Ex Parte Xue et al

Board of Patent Appeals and Interferences

Jan 4, 2011

11211962 (B.P.A.I. Jan. 4, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte THOMAS J. XUE and YONAS GEBREWOLD
__________

Appeal 2009-015122
Application 11/211,962
Technology Center 3700
__________

Before TONI R. SCHEINER, ERIC GRIMES, and
FRANCISCO C. PRATS, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL1
This appeal under 35 U.S.C. § 134 involves claims to a respirator with
a nose clip having a resilient predefined shape. The Examiner rejected the
claims as obvious.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-015122
Application 11/211,962

2
We have jurisdiction under 35 U.S.C. § 6(b). We reverse the
Examiner’s obviousness rejection, but enter two rejections for obviousness
under 37 C.F.R. § 41.50(b).

STATEMENT OF THE CASE
Claims 1-20 are pending and on appeal (App. Br. 2). Claims 1 and
15, the independent claims, are representative and read as follows:
1. A respirator that comprises:
(a) a mask body that comprises a layer of filter media;
and
(b) a nose clip that is disposed on the mask body and
that is adapted to extend over a bridge of a wearer’s nose when
the mask is worn, the nose clip having a resilient predefined
shape that comprises first and second wing portions and that
also is adapted to exert a force on each side of the wearer’s nose
when the respirator is worn such that the force is exerted inward
towards the wearer’s nose at least at the first and second wing
portions.

15. A method of making a respirator, which method
comprises:
(a) providing a mask body and a polymeric nose clip;
(b) placing the polymeric nose clip on the mask body
such that the nose clip extends over a bridge of the wearer’s
nose when the mask is worn; and
(c) providing the nose clip with a predefined shape
that has a semi-rigid, resilient character.

The sole rejection before us for review is the Examiner’s rejection of
claims 1-20 under 35 U.S.C. § 103(a) as obvious over Castiglione2 in view
of Matsuzaka3 (Ans. 3-7).

2 U.S. Patent No. 5,558,089 (filed Dec. 27, 1995).
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Application 11/211,962

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OBVIOUSNESS -- THE EXAMINER’S REJECTION
ISSUE
The Examiner finds that Castiglione describes a respirator meeting
“all the limitation[s] of claim 1, except the nose clip having a resilient
predefined shape” (Ans. 3). The Examiner cites Matsuzaka to meet that
limitation, and based on the two references’ teachings concludes that an
ordinary artisan would have considered it obvious to “substitute[] the wire
containing nose clip as disclosed by Castiglione by using the polymer[] nose
clip as taught by Matsuzaka et al., because of the reasonable expectation of
obtaining . . . a mask that can be easily incinerated after use without leaving
a residual metal nosepiece” (id. at 4).
Appellants contend, among other things, that neither Matsuzaka nor
Castiglione discloses a nose clip with a resilient predefined shape (App. Br.
5-7). In particular, Appellants argue, the Specification defines “resilient” as
“capable of bending when a force is applied and then recovering its original
shape when the force is released” and neither of the malleable nose clips of
Castiglione or Matsuzaka meets that definition (id. at 6-7).
The Examiner responds that, even when a nose clip is made of a
malleable material, “the metal forming the nose clip is capable of bending
(strain or move out of a straight line) when a force (a light force applied to
the edge of the metal nose clip) is applied and then recovering (letting go of
the edge of the nose clip the metal returns to its original shape) its original
shape when the force is released” (Ans. 9). Thus, the Examiner argues:

3 JP 2005-35148 (published February 10, 2005) (translation entered May 12,
2009).
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Given that a force applied to a metal is below its yield
strength or yield point, the deformation is recoverable, as the
metal will return to its initial shape when the load is removed,
which is known as it[s] elastic deformation. Therefore, until
the yield strength or yield point of the metal nose clip is
surpassed, the metal will bend when a force is applied and then
recover its original shape when the force is released.

(Id.)
In view of the positions advanced by Appellants and the Examiner,
the issue with respect to this rejection is whether Matsuzaka would have
prompted an ordinary artisan to make a respirator using a nose clip
encompassed by the claims.
FINDINGS OF FACT (“FF”)
1. The Specification discloses that nose clips “are commonly used on
respirators to achieve a snug fit over the wearer’s nose. Conventional nose
clips are in the form of malleable, linear, strips of aluminum” (Spec. [0004]).
2. The Specification discloses:
Unlike known respirators, the inventive respirator does
not require that its nose clip be individually shaped by each user
to achieve a proper fit. Because the nose clip has a predefined
shape that enables a force to be exerted on each side of the
wearer’s nose when the mask is worn, the user does not have to
adapt the shape of the nose clip to achieve a good seal.

(Id. at [0007].)
3. Thus, Appellants’ nose clip “has a resilient predefined shape that
comprises first and second wing portions and exerts a force on each side of
the wearer’s nose when the mask is worn. The force is exerted at least
inward towards the wearer’s nose at the first and second wing portions” (id.
at [0005]).
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4. The Specification states:
“[R]esilient” means being capable of bending when a
force is applied and then recovering its original shape when the
force is released; while a resilient material bends in response to
an applied force, it also pushes back against the applied force in
attempting to return to its original position (in using this
definition, the amount of “force” that is referred to is an amount
consistent with normal respirator use -- that is, the amount of
force required to effectively seal the respirator to the nose area
of a wearer during normal use (such as from regular manual
pressure or from respirator harness straps when donning the
mask) and does not include excessive forces inconsistent with
such use)[.]

(Id. at [0032].)
5. Matsuzaka discloses that, in prior art respirators, “a nose clip has been
conventionally composed of a metal material superior in plastic
deformability” such as aluminum (Matsuzaka [0004]).
6. Matsuzaka discloses that, while resin or plastic nose clips are
preferable to metal clips due to disposal concerns, “when a nose clip
consisting of a resin is composed, generally, it is [sic] easily returns to the
original shape even though it is transformed along the shape of one’s face.
That is, it has been hard to realize enough shape retaining property” (id. at
[0007]).
7. In light of the shortcomings in prior art nose clips, Matsuzaka
discloses a nose clip made of “a shape retaining material, which comprises a
resin and exhibits satisfactory shape retaining property capable of retaining
deformed shape” (id. at [0013]).
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Application 11/211,962

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PRINCIPLES OF LAW
During examination, the PTO must interpret terms in a claim using
“the broadest reasonable meaning of the words in their ordinary usage as
they would be understood by one of ordinary skill in the art, taking into
account whatever enlightenment by way of definitions or otherwise that may
be afforded by the written description contained in the applicant’s
specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
The Examiner must therefore “determine[] the scope of claims in
patent applications not solely on the basis of the claim language, but upon
giving claims their broadest reasonable construction ‘in light of the
specification as it would be interpreted by one of ordinary skill in the art.’”
Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir. 2005) (emphasis
added) (quoting In re American Academy Of Science Tech Center, 367 F.3d
1359, 1364 (Fed. Cir. 2004).
ANALYSIS
We agree with Appellants that, when the claims are given their
broadest reasonable interpretation in light of the Specification, Matsuzaka
would not have prompted an ordinary artisan to make a respirator with a
nose clip encompassed by the claims.
Specifically, claim 1 requires the nose clip to have “a resilient
predefined shape that comprises first and second wing portions.” The clip
must also be “adapted to exert a force on each side of the wearer’s nose
when the respirator is worn such that the force is exerted inward towards the
wearer’s nose at least at the first and second wing portions.”
As noted above, the Specification defines “resilient” as “being capable
of bending when a force is applied and then recovering its original shape
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when the force is released” (Spec. [0032] (FF 4)). The Specification
explains that the term “force” used in that definition is “the amount of force
required to effectively seal the respirator to the nose area of a wearer during
normal use (such as from regular manual pressure or from respirator harness
straps when donning the mask) and does not include excessive forces
inconsistent with such use)” (id.). The Specification also explicitly contrasts
the resilient clips of the described invention with prior art malleable clips
(FF 1-2).
Thus, when given its broadest reasonable interpretation consistent
with the Specification, we conclude that claim 1 encompasses flexible nose
clips rigid enough to return to their original shape after being subjected to a
deforming force sufficient to seal a mask with the clip against a wearer’s
face, and also rigid enough to exert pressure on both sides of the wearer’s
nose.
In contrast to preparing nose clips with that degree of rigidity,
Matsuzaka explicitly states that its clips have the desirable property of
“retaining deformed shape” (Matsuzaka [0013] (FF 7)). Thus, while
Matsuzaka discloses that polymeric resilient nose clips were known in the
art, the tendency of those resilient clips to reassume their original shapes
rendered them undesirable for use in respirators, as compared to clips
capable of retaining their shape after plastic deformation (FF 6).
Given Matsuzaka’s teaching that malleable polymeric nose clips are
preferred for use in respirators over clips that retain their shapes, we are not
persuaded that an ordinary artisan would have been prompted by Matsuzaka
to make a respirator with a nose clip having the rigidity required by claim 1.
We are therefore not persuaded that the Examiner has made a prima facie
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case of obviousness with respect to claim 1, and accordingly reverse the
Examiner’s rejection of that claim, and its dependents, over Castiglione and
Matsuzaka.
Claim 15 recites a process of making a respirator by placing a
polymeric nose clip on a mask body. Similar to claim 1, claim 15 requires
the polymeric nose clip to have “a predefined shape that has a semi-rigid,
resilient character.” Given Matsuzaka’s teaching that malleable nose clips
are preferable to resilient clips which reassume their shapes after application
of force, we are not persuaded that an ordinary artisan would have been
prompted by Matsuzaka to combine a resilient nose clip according to claim
15 with a mask body. As we are not persuaded that the Examiner has made
a prima facie case, we also reverse the Examiner’s obviousness rejection of
claim 15 and its dependents over Castiglione and Matsuzaka.

NEW GROUNDS OF REJECTION
Under the provisions of 37 C.F.R. § 41.50(b), we enter the following
new grounds of rejection:
(1) Claim 1 is rejected under 35 U.S.C. § 103(a) as obvious over
Castiglione; and
(2) Claim 15 is rejected under 35 U.S.C. § 103(a) as obvious over
Castiglione and Matsuzaka.

OBVIOUSNESS -- CASTIGLIONE
ADDITIONAL FINDINGS OF FACT
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8. Castiglione discloses “a nose clip that is sized and shaped for
providing a respirator with a snug fit over a person’s nose and in the region
where the nose meets the cheek” (Castiglione, col. 1, ll. 7-10).
9. Castiglione discloses:
[T]he nose clip of the invention has three inflections disposed
on a non-linear strip. From a first end of the non-linear strip to
the first inflection there is a first wing. From the first inflection
to the third inflection there is a midsection. From the third
inflection to the second end of the non-linear strip there is a
second wing.

(Id. at col. 2, l. 66 through col. 3, l. 5.)

10. Castiglione discloses that the “first and second wings and the first and
third inflections on the nose clip enable a snug fit to be obtained in the
region where the nose meets the cheek. The midsection enables a snug fit to
be obtained over the bridge of the wearer’s nose” (id. at col. 3, ll. 9-12).
11. Castiglione explains that the “fit provided by the nose clip makes it
more likely that contaminants will pass through the filter media of the
respirator, thereby enhancing safety for the wearer and others and preventing
fogging of a wearer’s eyeglasses” (id. at col. 3, ll. 14-18).
12. Castiglione discloses:

The nose clip preferably is formed from a malleable
metal such as aluminum. . . . The nose clip also could be made
from other materials such as steel or a plastic-encased metal.
The term “malleable” is used herein to mean the nose clip can
be conformed by mere finger pressure. The nose clip
preferably is dead soft so that when conformed to the face of
the wearer, it retains the conformed position until it is
readjusted or altered by the wearer.

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(Id. at col. 4, ll. 55-64.)
13. Castiglione also discloses, however, that “[i]n lieu of a malleable,
dead soft, nose clip, it also may be possible in this invention to use a spring
clip having the configuration as described” (id. at col. 4, ll. 64-66).
ANALYSIS
As claim 1 requires, Castiglione discloses a nose clip for use on the
filter/mask portion of a respirator, the nose clip having first and second
wings that exert force on each side of the wearer’s nose (FF 8-11).
Castiglione prefers the use of malleable material for its clip (FF 12), which
as discussed above is not encompassed by claim 1.
Castiglione also discloses, however, that “[i]n lieu of a malleable,
dead soft, nose clip, it also may be possible in this invention to use a spring
clip having the configuration as described” (id. at col. 4, ll. 64-66 (FF 13)).
Given the teaching that a clip having Castiglione’s winged configuration can
be provided in the form of a spring clip, and given that a spring is flexible
yet rigid enough to return to its original shape, and rigid enough to exert
pressure on both sides of the nose of a person wearing such a clip, we find
that Castiglione would have prompted an ordinary artisan to include a nose
clip having the properties recited in claim 1 on a respirator.
Accordingly, we conclude that claim 1 would have been obvious to an
ordinary artisan in view of Castiglione. While we have only included claim
1 in this rejection, should prosecution resume in this case the Examiner
should consider whether any of its dependent claims should be subject to
this rejection.

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Application 11/211,962

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OBVIOUSNESS -- CASTIGLIONE AND MATSUZAKA
Claim 15 recites a process of making a respirator by placing a
polymeric nose clip on a mask body. Similar to claim 1, claim 15 requires
the nose clip to have “a predefined shape that has a semi-rigid, resilient
character.”
As noted above, Castiglione discloses that nose clips for respirators
can be provided in the form of spring clips (FF 13). Castiglione therefore
suggests combining the mask body of a respirator with a nose clip having a
predefined shape and the semi-rigid resilient character required by claim 15.
While Castiglione does not expressly teach that such spring clips can
be made of polymers, Matsuzaka teaches that nose clips made of resin
“easily return[] to the original shape even though it is transformed along the
shape of one’s face” (Matsuzaka [0007] (FF 6)). Thus, an ordinary artisan
advised by Castiglione that spring clips were suitable as nose clips for
respirators, and further advised that polymeric clips, like spring clips, were
flexible yet had a tendency to reassume their original shape, would have
reasoned that a polymeric nose clip with a predefined shape and a semi-
rigid, resilient character, would have been suitable for use in Castiglione’s
respirator.
Accordingly, we conclude that claim 15 would have been obvious to
an ordinary artisan in view of Castiglione and Matsuzaka. While we have
only included claim 15 in this rejection, should prosecution resume in this
case the Examiner should consider whether any of its dependent claims
should be subject to this rejection.

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SUMMARY
We reverse the Examiner’s obviousness rejection of claims 1-20 over
Castiglione and Matsuzaka.
However, we enter a new ground of rejection of claim 1 under 35
U.S.C. § 103(a) as being obvious over Castiglione.
We also enter a new ground of rejection of claim 15 under 35 U.S.C.
§ 103(a) as being obvious over Castiglione and Matsuzaka. See 37 C.F.R. §
41.50(b).

TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37
C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:

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(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner . . . .

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record . . . .

REVERSED, 37 C.F.R. § 41.50(b)

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