Ex Parte Genger et al

Patent Trial and Appeal Board

Dec 15, 2016

13486333 (P.T.A.B. Dec. 15, 2016)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
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Alexandria, Virginia 22313-1450
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/486,333 06/01/2012 Harald GENGER PTB-4750-115 6409
23117 7590 12/19/2016
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
FOREMAN, JONATHAN M
ART UNIT PAPER NUMBER
3736
NOTIFICATION DATE DELIVERY MODE
12/19/2016 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 HARALD GENGER and CLAUS NEGELE
Appeal 2015-001225
Application 13/486,3331
Technology Center 3700
Before JENIFFER D. BAHR, JAMES P. CALVE, and
FREDERICK C. LANEY, Administrative Patent Judges.
LANEY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Harald Genger and Claus Negele (Appellants) appeal under
35 U.S.C. § 134(a) from the Examiner’s Final decision rejecting claims
21—38. We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellants, the real party in interest is ResMed R&D
Germany. Appeal Br. 3 (filed April 25, 2014).
Appeal 2015-001225
Application 13/486,333
INVENTION
Appellants’ invention “relates to a device for detecting electrical
potentials in the forehead region of a patient.” Spec. 12.
Claim 21, reproduced below, is independent and illustrative of the
claimed invention.
21. An apparatus for detecting electrical potentials on a patient
comprising:
a forehead support element adapted to cooperate with a
breathing mask;
an electrode device adapted to be applied in the forehead
region of a patient;
the electrode device being arranged on the forehead
support element;
wherein the forehead support element is adapted to
establish the application position of the electrode device.
Appeal Br. 16 (Claims App.).
REJECTIONS
I. The Examiner rejected claims 21—24 and 26—31 under
35 U.S.C. § 102(e) as anticipated by Karakasoglu (US
6,171,258 Bl, iss. Jan. 9, 2001).
II. The Examiner rejected claims 21, 23, 24, 26, 27, 31, and 33—38
under 35 U.S.C. § 103(a) as unpatentable over Brown (US
6,000,395, iss. Dec. 14, 1999) and Levin (US 6,167,298, iss.
Dec. 26, 2000).
III. The Examiner rejected claim 25 under 35 U.S.C. § 103(a) as
unpatentable over Brown, Levin, and Imran (US 5,479,934, iss.
Jan. 2, 1996).
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Appeal 2015-001225
Application 13/486,333
IV. The Examiner rejected claim 32 under 35 U.S.C. § 103(a) as
unpatentable over Karakasoglu and Fischell (US 6,230,049 Bl,
iss. May 8, 2001).
ANALYSIS
Rejection I (Anticipation of Claims 21—24 and 26—31)
Claim 21 requires “a forehead support element adapted to cooperate
with a breathing mask,” which the Examiner finds Karakasoglu discloses,
identifying acoustical device 36 as a “breathing mask” to evidence such
cooperation. Final Act. 2. The Examiner finds further that “element (37) of
Karakasoglu et al. is a breathing mask in that it is positioned on a user’s face
and is intended to associate with a user’s breathing.” Id. at 5 (citing
Karakasoglu, col. 3,11. 1—24). Appellants argue the Examiner is mistaken
because the acoustical device is not a breathing mask, under any reasonable
interpretation of that term. Appeal Br. 6—7. In response, the Examiner
asserts, “[a] ‘mask’, per Merriam-Webster’s, is a cover or partial cover for
the face.” Ans. 5. “[T]he Examiner maintains that [Karakasoglu’s element
36/37] is reasonably interpreted as a breathing mask” because “it partially
covers a user’s face” and is associated with a user’s breathing. Id. We agree
with Appellants that the Examiner’s reliance on Karakasoglu’s acoustical
device depends on an unreasonably broad interpretation of “breathing
mask.”
In these proceedings, claims are given their broadest reasonable
interpretation consistent with the Specification. In re Yamamoto, 740 F.2d
1569, 1571 (Fed.Cir.1984). While the Examiner gives the terms their
broadest reasonable construction, “the construction cannot be divorced from
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Application 13/486,333
the [Specification and the record evidence.” In reNTP, Inc., 654 F.3d
1279, 1288 (Fed.Cir.2011). “The construction that stays true to the claim
language and most naturally aligns with the patent's description of the
invention will be, in the end, the correct construction.” Nystrom v. TREX
Co., 424 F.3d 1136, 1142 (Fed. Cir. 2005) (citations omitted).
We note first that Merriam-Webster provides several definitions for
the term “mask.” See Mask Definition, Merriam-Webster.com,
http://www.merriam-webster.com/dictionary/mask (last visited on Dec. 5,
2016). Presumably, to support the construction “a cover or partial cover for
the face,” Examiner relies on the Merriam-Webster definition that reads, “a
cover or partial cover for the face used for disguised Id. (emphasis added).
In doing so, the Examiner implicitly rejected the alternative “a device
covering the mouth and nose to facilitate inhalation” definition as the
broadest reasonable interpretation. Id. (emphasis added).
This was error because the claims and Specification provide a context
for the term “mask” that leads to the conclusion that it must be limited to “a
device covering the nose and/or mouth to facilitate inhalation.” In the
claims, the term “breathing” modifies the term “mask” and dependent claim
3 8 recites, “wherein the breathing mask delivers breathing gas to or from the
patient.” Appeal Br. 16, 19 (Claims App.). The Specification consistently
describes a “breathing mask” as a device that seals off an internal space from
the ambient atmosphere “for feeding a respiration gas to a patient.” Spec.
11 17, 35, 39, Figs. 1 and 7. Given this background, it was unreasonable for
the Examiner to adopt the broader meaning Merriam-Webster provides for
the term “mask” in the context of a disguise.
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Application 13/486,333
Because Karakasoglu’s acoustical device does not cover the nose
and/or mouth to facilitate inhalation, instead it “acts as a respiratory sound
sensor which is dedicated to sense sound intensity in dB” (Karakasoglu, col.
3,11. 19—21), a preponderance of the evidences fails to support the
Examiner’s finding that Karakasoglu discloses a “breathing mask,” as
alluded to in claim 21. Inasmuch as the Examiner’s finding that
Karakasoglu discloses “a head support element adapted to cooperate with a
breathing mask” is premised on the Examiner’s position that Karakasoglu’s
acoustical device 36 (or single body 37 of which it is formed) is a “breathing
mask,” a preponderance of the evidences also fails to support the Examiner’s
finding that Karakasoglu anticipates dependent claims 22—24 and 26—31.
Therefore, we do not sustain the Examiner’s rejection of claim 21—24 and
26—31 as being anticipated by Karakasoglu.
Rejection II—III (Obviousness of Claims 21, 23—27, 31, and 33—38)
For Rejections II—III, the Examiner relies on Brown (Final Act. 3—5),
which Appellants contend is non-analogous art (Appeal Br. 9-11). The
Examiner finds Brown is reasonably pertinent because, “like the present
invention, [it] is related to incorporating sensing elements into a breathing
mask.” Final Act. 5; see also Ans. 6. Notably, the Examiner does not
suggest Brown is from Appellants’ same field of endeavor. Appellants
argue persuasively the Examiner’s finding is improper and unsupportable.
Appeal Br. 11.
Under the “analogous art test,” which “governs the question of
whether a skilled artisan would have looked to an unrelated prior art
reference,” “a reference is either in the field of [Appellants’] endeavor or is
reasonably pertinent to the problem with which the inventor was concerned
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Application 13/486,333
in order to rely on [that] reference as a basis for rejection.” In re Natural
Alternatives, LLC, 2016 WL 4536573, at *4 (Fed. Cir. 2016) (unpublished)
(quoting In re Kahn, 441 F.3d 977, 986—87 (Fed. Cir. 2006)). “[I]t was the
burden of the examiner, not Appellants, to set forth a prima facie case
explaining why a person of ordinary skill in the art would have been
motivated to combine references in disparate technological fields.” Id. To
satisfy this burden, the Examiner must provide a supportable reason “why a
person of ordinary skill in the art would have found [Brown] to be
‘reasonably pertinent to the problem with which the inventor was
concerned.’” Id. (quoting In re Kahn, 441 F.3d at 986—87).
Identifying paragraphs 3—6 from the Specification, Appellants argue
persuasively that the problem facing the inventors was “a desire to improve
the reliability of detection of electrical potentials in the forehead region of a
patient and to permit application of the required electrodes in a manner that
is agreeable to the patient.” Appeal Br. 10. “Electrical potentials” provide
information that may be used to “draw conclusions about the brain activity
of a human being ... to determine the individual sleep states” of a sleeping
person. Spec. 13. Appellants contend, “[t]he correct application of such
electrodes requires particular care and is frequently found to be unpleasant
by the patient.” Id. at | 5. On the other hand, Appellants also argue
persuasively “there is nothing in Brown that is reasonably pertinent to these
problems.” Appeal Br. 10. Appellants correctly point out that Brown relates
to providing protection against hypothermia and avalanches. Id. at 11 (citing
Brown, col. 1,11. 17—20; col. 2,1. 48—col. 3,1. 41). We note further that the
sensors Brown discloses relate to sensing “skin temperature of the user,
respiratory rate of the user, snow weight impacting on the user, noise level
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Application 13/486,333
and an amount of oxygen in the atmosphere surrounding the user.” Brown,
col. 3,11. 58-62.
Although the Examiner broadly characterizes Brown as “related to
incorporating sensing elements into a breathing mask,” no supporting
evidence for that position is provided, and we are unable to identify any
suggestion in Brown of a desire to incorporate sensors into a breathing mask.
Moreover, the Examiner fails to explain how the objective of improving an
avalanche and hypothermia protective system would be reasonably pertinent
to the objective of improving the reliability and comfort of sensors placed on
a person’s forehead to measure electrical potentials. By failing to address
this difference in the objectives of the Brown and the claimed invention, the
examiner failed to set forth aprima facie case for motivation to combine.
Therefore, we do not sustain the Examiner’s rejection of claims 21, 23—27,
31, and 33—38 as unpatentable.
Rejection IV (Obviousness of Claim 32)
Claim 32 depends from claim 31, which depends from claim 21.
Appeal Br. 17—18 (Claims App.). Because a preponderance of the evidence
does not support the Examiner’s finding Karakasolu anticipates claim 21
(see supra Rejection I) and the Examiner does not rely on Fischell to cure
the deficiencies, we do not sustain the Examiner’s rejection of claim 32 as
unpatentable.
SUMMARY
The Examiner’s anticipation rejection of claims 21—24 and 26—31 is
reversed.
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Appeal 2015-001225
Application 13/486,333
The Examiner’s rejection of claims 21, 23—27, and 31—38 as
unpatentable is reversed.
REVERSED
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