Ex Parte Wolf

Board of Patent Appeals and Interferences

Aug 12, 2009

09834208 (B.P.A.I. Aug. 12, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte G. THOMAS WOLF
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Appeal 2009-003983
Application 09/834,208
Technology Center 3700
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Decided: August 12, 2009
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Before DEMETRA J. MILLS, LORA M. GREEN, and
RICHARD M, LEBOVITZ, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-003983
Application 09/834,208

STATEMENT OF CASE
This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
The following claims are representative.
5. An oxygen mask comprising a pair of elastic bands, both ends of each pair
affixed at points of attachment to each of both sides of said oxygen mask,
said bands extendible to loop over and around each ear of the patient and
adjustably securable to said patient by pulling the ends anteriorally through
said points of attachment.

8. An oxygen mask having an improved means for being secured over the
nose and mouth of a patient, wherein the oxygen mask comprises a pair of
elastic bands, both ends of each pair affixed at points of attachment to each
of both sides of said oxygen mask, said bands extendible to loop over and
around each ear of the patient and adjustably securable to said patient by
pulling the ends anteriorally through said points of attachment.

12. The mask of claim 5, wherein said mask comprises a nosepiece with
two exhalation ports covered with a flap valve.

Cited References
Hudsen US 2,843,121 July 15, 1958
Laanen et al. US 4,865,027 Sep. 12, 1989
Bledstein US 5,701,892 Dec. 30, 1997
Dyrud et al. US 5,819,731 Oct. 13, 1998

Grounds of Rejection
1. Claims 5-10, 12-15, and 171 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hudson in view of Bledstein.

1 The Examiner does not include claims 15 and 17 in the statement of the
rejection, but discusses those claims in the statement of the rejection at page
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Application 09/834,208

2. Claims 12, 13, and 18 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hudson and Bledstein and further in view of Laanen.
3. Claim 162 is rejected under 35 U.S.C. § 103(a) as being unpatentable over
Hudson and Bledstein and further in view of Dyrud.

ISSUE
The Examiner finds that “it would have been obvious to one having
ordinary skill in the art at the time the invention was made to replace band
17 [of Hudson] with ear loops of Bledstein to prevent entanglement of bands
in a user's hair, glasses, or hat and to make it easy to put on (col. 2, lines 32-
33 and col. 6, line 10-17).” (Ans. 3.)
Appellant contends that Hudson teaches a single elastic band and
teaches away from the claimed invention.
The issue is: Has Appellant demonstrated error in the Examiner’s
obviousness rejection.

FINDINGS OF FACT
1. “Hudson teaches an oxygen mask 10 having a means for being secured
over the nose and mouth of a patient comprising: an elastic band, points of
attachment 15 on both sides of the mask, and the elastic band securable to
the patient by pulling the ends anteriorally through the points of attachment
(col. 2, lines 27- 31).” (Ans. 3.)
4 of the Answer, and at page 7 of the Final Rejection dated January 22,
2007.
2 Claim 16 was cancelled by amendment filed June 16, 2006 (App. Br. 4).
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2. “Hudson fails to teach a pair of bands extendible to loop over and around
each ear of the patient.” Id.
3. Bledstein teaches a mask that uses a pair of bands affixed at four points of
attachment to the mask and extendible to loop over and around each ear of a
patient. Id.
4. The Examiner finds that “it would have been obvious to one having
ordinary skill in the art at the time the invention was made to replace the
band of Hudson with ear loops of Bledstein to prevent entanglement of
bands in a user's hair, glasses, or hat and to make it easy to put on (col. 2,
lines 32-33 and col. 6, line 10-17).” Id.
5 Hudson and Bledstein fail to specifically teach the use of a flap valve.”
(Ans. 5.)
6. “Laanen et al. teaches a mask with a common valve (20) to vent exhaled
gases.” Id.
7. The Examiner finds that “it would have been obvious to one having
ordinary skill in the art at the time the invention was made to use a valve to
allow exhaled air to be forced out to the atmosphere (col. 4, lines 58-60).”
Id.

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PRINCIPLES OF LAW
In assessing a claim’s obviousness, “[a] court must ask whether the
improvement is more than the predictable use of prior-art elements
according to their established functions.” KSR Int'l Co. v. Teleflex Inc., 550
U.S. 398, 401 (2007).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
Id. at 417.
A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was
taken by the applicant. The degree of teaching away will of
course depend on the particular facts; in general, a reference
will teach away if it suggests that the line of development
flowing from the reference’s disclosure is unlikely to be
productive of the result sought by the applicant.

In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references. . . . [The reference] must be read, not in isolation,
but for what it fairly teaches in combination with the prior art as a whole.” In
re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).

ANALYSIS
We agree with the Examiner’s reasoning, fact finding, and response to
Appellant’s arguments as set forth in the Answer, and adopt them as our
own. We provide the following additional comment.
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Application 09/834,208

1. Claims 5-10, 12-15, and 17 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hudson in view of Bledstein.
Appellant contends that Hudson teaches a single elastic band and
teaches away from the claimed invention. However, “[n]on-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references. . . .
[The reference] must be read, not in isolation, but for what it fairly teaches
in combination with the prior art as a whole.” In re Merck & Co., Inc., 800
F.2d 1091, 1097 (Fed. Cir. 1986). The Examiner cited Bledstein disclosing
a mask with a pair of bands which are extendible to loop over and around
each ear of a patient to overcome the deficiency of Hudson only disclosing a
one band attachment mechanism. We find no teaching away in Hudson,
only the predictable use of prior-art elements such as the ear loops of
Bledstein, according to their established function.
With respect to claim 5, Appellant argues that even if one were to
substitute the strap of Bledstein for the single strap system of Hudson one
would not arrive at the presently claimed invention because the straps would
be permanently attached to the mask. (App. Br. 14.)
We are not persuaded. Hudson teaches the use of points of
attachment that allow adjustability of straps. In particular, Hudson teaches
that a “strap 17 …will hold its position very well against considerable pull
and can readily be moved only by pinching the strap 17 together adjacent the
opening, forcing it into a relatively rounded shape and then pulling it.” (Col.
2., ll. 20-33.)
Appellant argues that Bledstein is not an oxygen mask. (App. Br. 13.)
We agree with the Examiner that Bledstein can be considered an oxygen
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Application 09/834,208

mask since oxygen is able to be inhaled by the user. (Ans. 6-7.) We are not
persuaded by Appellant’s argument.
Appellant argues that evidence of record establishes long-felt need.
(App. Br. 17.) However, according to the Examiner the Declarations of long
felt need have not be entered because Appellant failed to provide a good
showing of why the declarations were necessary and not presented earlier in
prosecution. (Ans. 7.) For this reason, the declarations are not part of the
record before us.

2. Claims 12, 13, and 18 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hudson/Bledstein and further in view of Laanen.
Appellant presents similar argument for the rejection over
Hudson/Bledstein and further in view of Laanen as presented in rebuttal of
the primary combination of Hudson and Bledstein. (App. Br. 19.) For the
reasons provided herein, the obviousness rejection over Hudson/Bledstein
and further in view of Laanen is affirmed.

3. Claim 16 is rejected under 35 U.S.C. § 103(a) as being unpatentable over
Hudson/Blestein and further in view of Dyrud. This rejection is moot as
claim 16 has been cancelled.

SUMMARY
The rejection of claims 5-10, 12-13, and 14 under 35 U.S.C. § 103(a)
as being unpatentable over Hudson in view of Bledstein is affirmed. The
rejection of claims 12, 13, and 18 under 35 U.S.C. § 103(a) as being
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unpatentable over Hudson/Bledstein and further in view of Laanen is
affirmed. The rejection of claim 16 under 35 U.S.C. § 103(a) as being
unpatentable over Hudson/Blestein and further in view of Dyrud is mooted
by its prior cancellation from the application.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

cdc

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