KONINKLIJKE PHILIPS N.V.

Patent Trials and Appeals Board

Dec 17, 2020

2019003818 (P.T.A.B. Dec. 17, 2020)

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.
15/105,689 06/17/2016 Jonathan Sayer GRASHOW 2013P02144WOUS 3273
24737 7590 12/17/2020
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
HAUSMANN, MICHELLE M
ART UNIT PAPER NUMBER
2661
NOTIFICATION DATE DELIVERY MODE
12/17/2020 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):
katelyn.mulroy@philips.com
marianne.fox@philips.com
patti.demichele@Philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JONATHAN SAYER GRASHOW
____________________

Appeal 2019-003818
Application 15/105,689
Technology Center 2600
____________________

Before JAMES R. HUGHES, ERIC S. FRAHM, and BETH Z. SHAW,
Administrative Patent Judges.

FRAHM, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the
Examiner’s final rejection of claims 1, 3, 6–8, 10–12, 14, 19, and 21–
24. Claims 2, 4, 5, 9, 13, 15–18, and 20 have been canceled (see
Appeal Br. 10–12, Claims Appendix). We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. “The word ‘applicant’ when used in this title refers to the
inventor or all of the joint inventors, or to the person applying for a patent as
provided in §§ 1.43, 1.45, or 1.46.” 37 C.F.R. § 1.42(a) (2017). According
to Appellant, Koninklijke Philips Electronics N.V. is the real party in
interest (Appeal Br. 2).
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INVENTION
Appellant’s invention “pertains to a patient interface device
adjustment system, and, in particular, to a patient interface device
adjustment system that employs 3-D models” (Spec. ¶ 2). More specifically,
the disclosed and claimed invention relates to an apparatus (independent
claim 1) and a method implemented on a computer system (independent
claim 12) for outputting adjustment information to adjust continuous
positive airway pressure (CPAP) headgear (see Fig. 1) for treating
obstructive sleep apnea (OSA) (see Spec. ¶¶ 3–10). Independent claim 1 is
illustrative of the invention and is reproduced below.
1. An electronic apparatus comprising:
[A1] an adjustment determination unit structured to
receive patient interface device information for a patient
interface device, [A2] the patient interface device being
structured to facilitate delivery of a flow of gas to an airway of a
patient and including one or more adjustable features and a 3-D
model of a patient’s face, and [A3] to calculate adjustment
information for the patient interface device corresponding to the
patient’s face using the patient interface device information and
the 3-D model of the patient’s face; and
[B] an output unit structured to output the adjustment
information, wherein the adjustment information includes
information for adjusting one or more of the adjustable features.

Appeal Br. 10, Claims Appendix (emphases and bracketed lettering
added).

EXAMINER’S REJECTIONS
(1) The Examiner rejected claims 1, 3, 8, 10, 12, 14, 19, and 21–24
under 35 U.S.C. § 103 as being unpatentable over Fonte et al. (US
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2015/0055085 A1; published Feb. 26, 2015) (hereinafter, “Fonte”) and
Janbakhsh (US 2008/0078396 A1; published April 3, 2008). Final Act. 3–
16; Ans. 3–18.
(2) The Examiner rejected claims 6 and 7 under 35 U.S.C. § 103 as
being unpatentable over Fonte, Janbakhsh, and Dobrusskin et al. (US
2015/0151068 A1; published June 4, 2015) (hereinafter, “Dobrusskin”).
Final Act. 16–19; Ans. 18–21.
(3) The Examiner rejected claim 11 under 35 U.S.C. § 103 as being
unpatentable over Fonte, Janbakhsh, and Dravitzki et al. (US 2012/0138061
A1; published June 7, 2012) (hereinafter, “Dravitzki”). Final Act. 19–21;
Ans. 21–23.

ANALYSIS
We have reviewed Appellant’s arguments in the Appeal Brief (Appeal
Br. 5–9) and the Reply Brief (Reply Br. 2–5), the Examiner’s rejections
(Final Act. 3–21; Ans. 3–23), and the Examiner’s response to Appellant’s
arguments (Ans. 23–28). Appellant’s arguments have persuaded us of error
in the Examiner’s rejections of all of the disputed claims under 35 U.S.C.
§ 103.
Appellant presents several arguments asserting the Examiner’s
rejections of independent claims 1 and 12, each relying upon the same base
combination of Fonte and Janbakhsh, is in error (Appeal Br. 5–8; Reply Br.
2–5). The issue presented by these arguments is whether or not the
Examiner erred in finding the base combination of Fonte and Janbakhsh
teaches or suggests “an adjustment determination unit structure to receive
patient interface device information for a patient interface device” (claim 1,
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limitation A1) “and to calculate adjustment information for the patient
interface device corresponding to the patient’s face using the patient
interface device information and the 3-D model of the patient’s face” (claim
1, limitation A3), and then outputting the adjustment information to permit
adjustment of adjustable features of the patient interface device (see claim 1,
limitation B), as recited in independent claim 1, and as commensurately
recited in remaining independent claim 12.
The Examiner’s conclusion of obviousness is based on an erroneous
claim interpretation that Fonte’s teaching of adjusting the size of eyeglasses
prior to fabrication is encompassed by limitations A1, A3, and B recited in
claim 1, and as similarly recited in claim 12 (see Ans. 24–25). Appellant
persuasively argues that parameters such as size are not adjustable features
of eyewear (see Appeal Br. 6). In response, the Examiner reasons that “[t]he
parameters adjusted in the model, for instance size, are then used to adjust
the size of the custom fabricated product that is output, the final product will
be eyeglasses of different sizes” (Ans. 25).
However, in this case, the Examiner has applied the broadest possible
interpretation of “adjustment information,” not the broadest reasonable
interpretation based on Appellant’s claims, Drawings, and Specification.
See In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir. 2017) (stating
that “the Board cannot construe the claims so broadly that its constructions
are unreasonable under general claim construction principles . . .” and that
giving claim terms “a strained breadth in the face of the otherwise different
description in the specification [is] unreasonable” (internal quotation marks
omitted)); TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1062 (Fed. Cir.
2016) (“While the broadest reasonable interpretation standard is broad, it
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does not give the Board an unfettered license to interpret the words in a
claim without regard for the full claim language and the written
description.”). The broadest reasonable interpretation differs from the
broadest possible interpretation. Smith, 871 F.3d at 1383; see also MPEP
§ 2111 (9th Ed., Rev. 10.2019, June 2020) (“The broadest reasonable
interpretation does not mean the broadest possible interpretation. Rather, the
meaning given to a claim term must be consistent with the ordinary and
customary meaning of the term (unless the term has been given a special
definition in the specification), and must be consistent with the use of the
claim term in the specification and drawings.”). The correct inquiry in
giving a claim term its broadest reasonable interpretation in light of the
specification is “an interpretation that corresponds with what and how the
inventor describes his invention in the specification, i.e., an interpretation
that is ‘consistent with the specification.’” Smith, 871 F.3d at 1382–83
(quoting In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997)).
Here, the broadest reasonable interpretation of adjustment information
as set forth in claims 1 and 12, in light of Appellant’s Specification and
Drawings, requires that the “patient interface device” have the ability to be
adjusted when worn, not just prior to fabrication. This is evident from
Appellant’s Figure 1 showing indicia 23 on straps 20 of headgear 22 for
adjustment once the device is placed on a user’s head (see Spec. ¶¶ 23 –25).
In this light, we agree with Appellant’s contentions (see Appeal Br. 5–8;
Reply Br. 2–5) that on this record, Fonte and Janbakhsh, alone or in
combination, fail to teach or suggest determining ad using any adjustment
information, as required by claims 1 and 12 (see, e.g., claim 1, limitations
A1, A2, and B). We conclude that one of ordinary skill in the art, looking at
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the cited portions of Fonte, even modified by Janbakhsh’s mask (which has
no adjustment capabilities), would not consider adjustment of size prior to
fabrication of a mask or other device to be encompassed by the claimed
subject matter of claims 1 and 12. In short, the Examiner’s interpretation is
not consistent with the Specification, and Appellant’s arguments (see Reply
Br. 2–5) that the Examiner has applied the broadest possible interpretation,
and not the broadest reasonable interpretation, of claims 1 and 12, in light of
the Specification, are persuasive.
Appellant’s arguments have persuaded us of error in the Examiner’s
rejection of independent claims 1 and 12, and the claims which depend
thereupon. Accordingly, we do not sustain the Examiner’s rejections of
independent clams 1 and 12, or dependent claims 3, 6–8, 10, 11, 14, 19, 21–
24, which rely on the same base combination of Fonte and Janbakhsh.

CONCLUSION
We reverse the Examiner’s rejections of claims 1, 3, 6–8, 10–12, 14,
19, and 21–24 under 35 U.S.C. § 103.
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In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3, 8, 10, 12,
14, 19, 21–24
103 Fonte, Janbakhsh 1, 3, 8, 10,
12, 14, 19,
21–24
6, 7 103 Fonte, Janbakhsh,
Dobrusskin
6, 7
11 103 Fonte, Janbakhsh,
Dravitzki
11
Overall
Outcome
1, 3, 6–8,
10–12, 14,
19, 21–24

REVERSED