Ex Parte Cortez et al

Patent Trials and Appeals BoardOct 31, 2018

13665100 - (D) (P.T.A.B. Oct. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 13/665,100 106224 7590 White & Case LLP FILING DATE 10/31/2012 11/02/2018 701 13th Street NW Washington, DC 20005 FIRST NAMED INVENTOR Pelino V. Cortez JR. 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. 1848579-0002-013-101 6286 EXAMINER TSAI, MICHAEL JASPER ART UNIT PAPER NUMBER 3785 NOTIFICATION DATE DELIVERY MODE 11/02/2018 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): wcpatents@whitecase.com sherry. beckham@whitecase.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PELINO V. CORTEZ JR., WILLIAM F. NILAND, and GEORGE MCGARRITY1 Appeal2018-002910 Application 13/665,100 Technology Center 3700 Before JOHN C. KERINS, EDWARD A. BROWN, and ANNETTE R. REIMERS, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. Â§ 134(a) from the Examiner's decision to reject claims 1, 3-9, and 12-19 under 35 U.S.C. Â§ 103(a) as unpatentable over by Blackmer (US 4,278,082, issued July 14, 1981), Davenport (US 2008/0051674 Al, published Feb. 28, 2008), Schabel (US 7,775,210 B2, issued Aug. 17, 2010), and White (US 2017/0119989 Al, 1 Vapotherm, Inc. ("Appellant") is the applicant as provided under 37 C.F.R. Â§ 1.46 and is identified as the real party in interest. Appeal Brief 3 ("Appeal Br."), filed Aug. 25, 2017. Appeal2018-002910 Application 13/665,100 published May 4, 2017). Claims 2, 10, 11, 20, and 21 have been cancelled. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We REVERSE. CLAIMED SUBJECT MATTER The claimed subject matter relates to "respiratory therapy, and more particularly to devices for use in providing respiratory therapy." Spec. 1, 2 Figs. IA-IC. Claims 1 and 12 are independent. Claim 1 is illustrative of the claimed subject matter and recites: 1. A device for providing respiratory therapy to a patient compnsmg: a first elongated lumen having a constant internal diameter, the first lumen having an inlet end and an outlet end; a second elongated lumen having a constant internal diameter, the second lumen having an inlet end and an outlet end; and a nosepiece portion configured to be connected to the outlet ends of the first and second lumens, the nosepiece portion having: a third lumen having a constant internal diameter equal to the constant internal diameter of the first lumen, the third lumen having an inlet end adapted to be connected to the outlet end of the first lumen without constricting the internal diameter of the first lumen, the third lumen configured to receive a first flow of breathing gas from the first lumen and deliver the first flow of breathing gas to an outlet end of the third lumen; a fourth lumen having a constant internal diameter equal to the constant internal diameter of the second 2 Specification ("Spec."), filed Oct. 31, 2012. The Specification does not include paragraph or line numbering, so we refer to the Specification by page number only. 2 Appeal2018-002910 Application 13/665,100 lumen, the fourth lumen having an inlet end adapted to be connected to the outlet end of the second lumen without constricting the internal diameter of the second lumen, the fourth lumen configured to receive a second flow of breathing gas from the second lumen and deliver the second flow of breathing gas to an outlet end of the fourth lumen, the second flow of breathing gas maintained separate from the first flow of breathing gas within the nosepiece portion; and a source of heated and humidified breathing gas connected to the inlet ends of the first and second lumens, the source being configured to provide breathing gas at flow rates of about 40 liters per minute; wherein the first lumen and the nosepiece portion define a constant diameter flow path for the first flow of breathing gas from the inlet end of the first lumen to the outlet end of the third lumen; and wherein the second lumen and the nosepiece portion define a constant diameter flow path for the second flow of breathing gas from the inlet end of the second lumen to the outlet end of the fourth lumen. ANALYSIS The Examiner finds Blackmer discloses the device of claim 1 substantially as claimed, but "does not disclose that the first and second elongated lumen have an outlet end and that the third lumen and the fourth lumen have an inlet end adapted to be connected to the outlet end of the first and second lumen." Final Act. 2-3. 3 The Examiner finds "Davenport teaches a nasal cannula comprising a first elongated lumen and a second lumen, each having an outlet end ... , and a third and fourth lumen each 3 Final Office Action ("Final Act."), dated Feb. 27, 2017. 3 Appeal2018-002910 Application 13/665,100 having an inlet end adapted to be connected to the outlet end of the first and second lmnens, respectively." Id. at 3 (citing Davenport ,r 60); see also Davenport Fig. 1. The Examiner concludes it would have been obvious to modify the first, second, third, and fourth lumen[ s] of Blackmer to have a first elongated lumen and a second lumen, each having an outlet end, and a third and fourth lumen[ s] each having an inlet end adapted to be connected to the outlet end of the first and second lumens, respectively, as taught by Davenport[,] in order to allow for replacement of supply tubes or readjustment of the supply tubes for repositioning the supply tubes for a desired position of comfort for the patient. Id. at 3--4; 4 see also Ans. 9--10. 5 Appellant points out "[ u ]sing a single continuous length of tubing for each nostril" is an essential feature of Blackmer. Reply Br. 3; see also Appeal Br. 1 7. According to Appellant, to arrive at the present claims, starting from Blackmer, a skilled artisan "would need to eliminate Blackmer's essential single continuous length of tubing for each nostril," and a skilled artisan "would understand that adding any breaks to the lumens described in Blackmer would undermine the disclosed 'continuous' length tubing, which would run contrary to Blackmer's disclosed goal." Reply Br. 3 (citing Blackmer, 2:6-10); see also Appeal Br. 17. Appellant concludes "[b ]ecause there is no rationale to do away with continuous tubing in Blackmer itself, and because modifying Blackmer as suggested would contradict Blackmer's teachings, it would not have been obvious to modify 4 The Examiner relies on the teachings of Schabel and White for limitations other than those discussed above. See Final Act. 4--5. 5 Examiner's Answer ("Ans."), dated Nov. 24, 2017. 4 Appeal2018-002910 Application 13/665,100 Blackmer as proposed by the Examiner to arrive at the claimed invention." Reply Br. 3 Appellant also contends "the Examiner gives no reason why the skilled person would expect [that] adding more connections to Blackmer's cannula would have any effect on the adjustability of Blackmer's supply tubing" given that "Blackmer's system is already capable of such adjustment without modification, such as by 'bending the cheek angle C (FIG. 6)' and securing the cannula to the patient by 'looping the tubes over the ears of the patient and sliding the slide-ring upwardly relative to the neck or chin of the patient."' Appeal Br. 18 (citing Blackmer, 1:45--47; 2:6-16; 3:15-24); see also Final Act. 8. Appellant has the better position here. Based on Blackmer's disclosure, we agree with Appellant that "modifying Blackmer's [ continuous tubing] nasal cannula to include the claimed 'third' and 'fourth' lumens connected to the 'first' and 'second' lumens [in view of the teachings of Davenport, as suggested by the Examiner] would eliminate Blackmer's single continuous lumen for each nostril." Appeal Br. 16; see also Final Act. 3--4; Ans. 9-10. Blackmer discloses an "object of the invention is to construct nasal cannulae from continuous tubing" and accomplishment of this object "is made with the present invention by provision of continuous lengths of tubing such as PVC tubing or silicone tubing and the like, having ends thereof permanently formed or shaped to define narine tubes." Blackmer, 2:3-10 ( emphasis added). In addition, Blackmer's Figures 2-11 show a single continuous tube for each of the patient's nares in contrast to Figure 1 of Blackmer, which shows a device in the prior art having two continuous 5 Appeal2018-002910 Application 13/665,100 tubes whose outlet ends connect to inlet ends of a central narine tube structure in which a portion could be replaced. See Blackmer Figs. 1-11. Appellant, as noted above, also correctly points out Blackmer discloses bending the cannula at a cheek angle C for adjustability. See Blackmer, 3:15-24, Figs. 5, 6; see also Appeal Br. 18. Blackmer further discloses ( 1) "[a] slip ring 15 is fitted over the tubes 11 and 12 near the connector 13 for tightening or adjusting the loop formed by the tubes 11 and 12 relative to the body of the user or patient indicated generally at P" (Blackmer, 3:2-5; emphasis added); (2) "[h]orizontal spacing or positioning of the narine tubes 16 and 17 is determined by fit to the nasal flare F or tube contact with the septum" (id. at 3:31-33; emphasis added); (3) "the parallelism and spacing between the narine tubes 16 and 17 may be adjusted by twisting the tubes and plastic sheath 20, 20' relative to the wire core 19, 19'" (id. at 3 :39-42; emphasis added); ( 4) "[i]f desired, one narine tube may be bent downwardly at 16' and the other upwardly at 17' to simultaneously direct gas into the nostril and mouth of the user as illustrated in FIG. 10" (id. at 4:11-15); and (5) "the position of the narine tubes in a patient's nares can be accomplished with precision and repeatability ... and once bent the cannula will retain the precision, custom fit to the particular patient" (id. at 4 :45-51; emphasis added). Stated differently, Blackmer discloses a nasal cannula that allows for "readjustment of the supply tubes for repositioning the supply tubes for a desired position of comfort for the patient" and that satisfies the "requirement for different length tubing according to positioning the device around the patient depending on locations of the supply source," or the "size of the patient to comfortably wrap around the neck or head of the user based 6 Appeal2018-002910 Application 13/665,100 on preference without replacement of the nosepiece portion," which are additional reasons advanced by the Examiner in support of the alleged obviousness of modifying Blackmer in view of Davenport. See Ans. 9-10, 12; see also Final Act. 4, 8; Appeal Br. 18. Thus, the Examiner's proposed modifications of Blackmer's nasal cannula in view of the teachings of Davenport to arrive at the claimed subject matter lacks rational underpinnings. The Examiner applies the same rationale for independent claim 12. See Final Act. 2--4. Thus, the Examiner's reason for combining the teachings of Blackmer and Davenport is deficient for claim 12 as well. Accordingly, for the foregoing reasons, we do not sustain the Examiner's rejection of independent claims 1 and 12, and of claims 3-9 and 13-19 depending therefrom, as unpatentable over Blackmer, Davenport, Schabel, and White. DECISION We REVERSE the decision of the Examiner to reject claims 1, 3-9, and 12-19 as unpatentable over Blackmer, Davenport, Schabel, and White. REVERSED 7