Ex Parte Collazo et al

Patent Trial and Appeal Board

Oct 31, 2017

12256388 (P.T.A.B. Oct. 31, 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.
12/256,388 10/22/2008 Louis Javier Collazo 1573-017U 5100
29973 7590 11/02/2017
CRGO LAW
ATTN: STEVEN M. GREENBERG, ESQ.
7900 Glades Road
SUITE 520
BOCA RATON, EL 33434
EXAMINER
STUART, COLIN W
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
11/02/2017 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@crgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LOUIS JAVIER COLLAZO, SANJAY CHANDRAN,
SHARA HERNANDEZ, and NORMAN D. CASTILLO
Appeal 2015-005192
Application 12/256,388
Technology Center 3700
Before EDWARD A. BROWN, GEORGE R. HOSKINS, and
BRANDON J. WARNER, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Louis Javier Collazo et al. (“Appellants”)1 appeal under 35 U.S.C.
§ 134(a) from the Examiner’s decision rejecting claims 1,4, 10, 11, 19-23,
and 25—35, which are all the pending claims. See Appeal Br. 15. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Mergenet
Solutions, Inc. Appeal Br. 2.
Appeal 2015-005192
Application 12/256,388
CLAIMED SUBJECT MATTER
Appellants’ disclosed invention “relates to mask assemblies and to a
cushion therefor, for example, for use in the treatment of respiratory
conditions and in assisted respirations.” Spec. 11. Claims 1,19, 25, 29, and
32 are independent. Claim 1, reproduced below, is illustrative of the subject
matter on appeal.
1. A respiratory mask assembly comprising:
a mask shell assembly, the mask shell assembly including
a central shell body, the central shell body including an inlet
aperture for receiving a delivered amount of gas, the inlet
aperture having a central axis, the central shell body includes a
rear mating edge, the central shell body includes a support
interface comprising a support aperture and at least two slots,
wherein each slot has an upper and lower wall, the support
interface having a central axis, the central axis of the support
interface being normal to the central axis of the inlet aperture;
a face cushion attached to the central shell body and
having a front mating edge; and,
a forehead support having an extension bar configured to
adjustably couple within the support aperture of the central
shell body, the extension bar with a locking tab configured to
engage with one of the at least two slots, wherein the tab
movement is limited by the upper and lower wall of the
engaged slot.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
appeal:
Ho US 2005/0072428 A1 Apr. 7, 2005
Sleeper US 2008/0053446 A1 Mar. 6, 2008
Eifler US 2008/0168991 A1 July 17, 2008
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Application 12/256,388
REJECTIONS
The following rejections are before us for review:
I. Claims 1,4, 10, 11, 19—23, 25—28, and 32—35 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Eifler and
Sleeper. Final Act. 2—8.
II. Claims 29—31 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Eifler, Sleeper, and Ho. Id. at 8—9.
ANALYSIS
Rejection I— Claims 1, 4, 10, 11, 19—23, 25—28, and 32—35 as
unpatentable over Eifler and Sleeper
Appellants argue that the rejection is improper because neither of the
cited references explicitly discloses the exact configuration of the forehead
support being adjustably coupled to the central shell body as recited in the
claims. See Appeal Br. 9—11; see also id. at 11—14; Reply Br. 3—10. But
this line of argument does not address the ultimate issue of whether the
claimed subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains. See 35 U.S.C. § 103(a). After careful consideration
of the record before us, Appellants’ arguments do not apprise us of error in
the Examiner’s factual findings, which are supported by a preponderance of
the evidence, or the Examiner’s reasonable conclusion of obviousness,
which is rationally articulated based on prior art teachings. In short, we
sustain Rejection I based on the reasoned positions set forth therein, and in
light of the Examiner’s responses to Appellants’ arguments. See Final
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Application 12/256,388
Act. 2—8; Ans. 10—13. We address Appellants’ principal assertions below
simply as a matter of emphasis.
Specifically, Appellants’ assertions are premised on contentions of
alleged shortcomings from Eifler and Sleeper individually, stemming from
specific structural details of a single reference unrelated to the rejection
presented (see Appeal Br. 9-11), when teachings from these references were
simply relied on as evidence that it was known in the art to provide vertical
adjustability with a tab and slot arrangement as claimed (see Final Act. 2—3).
Such contentions by Appellants are insufficient to apprise us of error when
the rejection is predicated upon a combination of prior art teachings. See In
re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller,
642 F.2d 413, 425 (CCPA 1981)).
In particular, Appellants assert that a “solid element,” such as
Sleeper’s forehead support arm 140, would be incompatible with Eifler,
where spacing element 2 “must be hollow.” Appeal Br. 10. We are not
persuaded by Appellants’ argument because this assertion is merely
speculative, and it appears to rely on bodily incorporation of specific
structural details of Sleeper (i.e., the solid construction of support arm 140)
into Eifler, which is neither the standard for an obviousness determination,
nor is it an accurate characterization of the rejection presented. See Keller,
642 F.2d at 425. Here, the rejection does not bodily incorporate any “solid”
support arm from Sleeper into Eifler, but merely includes the elements for
providing height adjustability (i.e., “the projection and slotted portions”) to
the structure of Eifler, which could seemingly remain hollow to the extent
necessary, as would be understood by a person having ordinary skill in the
art. Ans. 11—12. Appellants do not persuasively explain how adding height
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Application 12/256,388
adjustability, as taught in Sleeper, to Eifler’s mask in an operable manner
would be beyond the level of ordinary skill in the art. See KSR Int 7 Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007).
Similarly, Appellants’ assertions regarding a “snap-fit” between
Eifler’s spacing element 2 and mask body 5 likewise focus on only specific
structural details of Eifler alone, without accounting for incorporation of the
height adjustability from Sleeper, added in a workable manner, as relied on
in the rejection. See Reply Br. 3—10. Again, we are not apprised of
Examiner error. Not only do these assertions improperly focus on each
reference individually, but they also neglect to adequately consider that “[a]
person of ordinary skill is also a person of ordinary creativity, not an
automaton.” KSR Int’l Co., 550 U.S. at 421. The analysis under § 103(a)
presumes not only common sense, but also skill in the art. See In re Sovish,
769 F.2d 738, 743 (Fed. Cir. 1985).
The Examiner’s conclusion that the claimed subject matter would
have been obvious in view of the art is reasonable, and Appellants do not
persuasively explain how modifying Eifler to have an adjustable connection
between the mask and the support, such as to vertically adjust using a tab
and slot arrangement as taught by Sleeper, would have yielded unpredictable
results or somehow been beyond the level of ordinary skill in the art. See
KSR Inti Co., 550 U.S. at 417.
Further, we note that any other arguments not specifically addressed
in detail herein have been thoroughly considered by the panel but are not
persuasive for the reasons discussed supra and those well expressed in the
Examiner’s Answer. For example, although Appellants identify arguments
for claims 19, 23, 25, and 32 under separate headings relative to the
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Application 12/256,388
discussion focusing on claim 1 (see Appeal Br. 11—14), the substance of
these arguments simply incorporates assertions discussed supra (see id.
at 11—12) or quotes claim features with a general contention that such
features are “not disclosed” by Eifler and Sleeper (see id. at 12—14). Such
conclusory contentions are unpersuasive, as they are little more than
recitations of claim elements with “naked assertions” that the elements are
not found in the prior art, and thus do not constitute separate arguments for
patentability of these claims pursuant to 37 C.F.R. § 41.37(c)(l)(iv). See In
re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that the Board had
reasonably interpreted the same language in the prior rule under 37 C.F.R.
§ 41.37(c)(l)(vii) as requiring “more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art”).
After careful consideration of all the evidence of record, Appellants’
arguments do not apprise us of error in the Examiner’s findings or reasoning
in support of the conclusion of obviousness. Accordingly, we sustain the
rejection of claims 1,4, 10, 11, 19-23, 25—28, and 32—35 under 35 U.S.C.
§ 103(a) as being unpatentable over Eifler and Sleeper.
Rejection II— Claims 29—31 as
unpatentable over Eifler, Sleeper, and Ho
Appellants reiterate their arguments presented in the context of
Rejection I, discussed supra, and additionally contend that Ho “does not
cure the argued deficiencies of the combination of Eifler and Sleeper,”
argued with respect to independent claim 1. Appeal Br. 15; see id. at 14—15.
For the reasons discussed supra, we are unpersuaded of a deficiency with
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Application 12/256,388
respect to the combination of Eifler and Sleeper as applied in Rejection I,
such that Appellants’ arguments do not apprise us of error in the Examiner’s
findings or reasoning in support of the conclusion of obviousness for
Rejection II. Accordingly, we sustain the rejection of claims 29-31 under
35 U.S.C. § 103(a) as being unpatentable over Eifler, Sleeper, and Ho.
DECISION
We AFFIRM the Examiner’s decision rejecting claims 1,4, 10, 11,
19-23, 25—28, and 32—35 under 35 U.S.C. § 103(a) as being unpatentable
over Eifler and Sleeper.
We AFFIRM the Examiner’s decision rejecting claims 29—31 under
35 U.S.C. § 103(a) as being unpatentable over Eifler, Sleeper, and Ho.
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
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