Ex Parte KWOK et al

Patent Trial and Appeal Board

Dec 20, 2016

12134871 (P.T.A.B. Dec. 20, 2016)

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.
12/134,871 06/06/2008 Philip Rodney KWOK BKK-4398-845 2557
23117 7590 12/22/2016
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
PHILIPS, BRADLEY H
ART UNIT PAPER NUMBER
3778
NOTIFICATION DATE DELIVERY MODE
12/22/2016 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 PHILIP RODNEY KWOK, ENRICO BRAMBILLA,
GREGORY ROBERT PEAKE, ROBERT EDWARD HENRY,
LEE JAMES VELISS, and PHILIP JOHN GUNNING
Appeal 2015-000918
Application 12/134,871
Technology Center 3700
Before JOHN C. KERINS, GEORGE R. HOSKINS, and
AMANDA F. WIEKER, Administrative Patent Judges.
HOSKINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Philip Rodney Kwok et al. (“Appellants”)1 appeal under 35 U.S.C.
§134 from the Examiner’s decision rejecting claims in this application. The
Board has jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 The Appeal Brief identifies ResMed Limited as the real party in interest.
Appeal Br. 3.
Appeal 2015-000918
Application 12/134,871
CLAIMED SUBJECT MATTER ON APPEAL
Prior to this appeal, Appellants presented claims 1—76 for the
Examiner’s consideration. The record indicates claims 5, 9, 12—14, 33, 41—
46, 67, 68, 70, and 72 have been canceled. Amendment (filed Nov. 1,
2013), at 2—14. The record also indicates at least claims 7, 8, and 50 have
been withdrawn from consideration. Id.', Final Act. Form PTOL-326. The
record further indicates at least claims 22—24, 26—29, 34, 36—39, 51—59, 66,
and 73 are allowed, and claims 21, 63, and 64 are objected to as dependent
upon a rejected base claim, but indicated to be allowable if rewritten in
independent form. Final Act. 21; Ans. 2.
The record is not clear regarding whether claims 25, 30-32, 35, 40 are
withdrawn from consideration (see Final Act. Form PTOL-326) or are
allowed (see Ans. 2). Either way, they are not subject to a rejection on
appeal.
The record also is not clear as to the status of claim 71, which depends
directly from independent claim 22. The Examiner states the sole rejection
of claims 22 and 71 is withdrawn, but then does not include claim 71 as an
allowed claim. See Ans. 2. We conclude the withdrawal of the rejection as
to claim 22 also applies to claim 71.
Thus, the claims on appeal are claims 1—4, 6, 10, 11, 15—20, 47-49,
60-62, 65, 69, and 74—76. Of those, claims 1, 11, 15, 16, and 47 are
independent. Claim 1 illustrates the subject matter on appeal, and it recites:
1. A forehead support for a facial mask, the mask including
a mask frame and a mask cushion attached to the mask frame and
adapted to contact a face of a patient in a substantially airtight
manner, the forehead support being adapted to be moveable
between a first position with respect to the mask frame and a
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Application 12/134,871
second position with respect to the mask frame, the forehead
support comprising:
a forehead support frame;
at least one forehead pad attached to the forehead support
frame and adapted to contact the patient’s forehead when the
facial mask is mounted on the patient’s face; and
a spring biasing mechanism separate from a headgear and
the at least one forehead pad, the spring biasing mechanism being
configured to be positioned between the mask frame and the
forehead support frame, the spring biasing mechanism being
configured so that a spring action of the spring biasing
mechanism urges the forehead support toward the second
position.
Appeal Br. 34 (Claims App.).
REJECTIONS ON APPEAL
Claims 1—4, 6, 10, 11, 15, 47-49, 60-62, 65, 69, and 74—76 stand
rejected under 35 U.S.C. § 102(b) as anticipated by Wamcke (US 4,083,065,
iss. Apr. 11, 1978).
Claims 1, 2, 10, and 16—20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Ho ’727 (US 2008/0196727 Al, pub. Aug. 21, 2008) and
Ho ’428 (US 2005/0072428 Al, pub. Apr. 7, 2005).
ANALYSIS
A. Anticipation by Warncke
Claim 1
In rejecting claim 1 as anticipated by Wamcke, the Examiner finds the
claimed “forehead support” corresponds to Wamcke’s mask 2 or perhaps
some portion thereof, and the claimed “mask frame” corresponds to
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Application 12/134,871
Wamcke’s helmet 1 or perhaps some portion thereof. Final Act. 2, 7.2 The
Examiner finds Wamcke’s mask 2 is moveable between first and second
positions with respect to Wamcke’s helmet 1, as required by claim 1. Final
Act. 2—3; Ans. 3 (citing Wamcke, 4:9—20).
The Examiner also finds Wamcke discloses a spring biasing
mechanism, including spring 17, being configured so that a spring action of
the mechanism urges mask 2 toward the second position with respect to
helmet 1, as claimed. Final Act. 3. In support, the Examiner finds “rotation
of housing 18 causes the drop-in pin 7 to rotate rearwards, thereby pulling
the [mask 2] closer to the face.” Id. (citing Wamcke, 4:10-30, 2:1—10). The
Examiner further finds “[i]n order to pull the [mask 2], drop-in pin 7
engages stop bearing 6 through the spring action of compression spring 17,”
so the pulling action “requires the spring action of compression spring 17”
to urge mask 2 closer to the wearer’s face. Id. (citing Wamcke, 1:55—65,
2:15, 4:20—25). The Examiner constmes claim 1 as not requiring the spring
biasing mechanism to urge the forehead support to the second position
“using only a spring action,” so the claim is open to the spring biasing
mechanism “using a spring action combined with an additional mechanical
action or actions (i.e. rotation, pulling, pushing),” provided by Wamcke’s
overall locking mechanism 5. Id. at 22; Ans. 3—5.
Appellants argue the Examiner errs in finding Wamcke discloses a
spring action of a spring biasing mechanism that urges mask 2 toward a
2 We agree with Appellants’ characterization of the Examiner’s annotations
to Wamcke’s Figure 1 as “cluttered and imprecise.” Appeal Br. 10. We
have set forth our best understanding of the bases for the rejection of claim 1
and other claims as anticipated by Wamcke, based on the record as a whole.
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Application 12/134,871
second position with respect to helmet 1. Appeal Br. 11—13. Appellants
concede spring 17 biases pin 7 toward bearing 6, but nonetheless contend the
positioning of pin 7 with respect to bearing 6 “is actually regulated by the
interaction between the follower pin 22 and the opening 21.” Id. at 12.
Appellants also assert the spring action of spring 17 “acts perpendicularly to
the pulling movement” of pin 7, so it “does not contribute to the force”
moving pin 7 “in the ‘pulling’ direction.” Id. at 12—13.
We are persuaded that a preponderance of the evidence does not
support the Examiner’s finding that Wamcke discloses a spring biasing
mechanism being configured so that a spring action urges mask 2 toward a
second position with respect to helmet 1, as recited in claim 1. Even taking
Wamcke’s entire locking mechanism 5 as the spring biasing mechanism of
claim 1, it is not a spring action of that mechanism that urges mask 2 toward
a different position with respect to helmet 1. Rather, the spring action of
spring 17 urges pin 7 into engagement within slot 8 of mask 2. See
Wamcke, 3:33—39. As Appellants point out, the direction of that urging acts
perpendicularly to the movement of pin 7 pulling mask 2 toward the
wearer’s face. The sole force urging mask 2 toward the wearer’s face is
provided by the rotation of rotor 13 and the ensuing interactions between
opening 21 and follower pin 22, and between pin 7 and slot 8. Id. at 4:9-20.
Thus, we do not sustain the rejection of claim 1 as anticipated by
Wamcke.
Claim 11
In rejecting claim 11 as anticipated by Wamcke, the Examiner finds
the claimed “stabilizer” corresponds to Wamcke’s mask 2 or some portion
thereof, and the claimed “patient interface frame” corresponds to Wamcke’s
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helmet 1 or some portion thereof. Final Act. 3—4, 7. The Examiner applies a
similar analysis as discussed above in connection with claim 1 in finding
that Wamcke discloses, as recited in claim 11, a spring biasing mechanism
configured such that a spring action of the mechanism urges mask 2 from a
first position with respect to helmet 1 to a second such position. Id. at 4, 21—
22; Ans. 5—6; Appeal Br. 35 (Claims App.). As discussed above in
connection with claim 1, that finding is not supported by a preponderance of
the evidence, and we do not sustain the rejection of claim 11 as anticipated
by Wamcke.
Claim 15
In rejecting claim 15 as anticipated by Wamcke, the Examiner
initially finds the claimed “forehead support” corresponds to Wamcke’s
bead 4, and the claimed “frame” corresponds to Wamcke’s mask 2. Final
Act. 4. We agree with Appellants’ argument that this application of
claim 15 to the Wamcke disclosure does not lead to anticipation, because
bead 4 is not “free to move between” first and second positions “relative to”
mask 2, as claimed. Appeal Br. 17; id. at 36 (Claims App.); Wamcke,
Fig. 1, 3:8—19. That is, in all circumstances, bead 4 is disposed at the
periphery of mask 2, and therefore does not move between positions relative
to mask 2.
The Examiner further finds, even if bead 4 is not movable with
respect to mask 2, bead 4 is nonetheless “movable with respect to numerous
other elements” such as “helmet 1, which in other claims (see for example
claims 1 and 11,) has been indicated as a frame.” Ans. 8. This alternative
finding, however, also does not lead to anticipation. As discussed above in
connection with claim 1, Wamcke fails to disclose a spring biasing
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Application 12/134,871
mechanism arranged so that a spring action of the mechanism directs bead 4
of mask 2 to a second position with respect to helmet 1, as recited in
claim 15. See Appeal Br. 36 (Claims App.).
For the foregoing reasons, we do not sustain the rejection of claim 15
as anticipated by Wamcke.
Claim 47
In rejecting claim 47 as anticipated by Wamcke, the Examiner finds
the claimed “pad support element” corresponds to Wamcke’s mask 2 or
some portion thereof, and the claimed “mask frame extension” corresponds
to Wamcke’s helmet 1 or some portion thereof. Final Act. 6—7. The
Examiner applies a similar analysis as discussed above in connection with
claim 1 in finding that Wamcke discloses, as recited in claim 47, a spring
biasing mechanism configured such that a spring action of the mechanism
biases mask 2 with respect to helmet 1. Id. at 6—7, 21—22; Ans. 9; Appeal
Br. 40 (Claims App.). As discussed above in connection with claim 1, that
finding is not supported by a preponderance of the evidence, and we do not
sustain the rejection of claim 47 as anticipated by Wamcke.
Claims 2—4, 6, 10, 48, 49, 60—62, 65, 69, and 74—76
These claims each depend, directly or indirectly, from one of
independent claims 1, 11, 15, and 47. Appeal Br. (Claims App.). For the
reasons provided above in connection with those independent claims, we do
not sustain the rejection of the dependent claims as anticipated by Wamcke.
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B. Obviousness based on Ho ’727 and Ho ’428
Claims 1, 2, and 10
In rejecting claim 1 as having been obvious based on Ho ’727 and
Ho ’428, the Examiner finds Ho ’727 discloses each and every claim
limitation, except that its “forehead pad” (i.e., mounting bracket 182) does
not “contact the patient’s forehead when the facial mask is mounted on the
patient’s face.'” Final Act. 15—17 (emphasis added). The Examiner finds
Ho ’428 discloses forehead pad 38 adapted to contact the patient’s forehead
when a facial mask is mounted thereon, and determines “it would have been
obvious ... to modify the pad of [Ho ’727] with the pad 38 of [Ho ’428] for
the benefit of improved comfort.” Id. at 16 (citing Ho ’428 137).
Appellants argue the Examiner errs in finding mounting bracket 182
of Ho ’727 is a “forehead pad,” as claimed. Appeal Br. 24. Appellants
further argue Ho ’428 fails to remedy that deficiency of Ho ’727, because
replacing mounting bracket 182 with a forehead pad such as pad 38 of
Ho ’428 would not result in the invention of claim 1, given that forehead
strap 138' would intervene between the patient’s forehead and the pad. Id.
Appellants similarly assert such a replacement would not increase user
comfort, due to the presence of strap 138'. Id. at 25. Appellants moreover
contend a person of ordinary skill in the art would not have made such a
replacement, because a flexible forehead pad 38 such as disclosed in
Ho ’428 would not have sufficient rigidity to perform the mounting function
of mounting bracket 182 in Ho ’727. Id. at 24—25.
The Examiner answers that Appellants misrepresent the rejection,
which is not based on “replacing” rigid mounting bracket 182 with soft
forehead pad insert 38, but rather is based on “combining” mounting
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bracket 182 with soft forehead pad insert 38. Ans. 11. The Examiner
further posits that a person of ordinary skill in the art would have known
how to add soft forehead pad insert 38 to the apparatus of Ho ’727, thereby
increasing the wearer’s comfort without sacrificing the mounting
functionality of mounting bracket 182, for example by incorporating the
strap holders of Ho ’428 in the modified device. Id. at 10—11 (referring to
Ho ’428, Fig. 4, which illustrates forehead assembly 28 incorporating
pads 38 and slots for receiving opposing ends of a strap wrapped around the
user’s head).
Appellants reply that the Examiner’s proposed modification of
Ho ’727 in light of Ho ’428 lacks a rational basis, based on various
differences in structure between the two references. Reply Br. 5—6.
We, first, agree with the Examiner’s finding that Ho ’428 discloses
the desirability of using a soft pad disposed between a rigid forehead mask
bracket and the user’s forehead, to increase the user’s comfort when wearing
the mask. See Ho ’428, Fig. 4,137. While we agree with Appellants’
argument that mounting bracket 182 in Ho ’727 is not such a pad, we also
agree with the Examiner’s determination that a person of ordinary skill
would have appreciated the comfort of a user of the Ho ’727 device would
be increased by the addition of such a pad, in light of Ho ’428. We further
agree with the Examiner’s finding that a person of ordinary skill in the art
would have appreciated that Ho ’428 Figure 4 shows how to add pads 38 to
mounting bracket 182, while retaining the ability to attach head straps to
mounting bracket 182.
Thus, we sustain the rejection of claim 1 as unpatentable over Ho ’727
and Ho ’428. Appellants do not present argument for the patentability of
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dependent claims 2 and 10 separately from their parent claim 1, so we
likewise sustain the rejection of claims 2 and 10 as unpatentable over
Ho ’727 and Ho ’428. See 37 C.F.R. § 41.37(c)(l)(iv).
Claims 16—20
In rejecting claim 16 as having been obvious based on Ho ’727 and
Ho ’428, the Examiner provides the following annotations to Ho ’727
Figure 22A:
Final Act. 18—19. As found by the Examiner, Figure 22A discloses a mask
assembly comprising, as claimed, a spring biasing mechanism (spring 184)
arranged to exert a first force on a mask frame (MF) and a second force on a
stabilizing element (SE, or lever bar 178). Id. at 18—19, 24. The Examiner
determines that, because “the lever bar [SE] dampens a first force, a second
force is exerted on the patient interface” represented by mask frame MF. Id.
at 24; see also Ho ’727 178 (referring to the “patient interface” as “a nasal
Ho ’727 Figure 22A as annotated by the Examiner.
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Application 12/134,871
mask,” biased toward the user as indicated by arrow 183). The Examiner
further determines “spring 184 applies to the lever bar [SE] a first force
having a[n] angled direction and applies to the patient interface [MF] a
second force having a parallel direction.” Id.3
Appellants argue the Examiner errs in finding spring 184 exerts a first
force on mask frame MF and a second force on stabilizing element SE.
Appeal Br. 26—27. In particular, Appellants contend Ho ’727 fails to
disclose that lever bar 178 dampens any force, or changes the direction of
any force, applied by spring 184 when lever bar 178 transfers that force to
mask frame MF. Id.
Appellants’ argument is persuasive. Ho ’727 describes the alleged
stabilizing element SE simply as “lever bar 178.” Ho ’727 ^fl[ 78—79. The
Examiner’s finding that the lever bar would dampen the force applied to it
by spring 184 when transferring that force to mask frame MF rests solely on
speculation, not the evidence of record. Further, as can be appreciated from
Figure 22A of Ho ’727, the force exerted by spring 184 on lever bar 178
tends to move both lever bar 178 and mask frame MF in the same rotational
direction 183 around common pivot point 180. While it appears that mask
frame MF may be pivotally attached to lever bar 178, still the force exerted
by spring 184 is in the rotational direction 183 around pivot point 180, not “a
3 The Examiner also states the “force applied to SE [is] different than [the]
force applied to SEC.” Final Act. 18. To the extent the rejection is
premised on spring 184 exerting a first force at its upper end (attached to
SEC) and a second force at its lower end (biased against SE), the Examiner
does not explain how such different forces correspond to the claimed first
force exerted “on the mask frame” MF and the claimed second force exerted
on “the stabilizing element” SE. Id. at 18—19, 24.
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parallel direction” different from the rotational direction, as the Examiner
asserts.
Thus, the Examiner’s rejection of claim 16 as unpatentable over
Ho ’727 and Ho ’428 is not supported by a preponderance of the evidence.
The Examiner’s rejection of dependent claims 17—20 does not cure the noted
deficiency as to their common parent claim 16. See Final Act. 20.
Accordingly, we do not sustain the rejection of claims 16—20 as unpatentable
over Ho ’727 and Ho ’428.
DECISION
The rejection of claims 1—4, 6, 10, 11, 15, 47-49, 60-62, 65, 69, and
74—76 as anticipated by Wamcke is reversed.
The rejection of claims 1,2, 10, and 16—20 as unpatentable over
Ho ’727 and Ho ’428 is affirmed as to claims 1, 2, and 10, and is reversed as
to claims 16—20.
No time period for taking any subsequent action in connection with
this appeal maybe extended, under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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