Philip Low et al.

Patent Trials and Appeals Board

Jan 26, 2021

2020003826 (P.T.A.B. Jan. 26, 2021)

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.
12/913,686 10/27/2010 Philip Low VIGIL1120-1 4365
28213 7590 01/26/2021
DLA PIPER LLP (US)
4365 EXECUTIVE DRIVE
SUITE 1100
SAN DIEGO, CA 92121-2133
EXAMINER
BERHANU, ETSUB D
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
01/26/2021 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
gtdocket@us.dlapiper.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

Ex parte PHILIP LOW, YU M. CHI,
SIDDHARTH JOSHI, CHRISTOPHER UEBELHER,
YVON A. DUBOIS, and KEVIN LIU
________________

Appeal 2020-003826
Application 12/913,686
Technology Center 3700
________________

Before JAMES P. CALVE, BRETT C. MARTIN, and
GEORGE R. HOSKINS, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the decision
of the Examiner to reject claims 1, 2, 4, 6–11, 15, 16, 19, 20, 22, 24–26, 28,
and 30.2 See Appeal Br. 3. We have jurisdiction under 35 U.S.C. § 6(b).
Appellant’s representative presented argument at a hearing held on
January 14, 2021.
We AFFIRM.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies Neurovigil, Inc. as the real party in interest. Appeal Br. 3.
2 Claims 3, 5, 12–14, 17, 18, 21, and 23 are cancelled, and claims 27 and 29
are withdrawn. See Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The claims relate to a physiological data acquisition assembly used
with a head harness that is applied by a user to acquire physiological data of
the user including EEG, EKG, EMB, and EOG signals. Spec. ¶ 2.
Claims 1 and 15 are independent. Claim 1 is reproduced below.
1. A physiological data acquisition assembly having a
head harness, the physiological data acquisition assembly
comprising:
a physiological data acquisition module, wherein
the physiological data acquisition module is configured
to continuously monitor, record, wirelessly transmit and
store encrypted data collected from an active electrode;
a head harness that includes:
a base strap;
an upper housing portion configured to
house the physiological data acquisition module and
positionable on top of a head of a user when in use; and
a plurality of longitudinally extending
straps;
wherein, the base strap is configured to
extend around the head of the user when in use, and the
plurality of longitudinally extending straps detachably
secure the upper housing portion to the base strap;
at least one electrode snap connector assembly for
use on an active electrode of the physiological data
acquisition assembly; and
at least one electrode snap connector assembly for
use on a reference electrode of the physiological data
acquisition assembly, wherein at least one of the
electrode snap connector assemblies includes a noise
reducing or cancelling amplifier configured to operate at
an electrode connection level.
Appeal Br. 18 (Claims App.).
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REJECTIONS
Claims 1, 2, 4, 6, 15, 24–26, and 28 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Imran (US 5,479,934, iss. Jan. 2, 1996),
Ludving (US 2008/0082019 A1, pub. Apr. 3, 2008), Beaird (US 4,658,811,
iss. Apr. 21, 1987), Cox (US 2009/0156954 A1, pub. June 18, 2009),
Montgomery (US 2005/0165323 A1, pub. July 28, 2005), Dacey, Jr. (US
2009/0149694 A1, pub. June 11, 2009) (hereinafter “Dacey”), and Fadem
(US 2005/0215916 A1, pub. Sept. 29, 2005).
Claims 7–10, 16, 19, and 30 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Imran, Ludving, Beaird, Cox, Montgomery, Dacey,
Fadem, and Dicks (US 8,126,728 B2, iss. Feb. 28, 2012).
Claim 11 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Imran, Ludving, Beaird, Cox, Montgomery, Dacey, Fadem, and Kuo (US
2007/0244370 A1, pub. Oct. 18, 2007).
Claim 20 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Imran, Ludving, Beaird, Cox, Montgomery, Dacey, Fadem, and Bibian
(US 8,538,512 B1, iss. Sept. 17, 2013).
Claims 11 and 22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Imran, Ludving, Beaird, Cox, Montgomery, Dacey,
Fadem, and Moll (US 8,350,804 B1, iss. Jan. 8, 2013).

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ANALYSIS
Claims 1, 2, 4, 6, 15, 24–26, and 28
Appellant argues the claims as a group. See Appeal Br. 7–15. We
select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv). Claims 2,
4, 6, 15, 24–26, and 28 stand or fall with claim 1.
Substitution of RF Transmitter for Fiber Optics
The Examiner cites Imran to teach an electroencephalogram (EEG)
acquisition assembly with a head harness and physiological data acquisition
module (electronics module 107) as recited in claim 1. Final Act. 2–3. The
Examiner cites Cox to teach a fiber optic cable as equivalent to transmitting
data wirelessly using a radio frequency (RF) transmitter and determines it
would have been obvious to substitute an RF transmitter, as taught by Cox,
for the fiber optic cable of Imran to transmit data from the physiological data
acquisition module 107 as claimed. Id. at 4–5.
Appellant argues that substituting an RF transmitter for the fiber optic
cable in Imran to transmit data from the physiological data module is not a
simple substitution of a known element (an RF element) for another known
element (a fiber optic cable) for predictable results (data transmission from
one element to another). Appeal Br. 9. Appellant asserts that RF and fiber
optics can transmit data, but the complexity and sophistication needed to
detect EEG data and provide robust transmission means any substitution of
RF for fiber optic transmission is not a simple substitution. Id. Appellant
contends that Imran uses fiber optics as an integral element for detecting and
processing EEG data such that it is preferred to use optical/infrared energy,
and the substitution would render Imran’s device unsatisfactory for its
intended use of robust detection and transmission of EEG data. Id. at 9–10.
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Appellant’s arguments regarding the alleged complexity required to
detect and transmit EEG data are attorney argument that is not supported by
any record evidence. Cox teaches a computer system that uses EEG data to
assess attentional impairments in individuals. See Cox ¶¶ 2, 73–76, Fig. 13.
Cox’s system uses communications interface 1324 to transfer EEG data as
electronic, electromagnetic, optical, or other signal types 1328 over channel
1326 between system 1300 and EEG equipment external devices. Id. ¶ 76.
The communications path and channel 1326 may be implemented using wire
or cable, fiber optics, a phone line, a cellular phone link, an RF link, or other
communications channel. Id. These teachings indicate the knowledge and
ability of skilled artisans to transfer EEG data using wireless RF links and/or
fiber optic channels as equally suitable data communications channels.
Where “a patent claims a structure already known in the prior art that
is altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Cox teaches that skilled
artisans routinely use wireless RF and/or fiber optic channels to transfer data
such as EEG data for diagnosing patients’ conditions for predictable results.
The Examiner proposes to substitute an RF link for Imran’s fiber optic link
for the predictable results of transferring EEG data as claimed.
Cox’s teaching is consistent with Imran’s teachings that its headgear
and system include energy converter 148 that converts the output of pulse
width modulator 147 to a different energy such as RF, infrared, or optical
energy. Imran, 7:66–8:4. Imran expresses a preference to use optical or
infrared energy to reduce interference and noise problems. However, Imran
also teaches to use wireless RF energy to transfer EEG data. See id.
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Imran teaches to implement its EEG data measuring and transmission
computing system and headgear using either wireless RF or optical energy
links and channels for predictable results. Imran’s preference for using an
optical link does not undermine the Examiner’s reasoning and combination
or render Imran inoperable for using a wireless link that Imran also teaches.
Claim 1 merely requires a physiological data acquisition module to
wirelessly transmit and store encrypted EEG data collected from an active
electrode. Appeal Br. 18 (Claims App.). Claim 1 does not recite a particular
reduction in interference or noise. Modifying Imran to transmit EEG data
wirelessly, as Cox and Imran teach, would not render Imran inoperable or
unsatisfactory for its intended purpose because both references transmit EEG
data using optical and/or RF energy. See In re Mouttet, 686 F.3d 1322, 1332
(Fed. Cir. 2012) (“We find the Board’s determination that eliminating the
optical components of Falk would not destroy its principle of operation to be
supported by substantial evidence. As the examiner found, the type of
circuitry used is the main difference between Mouttet’s invention, which is
based on electrical conductivity, and Falk’s invention, which is based on
optical paths. But this difference does not affect the operability of Mouttet’s
broadly claimed device—a programmable arithmetic processor.”).
As modified, Imran would transmit EEG data wirelessly via an RF
link as Imran itself teaches. Imran would work for its intended purpose of
transmitting EEG data even if the EEG data had more interference or noise
than an optical link. The substitution involves a tradeoff between fidelity
and flexibility. See Mouttet, 686 F.3d at 1334 (“This court has further
explained that just because better alternatives exist in the prior art does not
mean that an inferior combination is inapt for obviousness purposes.”).
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Appellant does not cite any evidence that Imran would not work with
an RF transmitter. To the contrary, Imran teaches that such embodiment is
within the scope of Imran’s invention, albeit as a less-preferred embodiment
that an optical link, at least for some purposes. Imran, 7:66–8:4; Mouttet,
686 F.3d at 1334; In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (“An
assertion of what seems to follow from common experience is just attorney
argument and not the kind of factual evidence that is required to rebut a
prima facie case of obviousness.”).
A wireless link provides advantages over fiber optic cables, such as
increased freedom of movement of patients wearing the headgear, that may
outweigh any potential loss in signal quality. The Specification describes a
known problem of cables suspended on patients to limit patients’ freedom of
movement. Spec. ¶ 4. Furthermore, Fadem amplifies and filters wireless
EEG signals to eliminate noise and signal degradation. Fadem ¶¶ 15, 28.
The fact that both Cox and Imran teach the alternative use RF and/or
optical links to transmit EEG data provides a rational underpinning for the
substitution and addresses Appellant’s hindsight argument. See In re Cree,
Inc., 818 F.3d 694, 702 n.3 (Fed. Cir. 2016) (holding appellant’s hindsight
argument was addressed by showing that a proper motivation to combine the
references in fact existed).
Noise Cancelling Amplifier in Electrode Assembly
The Examiner relies on Fadem to teach a noise reducing or cancelling
amplifier at the electrode connection level to improve signal-to-noise ratio of
biopotential measurements (EEG signals) and determines it would have been
obvious to include this feature on Imran for similar benefits of improving the
signal-to-noise ratio of EEG measurements as Fadem teaches. Final Act. 6.
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Appellant argues that Fadem’s teaching to incorporate amplification
and filtering electronics into each electrode “is not the same as use of a noise
reducing or cancelling amplifier at the electrode connection level in which
the amplifier is utilized at the electrode connection” because “[t]his feature
is crucial in allowing free placement of electrodes on the head based on user
preference which is an advantage of the ergonomic head harness of the
present claims.” Appeal Br. 11. Appellant also asserts that use of amplifiers
at the electrode connection level as claimed allows robust data collection by
the same electrode at different locations of the head. Id.
Appellant’s Figure 1 illustrates snap connector assemblies 68, 69 with
an amplifier 62 included in the assembly. Id. ¶ 23. Therefore, we interpret
“at an electrode connection level” to mean that the amplifier is located at the
electrode that is connected to a harness and proximate to a patient’s skin.
See Ans. 5. The Specification describes electrode snap connector assemblies
68, 69 that may be placed behind a patient’s ears. Spec. ¶¶ 23, 26. Claim 1
is not so limited or specific in this regard, however.
We agree with the Examiner that Fadem teaches a noise reducing or
cancelling amplifier in an electrode snap connector assembly configured to
operate at the electrode connection level, as claimed. Fadem’s active, digital
electrode 12 includes amplifiers 18, 26 and filters 22, 24 inside the electrode,
i.e., “at an electrode connection level” as claimed. Fadem ¶ 29, Fig. 2; see
Ans. 5. Fadem places active, digital electrodes in a headset to amplify and
digitally convert EEG signals at the source where the electrodes contact a
patient to eliminate noise and signal degradation issues such as signal-to-
noise problems. Fadem ¶ 28. This configuration senses and digitizes EEG
measurements in close proximity to a patient’s skin. Id. ¶¶ 15, 16.
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Appellant’s argument regarding the placement of electrodes at user
defined locations for a customized comfort fit is not commensurate with the
scope of claim 1. Even so, Fadem uses active, digital electrodes to permit a
customized fit on a patient and robust data collection using first and second
electrodes that are attached to a patient’s skin. Id. ¶¶ 16–18.
The Specification indicates that snap electrode connector assemblies
68, 69 are received in slots 32, 34, 36, 38 of straps 18, 20 of head harness 10.
Spec. ¶ 22, Fig. 1. Thus, user defined locations depend on the placement of
electrodes in slots of a head harness. Claim 1 does not recite slots or other
structures for positioning snap connector assemblies in a head harness. The
Examiner also relies on Imran to teach snap connectors as claimed. Ans. 5.
Continuously Monitor, Store, Transmit
The Examiner takes Official Notice that “it is well known in the art to
continuously monitor, record, wirelessly transmit and store collected data in
a physiological monitoring system in order to provide up to date monitoring
of a patient.” Final Act. 7. The Examiner cites prior art patent publications
and a patent that teach this knowledge. Id.
Appellant argues the prior art does not teach a data acquisition module
configured to continuously monitor, record, and wirelessly transmit and store
encrypted data collected from an active electrode as claimed. Appeal Br. 11.
[t]he Office provides examples that it is well known to
continuously monitor and transmit data in a physiological
monitoring system in order to provide up to date monitoring of
a patient [but] the Office provides no reference or evidence
regarding continuously wirelessly transmitting stored encrypted
data collected from an active electrode in a portable
physiological data acquisition assembly.
Id. at 12.
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The Examiner responds that the prior art shows it is known to monitor
and transmit encrypted data continuously in a physiological monitoring
system, whatever that data may be. Ans. 6. The Examiner reasons that a
skilled artisan would have found it obvious to continuously monitor and
transmit data acquired and processed from an active electrode in a portable
physiological data acquisition assembly in view of these teachings. Id.
The Examiner’s findings in support of Official Notice and reasoning
to modify Imran based on these teachings are supported by a preponderance
of evidence. Appellant has not apprised us of error in the Examiner’s
findings or determination of obviousness. Final Act. 6–7; Ans. 5–6. The
references cited in support of taking Official Notice teach the advantages of
continuously monitoring, recording, and wirelessly transmitting data such as
EEG data to improve diagnoses and treatments of neurological disorders.
The Examiner determines it would have been obvious to use these teachings
to improve Imran’s ability to monitor EEG signals of a patient. See KSR 550
U.S. 398, 417 (2007) (“[I]f a technique has been used to improve one device,
and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill.”).
Reasonable Expectation of Success
Appellant asserts there is no reasonable expectation of success where
the prior art fails to disclose each limitation of the claims such as continuous
monitoring, recording, and wireless transmission of data collected from an
active electrode and an electrode snap connector assembly that includes a
noise reducing or cancelling amplifier at the electrode connection level.
Appeal Br. 12–13.
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Because the prior art teaches these features, as discussed above, we
are not persuaded by Appellant’s arguments. Moreover, it is well-settled:
“The reasonable expectation of success requirement refers to
the likelihood of success in combining references to meet the
limitations of the claimed invention.” Intelligent Bio-Systems,
Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367 (Fed. Cir.
2016). A relevant artisan’s “expectation of success need only
be reasonable, not absolute.” Pfizer, Inc. v. Apotex, Inc., 480
F.3d 1348, 1364, 1367–68 (Fed. Cir. 2007). “This court has
long rejected a requirement of conclusive proof of efficacy for
obviousness.” Acorda Therapeutics, Inc. v. Roxane Labs., Inc.,
903 F.3d 1310, 1333 (Fed. Cir. 2018).
In re Earley, No. 2020-1816, 2020 WL 7334168, *5 (Fed. Cir. Dec. 14,
2020) (“Substantial evidence supports the Board’s finding that a relevant
artisan would ‘modif[y]’ Simon’s induction generator––specifically, would
‘size and select an induction generator as suggested by Simon to match the
enhanced capabilities of [the ’842 patent’s centrifugal-weight-control
assembly]’ in order to produce more energy.”).
Here, the prior art’s teachings of the claimed features indicate the
proposed combination of prior art features has a reasonable expectation of
success in meeting the limitations of claim 1. As discussed above, express
teachings of the prior art cited to support Official Notice as well as Fadem’s
teachings of electrode snap connector assemblies with noise reducing and
cancelling amplifiers indicate it is well within the level of ordinary skill in
the art to produce devices with these features. See Presidio Components,
Inc. v. AVC Corp., 825 F. App’x 909, 915 (Fed. Cir. 2020) (“[T]he Board’s
findings of motivation and expectation of success were supported by Li’s
express discussion of the benefits of vertical mounting and its teachings that
multilayer capacitors can be used in a vertical orientation.”).
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The Specification’s brief description of the features suggests a skilled
artisan could combine the prior art features with a reasonable expectation of
success. See In re Publicover, 813 F. App’x 527, 532 (Fed. Cir. 2020) (“But
as the examiner and Board correctly found, Publicover’s specification is just
as sparse on how a system would identify this type of eye movement. Under
the circumstances, we find this attorney argument as to the capabilities of a
skilled artisan unpersuasive.”); see also Uber Techs., Inc. v. X One, Inc., 957
F.3d 1334, 1339 (Fed. Cir. 2020) (“The specification of the [patent-at-issue]
is entirely silent on how to transmit user locations and maps from a server to
a user’s mobile device, suggesting that a person of ordinary skill in the art
was more than capable of selecting between the known methods of
accomplishing this.”); In re Epstein, 32 F.3d 1559, 1568 (Fed. Cir. 1994)
(“[T]he Board’s observation that appellant did not provide the type of detail
in his specification that he now argues is necessary in prior art references
supports the Board’s finding that one skilled in the art would have known
how to implement the features of the references and would have concluded
that the reference disclosures would have been enabling.”).
Finally, the broad claim language indicates the proposed combination
of these prior art features would have a reasonable expectation of success in
meeting the claimed limitations rather than the additional features Appellant
argues in the Appeal Brief. See Sound View Innovations, LLC v. Hulu, LLC,
818 F. App’x 1009, 1013 (Fed. Cir. 2020) (“Since the claims here did not
require a certain level of practicality, the Board did not err in finding a
‘reasonable expectation of success . . . [in] meet[ing] the limitations of the
claimed invention.’ . . . The Board in determining a reasonable expectation
of success properly limited the inquiry to the claims as written.”).
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We reproduce Appellant’s Figure 1 below to illustrate the claimed
electrode snap connector assemblies that include a noise reducing/cancelling
amplifier 62 configured to operate an electrode connection level.

Appellant’s Figure 1 above illustrates head harness 10 with slots 32,
34, 36, 38 formed therein to receive electrode snap connector assemblies 68,
69 and their lead wires 56, 58, 60, wherein snap connector assemblies 68, 69
“also include a noise reducing or cancelling amplifier 62 at the electrode
connection level to reduce any electrical noise that may be picked up by the
lead wires 56, 58, & 60.” Spec. ¶¶ 22, 23. The Specification thus provides a
broad description of amplifier 62 with as few details as the claim language.
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The Specification indicates that “[t]o further improve the performance
of the physiological data acquisition module 50, the module or the electrode
snap connector assemblies 68 & 69 are configured to continuously monitor
electrode impedance and may include lights indicative of the current status
of the integrity of the electrode contacts.” Id. ¶ 23. This description is cited
to support language to “continuously monitor, record, wirelessly transmit
and store encrypted data collected from an active electrode” in claim 1. See
Appeal Br. 4–5 (Summary of Claimed Subject Matter for Claim 1).
Paragraphs 26, 27, and 31 also are cited in the Summary of Claimed Subject
Matter for this feature. Paragraph 26 states “[t]he physiological data
acquisition module 50 is configured to record, transmit and store encrypted
data collected from the electrode snap connector assembly 69 for use on an
active electrode 67 applied to the forehead region of a patient.” Paragraph
27 states that “the physiological data acquisition module 50 is configured to
include a wireless transmitter/receiver for transmitting wirelessly the
recorded and stored encrypted data to a remote center or computer for
further display, storing, processing and analysis or for transmitting
wirelessly in real time the encrypted data to a remote center or computer for
further display, storing, processing and analysis.” Paragraph 31 states
[o]nce the electrodes have been placed by the user,
physiological electrical data is collected. At 104, the
physiological data is transmitted either wirelessly by a
physiological data acquisition module 50 or is transmitted
wirelessly directly from the singular sensor patch to a
peripheral device that may be but is not limited to a computer,
cellular telephone, smart-phone and/or iPad®.
These high-level descriptions indicate a presumed level of ordinary skill and
knowledge in the art.
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The Specification provides very little description of technical features
used to continuously monitor, record, wirelessly transmit and store EEG data
from an active electrode as claimed. The level of detail in the Specification
approximates that in the claim and indicates the level of skill in the art and
the understanding of a skilled artisan in implementing these features with a
reasonable expectation of success based on similar teachings in the prior art.
Unexpected Results
Appellant contends “[t]he assembly and system of the present claims
allows for robust detection, analysis and transmission of physiological data
from a single active electrode” wherein “at least one of the electrode snap
connector assemblies includes a noise reducing or cancelling amplifier
configured to operate at an electrode connection level” and “a reduced
number of electrodes . . . maintain[s] robust collection and analysis of
physiological data via the data acquisition module.” Appeal Br. 13–14.
Appellant also argues that an article from the MIT Technology Review
evidences how the invention allows sleep data to be collected in a home
setting as opposed to a clinical setting requiring a physician. Id. at 14.
A determination of whether a property or advantage is unexpected
requires evidence of what a skilled artisan would have expected a property
to be. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007); In
re Mayne, 104 F.3d 1339, 1343 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d
699, 705 (CCPA 1984). Improved results must be shown to be unexpected
compared to the closest prior art that was known. Kao Corp. v. Unilever
U.S., Inc., 441 F.3d 963, 970 (Fed. Cir. 2006); In re Baxter Travenol Labs,
952 F.2d 388, 392 (Fed. Cir. 1991); In re Boesch, 617 F.2d 272, 276 (CCPA
1980).
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Even if the claimed assembly provides robust detection, analysis and
transmission of physiological data from a single active electrode, claim 1 is
not limited to a single electrode. We have no evidence of what comprises an
unexpected result in this art or evidence of the claimed assembly compared
to the closest prior art such as Fadem and its noise cancelling amplifier and
filter. See In re De Blauwe, 736 F.2d at 705 (“It is well settled that
unexpected results must be established by factual evidence. Mere argument
or conclusory statements in the specification does not suffice.”).
To the extent the electrode snap connector assembly and amplifier are
relied on for this improvement, Fadem converts EEG signals at the source to
eliminate noise and reduce signal degradation. Fadem ¶ 28. By amplifying
and digitally converting EEG signals at the source, i.e., where the electrode
contacts a patient’s skin, the amplified, integrated electrode eliminates noise
and degradation of signals to significantly reduce Signal-to-Noise problems
seen in EEG recordings. Id. Thus, any improvements along these lines are
to be expected based on Fadem’s teachings as the Examiner correctly finds.
Any praise in MIT Technology Review lacks a nexus to the claimed
assembly. The article indicates that one inventor (Philip Low) “created an
algorithm that can classify sleep stages using data from just a single EEG
lead.” MIT Technology Review, “http://www2.technolgyreview.com/tr35/
profile.aspx?TRID=978.” However, claim 1 does not recite an algorithm or
application of the assembly to measure, or classify sleep stages using only a
single lead as Appellant argues. Nor has Appellant identified any disclosure
in the Specification of an algorithm or application of the claimed assembly
to classify sleep stages to inform our understanding of the claims.
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A patentee has the burden to establish a nexus between the merits of a
claimed invention and objective evidence offered to show non-obviousness.
See Wyers v. Master Lock Co., 616 F.3d 1231, 1246 (Fed. Cir. 2010); WMS
Gaming Inc. v. Int’l Game Tech., 184 F.3d 1339, 1359 (Fed. Cir. 1999). If
the secondary evidence results from something other than what is claimed
and novel in the claim, there is no nexus between the evidence and merits of
the claimed invention. In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011); see
Tokai Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1369 (Fed. Cir. 2011)
(“If commercial success is due to an element in the prior art, no nexus
exists.”); Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1312 (2006)
(“[I]f the feature that creates the commercial success was known in the prior
art, the success is not pertinent.”). Therefore, any industry praise due to the
electrode snap connector assembly lacks a nexus because Fadem teaches this
feature as discussed above. Thus, it is not a novel feature of the claim.
Impermissible Hindsight
The Examiner’s reasons for combining teachings of the prior art are
supported by rational underpinning and a preponderance of evidence based
on the references’ teachings. See Final Act. 2–7; Ans. 7. Appellant has not
apprised us of error in the Examiner’s reasons for combining the prior art
teachings. The Examiner did not rely on the Specification in any case.
Accordingly, we sustain the rejection of claim 1, and we also sustain
the rejection of claims 2, 4, 6, 15, 24–26, and 28, which fall with claim 1.
Claims 7–11, 16, 19, 20, 22, and 30
Appellant does not present arguments for the rejections of dependent
claims 7–11, 16, 19, 20, 22, and 30. Appeal Br. 7–15. Thus, we summarily
sustain these rejections.
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CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/
Basis
Affirmed Reversed
1, 2, 4, 6,
15, 24–
26, 28
103(a) Imran, Ludving, Beaird,
Cox, Montgomery,
Dacey, Fadem
1, 2, 4, 6,
15, 24–26,
28

7–10, 16,
19, 30
103(a) Imran, Ludving, Beaird,
Cox, Montgomery,
Dacey, Fadem, Dicks
7–10, 16,
19, 30

11 103(a) Imran, Ludving, Beaird,
Cox, Montgomery,
Dacey, Fadem, Kuo
11
20 103(a) Imran, Ludving, Beaird,
Cox, Montgomery,
Dacey, Fadem, Bibian
20
11, 22 103(a) Imran, Ludving, Beaird,
Cox, Montgomery,
Dacey, Fadem, Moll
11, 22
Overall
Outcome
1, 2, 4, 6–
11, 15, 16,
19, 20, 22,
24–26, 28,
30

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