Ex Parte Christ et al

Patent Trial and Appeal Board

May 5, 2016

13015173 (P.T.A.B. May. 5, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/015, 173 01127/2011 Johannes CHRIST
24737 7590 05/09/2016
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus A venue
Suite 340
Valhalla, NY 10595
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.
2011P00008US 2125
EXAMINER
PORTER, JR, GARY A
ART UNIT PAPER NUMBER
3766
NOTIFICATION DATE DELIVERY MODE
05/09/2016 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):
marianne.fox@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHANNES CHRIST and MATTHIAS MAIER1
Appeal2014-005230
Application 13/015,173
Technology Center 3700
Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
JACQUELINE T. HARLOW, Administrative Patent Judges.
PER CURIAM
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
body-worn ECG monitor assembly. The claims are rejected as anticipated.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the Real Party in Interest is Koninklijke Philips
Electronics N.V. (App. Br. 3).
Appeal2014-005230
Application 13/015,173
STATEMENT OF THE CASE
The Specification describes "a body-worn electrocardiogram (ECG)
monitor assembly which includes ECG electrodes and an event
recorder/monitor which is disposed on one of the electrodes" (Spec. i-f 1 ).
Claims 1 and 3-7 are on appeal. Claim 1 is illustrative and reads as follows
(emphasis added):
1. A body-worn ECG monitor assembly (100), comprising:
a base ECG electrode (140) with a male electrical
connector;
an exchangeable electrode and ECG cable snap
connector (160) comprising a mounting clip (210) removably
connected to the base ECG electrode electrical connector;
a remote ECG electrode (180) having a lead wire and
lead wire connector electrically connected to the exchangeable
electrode and ECG cable snap connector; and
an ECG module (120) removably connected to the
exchangeable electrode and ECG cable snap connector,
wherein the base ECG electrode is configured to hold
both of the exchangeable electrode and ECG cable snap
connector and the ECG module in place.
Claims 1and3-7 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Ungless. 2
Findings of Fact
FF 1. Ungless discloses
a monitor that includes a cardiac sensor [] responsive to a user's
heart beat. The monitor includes a processor coupled to the
sensor for generating heart-rate or other cardiac data. These
2 Ungless et al., US 2006/0235316 Al, published Oct. 19, 2006.
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Appeal2014-005230
Application 13/015,173
data can be stored m a memory. The monitor is physically
supported by and receives electrical signals from a single ECG
electrode, and is coupled by an electrical lead to a second ECG
electrode.
(Ungless Abstract; see also Ans. 2--4.)
FF 2. Ungless depicts in Figure 1 front, side, and rear views of a
monitor 2 and a recessed clip 4 (Ungless i-fi-132, 45). Figure 1 is reproduced
below.
./ !
u
FRONT SIDE REAR
FIGURE I
(Id. at Fig. 1.) Figure 1 shows "the external appearance of a housing of a
•, '°''' • 1 • 1 ,,r,,1 f".i1 •, • 1 1• ,. monnor ~ m wmcn · · L 1Jne rear or me monnor comprises a recessea cup "'
which is removably attachable to an electrical contact of a conventional
ECG electrode" (id. at i1 45; see also Ans. 2--4).
FF 3. Ungless depicts in Figure 2 a schematic diagram of the monitor
and clip coupled to two ECG electrodes (Ungless i133). Figure 2 is
reproduced below.
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Appeal2014-005230
Application 13/015,173
ActiHeart mounted
directly onto
electrode ECG !eadkem1acior 14
to second el&ctrode
FlGlJRE' 2
(Id. at Fig. 2.) Figure 2 shows that
[ t ]he clip 4 of the monitor 2 mounts on the electrical contact of
one electrode 6. The monitor comprises an electrical lead 10
for coupling to the other ECG electrode 8. The lead carries at
one end a plug 12 which is removably insertable into a socket
in one side of the monitor housing, and at the other end a clip
14 which is removably connectable to the ECG electrode
contact.
(Id. at i-f 47; see also Ans. 2--4.)
FF 4. Ungless discloses that "[ o ]nee fitted to the ECG electrode, the
clip 4 holds the monitor in position. The lead connecting the monitor to the
second ECG pad also helps to orient the monitor correctly" (Ungless i-f 49;
see also Ans. 2--4).
FF 5. Ungless depicts in Figure 5 a block diagram of the circuitry of
the monitor (Ungless i-f 36). Figure 5 is reproduced below.
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Appeal2014-005230
Application 13/015,173
I C001!11Unlilatiwr
i ~m.mt '------.;
l,,,~,~,,,,_.___..;
Bat!l!iy --41
~3(} 40
~J
Mlc"°° 32. 788kHt
c~lllt Ckick
r----1
Jlfl ! l ___ T ___ J
J2
(Id. at Fig. 5.) Figure 5 shows that "[t]he signals from the ECG electrodes
pass through two monitor contacts 48" (id. at i-f 67; see also Ans. 2--4).
FF 6. Ungless depicts in Figure 12 a mounting for the monitor
(Ungless i-f 43). Figure 12 is reproduced below.
PLANV18N
SJDEVlEW
1mm
FlGURE12
(Id. at Fig. 12.) Figure 12 shows the clip 4 for securing the monitor to the
ECG electrode, having a slider 70 and a stud 74 (Ungless i-fi-152-53; see also
Ans. 2--4).
FF 7. Ungless discloses that "stud 74 [is] coup lab le to an ECG lead"
(Ungless i-f 12; see also Ans. 2--4).
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Appeal2014-005230
Application 13/015,173
Analysis
We have considered, but do not find persuasive Appellants'
arguments that the Examiner erred in finding that Ungless anticipates
claim 1. We address Appellants' arguments below.
Appellants contend that the snap connector 14 that is removably
attached to base electrode 8, as shown in Ungless' Figure 2, does not
anticipate the claimed "exchangeable electrode and ECG cable snap
connector" (App. Br. 10; see also Reply Br. 5). More particularly,
Appellants argue that the Examiner erred in determining that base
electrode 8 holds monitor 2 in place because Ungless does not describe the
lead wire as holding the monitor in place, and a skilled artisan would
recognize that the lead wire does not provide structural support for the
monitor (App. Br. 10).
We are not persuaded. Ungless discloses that "[t]he monitor is
physically supported by and receives electrical signals from a single ECG
electrode, and is coupled by an electrical lead to a second ECG electrode"
(FF 1 ). Ungless discloses "a housing of a monitor 2" in which "[t ]he rear of
the monitor comprises a recessed clip 4 which is removably attachable to an
electrical contact of a conventional ECG electrode" (FF 2). Ungless
discloses "the clip 4 for securing the monitor to the ECG electrode, having a
slider 70 and a stud 74" (FF 6), that "stud 74 [is] couplable to an ECG lead"
(FF 7), and that "[ o ]nee fitted to the ECG electrode, the clip 4 holds the
monitor in position. The lead connecting the monitor to the second ECG
pad also helps to orient the monitor correctly" (FF 4). Ungless discloses that
"[t]he lead carries at one end a plug 12 which is removably insertable into a
socket in one side of the monitor housing, and at the other end a clip 14
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Appeal2014-005230
Application 13/015,173
which is removably connectable to the ECG electrode contact" (FF 3).
Therefore, we agree with the Examiner that Ungless' clip 14 reads on the
"exchangeable electrode and ECG cable snap connector" limitation (Ans. 2).
We also agree with the Examiner that the claim language "configured
to hold ... in place" states a functional requirement, and is accordingly
satisfied by a base ECG electrode that is capable of holding both the
exchangeable electrode and ECG cable snap connector and the ECG module
in place (Ans. 8). Furthermore, as the Examiner observes, neither the claims
nor the specification define, or otherwise limit the meaning of "in place"
(id.). Accordingly, we agree with the Examiner that even were it to become
detached from its electrode, "lead wire 10 is capable of holding or
suspending module 2 in place from electrode 8 via the connection of lead 10
to connector 14, which secures lead 10 to electrode 8" (id. at 8-10; see also
FF 3-5). See In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Claim 1 does
not require any specific "structural support" for holding the exchangeable
electrode and ECG cable snap connector and the ECG module to the base
ECG electrode as Appellants intimate (App. Br. 10). "[L]imitations are not
to be read into the claims from the specification." In re Van Geuns, 988
F.2d 1181, 1184 (Fed. Cir. 1993). See also In re Self, 671F.2d1344, 1348
(CCPA 1982) ("[A]ppellant's arguments fail from the outset because ...
they are not based on limitations appearing in the claims.").
Appellants also contend that contrary to the Examiner's alternative
rationale for finding claim 1 anticipated by Ungless, the recessed clip 4 as
shown in Figure 1 does not teach the "exchangeable electrode and ECG
connector" limitation (App. Br. 8-9; see also Reply Br. 5. We do not reach
this argument, because we conclude that the Examiner did not err in finding
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Appeal2014-005230
Application 13/015,173
that Ungless teaches the claimed limitations under the reading of that
reference discussed above.
We note Appellants' contentions that Ungless does not teach a mount
tongue in regard to claim 5, and a communication pin in regard to claim 6
(Reply Br. 5---6).
Any argument raised in the reply brief which was not raised in
the appeal brief, or is not responsive to an argument raised in
the examiner's answer, including any designated new ground of
rejection, will not be considered by the Board for purposes of
the present appeal, unless good cause is shown.
(37 C.F.R. § 41.41(b)(2).) The underlying reason for the rule is to ensure
that the Board has the benefit of the Examiner's expertise in addressing
Appellants' contentions, because Examiner's cannot respond to Reply
Briefs. See MPEP § 1207. We observe that the Examiner's rejections of
claims 5 and 6 (Ans. 4) are the same as in the Final Action (Final Act. 5-6),
and therefore, no new grounds of rejection were presented. Because
Appellants' arguments in regard to these claims are not responsive to
arguments raised by the Examiner's Answer, and no good cause has been
shown, they will not be considered.
Conclusion of Law
A preponderance of the evidence of record supports the Examiner's
finding that claim 1 is anticipated by Ungless. Claims 3-7 have not been
argued separately and therefore, fall with claim 1.
SUMMARY
We affirm the rejection of claim 1under35 U.S.C. § 102(b) based on
Ungless. Claims 3-7 fall with claim 1.
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Appeal2014-005230
Application 13/015,173
TIME PERron 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)(l )(iv).
AFFIRMED
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