Ex Parte Lathrop

Patent Trial and Appeal Board

Jul 11, 2013

10651335 (P.T.A.B. Jul. 11, 2013)

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.
10/651,335 08/28/2003 Peter Lathrop 8029-007-US 8345
32301 7590 07/11/2013
CATALYST LAW GROUP, APC
5694 Mission Center Road
#519
SAN DIEGO, CA 92108
EXAMINER
GHAND, JENNIFER LEIGH-STEWAR
ART UNIT PAPER NUMBER
3766
MAIL DATE DELIVERY MODE
07/11/2013 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 PETER LATHROP
____________

Appeal 2011-002755
Application 10/651,335
Technology Center 3700
____________

Before STEFAN STAICOVICI, GAY ANN SPAHN, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Peter Lathrop (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 19, 20, and 22-24 under 35 U.S.C.
§ 112, first paragraph, for failing to comply with the written description
requirement and claims 1, 2, 6, 19, 20, and 22-24 under 35 U.S.C. § 103(a)
as unpatentable over Michelson (US 6,445,955 B1, iss. Sep. 3, 2002).
Claims 3-5, 7-18, and 21 have been canceled. We have jurisdiction over this
appeal under 35 U.S.C. § 6(b).

INVENTION
Appellant’s invention relates to a “wireless electrotherapy unit.”
Spec. 3, l. 14 and fig. 4.
Claim 19 is illustrative of the claimed invention and reads as follows:
19. A wireless electrotherapy device comprising:
an electronics layer and a contact layer;
an electronics circuit member housed within said
electronics layer, said electronics circuit member further
comprising:
a pre-programmed microprocessor, a switchable wireless
power supply, at least one wireless electrode, and an LED,
wherein the electronics layer and the contact layer are directly
coupled and devoid of connecting circuitry.

SUMMARY OF DECISION
We AFFIRM.

ANALYSIS
The lack of written description rejection
The Examiner found that the original disclosure fails to support the
limitation “wherein the electronics layer and the contact layer are directly
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coupled and devoid of connecting circuitry,” as called for by independent
claim 19. Ans. 3. According to the Examiner, because “it is specifically
disclosed that the electrode 20 connects between the two layers,” the
Examiner takes the position that “the electrode 20 is at least part of the
connecting circuitry between the electronics layer and the contact layer.”
Id. (citing to Spec. 10, ll. 16-20 and fig. 4).
Pointing to Figure 4 of Appellant’s Drawings, Appellant argues that
although electrode 20 does connect the electronics layer and the contact
layer, nonetheless, it “does so devoid of connecting circuitry” between the
two layers. App. Br. 16. According to Appellant, the “electronic and
contact layers are directly coupled because . . . there are no connecting
wires.” App. Br. 15.
While we appreciate that there is no in haec verba requirement,
nonetheless, newly added claim limitations must be supported in the
specification through express, implicit, or inherent disclosure. The
fundamental factual inquiry is whether the specification conveys with
reasonable clarity to those skilled in the art that, as of the filing date sought,
applicant was in possession of the invention as now claimed. See, e.g., Vas-
Cath, Inc., v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991).
At the outset, we agree with the Examiner that, “Appellant means to
claim something towards the effect of ‘devoid of connecting wires.’” Ans.
8. However, we must be careful not to read a particular embodiment
appearing in the written description into the claim if the claim language is
broader than the embodiment. See SuperGuide Corp. v. DirecTV Enters.,
Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). Here, Appellant’s Specification
does not expressly define the term “circuitry” or otherwise indicate that this
term is used in a manner other than its ordinary and customary meaning.
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Hence, we find that an ordinary and customary meaning of the term
“circuitry” is “the components of an electric circuit,” that is, the components
of “the complete path of an electric current including usually the source of
electric energy.” MERRIAM WEBSTER’S COLLEGIATE DICTIONARY (10th Ed.
1997). As such, because electrode 20 traverses both electronics layer 8 and
contact layer 10, while providing a path for an electric current from power
supply 14 to a patient, we agree with the Examiner that electrode 20 is “part
of the connecting circuitry between the electronics layer and the contact
layer.” See Ans. 3.
We thus conclude that Appellant’s Specification does not reasonably
convey to those skilled in the art that Appellant had possession of the subject
matter of claims 19, 20, and 22-24 as of the filing date of the present
application. Therefore, we sustain the rejection of claims 19, 20, and 22-24
under 35 U.S.C. § 112, first paragraph, for failing to comply with the written
description requirement.

The obviousness rejection
Claims 1, 2, and 6
The Examiner found that Michelson discloses “an electronics layer
further comprising . . . at least one wireless electrode (42)” and “a patient
contact layer further comprising . . . at least one wireless electrode (41).”
Ans. 3-4; see also App. Br., Clms. App’x. The Examiner further notes that:
Examiner is pointing out where the electronics
layer is when pointing out where the
microprocessor [6] and the at least one wireless
electrode [42] is. Similarly, when Examiner points
out where the at least one wireless electrode [41]
and the electrically conductive patient attachment
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material [27] are located, Examiner is also pointing
out where the patient contact layer is located.
Ans. 6.
Pointing to Figure 18 of Michelson, Appellant argues that “reference
character 41 is not the ‘at least one wireless electrode,’ and reference
character 42 has absolutely nothing to do with any electronics layer.” App.
Br. 11. According to Appellant, the reference characters 41 and 42, in
Michelson, “do not correspond to the purported structure.” Reply Br. 4.
We are not persuaded by Appellant’s arguments because, as noted
above, the Examiner found that Michelson discloses an electronics layer
including microprocessor 6 and wireless electrode 42 and a patient contact
layer including wireless electrode 41 and patient attachment material 27.
Although we appreciate Appellant’s position that reference characters 41
and 42 refer to the external and the internal sides of electrode 5, nonetheless,
such an interpretation of Michelson’s electrode 5 is consistent with
Appellant’s description of “one electrode 20 . . . [that] traverses the housing
of electronics layer 8 and contact layer 10.” See Spec. 11, ll. 15-17.
Appellant has not come forth with any persuasive evidence to show error in
the Examiner’s findings.
The Examiner further found that “the electronics layer and patient
contact layer of Michelson et al. are stackable directly upon one another.”
Ans. 4.
In response, pointing to Figure 3 of Michelson, Appellant argues that,
“plug 9 would have to impossibly fold over upon itself to place electronic
module 1 and electronic module 5 on top of one another.” App. Br. 13; see
also Reply Br. 3. We do not agree with Appellant’s position because, like
the Examiner, we find that if two objects are capable of being placed directly
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upon one another, then they are “stackable.” See Ans. 4. For example,
although we appreciate that plug 9 cannot fold over itself, nonetheless,
flexible non-conductive carrier 19, which is attached to electrodes 5, is
capable of folding over itself such as to place electronics layer including
microprocessor 6 and wireless electrode 42 on top of patient contact layer
including wireless electrode 41 and patient attachment material 27. See e.g.,
Michelson, fig. 6.
Finally, “[r]egarding the limitation that the electronics layer and the
patient contact layer are stackable in the same footprint,” the Examiner
concluded that, “it would have been obvious to one of ordinary skill in the
art to configure the invention of Michelson et al. in such a manner,” because
“there is no criticality in this particular configuration.” Ans. 4. We agree.
“[W]hen a patent ‘simply arranges old elements with each performing
the same function it had been known to perform’ and yields no more than
one would expect from such an arrangement, the combination is obvious.”
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007) (quoting Sakraida
v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)). This principle applies when the
old elements in the prior art perform the same function as the now claimed
structures. See In re Kuhle, 526 F.2d 553, 555 (CCPA 1975). In this case,
we agree with the Examiner “that both the present invention and the prior art
invention would perform the function of a pre-programmed wireless
electrotherapy device equally well regardless of whether the two layers are
stackable in the same footprint or not.” Ans. 4. Appellant has not come
forth with any persuasive evidence to show otherwise. Moreover, attorney
argument such as “criticality is clear from the specification and prosecution
history in that the invention is attempting to make the two components
(patient contact and electronics) to be more integral” (see Reply Br. 3)
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cannot take the place of evidence in the record. Estee Lauder, Inc. v.
L'Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997).
Lastly, Appellant argues that the “Examiner fails to show any prior art
motivation for making the modification.” App. Br. 13. This argument
appears to be holding the Examiner to the old teaching, suggestion, or
motivation (“TSM”) standard where there must be some suggestion or
motivation, either in the references themselves or in the knowledge generally
available to one of ordinary skill in the art, to modify the reference or to
combine reference teachings; such a standard is not required. KSR, 550 U.S.
at 415.
In conclusion, for the foregoing reasons, we sustain the rejection of
independent claim 1 under 35 U.S.C. § 103(a) as unpatentable over
Michelson.
Appellant does not make any other arguments with respect to the
rejection of claims 2 and 6, which depend from claim 1. App. Br. 14.
Accordingly, we likewise sustain the rejection of claims 2 and 6 over the
modified teachings of Michelson.

Claims 19, 20, and 22-24
Appellant argues that Michelson fails to disclose, “an electronic[s]
layer and [a] contact layer ‘directly coupled and devoid of connecting
circuitry.’” App. Br. 14.
In response, the Examiner points to the lack of written description
rejection, which states that, “the electrode 20 is at least part of the
connecting circuitry between the electronics layer and the contact layer.”
Ans. 3 and 7-8.
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We do not agree with the Examiner’s position for the following
reasons. As noted above, the Examiner found that Michelson discloses an
electronics layer including microprocessor 6 and wireless electrode 42 and a
patient contact layer including wireless electrode 41 and patient attachment
material 27. See Ans. 3-4, 6. Thus, electrode 5 of Michelson, with external
and internal sides 41, 42, likewise is part of the connecting circuitry between
the electronics layer and the contact layer, as defined by the Examiner. As
such, Michelson fails to disclose an electronics layer and a contact layer that
“are directly coupled and devoid of connecting circuitry,” as called for by
independent claim 19. Emphasis added.
The Examiner’s proposed modification of Michelson does not remedy
the deficiency of Michelson as described supra. Therefore, we do not
sustain the rejection of independent claim 19, and its respective dependent
claims 20 and 22-24 under 35 U.S.C. § 103(a) as unpatentable over
Michelson. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988).

SUMMARY
The Examiner’s decision to reject claims 19, 20, and 22-24 under 35
U.S.C. § 112, first paragraph, for failing to comply with the written
description requirement is affirmed.
The decision of the Examiner is affirmed as to claims 1, 2, and 6 and
reversed as to claims 19, 20, and 22-24 under 35 U.S.C. § 103(a) as
unpatentable over Michelson.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED
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