Ex Parte Thornton

Patent Trials and Appeals Board

Apr 30, 2014

11768457 - (D) (P.T.A.B. Apr. 30, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte W. KEITH THORNTON
____________

Appeal 2011-012378
Application 11/768,457
Technology Center 2100
____________

Before ST. JOHN COURTENAY III, THU A. DANG, and
LARRY J. HUME, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE1
The Examiner finally rejected claims 1, 2, 4-12, 14, 15, 17-19, 21 and
22. Appellant appeals from the final rejection under 35 U.S.C. § 134(a).
We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
INVENTION
This invention relates to “a method of creating a three-dimensional
electronic model for use in forming a custom medical mask for a particular
user.” (Abstract) Claim 22 is representative of the claimed subject matter:
22. A method of creating an electronic stereo lithography model
for use in forming a custom-fit medical mask, comprising:

[a] scanning at least a portion of a human face using an
electronic scanning device;

[b] based at least in part on the scanning, generating a three-
dimensional electronic model of the portion of the human face;
and

[c] merging [c1] the three-dimensional electronic model with
[c2] an electronic model of a fitting configured to couple to a
clinical gas delivery system;

[d] wherein the electronic stereolithography model is readable
by a stereolithography apparatus adapted to form the custom-fit
medical mask using the electronic stereolithography model,

1 We refer to the corrected Examiner's Answer mailed March 15, 2011 as
"Ans."
We refer the first Reply Brief mailed May 15, 2011 as "First Reply Br.".
We refer to the second Answer mailed July 11, 2011 as "Second Ans.".
We refer the second reply Brief mailed July 29, 2011 as "Second Reply Br.".
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[d1] the custom-fit medical mask comprising the fitting
configured to couple to the clinical gas delivery system.

(Steps lettered and disputed limitation emphasized).

REJECTIONS
R1. Claims 14, 17, 18, and 22 stand rejected under 35 U.S.C.
§ 103(a) over US Patent Application Publication No. 2004/0263863 A1,
pub. Dec. 30, 2004 (“Rogers”) and US Patent Application Publication No.
2006/0023228 A1, pub. Feb. 2, 2006 (“Geng”).
R2. Claims 15 and 19 stand rejected under 35 U.S.C. § 103(a) over
Rogers, Geng and Su Jin Kim et al, "Offset of STL Model generated from
Solid Model" Jrnl. Of the Korean Society of Precision Engineering, Vol. 22,
Sept. 2005 (“Kim”).
R3. Claim 21 stands rejected under 35 U.S.C. § 103(a) over Rogers,
Geng, and US Patent No. 4,575,330, pub. Mar. 11, 1986 (“Hull”).
R4. Claims 1, 4, 5, and 9 stand rejected under 35 U.S.C. § 103(a)
over Rogers, Hull, and US Patent Application Publication No.
2005/0150496 A1, pub. Jul. 14, 2005 (“Smalldone”)
R5. Claims 2 and 6 stand rejected under 35 U.S.C. § 103(a) over
Rogers, Hull, Smalldone, and US Patent Application Publication No.
2004/0079730 A1, pub. Apr. 29, 2004 (“Ahrens”).
R6. Claim 7 stands rejected under 35 U.S.C. § 103(a) over Rogers,
Hull, Smalldone, and Kim.
R7. Claim 8 stands rejected under 35 U.S.C. § 103(a) over Rogers,
Hull, Smalldone, and US Patent Application Publication No. 2002/0185134
A1, pub. Dec. 12, 2002 (“Bishop”).
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R8. Claim 10 stands rejected under 35 U.S.C. § 103(a) over Rogers,
Bishop and US Patent No. 6,406,658 B1, pub. Jun. 18, 2002 (“Manners”).
R9. Claim 11 stands rejected under 35 U.S.C. § 103(a) over Rogers,
Bishop, Manners and Ahrens.
R10. Claim 12 stands rejected under 35 U.S.C. § 103(a) over Rogers,
Bishop, Manners and Kim.

GROUPING OF CLAIMS
Based on Appellant's arguments, we decide the appeal of the §103
rejection R1 of claims 14, 17, 18 and 22 on the basis of representative claim
22. See 37 C.F.R. § 41.37(c)(1)(vii)(2004). 2
Based on Appellant's arguments, we decide the appeal of the §103
rejection R4 of claims 1 and 4 on the basis of representative claim 1. (Id.).
We address the §103 rejections R2, R3, and R5-R10 of the remaining
claims separately, infra.

ANALYSIS
R1.
Regarding the claim 22 limitation "[c2] an electronic model of a
fitting configured to couple to a clinical gas delivery system;"
Appellant contends:

2 Appellant filed a Notice of Appeal on June 2, 2010. The date of filing the
Notice of Appeal determines which set of rules applies to an Ex Parte
appeal. If a notice of appeal is filed prior to January 23, 2012, then the 2004
version of the Board Rules last published in the 2011 edition of Title 37 of
the Code of Federal Regulations (37 C.F.R. § 41.1 et seq.) applies to the
appeal. See also MPEP Rev. 8, July 2010.
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[T]he Examiner appears to maintain that the electronic model
of the fitting is somehow disclosed by a physical “pipe like
member (1202) [that] may be attached to the body member
(1201) . . . .” Examiner's First Answer at 27. (citing Geng at
88). A physical pipe-like member that is physically attached to
another component, however, is not “an electronic model of a
fitting configured to couple to a clinical gas delivery system,”
as recited in Claim 22.
(Second Reply Br. 4).
We are not persuaded by Appellant's contentions because Appellant
does not consider all the teachings and suggestions of Geng pointed to by the
Examiner. (Ans. 26). The Examiner finds, and we agree, that Geng's
description of forming electronic mask models of different masks (¶[0086];
Figs. 10, 11C, and 11D) and Geng's description of forming a custom
designed nostril mask, based on the acquired 3D measurement data, with a
gas fitting (¶[0088]; Fig. 12), would have taught or suggested the claimed
[c2] “an electronic model of a fitting configured to couple to a clinical gas
delivery system.” (Ans. 19, 24).
We find Geng's laying ([c] "merging") [c1] the computer model of a
human face (¶[0086]; Figs. 11C, 11D and 12; Ans. 24-25; face model) with
[c2] a electronic model of a mask having a gas fittings (see above analysis;
Ans. 24) would have taught or suggested the contested limitation. (Ans. 24-
25; ¶[0086];¶[0088]; Figs. 10, 11C, and 11D).3 Moreover, we find a skilled

3 The Supreme Court has determined that the conclusion of obviousness can
be based on the interrelated teachings of multiple patents, the effects of
demands known to the design community or present in the marketplace, and
the background knowledge possessed by a person having ordinary skill in
the art, and an obviousness “analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
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electronic gas mask modeler would have added a gas mask feature, such as a
gas fitting/opening, to a 3D custom face fit electronic mask model because it
would have been common sense to add standard features to such models.
For these reasons, on this record we are not persuaded the Examiner
erred. Accordingly, we sustain the rejection of claim 22 and of claims 14,
17 and 18, which fall therewith.
R2.
Appellant contends claims 15 and 19 are patentable for the reasons
previously argued for claim 22. (App. Br. 12, 14). However, we are not
persuaded the Examiner erred regarding the rejection of claims 15 and 19 for
the same reasons given above regarding claim 22.
R3.
Appellant contends claim 21 is patentable for the reasons previously
argued for claim 22. (App. Br. 14). However, we are not persuaded the
Examiner erred regarding the rejection of claim 21 for the same reasons
given above regarding claim 22.
R4.
Claim 1
Regarding the claim 1 limitation “the fitting and the body form one
integral piece of the polymerized photopolymer material,” Appellant
contends:
[T]he Examiner fails to indicate any portion of Smalldone
allegedly disclosing photopolymer, much less a fitting and the

can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex, Inc., 550
U.S. 398, 418 (2007). See also DyStar Textilfarben GmbH & Co.
Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006).
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body that form one integral piece of the polymerized
photopolymer material.
(Second Reply Br. 6).
Appellant's contentions are not persuasive because Appellant attacks
the references individually and does not fully consider Hull's teachings as
relied on by the Examiner. (Second Reply Br. 6; Second Ans. 5-7). We
agree with the Examiner that Hull teaches or suggests use of a “polymerized
photopolymer material” because Hull teaches the creation of a mask using a
UV curable chemical exposed to a UV beam. (Second Ans. 7). We further
agree with the Examiner that Smalldone teaches or suggests forming a mask
as "one integral piece" of material, such that the combination of references
would have taught or suggested the contested limitation to one of ordinary
skill in the art. (Second Ans. 7-8).
Appellant further contends:
Tellingly, the Examiner's Second Answer does not even
address, much less rebut the reasoning asserted in Appellant's
First Reply Brief as to why Smalldone teaches away from the
proposed combination. Because the Examiner appears to no
longer even dispute that Smalldone teaches away from the
proposed combination, Smalldone cannot properly be combined
with Rogers and Hull, or any other reference for that matter, to
teach a number of limitations of Claim 1.
(Second Reply Br. 7).
We are not persuaded by the Appellant's contentions. Regarding
Appellant's “teaching away” argument, we note that teaching an alternative
or equivalent method does not teach away from the use of a claimed method.
See In re Dunn, 349 F.2d 433, 438 (CCPA 1965). Thus, “[t]he prior art's
mere disclosure of more than one alternative does not constitute a teaching
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away from any of these alternatives because such disclosure does not
criticize, discredit, or otherwise discourage the solution claimed. . . .” In re
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Here, the Examiner finds, and we agree, that Smalldone teaches an
alternative method of mask construction, but does not criticize, discredit or
otherwise discourage the claimed mask construction method using
photopolymers. (Ans. 27).
For this reason, on this record we are not persuaded the Examiner
erred. Accordingly, we sustain the rejection of claim 1 and of claim 4,
which falls therewith.
CLAIM 5
Regarding the claim 5 limitation “wherein the stereolithography
model further comprises an electronic model selected from the group
consisting of . . . . an oral appliance,” Appellant contends:
The Examiner does not dispute the fact that the Examiner relies
solely on a physical feature of a wearable mask disclosed in
Smalldone as allegedly curing the acknowledged deficiencies of
Rogers and Hull regarding “an electronic model” that is either
“a fitting model,” “an oral chamber model,” or “a receptacle
model,” as recited in Claim 5. For at least the reasons
discussed in Appellant's previous submittals to the Board, the
Examiner's reliance on a physical mask feature of Smalldone as
allegedly disclosing the claimed “electronic model,” as recited
in Claim 5, is an incorrect and unreasonable interpretation of
the claim.
(Second Reply Br. 7-8).
We agree with Appellant that the Examiner erred with respect to
claim 5. Claim 5 requires “wherein the stereolithography model further
comprises an electronic model selected from the group consisting of: a
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fitting model…an oral chamber model… and receptacle model . . . “
(emphasis added). We agree with Appellant the Examiner erred by relying
on the physical mask of Smalldone as teaching or suggesting the claimed
electronic model. (First Reply Br. 10; Ans. 27-29). Unlike the Geng
reference applied to other claims, the Examiner has not shown Smalldone
would have taught or suggested an electronic model “selected from the
group consisting of: a fitting model . . . ; an oral chamber model . . . and a
receptacle model . . . to an oral appliance,” as recited in the Markush group
of claim 5 (Emphasis added).4
We therefore reverse the rejection of claim 5 and the rejections of
claims 6-9, which depend from claim 5.
R5.
Appellant contends claim 2 is patentable for the reasons argued for
claim 1. (App. Br. 16). However, we are not persuaded the Examiner erred
regarding the rejection of claim 2 for the same reasons given above
regarding parent claim 1.
R8.
Regarding independent claim 10, Appellant contends:
The Examiner has now acknowledged multiple times that
Rogers does not disclose a three-dimensional electronic model
comprising an electronic model of a fitting configured to
couple to a clinical gas delivery system, as recited in Claim 10.
See, e.g., Final Office Action at 22, 24-25, and 27-28. The
Examiner's Second Answer does not even address this missing
limitation but rather merely offers the conclusory statement that
“Appellant's arguments, on pages 9-12 with respect to claims 5-

4 In the event of further prosecution, we leave it to the Examiner to consider
whether Geng teaches or suggests the claimed electronic model in claim 5.
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9 and 10-12, are not persuasive.” Examiner's Second Answer at
6. The Examiner's conclusory statement does not dispute the
fact that the Examiner relies on a physical feature of a wearable
mask as allegedly disclosing the claimed “electronic model of
a fitting configured to couple to a clinical gas delivery system,”
as recited in Claim 10. See Final Office Action at 18; see also
Examiner's First Answer at 33. The Examiner's interpretation
of an “electronic model" to mean a physical feature of a
wearable mask is an incorrect and unreasonable interpretation
of Claim 10.
(Second Reply Br. 8).
We have reviewed the Examiner's rejection of claim 10 and are
persuaded that the Examiner erred with respect to claim 10. We agree with
Appellant that the Examiner erred by relying on the physical mask of Bishop
as teaching or suggesting the claimed electronic model. (First Reply Br. 11;
Ans. 29-32). Unlike the Geng reference applied to other claims in this case,
the Examiner has not shown that Rogers, Manners, or Bishop would have
taught or suggested an electronic model of a fitting, as recited in claim 10.5
Therefore, we reverse the rejection R8 of claim 10.
R9 and R10.
Because the Examiner has not shown the additional cited references
cure the deficiencies of the base combination of Rogers and Bishop relied on
in claim10, we also reverse the Examiners the rejections R9 and R10 of
claims 11 and 12 respectively, which each depend from claim 10.

5 In the event of further prosecution, we leave it to the Examiner to consider
whether Geng teaches or suggests the “electronic model” recited in claim 10.
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DECISION
We affirm the Examiner's rejections of claims 1, 2, 4, 14, 15, 17-19,
21 and 22 under § 103.
We reverse the Examiner's rejections of claims 5-12 under § 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED-IN-PART

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