Ex Parte Von Hollen et alDownload PDFPatent Trial and Appeal BoardJan 17, 201813825263 (P.T.A.B. Jan. 17, 2018) Copy Citation 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. 13/825,263 03/20/2013 Dirk Ernest Von Hollen 2010P00693WOUS 1035 24737 7590 01/19/2018 PTTTT TPS TNTFT T FfTTTAT PROPFRTY fr STANDARDS EXAMINER 465 Columbus Avenue SIPPEL, RACHEL T Suite 340 Valhalla, NY 10595 ART UNIT PAPER NUMBER 3771 NOTIFICATION DATE DELIVERY MODE 01/19/2018 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 DIRK ERNEST VON HOLLEN and CHRISTOPHER JOHN BROOKS Appeal 2017-0050711 Application 13/825,2632 Technology Center 3700 Before HUBERT C. LORIN, ANTON W. FETTING, and KENNETH G. SCHOPFER, Administrative Patent Judges. SCHOPFER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 from the rejection of claims 1-18. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Our Decision references the Appeal Brief (“Appeal Br.,” filed Oct. 5, 2016) and Reply Brief (“Reply Br.,” filed Feb. 6, 2017), and the Examiner’s Answer (“Ans.,” mailed Dec. 8, 2016) and Final Office Action (“Final Act.,” mailed June 15, 2016). 2 According to Appellants, the real party in interest is Koninklijke Philips Electronics N.V. Appeal Br. § I. Appeal 2017-005071 Application 13/825,263 BACKGROUND According to Appellants, “[t]he present invention relates to treatment of lung diseases, such as Cystic Fibrosis, wherein mucus secretions build up in the lungs, and in particular to a vibratory positive expiratory pressure (PEP) device for use in clearing the lungs of such secretions.” Spec. ^ 1. REPRESENTATIVE CLAIM Claim 1 is representative of the appealed claims and recites: 1. A positive expiratory pressure device, comprising: a chamber structured to receive an expiratory airstream of a patient, the chamber having a fluid pathway passing therethrough; a magnetic duckbill valve provided along the fluid pathway, the magnetic duckbill valve having a first wall supporting a number of first magnets having a first polarity and a second wall supporting a number of second magnets having a second polarity opposite the first polarity, the first magnets and the second magnets being configured to create a resistive cracking force in the magnetic duckbill valve wherein the magnetic duckbill valve is structured to open only in response to at least a certain back pressure being created in the chamber; and a vibratory ball check valve provided along the fluid pathway downstream of the magnetic duckbill valve. Appeal Br., App. A. REJECTIONS 1. The Examiner rejects claims 1-3, 5, and 6 under 35 U.S.C. § 103(a) as unpatentable over Hallett3 in view of Lamb4 and Li.5 3 Hallett et al., US 2008/0142013 Al, pub. June 19, 2008. 4 Lamb, US 3,906,989, iss. Sept. 23, 1975. 5 Li et al., CN 1330961 (A), pub. Jan. 16, 2002. 2 Appeal 2017-005071 Application 13/825,263 2. The Examiner rejects claim 4 under 35 U.S.C. § 103(a) as unpatentable over Hallett in view of Lamb, Li, and Boehringer.6 3. The Examiner rejects claim 7 under 35 U.S.C. § 103(a) as unpatentable over Hallett in view of Lamb, Li, and Ericson.7 4. The Examiner rejects claim 17 under 35 U.S.C. § 103(a) as unpatentable over Hallett in view of Lamb, Li, and Persson.8 5. The Examiner rejects claim 18 under 35 U.S.C. § 103(a) as unpatentable over Hallett in view of Lamb, Li, and Wallace.9 6. The Examiner rejects claims 8-11 under 35 U.S.C. § 103(a) as unpatentable over Jarvis10 in view of Li, Boehringer, and Lamb. 7. The Examiner rejects claim 12 under 35 U.S.C. § 103(a) as unpatentable over Jarvis in view of Li, Boehringer, Lamb, and Ericson. 8. The Examiner rejects claims 13-15 under 35 U.S.C. § 103(a) as unpatentable over Hallett in view of Li and Lamb. 9. The Examiner rejects claim 16 under 35 U.S.C. § 103(a) as unpatentable over Hallett in view of Li, Lamb, and Boehringer. DISCUSSION We are persuaded of reversible error by Appellants’ argument that the Examiner has not provided a sufficient reason to support the conclusion that a person having ordinary skill in the art would have found it obvious “to modify the arrangement of either . . . [Hallett], [Jarvis], [Li], or [Boehringer] 6 Boehringer, US 3,908,987, iss. Sept. 30, 1975. 7 Ericson, US 3,699,964, iss. Oct. 24, 1972. 8 Persson, US 7,166,128 Bl, iss. Jan. 23, 2007. 9 Wallace, US 2003/0159697 Al, pub. Aug. 28, 2003. 10 Jarvis et al., US 6,726,598 Bl, iss. Apr. 27, 2004. 3 Appeal 2017-005071 Application 13/825,263 in view of. . . [Lamb] (used in combination with the other references in the rejections of claims 1, 8, and 13) to arrive at the invention of independent claims 1, 8, and 13.” Appeal Br. § VII.J. Claim 1 requires, inter alia a magnetic duckbill valve provided along the fluid pathway, the magnetic duckbill valve having a first wall supporting a number of first magnets having a first polarity and a second wall supporting a number of second magnets having a second polarity opposite the first polarity, the first magnets and the second magnets being configured to create a resistive cracking force in the magnetic duckbill valve wherein the magnetic duckbill valve is structured to open only in response to at least a certain back pressure being created in the chamber[.] Independent claim 8 requires a one-way valve that is a magnetic duckbill valve with substantially the same structure as the magnetic duckbill valve required by claim 1. Further, independent claim 13 is a method of providing airway clearance therapy to a patient through the use of a one-way valve that has the same structure as the one-way valve required by claim 8. With respect to each of these limitations, the Examiner finds that Lamb teaches a magnetic duckbill valve as claimed, and the Examiner concludes that it would have been obvious to modify either Hallett or Jarvis to include a duckbill magnetic valve shape, as in Lamb, “for the purpose of providing an alternate magnetic valve having the predictable results of allowing for exhalation.” Final Act. 3—4, 9, 12. In order to establish a prima facie case of obviousness, the Examiner must show that each and every limitation of the claim is described or suggested by the combination of prior art references or would have been obvious based on the knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988). The Examiner can satisfy this 4 Appeal 2017-005071 Application 13/825,263 burden by showing “some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (internal quotation and citation omitted). Here, we find that the Examiner’s reasoning for making the proposed combinations with Lamb lacks adequate rational underpinnings to support the conclusion of obviousness. Specifically, we find that the Examiner’s conclusion that it would have been obvious to incorporate Lamb’s duckbill valve into a positive expiratory pressure device as in Hallett or a pulmonary exercise device as in Jarvis is not supported on the record before us. As noted by Appellants, Lamb is directed to a tap valve device used in a keg. See Lamb Lig. 1; col. 1,11. 52-55. To support the conclusion that it would have been obvious to incorporate a valve as in Lamb into a positive expiratory pressure device or pulmonary exercise device, the Examiner states that Lamb provides “an alternate magnetic valve having the predictable results of allowing for exhalation.” final Act. 3—4. However, given the disparate use of Lamb’s valve, i.e., as a tap valve for a keg, compared to that which is claimed or that which is included in Hallett or Jarvis, it is unclear why, without further evidence or explanation, one of ordinary skill in the would have recognized that substituting Lamb’s valve into a positive expiratory pressure device or a pulmonary exercise device would provide predictable results. Thus, the Examiner does not provide sufficient reasoning with rational underpinnings to support the conclusion that one of ordinary skill in the art would have found it obvious to incorporate Lamb’s tap valve for a keg into a positive expiratory pressure device as claimed. 5 Appeal 2017-005071 Application 13/825,263 Based on the foregoing, we are persuaded of reversible error in the rejection of each of independent claims 1, 8, and 13. Accordingly, we sustain the rejections of those claims. We also sustain the rejections of dependent claims 2-7, 9-12, and 14-18 for the same reasons because the Examiner has not shown, and it is not readily apparent on the record before us, that the art of record cures the deficiency in the rejections of the independent claims. CONCLUSION We REVERSE the rejections of claims 1-18. REVERSED 6 Copy with citationCopy as parenthetical citation