ResMed Pty LtdDownload PDFPatent Trials and Appeals BoardJul 23, 20212021004274 (P.T.A.B. Jul. 23, 2021) Copy Citation 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. 15/454,534 03/09/2017 Barton John KENYON PTB-4398-1745 1071 23117 7590 07/23/2021 NIXON & VANDERHYE, PC 901 NORTH GLEBE ROAD, 11TH FLOOR ARLINGTON, VA 22203 EXAMINER SIPPEL, RACHEL T ART UNIT PAPER NUMBER 3785 NOTIFICATION DATE DELIVERY MODE 07/23/2021 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 BARTON JOHN KENYON and AUTHUR KIN-WAI YEE ____________ Appeal 2021-004274 Application 15/454,534 Technology Center 3700 ____________ Before JENNIFER D. BAHR, DANIEL S. SONG, and LISA M. GUIJT, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks our review under 35 U.S.C. § 134(a) of the rejection of claims 49–63 and 65–70. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies ResMed Pty Ltd as the real party in interest. Appeal Br. 3. Appeal 2021-004274 Application 15/454,534 2 THE INVENTION Appellant’s invention relates to “breathable gas supply apparatus.” Spec. ¶ 1. Claim 49, reproduced below as the sole independent claim on appeal, is illustrative of the subject matter on appeal. 49. A breathable gas supply apparatus for delivering pressurized, humidified breathable gas to a patient for use in treatment of a respiratory disorder, the breathable gas supply apparatus comprising: a flow generator configured to pressurize a flow of breathable gas, the flow generator comprising a flow generator air inlet and a flow generator air outlet; a water container configured to humidify the pressurized flow of breathable gas, the water container comprising a water container air inlet and a water container air outlet, the water container having a substantially flat external surface that surrounds the water container air outlet, the water container being configured to receive the flow of breathable gas at the water container air inlet from the flow generator air outlet, and the water container being configured to be removably connected to the flow generator; a humidified air outlet pipe configured to be connected to an air conduit to direct the humidified, pressurized flow breathable gas to a mask worn by the patient during treatment; a first elastomeric face seal being located between the flow generator air outlet and the water container air inlet in use to seal between the flow generator air outlet and the water container air inlet; and a second elastomeric face seal configured to sealingly abut against the substantially flat external surface of the water container that surrounds the water container air outlet in use, the second elastomer face seal surrounding the water container air outlet, and the second elastomeric face seal being positioned between the water container air outlet and the humidified air outlet pipe in use. Appeal 2021-004274 Application 15/454,534 3 THE REJECTIONS2 The Examiner relies upon the following as evidence in support of the rejections: NAME REFERENCE DATE Bartels US 4,311,317 Jan. 19, 1982 Stanek US 5,061,405 Oct. 29, 1991 Levine US 5,195,515 Mar. 23, 1993 Hickle US 5,676,133 Oct. 14, 1997 Sibley US 5,848,592 Dec. 15, 1998 Seakins US 2001/0050080 A1 Dec. 13, 2001 Beaumont US 2002/0023368 A1 Feb. 28, 2002 Thudor US 2003/0066526 A1 Apr. 10, 2003 Edirisuriya US 2003/0236015 A1 Dec. 25, 2003 Bremner US 2006/0118113 A1 June 8, 2006 The following rejections are before us for review: I. Claims 49–52, 60, 61, 63, 69, and 70 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Thudor, Bremner, and Bartels. II. Claim 53 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Thudor, Bremner, Bartels, and Stanek. III. Claims 54–56 and 59 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Thudor, Bremner, Bartels, and Sibley. IV. Claim 57 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Thudor, Bremner, Bartels, Sibley, and Beaumont. 2 The rejection of claim 69 under 35 U.S.C. § 112, second paragraph, has been withdrawn. Ans. 17. Appeal 2021-004274 Application 15/454,534 4 V. Claim 58 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Thudor, Bremner, Bartels, Sibley, and Levine. VI. Claims 65 and 66 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Thudor, Bremner, Bartels, and Hickle. VII. Claim 68 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Thudor, Bremner, Bartels, Sibley, Beaumont, and Levine. VIII. Claims 49, 61, 62, and 67 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Seakins, Edirisuriya, Bremner, Bartels. OPINION Only those arguments actually made by Appellant have been considered in this decision. Arguments which Appellant could have made, but chose not to make in the briefs, have not been considered and are deemed to be waived. See 37 C.F.R. §41.37(c)(1)(vii). Rejection I Claims 49–52, 63, 69, and 70 Appellant argues claims 49–52, 63, 69, and 70 as a group. Appeal Br. 7–11. We select independent claim 49 as representative and claims 48–52, 63, 69, and 70 stand or fall therewith. See 37 C.F.R. § 41.37(c)(1)(iv). Regarding independent claim 49, the Examiner finds that Thudor discloses, inter alia, a breathable gas supply apparatus comprising: (i) a flow generator configured to pressurize a flow of breathable gas and having a flow generator air outlet; (ii) a water container (i.e., water chamber 10) configured to receive the flow of breathable gas at a water container air inlet Appeal 2021-004274 Application 15/454,534 5 (i.e., inlet port 11) from the flow generator air outlet, and also having a water container air outlet (i.e., outlet port 12); and (iii) a humidified air outlet pipe; as claimed. Final Act. 4 (citing Thudor ¶ 58, Fig. 3). The Examiner finds that Thudor does not disclose that the flow generator has a flow generator air inlet, as claimed, and relies on Bremner for teaching, inter alia, a flow generator (i.e., gas supply means or blower 15) including blower inlet 17 as well as an air outlet. Final Act. 4 (citing Bremner, Fig. 1). The Examiner reasons that it would have been obvious to modify Thudor’s flow generator to include an air inlet, as taught by Bremner, to provide “an alternate flow generator.” Id. The Examiner also finds that “Thudor is silent regarding” a substantially flat external surface that surrounds the water container air outlet, or the first and second elastomeric face seals, as claimed, and relies on Bartels for teaching “an elastomeric face seal 68 that sealingly joins conduits having substantially flat surfaces at distal end of 91a and surface of 94 that abut the seal in use.” Final Act. 4–5 (citing Bartels, Figs. 1, 2, 5, 7, 7a). The Examiner reasons that it would have been obvious to modify Thudor’s water container air inlet and outlet with conduit ends including elastomeric seals, as taught by Bartels, to provide “a sealed connection,” wherein such a modification results in the seals being positioned as required by claim 19. Id. at 5 (citing Thudor, Fig. 3; Bartels, Fig. 7a); see also Ans. 20 (“placing the seals at the water container air inlet 11 and water container air outlet 12 of Thudor by looking to Bartels, who teaches a sealed connection between cylindrical gas flow structures, would have been obvious to one of ordinary skill in the art”). Appeal 2021-004274 Application 15/454,534 6 First, Appellant argues that the embodiment relied on by the Examiner, as described and depicted in Thudor’s paragraph 58 and Figure 3, lacks a description of a flow generator configured to pressurize a flow of breathable gas, as required by claim 49, and instead is “an embodiment of a humidifier” wherein “airflow [appears to be] received from some other unidentified source.” Appeal Br. 8. Appellant notes that other embodiments in Thudor disclose flow generators, however, the Examiner has not proposed modifying the embodiment in Figure 3 to include a flow generator. Id. at 9. The Examiner responds that because Thudor discloses, with reference to the embodiment depicted in Figure 3, that “the ‘connection manifold has an auxiliary inlet port 16 suitable for connection of a flexible conduit for delivery of airflow to the humidifier,’” Thudor’s apparatus “must include a flow generator.” Ans. 17–18 (citing Thudor ¶ 58). The Examiner also relies on the Background section of Thudor for teaching that it is well known for Continuous Positive Airway Pressure (CPAP) machines to be a standalone humidifier or to include a flow generator. Id. at 18 (citing Thudor ¶ 3). Appellant replies that to the extent the Examiner is relying on inherency, the Examiner fails to demonstrate that Thudor’s Figure 3 embodiment necessarily possesses a flow generator. Reply Br. 2 (citing In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993) for the proposition that “[o]bviousness cannot be predicated on what is unknown,” for example, “a retrospective via of inherency is not a substitute for some teaching or suggestion supporting an obviousness rejection”). Claim 49 requires a flow generator with an air inlet and an air outlet, and also that the water container air inlet receives breathable gas from the flow generator air outlet, and further, that the water container is configured Appeal 2021-004274 Application 15/454,534 7 to be removably connected to the flow generator, and still further that a first elastomeric face seal is located between the flow generator air outlet and the water container air inlet. As set forth supra, the Examiner only relies on Thudor for disclosing the structure of a flow generator having an air outlet, wherein air from the air outlet is received by the air inlet of the humidifier (or water container)—and not any of the other claimed structure relative to a flow generator. “[A] reference must be considered not only for what it expressly teaches, but also for what it fairly suggests.” In re Baird, 16 F.3d 380, 383 (Fed. Cir. 1994) (quoting In re Burckel, 592 F.2d 1175, 1179 (CCPA 1979)). Here, Thudor’s second preferred embodiment, as relied on by the Examiner and depicted in Figure 3, is “a water chamber and humidifier base” (Thudor ¶ 43), which is also described as “an in-line humidifier and corresponding water chamber,” wherein “[t]he connection manifold has an auxiliary inlet port 16 suitable for connection of a flexible conduit for delivery of airflow to the humidifier and an auxiliary patient outlet port 14 suitable for receiving flexible respiratory conduits to receive the humidified air flow” (id. ¶ 58). Notably, Thudor’s first embodiment, as depicted in Figures 1 and 2, discloses that a blower provides airflow into the water chamber via the manifold. See Thudor ¶ 55. We agree with the Examiner that Thudor discloses at least a blower (or flow generator) upstream of the humidifier (or water container) as a known configuration of an in-line humidifier, such that Thudor suggests that the humidifier (or water container), as depicted in Figure 3, receives a flow of breathable gas at the water container air inlet from a flow generator air outlet, as claimed. As set forth supra, the Examiner also modifies Thudor’s upstream blower to specifically include a Appeal 2021-004274 Application 15/454,534 8 flow generator with an air inlet, as taught by Bremner and, indeed, Bremner discloses a blower 15, as suggested by Thudor. See, e.g., Bremner, Fig. 1 (blower 15, water container 5); see also Spec. ¶ 4 (“CPAP machines are known which incorporate humidifying devices, either separately from the flow generator or integrated therewith”). Second, Appellant argues that the Examiner fails to identify “where Bartels discloses the ‘elastomeric’ aspect” of the claimed first and second seals and that “Bartels does not appear to disclose any material properties of the sealing gasket 68.” Appeal Br. 9. Appellant submits that “[the] hatching pattern in the cross-section of the sealing gasket 68 [of Bartels figures] . . . is not described [or] consistent with any hatching pattern at MPEP 608.02(ix) that is associated with an elastomeric material.” Id. The Examiner responds that Bartels discloses a “resilient sealing gasket.” Ans. 18 (quoting Bartels, claim 1). The Examiner also finds that Figures 7 and 7a of Bartels depict sealing gasket 68 flexing upon connection with the water tube device. The Examiner relies on the following definitions: (i) “elastomeric” means “(Chemistry) any material, such as natural or synthetic rubber, that is able to resume its original shape when a deforming force is removed” (citing “Collins English Dictionary – Complete and Unabridged, 12th Edition 2014 © HarpersCollins Publishers 1991, 1994, 1998, 2000, 2003, 2006, 2007, 2009, 2011, 2014”); and (ii) “resilient” means “[c]apable of returning to an original shape or position, as after having been compressed” (citation omitted). Id. Thus, the Examiner concludes that the claimed elastomeric face seals read on Bartel’s resilient sealing gasket. Id. Appeal 2021-004274 Application 15/454,534 9 Appellant replies that “[t]he only fact disclosed by Bartels and relied upon by the Examiner is the apparent flexible nature of the sealing gasket 68, and that information alone would not be sufficient for one of ordinary skill in the art at the time of invention to have concluded that the sealing gasket 68 is elastomeric.”3 Reply Br. 3 (emphasis added). Although we agree with Appellant that a flexible seal (e.g., a seal capable of bending easily without breaking) is not necessarily an elastomeric seal, Appellant’s argument does not address the Examiner’s reliance on Bartels’ disclosure of resiliency for teaching an elastomeric seal, nor does Appellant dispute the Examiner’s definition of the claim term “elastomeric” or provide a definition of Appellant’s own. The Specification also does not provide a definition of the claim term “elastomeric.” Relying on the Examiner’s definition, which includes any material that is able to resume its original shape when a deforming force is removed, a preponderance of evidence from Bartels supports the Examiner’s finding that Bartels’ resilient sealing gasket is a material that is able to resume its original shape when a deforming force is removed: (i) Bartels depicts, in Figures 7 and 7a, the sealing gasket before and after installation of the cover onto the jar of the humidifier, and discloses correspondingly that thin shank 70 of the sealing gasket, “after having been forced upward by the inner member of the annular slot 90 [of the jar assembly], is now forced down by second positive annular sealing promontory 101 [of the cover]” (Bartels 4:31–34); and (ii) Bartels clearly implies that such a change of shape of the sealing gasket is repeated each time the sealing cover is placed onto the vessel, as the entire purpose of 3 Appellant refers to the “chemical composition” of a seal for the first time in the Reply Brief, however, Appellant fails to provide a chemical composition for an elastomeric seal. See Reply Br. 3. Appeal 2021-004274 Application 15/454,534 10 Bartels’ invention is to provide adequate sealing between the jar assembly and cover of a humidifier even after continual removal and reinstallation of the cover. See, e.g., Bartels 1:10–13. Thus, Appellant’s argument does not apprise us of error in the Examiner’s reliance on Bartels for disclosing an elastomeric face seal, as claimed.4 Third, Appellant argues that the Examiner’s rationale for modifying Thudor’s water container air inlet and outlet with conduit ends including an elastomeric seal, as taught by Bartels, is “based solely on impermissible hindsight” because Thudor’s conduit ends “already appear to seal,” making the modification unnecessary. Appeal Br. 10; see also Reply Br. 4 (“the Examiner’s line of reasoning suggests fixing a problem that is not actually known to exist in the first place”). We are not persuaded by Appellant’s argument, because, as set forth supra, the Examiner relies on Bartels’ recognition of the problem of adequate sealing between connections in a medical respiratory apparatus, which Bartels proposes to solve, in the context of a jar assembly and cover, with an improved sealing member.5 See also, e.g., Bartels 1:5–22. We are 4 To the extent Appellant is requiring a disclosure in Bartels of a polymer that displays rubber-like elasticity, Bartels expressly refers to “relevant” prior art patents involving lip and radial seals with beads, noting, however, that such seals are not disclosed for use in medical humidifiers, as is the object of Bartels’ invention. Bartels 1:22–35. These prior art patents disclosed in Bartels each teach rubber seals: (i) US 2,329,028 (issued Sept. 7, 1943), p. 1 (“main body 18 of the material may be of ordinary rubber and is surrounded by a sheath 18 cemented or vulcanized thereto and comprising an oi-resistant synthetic rubber or rubber substitute”); (ii) US 3,112,114 (issued Nov. 26, 1963), col. 2, ll. 6–7 (“gasket 14 is made in one piece, of soft rubber”). 5 Moreover, but not relied on by the Examiner, Thudor discloses that “[p]referably the tubular protrusions [of the connection manifold of the Appeal 2021-004274 Application 15/454,534 11 also not persuaded that substituting the seals on Thudor’s conduit ends, as argued by Appellant, with Bartels’ improved seals involves impermissible hindsight. Rather, where “a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Fourth, Appellant argues that Bartels fails to disclose the claimed positioning of the first and second seals. Appeal Br. 11. In support, Appellant submits that [i]ndependent claim 49 recites, inter alia, “a first elastomeric face seal being located between the flow generator air outlet and the water container air inlet” and “the second elastomeric face seal surrounding the water container air outlet, and the second elastomeric face seal being positioned between the water container air outlet and the humidified air outlet pipe in use.” . . . [The Examiner states:] “The modified Thudor discloses that the first elastomeric face seal being located between the flow generator air outlet and the water container air inlet in use to seal between the flow generator air outlet and the water container air inlet (indirectly, fig. 3 Thudor, fig. 7a Bartels), and the second elastomeric face seal is positioned between the water container air outlet and the humidified air outlet pipe in use ([F]ig. 3 Thudor).” This statement is conclusory and unsupported because there appears to be nothing in any of the cited references that water chamber] also include a resilient boot in order to provide an improved seal between the water chamber and the protrusions.” Thudor ¶ 65. Thus, Thudor expressly acknowledges the problem of unsealed connections between the components of a humidifier apparatus and expressly suggests the solution of using resilient boots, for example, to prevent leaking of airflow to the water container and of humidified air from the water container. Appeal 2021-004274 Application 15/454,534 12 would suggest that the sealing gasket 68 of Bartels would be positioned where the rejection asserts. In other words, the rejection’s asserted modification to locate the sealing gasket 68 of Bartels at the claimed locations must be based solely on impermissible hindsight. Appeal Br. 10–11; see also Reply Br. 4–5 (arguing that “there is no indication that Thudor’s device is susceptible to leaks at any location” and that the Examiner’s suggested placement of seals in Thudor’s humidifier apparatus is “chosen arbitrarily”). The Examiner relies on Bartels’ disclosure of using elastomeric sealing gaskets between the connections of a humidifier used in a medical respiratory apparatus, and we agree with the Examiner that a person of ordinary skill in the art would recognize that such connections in Thudor are (as expressly disclosed by Thudor with respect to the resilient boot seals) between the tubular protrusions (inlet and outlet) of the manifold and the inlet and outlet of the water chamber, and that connections also exist between the inlet of the manifold and the upstream flow generator outlet and the outlet of the manifold and the inlet of a pipe for delivering humidified air to the patient. Thus, the cited references support positioning the elastomeric sealing gaskets of Bartels in Thudor’s humidifier apparatus as the Examiner asserts, contrary to Appellant’s argument. Accordingly, we sustain the Examiner’s rejection of claim 49 and claims 50–52, 63, 69, and 70 fall therewith. Dependent claim 60 Claim 60 depends from independent claim 49 and recites, in relevant part, “wherein the first elastomeric face seal and the second elastomeric face seal are configured to be urged into sealing engagement against corresponding surfaces of the water container by pressure from the Appeal 2021-004274 Application 15/454,534 13 pressurized flow of breathable gas.” Appeal Br. 20 (Claims App.) (emphasis added); see Spec. ¶ 150 (“As the air supplied from the flow generator is under pressure, this pressure assists the sealing flange 676d of the sealing member 676 to create a firm seal around the recess 718 by forcing the extension portion outwards and downwards” and “a similar effect is created on the seal surrounding the elliptical aperture 716 in the tub lid due to the pressure of the air exiting the water receptacle”). The Examiner finds that Thudor discloses this claim limitation because “a slight amount of pressure from the flow will urge the face seals into their corresponding surfaces of the water container.” Final Act. 6. Appellant argues that the Examiner’s finding is “conclusory and unsupported.” Appeal Br. 11. We are persuaded by Appellant’s argument that the Examiner’s finding is speculative, in that Thudor merely discloses that each of the inlet and outlets, or “tubular protrusions,” include “a resilient boot in order to provide an improved seal,” but Thudor does not disclose that such resilient boots are urged into sealing engagement by pressure from the pressurized flow of breathable gas flowing through the tubes of the manifold. Bartels also does not appear to disclose that lip sealing gasket 68 is urged into sealing engagement by pressure from the pressurized flow of breathable gas rather than from the structures interacting with each other. Cf. Bartels 4:26– 31 (teaching, with reference to Figure 7a, that “[w]hen sealing cover 94 is attached to the vessel to be sealed 92 by means of cover retaining lip 96 and cover retainer 98, thick shank 72 assumes a bowed configuration in response to forces impressed by the interaction of the sealing beads 74, 76 and 78 with the side of the annular slot 90”). Appeal 2021-004274 Application 15/454,534 14 Accordingly, we cannot sustain the Examiner’s rejection of claim 60. Dependent claim 61 Claim 61 depends from independent claim 49 and recites, in relevant part, wherein the water container forms a headspace in which the pressurized flow of breathable gas is humidified by water in the water container, wherein the water container air inlet is arranged such that the pressurized flow of breathable gas enters the headspace in a downward direction, and wherein the water container air outlet is arranged such that the pressurized flow of breathable gas exits the headspace in an upward direction. Appeal Br. 20 (Claims App.). The Examiner finds that Thudor discloses that “the water container forms a headspace” and that Thudor’s gas enters and exits the headspace in downward and upward directions, as claimed, because the inlet and outlets are “at the upper end of the container.” Final Act. 6–7. In other words, the Examiner finds that the flow from the inlet and outlet “will travel in all directions” in Thudor’s water container. Ans. 21–22. Appellant argues correctly that, in Thudor, the gas flow “enters and exits horizontally, not downward or upward,” as required by claim 61. Appeal Br. 11, Annotated Thudor Fig. 3; cf. Bremner, Fig. 1. Accordingly, we cannot sustain the Examiner’s rejection of claim 61. Rejection II and IV–VI Appellant chose not to present arguments for the patentability of claims 53, 57, 58, 65, and 66. Appeal Br. 7–16. Accordingly, we sustain the Examiner’s rejection of 53, 57, 58, 65, and 66. Appeal 2021-004274 Application 15/454,534 15 Rejection III Claim 56 depends ultimately from independent claim 49 and recites, in relevant part, “wherein the water container air inlet and the water container air outlet are formed in the tub lid.” Appeal Br. 19 (Claims App.). The Examiner finds that Thudor teaches that “the water container air inlet and outlet are located at the top of the water container” and also that Sibley teaches “an outlet on the lid of the container.” Final Act. 9. The Examiner proposes modifying Thudor’s water container to include a lid, as taught by Sibley, and also to add an inlet, such that the inlet and outlet in Thudor’s lid (as modified by Sibley) “are located at the same height on the water container.” Id. Appellant argues that Sibley is contrary to the Examiner’s proposed modification. Appeal Br. 13. In support, Appellant submits that Sibley’s Figure 3 shows that “the base part 10 (cited for the ‘water tube’) includes the air inlet 42 and the shroud 44 that covers it,” and therefore, modifying Thudor to include a lid, as taught by Sibley, would not result in a lid with both an inlet and an outlet. Id.; see also Reply Br. 8 (“the Examiner’s position relies on modifications not actually suggested by these references” and “Sibley still appears to teach that the air inlet 42 is on the shroud 44, not the cap 12”). Appellant also argues that “it appears from Fig. 3 of Thudor that if a lid were added, that it could exclude the inlet 11 and outlet 12 because of their location on the side of the water container portion 10.” Reply Br. 8. Appellant’s argument does not apprise us of error in the Examiner’s rejection, because the Examiner does not propose modifying Thudor to bodily incorporate Sibley’s lid, which the Examiner acknowledges discloses Appeal 2021-004274 Application 15/454,534 16 only forming an outlet therein. See, e.g., Sibley 2:56–57 (“At the center of the cap 12 is an air outlet 56,” which “includes a spigot 58 that will connect to the hose of a respirator mask”); see also In re Keller, 642 F.2d 413, 425 (CCPA 1981); In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012) (“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . .”). Rather, as set forth supra, the Examiner relies on Sibley for teaching that an outlet may be located in the lid of the water chamber, and reasoning that because both the inlet and outlet communicate with the headspace of Thudor’s water chamber, it would have been obvious to a person of ordinary skill in the art to also include the inlet of the water chamber in the lid. We are also not persuaded by Appellant’s attorney argument that the Examiner’s proposed modification to relocate the horizontal conduits of Thudor’s water chamber inlet and outlet protrusions or conduits to be in the lid of the water chamber (perhaps even within a sidewall of the lid), as taught by Sibley, as opposed to within a sidewall of the water chamber, would be beyond the knowledge of person of ordinary skill in the art, as argued by Appellant. Accordingly, we sustain the Examiner’s rejection of claim 56. Appellant chose not to present arguments for the patentability of claims 54, 55, and 59, and therefore, we also sustain the Examiner’s rejection of claims 54, 55, and 59. Rejection VII Appellant argues that, in comparison to claim 68, “[c]laim 5[6]6 recites a similar feature [and] was rejected on similar grounds,” and 6 Appellant does not present an argument for the patentability of claim 54, however, subject matter similar to claim 56 is argued relative to claim 68. Appeal Br. 7–17; id. at 12–13. Appeal 2021-004274 Application 15/454,534 17 therefore, “[t]he errors of the rejection [of claim 56] . . . are similarly applicable to the rejection of claim 68.” Appeal Br. 13. Because we are not apprised of errors in the Examiner’s rejection of claim 56, we are also not apprised of errors in the Examiner’s rejection of claim 68, for essentially the same reasons as stated supra with respect to claim 56. Accordingly, we sustain the Examiner’s rejection of claim 68. Rejection VIII Regarding independent claim 49, the Examiner relies on Seakins for disclosing generally a breathable gas supply apparatus. Final Act. 14–15 (citations omitted). The Examiner relies on Bartels for teaching “an elastomeric seal 68” and reasons that it would have been obvious to modify Seakins’ water container inlet and outlet with conduit ends including an elastomeric face seal, as taught by Bartels, to provide “a sealed connection,” also locating the elastomeric face seals, as claimed. Id. at 15–16 (citations omitted). Appellant argues that “[t]he rejection does not identify where Bartels discloses the ‘elastomeric’ aspect [of the claimed face seals],” as “Bartels does not appear to disclose any material properties of the sealing gasket 68.” Appeal Br. 14. For essentially the same reasons as stated supra, with respect to the Examiner’s reliance on Bartels in the rejection of claim 49 as set forth in Rejection I, Appellant’s argument does not apprise us of error in the Examiner’s reliance on Bartels for disclosing an elastomeric face seal. Appellant also argues that the Examiner’s rationale “appears to be based solely on impermissible hindsight because no assertion has been made that the components of Seakins, Edirisuriya, and Bremner cited for the ‘flow generator outlet,’ the ‘water container air inlet,’ and ‘the water container air Appeal 2021-004274 Application 15/454,534 18 outlet’ are somehow not sealed,” and thus, “adding the sealing gasket 68 of Bartels to the cited components of Seakins, Edirisuriya, and Bremner, which already appear to seal, would be based solely on impermissible hindsight.” Appeal Br. 15; see also Reply Br. 10 (arguing that “the Examiner’s line of reasoning suggests fixing a problem that is not actually known to exist in the first place”). The Examiner responds that Bartels teaches “a sealed connection between cylindrical gas flow structures,” and proposes Bartels’ sealing gasket 68 as a substitute (or “alternate connection”) for the connection disclosed in Seakins. Ans. 24. We are not persuaded by Appellant’s argument that Seakins must expressly identify a problem that is solved by the Examiner’s proposed modification.7 As discussed supra, the Examiner relies on Bartels’ recognition of the problem of adequate sealing between connections in a medical respiratory apparatus, which Bartels proposes to solve, in the context of a jar assembly and cover, with an improved sealing member. See also, e.g., Bartels 1:5–22. In other words, Appellant does not identify any knowledge relied upon by the Examiner that was gleaned only from Appellant’s disclosure and that was not otherwise within the level of ordinary skill at the time of the invention, in view of the discussion in 7 Notably, Seakins expressly refers to a humidifier apparatus as depicted in Figure 12, which is essentially the same as the humidifier apparatus depicted in Figure 3 of Thudor. Seakins ¶ 84 (“the humidifier configurations that have been described in this patent incorporate many sensors around the chamber, so the use of a manifold 59 as shown in FIG. 12 may be useful”). As discussed with respect to Rejection I, Thudor expressly discusses the preference for improved sealing between the manifold’s tubular protrusions and the water chamber, with respect to the humidifier apparatus depicted in Figure 3. See, e.g., Thudor ¶ 65. Appeal 2021-004274 Application 15/454,534 19 Bartels of the problem of leaking associated with a humidifier in a medical respiratory apparatus. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Finally, Appellant argues8 that the combination of Seakins, Edirisuriya, and Bremner does not teach “a first elastomeric face seal being located between the flow generator air outlet and the water container air inlet” and “the second elastomeric face seal surrounding the water container air outlet, and the second elastomeric face seal being positioned between the water container air outlet and the humidified air outlet pipe in use. Appeal Br. 11. Appellant submits that the Examiner relies on impermissible hindsight, conclusory and unsupported reasoning, and that the Examiner’s placement of Bartels’ sealing gaskets in Seakins’ respiratory apparatus is arbitrary. Appeal Br. 15–16; see also Reply Br. 11–12. We are not persuaded by Appellant’s argument because, similar to the discussion supra, the Examiner relies on Bartels’ disclosure of using elastomeric sealing gaskets between the connections of a humidifier used in a medical respiratory apparatus, and we agree with the Examiner that a person of ordinary skill in the art would recognize that such connections in Seakins, for example, gas inlet 4 and gas outlet 5, are improved by sealing. Thus, the cited references support positioning the elastomeric sealing gaskets of Bartels in Seakins’ respiratory humidification system as the Examiner asserts, contrary to Appellant’s argument. Accordingly, we sustain the Examiner’s rejection of independent claim 49. Appellant chose not to present arguments for the patentability of 8 The argument “d” presented on pages 16–17 of the Appeal Brief merely repeats the argument “c” presented on pages 15–16. Appeal 2021-004274 Application 15/454,534 20 claims 61, 62, and 67, and therefore, we also sustain the Examiner’s rejection of claims 61, 62, and 67. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s) Affirmed Reversed 49–52, 60, 61, 63, 69, 70 103(a) Thudor, Bremner, Bartels 49–52, 63, 69, 70 60, 61 53 103(a) Thudor, Bremner, Bartels, Stanek 53 54–56, 59 103(a) Thudor, Bremner, Bartels, Sibley 54–56, 59 57 103(a) Thudor, Bremner, Bartels, Sibley, Beaumont 57 58 103(a) Thudor, Bremner, Bartels, Sibley, Levine 58 65, 66 103(a) Thudor, Bremner, Bartels, Hickle 65, 66 68 103(a) Thudor, Bremner, Bartels, Sibley, Beaumont, Levine 68 49, 61, 62, 67 103(a) Seakins, Edirisuriya, Bremner, Bartels 49, 61, 62, 67 Overall Outcome 49–59, 61– 63, 65–70 60 Appeal 2021-004274 Application 15/454,534 21 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). 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