Ex Parte Fuisz et al

Patent Trial and Appeal Board

Feb 23, 2017

13423527 (P.T.A.B. Feb. 23, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
20386-135275 9248
EXAMINER
RAMACHANDRAN, VASUDA
ART UNIT PAPER NUMBER
3735
MAIL DATE DELIVERY MODE
13/423,527 03/19/2012 Richard C. Fuisz
42798 7590 02/23/2017
FITCH, EVEN, TAB IN & FLANNERY, LLP
120 South LaSalle Street, Suite 1600
Chicago, IL 60603-3406
02/23/2017 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 RICHARD C. FUISZ and JOSEPH M. FUISZ
Appeal 2017-000581
Application 13/423,527
Technology Center 3700
Before PATRICK R. SCANLON, GEORGE R. HOSKINS, and
GORDON D. KINDER, Administrative Patent Judges.
HOSKINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Richard C. Fuisz and Joseph M. Fuisz (“Appellants”)1 appeal under
35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1 and 3—16
in this application. Claim 2 is canceled. Appeal Br. (Claims App.). The
Board has jurisdiction over the appeal under 35 U.S.C. § 6(b). An oral
hearing was held on February 14, 2017.
We REVERSE.
1 The Appeal Brief identifies Appellants as the real parties in interest.
Appeal Br. 1.
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Appeal 2017-000581
Application 13/423,527
CLAIMED SUBJECT MATTER
Claims 1,15, and 16 are independent. Claim 1 illustrates the subject
matter on appeal, and it recites:
1. A method of avoiding a contaminant which would skew
an analyte result in a breath analysis method and of calibrating
subject of the breath analysis comprising,
immediately before a breath analysis method or collection
of breath for a breath analysis method, administering to the
subject a predetermined purified and standardized gas
composition not comprising ambient air,
the predetermined gas composition being free of a
contaminant which would skew an analyte result in a breath
analysis method.
Appeal Br. (Claims App.) (line breaks added).
REJECTIONS ON APPEAL
Claims 1, 3, 12, 13, and 15 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Wang (US 2010/0137733 Al, pub. June 3, 2010).
Claims 4—6, 9, 11, and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Wang.
Claims 7, 8, and 10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Wang and Restrepo (RD Restrepo & BK Walsh,
Humidification during invasive and noninvasive mechanical
ventilation: 2012, Respiratory Care, vol. 57(5), pp. 782—788 (May 2012)).
Claim 14 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Wang and Clemensen (US 2011/0098589 Al, pub. Apr. 28, 2011).
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Application 13/423,527
ANALYSIS
A. Anticipation by Wang
In rejecting claim 1 as anticipated by Wang, the Examiner finds
Wang’s paragraph 48 discloses the claimed administration of “a
predetermined purified and standardized gas composition not comprising
ambient air.” Final Act. 3. The cited Wang disclosure provides:
[T]he methods optionally include a “lung washout,” protocol
wherein several deep breaths are taken with pure air by the
individual and not measured. . . . [A]s is shown in FIG. 1C,
ambient air containing VOCs [volatile organic compounds] and
NO [nitric oxide] 189 is filtered to remove all ambient VOCs and
NO 190. In this manner, clean air is passed to the human
lung 198 devoid of VOCs and NO. The breath is exhaled 199
and the lung is washed.
Wang 148; see also id. 146 & Fig. 1A (substantially similar disclosure).
The Examiner reasons “filtered ambient air is no longer ambient air as it has
been put through a filtering process which no longer makes it ambient air but
instead filtered ambient air.” Final Act. 2; see also Ans. 3 (Wang’s “filter is
designed prior to use to remove VOCs and NO from an air sample in a
predetermined and standardized manner” and “produces] a purified clean
air sample with a predetermined and standardized composition of VOCs and
NO”). The Examiner relies on page 10 of Appellants’ Specification, which
states: “In one preferred aspect of the invention, the predetermined gas
composition is purified or filtered air" Spec. 10:3—4 (emphasis added);
Final Act. 2; Adv. Act. 2 (further citing Spec. 18:4—6, describing “[t]he
breathe in was filtered room air”). According to the Examiner, the
Specification thereby supports the determination that Wang’s supply of
filtered ambient air meets the limitation of claim 1. Final Act. 2.
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Application 13/423,527
Appellants assert Wang’s supply of ambient air having been filtered to
be free of VOCs and NO is not the administration of a predetermined
purified and standardized gas composition not comprising ambient air, as
claimed. Appeal Br. 7—8. Appellants assert Wang’s air supply, instead, “is
filtered ambient air” and “therefore is not predetermined since it includes
ambient conditions that are not predetermined and since it does include
filtered ambient air.” Id. at 7; Reply Br. 2—3. Appellants admit “purified or
filtered air is . . . one example of the predetermined purified and
standardized gas composition,” but contend the Examiner’s reading of
Appellants’ Specification takes the phrase “purified or filtered air” out of
context within the following passage:
In one preferred aspect of the invention, the predetermined gas
composition is purified or filtered air. What is important here is
the universality of the gas composition used so that the tests do
not include contaminants and have universality of location
relevancy.
While purity is important, the universality of the gas
administered is also of importance. If one does not use “bone
dry calibration gas” then it is preferable to use some other
composition that has been determined and purified so that the test
results are comparatively relevant.
Spec. 10:3—18; Appeal Br. 7—8.
We agree with Appellants that the Examiner has applied an overly
broad construction of claim 1 in finding Wang discloses administration of a
predetermined gas composition. A person of ordinary skill in the art, upon
reading Appellants’ Specification at page 10, lines 3—18 (as set forth above),
would understand the predetermined gas composition limitation of claim 1
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Application 13/423,527
requires administration of the same gas composition to the subject,
regardless of location. See also Spec. 9:10-21 (“[ijnthe ‘wash-out,’ the
lungs are cleansed using a predetermined gas composition, e.g., a prepared
gas composition''’ to provide “a pre-defmed blank slate against which to
measure analytes regardless of the ambient air to which the patient has been
subjected” by creating “a baseline . . . wherein local contaminants are
minimized and all patients start the testing at the same baseline regardless of
where they live or where they are tested’'’) (emphases added).
Wang’s removal of VOCs and NO from ambient air does not result in
the claimed predetermined gas composition, because Wang does not thereby
disclose administering the same gas composition to the subject, regardless of
location. Instead, Wang predetermines only that the gas composition given
to the subject air will not contain VOCs and NO. The ambient air at a first
location will differ from the ambient air at a second location in many
ways—including but not limited to VOC and NO composition—but Wang
does not disclose controlling for all such factors to administer the same gas
composition regardless of location. Thus, Wang’s administered gas
composition is not predetermined.
For the foregoing reasons, we do not sustain the rejection of claim 1
as anticipated by Wang. We likewise do not sustain the rejection of
claims 3,12, and 13, each of which depend from claim 1 (Appeal Br. (Claim
App.)), as anticipated by Wang. Independent claim 15, like claim 1, recites
administration of a predetermined gas composition not comprising ambient
air. Appeal Br. (Claims App.). We, therefore, likewise do not sustain the
rejection of claim 15 as anticipated by Wang.
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Application 13/423,527
B. Obviousness based on Wang
Claims 4—6, 9, and 11 each depend directly or indirectly from claim 1.
Appeal Br. (Claim App.). The Examiner’s obviousness analysis concerning
the subject matter added by these dependent claims does not cure the
deficiency of Wang as to claim 1, noted above. See Final Act. 6—9; Ans. 5.
For the reasons provided above in connection with claim 1, we do not
sustain the rejection of claims 4—6, 9, and 11 as unpatentable over Wang.
Independent claim 16, like claim 1, recites administration of a
predetermined gas composition not comprising ambient air. Appeal Br.
(Claims App.) The Examiner relies on Wang as disclosing that limitation in
claim 16. Final Act. 10. For the reasons provided above in connection with
claim 1, we do not sustain the rejection of claim 16 as unpatentable over
Wang.
C. Obviousness based on Wang and Restrepo
Claims 7, 8, and 10 each depend directly or indirectly from claim 1.
Appeal Br. (Claim App.). The Examiner’s obviousness analysis concerning
the subject matter added by these dependent claims does not cure the
deficiency of Wang as to claim 1, noted above. See Final Act. 10-13;
Ans. 4—5. For the reasons provided above in connection with claim 1, we do
not sustain the rejection of claims 7, 8, and 10 as unpatentable over Wang
and Restrepo.
D. Obviousness based on Wang and Clemensen
Claim 14 depends indirectly from claim 1. Appeal Br. (Claim App.).
The Examiner’s obviousness analysis concerning the subject matter added
by claim 14 does not cure the deficiency of Wang as to claim 1, noted above.
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Application 13/423,527
See Final Act. 14; Ans. 5. For the reasons provided above in connection
with claim 1, we do not sustain the rejection of claim 14 as unpatentable
over Wang and Clemensen.
DECISION
The Examiner’s rejections of claims 1 and 3—16 are each reversed.
REVERSED
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