Ex Parte McKinnon et al

Patent Trial and Appeal Board

Dec 8, 2016

13413941 (P.T.A.B. Dec. 8, 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.
13/413,941 03/07/2012 Robert J. McKinnon 3170-62-CIP 1043
22442 7590
Sheridan Ross PC
1560 Broadway
Suite 1200
Denver, CO 80202
12/12/2016 EXAMINER
STUART, COLIN W
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
12/12/2016 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):
e-docket @ sheridanross. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT J. McKINNON and JAMES DALE
BICKLEY
Appeal 2014-003126
Application 13/413,941
Technology Center 3700
Before MICHAEL L. HOELTER, THOMAS F. SMEGAL,
and GORDON D. KINDER, Administrative Patent Judges.
KINDER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Robert J. McKinnon and James Dale Bickley (Appellants) appeal
under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1—5,
7—17, and 19-21.1 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM and enter a NEW GROUND OF REJECTION under
37 C.F.R. § 41.50(b).
1 Appellants identify the real party in interest as Westmed, Inc., an Arizona
corporation.
Appeal 2014-003126
Application 13/413,941
THE INVENTION
The invention is directed to a nasal cannula. Claims 1,12, and 21 are
independent; Claim 1, reproduced below, illustrates the claimed subject
matter.
1. A nasal cannula assembly designed for contact with the
nasalabidial area of a patient's nose and comprising:
a hollow tubular member having an oxygen supply
opening at each end and having a pair of spaced tubular
extensions projecting therefrom that terminate in gas-directing
orifices;
a first tube interconnected at a first end to one end of said
hollow tubular member, said first tube is made of a material that
stretches about 1 inch per foot of length when less than about 0.5
lbs of tension is applied thereto; and
a second tube interconnected on a first end to an end of
said hollow tubular member opposite from where the first tube is
connected, said second tube is made of a material that stretches
about 1 inch per foot of length when less than about 0.5 lbs of
force is applied.
THE PRIOR ART
The Examiner relies upon the following as evidence of
unpatentability:
Marshall US 4,699,139 Oct. 13, 1987
Winthrop US 5,682,881 Nov. 4, 1997
Thompson US 2005/0033247 A1 Feb. 10, 2005
Appellants’ Admitted Prior Art as set forth on pages 9—10 of the
Specification (AAPA).
2
Appeal 2014-003126
Application 13/413,941
THE REJECTIONS
The Examiner has entered the following rejections under 35 U.S.C.
§ 103(a):
Claims 1—3, 5, 7—9, 11—17, 19, and 20 on the basis of Thompson “as
evidenced by [Appellants’] admitted prior art (on page 9-10 of [Appellants’]
specification).” Ans. 3; Final Act. 2
Claims 4 and 10 on the basis of Thompson “as evidenced by
[Appellants’] admitted prior art [on page 9-10 of Appellants’ specification]”
and Winthrop. Ans. 8; Final Act. 7.
Claim 21 on the basis of Thompson “as evidenced by [Appellants’]
admitted prior art [on page 9-10 of Appellants’ specification],” and
Marshall. Ans. 9; Final Act. 9.
OPINION
New Ground: Indefiniteness
Claims 1—5, 7—11, and 21 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which Appellants regard as the invention.
The problem to which Appellants have directed their inventive efforts
is eliminating the discomfort and injury to a patient’s skin caused when
tubing rubs against it. See Spec. 1—2. Appellants conducted tests which
showed that the problem was alleviated when “[t]he elongation of the left
tube 18L and/or the right tube in response to head tilting and turning are
such that elongations of up to 10% of the tubing length,” for “[t]his
simulated the amount of tube stretch needed to accommodate a patient
turning his or her head, which allowed assessment of the amount of tube
3
Appeal 2014-003126
Application 13/413,941
stretch needed to reduce or eliminate the application of force by left and
right tubing onto a patient’s head due to head turning,” and “[a]s one of skill
in the art will appreciate, the amount of tensile force applied to the tubing is
directly proportional to the force felt by the patient and the associated injury
and/or discomfort.” Id. at 8—9; emphasis added. “[T]he amount of tensile
force on the tube 18 is directly proportional to the amount of frictional force
felt by the patient. [] That is, a cannula made in accordance with
embodiments of the present invention will exert a decreased level of normal
force onto a patient’s face and/or ear.” Id. at 10. Thus, it appears to be clear
from these passages in the Specification that it is the degree to which the
tube can stretch that is the key to solving the stated problem.
However, the Specification does not describe the properties of the
tube, but rather of the material from which the tube is made, to wit:
For example, the clear medical grade flexible PVC
APEX©3200-50NT manufactured by Teknor Apex may be used
[]. Further, it is believed that any elastomer that would exert less
than 3.0 psi, preferably less than about 1.5 psi, and most
preferably less than 0.5 psi, under the test conditions described
above would help reduce or eliminate patient discomfort and
injury. In addition, although flexible PVC capable of elongation
up to 450% of its original length has been described, one of skill
in the art will appreciate that a flexible PVC capable of
elongation of approximately 250% or more may be used without
departing from the scope of the present invention. Further,
flexible PVC capable of elongation more than 450% of its
original length may be used in some instances.
Id. Nowhere in the Specification is the material from which the tube is made
directly related to the tension required to be present in the tubing in order to
solve the stated problem, except for mention on page 9 that the tests were
conducted with a three inch section of “standard tubing.” The Specification
4
Appeal 2014-003126
Application 13/413,941
does not include details of the construction of this “standard tubing,” or any
other tubing, for that matter, such as diameter and wall thickness.
Likewise, independent claims 1 and 21 recite a nasal cannula
comprising first and second tubes “made of a material that stretches about 1
inch per foot of length when less than about 0.5 pounds of tension is applied
thereto,” however, no details are provided of the construction of the tubing,
nor is there a definite relationship set forth between the cannula tube and the
material from which it is made. Thus, Appellants’ Specification establishes
that the cited problem is solved by providing cannula tubes that can be
stretched 1 inch per foot when about 0.5 pounds of tension is applied, but
this is not reflected in the claims, which require only that in some form the
material from which the tubes are made meet this test, and not that it be met
by the tubes themselves. By way of example, a narrow strand of the selected
material, having a small cross-sectional area, could meet this claim provision
when tested, whereas a cannula tube constructed of that same material,
which has a significant cross-sectional area of material compared to a
narrow strand, would not. This being the case, the cited recitation renders
independent claims 1 and 21 indefinite for, in our view, the metes and
bounds of all of the claims cannot be determined.
However, notwithstanding the new rejection of indefmiteness, in the
interest of judicial economy we shall consider the rejections set forth by the
Examiner.
5
Appeal 2014-003126
Application 13/413,941
Claims 1—3, 5, 7—9, 11—17, 19, and 20
Obviousness - Thompson and Appellants’ Admitted Prior Art
Appellants argue claims 1—3, 5, 7—9, 11—17, 19, and 20 as a group.
Appeal Br. 14-31. We select claim 1 as representative, and claims 2, 3, 5, 7—
9, 11—17, 19, and 20 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner’s Position
The Examiner has found that Thompson discloses all of the subject
matter recited in independent claim 1, except that
Thompson is silent as to explicitly disclosing that the first and
second tubes are made of a material that stretches about 1 inch
per foot of length when less than about 0.5 [pounds] of tension
is applied thereto. However, as evidenced by Applicant's
admitted prior art, Applicant discloses a previously provided
material APEX 3200-50NT manufactured by Teknor Apex as
being used as a material which provides the various properties
found in the claimed invention as well as disclosing that
“flexible PVC capable of elongation of approximately 250% or
more may be used without departing from the scope of the
present invention” (see pages 9-10 of specification).
Final Act. 2—3. However, the Examiner then notes that Thompson also
“discusses material choice for providing a cannula assembly that bends
freely with head movements as well as elongates under tensile stress and
discloses that Teknor Apex series 3300 is prior art knowledge within the
field of [the] invention,” and concludes that it would have been an obvious
matter of design choice to utilize the material disclosed by Appellants in the
cannula disclosed by Thompson. Id. The Examiner’s rationale for this
conclusion is that “one of ordinary skill in the art would have expected the
Thompson device to perform equally as well with the material which
stretches to about 1 inch per foot of length when less than about 0.5 [pounds]
of tension is applied (Teknor Apex 3200-50NT)[]” (id.), which is, in the
6
Appeal 2014-003126
Application 13/413,941
rejection, the “admitted prior art” material disclosed by Appellants on page
10 of their Specification.
In response to Appellants’ arguments in the Appeal Brief, the
Examiner points out that Thompson recognizes in paragraph 50 the same
problem to which Appellants’ invention is directed and, as set forth in
paragraphs 52—54 seeks to solve the problem in the same manner as
Appellants, that is “by providing flexible tubing made of a material which
elongates easier or to a greater degree than [the] current prior art tubing
material.” Ans. 13. The Examiner goes on to state that Thompson notes in
paragraph 52 that Teknor-Apex 3300-82 is an example of the prior art
material, that “[t]he only difference is the choice of the tubing material.” Id.
The Examiner asserts that “there is no structure in Thompson that would
prevent one of ordinary skill in the art from choosing another well-known
material, such as the material disclosed in Appellant's specification, Teknor-
Apex 3200-50NT, to further reduce or eliminate patient skin irritation or
injury,” and that “one of ordinary skill in the art, reading para. 0050 and
0052-0054 of Thompson would appreciate that Thompson’s [sic] was
attempting to solve the problem of pressure sores by providing tubing
capable of elongation at lower forces as compared to the prior art.” Id.
The Examiner further explains the rejection in the following manner:
Regardless of the interpretation of the exact meaning of the 10%
tensile modulus, or any equations or force values derived
therefrom, one of ordinary skill in the art, reading para. 0050
and 0052-0054 of Thompson would appreciate that Thompson's
was attempting to solve the problem of pressure sores by
providing tubing capable of elongation at lower forces as
compared to the prior art. This is shown through Thompsons
[sic] explanation of the tensile test performed: suspending
weights from a 13 inch length of tubing and adding weight until
7
Appeal 2014-003126
Application 13/413,941
the length increased to 14.3 inches (see para. 0053). In light of
this explanation of the tensile test used, one of ordinary skill in
the art would appreciate that the Thompson tubing material,
having the 10% tensile modulus of 200 psi or less (para. 0052),
provides elongation at lower forces than the prior art tubing.
Id. at 13—14.
The modification to the Thompson reference in view of
Applicant's admitted prior art of the material Teknor Apex
3200-50NT, which exhibits] properties claimed such as the
ability to stretch about 1 inch per foot of length when less than
about 0.5 [pounds] of force is applied (see specification page 9
line 22 through page 10 line 16 for example), is based on the
following KSR rationale: Substitution of one know[n] element
(Teknor Apex 3200-50NT) for another (Thompson's tubing
material of para. 0052) to obtain predictable results, further
reducing occurrence of pressure sores by providing tubing
material capable of elongation at even lower forces; obvious to
try/choose a material from a finite number of choices with a
reasonable expectation of success as one of ordinary skill would
have found it obvious to try Teknor Apex 3200-50NT, made by
the same company as the prior art of para. 0054 of Thompson,
which provides greater elongation and would therefore provide
even less pressure sores; and one of ordinary skill in the art
would have found motivation to choose a well-known material
such as Teknor Apex 3200-50NT based on the fact that
Thompson addresses the problem of pressure sores/ulcers via a
tubing material which exhibits elongation at lower forces than
the prior art of Thompson.
Id. at 14—15.
With regard to the evidence of secondary considerations, the
Examiner takes the position that:
There does not appear to be a nexus between the evidence of
secondary considerations and the claimed invention which would
overcome the obviousness rejections. MPEP section 716.03(a)!
8
Appeal 2014-003126
Application 13/413,941
states that affidavits or declarations attributing commercial
success to a product according to the claims does not establish a
nexus between the invention as claimed and the commercial
success as it is not known that the product sold corresponds to
the claims or that whatever commercial success may have
occurred is attributable to the claims.
Id. at 16.
Appellants’ Arguments
The initial argument presented by Appellants is that the Examiner
failed to present “a convincing line of reasoning” as to why the claimed
features in claim 1 would have been obvious on the basis that it was a matter
of design choice. App. Br. 14. They continue with a comparison of the
differences between the information disclosed in Thompson’s paragraphs 52
—54 and Appellants’ invention, focusing on Young’s Modulus and Hooke’s
law. In the course of this discussion, Appellants assert that the Examiner’s
position as to what one of ordinary skill in the art would have been taught by
the cited portion of Thompson is refuted by the explanations in the
declaration of Dr. Braun. See id. at 5—22. Appellants assert that Thompson
is a non-enabling reference, for it “omits information that would allow
identification of a material that can be used to satisfy Thompson’s cannula
requirements” or meet the limitations in the independent claims in their
application, and because paragraphs 50—55 “are scientifically inaccurate,
incomplete, and contain numerous and significant errors.” Id. at 22.
Appellants also argue that “the direction provided by Thompson
would discourage rather than encourage one of ordinary skill in the art from
using, testing, experimenting, and selecting a material having the properties
identified by Thompson, especially when that material is to be used for low
margin, disposable medical cannula,” and, thus, “would be left to conduct
9
Appeal 2014-003126
Application 13/413,941
extensive experimentation, using Thompson’s inaccurate, incomplete, and
questionable disclosure as a guide.” See id. at 23—25. Arguments also are
presented that the Examiner has utilized impermissible hindsight in arriving
in formulating the rejection, and has improperly “deemed the affidavits
submitted in support of non-obviousness insufficient to overcome rejection
of the pending claims.” Id. at 26.
Appellants also have presented evidence of secondary considerations
in the form of declarations attesting to commercial success, comparisons
with prior art cannula, criticism of the information presented in paragraphs
[0052]—[54] in Thompson, and opinions as to the success of Appellants’
invention in solving the stated problem, as well as extensive discussions
thereof. See id. at 28—31.
In the Reply Brief, Appellants again challenge the Examiner’s logic in
arriving at the position that one of ordinary skill in the art would have been
motivated by Thompson to search for the claimed material from a finite
number of choices with a reasonable expectation of success, in particular,
asserting that “it is not reasonable to expect one of skill in the art to try all
combinations of materials to identity one that meets the pending claims as
there would be little hope for success and many failures.” Reply Br. 3.2
2 Appellants also request that the Board consider evidence that was
not allowed entry by the Examiner. Reply Br. 3. However, this is a
matter which is not subject to appeal to the Patent Trial and Appeal
Board, but is petitionable under 37 C.F.R § 1.181, and, therefore, is
not before us.
10
Appeal 2014-003126
Application 13/413,941
Analysis
It is clear that the problem to which Appellants and Thompson have
directed their inventive efforts is the same. Appellants state that one aspect
of the invention is to provide a nasal cannula
made at least partially of a flexible material that readily
elongates without restricting air flow. [] capable of stretching
approximately 1 inch per foot of length when less than about 0.5
pounds of force is applied. The length increase reduces tube
tension and associated pressure, thereby reducing or eliminating
patient irritation. One embodiment of the present invention is
made of an elastomer, such as flexible polyvinyl chloride (PVC),
polyurethane, or similar material which elongates when
tensioned without reducing the internal diameter to such a
degree that would constrict the gas flow.
Id. at 4—5 (emphasis added). Appellants explain that they conducted tests
using “a three inch section of standard tubing” that “yielded an average tube
length increase of 10% associated with a full head rotation” of the patient
{id. at 9; emphasis added).
Thompson is directed not only to nasal cannula tubing, but also to an
entire nasal cannula assembly, and explains that “[t]he combination of
flexible tubing and the form fitting shape and light weight of the cannula
keeps it in place with almost no tubing tension that, all at once, reduces
sores on the ears, nose and neck and eliminates grooves across the cheeks.'1'’
Id. at [0050] (emphasis added). Thompson teaches that the problem is
solved by the use of “/e/xlremely flexible support tubing that reliably orients
and positions the cannula with little or no tension on the face” {id. at
[0019]), “with special properties that work in concert with the shape of the
cannula to reduce tubing tension to a bare minimum yet secure the
placement,” and is made of an ultra-high molecular weight PVC resin that
11
Appeal 2014-003126
Application 13/413,941
gives it rubber-like qualities such as resilience [and] extreme flexibility’'' {id.
at [0022]) (emphasis added in all).
Thompson also states that “the special support tubing used with the
cannula of the present invention was chosen after extensive experimentation
with a number of different materials and variations of materials. The
considerations included flexibility, manufacturability, service life,
packaging, smell, skin compatibility, medical compatibility, toxicity, cost
and availability” {id. at [0051] emphasis added), that among the desirable
properties for the cannula tubes is “10% tensile modulus of200psi or less,”
as established by a tensile test in which a 13 inch length of tubing was
suspended and subjected to weights until the length increased to 14.3 inches
{id. at [0052]).
Thompson contrasts this value with one exhibited by a typical prior
art tubing, stating that “[t]ypical values for prior art tubing extruded from
Teknor-Apex 3300-82 PVC compound are a 10% tensile strength modulus
of 450 psi.” Id. at [0054], We take note here that the term “tensile
modulus” is synonymous with “modulus of elasticity,” “elastic modulus,”
and “Young’s modulus”, and is “a number that measures an object or
substance’s resistance to being deformed elastically (i.e. non-permanently)
when a force is applied to it, and that a stiffer material will have a higher
elastic modulus.”3
As set forth in MPEP § 2141, the Supreme Court in KSR Int 7 v.
Teleflex, Inc., 550 U.S. 398 (2007), reiterated that the framework for the
3 See www.wikipedia.org/Elastic_modulus See also
www.thefreedictionary.com/Tensile+Modulus, and www.engineering
toolbox.com/young-modulus-d_417 .html.
12
Appeal 2014-003126
Application 13/413,941
objective analysis for determining obviousness under 35 U.S.C. § 103 is
stated in Graham v. John Deere Co,, 383 U.S. 1, 86 (1966). Obviousness is
a question of law based on underlying factual inquiries which, as enunciated
by the Court are: determining the scope and content of the prior art;
ascertaining the differences between the claimed invention and the prior art;
and resolving the level of ordinary skill in the pertinent art. In the present
case, Thompson provides evidence that a known problem in the prior art to
which the invention is directed is preventing nasal cannula support tubing
from causing pain and tissue irritation and damage to a patient’s face and
ears, and represents that the present state of the art is exemplified by
utilization of Teknor-Apex 3300-82 PVC compound.
It is significant that Thompson states: “Perhaps the most important
feature of the cannula of the present invention is that it can be used with
extremely flexible support tubing that bends freely with head movements
without disturbing the position of the cannula on the face,” {id. at [0050]),
which focuses on the same result as Appellants’ cannula. Significantly,
Thompson also teaches that the amount of extension under tension required
in order to provide for this movement is the same as that set forth in
Appellants’ claims, that is, “about 1 inch per foot of length,” which is
supported by Thompson’s recitation of “suspending weights from a 13”
length of tubing and adding weights until the length increased to 14.3”.” Id.
at [0053]. Thompson also teaches that the composition of cannula support
tubing that solves the stated problem is a thermoplastic material such as
PVC, which is quite pliable and extremely flexible so that it bends freely
with the patient’s head movements, and has a 10% tensile modulus of 200
psi or less. The terms used by Thompson to describe the desired cannula
13
Appeal 2014-003126
Application 13/413,941
tubing are “extremely flexible,” “almost no tubing tension,” and “rubber-like
qualities.”
Thompson does not explicitly disclose that the desired amount of
stretching of the tubes is accomplished “when less than about 0.5 lbs of
tension is applied thereto,” as is set forth in Appellants’ claim 1. However,
it is our view that in the paragraphs cited by the Examiner, Thompson’s
teaching that a 10% extension of the cannula under tension solves the
problem, along with the adjectives used to describe the required PVC
material, provide one of ordinary skill in the art with sufficient information
to direct the attention of one of ordinary skill in the art to a finite number of
tubing materials from which to choose ones which perform in such a manner
as to solve the problem, thus supporting the conclusion that and it would
have been a matter of design choice to select one in which the claimed
degree of extension is accomplished by “less than about 0.5 lbs of tension.”
We regard the clear medical grade flexible PVC APEX 3200-50NT
manufactured by Teknor Apex as being an example of the types of material
that would come to the attention of one of ordinary skill in the art.
We also note here that, as explained supra, in the new rejection,
Appellants’ independent claim 1 can be interpreted as being very broad,
requiring only that, in some form, the material from which the cannula
tubing is made be capable of stretching about 1 inch per foot when about 0.5
pounds of tension is applied, and not that the tubing made from the material
meet this limitation. We find that, in view of the teachings of Thompson
and, in particular, the adjectives used by Thompson to describe the
characteristics of the tubing, that it would have been obvious to one of
14
Appeal 2014-003126
Application 13/413,941
ordinary skill in the art to utilize a material which, in some form, meets the
requirements of the claims.
Therefore, although we have carefully considered all of the arguments
presented by Appellants, it is our view that the Examiner has established a
prima case of obviousness on the basis of the cited prior art with regard to
independent claims 1 and 12, and dependent claims 2, 3, 5, 7—9, 11—17, 19
and 20.
The Secondary Considerations
The Appellants bear the burden of proving commercial success. In re
Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996). Objective evidence of
nonobviousness including commercial success must be commensurate in
scope with the claims. In re Tiffin, 448 F.2d 791 (CCPA 1971) (evidence
showing commercial success of thermoplastic foam “cups” used in vending
machines was not commensurate in scope with claims directed to
thermoplastic foam “containers” broadly). “[The] inventor's statement that
his commercial [product] is “constructed according to the disclosure and
claims of my patent application” does not constitute probative evidence that
the [product] which has been sold corresponds to the [product] defined by
the appealed claims or that whatever commercial success may have occurred
is attributable to the construction defined by the appealed claims.” Ex Parte
Standish, 10 USPQ2d 1454 (Bd. Pat. App. & Inter. July 26, 1988).
The declaration of co-inventor McKinnon states that the Comfort Soft
Plus cannula “practices the invention set forth in the claims of this
application”, “elongates in the manner articulated in independent claims 1
and 12” and “meets [the] limitations of at least Claims 1—5, 7—17, and 19—
20.” Id. at 4—5. The declaration states that sales of cannula have risen from
15
Appeal 2014-003126
Application 13/413,941
3 million units per year before the introduction of Comfort Soft Plus to
approximately 30 million units per year since “without any increase in sales
or marketing effort.” McKinnon Dec. 118, 16.
The statements of Mr. McKinnon are the kind that this Board’s
predecessor and reviewing court have found not probative of commercial
success. They offer broad conclusory claims that the commercial product,
“Comfort Soft Plus,” conforms to the claims of the pending application4 and
allege that growth occurred without any change in marketing. But no
specifics are provided. We have no evidence that the increase on sales was
not generated by a drop in price, or by an increase in price by competitors.
For example, we have no evidence that the market conditions had not
changed, such as a competitor changing its product line, or dropping out
altogether, in a manner that favored Appellants. In addition, the McKinnon
declaration identifies five properties of a suitable cannula material in 113,
only one of which appears in claim 1. There is no evidence that one or more
of the other four properties are not the causative factors for Appellants’
increase in sales.
Appellants also present declarations from three nursing professionals
who attest to the utility of the Comfort Soft Plus cannula. We do not
consider these declarations probative of non-obviousness because they are
not tied in any way to the language of the appealed claims. We note that
discovery of the problem preceded the Appellants’ application, as evidenced
by Thompson, and the material Appellants used was readily available, per
4 The declaration of Mr. Bickley is no more specific stating that the Comfort
Plus “is covered by pending Claim 1—5, 7—17, 19, and 20.” Bickley
Declaration, | 6.
16
Appeal 2014-003126
Application 13/413,941
Appellants’ admission. There is no evidence that despite knowledge of the
problem and the material, one of ordinary skill in the art still would not have
found the invention obvious. To hold otherwise would reward those taking
advantage of disparate knowledge rather than meeting the statutory standard
of non-obviousness.
Finally, Appellants offer the declaration of Dr. Braun. Dr. Braun is of
the view that Thompson is misleading and incomplete. As noted above, the
Examiner relied on Thompson for its recognition of the problem and its
qualitative statements of the requirements for a material useful in solving the
problem. Dr. Braun’s statements are not persuasive because they challenge
portions of Thompson on matters that are irrelevant insofar as our decision is
concerned.
Claims 4 and 10
Obviousness — Thompson, Appellants ’ Admitted Prior Art,
and Winthrop
Claim 21
Obviousness — Thompson, Appellants ’ Admitted Prior Art,
and Marshall
Appellants have chosen not to argue separately the rejections of
dependent claims 4 and 10, but to allow them to stand or fall with the
independent claims from which they depend. App. Br. 32. Likewise,
Appellants have offered no separate argument in support of independent
claim 21, incorporating the arguments made in support of claim 1. App. Br.
33. Therefore, the rejections of these claims also are sustained.
DECISION
All three rejections are sustained.
17
Appeal 2014-003126
Application 13/413,941
The decision of the Examiner is affirmed.
Claims 1—5, 7—11, and 21 also stand newly rejected under 35
U.S.C. § 112, second paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which Applicants regard as
the invention.
37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
Examiner, in which event the proceeding will be remanded to
the Examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
18
Appeal 2014-003126
Application 13/413,941
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED; 37 C.F.R, $ 41.50(b)
19