Ex Parte Nussbaum

Patent Trial and Appeal Board

Jun 29, 2018

14746357 (P.T.A.B. Jun. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/746,357 06/22/2015
24201 7590 07/03/2018
FULWIDER PATTON LLP
HOW ARD HUGHES CENTER
6100 CENTER DRIVE, SUITE 1200
LOS ANGELES, CA 90045
FIRST NAMED INVENTOR
Eliezer Nussbaum
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.
UCI-94675 5819
EXAMINER
HICKS, VICTORIA J
ART UNIT PAPER NUMBER
3772
NOTIFICATION DATE DELIVERY MODE
07/03/2018 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):
docketla@fulpat.com
eOfficeAction@fulpat.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ELIEZER NUSSBAUM
Appeal2017-009547
Application 14/746,357 1
Technology Center 3700
Before MICHAEL C. ASTORINO, BRADLEY B. BA YAT, and
AMEE A. SHAH, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellant appeals from the
Examiner's decision rejecting claims 1-11 and 18. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b ).
We REVERSE.
1 According to the Appellant, "[t]he real party of interest is The Regents of
the University of California." Appeal Br. 3.
Appeal2017-009547
Application 14/746,357
STATEMENT OF THE CASE
Claimed Subject Matter
Claims 1 and 18 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A respiratory apparatus comprising:
a pair of nasal tube devices configured with relatively rigid
tubular bodies for receipt in a patient's nasal passages to
cooperate in locking air flow, the bodies configured with through
air-flow passages and formed with respective proximal and distal
extremities, the bodies including respective rim devices formed
with respective proximally facing peripheral valve seats;
respective membranes having marginal edges configured
to be, when the devices are disposed in the nasal passages,
responsive to the pressure differential generated by the patient
inhaling to be shifted from respective open positions off the
respective seats to provide for air flow through the air-flow
passages and further responsive to the patient exhaling to close
the marginal edges on the respective seats to fully block exhaling
from the respective nasal passages;
retaining devices carried from the respective tube devices
to mount the respective membranes for shifting from the
respective open to the closed positions; and
relatively soft, pliable sheaths received over the respective
tubular bodies and projecting proximally beyond the respective
proximal extremities to form respective cushioning rings.
Rejections
I. Claims 1-7, 9-11, and 18 are rejected under 35 U.S.C. § 103 as
unpatentable over Bare et al. (US 2009/0032028 Al, pub. Feb. 5, 2009)
("Bare") in view of Collazo et al. (US 2013/0019870 Al, pub. Jan. 24, 2013)
("Collazo"), and further evidenced by Foley et al. (US 2013/0081637 Al,
pub. Apr. 4, 2013) ("Foley").
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Appeal2017-009547
Application 14/746,357
II. Claim 8 is rejected under 35 U.S.C. § 103 as unpatentable over
Bare in view of Collazo, as applied to claim 1, and further in view of Doshi
(US 7,992,564 B2, iss. Aug. 9, 2011).
III. Claims 1, 2, and 18 are rejected under 35 U.S.C. § 103 as
unpatentable over Collazo in view of Bare. 2
ANALYSIS
Rejection I
Independent claim 1 is directed to "a respiratory apparatus" and
recites "a pair of nasal tube devices configured with relatively rigid tubular
bodies . .. configured with through air-flow passages and formed with
respective proximal and distal extremities" and "relatively soft, pliable
sheaths received over the respective tubular bodies and projecting
proximally beyond the respective proximal extremities to form respective
cushioning rings." Appeal Br., Claims App. ( emphases added).
Independent claim 18 includes similar limitations as those recited in claim 1.
See id.
The Examiner finds that "Bare fails to disclose a pair of tube device
inserted in the nasal passages and relatively soft, pliable sheaths over the
tube bodies." Final Act. 5. To remedy this deficiency, the Examiner turns
to Collazo and finds that Collazo' s flange 806 and nasal insert 802
correspond to the claimed "sheaths" and "tubular bodies," respectively. See
id. More specifically, the Examiner finds that Collazo's flange 806 projects
proximally beyond the respective proximal extremities of nasal insert 802's
2 The Examiner presents this rejection as a new ground of rejection in the
Answer. Ans. 8-11.
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Application 14/746,357
air-flow passages, i.e., "the air-flow passages extend between the distal end
of the tubular bodies and valve 810." Ans. 12 (citing Collazo, Fig. 8B).
The Examiner's findings rely on a construction of claim 1 where the
term "proximal extremities" in "relatively soft, pliable sheaths ... projecting
proximally beyond the respective proximal extremities to form respective
cushioning rings" refers to the proximal extremities of the air-flow passages.
See id. We fail to understand how this construction is within the broadest
reasonable interpretation of claim 1. The term "proximal extremities" refers
to the proximal extremities of the relatively rigid tubular bodies. See Reply
Br. 3 ("Applicant is not claiming so-called proximal extremities of air-flow
passages, but the proximal extremities of the tubular bodies themselves.").
As such, claim 1 requires that the sheath must be positioned proximal of the
tubular body. See, e.g., Spec., Fig. 18, ,r 117 ("The walls of the sheaths 163
are furthermore constructed at the proximal extremity to curve proximally,
radially inwardly to ... provide for a gradual transition from the end 165 of
the body.").
The Appellant contends "Collazo clearly teaches that the flange (806)
does not project proximally beyond the proximal extremity, as claimed."
Appeal Br. 12; see Collazo, Figs. 8A-E. The Appellant's argument is
persuasive. Indeed, Collazo's disclosure, particularly at paragraphs 56-59
and Figures 8A-E, fails to teach that that flange 806 projects proximally
beyond the respective proximal extremities of nasal insert 802. This
deficiency is not cured by the remaining factual findings and reasoning
associated with the Examiner's rejection.
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Application 14/746,357
Thus, we do not sustain the Examiner's rejection of independent
claims 1 and 18, and dependent claims 2-7, 9-11, and 18, under 35 U.S.C.
§ 103 as unpatentable over by Bare in view of Collazo.
Rejection II
The Examiner's rejection of dependent claim 8, under 35 U.S.C.
§ 103 as unpatentable over Bare in view of Collazo, as applied to claim 1,
and further in view of Doshi, relies on the same inadequately supported
finding as discussed above and is not cured by additional findings and/or
reasoning associated therewith. See Final Act. 9-10. Thus, for the same
reason as discussed above, we do not sustain the rejection of dependent
claim 8.
Rejection III
The Examiner's rejection of independent claims 1 and 18, under
35 U.S.C. § 103 as unpatentable over Collazo in view of Bare, relies on the
same inadequately supported finding as discussed above. See Ans. 8-11.
Thus, for the same reason as discussed above, we do not sustain the
Examiner's rejection of independent claims 1 and 18, and dependent
claim 2.
DECISION
We REVERSE the Examiner's decision rejecting claims 1-11 and 18.
REVERSED
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