Ex Parte Muccio

Patent Trial and Appeal Board

Apr 15, 2016

12608957 (P.T.A.B. Apr. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/608,957 10/29/2009
7590
Philip Edward Muccio
611 Jackson Road
Ste 200
Ann Arbor, MI 48103
04/18/2016
FIRST NAMED INVENTOR
Philip Edward Muccio
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
67543-001 PUSl 7448
EXAMINER
MORALES, JON ERIC C
ART UNIT PAPER NUMBER
3766
MAILDATE DELIVERY MODE
04/18/2016 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 PHILIP EDWARD MUCCIO
Appeal2014-003110
Application 12/608,957
Technology Center 3700
Before NINA L. MEDLOCK, CYNTHIA L. MURPHY, and
BRADLEY B. BAY AT, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellant (Philip Edward l\1uccio) appeals under 35 U.S.C. § 134
from the Examiner's rejection of claims 1--4 and 6-16. We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal2014-003110
Application 12/608,957
STATEMENT OF THE CASE
The Appellant's invention "provides a hydrogel electrode designed to
be integrated within a wearable FES [Functional Electrical Stimulation]
system." (Spec. i-f 3.)
Illustrative Claim1
1. A process for electrification of a plurality of hydro gel
electrodes comprising:
using a portable electrical stimulator to provide a current;
carrying the current with wires, one for each electrode, to
an article of clothing;
using conductive elastic fabric conductors within the
clothing to carry the current to thin planar conductive fabric
electrodes; and
using the thin planar conductive fabric electrodes to carry
the current to the hydrogel electrodes, wherein the hydrogel
electrodes include a polyethylene glycol polymer.
Maschino
Menon
Martin
Dar
References
US 6,600,956 B2
US 2004/0082843 Al
US 2008/0097280 Al
WO 2007 /057899 A2
Rejections2
July 29, 2003
Apr. 29, 2004
Apr. 24, 2008
May 24, 2007
The Examiner rejects claims 1, 3, 4, 7, 9-13, 15, and 16 under
35 U.S.C. § 103(a) as unpatentable over Dar and Maschino. (Final Action 3.)
1 This illustrative claim is quoted from the Claims Appendix ("Claims
App.") set forth on pages 6-8 of the Appeal Brief.
2 The Examiner's obviousness-type double patenting rejection (see Final
Action 3) is now moot in view of the abandonment of Application
No. 12/608,971.
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Appeal2014-003110
Application 12/608,957
The Examiner rejects claim 2 under 35 U.S.C. § 103(a) as unpatentable
over Dar, Maschino, and Menon. (Id. at 5.)
The Examiner rejects claims 6, 8, and 14 under 35 U.S.C. § 103(a) as
unpatentable over Dar, Maschino, and Martin. (Id.)
ANALYSIS
Independent claims 1, 7, 9, and 13 are directed to a process, a system,
a method, and another system involving the electrification of hydro gel
electrodes and/or the electrical stimulation of electrodes. (See Claims App.)
The Examiner finds Dar discloses a device involving the electrification and
the electrical stimulation of electrodes. (See Final Action 3--4.) The
Examiner determines that it would have been obvious to modify Dar's
device "by adding hydrogel electrodes [that] include a polyethylene glycol
polymer as taught by Maschino." (Id. at 4.)
Independent claim 1 recites that "the hydrogel electrodes include a
polyethylene glycol polymer." (Claims App.) The Appellant argues that
"Maschino discloses that the electrode surface 'may be coated with
polyethylene glycol to improve tissue compatibility,"' and"' [ c ]oating' an
electrode surface with polyethylene glycol is not the same as the electrode
including a polyethylene glycol polymer, as recited in claim 1." (Appeal
Br. 4.)
We are not persuaded by this argument because the Appellant does
not adequately address why a polyethylene-glycol-coated electrode would
not comprise its coating materials. The transition term "include" is
synonymous with "comprise" and is inclusive, open-ended, and does not
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Appeal2014-003110
Application 12/608,957
exclude additional unrecited elements, 3 such as non-coating parts or
ingredients of the Examiner proposed electrodes.
Independent claim 7 recites that the electrodes "are composed of
polyethylene glycol polymer hydrogel" and independent claim 13 recites
that at least one electrode "is composed of polyethylene glycol polymer
hydrogel." (Claims App.) The Appellant argues that "'coating' an electrode
surface with polyethylene glycol is not the same as 'electrodes composed of
polyethylene glycol polymer hydrogel' as recited in claims 7 and 13."
(Appeal Br. 4.)
We are not persuaded by this argument because, as with independent
claim 1, the Appellant does not adequately explain why a polyethylene-
glycol-coated hydrogel electrode would not comprise its coating materials.
The transitional phrase "composed of' may, but need not be, construed as
equivalent to "consisting of. "4 Here, equating "composed of' to "consisting
of' would be inconsistent with the Specification as the Appellant's disclosed
electrodes may contain ingredients other than polyethylene glycol polymer
hydrogel, such as conductive nanoparticles. (See e.g., Spec. i-f 28.) And
3 See e.g., Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376 (Fed. Cir. 2004)
("The general purpose dictionary teaches that 'containing' is synonymous
with 'comprising' and 'including"'); see also Genentech, Inc. v. Chiron
Corp., 112 F.3d 495, 501 (Fed.Cir.1997) ("'Comprising' is a term of art
used in claim language which means that the named elements are essential,
but other elements may be added and still form a construct within the scope
of the claim").
4 See AFG Industries, Inc. v. Cardinal JG Co., Inc., 239 F.3d 1239, 1244-45
(Fed. Cir. 2001) (We agree that "based on the specification and other
evidence before us that the term 'composed of in this case is not cmnp!etely
closed"),
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Appeal2014-003110
Application 12/608,957
construing "composed of" as "consisting essentially of" results in this
transitional phrase being considered, for the purposes of this appeal, as
equivalent to "comprising."5
Independent claim 9 requires the step of "placing hydro gel electrodes
on skin of a mammal." (Claims App.) The Appellant argues that
Maschino' s electrodes "are not hydro gel electrodes and are not placed on the
skin." (Appeal Br. 4.) We are not persuaded by this argument because it
does not address the Examiner's combination of the prior art, wherein Dar's
device is modified by "by adding hydrogel electrodes." (Final Action 4.)
The Appellant does not adequately address why these added hydrogel
electrodes would not be placed on the skin of a user when using Dar's
modified device. (See Dar, 36, lines 5-17.)
Accordingly, the Appellant does not establish that the Examiner errs
in determining that independent claims 1, 7, 9, and 13 are unpatentable over
Dar and Maschino. The Appellant does not argue dependent claims 3, 4, 10,
12, and 16 separately (see Appeal Br. 4), so they fall therewith. Thus, we
5 The term "consisting essentially of' limits the scope of a claim to the
specified ingredients and those that do not materially affect the basic and
novel characteristics of the invention. In re Herz, 537 F.2d 549, 551-52
(CCPA 1976) (citing In reJanakirama-Rao, 317 F.2d 951, 954 (CCPA
1963). Absent a clear indication in the Specification as to what the basic and
novel characteristics of the claimed invention actually are, the term
"consisting essentially of is construed as "comprising." See PPG Industries
v. Guardian Industries, 156 F.3d 1351, 1354 (Fed. Cir. 1998); In re
Janakirama-Rao, 317 F.2d 951, 954 (CCPA 1963). If the Appellant
contends that additional materials are excluded, the Appellant has the burden
of showing that these additional materials would materially change the basic
or novel characteristics of the invention. In re De Lajarte, 337 F.2d 870
(CCPA 1964).
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Appeal2014-003110
Application 12/608,957
sustain the Examiner's rejection of claims 1, 3, 4, 7, 9, 10, 12, 13, and 16
under 35 U.S.C. § 103(a).
With respect to dependent claims 11 and 15, they require "an adhesive
covalently bonded to [the non-skin contacting] side" of the electrode.
(Claims App.) The Appellant argues that "[i]n Maschino, the electrode
surface is 'coated' with polyethylene glycol" and "[t]here is no adhesive
covalently bonded to the polyethylene glycol." (Appeal Br. 4.) We are not
persuaded by this argument because it is not aligned with the Examiner's
rejection, which relies upon Dar, not Maschino, to teach the adhesive recited
in claims 11 and 15. (See Final Action 4.) The Appellant does not
adequately address why, when Dar's device is modified as proposed by the
Examiner, the electrodes do not have skin-contacting sides that include
polyethylene glycol polymer as taught by Maschino (see Maschino col. 8,
lines 44---62) and opposite sides that include adhesive as taught by Dar (see
Dar 28 line 21to29, line 1). Thus, we sustain the Examiner's rejection of
claims 11 and 15 under 35 U.S.C. § 103(a).
The Appellant does not argue or otherwise address the rejections of
claims 2, 6, 8, and 14 in the Appeal Brief, so we summarily sustain the
Examiner's rejections of these claims under 35 U.S.C. § 103(a).
DECISION
We AFFIRM the Examiner's rejections of claims 1--4 and 6-16.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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