12068901 (P.T.A.B. Aug. 28, 2018)

Ex Parte Kressierer / Huber et al

Patent Trial and Appeal BoardAug 28, 2018

12068901 (P.T.A.B. Aug. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/068,901 02/13/2008 23117 7590 08/30/2018 NIXON & V ANDERHYE, PC 901 NORTH GLEBE ROAD, 11 TH FLOOR ARLINGTON, VA 22203 FIRST NAMED INVENTOR Petra Kressierer/ Huber 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. 4750-72 7457 EXAMINER SIPPEL, RACHEL T ART UNIT PAPER NUMBER 3771 NOTIFICATION DATE DELIVERY MODE 08/30/2018 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): 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 PETRA KRESSIERER, BERND LANG, ACHIM BIENER, and DIETER HEIDMANN Appeal 2017-002001 1 Application 12/068,901 2 Technology Center 3700 Before DONALD. E. ADAMS, CHRISTOPHER G. PAULRAJ, and KENNETH G. SCHOPPER, Administrative Patent Judges. SCHOPPER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. Â§ 134(a) from the rejection of claims 13-20, 22-28, and 39-50. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. 1 Our Decision references the Appeal Brief ("Appeal Br.," filed July 5, 2016) and Reply Brief ("Reply Br.," filed Nov. 21, 2016), and the Examiner's Answer ("Ans.," mailed Sept. 20, 2016) and Final Office Action ("Final Act.," mailed Feb. 4, 2016). 2 According to Appellants, the real party in interest is "RESMED R&D GERMANY GMBH." Appeal Br. 3. Appeal2017-002001 Application 12/068,901 BACKGROUND According to Appellants, "[t]he invention relates to a respiratory gas tube arrangement for supplying a respiratory gas to a person." Spec. ,r 2. CLAIMS Claims 13 and 41 are the independent claims on appeal. Claim 13 is illustrative of the appealed claims and recites: 13. A flexible respiratory gas tube arrangement for supplying a respiratory gas to a person, the tube arrangement comprising: a flexible tube; a heater to heat the gas as it is delivered through the tube; a tubular humidifier in line with the flexible tube, the tubular humidifier having an overall tubular shape; a first connector provided to one end of the tube and adapted to connect the tube with a breathing mask; and a second connector provided to the other end of the tube and adapted to connect the tube with a socket of a CP AP device, said second connector including a first portion that provides a respiratory gas passage and a second portion that provides integrated contact elements by which power is supplied to said heater. Appeal Br. 13. 2 Appeal2017-002001 Application 12/068,901 REJECTI0NS 3 1. The Examiner rejects claims 13, 14, 17-19, 22-26, 28, 40, and 45-50 under 35 U.S.C. Â§ I03(a) as unpatentable over Lopatinsky4 in view of Clawson, 5 Pauler, 6 and Bowles. 7 2. The Examiner rejects claim 15 under 35 U.S.C. Â§ I03(a) as unpatentable over Lopatinsky in view of Clawson, Pauler, Bowles, and Smith. 8 3. The Examiner rejects claim 16 under 35 U.S.C. Â§ I03(a) as unpatentable over Lopatinsky in view of Clawson, Pauler, Bowles, and Huddart. 9 4. The Examiner rejects claim 20 under 35 U.S.C. Â§ I03(a) as unpatentable over Lopatinsky in view of Clawson, Pauler, Bowles, and Wikefeldt. 10 5. The Examiner rejects claim 27 under 35 U.S.C. Â§ I03(a) as unpatentable over Lopatinsky in view of Clawson, Pauler, Bowles, and Rustad. 11 6. The Examiner rejects claim 39 under 35 U.S.C. Â§ I03(a) as unpatentable over Lopatinsky in view of Clawson, Pauler, Bowles, and Cise. 12 7. The Examiner rejects claims 41, 43, and 44 under 35 U.S.C. Â§ I03(a) as unpatentable over Lopatinsky in view of Clawson and Bowles. 3 The rejection of claim 50 under 35 U.S.C. Â§ 112, second paragraph, has been withdrawn. See Ans. 2. 4 Lopatinsky, US 5,600,752, iss. Feb. 4, 1997. 5 Clawson et al., US 5,392,770, iss. Feb. 28, 1995. 6 Pauler et al., US 3,034,085, iss. May 8, 1962. 7 Bowles et al., US 4,621,633, iss. Nov. 11, 1986. 8 Smith, US 5,377,670, iss. Jan. 3, 1995. 9 Huddart et al., US 5,640,951, iss. June 24, 1997. 10 Wikefeldt, US 6,523,538 Bl, iss. Feb. 25, 2003. 11 Rustad et al., US 5,701,887, iss. Dec. 30, 1997. 12 Cise et al., US 6,615,835 Bl, iss. Sept. 9, 2003. 3 Appeal2017-002001 Application 12/068,901 8. The Examiner rejects claim 42 under 35 U.S.C. Â§ 103(a) as unpatentable over Lopatinsky in view of Clawson, Bowles, and Cise. DISCUSSION Rejection 1 Regarding claim 13, the Examiner finds that Lopatinsky discloses an apparatus including a flexible tube, heater, a first connector, and a second connector. Final Act. 4. The Examiner further finds, inter alia, that Lopatinsky "is silent regarding a humidifier in line with the flexible tube," but the Examiner concludes that the use of a tubular humidifier as claimed would have been obvious in view of Bowles and design choice. Id. at 5. In particular, the Examiner finds that "Bowles teaches a humidification line 84 disposed along a respiratory gas flow path 51, the humidification line is connected to a water source in 3 6 and the humidification line 84 enters a distal end of an inspiratory path at mixing chamber 16b." Id. The Examiner concludes that it would have been obvious to include a water source, humidification line, and mixing chamber, as in Bowles, "for the purpose of providing breathing comfort to a user when needed." Id. The Examiner also concludes that the shape of the humidifier would have been a matter of design choice because "such a modification would have involved a mere change in the form or shape of a component." Id. at 5-6. As discussed below, we are not persuaded of reversible error in the Examiner's findings and conclusions regarding the inclusion of a tubular humidifier based on Bowles. Appellants argue that "[i]t is improper to rely on 'design choice' to reject claims 13 and 41" with respect to the recited tubular humidifier. Appeal Br. 7-8. In support, Appellants first argue that design choice 4 Appeal2017-002001 Application 12/068,901 requires a showing that the configuration of the claimed subject matter is functionally equivalent to the configuration disclosed in the art. Appellants alleged that "[ a ]n overall tubular shape is significant because it can be covered by the insulating sheathing body ... that covers the flexible tube." Id. at 8. We are not persuaded by this argument at least because claim 13 does not require an "insulating sheathing body" and because Appellants do not explain why Bowles' humidifier is not capable of being covered by a sheathing body. Appellants do not otherwise explain why the tubular shape of the humidifier is significant or provides a functional distinction over Bowles' humidifier. Thus, we fail to see a functional distinction created by claiming a "tubular humidifier." See In re Dailey, 357 F.2d 669 (CCP A 1966) (holding that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant). In further support of their argument regarding design choice, Appellants argue that "Bowles discloses evidence that 'design choice' is [an] inappropriate legal theory" with respect to the claimed tubular humidifier. Appeal Br. 8. Here, Appellants assert that the Examiner has incorrectly identified Bowles' humidifier as mixing chamber 16b rather than the humidification unit 36. Id. Appellants assert that, the Examiner "does not provide evidence, or sound technical reasoning, why one of ordinary skill would consider the mixing chamber 16b as a humidifier when Bowles discloses the humidification unit 36 as performing humidification." Id. at 9. Appellants argue that this distinction is important because Bowles suggests that a relatively tall and thin chamber will be more conducive to the heating and percolation disclosed in Bowles. 5 Appeal2017-002001 Application 12/068,901 And a vertical orientation where the humidified gas exits at the top will help to prevent liquid water from flowing out of the exit ( opening 81 ). Thus the configuration disclosed by Bowles is significant and not one that is modifiable without evidence. In other words, Bowles discloses a device that is not amenable to change by 'design choice."' What's more, there is no evidence that the configuration disclosed by Bowles (i.e., one that relies on percolating gas through heated water) can be readily converted to function as a tubular humidifier in line with the flexible tube, the tubular humidifier having an overall tubular shape. Id. at 9-10. We are not persuaded of reversible error by this argument. Even if we were to agree that the Examiner has incorrectly identified element 16b as a humidifier, we find that this error is harmless. Significantly, Appellants do not contend that Bowles does not teach or suggest providing humidified air in line with a flexible tube as required by the claim. In fact, Bowles does disclose providing humidified air into a mixing chamber that is in line with flexible tubing. See, e.g., Bowles Fig. 10. Further, to the extent Appellants argue that Bowles requires a tall and thin chamber to function and vertical operation, we fail to see how those functional requirements would not be met if Bowles' humidifier had an overall tubular shape. In fact, Bowles, discloses a humidifier 3 6 that has an overall cylindrical shape. See id. at col. 7, 11. 29---61. To the extent an overall cylindrical shape actually differs from an overall tubular shape, we agree with the Examiner's conclusion that a change from a cylindrical shape to a tubular shape would have been obvious. See, e.g., Merriam-Webster.com, https://www.merriam- webster.com/ dictionary/tube, last visited Aug. 13, 2018 (defining tube as "a hollow elongated cylinder"). 6 Appeal2017-002001 Application 12/068,901 Based on the foregoing, we are not persuaded of reversible error with respect to the rejection of claim 13. Accordingly, we sustain the rejection of this claim. For the same reasons, we also sustain the rejection of claims 14, 17-19, 22-26, 28, 40, and 45-50, for which Appellants do not provide separate arguments. Rejections 2---8 For the reasons discussed above, we also sustain the rejections of claims 15, 16, 20, 27, 39, and 41--44, for which Appellants rely on their arguments with respect to the independent claims. See Appeal Br. 10. CONCLUSION We AFFIRM the rejections of claims 13-20, 22-28, and 39-50. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 7 Application/Control No. Applicant(s)/Patent Under Reexamination 12/068,901 KRESSIERER ET AL. Notice of References Cited Examiner Art Unit *** 3700 Page 1 of 1 U.S. PATENT DOCUMENTS * Document Number Date Country Code-Number-Kind Code MM-YYYY Name Classification A - B US- C US- D US- E US- F US- G US- H US- I US- J US- K US- L US- M US- FOREIGN PATENT DOCUMENTS * Document Number Date Country Code-Number-Kind Code MM-YYYY Country Name Classification N 0 p Q R s T NON-PATENT DOCUMENTS * Include as applicable: Author, Title Date, Publisher, Edition or Volume, Pertinent Pages) * u Merriam-Webster.com, https://www.merriam-webster.com/dictionary/tube, last visited Aug. 13, 2018 (defining tube as "a hollow elongated cylinder"). V w X *A copy of this reference 1s not being furnished with this Office action. (See MPEP Â§ 707.05(a).) Dates in MM-YYYY format are publication dates. Classifications may be US or foreign. U.S. Patent and Trademark Office PT0-892 (Rev. 01-2001) Notice of References Cited Part of Paper No.