Ex Parte Curtis

Patent Trial and Appeal Board

Jun 16, 2016

12880879 (P.T.A.B. Jun. 16, 2016)

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.
12/880,879 09/13/2010 James Curtis AIDEA.00103 9979
22858 7590 06/16/2016
CARSTENS & CAHOON, LLP
P.O. Box 802334
DALLAS, TX 75380-2334
EXAMINER
LOUIS, LATOYA M
ART UNIT PAPER NUMBER
3771
MAIL DATE DELIVERY MODE
06/16/2016 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAMES CURTIS
____________

Appeal 2014-002066
Application 12/880,8791
Technology Center 3700
____________

Before HUBERT C. LORIN, BART A. GERSTENBLITH, and
BRADLEY B. BAYAT, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
James Curtis (“Appellant”) appeals under 35 U.S.C. § 134(a) from the
Examiner’s decision rejecting claims 1–4, 6–10, and 12–19. We have
jurisdiction under 35 U.S.C. § 6(b).

1 Appellant identifies “Ideas & Innovations, LLC” as the real party in
interest. Appeal Br. 2.
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Application 12/880,879

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Claimed Subject Matter
Claim 1, the only independent claim on appeal, is representative of the
claimed subject matter and is reproduced below.
1. A breathing air filtration device comprising:
a first non-rigid filter of memory foam comprising a
cavity,
a second non-rigid filter of memory foam comprising a
cavity,
a bridge connected to said first and second filter,
wherein said first and second filters include a disinfectant
agent.
Appeal Br. 13, Claims App.
Rejections
Appellant seeks review of the following rejections:
I. Claims 1–4, 7–10,2 13–17, and 19 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Dolezal (US 2009/0007919 A1, pub. Jan. 8,
2009), Koo (US 2005/0051170 A1, pub. Mar. 10, 2005), and Doshi
(US 2006/0150979 A1, pub. July 13, 20063);
II. Claim 6 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Dolezal, Koo, Doshi, and Russell (US 2009/0101151 A1, pub. Apr. 23,
2009);

2 The Examiner’s Answer indicates that claim 11 is included in this
rejection. Ans. 2. Claim 11, however, was cancelled previously and is not
on appeal. Amend. 3, 5 (filed Apr. 4, 2013); see also Final Act. Summary
(mailed Apr. 24, 2013) (identifying only claims 1–4, 6–10, and 12–19 as
pending in the application); Appeal Br. 2 (identifying the status of the claims
in the application and indicating that claims 5 and 11 were cancelled
previously).
3 Appellant (Appeal Br. 4) and the Examiner (Ans. 2) incorrectly identify the
serial number of Doshi as “2006/01590979.” (Emphasis added).
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III. Claim 12 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Dolezal, Koo, Doshi, and Chang (US 2009/0020125 A1, pub. Jan. 22,
2009);
IV. Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Dolezal, Koo, Doshi, and Witt (US 2006/0096600 A1, pub. May 11,
2006); and
V. Claims 1 and 12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Chang, Koo, and Doshi.
SUMMARY OF DECISION
We REVERSE.
ANALYSIS
Rejection I
The Examiner determines that the combination of Dolezal, Koo, and
Doshi would have rendered the subject matter of claims 1–4, 7–10, 13–17,
and 19 obvious to one of ordinary skill in the art at the time of the invention.
Ans. 2–3. With respect to claim 1, the Examiner finds that Dolezal discloses
most of the claim elements, but does not disclose that the first and second
filters include a disinfectant agent or disclose that the filters “comprise
memory foam.”4 Id. at 2. The Examiner relies upon Koo as teaching
“providing a disinfecting agent” and finds that it would have been obvious to
“provide the filters of Dolezal with a disinfecting agent as taught by Koo to
provide a more sanitary filter.” Id. The Examiner relies upon Doshi as

4 We note that the current language of claim 1 recites first and second filters
“of memory foam.” Original (now cancelled) claim 5 recited “wherein said
first and second filter comprises a memory foam.”
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teaching “providing memory foam” and finds that it would have been
obvious to “manufacture the outer surface of the filters of Dolezal with
memory foam as taught by Doshi to provide enhanced sealing.” Id. at 2–3.
Appellant asserts that “claim 1 has a limitation wherein the filters
comprise memory foam” and argues that the Examiner’s reliance on Doshi is
improper since “Doshi teaches preventing airflow which is in contrast to the
claimed breathing air filtration device which requires the flow of air.”
Appeal Br. 6.
In response to Appellant’s argument, the Examiner finds that Doshi
and Dolezal are both “related to nasal devices” and that one of ordinary skill
in the art “would be motivated and able to manufacture the nasal device of
Dolezal with memory foam as taught by Doshi to provide the advantage of
enhanced fit and comfort.” Ans. 6.
In the Reply Brief, Appellant asserts that “even if one of ordinary skill
in the art were to combine Dolezal and Doshi such that, as the Examiner
argues, to ‘manufacture the outer surface of the filters of Dolezal with
memory foam,’ such memory foam would not be a ‘filter of memory foam’
as recited in Claim 1.” Reply Br. 2. Appellant contends that Doshi merely
teaches use of memory foam as a “holdfast” that “provides a seal” rather
than “act[s] as a filter through which air would flow.” Id.
Doshi is directed to a “respiratory device . . . adapted to be removably
secured in communication with a respiratory cavity.” Doshi ¶ 20. Doshi
teaches use of “holdfasts” to “allow the [respiratory] device to be anchored,
positioned, and/or stabilized in any location that is subject to respiratory
airflow such as a respiratory cavity.” Id. ¶ 89. Doshi teaches forming the
holdfast “from a soft or compliant material that provides a seal,” specifically
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identifying “[s]oft shape memory materials” such as “urethane,
polyurethane, sponge, and others (including ‘foamed’ versions of these
materials).” Id. ¶ 96.
We agree with Appellant that the Examiner has not explained how the
proposed combination of Dolezal’s filter covered with memory foam on its
surface renders obvious “a . . . filter of memory foam,” as recited by claim 1.
Claim 1 recites that the filter is “of memory foam,” not that the memory
foam surrounds or otherwise covers the surface of the filter. Thus, the filter
itself is memory foam.5 The Examiner’s proposed combination does not
result in the structure as claimed and the Examiner has not proposed
modifying Dolezal such that the filter itself is memory foam. Accordingly,
we do not sustain the rejection.
Rejections II–IV
The Examiner rejected claims 6, 12, and 18 based on the same
combination of Dolezal, Koo, and Doshi. Ans. 4–5. Each of claims 6, 12,
and 18 depends from claim 1 and, thus, for the same reasons discussed with
respect to Rejection I, we do not sustain these rejections.
Rejection V
In rejecting claims 1 and 12 based on the combination of Chang, Koo,
and Doshi, the Examiner relies upon Chang to teach the same elements that
the Examiner relied upon in Dolezal in Rejection I. Ans. 5. As in Rejection
I, the Examiner relies upon Doshi to teach “providing memory foam” and
finds that it would have been obvious to “manufacture the outer surface of

5 Appellant’s Specification is consistent with this interpretation of the claim.
See Spec. ¶ 20 (“The filter 102 can be made of . . . memory foam . . . .”).
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the filters of Chang with memory foam as taught by Doshi to provide
enhanced sealing.” Id. at 5. Accordingly, for the same reasons discussed
with respect to Rejection I, the Examiner’s proposed combination of Chang,
Koo, and Doshi fails to result in the structure claimed and the Examiner has
not proposed modifying Chang such that the filter itself is memory foam.
Thus, we do not sustain the rejection.
DECISION
We reverse the Examiner’s decision rejecting claims 1–4, 6–10, and
12–19.
REVERSED