Ex Parte Bibian et alDownload PDFPatent Trial and Appeal BoardNov 15, 201713110455 (P.T.A.B. Nov. 15, 2017) Copy Citation 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. NEUR-007 3500 EXAMINER HOEKSTRA, JEFFREY GERBEN ART UNIT PAPER NUMBER 3736 MAIL DATE DELIVERY MODE 13/110,455 05/18/2011 81256 7590 NeuroWave Systems Inc. 4415 Euclid Avenue Suite 500 Cleveland, OH 44103 11/15/2017 Stephane Bibian 11/15/2017 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 STEPHANE BIBIAN and TATJANA ZIKOV1 Appeal 2016-005643 Application 13/110,455 Technology Center 3700 Before ULRIKE W. JENKS, TAWEN CHANG, and DAVID COTTA, Administrative Patent Judges. CHANG, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) involving claims to methods and devices for simultaneously measuring electroencephalogram (EEG) signals and electrical impedance of applied EEG electrodes, which have been rejected as indefinite or obvious. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. STATEMENT OF THE CASE Physiological signal monitoring techniques such as electroencephalography (EEG) and electrocardiography (EKG) “utilize [] the 1 Appellants identify NeuroWave Systems Inc. as the real party in interest. (Appeal Br. 2.) 1 Appeal 2016-005643 Application 13/110,455 placement of physiological electrodes to conduct the corresponding signals to the signal processing hardware.” (Spec. 2:7—9.) “Poor physiological signal quality can result in high impedance[,] which in turn decreases the quality or strength of the signal received” by “potentially making it more difficult to distinguish a weak[] physiological signal from . . . noise” and by creating artifacts. (Id. at 2:14—21.) Poor physiological signal quality may lead to inaccurate analysis and incorrect diagnoses. According to the Specification, however, “[measuring impedance to maintain good signal quality . . . generally interrupts the signal monitoring process.” (Id. at 3:3— 5.) Further according to the Specification, “[t]he present invention relates to a physiological monitor and system . . . capable of substantially continuously measuring electrical impedance in electrodes for the purpose of measuring signal quality while at the same time minimizing data loss due to perturbation of the physiological signal.” (Id. at 4:8—13.) Claims 1—5, 8, 9, 11, 15, 16, 18, and 21 are on appeal.2 Claim 1 is illustrative and reproduced below: 1. A device for the simultaneous measurement of electroencephalogram (EEG) signals and electrical impedance of applied (EEG) electrodes comprising: at least three electrodes adapted to be attached to a subject, at least one electrode being for electrical grounding, at least one electrode providing a reference signal, and at least one EEG 2 The Examiner has withdrawn the rejection of claims 6, 10, 12—14, 16, 17, 19, and 20 under 35 U.S.C. § 103(a) as obvious over Bordoley et al., WO 2010/129029 A2, published November 11, 2010 (“Bordoley”), and Carim et al., US 6,032,060, issued Feb. 29, 2000 (“Carim”). (Ans. 2.) Because this is the only rejection as to claims 6, 10, 12—14, 17, 19, and 20, we understand that these claims are no longer on appeal. 2 Appeal 2016-005643 Application 13/110,455 measurement electrode for acquisition of a physiological signal; a processor for collection of the physiological signal and determining the electrical impedance of each electrode individually; a variable current source capable of progressively increasing and decreasing electrical current for impedance measurement into the individual electrodes steadily over a period of time; and a monitor to display the EEG physiological signal and calculated electrical impedance for each electrode utilized. (Appeal Br. 31 (Claims App.).) The Examiner rejects claims 8 and 16 under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph, as indefinite. (Final Act. 2.) The Examiner rejects claims 1—5, 9, 11, 15, 18, and 21 under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Bordoley and Carim. (Final Act. 3-7, 9-10.) I. Issue The Examiner has rejected claims 8 and 16 under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph, as indefinite. For claim 8, the Examiner finds that the limitation “comprising the step of calculating a second electrode impedance of the second measurement electrode by subtracting the first electrical impedance from the combined electrical impedance” is “unclear and indeterminate” because “‘the combined electrical impedance’ lacks antecedent basis and it is unclear what is 3 Appeal 2016-005643 Application 13/110,455 intended by such and how the second electrical impedance is calculated from such.” (Final Act. 2—3.) As to claim 16, the Examiner finds that the limitation “where the first amplitude measurements are used to determine the two separate electrode impedance” [] renders the scope of the claim unclear and indeterminate because it is unclear what is intended by the recitation a plural number of first amplitude measurements and whether this is referring to a plurality of first amplitude measurement of the of a first current source or is referring to the measurements of both a first amplitude and a second amplitude as recited in claim 14 and how this further limits claim 14 from which claim 16 depends for claim 14 already recites measuring amplitudes and calculating impedance from such measurements. {Id. at 3.) With respect to claim 8, Appellants contend that a skilled artisan would understand that “the combined electrical impedance” refers to the “electrical impedance from the combination of first and second electrical currents.”3 (Appeal Br. 6; Reply Br. 2-A.) With respect to claim 16, Appellants state only that Appellants cancelled claim 16 in the April 3, 2015 amendment but that the amendment was not entered.4 (Appeal Br. 6.) 3 Appellants also contend that Appellants’ proposed amendment of claim 8, replacing “the combined electrical impedance” with “a combined electrical impedance,” should have been entered by the Examiner. (Appeal Br. 5; see also Reply Br. 4.) We do not address Appellants’ arguments on this issue because such matter is petitionable rather than appealable. See M.P.E.P. § 1002.02(c). 4 To the extent Appellants contend that the amendment cancelling claim 16 should have been entered, we do not address the argument because such matter is petitionable rather than appealable, as already discussed with respect to claim 8. See supra n. 3. 4 Appeal 2016-005643 Application 13/110,455 The issue with respect to this rejection is whether a preponderance of the evidence of record supports the Examiner’s conclusion that the limitation in claim 8, “calculating a second electrode impedance of the second measurement electrode by subtracting the first electrical impedance from the combined electrical impedance,” is indefinite. Analysis We find Appellants to have the better argument with respect to claim 8. With respect to the Examiner’s argument that the limitation “combined electrical impedance” lacks antecedent basis (Ans. 3; Final Act. 2—3), we note that lack of explicit antecedent basis of a limitation does not necessarily render a claim indefinite. As our reviewing court has held, “despite the absence of explicit antecedent basis, ‘[i]f the scope of claim would be reasonably ascertainable by those skilled in the art, then the claim is not indefinite.’” Energizer Holdings, Inc. v. Int’l Trade Comm’n, 435 F.3d 1366, 1370-1371 (Fed. Cir. 2006) (quoting Bose Corp. v. JBL, Inc., 274 F.3d 1354, 1359 (Fed. Cir. 2001).) The Examiner also argues that a skilled artisan would not understand the limitation “combined electrical impedance” without further clarification, because “the term could be referring to a combined impedance of multiple electrodes, a combined impedance of a single electrodes at different time points, or combination of the two.” (Ans. 3.) We are not persuaded. While taken in isolation the phrase “combined electrical impedance” may be understood to refer to a combination of the impedance of any one or more electrodes at any one or more times, in the context of the remainder of the claim and the Specification, a skilled artisan would reasonably understand “the combined electrical impedance” to refer to the combined impedance of 5 Appeal 2016-005643 Application 13/110,455 the first and second measurement electrodes. (See, e.g., Spec. 8:6—13.) Accordingly, we reverse the Examiner’s rejection of claim 8 as indefinite. Appellants do not offer any substantive arguments against the Examiner’s rejection of claim 16 as indefinite. Accordingly, we summarily affirm the Examiner’s rejection of that claim. Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (explaining that summary affirmance without consideration of the substantive merits is appropriate where an appellant fails to contest a ground of rejection). II. Issue The Examiner has rejected claims 1—5, 9, 11, 15, 18, and 21 under pre-AIA 35 U.S.C. § 103(a) as obvious over Bordoley and Carim. Claim 1 is the only independent claim among these claims.5 The Examiner finds that Bordoley discloses substantially all of the limitations of claim 1, except that Bordoley fails to disclose the system wherein the current source is a variable current source capable of progressively increasing and decreasing the electrical current into the individual electrodes steadily over a period of time (Final Act. 5.) The Examiner finds, however, that Carim teaches that inducing potentials due to alternating current power sources (such as the device of Bordoley) causes artifacts/noise in bioelectrical signals being monitored .... Carim also teaches a system/method for reducing artifacts in bioelectrical signal monitoring . . . wherein a current is applied to electrodes that is in addition to a current that is 5 Claims 6 and 14 are also independent claims. However, as discussed above, the Examiner has withdrawn the rejection of these claims as obvious over Bordoley and Carim. (Ans. 2.) Claims 9 and 11 depend from claim 6, and claims 15 and 18 depend from claim 14. 6 Appeal 2016-005643 Application 13/110,455 supplied for monitoring the bioelectrical signals (similar to that of Bordoley) and wherein this current is progressively ramped up to the desired level over time and then ramped back down towards zero over a period of time not less than 1 second . . . and the frequency of the supplied current is to be outside the bandwidth of frequencies that is used for the bioelectrical monitoring, i.e. outside the bioband. {Id. at 5—6.) The Examiner concludes that it would have been obvious to one of ordinary skill in the art at the time the invention was made to combine the teachings of Carim with that of Bordoley such that the current source (which is used to supply current individually to the electrodes of Bordoley for the impedance measurements) was capable of progressively increasing and decreasing the current to the electrodes steadily over time and with frequencies outside the bioband[,] because such would provide means for the device of Bordoley to supply the current for impedance measurement without interfering with the monitoring of the EEG signal. . . and simply prevent noise/artifacts/perturbation to the bioelectrical (EEG) signal. . ., and therefore, make the EEG measurements more accurate. {Id. at 6.) Appellants contend, among other things, that the Examiner has not sufficiently articulated a reason for a skilled artisan to combine the disclosures of Bordoley and Carim to arrive at the claimed invention. (Appeal Br. 14—16.) The issue with respect to this rejection is whether a preponderance of the evidence of record supports the Examiner’s conclusion that a skilled artisan would have a reason to combine the disclosures of Bordoley and Carim to arrive at the invention of claim 1. Analysis On balance, we agree with Appellants that the Examiner has not sufficiently articulated a reason for a skilled artisan to combine the relevant 7 Appeal 2016-005643 Application 13/110,455 portions of the disclosures of Bordoley and Carim to arrive at the invention of claim 1. Claim 1 requires “a variable current source capable of progressively increasing and decreasing electrical current for impedance measurement into the individual electrodes steadily over a period of time.” (Appeal Br. 31 (Claims App.) (emphasis added).) The Examiner relies on Bordoley for disclosing “a current source capable of supplying current for impedance measurements into the individual electrodes over a period of time,” and on Carim for disclosing a current applied to electrodes that is “progressively ramped up to the desired level over time and then ramped back down towards zero over a period of time not less than 1 second.” (Final Act. 4—5.) Carim, however, does not disclose supplying a variable current for impedance measurement.6 Instead, Carim discloses applying conditioning current to electrodes for purpose of conditioning the skin. (See, e.g., Carim Abstract, 2:59—61.) The Examiner has not sufficiently articulated why a 6 Carim does teach an “impedance analyzer” and states that “[mjethods and circuitry for measuring the impedance/resistance between an electrode and skin are well known to those skilled in the art.” (Carim 13:29—32, 15:48; see also id. at 12:51—57 (“[SJystem . . . may . . . include circuitry designed to monitor skin impedance levels.”).) Carim also teaches that “[resistance could ... be measured using the current provided by some bioelectric signal monitors to determine whether an electrode or lead has fallen off.” (Id. at 13:32—34.) However, the current the Examiner points to for meeting the claim limitation is the “conditioning current,” i.e., the current used to condition skin and/or the electrodes. (Id. at 7:9—24 (disclosing a “conditioning current” that may be ramped up and down); Final Act. 5; see also, Carim 8:60—64 (distinguishing between a “conditioning current” and an “additional” “background current”.) And the Examiner has not pointed to any suggestion in Carim or elsewhere that the conditioning current could also be used by the impedance analyzer. 8 Appeal 2016-005643 Application 13/110,455 skilled artisan would find it obvious to use progressively increasing and decreasing electrical current for Bordoley’s system of impedance measurement merely because Carim suggests that such “ramp up” may be useful in a skin conditioning current. In response to arguments in the Appeal Brief, the Examiner contends that there is motivation to combine Bordoley and Carim because such combination provides means for the device of Bordoley to supply the current for impedance measurement without interfering with the monitoring of the EEG signal (see col. 6, lines 33—45 of Carim) and simply prevent noise/artifacts/perturbation to the electrical signal (see EEG). These statements which are described in the prior art of Carim as to why they “condition” the electrodes provide the motivation of why one of ordinary skill in the art would modify the device of Bordoley such that the current could progressively increase/decrease as taught by Carim. (Ans. 4.) We are not persuaded. The portion of Carim specifically cited by the Examiner above suggests that it may be advantageous to use a conditioning current “having a frequency outside the bandwidth used for monitoring the bioelectric signals,” so that skin conditioning can occur simultaneously with bioelectric signal monitoring without interfering with the monitoring. (Carim 6:33—45.) Nothing in this passage, however, suggests that using a conditioning current that progressively ramps up and down contributes to the reduction of interference. Likewise, while Carim does teach that conditioning the skin and the electrodes provide benefits such as better trace quality in bioelectric signal monitoring and desirable electrode chemical composition, the Examiner does not explain why this would suggest to a skilled artisan that a similar type of current profile should be used for 9 Appeal 2016-005643 Application 13/110,455 difference purpose, i.e., impedance measurement.7 “[Rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int 7 Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Accordingly, based on the record before us, we reverse the Examiner’s rejection of claim 1 as obvious over Bordoley and Carim. We also reverse the Examiner’s rejection of claims 2—5 and 21, which depend from claim 1. In re Fine, 837 F.2d 1071, 1076, 5 USPQ2d 1596, 1600 (Fed. Cir. 1988) (“Dependent claims are nonobvious under section 103 if the independent claims from which they depend are nonobvious.”). As discussed above, claims 9 and 11 and claims 15 and 18 depend from claims 6 and 14, respectively. The Examiner has withdrawn the obviousness rejection as to claims 6 and 14. (Ans. 2.) Moreover, both claims 6 and 14 contain limitations, similar to those in claim 1, relating to progressively increasing or reducing current for impedance measurement. (Appeal Br. 32— 33, 34—35 (Claims App.).) The Examiner previously also relied on Carim to meet these limitations. (Final Act. 8—9.) We therefore reverse the rejections of claims 9, 11, 15, and 18 for the same reasons already discussed above. 7 We note that Carim teaches that, “[i]n some instances, a subject may experience discomfort on the application of the conditioning current” and that “[rjamping up of the conditioning current may prevent unnecessary discomfort.” (Carim 14:17—20.) However, the Examiner has not made any findings regarding whether impedance measurement may result in similar discomfort and/or whether Carim’s teaching in this regard provides a reason to modify Bordoley’s impedance test circuit. 10 Appeal 2016-005643 Application 13/110,455 SUMMARY For the reasons above, we summarily affirm the Examiner’s rejection of claim 16 as indefinite. We reverse the Examiner’s rejection of claim 8 as indefinite. We reverse the Examiner’s rejection of claims 1—5, 9, 11, 15, 18, and 21 as obvious over Bordoley and Carim. TIME PERIOD FOR RESPONSE 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-IN-PART 11 Copy with citationCopy as parenthetical citation