ResMed Pty Ltd

Patent Trials and Appeals Board

Apr 30, 2021

2021000856 (P.T.A.B. Apr. 30, 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.
15/036,570 05/13/2016 Robert Edward HENRY PTB-4398-1665 6800
23117 7590 04/30/2021
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
KHONG, BRIAN THAI-BINH
ART UNIT PAPER NUMBER
3785
NOTIFICATION DATE DELIVERY MODE
04/30/2021 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 ROBERT EDWARD HENRY, CHRISTOPHER JAMES SMITH,
ANTHONY PAUL BARBARA, ADAM FRANCIS BARLOW,
CRAIG DAVID EDWARDS, MARTIN FORRESTER,
LACHLAN RICHARD GOLDSPINK, KIRRILY MICHELE HASKARD,
WILLIAM LAURENCE HITCHCOCK, RALPH JOURDAN,
MURRAY WILLIAM LEE, FREDERICK ARLET MAY,
GERARD MICHAEL RUMMERY, RUPERT CHRISTIAN SCHEINER,
SHIVA KUMAR SHANMUGA SUNDARA, CHIA IK TAN,
STEWART JOSEPH WAGNER, ALICIA KRISTIANNE WELLS,
LEMMY NGA, HASON TIN-YAN HO, and GREGORY SCOTT SMART
Appeal 2021-000856
Application 15/036,570
Technology Center 3700
Before BENJAMIN D. M. WOOD, JEREMY M. PLENZLER, and
LEE L. STEPINA, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
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DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 188, 190, 191, 194–196, 208, 212–222,
and 224–228.2 See Final Act. 1. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm in part.
CLAIMED SUBJECT MATTER
The claims are directed to a patient interface for an apparatus to treat a
patient’s respiratory disorder. Claim 188, reproduced below, is illustrative
of the claimed subject matter:
188. A patient interface to deliver pressurized gas to a patient
to treat sleep disordered breathing, the patient interface
comprising:
a seal-forming structure in the form of a nasal cradle
cushion and having a pair of naris ports separated by a nasal
sling, each of the naris ports being configured to provide
pressurized gas to a corresponding one of the patient’s nares, the
seal-forming structure forming, at least in part, a gas chamber,
the seal-forming structure being configured to prevent the
patient's nose from entering the gas chamber, the seal-forming
structure being configured to seal against an inferior periphery of
the patient’s nose and at or near the patient’s pronasale, and the
seal-forming structure being structured so as not to enter the
nostrils of the patient in use;

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as ResMed Pty Ltd.
Appeal Br. 3.
2 Claims 1–187, 189, 192, 193, 197–207, 209–211, and 223 are cancelled.
Appeal Br. 31 (Claims App.).
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a plenum chamber formed in one piece with the seal-
forming structure, the plenum chamber including a plenum
connection region, and the plenum chamber forming, at least in
part, the gas chamber;
a frame attached to the plenum chamber at the plenum
connection region, the frame having a connection port; and
wherein the seal-forming structure comprises a pair of
protruding ends, each of the protruding ends being positioned on
a corresponding lateral side of the seal-forming structure, and
each of the protruding ends being configured to engage a region
of the patient’s face between the corresponding ala of the
patient's nose and the patient's corresponding nasolabial sulcus,
wherein the seal-forming structure comprises a pair of protruding
end support sections cantilevered from an interior surface of the
seal-forming structure such that each of the protruding end
support sections extends into the gas chamber in a medial
direction to contact and support a corresponding one of the
protruding ends when the corresponding protruding end is
deformed by contact with the patient’s face.
Appeal Br. 31 (Claims App.).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Nold US 5,153,956 Oct. 13, 1992
Barnett US 6,959,710 B2 Nov. 1, 2005
Worboys US 2008/0006277 A1 Jan. 10, 2008
Veliss US 2010/0018534 A1 Jan. 28, 2010
Allan US 2011/0146685 A1 June 23, 2011

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REJECTIONS3
I. Claims 188, 190, 191, 194–196, 208, 212–222, 224–226, and
228 are rejected under 35 U.S.C. § 103 over Allan, Barnett, Worboys, and
Veliss. Final Act. 9.
II. Claim 227 is rejected under 35 U.S.C. § 103 over Allan,
Barnett, Worboys, Veliss, and Nold. Final Act. 22.

OPINION
Rejection I—Allan, Barnett, Worboys, and Veliss
Claim 188
Allan
The Examiner finds that Allan discloses many of the elements recited
in claim 188, including “a seal-forming structure (301, Fig 3C) in the form
of a nasal cradle cushion (the cushion 301 cradles and surrounds the nose,
Fig 3C) and having a pair of naris ports (401, Fig 4B) separated by a nasal
sling (nasal sling or division between the left and right 401, Fig 4B).” Final
Act. 9. The Examiner also finds Allan discloses “the seal-forming structure
comprises a pair of protruding ends (411, Fig 4C) . . . each of the protruding
ends being configured to engage a region of the patient’s face between the
corresponding ala of the patient’s nose and the patient’s corresponding
nasolabial sulcus.” Id. at 10 (citing Allan ¶ 423, Fig. 4C).

3 The Examiner withdrew a rejection of claims 188, 190, 191, 194–196, 208,
212–222, and 224–228 under 35 U.S.C. § 112(b) as being indefinite. See
Advisory Act. 2; Final Act. 7.
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However, the Examiner finds
Allan fails to disclose the seal-forming structure being
structured so as not to enter the nostrils of the patient in use;
wherein the seal-forming structure comprises a pair of protruding
end support sections cantilevered from an interior surface of the
seal-forming structure such that each of the protruding end
support sections extends into the gas chamber in a medial
direction to contact and support a corresponding one of the
protruding ends when the corresponding protruding end is
deformed by contact with the patient’s face.
Id. at 10–11.
Barnett
To remedy some of the deficiencies in the disclosure of Allan, the
Examiner finds Barnett teaches a nasal mask assembly including a seal-
forming structure comprising a pair of protruding end support sections (124)
such that each of the protruding end support sections extends into a gas
chamber to contact and support a corresponding a protruding end. Final Act.
11 (citing Barnett 5:3–10, 24–30, 58–61, Figs. 1A, 1E, 1C). The Examiner
reasons it would have been obvious to a person of ordinary skill in the art “to
add a reinforcement area to the seal-forming structure of Allan, as taught by
Barnett, to provide structural support for the sides of the sealing member so
that the sealing member does not collapse due to the strapping force which
minimizes leaks.” Id. (citing Barnett 5:24–30).
Worboys
The Examiner also finds Worboys discloses a pair of protruding end
support sections (217) cantilevered from an interior surface of a seal-
forming structure. Final Act. 11–12 (citing Worboys, Figs. 11, 12). The
Examiner further finds that Worboys’ protruding end support sections (217)
are used to adjust the flexibility of projections in certain regions of the
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patient’s face, allowing the projections to provide cushion support for a wide
range of patients. Id. at 12 (citing Worboys ¶¶ 27, 33, 37). The Examiner
reasons that, at the time of the claimed invention, a person of ordinary skill
in the art would have found it obvious “to modify the reinforcement area of
Allan-Barnett combination to have cantilevered projections, as taught by
Worboys” to adjust the flexibility of the projections in certain regions of the
patient’s face” to accommodate the needs of individual patients. Id.
Regarding the requirement in claim 188 that the seal-forming
structure be structured so as not to enter the nostrils of the patient in use, the
Examiner finds Veliss teaches a respiratory mask with such structure, and
the benefits thereof. Id. at 12. The Examiner determines that a person of
ordinary skill in the art would have found it obvious to avoid having nasal
prongs “to provide visual freedom and unobtrusiveness without the
intrusiveness and potential discomfort of prongs and to avoid the ‘jetting
effect.’” Id. at 13 (citing Veliss ¶¶ 239–240).
Appellant first argues that the Examiner’s reasoning for modifying
Allan’s patient interface based on Veliss is not supported by rational
underpinnings. See Appeal Br. 7–11. Specifically, Appellant contends
“[s]uggesting that this modification provides visual freedom is nonsensical
because humans do not see through their nostrils, and therefore changing the
sealing interface from one that enters the nostrils to one that does not cannot
provide this purported benefit.” Id. at 8. In response, the Examiner states,
“[t]he motivation of visual freedom with Veliss is in relation to Veliss being
a nasal cushion in comparison to a full face cushion or a mouth cushion.”
Ans. 17.
The Examiner’s reasoning based on “visual freedom” is inadequately
supported inasmuch as a change from a full face mask to a nasal cushion is
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not pertinent to the modification proposed by the Examiner, namely,
changing from seal-forming structure from one that enters a patient’s nostrils
to one that does not enter the patient’s nostrils in use.
Appellant attacks the Examiner’s rationale based on the benefit of
avoiding the “jetting effect” because, Appellant contends, “Veliss appears to
actually teach that the jetting effect is avoided by directing air to both
nostrils through one opening, instead of two, and by making the interface
from foam.” Appeal Br. 9. Appellant contends this solution to the jetting
problem “is in conflict with claim 188, which recites ‘a seal-forming
structure having a pair of naris ports separated by a nasal sling, each of the
naris ports being configured to provide pressurized gas to a corresponding
one of the patient’s nares.’” Id. at 10. Appellant asserts that Veliss’ solution
to the jetting problem relies on providing a single, large orifice that directs
air to both nostrils, and Appellant contends,
it appears that the Examiner is relying on Veliss to provide the
teaching of a claim feature (“a central portion that divides the
single orifice into two”) that would counteract the motivation to
include Veliss for the purpose of reducing the jetting effect
(“because the air is not being forced through narrow orifices
inside the nostrils, but through a larger orifice that covers both
nostril openings”).
Reply Br. 3; see also id. at 2.
We disagree with Appellant’s argument regarding the Examiner’s
“jetting effect” rationale because the argument relies on an overly strict
incorporation of some aspects of Veliss’ structure in the modification of
Allan’s mask. Veliss explicitly describes the disadvantages of providing air
to the nose in a channeled manner through narrow prong orifices. See Veliss
¶ 240. Veliss explains “[an] advantage of the under-the-nose foam interface
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is the elimination or minimization of the jetting effect that nasal prongs are
known to produce. This is because the air is not being forced through
narrow orifices inside the nostrils, but through a larger orifice that covers
both nostril openings.” We do not understand this statement in Veliss to
require either foam or the use of a single orifice in order to ameliorate the
jetting effect. Rather, we agree with the Examiner that Veliss permits the
use of two orifices instead of one. See Ans. 18; Veliss ¶ 241. Additionally,
the fact that Veliss discloses various advantages of the use of foam at the
exit of its air supply (Veliss ¶ 240) does not mean that a person of ordinary
skill in the art would understand such foam to be required in order to obtain
a benefit from placing an air-supply exit outside of the nostril. By
describing the disadvantages of placing air-supply exits inside the patient’s
nostril, Veliss suggests providing an air-supply exit external to a patient’s
nostril. Accordingly, we agree with the Examiner that, at the time of the
claimed invention, a person of ordinary skill in the art would have found it
obvious, based on the teachings of Veliss, to modify Allan’s mask such that
its air supply is “structured so as not to enter the nostrils of the patient in
use.”
Appellant next argues the Examiner erred in finding that Allan
discloses protruding ends as recited in claim 188. See Appeal Br. 11–15.
Specifically, Appellant contends “side portions 411 [of Allan] do not
‘engage a region of the patient’s face between the corresponding ala of the
patient’s nose and the patient’s corresponding nasolabial sulcus.’” Id. at 11
(quoting claim 188). Appellant contends that paragraphs 5, 388, and 423 of
Allan, cited by the Examiner, do not support the Examiner’s finding, and
Figures 1EA–1EC are not from the same embodiment the Examiner relies on
to disclose other aspects of claim 188. Id. at 11–14.
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The Examiner responds by reiterating that Figures 1EA–1EC depict
the mask in Allan contacting the region of the face at issue in claim 188, and
the Examiner adds that Figure 3A also discloses this feature. Ans. 18.
As an apparent alternative to finding that Allan discloses the above-
noted configuration of the protruding ends for contact between the
corresponding ala of the patient’s nose and the patient’s corresponding
nasolabialsulcus, the Examiner states:
Appellant has also failed to provide any criticality regarding this
particular region of the face and any advantages that make this
particular region of the face distinct or unique from other regions
of the face being sealed. It is clearly obvious for one of ordinary
skill in the art to provide a seal within the region of the patient’s
face that Appellant is trying to claim to accommodate for
different faces of patients and to shape the seal so that the cushion
can properly contour and maintain that seal on the patient's face.
Ans. 19.
In reply, Appellant contends “[t]he Examiner’s first assertion, about
what Figs. 1EA, 1EB, 1EC, and 3A of Allan, teach is conclusory.” Reply
Br. 4. Appellant states, “Figs. 1EA-1EC of Allan teach, at most, that one or
the other side of the seal body engages the claimed region. Fig. 3A, a
distinct embodiment, does not appear to teach the claimed engagement at all,
and the Examiner’s reliance of Fig. 3A without any explanation is not
sufficient to support the rejection.” Id. at 4.
Regarding the Examiner’s finding that Appellant does not disclose
that the specific contact area of the protruding ends is critical, Appellant
asserts, “[t]here is no requirement in the law of obviousness that criticality
must be shown to establish non-obviousness, and therefore this statement
does nothing to support the Examiner’s position.” Id. at 5. Appellant also
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asserts that paragraphs 452–453 of the Specification establish that the recited
contact area is “relevant.” Id.
Appellant’s Summary of the Claimed Subject Matter indicates that the
recited protruding ends, and the configuration for engagement “between the
corresponding ala of the patient’s nose and the patient’s corresponding
nasolabial sulcus” are depicted in Figures 271a–288. Appeal Br. 6. We
reproduce Appellant’s Figure 273 below.

Appellant’s Figure 273 is a perspective view of a seal-forming
structure 3100 worn by a patient, with a protruding end indicated by
reference number 3114. Spec. ¶ 399.
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We also reproduce Figure 3A of Allan, cited by the Examiner (Ans.
18), below.4

Figure. 3A of Allan is a perspective view of a person wearing a
patient interface. Allan ¶ 217. Component 411, which the Examiner finds
corresponds to the recited “protruding end(s)” is depicted in Figure 4C, as
follows.

4 Figure 3A of Allan is the same embodiment as depicted in Fig. 4C. See
Allan ¶¶ 217–220.
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Figure 4C of Allan is a side view of a seal component, including
protruding end (side portion) 411. See Allan ¶¶ 220, 416.
Figure 3A of Allan supports, by a preponderance of the evidence, the
Examiner’s finding that Allan’s protruding ends 411 are configured to
engage the location of the patient’s face recited in claim 188. Appellant’s
contention that the text of Allan does not explicitly disclose this arrangement
is unavailing. Although we appreciate that the drawings in Allan are not
designated as being drawn to scale, and thus cannot be relied upon to define
precise proportions of elements, that does not mean “that things patent
drawings show clearly are to be disregarded.” In re Mraz, 455 F.2d 1069,
1072 (CCPA 1972). A drawing teaches all that it reasonably discloses and
suggests to a person of ordinary skill in the art. In re Aslanian, 590 F.2d
911, 914 (CCPA 1979). In Allan’s pertinent drawings, the configuration for
contact in the location recited in claim 188 is fairly disclosed.
Appellant next argues a person of ordinary skill in the art would not
have found it obvious to modify Allan based on Barnett and Worboys
because Barnett and Worboys teach different cushion arrangements from
Allan and claim 188. See Appeal Br. 15–20; Reply Br. 5–6. Specifically,
Appellant argues “Barnett and Worboys appear to teach cushion
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arrangements that are not ‘configured to prevent the patient’s nose from
entering the gas chamber’ and are not ‘configured to seal against an inferior
periphery of the patient’s nose and at or near the patient’s pronasale.’”
Appeal Br. 16; Reply Br. 6. Appellant asserts, “one of ordinary skill in the
art would recognize that the cushion arrangements of Barnett and Worboys
are structurally distinct from the claimed ‘seal-forming structure’ and
Allan’s seal 301.” Id.
In a related argument, Appellant asserts that Barnett lacks the claimed
“protruding ends,” and, therefore, cannot teach “protruding end support
sections” as recited in claim 188. See Appeal Br. 17–18. Appellant
reiterates this contention in the Reply Brief, stating, “Barnett simply fails to
provide the positional and functional context for the structure cited for the
‘protruding end support sections’ such that it would have been obvious to
modify Allan with that structure to arrive at the claimed subject matter.”
Reply Br. 7.
Additionally, Appellant argues, “Barnett states that the lower
protrusion portions 126 provide structural support ‘so that the seal member
32 does not collapse under the strapping force.’” Appeal Br. 18 (quoting
Barnett 5:58–61). In contrast, Appellant asserts,
[claim 188] does not recite that the “protruding end support
sections” prevent collapse of the seal-forming structure. Rather,
claim 188 recites that “each of the protruding end support
sections extends into the gas chamber in a medial direction to
contact and support a corresponding one of the protruding ends
when the corresponding protruding end is deformed by contact
with the patient’s face.”
Id.
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Appellant extends this line of arguments to the Examiner’s
incorporation of Worboys’ disclosure, stating, “[s]imilar to Barnett, the
cushion 214 of Worboys does not appear to have any portion that would
correspond to the ‘protruding ends’ of claim 188 or the side portions 411 of
Allan that were cited for the ‘protruding ends.’” Appeal Br. 19. Appellant
contends, “the Examiner appears to be relying on an arbitrary structure from
Worboys that is taken out of context and then applying it to Allan as
modified by Barnett.” Reply Br. 8.
These arguments do not apprise us of Examiner error because the
structural differences in Barnett and Worboys noted by Appellant are not
pertinent to the modification proposed by the Examiner. Specifically,
Appellant does not provide any persuasive explanation as to how the
structural differences set forth in this section of the Appeal Brief affect the
Examiner’s findings of fact or stated reasoning for the proposed
modification. As set forth in the Answer, the Examiner finds “Barnett and
Worboys are both of the same field of endeavor and are only being relied
upon to show that a reinforcement area and cantilevered projections can be
provided to add further structural reinforcement to the seal of Allan.” Ans.
19. There is no question that Barnett and Worboys provide the general
teaching the Examiner states is the basis for the proposed modification.
We have considered all of Appellant’s arguments in support of the
patentability of claim 188, but find them unavailing. Accordingly, we
sustain the rejection of claim 188 as unpatentable over Allan, Barnett,
Worboys, and Veliss.
Claim 191
Claim 190 depends from claim 188 and recites “the seal-forming
structure includes a recessed portion configured to engage the tip of the
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patient's nose during use.” Appeal Br. 31 (Claims App.). Claim 191
depends from claim 190 and recites “the seal-forming structure comprises a
compliant region located above the recessed portion, the compliant region
being thinner and more flexible than a remainder of the seal-forming
structure.” Id. at 32 (emphasis added).
The Examiner finds that Allan discloses this structure in paragraph
421 and Figure 4A. Final Act. 13. Appellant argues that Allan discloses
structure that is, in absolute terms, thin and supple, but paragraph 421 of
Allan “does not state that the cited regions are thinner and suppler than any
other region.” Appeal Br. 21.
In response, the Examiner finds perimeter portion 435 of Allan is in
contact with a patient’s nasal bridge and is thin and supple to allow the
cushion to conform to this part of a patient’s face. Ans. 22. The Examiner
also finds “Figs 1C and 1E of Barnett depict the region in the middle of the
cushion to not have portions of the reinforcement area 124 and/or 126
present, supporting the case that this middle region of the cushion must be
more ‘thin and supple’ as compared to the sides of the cushion.” Id. The
Examiner determines, “in combination with Barnett, the addition of a
reinforcement area on the protruding ends of the nasal cushion of Allan will
obviously increase the overall thickness of the protruding ends/sides of the
nasal cushion to be greater than the middle portion of the nasal cushion.” Id.
Thus, the Examiner takes the position that the modification of the teachings
of Allan and Barnett proposed to address claim 188 will result in structure
satisfying the requirements of claim 191.
Appellant has the better position. Although the Examiner may be
correct in determining that the proposed combination of the teachings of
Allan and Barnett will result in a particular location being thicker and less
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flexible than the recessed portion disclosed by Allan, such structure does not
meet all the requirements of claim 191. In this regard, the broadest
reasonable interpretation of claim 191 is that the recessed portion is thinner
and more flexible than any other part of the seal-forming structure. In other
words, in claim 191, “a remainder of the seal-forming structure” means
everything in the seal-forming structure other than the recessed portion. The
Examiner’s rejection is not that it would have been obvious for a person of
ordinary skill in the art to modify this structure to be thinner and more
flexible than a remainder of the seal-forming structure. See Final Act. 13.
Although Allan explicitly describes its recessed portion merely as
“preferably thin and supple” (Allan ¶ 421), the Examiner’s rejection relies
on a finding that this structure is thinner than any other part of the seal-
forming structure (or that Allan’s structure inherently would meet this
requirement when modified as set forth in the rejection of claim 188). As a
preponderance of the evidence does not support this finding of fact, we do
not sustain the Examiner’s rejection of claim 191.
Claim 219
The Examiner finds that Barnett discloses that “each of the protruding
end support sections has a surface that faces a corresponding one of the
protruding ends, the surface being curved,” as recited in claim 219, because
“[portion] 68 is part of 32, [and] with enough force, [portion] 68 will
conform to 124 and contact 124.” Final Act. 16 (citing Barnett 5:3–10, Fig.
1E).
Appellant argues that the Examiner erred in finding Barnett discloses
the curved shape recited in claim 219 because the finding that the shape
existing after deformation would be the recited curve is merely conjecture.
See Appeal Br. 21–22.
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In response, the Examiner reiterates, “with enough force being applied
to the user, it is obvious that the reinforcement area 124 and/or 126 of
Barnett would come into contact with the inner surface of the protruding
ends of Allan.” Ans. 24. Additionally, the Examiner explains, “Barnett is
only cited in [c]laim 219 simply as a way to show how Barnett’s cushion
structure is analogous to Allan’s cushion structure and thus, the behavior of
the reinforcement area in Barnett would behave similarly if incorporated into
Allan.” Id.
Appellant has the better position because claim 219 recites a specific
shape, and the finding that deformation would cause portion 68 of Barnett,
as incorporated into Allan’s mask, to satisfy the specific shape requirement
in claim 219 is not supported by sufficient evidence or technical reasoning.
In this regard, claim 219 does not recite that the protruding end support
sections are capable of deformation resulting in a curved shape. We do not
sustain the rejection of claim 219.
Claim 220
Claims 220 depends from claim 188 and recites, “a cross-sectional
area of each of the protruding end support sections decreases as each of the
protruding end support sections extends away from the interior surface of the
seal-forming structure.” Appeal Br. 33 (Claims App.).
The Examiner finds the cross-section of Barnett’s protrusion portion
124 decreases as this structure extends from portion 46. Final Act. 16 (citing
Barnett 6:37–41, Fig. 1E). The Examiner also finds Worboys discloses this
feature in Figure 12. Id.
Appellant argues the Examiner’s findings of fact are in error because,
in Barnett, “Figs. 1A, 2A, 3B, and 6 are cross-sectional views of the seal
member 32 showing that the protrusion portions 124 have a uniform
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thickness throughout, and therefore the protrusion portions 124 do not have a
cross-sectional area that decreases away from the interior surface of the seal
member 32.” Appeal Br. 22–23 (emphasis added). Appellant argues, in
relation to Worboys, “the rejection cites to the finger portions 217 that are
near the nose bridge region, which would not be obvious to apply to the
other references to teach the claimed subject matter.” Id. at 23.
Appellant’s arguments do not apprise us of Examiner error. With
respect to Barnett, Figures 1E and 2A support, by a preponderance of the
evidence, that protrusion portions 124 change in cross-sectional area as they
extend from portion 46. That the thickness of protrusion portions 124 may
be constant does not mean that the entire cross-section is constant. With
respect to Worboys, Appellant’s argument is merely a reiteration of one of
the unpersuasive arguments made in support of claim 188 and again fails to
identify Examiner error. We sustain the rejection of claim 220.
Claim 221
Claim 221 depends from claim 188 and recites, in part, “the seal-
forming structure further comprises a pair of thickened sections extending
from the interior surface of the seal-forming structure . . . the thickened
sections being configured to provide additional support for the seal-forming
structure when the seal-forming structure is in sealing engagement with the
nose and the face of the patient.” Appeal Br. 33 (Claims App.).
The Examiner finds that paragraphs 392, 442, and 444 of Allan
disclose that portion 413 may include “thickened” sections, which provide
additional support for the seal-forming structure. Final Act. 17.
Appellant first argues “[portion 413] cannot be ‘proximal to the
patient’s corresponding nasolabial sulcus when the seal-forming structure
engages the patient’s face’ because Allan does not teach any part of its seal
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301 engaging the patient at this region.” Appeal Br. 24. This argument is
without merit, as discussed above with respect to claim 188. See Allan Fig.
3A.
Appellant next argues
the outward face 413 of Allan is described as being part of a
lateral or side portion 411, which is the same location that Barnett
teaches for the protrusion portions 124 that were cited for the
‘protruding end support sections.’ Thus, it appears that this
combination of references might teach replacing the outward
face 413 of Allan with the protrusion portions 124 of Barnett, or
vice versa, but this combination cannot teach a mask having both
the outward face 413 of Allan (cited for the “protruding end
support sections”) and the protrusion portions 124 of Barnett
(cited for the “thickened sections”).
Appeal Br. 24–25 (emphasis added).
In response, the Examiner states, “the reinforcement area of Barnett is
not replacing or removing the outward face 413 of Allan, rather, the
reinforcement area of Barnett is being added within the inner surfaces of the
cushion of Allan at the location of 413.” Ans. 24.
In reply, Appellant argues:
Barnett describes at col. 5, 11. 48-58 that the protrusions 124,
126 are part of the reinforcement area 120, which the Examiner
cites for the “thickened sections.” Claim 221 clearly recites that
the “thickened sections” are distinct structures from the
“protruding end support sections,” and therefore the Examiner
cannot rely on the same structure in Barnett to teach two
different structures in the claim.
Reply Br. 10–11 (emphasis added).
The Examiner has the better position because, contrary to Appellant’s
assertions, the rejection of claim 221 does not rely on the same structure in
Barnett to teach two different structures required by the claim. Rather, the
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Examiner finds Allan, in its unmodified state, already includes thickened
sections. See Final Act. 17. This finding is supported by a preponderance of
the evidence. See Allan ¶¶ 392, 442, 444. Appellant does not adequately
explain why the existing structure in Allan, relied upon by the Examiner,
does not (or, after the proposed modification, would not) satisfy the
requirements of claim 221. Accordingly, Appellant’s argument does not
address the rejection as stated by the Examiner, and we sustain the rejection
of claim 221.
Claim 222
Claim 222 depends from claim 221 and recites, “the thickened
sections are located on the interior surface of the seal-forming structure such
that when the seal-forming structure engages the patient’s nose and face, the
thickened sections are, at least partially, urged against corresponding ones of
the protruding end support sections.” Appeal Br. 33 (Claims App.).
The Examiner finds “the combination of Allan, Barnett, and Worboys
allows 413 of Allan to be urged, at least partially, against 124 of Barnett and
217 of Worboys when the seal forming structure engages with patient’s nose
and face; Barnett: 124 provides support to 32.” Final Act. 17 (citing Barnett
5:58–61).
The Examiner further finds that in Worboys, “when [a] patient presses
against outer membrane, [a] gap between two membranes reduces or does
not exist.” Final Act. 18 (citing Worboys ¶ 24).
Appellant argues,
[s]imilar to what is explained above [with respect to claim 221],
it appears that this combination of references might teach
replacing the outward face 413 of Allan with the protrusion
portions 124 or Barnett, or vice versa, but this combination
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cannot teach that structures located in the same place in two
different masks could be combined to contact one another.
Appeal Br. 25.
Along the same lines as the response above regarding claim 220, the
Examiner states, “the reinforcement area of Barnett is not replacing or
removing the outward face 413 of Allan, rather, the reinforcement area of
Barnett is being added within the inner surfaces of the cushion of Allan at
the location of 413.” Appeal Br. 24–25.
In reply, Appellant contends “[s]ince claim 222 depends from claim
221 and in both claims the ‘thickened sections’ are distinct structures from
the ‘protruding end support sections,’ the Examiner cannot rely on the same
structure in Barnett to teach two different structures in the claim.” Reply
Br. 11 (emphasis added). Additionally, Appellant asserts, “it is not possible
for parts of the reinforcement area 120 (protrusions 124, 126) to contact
itself. Therefore, any further reliance on Barnett's reinforcement area 120
does not cure the deficiency.” Id.
We do not understand the Examiner’s rejection of claim 222 to rely on
a single structure taught by Barnett to satisfy the requirement for two distinct
structures required by the claim. As discussed above regarding the rejection
of claim 221, the Examiner finds Allan includes thickened sections, and
merely proposes to add reinforcements as taught by Barnett and Worboys.
Thus, Appellant’s arguments do not address the Examiner’s use of the
teachings of Allan, Barnett, and Worboys. We sustain the rejection of claim
222.
Claims 225 and 226
Appellant quotes portions of claim 225, including the recitation that
the free end is “U-shaped,” and asserts, “[t]he combination of Allan, Barnett,
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Worboys, and Veliss fails to teach this feature.” Appeal Br. 26. Appellant
also states, “[s]imilar features are recited by claims 221 and 226,
respectively, which are argued above and below. Those arguments are
similarly applicable to the rejection of claim 225.” Id.
Claim 226 recites, “each of the protruding end support sections has a
cross-sectional profile, as the protruding end support section extends from
the interior surface of the seal-forming structure to a free end, that is U-
shaped.” Appeal Br. 35 (Claims App.) (emphasis added).
The Examiner finds finger portions 217 of Worboys satisfy the
requirement in claim 226 for a U-shape. Final Act. 21 (citing Worboys Fig.
11).
With regard to claim 226, Appellant asserts that the Examiner erred in
finding Worboys discloses the recited “U-shape” because the claim requires
this shape to be at the free end of the protruding end support section. In
contrast, Appellant contends, finger portions 217 of Worboys have a U-
shape only in profile, not at a free end. See Appeal Br. 26–27.
In response, the Examiner disagrees with Appellant’s claim
interpretation, stating, “Appellant has failed to provide the specific
orientation of this cross-section since the claim limitation simply states that
the ‘protruding end support sections has a cross-sectional profile.’” Ans. 25.
Appellant has the better position because claims 225 and 226
explicitly require the protruding end support section to have a free end that is
U-shaped, not merely that a U-shape exists somewhere in the protruding end
support section. Thus, the profile of finger portions 217 depicted in Figure
11 of Worboys fails to satisfy the requirement in claims 225 and 226, and we
do not sustain the rejection of these claims.
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Appellant does not make arguments for the patentability of dependent
claims 190, 194–196, 208, 212–218, 224, and 228 aside from those
discussed above regarding independent claim 188. See Appeal Br. 7–27.
Accordingly, for the same reasons, we sustain the rejection of claims 190,
194–196, 208, 212–218, 224, and 228.

Rejection II—Allan, Barnett, Worboys, Veliss, and Nold
Claim 227 recites “wherein each of the protruding end support
sections has a cross-sectional profile, as the protruding end support section
extends from the interior surface of the seal-forming structure to a free end,
that is circular, elliptical, or oval-shaped.” Appeal Br. 35 (Claims App.).
The Examiner finds “[Nold is] reasonably pertinent to the problem of
promoting air circulation and reducing decubitus, [and] teaches a cushioning
layer with a plurality of resilient, shaped protrusions (Abstract) including
protrusions (11, Fig 2; protrusions, Figs 5–8) with a free end (the top portion
of 11, Figs 2 and Figs 5–8) that is circular, elliptical, or oval- shaped.” Final
Act. 22. The Examiner reasons “it would have been obvious to one of
ordinary skill in the art before the effective filing date of the claimed
invention to modify the cross-sectional profile of the free ends of Allan-
Barnett--Worboys--Veliss combination to be circular, elliptical, or oval-
shaped, as taught by Nold, to have sufficient dimensions and substance so
that at all times air can circulate between adjacent protrusions.” Id. at 22–
23 (citing Nold 2:63–68, 3:1–7, 4:60–65)(emphasis added). The Examiner
also finds, “[h]aving various shapes of protrusions adds additional comfort
the patient who might be wearing these cushions for long periods of time
and also allows for customization of the cushion for various kinds of
patients.” Id. at 23.
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Appellant contends “[t]he rejection’s purported problems of
promoting air circulation and reducing decubitus solved by Nold are not
relevant to the supporting function of the ‘protruding end support sections.’”
Appeal Br. 28. Appellant further contends “the ‘protruding end support
sections’ are intended to support another structure (the ‘protruding ends’)
when deformed by contact with the patient, but the protrusions 11
themselves of Nold are described as being deformed by direct contact with
the user.” Id. at 29–30.
In response, the Examiner states, “[b]y modifying the protrusions of
the combination to be of different cross-sectional shapes, the device would
be able to provide a high level of comfort while reducing the possibility of
the occurrence of decubitus.” Ans. 26 (citing Nold 4:60–65). Appellant
replies that “the cited structures of Nold directly contact the patient to
promote air circulation and reduce decubitus, which would not be pertinent
here because the claim recites that the protruding end support sections
contact and support another part of the seal-forming structure and do not
contact the patient directly.” Reply Br. 12.
Appellant has the better position. The benefit that the Examiner finds
would occur when further modifying the combination of Allan, Barnett,
Worboys, Veliss in view of Nold relies on contact between the patient’s
body and the recited free ends that the Examiner does not establish will
occur. Accordingly, the Examiner’s reasoning for the proposed modification
is not supported by rational underpinnings. We do not sustain the rejection
of claim 227 as unpatentable over Allan, Barnett, Worboys, Veliss, and
Nold.

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CONCLUSION
The Examiner’s decision to reject claims 188, 190, 191, 194–196,
208, 212–222, and 224–228 is affirmed in part.

More specifically,
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
188, 190,
191, 194–
196, 208,
212–222,
224–226,
228
103 Allan, Barnett,
Worboys, Veliss,
188, 190,
194–196,
208, 212–
218, 220–
222, 224,
228
191, 219,
225, 226
227 103 Allan, Barnett,
Worboys, Veliss,
Nold
227
Overall
Outcome
188, 190,
194–196,
208, 212–
218, 220–
222, 224,
228
191, 219,
225, 226,
227

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).

AFFIRMED IN PART