CRAWFORD, Marcus H.

Patent Trials and Appeals Board

Oct 31, 2019

14425925 - (D) (P.T.A.B. Oct. 31, 2019)

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.
14/425,925 03/04/2015 Marcus H. CRAWFORD Marcus Crawford 9807
94264 7590 10/31/2019
THE LAW FIRM OF
ANDREA HENCE EVANS, LLC
14625 BALTIMORE AVE
#853
LAUREL, MD 20707
EXAMINER
SHOSTAK, ANDREY
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
10/31/2019 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):
ANDREA.EVANS@EVANSIPLAW.COM
docketing@evansiplaw.net
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte MARCUS H. CRAWFORD
__________

Appeal 2019-003359
Application 14/425,925
Technology Center 3700
__________

Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
LISA M. GUIJT, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–5, 7–12, and 14–16. Final Act. 1
(Office Action Summary). We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons explained below, we do not find error in the Examiner’s
rejection of these claims. Accordingly, we AFFIRM the Examiner’s
rejections.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as “Marcus
Crawford.” Br. 2.
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CLAIMED SUBJECT MATTER
The disclosed subject matter “relates, in general, to a combination
grounding cuff featuring a sphygmomanometer combined with a return
electrode strip dedicated for use as a return ground for an electrosurgical unit
or device.” Spec. 1:3–5. Claims 1 and 10 are independent.
Claim 1 is illustrative of the claims on appeal and is reproduced
below.
1. A combination grounding cuff, comprising:
a sphygmomanometer, having an inner cuff surface for
maintaining contact on a patient and taking blood pressure
readings;
at least one return electrode strip, said at least one return
electrode strip being positioned and affixed on said inner cuff
surface, thereby enabling contact of said at least one return
electrode strip with said patient, wherein the at least one return
electrode strip collects current delivered to the patient and
transports the current away from the patient and wherein the at
least one return electrode strip acts as a return ground point of at
least one electrosurgical unit;
at least one female return electrode adapter, electrically
connected to said at least one return electrode strip; and
at least one mount affixed on said inner cuff surface, said
at least one mount is configured to enable electrical connection
between said at least one return electrode strip and said at least
one female return electrode adapter.

REFERENCES
Peters US 3,812,861 May 28, 1974
Seebach et al. US 4,738,263 Apr. 19, 1988
Maurer et al. US 5,046,511 Sept. 10, 1991
Woloszko US 2003/0014051 A1 Jan. 16, 2003
Thompson et al. US 2004/0097916 A1 May 20, 2004
Platt et al. US 2007/0100247 A1 May 03, 2007
Simon et al. US 2009/0259274 A1 Oct. 15, 2009
Kim, I US 2013/0261474 A1 Oct. 03, 2013
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THE REJECTIONS ON APPEAL2
Claims 1, 2, 4, 8, and 9 are rejected under 35 U.S.C. § 103 as being
unpatentable over Simon, Platt, Thompson, and Kim, and as evidenced by
Peters.
Claim 3 is rejected under 35 U.S.C. § 103 as being unpatentable over
Simon, Platt, Thompson, Kim, and Woloszko, and as evidenced by Peters.
Claim 5 is rejected under 35 U.S.C. § 103 as being unpatentable over
Simon, Platt, Thompson, Kim, and Maurer, and as evidenced by Peters.
Claim 7 is rejected under 35 U.S.C. § 103 as being unpatentable over
Simon, Platt, Thompson, Kim, and Seebach, and as evidenced by Peters.
Claims 10–12, 14, and 16 are rejected under 35 U.S.C. § 103 as being
unpatentable over Simon, Platt, and Kim, and as evidenced by Peters.
Claim 15 is rejected under 35 U.S.C. § 103 as being unpatentable over
Simon, Platt, Kim, and Seebach, and as evidenced by Peters.

ANALYSIS
The rejection of claims 1, 2, 4, 8, and 9 as being obvious over
Simon, Platt, Thompson, and Kim, and as evidenced by Peters
Appellant argues claims 1, 2, 4, 8, and 9 together. See Br. 8–18. We
select claim 1 for review, with claims 2, 4, 8, and 9 standing or falling
therewith. See 37 C.F.R. § 41.37(c)(1)(iv).
In regard to claim 1, the Examiner finds that Simon discloses “a
grounding system (Figure 3), comprising: a sphygmomanometer, having an

2 The Examiner has withdrawn the 35 U.S.C. § 112(b) indefiniteness rejection
and the objection in relation to claim 10. See Ans. 3–4; see also Final Act. 3.

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inner cuff surface for maintaining contact on a patient and taking blood
pressure readings (paragraph 0074),” “at least one return electrode strip that
is in contact with said patient (paragraphs 0016 and 0055),” “and a means
for electrical connection between said at least one return electrode strip and
said at least one electrosurgical device (paragraphs 0055 and 0056[;] Figure
3).” Final Act. 4.
The Examiner acknowledges that Simon “is silent regarding the return
electrode strip being positioned and affixed on said inner cuff surface.”
Final Act. 4. The Examiner finds, however, that Platt discloses “in a similar
field of endeavor of blood pressure monitoring (Abstract), to position and
affix a return electrode strip for an electrical device on the inner cuff surface
of its sphygmomanometer (paragraph 0038; Figure 1).” Final Act. 4. The
Examiner also indicates that “it is evidenced by Peters that providing a
grounding electrode for electrosurgery in a cuff form factor can reduce the
risk of breaking contact because of the electrode being actively secured to
the patient by the wrapped configuration (Figure l; Col. 1, lines 1–44).”
Final Act. 4. Thus, the Examiner concludes that it would have been obvious
to modify the system of Simon to have “the grounding system being a
combination grounding cuff, wherein said at least one return electrode strip
is positioned and affixed on said inner cuff surface, thereby enabling contact
of said at least one return electrode strip with said patient,” as taught by
Platt, “in order to reduce the number of additional components in the surgery
room while reducing the chances of the return electrode breaking contact
with the patient’s skin by positioning it in a cuff-based form factor that is
already available to Simon,” as taught by Peters. Final Act. 4–5.
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The Examiner also acknowledges that Simon “is silent regarding the
electrical connection means between said at least one return electrode strip
and said at least one electrosurgical device comprising a female adapter” as
recited. Final Act. 5. The Examiner, however, finds that Thompson
discloses that “electrical connection can be made between a return electrode
in contact with the skin of the patient (paragraph 0024) and an
electrosurgical device by providing a female return electrode adapter
electrically connected to its return electrode (Figure l; paragraphs 0020 and
0024).” Final Act. 5. The Examiner concludes that it would have been
obvious to incorporate into the modified system of Simon “the electrical
connection means comprising at least one female return electrode adapter,
electrically connected to said at least one return electrode strip,” as taught by
Thompson, “as an application of a known type of electrical connector used
to connect the same two types of components of an electrosurgical system.”
Final Act. 5.
The Examiner further acknowledges that the combination of Simon,
Platt, and Thompson (in view of Peters) “is silent regarding at least one
mount affixed on said inner surface, said at least one mount being
configured to enable electrical connection between said at least one return
electrode strip and said at least one female return electrode adapter.” Final
Act. 5–6. The Examiner, however, finds that Kim discloses
in a similar field of endeavor of providing an electrode on the
inner cuff surface of a sphygmomanometer (Figure 2; Abstract),
to demountably affix said electrode to said inner cuff surface by
a mount affixed on said inner surface that is configured to enable
electrical connection between said electrode and an electrical
component (paragraphs 0039 and 0040; Figures 6 and 7), so that
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the cuff can be used separately when the use of the electrode is
not required (paragraph 0029; Figure 8).
Final Act. 6. The Examiner concludes that it would have been obvious to
incorporate into the modified system of Simon “at least one mount affixed
on said inner surface, said at least one mount being configured to enable
electrical connection between said at least one return electrode strip and said
at least one female return electrode adapter,” as taught by Kim, “so that the
cuff can be used separately when the use of the return electrode strip is not
required, such as for post-surgical monitoring.” Final Act. 6.
Appellant initially contends, “[t]he references are from art non-
analogous to each other and to that of the claims.” Br. 8 (emphasis omitted).
On this point, we have been informed that:
[t]wo criteria have evolved for determining whether prior art is
analogous: (1) whether the art is from the same field of endeavor,
regardless of the problem addressed, and (2) if the reference is
not within the field of the inventor’s endeavor, whether the
reference still is reasonably pertinent to the particular problem
with which the inventor is involved.
In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992).
First, to the extent that Appellant is arguing that the field of endeavor
is grounding cuffs that are combined with a sphygmomanometer (see Br.
10), the Examiner disagrees. The Examiner explains, “the field is not so
specific as to be limited to a combination sphygmomanometer and return
electrode” but that “[t]he field further includes blood pressure cuffs with
electrode arrangements and electrical connections.” Ans. 4. In other words,
the Examiner is not limiting the field of endeavor to only cuffs having
affixed thereto a return electrode as specifically recited in claim 1, but rather
to a field of endeavor pertaining to the use of cuffs “with electrode
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arrangements and electrical connections.” Ans. 4. Here, Simon addresses
the use of both a blood pressure cuff and a return electrode during a
procedure (see, e.g., Simon ¶¶ 16, 74) while both Platt and Kim describe a
blood pressure cuff/electrode combination in their respective Abstracts.
When our reviewing court faced a similar dilemma regarding competing
field of endeavors, they held that a reference to a toothbrush was in the same
field of endeavor as the recited hair brush because a toothbrush may easily
be used to brush facial hair. See In re Bigio, 381 F.3d 1320, 1324–26 (Fed.
Cir. 2004); MPEP § 2141.01(a)(IV). Following such guidance, we agree
with the Examiner’s interpretation since an electrode having electrical
connections can likewise be easily used “as a return ground point of at least
one electrosurgical unit” as recited.
Second, the Examiner also explains that the problems that Appellant
are attempting to address are
taken to be those specified in the Summary section of Appellant’s
specification as filed (page 1, line 20 to page 5, line 12). These
include: how to maintain grounding contact with a patient during
surgery, including during patient movement; how to obtain blood
pressure measurements in addition to confirming grounding;
how to make components reusable after e.g. cleaning, how to
make the return electrode configurations usable by a larger
spectrum of patients, how to minimize the size of electrodes, and
how to adapt the device for use with multiple electrosurgical
devices.
Ans. 4–5. These are problems addressed by Peters (see Peters 1:1–44, Fig.
1) and Thompson (see Thompson ¶¶ 20, 24). Thus, in view of the above,
Simon, Platt, Peters, Thompson, and Kim are either reasonably applicable to
the same field of endeavor or are reasonably pertinent to the particular
problem(s) with which Appellant is involved. As a consequence,
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Appellant’s arguments seeking to differentiate each of these references are
not persuasive of Examiner error. See Br. 8–11.
Appellant also contends, “[t]he prior art references teach away
from the claims.” Br. 12. Thereafter, Appellant merely recites passages
from § 2143.03 of the MPEP and case law. See Br. 12–13. Appellant does
not provide any argument or reasoning as to why the prior art references
teach away as stated, apart from this bald assertion. See Br. 12–13.
Accordingly, Appellant’s assertion is not persuasive of Examiner error.
Appellant also contends there is a “Change of Principle of
Operation of Prior Art References.” Br. 13. Appellant contends that
Simon “requires positioning the return electrode on the patient’s body, rather
than on any element of the disclosed system at a location removed from the
current delivery electrode [and as such, Simon] teaches away from placing
the return electrode on the inner cuff surface.” Br. 14 (referencing Simon ¶¶
55 and 94. This argument is unpersuasive because Appellant does not direct
us to any passage in Simon that discredits, criticizes, or disparages any
limitations claimed. Simon discloses “[t]his is preferably achieved by
applying the return electrode 350 to an external portion of the patient, such
as to at least one of the upper-back, the chest, and/or the stomach” and “[a]
return electrode . . . is placed at any convenient location on the exterior of
the patient’s body.” Simon ¶¶ 55, 94 (emphasis added). At best, Simon
discloses preferred locations for placing the return electrodes. Regardless,
disclosed examples and preferred embodiments do not constitute a teaching
away from a broader disclosure of non-preferred embodiments. See In re
Susi, 440 F.2d 442, 446 n.3 (CCPA 1971). See also Merck & Co. Inc. v.
Biocraft Labs. Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In re
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Lamberti, 545 F.2d 747, 750 (CCPA 1976)) (“‘[T]he fact that a specific
[embodiment] is taught to be preferred is not controlling, since all
disclosures of the prior art, including unpreferred embodiments, must be
considered.’”). Like our appellate reviewing court, “[w]e will not read into a
reference a teaching away from a process where no such language exists.”
DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464
F.3d 1356, 1364 (Fed. Cir. 2006). Here, because Peters teaches that
providing a grounding electrode in a cuff form around a limb of a patient can
reduce the risk of breaking contact with the patient (see, e.g., Peters 1:35–
41), we are not persuaded that there is a change in the principle operation of
the recited references, as Appellant alleges (see supra). Thus, Appellant
does not apprise us of error on this point.
Appellant also argues that Peters “teaches a cuff with fully conductive
surfaces 15 and 16” which would teach away from “a sphygmomanometer
having an inner cuff surface upon which the at least one return electrode
strip is positioned and affixed, thereby implying that the surface of the entire
cuff is not conductive, with the only conductive part being the electrode.”
Br. 16. This argument is unpersuasive because it does not address the
rejection. First, as the Examiner explains, Peters “does not require that the
surfaces 15 and 16 cover the whole of a sphygmomanometer cuff.” Ans. 8.
Further, the Examiner points out that “Peters was cited for its teaching that
electrosurgery ground electrodes could be arranged in a cuff form-factor,
thereby enabling them to be actively secured to the patient, with attendant
benefits.” Ans. 8. In other words, Peters “is relied on as evidence of the
advantage of providing a grounding electrode in a cuff shape.” Ans. 9.
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Appellant also argues that Simon’s system “cannot function as a
sphygmomanometer.” Br. 14. Appellant’s contention is unpersuasive
because Simon clearly discloses “[b]lood pressure measurements were taken
every few minutes with an automatic blood pressure cuff to monitor any
changes in blood pressure.” Simon ¶ 74. Further, the Examiner combines
Simon’s teaching of a return electrode with use of a sphygmomanometer
stating, “the system of Simon [] already has a sphygmomanometer
(paragraph 0074), it would have been obvious . . . to incorporate into the
system of Simon [], the grounding system being a combination grounding
cuff, wherein said at least one return electrode strip is positioned and affixed
on said inner cuff surface,” as disclosed in Platt. See Final Act. 4–5.
Appellant contends that “[t]o place the electrodes of Simon on the
inner surface area of the cuff, as claimed, would be improper hindsight and
destroy Simon.” Br. 14; see also id. at 15 (arguing that “there is no
motivation to take an electrode” of Simon “and place it on the inner surface
of the cuff”). However, Appellant does not explain why placing electrodes
on the inner surface of “an automatic blood pressure cuff” as disclosed in
Simon’s paragraph 74, would “destroy Simon.” Br. 14. On the other hand,
and as stated above, the Examiner explains that the proposed modification
would “reduce the number of additional components in the surgery room
while reducing the chances of the return electrode breaking contact with the
patient’s skin by positioning it in a cuff-based form factor that is already
available to Simon,” as taught by Peters. Final Act. 4–5. Accordingly, we
are not persuaded the Examiner relied on “improper hindsight” or that
placement of the electrode as indicated by the Examiner would “destroy
Simon.” Br. 14; see also Ans. 7–8.
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Appellant further argues that placing Platt’s electrode on the inner
surface of Simon’s device “would render the latter inoperable for its
intended purpose which requires that the return electrode be placed on the
patient’s body and located such that it is distant from the current delivery
electrode.” Br. 14–15. However, as the Examiner explains, “[t]he current
delivery electrode of Simon would still be located at a distance from the
return electrode of Platt if [the return electrode] was incorporated into the
cuff. Indeed, Simon contemplates locating the return electrode at locations
other than where electrosurgery is being performed (¶ 0055).” Ans. 9.
Lastly, Appellant contends that modifying Thompson’s device with
the teachings of Kim would render Thompson’s device inoperable for its
intended purpose. Br. 16. Appellant argues that modifying Thompson’s
device “with the groove 51 and protrusion 52” taught by Kim would render
Thompson’s device “inoperable for its intended purpose of using a cord to
connect its return electrode 30 with the female sockets of connector plug 56”
and that Kim’s groove 51 “is incapable of connection with [the] male prongs
80” of Thompson’s device. Br. 17.
Appellant’s arguments are not persuasive. We note that Appellant’s
Specification discloses
[r]eturn electrodes 204 and 206 may, in another aspect of an
embodiment of the present invention, be affixed onto cuff 202
by way of respective mounts (not shown). These mounts may
be configured to enable electrical connection between return
electrodes 204 and 206 with female return electrode adapters
208 and 210 respectively.
Spec. 7:15–19; see also Br. 6. Thus, if Appellant considers that modifying
Thompson’s device or Simon’s device to have both a female electrode
adapter and at least one mount affixed on the inner surface cuff would render
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Thompson’s device or Simon’s device inoperable, then Appellant’s claimed
combination cuff would appear to likewise be inoperable. Notwithstanding
this conflicting reasoning, the Examiner relies on Thompson for teaching
“[t]he female connector plug could [] connect with the male prongs” and
“Kim does not break this connection [as] it teaches an interface between the
cuff and the return electrode.” Ans. 10 (emphasis added). Further, to the
extent that Appellant is arguing that the groove 51 and protrusion 52 of Kim
cannot be added to the device of Thompson or Simon due to the male prongs
80 of Thompson, the test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference; rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art. See In
re Keller, 642 F.2d 413, 425 (CCPA 1981).
Accordingly, and based on the record presented, we are not persuaded
the Examiner erred in rejecting claim 1 as being unpatentable over Simon,
Platt, Thompson, and Kim, and as evidenced by Peters. We thus sustain the
rejection of claims 1, 2, 4, 8, and 9.
The rejection of claims 10–12, 14, and 16
as being obvious over Simon, Platt, and Kim, and as evidenced by Peters
Appellant contends that the Examiner “fail[s] to establish a prima
facie case of obviousness for precisely the same reasons set forth above in
connection with the rejection of claim 1.” Br. 18. Because we find no
deficiencies in the Examiner’s rejection of claim 1, we likewise sustain the
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Examiner’s rejection of claims 10–12, 14, and 16 for the same reasons
discussed above.
The rejections of (a) claim 3 as being obvious over Simon, Platt, Thompson,
Kim, and Woloszko, and as evidenced by Peters; (b) claim 5 as being
obvious over Simon, Platt, Thompson, Kim, and Maurer, and as evidenced
by Peters; (c) claim 7 as being obvious over Simon, Platt, Thompson, Kim,
and Seebach, and as evidenced by Peters; and (d) claim 15 as being obvious
over Simon, Platt, Kim, and Seebach, and as evidenced by Peters
For these rejections, Appellant does not provide any substantive
arguments and instead relies on arguments previously presented for claims 1
and 10. See Br. 8–19. Because we find no deficiencies in the Examiner’s
rejection of independent claim 1 as being obvious over Simon, Platt,
Thompson, and Kim, and as evidenced by Peters or of independent claim 10
as being obvious over Simon, Platt, and Kim, and as evidenced by Peters, we
likewise sustain the Examiner’s rejections of claims 3, 5, 7, and 15 as being
obvious over the various combinations of cited prior art identified above.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 2, 4, 8,
9
103 Simon, Platt,
Thompson, Kim, as
evidenced by Peters
1, 2, 4, 8,
9

3 103 Simon, Platt,
Thompson, Kim,
Woloszko, as
evidenced by Peters
3
5 103 Simon, Platt,
Thompson, Kim,
5
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Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
Maurer, as evidenced
by Peters
7 103 Simon, Platt,
Thompson, Kim,
Seebach, as evidenced
by Peters
7
10–12, 14,
16
103 Simon, Platt, Kim, as
evidenced by Peters
10–12, 14,
16

15 103 Simon, Platt, Kim,
Seebach, as evidenced
by Peters
15
Overall
Outcome
1–5, 7–12,
and 14–16

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED