Ex Parte DAVIDSON et al

Patent Trial and Appeal Board

Mar 1, 2019

15077515 (P.T.A.B. Mar. 1, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/077,515 03/22/2016
23117 7590 03/05/2019
NIXON & V ANDERHYE, PC
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Aaron Samuel DAVIDSON
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.
PTB-4398-1652 3065
EXAMINER
LOUIS,LATOYAM
ART UNIT PAPER NUMBER
3785
NOTIFICATION DATE DELIVERY MODE
03/05/2019 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AARON SAMUEL DAVIDSON,
ROBIN GARTH HITCHCOCK, MATTHEW EVES,
DAVID WORBOYS, and SUSAN ROBYN L YNCH 1
Appeal2018-005716
Application 15/077 ,515
Technology Center 3700
Before EDWARD A. BROWN, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a Decision on Appeal, under 35 U.S.C. § 134(a), from the
Examiner's final rejection of claims 1 and 21-39, which constitute all the
claims pending in this Application. Final Act. 1 (Office Action Summary).
1 ResMed Limited is identified as the applicant in the Application Data
Sheet dated March 22, 2016 submitted in association with this Application.
ResMed Limited is also identified as the real party in interest. See App. Br.
3. Accordingly, pursuant to 37 C.F.R. § 1.46, we understand ResMed
Limited as the Appellant.
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Application 15/077 ,515
We have jurisdiction under 35 U.S.C. § 6(b ). For the reasons explained
below, we do not find error in the Examiner's rejections of these claims.
Accordingly, we AFFIRM the Examiner's rejections.
CLAIMED SUBJECT MATTER
The disclosed subject matter "relates to a cushion for a patient
interface, the patient interface being used in the treatment, e.g., of Sleep
Disordered Breathing (SDB) with Non-Invasive Positive Pressure
Ventilation (NPPV)." Spec. ,r 2. Claim 1 is the sole independent claim, is
representative of the claims on appeal, and is reproduced below.
1. A cushion for a patient interface that delivers breathable
gas to a patient, the cushion including a nasal bridge region, a
pair of side of nose regions, a pair of upper cheek regions, a
pair of lower cheek regions and a chin region, the cushion
compnsmg:
a non-face contacting portion including a base wall
structured to be connected to a frame;
a face-contacting portion structured to engage the
patient's face,
wherein the face-contacting portion comprises a
membrane including a nasal bridge region, a pair of cheek
regions, and a chin region adapted to form a continuous seal on
a nasal bridge region, a pair of cheek regions, and a chin region
of the patient's face, respectively,
wherein the membrane has an inner edge defining an
aperture adapted to receive the patient's nose, and
wherein, when the cushion is stationary on a horizontal
surface and oriented such that the non-face contacting portion
faces towards the horizontal surface,
1) the membrane in the nasal bridge region of the
cushion has an exterior surface that includes two sides meeting
at a centerline, each side sloping downwardly from the
centerline,
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2) in a cross-sectional view, the exterior surface of
the membrane in the nasal bridge region of the cushion a)
curves downwardly along the centerline from a peak of the
membrane's curvature to the inner edge of the membrane, and
b) curves downwardly along the centerline from the peak of the
membrane's curvature in a direction away from the inner edge
of the membrane, to thereby form a convex shape,
3) in a cross-sectional view, the membrane in the
chin region of the cushion has an exterior surface forming a
convex shape such that the exterior surface curves downwardly
from a peak of the membrane's curvature to the inner edge of
the membrane, and
4) the exterior surface of the membrane in the chin
region of the cushion extends from one cheek region to the
other cheek region and forms a concave shape adapted to
engage the patient's chin region.
REFERENCES
Galleher, Jr. ("Galleher")
Lithgow et al.
Ging et al.
Davidson et al. ("Davidson '459")
Davidson et al. ("Davidson '214")
Davidson et al. ("Davidson '211 ")
Davidson et al. ("Davidson '280")
Wixey et al.
us 2,875,759
US 2004/0118406 Al
US 7,743,767 B2
US 8,220,459 B2
US 8,573,214 B2
US 8,616,211 B2
US 8,613,280 B2
WO 2004/007010 Al
THE REJECTIONS ON APPEAL
Mar. 3, 1959
June 24, 2004
June 29, 2010
July 17, 2012
Nov. 5, 2013
Dec. 31, 2013
Dec. 24, 2013
Jan.22,2004
Claims 1 and 21-39 are rejected under 35 U.S.C. § 112(b) as being
indefinite. Final Act. 2.
Claims 1, 21-24, 26, 30, 31, and 33-39 are rejected under 35 U.S.C.
§ I02(a) as anticipated by Lithgow. Final Act. 3.
Claim 25 is rejected under 35 U.S.C. § I03(a) as unpatentable over
Lithgow and Ging. Final Act. 8.
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Application 15/077 ,515
Claims 27-29 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Lithgow. Final Act. 9.
Claim 32 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Lithgow, Wixey, and Galleher. Final Act. 10.
Claim 1 is rejected on the ground of nonstatutory double patenting as
unpatentable over claim 9 of Davidson '211. Final Act. 12.
Claim 1 is rejected on the ground of nonstatutory double patenting as
unpatentable over claim 7 of Davidson '280. Final Act. 12.
Claim 1 is rejected on the ground of nonstatutory double patenting as
unpatentable over claim 10 of Davidson '214. Final Act. 13.
Claim 1 is rejected on the ground of nonstatutory double patenting as
unpatentable over claim 2 of Davidson '459. Final Act. 13.
ANALYSIS
The rejection of claims 1 and 21-39
as being indefinite
In regard to sole independent claim 1, the Examiner determines that
the term "'the other cheek region' [at] the second to last line is unclear since
multiple cheek regions are previously claimed (see lines 3 and 7)," and in
regard to claim 3 3, the Examiner determines that the term "' spring like' [at]
line 1 is indefinite as it's unclear what characteristics of a spring are
included in 'like."' Final Act. 2. The Examiner indicates that"[ c ]laims 21-
32 and 34-39 are rejected for their dependency on a rejected claim." Final
Act. 2.
In reply, "Appellant maintains that the features recited in the claims
are clearly defined," "[h]owever, in an effort to advance prosecution of the
application, Appellant proposes" to amend claims 1 and 33. App. Br. 17.
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However, no claim amendment has been entered by the Examiner. See
Advisory Action dated Jan. 12, 2018. Accordingly, because Appellant does
not provide arguments as to why the Examiner erred in making this
rejection, we summarily sustain the rejection of claims 1 and 21-39 as being
indefinite.
The rejection of claims 1, 21-24, 26, 30, 31, and 33-39
as being anticipated by Lithgow
Claims 1, 21, 24, 26, 30, 31, 33, and 34
Appellant argues claims 1, 21, 24, 26, 30, 31, 33, and 34 together (see
App. Br. 9-14) and claims 22, 23, 36, and 37 together (see App. Br. 12-14).
We select claims 1 and 22 for review, with the remaining claims standing or
falling with their respectively selected claim. See 37 C.F.R. § 1.37(c)(l)(iv).
We also address remaining claims 35, 38, and 39 separately below.
Claim 1
In addition to the other limitations of claim 1, the Examiner finds that
Lithgow discloses the centerline and cross-sectional arrangement
specifically recited in limitations 1) and 2) of claim 1. Final Act. 3--4. The
Examiner also provides two annotations of Figure 52 of Lithgow ( depicted
below) for further explanation. See Ans. 12.
FIG. 52 AG. 52
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"FIG. 52 is a rear perspective view of the cushion in accordance with
a preferred embodiment of the invention." Lithgow ,r 106.
The Examiner explains that as seen in the left annotated version of
Figure 52 above, "in the nasal bridge region (38), the cushion has two sides
(lateral sides[)]" and in the right annotated version of Figure 52, the cushion
has "two sides (inner and outer sides[] ... ) meeting at a center line ( dotted
line), each side sloping downwardly from the centerline ( as shown, lateral
sides and inner and outer sides slope downwardly from the dotted line)."
Ans. 12.
Appellant contends, "[t]he membrane in Lithgow does not include two
sides meeting at a centerline in the nasal bridge region, wherein each side
slopes downwardly from the centerline." App. Br. 9 (emphasis omitted); see
also Reply Br. 2. Appellant also argues that Lithgow's "Fig. 52 is a
somewhat odd perspective view of the cushion in that it is difficult to clearly
view the contours of the cushion." Reply Br. 3; see also App. Br. 12.
Appellant further challenges the Examiner's "interpretation of 'centerline'"
and contends that the Examiner's interpretation is not consistent with
limitation 2) in claim 1. Reply Br. 5; see also id at 3. According to
Appellant, "[a] better depiction of the shape of the nasal bridge of the
cushion can be seen in Figs. 9B and 40" of Lithgow such that "[i]t can be
seen that the 'inner and outer' sides of the membrane identified by the
Examiner would not slope downwardly f[ro]m the 'centerline' shown in the
marked-up Fig. 52." Reply Br. 5; see also App. Br. 10-12.
Limitation 2) of claim 1 is directed to a cross-sectional view of the
nasal bridge region and recites a membrane having one side that curves
downwardly from a peak to the inner edge of the membrane and another side
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that curves downwardly from the peak in a direction away from the inner
edge of the membrane. We, thus, agree with Appellant that the Examiner's
annotations of Figure 52 of Lithgow do not clearly show this arrangement
because Figure 52 does not depict a cross-sectional view of Lithgow' s
membrane. However, we do not agree with Appellant that Lithgow fails to
disclose this limitation. As indicated above, Figure 52 of Lithgow is one
view of Lithgow's cushion 14. Lithgow also states, "FIGS. 14--33 show
various cross-sections of the cushion 14." Lithgow ,r 141. Lithgow's
Figures 14 and 15 are reproduced below:
26
40
FIG, 14
FIG. 15
"FIG. 14 is a partial top view illustrating an embodiment of the
cushion [14]" and "FIG. 15 is a cross-section taken along line 15-15 of FIG.
14" which identifies "membrane 40." Lithgow ,r,r 67, 68; see also Lithgow
,r 116.
Line 15-15 of Figure 14 is taken along the nasal bridge region of
limitation 1 ). Figure 15 shows, in cross-sectional view, membrane 40
having a convex shape (i.e., opposite sides curving downwardly from a
peak) in accordance with limitation 2). Accordingly, we are not persuaded
by Appellant's contention that "[t]he membrane in Lithgow does not include
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two sides meeting at a centerline in the nasal bridge region, wherein each
side slopes downwardly from the centerline." App. Br. 9 (emphasis
omitted); see also id at 12; Reply Br. 3-5.
Thus, based on the record presented, we are not persuaded the
Examiner erred in rejecting claim 1 as being anticipated by Lithgow. We
sustain this rejection of claims 1, 21, 24, 26, 30, 31, 33, and 34.
Claim 22
Claim 22 depends from claim 1 and further recites, "wherein the
membrane in the nasal bridge region is configured to invert, in use, with a
rolling edge to accommodate patients having a range of nasal bridge
profiles." The Examiner finds that Lithgow discloses this limitation because
Lithgow "discloses that the membrane will accommodate small variations in
the shape of a patient's facial features." Final Act. 5 (referencing Lithgow
,r 119). According to the Examiner, Lithgow also teaches that the
"membrane is soft and is in front of a soft cushion and thus it is structured to
indent when a force is applied." Final Act. 5; see also Lithgow ,r 139. The
Examiner further states that Lithgow "disclose[ s] that the membrane is
pliable to form a seal to a patient's facial features." Final Act. 5 (referencing
Lithgow ,r,r 116-119); see also Ans. 13.
Appellant contends that Lithgow' s membrane 40 does not satisfy this
limitation. See App. Br. 12; see also Reply Br. 6. In support, Appellant
argues that "Lithgow does not appear to provide a teaching that the
membrane indents" and that "in the nasal bridge region, the membrane has a
concave shape" and thus, "it appears impossible for the membrane to
invert." App. Br. 13 see also Reply Br. 6.
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Appellant's contentions are unpersuasive. Because Lithgow teaches
that membrane 40 is flexible and "can accommodate small variations in the
shape of a patient's facial/nasal features without undue force," (Lithgow
,r 119), we are not persuaded that the Examiner's reliance on Lithgow for
disclosing this limitation was in error. See Final Act. 5.
For these reasons, we sustain the Examiner's rejection of claims 22,
23, 36, and 37 as being anticipated by Lithgow.
Claims 35, 38, and 39
Both claims 35 and 38 recite "the membrane forms a widest point of
the cushion," and claim 39 depends from claim 38. App. Br. 23-25 (Claims
App.). The Examiner finds that Lithgow's Figures 5 and 6C disclose this
limitation. Final Act. 7; see also Ans. 13 (referencing Lithgow Fig. 24).
There is merit to Appellant's contention that the Examiner has not
shown that Lithgow's membrane 40 forms a widest point of the cushion.
App. Br. 14. 2 As Appellant explains "the outer edge 60 of the gusset 50 (not
the membrane) in Lithgow forms the widest point of the cushion ( see Fig.
6C)." App. Br. 14; see also Lithgow Fig. 5. We note that in the Answer, the
Examiner flips Lithgow' s Figure 24 on its side and annotates "Widest point"
in the Figure. See Ans. 13. The Examiner effectively annotates the height
of Lithgow's cushion and a skilled artisan would not consider the direction
annotated in the Examiner's Figure 24 ofLithgow as the width of the
cushion. See Reply Br. 7.
2 In the Appeal Brief, Appellant refers to membrane 32 rather than
membrane 40. See App. Br. 14. As both the Examiner and Appellant
previously refer to membrane 40 throughout their arguments, we understand
the reference to item 32 to be a typographical error.
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For these reasons, we do not sustain the Examiner's rejection of
claims 35, 38, and 39 as being anticipated by Lithgow.
The rejection of claim 25
as being obvious over Lithgow and Ging
The rejection of claims 27-29
as being obvious over Lithgow
Appellant does not provide any substantive arguments with respect to
these rejections and, instead, appears to rely on the arguments provided for
claim 1. See App. Br. 9-19; see also Reply Br. 2-10.
As we find no deficiencies in the Examiner's rejection of independent
claim 1 as being anticipated by Lithgow, we likewise sustain the Examiner's
rejections of claim 25 as being obvious over Lithgow and Ging, and of
claims 27-29 as being obvious over Lithgow.
The rejection of claim 32
as being obvious over Lithgow, Wixey, and Galleher
Claim 32 recites "wherein the cushion has only a single-walled
construction formed by the membrane in a majority of the chin region." The
Examiner finds that "Wixey teaches providing a single walled construction
(see [F]ig. 19) in parts of the cushion by removing the underlying cushion"
and that "Galleher teaches from [F]ig. 1 that the cushion is removed in the
chin region ( as shown, cutouts 9, 11 are provided in the nasal bridge and
chin regions; col. 2 lines 29-35) such that the membrane would be able to
flex." Final Act. 10. The Examiner thereafter combines Lithgow, Wixey,
and Galleher and provides a reason for doing so. See Final Act. 10.
Appellant contends, "[t]he proposed combination" does not teach this
chin limitation because "Lithgow does not disclose a 'cut-out convex
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portion' in the chin region." App. Br. 15 ( emphasis omitted); see also Reply
Br. 8.
This argument is unpersuasive because claim 32 and the claim that
claim 32 depends from does not require a "cut-out convex portion" in the
chin section. See Ans. 14. "[L ]imitations are not to be read into the claims
from the specification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir.
1993); see also In re Self, 671 F.2d 1344, 1348 (CCPA 1982)
("[A]ppellant's arguments fail from the outset because ... they are not based
on limitations appearing in the claims.").
Appellant next argues that "Wixey and Galleher do not make up for
the shortcomings of Lithgow" because "the device in Wixey is a nasal mask,
and unlike the pending claims and primary reference Lithgow, does not
include a chin region." App. Br. 15-16 (emphasis omitted); see also Reply
Br. 8.
This argument is unpersuasive. To the extent that Appellant is
arguing that Wixey' s nasal mask is non-analogous art, we do not agree
because two criteria have evolved for determining whether prior art is
analogous: (1) whether the art is from the same field of endeavor, regardless
of the problem addressed, and (2) if the reference is not within the field of
the inventor's endeavor, whether the reference still is reasonably pertinent to
the particular problem with which the inventor is involved. In re Clay, 966
F.2d 656, 658 (Fed. Cir. 1992). Wixey's nasal mask, Appellant's cushion
for a patient interface, and Lithgow's cushion for a respiratory mask
assembly, all relate to a nasal cushion interface and, thus, are within the
same field of endeavor. Further, Wixey's nasal mask is reasonably pertinent
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to the particular problem with which the inventor is involved, that is, to
provide a cushion and nasal interface.
Appellant argues that Wixey "has a thin bridge or membrane 2048 in
the nasal bridge region." App. Br. 16. However, claim 32 does not preclude
a thin bridge or membrane in the nasal bridge region. Further, the Examiner
relies on Wixey as disclosing "providing a single walled construction."
Final Act. 10. "Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references. . . . [The reference] must be read, not in
isolation, but for what it fairly teaches in combination with the prior art as a
whole." In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Appellant contends that "Galleher does not teach or suggest removing
the pliable material from the mask where the walls 6, 7 are still present" and
thus, "Galleher does not teach or suggest a structure that allows the
membrane in the chin region to readily flex inwardly toward a breathing
cavity of the cushion when the cushion is worn." App. Br. 17; see also
Reply Br. 9.
This argument is unpersuasive in that it does not address the rejection.
The Examiner relies on Galleher as disclosing "from [F]ig. 1 ... the cushion
is removed in the chin region ( as shown cutouts 9, 11 are provided in the
nasal bridge and chin regions; col. 2 lines 29-35) such that the membrane
would be able to flex." Final Act. 10; see also Ans. 15.
Accordingly, and based on the record presented, we are not persuaded
the Examiner erred in rejecting claim 32 as being obvious over Lithgow,
Wixey, and Galleher. We, thus, sustain this rejection of claim 32.
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The rejection of claim 1 on the ground of nonstatutory double patenting over
(a) Davidson '211; (b) Davidson '280; (c) Davidson '214; and, (d)
Davidson '249
The Examiner determines that "[t]he instant claim 1 is a broader
version of the patented claim 9" of Davidson '211, of the patented claim 7 of
Davidson '280, of the patented claim 10 of Davidson '214, and of the
patented claim 2 of Davidson '459. Final Act. 12-13. The Examiner also
determines that "[a]ny infringement over the patented claim[s] would also
infringe the instant claim[]" and "[h]ence the instant claim does not differ in
scope over" these previously patented claims. Final Act. 12-13.
Appellant contends that "the Examiner has not attempted to match the
elements of the pending claims against the features of the patented claims"
and thus, "a prima facie case of double patenting has not been set forth."
App. Br. 18.
The Manual of Patent Examining Procedure states that "[a]
nonstatutory double patenting rejection is appropriate where the conflicting
claims are not identical, but at least one examined application claim is not
patentably distinct from the reference claim(s) because the examined
application claim is either anticipated by, or would have been obvious over,
the reference claim(s)." MPEP § 804(II)(B). In the case of anticipation,
[t]he nonstatutory double patenting rejection ... should explain
the fact that the species or sub-genus claimed in the conflicting
patent or application anticipates the claimed genus in the
application being examined and, therefore, a patent to the genus
would improperly extend the right to exclude granted by a
patent to the species or sub-genus should the genus issue as a
patent after the species or sub-genus.
MPEP § 804(II)(B)(l ). In the case of obviousness, an
analysis should make clear:
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(A) The differences between the inventions defined by the
conflicting claims - a claim in the patent compared to a claim
in the application; and
(B) The reasons why a person of ordinary skill in the art would
conclude that the invention defined in the claim at issue would
have been an obvious variation of the invention defined in a
claim in the patent.
MPEP § 804(II)(B)(2). Here the Examiner has not performed either an
anticipation or obviousness analysis as described above. As such, we agree
with Appellant that "a prima facie case of double patenting has not been set
forth." App. Br. 18.
We, thus, do not sustain the Examiner's rejection of claim 1 on the
ground of nonstatutory double patenting over claim 9 of Davidson '211,
over claim 7 of Davidson '280, over claim 10 of Davidson '214, and over
claim 2 of Davidson '459.
DECISION
The Examiner's rejection of claims 1 and 21-39 under 35 U.S.C.
§ 112(b) as being indefinite is affirmed.
The Examiner's rejection of claims 1, 21-24, 26, 30, 31, 33, 34, 36,
and 37 under 35 U.S.C. § 102(a) as anticipated by Lithgow is affirmed.
The Examiner's rejection of claims 35, 38, and 39 under 35 U.S.C.
§ 102(a) as anticipated by Lithgow is reversed.
The Examiner's rejection of claim 25 under 35 U.S.C. § 103(a) as
unpatentable over Lithgow and Ging is affirmed.
The Examiner's rejection of claims 27-29 under 35 U.S.C. § 103(a) as
unpatentable over Lithgow is affirmed.
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The Examiner's rejection of claim 32 under 35 U.S.C. § 103(a) as
unpatentable over Lithgow, Wixey, and Galleher is affirmed.
The Examiner's rejections of claim 1 on the grounds of nonstatutory
double patenting are reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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