Ex Parte Crumblin et al

Patent Trial and Appeal Board

May 30, 2017

11922140 (P.T.A.B. May. 30, 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.
11/922,140 12/13/2007 Geoffrey Crumblin PTB-4398-781 4193
23117 7590 06/01/2017
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
LOUIS, LATOYA M
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
06/01/2017 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):
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 GEOFFREY CRUMBLIN, CRAIG DAVID EDWARDS,
DANIEL ROBERT JUDSON, and BRYONY LOUISE MARSHALL
Appeal 2015-001401
Application 11/922,140
Technology Center 3700
Before GEORGE R. HOSKINS, BRANDON J. WARNER, and
LEE L. STEPINA, Administrative Patent Judges.
HOSKINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Geoffrey Crumblin et al. (“Appellants”)1 appeal under 35 U.S.C.
§134 from the Examiner’s decision rejecting claims 1—3 and 23^40 in this
application. The Board has jurisdiction over the appeal under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.
1 The Appeal Brief identifies ResMed Limited as the real party in interest.
Appeal Br. 3.
Appeal 2015-001401
Application 11/922,140
CLAIMED SUBJECT MATTER
Claim 1 is the sole independent claim on appeal, and it recites:
1. A swivel elbow for a mask assembly to supply pressurized
breathable gas, comprising:
an elbow adapted to be provided to the mask assembly; and
a swivel detachably connected to the elbow,
wherein the elbow includes a plurality of spaced apart rings
that provide a controlled clearance between the elbow and an
interior surface of the swivel, the controlled clearance being
configured to control a leak rate of the pressurized breathable gas
from the mask and between the elbow and the swivel.
Appeal Br. 39 (Claims App.).
REJECTIONS ON APPEAL
Claims 39 and 40 stand rejected under 35U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Claim 38 stands rejected under 35U.S.C. § 112, second paragraph, as
being indefinite.
Claims 1—3, 23, and 27-40 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Smith (US 2003/0094177 Al, pub. May 22, 2003),
Rudolph (US 6,192,886 Bl, iss. Feb. 27, 2001), Gunaratnam
(US 6,491,034 Bl, iss. Dec. 10, 2002), Levine (US 5,062,420, iss. Nov. 5,
1991), and Williams (US 4,626,003, iss. Dec. 2, 1986).
Claim 24 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Smith, Rudolph, Gunaratnam, Levine, Williams, and Lesinski
(US 2008/0215148 Al, pub. Sept. 4, 2008).
Claims 25 and 26 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Smith, Rudolph, Gunaratnam, Levine, Williams, and
Ashjaee (US 2004/0166789 Al, pub. Aug. 26, 2014).
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Claims 1—3, 23, and 27-40 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Smith, Rudolph, Gunaratnam, and Morch (US 3,461,877,
iss. Aug. 19, 1969).
Claim 24 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Smith, Rudolph, Gunaratnam, Morch, and Lesinski.
Claims 25 and 26 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Smith, Rudolph, Gunaratnam, Morch, and Ashjaee.
ANALYSIS
A. Written Description — Claims 39 and 40
Claim 39
Claim 39 depends from claim 1, and recites “the leak rate is a non­
zero leak rate.” Appeal Br. 41 (Claims App.).
The Examiner finds this limitation is not described in the original
disclosure of Appellants’ application in such a way as to convey possession
at the time of filing. Final Act. 2—3. The Examiner refers to Appellants’
Specification at paragraphs 42-49 as disclosing “leak restricting,” “control
of the leak rate,” and “sealing,” but reasons “[a] seal implies that there is no
flow,” as opposed to the claimed “non-zero leak rate” flow. Ans. 13—14.
The Examiner dismisses Appellants’ reliance on the Specification at
paragraph 5, because that disclosure “is found in the background section
describing the prior art,” and it “does not disclose that controlling the leak
rate is strictly defined by allowing a leak rate.” Id.
Appellants assert the limitation of claim 39 is supported by the
Specification at paragraph 5 (Appeal Br. 11) and paragraph 47 (Reply Br. 2).
Appellants contend these disclosures indicate non-zero leakage is
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contemplated, and is to be controlled below an excessive level. Appeal
Br. 11; Reply Br. 2. Based on these disclosures, Appellants argue the
Examiner errs in finding the Specification has “only disclosed a completely
fluid-tight pneumatic seal.” Reply Br. 2.
We agree with Appellants’ argument that their Specification
demonstrates possession of a non-zero leak rate. In particular, Appellants’
Specification describes “leak restricting features to improve the seal. . . and
to obtain a desired or controlled leak rate''’ Spec. 142 (emphases added).
The Specification further describes a “leak restricting feature” which
“controls] the leak rate.” Id. ]Hf 43 44 (emphasis added). The Specification
goes on to discuss sealing structures that "reduce[] leakage flow” and/or
“help[] to reduce the leak rate.” Id. Tflf 46-47 (emphases added). Based on
these various disclosures, the Specification sufficiently demonstrates
Appellants’ possession of a non-zero leak rate when the application was
filed. Therefore, we do not sustain the rejection of claim 39 for lack of
written description.
Claim 40
Claim 40 depends directly from claim 1, and recites “there is at least
some amount of leak of the pressurized breathable gas that escapes from
between the swivel and the elbow.” Appeal Br. 41 (Claims App.). The
Examiner’s rejection of claim 40 relies upon the same analysis summarized
above in connection with claim 39. See Final Act. 2—3; Ans. 13—14. For
essentially the same reasons provided above, the Specification sufficiently
demonstrates Appellants’ possession of the recited “some amount of leak”
when the application was filed. Therefore, we do not sustain the rejection of
claim 40 for lack of written description.
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B. Indefiniteness — Claim 38
The Examiner concludes the recitation in claim 38 of “the leak rate
through the swivel elbow” is indefinite, because it lacks antecedent basis.
Final Act. 3. The Examiner acknowledges claim 1, from which claim 38
directly depends, recites “a leak rate . . . from the mask and between the
elbow and the swivel.” Ans. 15. The Examiner nonetheless determines
claim 38 is indefinite because “[a] leak rate ‘through the swivel elbow’ [as in
claim 38] is not a leak rate ‘from the mask’ or ‘between the elbow and the
swivel’ [as in claim 1].” Id.
Appellants argue claim 1 provides sufficient antecedent basis for the
leak rate limitation recited in claim 38. Appeal Br. 11—12. Appellants
additionally contend “[t]he failure to provide explicit antecedent basis for
terms does not always render a claim indefinite,” and “[i]f the scope of a
claim would be reasonably ascertainable by those skilled in the art, then the
claim is not indefinite.” Id. (quoting MPEP § 2173.05(e)).
We are persuaded the Examiner errs in rejecting claim 38 as
indefinite. “[T]he statutory language of ‘particular[ity]’ and ‘distinctness]’”
in 35 U.S.C. § 112, second paragraph, requires claims “to be cast in clear—
as opposed to ambiguous, vague, indefinite—terms.” In re Packard,
751 F.3d 1307, 1313 (Fed. Cir. 2014). “The test for definiteness under
35 U.S.C. § 112, second paragraph, is whether ‘those skilled in the art would
understand what is claimed when the claim is read in light of the
specification.’” Ex Parte Miyazaki, 89 USPQ2d 1207, 1210 (BPAI 2008)
(precedential) (quoting Orthokinetics, Inc. v. Safety Travel Chairs, Inc.,
806 F.2d 1565, 1576 (Fed. Cir. 1986)). The Examiner has not established
that “the leak rate through a swivel elbow” in claim 38 is ambiguous, vague,
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or indefinite. Instead, given that claim 1 defines the swivel elbow as
comprising an elbow and a swivel, it appears that the leak rate specified in
claim 38 is the same leak rate “between the elbow and the swivel” that is
recited in parent claim 1. Thus, we do not sustain the rejection of claim 38
as indefinite.
C. Obviousness over Smith, Rudolph, Gunaratnam, Levine, and
Williams — Claims 1—3, 23, and27—40
Claims 1—3, 23, 27, 28, 31, 32, and 35—37
In rejecting claim 1, the Examiner finds Smith discloses a swivel
elbow for a mask assembly to supply pressurized gas, including elbow
connector 401 as the claimed “elbow.” Final Act. 4 (citing, inter alia,
Smith, Figs. 12—13). The Examiner finds Smith does not disclose “a swivel
detachably connected at a distal end [404] of’ elbow 401. Id.
The Examiner finds Rudolph discloses swivel 78 connected to distal
end 70 of connector elbow 66. Id.', see Rudolph, Fig. 7, 6:1—9 (second
end 70 of elbow 66 is connected to tube 78 “to permit the tube 78 to swivel
relative to the second end 70 of the elbow 66”). The Examiner determines it
would have been obvious to provide distal end 404 of Smith’s elbow 401
with a swivel, as taught by Rudolph, to provide enhanced maneuverability
and adaptability. Final Act. 4.
The Examiner finds Smith teaches distal end 404 of its elbow 401 is
removably attached to a breathing circuit. Id. The Examiner therefore
determines that the combined mask assembly of Smith and Rudolph would
have a swivel “releasably attached” to the elbow, therefore being
“detachably connected” as claimed. Id. The Examiner, additionally, cites
Gunaratnam as disclosing a swivel detachably connected to an elbow, in its
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swivel tube 29 being detachably connected to elbow part 26 via swivel
clip 41. Id. at 4—5 (citing Gunaratnam, 3:30-40). The Examiner determines
it would have been obvious to manufacture Smith’s modified elbow 401 to
be detachably connected to Rodolph’s swivel tube 78, as taught by
Gunaratnam, to provide quick attachment and removal for cleaning and
convenience. Id. at 5.
Appellants attack the Examiner’s additional finding that the opposite
end 503 of Smith’s elbow 401 is removably attached to mask body 501.
Appeal Br. 17; Final Act. 4. The rejection, however, is premised on a
detachable connection being provided at distal end 404 (not mask end 503)
of elbow 401. Final Act. 4; Ans. 17. Appellants do not address the
Examiner’s finding that Smith’s distal end 404 is detachable, and therefore
do not apprise us of Examiner error in that regard.
Appellants also argue Rudolph “does not appear to disclose that the
[swivel] tube 78 is ‘detachably connected to the elbow,”’ as claimed.
Appeal Br. 17. The rejection, however, is premised on a detachable
connection being disclosed by either Smith or Gunaratnam, not by Rudolph.
Final Act. 4—5; Ans. 17. Appellants’ argument concerning Rudolph does not
apprise us of Examiner error in that regard.
The Examiner next determines the elbow and swivel resulting from
the combination of Smith, Rudolph, and Gunaratnam does not include the
claimed “plurality of spaced apart rings.” Final Act. 5. The Examiner finds
Levine’s Figure 2 “discloses . . . that the elbow includes a plurality of spaced
apart rings (50) on its interior.” Id.', see Levine, Fig. 2, 3:24—28 (annular
sealing bands 50 provide a fluid tight seal at swivel point 49). The Examiner
determines it would have been obvious “to provide the elbow of the
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modified Smith with sealing rings as taught by Levine to provide enhanced
leak prevention.” Final Act. 5.
Appellants argue the Examiner errs in “paraphrasing” claim 1 to
suggest claim 1 recites “enhanced leak protection.” Appeal Br. 18; Reply
Br. 7—8. This argument is not persuasive. The Examiner refers to providing
enhanced leak protection as the reason a person of ordinary skill in the art
would have modified the combination of Smith, Rudolph, and Gunaratnam
to include a plurality of rings, not as a description of the scope of claim 1.
Final Act. 5; Ans. 18. Moreover, “the law does not require that the
references be combined for the reasons contemplated by the inventor.” In re
Beattie, 91A F.2d 1309, 1312 (Fed. Cir. 1992) (citing In re Kronig, 539 F.2d
1300, 1304 (CCPA 1976)).
The Examiner next determines Levine does not indicate its rings 50,
as recited in claim 1, “provide a controlled clearance between the elbow and
an interior surface of the swivel... to control a leak rate.” Final Act. 5.
The Examiner finds Williams discloses sealing ring 31 providing a
controlled clearance G that controls a leak rate. Id. (citing Williams, Fig. 2,
2:55—67). The Examiner determines it would have been obvious to modify
Levine’s sealing rings 50, when incorporating them into the modified Smith
mask assembly, “to allow controlled clearance as taught by Williams to
provide enhanced sealing and reduce friction.” Id.
Appellants’ argument in opposition to the Examiner’s reliance on
Williams presents an issue concerning the broadest reasonable construction
of the claimed controlled clearance to control a leak rate. See Appeal
Br. 12—15; Ans. 15—16. Appellants submit claim 1 requires a non-zero leak
rate to be provided by the controlled clearance. Appeal Br. 14; see also
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Reply Br. 3^4 (citing Spec. 5, 6, 42, 44, and 47 in support of proposed
claim construction). The Examiner, by contrast, construes claim 1 to
encompass eliminating, stopping, or preventing leak — that is, a zero leak
rate. Final Act. 5; Ans. 15.
We agree with the Examiner’s construction that claim 1 encompasses
controlling at a zero leak rate. During examination of a patent application,
pending claims are given their broadest reasonable construction consistent
with the Specification. In re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004). Claim 1 pertinently recites “rings that provide a
controlled clearance . . . being configured to control a leak rate.” Appeal
Br. 39 (Claims App.) (emphases added). We determine Appellants’
Specification, including the specific portions cited by Appellants, indicates a
broadest reasonable construction of claim 1 encompasses a non-zero leak
rate, but fails to indicate a broadest reasonable construction excludes a leak
rate of zero. Moreover, claim 39 depends from claim 1 to add the single
limitation of “the leak rate is a non-zero leak rate.” Appeal Br. 41 (Claims
App.). The only way to make sense of claim 39 is for claim 1 to be open to
a leak rate of zero, so that claim 39 would properly “specify a further
limitation of the subject matter claimed.” 35 U.S.C. § 112, 4. Finally,
Appellants’ argument “that if leak is occurring ... at a Teak rate,’ then leak
would not be prevented completely” (Appeal Br. 14 (emphasis added)) is not
persuasive, because it assumes the point it is trying to prove — namely, that
a “leak is occurring.” Claim 1 does not state “leak is occurring.”
Thus, we determine the broadest reasonable construction of claim 1
includes controlling a leak rate by providing a zero leak rate. The Examiner
correspondingly finds Williams discloses controlled clearance G that
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controls a leak rate “by substantially eliminating flow” (Final Act. 5) and by
“preventing leakage” (Ans. 15). Appellants agree with that finding. Appeal
Br. 12—13 (arguing Williams’s “fluid-tight seal” at sealing ring 31 means
“no leak is to occur at all” past sealing ring 31 into gap G); Reply Br. 4—5.
Thus, based on the broadest reasonable construction of claim 1, the
Examiner properly relies on Williams as disclosing a controlled clearance
configured to control a leak rate.
Appellants also argue Williams is not analogous art to the claimed
invention. Appeal Br. 15—17. A prior art reference is analogous to an
application (1) if it is from the same field of endeavor as the application,
regardless of the problem addressed, or (2) if the reference is not within the
field of the inventor’s endeavor, but is nonetheless reasonably pertinent to
the particular problem with which the inventor is involved. In re Bigio,
381 F.3d 1320, 1325 (Fed. Cir. 2004). We agree with Appellants that their
field of endeavor is “a mask assembly to supply pressurized breathable gas,”
whereas Williams’s different field of endeavor is “production of oil and gas
from offshore wells.” See Appeal Br. 15—16 (citing Williams, 1:8—9, 1:31—
34); contra Ans. 17 (determining “Williams is in the same field of endeavor
of swivel assemblies delivering pressurized air”).
However, Williams is nonetheless pertinent to the particular problem
with which Appellants are involved. Appellants’ argument in this regard
largely rests upon their narrow interpretation of claim 1, which we have
rejected supra. Appeal Br. 16; Reply Br. 6—7. More fundamentally, we
determine Appellants’ application and Williams both concern the common
problem of providing a swivel joint connection between two fluid-carrying
conduits, while still providing an effective seal against fluid escaping
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through the swivel joint. See Spec. 1 5; Williams, Abstract. The fact that
Appellants’ swivel joint transports breathable air to a human patient, while
Williams’ swivel joint transports oil or gas from offshore wells, does not
prevent Williams from being reasonably pertinent to Appellants’ problem.
Even if Appellants are correct that Williams provides a tighter seal than
Appellants desired, Williams is still reasonably pertinent to Appellants’
problem.
Appellants assert the number of references (i.e., five) cited by the
Examiner is indicative of nonobviousness. Appeal Br. 15. However, the
obviousness “criterion ... is not the number of references, but what they
would have meant to a person of ordinary skill in the field of the invention.”
In re Gorman, 933 F.2d 982, 986 (Fed. Cir. 1991). Appellants’ objection to
the number of references being combined does not address the Examiner’s
reasons for the various combinations and modifications. It is, therefore, not
persuasive of Examiner error.
For the foregoing reasons, we sustain the rejection of claim 1 as
having been obvious over Smith, Rudolph, Gunaratnam, Levine, and
Williams. Appellants do not submit further arguments in opposition to the
corresponding obviousness rejection of claims 2, 3, 23, 27, 28, 31, 32, and
35—37, each of which depends directly or indirectly from claim 1. See
Appeal Br. 12—23. Thus, we likewise sustain the rejection of those claims as
having been obvious over Smith, Rudolph, Gunaratnam, Levine, and
Williams. See 37 C.F.R. § 41.37(c)(l)(iv).
Claim 29
Claim 29 depends from claim 1, and recites “the controlled clearance
controls leak without significantly increasing rotational resistance.” Appeal
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Br. 40 (Claims App.). The Examiner determines “the modified Smith
discloses that the controlled clearance controls leak without significantly
increasing rotational resistance.” Final Act. 6 (citing Williams, 2:52—65,
3:14—30). The Examiner particularly points to Williams’s choice of
materials for sealing ring 31 (Teflon) and extrusion ring 37 (Ryton, metal, or
metal impregnated with Teflon), such that the amount of friction between
the two “is extremely low” thereby providing swivel joint 11 between inner
member 12 and outer member 13. Ans. 18 (quoting Williams, 3:25—39).
Appellants argue the Williams disclosures cited by the Examiner do
not disclose the limitation of claim 29. Appeal Br. 19. According to
Appellants, the cited disclosures reflect “reducing friction by using certain
materials and polishing,” not the claimed leak control “without significantly
increasing rotational resistance.” Id.
We are not persuaded of Examiner error. A preponderance of the
evidence supports the Examiner’s finding that Williams controls leaks
through swivel joint 11 without significantly increasing the rotational
resistance of swivel joint 11. Indeed, the Title of Williams is “Constant
Motion Swivel Seal Assembly,” identifying the two principal goals of the
Williams disclosure — swiveling (i.e. rotation) and sealing (i.e. leak
control). Thus, we sustain the rejection of claim 29 as having been obvious
over Smith, Rudolph, Gunaratnam, Levine, and Williams.
Claim 30
Claim 30 depends from claim 1, and recites “the controlled clearance
reduces leak rate and controls variation in leak rate between the elbow and
the swivel.” Appeal Br. 40 (Claims App.). In the rejection, the Examiner
groups claim 30 with claim 29, and states “the modified Smith discloses that
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the controlled clearance controls leak without significantly increasing
rotational resistance.” Final Act. 6 (citing Williams, 2:52—65, 3:14—30).
According to the Examiner, that finding addresses claim 30 because
“Williams discloses controlling the leak rate by stopping the leak rate (col. 2
lines 52—65) which would thereby reduce leak rate and control variations as
claimed.” Ans. 19. Specifically concerning control of variations in leak
rate, the Examiner reasons “[controlling leak rate to equal zero or near zero
also controls variations as changes in leak rate would also be controlled such
that the variations could only result in rates of zero or near zero.” Id.
Appellants argue the rejection, as set forth in the Final Office Action,
is deficient for failing to address the limitation of claim 30. Appeal Br. 19—
20; Reply Br. 8. Appellants additionally argue the Williams disclosure cited
by the Examiner does not disclose the limitation of claim 30, based on their
narrow construction of “leak rate.” Appeal Br. 20; Reply Br. 9. Further
according to Appellants, “[i]f leak is completely prevented, as appears to be
the case in Williams, Appellants do not believe its variation could be
controlled.” Appeal Br. 20.
We are not persuaded of Examiner error. Appellants’ narrow
construction of claim 1 is incompatible with the broadest reasonable
construction standard, for the reasons provided above. As to the claimed
“controlling] variation in leak rate,” we agree with the Examiner that
controlling the leak rate to equal zero as in Williams would control variation
in the leak rate.
For the foregoing reasons, we sustain the rejection of claim 30 as
having been obvious over Smith, Rudolph, Gunaratnam, Levine, and
Williams.
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Claims 33 and 34
Claim 33 depends indirectly from claim 1, and recites, inter alia,
a “collar positioned downstream from the plurality of spaced apart rings.”
Appeal Br. 40 (Claims App.). In the Final Office Action, the Examiner finds
Rudolph’s Figure 7 discloses “a collar (71) provided to the inlet
conduit (67), the collar (71) positioned downstream from the plurality of
spaced apart rings.” Final Act. 7 (emphasis added). In the Answer, the
Examiner changes position in stating that “Rudolph has not been relied on
alone for this teaching,” and cites Levine’s Figure 2 as disclosing “spaced
apart rings (50).” Ans. 19. According to the Examiner, Rudolph’s collar 71
is “provided to the inlet conduit (67) at its distal end,” so in the resulting
combination of references “the collar (71) is positioned downstream from
the plurality of spaced apart rings, since the collar (71) is on the distal end.”
Id.
Appellants argue the Examiner errs in relying on Rudolph as
disclosing a collar positioned downstream from rings, because Rudolph does
not teach rings. Appeal Br. 20-21. Appellants additionally argue the
Examiner errs in finding Levine’s Figure 7 shows collar 71 at the distal end
of elbow 66, and “there is nothing in the disclosure of Rudolph that would
suggest positioning the [collar 71] ‘downstream from’ the annular sealing
bands 50 of Levine.” Reply Br. 9.
We are persuaded of Examiner error. The Examiner does not
establish that Rudolph discloses a plurality of rings; therefore, the Examiner
does not establish that Rudolph discloses collar 71 being positioned
downstream of rings. As to Levine, we agree with Appellants that Levine’s
Figure 7 illustrates passageway 67 of elbow 66 extends beyond beveled
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ridge 71 at the distal end, so the Examiner’s finding in that regard is not
supported by a preponderance of the evidence. Moreover, the Examiner has
not adequately explained why or how a person of ordinary skill in the art
would have combined Rudolph and Levine to place Rudolph’s collar 71
downstream from Levine’s rings 50.
For the foregoing reasons, we do not sustain the rejection of claim 33
as having been obvious over Smith, Rudolph, Gunaratnam, Levine, and
Williams. The Examiner’s additional consideration of claim 34, which
depends from claim 33, does not cure the noted deficiencies. See Final
Act. 7. We therefore do not sustain the same rejection of claim 34.
Claims 38—40
Claim 38 depends from claim 1, and recites “the pressurized
breathable gas leaks from the mask assembly at an overall leak rate and the
leak rate through the swivel elbow forms part of the overall leak rate.”
Appeal Br. 41 (Claims App.). Claim 39 depends from claim 1, and recites
“the leak rate is a non-zero leak rate.” Id. Claim 40 depends from claim 1,
and recites “there is at least some amount of leak of the pressurized
breathable gas that escapes from between the swivel and the elbow.” Id.
In rejecting claims 38-40, the Examiner determines Rudolph’s
Figure 7 discloses “a mechanical connection without seals connecting the
elbow (66) and the swivel (78).” Final Act. 7 (emphasis added) (citing
Rudolph, Fig. 2); Ans. 20. The Examiner determines “at least some gas
would be able to escape from the unsealed mechanical connection between
the swivel and the elbow to form part of the overall non-zero leak rate.”
Final Act. 7 (emphasis added).
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Appellants persuasively argue the rejection fails to reconcile the
discrepancy between the Examiner’s reliance on Rudolph’s lack of seal as
leading to escaping gas, with the Examiner’s reliance on Levine as
disclosing “sealing rings ... to provide enhanced leak prevention” and
Williams for “enhanced sealing.” Final Act. 5. That is, even assuming
Rudolph’s lack of seal allows gas to escape, the Examiner has not
established why or how adding a seal as disclosed by Levine and Williams
would still allow gas to escape, as recited in claims 38-40. Therefore, we do
not sustain the rejection of claims 38-40 as having been obvious over Smith,
Rudolph, Gunaratnam, Levine, and Williams.
D. Obviousness over Smith, Rudolph, Gunaratnam, Levine, Williams,
and Lesinski — Claim 24
Claim 24 depends from claim 1, and recites “the controlled clearance
is about 0.05-0.3 mm between the elbow and the swivel.” Appeal Br. 39
(Claims App.). The Examiner relies on Lesinski as teaching a controlled
clearance of “1 mm,” we assume meaning 0.1 mm. Final Act. 11 (citing
Lesinski, Fig. 4, | 53). Appellants argue Lesinski is not analogous art to the
present application. Appeal Br. 33—35; Reply Br. 14. We agree with
Appellants, for the following reasons.
As to field of endeavor, the Examiner determines “Lesinski is in the
field of endeavor of spacing between fluid seal interfaces ([0053]),” as is
Appellants’ application. Ans. 25. We disagree with this overly broad
characterization of Lesinski’s field of endeavor. Lesinski’s field of endeavor
is hearing aids for implantation into a patient’s ear. Lesinski | 1.
Appellants’ field of endeavor, by contrast, is “a mask assembly to supply
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pressurized breathable gas to a patient’s mouth or nose.” Spec. Tflf 3^4.
Thus, the respective fields of endeavor are not the same.
As to reasonable pertinence to the problem with which Appellants are
involved, the Examiner determines Lesinski is “pertinent to the problem . . .
to be solved of appropriate dimensioning for optimal functioning of sealing
rings.” Ans. 25. This determination that any seal is reasonably pertinent to
Appellants’ invention overlooks significant differences between the
problems addressed by sealing a hearing aid within a patient’s ear (as in
Lesinski) and sealing breathable air within a mask (as in Appellants’
application). The Examiner has not provided any reasoning in support of the
conclusion that the problems encountered when sealing a hearing aid within
a patient’s ear are reasonably related to the problems encountered when
sealing breathable air within a mask.
Having determined that Lesinski is not analogous art to Appellants’
application, we do not sustain the rejection of claim 24 as having been
obvious over Smith, Rudolph, Gunaratnam, Levine, Williams, and Lesinski.
E. Obviousness over Smith, Rudolph, Gunaratnam, Levine, Williams,
and Ashjaee — Claims 25 and 26
Claim 25 depends from claim 1 to recite “each ring includes a width
of about 1 mm,” and claim 26 depends from claim 1 to recite “the rings are
spaced apart from one another by about 1.2 mm.” Appeal Br. 39-40
(Claims App.). The Examiner relies on Ashjaee as teaching a sealing ring
thickness of between 0.5 and 1.5 mm, leading to the subject matter of
claims 25 and 26. final Act. 11—12 (citing Ashjaee 145). Appellants argue
Ashjaee is not analogous art to the present application. Appeal Br. 35—36;
Reply Br. 14—15. We agree with Appellants, for the following reasons.
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As to field of endeavor, the Examiner determines “Ashjaee is in the
field of endeavor of sealing rings for sealing (abstract),” as is Appellants’
application. Ans. 25. We disagree with this overly broad characterization of
Ashjaee’s field of endeavor. Ashjaee’s field of endeavor is semiconductor
processing. Ashjaee 13. Appellants’ field of endeavor, by contrast, is “a
mask assembly to supply pressurized breathable gas to a patient’s mouth or
nose.” Spec. ^fl[ 3^4. Thus, the respective fields of endeavor are not the
same.
As to reasonable pertinence to the problem with which Appellants are
involved, the Examiner determines Ashjaee is “pertinent to the problem to
be solved of determining appropriate spacing to provide an appropriate
[width] for enhanced sealing ([0045] lines 1—10)” Ans. 25. This
determination that any seal is reasonably pertinent to Appellants’ invention
overlooks significant differences between the problems addressed by sealing
a semiconductor substrate during manufacturing processes (as in Ashjaee)
and sealing breathable air within a mask (as in Appellants’ application). The
Examiner has not provided any reasoning in support of the conclusion that
the problems encountered when sealing a semiconductor substrate during
manufacturing processes are reasonably related to the problems encountered
when sealing breathable air within a mask.
Having determined that Ashjaee is not analogous art to Appellants’
application, we do not sustain the rejection of claims 25 and 26 as having
been obvious over Smith, Rudolph, Gunaratnam, Levine, Williams, and
Ashjaee.
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Application 11/922,140
F. Obviousness over Smith, Rudolph, Gunaratnam, and Morch —
Claims 1—3, 23, and 27—40
In this rejection of claim 1, the Examiner relies upon Morch as
disclosing the claimed “plurality of spaced apart rings.” Final Act. 8—9.
Specifically, the Examiner cites Morch’s threads 50 on tube 46, and
threads 56 on leg 52 of T-piece 40, as corresponding to the claimed spaced
apart rings. Id.', see Morch, 3:20-26, 3:68-4:8. The Examiner reasons
Morch’s Figure 2 shows “’’threads (54) are spaced apart rings” and
“threaded portions 50 and 54 are spaced apart from each other.” Ans. 21.
We agree with Appellants’ argument that the Examiner errs in finding
Morch’s threads 50 and 54 correspond to the spaced apart rings recited in
claim 1. Appeal Br. 23—24. First, claim 1 requires that “the elbow includes
a plurality of spaced apart rings.” Id. at 39 (Claims App.) (emphasis added).
The elbow of Morch’s assembly is T-piece 40, not tube 46, so threads 54 of
tube 46 are irrelevant to the claimed plurality of spaced apart rings. As to
threads 50, we agree with Appellants that a “thread is ‘a continuous helical
rib, as on a screw or pipe.’” Appeal Br. 24 (quoting Dictionary of
Engineering); Morch, 3:20-26, 3:68—75. A continuous helical rib, even if
considered a “ring” under a broadest reasonable interpretation, is not a
plurality of spaced apart rings as recited in claim 1.
None of Smith, Rudolph, and Gunaratnam cures the noted deficiency
of Morch as to claim 1. See Final Act. 7—8. Further, the Examiner’s
consideration of dependent claims 2, 3, 23, and 27-40 does not cure the
noted deficiency. See id. at 9-10. Thus, we do not sustain the rejection of
claims 1—3, 23, and 27-40 as having been obvious over Smith, Rudolph,
Gunaratnam, and Morch.
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Application 11/922,140
G. Obviousness over Smith, Rudolph, Gunaratnam, Morch, and either
Lesinski or Ashjaee — Claims 24—26
The Examiner’s additional consideration of dependent claims 24—26
in light of Lesinski and Ashjaee does not cure the deficiency of Morch as to
parent claim 1. See Final Act. 12—13. Further, for reasons provided above,
neither Lesinski nor Ashjaee is analogous art to the present application.
Thus, we do not sustain the rejection of claim 24 as having been obvious
over Smith, Rudolph, Gunaratnam, Morch, and Lesinski, or the rejection of
claims 25 and 26 as having been obvious over Smith, Rudolph, Gunaratnam,
Morch, and Ashjaee.
DECISION
The rejection of claims 39 and 40 as failing to comply with the written
description requirement is reversed.
The rejection of claim 38 as being indefinite is reversed.
The rejection of claims 1—3, 23, and 27-40 as having been
unpatentable over Smith, Rudolph, Gunaratnam, Levine, and Williams is
affirmed as to claims 1—3, 23, 27—32, and 35—37, and reversed as to
claims 33, 34, and 38-40.
The rejection of claim 24 as having been unpatentable over Smith,
Rudolph, Gunaratnam, Levine, Williams, and Lesinski is reversed.
The rejection of claims 25 and 26 as having been unpatentable over
Smith, Rudolph, Gunaratnam, Levine, Williams, and Ashjaee is reversed.
The rejection of claims 1—3, 23, and 27-40 as having been
unpatentable over Smith, Rudolph, Gunaratnam, and Morch is reversed.
The rejection of claim 24 as having been unpatentable over Smith,
Rudolph, Gunaratnam, Morch, and Lesinski is reversed.
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Appeal 2015-001401
Application 11/922,140
The rejection of claims 25 and 26 as having been unpatentable over
Smith, Rudolph, Gunaratnam, Morch, and Ashjaee is reversed.
No time period for taking any subsequent action in connection with
this appeal maybe extended, under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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