RHYTHM DIAGNOSTIC SYSTEMS, INC.

Patent Trials and Appeals Board

Aug 27, 2020

2020004602 (P.T.A.B. Aug. 27, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
15/728,215 10/09/2017 George Stefan Golda SRD0.00202US 4049
81325 7590 08/27/2020
Peter B. Scull
HDC IP Law, LLP
4818 W. 31st Ave
Denver, CO 80212
EXAMINER
JIAN, SHIRLEY XUEYING
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
08/27/2020 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):
pbsteam@hdciplaw.com
pscull@hdciplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GEORGE STEFAN GOLDA,
DANIEL VAN ZANDT MOYER,
MARK P. MARRIOTT,
SAM ELETR, and
BRUCE O'NEIL

Appeal 2020-004602
Application 15/728,215
Technology Center 3700
____________

Before DANIEL S. SONG, EDWARD A. BROWN, and
MICHAEL L. HOELTER, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 4–9, and 13–18, which constitute all

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
“RHYTHM DIAGNOSTIC SYSTEMS, Inc.” Appeal Br. 2.
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the claims pending in this application. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM the Examiner’s rejections of these claims.
CLAIMED SUBJECT MATTER
The disclosed subject matter relates to “medical monitoring devices,
systems and/or methods,” and in some instances to “long-term sensing
and/or recording of cardiac and/or respiratory data of an individual.” Spec.
¶ 3. Apparatus claims 1 and 13 are independent. Claim 1 is illustrative of
the claims on appeal and is reproduced below.
1. A device for monitoring a physiological parameter, the
device being configured to be adhered to the skin of a subject
for the physiological parameter monitoring; the device
comprising:
a substrate;
a conductive sensor connected to the substrate, and
a double-sided composite, very high tack adhesive
having two parts:
at least one conductive adhesive portion, and
at least one non-conductive adhesive portion;
the at least one conductive portion being disposed
as at least one island within the at least one non-conductive
portion and being surrounded thereby;
double-sided defining adhesive on two sides of the
composite,
composite defining the [two]2 parts as a
composition formed apart from other elements;

2 The letter “t” of the word “two” was included in the last set of claims
entered by the Examiner. See Amendment dated May 20, 2019 and the Final
Office Action dated July 11, 2019. It is not made clear how the letter “t”
was dropped (thereby forming “wo”) when the last-entered claims were
replicated in the Appeal Brief. Thus, as best we can ascertain, the letter “t”
(forming the word “two”) is properly before the Examiner.
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the double-sided composite adhesive being attached to
the substrate and the conductive sensor;
the at least one conductive adhesive portion being
disposed in direct contact with and in conductive
communicative contact with the conductive sensor, and
being configured to be conductively and securely and
directly adhered to the skin and fixed directly to and relative to
the skin of the subject for conductive signal communication
from the subject to the conductive sensor therethrough; and
thereby being configured to one or both reduce or
eliminate sensor movement relative to the skin,
to one or both reduce noise or provide a clean signal.
EVIDENCE
Name Reference Date
Lyons US 5,465,715 Nov. 14, 1995
Menon et al. (“Menon”) US 2007/0032719 A1 Feb. 8, 2007
Bishay et al. (“Bishay”) US 2012/0089037 A1 Apr. 12, 2012
Solosko et al. (“Solosko”) US 2012/0101396 A1 Apr. 26, 2012
REJECTIONS3
Claims 1, 4–9, and 13–15 are rejected on the ground of nonstatutory
double patenting over claims 1–10 of U.S. Patent No. 9,782,132.
Claims 1, 4–9, and 13–18 are rejected under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement.

3 “Claim 16 is objected to as being dependent upon a rejected base claim, but
would be allowable if rewritten in independent form including all of the
limitations of the base claim and any intervening claims.” Final Act. 25.
The Examiner explains that this objection is based on the Examiner’s
interpretation of certain claimed components and that “Lyons does not
explicitly disclose” certain claim limitations. Final Act. 25.
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Claims 1, 4–9, and 13–18 are rejected under 35 U.S.C. § 112(b) as
failing to set forth the subject matter which the inventor or a joint inventor,
regard as their invention.
Claims 1, 4, 5, 13, and 14 are rejected under 35 U.S.C. § 102(b) as
anticipated by Lyons.
Claims 6–9 are rejected under 35 U.S.C. § 103 as unpatentable over
Lyons and Solosko.
Claim 15 is rejected under 35 U.S.C. § 103 as unpatentable over
Lyons and Menon.
Claims 17 and 18 are rejected under 35 U.S.C. § 103 as unpatentable
over Lyons and Bishay.
ANALYSIS
The rejection of claims 1, 4–9, and 13–18
as failing to comply with the written description requirement
Both independent claims 1 and 13 were amended to now recite a
“composite defining the two parts as a composition formed apart from other
elements.”4 See Amendment dated May 20, 2019. The Examiner addresses
this limitation employing both “composite” and “composition,” stating,
“[t]here is no explicit teaching from the Applicant’s Specification that”
addresses this limitation. Final Act. 7. “Applicant is required to point out

4 The claim term “other elements” is not otherwise employed in either claim
1 or 13. Appellant’s Specification employs the term “other elements” when
stating “FIG 1A shows isometrically these in what may here be considered a
substantially transparent device together with some other elements that may
be used herewith.” Spec. ¶ 26 (emphasis added). We thus understand that
“other elements” is to be construed as some other device which can be
“considered” to be “used herewith” (i.e., “together with”) the substantially
transparent device.
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explicit support from the original Disclosure, or cancel/amend any non-
supported limitations.” Final Act. 8.
Appellant contends, “there is NO ‘in haec verba’ requirement” and
that “Appellant need not point out any explicit disclosure where there may
be non-explicit understanding.” Appeal Br. 39; see also Reply Br. 18 (“all
that is necessary under the law is sufficient disclosure for a skilled artisan to
understand”). Appellant states, “there are various reasons to understand the
at least minimal inherency of such from the ‘composite’ disclosure,” and
thereafter provides a definition of “composite” (when used as an adjective)
as “made up of distinct parts or elements.”5 Appeal Br. 10 (referencing
www.merriam-webster.com/dictionary/composite); see also id. at 39.
Relying on this definition, Appellant states, “it doesn’t matter what the other
elements are, so long as they are kept separate during the formation of the
‘composite’ thing.” Appeal Br. 40. “As a consequence, the subject matter
hereof is appropriately within the disclosure terms and thus it satisfies MPEP
[§] 2163 and the written description requirement.” Appeal Br. 40.
The claim limitation in question recites a “composite defining the two
parts as a composition formed apart,” thus we need to ascertain that which
Appellant deems a “composite” and that which Appellant deems a
“composition.” Regarding the latter term “composition,” Appellant’s
Specification does not employ this term nor does Appellant provide any
indication as to where support for this term can be found therein, but for
reliance on the definition of “composite” above. See Appeal Br. 39–40.

5 Appellant references various dictionary definitions of “composite” for
when this term is used as either an adjective, a noun, or a verb. See Appeal
Br. 10, 12, 13.
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However, Appellant contends that “composite” and “composition” are
equivalent, and relies on Wikipedia for support, i.e., “[a] composite material
(also called a composition material . . . ).” Appeal Br. 12, Reply Br. 70
(emphasis omitted). Yet, Appellant’s attempt to equate the meaning of
“composite” with that of “composition” is counter-productive in this
instance because the limitation in question establishes a transformation of a
“composite” (defining the parts) into a “composition formed apart,” thereby
establishing a distinction between the two.
Because Appellant’s Specification is silent regarding the claim term
“composition,” our reviewing court has provided guidance that when a
written description cannot be found in the specification, as filed, the only
thing the Examiner can reasonably be expected to do is to point out its non-
existence. See Hyatt v. Dudas, 492 F.3d 1365, 1370 (Fed. Cir. 2007). As
indicated above, the two claim terms “composite” and “composition” cannot
be equated, and the inability of Appellant’s Specification to provide
guidance as to their differences does not bode well for Appellant when the
Examiner questions the written description support of this amended claim
limitation. See Final Act. 7–8.
In addition to the failure to employ “composition” in Appellant’s
Specification, it is also noted that when Appellant’s Specification employs
the claim term “composite,” it does not do so as a stand-alone word.
Instead, Appellant’s Specification employs such phrases as “composite
adhesive 113,” “composite adhesive 113a,” “adhesive composite 113a,” or
simply “composite adhesive.”6 Spec. ¶¶ 37 46, 47, 49, 50. It may be

6 “The Applicant’s original disclosure does not provide a distinct definition
to the term ‘composite’ or ‘composite adhesive.’” Ans. 25.
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presumed that the recited term “composite” is the same as any of these
phrases in Appellant’s Specification. However, this presumption is
questionable because claim 1 also recites “composite adhesive” separate
from simply reciting “composite.” Thus, this separate usage undermines any
implication or assertion that “composite” is the same as any of the above
phrases.7 Further, Appellant’s original recitation of claims 1 and 13 employ
“composite adhesive,” and not simply “composite” as now recited. Hence,
again, we do not fault the Examiner for seeking guidance from Appellant as
to where support for “composite” can be found in Appellant’s Specification,
in order to show that Appellant, indeed, had possession of that which is
presently claimed.
“The essence of the written description requirement is that a patent
applicant, as part of the bargain with the public, must describe his or her
invention so that the public will know what it is and that he or she has truly
made the claimed invention.” AbbVie Deutschland GmbH & Co. v. Janssen
Biotech, Inc., 759 F.3d 1285, 1298 (Fed. Cir. 2014). While we understand
“that claims can be self-describing,” i.e., “composition formed apart,”
(Neology, Inc. v. International Trade Commission, 767 Fed. Appx. 937, 941
(Fed. Cir. 2019)), our reviewing court has also explained that “[t]he
appearance of mere indistinct words in a specification or a claim, even an
original claim, does not necessarily satisfy” Section 112, first paragraph
matters because such usage may not both put others on notice of the scope of
the claimed invention and demonstrate possession of that invention. Enzo
Biochem, Inc. v. Gen– Probe Inc., 323 F.3d 956, 968–9 (Fed. Cir. 2002).

7 Claim 13 recites “composite” in the limitation under investigation and,
thereafter, employs “hydrogel adhesive” to refer to that “composite.”
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Thus, we have been instructed that “written description is about whether the
skilled reader of the patent disclosure can recognize that what was claimed
corresponds to what was described.” Alcon Research Ltd. v. Barr Labs.,
Inc., 745 F.3d 1180, 1191 (Fed. Cir. 2014). In other words, the invention
must be disclosed in a way that clearly allows a person of ordinary skill to
recognize that the inventor invented what is claimed and possessed the
claimed subject matter at the date of filing. See Ariad Pharmaceuticals, Inc.
v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). We
conclude that, in view of the above, such a disclosure has not been
sufficiently made.
New or amended claims which introduce elements or limitations that
are not supported by the as-filed disclosure violate the written description
requirement. See, e.g., In re Lukach, 442 F.2d 967 (CCPA 1971). The
inquiry into whether the description requirement is met is a question of fact.
See In re Wertheim, 541 F.2d 257, 262, (CCPA 1976). Accordingly, and
based on the record presented, we sustain the Examiner’s rejection of claims
1, 4–9, and 13–18 as “failing to comply with the written description
requirement.” Final Act. 7.
The rejection of claims 1, 4–9, and 13–18
as being indefinite
The Examiner addresses the following limitations of claim 1
(emphasis by the Examiner): “a double-sided composite, very high tack
adhesive having two parts: at least one conductive adhesive portion, and at
least one non-conductive adhesive portion.”8 Final Act. 8. The Examiner
states, “it is unclear to the Examiner how a part is related to a portion” and

8 Claim 13 employs similar highlighted language.
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provides multiple interpretations of how these limitations can be construed.
Final Act. 8; see also Ans. 35 (“[s]ince the relationship is unclear, this leads
to various interpretations”). The Examiner also states that “[s]ince the
relationship between parts and portions is unclear, the following limitation
is further indefinite: ‘composite defining the two parts as a composition
formed apart from other elements.’”9 Final Act. 9.
Appellant disagrees stating that “its chosen approach is not unclear”
and that where claim terms are “readily ascertainable by a skilled artisan . . .
the claim terms are not indefinite.” Appeal Br. 41 (referencing MPEP
§§ 2173.05(h), 2173.04); see also Reply Br. 20. Appellant also contends,
“these terms must be interpreted as distinguishing at least some adhesives
which do not have either two parts or two portions.” Appeal Br. 41. In
essence, Appellant is equating “parts” and “portions,” i.e., “[a] ‘composite’
is a THING made of or from two or more other things, or parts or portions.”
Reply Br. 1; see also id. at 4 (“the two parts and/or portions”). However,
nowhere does Appellant identify in Appellant’s Specification where the two
terms “parts” and “portions” are used in such an equivalent manner as now
asserted. Thus, each claim term is provided its own meaning, and especially
here where “parts” is recited as containing distinct “portions.”
Appellant further alleges that “where the two respective portions are
or at least very reasonably may be and may define further the two parts – this

9 Regarding the claim term “composite,” we note that, with respect to claim
1, this term is employed as a noun (“double-sided composite,” “the
composite,” “composite defining”) and also as an adjective (“composite
adhesive”). Appellant provides different definitions for this term depending
on its usage. See Appeal Br. 10, 12. Thus, the same term in claim 1 has
different meanings.
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is not indefinite.” Reply Br. 20 (emphasis added). We disagree because this
contention supports the Examiner’s assertion that the claims are “unclear”
(Final Act. 8) as the interpretation desired by Appellant is one based on
speculation.
Appellant reinforces this speculative nature by stating that in one case,
the two portions “may be” the two parts, but in an alternative case, it is just
as well “for the two portions to not necessarily be the two parts,” so long as
there is a conductive and a non-conductive “adhesive portion.” Reply Br.
20. Hence, as per Appellant, the two portions may be the two parts or may
not be the two parts, which supports the Examiner’s finding that Appellant’s
usage of these terms is “unclear.” Final Act. 8.
Consequently, in view of Appellant’s assertions, we concur with the
Examiner’s statement that “[w]hen a claim is amenable to two plausible
interpretations, a rejection under 35 U.S.C. § 112, second paragraph, for
indefiniteness, is appropriate.” Ans. 35 (referencing Ex parte Miyazaki, 89
USPQ2d 1207 (BPAI 2008) (precedential)). Accordingly, and based on the
record presented, we sustain the Examiner’s rejection of claims 1, 4–9, and
13–18 as being indefinite.
The rejection of claims 1, 4, 5, 13, and 14
as anticipated by Lyons
Appellant argues the rejection of claim 1 (see Appeal Br. 23–28)
separate from the rejection of claim 13 (see Appeal Br. 29–33). However,
the arguments presented with respect to claim 13 are similar to those
presented with respect to claim 1. Additionally, Appellant does not
separately argue the remaining claims (i.e., claims 4, 5, and 14) stating
instead that “[a]s all the remaining pending claims are thus novel in view of
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the citations, the novelty rejections thus fail and must be withdrawn.”
Appeal Br. 34. Accordingly, we select claim 1 for review, with the
remaining claims, i.e., claims 4, 5, 13, and 14, standing or falling with claim
1. See 37 C.F.R. § 41.37(c)(1)(iv).
Although the Examiner deems claim 1 indefinite for the reasons
expressed above, the Examiner emphasizes that, “[f]or purposes of
examination, it is the Examiner’s best guess that the two parts refer to a
conductive portion being a first part, and a non-conductive portion being a
second part; since the term ‘composition’ refers to two different elements.”
Final Act. 9. We abide by this understanding when contrasting claim 1 with
the cited art.
Appellant contends that “Lyons simply does not provide or suggest or
motivate or include any KSR-reason for or toward an adhesive ‘composite’
(or even a ‘composite’ adhesive).”10 Appeal Br. 6; see also id. at 14.
However, no such “KSR-reason” is needed in the present situation because
the Examiner’s rejection is based on anticipation, not obviousness.
Appellant further contends that “Lyons does have several
pieces/things placed in nearby but non-touching juxtaposition” and that
“being near each other is not forming a composite.” Appeal Br. 6; see also
id. at 9, 12, 17; Reply Br. 13, 14. First, claim 1 is silent as to any “several
pieces/things” of the composite touching. Second, Appellant does not
explain how a “composite” necessitates that each piece/thing must touch

10 See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“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”).
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every other piece/thing therein. See Reply Br. 13 (“Lyons never says they
touch each other or otherwise act or interact compositely with each other”).
Third, Appellant does not explain how different pieces/things placed in close
proximity to each other, but not touching, cannot, together, form a
“composite.”
Appellant also references the Specification (i.e., drawings and
paragraphs) to indicate “what is intended and defined by the ‘composite
adhesive’ hereof.” Appeal Br. 6; see also Reply Br. 4 (“The drawings can
provide all the teaching or definition necessary for a proper understanding of
the invention.”). However, Appellant does not explain how the claims are to
be interpreted by what was “intended” in contrast to the express language
recited by the claims, and as understood from a review of the Specification.
In other words, incorporating limitations from Appellant’s Specification into
the claims is not permitted. Our reviewing court has repeatedly “cautioned
against limiting the claimed invention to preferred embodiments or specific
examples in the specification.” Williamson v. Citrix Online, LLC, 792 F.3d
1339, 1346–47 (Fed. Cir. 2015) (quoting Teleflex, Inc. v. Ficosa N. Am.
Corp., 299 F.3d 1313, 1328 (Fed. Cir. 2002)).
Appellant also contends that, based on Appellant’s Specification, the
“composited thing 113a is clearly a discrete singular separately
identifiable/identified entity or element.” Appeal Br. 8; see also id. at 14
(Lyons is “never composited as a single combined adhesive”), 23 (“a unitary
‘whole’”), 24; Reply Br. 5, 8–9. However, nowhere does Appellant identify
a disclosure where “singular” (or “single” or “unitary”) is a requirement of
the composite.
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When interpreting claim language, we are instructed that “claims are
interpreted with an eye toward giving effect to all terms in the claim.” Bicon
Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006). See also Stumbo
v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007)
(denouncing claim constructions which render phrases in claims
superfluous). Here, claim 1 recites “a double-sided composite, very high
tack adhesive having two parts.” Substituting Appellant’s definition for the
word “composite” would result in “a double-sided ‘something’ ‘made up of
distinct parts or elements,’ very high tack adhesive having two parts.”
Appeal Br. 10, 12. Thus the phrase “something made up of distinct parts or
elements” is distinct from the phrase “having two parts.” The same can be
said for the claim 1 limitation discussed above (i.e., “composite defining the
two parts”). Substituting Appellant’s definition in that phrase (Appeal Br.
10, 12) would render “‘something’ ‘made up of distinct parts or elements’
defining the two parts.” Again, as best understood, “distinct parts or
elements” differs from “two parts.” Hence, Appellants contention above
regarding singularity would appear to contradict Appellant’s explicit
requirement of the composition being “two parts.”
Thus, as best understood and abiding by guidance from our reviewing
court, Appellant’s assertion concerning “singular” (or “single” or “unitary”)
with respect to “composite” appears to be the opposite of the actual language
of claim 1. Thus, when giving effect to all the terms in the claim, claim 1
conveys that, without further clarification, the “composite” is not, as
Appellant asserts above, “singular” (or “single” or “unitary”).
Consequently, we find no error by the Examiner in correlating Lyons’ items
156 and 108 (sandwiching a sensor therebetween (see Lyons Figs. 1–5)) as
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forming the recited “composite.” Final Act. 12. In other words, Appellant
chose language for claim 1 that does not preclude “composite” being of “two
parts,” i.e., in the manner discussed by the Examiner with respect to the
teachings of Lyons. See Final Act. 12.
Appellant also addresses a distance “d” inserted by Appellant in an
annotation of Figure 1 of Lyon. See Appeal Br. 16; Reply Br. 11. Appellant
is indicating that “the distance ‘d’ makes clear that the top component 108
and conductive media 156 [both of Lyons] do not form a composite with
each other.” Appeal Br. 16; see also Reply Br. 12. However, as best we can
ascertain, this “distance ‘d’” is merely an indication that the two Lyons
elements are not identical in size; but instead one has a greater radius (the
addition of the “d” distance) than the other. Lyons also describes how items
156 and 108 are interconnected with each other, i.e., sandwiching a sensor
therebetween. See Lyons Figs. 1–5 and associated text.
Appellant also contends “that the adhesive is ‘entirely on one side of
116’ of top component 108.” Appeal Br. 19; see also Reply Br. 7–8.
However, Appellant is disregarding the Examiner’s reference to component
156, which also employs adhesives. Final Act. 12 (“156 and 108 together
form a ‘composite’ structure as shown in Fig. 1”) (referencing Lyons 9:20–
25 which states that item 156 “typically comprises an electrically-conductive
cream, gel, adhesive, or other material.”). Further, Appellant contends that
in Lyons, “there is no indication of any relation of media 156 to or with die-
cut patch/top component 108.” Appeal Br. 19. In this matter, Appellant
appears to have completely disregarded Lyons’ teaching that upper
component 108 is applied to the patient’s skin along with media 156, which
is surrounded and enclosed by 108. See Lyons 5:40–43; 9:20–25; Fig. 1.
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Appellant further contends that in Lyons, “[t]here is no double-
sidedness of the adhesive relative to component 108.” Appeal Br. 20; see
also id. at 24, 28. However, claim 1 does not recite double-sidedness of the
adhesive “relative to [a] component” but, instead, to the whole composite
itself, and not one of its parts. Thus, Appellant is arguing a lack of double-
sidedness only with respect to one of the “distinct parts” that define the
composite, when the claim, instead, recites double-sidedness with respect to
the entire composite. Appellant’s mis-interpretation of claim 1 is not
persuasive of Examiner error.11
Appellant also contends that the Examiner’s reliance on Lyons as
disclosing a composite “would be reading such limitations as having no
meaning and thus being ‘superfluous.’” Appeal Br. 22. However, Appellant
is disregarding the language expressed by the Examiner when interpreting
claim 1 “[f]or purposes of Examination.” Final Act. 9. The Examiner
expressly stated what was to be understood by the claim terms “parts” and
“portions” so that the following limitation, “a double-sided composite, very
high tack adhesive having two parts” can be better understood. Appellant
does not explain how Lyons fails to meet this criteria or otherwise causes
any term to be “superfluous.”

11 To be clear, the Examiner has identified “156 and 108 together form a
‘composite’ structure.” Final Act. 12. “Composite” is defined by Appellant
as “made up of distinct parts or elements.” Appeal Br. 10, 39. Claim 1
recites “a double-sided composite.” Thus, Appellant’s assertion above that
there is no double-sidedness “relative to component 108” (Appeal Br. 20) is
not commensurate with the scope of claim 1 since clearly the “composite”
identified by the Examiner has a top (see upper surface of 108) and a bottom
(see lower surface of 156).
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Appellant also proposes yet another definition of “composite” (i.e.,
“no. 4” (Appeal Br. 22, 24, 25)) and contends that “it is inappropriate to pick
in isolation a single dictionary definition that is not consistent with the
specification.” Appeal Br. 23. But Appellant has already indicated that the
previous definition proposed by Appellant is acceptable (see Appeal Br. 13)
and Appellant does not explain how this new definition (i.e., “no. 4”) would
result is a different outcome with respect to the teachings of Lyons in view
of the Examiner’s understanding of claim 1.
Accordingly, and based on the record presented, we are not persuaded
of Examiner error. We sustain the Examiner’s rejection of claims 1, 4, 5, 13,
and 14 as being anticipated by Lyons.
The rejection of claims 6–9
as unpatentable over Lyons and Solosko
Appellant argues claims 6–9 together. See Appeal Br. 34–36. We
select claim 6 for review, with claims 7–9 standing or falling with claim 6.
Claim 6 includes an additional limitation directed to an electrode
“configured to be a proxy driven-right-leg electrode.” However, Appellant
does not argue this limitation (or any additional limitation cited in claims 7–
9), but instead references two limitations found in parent claim 1. See
Appeal Br. 34–36; see also Ans. 33. The first is the “double-sided
composite” discussed above (and which we will not re-address here).
Appeal Br. 34; see also Reply Br. 60. The second is the limitation
“configured to one or both reduce or eliminate sensor movement relative to
the skin, to one or both reduce noise or provide a clean signal.” Appeal Br.
34. Appellant contends that “Solosko is not cited for and does not cure the
failures of Lyons.” Appeal Br. 34. However, Solosko was cited for teaching
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the “proxy driven-right-leg electrode” additionally recited in claim 6 (see
Final Act. 19), not for the claim 1 limitation above regarding the reduction
or elimination of sensor movement to reduce noise or provide a clean signal.
The Examiner relied on Lyons for this teaching and provided citations to
Lyons where such teachings can be found to have been anticipated by
Lyons.12 See Final Act. 14–15. Hence, Appellant’s contention that Solosko
does not cure the claim 1 deficiency is not responsive to the Examiner’s
rejection. Therefore, Appellant’s argument regarding a lack of sufficient
teaching, suggestion, or motivation, “or otherwise providing a KSR reason”
for such claim 1 limitation, is not indicative the Examiner erred when
finding, instead, that Lyons anticipated (i.e., discloses) this claim 1
limitation. Appeal Br. 34; see also id. at 36; Final Act. 11–15.
Consequently, we do not fault the Examiner for failing to provide “a KSR
reason” regarding this limitation when the claim 1 limitation in question was
rejected under Section 102, not 103. In other words, under an anticipation
analysis, no “KSR reason” need be provided.
Accordingly, we sustain the Examiner’s rejection of claims 6–9 as
being obvious over Lyons and Solosko.
The rejection of (a) claim 15 as unpatentable over Lyons and Menon, and
(b) claims 17 and 18 as unpatentable over Lyons and Bishay
Claims 15, 17, and 18 each depend, directly or indirectly, from claim
13. Claim 13 recites a “hydrogel composite adhesive.” Appellant contends
that the additional recitations to Menon and Bishay do not “cure the failures

12 Lyons teaches the use of adhesive properties that “both assist in the
bonding of the electrode 100 to the patient and to reduce electrical artifacts
caused by movement between conductive components.” Lyons 9:29–32; see
also Final Act. 15.
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of Lyons” regarding this “hydrogel” limitation. Appeal Br. 37. Similar to
the above, the Examiner did not rely on the additional references to Menon
or Bishay to teach this parent claim 13 “hydrogel” limitation because the
Examiner relied on Lyons for such teachings. See Final Act. 16 (referencing
Lyons 9:33–35). Indeed, Lyons teaches the use of “medical grade,
electrically-conductive hydrogel with adhesive qualities that is commercially
available.” Lyons 9:34–36. Appellant does not explain how Lyons fails to
anticipate this limitation, or why, due to being rejected under Section 102,
the Examiner erred in not also providing a “rationale” or a “KSR REASON”
on this point. Appeal Br. 37.
Accordingly, and based on the record presented, we sustain the
Examiner’s rejection of claims 15, 17, and 18 as being obvious over either
Lyons and Menon, or over Lyons and Bishay.
Additional Issues
In view of our analysis above, we do not address the Examiner’s
“Double Patenting” rejection of claims 1, 4–9, and 13–15. Final Act. 4–7.
We also question the Examiner’s finding that claim 16 “would be
allowable if rewritten in independent form including all of the limitations of
the base claim and any intervening claims.” Final Act. 25. This is because
we agree with the Examiner that parent claim 13 lacks written description
support, and is indefinite. Any rewriting of claim 16 to merely include the
base claim and intervening claims would not affect those determinations.
Additionally, we note that Appellant’s Reply Brief not only re-states
arguments previously made, but also addresses several claims and/or
arguments for specific claims that were not specifically addressed or argued
in Appellant’s Appeal Brief. For example, Appellant presents arguments
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regarding claims 4 and 5 in the Reply Brief (see Reply Br. 27–28) yet
Appellant did not specifically argue these two claims in the Appeal Brief,
but instead argued them as part of a larger group of claims (see Appeal Br.
23–28, 34). The same can be said for claim 14 (see Reply Br. 32–33;
Appeal Br. 34) as well as for claims 7–9 (which were argued as a group
along with selected claim 6). See Reply Br. 36–39, 59–61; Appeal Br. 34–
36. Appellant also seeks to re-argue claims 15, 17, and 18 discussed above
(see Reply Br. 40–43, 61–62), but this time by focusing on other matters
beyond just the “hydrogel” matter discussed in the Appeal Brief (see Appeal
Br. 37; Reply Br. 61–62).
We decline to review these additional arguments made for the first
time in Appellant’s Reply Brief because good cause was not shown. See 37
C.F.R. §§ 41.37(c)(iv), 41.41(b)(2); In re Baxter Int’l, Inc., 678 F.3d 1357,
1362 (Fed. Cir. 2012); In re McDaniel, 293 F.3d 1379, 1383 (Fed. Cir.
2002).
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 4–9,
13–15
Obviousness-type
Double Patenting13

1, 4–9,
13–18
112(a) Written Description 1, 4–9,
13–18

1, 4–9,
13–18
112(b) Indefinite 1, 4–9,
13–18

1, 4, 5,
13, 14
102(b) Lyons 1, 4, 5, 13,
14

6–9 103 Lyons, Solosko 6–9

13 As explained above, we do not reach this rejection.
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15 103 Lyons, Menon 15
17, 18 103 Lyons, Bishay 17, 18
Overall
Outcome
1, 4–9,
13–15, 17,
18

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