Ex Parte Klasek et al

Patent Trial and Appeal Board

Mar 30, 2017

11936822 (P.T.A.B. Mar. 30, 2017)

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.
11/936,822 11/08/2007 Paul Jan Klasek BKK-4398-744 1541
23117 7590 04/03/2017
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
LOUIS, LATOYA M
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
04/03/2017 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 PAUL JAN KLASEK, ALEXANDR VIRR, NATHAN JOHN
ROW, RONALD JAMES HUBY, and JACK WEI CHENG
Appeal 2014-001558
Application 11/936,8221
Technology Center 3700
Before CHARLES N. GREENHUT, THOMAS F. SMEGAL, and
JASON W. MELVIN, Administrative Patent Judges.
SMEGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Paul Jan Klasek et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s rejection2 under 35 U.S.C. § 103(a) of claims 42, 53,
57, 59-61, and 64—74 as unpatentable over Payton (US 2008/0028850 Al,
pub. Feb. 7, 2008), Makin (EP 0201985 Al, pub. Nov. 20, 1986), and Bartels
(US 4,621,632, iss. Nov. 11, 1986); of claims 43, 47—52, 55, 62, and 63 as
unpatentable over Payton, Makin, Bartels, and Edirisuriya (US 6,953,354 B2,
1 According to Appellants, the real party in interest is ResMed Limited.
Appeal Br. 3.
2 Appeal is taken from the adverse decision of the Examiner as set forth in
the Final Office Action, dated April 26, 2013 (“Final Act.”).
Appeal 2014-001558
Application 11/936,822
iss. Oct. 11, 2005); of claim 44 as unpatentable over Payton, Makin, Bartels,
and Gedeon (US 4,516,573, iss. May 14, 1985); and claim 45 as unpatentable
over Payton, Makin, Bartels, and Blackhurst (US 2004/0102731 A1, pub. May
27, 2004).3 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
Claim 42, the sole independent claim, is reproduced below and
illustrates the claimed subject matter, with disputed limitations emphasized.
42. A conduit for use in a respiratory apparatus for
delivering breathable gas to a patient, the conduit comprising:
a tube;
a helical rib on an outer surface of the tube;
at least three wires in contact with the outer surface of the
tube and supported between the helical rib and the outer surface
of the tube;
a connector connected to an end of the conduit, the
connector being configured to be connected to a flow generator
or a patient interface of the respiratory apparatus; and
a printed circuit board supported on the connector and
connected to the at least three wires, the printed circuit board
comprising a thermal fuse and a temperature sensor,
wherein one of the at least three wires is connected to the
temperature sensor to provide a signal to a power supply and
controller of the respiratory apparatus and two of the at least
three wires form a heating circuit.
ANALYSIS
Obviousness of claims 42, 53, 57, 59—61, and 64—74 over Payton,
Makin, and Bartels
3 Claims 1—41, 46, 54, and 56 have been canceled. See Amendments filed
August 28, 2009 and August 29, 2011.
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Appeal 2014-001558
Application 11/936,822
We are persuaded by Appellant’s arguments that the Examiner erred
in rejecting claims 42, 53, 57, 59-61, and 64—74 over Payton, Makin, and
Bartels. See Appeal Br. 12—17; Reply Br. 2—5.
In rejecting claim 42, the Examiner relies on Payton for teaching a
conduit in a respiratory apparatus for delivering breathable gas to a patient,
the conduit comprising, inter alia, “a tube (3); two wires (21, 28) which
form a heating circuit (see fig. 2),. . . and a printed circuit board (60). . .
being connected to the plurality of wires [,] the printed circuit board (60)
comprising a temperature sensor (23), wherein one of the wires is connected
to the temperature sensor (23) to provide a signal to a power supply and
controller (9, 18) of the respiratory apparatus.” Final Act. 3 (citing Payton,
Figs. 1, 2, and 4; 141, 16-19; 144,11. 1-5; 145,11. 1-10).
The Examiner recognizes that Payton does not specifically disclose “a
separate thermistor wire such that three wires are in contact with the outer
surface of the tube and supported between the helical rib and the outer
surface of the tube.” Id. However, the Examiner finds that Makin teaches
“helical rib (4) on an outer surface of the tube (2) and a separate thermistor
wire (10) such that three wires (8, 10, 12) are in thermal contact (page 4
lines 16—17) and/or indirect contact (i.e. wires 8, 10, 12 are in contact with
tube 2 via heater cable 4) with the outer surface of the tube (2).” Id. (citing
Makin, Figs. 2 and 3).
Based on these findings, the Examiner concludes that it would
have been obvious
to modify the heating wires and location of the heating wires of
Payton to include a separate temperature sensing wire [] located
on the outside of the tube as taught by Makin to provide more
efficient and accurate temperature signals and to minimize
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Appeal 2014-001558
Application 11/936,822
temperature overshoot as disclosed by Makin on page 4 last
paragraph.
Id.
In contesting the Examiner’s rejection as obvious over Payton, Makin,
and Bartels, Appellants first point out that “the Office Action provides no
evidence supporting this conclusory statement,” because “the last paragraph
of page 4 of Makin . . . provides no teaching regarding the number of wires
to be used in a tube heating system.” Appeal Br. 14. Appellants explain
that “Payton discloses a circuit arrangement that utilizes only two heater
(electrically conducting) wires,” and that “Makin also discloses a circuit
arrangement that utilizes only two electrically conducting wires.” Id. at 16.
Although noting that “Makin also discloses a support wire 12,” Appellants
point out “the support wire 12 is merely used for structural support and is
not connected to any circuit or voltage source,” so that it “is not a wire
comparable to the heater wire 8 and sensor wire 10 of Makin or the heater
wires 21 and 28 of Payton.” Id.
In response, the Examiner contends that even though “Payton does not
specifically disclose a separate thermistor wire,” that “Makin teaches in figs.
2 and 3 a separate thermistor wire (10) which would require a voltage,” and
reasons that “upon seeing the wires of Makin, one of ordinary skill in the art
would be able to modify the heating wires of Payton to include a separate
temperature sensing wire as taught by Makin to provide more efficient and
accurate temperature signals as disclosed by Makin. Ans. 11—12 (citing
Makin, page 5,11).
Appellants respond by further pointing out that “there is nothing in
Makin (or Payton) suggesting that adding a separate, dedicated thermistor
wire to the two heater wires of Payton will increase the efficiency and
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Appeal 2014-001558
Application 11/936,822
accuracy of temperature signals of the two-wire system of Payton,”
contending that “the Examiner provides no evidence that modifying Payton
to be a three-wire configuration provides more efficient and accurate
temperature signals.” Reply Br. 3^4.
We agree with Appellants that the Examiner fails to articulate a
reason or motivation supported by rational underpinning for adding a
separate, dedicated thermistor wire to the two heater wires of Payton.
Absent some articulated rationale for doing so, the Examiner’s conclusory
assertion is inadequate to support a conclusion of obviousness. See KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); see also In re Warner,
379 F.2d 1011, 1017 (CCPA 1967) (“The legal conclusion of obviousness
must be supported by facts. Where the legal conclusion is not supported by
facts it cannot stand.”).
Obviousness of claims 43, 47—52, 55, 62, and 63 over Payton, Makin,
Bartels, and Edirisuriya; of claim 44 over Payton, Makin, Bartels, and
Gedeon; and claim 45 over Payton, Makin, Bartels, and Blackhurst
The rejections of dependent claims 43, 47—52, 55, 62, and 63 over
Payton, Makin, Bartels, and Edirisuriya; of dependent claim 44 over Payton,
Makin, Bartels, and Gedeon; and of dependent claim 45 over Payton, Makin,
Bartels, and Blackhurst, are based on the same unsupported findings
discussed above and must be reversed for similar reasons.
DECISION
We REVERSE the Examiner’s rejections.
REVERSED
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