Ex Parte Orr et al

Patent Trial and Appeal Board

Jan 12, 2018

13518913 (P.T.A.B. Jan. 12, 2018)

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.
13/518,913 06/25/2012 Joseph Allen Orr 2009P01717WOUS 5902
24737 7590 01/17/2018
PTTTT TPS TNTFT T FfTTTAT PROPFRTY fr STANDARDS
EXAMINER
465 Columbus Avenue LOUIS, LATOYA M
Suite 340
Valhalla, NY 10595 ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
01/17/2018 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):
patti. demichele @ Philips, com
marianne. fox @ philips, com
katelyn.mulroy @philips .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH ALLEN ORR, SOEREN HOEHNE,
and LARA BREWER
Appeal 2017-002657
Application 13/518,913
Technology Center 3700
Before STEFAN STAICOVICI, JAMES P. CALVE,
and WILLIAM A. CAPP, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1—5 and 16—21 under 35 U.S.C. § 102(b) as anticipated
by Yamamori (US 2008/0319334 Al, pub. Dec. 25, 2008) and claims 6—10
as unpatentable under 35 U.S.C. § 103(a) over Yamamori. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to Appellants, “[t]he Real Party in Interest is the Assignee,
KONINKLIJKE PHILIPS ELECTRONICS N.V.” Appeal Br. 1.
Appeal 2017-002657
Application 13/518,913
THE INVENTION
Appellants’ invention relates to oxygen masks. Spec. 1—3.
Claim 1, reproduced below, is illustrative of the subject matter on appeal.
1. A subject interface appliance configured to deliver a
breathable substance to the airway of a subject, the subject
interface appliance comprising:
a primary interface including a mask barrier that encloses
one or more external orifices of the airway of a subject
including a first external orifice, wherein the mask barrier is
shaped to form a delivery opening through which a breathable
substance can be communicated to the one or more external
orifices of the subject that are enclosed by the mask barrier;
a secondary interface, the secondary interface comprising:
a hollow prong having a first end and a second end, the
hollow prong being configured to be inserted into the first
external orifice of the airway of the subject such that the
first end of the hollow prong is positioned inside of the first
external orifice and the second end of the hollow prong is
positioned outside of the first external orifice, and
a main conduit connected to the hollow prong at or near
the second end to receive gas that has entered the first end
of the hollow prong within the airway of the subject, the
main conduit being configured to guide the received gas
toward a sensor configured to generate an output signal
conveying information related to one or more parameters of
the received gas received by the secondary interface
through the hollow prong; and
a resilient member extending from the primary interface to
the secondary interface, the resilient member being configured
to suspend and hold the secondary interface spatially apart from
the mask barrier within the delivery opening of the primary
interface at a default position near a plane defined by a seal
portion with respect to the primary interface such that
displacement of the secondary interface from the default
position, in response to installation of the primary interface to
enclose the one or more external orifices of the airway of the
subject, results in the application of a bias force by the resilient
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Application 13/518,913
member on the secondary interface toward the default position,
wherein the interface appliance is configured such that
responsive to the primary interface being installed on a face of
the subject, the resilient member resiliently biases the hollow
prong in place on the face of the subject with the first end of the
hollow prong inside of the first external orifice of the airway of
the subject.
OPINION
Anticipation of Claims 1—5 and 16—21
By Yamamori
Claim 1
The Examiner finds that Yamamori discloses the invention of claim 1.
Final Action 3—5. In particular, the Examiner finds that elements 4, 4A, and
packing 42 satisfy the resilient member/biasing force limitations of claim 1.
Id.
Appellants argue that Yamamori’s packing 42 does not satisfy the
claim limitations directed to a resilient element providing a biasing force.
Appeal Br. 9—10. Appellants allude to unspecified common English
language dictionaries for definitions of “packing” that include: (1) putting
clothes in a suitcase; (2) newspaper or bubble wrap; and (3) material to
prevent leakage. Id. at 9. Appellants then conclude that the Examiner’s
reliance on Yamamori’s packing 42 as a resilient member is contrary to
normal English usage. Id.', Reply Br. 2.
In response, the Examiner states that Yamamori’s packing 42 is made
from rubber and is, therefore, resilient and will provide a bias force as it will
recoil or spring back into shape after bending due to its resilience. Ans. 9.
As shown in fig. 5, the nasal tube 6 is usually positioned toward
the user and [0041] lines 1—7 disclose that the nasal tube 6 is
connected to the rubber containing resilient member (4, 4A).
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Application 13/518,913
Thus the packing 42 provides a bias force to the nasal tube to
spring back to its usually [sic] position.
Id.
In analyzing the Appellants’ and Examiner’s respective positions, we
find, at the outset, that Appellants’ arguments based on common English
language dictionary definitions are unpersuasive. Our supervising court
admonishes us to be wary of over reliance on dictionary definitions.
[W]e have stated that “a general-usage dictionary cannot
overcome art-specific evidence of the meaning” of a claim
term. Vanderlande Indus. Nederland, 366 F.3d [1311,] 1321
[(Fed. Cir. 2004)]; see also Renishaw, 158 F.3d [1243,] 1250
[(Fed. Cir. 1998)], quoting Liebscher v. Boothroyd, 46 C.C.P.A.
701, 258 F.2d 948, 951 (CCPA 1958) (“Indiscriminate reliance
on definitions found in dictionaries can often produce absurd
results.... One need not arbitrarily pick and choose from the
various accepted definitions of a word to decide which meaning
was intended as the word is used in a given claim. The subject
matter, the context, etc., will more often than not lead to the
correct conclusion.”).
Phillips v. AWHCorp., 415 F.3d 1303, 1322 (Fed. Cir. 2005). We do not
consider Yamamori’s use of the term “packing” or its lack of use of the term
“resilient member” dispositive of any issue in this case. See In re Gleave,
560 F.3d 1331, 1334 (Fed. Cir. 2009) (a reference need not satisfy an
ipsissimis verbis test); see also In re Bode, 550 F.2d 656, 660 (CCPA 1977)
(while anticipation requires disclosure of each and every element of the
claim at issue in a single prior art reference, the disclosure need not be in
haec verba).
Taken in the proper context, Yamamori’s packing 42 is rubber, which
is known to a person of ordinary skill in the art to be resilient and is a fact
that is not disputed by Appellants. Yamamori 141. Indeed, Appellants
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Application 13/518,913
freely acknowledge that rubber “makes an excellent fluid seal.” Appeal
Br. 9. Figure 4 of Yamamori depicts nasal tubes 6 disposed immediately
above and resting on the upper surface of attachment portion 4A that is
overlaid with rubber packing 42. Yamamori, Fig. 4. Thus, the Examiner
has demonstrated a sound basis for believing that Yamamori discloses a
resilient member that applies a biasing force as claimed.2 This is sufficient
to shift the burden of showing otherwise onto Appellants. In re Spada, 911
F.2d 705, 708 (Fed. Cir. 1990) (“[WJhenthe PTO shows sound basis for
believing that the products of the applicant and the prior art are the same, the
applicant has the burden of showing that they are not.”). Here, Appellants
provide neither evidence nor persuasive technical reasoning sufficient to
carry this burden.
Next, Appellants argue that Yamamori lacks structure to suspend or
hold the nasal tube apart from its shell. Appeal Br. 13. In response, the
Examiner takes the position that nasal tubes 6 are spaced from shell
housing 1 by cube 41. Ans. 9; see Yamamori, Fig. 4. The claim limitation
at issue recites:
a resilient member extending from the primary interface to the
secondary interface, the resilient member being configured to
suspend and hold the secondary interface spatially apart from
the mask barrier
2 Appellants disclose resilient members 16 that “are formed at least in part
from a resilient material such that displacement of secondary interface 14
from the default position results in the application of a bias force by resilient
members 16 on secondary interface 14 toward its default position.” Spec.
122.
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Claims App. Claim 1. Upon review of Figure 4 of Yamamori, we determine
that the Examiner’s findings of fact on this issue are supported by a
preponderance of the evidence.
Appellants next argue that the Examiner’s rejection is based on
combining disparate embodiments disclosed in Yamamori. Appeal Br. 10.
Appellants contend that such is improper in an anticipation analysis. Id.
In response, the Examiner states that the rejection relies on the
embodiment disclosed in Figures 4 and 5 of Yamamori and that the features
illustrated in Figure 1 and relied on in the rejection are common to both the
Figure 1 and Figures 4—5 embodiments. Ans. 10. Appellants’ contention
that the Examiner’s rejection mixes different embodiments of Yamamori
finds no support in the record.
Finally, Appellants argue that Yamamori’s nasal tube is not mounted
to packing 42. Appeal Br. 11. According to Appellants, such an
arrangement would block the exhalant from passing from the nasal tube into
case 41. Appeal Br. 11—12. In response, the Examiner states that Figure 4
shows nasal tube 6 mounted to packing 42 and that nasal tube 6 is connected
to the inner space of case 41. Ans. 10 (citing Yamamori 141). The cited
portion of Yamamori discloses:
An attachment portion 4A is fitted to the opening
portion 81. The attachment portion 4A includes an
approximate cube-shaped hollow case 41 and a packing 42 that
is a rubber casting product bonded to the case 41. A nasal
tube 6 is attached to a top board of the cube. The nasal tube 6
is connected to an inner space of the case 41.
Yamamori 141 (emphasis added). The Examiner’s findings are, thus,
supported by a preponderance of the evidence.
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We have considered Appellants’ remaining arguments and find them
to be without merit. We sustain the Examiner’s anticipation rejection of
claim 1.
Claims 2 and 4
Claims 2 and 4 depend from claim 1. Claims App. Appellants do not
argue for the separate patentability of claims 2 and 4 apart from arguments
presented with respect to claim 1, which we have previously considered.
We sustain the rejection of claims 2 and 4. See 37 C.F.R. § 41.37(c)(iv)
(failure to separately argue claims).
Claim 3
Claim 3 depends from claim 2 and indirectly from claim 1 and adds
the limitations: “the resilient member extends between the secondary
interface and opposing sides of the primary interface at or near the seal
portion of the primary interface.” Claims App. Appellants argue that
Yamamori’s packing 42 does not extend to opposing sides of the primary
interface as claimed. Appeal Br. 13. In response, the Examiner states that
resilient member 4A is located between left and right sides of the shell 1 and
is adjacent seal 13 on its posterior side. Ans. 11.
Appellants do not direct our attention to any language in the
Specification that would prompt us to construe the claim term “near” in a
narrow manner sufficient to preclude the arrangement of Yamamori. See In
re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (during
examination of a patent application, pending claims are given their broadest
reasonable constmction consistent with the specification.).
We sustain the Examiner’s rejection of claim 3.
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Claim 5
Claim 5 depends from claim 1 and adds the limitation: “wherein the
resilient member is configured to adjust the bias force such that the default
position of the secondary interface is customizable to the subject.” Claims
App. Appellants argue that Yamamori discloses no mechanism for
customizing a biasing force as claimed. Appeal Br. 14.
The Examiner’s rejection and Answer do not identify any adjustment
mechanism to customize the biasing force of packing 42. Ans. 11—12; Final
Act. 5—6. The Examiner’s rejection, therefore, is not supported by evidence
in the record and, accordingly, we do not sustain the rejection of claim 5.
Claim 16
Claim 16 depends from claim 1 and adds the limitation: “wherein the
resilient member is elongated and defines opposite ends, the resilient
member opposite ends being connected with the mask barrier adjacent
opposite sides of the mask barrier.” Claims App. Appellants’ arguments are
not directed to the actual subject matter of claim 16 as pointed out by the
Examiner in the Answer. Appeal Br. 14; Ans. 12. We sustain the rejection
of claim 16.
Claim 17
Claim 17 depends from claim 1 and adds the limitation: “wherein the
secondary interface is supported only by the resilient member and the
resilient member is supported by the mask barrier.” Claims App.
Appellants argue Yamamori’s nasal tube 6 is not supported by packing 42.
Appeal Br. 14. The Examiner considers the entirety of attachment
portion 4A of Yamamori as satisfying the claim limitation. Ans. 12.
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Application 13/518,913
We have reviewed Figures 4 and 5 of Yamamori and determine that
the Examiner’s findings of fact are supported by the preponderance of the
evidence. We sustain the rejection of claim 17.
Claim 18
Claim 18 is an independent claim that is substantially similar in scope
to claim 1. Claims App. In traversing the rejection, Appellants rely on the
same biasing argument that we considered and found unpersuasive with
respect to claim 1 and find equally unpersuasive here. Appeal Br. 16—17.
We sustain the rejection of claim 18.
Claim 19
Claim 19 depends from claim 18 and adds the limitation: “wherein
the resilient member is elongated and has opposite ends connected with the
mask barrier and the hollow prong is supported on a central portion of the
resilient member.” Claims App. Appellants argue:
Packing 42, referenced by the Examiner, is not disclosed by
Yamamori (and it is submitted does not in fact) as appling [sic
applying] a biasing force. It is submitted that the rubber casting
product 42 which is bonded to the case 41 is not described as
nor performs such a biasing function. Nor is the rubber casting
product 42 elongated nor does the rubber casting product 42
have opposite ends connected to the nasal mask shell 1 nor is
the nasal tube 6 supported on a central portion of the rubber
casting member 42. Rather, it is submitted, that the nasal tube 6
is connected directly to the cube-shaped attachment portion 4 as
illustrated most clearly in Figure 2.
Appeal Br. 17. In response, the Examiner states that Appellants have raised
no new arguments and that all of the foregoing arguments have been
addressed in connection with other claims. Ans. 14.
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Application 13/518,913
We agree with the Examiner that Appellants’ arguments merely repeat
arguments that we have previously found unpersuasive except for the
“elongated” argument. We observe that Yamamori’s attachment portion 4A
has a length. See Yamamori, Fig. 4. Appellants provide no construction of
“elongated” based on the Specification that would narrow the scope of the
claim to preclude it from reading on Yamamori. Consequently, we sustain
the rejection of claim 19.
Claim 20
Claim 20 depends from claim 18 and adds the limitation: “wherein
the resilient member includes a central portion and first and second ends, the
first and second ends being connected to opposite sides of the mask barrier,
the central portion being displaced from the mask barrier and supporting the
hollow prong.” Claims App. Appellants argue that Yamamori’s packing 42
does not have first and second ends connected to opposite sides of the mask
shell, which Appellants argue are at contact edge 13 that is argued as “well
displaced and remote” from packing 42. Appeal Br. 16—17.3
The Examiner treats Appellants’ position as a repeat of previous
arguments. Ans. 13—14. We have previously considered Appellants’
argument in connection with claim 16 and found it unpersuasive. We find it
equally unpersuasive here. Moreover, we do not find it to be commensurate
with the scope of claim 20, which requires the ends of the resilient member
to extend from “opposite sides” of the mask barrier, rather than from edges
of the mask barrier. We sustain the rejection of claim 20.
3 Appellants provide the identical argument, under separate headings, first at
page 16 and then again at page 17 in the Appeal Brief.
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Claim 21
Claim 21 depends from claim 18 and adds the limitation: “wherein
the hollow prong is connected to and supported directly only by the resilient
member and the resilient member is connected to and supported by the mask
barrier.” Claims App. Appellants argue that Yamamori’s nasal tube 6 is
connected directed to case 41, not packing 42. Appeal Br. 18.
The Examiner treats Appellants’ position as a repeat of previous
arguments. Ans. 14. Based on our review of Figure 4 of Yamamori, it
appears that nasal tube 6 is “directly” supported only by packing 42, with all
remaining supports properly characterized as “indirect.” We sustain the
rejection of claim 21.
Unpatentability of Claims 6—10
Over Yamamori
Claim 6
Claim 6 is an independent method claim. Claims App. The Examiner
finds that Yamamori does not specifically disclose applying a resilient bias
force to the secondary interface as claimed. Final Action 9. However, the
Examiner finds that Yamamori does disclose that a resilient member
includes rubber casting as a packing which is resilient. Id. (citing Yamamori
141). The Examiner concludes that it would have been obvious to a person
of ordinary skill in the art at the time the invention was made to apply a bias
force to prongs 6 and packing 42 to maintain position or adjust position to fit
a user’s need. Id.
Appellants argue that Yamamori’s packing 42 anchors and seals
attachment portion 4A to shell 1, but does not hold the attachment and nasal
tube away from the shell as claimed. Appeal Br. 15.
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The Examiner treats Appellants’ position as a repeat of previous
arguments. Ans. 12. We previously considered Appellants’argument and
found it unpersuasive with respect to claim 1 and find it equally
unpersuasive here. Appeal Br. 13. We sustain the Examiner’s
unpatentability rejection of claim 6.
Claims 7 and 9
Claims 7 and 9 depend from claim 6. Claims App. Appellants do not
argue for the separate patentability of claims 7 and 9 apart from arguments
presented with respect to claim 6 which we have previously considered. We
sustain the rejection of claims 7 and 9. See 37 C.F.R. § 41.37(c)(iv).
Claim 8
Claim 8 depends from claim 7 and indirectly from claim 6 and adds
the limitation: “wherein the resilient member includes an elongated portion
connected at opposite ends to opposite sides of the primary interface at or
near the seal between the primary interface and the face of the subject.”
Claims App. Appellants argue that packing 42 is not connected to opposite
sides as claimed. Appeal Br. 15.
The Examiner treats Appellants’ position as a repeat of previous
arguments. Ans. 12. We previously considered Appellants’argument and
found it unpersuasive with respect to claim 3 and find it equally
unpersuasive here. Appeal Br. 13. We sustain the Examiner’s
unpatentability rejection of claim 8.
Claim 10
Claim 10 depends from claim 6 and adds the limitation: “further
including adjusting the resilient bias force applied by the resilient member to
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customize the engaging between the secondary interface and the first
external orifice of the airway of the subject.” Claims App. Appellants argue
that Yamamori discloses no mechanism for customizing a biasing force as
claimed. Appeal Br. 14.
The Examiner’s rejection and Answer do not identify any adjustment
mechanism to customize the biasing force of packing 42. Ans. 11—12; Final
Act. 10. We find no discussion in paragraph 41 of Yamamori regarding the
capability of adjusting the biasing force of resilient packing member 4, 42.
The Examiner’s rejection, therefore, is not supported by evidence in the
record and, accordingly, we do not sustain the rejection of claim 10.
DECISION
The decision of the Examiner to reject claims 1—4, 6—9, and 16—21 is
affirmed.
The decision of the Examiner to reject claims 5 and 10 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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