Ex Parte Berthon-Jones et al

Patent Trial and Appeal Board

Oct 30, 2018

12461448 (P.T.A.B. Oct. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/461,448 08/12/2009
23117 7590 11/01/2018
NIXON & V ANDERHYE, PC
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Michael Berthon-Jones
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.
BKK-4398-1002 9214
EXAMINER
SIPPEL, RACHEL T
ART UNIT PAPER NUMBER
3785
NOTIFICATION DATE DELIVERY MODE
11/01/2018 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):
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, PETER EDWARD BATEMAN,
DONALD DARKIN, ROBIN GARTH HITCHCOCK,
PHILIP JAMES JENKINSON, SUSAN ROBYN LYNCH,
GORDON JOSEPH MALOUF, PATRICK JOHN MCAULIFFE,
MILIND CHANDRAKANT RAJE, GARY CHRISTOPHER ROBINSON,
RICHARD SOKOLOV, PHILLIP THOMAS STALLARD, and
MICHAEL KASSIPILLAI GUNARATNAM
Appeal2017-004529
Application 12/461,448 1
Technology Center 3700
Before MICHAEL L. HOELTER, ERIC C. JESCHKE, and
BRENT M. DOUGAL, Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Michael Berthon-Jones et al. ("Appellants") seek review under
35 U.S.C. § 134(a) of the Examiner's decision, as set forth in the Final
Office Action dated March 2, 2016 ("Final Act."), rejecting claims 55, 58-
1 Appellants identify ResMed Limited as the real party in interest.
Appeal Br. 3.
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63, 70-104, 110-114, and 117-125. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm in part.
BACKGROUND
The disclosed subject matter "relates to a full-face mask for use with
Non-Invasive Positive Pressure Ventilation (NIPPY), Continuous Positive
Airway Pressure (CPAP) and ventilators generally." Spec. ,r 2. Claims 55,
58, 59, 62, and 70 are independent. Claim 55 is reproduced below:
55. A cushion for a non-invasive positive pressure ventilation
mask, the cushion comprising a face engaging side configured
to engage a patient's face, the cushion further comprising a
mask engaging side configured to engage a mask frame, the
cushion comprising:
a flexible element adapted to sealingly engage a face of a
patient, wherein
the flexible element comprises at least two portions of
foam including a first portion toward the face engaging side and
a second portion that is between the first portion and the mask
engaging side, the first portion being configured to compress
into the second portion when the cushion engages the face of
the patient,
the first portion has a first density, and the second portion
has a second density, and
the first density is less than the second density.
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REJECTIONS
1. Claims 55, 94--98, 111, 112, 118, and 119 stand rejected under
35 U.S.C. § I03(a) as unpatentable over Palkon (US 2003/0019495 Al,
published Jan. 30, 2003), Tayebi (US 5,419,318, issued May 30, 1995), and
Michelson (US 2003/0056795 Al, published Mar. 27, 2003).
2. Claims 58-61, 99, 100, and 113 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Palkon and Tayebi.
3. Claims 62, 63, 70, 75, 77-80, 82-85, 87-89, 92, 93, 101-104,
110, 114, and 117 stand rejected under 35 U.S.C. § I03(a) as unpatentable
over Palkon, Tayebi, and Frater (US 2002/0029780 Al, published Mar. 14,
2002).
4. Claims 71, 72, and 86 stand rejected under 35 U.S.C. § I03(a)
as unpatentable over Palkon, Tayebi, Frater, and Scarberry (US
2002/0100479 Al, published Aug. 1, 2002).
5. Claim 90 stands rejected under 35 U.S.C. § I03(a) as
unpatentable over Palkon, Tayebi, Frater, and Gradon (WO 01/95965 Al,
published Dec. 20, 2001 ).
6. Claim 73 stands rejected under 35 U.S.C. § I03(a) as
unpatentable over Palkon, Tayebi, Frater, and Morine (US 6,684,882 Bl,
issued Feb. 3, 2004).
7. Claim 74 stands rejected under 35 U.S.C. § I03(a) as
unpatentable over Palkon, Tayebi, Frater, Morine, and Michelson.
8. Claim 76 stands rejected under 35 U.S.C. § I03(a) as
unpatentable over Palkon, Tayebi, Frater, and Vickery (US 4,803,981, issued
Feb. 14, 1989).
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9. Claim 81 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Palkon, Tayebi, Frater, and Keener (US 3,815,596, issued
June 11, 1974).
10. Claim 91 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Palkon, Tayebi, Frater, and Michelson.
11. Claims 58, 59, and 120-125 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Wallace (US 3,556,097, issued Jan 19, 1971)
and DeHaan (US 6,886,183 B2, issued May 3, 2005).
DISCUSSION
Rejection 1 - The rejection of claims 55, 94-98, 111, 112,
118, and 119 based on Palkon, Tayebi, and Michelson
A. Claims 55, 94--96, 98, 111, 112, and 119
For the claims in this group, Appellants argue the patentability of
independent claim 5 5 and do not separately argue the remaining claims,
which depend from claim 55. Thus, we address claim 55, with the
remaining claims standing or falling with claim 55. See 37 C.F.R.
§ 4I.37(c)(l)(iv) (2016).
For claim 55, the Examiner relied on Palkon for certain limitations but
stated that Palkon "is silent regarding that the flexible element comprises
foam." Final Act. 3. The Examiner found, however, that "Tayebi teaches a
flexible, foam sealing cushion material." Id. (citing Tayebi, 2:54--3:41 and
element 20). According to the Examiner, it would have been obvious for
one of ordinary skill in the art at the time of the invention "to modify
Palkon's cushion material with foam, as taught by Tayebi, for the purpose of
providing an alternate cushion seal material having the predictable results of
providing a mask seal on a user's face." Id. at 3--4. The Examiner stated
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that Palkon in view of Tayebi "is silent regarding that the first portion of
foam has a density less than the second portion of foam" but found that:
Michelson discloses a face support cushion 20 with a flexible
element (all of 20, Page 2, para 24) that comprises a first (face
contacting portion of 20, not including 66 and 68, Page 3, para
37) and second portion (66 and 68, Page 3, para 37) wherein the
first portion has a density less than the second portion (Page 3,
para 37).
Final Act. 4. According to the Examiner, it would have been obvious for
one of ordinary skill in the art at the time of the invention "to modify
[Palkon's] varying thicknesses throughout the cushion with varying
densities, as taught by Michelson, for the purpose of providing an alternate
cushion structure having the predictable results of having varying portions of
rigidity." Id.
First, Appellants argue that "the Examiner fails to provide any
evidence that ... the foam of Tayebi is an alternate material that can be used
with the cushion of Palkon to form a seal on the user's face." Appeal Br. 7.
According to Appellants, "the Examiner merely asserts that Tayebi teaches a
flexible foam sealing cushion material." Id. Appellants contend that "[t]he
cushion structures of Palkon and Tayebi are different from each other and
form a seal with the patient's face in significantly different ways." Id.
Specifically, Appellants argue that, in Palkon, "[ t ]he three membranes
conform to the patient's face by a bending action," whereas, "the foam
cushion of Tayebi conforms to the patient's face by compressing into itself."
Id. at 7-8.
As noted by the Examiner, both references disclose forming a seal
when placed against a user's face. See Ans. 21 ("Palkon's seal is flexible
and deforms under pressure ([Palkon ,r 29]) and Tayebi's seal is also flexible
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('resilient') and conforms to a user's face ([Tayebi, 2:54--3:41]) and
therefore both provide a seal to a user's face upon being applied against a
user's face."). Appellants do not challenge that finding. See Appeal Br. 7
(acknowledging that both Palkon and Tayebi disclose "form[ing] a seal with
the patient's face").
Appellants have not shown that the alleged differences in the way a
seal is formed-whether by compression (in Tayebi) or bending (in
Palkon}-undermine the factual findings or reasoning relied on to support
the conclusion of obviousness, when considering the modified device
proposed by the Examiner. See Final Act. 3--4; Ans. 20-21; see also KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398,420 (2007) ("[F]amiliar items may
have obvious uses beyond their primary purposes, and in many cases a
person of ordinary skill will be able to fit the teachings of multiple patents
together like pieces of a puzzle.").
To the extent Appellants argue that the prior art must expressly
disclose that the foam of Tayebi can be substituted for membranes 46 and 47
of Palkon, an obviousness analysis "need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ." KSR, 550 U.S. at 418; Appeal Br. 8
("neither Palkon nor Tayebi provides any teaching describing the foam
material of Tayebi in the context of the cushion structure of Palkon").
Based on the common functionality of the structures at issue in Palkon
and Tayebi (as discussed above), we see no error in the Examiner's
determination that, in the context of the proposed modification, the foam of
Tayebi would provide "an alternate cushion seal material having the
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predictable results of providing a mask seal on a user's face." Final Act. 4;
KSR, 550 U.S. at 416 ("[W]hen a patent claims a structure already known in
the prior art that is altered by the mere substitution of one element for
another known in the field, the combination must do more than yield a
predictable result.").
In the Reply Brief, Appellants contend that Tayebi teaches that
"polymeric sheets may be used to replace the foam arcuate structure of
Tayebi only if they are laminated together." Reply Br. 2-3. We are not
apprised of error based on this argument because the proposed modification
does not involve replacing the foam of Tayebi with polymeric sheets;
instead, the proposed modification includes modifying membranes 46 and
47 in Palkon with Tayebi's foam. See Final Act. 3--4.
Second, Appellants argue that the Examiner's articulated reason for
further modifying Palkon/Tayebi in view of Michelson lacks rational
underpinning. Appeal Br. 8-10. Specifically, Appellants contend that
"there is nothing on the record supporting" the reasoning statement relating
to the proposed modification based on Michelson. Id. at 9. Referencing the
term "rigidity" in the reasoning statement, Appellants argue that there is
"nothing in the record indicating that replacing the varying thickness of the
Palkon cushion with varying density [ as in Michelson] will result in the
same 'rigidity' of the membranes 46, 47, and 48 [in Palkon]." Id.
The Examiner responds that "Palkon teaches cushion portions having
varying thicknesses that must vary in rigidity at these different portions due
to the varying thicknesses and Michelson discusses that a denser foam
provides greater resistance to compressive forces." Ans. 22 (citing
Michelson ,r 37). The Examiner also identifies an online dictionary defining
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"rigidity" as "the physical property of being stiff and resisting bending." Id.;
see WordNet Search, http://wordnetweb.princeton.edu/perl/webwn (last
visited Oct. 30, 2018). The Examiner states that "it would have been
obvious to modify Palkon's varying thicknesses with the appropriate
densities to achieve the same varying rigidities." Ans. 22.
In reply, Appellants argue that "one of ordinary skill would not find
any connection between 'stiff' as used in the Examiner's definition and
'resistance to compression."' Reply Br. 3.
Appellants do not challenge the Examiner's proposed definition for
"rigidity" or provide an alternate definition. We agree with Appellants that,
in the context of this aspect of the proposed modification (i.e., modifying
Palkon/Tayebi in view of Michelson), the Examiner is "using 'rigidity' as an
umbrella term for 'resistance to compression' and 'resistance to bending."'
Reply Br. 3. More specifically, with the reasoning statement at issue, we
understand the Examiner to take the position that one of ordinary skill in the
art would have seen similarities between how foams of increasing density in
Michelson provide increased resistance to compression and how membranes
of increasing thickness in Palkon provide increased resistance to bending.
See Final Act. 4; see Ans. 22 (second paragraph).
Although Appellants are correct that the Examiner's definition does
not expressly state "resistance to compression," we agree with the
Examiner's position that "being stiff' (as in the definition) and being
"resistant to ... compressive forces" (Michelson ,r 37) are sufficiently
similar characteristics to support the Examiner's reasoning statement related
to the proposed modification based on Michelson. See Ans. 22 (stating that,
based on the definition of "rigidity" provided, "both Palkon and Michelson
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discuss varying rigidities"); see also Dictionary. com,
https://www.dictionary.com/browse/stiff (last visited Oct. 30, 2018)
(Definition 1 - "rigid or firm; difficult or impossible to bend or flex"). In
other words, we agree with the Examiner's position that the term "rigidity"
in the reasoning statement captures the similarities discussed above, such
that the reasoning statement at issue is supported by rational underpinning.
Third, Appellants argue that "it would not have been obvious to
replace the varying thicknesses of the membranes of Palkon with varying
densities" based on Michelson because "one of ordinary skill would
understand that replacing or removing the 'variable thickness' feature of
Palkon would change the principle of operation of Palkon." Appeal Br. 10.
In support, Appellants rely on Palkon's teaching that "'[t]he variable
thicknesses in the membranes 46, 4 7 and 48 are a significant feature of the
invention and provide a significant improvement in the comfort of cushion
30, in use."' Id. ( quoting Palkon ,r 30). Citing Plas-Pak Industries, Inc. v.
Sulzer Mixpac AG, 600 F. App'x 755 (Fed. Cir. 2015), Appellants argue that
"statements in the disclosure defining the invention can be used to
understand the reference's principle of operation." Id.
A proposed modification that changes the "basic principles under
which the [prior art] was designed to operate" may not support a conclusion
of obviousness. InreRatti,270F.2d810, 813 (CCPA 1959). The
"principle of operation" referred to by Appellants relates to the "basic
principles" under which the prior art device was designed to operate. Id.
Here, we agree with the Examiner that further modifying
Palkon/Tayebi in view of Michelson would maintain the same basic
principle of operation because, like Palkon alone, the modified device would
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use "varying rigidities" of structures to provide a user with comfortable
cushioning. Ans. 23 (stating that "modifying Palkon's varying thicknesses
with varying densities keeps the same principle operation of varying
rigidities, which would still ensure proper sealing and comfort"). We are not
persuaded by Appellants' argument that modifying the structures used to
provide such functionality (i.e., from membranes 46 and 47 in Palkon to
foam of differing densities in the modified device) changes the basic
principle of operation.
As to the Plas-Pak decision cited by Appellants, we first note its
designation as nonprecedential. Moreover, although the Federal Circuit
viewed certain statements from the prior art addressing "the invention" as
supporting the determination of the "principle of operation" (see 600
F. App'x at 758), the Plas-Pak decision does not stand for the proposition
that modifying a feature referred to as a "significant feature of the invention"
necessarily changes the basic principle of operation.
For the reasons above, we sustain the rejection of independent claim
55. Claims 94--96, 98, 111, 112, and 119 fall with claim 55.
B. Claim 97
For claim 97 (which depends indirectly from claim 55), the Examiner
stated that "the modified Palkon discloses that the cushion further comprises
a membrane ([element] 48 [in] Palkon) that encompasses the flexible
element." Final Act. 5.
According to Appellants, "[t]he Examiner asserts that the portion of
the cushion 30 of Palkon that is not the frame engaging portion 32
corresponds to the 'flexible element' of claim 97 ." Appeal Br. 21.
Appellants argue that "membrane 48 merely extends from an upper portion
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of the side wall 45 and does not encompass the portion of the cushion 30 that
is not the frame engaging portion 32." Id.
In response, the Examiner defines "encompass" in claim 97 as "[ t Jo
enclose; envelop." Ans. 28 ( citing The American Heritage® Dictionary of
the English Language (2016) (5th ed.)). According to the Examiner, "[i]n
fig. 6 of Palkon, membrane 48 ... does enclose 46 and 47 within 48." Id.
Contrary to the premise of Appellants' argument, the Examiner does
not identify the entire "portion of the cushion 30 of Palkon that is not the
frame engaging portion 32" as the "flexible element" in claim 97. Appeal
Br. 21. Instead, the Examiner clearly identifies only membranes 46 and 4 7
as the "flexible element." See Final Act. 3 (identifying elements "46 and
47" as the "flexible element" in claim 55). Under the reasonable definition
of "encompass" provided by the Examiner ( which Appellants do not
challenge), we agree with the Examiner that membrane 48 in Palkon
"encompass[ es]" membranes 46 and 4 7. See Palkon, Fig. 6.
Accordingly, we sustain the rejection of claim 97.
C. Claim 118
For claim 118 ( which depends directly from claim 5 5), the Examiner
stated "the modified Palkon discloses that an entirety of the first portion ( 4 7
of Palkon) is configured to compress into the second portion ( 46 of Palkon)
when the cushion engages the face of the patient (when enough force[] is
applied to the first portion)." Final Act. 5.
Appellants argue that "Palkon fails to disclose that the membrane 4 7
compresses into the membrane 46" and "[i]nstead, Palkon merely discloses
that the membranes 46 and 4 7 have a flexibility and deform when a force is
applied against the cushion 30." Appeal Br. 21 ( citing Palkon ,r 29).
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According to Appellants, "given the flexibility of the membranes 46 and 47,
it is likely that the membrane 46 bends in response to contact from the
membrane 47, and membrane 47 does not compress into the membrane 46."
Id.
In response, the Examiner defines "compress" ( as recited in claim
118) as "[t]o press together" and "[t]o make more compact by or as ifby
pressing." Ans. 28 (citing The American Heritage® Dictionary of the
English Language (2016) (5th ed.)).
As argued by Appellants, Palkon does not expressly disclose that
membrane 47 "compresses" into membrane 46. Appeal Br. 21. Appellants
do, however, acknowledge that "membrane 46 bends in response to contact
from ... membrane 4 7" in Palkon. Appeal Br. 21. The Examiner makes a
similar finding, stating that "when the cushion is donned by the wearer,
membrane 47 must at least somewhat be pressed together with membrane 46
causing the membranes to be more compact by the pressing force." Ans.
28-29 (emphasis added). We agree with the Examiner that the agreed-upon
motion falls within the scope of the reasonable definitions of "compress"
provided by the Examiner (which Appellants do not challenge).
For these reasons, we sustain the rejection of claim 118.
Rejection 2-The rejection of claims 58-61, 99,
100, and 113 based on Palkon and Tayebi
A. Claims 5 8---61, 99, and 113
For the claims in this group, Appellants argue the patentability of
independent claims 58 and 59 based on similar arguments, and Appellants
do not separately argue the remaining claims, all of which depend from
claim 59. See Appeal Br. 10-13; Reply Br. 4--5 (addressing only claim 58).
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We address claim 58, with claims 59---61, 99, and 113 standing or falling
with claim 58. See 37 C.F.R. § 4I.37(c)(l)(iv).
For claim 58, the Examiner relied on Palkon for certain limitations but
stated that Palkon "is silent regarding that the flexible element comprises
foam." Final Act. 6. The Examiner found, however, that "Tayebi teaches a
flexible, foam sealing cushion material." Id. (citing Tayebi, 2:54--3:41 and
element 20). According to the Examiner, it would have been obvious for
one of ordinary skill in the art at the time of the invention "to modify
Palkon's cushion material with foam, as taught by Tayebi, for the purpose of
providing an alternate cushion seal material having the predictable results of
providing a mask seal on a user's face." Id. The Examiner stated that, in
Palkon, "each layer has a different spring constant ( due to the different
thicknesses, at the lip region for example, [Palkon i1J 29)." Id.
First, Appellants argue that Palkon fails to disclose "each layer has a
different spring constant" as recited in claim 58. Appeal Br. 10-11.
According to Appellants, "the Examiner fails to provide any evidence
supporting her conclusion that 'spring constant' is related to 'thickness."'
Id. at 10. Appellants contend that "'thickness' is irrelevant to the 'spring
constant' of the different membranes as defined in" the Specification. Id. at
11. According to Appellants, "the 'spring constant' disclosed in [the]
[S]pecification relates to a property of an elastic solid." Id. ( citing Spec.
,r 253 and Fig. 77). Appellants cite extrinsic evidence that allegedly
supports the view that "one of ordinary skill would understand that 'spring
constant' as described in [the S]pecification corresponds to the Young's
Modulus of the 'layers,' which is a bulk material property." Id. (citing
Center for Computer Research in Music and Acoustics, Center for Computer
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Research in Music and Acoustics, Young's Modulus as a Spring Constant,
https:// ccnna. stanford. edu/-j os/pasp/Y oung_s_Modulus_
Spring_Constant.html (last visited Oct. 30, 2018)). According to
Appellants, because "all three membranes of Palkon are made of the same
material" and because "Young's Modulus is a bulk material property," "the
membranes of Palkon have the same Young's Modulus and ultimately the
same 'spring constant" as defined in [the S]pecification." Id.
We first address the meaning of "spring constant" in claim 5 8.
Appellants contend to have acted as their own lexicographer. See Appeal
Br. 11. We agree, but we do not agree that Appellants defined "spring
constant" as Young's Modulus. In the Reply Brief, Appellants quote a
portion of paragraph 225 that provides: "The segments 333 and 334 may be
of different sizes and shapes and different spring constants (i.e. stiffnesses)
.... " Spec. ,r 225 (emphasis added), quoted at Reply Br. 4. 2 We view the
use of "i.e." in this passage as clearly setting forth a definition of the term at
issue ( albeit in plural form) as well as expressing an intent to explain the use
of that term. See Luminara Worldwide, LLC v. Li own Elecs. Co., 814 F .3d
1343, 1353 (Fed. Cir. 2016) ("To act as a lexicographer, a patentee must
'clearly set forth a definition of the disputed claim term' and 'clearly express
an intent to redefine the term."' ( quoting Thorner v. Sony Computer Entm 't
Am. LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012))); Edwards Lifesciences
LLC v. Cook Inc., 582 F.3d 1322, 1334 (Fed. Cir. 2009) ("[U]se of 'i.e.'
signals an intent to define the word to which it refers.").
2 We note that, in the "Summary of Claimed Subject Matter" section
of the Appeal Brief, Appellants cite paragraph 225 regarding claim 58. See
Appeal Br. 5.
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Appellants do not adequately explain how paragraph 253 or Figure 77
support their proposed construction. See Appeal Br. 11. For example, in
contrast to paragraph 225, paragraph 253 does not use the term "spring
constant." To the extent Appellants meant paragraph 241 ( which appears to
be the only discussion of Figure 77), that paragraph provides, in part: "In
FIGURES 77 and 78, the cushion 732 includes at least three spring rates
during compression. In FIGURE 77, the cushion 732 includes three layers
LI, L2 and L3, each of which has a different spring constant." We agree
with the Examiner that this passage "say[ s] nothing [about] equating spring
constant to Young's modulus." Ans. 24.
Based on the lexicographical definition in the Specification here, we
do not see a need to address the extrinsic evidence discussed by Appellants
and the Examiner. 3 See Phillips v. AWHCorp., 415 F.3d 1303, 1316 (Fed.
Cir. 2005) (en bane) ("[O]ur cases recognize that the specification may
reveal a special definition given to a claim term by the patentee that differs
from the meaning it would otherwise possess. In such cases, the inventor's
lexicography governs."); see also Reply Br. 4 (citing Phillips for the
proposition that "extrinsic evidence is less reliable than the patent and its
prosecution history in determining how to read claim terms").
We tum now to applying this construction of "spring constant" in the
context of claim 58. As discussed above in the context of claim 55 (see
Rejection 1 § A, second argument), the Examiner takes the position (and we
3 In the Answer, the Examiner discusses lecture materials from a
physics class. See Ans. 23-24 ( discussing Murphy Lecture 6, Estimation
and Scaling in Physics, available at https://studylib.net/doc/8757199/
materials-properties---ucsd-department-of-p hysi cs).
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agree) that stiffness and rigidity share common meanings. See Ans. 22
(identifying an online dictionary defining "rigidity" as "the physical property
of being stiff and resisting bending"); see also New Oxford American
Dictionary 1712 (Angus Stevenson & Christine A. Lindberg eds., 3d ed.
2010) ( defining "stiff' as "not easily bent or changed in shape; rigid").
Based on this understanding, we view the Examiner's finding (as to
claim 55}-that "Palkon teaches cushion portions having varying
thicknesses that must vary in rigidity at these different portions due to the
varying thicknesses" (Ans. 22 (emphasis added)}-as supporting the
Examiner's finding (in the context of claim 58) that "[t]he membranes in
Palkon have different thickness [ and] therefore have varying spring
constants," i.e., stiffnesses (Ans. 23). For these reasons, we are not apprised
of error based on this argument.
Second, Appellants rely on the same argument discussed above (see
Rejection 1 § A (first argument)) that "the Examiner fails to provide any
evidence that ... the foam of Tayebi is an alternate material that can be used
with the cushion of Palkon to form a seal on the user's face." Appeal Br. 11;
compare id. at 11-12, with id. at 7-8. For the same reasons discussed above,
we are not apprised of error based on this argument.
For these reasons, we sustain the rejection of claim 58 as unpatentable
over Palkon and Tayebi. Claims 59---61, 99, and 113 fall with claim 58.
B. Claim 100
For claim 100 (which depends indirectly from claim 59), the
Examiner stated that "the modified Palkon discloses that a spring constant of
the rigid element is greater than the spring constant of the flexible element
( due to the greater thickness of 32 compared to the thinner flexible
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element)." Final Act. 7. As the "flexible element" in claim 100, the
Examiner identified elements 46-48 in Palkon. See id. at 6-7 ( addressing
claim 5 9, from which claim 100 depends). As the "rigid element" in claim
100, the Examiner identified frame engaging portion 32 in Palkon. See id. at
7 (addressing claim 99, from which claim 100 depends).
Appellants rely on the same argument discussed above (see Rejection
2 § A (first argument)) that "thickness is irrelevant to 'spring constant' as
defined in [ the S Jpecification because 'spring constant' is a bulk material
property." Appeal Br. 22. 4 According to Appellants, "Palkon is silent
regarding the 'spring constant' or the 'Young's Modulus' of the cushion 30"
and thus, "Palkon fails to provide any evidence supporting the Examiner's
assertion" as to claim 100. J d.
We are not apprised of error based on this argument. For the same
reasons discussed above, we construe "spring constant" in claim 100 as
"stiffness." See Rejection 2 § A (first argument). Also for the reasons
discussed above, we see no error in the Examiner's determination that the
greater thickness of the identified "rigid element" as compared to the
thickness of the identified "flexible element" supports the finding that the
"spring constant" of the "rigid element" is greater than the "spring constant"
of the "flexible element," as required by claim 100. See Final Act. 7 ( citing
Palkon ,r 28 for claim 99); Palkon ,r 28 (providing that "frame engaging
portion 32 is relatively thick compared to the rest of the cushion 30"), ,r 29
(showing that membranes 46-48 are part of cushion 30).
4 Appellants refer to "section (II)(A)(i)" of their Appeal Brief, but that
section does not exist. Appeal Br. 22. We understand Appellants to refer to
the argument on pages 10-11 of the Appeal Brief.
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For the reasons above, we sustain the rejection of claim 100.
Rejection 3 -The rejection of claims 62, 63, 70, 75,
77---80, 82---85, 87---89, 92, 93, 101-104, 110, 114, and 117
based on Palkon, Tayebi, and Frater
A. Claims 62, 63, 70, 75, 77-80, 82-85, 87-89,
93, 101, 103, 104, 110, 114, and 117
For the claims in this group, Appellants argue the patentability of
independent claims 62 and 70 based on similar arguments, and Appellants
do not separately argue the remaining claims, all of which depend from
either claim 62 or claim 70. See Appeal Br. 13-16; Reply Br. 5-6
(addressing only claim 62). We address claim 62, with claims 63, 70, 75,
77-80, 82-85, 87-89, 93, 101, 103, 104, 110, 114, and 117 standing or
falling with claim 62. See 37 C.F.R. § 41.37(c)(l)(iv).
For claim 62, the Examiner relied on Palkon for certain limitations but
stated that Palkon "is silent regarding that the flexible element comprises
foam." Final Act. 8. The Examiner found, however, that "Tayebi teaches a
flexible, foam sealing cushion material." Id. (citing Tayebi, 2:54--3:41 and
element 20). According to the Examiner, it would have been obvious for
one of ordinary skill in the art at the time of the invention "to modify
Palkon's cushion material with foam, as taught by Tayebi, for the purpose of
providing an alternate cushion seal material having the predictable results of
providing a mask seal on a user's face." Id.
The Examiner further stated that Palkon in view of Tayebi "discloses
a cushion flange [(element 32 in Palkon)], but is silent regarding that the
flange is a receptacle adapted to releasably receive a portion of a frame of
the mask, the receptacle facing away from the flexible element." Final Act.
8. The Examiner found, however, that in Figure 23, "Frater teaches a flange
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receptacle adapted to receive a portion of a mask frame 20, the receptacle
facing away from a flexible element (face engaging portion of 30)." Id. at
8-9. According to the Examiner, it would have been obvious for one of
ordinary skill in the art at the time of the invention "to modify the modified
Palkon's flange and frame with a receptacle flange and receiving frame
portion, as taught by Frater, for the purpose of providing an alternate flange
and frame arrangement having the predictable results of attaching the flange
to the frame." Id. at 9.
First, Appellants rely on the same argument discussed above (see
Rejection 1 § A (first argument)) that "the Examiner fails to provide any
evidence that ... the foam of Tayebi is an alternate material that can be used
with the cushion of Palkon to form a seal on the user's face." Appeal Br. 13;
compare id. at 13-14, with id. at 7-8. For the same reasons discussed above,
we are not apprised of error based on this argument.
Second, Appellants challenge the articulated reason to further modify
Palkon/Tayebi in view of Frater. See Appeal Br. 14--15; Reply Br. 5-6.
Appellants argue that neither Palkon nor Frater "recognizes the different
interfaces as alternates of each other." Appeal Br. 14. Appellants contend
that "Palkon and Frater utilize two significantly different approaches to
secure the cushion to the shell" and that, because "the cushion/shell
interfaces of Palkon and Frater differ significantly in terms of function and
structure, the two interfaces are not mere alternatives." Id. Appellants argue
that neither Palkon nor Frater "recognizes a particular problem with the
configuration of Palkon that could be solved by the configuration of Frater"
and that "the Examiner fails to explain why one of ordinary skill would have
chosen to use the particular cushion/ shell interface of Frater." Id. at 15.
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With this argument, Appellants do not identify faulty reasoning or
factual findings underlying the rejection. Instead, Appellants assert it would
not have been obvious to combine the references as proposed based on
alleged differences in the configurations of frame engaging portion 32 in
Palkon and the relied-upon structures in Figure 23 of Frater (including the
identified "receptacle" that receives mask frame 20). Appellants have not
adequately explained, however, why these alleged differences-for example,
in the direction of the forces keeping the cushions and shells together
(Appeal Br. 14}-undermine the recited reasoning. See KSR, 550 U.S. at
420 ("[F]amiliar items may have obvious uses beyond their primary
purposes, and in many cases a person of ordinary skill will be able to fit the
teachings of multiple patents together like pieces of a puzzle.").
Based on the common overall functionality of the structures at issue in
Palkon and Tayebi (both connecting a cushion flange to a mask frame), we
see no error in the Examiner's determination that, in the context of the
proposed modification, the relied-upon structures in Frater would provide
"an alternate flange and frame arrangement having the predictable results of
attaching the flange to the frame." Final Act. 9; see also KSR, 550 U.S. at
416 ("[W]hen a patent claims a structure already known in the prior art that
is altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result."); Ans.
25 ("both Palkon and Frater teach cushions that are attached to shells").
To the extent Appellants argue that the prior art must expressly
disclose that the relied-upon configuration of Frater is an alternative to the
configuration of Palkon, an obviousness analysis "need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
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a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ." KSR, 550 U.S. at 418; see Reply Br.
5 ( arguing that the "Examiner fails to cite any evidence supporting" the
provided reasoning).
As to Appellants' reliance on the Board's decision in Ex parte
Breitenbach, Appeal No. 2013-005344 (PTAB Jan. 15, 2016), that decision
is nonprecedential and, moreover, does not heighten the requirements in
KSR. We determine that the Examiner has provided "articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with
approval in KSR, 550 U.S. at 418.
For the reasons above, we sustain the rejection of claim 62. Claims
63, 70, 75, 77-80, 82-85, 87-89, 93, 101, 103, 104, 110, 114, and 117 fall
with claim 62.
B. Claim 92
Claim 92 depends directly from claim 70 and adds: "wherein the
second layer is molded to the first layer." Appeal Br. 30 (Claims App.). For
claim 70, the Examiner identified elements 32 and 45 in Palkon as the "first
layer" and elements 46-48 in Palkon as the "second layer." Final Act. 9.
For claim 92, the Examiner stated: "the modified Palkon discloses that the
second layer is molded to the first layer." Id. at 12 ( citing Palkon ,r 31 ).
Appellants state that paragraph 31 of Palkon "discloses that the
cushion 30 is a single piece of molded plastic." Appeal Br. 22. According
to Appellants, because "the frame engaging portion 32, the side wall 45 and
the membranes 46, 47 and 48 are formed from a single piece of material,
they are not molded to each other." Id.
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The Examiner responds that the identified "first and second layers of
Palkon are molded as a single piece and therefore with each other and
therefore to each other." Ans. 29. The Examiner states: "[t]he claim
language does not require two separate pieces that are formed separately and
then molded to each other." Id.
As noted by Appellants, paragraph 31 of Palkon discloses that cushion
30--which includes all of the elements identified as the "first layer" and
"second layer" in claim 92-"is a single piece of molded plastic." We agree
with Appellants that, in the context here, one of ordinary skill in the art
would not view portions of a single piece of molded plastic as "molded to"
other portions of the same piece of molded plastic. This aligns with the
Specification, in which Appellants effectively define "molded to" as "fused
to." See Spec. ,r 181.
Accordingly, we do not sustain the rejection of claim 92.
C. Claim 102
Claim 102 (which depends indirectly from claim 62) recites that "the
flexible element is joined to more than one surface of the cushion flange."
Appeal Br. 31 (Claims App.). For the rejection of claim 62, the Examiner
identified element 32 in Palkon as the "cushion flange" and elements 45--48
in Palkon as the "flexible element." Final Act. 8. For claim 102, the
Examiner stated: "the modified Palkon discloses that the flexible element is
joined to more than one surface of the cushion flange (all surfaces making
up the circumference of the cushion flange 32 that the flexible element joins
to, Palkon)." Id. at 12.
Appellants argue that "according to Figs. 6-8 of Palkon, the sidewall
45 of Palkon engages only one surface of the frame engaging portion 32."
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Appeal Br. 23. The Examiner responds that "Palkon's flexible element 48,
4 7, 46 and 45 is joined to the surfaces that make up the circumference of the
cushion flange 32." Ans. 29.
We agree with Appellants' argument. We understand claim 102 as
requiring the "cushion flange" to have at least two distinct "surface[ s ]" to
which the "flexible element" is joined. As an example, Figure 67 shows a
horizontal surface and a vertical surface of cushion flange 640, and shows
flexible element 630 joined to both of those surfaces. See Spec. ,r,r 232-34;
Fig. 67; Appeal Br. 6 (citing Spec. ,r,r 232-34 and Fig. 67 for claim 62). On
the record here, the Examiner has not adequately identified the at least two
surfaces of the identified "cushion flange" ( element 32 in Palkon) that join
with the identified "flexible element" ( elements 45--48 in Palkon). Like
Appellants, we understand element 32 in Palkon to "join" with element 45
but not with elements 46--48. And, we understand elements 32 and 45 to
'join" at only one surface (going around the circumference of cushion 30).
See Palkon, Fig. 6.
Accordingly, we do not sustain the rejection of claim 102.
Rejection 4 - The rejection of claims 71, 72, and 86
based on Palkon, Tayebi, Frater, and Scarberry
A. Claims 71 and 72
The Examiner addressed claims 71 and 72 together, stating that
"modified Palkon discloses [a] second layer, but is silent regarding a silicone
skin." Final Act. 13. The Examiner found, however, that "Scarberry teaches
a face contacting cushion comprising a silicone skin." Id. at 13-14 (citing
Scarberry ,r 23). According to the Examiner, it would have been obvious for
one of ordinary skill in the art at the time of the invention "to modify the
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modified Palkon's second layer with the addition of a silicone skin, for the
purpose of providing better adhesion to the skin." Id. at 14.
For each claim, Appellants present the same arguments challenging
the reasoning articulated. Appeal Br. 23-24. 5 First, Appellants argue that,
contrary to the reasoning statement, "Scarberry teaches that the skin
decreases adhesion to the wearer's skin." Id. at 23 (citing Scarberry ,r 23).
The Examiner responds that, although "it is true that Scarberry' s skin
actually decreases adhesion, Scarberry also teaches other benefits of the skin
including durability and washability found in the same cited paragraph in the
rejection of claim 71." Ans. 30 ( citing Scarberry ,r 23). According to the
Examiner, "[i]t would have been obvious to one of ordinary skill in the art at
the time the invention was made to modify the modified Palkon' s second
layer with the addition of a silicone skin, for the purpose of providing
durability and washability." Id. (citing Scarberry ,r 23).
Appellants do not challenge the reasoning statement provided by the
Examiner in the Answer. We determine that the current reasoning statement
provided to reject claim 71 and 72 provides sufficient "rational underpinning
to support the legal conclusion of obviousness." Kahn, 441 F.3d at 988,
cited with approval in KSR, 550 U.S. at 418.
Second, Appellants argue that "Scarberry teaches applying a skin to a
gel cushion" because the "skin remedies the 'tackiness' problem of the gel."
Appeal Br. 23. According to Appellants, because "the cushion of Palkon as
modified by the Examiner is made of foam and not gel," "the teaching of
5 We quote from the discussion addressing claim 71, but the analysis
applies equally to claim 72.
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Scarberry is inapplicable to Palkon, and one of ordinary skill would not have
looked to Scarberry to modify Palkon." Id. at 23-24.
This argument does not apprise us of error because, as discussed
above, the Examiner does not currently rely on the original reasoning
statement, which related to "adhesion."
For these reasons, we sustain the rejection of claims 71 and 72.
B. Claim 86
For claim 86 (which depends directly from claim 70), the Examiner
stated that "the modified Palkon discloses the first layer (32 and 45 Palkon,
fig. 23 Frater), but fails to disclose that the first layer includes no foam."
Final Act. 14. The Examiner found, however, that "in fig. 6[,] Scarberry
teaches a face mask seal including a first layer 52 and a second layer 50,
where the first layer 52 is made of EVA." Id. (citing Scarberry ,r 59). 6
According to the Examiner, it would have been obvious for one of ordinary
skill in the art at the time of the invention "to modify the modified Palkon' s
first layer with EVA, as taught by Scarberry, for the purpose of providing a
customizable mask to match the contours of the specific user." Id. (citing
Scarberry ,r 58).
First, Appellants argue that the proposed "modification to Palkon in
view of Scarberry contradicts the Examiner's modification to Palkon in view
of Tayebi" in that "the Examiner asserts that one of ordinary skill would
have made the entire cushion out of foam based on the teaching of Tayebi."
Appeal Br. 24.
6 "EV A" refers to ethyl vinyl acetate. See Scarberry ,r 59.
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With this argument, Appellants do not address the modification as
proposed. The Examiner does not propose modifying Palkon such that both
the identified "first layer" and "second layer" (recited in claim 70) are made
of foam. Instead, as noted by the Examiner, in the proposed modification,
only the identified "second layer" ( elements 46-48 of Palkon) are modified
to be foam based on the teachings of Tayebi. See Ans. 31 ( addressing claim
86 and stating that only "the first layer of the modified Palkon is modified
with the material of Scarberry's second portion 52 in order to provide a
customiz[]able mask to match the contours of the specific user" ( citing
Scarberry ,r 58)); Final Act. 9--10 (addressing claim 70, from which claim 86
depends, and stating that Palkon is "silent regarding that the second layer is
constructed of foam" (emphasis added)). Thus, modifying the "first layer"
as proposed based on Scarberry does not "contradict[] the Examiner's
modification to Palkon in view of Tayebi" as asserted by Appellants.
Appeal Br. 24.
Second, Appellants contend that, "contrary to the Examiner's
assertion, the second portion 52 is not merely made of EV A," but rather,
"[t]he second portion 52 of Scarberry is made of gel with an EVA stiffening
agent mixed in." Appeal Br. 24 (Scarberry ,r 59).
With this argument, Appellants have not demonstrated error by the
Examiner. For example, Appellants have not shown that the "gel substance"
or the EV A "stiffening agent" disclosed in paragraph 59 of Scarberry are
"foam material" as prohibited by claim 86.
Third, Appellants contend that "the Examiner fails to explain how
making the frame engaging portion 3 [2] and the sidewall 45 of Palkon out of
EV A will make the mask customizable to match the contours of the specific
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user" as set forth in the reasoning statement for claim 86, "especially since
the frame engaging portion 3[2] and the sidewall 45 of Palkon do not engage
the user's face." Appeal Br. 25.
The Examiner responds by quoting a portion of paragraph 5 8 of
Scarberry and stating: "It is clear that molding the modified Palkon's second
portion, as taught by Scarberry, does contour the overall shape of the
cushion to the shape of the user's face, even though the second portion is not
in direct contact with the user's face." Ans. 31.
As noted by the Examiner, Scarberry discloses forming second
portion 52 out of the relied-upon materials and for the relied-upon purpose
even though second portion 52 does not directly touch the user's face. See
Scarberry ,r,r 58-59, Fig. 6. Thus, the reasoning relied on would equally
apply to modifying elements 32 and 45 in Palkon even though those
structures do not directly touch the user's face.
For these reasons, we sustain the rejection of claim 86.
Re} ections 5 through 10
Appellants do not separately argue claims 73, 74, 76, 81, 90, and 91,
which depend from claim 70. Thus, for the reasons above (see Rejection 3
§ A), we sustain the rejection of claims 73, 74, 76, 81, 90, and 91.
Rejection 11-The rejection of claims 58, 59,
and 120-125 based on Wallace and DeHaan
Appellants argue the patentability of the two independent claims in
this rejection----claims 58 and 59-based on similar arguments, and
Appellants do not provide separate arguments for any dependent claims.
Appeal Br. 16-20; Reply Br. 6-8. We select claim 58 as representative,
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with the remaining claims standing or falling with claim 58. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
For claim 58, the Examiner relied on Wallace for certain limitations
but stated that Wallace "is silent regarding that the flexible foam element
includes at least three layers mounted upon each other, wherein each layer
has a different spring constant." Final Act. 18. The Examiner found,
however, that "in fig. 6[,] DeHaan teaches a flexible, foam cushion 12
including three layers mounted upon each other" ( citing DeHaan, 1 :43--45,
4:34--44) "wherein each layer has a different spring constant (the different
foam materials having three different densities have different spring
constants since a high density foam (stiff foam) will have a higher spring
constant than low density foam" (citing id. at 4:34--44). Final Act. 18.
According to the Examiner, it would have been obvious for one of ordinary
skill in the art at the time of the invention "to modify Wallace's cushion
foam with three layers of foam, as taught by DeHaan, for the purpose of
providing comfort to a user." Id. (citing DeHaan, 1:43--45).
First, Appellants challenge the reasoning statement provided.
Appellants contend that "neither DeHaan nor Wallace provides any teaching
that would lead one of ordinary skill to understand that modifying the
cushion of Wallace as suggested by the Examiner would provide or improve
comfort to the user." Appeal Br. 17. According to Appellants, "the three-
layer construction of DeHaan protects the user's eyes from sweat and from
the impact of projectiles." Id. (citing DeHaan, 4:38--44). Appellants argue
that "Wallace is directed to an anesthesia mask in which the user's eyes are
exposed to the elements," and that, because "a user [of] an anesthesia mask
would not be subject to projectile impacts," "the benefits disclosed in
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DeHaan for the three-layer construction are not applicable for an anesthesia
mask." Id. (citing Wallace, 1:5-7, Figs. 1 and 2).
Appellants contend that the Examiner has failed to provide sufficient
articulated reasoning as to the proposed modification, but Appellants do not
squarely address the passage in DeHaan relied on by the Examiner to
support the reasoning statement. Instead, Appellants identify other
statements in DeHaan that highlight additional benefits of the relied-upon
three-layer foam. See, e.g., DeHaan, 4:38--44.
The passage relied on by the Examiner provides: "The comfort is
provided through the three stage foam disposed on the inner surface of the
goggle frame." DeHaan, 1 :43--45, cited at Final Act. 18, Ans. 27. We
determine that the Examiner's reasoning statement supports a prima facie
case of obviousness of claim 58. See In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992). By not addressing the reasoning provided, Appellants have
not shown error in the relevant findings or the conclusion as to obviousness,
which we determine to be supported by rational underpinnings. See id.
( discussing how, if an examiner presents a prima facie case, "the burden of
coming forward with evidence or argument shifts to the applicant").
As to the argument that the benefits of the three-layer foam of
DeHaan are not "applicable for an anesthesia mask" as in Wallace (Appeal
Br. 17), we disagree. As noted by the Examiner, based on DeHaan's
teaching of providing a comfortable cushion using a three-layer foam, "it
would have been obvious to one of ordinary skill in the art to look to
DeHaan for teaching a similar cushion having similar functionality as
Wallace." Ans. 27 (citing DeHaan, 1:43--45). In other words, the benefit
provided by the three-layer foam as expressly taught in DeHaan would be
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equally applicable in the context of the anesthesia mask of Wallace. See
Wallace, 4: 15--49, cited at Final Act. 18 (discussing how cushion 29
"conforms to the wearer's face").
As to the argument that "Wallace fails to recognize any problems that
would have been solved by a three-layer cushion as taught by DeHaan"
(Reply Br. 7), we note that an express teaching, suggestion, or motivation in
the reference being modified (here, Wallace) is not a requirement for an
obviousness determination. See KSR, 550 U.S. at 419 ("The obviousness
analysis cannot be confined by a formalistic conception of the words
teaching, suggestion, and motivation, or by overemphasis on the importance
of published articles and the explicit content of issued patents."). Here, the
Examiner relied on an express teaching in DeHaan.
Second, Appellants argue that DeHaan is nonanalogous art. See
Appeal Br. 18-19; Reply Br. 7-8. "Two separate tests define the scope of
analogous prior art: (1) whether the art is from the same field of endeavor,
regardless of the problem addressed and, (2) if the reference is not within the
field of the inventor's endeavor, whether the reference still is reasonably
pertinent to the particular problem with which the inventor is involved." In
re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).
The Examiner takes the position that DeHaan satisfies the "reasonably
pertinent" test because "DeHaan's cushion is pertinent to Appellant[s'] ...
particular problem of providing a foam, sealing, comfortable cushion to a
wearer's face." Ans. 27.
As to the "reasonably pertinent" test, Appellants argue that
"Appellants' particular problem relates to providing a noninvasive positive
pressure ventilation mask that assists with improving patient compliance
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and/or treatment and provides enhanced/tailored sealing and/or fit at selected
locations on the patient's face" (citing Spec. ,r 11) whereas, "[i]n contrast,
DeHaan discloses a goggle and helmet assembly that protects the user's head
( especially the user's eyes) from paintball projectiles" ( citing DeHaan, 1: 10-
60). Appeal Br. 18.
"If a reference disclosure has the same purpose as the claimed
invention, the reference relates to the same problem, and that fact supports
use of that reference in an obviousness rejection." In re Clay, 966 F.2d 656,
659 (Fed. Cir. 1992)). Consistent with the Examiner's finding on this issue
(Ans. 27), we consider the relied-upon aspects of DeHaan to have the same
purpose as the relevant aspects of the claimed invention-providing a
comfortable cushion for a user's face. See DeHaan, 1 :43--45; Spec. ,r 4 ("It
is a continuing challenge for mask designers to improve the comfort of
masks, particularly where the mask has to be worn for many hours."), ,r 224
( discussing Figure 62, stating that, "[i]n this embodiment, the membrane 310
achieves the primary seal and is supported by the flexible element 330,
which distributes the compressive forces at various locations resulting in a
more conifortable mask system" (emphasis added)), ,r 248 ("An advantage of
the cushion assemblies of the present invention to a mask system is
increased comfort for the user."). In contrast, Appellants focus not on the
problem at issue, but on the specific applications and settings identified for
the disclosed structures. See Appeal Br. 18-19; Reply Br. 7-8.
For the reasons above, we sustain the rejection of claim 58 as
unpatentable based on Wallace and DeHaan. Claims 59 and 120-25 fall
with claim 58.
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DECISION
We affirm the decision to reject claims 55, 58---63, 70-91, 93-101,
103, 104, 110-114, and 117-125, and we reverse the decision to reject
claims 92 and 102.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§ 1.136(a)(l)(iv); 37 C.F.R. § 4I.50(f).
AFFIRMED-IN-PART
32