Ex Parte PIAZZA

Patent Trials and Appeals Board

Apr 2, 2019

14888579 - (D) (P.T.A.B. Apr. 2, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/888,579 11/02/2015 AARON JAMES PIAZZA
24737 7590 04/04/2019
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.
2013P00713WOUS 5913
EXAMINER
SCHAETZLE,KENNEDY
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
04/04/2019 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):
patti. demichele@Philips.com
marianne.fox@philips.com
katelyn.mulroy@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AARON JAMES PIAZZA
Appeal2018-006045
Application 14/888,579
Technology Center 3700
Before WILLIAM V. SAINDON, BARRY L. GROSSMAN, and
MITCHELL G. WEATHERLY, Administrative Patent Judges.
WEATHERLY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the decision of the
Examiner rejecting claims 1-20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
The claims are directed to a defibrillator electrode having adult and
pediatric graphics. Claim 17, reproduced below, is illustrative of the
claimed subject matter:
17. An electrode for a defibrillator, comprising:
a lead wire;
a substrate;
Appeal2018-006045
Application 14/888,579
a conductive surface disposed on one side of the substrate
and electrically connected to the lead wire; and
a printed graphic disposed on a graphics side of the
substrate showing the proper positioning of the
electrode on a patient torso,
wherein the graphic includes both of a figure of an adult
body and a pediatric body.
REFERENCES
The Examiner relies upon the following evidence:
Covey
Powers '546
Powers '136
US 2003/0088276 Al
US 2008/0097546 Al
US 2009/0254136 Al
REJECTIONS
May 8, 2003
Apr. 24, 2008
Oct. 8, 2009
Appellant seeks our review of the following rejections:
Claims 1-9 and 17-20 stand rejected under 35 U.S.C. § 102(a)(l) as
being anticipated by Covey. Ans. 2--4.
Claim 10 stands rejected under 35 U.S.C. §I03(a) as being
unpatentable over Covey and Powers '546. Id. at 4---6.
Claims 11 and 13-16 stand rejected under 35 U.S.C. §I03(a) as being
unpatentable over Covey and Powers '136. Id. at 6-8.
Claim 12 stands rejected under 35 U.S.C. §I03(a) as being
unpatentable over Covey, Powers '136, and Powers '546. Id. at 8-9.
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Application 14/888,579
OPINION
Claims 1-9 and 17-20: Anticipation by Covey
1. Independent Claims 1 and 1 7
Claim 1 is directed to a "medical electrode system" comprising two
electrodes. Claims App. Each electrode includes two graphical images, one
illustrating placement of the electrode an adult patient and another
illustrating placement on a pediatric patient. Id. Claim 17 is directed to an
"electrode" bearing a "graphic ... showing the proper positioning of the
electrode on a patient" that "includes both of a figure of an adult body and a
pediatric body." Id.
Appellant contends that the Examiner has failed to establish that
Covey describes the graphic images on the electrodes as recited in
independent claims 1 and 17. Br. 14--15 ( claim 1 ), 16 ( claim 17). Appellant
contends that the graphical images functionally relate to the electrodes by
obviating "the need for the user to recall the proper position" of the
electrodes without referring to instructions located "away from the patient."
Id. at 14. Based on the alleged functional relationship between the graphical
images and the electrodes, Appellant argues that the graphical images
patentably distinguish claims 1 and 17 from Covey. Id. at 15-16.
The Examiner determines that Covey describes every element of
claims 1 and 1 7, with the exception of graphical images depicting the
positioning of the electrodes on a pediatric patient. Ans. 2-3. The Examiner
further determines that the content of the graphical images (i.e., images of
both adult and pediatric patients) is not entitled to patentable weight because
the images fail to reflect a new and nonobvious functional relationship to the
electrode substrate. Id. at 3. The Examiner determines that "the electrode
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Application 14/888,579
merely serves as a support for the printed matter" because the "same visual
instructions can, for example, be placed on the housing of the defibrillator or
in an instruction booklet without changing the substantive manner of placing
the electrodes." Id.
The Examiner finds that the only difference between Covey and
claim 1 is "the content of the instructions" placed on the electrodes. Id.
at 10. The correct placement of electrodes or the effectiveness of electrodes
on an adult or pediatric patient does not, however, depend upon the presence
or absence of graphical instructions on the electrodes. Because the content
of the instructions themselves "cannot serve to impart patentability," the
Examiner concludes that Appellant's argument is unpersuasive. We agree.
InAstrazeneca LP v. Apotex, Inc., 633 F.3d 1042 (Fed. Cir. 2010), the
Federal Circuit analyzed the patentability of claims directed to a kit
containing asthma medication bearing a label with instructions cautioning
against administering the medication more than once per day. Id.
at 1063---64. The district court ruled that the printed instructions bore no
functional relationship to the drug or the label on which it was printed and
were entitled to no patentable weight, and the Federal Circuit agreed. Id.
at 1064. The Federal Circuit explained: "The instructions in no way
function with the drug to create a new, unobvious product. Removing the
instructions from the claimed kit does not change the ability of the drug to
treat respiratory diseases." Id. at 1065.
Like the instructions on the asthma medication label in Astrazeneca,
graphical instructions on electrodes explaining how to position those
electrodes on a patient, whether adult or child, are of no patentable
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Application 14/888,579
consequence. 1 The Examiner has otherwise identified how Covey describes
every other aspect of independent claims 1 and 17. Ans. 2-3. Appellant
identifies no other argument that Covey fails to anticipate those claims.
Accordingly, we sustain the Examiner's rejection of claims 1 and 17 as
anticipated by Covey.
2. Dependent Claims 6 and 18
Claim 6 depends from claim 1 and further recites that the claimed
graphical images are oriented such that the depiction of the patient's body on
the image aligns with the real patient's body when the electrodes are
properly positioned. Claim App. Claim 18 depends from claim 17 and
recites similar requirements. Appellant argues that claims 6 and 18 are
separately patentable because of the alignment function resulting from the
orientation of the images on the electrodes.
The Examiner determines that the content of the claimed images is not
entitled to patentable weight. We agree. The orientation of images on the
electrodes in no way effects how the electrodes themselves function. We
sustain the Examiner's rejection of claims 6 and 18 on this basis alone.
The Examiner further explains that Covey describes using images that
depict the proper alignment of the electrodes on a patient's body in the
manner claimed. Ans. 14--18 (citing Covey ,r,r 46-49). For example, Covey
expressly indicates that "the operator orients the head of FIG. 90 in the same
1 Our conclusion is also supported by the Federal Circuit's ruling, cited by
the Examiner, in In re Ngai, 367 F.3d 1336 (Fed. Cir. 2001), which affirmed
the Board's ruling that claims to a "kit comprising instructions to amplify
ribonucleic acids" were not patentable based on the content of the
instructions. Id. at 1339.
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Application 14/888,579
direction as the head of the patient." Covey ,r 49. Even if we were to agree
with Appellant that the orientation of the claimed images were entitled to
patentable weight, we also sustain the Examiner's rejection of claims 6 and
18 because Covey describes this limitation.
3. Other Dependent Claims
Claims 2-5 ultimately depend from claim 1, and claims 7-9 depend
from claim 6, which depends from claim 1. Claim App. Claims 19 and 20
depend directly from claim 17. Id. Appellant advances no argument that
any limitation introduced in claims 2-5, 7-9, 19, or 20 separately renders
these claims patentable over Covey. See Br. 14--17 (presenting arguments
relating only to elements introduced in claims 1, 6, 17, and 18).
The Examiner determines that claims 2-5, 7, and 20 merely recite
aspects of the content of the claimed images that are not entitled to
patentable weight. Ans. 4. The Examiner also identifies the manner in
which Covey describes each limitation introduced in claims 8, 9, and 19. Id.
For the reasons expressed by the Examiner, which we adopt as our own, we
sustain the Examiner's rejection of claim 2-5, 7-9, 19, and 20 as anticipated
by Covey.
Claim 10: Obviousness over Covey and Powers '546
Claim 10 depends from claim 1 and further recites that the system
includes a "clamshell case" to which each of the electrode pads is attached
along with other limitations relating to the content of the images, their
orientation, on the electrodes. Claim App. The Examiner rejects claim 10
as obvious in view of Covey and Powers '546. The Examiner determines
that clamshell-style electrode storage devices used in defibrillators were well
known as described by Powers '546. Ans. 5 ( citing Powers '546 ,r,r 8, 11,
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24). The Examiner also accorded no patentable weight to the limitations
directed to the content of the graphical images on the electrodes. Ans. 6.
Appellant argues that claim 10 is patentable because the "grounds for
final rejection of Claim 10 rely upon giving no patentable weight to the
Claim 10 recited graphics in the same way as was improperly relied upon in
the anticipation rejection" of claims 1-9 and 17-20. Br. 18.
We reject Appellant's argument for the same reasons expressed above
in our discussion of the anticipation of claims 1-9 and 17-20. Accordingly,
we sustain the rejection of claim 10 as obvious over Covey and Powers '546.
Claims 11 and 13-16: Obviousness over Covey and Powers '13 6
Independent claim 11 is directed to an "external defibrillator"
comprising electrode pads with a "graphic indication disposed on the
printable surface [ of the electrode] of the proper placement of the respective
electrode pad on both of an adult human body and a pediatric human body."
Claim App. Claims 13-16 ultimately depend from claim 11. Id. Appellant
argues claims 11 and 13-16 as a group. Br. 19-22. We select claim 11 as
representative of the group with our decision regarding these claims being
determined by our analysis of claim 11. 3 7 C.F .R. § 41.3 7 ( c )( 1 )(iv).
Appellant argues that claim 11 is patentable because the graphical
limitations recited in the claim bear a functional relationship with the
underlying electrode pads and neither Covey nor Powers '13 6 describes
graphics on the surface of an electrode that illustrates the proper placement
of the electrode on a pediatric patient. Br. 20-21.
The Examiner relies upon Covey as describing all aspects of claim 11
other than the "mode switch operable to switch the controller from an adult
defibrillation mode to a pediatric defibrillation mode." Ans.6-7. The
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Application 14/888,579
Examiner finds that Powers '13 6 describes a "related AED defibrillation
system that includes a mode switch" as recited in the claim. Id. at 7 ( citing
Powers '136 ,r 28). The Examiner also finds that Powers '136 describes
graphical instructions for using its defibrillator on both adults and children.
Id. (citing Powers '136 ,r,r 26-27, Figure 4). The Examiner concludes that
the advantages of the mode switch and graphical instructions described by
Powers '136 would have motivated an ordinarily skilled artisan to
incorporate such a switch into Covey's defibrillator. Id.
For the reasons expressed in our analysis of the rejection of
independent claims 1 and 1 7 above, we conclude that the claimed graphics
on the electrodes of claim 11 are not entitled to patentable weight. Even if
the graphics were entitled to patentable weight, the Examiner has also
identified persuasively how the combined teachings of Covey and
Powers '13 6 render claim 11 obvious. Accordingly, we sustain the
Examiner's rejection of claim 11 and its dependent claims 13-16 as obvious
over Covey and Powers '136.
Claim 12: Obviousness over Covey, Powers '136, and Powers '546
Claim 12 depends from claim 11 and further recites that "the electrode
storage device is a clamshell" and that "at least one of the graphic
indications is reproduced on an exterior surface of the clamshell." Claim
App. The Examiner relies upon Powers '546 as describing the claimed
clamshell. Ans. 8-9. Appellant argues for patentability of claim 12 based
upon the recitation of "graphics for properly placing the electrode on both of
an adult human body and a pediatric human body" located on the electrodes
or the exterior of the storage clamshell. Br. 22.
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We sustain the Examiner's rejection of claim 12 because the recitation
of graphics on the electrodes and clamshell that illustrate the proper
placement of the electrodes on adult and pediatric patients are not entitled to
patentable weight. The reasons for our conclusion are set forth in
connection with our analysis of claims 1, 10, and 17 above.
DECISION
For the reasons stated above, we affirm the Examiner's rejection of
claims 1-20.
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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