Ex Parte Valentine et al

Patent Trial and Appeal Board

Feb 27, 2013

10513941 (P.T.A.B. Feb. 27, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/513,941 07/22/2005 Warren B. Valentine GB 020068 9759
7590 02/27/2013
Michael E Marison
Corporate Patent Counsel
Phillips Electronics North America Corporation
P O Box 3001
Brlarcliff Manor, NY 10510
EXAMINER
COLE, ELIZABETH M
ART UNIT PAPER NUMBER
1789
MAIL DATE DELIVERY MODE
02/27/2013 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 WARREN B. VALENTINE,
NANCY TILBURY, PHILIPPA C. WAGNER,
ISABEL ARCHER and KYRIAKOS MAMA
____________

Appeal 2012-001020
Application 10/513,941
Technology Center 1700
____________

Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and
RICHARD E. SCHAFER, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 21-25.1 We have
jurisdiction under 35 U.S.C. § 6(b). Claim 21 is illustrative:

1 The Examiner has withdrawn the rejection of claims 1-3, 5, 8, 9, 16-19,
and 26-30 (see Ans. 4, last para.). Accordingly, the Examiner’s inclusion of
claims 18 and 19 in the statement of the rejection at page 5 is considered
inadvertent error.
Appeal 2012-001020
Application 10/513,941

2
21. A textile article comprising:
a first textile layer adapted to be disposed against a wearer’s
skin, the first layer defining at least one electrically conductive
electrode;
silicon[e]2 disposed to encourage perspiration in a vicinity of
the electrode and to retain moisture in the vicinity of the electrode;
and
a second textile layer including an insulating region disposed
adjacent the electrode on a face opposite the wearer’s skin.

The Examiner relies upon the following references as evidence of
obviousness:
Caird et al. (Caird) 3,768,156 Oct. 30, 1973
Sibalis 4,640,689 Feb. 3, 1987
Bennett et al. (Bennett) 6,625,481 B2 Sep. 23, 2003
Demeyere et al. (Demeyere) WO 01/02052 A2 Jan. 11, 2001

Appellants’ claimed invention is directed to a textile article
comprising an electrically conductive electrode having silicone disposed in
the vicinity of the electrode to encourage perspiration and retain moisture.
The appealed claims stand rejected under 35 U.S.C. § 103(a) as
follows:
(a) claims 21 and 23 over WO ‘052 in view of Sibalis;
(b) claim 22 over WO ‘052 in view of Sibalis and Bennett; and
(c) claims 24 and 25 over WO ‘052 in view of Sibalis and Caird.
We have thoroughly reviewed the respective positions advanced by
Appellants and the Examiner. In so doing, we agree with Appellants that the
Examiner’s rejections are not sustainable.

2 It appears that Appellants mean the polymer silicone rather than the
element silicon.
Appeal 2012-001020
Application 10/513,941

3
WO ‘052 discloses a textile article comprising electrically conductive
electrodes. However, as recognized by the Examiner, the reference does not
teach applying silicone in the vicinity of the electrode, or, for that matter,
anywhere. The Examiner cites Sibalis for remedying this deficiency in WO
‘052. However, Sibalis teaches applying silicone between adjacent active
and inactive electrodes to serve as a dam against perspiration to preclude any
shorting between the electrodes (col. 5, ll. 36-44). Hence, Sibalis’s use of
silicone is contrary to Appellants’ purpose to retain moisture in the vicinity
of the electrode.
While the Examiner appreciates this difference in purpose, it is the
Examiner’s position that a finding of obviousness does not require that the
prior art share the same purpose as an applicant. The Examiner states that
“[t]he structure of WO ‘052 as modified by the teachings of Sibalis would
have been the same as the claimed structure” (Ans. 9, first para.). However,
as pointed out by Appellants, since the electrodes of WO ‘052 are not
adjacent to each other, there would have been no reason for one of ordinary
skill in the art to apply silicone in the manner taught by Sibalis, and the
Examiner has not articulated any motivation for one of ordinary skill in the
art to dispose silicone in the vicinity of the electrodes of WO ‘052, be it to
effect Appellants’ retaining of moisture or any other reason. In the absence
of a reason for why it would have been obvious for one of ordinary skill in
the art to apply silicone in the vicinity of the electrodes of WO ‘052, the
Examiner’s rejection lacks the requisite factual support. The additional
citations of Bennett and Caird do not remedy this deficiency in the
combination of WO ‘052 and Sibalis.
Appeal 2012-001020
Application 10/513,941

4
In conclusion, based on the foregoing, we are constrained to reverse
the Examiner’s rejections.
REVERSED

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