Ex Parte Facer et al

Patent Trial and Appeal Board

Aug 4, 2017

11743734 (P.T.A.B. Aug. 4, 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.
11/743,734 05/03/2007 John M. Facer 62913US002 7447
32692 7590 08/08/2017
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
WOODWARD, VALERIE LYNN
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
08/08/2017 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 JOHN M. FACER, CHRISTOPHER P. HENDERSON,
PETER S. LEONARD, and DESMOND T. CURRAN
Appeal 2015-006397
Application 11/743,734
Technology Center 3700
Before EDWARD A. BROWN, ARTHUR M. PESLAK, and
SEAN P. O’HANLON, Administrative Patent Judges.
O’HANLON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2015-006397
Application 11/743,734
STATEMENT OF THE CASE
John M. Facer et al. (Appellants)1 appeal under 35 U.S.C. § 134 from
the Examiner’s July 16, 2014 final decision (“Final Act.”) rejecting claims 1,
2, 4—13, and 16—28.2 We have jurisdiction over this appeal under 35 U.S.C.
§ 6(b).
We AFFIRM.
SUMMARY OF THE INVENTION
Appellants’ disclosure is directed to a maintenance-free respirator.
Spec. 11. Claim 1, reproduced below from page 1 of the Claims Appendix
of the Appeal Brief, is illustrative of the claimed subject matter:
1. A maintenance-free respirator that comprises a mask
harness and a mask body, wherein the mask body comprises:
a filtration layer;
a top panel, a central panel, and a bottom panel, wherein
the central panel is separated from the top panel by a first line
of demarcation, and further wherein the central panel is
separated from the bottom panel by a second line of
demarcation; and
a perimeter that includes an upper segment that
comprises first and second concave segments that are located,
respectively, on first and second sides of a central plane when
viewing the mask body from a top view;
wherein the perimeter has five inflection points located
on the upper segment of the perimeter excluding tabs for
attachment of the harness.
1 According to Appellants, the real party in interest is 3M Innovative
Properties Company. Appeal Br. 2 (filed Dec. 16, 2014).
2 Claims 3, 14, 15, and 29—31 are canceled. Amendment 2, 4, 6 (filed Sept.
16, 2014).
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Application 11/743,734
REJECTION3
Claims 1, 2, 4—13, and 16—28 are rejected under 35 U.S.C. 103(a) as
being unpatentable over Bostock (US 2003/0015201 Al, published Jan. 23,
2003) and Tilden (US 5,704,063, issued Jan. 6, 1998).
ANALYSIS
Appellants argue independent claims 1 and 16 together. Appeal Br.
4—10. We select claim 1 as representative, treating claim 16 as standing or
falling with representative claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Bostock discloses a maintenance-free
respirator substantially as recited in claim 1, but does not disclose the upper
segment of the mask body perimeter including first and second concave
sections. Final Act. 4. The Examiner finds that Tilden discloses a mask
with an upper segment of its perimeter having concave segments 10 that are
located on either side of a central plane when viewing the mask body from a
top view. Id. at 4—5. The Examiner reasons that it would have been obvious
to one of ordinary skill to include such concave segments in Bostock’s
respirator “to provide a better sealing engagement with the user’s face under
the eyes, so as to inhibit backflow of humid exhaled air from entering
goggles worn by the user.” Id. at 5 (citing Tilden 8:56—58).
Appellants traverse, arguing that Tilden does not teach or suggest the
recited concave segments because
When the face protector of Tilden is oriented such that the rear
of the mask body is located towards the top of the page and the
3 Rejections of claims 2 and 17 under 35 U.S.C. § 101 and of claims 12, 13,
27, and 28 under 35 U.S.C. § 112, second paragraph, were withdrawn. Ans.
2 (dated Apr. 16, 2015); Adv. Act 2 (dated Oct. 9, 2014).
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Application 11/743,734
front of the covering faces the bottom of the page, the perimeter
of the protector would be a straight line and not include first
and second concave segments as the protector is a flat sheet as
shown in FIG. 1 ofTilden.
Appeal Br. 7—8; see also Reply Br. 4—7. Continuing, Appellants assert that
because of “the absence of any explicit teaching . . ., the Examiner is relying
on inherency to support the obviousness rejection of the pending claims over
the combination of [Bostock] and Tilden” but “[t]he Examiner has not,
however, met the requirements for a rejection based on inherency.” Appeal
Br. 8. Similarly, Appellants also assert that “the Examiner has failed to
provide any teaching or suggestion in Tilden that describes that this central
edge portion 10 also includes concave segments as recited in the pending
claims.” Id. at 9.
We are not persuaded by Appellants’ arguments, which presume that
the “top view” is taken when Tilden’s face protector 1 is in the unmounted
state illustrated in Figure 1 rather than in the use state illustrated in Figure 2.
Appellants do not dispute that Tilden’s Figure 1 discloses concave segments
per se. Rather, Appellants’ arguments focus on whether or not the concave
segments would be visible in a “top view.” Nonetheless, even considering
the “top view” to be taken in the state illustrated in Figure 1 and accepting
Appellants’ assertion that “the perimeter of the protector would be a straight
line,” the concave segments of Tilden’s central edge portion 10 would be
viewable from above as they are not obstructed or hidden from view. See In
re Aslanian, 590 F.2d 911, 914 (CCPA 1979) (holding that a drawing
teaches all that it reasonably discloses and suggests to a person of ordinary
skill in the art). Additionally, the Examiner adds such concave segments to
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Application 11/743,734
the respirator of Bostock, so Appellants’ piecemeal arguments attacking
Tilden individually are unpersuasive of error because the rejection is over a
combination of references. See In re Keller, 642 F.2d 413, 426 (CCPA
1981) (“[0]ne cannot show non-obviousness by attacking references
individually where, as here, the rejections are based on combinations of
references.”).
Moreover, Appellants’ arguments are not persuasive because they are
not commensurate in scope with claim 1. Claim 1 does not require the
recited concave segments to be viewable when the mask body is oriented in
a particular position. Rather, claim 1 recites the “top view” to define the
location of the first and second concave segments: “a perimeter that
includes an upper segment that comprises first and second concave segments
that are located, respectively, on first and second sides of a central plane
when viewing the mask body from a top view" Claims App. 1 (emphasis
added). Thus, the top view defines the orientation of the central plane, on
either side of which the concave segments are located. Because Appellants’
arguments are not commensurate with the scope of the claims, they are
unpersuasive. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“Many of
appellant’s arguments fail from the outset because . . . they are not based on
limitations appearing in the claims.”). We further note that the concave
segments of Tilden’s central edge portion 10 are located as required by
claim 1. Tilden Fig. 1.
Appellants also argue that “one of skill [in] the art would not be
motivated to modify the protection device of [Bostock] with the teachings of
Tilden as alleged because the two references teach away from being
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Application 11/743,734
combined.” Appeal Br. 9. According to Appellants, “[t]he disclosed
protection device [of Bostock] is sealed against the user’s face, and air is
inhaled and exhaled through the respirator body,” and “the face protector 1
of Tilden directs air out through a gap or opening between the face protector
and the user’s face.” Id. Continuing, Appellants note that Tilden recognizes
a problem with prior art masks:
masks that are designed such that the user must breathe directly
through the material of the mask (e.g., the protection device of
[Bostock] as alleged) may trap humidity from the exhaled air of
the user that may freeze on the mask and act as a physical
barrier, which may prevent or inhibit the passage of air when
the user inhales or exhales, and that such humid air may find its
way into protective eyewear or goggles, thus causing fogging.
Id. at 10 (citing Tilden 1:37-49). Thus, Appellants continue, “Tilden,
therefore, teaches away from the types of masks and respirators described in
[Bostock]” and, “[b]ecause of this teaching away, one of skill [in] the art
would not be motivated to modify [Bostock] with the teachings of Tilden as
alleged.” Id.
We are not persuaded by Appellants arguments. Prior art does not
teach away from claimed subject matter merely by disclosing a different
solution to a similar problem unless the prior art also criticizes, discredits, or
otherwise discourages the solution claimed. See In re Fulton, 391 F.3d
1195, 1201 (Fed. Cir. 2004). Appellants do not direct us to any disclosure in
Tilden or Bostock that criticizes, discredits, or discourages the solution
claimed by Appellants.
Moreover, rather than teaching away from modifying Bostock, the
passages of Tilden cited by Appellants support the Examiner’s modification
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Application 11/743,734
of Bostock. The problem identified by Appellants—the fogging of
eyewear—is precisely why the Examiner modifies Bostock to have the
concave segments taught by Tilden. Final Act. 5. When Bostock’s
respirator is modified to include Tilden’s concave segments on the perimeter
upper segment, such concave segments are, during use, “sandwiched or
squeezed between the face of the user and the goggle means and act[] as a
kind of sealing gasket which prevents or inhibits backflow of humid air into
the goggles” thereby preventing or inhibiting goggle fogging. Tilden 8:53—
58, Fig. 3. Furthermore, as Bostock’s respirator also covers the user’s nose
during use (see, e.g., Bostock 11), the modification of Bostock based on the
teachings of Tilden would not be a “substantial[] redesign” as asserted by
Appellants (Reply Br. 7—9). Rather, the modification merely entails
modifying edge 24 of Bostock’s top panel 14 to include Tilden’s concave
segments.
Accordingly, for the foregoing reasons, we sustain the rejection of
claim 1 and its dependent claims 2 and 4—13, which are not argued
separately, as well as claim 16 and its dependent claims 17—28, which are
not argued separately, as being obvious over Bostock and Tilden.
DECISION
The Examiner’s decision to reject claims 1,2, 4—13, and 16—28 is
affirmed.
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Application 11/743,734
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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