Ex Parte Hansen et al

Board of Patent Appeals and Interferences

Jan 17, 2012

10531359 (B.P.A.I. Jan. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte KIM HANSEN, THOMAS D. LYSTER, KURT V. FISCHER,
JAMES ADKINS FROMAN, and DOUGLAS MICHAEL DENNEY
__________

Appeal 2010-008029
Application 10/531,359
Technology Center 3700
__________

Before DEMETRA J. MILLS, ERIC GRIMES, and
FRANCISCO C. PRATS, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for anticipation and obviousness. We have jurisdiction under 35
U.S.C. § 6(b).
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Application 10/531,359

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STATEMENT OF CASE
The following claims are representative.
23. A method for guiding an operator of an automatic external
defibrillator in pad placement on a subject comprising:
prompting an operator to conduct a pad placement action;
sensing whether the pads are in proper contact with the subject and,
if they are not;
following sensing, issuing a pad correction prompt to remove a pad
liner.

24. A method for guiding an operator of an automatic external
defibrillator in pad placement on a subject comprising:
prompting an operator to conduct a pad placement action;
sensing whether the pads are in proper contact with the subject and,
if they are not;
following sensing, issuing a pad correction prompt that the pads
must not be touching each other.

25. A method for guiding an operator of an automatic external
defibrillator in pad placement on a subject comprising:
prompting an operator to conduct a pad placement action;
sensing whether the pads are in proper contact with the subject and,
if they are not;
following sensing, issuing a pad correction prompt that the pads
must not touch clothing.

26. The method according to claim 23, further comprising
repeating a prompt until the defibrillator senses that the operator has
conducted the prompted action.

Cited References

Brewer et al. US 5,700,281 Dec. 23, 1997
Freeman WO 01/56652 A1 Aug. 9, 2001

Grounds of Rejection
1. Claims 23 and 24 are rejected under 35 U.S.C. § 102(b) over Brewer.
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Application 10/531,359

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2. Claims 25-28 are rejected under 35 U.S.C. § 103(a) over Brewer.

FINDINGS OF FACT
The Examiner’s findings of fact are set forth in the Answer at pages
3-5.

Discussion
1. Claims 23 and 24 are rejected under 35 U.S.C. § 102(b)
over Brewer.
ISSUE
The Examiner finds that Brewer teaches each element claimed.
Appellants argue that in Brewer, there is “no pad correction prompt to
remove a pad liner when the pads are not sensed as being in proper contact
with the patient.” (App. Br. 12.)
The issue is: Does the cited prior art support the Examiner’s rejection
of the claims for anticipation?

PRINCIPLES OF LAW
In order for a prior art reference to serve as an anticipatory reference,
it must disclose every limitation of the claimed invention, either explicitly or
inherently. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). To
anticipate, every element and limitation of the claimed invention must be
found in a single prior art reference, arranged as in the claim. Karsten Mfg.
Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001).
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
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Application 10/531,359

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burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993) (citations omitted). In order to determine whether a prima facie
case of obviousness has been established, we consider the factors set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content
of the prior art; (2) the differences between the prior art and the claims at
issue; (3) the level of ordinary skill in the relevant art; and (4) objective
evidence of nonobviousness, if present.
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).

ANALYSIS
Anticipation Claim 23
Appellants argue that in Brewer, there is “no pad correction prompt to
remove a pad liner when the pads are not sensed as being in proper contact
with the patient, as in claim 23.” (App. Br. 12.)
We agree with Appellants. We do not find that the “pull electrodes
apart” prompt identified by the Examiner (Ans. 3) provides a sufficiently
specific description of issuing a pad correction prompt to “remove a pad
liner” as claim 23 requires. The anticipation rejection of claim 23 is
reversed. We also reverse the obviousness rejection of claim 26 which is
dependent upon claim 23. We note that a rejection of claim 23 for
obviousness is not before us.

Anticipation Claim 24
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Claim 24 requires a step of “sensing whether the pads are in proper
contact with the subject, and, if they are not; following sensing, issuing a
pad correction prompt that the pads must not be touching each other.”
The Examiner argues that Brewer discloses a prompt of “’please pull
electrodes apart’” indicating that the first electrode must be separated from
the second electrode and must not be touching each other. (Ans. 3.) The
Examiner further finds that, in Brewer, each prompt leading to the final
correct placement of the pads is a “’pad correction prompt.’” (Id. at 6.)
Appellants contend that the prompt that instructs that the pads must
not touch each other is not a pad correction prompt and is not issued after
sensing proper pad contact with the patient in Brewer. (App. Br. 13.)

ANALYSIS
We find the Appellants have the better argument. Brewer discloses a
step to determine whether the pads are in proper contact with the subject.
(Brewer, col. 8, ll. 64-67.) According to Brewer the defibrillator “is able to
track the stages of a rescue with some precision, thus it knows what has been
done and what needs to be done next.” (Brewer, col. 8, ll. 56-58.) However,
the cited passage of Brewer only includes a “please pull electrodes apart”
prompt before the electrodes are applied to the patient. Thus, Brewer does
not appear to meet the requirements of claim 24 of sensing whether the pads
are in proper contact with the subject and, if they are not; following sensing,
issuing a pad correction prompt that the pads must not be touching each
other.
The anticipation rejection of claim 24 is reversed. We also reverse
the obviousness rejection of claim 27 which is dependent upon claim 24.
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2. Claims 25-28 are rejected under 35 U.S.C. § 103(a) over Brewer.

ISSUE
The Examiner argues that “it is well known in the defibrillator art to
provide a pad correction prompt that the pads must not touch clothing to
provide a predictable result of ensuring that the electrodes have intimate and
effective contact with the skin.” (Ans. 4-5.) The Examiner relies on
Freeman for evidence of this knowledge in the art. (Final Rej. 5; Ans. 8.)
See also Freeman, Fig. 2 depicting a nude torso in which the pads do not
touch clothing, and the instruction in Freeman to “open the patient’s shirt or
blouse,” Freeman, page 14, ll. 20-21.
Appellants contend that neither Brewer nor Freeman provide a prompt
that the pads must not touch clothing. (App. Br. 14.)
Issue: does the cited prior art support the Examiner’s rejection of the
claims for obviousness?

ANALYSIS
We find that the Examiner has provided sufficient evidence that it
would have been obvious to one of ordinary skill in the art to provide a
prompt that the pads must not touch clothing to have effective contact with
the skin, in view of the known instruction for defibrillator use to open a
person’s shirt or blouse prior to a defibrillator rescue as in Freeman. That is,
because it was well known in the art that defibrillator pads must be applied
to bare skin, it would have been obvious to provide a correction prompt if
the defibrillator sensed that the pad(s) had been applied to clothing.
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The obviousness rejection of claim 25 is affirmed. Appellants argue
the rejection of claim 28 based upon its dependence upon claim 25. (App.
Br. 15.) For the reasons given above, the rejection of claim 28 is also
affirmed.

CONCLUSION OF LAW
The cited references support the Examiner’s obviousness rejection.
In sum the rejection of claims 23, 24, 26, and 27 is reversed. The
rejection of claims 25 and 28 is affirmed.
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-IN-PART

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