Ex Parte Eitzman et al

Patent Trial and Appeal Board

Dec 14, 2017

12823259 (P.T.A.B. Dec. 14, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/823,259 06/25/2010 Philip D. Eitzman 66457US002 7475
32692 7590 12/18/2017
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
SUL, DOUGLAS YOUNG
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
12/18/2017 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PHILIP D. EITZMAN and DEAN R. DUFFY
Appeal 2016-007515
Application 12/823,2591
Technology Center 3700
Before LINDA E. HORNER, NATHAN A. ENGELS, and
BRENT M. DOUGAL, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Philip D. Eitzman and Dean R. Duffy (Appellants) seek our review
under 35 U.S.C. § 134(a) of the Examiner’s decision rejecting claims 1-16.2
Final Office Action (May 18, 2015) [hereinafter “Final Act.”]. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify 3M Innovative Properties Company as the real party in
interest. Appeal Brief 2 (November 18, 2015) [hereinafter “Appeal Br.”].
2 Claim 17 was canceled in amendment filed after the date of the Final
Office Action. Amendment after Final (July 28, 2015); Advisory Action
(September 4, 2015).
Appeal 2016-007515
Application 12/823,259
CLAIMED SUBJECT MATTER
Appellants’ claimed subject matter relates to “a flat fold filtering face
piece respirator that achieves a snug fit in the nose region without the use of
a nose foam.” Specification 11 (filed June 25, 2010) [hereinafter “Spec.”].
Claim 1 is the sole independent claim and is reproduced below.
1. A flat fold filtering face piece respirator that
comprises:
(a) a harness; and
(b) a mask body that lacks a nose foam and that comprises
a nose clip and a filtering structure, the filtering structure
comprising (i) a first cover web, and (ii) a filtration layer that
contains electrically-charged microfibers, the filtering structure
being folded to form a fold, wherein a surface of the first cover
web contacts itself in an interior of the fold and the nose clip is
located on an exterior of the fold in a nose region of the mask
body, the fold having a width (W) of 1 centimeter or more,
wherein the fold extends across the upper perimeter of the mask
body in a generally straight line when the respirator is in a folded
condition, the filtering structure having a deflection greater than
0.5 millimeters and having a recoverability of at least 40% when
tested under Deflection and Recoverability Test.
Appeal Br., Claims Appendix 1.
EVIDENCE
The Examiner’s decision relies upon the following evidence:
Thiebault
Bostock
US 2,787,264
US 6,722,366 B2
US 2008/0295843 A1
WO 2004/101074 A1
Apr. 2, 1957
Apr. 20, 2004
Dec. 4, 2008
Nov. 25, 2004
Haas
Lee
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Application 12/823,259
REJECTIONS
The Final Office Action includes the following rejections:
1. Claims 1-10 and 13-16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bostock and Haas, or in the alternative, Bostock,
Thiebault, and Haas.
2. Claims 11 and 12 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bostock, Thiebault, Haas, and Lee.
ANALYSIS
Appellants argue the claims subject to the first ground of rejection as a
group. Appeal Br. 14. We select claim 1 as representative of the group, and
claims 2-10 and 13-16 stand or fall with claim 1. 37 C.F.R.
§ 41,37(c)(l)(iv). Appellants rely on the same arguments presented against
the first ground of rejection as the basis for seeking reversal of the second
ground of rejection of claims 11 and 12. Appeal Br. 14-15 (Appellants
arguing that Lee does not cure the deficiencies in the underlying
combination of Bostock, Thiebault, and Haas). As such, based on the
arguments raised by Appellants in this Appeal, the outcome as to all grounds
of rejection turns on our analysis of the propriety of the rejection of claim 1.
Appellants contend that the rejection of claim 1 should not be
sustained because the combination of prior art does not render obvious the
following four claim limitations: (1) a nose clip located on an exterior of a
fold in a nose region of a mask body; (2) a fold that extends across the upper
perimeter of the mask body in a generally straight line when the respirator is
in a folded condition; (3) a fold having a width of 1 cm or more; and (4) a
filtering structure having a deflection greater than 0.5 mm and a
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Application 12/823,259
recoverability of at least 40% when tested under the Deflection and
Recoverability Test. Appeal Br. 5-14. We address each contention in turn
infra.
Nose clip located on an exterior of a fold in a nose region of a mask body
The Examiner finds that Bostock, taken alone or as modified by
Thiebault, discloses a flat folded face piece respirator with an outer edge
fold in the nose region of the mask body and a nose clip located inside the
fold but does not disclose the nose clip located on an exterior of the fold in
the nose region. Final Act. 5-6; Adv. Act. 2; Examiner’s Answer 10-11
(June 2, 2016) [hereinafter “Ans.”]. The Examiner finds that Haas discloses
a filtering face mask having a nose clip (12) located on the side of the mask
facing away from the user. Id. at 6 (citing Haas, para. 26, Figs. 1, 3). The
Examiner determines that it would have been obvious to modify the nose
clip of Bostock to provide it on the portion of the mask facing away from the
user, as taught by Haas, as an obvious rearrangement of parts. Id.', see also
Ans. 11 (Examiner stating the modification is an obvious rearrangement of
parts “because the placement of a nose clip on a face mask on a side facing
the wearer is known in the art.” (citing Bostock 3:3-6)).
Appellants contend that the rejection of claim 1 should not be
sustained because Bostock “does not teach or suggest a nose clip located on
an exterior of the alleged fold” and “Haas . . . describes a nose clip on an
exterior of a mask, not on an exterior of a fold.” Appeal Br. 6. As such,
Appellants assert that the Examiner’s rejection is deficient because the
Examiner has failed to provide any teaching or suggestion in either Bostock
or Haas that describes a nose clip located on an exterior of a fold and has
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Application 12/823,259
failed to provide any motivation or reason in either Bostock or Haas for
moving the nose clip to an exterior of the fold. Id. at 6-7. Appellants
further assert that the Examiner’s articulated reasoning for the proposed
modification based on rearrangement of parts is insufficient. Id. at 7.
Appellants also contend that Bostock teaches away from disposing the nose
clip on the exterior of the fold. Appeal Br. 8 (citing Bostock 6:49-54).
Bostock teaches that when a respiratory device is constructed with a
nose clip, the nose clip may be on the outer portion of the device, on the
inner surface of the device, or between multiple layers of the device.
Bostock 3:4—13. Bostock describes, with regard to the embodiment of
Figures 5 and 6, nose clip 28 is located on the outer surface of the device on
additional member 20, which when folded as shown in Figure 5, results in
the nose clip being located inside the fold. Bostock, Fig. 5. Similarly, with
regard to the embodiment of Figure 8, Bostock describes a respirator having
the outer edge of first member 54 folded inwardly and describes that “[n]ose
clip 60 .. . can be located inside the fold.” Bostock 6:49-52.
Haas discloses a multi-layer face mask with the nose clip 12 on the
exterior of the mask. Haas 126, Figs. 1,3.
As explained in Bostock, a finite number of places exist to locate the
nose clip on the mask, i.e., on the inside of the mask, on the outside of the
mask, or between layers of the mask. Although Bostock’s preferred
embodiment locates the nose clip on the exterior of the mask such that it lies
inside the fold when the mask is in a folded condition, this disclosure in
Bostock does not teach away from locating the nose clip elsewhere. To the
contrary, Bostock suggests alternative locations for the nose clip. Haas
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further demonstrates that it was known in the art to place the nose clip 12 on
the exterior of the mask. We agree with the Examiner that if one modified
Bostock so as to place the nose clip on the opposite side of additional
member 20 and on the exterior of the fold when the mask is in a folded
condition, the nose clip would function equally well to conform the mask to
the wearer’s face. We further agree with the Examiner that the proposed
modification of Bostock to locate the nose clip on the exterior of the fold is
an obvious rearrangement of parts, in that the placement of the nose clip on
the exterior of the fold is not a product of innovation but one of ordinary
skill and common sense as one of several known alternative placements, as
evidenced by the prior art. Further, Bostock does not suggest that the
placement of the nose clip inside the fold offers any particular advantage or
benefit over the other disclosed alternative locations for the nose clip, and
Bostock does not otherwise criticize or discredit placing the nose clip on the
exterior of the fold such that it would have led one away from the proposed
modification.
For these reasons, Appellants’ first argument does not point to an
error in the Examiner’s rejection of claim 1.
Fold that extends across the upper perimeter of the mask body in a generally
straight line when the respirator is in a folded condition
The Examiner finds that Bostock discloses that the fold extends across
the upper perimeter of the mask body in a generally straight line when the
respirator is in a folded condition. Final Act. 5; Adv. Act. 2 (Examiner
explaining that Figures 5 and 6 of Bostock show that the edge 24 of the
mask extends along a straight line, and that because edge 24 is straight,
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folding that edge inwards towards the face of the wearer also would produce
a fold in a straight line).
Appellants argue that the Examiner’s finding that Bostock’s fold
extends along a straight line “lacks support in the record.” Appeal Br. 9.
Specifically, Appellants assert that the cross-section view of the mask in
Figure 5 of Bostock “cannot indicate whether the edge 24, which extends out
of the plane of the drawing, forms a straight line,” and the perspective view
of Figure 6 “does not indicate that the edge 24 extends in a generally straight
line, especially given the curvature of the first member 14 and additional
member 20.” Appeal Br. 10.
Bostock describes that Figure 5 is a cross-sectional view of the device
“in flat-fold configuration” and Figure 6 is a perspective view of the device
“shown partially open.” Bostock 4:21-25. As noted by Appellants, Figure
6, because it depicts the mask partially open, shows first member 14 curved
and additional member 20 bowed upwardly in the center. Appeal Br. 10. As
noted by the Examiner, the flat-fold configuration shown in Figure 5 does
not show edge 24 extending outwardly, which would indicate that the edge
is curved while in the flat-fold configuration. Ans. 13.
Considering the collective teachings of Figures 5 and 6, we find
sufficient evidence to support the Examiner’s finding that edge 24 extends in
a generally straight line. In other words, we agree with the Examiner’s
understanding of Bostock to include an edge 24 extending in a generally
straight line. Further, we agree with the Examiner’s finding that folding
edge 24 inwards would produce a fold that extends in a straight line, as
claimed.
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The Examiner alternatively finds that Thiebault teaches a filter mask
where the outer edge is folded inwardly to form a bead 3. Final Act. 5. The
Examiner determines that it would have been obvious to modify the device
of Bostock to provide a bead by folding member 20 upon itself, as taught by
Thiebault, resulting in a fold extending in a generally straight line when the
respirator is in a folded condition. Id. at 6. Appellants argue that “[i]f the
mask of Thiebault et al. were to be folded flat. . ., the bead 3 would not be
folded in a generally straight line.” Appeal Br. 10. The Examiner, however,
appears to rely on Bostock for the straight line aspect of the claim. Final
Act. 5; Ans. 13 (“Thiebault is relied upon in the alternative to teach that
folding an edge of a mask inwardly towards the wearer is known in the art to
improve the fit of the mask.”). As discussed supra, we agree with the
Examiner’s finding as to Bostock’s disclosure.
For these reasons, Appellants’ second argument does not point to an
error in the Examiner’s rejection of claim 1.
Fold having a width of 1 cm or more
The Examiner finds that the modified mask of Bostock does not
disclose the fold having a width that is 1 cm or more, as recited in claim 1.
Final Act. 6. The Examiner determines that a fold having the claimed width
would have been obvious because “varying the width of the overlapped
region . . . would achieve the recognized result of increasing user comfort
and aiding in sealing the nose area of the mask.” Id. at 7. Thus, the
Examiner concludes that one having ordinary skill in the art would arrive at
the claimed fold width through routine experimentation. Id.
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Appellants argue that the Examiner erred because the Examiner
“failed to provide any facts on the record that indicate that the prior art
recognizes that the width of the fold is a result-effective variable.” Appeal
Br. 11. In particular, Appellants contend that Bostock “is silent regarding
the width of the folded outer edge of first member 54.” Id. at 11-12.
We disagree with Appellants’ characterization of Bostock. As noted
by the Examiner, Bostock teaches that “an improvement in fit can be
obtained by folding the outer edge of first member 54 inwards.” Bostock
6:49-51. In the embodiment of Figures 5 and 6, additional members 20 and
22 are used to create the folded edges. Id. at 5:39^13. Bostock provides
dimensions for the various components of the mask including width
(extending between edges seals) and depth (extending from fold to
peripheral edge) dimensions for members 20 and 22. Id. at 5:55-6:23.
When additional members 20, 22 are folded back, the depth of these
members corresponds to the claimed “width” of the fold. Bostock discloses
that the depth of members 20 and 22 is preferably about 1 to 95 mm. Id. at
6:14-19. Although Bostock’s disclosed range of .01 to .95 cm does not
overlap with the claimed range of 1.0 cm or more, the disclosed range is
close to the claimed range.
The Federal Circuit has explained that “a prima facie case of
obviousness exists when the claimed range and the prior art range do not
overlap but are close enough such that one skilled in the art would have
expected them to have the same properties.” In re Peterson, 315 F.3d 1325,
1329 (Fed. Cir. 2003) (citing Titanium Metals Corp. v. Banner, 778 F.2d
775, 783 (Fed. Cir. 1985)).
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In this case, the limitation of the fold having a width of 1 cm or more
is a dimensional limitation that adds nothing of operational significance to
the claimed mask to patentably distinguish it over the prior art. The
Specification does not describe that a fold having a width as claimed is
critical to the performance of the mask. We see no functional difference
between a mask having a fold of 0.95 cm and a mask having a fold of 1.01
cm, and Appellants have not asserted any such difference. This dimensional
limitation does not result in a mask that performs differently from the prior
art structure. See Gardner v. TEC Systems, Inc., 725 F.2d 1338, 1346 (Fed.
Cir. 1984) (affirming a determination of invalidity when the patentee failed
to show that claimed dimensional limitations relied on to overcome the prior
art resulted in a device that performed any differently from the prior art
device). Appellants have failed to particularly point out an aspect of the
claimed mask that performs any differently from the prior art modified
Bostock mask.
For these reasons, Appellants’ third argument does not point to an
error in the Examiner’s rejection of claim 1.
Filtering structure having a deflection greater than 0.5 mm and a
recoverability of at least 40% when tested under the Deflection and
Recoverability Test
The Examiner finds that deflection and recovery values are a measure
of the snugness of the mask, and both Bostock and Thiebault teach the use of
an inwardly folded flap to provide a better fit for the mask. Ans. 15. The
Examiner further finds that Bostock discloses the same material as described
in Appellants’ Specification for the filter layer and the cover webs, and thus,
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it would be expected that the mask of Bostock, as modified, would provide
the claimed deflection and recoverability characteristics. Id. at 16-17.
Appellants argue “the Examiner has failed to provide any teaching or
suggestion that describes that the filter and cover webs of Bostock et al.
were selected to provide the recited deflection and recoverability.” Reply
Brief 8 (August 2, 2016). Appellants further assert that “there is no teaching
or suggestion provided in the prior art by the Examiner that leads one of skill
in the art to select filter layers and cover webs that provide the recited
deflection and recoverability values.” Id.
It would be unlikely for the Examiner to find a prior art reference that
explicitly discloses a mask meeting the claimed deflection and recoverability
characteristics because the recited “Deflection and Recoverability Test” is a
creation of Appellants. Spec. Tflf 60-63. Further, the PTO does not have the
resources to manufacture a mask according to the prior art and then test it
using Appellants’ Deflection and Recoverability Test to demonstrate that the
prior art mask possesses the characteristics claimed. See In re Best, 562
F.2d 1252, 1254-55 (Where claimed and prior art products are identical or
substantially identical, the burden is upon Appellants to prove that the prior
art products do not inherently possess the characteristics of the claimed
product because the PTO is unable to perform the necessary comparative
testing.).
According to the examples described in Appellants’ Specification, the
claimed deflection and recovery characteristics appear to be tied to the fact
that the respirator nose regions contained a fold as compared to the prior art
nose regions without a fold. Id. 164-67, Table 1 (describing that
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comparative sample and example filter structures made of the same
materials possessed different deflection and recovery characteristics due to
the use of a fold in the example filter structures). Based on this
understanding, we find that the Examiner set forth a prima facie case of
obviousness by demonstrating that Bostock discloses the same filter
structure materials as described in Appellants’ Specification, and by
showing that Bostock, taken alone or as modified by Thiebault, includes a
fold in the nose region of the mask.
In particular, as noted by the Examiner (Ans. 16-17), Bostock
describes the same materials for the filtering layer and cover webs as
employed in Appellants’ filtering structure. In particular, Bostock states that
“[fjibers of the filtering layer are selected depending upon the type of
particulate to be filtered” and that “[pjroper selection of fibers can also
affect the comfort of the respiratory device to the wearer, e.g., by providing
softness or moisture control.” Bostock 8:29-32. Bostock then suggests
using “[w]ebs of melt blown microfibers” that are prepared as described in
two articles by Wente3 and have an effective fiber diameter of from 3 to 30
micrometers, more preferably from about 7 to 15 micrometers. Id. at 8:33—
46; see also id. at 13:50-14:48 (Example 1). Appellants’ Specification
likewise discloses a filtering layer that uses the same web of melt blown
fibers. Spec. 1 53. Bostock also describes using cover webs of spunbond
polypropylene web. Id. at 13:56-60 (Example 1). Appellants’ Specification
3 Van A. Wente, “Superfine Thermoplastic Fibers,” Industrial Engineering
Chemistry, Vol. 48, 1342 et seq. (1956) and Van A Wente et al.,
“Manufacture of Super Fine Organic Fibers,” Report 4364 of the Naval
Research Laboratories (May 25, 1954).
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likewise discloses using cover webs of spunbond polypropylene web. Spec.
57, 64. As such, we agree with the Examiner that one would expect
Bostock’s mask to possess the claimed deflection and recovery
characteristics when tested using Appellants’ Deflection and Recovery Test.
The fact that Bostock does not explicitly disclose selecting these
materials so as to meet the claimed deflection and recoverability values is of
no moment. The Examiner has made a prima facie showing that Bostock’s
filter structure inherently possesses these characteristics, and the burden
shifted to Appellants’ to rebut this finding, which they have failed to do.
For these reasons, Appellants’ fourth argument does not point to an
error in the Examiner’s rejection of claim 1.
Accordingly, we sustain the rejection of claim 1 under 35 U.S.C.
§ 103(a). Because Appellants have not presented additional arguments in
support of claims 2-16, we also sustain the rejections of these claims.
DECISION
The decision of the Examiner rejecting claims 1-16 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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