Ex Parte Kozin et al

Patent Trial and Appeal Board

May 30, 2017

13981712 (P.T.A.B. May. 30, 2017)

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.
13/981,712 07/25/2013 Simon Edward Kozin 2011P00083WOUS 9737
24737 7590 06/01/2017
PTTTT TPS TNTFT T FfTTTAT PROPFRTY fr STANDARDS
EXAMINER
465 Columbus Avenue FLORY, CHRISTOPHER A
Suite 340
Valhalla, NY 10595 ART UNIT PAPER NUMBER
3762
NOTIFICATION DATE DELIVERY MODE
06/01/2017 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):
marianne. fox @ philips, com
debbie.henn @philips .com
patti. demichele @ Philips, com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SIMON EDWARD KOZIN
and ANTHONY MATHESON1
Appeal 2016-003665
Application 13/981,712
Technology Center 3700
Before DONALD E. ADAMS, ERIC B. GRIMES,
and TIMOTHY G. MAJORS, Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134 involving claims to a
defibrillator, which have been rejected as obvious as anticipated or obvious.
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
STATEMENT OF THE CASE
“External defibrillators typically act through hand-held electrode
paddles or adhesively-applied electrode pads applied across the chest of the
1 Appellants identify the Real Party in Interest as Koninklijke Philips
Electronics N.V. (Br. 3.)
Appeal 2016-003665
Application 13/981,712
patient.” (Spec. 1 8.) “Paddle electrodes typically have a shock delivery
button(s) or key(s) located on the paddles themselves.” (Id.) “[Ajdhesive
electrodes . . . typically rely on a shock delivery button that resides on the
defibrillator’s front control panel.” (Id. 19.)
The Specification states that “users unfamiliar with the complexity of
the defibrillator may become confused by the differences between the
appearance of the defibrillation control buttons on the front panel of the
device and of the control buttons on the external paddles.” (Id. 112.) The
Specification discloses “a defibrillator for use with both paddle and adhesive
electrodes . . ., wherein the shock button or buttons on the paddles are
configured to visually match the orange triangular shock button on the front
panel of the defibrillator.” (Id. 114.)
Claims 1 and 3—10 are pending and stand rejected. (Br. 3—4.)
Appellants request review of the rejection of claims 1 and 7. (Id. at 6.)
Because Appellants do not request review of the rejection of claims 9 and 10
under 35 U.S.C. § 102(b) or the rejection of claims 3—6 and 8 under
35 U.S.C. § 103(a), those rejections are summarily affirmed.
Claim 1 is illustrative and reads as follows (emphasis added):
1. A defibrillator (100) configured to use both of a paddle electrode and an
adhesive electrode (190), comprising:
a base unit with a user control panel (115);
a first shock delivery button (110) having a first shape disposed on the
user control panel;
a paddle electrode (200) electrically connected to the base unit;
a second shock delivery button (210) having the first shape disposed
on the paddle electrode; and
a plurality of non-shock delivery buttons having a plurality of shapes,
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Appeal 2016-003665
Application 13/981,712
and further wherein the first shape is different than any other of the
plurality of shapes.
DISCUSSION
The Examiner has rejected claims 1 and 7 under 35 U.S.C. § 102(b) as
anticipated by Sullivan.2 (Final Action3 2.) The Examiner finds that
Sullivan discloses a defibrillator that includes all of the limitations of claims
1 and 7. (Id. at 2—3.) As relevant here, the Examiner finds that Sullivan’s
defibrillator includes shock delivery buttons having a first shape (round), as
well as “a plurality of non-shock delivery buttons and knobs different from
the shock delivery buttons which are oblong and otherwise not round, i.e.
having a plurality of different shapes which are not the first shape.” (Id. at
3.)
In response to Appellants’ argument that some of the non-shock
delivery buttons on Sullivan’s defibrillator are round, like the shock delivery
buttons, the Examiner reasons that Sullivan’s defibrillator has multiple
buttons that are oblong-shaped, and
claiming that a first shape is different than a plurality of other
shapes is not equivalent to precluding any button other than a
defibrillation button from being round, as is argued by Appellant.
It is entirely appropriate and permissible to not rely on buttons
276 and 278 in the applied rejection, as they are not required to
meet what is actually claimed of a plurality of non-round buttons.
(Ans. 5.) That is, the Examiner interprets the claim to require multiple
non-shock delivery buttons that have a shape different from that of the shock
2 Sullivan et al., U.S. 5,713,925, Feb. 3, 1995.
3 Office Action mailed Feb. 11, 2015.
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Appeal 2016-003665
Application 13/981,712
delivery buttons, but to be open to the additional presence of non-shock
delivery buttons that have the same shape as the shock delivery button.
Appellants argue that “the term ‘wherein the first shape is different
than any other of the plurality of shapes[’] . . . would be clearly understood
by one of ordinary skill in the art reading the Specification as meaning that
the first shape differs in shape from every other button shape on the panel.'1'’
(Br. 8, emphasis added.) In support of their interpretation of the claim
language, Appellants point to the Specification’s statement that
It is understood that the shock delivery button 210, as well as the
shock delivery button on the user control panel, differs in shape
and appearance from any of the other non-shock delivery buttons
employed by the defibrillator. In addition, the color and/or
illumination of shock delivery button 210 is distinctive from any
of the other non-shock delivery buttons employed by the
defibrillator. These features further reduce operator confusion
and more quickly direct the operator’s attention to the controls
required to deliver defibrillation therapy.
(Spec. 133.)
We agree with Appellants’ interpretation of the disputed phrase.
While the Examiner’s reading of the claim language is not unreasonable on
its face, it is broader than is reasonable when the claim language is read in
light of the Specification. In particular, the Specification’s paragraph 33,
quoted above, states that the shock delivery buttons “differ[] in shape and
appearance from any of the other non-shock delivery buttons employed by
the defibrillator” (emphasis added). That paragraph also states that this
feature reduces operator confusion and directs an operator’s attention to the
required controls. This is consistent with the Specification’s description of
the invention as solving the problem of delays in providing defibrillation by
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Appeal 2016-003665
Application 13/981,712
reducing operator confusion. (Spec. 113; see also id. at 114 (“[T]he overall
user interface is conformed and simplified, which reduces confusion during
use.”).)
We conclude that, when the claim language is read in light of the
Specification, the broadest reasonable interpretation of the phrase “the first
shape is different than any other of the plurality of shapes” requires the
shape of the shock-delivery buttons to differ from the shape of any of the
non-shock delivery buttons on the device.
Sullivan’s device includes non-shock delivery buttons that have the
same shape (round) as the shock delivery buttons. (Sullivan, Figs. 1 and 7.)
It therefore does not meet all of the limitations of claim 1. Claim 7 depends
from claim 1. We therefore reverse the rejection of claims 1 and 7 as
anticipated by Sullivan.
SUMMARY
We reverse the rejection of claims 1 and 7 under 35 U.S.C. § 102(b)
based on Sullivan.
We affirm the rejection of claims 9 and 10 under 35 U.S.C. § 102(b)
based on Sullivan.
We affirm the rejection of claims 3—6 and 8 under 35 U.S.C. § 103(a)
based on Sullivan and Hansen.
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)(l)(iv).
AFFIRMED-IN-PART
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