ResMed Pty Ltd

Patent Trials and Appeals Board

Apr 21, 2021

2020005250 (P.T.A.B. Apr. 21, 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.
16/182,300 11/06/2018 Christopher Scott SKIPPER 47570-0003001 9536
26191 7590 04/21/2021
FISH & RICHARDSON P.C. (TC)
PO BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
STUART, COLIN W
ART UNIT PAPER NUMBER
3785
NOTIFICATION DATE DELIVERY MODE
04/21/2021 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER SCOTT SKIPPER, ALISON OLDENBURG,
KARTHIKEYAN SELVARAJAN, STEVEN JOHN LUBKE,
GREGORY SCOTT SMART, RUPERT CHRISTIAN SCHEINER,
JAMES WILLIAM VANDYKE, MICHAEL JOHN REID,
TIMOTHY SHAWN NELSON, and PHILIP RODNEY KWOK
Appeal 2020-005250
Application 16/182,300
Technology Center 3700
Before MICHAEL L. HOELTER, BENJAMIN D. M. WOOD, and
JILL D. HILL, Administrative Patent Judges.
WOOD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claim 60. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42.
Appellant identifies the real party in interest as ResMed Pty Ltd. Appeal
Br. 1.
Appeal 2020-005250
Application 16/182,300

2
CLAIMED SUBJECT MATTER
Claim 60,2 reproduced below, is the sole claim on appeal:
60. A mask system for delivery of respiratory therapy to a
patient, the mask system comprising:
a sealing assembly that defines a breathing chamber
configured to contemporaneously provide air to both a nose of
the patient and a mouth of the patient, the sealing assembly
shaped to seat below a nose bridge region of the patient and
avoid the nose bridge region of the patient when providing air
to both the nose and the mouth, the sealing assembly including:
(i) a single nasal cushion structured to (a) seal under both
nostrils of the patient through contact with an underside of the
nose of the patient and (b) provide air from the breathing
chamber to the nose of the patient without the single nasal
cushion being inserted into the nostrils of the patient, and (ii) a
mouth cushion structured to (a) seal around the mouth of the
patient through contact with a portion of a face of the patient
between a lower lip of the patient and a chin of the patient, and
(b) provide air from the breathing chamber to the mouth of the
patient, the mouth cushion and the single nasal cushion formed
from silicone as a one-piece component, wherein the mouth
cushion comprises:
a face contacting membrane with an inner edge that
defines an aperture to receive the mouth of the patient, and an
undercushion that extends away from a sidewall of the mouth
cushion and into the breathing chamber defined by the sealing
assembly; and
a headgear assembly structured to maintain the sealing
assembly on the face of the patient, wherein:
the sealing assembly includes a frame that is structured to
attach to the one-piece component from which the nasal
cushion and the mouth cushion are formed;

2 After the August 6, 2019 Final Action, Appellant cancelled all of the
pending claims except for claim 60, and amended claim 60 to rewrite it in
independent form and to incorporate the language of previously pending
independent claim 56 and dependent claim 59. Appeal Br. 5; see Advisory
Act. (Oct. 17, 2019), 1 (entering Amendment).
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the frame includes a first headgear connection element on
a first side of the frame;
the frame includes a second headgear connection element
on a second side of the frame that opposes the first side of the
frame;
the headgear assembly includes a first headgear strap that
is structured to connect with the first headgear connection
element of the frame; and
the headgear assembly includes a second headgear strap
that is structured to connect with the second headgear
connection element of the frame.
REFERENCES
Name Reference Date
Davidson US 7,942,148 B2 May 17, 2011
Wilkie WO 01/97892 A1 Dec. 27, 2001
REJECTION3
Claim Rejected 35 U.S.C. § Reference(s)/Basis
60 103(a) Davidson, Wilkie
OPINION
The Examiner finds that Davidson teaches the mask system
substantially as recited in claim 60, including a sealing assembly that defines
a breathing chamber configured to contemporaneously provide air to both a
nose of the patient and a mouth of the patient, the sealing assembly shaped
to seat below, and avoid, a nose bridge region of the patient, and the sealing
assembly including a single nasal cushion and a mouth cushion. Final Act.
11 (citing Davidson, abstract, Figs. 5a–5d, 7a, 7c, 13–18). The Examiner
further finds, however, that Davidson “is silent as to the single nasal cushion

3 A number of rejections were rendered moot by Appellant’s cancellation of
claims 1–59, and an additional rejection under 35 U.S.C. § 103(a) was
withdrawn by the Examiner. Ans. 3.
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sealing without being inserted into the nostrils of the patient.” Id. at 11–12
(citing Davidson, 7:2–5, 12–18, 9:14–26, Figs. 5a–5d, 7a, 13–18, 25b). The
Examiner relies on Wilkie for the missing limitation, finding that “Wilkie
teaches a similar nasal pillow type cushion which seals under both nostrils
and is not inserted into the nostrils of the patient.” Id. at 12 (citing Wilkie,
11:14–23, Figs. 7–11). The Examiner determines that it would have been
obvious to one of ordinary skill in the art “to modify . . . Davidson[’s]
device’s nasal cushion to be the pillow-type cushion, as taught by Wilkie, in
order to reduce resistance to air flow to the nares.” Id. (citing Wilkie,
11:14–15); see also Ans. 5 (citing Wilkie, 11:19–22 to support the
proposition that a skilled artisan would recognize the benefit of using the
“less-invasive” nasal cushion rather than nasal prongs).
Appellant does not dispute that the combination of Davidson and
Wilkie teaches all of the limitations of claim 60. Nor does Appellant dispute
that using Wilkie’s pillow-type cushion in place of Davidson’s nasal cushion
would beneficially reduce resistance to air flow to the nares. Instead,
Appellant disputes the Examiner’s finding that one of ordinary skill in the
art would have combined Davidson and Wilkie in the manner proposed.
Appeal Br. 7. According to Appellant, “Wilkie only discloses its single-
opening nasal cushion in a ‘nasal mask’ and does not indicate or suggest that
its single-opening nasal cushion be implemented in a mask surrounding a
patient’s mouth.” Id. at 9 (citing Wilkie, 4:31, Figs. 1–22). Appellant also
asserts that “Wilkie plainly teaches that this type of single-opening nasal
cushion should be used with a special headgear configuration in which the
headgear straps contact the patient’s cheeks to anchor the mask to the face.”
Id. Appellant specifically relies on Wilkie’s description of a mask with a
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harness having “a distributed anchoring means” that contacts the wearing
patient’s cheeks. Id. (citing 10:10–17). Appellant contends that “Wilkie
indicates that its ‘distributed anchoring means’ is critical to Wilkie’s
implementation of a nasal mask that does not include nasal prongs that
intrude into a patient’s nostrils.” Appeal Br. 10. In this regard, Appellant
contends that “Wilkie explains that other types of masks in which the nasal
elements extend into a patient’s nostrils ‘effectively anchor the mask in
place,’” and “Wilkie’s ‘distributed anchoring means’ provides an alternative
anchoring mechanism that does not require the anchoring otherwise
provided by nasal elements extending into the patient’s nostrils.” Id. (citing
Wilkie, 4:8–16, 5:13–25). Thus, according to Appellant, “Wilkie indicates
that a mask either needs nasal prongs or Wilkie’s ‘distributed anchoring
means’ to adequately anchor that mask to a patient’s face.” Id. at 11.
Appellant also expresses the view that Wilkie “disparages masks in
which headgear straps ‘float’ away from a patient’s face (the configuration
implemented by Davidson).” Id. at 11 (citing Wilkie, 3:9–15); see id. at 12
(asserting that “Davidson’s unmodified mask includes headgear straps that
connect to ‘rigid frame 38’ using ‘clips 60,’ therefore employing the
‘floating’ strap configuration that Wilkie disparages” (citing Davidson,
6:64–7:26)). Appellant thus asserts that “Wilkie plainly states its single-
opening nasal cushion should be used with Wilkie’s distributed anchoring
means, not the floating strap found in Davidson.” Id. at 12.
The Examiner responds that Appellant’s arguments focus “on the
forces required to anchor the nasal mask of Wilkie alone to a user whereas
the proposed combination of Davidson in view of Wilkie involves anchoring
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the mouth and nasal cushion of Davidson.” Ans. 5. According to the
Examiner:
While the headgear system discussed in Wilkie with reference
to Fig. 7–11 would provide the required forces to properly
anchor the mask to the user’s face in Wilkie alone, the forces
required to anchor the proposed Davidson as modified by
Wilkie device to the user’s face are different than that of Wilkie
alone. The Davidson reference does not rely only on an anchor
point being between the nasal cushion and nose of the user, but
as can be seen in Fig. 5a–d, 6a–b, Fig. 4b–c, and 68 of
Davidson the mask contacts the user at the nose and also around
the user’s mouth, thus providing more anchor points or contact
points with the user and would thus involve different forces
provided by the headgear system to anchor the mask to the
user’s face.
Id.
We are not persuaded of Examiner error. As an initial matter, we
address the implication of Appellant’s argument that Wilkie teaches that
different headgear is needed for a mask using a single-opening nasal cushion
rather than nasal prongs. See, e.g., Appeal Br. 11 (“Wilkie indicates that a
mask either needs nasal prongs or Wilkie’s ‘distributed anchoring means’ to
adequately anchor that mask to a patient’s face.”). This implication is not
supported by the record. Wilkie discusses the mask having “distributed
anchoring means” in the context of the mask depicted in Figures 1–6 of
Wilkie, which uses nasal prongs 26. See Wilkie, 9:7–10:9. Thus, Wilkie
does not teach that different headgear is needed for a nasal cushion than is
used for nasal prongs.
Moreover, as the Examiner finds, Davidson’s mask (and thus the
mask resulting from the proposed combination of Davidson and Wilkie)
contacts a wearer’s face at both the nose and mouth (see, e.g., Davidson,
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6:64–7:26, Figs. 5a–5d), whereas Wilkie’s mask contacts only the wearer’s
nose. Appellant has not adequately explained why one of ordinary skill in
the art would have considered Wilkie’s admonition –– to use its “distributed
anchoring means” –– relevant to the mask resulting from the proposed
combination, which contacts both a wearer’s nose and mouth. For similar
reasons, we are also not persuaded that Wilkie’s “disparage[ment]” of
“masks in which headgear straps ‘float’ away from a patient’s face” (Appeal
Br. 11) weighs strongly in favor of Appellant’s position, because the
remarks on which Appellant relies are not specifically directed at
Davidson’s mask or a mask that contacts both a wearer’s nose and mouth.
In the Reply Brief, Appellant asserts that “a POSITA would have
recognized that modifying Davidson’s mask to include Wilkie’s type of
nasal cushion required one to discard the ‘advantageous’ solution of the
‘distributed anchoring means’ in lieu of the ‘floating’ strap arrangement
disparaged by Wilkie.” Reply Br. 4. This argument assumes the bodily
incorporation of Davidson and Wilkie, which is legal error. “The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference; . . . [r]ather,
the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d 413,
425 (CCPA 1981). A practitioner is not “compelled to adopt every single
aspect of [a reference’s] teaching without the exercise of independent
judgment.” Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed.
Cir. 1984). As the Supreme Court recognized in KSR Int'l Co. v. Teleflex
Inc., “[a] person of ordinary skill is also a person of ordinary creativity, not
an automaton.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
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In sum, having considered Appellant’s arguments in the Appeal Brief
and the Reply Brief, we are not persuaded of Examiner error. Accordingly,
we sustain the Examiner’s rejection of claim 60 as unpatentable over
Davidson and Wilkie.
CONCLUSION
The Examiner’s rejection is affirmed.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
60 Davidson, Wilkie 60

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