Ex Parte Dantanarayana et al

Patent Trial and Appeal Board

Sep 25, 2012

10433980 (P.T.A.B. Sep. 25, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte MUDITHA PRADEEP DANTANARAYANA and
SAAD NASAR
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Appeal 2010-000350
Application 10/433,980
Technology Center 3700
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Before STEVEN D.A. McCARTHY, BRETT C. MARTIN and
ANNETTE R. REIMERS, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellants1 appeal under 35 U.S.C. § 134 from the Examiner’s 1
final decision rejecting claims 28-31, 33-57 and 59-71. Claims 1-27, 72 and 2
73 are cancelled. The Examiner has withdrawn the only rejection entered 3
against claims 32 and 58 in the Final Office Action mailed July 9, 2008 4

1 The Appellants identify the real party in interest as ResMed Limited.
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(“Final Rejection”). (See Ans. 3). We have jurisdiction under 35 U.S.C. 1
§ 6(b)(1). 2
We sustain the rejection under 35 U.S.C. § 103(a) of claims 28, 33, 3
41-43, 56, 59 and 67-71 as being unpatentable over Walker (WO 00/38772 4
A1, publ. Jul. 6, 2000) and Hashimoto (US 5,655,898, issued Aug. 12, 5
1997). 6
We do not sustain the rejection under § 103(a) of claims 29-31, 34-38, 7
40, 57, 60-64 and 66 as being unpatentable over Walker and Hashimoto; of 8
claims 39 and 65 as being unpatentable over Walker, Hashimoto and 9
Cheung (US 6,210,514 B1, issued Apr. 3, 2001); of claims 44-47 and 49-51 10
as being unpatentable over Walker, Hashimoto and Worthen (US 4,230,149, 11
issued Oct. 28, 1980); of claims 48 and 52 as being unpatentable over 12
Walker, Hashimoto, Worthen and Griffin (US 5,743,289, issued Apr. 28, 13
1998); or of claims 53-55 as being unpatentable over Walker, Hashimoto 14
and Griffin. 15
The Appellants state that the technology at issue in this appeal “has 16
been developed primarily for use in controlling the venting of washout gas 17
in a continuous positive airway pressure (CPAP) gas delivery system used, 18
for example, in the treatment of obstructive sleep apnea (OSA) and similar 19
sleep disordered breathing conditions.” (Spec. 1, ll. 13-15). Claim 28 is 20
illustrative: 21
28. A flow regulation vent for venting 22
washout gas to atmosphere and for regulating flow 23
from a pressurized gas supply, comprising: 24
a housing having a vent orifice and a curved 25
surface at least partially surrounding the vent 26
orifice; and 27
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a spring force biased flap adapted to be 1
flowingly connected to the pressurized gas supply, 2
3
the flap having a first position 4
connected to the housing and a 5
movable portion pivoted by the spring 6
force away from the housing in a 7
relaxed state to establish a first gas 8
washout flow area between the flap 9
and the orifice; 10
whereby, an increase in a 11
pressure of the pressurized gas supply 12
progressively offsets the spring force 13
of the flap to move an increasing 14
portion of the movable flap portion 15
into contact with the curved surface of 16
the housing to decrease the gas 17
washout flow area between the flap 18
and the vent orifice. 19
20
ISSUES 21
The Appellants argue the patentability of independent claims 28 and 22
70 together for purposes of the rejection over Walker and Hashimoto. (App. 23
Br. 18-25). Claim 28 is representative of the grouping including claims 28, 24
41, 42 and 70. The Appellants also argue independent claims 56 and 71 25
together. Claim 56 is representative of the grouping including claims 56, 67, 26
69 and 71. Among the dependent claims, the Appellants argue the 27
patentability of claims 35-38 over Walker and Hashimoto as a group; and 28
separately argue the patentability of claims 29-31, 33, 34, 40 and 43 over 29
Walker and Hashimoto. (App. Br. 26-36). 30
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Only issues and findings of fact contested by the Appellants have 1
been considered. See Ex parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI 2
2010). That said, this appeal turns on five issues: 3
First, is any one or more of Hashimoto, Cheung, 4
Worthen and Griffin non-analogous art? (App. Br. 18-20 and 5
36-39; Reply Br. 14-15). 6
Second, do the evidence and technical reasoning 7
underlying the rejection of claim 28 adequately support the 8
conclusion that one of ordinary skill in the art would have had 9
reason to modify the valve described by Walker to include a 10
curved surface at least partially surrounding a vent orifice such 11
that “an increase in a pressure of the pressurized gas supply 12
progressively offsets the spring force of the flap to move an 13
increasing portion of the movable flap portion into contact with 14
the curved surface of the housing to decrease the gas washout 15
flow area between the flap and the vent orifice?” (App. Br. 20-16
25; Reply Br. 7-9). 17
Third, do the evidence and technical reasoning 18
underlying the rejection of claims 56 and 71 adequately support 19
the conclusion that one of ordinary skill in the art would have 20
had reason to modify the valve described in Walker to include a 21
spring force biased flap having “two end portions engaging the 22
housing and a central movable portion?” (App. Br. 25-26). 23
Fourth, do the evidence and technical reasoning 24
underlying the rejections of claims 33, 43, 59 and 68 adequately 25
support the conclusion that a flow regulation valve “wherein the 26
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housing is in the form of a cover to cover a vent chamber 1
housing flowingly connected to the pressurized gas” would 2
have been obvious? (See App. Br. 31-32 and 35-36). 3
Fifth, do the evidence and technical reasoning underlying 4
the rejections of claims 29-31, 34, 40, 57-64 and 66 adequately 5
support the conclusion that the subject matter of these claims 6
would have been obvious? (See App. Br. 26-28 and 32-35; 7
Reply Br. 10-14). 8
9
FINDING OF FACT 10
The record supports the following findings of fact (“FF”) by a 11
preponderance of the evidence. 2 12
1. Walker describes an anti-asphyxia valve “developed primarily 13
for use between a patient and a means to deliver breathable gas to the 14
patient, such as in the [CPAP] treatment of [OSA] syndrome.” (Walker 1, ll. 15
3-7). 16
2. Walker’s valve includes two housing parts 18, 20 which may be 17
locked together by way of respective male and female bayonet fittings 22, 18
24. The housing part 18 includes an inlet to the interior of the housing part 19

2 The Appellant argues that “[a]ll findings of fact made by the
[E]xaminer during prosecution must be supported by substantial evidence.”
(App. Br. 19). The Board reviews facts found by the Examiner to determine
whether those facts are supported by a preponderance of the evidence. In re
Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985). The “substantial evidence”
standard applies only to judicial review of the Board’s fact-findings. See In
re Gartside, 203 F.3d 1305, 1315 (Fed. Cir. 2000). Since our review of the
Examiner’s fact findings is less deferential than review under a “substantial
evidence” standard would have been, the Appellants are not prejudiced.

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18 capable of flowing connection to a pressurized gas supply. (Walker 5, ll. 1
11-14). As depicted in Figures 3A and 3B of Walker, each of the two 2
housing parts 18, 20 is open in the side facing the other. Consequently, 3
when the two housing parts 18, 20 are connected, the housing part 20 and its 4
fitting 24 serve as a cover for a vent chamber defined by the interior of the 5
housing part 18. (See Ans. 6). 6
3. Walker’s housing part 20 includes a vent orifice in the form of 7
six peripherally arranged ports 30 each separated by one of six connecting 8
members 31. (Walker 5, ll. 16-17). 9
4. Walker’s valve also includes a flexible flap means 32 of 10
generally round cross-section formed from silicone rubber. The flexible flap 11
means 32 has a central orifice 33 and an outer rim 34, each also presumably 12
of circular cross-section. The flexible flap means 32 includes flexible flaps 13
35. (Walker, 5, ll. 16-22 and figs. 3A and 3B). 14
5. Walker teaches that, 15
when the difference in the gas pressure between 16
the housing interior and atmosphere is below a 17
predetermined operating threshold of, for example 18
2 cm H2O, the flaps 35 are in a relaxed state and 19
inherently biased to an “open” position allowing 20
gas flow from the interior of the housing through 21
the ports 30 and to atmosphere. . . . When the 22
breathable gas supply commences or resumes and 23
the difference in the gas pressure between the 24
housing interior and atmosphere builds up to equal 25
or above 2 cm H2O the flaps move to a “closed” 26
position occluding the ports 30 shown in Fig. 4. 27
(Walker 5, ll. 23-27 and 30-33). “The inherent resilience of the silicone 28
rubber flaps 35 [re-open] the ports 30 when the pressure difference 29
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(operating threshold) between the interior of the valve 14 and atmosphere 1
[falls] below approximately 2 cm H2O.” (Walker 6, ll. 21-23). 2
6. Walker states that Walker’s valve “is also very quiet.” (Walker 3
9, l. 7). This statement implies that noise was a known design criterion for 4
valves developed for use in CPAP systems. 5
7. Hashimoto describes a discharge valve assembly including a 6
discharge reed valve 81 secured to a valve plate 25 by a bolt 82. 7
(Hashimoto, col. 4, ll. 34-36). 8
8. Figure 5 of Hashimoto depicts the discharge reed valve 81 as 9
having a floriated shape including a substantially flat, central portion 81a 10
and a plurality of sealing portions 81b radiating outwardly from the central 11
portion 81a. (See also Hashimoto, col. 4, ll. 38-41). As depicted in Figures 12
4 and 5 of Hashimoto, the bolt 82 secures the discharge reed valve 81 to the 13
valve plate 85 at the center of the central portion 81a. The discharge reed 14
valve 81 is made from an elastic member. (Hashimoto, col. 4, ll. 36-38). 15
9. Hashimoto’s valve plate 25 includes a plurality of annularly 16
arranged recessed portions 250. Each recessed portion 250 includes an 17
inclined or curved surface 251 surrounding a discharge hole 252. 18
(Hashimoto, col. 4, ll. 42-46). Figure 5 of Hashimoto depicts each sealing 19
portion 81b of Hashimoto’s discharge reed valve 81 as having a bulbous 20
outer end aligned axially with one of the discharge holes 252. Figure 5 also 21
depicts the discharge holes 252 as being circular in cross-section. 22
10. When the discharge reed valve 81 is in its closed position, each 23
sealing portion 81b engages a respective curved surface 251 to seal the 24
discharge holes 252. (Hashimoto, col. 4, ll. 46-48). The elasticity of the 25
discharge reed valve 81 keeps the discharge holes 252 sealed until pressure 26
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behind the sealing portions 81b reaches a predetermined value. (See 1
Hashimoto, col. 1, ll. 43-46). 2
11. Hashimoto is reasonably pertinent to the problem of reducing 3
noise and vibration in a valve with an elastic closure member. More 4
specifically, Hashimoto teaches that one problem with similar known 5
discharge valve assemblies was the generation of vibration and noise when 6
the discharge reed valve struck the valve plate during operation. 7
(Hashimoto, col. 1, ll. 46-54). 8
12. In the arrangement described by Hashimoto, the discharge reed 9
valve 81 returns to its closed position primarily due to the pressure 10
difference across the discharge valve assembly rather than due to the elastic 11
restoring force of the discharge reed valve 81. This behavior lowers the 12
force with which the sealing portions 81b strike the valve plate 25 as 13
compared to the striking forces in similar known discharge valves. The 14
result of this reduction in the striking force is a reduction in the noise and 15
vibration generated by the discharge valve assembly. (Hashimoto, col. 1, ll. 16
57-65 and col. 2, ll. 8-18). 17
13. Hashimoto is not non-analogous art. Although Hashimoto 18
describes Hashimoto’s valve as “a valve discharge mechanism of a 19
refrigerant compressor used in an automotive air conditioning system” 20
(Hashimoto, col. 1, ll. 13-16), the teachings of Hashimoto are related to a 21
problem with which the Appellants were involved. 22
14. The Specification states that one problem with which the 23
Appellant was involved was noise or vibration in the vent. Valve noise was 24
a known design criterion for vents developed for use in CPAP systems. 25
(Walker 9, l. 7 (“The valve of the present invention is also very quiet in 26
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operation.”)). The Appellants in the Specification acknowledge that vent 1
noise was a known problem with extant vents for venting washout gas to 2
atmosphere and for regulating flow from a pressurized gas supply. (E.g., 3
Spec. 2, ll. 19-21 (“Existing prior art vents can produce excessive noise 4
when CPAP pressures are raised above about 4 cm H2O. This noise can 5
adversely affect patient and bed-partner comfort.”)). Since Hashimoto is 6
reasonably pertinent to the problem of reducing noise and vibration in a 7
valve with an elastic closure member (see FF 105-07), Hashimoto is not 8
non-analogous art. 9
10
ANALYSIS 11
First Issue 12
The Appellants argue that all of the references cited by the Examiner 13
except Walker are non-analogous art. (App. Br. 18-20 and 26-36). The 14
Examiner has articulated sufficient findings and reasoning to support a 15
finding that Hashimoto is not non-analogous. One criterion for establishing 16
that art is not non-analogous is whether the reference is reasonably pertinent 17
to the particular problem with which the inventor was involved. In re 18
Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986). Hashimoto is reasonably 19
pertinent to the problem of reducing vent noise and vibration. (FF 11-12). 20
The Specification indicates that the Appellants were involved with this 21
problem. (FF 13). Therefore, Hashimoto is not non-analogous art. (FF 14). 22
On the other hand, the Examiner has not articulated sufficient findings 23
or reasoning to support the finding that Cheung, Worthen and Griffin are not 24
non-analogous. For example, Cheung describes the use of low tack 25
elastomeric membranes in the production of cantilevered electrostatically 26
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operated air valve flap arrays. (See Cheung, col. 1, ll. 55-58; col. 9, ll. 24-26 1
and fig. 4). The Examiner finds that, 2
[r]egarding the incorporation of [Cheung], the 3
prior art made of record did not teach or disclose 4
the specific material by which the [valve] can be 5
made. In order to address the novelty of this 6
material of construction, one of ordinary skill in 7
the art and the Examiner would look to additional 8
valves of the prior art and would have located [the] 9
prior art reference to [Cheung]. [Cheung] teaches 10
the use of polyester film in the construction of air 11
valve flaps for the purpose of providing a material 12
that can be readily fabricated [through] the use of 13
lasers (Column 9, lines 20-35). 14
(Ans. 17). The Examiner provides similar findings and reasoning with 15
respect to Worthen and Griffin. (See Ans. 18 and 19). 16
The Examiner does not appear to articulate any persuasive finding as 17
to whether Cheung is within the Appellants’ field of endeavor or is 18
reasonably pertinent to a problem with which the Appellants were involved. 19
Since the Examiner’s findings, as articulated in the Answer, do not prove by 20
a preponderance of the evidence that Cheung, Worthen and Griffin are not 21
non-analogous, we do not sustain the rejection under § 103(a) of claims 39 22
and 65 as being unpatentable over Walker, Hashimoto and Cheung; of 23
claims 44-47 and 49-51 as being unpatentable over Walker, Hashimoto and 24
Worthen; of claims 48 and 52 as being unpatentable over Walker, 25
Hashimoto, Worthen and Griffin; or of claims 53-55 as being unpatentable 26
over Walker, Hashimoto and Griffin. 27
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Second and Third Issues 1
The Examiner correctly finds that Walker describes a flow regulation 2
vent including a housing having a vent orifice and a spring force biased flap 3
adapted to be flowingly connected to the pressurized gas supply. (Ans. 4; 4
see also FF 2). In addition, the Examiner correctly finds that the flap has a 5
first position connected to the housing and a movable portion pivoted by the 6
spring force away from the housing in a relaxed state to establish a first gas 7
washout flow area between the flap and the orifice as recited in claim 28. 8
(Ans. 4; see also FF 4 and 5). Alternatively, the Examiner correctly finds 9
that Walker describes the flap has a first side adapted to face the pressurized 10
gas supply, an opposite second side facing the vent orifice, two end portions 11
engaging the housing and a central movable portion pivoted by the spring 12
force away from the vent orifice in a relaxed state to establish a first gas 13
washout flow area between the flap and the vent orifice as recited in claim 14
56. (Id.) Two disjoint portions of the outer rim 34 of the flexible flap means 15
32 correspond to the two end portions recited in claim 56. (see Ans. 14; see 16
also FF 4). The portions of the flaps 35 adjacent the central orifice 32 which 17
cover the peripherally arranged ports 30 correspond to the central portion 18
recited in claim 56. (See FF 3 and 5). 19
Although Walker describes a flow regulation vent including several 20
limitations of claims 28 and 56, Walker does not describe Walker’s valve as 21
having a curved surface at least partially surrounding the vent orifice. (See 22
id.) Nevertheless, Walker indicates that noise was a known design criterion 23
for valves developed for use in CPAP systems. (FF 6). 24
Hashimoto’s valve includes a valve plate 25 and spring force biased 25
flaps in the form of sealing portions 81b. (FF 8 and 10). Hashimoto teaches 26
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that the curvature of the curved surfaces 251 lowers the force with which the 1
sealing portions 81b strike the valve plate 25, thereby reducing the noise and 2
vibration generated by the discharge valve assembly. (FF 15). 3
Therefore, the Examiner correctly concluded that it would have been 4
obvious “to modify the device of Walker to include a sound limiting 5
structure such as the curved surface as taught by Hashimoto for controlling 6
the operational noise of the respiratory device.” (Ans. 13). The property by 7
which “an increase in a pressure of the pressurized gas supply progressively 8
offsets the spring force of the flap to move an increasing portion of the 9
movable flap portion into contact with the curved surface of the housing to 10
decrease the gas washout flow area between the flap and the vent orifice” as 11
recited in claim 1, and the similar property recited in claim 56, would have 12
flowed naturally from the modification at least over a small range of 13
pressures near 2 cm H2O. See Ex Parte Obiaya, 227 USPQ 58, 60 (BPAI 14
1985)(“The fact that appellant has recognized another advantage which 15
would flow naturally from following the suggestions of the prior art cannot 16
be the basis for patentability when the differences would otherwise be 17
obvious.”). 18
The proposed modification would not have altered the principle by 19
which Walker’s valve operated. Even after the proposed modification to 20
Walker’s valve, the flaps 35 of the flexible flap means 32 will continue to 21
move between open and closed positions. The difference will be that the 22
curved surfaces which, in the modified valve, surround the ports 30 will 23
reduce the striking force of the flaps 35. While the curved surfaces may 24
incidentally result in the movement of an increasing portion of the flaps 35 25
into contact with the curved surface so as to decrease the flow area between 26
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the flaps 35 and the ports 30 over a small range of pressures near the 1
threshold pressure, this result likely would not have been so significant as to 2
have discouraged one of ordinary skill in the art from the proposed 3
modification. Therefore, we sustain the rejection of claims 28, 41, 42, 56, 4
67 and 69-71 under § 103(a) as being unpatentable over Walker and 5
Hashimoto. 6
7
Fourth Issue 8
Claim 33 recites a “flow regulation vent as in claim 28, wherein the 9
housing is in the form of a cover to cover a vent chamber housing flowingly 10
connected to the pressurized gas.” Claim 59 depends from claim 56 and 11
recites a similar limitation. The Examiner finds that “Walker discloses a 12
cover (24) adapted to engage the base (22) and fix the flow regulation vent 13
(14) there between, the cover having at least one orifice (Figure 2) 14
therethrough for providing gas communication between the flow regulation 15
vent and the atmosphere.” (Ans. 6). The Appellants argue that the “female 16
bayonet fitting 24 of Walker et al. does not correspond to the cover of [claim 17
33] as it does not cover a vent chamber housing flowingly connected to a 18
pressurized gas supply. The female bayonet fitting 24 of Walker et al. is 19
merely an annular female receptor configured to accept the male bayonet 20
fitting 22 to permit assembly of the valve 14.” (App. Br. 32). 21
The Appellants do not appear to define the term “cover” in the 22
Specification. The term “cover” is sufficiently broad to encompass 23
“something that covers [that is, overlays or protects] the opening of a hollow 24
container.” (WEBSTER’S THIRD NEW INT’L DICTIONARY (G&C Merriam 25
1971)(“lid,” entry 1, def. 1; see also “cover,” entry 1, def. 3 and entry 2, def. 26
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2a)). This definition is consistent with the usage of the term in the 1
Specification. (See Spec. 12, ll. 9-10 and figs. 4-6 (using the term “cover 2
40” to refer to an element which appears to overlay and protect the vent 10)). 3
In view of this interpretation, the Examiner’s finding is correct. (See FF 2). 4
We sustain the Examiner’s rejection of claims 33 and 59 under § 103(a) as 5
being unpatentable over Walker and Hashimoto. 6
Claim 43 recites a “flow regulation vent as in claim 28, and further 7
including a diffuser positioned between the pressurized gas supply and the 8
flap to diffuse gas flow to the flap.” Claim 68 depends from claim 56 and 9
recites a similar limitation. The Examiner finds that, “[a]t the time the 10
invention was made the use of a diffuser in ventilation systems was well 11
known for the purpose of assisting in the transition of fluid flow from 12
turbulent to more steady laminar flow.” (Ans. 8). Although the Appellants 13
correctly point out that the Examiner has taken Official Notice of this 14
statement without properly citing any evidence in support (see App. Br. 35- 15
36),3 the Appellants do not allege that the fact found by the Examiner is 16
false. 17

3 In the “Response to Argument” portion of the Appeal Brief, the
Examiner cites Wilson (US 4,362,153, issued Dec. 7, 1982) as evidence that
it was known to use “a diffuser (4) working in combination with a gas
source (1) and regulating valves (2 and 2' respectively) to entrain the flow of
gas prior to being delivered to the patient via (inhalation valve 7).” (Ans.
16). The Examiner cites Starr (US 5,647,355, issued Jul. 15, 1997) as
evidence that it was known to use “diffusers in another respiratory device for
the purpose of diffusing the flow of gas and thus providing additional patient
comfort during treatment.” (Ans. 16-17). Since neither Wilson nor Starr
was cited as prior art in the rejection of claims 43 and 68 (see Ans. 4) but
only as afterthoughts in the Response to Argument, we do not consider the
references further. Since we sustain the rejection of claims 43 and 68 based
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The Examiner concludes that it would have been obvious “to modify 1
the system of Walker and Hashimoto to include a diffuser to assist in the 2
transition of fluid flow profiles that would provide the most effective care to 3
the patient.” (Id.) The Appellants do not dispute the correctness of the 4
Examiner’s reasoning. Since the Examiner's reasoning is underpinned by an 5
uncontested finding of fact, we sustain the rejection of claims 43 and 68 6
under § 103(a) as being unpatentable over Walker and Hashimoto. 7
8
Fifth Issue 9
Claim 29 recites a “flow regulation vent as in claim 28, wherein . . . 10
the movable portion of the flap is outboard of the first end of the flap.” As 11
the Appellants correctly point out, the “flaps 35 of the [flexible flap means] 12
32 of Walker et al. are . . . not outboard of the first end of the flap connected 13
to the housing as recited in claim 29.” (App. Br. 26-27). The Examiner 14
articulates no reason why one of ordinary skill in the art might have 15
modified the flaps 35 in the fashion claimed in claim 29. We do not sustain 16
the rejection of claim 29 under § 103(a) as being unpatentable over Walker 17
and Hashimoto. 18
Claim 30 recites a “flow regulation vent as in claim 28, wherein the 19
first portion of the flap connected to the housing is a central portion of the 20
flap.” Walker’s flexible flap means 32 has a central orifice 33. (FF 4). 21
Being nothing, the central orifice connects to nothing. As the Appellant 22
correctly points out, the “outer rim 34 of the [flexible flap means] 32 is 23
clearly not a central portion as it defines the outer perimeter of the [flexible 24

on the reasoning set forth on pages 7 through 8 of the Answer, the
Appellants’ arguments on pages 1 through 6 of the Reply Brief are moot.
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flap means] 32.” (App. Br. 27). The Examiner articulates no reason why 1
one of ordinary skill in the art might have modified the flexible flap means 2
32 in the fashion claimed in claim 30. We do not sustain the rejection of 3
claim 30 under § 103(a) as being unpatentable over Walker and Hashimoto. 4
Claim 31 recites a “flow regulation vent as in claim 28, wherein the 5
vent orifice has a rectangular cross-section.” Claim 57 depends from claim 6
56 and recites a similar limitation. The Examiner does not appear to find 7
that either Walker or Hashimoto describes a flow regulation vent including a 8
vent orifice having a rectangular cross-section. (See, e.g., FF 4 and 9). 9
Instead, the Examiner concludes that the cross-section would have been a 10
mere matter of design choice. 11
A “design choice” rationale is appropriate where the Examiner 12
proposes substituting one prior art element or property for another which 13
achieves the same result. Cf. In re Gal, 980 F.2d 717, 719 (Fed. Cir. 14
1992)(“The Board held that Gal had simply made an obvious design choice. 15
However, the different structures of Gal and Matsumura achieve different 16
purposes.”). For example, in Re Kuhle, our reviewing court affirmed a 17
rejection of a dependent claim where the limitation added by the dependent 18
claim “solve[d] no stated problem” and “present[ed] no novel or unexpected 19
result.” Kuhle, 526 F.2d 553, 555 (CCPA 1975). Here, however, the 20
Appellants state in the Reply Brief that altering the shape of the vent orifice 21
may alter the flow rate curve of the vent. (Reply Br. 11-12). The Appellants 22
support this assertion by citing to page 14, lines 14-16 of the Specification. 23
(See also Spec. 22, ll. 17-31). Therefore, the Appellants have provided a 24
technical reason why a square vent orifice might present a novel result, 25
thereby potentially serving a different purpose, than the circular vent orifices 26
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described or depicted by Walker and Hashimoto. We do not sustain the 1
rejection of claims 31 and 57 under § 103(a) as being unpatentable over 2
Walker and Hashimoto. 3
Claim 34 recites a “flow regulation vent as in claim 33, wherein the 4
vent housing is attached to a swivel elbow joint.” Claim 60 recites a similar 5
limitation. The Examiner finds that, “[a]t the time the invention was made, 6
the use of a swivel elbow joint in combination with the mask and supply 7
[was] well known for the purpose of providing additional patient comfort.” 8
(Ans. 6).4 The Examiner concludes that it would have been obvious “to add 9
a swivel to the system of Walker as modified by Hashimoto to provide an 10
additional comfort means to the patient.” (Id.) The Appellants respond by 11
pointing to the disclosure of page 5, lines 6-7 of Walker, which states that it 12
is preferred “to put the valve 14 as close to the mask 16 as possible, or to 13
make it part of the mask 16.” (See App. Br. 33). Since the Examiner’s 14
reasoning does not explain why it would have been obvious to attach the 15
vent housing to the swivel joint added to Walker’s system, we do not sustain 16
the rejection of claims 34 and 60 under § 103(a) as being unpatentable over 17
Walker and Hashimoto. 18

4 In the “Response to Argument” portion of the Appeal Brief, the
Examiner cites Vickery (US 4,803,981, issued Feb. 14, 1989) as evidence
that “a mask for apply[ing] gas to a patient where the gas conduits are
connected in rotatable elbow joints for the purpose of enabling the conduits
to be moved without disturbing the mask connection” were known. (Ans.
15). Since Vickery was not cited as prior art in the rejection of claims 34
and 60 (see Ans. 4) but only as an afterthought in the Response to
Argument, we do not consider the reference further. Since we do not sustain
the rejection of claims 34 and 60, the Appellants’ arguments on pages 1
through 6 of the Reply Brief are moot.
Appeal No. 2010-000350
Application No. 10/433,980

18
Claim 35 recites a “flow regulation vent as in claim 28, wherein a 1
radius of curvature of the curved surface is greater than 21 mm.” Claim 61 2
depends from claim 56 and recites a similar limitation. The Examiner 3
concludes either that the particular range of radii of curvature recited in 4
claims 35 and 61 would have been derivable through routine optimization 5
involving only ordinary skill in the art. (Ans. 16). Although the Appellants 6
have not shown that a radius of curvature of the curved surface is greater 7
than 21 mm produces novel or unexpected results (See Spec. 20, ll. 1-5 and 8
fig. 13), the Appellants correctly point out at page 13 of the Reply Brief that 9
the Examiner has not demonstrated the radius of curvature to have been 10
recognized as a result-effective variable. See In re Antonie, 559 F.2d 618, 11
620 (CCPA 1977). Without such a showing, the Examiner cannot 12
demonstrate that one of ordinary skill in the art would have had reason to 13
undertake the task of optimizing the radius of curvature. We do not sustain 14
the rejection of claims 35-38 and 61-64 under § 103(a) as being unpatentable 15
over Walker and Hashimoto. 16
Claim 40 recites a “flow regulation vent as in claim 28, and further 17
including fixed bleed orifice to provide a minimum gas flow to the 18
atmosphere when the vent orifice is closed.” Claim 66 depends from claim 19
56 and recites a similar limitation. The Examiner appears to identify any 20
one of Walker’s six peripherally arranged ports 30 as fixed bleed orifices. 21
(Ans. 7 and 16). The six peripherally arranged ports 30 are closed when the 22
flexible flap means 32 is in a closed position, however. (See FF 5; see also 23
App. Br. 35). Therefore, the six peripherally arranged ports 30 do not 24
provide any gas flow when a vent orifice is closed. We do not sustain the 25
rejection of claims 40 and 66. 26
Appeal No. 2010-000350
Application No. 10/433,980

19
1
DECISION 2
We AFFIRM the Examiner’s decision rejecting claims 28, 33, 41-43, 3
56, 59 and 67-71. 4
We REVERSE the Examiner’s decision rejecting claims 29-31, 34-40, 5
44-55, 57 and 60-66. 6
No time period for taking any subsequent action in connection with 7
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). 8
9
AFFIRMED-IN-PART 10
11
12
Klh 13