Appeal 2007-2649
Application 10/235,998
reasoning” (Br. 9). Appellants argue that claim 9 is also separately
patentable for the same reasons (id.).
Each of claims 8-10 depends from claim 7, which essentially recites
an apparatus for performing the process of claim 1. Claims 8 and 10 limit
the waist-positioned electrode patch to “approximately 100 mm2” and
“greater than approximately 5000 mm2,” respectively. Claim 9 limits the
ear-positioned electrode to “approximately 10 mm2.”
The Examiner states that, although Sarbach does not explicitly teach
electrode patches of the sizes recited in claims 8 and 10, electrodes of those
areas would have been obvious in view of Sarbach because “the particular
size of the electrode claimed is within the range of sizes that necessarily
would have to be selected for such an electrode to properly sense an ECG
signal on a patient’s waist” (Br. 4). The Examiner similarly urges that an
electrode patch having the area recited in claim 9 would have been obvious
because “[t]he ear being a certain dimension requires an electrode to be of a
small size to allow the electrode to be placed on or in the ear. Similarly in
Schulze’s patent, electrode 6 would have to be in the same range of size to
fit in or on the ear” (id. at 5).
In addressing the issue of obviousness, the Supreme Court advised
that “[a] person of ordinary skill is . . . a person of ordinary creativity, not an
automaton.” KSR Int'l v. Teleflex Inc., 127 S. Ct. 1727, 1742 (2007). The
Court thus recognized that the analysis under 35 U.S.C. § 103 “need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” Id. at 1741.
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