11192809 (P.T.A.B. Apr. 22, 2015)

Ex Parte Skov et al

Patent Trial and Appeal BoardApr 22, 2015

11192809 (P.T.A.B. Apr. 22, 2015)

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. 11/192,809 07/28/2005 Roman Skov D-152 7346 7590 04/22/2015 Charles H. Schwartz Moldex-Metric, Inc. 10111 W Jefferson Blvd. Culver City, CA 90232 EXAMINER PATEL, NIHIR B ART UNIT PAPER NUMBER 3772 MAIL DATE DELIVERY MODE 04/22/2015 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ROMAN SKOV, TORBEN SKOV, HEINZ WANDEL, and FRANK KERN ____________ Appeal 2012-010370 Application 11/192,809 1 Technology Center 3700 ____________ Before ULRIKE W. JENKS, SCOTT E. KAMHOLZ, and KENNETH G. SCHOPFER, Administrative Patent Judges. SCHOPFER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims directed to a breathing mask. The Examiner rejected the claims as anticipated. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 According to Appellants, the real party in interest is Moldex-Metric, Inc. App. Br. 1. Appeal 2012-010370 Application 11/192,809 2 STATEMENT OF THE CASE Background “The invention relates to a breathing mask . . . with a deep-drawn mask body rigid so as to retain its shape, characterized by at least one predefined fold line on the mask body for folding for storage.” Spec. 1. The Claims Claims 1–12 and 15 are on appeal. See App. Br. 3. Claim 1 is representative and reads as follows. 1. A breathing mask molded to form a deep-drawn mask body that is sufficiently rigid so as to retain its shape without any additional structural elements, including at least one predefined fold line on the mask body for providing a storage folding of the breathing mask, a first and at least a second fold line provided for a first and a second storage folding and with an inner side of one storage folding lying on the outside of the mask body and the inner side of the other storage folding lying on the inner side of the mask body, and wherein the first and the second fold lines run crosswise to one another. App. Br. 11 (emphasis added). The Rejection The Examiner maintains that claims 1–12 and 15 are unpatentable under 35 U.S.C. § 102(b) over Hilton. 2 2 Hilton, US 4,419,994, issued Dec. 13, 1983. Appeal 2012-010370 Application 11/192,809 3 DISCUSSION Principles of Law The Examiner must establish a prima facie case of anticipation under § 102 by showing, as a matter of fact, that all elements arranged as specified in a claim are disclosed within the four corners of a reference, either expressly or inherently, in a manner enabling one skilled in the art to practice an embodiment of the claimed invention without undue experimentation. ClearValue, Inc. v. Pearl River Polymers, Inc., 668 F.3d 1340, 1344 (Fed. Cir. 2012); Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1083 (Fed. Cir. 2008). Analysis Appellants argue, inter alia, that the Examiner has not established a prima facie showing of anticipation because Hilton does not disclose a mask that is molded to form a deep-drawn mask body. See App. Br. 8–9. The Examiner finds that Hilton discloses a breathing mask as claimed. Ans. 4–5. In support, the Examiner asserts, inter alia, that the mask is injection molded. Id. (citing Hilton col. 5, l. 64–col. 6, l. 8). The Examiner also asserts “that the limitation ‘molded to form a deep drawn mask’ implies a method of manufacturing process and should not be given any merit.” Id. at 7. For the reasons set forth below, we find that the Examiner has not established that Hilton discloses a “breathing mask molded to form a deep- drawn mask body” as required by claim 1. Hilton discloses “a filtering facepiece formed from flexible filtering sheet material in the form of a flat pocket of generally tapering shape.” Hilton col. 2, ll. 21–24. Hilton acknowledges that “filtering face pieces are Appeal 2012-010370 Application 11/192,809 4 generally of one of two types, being either a moulded cup or a pleated sheet material mask.” Id. at col. 1, ll. 25–27. With respect to the Examiner’s finding that Hilton is formed using a molding process, we find that the Examiner is relying on a portion of Hilton directed to how strengthening elements may be added to fold lines for reinforcements. See Hilton col. 6, ll. 1–8. Hilton discloses that these strengthening elements may be formed by injection molding. Id. We agree with Appellants that this disclosure does not support the conclusion that Hilton discloses a breathing mask molded to form a deep-drawn mask body. Rather, this portion of Hilton only relates to reinforcing fold lines and is unrelated to the body of the mask. We also do not agree with the Examiner’s interpretation that “the limitation ‘molded to form a deep drawn mask’ implies a method of manufacturing process and should not be given any merit.” Ans. 7. As noted above, Hilton acknowledges a structural difference between masks in the form of a molded cup and masks made from a pleated sheet of material, and Hilton explicitly discloses a mask made from a filtering sheet material. Similarly, the Specification differentiates between the present invention and breathing masks “manufactured of one or several flat sections of one-piece material.” Spec. 2–3. Based on these disclosures, we conclude that the claim language “molded to form a deep-drawn mask body” requires a molded structure that is absent from Hilton’s device. Thus, we conclude that Hilton does not disclose a breathing mask molded to form a deep-drawn mask body as claimed. Appeal 2012-010370 Application 11/192,809 5 Accordingly, we find that the Examiner failed to establish a prima facie showing of anticipation, and we reverse the rejection of claims 1–12 and 15. CONCLUSION For the reasons set forth above, we reverse the rejection of claims 1– 12 and 15. REVERSED sl