Ex Parte Ahmad

Patent Trial and Appeal Board

Sep 28, 2018

13257652 (P.T.A.B. Sep. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/257,652 09/20/2011 Samir Ahmad
24737 7590 10/02/2018
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus A venue
Suite 340
Valhalla, NY 10595
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2009P00615WOUS 2077
EXAMINER
STUART, COLINW
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
10/02/2018 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):
patti. demichele@Philips.com
marianne.fox@philips.com
katelyn.mulroy@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SAMIR AHMAD
Appeal2017-000755
Application 13/257,652
Technology Center 3700
Before JAMES P. CALVE, BRANDON J. WARNER, and
MICHAEL L. WOODS, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Samir Ahmad ("Appellant") 1 appeals under 35 U.S.C. § 134(a) from
the Examiner's decision rejecting claims 2, 3, 5-17, and 20, which are all the
pending claims. See Appeal Br. 7-18. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b ).
We REVERSE.
According to Appellant, the real party in interest is KONINKLUKE
PHILIPS ELECTRONICS, N.V. Appeal Br. 1.
Appeal2017-000755
Application 13/257,652
CLAIMED SUBJECT MATTER
Appellant's disclosed invention relates to a ventilator with a controller
configured to delay a supply of oxygen so as to maintain a predetermined
percentage of oxygen in the air supply for patient inhalation. See, e.g.,
Spec., p. 1, 1. 7 -p. 2, 1. 33. Claims 5, 13, 16, and 20 are independent.
Claim 5, reproduced below with emphasis added, is illustrative of the subject
matter on appeal.
5. A ventilator comprising:
a first pathway configured to supply a first gas;
a second pathway configured to supply a second gas, the
second gas being mixed with the first gas to produce mixed gas
comprising a predetermined percentage of the second gas;
a conduit configured to provide the mixed gas from the
first and second pathways to an access port during an
inspiratory phase, and to provide discharged gas from the
access port to the first pathway during an expiratory phase;
a controller configured to delay supply of the second gas
from the second pathway for a delay time in order to maintain
the predetermined percentage of the second gas in the mixed
gas provided to the access port during a subsequent inspiratory
phase;
wherein the first pathway comprises a first flow sensor,
the first flow sensor being configured to determine a flow of the
discharged gas received by the first pathway during the
expiratory phase; and
wherein the controller determines a volume of the
discharged gas received by the first pathway during the
expiratory phase based on the determined flow of the
discharged gas.
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Application 13/257,652
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Remmers US 2006/0201505 Al Sept. 14, 2006
Hete US 2007 /0044799 Al Mar. 1, 2007
Smith US 2007 /0125374 Al June 7, 2007
Reinstadtler US 2007 /0163592 Al July 19, 2007
Altas US 2009/0167698 Al July 2, 2009
REJECTIONS
The following rejections are before us for review: 2
I. Claims 2, 5-11, 13, 14, 16, 17, and 20 stand rejected under
35 U.S.C. § I03(a) as being unpatentable over Hete, Remmers,
and Altas. 3 Final Act. 4--12.
2 We note that the Final Office Action (dated Oct. 2, 2015) includes a
rejection of claim 22 under 35 U.S.C. § 112, fourth paragraph, as not further
limiting the scope of the claim from which it depends. Final Act. 3--4.
Appellant subsequently filed an Amendment (dated Nov. 24, 2015), which
was entered by the Examiner per an Advisory Action ( dated Dec. 16, 2015),
canceling claim 22 and thus obviating the basis of this rejection. Although
the Examiner's Answer ( dated Aug. 22, 2016) does not formally withdraw
this rejection, we consider it effectively withdrawn as moot and conclude
that it is not before us for review as part of the present appeal.
3 We note that the Examiner includes claims 21 and 22 in this rejection.
See Final Act. 4, 12-13; Ans. 2, 10-11. These claims have been canceled by
Amendments (dated Feb. 19, 2016, and Nov. 24, 2015, respectively), which
were entered by the Examiner per Advisory Actions ( dated Mar. 10, 2016,
and Dec. 16, 2015, respectively). We treat this discrepancy as an
inadvertent and harmless error for purposes of the present appeal.
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Application 13/257,652
II. Claim 3 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hete, Remmers, Altas, and Reinstadtler. Id.
at 13.
III. Claims 12 and 15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hete, Remmers, Altas, and Smith. 4 Id.
at 14.
ANALYSIS
In each of Rejections I-III, the Examiner relies on a combination of
teachings from Hete, Remmers, and Altas to reject the claims as obvious.
See Final Act. 4--14. Appellant argues that this combination is the result of
improper hindsight reconstruction of the claimed invention, rather than
being reached on the basis of the facts established by the prior art. See
Appeal Br. 8-11. We agree.
As the requisite articulated reasoning for combining Hete with
Remmers, the Examiner states that it would have been obvious "to modify
the Hete device to provide discharged gas to the first pathway, as taught by
Remmers, in order to treat central sleep apnea." Final Act. 5 ( citing
Remmers ,r 40). But this reason disregards the fact that Hete already has a
discharge gas port 58 that would avoid the "oxygen contamination" issue
caused by discharging gas through the first pathway. See Appeal Br. 7
( citing Hete, Fig. 4, ,r 39); Reply Br. 2.
4 We note that the Examiner includes claims 18 and 19 in this rejection.
See Final Act. 14--15; Ans. 12-13. These claims have been canceled by an
Amendment (dated Nov. 24, 2015), which was entered by the Examiner per
an Advisory Action (dated Dec. 16, 2015). We treat this discrepancy as an
inadvertent and harmless error for purposes of the present appeal.
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Application 13/257,652
Next, as the requisite articulated reasoning for combining modified
Hete with Altas, the Examiner states that it would have been obvious "to
modify the modified Hete device's controller to delay the supply of the
second gas for a delay time in order to maintain the percentage of the second
gas in the mixed gas," as ostensibly taught by Altas, "in order to provide a
clear, controllable means for maintaining a desired concentration level
(duration/delay time of valve opening as taught by Altas versus Hete's
general disclosure of control of oxygen control valve 50)." Final Act. 6
(emphasis added) (citing Altas ,r,r 183, 185). But this reason disregards the
purpose of Altas's delay, which is not to "maintain the percentage" of
oxygen in a mixed gas, as the Examiner states, but rather is to tailor the
timing to "maximize delivery of oxygen to the user." Altas ,r 185; see
Appeal Br. 8; Reply Br. 3. The notion of using a delay to "maintain the
percentage" of oxygen in a mixed gas is disclosed-not by the cited art-but
by Appellant.
Thus, we agree with Appellant that "the Examiner's combination is a
hindsight reconstruction," which uses "the present application as a blueprint
and the Hete, Remmers, and Atlas applications as a parts box in order to
build an apparatus which solves a different problem than of Hete, Remmers,
and Atlas." Appeal Br. 8. We agree with Appellant that the rejection does
not sufficiently explain why a person of ordinary skill in the art would have
combined these disparate teachings. See Appeal Br. 7-11; Reply Br. 2-5.
In other words, the Examiner has not sufficiently articulated reasoning
based on rational underpinnings as to why one skilled in the art would have
been prompted to combine the teachings of Hete, Remmers, and Altas ( along
with the other cited references) in the manner proposed. See KSR Int 'l Co. v.
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Application 13/257,652
Teleflex Inc., 550 U.S. 398, 418 (2007) (stating that "[r]ejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness" ( quoting In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006))). Here, in response to
Appellant's arguments, the Examiner simply notes that the references are all
in the same field of endeavor, reiterates the individual teachings relied upon,
and alleges that the arguments are directed to each reference individually.
But the Examiner does not provide any additional explanation as to why
such individual teachings-particularly those of Hete, Remmers, and
Altas-would be combined to arrive at the specific use of a delay in a
controller as claimed. See Ans. 13-19.
Rejections based on obviousness must rest on a factual basis; in
making such a rejection, the Examiner has the initial burden of supplying the
requisite factual basis and may not, because of doubts that the invention is
patentable, resort to speculation, unfounded assumptions, or hindsight
reconstruction to supply deficiencies in the factual basis. See In re Warner,
379 F.2d 1011, 1017 (CCPA 1967). Here, absent improper hindsight
reconstruction, we do not see a sufficient reasoned explanation based on a
rational underpinning as to why one of ordinary skill in the art would have
been led to modify Hete with Remmers and Altas, and a reason for such
modification is not otherwise evident from the record.
Although we appreciate that the Examiner's findings regarding the
individual elements from Hete, Remmers, and Altas appear to be supported
by a preponderance of the evidence, we note that a claim "composed of
several elements is not proved obvious merely by demonstrating that each
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Application 13/257,652
element was, independently, known in the prior art." KSR Int'! Co., 550
U.S. at 418. Rather, a sustainable obviousness rejection further needs to
explain the reasoning by which those findings support the Examiner's
conclusion of obviousness. Perfect Web Techs., Inc. v. Info USA, Inc., 587
F.3d 1324, 1328-30 (Fed. Cir. 2009). In this case, the rejection fails to meet
this required standard.
Accordingly, based on the record before us, the Examiner has not met
the burden of establishing a proper prima facie case of obviousness. On this
basis, we do not sustain Rejections I-III.
DECISION
We REVERSE the Examiner's decision rejecting claims 2, 5-11, 13,
14, 16, 17, and 20 under 35 U.S.C. § 103(a) as being unpatentable over Hete,
Remmers, and Altas.
We REVERSE the Examiner's decision rejecting claim 3 under
35 U.S.C. § 103(a) as being unpatentable over Hete, Remmers, Altas, and
Reinstadtler.
We REVERSE the Examiner's decision rejecting claims 12 and 15
under 35 U.S.C. § 103(a) as being unpatentable over Hete, Remmers, Altas,
and Smith.
REVERSED
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