Ex Parte Sliepen et al

Board of Patent Appeals and Interferences

Aug 13, 2012

11231116 (B.P.A.I. Aug. 13, 2012)

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.
11/231,116 09/20/2005 Robert Sliepen 71888 8339
23872 7590 08/13/2012
MCGLEW & TUTTLE, PC
P.O. BOX 9227
SCARBOROUGH STATION
SCARBOROUGH, NY 10510-9227
EXAMINER
BEHRINGER, LUTHER G
ART UNIT PAPER NUMBER
3766
MAIL DATE DELIVERY MODE
08/13/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ROBERT SLIEPEN and FRANK SATTLER
__________

Appeal 2010-001529
Application 11/231,116
Technology Center 3700
___________

Before JOSEPH F. RUGGIERO, BRADLEY W. BAUMEISTER, and
JENNIFER S. BISK, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL
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SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejections of claims 5-10, 14, and 19-31:
1. Claims 5-10, 14, and 19-26 stand rejected under
35 U.S.C. § 103(a) as obvious over Appelt (US 6,995,665 B2; issued
Feb. 7, 2006; filed June 30, 2003) and Matthews (US 7,245,956 B2;
issued July 17, 2007; filed Aug. 17, 2004); and
2. Claims 27-31 stand rejected under 35 U.S.C. § 103(a) as
obvious over Klefstad-Sillonville (US 7,319,895 B2; issued Jan. 15,
2008; filed Aug. 11, 2004) and Matthews.
We affirm in part.

INVENTION
Appellants disclose an “occupational safety product” that is worn by
its user and includes a “contactless” electrode for measuring a physiological
parameter, e.g., electrocardiogram (ECG) parameter. (Spec. ¶¶ 2-3.) By
“contactless,” Appellants mean the electrode does not contact the user’s
skin. (Spec. ¶ 7.)

OBVIOUSNESS REJECTION OF CLAIMS 5-10, 14, AND 19-26 OVER
APPELT AND MATTHEWS
1. APPELT
Appelt discloses “safety personnel” equipment that is worn by its user
and includes sensors for measuring environmental and physiological
parameters. (Abstract.) Appelt’s Figure 6, reproduced below, depicts a
perspective view of an exemplary mask 200 (“system”) and included sensor
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202 (“sensor assembly”) for measuring ambient temperature. (Col. 5, ll. 28-
30; col. 11, ll. 20-31.)

Appelt’s Figure 6 depicts a perspective view of the reference’s
mask embodiment.
Appelt’s invention is not limited to the illustrated embodiment, but
rather encompasses a variety of equipment and included physiological
sensors. The disclosed equipment includes “any type of clothing such as a
coat, vest, hat, apron, boots and/or gloves,” as well as “helmets, visors,
hoods, face masks, oxygen tanks, air bottles, self-contained breathing
apparatus (SCBA), chemical suits and any other type of clothing or device
which may be worn.” (Col. 6, ll. 1-12.) The disclosed physiological sensors
measure “respiration rate, blood oxygen level, core body temperature, heart
rate and/or any other physiological condition required.” (Col. 7, ll. 59-64;
Fig. 12.) Except for the illustrated sensor 202, Appelt summarily and
collectively describes the sensors as being placed at “optimum locations.”
(Col. 4, ll. 1-5.)
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2. MATTHEWS
Matthews discloses a “system for unobtrusively measuring bioelectric
signals” (Abstract), which is described as follows (col. 5, ll. 25-32; see also
col. 2, ll. 43-49):
Regardless of the particular implementation, the sensor system
of the invention is integrated into an object against which an
individual rests to enable bioelectric signals to be continuously
measured in an extremely convenient, unobtrusive and effective
manner, with little or no intervention needed on the part of the
individual producing the bioelectric field being measured.
The sensors need only be “carried by an object against which the individual
is positioned,” such that “the object serves as mounting structure that holds
the sensors in place relative to both each other and the individual to assure
proper system operation.” (Col. 2, ll. 23-30.)
3. INDEPENDENT CLAIM 10
Independent claim 10 reads as follows:
10. An occupational safety product system, comprising:
an occupational safety product part worn by a user of the
occupational safety product; and
a contactless measuring electrode arranged inside said
occupational safety product part for contactless measurement of
physiological parameters of the user of the occupational safety
product.
Claim 10 recites an “occupational safety product system” including a
“safety product part worn by a user” and a “contactless measuring electrode
arranged inside said occupational safety product part for contactless
measurement of physiological parameters.” The Examiner found Appelt
teaches all but the “contactless” performance and “inside” arrangement of
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the contactless physiological sensor (herein “CPS”).1 (Ans. 6.) The
Examiner determined, in view of Matthews, that it would have been obvious
to embed a CPS inside of Appelt’s equipment “for more user comfort” and
“non-invasive monitoring.” (Id.)
We agree with the Examiner. All of Appelt’s disclosed equipment
(Col. 6, ll. 1-12) constitutes a “safety product part worn by a user” (claim
10). Thus, if it would have been obvious to implement any of Appelt’s
sensors as a CPS in view of Matthews, the subject matter of claim 10 is
obvious over Appelt and Matthews. The references suggest this
implementation because:
 Appelt unrestrictedly describes its physiological sensors as
measuring any “physiological condition required.” (Col. 7, ll. 59-
64.)
 Appellants’ Specification confirms that, in the field of monitoring
safety personnel, “physiological condition required” would have
been understood as including ECG parameters. (Spec. ¶ 3.)
 Matthews teaches that ECG parameters can be unobtrusively
measured by CPSs (col. 2, ll. 23-28; col. 3, ll. 49-51) embedded
within a “structure that holds the sensors in place relative to both
each other and the individual” (col. 2, ll. 23-30).

1 For convenience, we refer to an electrode for contactless measurement of
physiological parameters – both as claimed and generally (see, e.g.,
Matthews col. 1, l. 54 – col. 2, l. 3) – as a “contactless physiological sensor”
or “CPS.” We do so with the understanding that not all sensors include
sensing electrodes, e.g., a mercury thermometer.
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Given the above, it would have been obvious to monitor physiological
parameters of safety personnel. Further, it would have been obvious to
unobtrusively do so by embedding CPSs within safety personnel equipment
that can hold the sensors in place, e.g., by embedding CPSs for ECG
monitoring within a vest.
Appellants argue “[t]he benefit that is disclosed in Matthews is only
disclosed as benefitting a user when the electrodes in Matthews are used in a
support structure such as a chair bed or the like.” (App. Br. 9; see also
Reply Br. 2.) We disagree. Matthews teaches that a CPS may be embedded
in any “object against which an individual rests to enable bioelectric signals
to be continuously measured . . . with little or no intervention.” (Col. 5, ll.
25-32; see also col. 2, ll. 43-49.) A skilled artisan would have understood
many wearable objects, e.g., a vest, as meeting Matthews’s “object” criteria.
See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (“A person of ordinary
skill is also a person of ordinary creativity, not an automaton.”).
Appellants argue that the rejection relies on the mask 200 and sensor
202 of Appelt’s Figure 6, but “[t]here is no disclosure . . . of how the sensor
assembly 202 could or should measure anything internal to the mask.”
(App. Br. 11.) The Examiner has confirmed, however, that Appelt’s sensor
202 is not relied upon. (Ans. 9.) Further, the argument is incommensurate
in scope with claim 10, which does not require the CPS to be part of a
“mask” or to have an “internal” arrangement. Note the Specification
indicates that “inside said occupational safety product part” (claim 10)
means incorporated within the product material; that is, not alternatively
placed on (e.g., clipped on) the product material. (Spec. ¶ 22.) As required
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by claim 10’s “inside” limitation, the proposed modification embeds a CPS
within Appelt’s equipment in view of Matthews. (Ans. 6.)
Appellants argue that a skilled artisan “familiar with” Appelt’s safety
personnel equipment would “not be led by Matthews, which applies to
hospital or medical environments.” (App. Br. 13; see also Reply Br. 2, 4.)
The argument is misplaced. So long as the references are analogous art, they
are considered for all teachings by way of technology. See EWP Corp. v.
Reliance Universal Inc., 755 F.2d 898, 907 (Fed. Cir. 1985) (“A reference
must be considered for everything it teaches by way of technology and is not
limited to the particular invention it is describing and attempting to
protect.”), cert. denied, 474 U.S. 843 (1985). Appellants have not shown
that either reference is nonanalogous art, i.e., is neither in the field of
Appellants’ invention nor reasonably pertinent to a problem with which the
present inventors were concerned. See In re Clay, 966 F.2d 656, 658-59
(Fed. Cir. 1992) (“Two criteria have evolved for determining whether prior
art is analogous: (1) whether the art is from the same field of endeavor,
regardless of the problem addressed, and (2) if the reference is not within the
field of the inventor’s endeavor, whether the reference still is reasonably
pertinent to the particular problem with which the inventor is involved.”
(citation omitted)). Note that any such contention would be unpersuasive
because (1) Appelt’s subject matter falls within the field of the invention,
i.e., “occupational safety product” (Spec. ¶ 2); and (2) Matthews’s subject
matter is directed to a problem with which the inventor was concerned, i.e.,
“rapid and reliable arrangement of measuring electrodes” (Spec. ¶ 4).
For the above reasons, the obviousness rejection of claim 10 is
sustained.
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4. DEPENDENT CLAIMS 19 AND 20
Claims 19 and 20 depend from claim 10. Claim 19 adds that the CPS
“is spaced at a pre-defined distance from a skin surface of the user by a
material of said occupational safety product part.” Claim 20 adds that the
CPS “operates through a layer of said occupational safety product part.”
Appellants repeat above-addressed arguments in support of claims 19
and 20. (App. Br. 17-18.) The arguments are not persuasive for the reasons
provided supra.
Appellants also argue that “Matthews does not teach nor suggest that
any contactless electrodes could, would, or should operate through a
material of an occupational safety product part.” (Id.) However, Appellants
acknowledge that a CPS must be separated by its mounting structure from a
skin surface. (Id.) And contrary to Appellants’ contention, the CPSs of
Matthews are indeed “spaced from the user by a layer of material” (col. 2, ll.
31-34).
For the above reasons, the obviousness rejection of claims 19 and 20
is sustained.
5. INDEPENDENT CLAIM 21
Claim 21 recites a “breathing mask” including a “mask body,”
connected “strap,” and CPS “incorporated inside one of said mask body and
said strap.” The Examiner presents essentially the same findings and
determinations presented for claim 10 (Ans. 3-4), but additionally
determines that each of Appelt’s disclosed physiological sensors – and thus
any substituted CPS – would inherently be placed within Appelt’s mask 200
(Ans. 10). Appellants argue “[t]he sensors of Matthews are not in a mask,
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but instead appear to be arranged on a person’s back,” which “teaches away
from the sensors of Appelt being inherently within the mask.” (Reply Br. 3.)
We disagree with Appellants insofar that Matthews does not teach
away from placing a CPS within a mask, but merely describes the invention
by illustrating the CPSs within a chair or gurney. See DePuy Spine, Inc. v.
Medtronic Sofarnor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (“A
reference does not teach away . . . if it merely expresses a general preference
for an alternative invention . . . .”). However, we agree with Appellants
insofar that the Examiner has not articulated why Matthews’s CPS would be
placed within Appelt’s mask 200. Although Appelt discloses generally that
various types of physiological sensors may be placed within any of variously
disclosed articles of “‘protective equipment’ and ‘safety equipment’” (col. 6,
ll. 1-12), the Examiner has not cited evidence that would establish that one
of ordinary skill would have recognized that Matthews’s CPS would be able
to be used to perform an ECG, as intended, when positioned specifically
within a mask, as claimed, as opposed to when positioned within one of the
other multiple pieces of safety or protective equipment that Appelt discloses.
For the above reasons, the obviousness rejection of claim 21 is not
sustained.
6. INDEPENDENT CLAIM 24
Claim 24 recites a “respirator arrangement” including a “respirator,” a
connected “carrying device” and/or “carrying belt,” and a CPS “incorporated
inside one of said respirator, said carrying device and said carrying belt.”
The Examiner presents essentially the same findings and determinations
presented for claim 21 (Ans. 6-7), but additionally determined a skilled
artisan would understood Appelt’s mask 200 “as being an embodiment of a
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respirator” (Ans. 10). As explained supra, the Examiner has not provided
evidence that one of ordinary skill would have recognized that a CPS
designed for performing ECGs would function as intended when placed
specifically within Appelt’s mask 200, nor has the Examiner provided
evidence that one of ordinary skill would have found it obvious to place such
a CPS within the respirator portion 230 (“self-contained breathing apparatus
230”).
For the above reasons, the obviousness rejection of claim 24 is not
sustained.
7. CLAIMS 5-9, 14, 22, 23, 25, AND 26
Claims 5-9, 14, 22, 23, 25, and 26 depend from claims 21 and 24,
addressed supra. For the reasons set forth in relation to claims 21 and 24,
we likewise do not sustain the obviousness rejection of 5-9, 14, 22, 23, 25,
and 26.

OBVIOUSNESS REJECTION OF CLAIMS 27-31 OVER KLEFSTAD-
SILLONVILLE AND MATTHEWS
1. KLEFSTAD-SILLONVILLE
Klefstad-Sillonville discloses a garment for “medical monitoring of
persons undergoing their usual activities . . . . in a high-risk situation,” e.g.,
fire fighters. (Col. 1, ll. 9-26.) Klefstad-Sillonville’s Figure 1, reproduced
below, depicts a schematic view of an exemplary vest 1 (“undergarment”)
and included ECG electrodes 3 (among other sensors 4-6). (Col. 3, ll. 22-25,
33-36.)
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Klefstad-Sillonville’s Figure 1 depicts a schematic view of the
reference’s vest embodiment.
Klefstad-Sillonville increases the user’s comfort by forming “at least
some of the sensors . . . from elastic conducting yarns integrated into and
distributed over the fabric of the garment.” (Col. 2, ll. 18-22.) In one
example, an ECG electrode 3 is “formed by crocheting a fine, flexible, non-
insulated conducting yarn 15 into the fabric 14 in order to form a piece 16
measuring about 2x2 cm2 in area.” (Col. 6, ll. 5-9.)
2. INDEPENDENT CLAIM 27
Independent claim 27 reads as follows:
27. An article of protective clothing for a user, the article
comprising:
at least one contactless measuring electrode for detecting
physiological parameters of the user, said at least one
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contactless measuring electrode being incorporated inside the
article.
Claim 27 recites “an article of protective clothing” including a CPS
“incorporated inside the article.” The Examiner found that Klefstad-
Sillonville teaches all but the “contactless” performance of the claimed CPS.
(Ans. 7-8.) The Examiner determined that, in view of Matthews, it would
have been obvious to replace Klefstad-Sillonville’s physiological sensors 3-
6 with CPSs (Ans. 7-8, 11) “for more user comfort” and “non-invasive
monitoring.” (Ans. 8.)
We agree with the Examiner. Appellants do not dispute that Klefstad-
Sillonville’s medical monitoring vest 1 constitutes protective clothing (App.
Br. 20-22). The only issue is whether it would have been obvious to replace
any of Klefstad-Sillonville’s physiological sensors 3-6 with a CPS of
Matthews. The references suggest this substitution for at least the following
reasons:
 Klefstad-Sillonville’s vest 1 includes ECG electrodes 3. (Col. 3, ll.
33-36.)
 Matthews teaches that ECG parameters can be unobtrusively
measured by CPSs (col. 2, ll. 23-28; col. 3, ll. 49-51) embedded
within a “structure that holds the sensors in place relative to both
each other and the individual” (col. 2, ll. 23-28).
Given the above facts, it would have been obvious to unobtrusively monitor
physiological parameters of safety personnel by replacing at least Klefstad-
Sillonville’s ECG electrodes 3 with Matthews CPSs.
Appellants argue that Klefstad-Sillonville and Matthews “take
opposite and contradicting approaches to recording an electrocardiogram,
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and increasing the comfort of the patient.” (App. Br. 22.) Particularly, the
“main objective of Klefstad[-Sillonville] is a flexible elastic garment with
flexible and elastic sensors and conductors to improve comfort,” while
“Matthews does not teach nor suggest flexible and elastic conductors, or
flexible and elastic sensors.” (App. Br. 20; see also Reply Br. 5-6.) And,
Klefstad-Sillonville places the “flexible and elastic measuring devices
directly against the skin,” while Matthew spaces the “measuring devices
away from the skin.” (App. Br. 22.) Appellants are contending, essentially,
that Klefstad-Sillonville’s use of skin-contacting and flexible sensors teaches
away from using Matthew’s capacitive and presumably inflexible CPSs.
However, at most, Klefstad-Sillonville expresses a mere preference for its
sensors. See DePuy, 567 F.3d at 1327 (“A reference does not teach away . .
. if it merely expresses a general preference . . . .”). In fact, Klefstad-
Sillonville acknowledges that inflexible sensors can be implemented,
particularly in stating that “some of the sensors” are formed of the elastic
conducting yarns (col. 2, ll. 13-22 (emphasis added)) and in teaching how to
add a “non-elastic electronic component 34” (col. 5, ll. 44-46).
Appellants argue that Matthews’s CPSs measure electromagnetic
fields, while Klefstad-Sillonville’s conducting yarns emit electromagnetic
fields that may interfere with such measurements. (App. Br. 21.) However,
Appellants have not provided persuasive evidence that implementing
Matthews’s CPSs within Klefstad-Sillonville’s vest 1 was beyond the skill in
the art, e.g., that such interference would be absolute and too strong to
address. Mere assertions to that effect are not persuasive. See Estee Lauder
Inc. v. L’Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997) (“‘[A]rguments of
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counsel cannot take the place of evidence lacking in the record.’” (citation
omitted)).
Note also that Klefstad-Sillonville’s and Matthews’s components need
not be physically combinable. As explained by the Federal Circuit in
Orthopedic Equip. Co., Inc. v. U.S., 702 F.2d 1005, 1013 (Fed. Cir. 1983)
(citations omitted):
Claims may be obvious in view of a combination of
references, even if the features of one reference cannot be
substituted physically into the structure of the other reference.
What matters in the § 103 nonobviousness determination is
whether a person of ordinary skill in the art, having all of the
teachings of the references before him, is able to produce the
structure defined by the claim. The fact that features of one
reference cannot be substituted into the structure of a second
reference may indicate that the claims were nonobvious in view
of the combined teachings of the two references.
For the above reasons, the obviousness rejection of claim 27 is
sustained.
3. DEPENDENT CLAIMS 28-31
Appellants merely repeat above-addressed arguments in support of
claims 28-31. (App. Br. 22-24.) The arguments are not persuasive for the
reasons provided supra.

DECISIONS
The Examiner’s rejections of claims 10, 19, 20, and 27-31 are
affirmed.
The Examiner’s rejection of claims 5-9, 14 and 21-26 is reversed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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