Ex Parte DAVIDSON et al

Patent Trials and Appeals BoardMar 1, 2019

15077515 - (D) (P.T.A.B. Mar. 1, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 15/077,515 03/22/2016 23117 7590 03/05/2019 NIXON & V ANDERHYE, PC 901 NORTH GLEBE ROAD, 11 TH FLOOR ARLINGTON, VA 22203 FIRST NAMED INVENTOR Aaron Samuel DAVIDSON 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. PTB-4398-1652 3065 EXAMINER LOUIS,LATOYAM ART UNIT PAPER NUMBER 3785 NOTIFICATION DATE DELIVERY MODE 03/05/2019 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 AARON SAMUEL DAVIDSON, ROBIN GARTH HITCHCOCK, MATTHEW EVES, DAVID WORBOYS, and SUSAN ROBYN L YNCH 1 Appeal2018-005716 Application 15/077 ,515 Technology Center 3700 Before EDWARD A. BROWN, MICHAEL L. HOELTER, and ANNETTE R. REIMERS, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is a Decision on Appeal, under 35 U.S.C. Â§ 134(a), from the Examiner's final rejection of claims 1 and 21-39, which constitute all the claims pending in this Application. Final Act. 1 (Office Action Summary). 1 ResMed Limited is identified as the applicant in the Application Data Sheet dated March 22, 2016 submitted in association with this Application. ResMed Limited is also identified as the real party in interest. See App. Br. 3. Accordingly, pursuant to 37 C.F.R. Â§ 1.46, we understand ResMed Limited as the Appellant. Appeal2018-005716 Application 15/077 ,515 We have jurisdiction under 35 U.S.C. Â§ 6(b ). For the reasons explained below, we do not find error in the Examiner's rejections of these claims. Accordingly, we AFFIRM the Examiner's rejections. CLAIMED SUBJECT MATTER The disclosed subject matter "relates to a cushion for a patient interface, the patient interface being used in the treatment, e.g., of Sleep Disordered Breathing (SDB) with Non-Invasive Positive Pressure Ventilation (NPPV)." Spec. ,r 2. Claim 1 is the sole independent claim, is representative of the claims on appeal, and is reproduced below. 1. A cushion for a patient interface that delivers breathable gas to a patient, the cushion including a nasal bridge region, a pair of side of nose regions, a pair of upper cheek regions, a pair of lower cheek regions and a chin region, the cushion compnsmg: a non-face contacting portion including a base wall structured to be connected to a frame; a face-contacting portion structured to engage the patient's face, wherein the face-contacting portion comprises a membrane including a nasal bridge region, a pair of cheek regions, and a chin region adapted to form a continuous seal on a nasal bridge region, a pair of cheek regions, and a chin region of the patient's face, respectively, wherein the membrane has an inner edge defining an aperture adapted to receive the patient's nose, and wherein, when the cushion is stationary on a horizontal surface and oriented such that the non-face contacting portion faces towards the horizontal surface, 1) the membrane in the nasal bridge region of the cushion has an exterior surface that includes two sides meeting at a centerline, each side sloping downwardly from the centerline, 2 Appeal2018-005716 Application 15/077 ,515 2) in a cross-sectional view, the exterior surface of the membrane in the nasal bridge region of the cushion a) curves downwardly along the centerline from a peak of the membrane's curvature to the inner edge of the membrane, and b) curves downwardly along the centerline from the peak of the membrane's curvature in a direction away from the inner edge of the membrane, to thereby form a convex shape, 3) in a cross-sectional view, the membrane in the chin region of the cushion has an exterior surface forming a convex shape such that the exterior surface curves downwardly from a peak of the membrane's curvature to the inner edge of the membrane, and 4) the exterior surface of the membrane in the chin region of the cushion extends from one cheek region to the other cheek region and forms a concave shape adapted to engage the patient's chin region. REFERENCES Galleher, Jr. ("Galleher") Lithgow et al. Ging et al. Davidson et al. ("Davidson '459") Davidson et al. ("Davidson '214") Davidson et al. ("Davidson '211 ") Davidson et al. ("Davidson '280") Wixey et al. us 2,875,759 US 2004/0118406 Al US 7,743,767 B2 US 8,220,459 B2 US 8,573,214 B2 US 8,616,211 B2 US 8,613,280 B2 WO 2004/007010 Al THE REJECTIONS ON APPEAL Mar. 3, 1959 June 24, 2004 June 29, 2010 July 17, 2012 Nov. 5, 2013 Dec. 31, 2013 Dec. 24, 2013 Jan.22,2004 Claims 1 and 21-39 are rejected under 35 U.S.C. Â§ 112(b) as being indefinite. Final Act. 2. Claims 1, 21-24, 26, 30, 31, and 33-39 are rejected under 35 U.S.C. Â§ I02(a) as anticipated by Lithgow. Final Act. 3. Claim 25 is rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Lithgow and Ging. Final Act. 8. 3 Appeal2018-005716 Application 15/077 ,515 Claims 27-29 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Lithgow. Final Act. 9. Claim 32 is rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Lithgow, Wixey, and Galleher. Final Act. 10. Claim 1 is rejected on the ground of nonstatutory double patenting as unpatentable over claim 9 of Davidson '211. Final Act. 12. Claim 1 is rejected on the ground of nonstatutory double patenting as unpatentable over claim 7 of Davidson '280. Final Act. 12. Claim 1 is rejected on the ground of nonstatutory double patenting as unpatentable over claim 10 of Davidson '214. Final Act. 13. Claim 1 is rejected on the ground of nonstatutory double patenting as unpatentable over claim 2 of Davidson '459. Final Act. 13. ANALYSIS The rejection of claims 1 and 21-39 as being indefinite In regard to sole independent claim 1, the Examiner determines that the term "'the other cheek region' [at] the second to last line is unclear since multiple cheek regions are previously claimed (see lines 3 and 7)," and in regard to claim 3 3, the Examiner determines that the term "' spring like' [at] line 1 is indefinite as it's unclear what characteristics of a spring are included in 'like."' Final Act. 2. The Examiner indicates that"[ c ]laims 21- 32 and 34-39 are rejected for their dependency on a rejected claim." Final Act. 2. In reply, "Appellant maintains that the features recited in the claims are clearly defined," "[h]owever, in an effort to advance prosecution of the application, Appellant proposes" to amend claims 1 and 33. App. Br. 17. 4 Appeal2018-005716 Application 15/077 ,515 However, no claim amendment has been entered by the Examiner. See Advisory Action dated Jan. 12, 2018. Accordingly, because Appellant does not provide arguments as to why the Examiner erred in making this rejection, we summarily sustain the rejection of claims 1 and 21-39 as being indefinite. The rejection of claims 1, 21-24, 26, 30, 31, and 33-39 as being anticipated by Lithgow Claims 1, 21, 24, 26, 30, 31, 33, and 34 Appellant argues claims 1, 21, 24, 26, 30, 31, 33, and 34 together (see App. Br. 9-14) and claims 22, 23, 36, and 37 together (see App. Br. 12-14). We select claims 1 and 22 for review, with the remaining claims standing or falling with their respectively selected claim. See 37 C.F.R. Â§ 1.37(c)(l)(iv). We also address remaining claims 35, 38, and 39 separately below. Claim 1 In addition to the other limitations of claim 1, the Examiner finds that Lithgow discloses the centerline and cross-sectional arrangement specifically recited in limitations 1) and 2) of claim 1. Final Act. 3--4. The Examiner also provides two annotations of Figure 52 of Lithgow ( depicted below) for further explanation. See Ans. 12. FIG. 52 AG. 52 5 Appeal2018-005716 Application 15/077 ,515 "FIG. 52 is a rear perspective view of the cushion in accordance with a preferred embodiment of the invention." Lithgow ,r 106. The Examiner explains that as seen in the left annotated version of Figure 52 above, "in the nasal bridge region (38), the cushion has two sides (lateral sides[)]" and in the right annotated version of Figure 52, the cushion has "two sides (inner and outer sides[] ... ) meeting at a center line ( dotted line), each side sloping downwardly from the centerline ( as shown, lateral sides and inner and outer sides slope downwardly from the dotted line)." Ans. 12. Appellant contends, "[t]he membrane in Lithgow does not include two sides meeting at a centerline in the nasal bridge region, wherein each side slopes downwardly from the centerline." App. Br. 9 (emphasis omitted); see also Reply Br. 2. Appellant also argues that Lithgow's "Fig. 52 is a somewhat odd perspective view of the cushion in that it is difficult to clearly view the contours of the cushion." Reply Br. 3; see also App. Br. 12. Appellant further challenges the Examiner's "interpretation of 'centerline'" and contends that the Examiner's interpretation is not consistent with limitation 2) in claim 1. Reply Br. 5; see also id at 3. According to Appellant, "[a] better depiction of the shape of the nasal bridge of the cushion can be seen in Figs. 9B and 40" of Lithgow such that "[i]t can be seen that the 'inner and outer' sides of the membrane identified by the Examiner would not slope downwardly f[ro]m the 'centerline' shown in the marked-up Fig. 52." Reply Br. 5; see also App. Br. 10-12. Limitation 2) of claim 1 is directed to a cross-sectional view of the nasal bridge region and recites a membrane having one side that curves downwardly from a peak to the inner edge of the membrane and another side 6 Appeal2018-005716 Application 15/077 ,515 that curves downwardly from the peak in a direction away from the inner edge of the membrane. We, thus, agree with Appellant that the Examiner's annotations of Figure 52 of Lithgow do not clearly show this arrangement because Figure 52 does not depict a cross-sectional view of Lithgow' s membrane. However, we do not agree with Appellant that Lithgow fails to disclose this limitation. As indicated above, Figure 52 of Lithgow is one view of Lithgow's cushion 14. Lithgow also states, "FIGS. 14--33 show various cross-sections of the cushion 14." Lithgow ,r 141. Lithgow's Figures 14 and 15 are reproduced below: 26 40 FIG, 14 FIG. 15 "FIG. 14 is a partial top view illustrating an embodiment of the cushion [14]" and "FIG. 15 is a cross-section taken along line 15-15 of FIG. 14" which identifies "membrane 40." Lithgow ,r,r 67, 68; see also Lithgow ,r 116. Line 15-15 of Figure 14 is taken along the nasal bridge region of limitation 1 ). Figure 15 shows, in cross-sectional view, membrane 40 having a convex shape (i.e., opposite sides curving downwardly from a peak) in accordance with limitation 2). Accordingly, we are not persuaded by Appellant's contention that "[t]he membrane in Lithgow does not include 7 Appeal2018-005716 Application 15/077 ,515 two sides meeting at a centerline in the nasal bridge region, wherein each side slopes downwardly from the centerline." App. Br. 9 (emphasis omitted); see also id at 12; Reply Br. 3-5. Thus, based on the record presented, we are not persuaded the Examiner erred in rejecting claim 1 as being anticipated by Lithgow. We sustain this rejection of claims 1, 21, 24, 26, 30, 31, 33, and 34. Claim 22 Claim 22 depends from claim 1 and further recites, "wherein the membrane in the nasal bridge region is configured to invert, in use, with a rolling edge to accommodate patients having a range of nasal bridge profiles." The Examiner finds that Lithgow discloses this limitation because Lithgow "discloses that the membrane will accommodate small variations in the shape of a patient's facial features." Final Act. 5 (referencing Lithgow ,r 119). According to the Examiner, Lithgow also teaches that the "membrane is soft and is in front of a soft cushion and thus it is structured to indent when a force is applied." Final Act. 5; see also Lithgow ,r 139. The Examiner further states that Lithgow "disclose[ s] that the membrane is pliable to form a seal to a patient's facial features." Final Act. 5 (referencing Lithgow ,r,r 116-119); see also Ans. 13. Appellant contends that Lithgow' s membrane 40 does not satisfy this limitation. See App. Br. 12; see also Reply Br. 6. In support, Appellant argues that "Lithgow does not appear to provide a teaching that the membrane indents" and that "in the nasal bridge region, the membrane has a concave shape" and thus, "it appears impossible for the membrane to invert." App. Br. 13 see also Reply Br. 6. 8 Appeal2018-005716 Application 15/077 ,515 Appellant's contentions are unpersuasive. Because Lithgow teaches that membrane 40 is flexible and "can accommodate small variations in the shape of a patient's facial/nasal features without undue force," (Lithgow ,r 119), we are not persuaded that the Examiner's reliance on Lithgow for disclosing this limitation was in error. See Final Act. 5. For these reasons, we sustain the Examiner's rejection of claims 22, 23, 36, and 37 as being anticipated by Lithgow. Claims 35, 38, and 39 Both claims 35 and 38 recite "the membrane forms a widest point of the cushion," and claim 39 depends from claim 38. App. Br. 23-25 (Claims App.). The Examiner finds that Lithgow's Figures 5 and 6C disclose this limitation. Final Act. 7; see also Ans. 13 (referencing Lithgow Fig. 24). There is merit to Appellant's contention that the Examiner has not shown that Lithgow's membrane 40 forms a widest point of the cushion. App. Br. 14. 2 As Appellant explains "the outer edge 60 of the gusset 50 (not the membrane) in Lithgow forms the widest point of the cushion ( see Fig. 6C)." App. Br. 14; see also Lithgow Fig. 5. We note that in the Answer, the Examiner flips Lithgow' s Figure 24 on its side and annotates "Widest point" in the Figure. See Ans. 13. The Examiner effectively annotates the height of Lithgow's cushion and a skilled artisan would not consider the direction annotated in the Examiner's Figure 24 ofLithgow as the width of the cushion. See Reply Br. 7. 2 In the Appeal Brief, Appellant refers to membrane 32 rather than membrane 40. See App. Br. 14. As both the Examiner and Appellant previously refer to membrane 40 throughout their arguments, we understand the reference to item 32 to be a typographical error. 9 Appeal2018-005716 Application 15/077 ,515 For these reasons, we do not sustain the Examiner's rejection of claims 35, 38, and 39 as being anticipated by Lithgow. The rejection of claim 25 as being obvious over Lithgow and Ging The rejection of claims 27-29 as being obvious over Lithgow Appellant does not provide any substantive arguments with respect to these rejections and, instead, appears to rely on the arguments provided for claim 1. See App. Br. 9-19; see also Reply Br. 2-10. As we find no deficiencies in the Examiner's rejection of independent claim 1 as being anticipated by Lithgow, we likewise sustain the Examiner's rejections of claim 25 as being obvious over Lithgow and Ging, and of claims 27-29 as being obvious over Lithgow. The rejection of claim 32 as being obvious over Lithgow, Wixey, and Galleher Claim 32 recites "wherein the cushion has only a single-walled construction formed by the membrane in a majority of the chin region." The Examiner finds that "Wixey teaches providing a single walled construction (see [F]ig. 19) in parts of the cushion by removing the underlying cushion" and that "Galleher teaches from [F]ig. 1 that the cushion is removed in the chin region ( as shown, cutouts 9, 11 are provided in the nasal bridge and chin regions; col. 2 lines 29-35) such that the membrane would be able to flex." Final Act. 10. The Examiner thereafter combines Lithgow, Wixey, and Galleher and provides a reason for doing so. See Final Act. 10. Appellant contends, "[t]he proposed combination" does not teach this chin limitation because "Lithgow does not disclose a 'cut-out convex 10 Appeal2018-005716 Application 15/077 ,515 portion' in the chin region." App. Br. 15 ( emphasis omitted); see also Reply Br. 8. This argument is unpersuasive because claim 32 and the claim that claim 32 depends from does not require a "cut-out convex portion" in the chin section. See Ans. 14. "[L ]imitations are not to be read into the claims from the specification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993); see also In re Self, 671 F.2d 1344, 1348 (CCPA 1982) ("[A]ppellant's arguments fail from the outset because ... they are not based on limitations appearing in the claims."). Appellant next argues that "Wixey and Galleher do not make up for the shortcomings of Lithgow" because "the device in Wixey is a nasal mask, and unlike the pending claims and primary reference Lithgow, does not include a chin region." App. Br. 15-16 (emphasis omitted); see also Reply Br. 8. This argument is unpersuasive. To the extent that Appellant is arguing that Wixey' s nasal mask is non-analogous art, we do not agree because two criteria have evolved for determining whether prior art is analogous: (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 Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). Wixey's nasal mask, Appellant's cushion for a patient interface, and Lithgow's cushion for a respiratory mask assembly, all relate to a nasal cushion interface and, thus, are within the same field of endeavor. Further, Wixey's nasal mask is reasonably pertinent 11 Appeal2018-005716 Application 15/077 ,515 to the particular problem with which the inventor is involved, that is, to provide a cushion and nasal interface. Appellant argues that Wixey "has a thin bridge or membrane 2048 in the nasal bridge region." App. Br. 16. However, claim 32 does not preclude a thin bridge or membrane in the nasal bridge region. Further, the Examiner relies on Wixey as disclosing "providing a single walled construction." Final Act. 10. "Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. . . . [The reference] must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole." In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Appellant contends that "Galleher does not teach or suggest removing the pliable material from the mask where the walls 6, 7 are still present" and thus, "Galleher does not teach or suggest a structure that allows the membrane in the chin region to readily flex inwardly toward a breathing cavity of the cushion when the cushion is worn." App. Br. 17; see also Reply Br. 9. This argument is unpersuasive in that it does not address the rejection. The Examiner relies on Galleher as disclosing "from [F]ig. 1 ... the cushion is removed in the chin region ( as shown cutouts 9, 11 are provided in the nasal bridge and chin regions; col. 2 lines 29-35) such that the membrane would be able to flex." Final Act. 10; see also Ans. 15. Accordingly, and based on the record presented, we are not persuaded the Examiner erred in rejecting claim 32 as being obvious over Lithgow, Wixey, and Galleher. We, thus, sustain this rejection of claim 32. 12 Appeal2018-005716 Application 15/077 ,515 The rejection of claim 1 on the ground of nonstatutory double patenting over (a) Davidson '211; (b) Davidson '280; (c) Davidson '214; and, (d) Davidson '249 The Examiner determines that "[t]he instant claim 1 is a broader version of the patented claim 9" of Davidson '211, of the patented claim 7 of Davidson '280, of the patented claim 10 of Davidson '214, and of the patented claim 2 of Davidson '459. Final Act. 12-13. The Examiner also determines that "[a]ny infringement over the patented claim[s] would also infringe the instant claim[]" and "[h]ence the instant claim does not differ in scope over" these previously patented claims. Final Act. 12-13. Appellant contends that "the Examiner has not attempted to match the elements of the pending claims against the features of the patented claims" and thus, "a prima facie case of double patenting has not been set forth." App. Br. 18. The Manual of Patent Examining Procedure states that "[a] nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s)." MPEP Â§ 804(II)(B). In the case of anticipation, [t]he nonstatutory double patenting rejection ... should explain the fact that the species or sub-genus claimed in the conflicting patent or application anticipates the claimed genus in the application being examined and, therefore, a patent to the genus would improperly extend the right to exclude granted by a patent to the species or sub-genus should the genus issue as a patent after the species or sub-genus. MPEP Â§ 804(II)(B)(l ). In the case of obviousness, an analysis should make clear: 13 Appeal2018-005716 Application 15/077 ,515 (A) The differences between the inventions defined by the conflicting claims - a claim in the patent compared to a claim in the application; and (B) The reasons why a person of ordinary skill in the art would conclude that the invention defined in the claim at issue would have been an obvious variation of the invention defined in a claim in the patent. MPEP Â§ 804(II)(B)(2). Here the Examiner has not performed either an anticipation or obviousness analysis as described above. As such, we agree with Appellant that "a prima facie case of double patenting has not been set forth." App. Br. 18. We, thus, do not sustain the Examiner's rejection of claim 1 on the ground of nonstatutory double patenting over claim 9 of Davidson '211, over claim 7 of Davidson '280, over claim 10 of Davidson '214, and over claim 2 of Davidson '459. DECISION The Examiner's rejection of claims 1 and 21-39 under 35 U.S.C. Â§ 112(b) as being indefinite is affirmed. The Examiner's rejection of claims 1, 21-24, 26, 30, 31, 33, 34, 36, and 37 under 35 U.S.C. Â§ 102(a) as anticipated by Lithgow is affirmed. The Examiner's rejection of claims 35, 38, and 39 under 35 U.S.C. Â§ 102(a) as anticipated by Lithgow is reversed. The Examiner's rejection of claim 25 under 35 U.S.C. Â§ 103(a) as unpatentable over Lithgow and Ging is affirmed. The Examiner's rejection of claims 27-29 under 35 U.S.C. Â§ 103(a) as unpatentable over Lithgow is affirmed. 14 Appeal2018-005716 Application 15/077 ,515 The Examiner's rejection of claim 32 under 35 U.S.C. Â§ 103(a) as unpatentable over Lithgow, Wixey, and Galleher is affirmed. The Examiner's rejections of claim 1 on the grounds of nonstatutory double patenting are reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 15