ResMed Pty Ltd

Patent Trials and Appeals Board

Jul 23, 2021

2021004274 (P.T.A.B. Jul. 23, 2021)

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.
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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.

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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.
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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
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(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”).
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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
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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
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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.
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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.
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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
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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.
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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
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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”).
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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.

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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
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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.
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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
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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.
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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.
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Application 15/454,534
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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).
AFFIRMED-IN-PART