Ex Parte Weil et al

Board of Patent Appeals and Interferences

Jan 16, 2009

09953032 (B.P.A.I. Jan. 16, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MAX HARRY WEIL, WANCHUN TANG, and JOE BISERA
__________

Appeal 2008-4367
Application 09/953,032
Technology Center 1600
__________

Decided: January 16, 2009
__________

Before ERIC GRIMES, RICHARD M. LEBOVITZ, and MELANIE L.
McCOLLUM, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a chest
compression apparatus. The Examiner has rejected the claims as indefinite
and anticipated. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-
in-part.
BACKGROUND
“Automatic defibrillators use a pair of electrodes applied to the chest
of the victim for sensing EKG (electrocardiograph) signals from the victim”
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and “to deliver a high voltage defibrillator pulse to the victim when
electrocardiograph interpretation permits discharge” (Spec. 2). “Precordial
compression in the area of the breastbone helps blood circulation and
breathing. The rescuer is provided with a verbal warning such as ‘step back’
prior to delivering the shock to protect the rescuer from a high voltage
defibrillator shock” (id.).
The Specification discloses a “sheet . . . for better protecting a rescuer
who is applying compressions to a patient's chest, when high voltage pulses
are being applied to the patient through electrodes” (id. at 3). The sheet
includes a layer of “electrically conductive material sandwiched between
two layers . . . of insulative or dielectric material” (id. at 11). The sheet is
said to avoid “the need for discontinuance of precordial compression by the
rescuer, resulting in a better outcome of the rescue effort” (id. at 2).
DISCUSSION
1. CLAIMS
Claims 1, 3, 6-8, and 10 are on appeal. Claims 2, 4, 5, and 9 are also
pending but have not been appealed. We note that Appellants had
previously sought to cancel these claims (Amendment filed Apr. 8, 2008),
but the amendment was refused entry by the Examiner (Office Action
mailed Apr. 21, 2005). Because Appellants have not disputed their merits,
we summarily affirm the rejections of claims 2, 4, 5, and 9.
Claims 1, 3, 6-8, and 10 read as follows:
Claim 1: Apparatus for use by a rescuer who applies chest
compressions to a victim that has cardiac arrest symptoms treatable by use
of a defibrillator, comprising:
a protector sheet which has upper and lower faces and which resists
the passage of current between said faces, said protector sheet being
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constructed to cover a chest area of the victim with the lower face resting
directly against the victim and the upper face accessible to be pressed down
by the rescuer;
said sheet having upper and lower dielectric layers forming said upper
and lower faces and said sheet having a conductive layer of electrically
conductive material lying between the dielectric layers;
said conductive layer occupying a majority of the area of said
protector sheet upper face;
a connector extending from said conductive layer and having a
termination part adapted for connecting to a potential source.

Claim 3: The apparatus described in claim 1 including said
defibrillator and a pair of electrodes, and wherein:
said defibrillator is connected to said pair of electrodes and said pair
of electrodes lie against the skin of the victim;
said protector sheet lies on the chest of the victim with said lower
dielectric layer against the victim, and said connector engages the skin of the
patient at a location that is spaced at least 1.5 inches from the nearest one of
said electrodes.

Claim 6: The apparatus described in claim 1 including:
means for connecting said connector to a source of electrical potential
which is substantially constant.

Claim 7: Apparatus for use by a rescuer at a site where a victim with
skin and a chest has cardiac arrest symptoms and is being treated by a
defibrillator connected to electrodes lying against spaced electrode locations
on the victim's chest, where the rescuer can press repeatedly against the
middle of the victim's chest, the improvement comprising:
a protective sheet which includes upper and lower dielectric layers
and a conductive layer between said dielectric layers, said lower dielectric
layer having a lower face adapted to lie against the victim's chest and said
upper dielectric layer having an upper face adapted to be repeatedly pressed
down by the rescuer, said conductive layer having an area more than half the
area of said upper face;
a connector which includes a conductor having an inner end
connected to said conductive sheet and an outer end adapted to connect to
the skin of the patient.
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Claim 8: The improvement described in claim 7 wherein:
said conductive layer has an edge and said conductor inner end
connects to said edge of said conductive layer with said connector outer end
being spaced from said edge of said conductive layer and being adapted to
connect to a location on the skin of the patient that is spaced from a location
directly under said conductive layer.

Claim 10: The improvement described in claim 7 wherein:
a quantity of conductive adhesive lying on said conductor outer end
and adapted to connect to the victim's skin.

2. DEFINITENESS
Claims 3, 7, 8, and 10 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
With regard to claim 3, the Examiner concludes that “the claim is
incomplete for omitting structural relationship between elements. The claim
is just a listing of parts. . . . [I]t is unclear how the apparatus can include the
defibrillator and electrodes since the specification has not stated that the
defibrillator and electrodes are part of, or connected to, the protector sheet”
(Ans. 4). The Examiner also concludes that claim 3 is indefinite “for
sounding like there is a connection to the body. Apparatus claims can not
claim connection to the body” (id.).
Appellants argue that “it is sufficient to describe the defibrillator
connected to electrodes that lie against the victim's skin and to describe the
lower dielectric layer of the protector sheet lying against the victim” (App.
Br. 7).
We agree with the Examiner that claim 3 is indefinite. “The
definiteness inquiry focuses on whether those skilled in the art would
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understand the scope of the claim when the claim is read in light of the rest
of the specification.” Union Pacific Resources Co. v. Chesapeake Energy
Corp., 236 F.3d 684, 692 (Fed. Cir. 2001). Here, claim 3 recites the
protector sheet of claim 1 and a defibrillator connected to a pair of
electrodes. The claim also recites that the electrodes “lie against the skin of
the victim,” the protector sheet “lies on the chest of the victim,” and the
sheet’s connector contacts the patient’s skin at a certain distance from an
electrode.
While it seems clear that claim 3 is intended to encompass at least a
protector sheet and a defibrillator having two electrodes, it is not clear
whether the claim requires only a kit that comprises the protector sheet and
defibrillator, or whether the claim requires those components to be used in a
certain way in order for the claim to be infringed. See IPXL Holdings,
L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005) (A single
claim reciting both an apparatus and a method of using that apparatus is
indefinite because it is unclear what acts constitute infringement of the
claim.); In re Nuijten, 500 F.3d 1346, 1354 n.3 (Fed. Cir. 2007) (“[A] claim
that is so unclear as to be ambiguous about whether it covers a process or
machine might be invalid” under 35 U.S.C. § 112, second paragraph.).
Thus, one of skill in the art would not understand the scope of the claim.
With regard to claim 7, the Examiner finds that “the claim is vague for
using the Jepson format but not setting forth what elements are known in the
apparatus. The claim preamble only discusses the defibrillator and not the
apparatus and therefore it is unknown what element(s) are considered to be
prior art” (Ans. 4).
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Appellants argue that the defibrillator is discussed “in the preamble
because it is known” and the protective sheet and connector are discussed
“after the preamble because that is what is new” (App. Br. 8).
We will reverse this rejection. Claim 7 uses some Jepson-type claim
language (“the improvement comprising”), without strictly following that
claim format (which would require a preamble reading “In an apparatus . . . ,
the improvement comprising”). Nevertheless, we conclude that the claim
sets forth with reasonable clarity that the claimed apparatus is the sheet
protector recited in the body of the claim and the preamble describes the
intended use of the sheet protector in conjunction with a defibrillator, as
shown in the Specification (Fig. 2). Thus, one of skill in the art would
understand the scope of the claim as being drawn to the sheet protector
defined in the body of the claim. Claim 8 depends on claim 7; we reverse
the rejection of claim 8 for the same reason.
With regard to claim 10, the Examiner finds that the claim “should
use [the language] ‘further comprising a quantity of conductive adhesive …’
since this is an additional element and since the ‘wherein’ clause should only
define a previously cited element” (Ans. 4).
We will reverse this rejection. Although claim 10 may not use the
preferred language, as indicated by the Examiner, one of skill in the art
would understand the scope of the claim with the language as currently
constituted.
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3. ANTICIPATION I
Claims l and 6-8 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Ferrari. 1
The Examiner finds that “Ferrari shows the conductive layer, 21,
occupying substantially the entire area under the upper face, 33, and shows
the lower face, either element 28 or 31, and the connector located to the side,
…and connected to an upper edge/border of the conductive layer,” where
both the upper face and lower face can be made of insulative material (Ans.
5, citing Ferrari at Figs. 5 and 10). The Examiner further finds that
“Ferrari's apparatus is capable of meeting the functional use recitations” in
claim 1 “since it can be connected anywhere on the body, since the
connector can be connected to the skin or a potential source, since the
electrode can be pressed down by the rescuer” (id.).
We agree with the Examiner that Ferrari discloses all of the
limitations in claim 1. Ferrari discloses a “disposable transcutaneous
electrode …capable of conducting energy sufficient for defibrillation”
(Ferrari, col. 2, ll. 8-10). Fig. 2 of Ferrari is shown below:

1 Ferrari, US 5,824,033, Oct. 20, 1998.
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Fig. 2 is said show “an exploded longitudinal view of the electrodes” (id. at
col. 2, ll. 59-60).
The “electrode 10 … comprises a sheet electrode member 21 of
electrically conductive carbon filled polymer” (id. at col. 3, ll. 29-41).
Ferrari also discloses that the device of Fig. 2 has “[m]eans …for conducting
energy to and from the upper side of the current distributing mat 27” that
“comprises an electrical conductor 35 having an electrically insulative
sheath 36a and a unsheathed end portion 35a that is conductively adhered to
the upper side of the current distributing mat 27” (id. at col. 4, ll. 7-13).
Ferrari also discloses that a gel pad 25 “is preferably disposed within an
opening 28' in a base frame 28 of …electrically insulative foam” and that “a
removable release carrier sheet 31, for example of PTFE, …underlies the gel
pad 25 and covers the latter prior to use” (id. at col. 3, ll. 53-61). Ferrari
also discloses that its device includes an “electrically insulative cover sheet
33 of …electrically insulative foam” (id. at col. 3, ll. 61-65).
Thus, Ferrari’s apparatus comprises a protector sheet (electrode 10)
having upper and lower dielectric layers (cover sheet 33 and carrier sheet
31)2, a conductive layer (electrode member 21) that occupies a majority of
the area of the upper face of the sheet, and a connector (electrical conductor
35) extending from the conductive layer. We agree with the Examiner that
Ferrari’s apparatus includes all the structural limitations of claim 1.

2 PTFE (polytetrafluoroethylene) would be understood by one of the skill in
the art to be dielectric material as shown by the Encyclopedia of Chemical
Technology, pg. 557 (Kirk-Othmer, 1981, Vol. 13, John Wiley & Sons, New
York, New York) which discusses the use of PTFE in insulative materials.
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We also agree with the Examiner that Ferrari’s apparatus is capable of
being used as recited in claim 1. That is, Ferrari’s apparatus is capable of
being placed with the lower face resting on the chest area of a victim, such
that the upper face is accessible to be pressed down, and the connector has a
termination part that can be connected (or “is adapted for connecting”) to a
potential source. Ferrari’s apparatus therefore anticipates claim 1.
Appellants argue that “use of Ferrari's defibrillator electrode; by
leaving his carrier sheet in place instead of removing it, and then using the
electrode to protect a rescuer while he/she applies chest compressions, is
contrary to the purpose of the Ferrari electrode which is to carry a pulse to
the patent [sic],” and that “a designer of rescue equipment, who wanted to
design a sheet that allowed a rescuer to continue to apply chest compressions
to a patient while a defibrillator continued to apply shocks, …would not
have considered using a defibrillator electrode and not remove the carrier
sheet that protects the conductive gel” (App. Br. 4-5).
We do not find this argument to be persuasive. Appellants’ argument
is based on the statement of intended use, in the preamble, of the claimed
sheet protector in conjunction with a defibrillator. “Where . . . a patentee
defines a structurally complete invention in the claim body and uses the
preamble only to state a purpose or intended use for the invention, the
preamble is not a claim limitation.” Rowe v. Dror, 112 F.3d 473, 478 (Fed.
Cir. 1997). Claim 1 recites a structurally complete invention and the
disclosure in the preamble that the claimed product is an apparatus to be
used in conjunction with a defibrillator is a statement of intended use and not
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a claim limitation. Ferrari’s device meets all the limitations of claim 1 and
therefore anticipates it.
Appellants also argue that “the carrier 31 in Ferrari is thin …, so his
electrode actually would not protect the rescuer from shocks” (App. Br. 5).
We do not find this argument to be persuasive. Claim 1 does not
require that the claimed device protect a rescuer from shocks, but only
requires that the device resists the passage of current between the faces.
Given that Ferrari discloses that both of the faces of the device (i.e., 33 and
31) are of insulative material, the Examiner has set forth a reasonable basis
for concluding that the device would resist the passage of current between
the faces.
With regard to claim 6, Appellants argue that Ferrari does not suggest
“connecting [its] electrical connector to a source of constant potential”
because Ferrari describes “applying electricity to or from the patient” and
that if its “conductive layer were connected to a constant potential [its]
electrodes would be of no use” (App. Br. 7).
We are not persuaded by this argument. Claim 6 recites “means for
connecting said connector to a source of electrical potential which is
substantially constant.” The Specification discloses that the structure
corresponding to such means is “a skin contacting terminal part . . . of the
connector” (Spec. 6, ll. 2-4). Ferrari’s device includes electrical conductor
35, which reasonably appears to have a terminal part suitable for connecting
directly or indirectly to a source of electric potential that is substantially
constant. Whether actually doing so would be consistent with Ferrari’s
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intended use of the disclosed device is immaterial; the device meets the
structural limitation recited in claim 6.
With regard to claim 7, Appellants argue that Ferrari shows
“connectors that connect to a defibrillator/ECG monitor” and that there is no
suggestion in the reference of a connector adapted to connect to the skin, as
recited in claim 7, especially since the electrode of the reference has a lower
conductor that is “already intended to connect to the skin and this would lead
to a useless skin-to-skin connection” (App. Br. 8). Similarly, with regard to
claim 8, Appellants argue that, since Ferrari does not “suggest connecting
the conductive layer to the patient's skin” it also does not suggest
“connecting the conductive layer to the victim's skin at a place that is spaced
from under the conductive layer of the protective sheet,” as recited in claim
8 (App. Br. 8-9).
We are not persuaded by this argument. The “adapted to” language of
claims 7 and 8 requires only that the device include a structure that can be
used for the stated purpose. In re Venezia, 530 F.2d 956, 959 (CCPA 1976)
(“[C]laim 31 calls for ‘a pair of sleeves . . . adapted to be fitted over the
insulating jacket of one of said cables.’ . . . [T]his language imparts a
structural limitation to the sleeve. Each sleeve is so structured or
dimensioned that it can be fitted over the insulating jacket of a cable.”)
(emphasis added)).
Ferrari discloses an electrical conductor (i.e. element 35) for
conducting energy to and from the distributing mat (i.e. element 27), which
has an outer end spatially removed from the main body of the electrode.
Therefore, the electrical conductor could be used, as recited in claim 7, for
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“connecting to the skin of a patient” or, as recited in claim 8, for connecting
“to a location on the skin of the patient that is spaced from a location directly
under said conductive layer.” Ferrari’s device therefore meets the
limitations of claims 7 and 8.
4. ANTICIPATION II
Claims l and 6-8 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Axelgaard.3
The Examiner finds that “Axelgaard shows the conductive layer, 22,
occupying substantially the entire area under the upper face, 32, and shows
the lower face, 60, and the connector located to the side, figures 2 and 3, and
connected to an upper edge/border of the conductive layer” (Ans. 6). The
Examiner finds that Axelgaard teaches that the upper and lower face are
made of insulative material (id. at 7). The Examiner further finds that
“Axelgaard's apparatus is capable of meeting the functional use recitations”
in claim 1 “since the electrode is flexible, since it can be connected
anywhere on the body, since the connector can be connected to the skin or a
potential source, and since the electrode can be pressed down by the rescuer”
(id. at 6).
We agree with the Examiner that Axelgaard discloses all of the
limitations in claim 1. Fig. 3 of Axelgaard is shown below:

3 Axelgaard et al., US 4,708,149, Nov. 24, 1987
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Fig. 3 is said to show “a cross-sectional view of the transcutaneous electrical
nerve and/or muscle stimulation electrode” (Axelgaard, col. 3, ll. 49-53).
Axelgaard discloses that
the electrode 10 includes a stretchable conductive fabric 22, flexible
conductive adhesive 24, … for adhering the flexible transcutaneous
electrical nerve and/or muscle stimulation electrode 10 to the skin of a
patient . . . and electrical lead wire 30 interconnected with the
conductive fabric 22 … , for providing electrical signals to the
conductive fabric 22.… In addition, a non-conductive sheet, such as a
flexible plastic 32 disposed on . . . conductive fabric 22 by means of a
pressure sensitive adhesive 38, provides means for preventing
undesired electrical contact with the conductive fabric 22 ….

(Id. at col. 4, ll. 5-20). Axelgaard also discloses that “a release liner 60 may
be provided for storage of the electrode before and after use” and that this
“liner may be of any suitable plastic, or silicon-coated paper” (id. at col. 5,
ll. 47-49).
Thus, Axelgaard’s apparatus comprises a protector sheet (electrode
10) having upper and lower dielectric layers (non-conductive sheet 32 and
release liner 60),4 a conductive layer (conductive fabric 22) that occupies a

4 Plastic would be understood by one of the skill in the art to be dielectric
material as shown by the McGraw-Hill Dictionary of Scientific And
Technical Terms, pg. 1523 (Parker, S.P., ed., 1993, McGraw-Hill Inc., New
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majority of the area of the upper face of the sheet, and a connector (electrical
lead wire 30) extending from the conductive layer. We agree with the
Examiner that Axelgaard’s apparatus includes all the structural limitations of
claim 1.
We also agree with the Examiner that Axelgaard’s apparatus is
capable of being used as recited in claim 1. That is, Axelgaard’s apparatus
is capable of being placed with the lower face resting on the chest area of a
victim, such that the upper face is accessible to be pressed down, and the
connector has a termination part (connector 34) that can be connected (or “is
adapted for connecting”) to a potential source. Axelgaard’s apparatus
therefore anticipates claim 1.
Appellants argue that an “engineer designing [an] apparatus to protect
a rescuer from shocks would not turn to an electrode for passing electricity
to or from the patient” (App. Br. 5).
We do not find this argument to be persuasive. Appellants’ argument
appears to be drawn to the statement of intended use, in the preamble, of the
claimed sheet protector in conjunction with a defibrillator. As discussed
above, because claim 1 recites a structurally complete invention, the
disclosure in the preamble of the intended use of the claimed sheet product
in conjunction with a defibrillator is not a claim limitation.
Appellants argue that the release liner 60 is stripped from the
electrode before use and that Axelgaard does not disclose whether the
York, New York) which defines the term plastic and indicates examples of
plastic as being polyvinyl chloride, polyethylene, and urea-formaldehyde.
Thus, one of skill in the art would understand the term plastic to indicate
polyethylene, which is known in the art to be insulative (see n.6 infra).
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release liner “is conductive or whether it is thick enough to protect against
shocks” (App. Br. 5).
We do not find this argument to be persuasive. Claim 1 does not
require that the claimed device protect the rescuer from shocks, but only
requires that the device resists the passage of current between the faces.
Given that Axelgaard discloses that both of the faces of the device (i.e. the
non-conductive sheet of flexible plastic 32 and the plastic release liner) are
made of insulative material, the Examiner has set forth a reasonable
argument that the device would resist the passage of current between the
faces.
With regard to claims 6, 7, and 8, Appellants rely on the same
arguments made above with regard to anticipation by Ferrari. These
arguments are addressed above and are unpersuasive with respect to
Axelgaard for the same reasons.
4. ANTICIPATION III
Claims l, 6-8, and 10 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Grossman.5 Claim 6 has not been argued separately and
therefore stands or falls with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner finds that “Grossman shows the conductive layer, 14 or
16, occupying substantially the entire area under the upper face, 20, and
shows the lower face, 12, and the connector located to the side, figures 1 and
7, and connected to an upper edge/border of the conductive layer” (Ans. 8).
The Examiner finds that Grossman describes “the upper face, 20, and lower
face, 12, both being made of insulative material” (id.). The Examiner

5 Grossman et al., US 4,776,350, Oct. 11, 1988.
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further finds that “Grossman's apparatus is capable of meeting the functional
use recitations” in claim 1 “since it can be connected anywhere on the body,
since it uses foam for the lower face, 12, since the connector can be
connected to the skin or a potential source, and since the electrode can be
pressed down by the rescuer” (id.).
We agree with the Examiner that that Grossman discloses all of the
limitations in claim 1. Grossman discloses “an electrode adapted for
external use to stimulate a patient's heart, as well as a connector for
connecting such an electrode to a cable leading to the heart stimulating
equipment” (Grossman, col. 2, ll. 5-8). Fig. 1 of Grossman is shown below:

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Fig. 1 is said to show “an exploded perspective view of a heart stimulating
electrode” (id. at col. 2, ll. 50-51).
Grossman discloses electrode 10 as comprising “cover 12, first
conductor 14, second conductor 16, ring 18, release liner 20 and tab 26,”
such that “[c]over 12 and ring 18 are fabricated from a non-conductive,
medical grade, closed cell foam material” (id. at col. 3, ll. 1-17). Grossman
also discloses that “[p]rior to use, the patient engaging surface is protected
by release liner 20 that may comprise siliconized high density polyethylene”
(id. at col. 3, ll. 20-23). Grossman also discloses that “[t]ab 26 extends
radially from the center of the electrode between first conductor 14 and
cover 12, and includes embedded electrically conducting strip 28 that is in
electrical contact with conductive post 30 at the outer end of tab 26” (id. at
col. 3, ll. 24-28).
Thus, Grossman’s apparatus comprises a protector sheet (electrode
10) having upper and lower dielectric layers (cover 12 and release liner 20),6
a conductive layer (first conductor 14) that occupies a majority of the area of
the upper face of the sheet, and a connector (tab 26) extending from the
conductive layer. We agree with the Examiner that Grossman’s apparatus
includes all the structural limitations of claim 1.
We also agree with the Examiner that Grossman’s apparatus is
capable of being used as recited in claim 1. That is, Grossman’s apparatus is

6 The siliconized polyethylene material of the release liner would be
understood by one of the skill in the art to be dielectric material as shown by
the Encyclopedia of Chemical Technology, pg. 565 (Kirk-Othmer, 1981,
Vol. 13, John Wiley & Sons, New York, New York) which shows that both
polyethylene and silicone are considered to be insulative materials.
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capable of being placed with the lower face resting on the chest area of a
victim, such that the upper face is accessible to be pressed down, and the
connector has a termination part that can be connected (or “is adapted for
connecting”) to a potential source. Grossman’s apparatus therefore
anticipates claim 1.
Appellants argue that Grossman “shows a release liner 20 that is
removed before the electrode is used” and “does not state whether his
release liner is conductive or insulative” (App. Br. 5).
We do not find this argument to be persuasive. As set forth above,
Grossman discloses that release liner 20 is fabricated of siliconized high
density polyethylene. Thus, the release liner constitutes one dielectric (i.e.
insulative) face, while the opposing face is insulative cover 12.
With regard to claims 7 and 8, Appellants rely on the same arguments
made above with regard to anticipation by Ferrari. These arguments are
addressed above and are unpersuasive with respect to Axelgaard for the
same reasons.
With regard to claim 10, in addition to the disclosure discussed above,
the Examiner finds that “the connector located to the side, figures 1 and 7,
and connected to an upper edge/border of the conductive layer” contains “an
adhesive, 48” (Ans. 8). The Examiner finds that Grossman discloses
conductive adhesive at col. 7, lines 1-3 (id. at 13).
Appellants argue that Grossman shows a “post 30 connected to a
cable 50 that leads to a cardiac pacemaker. . . . This is very different from
conductive adhesive (gel) on an outer end of the conductor of the protective
sheet for engaging the skin of the patient” (App. Br. 9).
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We agree with Appellants that the Examiner has not adequately
explained how the reference shows “a quantity of conductive adhesive lying
on said conductor outer end and adapted to connect to the victim's skin.”
Grossman discloses that tab 26 includes an adhesive (48) at the outer
end (Grossman, col. 6, l. 68 to col. 7, l. 3). Grossman does not expressly
state that the adhesive is conductive. Grossman discloses that electrical
contact is made between tab 26 and the connector of the cable via post 30
(id. at col. 7, l. 4-9, Figs. 7 and 8, and col. 7, ll. 47-57). Given that
Grossman discloses that electrical contact is accomplished by post 30 and
does not disclose that adhesive 48 is conductive, we agree with Appellants
that the Examiner has not established that Grossman discloses “a quantity of
conductive adhesive lying on said conductor outer end and adapted to
connect to the victim's skin,” as required by claim 10.
SUMMARY
The Examiner’s rejections of claims 1 and 6-8 under 35 U.S.C.
§ 102(b) are supported by the preponderance of the evidence of record, and
we therefore affirm these rejections.
With regard to claim 10, we agree with Appellants that the Examiner
has not made out a prima facie case of anticipation based on the cited
reference, and we therefore reverse the rejection of claim 10 under 35 U.S.C.
§ 102(b).
We affirm the rejection of claim 3 under 35 U.S.C. § 112, second
paragraph, and we reverse the rejections of claims 7, 8 and 10 under 35
U.S.C. § 112, second paragraph.

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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).

AFFIRMED-IN-PART

Ssc:
LEON D. ROSEN
FREILICH, HORNBAKER & ROSEN
SUITE 1220
10960 WILSHIRE BLVD.
LOS ANGELES, CA 90024

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