Ex Parte Aarestad et al

Patent Trial and Appeal Board

May 5, 2017

12993311 (P.T.A.B. May. 5, 2017)

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.
12/993,311 11/18/2010 Jerome Aarestad 5IS-001-US 4939
35938 7590
Acuity Law Group, P.C.
12707 High Bluff Drive
Suite 200
San Diego, CA 92130-2037
05/09/2017 EXAMINER
MATTER, KRISTEN CLARETTE
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
05/09/2017 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):
docketing @ acuitylg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEROME AARESTAD, RICHARD ROSE, JOHN NELSON,
DONNA PALMER, and PAULO RANGEL
Appeal 2015-0004511
Application 12/993,3112
Technology Center 36003
Before KEVIN W. CHERRY, JAMES A. WORTH, and
BRADLEY B. BAYAT, Administrative Patent Judges.
CHERRY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jerome Aarestad et al. (Appellants) seek review under
35 U.S.C. § 134(a) of a Final Rejection of claims 4, 7—10, 12—15, 18—25, 27,
1 Our decision references the Appellants’ Appeal Brief (“Appeal Br.”), filed
June 27, 2014, Appellants’ Reply Brief (“Reply Br.”), filed September 23,
2014, the Final Action (“Final Act.”), mailed May 28, 2013, and the
Examiner’s Answer (“Ans.”), mailed August 1, 2014.
2 Appellants’ Appeal Brief identifies Sotera Wireless, Inc., as the real party
in interest for this appeal (Appeal Br. 4).
3 The record includes a transcript of the oral hearing held March 13, 2017
(“Tr.”).
Appeal 2015-000451
Application 12/993,311
and 28, the only claims pending in the application on appeal. We have
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). Appellants
appeared for oral hearing on March 13, 2017.
We AFFIRM-IN-PART.
Appellants’ claimed invention “relates to a device for creating
improving patency in the respiratory passage” (Spec. 12).
Claim 4, the sole independent claim, is illustrative of the subject
matter on appeal and is reproduced below.
4. An apparatus for alleviating obstruction of an
airway, comprising:
a therapy appliance comprising a peripheral surface
configured to mate with and thereby enclose an external area of
the throat overlying the upper respiratory passage, whereby,
when mated, said therapy appliance provides a space-filled
chamber lying between the inner surface of the therapy appliance
and the throat having an enclosed volume of between 0.5 and 12
in3, wherein said peripheral surface is configured to provide a
pressure along the contact surface with the user's skin of 60 mm
Hg or less at a partial vacuum level within said enclosed volume
of between about 7.6 cm to about 61 cm of water;
an air pump operably connected to the chamber and
configured to maintain a partial vacuum within said chamber;
and
a vacuum control module comprising a microcontroller
operatively coupled to a vacuum or pressure sensor and motor
control circuitry which controls the air pump on/off cycles and/or
speed to maintain the partial vacuum level.
(Appeal Br. 16, Claims App.).
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Application 12/993,311
Rejections4
Claims 4, 7—10, 12, 14, 15, 18—21, 24, 27, and 28 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Atkinson (US 2006/0266369
Al, pub. Nov. 30, 2006), and McNeil (US 4,710,165, iss. Dec. 1, 1987).
Claim 13 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Atkinson, McNeil, and Kitrell (US 4,297,999, iss. Nov. 3,
1981).
Claim 22 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Atkinson, McNeil, and Farrugia (US 2008/0053440 Al,
pub. Mar. 6, 2008).
Claim 23 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Atkinson, McNeil, and Hoffrichter (US 2005/0098176
Al, pub. May 12, 2005).
Claim 25 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Atkinson, McNeil, and White (US 4,739,755, iss. Apr. 26,
1988).
ANALYSIS
Claims 4, 7, 9, 10, 12—15, 18—25, 27, and 28
Appellants contend the Examiner failed to make a prima facie case of
obviousness because there is no motivation to combine Atkinson and
McNeil (Appeal Br. 8—11; Reply Br. 1—3). Appellants argue that “at the
time the present application was filed, it was considered in the art that sleep
is disrupted, not by noise per se, but by variations in noise” (Appeal Br. 8).
4 Claims 8 and 25 were also rejected under 35 U.S.C. § 112 12 as indefinite
(Appeal Br. 6). In view of amendments made by Appellants, the Examiner
has withdrawn this rejection (Ans. 8—9).
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Appellants assert that “[b]ased on this understanding in the art,.. . one
skilled in the art intending to design a system for use during sleep would not
design a system which controls the air pump on/off cycles and/or speed (as
recited in the present claims),. . . [because this would] increase sleep
disruption as compared to a vacuum control system. ...” (id.). Appellants
further assert that such a modification would render the device of Atkinson
unsatisfactory for its intended purpose of use during sleep (id. at 10).
Appellants’ arguments are not persuasive. “A combination of known
elements is likely to be obvious when it yields predictable results.”
Meiresonne v. Google, Inc., 849 F.3d 1379, 1382 (Fed. Cir. 2017) (citing
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007)). As the Examiner
explains, Atkinson teaches a module for controlling the vacuum, but does
not mention using on/off cycles of fan speed to do so (Ans. 3 (citing
Atkinson 130)). McNeil further discloses a pump with a vacuum control
module “comprising a microcontroller operatively coupled to a vacuum or
pressure sensor and motor control circuitry that controls the pump on/off
cycles and/or speed” (id. at 3^4 (citing McNeil, col. 5,1. 57—col. 7,1. 66).
We agree with the Examiner that such a combination “would involve the
mere use of a well-known vacuum control system in a well-known device to
yield predictable results” (id. at 4). We further agree with the Examiner that
the combination of Atkinson’s device with the microcontroller taught in
McNeil would allow control of the vacuum to a desired therapy using a well-
known means (id.).
“Obviousness may be defeated if the prior art indicates that the
invention would not have worked for its intended purpose or otherwise
teaches away from the invention.” Meiresonne, 849 F.3d at 1382 (citing
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Application 12/993,311
DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1326
(Fed. Cir. 2009)). The prior art teaches away “when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken” in the claim. Galderma Labs., L.P. v. Tolmar, Inc.,
737 F.3d 731, 738 (Fed. Cir. 2013). However, a reference that “merely
expresses a general preference for an alternative invention but does not
criticize, discredit, or otherwise discourage investigation into” the claimed
invention does not teach away. Id.
We are not persuaded by Appellants’ assertions that the prior art
teaches away from the combination, or that the device resulting from the
combination would be “inoperative.” Appellants rely on the combined
teachings of three articles as evidence of their argument that a person of
ordinary skill would not combine the teachings of Atkinson and McNeil.
These three articles are: (1) M. Stanchina, et al., The Influence of White
Noise on Sleep in Subjects Exposed to ICUNoise, Sleep Med. 6: 423—28
(2005); (2) Th. Pieters, et al., Acceptance and Long-Term Compliance with
nCPAP in Patients with Obstructive Sleep Apnoea Syndrome, Eur. Respir.
J. 9:939-44 (1996); and (3) R. Cartwright, Sleeping together: A Pilot Study
of the Shared Sleeping on Adherence to CPAP Treatment in Obstructive
Sleep Apnea, J. Clin. Sleep Med. 4 (2): 123—27 (2008). However, none of
these articles, either alone or together amount to a teaching away from the
proposed combination or suggests that the combination would result in an
inoperative device for several reasons.
First, there is nothing in any of these articles that specifically or
persuasively disparages the use of vacuum control by controlling the motor
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Application 12/993,311
speed or pump cycles in a sleep aid device. Pieters and Cartwright address
the effect of arousals on the effectiveness of continuous positive airway
pressure (CPAP) treatment for sleep apnea. Appellants do not identify, nor
have we been able to independently locate, any teachings in these articles
disparaging, criticizing, or discrediting the use of vacuum control in sleep
aid devices using motor speed or pump cycles. Although the Stanchina
article does explain that variations in noise (in Stanchina’s case intensive
care unit noise) lead to more arousals, Stanchina deals only with noise
generally and Appellants do not identify, nor have we been able to
independently locate, any teachings directed at the noise produced by sleep
aid devices in general or sleep aid devices with vacuum control using motor
speed or pump cycles. Appellants fail to provide any evidence that a person
of ordinary skill would link the teachings of Stanchina with levels of noise
variation produced by a sleep aid device. The only link between the articles
offered is Appellants’ attorney argument, which is insufficient. See Icon
Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017)
(“Attorney argument is not evidence.”). Thus, we are not persuaded that the
prior art teaches away from the combination or that a person of ordinary skill
in the art viewing these articles in combination would understand that the
combined teachings of Atkinson and McNeil would result in an inoperative
device.
Second, even if a person of ordinary skill understood that the
variations in noise resulting from the combined teachings of Atkinson and
McNeil could lead to more arousals, we are not persuaded that this amounts
to a teaching away from the combination. “[C]ase law does not require that
a particular combination must be the preferred, or the most desirable,
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combination described in the prior art in order to provide [the] motivation
[or reason] for the current invention.” In re Fulton, 391 F.3d 1195, 1200
(Fed. Cir. 2004). Appellants do not identify any teaching in Pieters and
Cartwright that arousals render the therapy completely ineffective. Thus,
even if Appellants provided the necessary evidentiary link to support their
argument, it would be unpersuasive.
Third, we are also not persuaded that the prior art suggests that the
combination would result in an inoperative device. Indeed, the Examiner
identified two references that taught the benefits of using a pump speed and
pump cycle controller such as taught in McNeil in sleep apnea therapy
devices (see Ans. 10-11 (citing Chu, US 2004/0040563 Al, pub. Mar. 4,
2004; Delache, US 6,644,310 Bl, iss. Nov. 11, 2003)). As the Examiner
properly found, a person of skill in the art would have been motivated to
pursue the desirable control properties of the controller of McNeil, even if it
meant foregoing the noise benefits of the pressure control system of
Atkinson. See In re Urbanski, 809 F.3d 1237, 1243—44 (Fed. Cir. 2016).
Finally, Appellants argue that the Examiner’s finding of obviousness
is driven by improper hindsight (Appeal Br. 11). We do not agree. Instead,
as we detailed above, we find that the Examiner has provided articulated
reasons with rational underpinnings to support the obviousness combination.
Appellants have not shown any of the findings of the Examiner would have
either been outside the knowledge of a person of ordinary skill in the art or
which could only have been gleaned from Appellants’ Specification. See In
re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Here, the Examiner’s
proposed combination uses known techniques to improve similar devices in
the same way and applies a known technique to a known device ready for
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Application 12/993,311
improvement to yield predictable results—both motivations that the
Supreme Court recognized as suggesting that a combination would be
obvious. See KSR, 550 U.S. at 416. As such, Appellants have not shown
the Examiner erred by relying on improper hindsight to arrive at the
combination.
Accordingly, we sustain the Examiner’s rejection of claim 4.
Appellants raise no separate arguments regarding claims 7, 9, 10, 12, 14, 15,
18—21, 24, 27, and 28. Thus, we sustain the rejection of claims 4, 7, 9, 10,
12, 14, 15, 18—21, 24, 27, and 28 as obvious over Atkinson and McNeil.
With respect to the rejection of claim 13 as obvious over Atkinson,
McNeil, and Kitrell, Appellants raise no separate arguments besides those
considered regarding claim 4. Thus, we sustain the rejection of claim 13 as
unpatentable as obvious over Atkinson, McNeil, and Kitrell.
With respect to the rejection of claim 22 as obvious over Atkinson,
McNeil, and Farrugia, Appellants raise no separate arguments besides those
considered regarding claim 4. Thus, we sustain the rejection of claim 22 as
unpatentable as obvious over Atkinson, McNeil, and Farrugia.
With respect to the rejection of claim 23 as obvious over Atkinson,
McNeil, and Hoffrichter, Appellants raise no separate arguments besides
those considered regarding claim 4. Thus, we sustain the rejection of claim
23 as unpatentable as obvious over Atkinson, McNeil, and Hoffrichter.
With respect to the rejection of claim 25 as obvious over Atkinson,
McNeil, and White, Appellants raise no separate arguments besides those
considered regarding claim 4. Thus, we sustain the rejection of claim 25 as
unpatentable as obvious over Atkinson, McNeil, and White.
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Claim 8
We are persuaded by Appellants’ argument that the Examiner has
erred in rejecting claim 8 as obvious over the combination of Atkinson and
McNeil (Appeal Br. 11—13; Reply Br. 3). In particular, we agree with
Appellants that neither Atkinson nor McNeil teaches or suggests that “the air
pump, driving motor, control module, and a battery providing power to the
driving motor and control module are wearably supported by the therapy
appliance,” as recited by claim 8. At one point, the Examiner concedes that
Atkinson does not expressly state that its device is portable/ambulatory, so
the Examiner “cites McNeil as teaching that it is well known in the art that
vacuum pump control systems can be sized to fit within a backpack to make
the device ‘ambulatory’” (Ans. 13). However, we agree with Appellants
that claim 8 requires more than the device be “ambulatory” (Appeal Br. 12).
Rather, the claim requires that the identified components be “wearably
supported by the therapy appliance.” (Id. (emphasis added.) Thus, a
teaching that the device can be ambulatory is not enough.
The Examiner also contends that Atkinson shows its control unit
supported by the therapy appliance with a single tube and “since Atkinson’s
‘air pump, driving motor, control module, and battery’ are capable of being
‘wearably supported’ by the therapy appliance by virtue of being capable of
being worn on the body and supported by the therapy appliance via the tube”
(Ans. 13). However, this contention appears to be based only on the
Examiner’s speculation about what Figure 2A of Atkinson discloses.
Atkinson describes Figure 2A as a “schematic illustration,” so it does not
provide a basis for a conclusion that the device is capable of being wearably
supported. Moreover, given the Examiner’s concession that Atkinson does
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Application 12/993,311
not expressly disclose wearability and the lack of any reasoning why
Atkinson would suggest wearability, we do not agree that Atkinson accounts
for this limitation.
The Examiner also contends that “when the Atkinson device is
combined with McNeil, the components are fully capable of being ‘wearably
supported by the therapy appliance’” (Ans. 14), but we do not find this
contention persuasive because it lacks any citation or explanation.
Finally, the Examiner argues that “‘wearing’ doesn’t even have to be
taking place during intended use,” and “one could ‘wearably support’ the
control module and various components by draping the tube (25) of
Atkinson’s system over their neck” (Id.). We do not find this argument
persuasive because, in the Examiner’s hypothetical, it is the wearer’s neck,
and not the therapy appliance that is “wearably supporting]” the
components (Id.).
In sum, we agree with Appellants that neither Atkinson or McNeil
alone, nor the combination of the references teaches or suggests the added
limitation of claim 8. Thus, we cannot sustain the Examiner’s rejection of
claim 8.
DECISION
The Examiner’s decision to reject claims 4, 7, 9, 10, 12, 14, 15, 18—
21, 24, 27, and 28 is affirmed.
The Examiner’s decision to reject claim 8 is reversed.
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Application 12/993,311
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)(l)(iv).
AFFIRMED-IN-PART
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