Ex Parte Gillies

Patent Trial and Appeal Board

Feb 15, 2018

13130694 (P.T.A.B. Feb. 15, 2018)

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.
13/130,694 05/23/2011 Mark Gillies BIDI0101PUSA 9818
22045 7590 02/20/2018
RROOKS KTTSHMAN P C
EXAMINER
1000 TOWN CENTER TSAI, MICHAEL JASPER
TWENTY-SECOND FLOOR
SOUTHFIELD, MI 48075 ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
02/20/2018 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):
docketing @brookskushman. com
kdilucia@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK GILLIES
Appeal 2016-001622
Application 13/130,6941
Technology Center 3700
Before WILLIAM A. CAPP, LEE L. STEPINA, and ERIC C. JESCHKE,
Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Mark Gillies (“Appellant”) seeks review under 35 U.S.C. § 134(a) of
the Examiner’s decision, as set forth in the Final Office Action dated
February, 12, 2015 (“Final Act.”), rejecting claims 1, 6—12, 14, and 19. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies Bidibots PTY LTD as the real party in interest.
Appeal Br. 2.
Appeal 2016-001622
Application 13/130,694
BACKGROUND
The disclosed subject matter “relates to delivery of continuous
positive airway pressure to an individual, such as an infant, to thereby
provide respiratory assistance.” Spec. 1,11. 5—6. Claim 1, the sole
independent claim, is reproduced below, with emphasis added and
reformatted from the version provided by Appellant:
1. A pressurized air delivery device for
providing respiratory assistance to an infant human,
said device comprising:
a pair of nasal conduits each having a nasal
prong for insertion into a nostril of an infant and an
arm oriented at approximately 90° to the nasal
prong forming an elbow shape;
an adjustable spacer for assembly including a
first and a second portion each connected to a
different one of the pair of nasal conduit arms
wherein the adjustable spacer maintains the nasal
prongs in spaced apart parallel orientation with the
arms extending in an opposed outward orientation
aligned along a common transverse axis, the first
and second portions adjustably cooperating with
one another to enable the spacing between the nasal
prongs to be varied to fit the infant; and
a pair of supply conduits having ends in fluid
communication with the outwardly oriented ends of
the pair of nasal conduits, the supply conduits
having opposed ends connectible to a source of
pressurized breathable gas.
2
Appeal 2016-001622
Application 13/130,694
REJECTIONS
1. Claims 1, 6, 8, 10-12, 14, and 19 stand rejected under
35 U.S.C. § 102(b) as anticipated by Wondka (US 2005/0066976 Al,
published Mar. 31, 2005).
2. Claim 7 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Wondka.
3. Claim 9 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Wondka and Doshi (US 7,856,979 B2, issued Dec. 28,
2010.
4. Claim 7 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Wondka and Cardoso (US 7,156,097 B2, issued Jan. 2,
2007).2
DISCUSSION
Rejection 1 — The rejection of claims 1, 6, 8,
10—12, 14, and 19 under 35 U.S.C. § 102(b)
For this Rejection, Appellant argues the patentability of independent
claim 1 and does not separately argue claims 6, 8, 10-12, 14, and 19, which
depend from claim 1. See Appeal Br. 5—7. Thus, we address claim 1, with
claims 6, 8, 10—12, 14, and 19, standing or falling with claim 1. See
37 C.F.R. § 41.37(c)(l)(iv) (2014).
Claim 1 recites, among other limitations, “a pair of nasal conduits
each having a nasal prong for insertion into a nostril of an infant and an arm
oriented at approximately 90° to the nasal prong forming an elbow shape.”
2 The Examiner adds this as a new ground of rejection in the Answer.
See Ans. 7.
3
Appeal 2016-001622
Application 13/130,694
Appeal Br., App. 1. The Examiner found that Wondka disclosed “a plurality
of nasal conduits 37 (delivery tubes) each having a nasal prong 100
(terminal section) insertion into a nostril and an arm oriented approximately
90 degrees to the nasal prong forming an elbow shape as shown in
Wondka’s FIG. 11B.” Final Act. 2.
Appellant argues that Wondka “does not disclose ‘a pair of nasal
conduits each having a nasal prong for insertion into a nostril of an infant
and an arm oriented at approximately 90° to the nasal prong forming an
elbow shape’ and therefore does not anticipate claim 1.” Appeal Br. 7.
Appellant states that the Examiner relies on Figure 1 IB of Wondka to
address the limitation at issue (shown in emphasis by Appellant and in the
recitation of claim 1 above). Id. at 5. Appellant argues that “Figures 11A
and 1 IB illustrate the same interface device 30 at two different perspectives”
and that “[i]n Figure 11 A[,] the tube 32 appears to bend at an approximately
143° angle, and in Figure 11B[,] the tube 32 appears to bend at an
approximately 94° angle.” Id. (discussing Wondka 1110). Appellant
contends that “Figures 11A and 1 IB illustrate the bend of the tube 32 at
different perspectives” and that “[t]his causes the bend to appear to have
different angles in the Figures 11A and 1 IB.” Id. Appellant states that
“[t]his phenomenon is illustrated in Exhibit A, which illustrates that a 120°
angle appears differently depending upon the viewing axis.” Id.', see also
Appeal Br., App. 3 (Exhibit A).
We first address the contention that “Figures 11A and 1 IB illustrate
the same interface device 30 at two different perspectives.” Appeal Br. 5.
Although we agree that Figures 11A and 1 IB both depict interface device 30
and we also agree that Figures 11A and 1 IB each show a different
4
Appeal 2016-001622
Application 13/130,694
perspective, the record does not support the position that Figures 11A and
1 IB depict interface device 30 in the same configuration relative to the user.
The understanding that Figures 11A and 1 IB depict interface device
30 in different configurations is supported by the description of those
Figures in Wondka. As noted by the Examiner, Wondka describes Figure
1 IB as depicting the “various angles of adjustment of the interface tubes of
FIG. 11 A.” Wondka 145 (quoted at Ans. 8). Moreover, a comparison of
Figures 11A and 1 IB shows that interface device 30 is depicted in a
different configuration relative to the user. For example, (1) Figure 1 IB
depicts distal tips 160 of interface device 30 in the user’s nostrils whereas
Figure 11A does not, and (2) Figure 1 IB depicts interface tubes 32 of
interface device 30 running along the user’s upper lip and jawline whereas
Figure 11A does not. Further, paragraph 110 of Wondka, which describes
Figures 11A and 1 IB together, discloses the ability to reconfigure the
disclosed structures to properly fit different users.
We turn now to Appellant’s statements that “[o]ne of ordinary skill in
the art knows that a true angle of a bend or elbow can only be measured
when viewed from an axis perpendicular to the plane in which the angle
lies” and that “[t]he fact that the off-axis view of Figure 1 IB causes the bend
to appear around 94° is irrelevant.” Appeal Br. 6.
The Examiner states that “the claim requires the arm be oriented to the
nasal prong at ‘approximately’ 90° and does not require exactly 90 degrees”
and states that “Wondka’s FIG 1 IB clearly shows an arm of the nasal
conduit being oriented at ‘approximately 90°’ to the nasal prong.” Ans. 8.
A preponderance of the evidence supports the Examiner’s factual
finding as to the relevant angle shown in Figure 1 IB. See Bosies v.
5
Appeal 2016-001622
Application 13/130,694
Benedict, 27 F.3d 539, 542 (Fed. Cir. 1994) (noting that the preponderance
of the evidence standard “only requires the fact finder ‘to believe that the
existence of a fact is more probable than its nonexistence’” (quoting In re
Winship, 397 U.S. 358, 371 (1970)). Figure 1 IB in Wondka differs from the
examples in Appellant’s Exhibit A in that Figure 1 IB depicts facial features
behind the angle in question (i.e., “a user’s facial anatomy” (| 110)), which
provides context for a viewer to assess the angle. Thus, even assuming that
the perspective of Figure 1 IB is not on “an axis perpendicular to the plane in
which the angle lies” (Appeal Br. 6), the preponderance of the evidence
supports the finding that the angle shown—when viewed in the context of
Figure 1 IB as a whole—falls within the scope of “approximately 90°.” See
Anchor Wall Sys. v. RockwoodRetaining Walls, Inc., 340 F.3d 1298, 1310—
11 (Fed. Cir. 2003) (“[W]e note that words of approximation, such as
‘generally’ and ‘substantially,’ are descriptive terms ‘commonly used in
patent claims ‘to avoid a strict numerical boundary to the specified
parameter.’” (quoting Ecolab, Inc. v. Envirochem, Inc., 264 F.3d 1358, 1367
(Fed. Cir. 2001))).
As to the argument that the Examiner “has failed to cite to any text of
Wondka to support his position and instead relies solely on a single drawing”
(Appeal Br. 7), we note that an Examiner may rely on a figure to satisfy a
claim limitation, even if the relevant aspect is not addressed in the text of the
reference. See In re Aslanian, 590 F.2d 911, 914 (CCPA 1979) (“[A]
drawing in a utility patent can be cited against the claims of a utility patent
application even though the feature shown in the drawing was unintended or
unexplained in the specification of the reference patent.”); see also In re
6
Appeal 2016-001622
Application 13/130,694
Mraz, 455 F.2d 1069, 1072—73 (CCPA 1972) (discussing the use of
drawings regarding limitations related to angles between components).
We turn now to Appellant’s argument that “[paragraph 92 [of
Wondka] clearly contradicts the Examiner’s interpretation of Figure 1 IB as
it states to avoid sharp bends, such as the claimed approximately 90° bend.”
Appeal Br. 7. Appellant highlights the following statements from paragraph
92 (with emphasis modified by Appellant):
At the inferior base of these distal straight terminal
sections 100 the interface tubes 32 assume the most gradual
curvatures 104 and 106 as possible while still fitting within the
anatomy .... This curved non-angulated configuration
minimizes flow resistance thus minimizing turbulence, leakage,
noise and the required pressure level.
Wondka 192 (discussing Figure 4).
We disagree that these statements show error in the Examiner’s
findings regarding Figure 1 IB. The general statements in this disclosure do
not address specific angle values and also do not undermine the specific
configuration disclosed in Figure 1 IB. See In re Meng, 492 F.2d 843, 847
(CCPA 1974) (“[A] drawing is available as a reference for all that it teaches
a person of ordinary skill in the art.”).
For the reasons above, we sustain the rejection of independent claim
1. Claims 6, 8, 10—12, 14, and 19 fall with claim 1.
Rejection 2 — The rejection of claim 7 under
35 U.S.C. § 103(a) over Wondka
Claim 7 depends directly from claim 1 and adds the limitation:
“wherein the nasal conduits are formed of a material that is more rigid than
the supply conduits.” Appeal Br., App. 1. The Examiner identified delivery
tubes 37 in Wondka as the recited “nasal conduits” and connectors 33 as the
7
Appeal 2016-001622
Application 13/130,694
“supply conduits.” Final Act. 5, 3; see also Wondka, Fig. 4 (showing
elements 33 and 37). The Examiner stated that Wondka “does not
specifically disclose that the [identified] nasal conduits are formed of a
material that is more rigid than the [identified] supply conduits.” Final Act.
5. The Examiner also stated:
However, since there is no criticality, one of ordinary skill in the
art would have considered the materials difference between the
nasal conduits and the supply conduits to be a matter of design
consideration and would be able to choose a material for the
nasal conduit to be more rigid than the material for the supply
conduit.
Id. at 5—6.
First, Appellant argues that paragraph 102 of Wondka “teaches the
opposite” of the limitation of claim 7. Appeal Br. 7. Specifically, Appellant
quotes the statement in paragraph 102 that “the interface tubes 32 preferably
have a durometer of about 30 A Shore to about 80 A Shore for the tubes 32
and a durometer of about 10 A to about 70 A for the distal end 36 and/or
sealing cushions 46.” Id. (discussing Wondka, Fig. 4). Appellant argues
that although “the ranges disclosed in paragraph 102 have overlap, the tube
32 is generally described as being harder (30—80 A Shore) than the distal end
36 (10-70 A Shore),” “[a] person having ordinary skill in the art. . . reading
Wondka would not be taught or suggested to make the distal ends 36 harder
than the tubes, as claimed in claim 7.” Id. at 8.
A reference teaches away “when a person of ordinary skill, upon
reading the reference, would be discouraged from following the path set out
in the reference, or would be led in a direction divergent from the path that
was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir.
1994). Paragraph 102 in Wondka does not lead in a direction divergent from
8
Appeal 2016-001622
Application 13/130,694
claim 7 because, based on the significant overlap in the disclosed ranges (30
A Shore to 70 A Shore), numerous potential embodiments would actually
satisfy claim 7. As such, paragraph 102 does not represent a teaching away.
See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“[M]ere disclosure
of alternative designs does not teach away.”).
Second, Appellant contends that the Examiner’s discussion of claim 7
relied on “official notice.” Appeal Br. 8. Appellant then rephrases various
aspects of the teaching away argument discussed above. Id. at 9.
We disagree that the original statement of the Rejection here relied on
official notice. See Final Act. 5—6. Regardless, in the Answer, the Examiner
states that “selection involves only a few options when there are two
overlapping ranges being cited, namely the nasal conduits of Wondka can be
selected to be softer, the same, or more rigid than the air supply conduit” and
that “[i]t would have been obvious to choose a more rigid nasal conduit than
the supply conduits to achieve desired functions of the respective parts.”
Ans. 9. According to the Examiner, “it is known in the art that nasal
conduits are necessary to be more rigid than the air supply conduits since the
nasal conduits are needed to maintain their shapes so that air can be
delivered into the patients without any distractions” whereas “air supply
conduits are known to be flexible so as to allow the user to adjust the
position of the air supply conduits with respect to the user’s face without
irritating the user, see also FIG. 1 of Wondka which shows the air supply
conduit 18 being less rigid than the nasal conduits 22.” Id. at 9—10.
In the Reply Brief, Appellant contends that the “Examiner admits that
Wondka alone does not render claim 7 obvious.” Reply Br. 3. We disagree.
In the Answer, the Examiner added Rejection 4 (based on Wondka and
9
Appeal 2016-001622
Application 13/130,694
Cardoso) but did not withdraw Rejection 2 (based on Wondka alone). See
Ans. 7, 9—11. Although the Examiner’s discussion of Rejection 2 also
makes certain findings regarding Cardoso, we view the discussion
summarized in the prior paragraph here as further developing the reasoning
to support the conclusion of obviousness of claim 7 based on Wondka alone
(i.e., Rejection 2). In the Reply Brief, Appellant does not address the
Examiner’s reasoning supporting Rejection 2. See Final Act. 5—6; Ans. 9—
10. We determine that the Examiner’s reasoning supports a prima facie case
of obviousness of claim 7 based on Wondka alone. See In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992). By not addressing the reasoning
provided, Appellant has not shown error in the relevant findings or the
conclusion as to obviousness.
For these reasons, we sustain the rejection of claim 7 under 35 U.S.C.
§ 103(a) as unpatentable over Wondka.
Rejection 3 — The rejection of claim 9
under 35 U.S.C. § 103(a)
Appellant does not separately argue claim 9, which depends from
claim 1. Thus, for the reasons discussed above (see supra Rejection 1), we
sustain the rejection of claim 9.
Rejection 4 — The rejection of claim 7 under
35 U.S.C. § 103(a) over Wondka and Cardoso
In the Answer, the Examiner provides a new ground of rejection of
claim 7 under 35 U.S.C. § 103 as unpatentable over Wondka and Cardoso.
See Ans. 7. The Examiner finds that “Cardoso teaches a pressurized air
delivery] device comprising nasal conduits (10) (nasal cannula) and supply
conduits (flexible feed tube from an oxygen tank or wall fitting).” Id.', see
10
Appeal 2016-001622
Application 13/130,694
also Cardoso, Fig. 2C (showing nasal cannula 10 and the unnumbered
“flexible feed tube” connecting to cannula 10 at proximal end 4). The
Examiner finds that Cardoso teaches that nasal cannula 10 is “more rigid”
than the flexible feed tube because Cardoso discloses that “[t]he material
used to construct the . . . nasal cannula 10 is preferably substantially rigid.”
Cardoso, col. 4,11. 50-52 {cited at Ans. 7). According to the Examiner,
it would have been obvious to one or ordinary skill in the art at
the time the invention was made to modify the nasal conduits and
the supply conduits of Wondka where the nasal conduits are
formed of a material that is more rigid than the supply conduits
as taught by Cardoso in order to maintain fixed alignment and
connections with a patient’s nose while the supply conduits are
flexible for flexing in different directions for different positions
and configurations of a ventilator relative to the patient’s head.
Ans. 7.
Appellant argues, “all Cardoso adds is that the supply hose 64 (of
Wondka) may be a flexible feed tube.” Reply Br. 3 (discussing Wondka,
Fig. 4). According to Appellant, “[t]he fact that supply hose 64 is flexible
says nothing about the relative rigidity between the delivery tubes 37 and the
connectors 33”—i.e., the identified “nasal conduits” and “supply conduits.”
Id.
With this argument, Appellant does not address the rejection as
articulated. In this Rejection, the Examiner proposes to modify the
identified “nasal conduits” and “supply conduits” of Wondka—i.e., delivery
tubes 37 and connectors 33—based on teachings of Cardoso to satisfy the
requirement of claim 7. See Ans. 7. The Examiner has not proposed
modifying supply hose 64 of Wondka.
Thus, we sustain the rejection of claim 7 under 35 U.S.C. § 103(a) as
unpatentable over Wondka and Cardoso.
11
Appeal 2016-001622
Application 13/130,694
DECISION
We affirm the decision to reject claims 1, 6, 8, 10-12, 14, and 19
under 35 U.S.C. § 102(b), we affirm the decision to reject claim 7 under
35 U.S.C. § 103(a) as unpatentable over Wondka, we affirm the decision to
reject claim 9 under 35 U.S.C. § 103(a), and we affirm the decision to reject
claim 7 under 35 U.S.C. § 103(a) as unpatentable over Wondka and
Cardoso.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
12