Ex Parte Hanlon et al

Patent Trial and Appeal Board

Sep 14, 2016

12569074 (P.T.A.B. Sep. 14, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/569,074 0912912009 James G. Hanlon
54964 7590 09/19/2016
Covidien (Senniger Powers)
Attn: IP Legal Department
15 Hampshire Street
Mansfield, MA 02048
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.
H-KN-01140/COVV 1140 7607
EXAMINER
CARREIRO, CAITLIN ANN
ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
09/19/2016 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):
iplegalus@covidien.com
uspatents@senniger.com
medtronic_mitg-pmr_docketing@cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES G. HANLON and DAVID RORK SWISHER
Appeal2015-000006
Application 12/569,0741
Technology Center 3700
Before MICHAEL C. ASTORINO, PHILIP J. HOFFMANN, and
JAMES A. WORTH, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-20. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We REVERSE.
1 According to the Appellants, "the real party in interest in the above-
referenced application has changed to Medtronic plc of Dublin, Ireland,
which became, on January 26, 2015, the ultimate parent entity of the
assignee of record, Covidien LP, a Delaware limited partnership, having a
place of business in Mansfield, MA." Letter to the PTAB (filed Apr. 3,
2015).
Appeal2015-000006
Application 12/569,074
Claimed Subject Matter
Claims 1 and 20 are the independent claims on appeal. The claimed
invention "relates to a porous insert located within a flow path of a port for
attenuating noise generated from air flow into an inflatable chamber of [a]
compression garment." Spec., para. 1. Claim 1, reproduced below, is
illustrative of the subject matter on appeal.
1. A reduced noise pneumatic compression garment comprising:
a flexible member adapted to conform to at least a portion
of a limb of a human body and to retain itself on the limb;
a bladder associated with the flexible member
conformable to at least a portion of the limb, the bladder defining
an inflatable chamber and having an opening through which the
inflatable chamber is inflated;
a port mounted on the bladder, the port having an air inlet,
an air outlet, and an air flow path between the air inlet and air
outlet, wherein the air inlet is adapted for communication with a
source of pressurized air and the air outlet is in communication
with the inflatable chamber via the opening in the bladder for
delivery of air from the source of pressurized air into the
inflatable chamber through the air flow path for inflating the
inflatable chamber and thereby applying a compression force to
the limb when the flexible member is on the limb; and
a porous insert located within the flow path of the port
between the air inlet and the air outlet for reducing noise from air
flow through the port into the inflatable chamber.
Rejections
Claims 1-3, 11-15, 17, 18, and 20 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Meyer (US 2007/0135743 Al, pub. June 14,
2007) and Amann (US 7,141,101 B2, iss. Nov. 28, 2006).
Claims 4--10 and 19 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Meyer, Amann, and Grim (US 5,353,525, iss. Oct. 11,
1994).
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Appeal2015-000006
Application 12/569,074
Claim 16 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Meyer, Amann, and Roberts et al. (US 2003/0213368 Al, pub. Nov. 20,
2003 (hereinafter "Roberts")).
ANALYSIS
The Examiner finds that Meyer discloses substantially all of the
subject matter of claim 1, including a compression garment (compression
apparatus 10) having a port (port 34) mounted on a bladder (inflatable
member 14). Final Act. 3. The Examiner finds that Meyer fails to disclose
"a porous insert located within the flow path of the port between the air inlet
and the air outlet," as recited in claim 1. Final Act. 4. To remedy the
deficiency of Meyer's disclosure with regard to the subject matter of claim 1
the Examiner turns to Amann's disclosure. Final Act. 4. The Examiner
finds that Amann' s pair of noise attenuating members 24 are located within
an air flow path between an air inlet opening 18 and air outlet opening 38 for
reducing noise from air flow through filter assembly 10. See Final Act. 4
(citing Amann, col. 3, 11. 63---64, col. 4, 11. 36, 38--45, 59-61); Ans. 13-14;
Amann, Figs. 2, 3. Notably, Amann's pair of noise attenuating members 24
are located in first chamber 20 of filter assembly 1 O; and filter assembly 10
is part of a larger air flow path of an oxygen concentrator or other medical
application in the home care medical equipment industry. The Examiner
concludes:
[i]t would have been obvious to one having ordinary skill in the
art ... to modify the port of Meyer to have a porous insert located
within the flow path of the port between the air inlet and the air
outlet for reducing noise, as in Amann, since it is well known that
noise attenuation is an issue with compressors and is undesirable
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Appeal2015-000006
Application 12/569,074
especially in home, hospital or nursing home environments when
a patient is undergoing treatment.
Final Act. 4 (citation omitted); see Amann, col. 1, 1. 65 - col. 2, 1. 5.
The Appellants contend that the Examiner's rejection lacks rational
underpinning because it fails to explain "why one skilled in the art would
have placed Amann's noise attenuating member 22 in the inlet [port] of
Meyer's compression device 10." Appeal Br. 5; see Reply Br. 3. The
Appellants support this contention by pointing out that the Examiner's
rationale fails to show that Meyer's port 34 is a source of noise, whereas
Amann' s filter assembly 10 is taught to be a source of noise. Appeal Br. 6.
Additionally, the Appellants' assert that Meyer's port 34 is positioned
downstream of a compressor whereas Amann' s filter assembly 10 is
positioned upstream of a compressor. See Appeal Br. 5. The Appellants'
contention is persuasive.
In response, the Examiner explains that air flow through a component
causes noise regardless of where a compressor is positioned. See Ans. 13-
15. However, we agree with the Appellants' contention that:
to the extent the Examiner's position is that air flow through any
component creates noise and is susceptible to the same solution
for noise suppression regardless of the configuration of the
overall system in which the air flow occurs, Applicant
respectfully submit this position is an an [sic] overly broad
statement of the problem that has not been shown to be supported
by a rational underpinning.
Reply Br. 4. In other words, the Examiner fails to explain persuasively why
Amann's teaching, i.e., placing noise attenuating members 24 in filter
assembly 10, would have been applied to Meyer's compression apparatus
within port 34.
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Appeal2015-000006
Application 12/569,074
Thus, we do not sustain the Examiner's rejection of independent
claim 1 and dependent claims 2, 3, 11-15, 17, and 18 as unpatentable over
Meyer and Amann.
Independent claim 20 includes similar requirements as independent
claim 1. The Examiner's rejection of claim 20 is substantially similar to the
rejection of claim 1. As such, for similar reasons as discussed above, we do
not sustain the Examiner's rejection of independent claim 20 as unpatentable
over Meyer and Amann.
The remaining rejections provided in the Final Office Action based on
Meyer and Amann in combination with Grim or Roberts rely on the same
reasoning as discussed above. And, the additional findings and reasoning
associated with these rejections do not remedy the deficiency in the
reasoning associated with the Examiner's rejection of claim 1. As such, we
do not sustain the rejections under 35 U.S.C. § 103(a) of: claims 4--10
and 19 as unpatentable over Meyer, Amann, and Grim; and, claim 16 as
unpatentable over Meyer, Amann, and Roberts.
DECISION
We REVERSE the Examiner's decision rejecting claims 1-20.
REVERSED
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