Ex Parte Pastrick et al

Patent Trial and Appeal Board

Sep 29, 2017

13352319 (P.T.A.B. Sep. 29, 2017)

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.
13/352,319 01/17/2012 John J. Pastrick 00116/0005US 6884
41939 7590 10/02/2017
JEANNE E. LONGMUIR
2836 CORYDON ROAD
CLEVELAND HEIGHTS, OH 44118
EXAMINER
HULL, JAMES B
ART UNIT PAPER NUMBER
3715
MAIL DATE DELIVERY MODE
10/02/2017 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 JOHN J. PASTRICK and TIMOTHY E. LINT
Appeal 2016-001286
Application 13/352,319
Technology Center 3700
Before: STEVEN D.A. MCCARTHY, NATHAN A. ENGELS, and
ERIC C. JESCHKE, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge ENGELS.
Opinion dissenting filed by Administrative Patent Judge MCCARTHY.
ENGELS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1—5, 7, and 10-12. No other claims are pending. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal 2016-001286
Application 13/352,319
ILLUSTRATIVE CLAIM
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. An improved automated external defibrillator training pad
and liner assembly,
the assembly having an electrical lead connection
supported on the training pad,
the training pad having an adhesive surface and a contact
surface,
the liner having an engagement surface for repeated
adhesive engagement with a portion of the training pad adhesive
surface during storage of the assembly,
the training pad adhesive surface having an electrical-
mechanical switch with a protruding portion protruding from the
training pad and interconnected with the electrical lead
connection, and
the liner having a recess positioned for engagement
adjacent the electrical-mechanical switch to prevent the
protruding portion of the electrical-mechanical switch from
being compressed or depressed by the liner during storage of the
assembly.
THE REJECTIONS
Claims 1—5 and 7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable in view of the combination of Pastrick et al. (US 6,969,259 B2;
Nov. 29, 2005), Bracho (US 2008/0036740 Al; Feb. 14, 2008), and
McClanahan (US 5,374,195; Dec. 20, 1994) in further view of K&J
Magnetics, Inc., https://www.kjmagnetics.com/blog.asp?p=reed-switches-
and-hall-effect-sensors (2014) (“K&J”).
Claims 10 and 12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable in view of the combination of Pastrick and Bracho, in further
view of K&J.
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Application 13/352,319
Claim 11 stands rejected under 35 U.S.C. 103(a) as unpatentable over
Pastrick, Bracho, K&J, and Chavana, Jr. et al. (US 2011/0214686 Al; Sept.
8,2011).
ANALYSIS
Claim 1 recites a “training pad adhesive surface having an electrical-
mechanical switch with a protruding portion protruding from the training
pad” and a “liner having a recess ... to prevent the protruding portion of the
electrical-mechanical switch from being compressed or depressed by the
liner during storage,” among other limitations. App. Br. 15 (Claims App’x).
The Examiner concludes that the broadest reasonable interpretation of the
claimed “electrical-mechanical switch” includes a switch having electrical
and mechanical parts, and the Examiner finds a reed switch disclosed as part
of Pastrick’s defibrillator-training device satisfies that interpretation. Final
Act. 4 (citing Pastrick 4:56—63); Ans. 9. The Examiner additionally cites
Bracho as evidence that a mechanical switch is a known substitute for other
sensors and switches. Final Act. 5 (citing Bracho 117). Further, the
Examiner cites McClanahan as evidencing an opening or guard ring
positioned around a pressure-sensitive switch to prevent activation of the
switch during storage. Final Act. 5—6 (citing McClanahan Abstract, 4:29—
46).
Appellants argue that Pastrick’s reed switch is an electrical switch, not
an electrical-mechanical switch as claimed. App. Br. 7—8; Reply Br. 1. To
distinguish a reed switch from the electrical-mechanical switch of claim 1,
Appellants argue a reed switch cannot be mechanically operated by physical
manipulation or interaction of a user. App. Br. 7—8; Reply Br. 1. Appellants
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Application 13/352,319
further argue “[t]he terms ‘depress’ and ‘compress’ in Claim 1 are
specifically recited to provide the mechanical movement or physical action
necessary to activate the claimed and non-obvious electrical-mechanical
switch.” App. Br. 9; accord App. Br. 8 (citing Spec. 128 (“switch 22 will
become depressed and activated when the training pad 14 is applied”)).
Contrary to Appellant’s arguments that the term “depress” requires
the switch to be mechanically operated, Appellants’ original claims (which
are part of the Specification) also describe an electrical switch as a switch
that is “depressed for activation.” Spec. 13 (original claim 3, reciting
“wherein the electrical switch is depressed for activation”) (emphasis
added). More importantly though, claim 1 does not positively recite
depressing or compressing a switch. See Ans. 10.
Claim 1 affirmatively recites a “liner having a recess,” and claim 1
uses the terms “depressed or compressed” to describe the purpose of the
recess. More specifically, claim 1 recites a liner having a recess positioned
to prevent the protruding portion of the electrical-mechanical switch from
being compressed or depressed during storage of the claimed assembly.
App. Br. 15 (Claims App’x). Appellants’ Specification similarly recites a
liner having a recess to prevent activation of an electrical switch. Spec.,
Abstract (“The improved liner has a recess positioned for engagement
adjacent the electrical switch to prevent activation of the electrical switch by
the liner during storage of the assembly when the pad and liner are adhered
together.”); Spec. 13 (original claim 1 reciting “the liner having a recess
positioned for engagement adjacent the electrical switch to prevent
activation of the electrical switch by the liner during storage of the
assembly”) (emphasis added).
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Application 13/352,319
Further, we find nothing in Appellants’ Specification or elsewhere in
the evidence of record that could limit the claimed electrical-mechanical
switch to a switch that requires direct physical manipulation or interaction
by a user. In fact, as noted by the Examiner (Advisory Act. 2), Appellants’
Specification does not use the term “electrical-mechanical switch,” much
less define it. As such, considering the plain language of claim 1, read in
light of Appellants’ Specification, we disagree with Appellants and agree
with the Examiner that the broadest reasonable interpretation of the claimed
“electrical-mechanical switch” includes the reed switch disclosed in
Pastrick. See Ans. 9-10 (explaining that the broadest reasonable
interpretation of “electrical-mechanical switch” includes a switch having
electrical and mechanical parts, such as a reed switch).
Appellants additionally argue the Examiner’s combination of
references is improper. App. Br. 9—11. Appellants contend Bracho teaches
an electronic pen or mouse that uses a sensor to detect when the pen is in
contact with a simulated writing face and McClanahan teaches a talking
book that uses an opening or guard ring to prevent activation of a pressure
sensitive switch when the book is closed. App. Br. 9. As such, Appellants
argue the references are not analogous to Appellants’ field of endeavor.
App. Br. 9.
We disagree. The Examiner cites Pastrick’s disclosures of a reed
switch as a type of proximity sensor. Final Act. 5 (citing Pastrick 4:56—63).
The Examiner cites Bracho as additional evidence that proximity sensors
and other types of switches, including mechanical switches, were known
substitutes used for detecting when a device has been placed in contact with
a surface. Final Act. 5 (citing Bracho 117). Notably, Appellants’
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Application 13/352,319
Specification also evidences that proximity sensors and switches are
substitutes that can be used to detect the location of one object with respect
to another (e.g., the location of the pad with respect to the liner). Spec. 6—7
(describing use of “switch 22” or, alternatively, a proximity switch), 14
(original claim 6 stating “wherein the electrical switch is a proximity
switch”).
Similarly, the Examiner cites McClanahan as evidencing that it was
known to use an opening or guard ring to prevent activation of a switch or
sensor during storage. Final Act. 5—6. Appellants’ Specification expressly
describes the purpose of the claimed recess as the cited problem addressed
by McClanahan—preventing a switch from being compressed or depressed
by the liner during storage. See Spec., Abstract (“The improved liner has a
recess positioned for engagement adjacent the electrical switch to prevent
activation of the electrical switch by the liner during storage of the assembly
when the pad and liner are adhered together.”). Accordingly, we disagree
with Appellants and agree with the Examiner that McClanahan is reasonably
pertinent to the problem solved in claim 1.
We also disagree with Appellants’ arguments that the Examiner fails
to provide adequate reasons for combining the cited art, absent
impermissible hindsight. App. Br. 11. The Examiner’s rejection cites the
secondary references to evidence elements that were known in the prior art,
not for bodily incorporation or combination of the prior art devices. As the
cited prior art evidences that claim 1 recites a combination of familiar
elements according to known methods that does no more than yield
predictable results, we agree with the Examiner that claim 1 would have
been obvious in view of the combined teachings of the prior art.
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Application 13/352,319
Accordingly, we sustain the Examiner’s rejection of claim 1, as well as the
Examiner’s rejection of claims 2-4 and 7, which Appellants do not address
separately. See App. Br. 11.
Appellants separately address claim 5, which depends from claim 1
and additionally recites limitations relating to the size of the claimed recess.
App. Br. 11—12. Appellants merely paraphrase claim 5, though, and state
that the prior art does not teach or suggest the claimed subject matter. Such
statements are unpersuasive of error. In reLovin, 652 F.3d 1349, 1357 (Fed.
Cir. 2011) (appellants must advance substantive arguments beyond mere
recitation of the claim elements and naked assertions that the corresponding
elements were not found in the prior art). Accordingly, we sustain the
rejection of claim 5 for the same reasons discussed above.
Addressing claims 10 and 12, Appellants argue the Examiner failed to
provide adequate reasoning for substituting a switch or sensor such as those
disclosed in Bracho for the sensor disclosed in Pastrick. App. Br. 12—13.
The Examiner’s rejection cites Pastrick for each element of claim 10 except
a switch activated upon physical contact to depress or compress the
protruding switch, for which the Examiner cites Bracho as evidencing that
mechanical switches were known substitutes for other types of switches and
sensors. Final Act. 7—8. For the same reasons discussed above, we agree
with the Examiner that substituting a mechanical switch or proximity sensor
that is activated by physical contact (as taught by Bracho) for the equivalent
proximity sensor taught by Pastrick would have combined known elements
according to their known function yielding the predictable results of
allowing the system to detect when the pad has been placed in contact with
the surface of a manikin and ready for use. See Final Act. 8; Ans. 13—14.
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Application 13/352,319
Finally, Appellants also separately address claim 11, which recites in
relevant part “once activated, the automated external defibrillator training
device ignores further deactivation signals from each training pad.” App.
Br. 16 (Claims App’x). The Examiner interprets that limitation to mean “a
device that delays deactivation,” explaining that “the broadest reasonable
interpretation of the term ‘ignore’ may include refraining from deactivation
for any length of time.” Final Act. 9; Ans. 14. Applying that interpretation,
the Examiner cites Chivana’s disclosure of a device that is configured to
delay deactivation for a period of time after receiving a deactivation signal.
See Ans. 14 (citing Chivana 8, 19).
Appellants argue claim 11 requires “continued operation of the system
after an initial and proper adherence of the adhesive surface of each training
pad for activation.” App. Br. 13—14. Appellants argue that, unlike claim 11,
Chivana merely teaches a delayed operation. App. Br. 14.
We agree with Appellants that the Examiner erred in interpreting
claim 11 to include Chivana’s timed deactivation. Relevant to the
deactivation limitation, Appellants’ Specification describes that “once each
pad is activated, the AED training device ignores further deactivation signals
which may be provided if a switch is not adhered or held down, until the
training session is completed.” Spec.l 36. Based on the plain language of
claim 11 read in light of Appellants’ Specification, we disagree with the
Examiner that “ignoring” a deactivation signal as claimed would include a
device that delays acting upon a deactivation signal for a predetermined
amount of time, such as the device disclosed in Chivana. Accordingly, we
do not sustain the Examiner’s rejection of claim 11.
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Application 13/352,319
DECISION
For the above reasons, we affirm the Examiner’s rejections of claims
1—5, 7, 10, and 12, and we reverse the Examiner’s rejection of claim 11.
No time period for taking any subsequent action in connection with
this appeal maybe extended. 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN J. PASTRICK and TIMOTHY E. LINT
Appeal 2016-001286
Application 13/352,319
Technology Center 3700
Before: STEVEN D.A. McCARTHY, NATHAN A. ENGELS, and
ERIC C. JESCHKE, Administrative Patent Judges.
McCARTHY, Administrative Patent Judge, dissenting.
The Examiner rejects claims 1—5 and 7 under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Pastrick et al. (US 6,969,259 B2, issued
Nov. 29, 2005), Bracho (US 2008/0036740 Al, publ. Feb. 14, 2008),
McClanahan (US 5,374,195, issued Dec. 20, 1994) and K&J Magnetics,
Inc., https://www.kjmagnetics.com/blog.asp?p=reed-switches-and-hall-
effect-sensors (2014) (“K&J”);1 claims 10 and 12 under § 103(a) as being
unpatentable over Pastrick, Bracho and K&J; and claim 11 under 103(a) as
unpatentable over Pastrick, Bracho, K&J, and Chavana (US 2011/0214686
Al, publ. Sept. 8, 2011). I agree with my colleagues’ decision to affirm the
rejection of claims 10—12. I do not agree with their decision to affirm the
rejection of claims 1—5 and 7.
Independent claim 1 recites:
1 K&J is not prior art to the appealed claims. Its sole use in this
proceeding is to explain the teachings of the primary reference, Pastrick.
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Application 13/352,319
1. An improved automated external defibrillator training pad
and liner assembly,
the assembly having an electrical lead connection
supported on the training pad,
the training pad having an adhesive surface and a contact
surface,
the liner having an engagement surface for repeated
adhesive engagement with a portion of the training pad adhesive
surface during storage of the assembly,
the training pad adhesive surface having an electrical-
mechanical switch with a protruding portion protruding from the
training pad and interconnected with the electrical lead
connection, and
the liner having a recess positioned for engagement
adjacent the electrical-mechanical switch to prevent the
protruding portion of the electrical-mechanical switch from
being compressed or depressed by the liner during storage of the
assembly.
Pastrick describes a CPR-AED2 training device 10 for use in
combination with a manikin 100. The training device 10 permits a trainee to
perform simulated defibrillation. (See Pastrick, col. 2, 11. 26—34). In
particular, the training device 10 permits a trainee to practice securing
removable electrode pads 120 to a patient, as represented by the manikin 100.
(See Pastrick, col. 3,11. 27—30).
The removable electrode pads 120 of Pastrick’s training device 10
include electronic sensors for detecting when the pads a secured at or near a
2 “CPR” is an abbreviation for cardiopulmonary resuscitation (see
Pastrick, col. 1,11. 13—19), a technique for reviving an unconscious patient.
“AED” is an abbreviation for automatic external defibrillation, a technique
that uses adhesive pads to delivery electrical therapy to a patient in cardiac
arrest. (See Spec., para. 3).
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location on the manikin 100 corresponding to the correct location on a
patient’s torso. One such sensor includes a pair of conductive paths 132 ,
134, depicted in Figure 8 as lying on a bottom surface of a pad 120. When
the pad 120 is placed over a target 170 mounted on or in the manikin 100,
the target connects the conductive paths 132,134 to generate a signal
indicating that the pad is correctly positioned in the manikin. (See Pastrick,
col. 4,11. 7—12 & 3647). Alternatively, Pastrick teaches attaching a reed
switch to an outer surface layer of the electrode pad 120. The reed switch
closes to generate a signal indicating that the pad 120 is correctly positioned
in the manikin 100 when the pad is brought into close proximity to a
magnetized target 170. (See Pastrick, col. 4,11. 54—61).
Bracho describes a pointing device 10 including an optical tracking
mechanism 16 enabling a display system to track and display the movement
of the pointing device during a presentation in order to enhance the visual
aspects of the presentation. (See Bracho, paras. 16, 21 & 22). Bracho
teaches that, “adjacent to tracking mechanism 16 there is an activating or
contact sensor 20. Sensor 20 could be a mechanical switch, a proximity
sensor or other similar sensor. Sensor 20 is used to detect when the device
10 has been placed in contact with a surface and is ready to be used.”
(Bracho, para. 17).
McClanahan describes a “talking book,” that is, a book including both
printed matter and electronic circuitry for providing sounds (such as a voice
reading the printed matter). (See McClanahan, col. 1,11. 11—15; col. 2,11.
39-42; & Fig. 1). The talking book includes pressure or heat-sensitive
switches associated with particular pages to signal the electronic circuitry to
generate sound. (See McClanahan, col. 3,11. 6—15). Each page includes a
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core 30 covered with informational sheets 32. The switches 28 are mounted
on inserts 40 positioned in channels 38 in the core 30. (See McClanahan,
col. 3,11. 25—20 & 35—38). Each switch 28 includes an activation pad 46
that may protrude out of the channel 38 to indicate the position of the switch
on the page. McClanahan teaches surrounding the protruding portion of the
switch 28 with a guard ring, so that the channel 38 and the guard ring
together prevent the switch from activating when the pages of the book are
closed. (See McClanahan, col. 4,11. 29-38).
The Examiner finds that the reed switch described by Pastrick
corresponds to the “electrical-mechanical switch” recited in claim 1. (See
Final Office Action, mailed May 13, 2014 (“Final Act.”), at 4). The
Examiner finds that Pastrick fails to teach a “liner having a recess positioned
for engagement adjacent the electrical-mechanical switch to prevent the
protruding portion of the electrical-mechanical switch from being
compressed or depressed by the liner during storage of the assembly,” as
recited in claim 1. The Examiner concludes that it would have been obvious
“to incorporate an opening in the pad liner adjacent the protruding proximity
switch, as taught by McClanahan, into the pad/liner of Pastrick, in order to
prevent activation of the switch/sensor while the device is not in use (i.e.,
when the pad liner is attached to the pad surface).” (Final Act. 6).
For purposes of the present opinion, I may set aside the questions
whether the reed switch described by Pastrick is an “electrical-mechanical
switch;” and whether Bracho or McCalanahan is non-analogous art. The
Examiner’s reasoning for combining the teachings of Pastrick and
McClanahan, as set forth on page 6 of the Final Action and page 11 of the
Examiner’s Answer, mailed September 9, 2015, indicates that it would have
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been obvious to protect a reed switch protruding from Pastrick’s electrode
pad from unintended activation by providing an opening in a liner at a
location corresponding to the reed switch. McClanahan teaches providing
such an opening in a core 30 of a page of a talking book for the purpose of
preventing the unintended actuation of a pressure switch. McClanahan’s
teachings would not have suggested a need to provide similar protection for
a reed switch actuable by a magnetic field. (See App. Br. 11).
The Examiner concludes that it would have been obvious:
to incorporate a switch or sensor for activating an electronic
device, including a mechanical switch or a proximity sensor, as
taught by Bracho, in the AED pad device of Pastrick, in order to
allow the system to detect when the pad device has been placed
in contact with a surface of a manikin.
(Final Act. 5). The Examiner may have intended to find on the basis of
Bracho’s teachings that mechanical switches and proximity switches are
interchangeably, thereby providing a rational underpinning for the
conclusion that it would have been obvious to substitute a mechanical switch
for Pastrick’s reed switch. Such a proposed modification might have
justified reliance on the teachings of McClanahan.
I need not address the merit of such a finding and conclusion,
however, because the Examiner did not place the Appellants on notice that
such a finding and conclusion had been reached. Given what the Examiner
actually said in this case, I would reverse the rejection of claims 1—5 and 7,
with the understanding that the Examiner would have the opportunity to
further explore the teachings of Pastrick, Bracho and McClanahan; and that
the Appellants would have the opportunity to respond to any ground of
rejection the Examiner might subsequently enter. Because my colleagues
have chosen to affirm the rejection of claims 1—5 and 7,1 dissent.
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