Ex Parte Smith et al

Patent Trial and Appeal Board

May 3, 2016

12397850 (P.T.A.B. May. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/397,850 0310412009
23117 7590 05/05/2016
NIXON & V ANDERHYE, PC
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Ian Malcolm SMITH
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.
BKK-4398-942 8964
EXAMINER
DITMER, KATHRYN ELIZABETH
ART UNIT PAPER NUMBER
3778
NOTIFICATION DATE DELIVERY MODE
05/05/2016 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 IAN MALCOLM SMITH, ANDREW RODERICK BATH,
NATHAN JOHN ROW, and ALEXANDER VIRR
Appeal 2014-003195 1,2
Application 12/397,850
Technology Center 3700
Before ANTON W. PETTING, PHILIP J. HOFFMANN, and
TARA L. HUTCHINGS, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-36. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
According to Appellants, the "invention relates to systems and
methods to control the humidity of breathable gases used in all forms of
1 Our decision references Appellants' Specification ("Spec.," filed Mar. 4,
2009), Appeal Brief ("Appeal Br.," filed June 27, 2013), and Reply Brief
("Reply Br.," filed Jan. 15, 2014), as well as the Examiner's Answer
("Answer," mailed Nov. 20, 2013).
2 The real party in interest is ResMed Limited. Appeal Br. 3.
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Application 12/397,850
respiratory apparatus ventilation systems." Spec. if 2. We reproduce, below,
independent claim 1 as representative of the appealed claims.
1. A humidifier for a respiratory apparatus for
delivering a humidified flow of breathable gas to a patient, the
humidifier comprising:
a humidifier chamber configured to store a supply of water
to humidify the flow of breathable gas, the humidifier chamber
comprising a first heating element configured to heat the supply
of water;
a relative humidity sensor to detect a relative humidity of
ambient air of the patient's environment and generate signals
indicative of the ambient relative humidity;
a first temperature sensor to detect a temperature of the
ambient air and generate signals indicative of the ambient
temperature; and
a controller configured to determine an absolute humidity
of the ambient air from the signals generated by the relative
humidity sensor and the first temperature sensor and to control
the first heating element to provide a predetermined relative
humidity to the flow of breathable gas based on a comparison
between a detected ambient condition of the patient's
environment and a condition of the breathable gas within the
respiratory apparatus.
Appeal Br., Claims App.
REJECTIONS AND PRIOR ART
The Examiner rejects claim 21under35 U.S.C. § 102(e) as
anticipated by Pujol (US 2008/0308100 Al, pub. Dec. 18, 2008) or, in the
alternative, under 35 U.S.C. § 103(a) as unpatentable over Pujol and Koch
(US 6,102,037, iss. Aug. 15, 2000).
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Application 12/397,850
The Examiner rejects claims 1-13, 15-20, 23-27, and 36 under
35 U.S.C. § 103(a) as unpatentable over Pujol and Suzuki (US 5, 163,423,
iss. Nov. 17, 1992), with or without Koch.
The Examiner rejects claim 14 under 35 U.S.C. § 103(a) as
unpatentable over Pujol, Suzuki, and Breen (US 6,014,890, iss.
Jan. 18, 2000), with or without Koch.
The Examiner rejects claim 22 under 35 U.S.C. § 103(a) as
unpatentable over Seakins (US 7,146,979 B2, iss. Dec. 12, 2006) and Koch.
The Examiner rejects claims 28-35 under 35 U.S.C. § 103(a) as
unpatentable over Pujol, Suzuki, and Thudor (US 2002/0112725 Al, pub.
Aug. 22, 2002), with or without Koch.
See Answer 3-25.
ANALYSIS
Anticipation rejection of independent claim 21
Based on our review of Appellants' arguments (see Appeal Br. 15-18;
see also Reply Br. 3-8) and the Examiner's findings and conclusions (see
Answer 3-5, 27-30), we sustain the anticipation rejection of independent
claim 21.
Appellants argue that the rejection of independent claim 21 is in error
because Pujol does not teach a controller configured to control a heating
element to provide a predetermined absolute and/or relative humidity to a
flow of breathable gas "based on a comparison between the determined
absolute humidity of the ambient air and a determined absolute humidity of
the breathable gas." See Appeal Br. 15-18, Claims App. More specifically,
Appellants argue that the claimed comparison does not occur because "the
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Application 12/397,850
comparison of Pujol between a predicted circuit humidity downstream of the
humidifier and the target humidity is not performed until after the
determined ambient humidity value has been manipulated and combined
with other input parameters." Id. at 16. Nonetheless, the Examiner's
finding that Pujol teaches the claimed comparison is supported by a
preponderance of the evidence. See Answer 3-5. Further, Appellants do not
persuade us that the claim requires, for example, a comparison between
values of the determined absolute humidity of the ambient air and the
breathable gas without any kind of manipulation of these values, such as by
reference to any portion of the claim or the Specification that precludes
manipulation of the values.
Based on the foregoing, we are unpersuaded by Appellants'
arguments of error. Therefore, we sustain the anticipation rejection of
claim 21. 3
Obviousness rejections of claims 1-13, 15-20, 23-27, and 36
Obviousness rejection of independent claim 1 based on Pujol
and Suzuki
Based on our review of Appellants' arguments (see Appeal Br. 20-23;
see also Reply Br. 3-8) and the Examiner's findings and conclusions (see
Answer 7-10, 29-30), we sustain the rejection of independent claim 1 based
on Pujol and Suzuki.4
Appellants argue that the rejection of independent claim 1 is in error
because Pujol does not teach a controller configured to control a heating
3 Inasmuch as we sustain the anticipation rejection of claim 21, we do not
consider the obviousness rejection of claim 21.
4 Inasmuch as we sustain the rejection based on Pujol and Suzuki, we do not
consider the obviousness rejection further based on Koch.
4
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Application 12/397,850
element to provide a predetermined relative humidity to a flow of breathable
gas "based on a comparison between a detected ambient condition of the
patient's environment and a condition of the breathable gas within the
respiratory apparatus." See Appeal Br. 20-23, Claims App. More
specifically, Appellants argue that the claimed comparison does not occur
because, similar to the argument regarding claim 21, "the comparison of
Pujol between a predicted humidity downstream of the humidifier and the
target humidity is not performed until after the determined ambient humidity
value has been manipulated and combined with other input parameters." Id.
at 21. Nonetheless, the Examiner's finding that Pujol teaches the claimed
comparison is supported by a preponderance of the evidence. See
Answer 7-8. Further, Appellants do not persuade us that the claim requires,
for example, a comparison between values of the detected ambient condition
of the patient's environment and a condition of the breathable gas, such as
by reference to any portion of the claim or the Specification that precludes
any manipulation of the values relating to the condition of the patient's
environment or condition of the breathable gas.
Because we determine that Pujol discloses the claimed comparison,
Appellants' argument that Suzuki does not disclose the claimed comparison
is unpersuasive. See Appeal Br. 24. Thus, based on the foregoing, we are
unpersuaded by Appellants' arguments of error. Therefore, we sustain the
rejection of claim 1. 5
5 Inasmuch as we sustain the rejection based on Pujol and Suzuki, we do not
consider the obviousness rejection further based on Koch.
5
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Application 12/397,850
Obviousness rejection of dependent claims 2-12, 15-20, 23-27,
and 36 based on Pujol and Suzuki
Appellants do not argue separately the rejection of claims 2-12, 15-
20, 23-27, and 36 that depend from claim 1. Thus, because we sustain the
rejection of claim 1 based on Pujol and Suzuki, we sustain the rejection of
dependent claims 2-12, 15-20, 23-27, and 36.6
Obviousness rejections of dependent claim 13 based on Pujol and
Suzuki, with or without Koch
Based on our review, we agree with Appellants (see Appeal
Br. 26-27) that a preponderance of the evidence does not support the
Examiner's determination that
[i]t would have been obvious ... to modify the controller taught
by Pujol in view of Suzuki or Pujol in view of Suzuki and Koch
to include [']wherein the evaporation rate is determined by
multiplying a flow rate of the breathable gas and a difference
between the predetermined absolute humidify and the ambient
absolute humidify['] as further taught by Koch (Answer 13).
rvfore specifically, \X/e determine that the Examiner fails to establish by a
preponderance of the evidence that Koch, or any other reference, discloses
or suggests that "the evaporation rate is determined by multiplying a flow
rate of the flow of breathable gas and a difference between the
predetermined absolute humidity and the ambient absolute humidity" as
claimed. Appeal Br. 26-27, Claims App. Thus, we do not sustain either
obviousness rejection of claim 13.
6 Inasmuch as we sustain the rejection based on Pujol and Suzuki, we do not
consider the obviousness rejection further based on Koch.
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Application 12/397,850
Obviousness rejection of independent claim 22 based on Seakins and
Koch
Independent claim 22 recites a controller configured to receive signals
from an absolute humidity sensor and control a heating element to provide a
predetem1ined absolute and/or relative humidity to a flow of breathable gas
"based on a difference between the detected absolute humidity of the
humidified flow and a determined ambient absolute humidity of a patient's
environment." Appel Br., Claims App. Based on our review, we agree with
Appellants (see id. at 28-29) that a preponderance of the evidence does not
support the Examiner's determination that
it would have been obvious . . . to modify the controller of
Seakins that controls the amount of heating provided to the
humidifier so as to affect the absolute humidity exiting the
humidifier to include wherein the controller takes into account
the amount of absolute humidity already present in the ambient
air compared to the humidity exiting the humidifier in order to
calculate the amount of humidity to be added (and thus the
temperature of the heating plate) to achieve the target humidity
as taught by Koch (Answer 20).
Although the Examiner references column 6, lines 35--41 and column 9,
lines 38--44 of Koch (see id. at 20, 31 ), neither portion of Koch teaches
adjustment of a breathable gas's humidity based on any comparison of
humidity levels. Thus, because the Examiner does not establish by a
preponderance of the evidence that any reference discloses controlling
humidity to a flow of breathable gas based on a difference or comparison of
humidity levels, we do not agree with the Examiner that the combination of
references discloses the claimed controller. Therefore, we do not sustain the
rejection of claim 22.
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Obviousness rejections of dependent claim 14
Because Appellants do not argue the patentability of claim 14, and we
sustain the rejection of claim 1 from which claim 14 depends, we sustain the
rejection of claim 14 based on Pujol, Suzuki, and Breen.7
Obviousness rejections of claims 28-35
Obviousness rejection of claim 28 based on Pujol, Suzuki, and
Thud or
Claim 28 ultimately depends from claim 1. See Appeal Br., Claims
App. Appellants do not argue separately the rejection of claim 28. Thus,
because we sustain the rejection of claim 1 based on Pujol and Suzuki, we
sustain the rejection of dependent claim 28 based on Pujol, Suzuki, and
Thudor. 8
Obviousness rejections of dependent claim 29 based on Pujol,
Suzuki, and Thudor, with or without Koch
We agree with Appellants that the Examiner does not establish by a
preponderance of the evidence that Thudor discloses claim 29' s limitation
that "the controller is configured to control the second heating element to
increase the predetermined temperature when the change in the flow rate
exceeds a predetermined decrease in the flow rate." Appeal Br. 30-31,
Claims App. Although the Examiner relies on Thudor's paragraphs 19 and
79-82 to disclose the claimed controller, none of these portions of Thudor
teach that the controller is configured to control a heating element to
increase the predetermined temperature when the change in the flow rate
exceeds a predetermined decrease in the flow rate. See Answer 22, 32-33.
7 Inasmuch as we sustain the rejection based on Pujol, Suzuki, and Breen,
we do not consider the obviousness rejection further based on Koch.
8 Inasmuch as we sustain the rejection based on Pujol, Suzuki, and Thudor,
we do not consider the obviousness rejection further based on Koch.
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Application 12/397,850
For example, although Thudor's paragraphs 79-82 state that "a greater level
of power will be supplied to the conduit heater element if ... the rate of flow
of the gases reduces," this portion discusses neither that the increase in
power occurs after the change in flow rate exceeds a predetermined
threshold, nor that the increase in power results in an increase in
temperature, both as required by claim 29. Thus, based on the foregoing, we
do not sustain either obviousness rejection of claim 29.
Obviousness rejections of dependent claims 30-32 based on
Pujol, Suzuki, and Thudor, with or without Koch
Because claims 30-32 depend from claim 29, and we do not sustain
any rejection of claim 29, we also do not sustain any rejection of
claims 3 0-3 2.
Obviousness rejections of dependent claim 33 based on Pujol,
Suzuki, and Thudor, with or without Koch
We agree with Appellants that the Examiner does not establish by a
preponderance of the evidence that Thudor discloses claim 33 's limitation
that "the controller is configured to control the second heating element to
decrease the predetermined temperature when the change in the flow rate
exceeds a predetermined increase in the flow rate." Appeal Br. 34, Claims
App. The Examiner does not find that any portion of any reference discloses
the claimed controller, but instead determines that such a modification
would have been obvious. See Answer 24, 32-33. Because no reference
discloses or suggests the claimed controller, and the Examiner does not
provide any citation to any reference supporting the Examiner's conclusion
that the modification would have been obvious because the modification
"would be expected to reduce the likelihood of condensation and heat loss in
the patient circuit, thus reducing the need for additional heating in the
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Application 12/397,850
conduit" (Answer 24), we determine that the Examiner's reason for
modifying the references lacks the rational underpinnings required to
support the rejection. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007). Thus, based on the foregoing, we do not sustain either obviousness
rejection of claim 33.
Obviousness rejections of dependent claims 34 and 35 based on
Pujol, Suzuki, and Thudor, with or without Koch
We agree with Appellants that the Examiner does not establish by a
preponderance of the evidence that Thudor discloses claim 34' s limitation
that "the controller is configured to control a duty ratio of the first heating
element" or claim 35's limitation that "the controller is configured to control
a duty ratio of each of the first heating element and the second heating
element." Appeal Br. 34--35, Claims App; see also Reply Br. 18-19.
Although the Examiner relies on paragraph 61 of Thudor, we agree with
Appellants that "Thudor ... discloses regulating the duty cycle of the
conduit heater" rather than the heating plate (that the Examiner equates to
the first heating element) (Appeal Br. 35), and although Thudor does teach
controlling the power provided to the heating plate, "Thudor does not
explicitly disclose that the power [to the heating plate] is controlled via a
duty ratio" (Reply Br. 18). Thus, based on the foregoing, we do not sustain
any of the obviousness rejections of claim 34 or claim 35.
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DECISION
We REVERSE the Examiner's obviousness rejections of claims 13,
22, and 29-35.
WE AFFIRM the Examiner anticipation and obviousness rejections of
claims 1-12, 14--21, 23-28, and 36.
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) (2015).
AFFIRMED-IN-PART
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