LYNCH, Susan Robyn. et al.

Patent Trials and Appeals Board

Oct 24, 2019

14057051 - (D) (P.T.A.B. Oct. 24, 2019)

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.
14/057,051 10/18/2013 Susan Robyn LYNCH PTB-4398-1417 7657
23117 7590 10/24/2019
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
RUDDIE, ELLIOT S
ART UNIT PAPER NUMBER
3785
NOTIFICATION DATE DELIVERY MODE
10/24/2019 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte SUSAN ROBYN LYNCH, ROBIN GARTH HITCHCOCK,
AARON SAMUEL DAVIDSON, LEE JAMES VELISS, and
DAVID JOHN WORBOYS

____________

Appeal 2019-001907
Application 14/057,051
Technology Center 3700
____________
Before WILLIAM A. CAPP, JILL D. HILL, and LISA M. GUIJT,
Administrative Patent Judges.
CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 42, 63, 64, 67, 70–72, 74–76, and 78–83 under 35 U.S.C.
§ 102 as anticipated by Palkon (US 2003/0019495 Al, pub. Jan. 30, 2003).2
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). ResMed Limited is the Applicant and real party in interest.
Appeal Br. 3.
2 Rejections under 35 U.S.C. § 112 have been withdrawn by the Examiner.
Ans. 2.
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Application 14/057,051
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THE INVENTION
Appellant’s invention relates to respiratory masks. Spec. ¶ 27.
Claim 42, reproduced below, is illustrative of the subject matter on appeal.
42. A patient interface comprising:
a frame;
a cushion having a non-face-contacting portion
connected to the frame and a face contacting portion adapted to
engage the patient’s face in use, the face-contacting portion
including a side wall and a flexible membrane extending from
the side wall; and
a reinforcing member provided to at least a portion of the
side wall of the cushion,
wherein the cushion includes a fold that interconnects the
non-face-contacting portion and the face-contacting portion, the
fold extending radially outwardly with respect to the non-face-
contacting portion and structured to allow the face-contacting
portion to move relative to the non-face-contacting portion,
wherein the reinforcing member engages the cushion
along the portion of the side wall between the face-contacting
portion and the fold such that the reinforcing member protrudes
into a breathing cavity formed by the cushion, and
wherein the reinforcing member comprises a variation in
width that corresponds with a variation in width of the fold
along at least a portion of a perimeter of the cushion.
OPINION
Claim 42
The Examiner finds that Palkon discloses all of the limitations of
claim 42. Final Action 6. In particular, the Examiner finds that Palkon
element 46 constitutes a reinforcing member as claimed and that such
reinforcing member varies in width. Id. The Examiner further finds that
Palkon element 151 constitutes a fold along a portion of the perimeter of the
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Application 14/057,051
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cushion that varies in width such that a variation in widths of reinforcing
member 46 and fold 151 correspond. Id.
Appellant first argues that Palkon lacks a reinforcing member.
Appeal Br. 9–10. According to Appellant, the Examiner uses an overly
broad interpretation of “reinforcing member.” Id. at 10. Appellant
characterizes element 46 as a sealing membrane that deforms when force is
applied such that it does not provide reinforcement or stiffness to the side
wall. Id.
In response, the Examiner states that, to be a “reinforcing member,”
an element merely has to have structure along a portion of the sidewall.
Ans. 3 (“The presence of a structure along the side wall would thereby
provide reinforcement to the side wall because without said structure the
side wall would be less supported.”).
In reply, Appellant argues that the presence of structure does not
necessarily provide reinforcement. Reply Br. 2.
Palkon is directed to a cushion for a respiratory mask that provides an
improved seal between the mask and the patient. Palkon ¶ 2. Among other
things, Palkon discloses that membranes 46, 41, and 48 vary in thickness
between the nasal region and the lip region. Id. ¶ 29. Varying the thickness
of the membrane provides “not only a soft feeling cushion but also an
improved seal.” Id. We interpret Palkon’s disclosure about improving the
seal as evidence that element 46 reinforces the sidewall to inhibit air leakage
around the perimeter of the mask. In view of the foregoing disclosure, the
Examiner’s finding that element 46 constitutes a reinforcement member is
supported by a preponderance of the evidence.
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Appellant next argues that the corresponding varying width limitation
is not met by Palkon. Appeal Br. 11. In response, the Examiner refers to
Figure 6 and paragraph 29 as disclosing that reinforcement member 46
decreases in width along the perimeter of the cushion towards the nasal
region. Ans. 3. The Examiner also finds that fold member 151 decreases in
width by blending towards the nasal region. Id. (citing Palkon, ¶ 34,
Figs. 10A, 10B).
In reply, Appellant emphasizes changes in the thickness of
element 46. Reply Br. 3. Appellant fails to address the depiction in
Figure 10A showing that element 46, regardless of its thickness, is wider at
the nasal region than the lip region.
We have reviewed paragraph 29 and Figure 6 of Palkon. Figure 6
depicts member 46b that is wider, but less thick, at nasal region 38 than at
lip region 39. Palkon, ¶ 29, Fig. 6. Palkon also discloses “other than
straight portion 151” as extending around the nasal bridge region and
approximately two-thirds of the way along side wall 150 into the cheek
region and toward the lip region of cushion 30A. Id. ¶ 34, Figs. 10A, 10B.
Portion 151 eventually blends into the straight side wall portion near the lip
region. Id. Thus, both of elements 46 and 151 decrease in width as they
transit from the nasal region to the lip region. Therefore, we agree with the
Examiner that the decreasing width variations “correspond” within the
meaning of claim 42.
The Examiner’s findings of fact are supported by a preponderance of
the evidence. We sustain the Examiner’s rejection of claim 42.
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Claim 63
Claim 63 is an independent claim that differs in scope from claim 42
in that the reinforcing member comprises a thickened portion of an integral,
molded sidewall made of silicone. Claims App. Appellant argues that such
limitations are not met by Palkon. Appeal Br. 12. More particularly,
Appellant argues that Palkon fails to disclose a width of silicone in the nasal
bridge region that is less than a width of silicone in a region between the
nasal bridge and lip region. Id. at 13.
In response, the Examiner reiterates findings from the Final Action
that the thickness limitations are met by Palkon. Ans. 4 (citing Palkon,
Figs. 6–8, 10A, 10B, 11, ¶¶ 29, 30, and 33–35).
Palkon’s cushion is a single piece of molded plastic made from
silicone. Palkon ¶ 31. As shown in Figure 6, Palkon’s membrane 46
thickens sidewall 45 and membrane 46 is thicker and wider at nasal
region 38 than at lip region 39.
In view of the foregoing discussion, we determine that the Examiner’s
findings of fact are supported by a preponderance of the evidence.
Accordingly, we sustain the Examiner’s anticipation rejection of claim 63.
Claim 67
Claim 67 depends from claim 63 and adds the limitation: “wherein
the reinforcing member includes a thickness that is substantially constant
along its length along the perimeter of the cushion.” Claims App. Appellant
argues that the Examiner admitted that claim 67 contained patentable subject
matter in a telephone interview concerning an after-final amendment that
was never entered. Appeal Br. 14. In response, the Examiner points out that
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the subject matter discussed during the telephone interview differs from the
scope of claim 67 as currently presented. Ans. 5.
We are not apprised of error and sustain the Examiner’s anticipation
rejection of claim 67.
Claim 75
Claim 75 depends from claim 63 and adds the limitation: “wherein
the thickened portion of the side wall extends around a first portion of the
perimeter of the cushion, and the cushion includes a second portion of the
perimeter that includes a non-thickened portion of the side wall.” Claims
App. Appellant argues that Palkon’s membrane extends around the entire
perimeter of the cushion and, therefore, does not satisfy the “non-thickened
portion” limitation. Appeal Br. 14.
In response, the Examiner offers the following remarks:
Palkon discloses the thickened portion of the side wall extends
around a first portion of the perimeter of the cushion i.e. the
first portion of the perimeter of the cushion being where the
thickened portion (46A, 46B) makes contact with the side
wall 45. Claim 75 goes on to claim a second portion of the
perimeter that is not thickened. This second portion of the
perimeter [] can be any portion of the perimeter of the cushion
that is non-thickened. Palkon clearly shows portions of the
perimeter of the cushion that are non-thickened that satisfy the
claim as written.
Ans. 6 (citing Figs. 6-8, 10a, and 10b).
Appellant’s claim, as currently presented, is broad enough in scope to
encompass a cushion that is thickened around the entire perimeter of the
sidewall for a first portion of the width of the sidewall and is not thickened
around the entire perimeter of the sidewall for a second portion of the width
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of the sidewall. Claims App. The claim, as written, reads on Palkon’s
embodiment depicted in Figure 10.
We sustain the Examiner’s anticipation rejection of claim 75.
Claims 78 and 81
Claim 78 depends from claim 42. Claims App. Claim 81 depends
from claim 63. Id. Each claim contains the identical limitation: “wherein
the reinforcing member is coextensive with the side wall.” Id. Appellant
argues that Palkon element 46 extends outwardly from sidewall 45 in a
cantilever arrangement and, therefore, is not “co-extensive” with the
sidewall. Appeal Br. 15.
In response, the Examiner states that Palkon element 46 extends over
the same space as the sidewall and, therefore, is coextensive with it. Ans. 6.
Claims 78 and 81 do not specify the extent to which the reinforcing
member is coextensive with the sidewall. Appellant does not direct us to
any teaching disclosure in the Specification that defines what it means for
the reinforcing member to be coextensive with the sidewall. See generally
Appeal Br., Reply Br. The sidewall is a three-dimensional object with a
length, a width, and a thickness. Broadly, but reasonably construed, a
reinforcing member could be considered coextensive with the sidewall if it is
coextensive in any lateral dimension, i.e., either in length or width. Palkon’s
membrane 46 and sidewall 45 encircle the entire perimeter of the cushion
and are, therefore, coextensive in length.
The Examiner’s findings of fact are supported by a preponderance of
the evidence. We sustain the Examiner’s anticipation rejection of claims 78
and 81.
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Claim 82
Claim 82 depends from claim 63 and adds the identical limitation:
“wherein the cushion includes a fold that interconnects the non-face-
contacting portion and the face-contacting portion, and wherein the
reinforcing member comprises a variation in said width that corresponds
with a variation in width of the fold along at least a portion of the perimeter
of the cushion.” Claims App.
In traverse of the rejection, Appellant raises essentially the same
argument that is raised with respect to the substantially similar variation in
width limitation in claim 42. Appeal Br. 15. That argument was
unpersuasive with respect to claim 42 and is equally unpersuasive here. We
sustain the rejection of claim 82.
CONCLUSION
In summary:
Claims Rejected Basis Reference Aff’d Rev’d
42, 63, 64, 67, 70-
72, 74-76, 78–83
§ 102 Palkon 42, 63, 64, 67, 70-72,
74-76, 78–83

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED