Ex Parte Sullivan et al

Patent Trial and Appeal Board

Oct 31, 2016

12698307 (P.T.A.B. Oct. 31, 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.
12/698,307 02/02/2010 Colin Edward Sullivan SULLIVAN 2A 3748
1444 7590 11/01/2016
Browdy and Neimark, PLLC
1625 K Street, N.W.
Suite 1100
Washington, DC 20006
EXAMINER
LOUIS, LATOYA M
ART UNIT PAPER NUMBER
3771
MAIL DATE DELIVERY MODE
11/01/2016 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 COLIN EDWARD SULLIVAN and PAUL WILKIE
____________

Appeal 2013-004791
Application 12/698,3071
Technology Center 3700
____________

Before MICHAEL C. ASTORINO, BRUCE T. WIEDER, and
MATTHEW S. MEYERS, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL
The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1–6 and 8–20. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b). An oral hearing was held on October 17,
2016.
We REVERSE.

1 According to the Appellants, “[t]he present application is owned by
Australian Centre for Advanced Medical Technology Ltd., of A.C.N. 084
736 381, of David Read Laboratories D06, Department of Medicine,
University of Sydney, New South Wales, Australia 2006.” Appeal Br. 1.
Appeal 2013-004791
Application 12/698,307

2
STATEMENT OF THE CASE
Claimed Subject Matter
Claim 1, the sole independent claim, is representative of the subject
matter on appeal and is reproduced below with added emphasis.
1. A mask for supplying gas under pressure to the nasal
airway of an infant human, including;
a manifold for supplying air to an aperture in the
mask;
a support structure for supporting the manifold;
a shaped membrane structure formed from a thin
walled membrane extending generally away from the
support structure having a front face, the shaped
membrane structure defining an enclosure for receiving at
least the nares of an infant human nose; and
an aperture which is a generally trapezoidal
aperture, the aperture being formed in the front face and
having a top, first and second sides and a base adapted to
fit around the nasal area of the infant human;
wherein the generally trapezoidal aperture is
bounded by a notional isosceles trapezium that is defined
by a straight top line, first and second straight side lines
and a straight base line,
wherein at least a portion of the top of the aperture
is coincident with at least a portion of the top line of the
isosceles trapezium, at least a portion of the first side of
the aperture is coincident with at least a portion of the first
side line of the isosceles trapezium, at least a portion of the
second side of the aperture is coincident with at least a
portion of the second side line of the isosceles trapezium,
and at least a portion of the base of the aperture is
coincident with at least a portion of the base line of the
isosceles trapezium;
wherein the top line and base line of the isosceles
trapezium each have a length and the length of the top line
of the isosceles trapezium is between about five ninths to
one third of the length of the base line of the isosceles
trapezium and
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Application 12/698,307

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wherein at least a portion of the membrane of the
front face adjacent the top of the trapezoidal aperture is
generally planar while other parts of the membrane around
the aperture are sufficiently flexible to mould to the shape
of the infant human’s nasal area or are contoured to
generally match the contours around that nasal area whilst
the membrane structure itself has sufficient rigidity to
support the weight of the support structure without
collapsing.

References
Blasdell et al.
(hereinafter “Blasdell”)
US 5,419,317

May 30, 1995
Landis et al.
(hereinafter “Landis”)

US 5,657,752 Aug. 19, 1997
Kidd US 5,746,201 May 5, 1998
Gregg, III et al.
(hereinafter “Gregg”)

US 5,768,715 June 23, 1998
Goldstein US 6,012,455 Jan. 11, 2000
Boros, Sr.
(hereinafter “Boros”)

US 6,098,201 Aug. 8, 2000
Correa et al.
(hereinafter “Correa”)

US 6,119,694 Sept. 19, 2000
Chen US 6,615,832 B1 Sept. 9, 2003
Ziaee US 6,626,177 Sept. 30, 2003
Sullivan WO 96/17643 June 13, 1996
Appeal 2013-004791
Application 12/698,307

4
Rejections
Claims 1–4, 9, 10, 17, 19, and 20 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Chen, Kidd, Blasdell, Boros, and Ziaee.
Claims 5, 6, 8, and 11–13 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Chen, Kidd, Blasdell, Boros, Ziaee, and Sullivan.2
Claims 14–16 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Chen, Kidd, Blasdell, Boros, Ziaee, Landis, Correa, and Gregg.
Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Chen, Kidd, Blasdell, Boros, Ziaee, and Goldstein.

ANALYSIS
The Examiner finds, among other things, that Chen teaches a mask
including a shaped membrane structure (interface pad) 26 having an aperture
able to fit around the nasal area of an infant human. See Final Act. 3; see
also Chen, Fig. 1, col. 4, ll. 27–35. The Examiner also finds that Chen fails
to teach:
a generally trapezoidal aperture bounded by a notional
isosceles trapezium, wherein the top, sides and base of the
notional isosceles trapezium is coincident with the top,
sides and base of the trapezoidal aperture, and wherein the
length of the top of this notional isosceles trapezium is
about five ninths to one third of the length of the base of
the notional isosceles trapezium.
Final Act. 4.
To remedy this deficiency, the Examiner finds that “Blasdell teaches
in figs. 14 and 15 a mask in use having a generally trapezoidal aperture (22)

2 The Examiner appears to have overlooked listing claim 6 as a rejected
claim for this ground of rejection. See Final Act. 7.
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Application 12/698,307

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which is capable of being bounded by a notional isosceles trapezium having
coincident top, sides[,] and base.” Final Act. 4. The Examiner concludes
that “[i]t would have been obvious to one of ordinary skill in the art . . . to
modify the shape of the central opening[, i.e., aperture,] of the mask of Chen
with the generally trapezoidal aperture as taught by Blasdell to provide a
smaller contact footprint.” Id.
The Appellants argue that the Examiner’s reasoning supporting the
modification of the shape of the aperture of Chen’s mask in view of the
shape of aperture of Blasdell’s mask “to provide a smaller contact footprint”
lacks rational underpinning because a trapezoidal shaped aperture would be
larger than Chen’s triangular shaped aperture when sized proportionally for
use. See Appeal Br. 18–19.
In response, the Examiner finds that:
A trapezoidal shape has a smaller peak than a triangular
shape and thus would cover less of an area around a user’s
eyes thereby enhancing comfort. For example, the mask
in fig. 14 of Blasdell has a trapezoidal shape with sides and
peak further away from a user’s eyes than the triangular
shaped mask shown in figs. 1 and 10 of Blasdell. The
mask in figs. 1 and 10 covers a larger area close to a user’s
eyes than the trapezoidal mask of fig. 14 which creates a
larger contact footprint near the eyes.
Ans. 12.
The Examiner’s response appears to be based on speculation. For
example, the Examiner’s comparison of the relationship between the adult
faces and Blasdell’s mask 20 in Figures 1 and 10 and Figure 14 is based on
drawings illustrated from a perspective view. See Blasdell, col. 3, ll. 48–50,
col. 4, ll. 11–13, 23–24. And, because the Figures are drawn in a
perspective view, in this case we determine that the comparison cannot
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reasonably disclose or suggest to one of ordinary skill in the art that the
mask illustrated in Figure 14 has a smaller contact footprint with the face of
an adult human user than the masks illustrated in Figures 1 and 10. See also
In re Aslanian, 590 F.2d 911, 914 (CCPA 1979). As such, the Examiner’s
reason for modifying the aperture of Chen’s mask in view of the aperture of
Blasdell’s mask lacks adequate rational underpinning.
Further, it appears the Examiner may also rely on the shape and the
dimensions of the aperture of Boros’s mask to supplement the modification
of Chen’s aperture to be a generally trapezoidal aperture as required by
claim 1. See Final Act. 4, Ans. 13. In this regard, the Examiner finds that
“Boros teaches in fig. 1 a trapezoidal aperture capable of being bound by a
coincident notional isosceles trapezium with a length of the top being one
third the length of the base.” Final Act. 4 (citing Boros, col. 2, ll. 42–45).
The Examiner concludes that “[i]t would have been obvious to one of
ordinary skill in the art . . . to manufacture the aperture of the modified Chen
to have a top one third the length of the base as taught by Boros to provide a
comfortable fit for different users.” Final Act. 4.
The Appellants argue that the use of Boros’s mask is different than
Chen’s mask at least because Boros’s mask is designed to overlie and mold
to the entire face of the wearer. See Appeal Br. 24. The Appellants point
out that the aperture of Boros’s mask “provide[s] an opening to which a
filter is attached.” Id. Also, after the filter is attached, the “the mask is
fitted to the face of the wearer by deforming the portion of the mask that
goes over the bridge of the nose of the wearer by appropriately bending this
portion while applying the mask directly to the face of the wearer.” Boros,
col. 4, ll. 12–15. As such, Boros instructs one of the ordinary skill in the art
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Application 12/698,307

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to deform the originally shaped trapezoidal aperture to fit to the face of a
user to provide a comfortable fit for different users. Because the shape and
the dimensions of the aperture of Boros’s mask are deformed when the mask
is applied to a user’s face, the original non-deformed shape and dimensions
of Boros’s aperture cannot be relied upon for the reason provided by the
Examiner.
The Examiner’s remaining modifications to Chen’s teachings do not
remedy the deficiencies of the Examiner’s rejection of claim 1. Therefore,
we determine that the Examiner’s reason to modify the shape of Chen’s
aperture to be “generally trapezoidal,” as required by claim 1, lacks adequate
rational underpinning.
Thus, we do not sustain the Examiner’s rejection of independent claim
1 and dependent claims 2–4, 9, 10, 17, 19, and 20. The remaining rejections
based on Chen, Kidd, Blasdell, Boros, and Ziaee in combination with
Sullivan, or Landis, Correa, and Gregg, or Goldstein rely on the same
inadequate conclusion as discussed above. As such, we do not sustain the
Examiner’s rejections of dependent claims 5, 6, 8, 11–16, and 18.

DECISION
We REVERSE the Examiner’s decision rejecting claims 1–6 and 8–
20.

REVERSED