of a Stasz embodiment to an embodiment of
Appellant’s invention as lacking in scale. Ans. 6. However, regardless of
the amount of the alleged improvement, the Examiner has failed to establish
that Appellant’s invention, in any event, would have been obvious.
Accordingly, the Examiner’s findings of fact are not supported by a
preponderance of the evidence and the Examiner’s legal conclusion of
unpatentability is not well-founded. In view thereof, we do not sustain the
Examiner’s unpatentability rejection of claim 1.
Claims 2–5
Claims 2–5 depend, directly or indirectly, from claim 1. Claims App.
The Examiner’s rejection of these claims suffers from the same infirmity
that was identified above with respect to claim 1. Thus, for essentially the
same reason expressed above in connection with claim 1, we do not sustain
the rejection of claims 2–5.
CONCLUSION
Claims
Rejected
§ References Affirmed Reversed
1–5 103 Stasz, Vanmarkcke 1–5
REVERSED