BERTHON-JONES, Michael et al.

Patent Trials and Appeals Board

Jun 30, 2020

2019001714 (P.T.A.B. Jun. 30, 2020)

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.
14/471,525 08/28/2014 Michael BERTHON-JONES BKK-4398-1500 3283
23117 7590 06/30/2020
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
06/30/2020 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 MICHAEL BERTHON-JONES,
MICHAEL KASSIPILLAI GUNARATNAM, RICHARD SOKOLOV,
ROBIN GARTH HITCHCOCK, DAVID JOHN BASSIN,
GORDON JOSEPH MALOUF, PETER EDWARD BATEMAN, and
PHILIP RODNEY KWOK

Appeal 2019-001714
Application 14/471,525
Technology Center 3700
Before KEVIN F. TURNER, BRETT C. MARTIN, and JILL D. HILL,
Administrative Patent Judges.
HILL, 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 1–21. We have jurisdiction under
35 U.S.C. § 6(b).

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as ResMed Limited.
Appeal Br. 3.
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We AFFIRM IN PART.
BACKGROUND
Claims 1, 9, and 15 are independent. Claim 1, reproduced below,
illustrates the claimed subject matter:
1. A patient interface assembly for non-invasive positive
pressure ventilation of a patient by application of breathable gas
at positive pressure to the airway of the patient wearing the
patient interface assembly, the patient interface assembly
comprising:
a patient interface frame;
a patient interface body assembly coupled to the patient
interface frame; and
headgear constructed and arranged to be connected to the
patient interface frame, the headgear including a controllable
active tensioning element in force-transmitting relation
therewith, the active tensioning element being configured to
expand or contract when an electric current is applied to the
active tensioning element to automatically adjust headgear
tension while the patient interface assembly is engaged with the
face of the patient.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Bertheau 5,623,923 Apr. 29, 1997
Steckmann US 2002/0061692 A1 May 23, 2002
REJECTION
I. Claims 1–20 stand rejected under 35 U.S.C. § 112(a) or 35
U.S.C. § 112 (pre-AIA), first paragraph. Final Act. 2.
II. Claims 1–3 and 5–21 stand rejected under 35 U.S.C. § 103 as
unpatentable over Bertheau and Steckmann. Final Act. 5.
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ANALYSIS
Rejection I – Written Description – Claims 1–20
The Examiner determines that it is unclear from Appellant’s
disclosure (1) how the claimed active tensioning element would be
implemented in the current invention, (2) how the claimed active tensioning
element would connect and interact with the other structure of the device
when the only active tensioning element described in detail is an occipital
pneumatic pillow that inflates and deflates by sensing mask pressure, and (3)
where the electric current is supplied from and where it interacts or is
connected with the active tensioning element or the rest of the mask
structure. Final Act. 3–4.
Appellant argues that the Specification discloses headgear with
multiple tension adjusters, for example a pneumatic active tensioning
element, and a rigid threaded arm 450 with a movable nut 468 that adjusts
tension in the headgear. Appeal Br. 8 (citing Spec. ¶¶ 81, 139, 140).
Appellant further argues that the Specification discloses achieving
“‘variations in strap tension/displacement . . . by other mechanisms,
including electrical and mechanical systems,’” that include shape memory
allow wires that contract when electrical current is applied. Id. (citing Spec.
¶¶ 82, 145). Appellant contends that “it is well known that shape memory
alloys extend from their contracted state when electric current is removed
from the alloy.” Id. (citation omitted). Appellant thus appears to rely on the
knowledge of a skilled artisan to “fill in the blanks” of how and where the
other tensioning mechanisms are implemented.
According to Appellant, the written description requirement is not a
requirement that a skilled artisan “‘be able to construct the patentee’s device
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from the teachings of the disclosure.... Rather, it is a question of whether the
application necessarily discloses that particular device.’” Appeal Br. 9
(citing PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299 (Fed. Cir.,
2008)). Appellant correctly asserts that the Examiner acknowledges that
paragraphs 82 and 145 of the Specification disclose using memory alloy
wire as an active tensioning element in a mask assembly. Id. (see Final Act.
3, 14). Appellant contends that the “how to implement” issues raised by the
Examiner “relate to the manner and process of constructing and using the
invention,” which is a question of enablement rather than written
description. Id. Appellant concludes that sufficient written description
exists within the Specification, and “the Examiner cannot show insufficient
written description by arguing lack of enablement.” Id. Appellant further
argues that the Examiner has not established lack of enablement, because the
Wands factors have not been addressed. Id. at 10.
Appellant has the better argument. An objective standard for
determining compliance with the written description requirement is whether
“the description clearly allow persons of ordinary skill in the art to recognize
that [the inventor(s)] invented what is claimed.” In re Gosteli, 872 F.2d
1008, 1012 (Fed. Cir. 1989). The Examiner acknowledges that paragraphs
82 and 145 of Appellant’s Specification disclose using electrical and
mechanical systems, for example using shape memory alloy wire, as an
active tensioning element in a mask assembly. See Final Act. 3, 14
(“Paragraph 82 recites that the raviolus 145 can be replaced by electrical and
mechanical means and paragraph 145 recites that shape memory alloy wires
that contract when electric current is applied may be used as active
tensioning elements”). The Examiner does not appear to consider the
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knowledge of a skilled artisan in setting forth the written description
rejection, though such knowledge must be considered. Having considered
Appellant’s disclosure in its entirety, we agree with Appellant that a skilled
artisan would understand that Appellant invented the claimed “active
tensioning element being configured to expand or contract when an electric
current is applied to the active tensioning element to automatically adjust
headgear tension.” Although Appellant’s Specification does not set forth the
particulars of implementing other tensioning mechanisms including the
shape memory alloy wire, the Examiner’s issue with the missing “how” and
“where” of implementing electrical current tensioning is more apt for
consideration under the enablement requirement.
Regarding enablement, the claimed invention must be enabled “so that
any person skilled in the art can make and use the invention without undue
experimentation.” See In re Wands, 858 F.2d at 737, (Fed. Cir. 1988)
(setting forth 8 factors for consideration of whether undue experimentation
is required). Because the Examiner has not provided an analysis of whether
undue experimentation is required, we do not consider whether the claims
satisfy the enablement requirement.
For the reasons explained above, the written description rejection is
not sustained.
Rejection II – Obviousness – Claims 1–3 and 5–21
Regarding claim 1, the Examiner finds that Bertheau discloses the
claimed invention, except for the controllable active tensioning element
being “configured to expand or contract when an electric current is applied
to the active tensioning element.” Final Act. 5–6. The Examiner finds that
Steckmann, however, discloses a controllable active tensioning element in
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its “compression sleeve including tubular areas 14-1 th[r]ough 14-4 and
memory wires 6-i that are heated in order to contract by means of a control
device 16 (Pages 3-4, para 47-48).” Id. at 6. The Examiner concludes that it
would have been obvious to modify Bertheau’s active tensioning element
valve with Steckmann’s “shape memory alloy wires and a control device” to
provide “an alternate extendible mechanism having the predictable results of
tension adjustment based on Bertheau’s sensor 84.” Id. The Examiner
considers exchanging shape memory alloy wires for pneumatics to be a
simple substitution of one known element for another to obtain predictable
results. Id.; MPEP § 2143; KSR Intern. Co. v. Teleflex Inc., 550 U.S. 398,
401 (2007).
Appellant argues claims 1–3 and 5–21 as a group. Appeal Br. 6–10.
We select claim 1 as representative. Claims 2, 3, and 5–21 stand or fall with
claim 1.
Appellant argues that the Examiner’s “simple substitution” reasoning
lacks a rational basis, because the proposed modification of Bertheau
“requires a substantial reconstruction and redesign” of Bertheau’s elements,
that would “change the core of Bertheau’s invention.” Appeal Br. 14.
According to Appellant, Bertheau is directed to breathing masks with
inflatable harnesses driven by pneumatic systems, and more particularly to
improving the pneumatic systems. Id. at 14–15. Appellant contends that
replacing Bertheau’s entire pneumatic system “with a memory wire system .
. . is not an alternate way of achieving the solution of Bertheau because the
elimination of the pneumatic system and the removal of the inflatable
element from the harness eliminates the very purpose of Bertheau’s
invention.” Id. at 15. Appellant further argues that “the difference between
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Bertheau and Appellants’ claimed ‘patient interface assembly’ is
fundamental and more than the mere substitution of some components with
other components.” Id.
The Examiner responds that both Bertheau and Steckmann use
sensors to alter/adjust tension on a user’s body, with Bertheau using
pneumatics for tension adjustment and Steckmann using shape memory
alloy wires for tension adjustment. Ans. 23. The Examiner contends that it
would have been obvious to modify Bertheau’s valve 86 to replace its
pneumatic adjustment “with a memory wire incorporated into the tubular
harness and electrical connections in communication with the memory wire,
control and sensor,” as disclose by Steckmann “to provide alternate
tensioning structure.” Id. The Examiner further contends that this
replacement of pneumatics with shape memory alloy wires “is a simple
substitution of the tensioning structure in which the valve and pneumatic
connection of Bertheau is replaced with a memory wire and electrical
connection” to provide “pressure on a user’s body.” Id. The Examiner does
not propose removing Bertheau’s entire pneumatic system – just the
tensioning adjustment structure. Id.
The Examiner disagrees that this replacement would eliminate
Bertheau’s principle of operation, because Bertheau’s principle of operation
is defined by the Examiner as “altering the headgear tension based on sensor
readings,” which can be achieved with either pneumatic or shape memory
alloy adjustment. Id.
Appellant replies that replacing Bertheau’s tensioning system with
Steckmann’s tensioning system “would require removing all of the
pneumatic elements included in the connection block 12 and modifying []
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the source of gas so that it only supplies the respiratory mask.” Reply Br. 6–
7. Further, Appellant argues, Bertheau’s straps 16 “with their inner tubes
would also need to be modified or replaced,” and “the algorithm for
increasing and decreasing tension would have to be modified since Bertheau
teaches supplying the medium to reduce tension, while Steckmann teaches
supplying the medium to increase tension.” Id. Appellant contends that this
amounts to “a complete redesign” instead of a simple substitution. Id.
Appellant also argues that the Examiner’s proffered principle of
operation ignores Bertheau’s explicitly-disclosed purpose and solution. Id.
According to Appellant, when a reference explicitly discloses the purpose of
the invention, the Board should limit the principle of operation of the
invention to its contribution to the art. Id. (citing Plas-Pak Industries., Inc.
v. Sulzer Mixpac AG, No. 2013007786, 2014 WL 203101 (P.T.A.B. Jan. 17,
2014) (upheld by the Federal Circuit, see Plas-Pak Industries, Inc. v. Sulzer
Mixpac AG, No. 2014-1447 (Fed. Cir. Jan. 27, 2015) (non-precedential)).
We first note that Appellant’s own Specification does not explain, in
detail, how other disclosed variations in strap tensioning systems, such as
shape memory alloy wires, would be substituted for pneumatics. See Spec.
¶¶ 82, 145. Appellant thus relies, we presume, on the knowledge of a skilled
artisan to supply implementation details. Therefore, it would seem that, at
the time of filing, Appellant believed that a skilled artisan would understand
how to implement the claimed “active tensioning element . . . configured to
expand or contract when an electric current is applied.”
Further, a review of the entirety of Steckmann informs us that
Steckmann considers its sleeve 14 with shape memory wires 6-I to be a
suitable replacement for sleeves that have air chambers applying pressure
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via pneumatics. See Steckmann ¶¶ 5–13. That shape memory alloy wires
are disclosed as being less expensive and cumbersome than pneumatic
systems does not negate Steckmann’s disclosure of the two as known
substitutes that achieve predictable results (i.e., application of controlled
desired pressure in the sleeve). See id.
Still further, the Supreme Court has opined that “[a] person of
ordinary skill in the art is also a person of ordinary creativity, not an
automaton.” KSR, 550 U.S. at 421. The court held that “in many cases a
person of ordinary skill will be able to fit the teachings of multiple patents
together like pieces of a puzzle.” Id. at 420. Appellant has not persuaded us
that a person of ordinary skill could not fit the teachings of Bertheau and
Steckmann together “like pieces of a puzzle” as proposed by the Examiner
to replace Bertheau’s pneumatic tension adjustment with Steckmann’s shape
memory allow tension adjustment system. It is unclear to us why a skilled
artisan could not, likewise, modify the algorithm for increasing and
decreasing tension to accommodate the different actuation requirements of
the alternative systems.
Lastly, the Plas-Pak cases cited by Appellant are non-precedential,
and are fact-specific, rather than dictating generally that an inventor’s
objective should or must be added to the “principle of operation.” No
evidence support’s Appellant’s contention that the Examiner’s determination
regarding the principle of operation is overbroad, and we discern no
overbreadth in the Examiner’s determination.
Appellant also argues that a skilled artisan would not have looked to
Steckmann to modify Bertheau. Appeal Br. 15. According to Appellant,
“Steckmann focuses on supplying sufficient compression to . . . treat
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medical conditions such as swelling, lack of blood flow to the brain, and bed
sores,” and none of these “medical conditions are experienced during the use
of a breathing mask, nor are breathing masks used to treat the above medical
conditions.” Id. (citing Steckmann ¶¶ 2–7). Appellant contends that
breathing mask headgear is “designed to avoid or minimize compression,”
and “compressing a user’s head as in Steckmann would create discomfort
and “even cause harm to the user.” Id. (citing Bertheau 1:15–38). In fact,
Appellant argues, Steckmann’s “intermittent compression” is “the antithesis
of what is desired for a breathing mask harness.” Id. at 15–16.
Appellant acknowledges that “Steckmann discloses using memory
wire to overcome deficiencies of a pneumatic system,” but argues that the
pneumatic system deficiencies identified by Steckmann (e.g., expense of
pneumatics (Steckmann ¶ 5) and being cumbersome) are not relevant to
Bertheau’s breathing mask, because Bertheau would still need its
compressor and pneumatics for oxygen delivered to the breathing mask.
Appeal Br. 16. Thus, Appellant contends, using “Steckmann to modify
Bertheau can only be the result of impermissible hindsight reasoning to
reconstruct Appellants’ claimed invention after the fact.” Id.
The Examiner responds that “[b]oth Bertheau and Steckmann teach
extendable tubular bodies that expand and contract around a user’s body
based on pressure sensors” to achieve a desired pressure/tension, and that it
would have been obvious to “look to Steckmann to teach an alternate
tensioning structure.” Ans. 24. The Examiner notes that “the specific
pressures applied to the user’s head in Bertheau are not altered by the
teachings of Steckmann” in the proposed combination of Bertheau and
Steckmann, such that Steckmann’s undesired pressure levels need not be
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applied in Bertheau just because Steckmann’s shape memory alloy wires are
used. Id. Further, Appellant provides no evidence that Steckmann’s device
requires pressure above those desirable in Bertheau. See id. The Examiner
further responds that Bertheau retaining some pneumatics and thus not
achieving Steckmann’s alluded-to cost saving or convenient sizing is not
persuasive, because the proposed combination need not achieve the same
objective of Steckmann. See id. at 25.
Regarding the use of impermissible hindsight, the Examiner responds
that
any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning. But so long as
it takes into account only knowledge which was within the level
of ordinary skill at the time the claimed invention was made,
and does not include knowledge gleaned only from the
applicant's disclosure, such a reconstruction is proper.
Ans. 26 (citing In re McLaughlin, 443 F.2d 1392 (CCPA 1971)).
In this case, the Examiner argues, both Bertheau and Steckmann teach
extendable tubular bodies that expand and contract around a user’s body
based on pressure sensors and particular desired pressures/tension levels,
and “therefore it would have been obvious to one of ordinary skill in the art
to look to Steckmann to teach an alternate tensioning structure.” See id.
The Examiner further concludes that the proposed combination “would yield
the predictable results of dynamically adjusting tension in an extendable
tubular body on a user’s body based on sensor readings.” Id. at 27
(discussing analogous art).
Appellant replies that the alleged tubular members of Bertheau and
Steckmann interact with the user in unrelated ways, because Bertheau’s
straps 16 expand and contract to support a respiratory mask on a user’s face
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with maximum comfort, whereas Steckmann’s compression device is
intended to compress the user’s leg, knee, arm, etc. to provide medical
treatment or a massage. Reply Br. 9 (citing Steckmann ¶¶ 42, 47).
Appellant contends that the teachings of Bertheau and Steckmann are so
different that one of ordinary skill would not have looked to Steckmann to
modify Bertheau without impermissible hindsight reasoning. Id.
The Examiner has the better argument. It is Steckmann, not
Appellant’s own disclosure, that supports the Examiner’s reasoning.
Steckmann itself discloses that pneumatics are known for providing
intermittent medical compression/tension on a patient (Steckmann ¶¶ 5–6),
but that shape memory alloy wires can be substituted for pneumatics to
provide a cheaper and less cumbersome device with predictable results
(Steckmann ¶¶ 7–16). Given this disclosure in Steckmann, we disagree with
Appellant’s contention that impermissible hindsight must have been
employed by the Examiner. Given Steckmann’s teaching of pneumatics and
shape memory alloy being substitutable intermittent compression/tension
adjustment mechanisms for medical treatment of a patient, we further
disagree that possible differences in desirable treatment timing and pressure
levels mean that a skilled artisan would not have looked to Steckmann to
modify Bertheau.
Appellant lastly argues that Steckmann is non-analogous art, because
it is neither in the inventor’s field of endeavor nor reasonably pertinent to the
particular problem with which the inventor is involved. Appeal Br. 16.
According to Appellant, the inventors’ field of endeavor is “a ‘patient
interface for noninvasive positive pressure ventilation of a patient,’” and
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Steckmann’s field of endeavor is “a fabric that intermittently compresses or
massages a user's body part.” Id. (citing Steckmann ¶ 47).
Further, Appellant contends that the inventors’ “particular problem
relates to dynamically adjusting headgear tension in a patient interface to
compensate for varying gas pressure in the patient interface,” whereas
Steckmann’s particular problem “relates to applying compression to a
person’s body part to treat medical conditions such as swelling, lack of
blood flow to the brain, and bed sores.” Id. at 17 (citing Spec. ¶ 9,
Steckmann ¶¶ 2–7).
The Examiner responds that Appellant’s and Steckmann’s particular
problem should be more broadly defined as “dynamically adjusting tension
in an extendable tubular body on a user’s body based on sensor readings.”
Ans. 27 (citing Steckmann ¶¶ 47–48).
Appellant replies that “Steckmann’s particular problem is much
narrower than just dynamically adjusting tension in an extendible tubular
body based on sensor readings.” Reply Br. 10. Appellant argues that
“adjusting tension in a patient interface headgear (Appellants’ goal) is very
different from Steckmann’s goal,” because “the tension in [Appellant’s]
patient interface is adjusted to minimize or avoid compression,” whereas
Steckmann’s device is design to provide compression. Id. Thus, Appellant
argues, because “Appellants’ goal and Steckmann’s goal are antithetical to
each other, the respective problems solved by Appellants and Steckmann
cannot be the same,” and “characterizing the two particular problems as
being the same is an unreasonably broad redefinition of the particular
problems.” Id.
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Appellant also argues that “the USPTO cannot redefine in an
extremely broad manner the problems addressed by a particular patent
application to simply reject the claims.” Reply Br. 10 (citing In re Klein,
647 F.3d 1343, 1350–1351 (Fed. Cir. 2011)).
While we agree with Appellant that it is improper for an Examiner to
employ an unreasonably broad definition of the particular problem,
Appellant has provided us with no evidence or persuasive reasoning that the
Examiner’s defined problem is unreasonably broad. Initially, we disagree
with Appellant’s contention that “Appellants’ goal and Steckmann’s goal are
antithetical to each other” (Reply Br. 10). Both devices seek to use
tensioning to press against a user’s body. That Steckmann presses for
therapy and Appellant presses to maintain a seal are not antithetical. The
difference, rather, seems to be one of degree that would be understood by a
skilled artisan. Appellant provides no evidence to the contrary.
Under an analogous art analysis, “any need or problem known in the
field of endeavor at the time of the invention and addressed by the patent [or
application at issue] can provide a reason for combining the elements in the
manner claimed.” KSR, 550 U.S. at 420. The Examiner is correct that a
problem addressed by Appellant’s patent can be reasonably defined as
“dynamically adjusting tension in an extendable tubular body on a user’s
body based on sensor readings” (Ans. 27). That there may be additional,
more specific, problems is not dispositive of Examiner error. Given this
definition of the problem, we agree with the Examiner that Steckmann is
pertinent to the problem and that Steckmann is therefore analogous art.
For the reasons explained above, we sustain the rejection of claim 1.
Claims 2, 3, and 5–21 fall with claim 1.
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Conclusion
Because we reverse the written description rejection, claim 4, which
was not subject to the obviousness rejection, is no longer subject to any
rejections.
DECISION SUMMARY
In summary:

Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–20 112 Written Description 1–20
1–3, 5–21 103 Bertheau, Steckmann 1–3, 5–21
Overall
Outcome
1–3, 5–21 4

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