Ex Parte Aarestad et alDownload PDFPatent Trial and Appeal BoardMay 5, 201712993311 (P.T.A.B. May. 5, 2017) Copy Citation 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.). 2 Appeal 2015-000451 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). 3 Appeal 2015-000451 Application 12/993,311 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 4 Appeal 2015-000451 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 5 Appeal 2015-000451 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, 6 Appeal 2015-000451 Application 12/993,311 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 7 Appeal 2015-000451 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. 8 Appeal 2015-000451 Application 12/993,311 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 9 Appeal 2015-000451 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. 10 Appeal 2015-000451 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 11 Copy with citationCopy as parenthetical citation