Ex Parte Edwards et al

Patent Trial and Appeal Board

Dec 20, 2012

10147241 (P.T.A.B. Dec. 20, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte D. CRAIG EDWARDS, KELLY J. LOCKE, MARK GAUSMAN,
ALEX OTMAN, RICHARD C. NOVA, and SHAWN R. BERTAGNOLE
____________

Appeal 2011-011803
Application 10/147,241
Technology Center 3700
____________

Before DONALD E. ADAMS, LORA M. GREEN, and
ULRIKE W. JENKS, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims 95-124 (App. Br.
3; Reply Br. 3; Ans. 2). We have jurisdiction under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
The claims are directed to an external defibrillator. Independent
claims 95 and 110 are representative and are reproduced in the Claims
Appendix of Appellants‟ Brief.
Claims 95-124 stand rejected under the written description provision
of 35 U.S.C. § 112, first paragraph. In addition, Appellants‟ April 6, 2010
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amendment stands objected to under 35 U.S.C. § 132(a) as introducing new
matter into the disclosure.
Claims 95, 101, 102, 109-112, 117, 123, and 124 stand rejected under
35 U.S.C. § 103(a) as unpatentable over the combination of Hamilton
1
and
Faller.
2

Claims 96-102 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Hamilton, Faller, and Stendahl.
3

Claims 103-106, 108, 111, 113-116, 118-122 stand rejected under 35
U.S.C. § 103(a) as unpatentable over the combination of Hamilton, Faller,
Stendahl, and Chesley.
4

Claim 107 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Hamilton, Faller, Stendahl, Chesley, and Janae.
5

We reverse the written description rejection and objection under 35
U.S.C. § 132(a). We affirm the rejection of claims 95-113, 115-119, 123,
and 124 as obvious. We reverse the rejection of claims 114-116 and 120-
122 as obvious.

Written Description Rejection and Objection under 35 U.S.C. § 132(a):
ISSUE
Does the preponderance of evidence on this record support
Examiner‟s conclusion that (1) Appellants‟ Specification fails to provide

1
Hamilton et al., US 2003/0055458 A1, published March 20, 2003.
2
Faller et al., US 6,768,922 B2, issued July 27, 2004.

3
Stendahl et al., US 6,083,246, issued July 4, 2000.

4
Chesley et al., US 2003/0023274 A1, published January 30, 2003.

5
Janae et al., US 6,675,051 B2, issued January 6, 2004.

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written descriptive support for the claimed invention and (2) Appellants‟
April 6, 2010 amendment introduced new matter into the disclosure?
FACTUAL FINDINGS (FF)
FF 1. For clarity we reproduce Appellants‟ Fig. 3 below:

“FIGURE 3 depicts [Appellants‟] … defibrillator … wherein a lid of the
defibrillator is opened, revealing an electrode package [120] having a handle
previously hidden beneath the lid” (Spec. 4: 20-22).
FF 2. Appellants‟ Specification discloses that “[i]n one embodiment, the
electrode package 120 is a bag attached to the housing 102 by an anchor pin
122” (Spec. 8: 16-17).
ANALYSIS
Examiner finds that Appellants‟ Specification “does not have support
for the electrode package not being held against the lid” (Ans. 5; see also id.
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at 4 (the phrase “and not held against a lower surface” of the lid “is not
supported by the original disclosure”)). We are not persuaded.
As illustrated in Appellants‟ Fig. 3, the electrode package is not held
against the lid, for example the electrode package is not retained on the lid
when the device is opened (see FF 1; App. Br. 7 and 9-10; Reply Br. 6).
Similarly, Appellants‟ Specification describes an embodiment wherein the
electrode package is attached to the housing (see FF 2; App. Br. 8; Reply Br.
6). Therefore, contrary to Examiner‟s assertion, we find that Appellants‟
Specification provides written descriptive support for an electrode package
not held against a lower surface of the lid.
CONCLUSION OF LAW
The preponderance of evidence on this record fails to support
Examiner‟s conclusion that (1) Appellants‟ Specification fails to provide
written descriptive support for the claimed invention and (2) Appellants‟
April 6, 2010 amendment introduced new matter into the disclosure. The
rejection of claims 95-124 under the written description provision of 35
U.S.C. § 112, first paragraph is reversed. The objection under 35 U.S.C.
§ 132(a) is reversed

Obviousness:
The combination of Hamilton and Faller:
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
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FACTUAL FINDINGS (FF)
FF 3. For clarity we reproduce Hamilton‟s Figures 1, 2, and 4 below:

“Fig. 1 is a perspective view of an AED with its cover on” (Hamilton 3:
¶ [0025]; see generally Ans. 5). “FIG. 2 is a perspective view of the AED
of FIG. 1 with the cover removed” (id. at ¶ [0026]; see generally Ans. 5).
“FIG. 4 is a plan view of the graphical interface decal used on the control
box of the AED of FIG. 1, as shown in FIG. 2” (id. at ¶ [0028]; see
generally Ans. 6).
FF 4. Hamilton suggests, inter alia, an external defibrillator comprising: a
housing 14; a lid 12; an electrode package 16 “located over a surface of a
housing and beneath a lid when a lid is in the closed position”; an initiator
54/52 “to initiate delivery of therapy to a patient … located on a surface of a
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housing beneath the electrode package”; and a graphic 46 “on a surface of a
housing … beneath an electrode package” (Ans. 5-6).
FF 5. Examiner finds that Hamilton fails to “explicitly stat[e] that the
electrode package [is] beneath the lid when the lid is in the closed position,
but above the controls when the lid is in the open position” (id. at 7).
FF 6. Faller suggests a defibrillator, wherein an electrode package is
“positioned between the lid and the controls and is placed above the controls
when the case is open to provide an electrode package that is contained
within the device” (id.).
FF 7. For clarity, we reproduce Faller‟s FIG. 3B below:

“FIG. 3B is a back view of the automatic external defibrillator, with a
portion of the cover cutaway to show the area between the cover and the top
surface of the defibrillator box” (Faller, col. 1, ll. 63-66).
ANALYSIS
Based on the combination of Hamilton and Faller, Examiner
concludes that, at the time Appellants‟ claimed invention was made, it would
have been prima facie
[O]bvious to one of ordinary skill in the art … to place the
electrode package beneath the lid when the lid is in the closed
position and above the controls … when the lid is open to yield
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the predictable results of having the electrode package readily
accessible for ease of use when needed to apply therapy.

(Ans. 7.)
Appellants provide separate arguments for the following groups of
claims: I. Claims 95, 102, 109, and 117; II. Claim 101; III. Claims 110, 112,
123, and 124; and IV. Claim 111. Claims 95, 101, 110, and 111 are
representative.
Claims 95 and 110:
Appellants contend that “neither Hamilton nor Faller … discloses that
the electrode package remains in its position over the surface of the housing
while the lid is moved into the open position and when the lid is in the open
position” (App. Br. 14 and 20-21). We are not persuaded. The combination
of Hamilton and Faller suggests placing the electrode package between the
lid and the inside top of the housing (FF 6-7). There is no evidence on this
record to suggest that Faller‟s electrode package, which is located in the
same place as Appellants‟ electrode package, would not remain in place
when the lid is removed (Cf. App. Br. 14-15). Argument by counsel cannot
take the place of evidence. In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir.
1997).
Appellants contend that “neither Hamilton nor Faller … discloses that
the initiator is accessible by the operator only upon removing the electrode
package from its position over the surface of the housing” (App. Br. 14-15
and 19-20). We are not persuaded. The combination of Hamilton and Faller
suggests the placement of the electrode over Hamilton‟s initiator 54/52 (see
FF 3-7).
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We recognize, but are not persuaded, by Appellants‟ reliance on Faller
„709
6
to suggest an alternative embodiment of Faller‟s device, wherein the
electrode package may be connected to the cover (see App. Br. 16).
We are not persuaded by Appellants‟ contention that because
Hamilton‟s “electrode assembly would be no less available for ease of use
when needed” there “would have been no reason for a person of ordinary
skill in the art to have modified the Hamilton defibrillator in the manner
suggested by the Examiner” (App. Br. 21-22). “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). Arranging Hamilton‟s electrode package as suggested
by Faller is simply an obvious variation suggested by the art.
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(vii).
Claim 101:
Appellants‟ contend that “Examiner provided no analysis for the basis
of the rejection of claim[] 101” (App. Br. 18). We are not persuaded. Claim
101 depends from and further limits the initiator of claim 95 to comprise a
shock key actuatable by the operator to initiate delivery of the defibrillation
pulse (Claim 101). Examiner identified an element of Hamilton‟s device
that is associated with the initiator and is actuatable by the operator to
initiate delivery of the defibrillation pulse (see FF 3-4). Appellants fail to
explain how this element of Hamilton‟s device differs from the requirements
of claim 101.
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(vii).

6
Faller et al., US 6,611,709 B2, issued August 26, 2003.
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Claim 111:
Appellants‟ contend that “Examiner provided no analysis for the basis
of the rejection of claim 111” (App. Br. 22). We are not persuaded. Claim
111 depends from and further limits the connecting and initiating means of
claim 110 to comprise instructions for directing operator use of each means
(Claim 111). Examiner identified the graphic 46 of Hamilton‟s device (see
FF 3-4). Appellants fail to explain how this element differs from the
requirements of claim 111.
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(vii).
CONCLUSION OF LAW
The preponderance of evidence on this record supports a conclusion
of obviousness. The rejection of claims 95, 101, 110, and 111 under 35
U.S.C. § 103(a) as unpatentable over the combination of Hamilton and
Faller is affirmed. Because they are not separately argued: (i) claims 102,
109, and 117 fall with claim 95 and (ii) claims 112, 123, and 124 fall with
claim 110. 37 C.F.R. § 41.37(c)(1)(iv).

The combination of Hamilton, Faller, and Stendahl:
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 8. Examiner relies on the combination of Hamilton and Faller as
discussed above (FF 3-7; Ans. 8).
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FF 9. Examiner finds that the combination of Hamilton and Faller fails to
suggest “that the defibrillator is activated when the lid is in the open
position” (Ans. 8).
FF 10. Stendahl suggests a defibrillator that is activated when the lid is
moved to an open position (id. at 9).
ANALYSIS
The claims have not been argued separately and therefore stand or fall
together. 37 C.F.R. § 41.37(c)(1)(iv). Therefore, we limit our discussion to
representative claim 96.
Based on the combination of Hamilton, Faller, and Stendahl,
Examiner concludes that, at the time Appellants‟ invention was made, it
would have been prima facie obvious to modify the defibrillator suggested
by Hamilton and Faller to activate when the lid is moved to an open position
(id.).
Appellants contend that Stendahl fails to overcome the deficiencies in
the combination of Hamilton and Faller (App. Br. 22-23). For the foregoing
reasons, having found no deficiency in the combination of Hamilton and
Faller, we are not persuaded.
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(vii).
CONCLUSION OF LAW
The preponderance of evidence on this record supports a conclusion
of obviousness. The rejection of claim 96 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Hamilton, Faller, and Stendahl is
affirmed. Claims 97-102 are not separately argued and fall together with
claim 96. 37 C.F.R. § 41.37(c)(1)(iv).

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The combination of Hamilton, Faller, Stendahl, and Chesley:
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 11. Examiner relies on the combination of Hamilton, Faller, and
Stendahl as discussed above (FF 3-10).
FF 12. Examiner finds that the combination of Hamilton, Faller, and
Stendahl fail to suggest
[I]nstructions for opening a package and for applying electrodes
to a patient and a handle actuatable by an operator to open an
electrode package, and wherein the first instructions includes a
diagram depicting pulling a handle to open an electrode
package (claim 105) and wherein second instructions further
comprise instructions that direct the operator to remove the
defibrillation electrodes from a liner (claim 106) and finally to
place the electrodes on the patient (claim 104).

(Ans. 10.)

FF 13. For clarity, Chesley‟s FIG. 1 is reproduced below:

“FIG. 1 is a top view of an automated external defibrillator (AED) having a
top-mounted electrode package” (Chesley 1: ¶ [0013]).
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FF 14. Chesley suggests an electrode package for a defibrillator and
[I]nstructions for opening … [the] package and for applying
electrodes to a patient (e.g., Fig. 1, element 50), and a handle
(pull tab) actuatable by an operator to open an electrode
package (e.g., Fig. 1, element 16 and 52, pull tab), … wherein
the first instructions includes a diagram depicting pulling a
handle to open an electrode package (e.g., Fig. 1, element 50)
and wherein second instructions further comprise instructions
that direct the operator to remove the defibrillation electrodes
from a liner (e.g., Fig. 1, element 50).

(Ans. 10.)
ANALYSIS
Based on the combination of Hamilton, Faller, Stendahl, and Chesley,
Examiner concludes that, at the time Appellants‟ invention was made, it
would have been prima facie obvious to modify the defibrillator suggested
by the combination of Hamilton, Faller, and Stendahl
[T]o include … instructions for opening a package and for
applying electrodes to a patient and a handle actuatable by an
operator to open an electrode package, and wherein the first
instructions includes a diagram depicting pulling a handle to
open an electrode package and wherein second instructions
further comprise instructions that direct the operator to remove
the defibrillation electrodes from a liner.

(Ans. 11.)
Appellants provide separate arguments for the following groups of
claims: I. Claims 103-106 and 108; II. Claims 111 and 113; III. Claims 114-
116 and 120-122; and IV. Claims 118-119. Claims 103, 111, 114, and 119
are representative. 37 C.F.R. § 41.37(c)(1)(iv).

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Claim 103:
Appellants contend that Chesley fails to overcome the deficiencies in
the combination of Hamilton and Faller (App. Br. 24). For the foregoing
reasons, having found no deficiency in the combination of Hamilton and
Faller, we are not persuaded.
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(vii).
Claim 111:
Appellants‟ contend that “Examiner provided no analysis for the basis
of the rejection of claim 111” (App. Br. 22). We are not persuaded. Claim
111 depends from and further limits the connecting and initiating means of
claim 110 to comprise instructions for directing operator use of each means
(Claim 111). Examiner identified the graphic 46 of Hamilton‟s device (see
FF 3-4). Appellants fail to explain how this element differs from the
requirements of claim 111.
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(vii).
Claims 114-116 and 120-122:
Claims 114 and 120 require, inter alia, a handle that comprises an
opening in which the operator slips at least one finger through the opening to
open the electrode package (Claims 114 and 120). Claims 115, 116, 121,
and 122 depend ultimately from claim 114 or claim 120. Examiner failed to
identify a suggestion in the combination of prior art relied upon of an
electrode package with an opening through which an operator slips at least
one finger (App. Br. 25-27).
Claim 119:
Appellants contend that the combination of Hamilton, Faller,
Stendahl, and Chesley fail to suggest the requirements of claim 119 (App.
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Br. 26). We are not persuaded. Claim 119 depends from and further limits
claim 110 to require that the means for connecting the defibrillator is
contained within a package that includes a handle actuatable by the operator
to open the package (Claim 119). Examiner identified element 52 of
Chesley as a pull tab that is actuatable by an operator to open an electrode
package 16 (FF 14). Appellants fail to explain how this element differs from
the requirements of claim 119.
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(vii).
CONCLUSION OF LAW
The preponderance of evidence on this record supports a conclusion
of obviousness with regard to representative claims 103, 111, and 119. The
rejection of claims 103, 111, and 119 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Hamilton, Faller, Stendahl, and
Chesley is affirmed. Because they are not separately argued, (i) claims 104-
106 and 108 fall together with claim 108; (ii) claim 113 falls together with
claim 111; and (iii) claim 118 falls together with claim 119. 37 C.F.R.
§ 41.37(c)(1)(iv).
The preponderance of evidence on this record fails to support a
conclusion of obviousness with regard to claims 114-116 and 120-122. The
rejection of claims 114-116 and 120-122 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Hamilton, Faller, Stendahl, and
Chesley is reversed.

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The combination of Hamilton, Faller, Stendahl, Chesley, and Janae:
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 15. Examiner relies on the combination of Hamilton, Faller, Stendahl,
and Chesley as discussed above (FF 3-14; Ans. 12).
FF 16. Examiner finds that the combination of Hamilton, Faller, Stendahl,
and Chesley fails to suggest color coded electrodes (id.).
FF 17. Janae suggests “electrodes can be color coded to indicate pad type or
location” (id.).
ANALYSIS
Based on the combination of Hamilton, Faller, Stendahl, Chesley, and
Janae Examiner concludes that, at the time Appellants‟ invention was made,
it would have been prima facie obvious to modify the electrodes suggested
by the combination of Hamilton, Faller, Stendahl, and Chesley with Janae‟s
color coded electrodes.
Appellants contend that Janae fails to suggest “that the „initiator is
accessible only by the operator upon removing the electrode package from
its position over the surface of the housing‟” or “that the „electrode package
remains in its position over the surface of the housing while the lid is moved
into the open position and when the lid is in the open position.‟” (App. Br.
28.). For the reasons set forth above, we are not persuaded as these
limitations are accounted for in the combination of Hamilton, Faller, and
Stendahl.
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(vii).
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CONCLUSION OF LAW
The preponderance of evidence on this record supports a conclusion
of obviousness. The rejection of claim 107 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Hamilton, Faller, Stendahl, Chesley,
and Janae is affirmed.

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

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