Ex Parte Van Herk et alDownload PDFPatent Trial and Appeal BoardMar 24, 201410509239 (P.T.A.B. Mar. 24, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte JOHANNES JOHANNA VAN HERK and MARKUS CORNELIS JAKOBUS LAZEROMS __________ Appeal 2012-002080 Application 10/509,239 Technology Center 3700 __________ Before DEMETRA J. MILLS, JEFFREY N. FREDMAN, and ULRIKE W. JENKS, Administrative Patent Judges. MILLS, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134. The Examiner has rejected the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2012-002080 Application 10/509,239 2 STATEMENT OF CASE The following claims are representative. 9. The electrode according to claim 18, further including: an insulating plastic layer covering the skin contacting face of the electrically conductive elastic material with the surfaces of the conductive metallic elements projecting through the insulating plastic layer to contact the skin. 11. A monitoring system for monitoring a physiological activity of a recipient, comprising: a set of sensors including electrodes according to claim 18 to acquire physiological data; a device connected with the sensors to interpret the acquired physiological data. 13. A monitoring system for monitoring a physiological activity of a recipient, comprising: a set of sensors configured to be positioned on a recipient’s skin to acquire physiological data; a storage and analysis device connected with the sensors to interpret the acquired physiological data; each of the sensors including at least one electrode having a working surface adapted to contact the recipient's skin, each electrode including a body of an electrically conductive elastic material with the working surface exhibiting projections of the electrically conductive elastic material to enable a substantially constant position of contact with the recipient’s skin, wherein the electrode includes: an electrode body of the electrically conductive elastic material, the projections being integrally formed with the electrode body to provide a unitary construction. 18. An electrode for use in a monitoring system, the electrode comprising: a layer of electrically conductive elastic material; a plurality of submillimeter-sized prefabricated conductive metallic elements inserted in and projecting from a skin contacting face of the layer of electrically conductive elastic material, which metallic elements have surfaces configured to contact skin of a patient to be monitored. Appeal 2012-002080 Application 10/509,239 3 19. The electrode according to claim 18, wherein the layer of electrically conductive elastic material is mounted to an interior of a wearable garment. 23. An electrode having a working surface adapted to contact a recipient’s skin, the electrode comprising: an electrode body of an electrically conductive elastic material with the working surface exhibiting projections of the electrically conductive elastic material integrally formed with the electrode body to provide a unitary construction, the projections of the electrically conductive elastic material providing a substantially constant position of contact with the recipient's skin. Cited References Dunseath, Jr. US 4,669,479 Jun. 2, 1987 Lundbáck US 4,646,747 Mar. 3, 1987 Granek et al. US 4,729,377 Mar. 8, 1988 Byers et al. US 4,969,468 Nov. 13, 1990 Ingman US 2002/0082668 A1 Jun. 27, 2002 Booker, III et al. US 2003/0114906 A1 Jun. 19, 2003 Grounds of Rejection 1. Claims 2, 6, 9, 11, 13, 15-18, 20, 23, 25, and 27 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Dunseath in view of Lundbáck. 2. Claims 9, 11, 18, and 20, are rejected under 35 U.S.C. § 103(a) as being unpatentable over Byers in view of Booker. 3. Claims 12 and 14 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Dunseath in view of Lundbáck and Ingman. 4. Claim 12 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Byers in view of Booker and Ingman. Appeal 2012-002080 Application 10/509,239 4 5. Claim 19 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Byers in view of Booker and Granek. 6. Claim 19 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Dunseath in view of Lundbáck and Granek. FINDINGS OF FACT The Examiner’s findings of fact are set forth in the Answer at pages 4-10. Discussion ISSUE The issue is: Does the cited prior art support the Examiner’s conclusion that the claimed subject matter is obvious? PRINCIPLES OF LAW In making our determination, we apply the preponderance of the evidence standard. See, e.g., Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Office). “In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden of presenting a prima facie case of obviousness. Only if that burden is met, does the burden of coming forward with evidence or argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993) (citations omitted). In order to determine whether a prima facie case of obviousness has been established, we consider the factors set forth in Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content Appeal 2012-002080 Application 10/509,239 5 of the prior art; (2) the differences between the prior art and the claims at issue; (3) the level of ordinary skill in the relevant art; and (4) objective evidence of nonobviousness, if present. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). ANALYSIS Appellants provide separate argument for individual claims 9, 12-14, 16-20 and 23 and 25. (App. Br. 9-16.) For all claims except claim 9, we agree with the Examiner’s fact finding, statement of the rejection and responses to Appellants’ arguments as set forth in the Answer. We find that the Examiner has provided evidence to support a prima facie case of obviousness. If we do not mention specifically separately argued claims below, we have adopted the Examiner’s conclusions with respect to these claims. We provide the following additional comment to argument set forth in the Answer. A. Claim 13 Appellants argue that, “[n]either Dunseath nor Lundbáck disclose a unitary construction, much less a unitary construction as described in claim 13.” Br. 9. Appellants further argue that “[e]ven if one were to try to modify Dunseath with Lundbáck as suggested by the Examiner, the resultant combination would still not meet the limitations of claim 13.” (Id.) Appellants contend that Appeal 2012-002080 Application 10/509,239 6 If one were to move the metallic surface of Lundbáck onto the urethane foam surface of Dunseath, one would have a three or more layer laminate construction including an insulating adhesive layer, a polyeurethane foam layer, and a metal layer. The projections would be on the metal layer. In this combination, the projections would be of metal, not of the electrically conductive elastomeric material. Moreover, the electrode body, whether construed as the urethane foam pad 2 or the insulating adhesive pad 3, would not have integrally formed projections. The projections would be on the additional laminated metal layer. (Br. 10.) In response, the Examiner argues that Applicant combines the flexible elastic pad of Dunseath with the rigid plate of Lundback. However, Lundback was not cited for its rigid plate. As disclosed below and in the prior office actions, Lundback was cited for the teaching of an electrode (e.g. 1) with a surface exhibiting uniform projections (e.g. 4) to provide good contact especially in cases wherein there is hair growth on the skin (e.g. Fig. 1, Col. 3, ll. 51-57). Therefore, the Applicant’s arguments regarding the combination of the entire structure of Dunseath with the entire structure of Lundback are moot. Dunseath teaches a flexible conductive elastic electrode. [Col. 4, ll. 63-67.] Lundback teaches an electrode with projections that adheres to skin without having to shave the hair off the patient. (Ans. 10.) We find the Examiner has the better argument. Dunseath discloses a carbon loaded polyurethane foam for use as a dry electrode system for the detection of biopotentials existing on the surface of the skin of a living body. (Abstract, Col. 4, ll. 63-67.) Lundbáck discloses that it was well known in Appeal 2012-002080 Application 10/509,239 7 the prior art to use projections or protuberances associated with an electrode applied to the skin (Abstract) “to give good contact, especially in case of hair growth on the skin.” (Col. 3, ll. 50-57.) In KSR, the Supreme Court acknowledged that: When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103. Id. at 421. Therefore, we agree with the Examiner that it would have been obvious to incorporate the protuberances from the skin electrode of Lundbáck into the carbon loaded polyurethane foam skin electrode of Dunseath “to provide the predictable results of an electrode with projections for providing increased contact in cases where the electrode is applied to the skin over hair.” (Ans. 10-11.) B. Claim 14 For claim 14, Appellants argue that Claim 14 calls for holes to be defined through the electrode body between the integral projections. Paragraph [0016] of Ingman, referenced by the Examiner, teaches against the use of such holes. Ingman is concerned with a bandage and wants the wound to be able to breathe. Ingman teaches that sweat is electrically conductive. Both Dunseath and Lundbáck are trying to make electrically conductive contact with the skin. To improve making such contact, sweat is desirable and one would be taught against wicking it away. (Br. 10.) Appeal 2012-002080 Application 10/509,239 8 The Examiner argues Ingman teaches that it is known to use holes in the electrode as set forth in Paragraph 16 to prevent sweat from short circuiting the conducting layer of the electro-patch and provide a more secure contact. It would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the electrode as taught by Dunseath in view of Lundback, with holes through the electrode as taught by Ingman, since such a modification would provide the predictable result of a[n] electrode with holes to prevent sweat from short circuiting the conducting layer of the electrode and provide a more secure contact with the skin. (Ans. 11.) In KSR, the Supreme Court acknowledged that: When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103. Id. at 421. Further, as noted by the United States Supreme Court, If a person of ordinary skill can implement a predictable variation, § 103 likely bars its patentability. For the same reason, if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. (Id. at 417.) Appeal 2012-002080 Application 10/509,239 9 Therefore, we agree with the Examiner that it would have been obvious to incorporate insulated holes into an electropatch or similar skin electrode device to allow the skin to breathe and prevent sweat from short circuiting the conducting layer of the patch/electrode. (Ingman ¶ [0016].) C. Claim 18 For the rejection of claim 18 over Dunseath in view of Lundbáck, Appellants argue that The metallic skin contacting layer of Lundbáck does have projections. However, these projections do not project out from a layer of electrically conductive elastic material. Rather, the metallic projections of Lundbáck are integral with the metal layer. The metal layer and the projections are not described as extending into an electrically conductive elastic material. (Br. 11.) As indicated above for claim 13, we agree with the Examiner that it would have been obvious to incorporate the protuberances from the skin electrode of Lundbáck into the carbon loaded polyurethane foam skin electrode of Dunseath “to provide the predictable results of an electrode with projections for providing increased contact in cases where the electrode is applied to the skin over hair.” (Ans. 10-11.) With regard to the specific “submillimeter” size of the protuberances, Lundbáck teaches that the protuberances should be “small” in order to “give good contact” relative to “hair growth on the skin” (Lundbáck, col. 3, ll. 55-57). Thus, Lundbáck recognizes that the size is a results effective variable which may be adjusted to maximize “good contact.” Appellants provide no rebuttal evidence suggesting that the “submillimeter” size claimed differs from the “small” Appeal 2012-002080 Application 10/509,239 10 size of Lundbáck, nor that the “submillimeter” size has unexpected properties relative to the “small” protuberances of Lundbáck. D. For the rejection of Claim 18 in view of Byers and Booker, Appellants argue that Byers is directed to an implanted electrode which includes a silicon base 7, a silicon dioxide layer 8, a metallic layer 9, a spacing layer 10, and a top mask or fine mesh screen 11. Cones 12, 13 are deposited through the mask on the metallic layer 9. Once these cones have been deposited, as is common in chemical vapor deposition, the mask 11 and spacer 10 are removed. In Figure 7, a dielectric layer 15 of silicon dioxide is deposited leaving tips of the cone exposed. The silicon dioxide layers 8 and 15 are not disclosed as being either elastic or conductive. To the contrary, the silicon dioxide layer 15 is disclosed as being insulating. (Br. 13.) As the Examiner has recognized, claim 18 is directed to a product, an electrode, written in product-by-process claim language. (Ans. 13.) “Where a product-by-process claim is rejected over a prior art product that appears to be identical, although produced by a different process, the burden is upon the applicants to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product.” In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983). The Examiner has cited Byers for the disclosure of an “electrode array for sensing physiological signals through the skin, made out of a conductive flexible/stretchable material with projections made out of metal that are arranged in a uniform pattern on the surface of the electrode.” (Ans. 6.) Appeal 2012-002080 Application 10/509,239 11 Byers [F]ails to disclose[] that the projections and electrode backing are elastic and are used in combination with a storage and analysis device. However Booker discloses a system for monitoring ecg, evaluating ecg and then stimulating that utilizes elastic electrodes (23) with elastic projections (23) to provide a electrode that can conform to tissue so that it maintains constant contact (Fig. 9, ¶42). (Id.) Therefore, because Booker teaches it was well known in the art that electrodes could be constructed as elastic electrodes with elastic projections to provide an electrode that can conform to tissue so that it maintains constant contact, we agree with the Examiner that it would have been obvious to modify a similar electrode device with elastic projections. E. Claim 9 Claim 9 recites “[t]he electrode according to claim 18, further including: an insulating plastic layer covering the skin contacting face of the electrically conductive elastic material with the surfaces of the conductive metallic elements projecting through the insulating plastic layer to contact the skin.” Appellants argue that “[t]he Examiner does not explain what structure in Dunseath or Lundbáck is considered the insulating plastic layer covering the skin contacting face.” (Br. 12.) Regarding claim 9, it is submitted that the combination of Booker and Byers does not disclose or fairly suggest placing an insulating plastic layer covering the skin contacting face of the electrically conductive elastic material with surfaces of the conductive metallic elements projecting through the insulating plastic layer to contact the skin. Byers is directed to an Appeal 2012-002080 Application 10/509,239 12 implanted electrode. Long-term biological compatibility of all elements is essential. Inert materials such as silicon dioxide and inert metals are ideal for implanted electrodes. Plastic materials and other polymers are problematic due to their potential interaction with and degradation by various body fluids. (Reply Br. 7.) The Examiner merely concludes that It would have been obvious to one having ordinary skill in the art at the time the invention was made to have modified the elastic layer with a conductive rubber and the insulating layer with a plastic, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. (Ans. 7, see also 13.) We agree with Appellants that the Examiner has not supported the rejection of claim 9 with evidence, and the rejection of claim 9 over Dunseath in view of Lundbáck is reversed. The rejection of claim 9 over Byers in view of Booker is reversed. For claims 16, 20 and 25, Appellants have provided no evidence that polyurethane is not a synthetic rubber as argued by the Examiner, and the rejection of these claims is affirmed. We concur with the Examiner’s analysis, evidence and conclusions with respect to claims 12, 17, 19, and 23. Appeal 2012-002080 Application 10/509,239 13 CONCLUSION OF LAW The cited references support the Examiner’s obviousness rejections which are affirmed, except the rejections of claim 9 over Dunseath in view of Lundbáck and over Byers in view of Booker are reversed. AFFIRMED-IN-PART cdc Copy with citationCopy as parenthetical citation