Dignity Health

Patent Trials and Appeals Board

Jun 30, 2020

2019006924 (P.T.A.B. Jun. 30, 2020)

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.
15/139,810 04/27/2016 Brian Alkire 212137.76 4319
132052 7590 06/30/2020
Hahn Loeser & Parks, LLP - Chicago
200 West Madison Street
Suite 2700
Chicago, IL 60606
EXAMINER
COHEN, LEE S
ART UNIT PAPER NUMBER
3794
NOTIFICATION DATE DELIVERY MODE
06/30/2020 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):
patents@hahnlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BRIAN ALKIRE

Appeal 2019-006924
Application 15/139,810
Technology Center 3700
____________

Before ANTON W. FETTING, MICHAEL C. ASTORINO, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision to reject claims 43–50 and 52–54.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as
“DIGNITY HEALTH.” Appeal Br. 2.
2 Claim 51 is withdrawn. Appeal Br. 4; Ans. 4. Claims 1–42 and 55–58 are
cancelled. Amendment 5 (filed July 16, 2019); Advisory Act. (mailed
Sept. 4, 2019); Ans. 3, 4.
Appeal 2019-006924
Application 15/139,810

2

STATEMENT OF THE CASE
Claimed Subject Matter
Claims 43, 44, and 53 are the independent claims on appeal.
Claim 44, reproduced below, is illustrative of the claimed subject matter.
44. An electroencephalography net for locating electrodes at
predetermined positions about a patient’s scalp, the
electroencephalography net comprising:
a headpiece including a plurality of electrodes and an
elastic net configured to space the electrodes on the patient’s
scalp in the predetermined positions;
a plurality of electrodes, each of the electrodes being
mounted at a corresponding electrode mounting location prior
to the elastic net being applied to the patient’s head, and being
distributed around the patient’s head and oriented such that,
when the elastic net is applied to the patient’s head, they are
available at the predetermined positions to electrically connect
the electrodes to the patient’s scalp; and
a plurality of electrical signal transmitting wires, each
transmitting wire corresponding to a respective one of the
plurality of electrodes.

Rejections
Claims 44–49 and 52–54 are rejected under 35 U.S.C. § 102(b) as
clearly anticipated by Price (US 3,998,213, iss. Dec. 21, 1976).
Claim 43 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Price and Dikmen (US 3,896,790, iss. July 29, 1975).
Claim 50 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Price and Musha (US 6,067,464, iss. May 23, 2000).

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ANALYSIS
Anticipated by Price
Independent Claim 44 and Dependent Claims 45–49 and 52
The Appellant points out that independent claim 44 requires:
that each electrode is mounted at a corresponding electrode
mounting location prior to the elastic net being applied to the
patient’s head, and the electrodes are distributed around the
patient’s head and oriented such that, when the elastic net is
applied to the patient’s head, they are available at the
predetermined positions to electrically connect the electrodes to
the patient’s scalp.
Appeal Br. 5; see supra (Claim 44). The Appellant argues that “Price does
not disclose sequencing of mounting electrodes on its cap versus placing its
cap on the patient.” Appeal Br. 5; see Reply Br. 2–3. More specifically, the
Appellant argues that the sequencing limitation of claim 44 is not met by
Price’s claim 14 because the failure to omit prior insertion along with the
possibility that it might be permitted “does not equate with Price disclosing
it.” Appeal Br. 5–6 (citing PersonalWeb Technologies, LLC v. Apple, Inc.,
917 F.3d 1376, 1382 (Fed. Cir. 2019)). The Appellant’s argument is not
persuasive of error.
At the outset, we note that the disputed recitation of claim 44 does not
call for a “sequencing of mounting electrodes on its cap versus placing its
cap on the patient,” as asserted by the Appellant. Claim 44 calls for an
electroencephalography net in which each of a plurality of electrodes is
capable of “being mounted at a corresponding electrode mounting location
prior to the elastic net being applied to the patient’s head.” Therefore, the
Appellant’s argument is not commensurate in scope with the requirements of
claim 44.
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Further, we note that the requirement that “each of the electrodes
being mounted at a corresponding electrode mounting location prior to the
elastic net being applied to the patient’s head” requires a physical connection
between “each of the electrodes” and the “electrode mounting location.” See
Appeal 2013-001474, page 6 (mailed Oct. 2, 2015).3 This interpretation is
consistent with the Specification, which instructs that “[t]he pre-formed
[Urgent EEG Net] comprises a headpiece with recording electrodes
incorporated therein” and “[t]he electrodes . . . are attached or formed to the
straps [of the headpiece] in a manner so as to present the recording head of
the electrode to a corresponding recording port.” Spec. ¶ 26; see id. ¶ 63
(“headpiece with pre-incorporated five-prong electrodes”).
The Examiner finds that Price’s self-adjustable holder for
automatically positioning electroencephalographic electrodes corresponds
with the claimed electroencephalography net. See Final Act. 4. More
specifically, the Examiner finds that “[t]he Price reference discloses an
elastic EEG net with electrodes connected to wires as disclosed in the
various Figures.” Id. (citing Price 4:16–7:41). Price describes the
connection between the electroencephalography net and the electrodes as
follows:
When the electrode 35 is inserted in the sleeve 27 in the
opening of the electrode positioning element 3, it is retained
against the scalp by means of flange portions 39 on the sides of
the opening 25 at its outside edge, as viewed when the electrode
positioning element 3 is in place on a head.

3 Application No. 12/376,359 is a parent application of the instant
application, which includes Appeal 2013-001474.
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Price 6:63–68, Figs. 5–10. Accordingly, Price’s electrodes have a physical
connection between each of its electrodes and their mounting location.
Additionally, the Examiner references Price’s claim 14 (Ans. 5),
which describes “an electrode may be inserted in each of said electrode
positioning elements after said cap means has been placed on a head.” Price
does not explicitly disclose the capability for performing the oppositely
claimed sequence, i.e., “each of the electrodes being mounted at a
corresponding electrode mounting location prior to the elastic net [(cap
means)] being applied to the patient’s head.” However, we determine that
one of ordinary skill in the art would understand that due to the physical
relationship between Price’s electrodes and electrode positioning elements
there is no impediment to physically connecting the electrodes to the
electrode positioning elements before or after the elastic EEG net is applied
to the patient’s head. See id. (“the skilled artisan would assume the Price net
is capable of either prior or post placement insertion of the electrodes.”).
In view of the foregoing, we determine that there is a sound basis for
believing that the structure of Price’s electrodes and electrode positioning
elements are the same as the claimed electrodes and electrode mounting
locations. See, e.g., Spec. ¶ 26, Fig. 3A; Price, 4:16–7:19, Figs. 1–10; see In
re Spada, 911 F.2d 705, 709 (Fed. Cir. 1990) (“When the PTO shows a
sound basis for believing that the products of the applicant and the prior art
are the same, the applicant has the burden of showing that they are not.”);
see also In re Best, 562 F.2d 1252, 1254–55 (explaining that where claimed
and prior art products are identical or substantially identical, the burden is
upon Appellants to prove that the prior art products do not inherently
possess the characteristics of the claimed product because the PTO is unable
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to perform the necessary comparative testing). Therefore, we determine that
Price’s disclosure adequately supports the finding that each of Price’s
electrodes has the capability of being mounted at an electrode mounting
location prior to the elastic net being applied to the patient’s head.
The Appellant does not argue –– by using evidence and/or technical
reasoning –– that each of Price’s plurality of electrodes are not capable of
being mounted at a corresponding electrode mounting location prior to the
elastic net being applied to the patient’s head. Additionally, as for the
Appellant’s reference to PersonalWeb, 917 F.3d at 1382 (Appeal Br. 6;
Reply Br. 2), we note that the holding of PersonalWeb is particular to a
rejection under obviousness, and not a rejection under anticipation.
In view of the foregoing, we sustain the Examiner’s rejection of
independent claim 44 and dependent claims 45–49 and 52 as anticipated by
Price.

Independent Claim 53 and Dependent Claim 54
The Examiner’s relies on the same findings for the rejection of
independent claims 44 and 53. See Final Act. 4. As discussed above, each
of Price’s electrodes have the capability of being mounted at an electrode
mounting location prior to the elastic net being applied to the patient’s head.
However, claim 53 requires more than this capability. See Appeal Br.,
Claims App. Claim 53 recites a method that includes the step of “attaching
the flexible net to the scalp after the electrodes have been located in the
flexible net.” Id. Price does not teach this step of sequencing. Id. at 5.
Additionally, the Examiner finds “[t]he configuration of the Price net would
clearly permit the electrodes to be inserted prior to application of the net to
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the head as is standard practice in the art (e.g., see [Musha]).” Ans. 4–5.
However, the foregoing does not explain how Price discloses the step of
“attaching the flexible net to the scalp after the electrodes have been located
in the flexible net,” as recited in claim 53.
Thus, we do not sustain the Examiner’s rejection of independent
claim 53 and dependent claim 54 as anticipated by Price.

Obviousness based on Price and Dikmen
The Appellant points out that claim 43 includes a requirement that is
nearly identical to the requirement of claim 44. See Appeal Br. 6–7. The
Appellant’s argument for claim 43 is based on the same reasons as those
provided for the rejection of claim 44, i.e., that “Price does not suggest the
missing sequencing claim limitation.” Id. at 7. The Appellant’s argument is
not persuasive.
Notably, the Examiner’s rejection of claim 43 includes a modification
of Price’s electrodes in view of Dikmen’s teaching of pronged electrodes.
Final Act. 5. For reasons similar to those as discussed above with regard to
the rejection of claim 44, we determine that Price’s electrodes, as modified,
have the capability of being mounted at an electrode mounting location prior
to the elastic net being applied to the patient’s head. Additionally, we note
that the Appellant does not argue –– by using evidence and/or technical
reasoning –– that each of Price’s plurality of electrodes, as modified, are not
capable of being mounted at a corresponding electrode mounting location
prior to the elastic net being applied to the patient’s head.
Thus, we sustain the Examiner’s rejection of independent claim 43 as
unpatentable over Price and Dikmen.
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Obviousness based on Price and Musha
The Appellant does not separately argue the Examiner’s rejection of
claim 50, which depends from claim 44. See Appeal Br. 5–6. Therefore, we
sustain the Examiner’s rejection of dependent claim 50 as unpatentable over
Price and Musha.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
44–49, 52–
54
102(b) Price 44–49, 52 53, 54
43 103(a) Price, Dikmen 43
50 103(a) Price, Musha 50
Overall
Outcome
43–50, 52 53, 54

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED IN PART