Jeffrey Rockwell et al.

Patent Trials and Appeals Board

Mar 25, 2022

2021004393 (P.T.A.B. Mar. 25, 2022)

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. 16/284,964 02/25/2019 Jeffrey J. Rockwell ROCK00103 4849 159440 7590 03/25/2022 Mark L. Berrier 1102 Snowy Owl Ct. Austin, TX 78746 EXAMINER SHAH, JAY B ART UNIT PAPER NUMBER 3791 MAIL DATE DELIVERY MODE 03/25/2022 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 JEFFREY J. ROCKWELL and MARK L. BERRIER Appeal 2021-004393 Application 16/284,964 Technology Center 3700 Before JENNIFER D. BAHR, DANIEL S. SONG, and LISA M. GUIJT, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-19. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART and enter NEW GROUNDS OF REJECTION. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real parties in interest as the inventors, Jeffrey J. Rockwell and Mark L. Berrier. Appeal Br. 4. Appeal 2021-004393 Application 16/284,964 2 CLAIMED SUBJECT MATTER Appellant’s invention is directed “generally to end tidal carbon dioxide monitoring, and more specifically to systems and methods for performing end tidal carbon dioxide (CO2) monitoring with standard and modified oral airways to facilitate airway and anesthesia during medical procedures.” Spec. ¶ 2. Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A system comprising: an oral airway having a tubular passageway adapted to be inserted into a patient’s mouth in order to enable the patient to breathe through the passageway, the oral airway having a flange at a proximal opening of the tubular passageway; a body which is secured to the oral airway, wherein the body has a first gas line securing portion adapted to secure a gas line to the body, the first gas line securing portion having an aperture therethrough; and a tubular gas line secured in the aperture, the tubular gas line having a proximal portion extending from a proximal end of the aperture and having a proximal end adapted to be connected to an end tidal CO2 monitor, the tubular gas line having a distal portion extending from a distal end of the aperture and having a distal end which provides an inlet for end tidal CO2 exhaled by a patient; wherein the first gas line securing portion is positioned near a central opening through the body, thereby securing the tubular gas line in a position in which the distal portion of the tubular gas line extends into the central passageway of the oral airway. REFERENCES The prior art relied upon by the Examiner is: Appeal 2021-004393 Application 16/284,964 3 Name Reference Date Christopher US 2001/0012923 A1 Aug. 9, 2001 Russo US 2006/0118120 A1 June 8, 2006 Hauge US 2006/0272647 A1 Dec. 7, 2006 Domenico US 2014/0081084 A1 Mar. 20, 2014 Abdoue US 2015/0013672 A1 Jan. 15, 2015 Goudra US 2015/0265792 A1 Sept. 24, 2015 Salcedo US 2017/0049985 A1 Feb. 23, 2017 REJECTIONS Claim 12 stands rejected under 35 U.S.C. § 103 as being unpatentable over Salcedo and Hauge. Claims 1-7, 10, 13, and 14 stand rejected under 35 U.S.C. § 103 as being unpatentable over Salcedo, Abdoue, and Hauge.2 Claims 8 and 9 stand rejected under 35 U.S.C. § 103 as being unpatentable over Salcedo, Abdoue, Hauge, and Domenico. Claim 11 stands rejected under 35 U.S.C. § 103 as being unpatentable over Salcedo, Abdoue, Hauge, and Russo. Claims 15 and 19 stand rejected under 35 U.S.C. § 103 as being unpatentable over Salcedo, Abdoue, Hauge, and Christopher. Claims 16-18 stand rejected under 35 U.S.C. § 103 as being unpatentable over Salcedo, Abdoue, Hauge, and Goudra. OPINION Claim 12 The Examiner finds that Salcedo discloses a system and device as called for in claim 12, including a body (adaptor 1) adapted to be attached to 2 The Examiner addresses claims 3 and 7 on pages 4 and 5, respectively, of the Final Office Action. Appeal 2021-004393 Application 16/284,964 4 an oral airway, and a gas line securing portion (port 18) positioned near a central opening (breathing port 14), thereby positioning a tubular gas line to extend into a central passageway of the oral airway. Final Act. 7 (citing Salcedo Figs. 7-8). The Examiner also finds that Salcedo discusses using the first gas line securing portion to connect an end tidal CO2 monitor, but that “Salcedo does not explicitly teach the details of a tubular gas line secured in the aperture.” Id. (citing Salcedo ¶ 36). The Examiner relies on Hauge for its teaching of a tubular gas line attached to a mouthpiece and having a distal portion extending from the body and having a distal end that provides an inlet for end tidal CO2 exhaled by the patient. See Final Act. 7. The Examiner determines it would have been obvious, in view of Hauge, to modify Salcedo’s device by securing the tubular gas line with a proximal portion extending from a proximal end of the body and a distal portion extending from the body with a distal end providing an inlet for end tidal CO2 exhaled by the patient. Id. The Examiner also reasons that, “when viewed in light of Salcedo, the tubular gas line of Hauge would be inserted into the aperture of Salcedo and extend into a central passageway of an oral airway.” Id.; see id. (stating that “any tubular gas line inserted into element [18] would extend into a central passageway of a standard oral airway”). Appellant argues that the Examiner’s “assertion that any tubular gas line inserted into element 18 would extend into a central passageway of a standard oral airway simply has no support in Salcedo’s disclosure” and is speculation at best. Appeal Br. 17; see id. at 24-25 (relying on the arguments presented against the rejection of claim 1 in contesting the rejection of claim 12). Further, Appellant points out that Hauge’s gas lines Appeal 2021-004393 Application 16/284,964 5 (flow conduits 44, 54) do not extend into the central passageway (opening 17) through surgical airway 10. Id. at 20. Appellant also submits that, given the dome shape of Salcedo’s adaptor 1, “even if a gas line were inserted through one of the ports, it is clear that the gas line could terminate within the dome, without extending into the passageway of the oral airway,” and that “[t]he Examiner’s contention that gas lines of Salcedo can be inserted into the central passageway of the oral airway is speculation that finds no basis in either Salcedo or Hauge.” Id. at 18-19, 22. Finally, Appellant argues that “the only disclosure of a gas line extending into a central passageway of an oral airway is contained in the instant application” and that, thus, “the Examiner improperly used the disclosure of the instant application as a roadmap for hindsight reconstruction of the claimed invention.” Id. at 23. Appellant’s arguments are not commensurate with the scope of claim 12. Claim 12 recites a body and a tubular gas line secured to the body. Appeal Br. 37 (Claims App.). However, claim 12 does not positively recite an oral airway; nor does claim 12 recite that the tubular gas line extends into a central passageway of the oral airway. Rather, claim 12 recites that “the gas line securing portion is positioned near a central opening through the body, thereby positioning the tubular gas line to extend into a central passageway of the oral airway when the device is secured to the oral airway.” Id. In other words, claim 12 recites a positioning of the gas line securing portion relative to the central opening through the body-near enough to the central opening to position the tubular gas line to extend into the central passageway of an oral airway when the device (the body and tubular gas line) is secured to the oral airway. Appeal 2021-004393 Application 16/284,964 6 As illustrated in Figures 7 and 8 of Salcedo, particularly Figure 8, port 18 is positioned near breathing port 14 and slants radially inwardly from the outer/proximal surface of adaptor 1 toward the center of adaptor 1 and, hence, toward the central longitudinal axis of an oral airway device 2 secured to adaptor 1. Thus, port 18 is positioned so that it positions a gas line/cannula in a manner directed radially inward so that the gas line/cannula can be extended into the central passageway of oral airway device 2 when adaptor 1 is secured to oral airway device 2. Thus, Salcedo satisfies the “wherein” clause of claim 12. The Examiner intimates that Salcedo satisfies this limitation, but, nonetheless, applies the additional teachings of Hauge “in the spirit of compact prosecution.” Ans. 3-4. For the above reasons, Appellant fails to apprise us of error in the Examiner’s conclusion that claim 12 is rendered obvious by Salcedo in view of Hauge. A disclosure that anticipates under 35 U.S.C. § 102 also renders the claim unpatentable under 35 U.S.C. § 103, for “anticipation is the epitome of obviousness.” Jones v. Hardy, 727 F.2d 1524, 1529 (Fed. Cir. 1984); see also In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982); In re Pearson, 494 F.2d 1399, 1402 (CCPA 1974). Accordingly, we sustain the rejection of claim 12 as being unpatentable over Salcedo and Hauge.3 Claims 1-7, 10, 13, and 14 Independent claim 1 recites a system comprising, in pertinent part, an oral airway having a tubular passageway, a body secured to the oral airway 3 In affirming a multiple reference rejection under 35 U.S.C. § 103, the Board may rely on fewer than all of the references relied on by the Examiner in an obviousness rationale without designating it as a new ground of rejection. In re Bush, 296 F.2d 491, 496 (CCPA 1966). Appeal 2021-004393 Application 16/284,964 7 and comprising a first gas line securing portion having an aperture therethrough, a tubular gas line secured in the aperture with a proximal portion extending from a proximal end of the aperture and a distal portion of the tubular gas line extending from a distal end of the aperture, “wherein the first gas line securing portion is positioned near a central opening through the body, thereby securing the tubular gas line in a position in which the distal portion of the tubular gas line extends into the central passageway of the oral airway.”4 Appeal Br. 33-34 (Claims App.). Independent claim 13 recites a method comprising, in pertinent part, “providing an oral airway having a tubular passageway,” providing an attachment body with a conduit therethrough, and “securing the attachment body to the oral airway so that a distal portion of the conduit is secured in a predetermined position with respect to the oral airway” and “extends through an opening at a proximal end of the oral airway and into a central passageway of the oral airway.”5 Id. at 37-38. Thus, unlike claim 12, claims 1 and 13 positively recite that the tubular gas line/conduit extends into a central passageway of the oral airway. The Examiner’s findings and reasoning in rejecting claims 1 and 13 are substantially similar to that articulated in addressing claim 12. In particular, the Examiner finds that Salcedo discloses a system and device as 4 In claim 1, “the central passageway” lacks antecedent basis. For purposes of this appeal, we understand “the central passageway” in claim 1, and in all claims depending from claim 1, to be referring back to “a tubular passageway.” 5 For purposes of this appeal, we understand “a central passageway” in claim 13, and in all claims depending from claim 13, to be referring back to “a tubular passageway.” Appeal 2021-004393 Application 16/284,964 8 called for in claim 1, except that “Salcedo does not explicitly teach the details of a tubular gas line secured in the aperture, such that the distal portion of the tubular gas line extends into the central airway.” Final Act. 3. The Examiner finds that Salcedo discloses a method as recited in claim 13, except that “Salcedo does not explicitly mention wherein the distal portion of the conduit extends through an opening at a proximal end of the oral airway and into a central passageway of the oral airway.” Id. at 5-6. The Examiner determines it would have been obvious, in view of Hauge, to modify Salcedo’s device/system by securing the tubular gas line with a proximal portion extending from a proximal end of the aperture of the gas line securing portion aperture and a distal portion extending from a distal end of the aperture “in order to collect CO2 from a subject for analysis.” Final Act. 3-4 (addressing claim 1). The Examiner also determines it would have been obvious, in view of Hauge, to modify Salcedo’s method so that “the distal portion of the conduit extends through an opening at a proximal end of the oral airway and into a central passageway of the oral airway in order to collect CO2 from a subject for analysis.” Id. at 6 (addressing claim 13). The Examiner also reasons that, “when viewed in light of Salcedo, the tubular gas line of Hauge would be inserted into the aperture of Salcedo and extend into a central passageway of an oral airway.” Id. at 4, 6. Appellant argues that the Examiner’s “assertion that any tubular gas line inserted into element 18 would extend into a central passageway of a standard oral airway simply has no support in Salcedo’s disclosure” and, at best, “is speculation on the part of the Examiner - speculation which is inconsistent with the actual use of [Salcedo’s] device,” “as shown on the website of the assignee [of the Salcedo patent], JADA Medical LLC, Appeal 2021-004393 Application 16/284,964 9 https://www.jadamedical.com/how-to-use.” Appeal Br. 17. Further, Appellant correctly points out that Hauge’s gas lines (flow conduits 44, 54) do not extend into the central passageway (opening 17) through surgical airway 10. Id. at 20. Rather, as shown in Figures 1 and 2 of Hauge, flow conduits 44, 54 extend along exterior side surfaces of elongated body 12 of surgical airway 10. See Hauge ¶ 33. Appellant also submits that, given the dome shape of Salcedo’s adaptor 1, “even if a gas line were inserted through one of the ports, it is clear that the gas line could terminate within the dome, without extending into the passageway of the oral airway,” and that “[t]he Examiner’s contention that gas lines of Salcedo can be inserted into the central passageway of the oral airway is speculation that finds no basis in either Salcedo or Hauge.” Appeal Br. 18-19, 22. In responding to Appellant’s arguments, the Examiner begins by positing that “the limitation ‘thereby securing the tubular gas in a position in which the distal portion of the tubular gas line extends line into the central passageway of the oral airway’ is functional in nature, and not positively recited.” Ans. 3. The Examiner’s attempt to dismiss this language as “not positively recited” is improper. Claim 1 positively recites a tubular gas line secured in the first gas line securing portion “wherein the gas line securing portion is positioned near a central opening through the body, thereby securing the tubular gas line in a position in which the distal portion of the tubular gas line extends into the central passageway of the oral airway.” Appeal Br. 33-34 (Claims App.). Thus, in order for claim 1 to be satisfied, the tubular gas line must be secured in the first gas line securing portion, and the first gas line securing portion must be positioned sufficiently close to the central opening, and positioned in a manner, that the tubular gas line extends Appeal 2021-004393 Application 16/284,964 10 into a central passageway of the oral airway to which the body is secured. Claim 13 positively recites securing an attachment body having a conduit “to the oral airway so that a distal portion of the conduit is secured in a predetermined position with respect to the oral airway” and “extends through an opening at a proximal end of the oral airway and into a central passageway of the oral airway.” Id. at 37-38. In order for these limitations to be satisfied, the distal portion of the conduit must extend through an opening at a proximal end of the oral airway and into a central passageway of the oral airway. The Examiner responds by noting “that no one of ordinary skill would allow the gas lines to merely terminate in the dome, not entering the central passageway of the oral airway” and stating that “[i]t is commonly known in the art that the mouth contains ‘dead space’ air and that one would need to go into a subject’s mouth to gain accurate readings.” Ans. 4. According to the Examiner, Hauge’s illustration in Figures 2 and 3 of the depth to which flow conduits 44, 54 are inserted renders Appellant’s arguments regarding Salcedo moot because, “[w]hen viewed in combination, the tubular gas line would extend into the central passageway of the oral airway [at] the depth at which the tubular gas lines are in [Hauge, which] would require the gas lines to extend into the central passageway of the oral airway.” Id. As noted, the Examiner finds that “Salcedo does not explicitly teach a tubular gas line extend[ing] into the oral airway,” and, thus, relies on Hauge for this feature. Ans. 4; see also Final Act. 3-6. However, Hauge does not teach extending a tubular gas line into the central passageway of the oral airway. Hauge teaches inserting flow conduits 44, 54, which are capable of delivering supplemental oxygen and capable of monitoring end tidal CO2 Appeal 2021-004393 Application 16/284,964 11 along side surfaces of elongated body 12 of surgical airway 10, through apertures 24 disposed on opposite sides of access 27 in adapter 20 such that flow conduits 44, 54 have distal portions extending distally from adapter 20 and proximal portions extending proximally from adapter 20, as illustrated in Figures 1-3. See Hauge ¶ 33. As also illustrated in Figures 1-3, however, flow conduits 44, 54 extend along exterior side surfaces of elongated body 12 of surgical airway 10, not into the central passageway (opening 17) of surgical airway 10. For example, flow conduit 44 may be disposed along a side groove 12a of elongated body 12. Id. ¶ 34, see id. Fig. 3. The Examiner does not persuasively explain why, in light of the Examiner’s finding that Salcedo does not disclose a tubular gas line extending into the central passageway of the oral airway, and Hauge’s teaching to extend tubular gas lines along the exterior side surfaces of an airway device, a person having ordinary skill in the art would have been prompted to insert a tubular gas line extending into the central passageway of the oral airway. Further, the Examiner does not point to any evidence to support the finding that no person having ordinary skill in the art reading Salcedo would terminate the tubular gas line in the dome, not entering the central passageway of the oral airway. By contrast, Appellant points to evidence, on the website of assignee JADA Medical, LLC of Salcedo, showing use of a device consistent with the embodiment of Salcedo’s Figures 1-5, wherein the tubular gas lines terminate at ports 16 and 18, thereby undermining the Examiner’s position that a person having ordinary skill in the art would not consider terminating the gas line in the dome, without extending into the central passageway of the oral airway. Appeal 2021-004393 Application 16/284,964 12 For the above reasons, the Examiner does not articulate the requisite findings and reasoning to support the conclusion of obviousness of the subject matter of claim 1 or claim 13. Accordingly, we do not sustain the rejection of independent claims 1 and 13, of claims 2-7 and 10 depending from claim 1, or of claim 14 depending from claim 13, as being unpatentable over Salcedo, Abdoue,6 and Hauge. Claims 8, 9, and 11 The Examiner’s application of Domenico and Russo in rejecting claims 8, 9, and 11, which depend from claim 1, does not make up for the deficiency discussed above in the Examiner’s findings and reasoning in the rejection of claim 1. See Final Act. 8-9. Accordingly, we do not sustain the Examiner’s rejection of claims 8 and 9 as being unpatentable over Salcedo, Abdoue, Hauge, and Domenico, or the rejection of claim 11 as being unpatentable over Salcedo, Abdoue, Hauge, and Russo. Claims 15 and 19 The Examiner relies on Christopher for its teaching in Figures 1 and 8, and in paragraph 68, of terminating the tube used to monitor the concentration of CO2 in the patient’s airway “well short of the distal end of [the] oral airway.” Final Act. 10. The Examiner determines it would have been obvious, in view of these teachings of Christopher, to modify Salcedo’s system and method by positioning the distal end of the tubular gas line/conduit “into the proximal end of the central passageway of the oral 6 The Examiner relies on Abdoue as evidencing that it was known in the art that oral airways have a flange, and not for any teaching directed to extending a tubular gas line into the central passageway of an oral airway. Final Act. 3, 5. Appeal 2021-004393 Application 16/284,964 13 airway with the distal end of the tubular gas line positioned well short of the distal end of the central passageway of the oral airway in order to enhance the accuracy of the carbon dioxide measurement.” Id. Further, the Examiner reasons that, although none of the applied references explicitly mentions positioning the tubular gas line/conduit between 1/4 and 1/3 of a length of the central passageway, it would have been obvious to modify Salcedo’s system and method to do so as an obvious matter of routine optimization. Id. Appellant argues, among other things, that the portions of Christopher on which the Examiner relies teach positioning the gas lines (lumens 130, 140) on the exterior of guide 25, and, thus, the Examiner’s application of Christopher does not make up for the aforementioned deficiency in the rejection of claims 1 and 13, from which claims 15 and 19 depend. See Appeal Br. 26, 28. In response, the Examiner emphasizes that “Christopher is only referenced to teach where the distal end of the tubular gas line is finally positioned” and dismisses Appellant’s argument as attacking the references individually. Ans. 5. Appellant’s characterization of the portions of Christopher on which the Examiner relies is correct. In particular, Christopher teaches that “small second lumen 130 [is] bonded to the exterior of the guide 25 that extends along the length of the guide 25” (Christopher ¶ 64) (emphasis added), and that third lumen 140 “extends along the lateral portion of the guide 25 opposite from the second lumen 130 to minimize the [e]ffect of the air/oxygen supplied via the second lumen 130 on the accuracy of the carbon Appeal 2021-004393 Application 16/284,964 14 dioxide measurement” (id. ¶ 68) (emphasis added).7 Further, Figures 1 and 8 of Christopher illustrate lumens 130 and 140 extending along the exterior surfaces of guide 25. The Examiner’s application of Christopher does not remedy the deficiency, discussed above, in the Examiner’s findings and reasoning rejecting claim 1. Accordingly, we do not sustain the Examiner’s rejection of claims 15 and 19, which depend from claims 1 and 13, respectively, as being unpatentable over Salcedo, Abdoue, Hauge, and Christopher. Claims 16-18 In rejecting claims 16-18, which depend from claim 1, the Examiner relies on Goudra for a bite block comprising an outer body (base member 224) with an unpartitioned central passageway and device (main body member 212) that, when inserted into the outer body (base member 224), creates a separation wall within the central passageway. Final Act. 11 (alluding to first tubular port element 214, second tubular port element 216, and third tubular port member 218 as multiple sections of the central passageway, and stating that Goudra’s Figure 8 “also shows multiple sections”). The Examiner determines it would have been obvious, in view of Goudra, to modify Salcedo to provide the oral airway as a bite block airway and a body having a separation wall connected thereto, with the 7 Christopher discloses that “third lumen 140 can be a small tube bonded to the exterior of the guide 25,” or, “[a]lternatively, it can be bonded to the interior of the guide 25.” Christopher ¶ 70 (emphasis added). We discuss this portion of Christopher in more detail in the new grounds of rejection set forth below, but, because the Examiner explicitly states that Christopher is “only referenced to teach where the distal end of the tubular gas line is finally positioned,” we do not consider it in reviewing the Examiner’s rejection. Ans. 5. Appeal 2021-004393 Application 16/284,964 15 separation wall extending into the central passageway of the bite block and partitioning the central passageway into a first, larger portion and a second, smaller portion, “wherein the distal portion of the tubular gas line is positioned in the second portion of the central passageway and is thereby isolated from the first portion of the central passageway in order to allow for tubing to be inserted into the device without disturbing other tools already in place.” Id. Although the Examiner does not identify with specificity what is considered to be the central passageway in Goudra, Appellant understands the Examiner to be relying on tubular receptacle 236 of Goudra’s outer tubular member 224 as the central passageway. Appeal Br. 31. With this understanding, Appellant argues that “[t]here is no indication that there is any separation wall within the extension (234)” and that “there is no indication that there is any separation wall that is positioned within the central passageway (236) of the bite block (224).” Id. (noting that “Goudra explicitly states ‘extension 234 of tubular member 214 fits with close tolerance inside a tubular receptacle 236’” and, thus, “neither the extension (234) nor the elements (218, 216, 214) on the proximal side of the device (212) serves to partition the central passageway to create a first, larger portion and a second, smaller portion separated by the separation wall”). Further, Appellant argues “there is no indication that the distal end of a gas line is positioned in the second portion of the central passageway.” Id. The Examiner responds by stating that Goudra “teaches that the passageways are intended to extend from the proximal to the distal end - which would extend into the patient’s mouth, i.e. the central passageway of the bite block airway” (citing Goudra ¶¶ 10-27) and that Figures 1, 8, and 10 Appeal 2021-004393 Application 16/284,964 16 “clearly show[] these features.” Ans. 6. Further, the Examiner states that element 116 “defines a second lumen from the proximal to distal end - and thus would extend into the central passageway.” Id. The Examiner’s response suggests that the Examiner reads “the central passageway of the bite block airway” on the patient’s mouth. See Ans. 6. This is an untenable position. Claim 16 depends from claim 1, which recites “an oral airway having a tubular passageway adapted to be inserted into a patient’s mouth” and a body secured to the oral airway, and further recites that “the oral airway comprises a bite block airway” and the body has a separation wall that “extends into the central passageway of the bite block airway and partitions the central passageway.” Appeal Br. 33, 39 (Claims App.). Similarly, claim 18 depends from claim 13, which recites “providing an oral airway having a tubular passageway adapted to be inserted into a patient’s mouth” and “providing an attachment body,” and further recites that “the oral airway comprises a bite block airway” and the body has a separation wall that “extend[s] into the central passageway of the bite block airway and partition[s] the central passageway.” Id. at 37-40. Thus, the patient’s mouth is not part of the bite block airway. To the extent that the Examiner may be reading “the central passageway of the bite block airway” on Goudra’s tubular receptacle 236, it is not apparent how tubular port elements 214, 216, and 218 partition tubular receptacle 236 into first and second portions. Goudra teaches that “a distal side portion or extension 234 of tubular member 214 fits with close tolerance inside a tubular receptacle 236 of outer tubular member 224.” Goudra ¶ 73. Even assuming that tubular port elements 216 and 218, which are angled relative to tubular port element 214, intersect tubular port element Appeal 2021-004393 Application 16/284,964 17 214, they must do so in a region of tubular port element 214 that is proximal to the portion of distal side portion or extension 234 that is received in tubular receptacle 236. Inasmuch as it is not sufficiently clear how Goudra teaches providing a body with a separation wall that extends into and partitions a central passageway of a bite block airway, it is not clear how the combined teachings of Salcedo, Abdoue, Hauge, and Goudra render obvious the subject matter of claim 16 or claim 18. Accordingly, we do not sustain the rejection of claims 16 and 18, or of claim 17, which depends from claim 16, as being unpatentable over Salcedo, Abdoue, Hauge, and Goudra. New Grounds of Rejection Pursuant to 37 C.F.R. § 41.50(b), we make the following new grounds of rejection: Claims 1-7, 10, 12-15, and 19 Claims 1-7, 10, 12-15, and 19 are rejected under 35 U.S.C. § 103 as being unpatentable over Salcedo, Abdoue, Hauge, and Christopher. Salcedo and Christopher contain teachings that, although not relied upon by the Examiner, evidence that it was known in the art at the time of Appellant’s invention to pass CO2 monitoring gas lines into the central passageway of an oral airway. Specifically, in describing the state of the prior art, Salcedo teaches that, in typical oral airway devices, which include an oral airway and a body having a flat flange, “a cannula may be inserted into the oral airway to provide oxygen and another cannula may be inserted into the device to monitor end-tidal CO2 levels.” Salcedo ¶ 7 (emphasis added). Further, Christopher teaches that third lumen 140 (i.e., the tubular gas line used to monitor CO2) can be “bonded to the exterior of the guide 25, Appeal 2021-004393 Application 16/284,964 18 as shown in the accompanying drawings,” or, “[a]lternatively, it can be bonded to the interior of the guide 25.” Christopher ¶ 70 (emphasis added). Given these teachings of Salcedo and Christopher, it would have been obvious to a person having ordinary skill in the art to secure a cannula or tube attached at its proximal end to an end-tidal CO2 monitor to port 18 in the embodiment of Salcedo’s Figures 7 and 8 by passing a distal end of the cannula or tube through port 18 and into the central passageway of oral airway device 2. Doing so amounts to a skilled artisan simply applying one of the techniques known in the art for positioning a cannula or tube to monitor end-tidal CO2 expelled by the patient in the face of silence by Salcedo as to how the cannula is secured to port 18. We adopt and incorporate herein all uncontested findings and reasoning of the Examiner directed to other aspects of claims 1-7, 10, and 12-14 set forth on pages 3-7 of the Final Office Action. With respect to claims 15 and 19, Christopher teaches that lumen 140 for monitoring CO2 extends along the side of guide 25, either on the exterior or on the interior thereof (Christopher ¶ 70), opposite from second lumen 130 for delivering air/oxygen (id. ¶ 64) “to minimize the [e]ffect of the air/oxygen suppled via the second lumen 130 on the accuracy of the carbon dioxide measurement” and that “the distal end of the third lumen 140 terminates short of the distal end 125 of the guide 25 to further enhance the accuracy of the carbon dioxide measurement.” Christopher ¶ 68. Christopher does not specify the length of the spacing from the distal end of third lumen 140 to the distal end of guide 25, but sets forth the purpose and objective sought to be achieved with this spacing, namely, to minimize the effect of the air/oxygen supply on the carbon dioxide measurement by Appeal 2021-004393 Application 16/284,964 19 spacing the distal end of third lumen 140 from that of second lumen 130, which extends to the distal end of guide 25, as illustrated in Figures 1 and 8.8 Id. In other words, Christopher recognizes this spacing as a result effective variable. Further, Christopher’s objective for terminating the distal end of third lumen 140 short of the distal end of guide 25 is the same as Appellant’s objective in terminating the CO2 gas line short of the distal end of the oral airway (i.e., extending the CO2 gas line “approximately 1/4 - 1/3 of the way into the proximal end of the passageway through the oral airway”), namely, “to decrease oxygen washout of the measured end tidal CO2.” Spec. ¶ 8. Thus, we find that the general conditions of the claim are disclosed in Christopher. For the above reasons, it would have been obvious for a person of ordinary skill in the art to discover the claimed degree of insertion of the tubular gas line (third lumen 140) into the central passageway of the oral airway as a matter of routine optimization. Where the general conditions of a claim are disclosed in the prior art, and the optimized variable is a result effective variable, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Applied Materials, Inc., 692 F.3d 1289, 1295 (Fed. Cir. 2012); see also In re Boesch, 617 F.2d 272, 276 (CCPA 1980) (“[D]iscovery of an optimum value of a result effective variable . . . is ordinarily within the skill of the art.”). 8 We do not find Christopher’s Figure 1 or Figure 8 to be quantitatively instructive on this point because Christopher does not indicate that the drawings are to scale. Appeal 2021-004393 Application 16/284,964 20 Claims 8 and 9 Claims 8 and 9 are rejected under 35 U.S.C. § 103 as being unpatentable over Salcedo, Abdoue, Hauge, Christopher, and Domenico. We adopt and incorporate herein the additional findings and reasoning of the Examiner regarding claims 8 and 9 set forth on page 8 of the Final Office Action, which Appellant has not specifically contested. Claim 11 Claim 11 is rejected under 35 U.S.C. § 103 as being unpatentable over Salcedo, Abdoue, Hauge, Christopher, and Russo. We adopt and incorporate herein the additional findings and reasoning of the Examiner regarding claim 11 set forth on pages 8-9 of the Final Office Action, which Appellant has not specifically contested. CONCLUSION The Examiner’s rejection of claim 12 has been AFFIRMED, and the rejections of claims 1-11 and 13-19 have been REVERSED. We enter NEW GROUNDS OF REJECTION of claims 1-15 and 19 pursuant to 37 C.F.R. § 41.50(b). DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 12 103 Salcedo, Hauge 12 1-7, 10, 13, 14 103 Salcedo, Abdoue, Hauge 1-7, 10, 13, 14 Appeal 2021-004393 Application 16/284,964 21 8, 9 103 Salcedo, Abdoue, Hauge, Domenico 8, 9 11 103 Salcedo, Abdoue, Hauge, Russo 11 15, 19 103 Salcedo, Abdoue, Hauge, Christopher 15, 19 16-18 103 Salcedo, Abdoue, Hauge, Goudra 16-18 1-7, 10, 12-15, 19 103 Salcedo, Abdoue, Hauge, Christopher 1-7, 10, 12-15, 19 8, 9 103 Salcedo, Abdoue, Hauge, Christopher, Domenico 8, 9 11 103 Salcedo, Abdoue, Hauge, Christopher, Russo 11 Overall Outcome 12 1-11, 13- 19 1-15, 19 FINALITY OF DECISION This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). 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: When the Board enters such a non-final decision, 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: (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 prosecution will be remanded to the examiner. The new ground of rejection is Appeal 2021-004393 Application 16/284,964 22 binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01 (9th Ed., Rev. 10.2019 (June 2020)). TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED IN PART; 37 C.F.R. § 41.50(b)