Ex Parte Jonsen

Board of Patent Appeals and Interferences

Nov 30, 2009

10573065 (B.P.A.I. Nov. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ERIC JONSEN
____________

Appeal 2009-008827
Application 10/573,065
Technology Center 3700
____________

Decided: November 30, 2009
____________

Before: WILLIAM F. PATE III, LINDA E. HORNER and KEN B.
BARRETT, Administrative Patent Judges.

PATE III, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
rejection of claims 1-20. App. Br. 3. We have jurisdiction under 35 U.S.C.
§ 6(b) (2002).

Appeal 2009-008827
Application 10/573,065

2
THE INVENTION
The Appellants’ claimed invention is directed to an apparatus and
method for identifying an electrode type in an automatic external
defibrillator. Claim 1, reproduced below, is representative of the subject
matter on appeal.
1. A method for identifying an electrode type in an automatic
external defibrillator comprising the steps of:
providing on an automatic external defibrillator electrode
package which includes an electrical connector for coupling an
electrode to the defibrillator a shaped conductive label having a
conductive path that uniquely identifies a type of electrode
contained therein;
coupling the electrode electrical connector to an electrode
connector of the defibrillator; and
coupling one or more conductors to the shaped
conductive label when the automatic external defibrillator
electrode package is coupled to the defibrillator.

THE EVIDENCE
The Examiner relies upon the following evidence:
Wheeler
Verness
Olson
US 5,989,053
US 6,018,683
US 6,101,413
Nov. 23, 1999
Jan. 25, 2000
Aug. 8, 2000

THE REJECTIONS
Claims 1-3, 5-7, 9, 12-17, 19, and 20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Olson. Ans. 3-6.
Claims 4, 8, 10, and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Olson and Verness. Ans. 6-7.
Appeal 2009-008827
Application 10/573,065

3
Claim 11 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Olson and Wheeler. Ans. 7.

OPINION
Regarding the rejection of each of the independent claims 1, 5, 6, and
16, the Examiner found that it would have been obvious to one of ordinary
skill in the art to have considered Olson’s identification element 400 within
package 60 to be the claimed shaped label. Ans. 4, 8. Appellant contends
that neither Olson’s identifying means 400, nor any of the particular
embodiments thereof, e.g., resistor 406, are reasonably construed as the
claimed “shaped conductive label,” nor would they have rendered such a
structure obvious. App. Br. 8; Reply Br. 3.
“[T]he precise language of 35 U.S.C. § 102 that ‘(a) person shall be
entitled to a patent unless,’ concerning novelty and unobviousness, clearly
places a burden of proof on the Patent Office which requires it to produce
the factual basis for its rejection of an application under sections 102 and
103.” In re Warner 379 F.2d 1011, 1016 (CCPA 1967). A determination of
anticipation, as well as obviousness, involves two steps. First is construing
the claim, a question of law, followed by, in the case of anticipation or
obviousness, a comparison of the construed claim to the prior art. This
comparison process involves fact-finding. Key Pharmaceuticals v. Hercon
Labs. Corp., 161 F.3d 709, 714 (Fed. Cir. 1998) (citations omitted).
“[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary usage as they
would be understood by one of ordinary skill in the art, taking into account
whatever enlightenment by way of definitions or otherwise that may be
Appeal 2009-008827
Application 10/573,065

4
afforded by the written description contained in applicant’s specification.”
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Although the claims are
interpreted in light of the specification, limitations from the specification are
not read into the claims. In re Van Geuns, 988 F.2d 1181, 1185 (Fed. Cir.
1993). Reading a claim in light of the specification, to thereby interpret
limitations explicitly recited in the claim, is a quite different thing from
reading limitations of the specification into a claim, to thereby narrow the
scope of the claim by implicitly adding disclosed limitations which have no
express basis in the claim. In re Prater, 415 F.2d 1393, 1404-05 (CCPA
1969).
The Specification provides that “[p]ins on the defibrillator body make
electrical contact with the metallic label when the package is attached to the
defibrillator. These pins sense the shape of the conductive label to ascertain
the electrode type, thereby enabling the [automatic external defibrillator] to
automatically sense the proper operating mode.” Spec. 2:10-13. From the
Specification one of ordinary skill in the art would understand the phrase
“shaped conductive label having a conductive path that uniquely identifies a
type of electrode” to mean a label wherein the shape of the label performs a
role in that identification process.
Figure 9 of Olsen schematically illustrates a concept for detecting the
presence of pediatric electrodes. Col. 7, ll. 65-67. An identification element
400 is placed in the electrode package 60 and included in an electrical
circuit. Col. 8, ll. 4-8. Based upon a measured response, a processor 74
provided with the defibrillator can determine if electrodes 50 are pediatric
electrodes. Col. 8, ll. 13-16. Olsen discloses that the identification element
may be embodied as a resistor 406, or other passive or active component
Appeal 2009-008827
Application 10/573,065

5
such as an inductive or capacitive component or a memory chip or digital
sensor. Col. 9, ll. 13-18, 32-34. Olsen does not teach that the disclosed
identification means, or any embodiment thereof, is physically shaped in any
particular way.
What a reference teaches a person of ordinary skill is not limited to
what a reference specifically “talks about” or what is specifically
“mentioned” or “written” in the reference. Syntex (U.S.A.) LLC v. Apotex,
Inc. 407 F.3d 1371, 1380 (Fed. Cir. 2005). However, the key to supporting
any prima facie conclusion of obviousness under 35 U.S.C. § 103 is the clear
articulation of the reason(s) why the claimed invention would have been
obvious. The Federal Circuit has stated that “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.” In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006), cited with approval KSR International Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007).
Although the device and method described by Olsen solves a similar
problem in a similar fashion, this fact alone is not sufficient to establish that
the claimed subject matter would have been obvious to one having ordinary
skill in the art. There is no legally recognizable essential gist or heart of the
invention. W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1548
(Fed.Cir.1983), cert. denied, 469 U.S. 851 (1984). All words in a claim must
be considered in judging the obviousness of the claimed subject matter. See
In re Wilson, 424 F.2d 1382, 1385. The Examiner’s conclusion that it would
have been obvious to modify Olsen’s identification element to be a label
with a particular shape does not rationally flow from the fact that Olsen
Appeal 2009-008827
Application 10/573,065

6
suggests the identification elements may be placed in alternate locations.
Ans. 4; Olsen col. 8, ll. 26-34. Olsen does not teach or suggest that the shape
of the identification element is of any particular importance, regardless of its
location. The Examiner has failed to articulate a rational underpinning to
support the legal conclusion of obviousness. We are therefore constrained to
conclude that the Examiner improperly relied upon speculation and
conjecture in determining that the subject matter of claims 1, 5, 6 and 16,
and therefore dependent claims 2-4, 7-15 and 17-20, would have been
obvious to one having ordinary skill in the art.

DECISION
For the above reasons, the Examiner’s rejections of claims 1-20 are
reversed.

REVERSED

Vsh

PHILIPS INTELLECTUAL PROPERTY & STANDARDS
P.O. BOX 3001
Briarcliff Manor, NY 10510-8001