Epstein, Stephen T. et al.

Patent Trials and Appeals Board

Jan 27, 2020

15230231 - (D) (P.T.A.B. Jan. 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.
15/230,231 08/05/2016 Stephen T. Epstein Epstein-13 3199
32132 7590 01/27/2020
LAMORTE & ASSOCIATES P.C.
P.O. BOX 434
YARDLEY, PA 19067
EXAMINER
BERTRAM, ERIC D
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
01/27/2020 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):
mail@uspatlaw.com
malamorte@verizon.net
uspatlaw1@verizon.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHEN T. EPSTEIN and JOHN J. SINISI
Appeal 2019-004621
Application 15/230,231
Technology Center 3700
Before MICHAEL C. ASTORINO, PHILIP J. HOFFMANN, and
BRUCE T. WIEDER, Administrative Patent Judges.
HOFFMANN, 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 1–17. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
According to Appellant, “the . . . invention relates to defibrillation
paddles that are used during minimally invasive procedures wherein the

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 the
inventors, Stephen J. Epstein and John J. Sinisi. Appeal Br. 2.
Appeal 2019-004621
Application 15/230,231

2
defibrillation paddle is brought into direct contact with the tissue of the
heart.” Spec. 1, ll. 7–11. Claims 1 and 9 are the independent claims on
appeal. Below, we reproduce claim 1 as illustrative of the appealed claims:
1. A defibrillator assembly, comprising:
a control unit having a first terminal wire and a second
terminal wire, wherein said control unit creates an electrical
bias between said first terminal wire and said second terminal
wire;
a conductive pad that is electrically interconnected with
said control unit by said first terminal wire;
a paddle having a dielectric handle, a paddle head, and an
elongated shaft, wherein said paddle head has a conductive
surface thereon;
wherein said elongated shaft joins said handle to said
paddle head, said elongated shaft having a conductive core
protected by external insulation, wherein said conductive core
is connected to said second terminal wire within said handle;
and
a pivot connection that joins said elongated shaft to said
paddle head and enables said paddle head to move through a
range of different orientations with respect to said elongated
shaft, wherein said pivot connection creates an electrical
interconnection between said conductive core of said elongated
shaft and said conductive surface of said paddle head.
REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows:
I. Claims 1, 4, 8–10, 13, and 17 under 35 U.S.C. § 102(a)(1) as
anticipated by Epstein et al. (US 8,452,393 B1, iss. May 28,
2013) (“Epstein”);
II. Claims 2, 3, 11, and 12 under 35 U.S.C. § 103 as unpatentable
over Epstein and Jones (US 2,985,172, iss. May 23, 1961); and
Appeal 2019-004621
Application 15/230,231

3
III. Claims 5–7 and 14–16 under 35 U.S.C. § 103 as unpatentable
over Epstein and Roy et al. (US 6,156,060, iss. Dec. 5, 2000)
(“Roy”).
ANALYSIS
Rejection I—Anticipation rejection of independent claims 1 and 9, and
dependent claims 4, 8, 10, 13, and 17
As set forth above, independent claim 1 recites, in relevant part, “a
pivot connection that joins said elongated shaft to said paddle head . . . ,
wherein said pivot connection creates an electrical interconnection between
said conductive core of said elongated shaft and said conductive surface of
said paddle head.” Appeal Br., Claims App. (emphases added). Appellant
and the Examiner disagree as to whether in Epstein spring 40 (the claimed
“pivot”) creates an electrical interconnection between flexible neck 24’s
terminal wire 48 (the claimed elongated shaft’s “conductive core”) and
paddle head 26’s conductive contact surface 22 (the claimed paddle head’s
“conductive surface”). See, e.g., Answer 5–7; Appeal Br. 7–9. Based on
our review of the record, we do not sustain the Examiner’s anticipation
rejection of claim 1. Specifically, the Examiner does not support adequately
that Epstein’s spring 40 creates an electrical connection.
First, we note that a relevant dictionary definition of “create” is “to
bring into existence.” From https://www.merriam-webster.com/dictionary/
create, last accessed Jan. 22, 2020. This definition is consistent with
Appellant’s Specification and drawings, which do not describe or show that
an electrical connection exists between the elongated shaft’s conductive core
and the paddle head’s conductive surface in the absence of the pivot. See
generally Spec.
Appeal 2019-004621
Application 15/230,231

4
With respect to Epstein, Epstein refers to “terminal wire 48” only one
time (Epstein col. 3, ll. 49–52), and does not illustrate terminal wire 48 in
any figure (see generally id.). Epstein’s single sentence describing terminal
wire 48 states: “The terminal wire 48 that provides electricity to the
conductive contact surface 22 extends through the handle 28 and through the
center of the spring 40 in the flexible neck 24.” Id. at col. 3, ll. 49–52 (bold
omitted). There is nothing in this portion of Epstein describing that
spring 40 creates (i.e., brings into existence) an electrical connection—
rather, the electrical connection is provided by (unshown) terminal wire 48’s
presumed connection to paddle head 26’s conductive contact surface 22,
when terminal wire 48 passes through spring 40’s center. See id. Figs. 2, 3.
Consequently, it appears that the electrical connection between terminal
wire 48 and paddle head 26 would exist even if Epstein’s device omits
spring 40.
Based on the foregoing, we do not sustain the Examiner’s anticipation
rejection of claim 1. Further, we do not sustain the anticipation rejection of
independent claim 9, which includes a similar recitation as that discussed
above. Still further, we do not sustain the Examiner’s anticipation rejection
of claims 4, 8, 10, 13, and 17 that depend from the independent claims.

Rejections II and III—Obviousness rejections of dependent claims 2,
3, 5–7, 11, 12, and 14–16
The Examiner does not rely on either Jones or Roy to disclose
anything that would remedy the above-discussed deficiency in the
anticipation rejection of independent claims 1 and 9. Thus, we do not
sustain the Examiner’s obviousness rejections of claims 2, 3, 5–7, 11, 12,
and 14–16 that depend from claims 1 and 9.
Appeal 2019-004621
Application 15/230,231

5
CONCLUSION
We REVERSE the Examiner’s anticipation and obviousness
rejections of claims 1–17.
In summary:
Claims
Rejected
35 U.S.C. § Basis/Reference(s) Affirmed Reversed
1, 4, 8–10,
13, 17
102(a)(1) Epstein 1, 4, 8–10,
13, 17
2, 3, 11, 12 103 Epstein, Jones 2, 3, 11, 12
5–7, 14–16 103 Epstein, Roy 5–7, 14–16
Overall
Outcome:
1–17
REVERSED