ResMed Limited

Patent Trials and Appeals Board

Mar 24, 2020

15017790 - (D) (P.T.A.B. Mar. 24, 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.
15/017,790 02/08/2016 Anthony John Ujhazy RESMED 3.9-050
CCC (1271)
4349
147311 7590 03/24/2020
Botos Churchill IP Law LLP
430 Mountain Avenue
Suite 401
New Providence, NJ 07974
EXAMINER
GETZOW, SCOTT M
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
03/24/2020 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):
pto@bciplaw.com
rbotos@bciplaw.com
rchurchill@bciplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANTHONY JOHN UJHAZY,
JONATHAN CALDWELL WRIGHT, GLENN RICHARDS,
DAVID JOHN BASSIN, and MICHAEL BERTHON-JONES

Appeal 2018-006939
Application 15/017,790
Technology Center 3700
____________

Before JOHN C. KERINS, WILLIAM A. CAPP and
GEORGE R. HOSKINS, Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–6, 8–11, 14–35, 37–40, and 43–58.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE, and enter a NEW GROUND OF REJECTION under
37 C.F.R. § 41.50(b).

1 The term “Appellant” is used herein to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as ResMed
Limited. Appeal Br. 2.
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Application 15/017,790

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THE CLAIMED SUBJECT MATTER
Appellant’s invention relates to a method and apparatus for evaluating
heart failure in a patient. Claim 1 is illustrative, and is reproduced below:
1. A method for evaluating heart failure in a patient
comprising steps of:
delivering, by a blower, breathable gas at a pressure above
atmospheric to a patient;
detecting, by a controller, obstructive events experienced by the
patient;
varying, by the blower, the pressure of the breathable gas
responsive to obstructive events detected by the controller;
calculating a heart failure indicator from said responsive pressure
variations, said heart failure indicator representing information
about the patient’s heart condition; and
comparing said heart failure indicator to a prior heart failure
indicator determined during a previous treatment session,
wherein said heart failure indicator is analysed to
determine a change in said heart failure indicator over
time,
wherein said change is a difference between said prior
heart failure indicator of said previous treatment session
and said heart failure indicator.

THE REJECTIONS
The Examiner rejects:
(i) claims 1–3, 5, 6, 8–11, 14–16, 25–32, 34, 35, 37–40, 43–45,
and 54–58 under 35 U.S.C. § 103(a) as being unpatentable over Estes
(US 5,794,615, issued Aug. 18, 1998) in view of Cho (US 2004/0134496
A1, published July 15, 2004);
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(ii) claims 17–24 and 46–53 under 35 U.S.C. § 103(a) as being
unpatentable over Estes in view of Cho and Greenhut (US 6,454,719 B1,
issued Sept. 24, 2002);
(iii) claims 4 and 33 under 35 U.S.C. § 103(a) as being unpatentable
over Estes in view of Cho and Foulkes (US 5,846,720, issued Dec. 8, 1998);
and
(iv) claims 1–6, 8–11, 14–35, 37–40, and 43–58 on the ground of
nonstatutory double patenting as being unpatentable over claims 1–31 of
Ujhazy (US 9,283,341 B2, issued Mar. 15, 2016).

ANALYSIS
Claims 1–3, 5, 6, 8–11, 14–16, 25–32, 34, 35, 37–40, 43–45, and 54–58--
35 U.S.C. § 103(a)--Estes/Cho
We agree with Appellant that the Examiner has not adequately shown
how the combined teachings of Estes and Cho disclose, suggest, or render
obvious the limitations in independent claims 1 and 30 requiring the
calculation of a heart failure indicator from pressure variations produced by
a blower in response to detected obstructive events. Indeed, it appears that
the Examiner does not regard these claims as including such a limitation, as
evidenced by the reasoning in the Answer that, “[e]ven if the claims required
calculating a heart failure indicator from the air pressure applied to the
patient, the pressure delivered to the patient is a function of the patient flow
rate, as mentioned supra.” Ans. 7. It is possible that, in the Examiner’s
mind, because pressure delivered and patient flow rate have such a
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relationship,2 it would have been obvious to calculate a heart failure
indicator from blower pressure changes instead of from measurements of
patient flow rate, but the Examiner has not sufficiently closed that loop in
the Final Action or Answer.
Accordingly, the rejection of the above-listed claims as being
unpatentable over Estes and Cho is not sustained.

Claims 17–24 and 46–53--35 U.S.C. § 103(a)--Estes/Cho/Greenhut
The Examiner does not rely on Greenhut in any manner that cures the
deficiency noted above with respect to the combination of Estes and Cho.
Accordingly, the rejection of claims 17–24 and 46–53 as being unpatentable
over Estes, Cho, and Greenhut is not sustained.

Claims 4 and 33--35 U.S.C. § 103(a)--Estes/Cho/Foulkes
The Examiner does not rely on Foulkes in any manner that cures the
deficiency noted above with respect to the combination of Estes and Cho.
Accordingly, the rejection of claims 4 and 33 as being unpatentable over
Estes, Cho, and Foulkes is not sustained.

Claims 1–6, 8–11, 14–35, 37–40, and 43–58--Nonstatutory Obviousness-
type Double Patenting over claims 1–31 of Ujhazy
Appellant responds to the obviousness-type double patenting rejection
by requesting that a decision on the rejection be held in abeyance until such
time, if any, an indication of allowable subject matter is made of record. See

2 The Examiner continues the line of reasoning by characterizing pressure
delivered and patient flow rate to be analogous to each other. Ans. 7.
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Appeal Br. 12. In the Answer, the Examiner does not withdraw the
rejection, but also does not respond to Appellant’s request that the decision
on the rejection be held in abeyance. Ans., passim. The rejection is lacking
in a detailed comparison of the limitations appearing in any of claims 1–31
of Ujhazy to limitations appearing in any of the claims on appeal. Final Act.
6. In addition, the outcome of this appeal involves a rejection of all claims,
with no allowable subject matter currently indicated. The scope of any
allowable claim is therefore yet to be determined. We therefore find it
appropriate to not reach the merits of this rejection at this time.

NEW GROUND OF REJECTION
Claims 1–6, 8–11, 14–35, 37–40, and 43–58--35 U.S.C. § 112, first
paragraph, written description
Claims 1–6, 8–11, 14–35, 37–40, and 43–58 are rejected under the
first paragraph of 35 U.S.C. § 112, as failing to comply with the written
description rejection. This is a New Ground of Rejection pursuant to 37
C.F.R. § 41.50(b).
Independent claim 1 includes the limitations:
varying, by the blower, the pressure of the breathable gas
responsive to obstructive events detected by the controller;
and

calculating a heart failure indicator from said responsive
pressure variations . . .

Appeal Br. 14 (Claims Appendix).
Independent claim 30 includes similar limitations, presented in
apparatus form, as
a controller adapted and configured to
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detect obstructive events experienced by the patient;
control said blower such that the pressure varies responsive to
detected obstructive events;
calculate a heart failure indicator from said responsive pressure
variations . . .
Appeal Br. 17 (Claims Appendix)
Appellant’s Specification and drawings do not evidence that, at the
time the application was originally filed, Appellant was in possession of an
invention that included calculating a heart failure indicator from a blower
pressure variation responsive to obstructive events, as claimed.
The purpose of the written description requirement is to prevent an
applicant from later asserting that he invented that which he did not; the
applicant for a patent is therefore required “‘to recount his invention in such
detail that his future claims can be determined to be encompassed within his
original creation.’” Amgen Inc. v. Hoechst Marion Roussel Inc., 314 F.3d
1313, 1330 (Fed. Cir. 2003) (quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d
1555, 1561 (Fed. Cir. 1991)). An applicant shows possession of a claimed
invention by describing the claimed invention with all of its limitations using
such descriptive means as words, structures, figures, diagrams, and formulas
that fully set forth the claimed invention. Lockwood v. American Airlines,
Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). That a person skilled in the art
might realize from reading the disclosure that such a feature is possible is
not a sufficient indication that the feature is a part of the invention.
Application of Barker, 559 F.2d 588 (CCPA 1977). An applicant need not
“describe exactly the subject matter claimed,” but “the description must
clearly allow persons of ordinary skill in the art to recognize that [the
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applicant] invented what is claimed.” In re Gosteli, 872 F.2d 1008, 1012
(Fed. Cir. 1989) (citations omitted); see also Barker, 559 F.2d at 589, 591.
Appellant’s Specification, in pertinent part, discloses generally that
“the preferred device determines or calculates one or more heart failure
indicators or indices to indicate a change in heart failure condition.” Spec.
¶ 78. That same paragraph notes that, “[t]he changing value of such an
indicator or index may provide a diagnostic tool for the physician to assess
the state of the patient’s health.” Id. The Specification somewhat more
specifically states that:
The heart failure indices are determined from an analysis of the
patient’s breathing characteristics or by the machines’ responses
to the patient’s breathing patterns. The indices may be
determined in conjunction with a protocol for delivering
treatment pressure or without such treatment pressure, for
example, by simply monitoring patient respiratory airflow. Such
indices serve as heart failure indicators to show patient
improvement or relapse as detailed below.
Spec. ¶ 82.
Paragraph 83 of the Specification sets forth that Figure 12 illustrates
“such a methodology,” but discloses only that the respiratory airflow is
measured, and then, “[i]n a determining or calculating step 1206, a heart
failure indicator . . . is derived from the respiratory airflow.” Spec. ¶ 83.
No additional disclosure exists concerning what is meant by
“determined . . . by the machines’ responses to the patient’s breathing
patterns” in paragraph 82, especially in the sense that a pressure change
initiated by the blower (as controlled by the controller) in response to an
obstructive event is not identified in the Specification as one of the types of
machine responses from which a heart failure index might be somehow
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ascertained. These passages do not evidence in any manner that such a
pressure change might be used in “calculating” a heart failure indicator.
The Specification is, additionally, devoid of any formula, equation, or
the like, that includes the recited pressure change as a parameter involved in
any “calculation” of a heart failure indicator. Further, to the extent that
Appellant might assert that “calculate” is used in a different sense such that
it is synonymous with “determine,” even then, there is no description as to
how two different pressure values might somehow represent or serve as a
heart failure indicator.
For the above reasons, claims 1 and 30, and all other pending claims,
are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with
the written description requirement.

DECISION
The rejections of claims 1–6, 8–11, 14–35, 37–40, and 43–58 under
35 U.S.C. § 103(a) as being unpatentable are reversed.
We do not reach the merits of the rejection of claims 1–6, 8–11, 14–
35, 37–40, and 43–58 as being unpatentable for obviousness-type double
patenting over claims 1–31 of Ujhazy.
Claims 1–6, 8–11, 14–35, 37–40, and 43–58 are rejected, in a new
ground of rejection, under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement.

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CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)
/Basis
Affirmed Reversed New
Ground
1–3, 5, 6,
8–11,
14–16,
25–32,
34, 35,
37–40,
43–45,
54–58
103(a) Estes, Cho 1–3, 5, 6,
8–11,
14–16,
25–32,
34, 35,
37–40,
43–45,
54–58

17–24,
46–53
103(a) Estes, Cho,
Greenhut
17–24,
46–53

4, 33 103(a) Estes, Cho,
Foulkes
4, 33
1–6, 8–
11, 14–
35, 37–
40, 43–58
Nonstatutory
Obviousness
-type Double
Patenting3

1–6,
8–11, 14–
35, 37–
40, 43–58
112, first
paragraph
Written
Description
1–6,
8–11,
14–35,
37–40,
43–58
Overall
Outcome
1–6,
8–11,
14–35,
37–40,
43–58
1–6,
8–11,
14–35,
37–40,
43–58

3 For reasons provided above, we do not reach this rejection.
Appeal 2018-006939
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TIME PERIOD FOR RESPONSE
This decision contains a new ground 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 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:
(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. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. . . .

Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.

REVERSED; 37 C.F.R. § 41.50(b)