Alex Young et al.

Patent Trials and Appeals BoardMay 3, 2021

2020005814 (P.T.A.B. May. 3, 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. 13/500,628 06/26/2012 Alex Young FPHCR.165NP 8716 165988 7590 05/03/2021 KNOBBE MARTENS OLSON & BEAR LLP FISHER & PAYKEL HEALTHCARE LIMITED (FPHCR) 2040 MAIN STREET FOURTEENTH FLOOR IRVINE, CA 92614 EXAMINER LOUIS, LATOYA M ART UNIT PAPER NUMBER 3785 NOTIFICATION DATE DELIVERY MODE 05/03/2021 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): admin.ip@fphcare.co.nz efiling@knobbe.com jayna.cartee@knobbe.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALEX YOUNG, SILVAN TERENCE BUTLER, JONATHAN MCLEAN THOMSON, ANDREW PAUL MAXWELL SALMON, VENKATA SUBBARAO POTHARAJU, BENJAMIN WILSON CASSE, TAK MING CHUNG, and SERGIU CONSTANTIN FILIP Appeal 2020-005814 Application 13/500,628 Technology Center 3700 Before DANIEL S. SONG, JOSIAH C. COCKS, and LEE L. STEPINA, Administrative Patent Judges. STEPINA, 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 claims 14–18 and 143–156.2 See Non-Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). 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 Fisher & Paykel Healthcare Limited. Appeal Br. 3. 2 Claims 1–13 and 19–142 are cancelled. Appeal Br. 15–16 (Claims App.). Appeal 2020-005814 Application 13/500,628 2 We REVERSE. CLAIMED SUBJECT MATTER The claims are directed to a breathing assistance apparatus that provides humidified gas at positive pressure for the treatment of diseases such as obstructive sleep apnea (OSA), snoring, or chronic obstructive pulmonary disease (COPD) and the like. Spec. 1:5–11. Claim 14, reproduced below with emphasis added, is illustrative of the claimed subject matter: 14. A gases modification unit for use as part of a breathing assistance system configured to provide heated humidified gases through a conduit to a user at a positive pressure for therapeutic purposes, comprising: an outer casing having an inlet vent or inlet port configured to admit gases into said outer casing in use, and an outlet port adapted for connection to said conduit in use, said outlet port configured to convey gases into said conduit, said inlet port and said outlet port connected by a gases path within said outer casing; electronic circuitry enclosed within said outer casing, said electronic circuitry adapted to provide at least one control signal configured to modify at least one property of gases passing along the gases path; and a conduit connection display which is adapted to indicate to a user that said conduit is correctly connected to said outlet port, wherein said gases modification unit is configured to establish that said conduit is correctly connected to said outlet port by receiving at least one signal indicative of air flow through said gases path and air pressure within said gases path, and confirming at least one stored value correlates with (i) the air flow through said gases path and (ii) the air pressure within said gases path. Appeal 2020-005814 Application 13/500,628 3 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Vicenzi US 4,302,640 Nov. 24, 1981 Cinquin US 5,865,171 Feb. 2, 1999 Daniell US 6,050,260 Apr. 18, 2000 Setzer US 2008/0072896 A1 Mar. 27, 2008 Doherty US 2008/0264413 A1 Oct. 30, 2008 McGinnis US 2010/0006098 A1 Jan. 14, 2010 Von Bahr EP 1 127 583 A2 Aug. 29, 2001 REJECTIONS I. Claims 14, 15, 18, 145–147, 149, 150, 153, and 154 are rejected under 35 U.S.C. § 103(a) as unpatentable over Daniell, Von Bahr, and Vicenzi. Non-Final Act. 3. II. Claims 16, 17, 151, and 152 are rejected under 35 U.S.C. § 103(a) as unpatentable over Daniell, Von Bahr, Vicenzi, Doherty, and Cinquin. Non-Final Act. 9. III. Claims 143, 144, and 155 are rejected under 35 U.S.C. § 103(a) as unpatentable over Daniell, Von Bahr, Vicenzi, and McGinnis. Non-Final Act. 10. IV. Claims 148 and 156 are rejected under 35 U.S.C. § 103(a) as unpatentable over Daniell, Von Bahr, Vicenzi, and Setzer. Non-Final Act. 11. Appeal 2020-005814 Application 13/500,628 4 OPINION Rejection I—Daniell, Von Bahr, and Vicenzi Claim 14 The Examiner finds that Daniell teaches a gases modification unit including many of the elements recited by claim 14, but fails to disclose a conduit connection display and the specific configuration recited in the “wherein” clause of the claim. Non-Final Act. 4–5. The Examiner finds “Von Bahr teaches that [its] connection between the outlet and the conduit is monitored for a correct connection . . . , and the status of the conduit connection is reported to the user via a display.” Non- Final Act. 5 (citing Von Bahr ¶¶ 23–24). The Examiner reasons it would have been obvious “to modify the device of Daniell to include the conduit connection monitoring system of Von Bahr in order to insure that the connections of the device are proper, thereby reducing the chance for undetected leaks during use.” Id. As for the configuration recited in the wherein clause of claim 14, the Examiner finds Vicenzi discloses a flow detector used to monitor whether a proper connection exists between a gases port and a conduit in a breathing circuit. Non-Final Act. 5. The Examiner further finds Vicenzi’s flow detector comprises a pressure sensor (43) that monitors the pressure in a chamber (52) located near the conduit connection, and, if the pressure in the chamber 52 is below a desired value, Vicenzi’s sensor will send a signal indicating that there is a disconnection. Id. The Examiner reasons that it would have been obvious to modify Daniell’s system to have a flow detector that monitors for leaks or disconnects (as taught by Vicenzi, 4:9–13) by Appeal 2020-005814 Application 13/500,628 5 correlating a detected gas pressure to an expected gas pressure to provide the benefit of detecting disconnections as well as leaks in the system. Id. at 6. As an alternative rationale, the Examiner determines that such a modification would have been “the simple substitution of one known connection monitoring mechanism (the flow detector based on pressure correlation of Vicenzi) for another known connection monitoring mechanism (the electrical connection monitoring system of Von Bahr) to obtain the predictable result of detecting when a conduit is not properly connected to a gases port within a breathing circuit.” Non-Final Act. 6. Appellant first argues the Examiner relied on impermissible hindsight in proposing to combine Vicenzi with Daniell and Von Bahr because the Examiner’s combination of the Daniell and Von Bahr, without the teachings of Vicenzi, is “a working combination of references.” Appeal Br. 10. Thus, according to Appellant, “the [Examiner’s] combination is based on impermissible hindsight as it ignores a highly relevant teaching of the actual combination of Daniell and Von Bahr, namely using the particular detector explicitly disclosed in Von Bahr.” Id. This argument is without merit because it does not address the Examiner’s stated rationales (detecting disconnections as well as leaks and “simple substitution”). Further, there is no requirement that the device (or combination of devices) being modified by the Examiner’s proposal be dysfunctional as Appellant’s argument appears to imply. Appellant next argues “the Examiner merely states that ‘such a modification provides the added benefit of detecting both disconnects and leaks within the system.’ . . . However, [c]laim 14 does not discuss leaks, as it is revolving around the disconnection of the conduit.” Id. (quoting Non- Appeal 2020-005814 Application 13/500,628 6 Final Act. 6). This argument does not identify Examiner error because the reason set forth by the Examiner in the rejection does not have to be the same as the reason disclosed by Appellant for the arrangement recited in the claim. “In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007); see also In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996). Appellant also argues, “[t]he addition of Vicenzi would clearly change the principle operation of Von Bahr from a proper electrical connection to a complicated analysis not known or discussed in either Daniell or Von Bahr.” Appeal Br. 10 (emphasis added). In support of this argument, Appellant quotes MPEP 2143(VI) as follows “[i]f the proposed modification or combination of the prior art would change the principle operation of the prior art invention being modified, then the teachings of the references are not sufficient to render the claims prima facie obvious.” Id. This argument fails to apprise us of Examiner error because Daniell, not Von Bahr, is the reference being modified by the Examiner’s proposal. Finally, Appellant argues that, although the prior art may use air flow to determine pressure, none of the references compare air flow with a stored value. See Appeal Br. 11–12. In response, the Examiner finds that Vicenzi teaches the use of a flow detector (30) including a pressure sensor (43) to compare a measured pressure value to a preset threshold. Ans. 14–15. The Examiner also finds that in Vicenzi, “flow is detected as a differential pressure.” Id. at 15. From this, the Examiner concludes “a flow sensor in the references is also a pressure sensor.” Id. The Examiner also states, “claim 14 does not Appeal 2020-005814 Application 13/500,628 7 positively recite separate sensors but instead only requires ‘at least one signal indicative of air flow . . . and air pressure.’” Id. We do not sustain the rejection of claim 14 because the statement of the rejection in the Non-Final Office Action and the response in the Examiner’s Answer do not adequately address the requirement that the at least one signal is used for “confirming at least one stored value correlates with” two distinct properties, air flow and air pressure. In this regard, claim 14 separately recites air flow and air pressure as properties (i) and (ii), which are then confirmed as correlating to at least one stored value. In other words, claim 14 requires a configuration of the gases modification unit that makes a direct correlation between air flow and a stored value, and this correlation is not met by Vicenzi’s disclosure of a correlation (comparison) between air pressure and a stored value, even if Vicenzi discloses that air pressure and air flow are related to each other. Accordingly, we do not sustain the Examiner’s rejection of claim 14. Claims 15, 18, 145–147 Each of claims 15, 18, 145–147 depends, directly or indirectly, from claim 14. See Appeal Br. 15–16 (Claims App.). Accordingly, for the reason discussed above regarding the rejection of claim 14, we do not sustain the rejection of these claims as unpatentable over Daniell, Von Bahr, and Vicenzi. Claims 149, 150, 153, and 154 Independent claim 149 recites substantially similar elements to those discussed above regarding the reversal of the rejection of claim 14. See Appeal Br. 17 (Claims App.). In rejecting claim 149, the Examiner relies on the same findings of fact and reasoning discussed above regarding claim 14. Appeal 2020-005814 Application 13/500,628 8 See Non-Final Act. 7–8. Accordingly, for the same reason discussed above regarding claim 14, we do not sustain the rejection of claim 149, and claims 150, 153, and 154 depending therefrom, as unpatentable over Daniell, Von Bahr, and Vicenzi. Rejections II–IV (Daniell, Von Bahr, Vicenzi, Doherty, Cinquin, McGinnis, and Setzer) Claims 16, 17, 143, 144, 148, 151, 152, 155, and 156 Rejections II–IV address claims depending from either of independent claims 14 and 149. See Non-Final Act. 9–12. The Examiner does not use the teachings of Doherty, Cinquin, McGinnis, and Setzer in any manner that would remedy the deficiency discussed above regarding Rejection I. See id. Accordingly, we do not sustain Rejections II–IV. CONCLUSION The Examiner’s decision to reject claims 14–18 and 143–156 is reversed. More specifically, Appeal 2020-005814 Application 13/500,628 9 DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 14, 15, 18, 145–147, 149, 150, 153, 154 103(a) Daniell, Von, Bahr, Vicenzi 14, 15, 18, 145–147, 149, 150, 153, 154 16, 17, 151, 152 103(a) Daniell, Von, Bahr, Vicenzi, Doherty, Cinquin 16, 17, 151, 152 143, 144, 155 103(a) Daniell, Von, Bahr, Vicenzi, McGinnis 143, 144, 155 148, 156 103(a) Daniell, Von, Bahr, Vicenzi, Setzer 148, 156 Overall Outcome 14–18, 143– 156 REVERSED