Ex Parte Cortez et al

Patent Trial and Appeal Board

Oct 31, 2018

13665100 (P.T.A.B. Oct. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/665,100
106224 7590
White & Case LLP
FILING DATE
10/31/2012
11/02/2018
701 13th Street NW
Washington, DC 20005
FIRST NAMED INVENTOR
Pelino V. Cortez JR.
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1848579-0002-013-101 6286
EXAMINER
TSAI, MICHAEL JASPER
ART UNIT PAPER NUMBER
3785
NOTIFICATION DATE DELIVERY MODE
11/02/2018 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):
wcpatents@whitecase.com
sherry. beckham@whitecase.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PELINO V. CORTEZ JR., WILLIAM F. NILAND, and
GEORGE MCGARRITY1
Appeal2018-002910
Application 13/665,100
Technology Center 3700
Before JOHN C. KERINS, EDWARD A. BROWN, and
ANNETTE R. REIMERS, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1, 3-9, and 12-19 under 35 U.S.C. § 103(a) as
unpatentable over by Blackmer (US 4,278,082, issued July 14, 1981),
Davenport (US 2008/0051674 Al, published Feb. 28, 2008), Schabel (US
7,775,210 B2, issued Aug. 17, 2010), and White (US 2017/0119989 Al,
1 Vapotherm, Inc. ("Appellant") is the applicant as provided under 37 C.F.R.
§ 1.46 and is identified as the real party in interest. Appeal Brief 3 ("Appeal
Br."), filed Aug. 25, 2017.
Appeal2018-002910
Application 13/665,100
published May 4, 2017). Claims 2, 10, 11, 20, and 21 have been cancelled.
We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
CLAIMED SUBJECT MATTER
The claimed subject matter relates to "respiratory therapy, and more
particularly to devices for use in providing respiratory therapy." Spec. 1, 2
Figs. IA-IC. Claims 1 and 12 are independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. A device for providing respiratory therapy to a patient
compnsmg:
a first elongated lumen having a constant internal
diameter, the first lumen having an inlet end and an outlet end;
a second elongated lumen having a constant internal
diameter, the second lumen having an inlet end and an outlet end;
and
a nosepiece portion configured to be connected to the
outlet ends of the first and second lumens, the nosepiece portion
having:
a third lumen having a constant internal diameter
equal to the constant internal diameter of the first lumen,
the third lumen having an inlet end adapted to be
connected to the outlet end of the first lumen without
constricting the internal diameter of the first lumen, the
third lumen configured to receive a first flow of breathing
gas from the first lumen and deliver the first flow of
breathing gas to an outlet end of the third lumen;
a fourth lumen having a constant internal diameter
equal to the constant internal diameter of the second
2 Specification ("Spec."), filed Oct. 31, 2012. The Specification does not
include paragraph or line numbering, so we refer to the Specification by page
number only.
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Application 13/665,100
lumen, the fourth lumen having an inlet end adapted to be
connected to the outlet end of the second lumen without
constricting the internal diameter of the second lumen, the
fourth lumen configured to receive a second flow of
breathing gas from the second lumen and deliver the
second flow of breathing gas to an outlet end of the fourth
lumen, the second flow of breathing gas maintained
separate from the first flow of breathing gas within the
nosepiece portion; and
a source of heated and humidified breathing gas
connected to the inlet ends of the first and second lumens,
the source being configured to provide breathing gas at
flow rates of about 40 liters per minute;
wherein the first lumen and the nosepiece portion define a
constant diameter flow path for the first flow of breathing gas
from the inlet end of the first lumen to the outlet end of the third
lumen; and
wherein the second lumen and the nosepiece portion
define a constant diameter flow path for the second flow of
breathing gas from the inlet end of the second lumen to the outlet
end of the fourth lumen.
ANALYSIS
The Examiner finds Blackmer discloses the device of claim 1
substantially as claimed, but "does not disclose that the first and second
elongated lumen have an outlet end and that the third lumen and the fourth
lumen have an inlet end adapted to be connected to the outlet end of the first
and second lumen." Final Act. 2-3. 3 The Examiner finds "Davenport
teaches a nasal cannula comprising a first elongated lumen and a second
lumen, each having an outlet end ... , and a third and fourth lumen each
3 Final Office Action ("Final Act."), dated Feb. 27, 2017.
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Application 13/665,100
having an inlet end adapted to be connected to the outlet end of the first and
second lmnens, respectively." Id. at 3 (citing Davenport ,r 60); see also
Davenport Fig. 1. The Examiner concludes it would have been obvious
to modify the first, second, third, and fourth lumen[ s] of
Blackmer to have a first elongated lumen and a second lumen,
each having an outlet end, and a third and fourth lumen[ s] each
having an inlet end adapted to be connected to the outlet end of
the first and second lumens, respectively, as taught by
Davenport[,] in order to allow for replacement of supply tubes or
readjustment of the supply tubes for repositioning the supply
tubes for a desired position of comfort for the patient.
Id. at 3--4; 4 see also Ans. 9--10. 5
Appellant points out "[ u ]sing a single continuous length of tubing for
each nostril" is an essential feature of Blackmer. Reply Br. 3; see also
Appeal Br. 1 7. According to Appellant, to arrive at the present claims,
starting from Blackmer, a skilled artisan "would need to eliminate
Blackmer's essential single continuous length of tubing for each nostril,"
and a skilled artisan "would understand that adding any breaks to the lumens
described in Blackmer would undermine the disclosed 'continuous' length
tubing, which would run contrary to Blackmer's disclosed goal." Reply Br.
3 (citing Blackmer, 2:6-10); see also Appeal Br. 17. Appellant concludes
"[b ]ecause there is no rationale to do away with continuous tubing in
Blackmer itself, and because modifying Blackmer as suggested would
contradict Blackmer's teachings, it would not have been obvious to modify
4 The Examiner relies on the teachings of Schabel and White for limitations
other than those discussed above. See Final Act. 4--5.
5 Examiner's Answer ("Ans."), dated Nov. 24, 2017.
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Application 13/665,100
Blackmer as proposed by the Examiner to arrive at the claimed invention."
Reply Br. 3
Appellant also contends "the Examiner gives no reason why the
skilled person would expect [that] adding more connections to Blackmer's
cannula would have any effect on the adjustability of Blackmer's supply
tubing" given that "Blackmer's system is already capable of such adjustment
without modification, such as by 'bending the cheek angle C (FIG. 6)' and
securing the cannula to the patient by 'looping the tubes over the ears of the
patient and sliding the slide-ring upwardly relative to the neck or chin of the
patient."' Appeal Br. 18 (citing Blackmer, 1:45--47; 2:6-16; 3:15-24); see
also Final Act. 8.
Appellant has the better position here. Based on Blackmer's
disclosure, we agree with Appellant that "modifying Blackmer's [ continuous
tubing] nasal cannula to include the claimed 'third' and 'fourth' lumens
connected to the 'first' and 'second' lumens [in view of the teachings of
Davenport, as suggested by the Examiner] would eliminate Blackmer's
single continuous lumen for each nostril." Appeal Br. 16; see also Final
Act. 3--4; Ans. 9-10.
Blackmer discloses an "object of the invention is to construct nasal
cannulae from continuous tubing" and accomplishment of this object "is
made with the present invention by provision of continuous lengths of tubing
such as PVC tubing or silicone tubing and the like, having ends thereof
permanently formed or shaped to define narine tubes." Blackmer, 2:3-10
( emphasis added). In addition, Blackmer's Figures 2-11 show a single
continuous tube for each of the patient's nares in contrast to Figure 1 of
Blackmer, which shows a device in the prior art having two continuous
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tubes whose outlet ends connect to inlet ends of a central narine tube
structure in which a portion could be replaced. See Blackmer Figs. 1-11.
Appellant, as noted above, also correctly points out Blackmer
discloses bending the cannula at a cheek angle C for adjustability. See
Blackmer, 3:15-24, Figs. 5, 6; see also Appeal Br. 18. Blackmer further
discloses ( 1) "[a] slip ring 15 is fitted over the tubes 11 and 12 near the
connector 13 for tightening or adjusting the loop formed by the tubes 11 and
12 relative to the body of the user or patient indicated generally at P"
(Blackmer, 3:2-5; emphasis added); (2) "[h]orizontal spacing or positioning
of the narine tubes 16 and 17 is determined by fit to the nasal flare F or tube
contact with the septum" (id. at 3:31-33; emphasis added); (3) "the
parallelism and spacing between the narine tubes 16 and 17 may be adjusted
by twisting the tubes and plastic sheath 20, 20' relative to the wire core 19,
19'" (id. at 3 :39-42; emphasis added); ( 4) "[i]f desired, one narine tube may
be bent downwardly at 16' and the other upwardly at 17' to simultaneously
direct gas into the nostril and mouth of the user as illustrated in FIG. 10" (id.
at 4:11-15); and (5) "the position of the narine tubes in a patient's nares can
be accomplished with precision and repeatability ... and once bent the
cannula will retain the precision, custom fit to the particular patient" (id. at
4 :45-51; emphasis added).
Stated differently, Blackmer discloses a nasal cannula that allows for
"readjustment of the supply tubes for repositioning the supply tubes for a
desired position of comfort for the patient" and that satisfies the
"requirement for different length tubing according to positioning the device
around the patient depending on locations of the supply source," or the "size
of the patient to comfortably wrap around the neck or head of the user based
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on preference without replacement of the nosepiece portion," which are
additional reasons advanced by the Examiner in support of the alleged
obviousness of modifying Blackmer in view of Davenport. See Ans. 9-10,
12; see also Final Act. 4, 8; Appeal Br. 18. Thus, the Examiner's proposed
modifications of Blackmer's nasal cannula in view of the teachings of
Davenport to arrive at the claimed subject matter lacks rational
underpinnings.
The Examiner applies the same rationale for independent claim 12.
See Final Act. 2--4. Thus, the Examiner's reason for combining the
teachings of Blackmer and Davenport is deficient for claim 12 as well.
Accordingly, for the foregoing reasons, we do not sustain the
Examiner's rejection of independent claims 1 and 12, and of claims 3-9 and
13-19 depending therefrom, as unpatentable over Blackmer, Davenport,
Schabel, and White.
DECISION
We REVERSE the decision of the Examiner to reject claims 1, 3-9,
and 12-19 as unpatentable over Blackmer, Davenport, Schabel, and White.
REVERSED
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