Ex Parte JAFFE

Patent Trials and Appeals Board

Jan 9, 2019

14367250 - (D) (P.T.A.B. Jan. 9, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/367,250 06/20/2014 Michael Brian JAFFE
24737 7590 01/11/2019
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus A venue
Suite 340
Valhalla, NY 10595
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.
2011P02526WOUS 1058
EXAMINER
WEARE, MEREDITH H
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
01/11/2019 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):
patti. demichele@Philips.com
marianne.fox@philips.com
katelyn.mulroy@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL BRIAN JAFFE
Appeal2018-002681
Application 14/367,250 1
Technology Center 3700
Before LINDA E. HORNER, MICHAEL J. FITZPATRICK, and
NATHAN A. ENGELS, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's rejections of claims 1-4, 6-8, 10, 12, 13, and 15-17, which are
all of the pending claims. Final Office Action (May 24, 2017) ("Final
Act."). We have jurisdiction under 35 U.S.C. § 6(b).
1 Koninklijke Philips N.V. ("Appellant") is the applicant under 37 C.F.R.
§ 1.46 and is identified as the real party in interest. Appeal Brief (October
17, 2017) ("Appeal Br."), at 3.
Appeal2018-002681
Application 14/367,250
The Examiner rejected one claim as indefinite and rejected all of the
pending claims as unpatentable over a combination of the prior art.
Appellant does not contest the indefiniteness rejection. As to obviousness,
Appellant argues that the Examiner did not consider all the limitations of the
claims and that the prior art would not have suggested the claimed subject
matter to one having ordinary skill in the art. For the reasons explained
below, we agree with the Examiner's determination of obviousness. Thus,
we AFFIRM.
CLAIMED SUBJECT MATTER
The claimed subject matter relates to "ventilator or respirator systems
having a flow and/or gas sensor with an integrated filter designed to prevent
cross-contamination between different patients." Substitute Specification
(October 27, 2016) ("Spec.") ,r 1. Claims 1, 7, and 15 are the independent
claims on appeal. Claim 1 is illustrative of the claimed subject matter and is
reproduced below.
1. An arrangement for measurement of respiratory
flow or respiratory gases in an airway between a patient and a
ventilator or respirator, the arrangement comprising:
an adapter comprising a housing having first through
fourth openings;
a first connector attached to the adapter at the first opening
and configured for connection to a first hose leading toward the
ventilator or respirator;
a second connector attached to the adapter at the second
opening and configured for connection to a second hose leading
toward the patient;
third and fourth connectors attached to the adapter at the
third and fourth openings and configured for connection with
pressure sensing tubes to be used in conjunction with a
2
Appeal2018-002681
Application 14/367,250
differential pressure flow sensor located along a path between the
first and second connectors; and
a filter disposed in a filter housing integrated within the
housing of the adapter, wherein the filter is configured to prevent
patient originated infective agents from contaminating the
pressure sensing tubes.
Appeal Br. 15 (Claims Appendix).
Kofoed
Brown
Orr
Jones
Miller
EVIDENCE
us 5,379,650
us 6,131,573
US 2002/0162397 Al
US 2003/0120169 Al
US 2004/0249300 Al
REJECTIONS
Jan. 10, 1995
Oct. 17, 2000
Nov. 7, 2002
June 26, 2003
Dec. 9, 2004
The Final Office Action includes the following rejections:
1. Claim 17 is rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite.
2. Claims 1--4, 6, 7, 10, and 12 are rejected under 35 U.S.C. § I03(a)
as unpatentable over Orr, Jones, and Brown.
3. Claim 8 is rejected under 35 U.S.C. § I03(a) as unpatentable over
Orr, Jones, Brown, and Kofoed.
4. Claim 13 is rejected under 35 U.S.C. § I03(a) as unpatentable over
Orr, Jones, Brown, and Miller.
5. Claims 15-17 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Orr, Miller, and Brown.
3
Appeal2018-002681
Application 14/367,250
First Ground of Rejection
ANALYSIS
The Examiner rejected claim 17 under 35 U.S.C. § 112, second
paragraph, as being indefinite because, according to the Examiner, it is
unclear whether the recitation of "a filter housing" in claim 1 7 is intended to
further limit the filter housing of claim 15 or is intended to refer to an
additional second filter housing. Final Act. 2-3. In an attempt to overcome
this rejection, Appellant amended claim 17 to depend from claim 15 instead
of claim 16. Amendment and/or Response under 37 C.F.R. § 1.116 (July 24,
2017) ("After-Final Amendment"). The Examiner entered the After-Final
Amendment but maintained the rejection, explaining that changing the
dependency of claim 1 7 does not clarify the indefinite language of the claim.
Advisory Action (August 16, 2017) at 1-2. 2
Appellant does not contest this first ground of rejection in the Appeal
Brief. Appeal Br. 3, 5-6 (listing claim 17 as a claim on appeal, but omitting
any reference to the indefiniteness rejection). Thus, we summarily sustain
the rejection of claim 17 under 35 U.S.C. § 112, second paragraph.
2 The Advisory Action is internally inconsistent as to entry of the
amendment. On the first page of the Advisory Action, the Examiner
checked box 7 to indicate that the amendment to claim 1 7 "will be entered"
for purposes of appeal. Adv. Act. 1. On the second page of the Advisory
Action, the Examiner states, however, "Applicant's proposed amendments
have not been entered for the reasons noted above." Id. at 2. On the same
day that the Examiner issued the Advisory Action, the Examiner also
entered into the official file wrapper a copy of the first page of the after-final
amendment with the notation "OK TO ENTER" initialed and dated by the
Examiner. Based on this notation and the markings on page 1 of the
Advisory Action, we understand the Examiner to have entered the after-final
amendment of claim 1 7.
4
Appeal2018-002681
Application 14/367,250
Second Ground of Rejection
Appellant argues that the Examiner, in stating that Orr "does not teach
the filter is integrated within the housing adjacent the third and fourth
openings," failed to consider all limitations of claim 1. 3 Appeal Br. 7
(quoting Final Act. 5; noting that claim 1 recites a filter housing integrated
within the housing of the adapter). We disagree.
The Examiner considered all the limitations of claim 1 in the
rejection. Specifically, the Examiner found that Orr discloses a filter
adjacent to third and fourth openings but does not teach the filter integrated
within the adapter housing in this location. Final Act. 5. The Examiner
found that Jones shows it was known in the art to integrate a filter within an
adapter housing adjacent third and fourth connectors. Id. Based on this
teaching of Jones, the Examiner proposed to modify Orr to place its filters
within the adapter housing. Id. at 5-6. The Examiner recognized, however,
that Orr's adapter, as modified with the teaching of Jones, does not teach the
filter disposed in a filter housing integrated within the adapter housing. Id.
at 6. The Examiner found that Brown teaches a filter housing having a filter
disposed therein and teaches advantages to using a filter housing. Id. at 6-7.
The Examiner proposed to further modify Orr to dispose its filters within a
filter housing integrated within the adapter housing. Id. at 7. Thus, the
Examiner properly considered the recited limitation of "a filter disposed in a
filter housing integrated within the housing of the adapter," in rejecting
claim 1 over Orr, Jones, and Brown.
3 Appellant argues all the claims subject to the second ground of rejection,
i.e., claims 1-4, 6, 7, 10, and 12, as a group. Appeal Br. 6-11. We select
claim 1 as the representative claim, and the remaining claims stand or fall
with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv).
5
Appeal2018-002681
Application 14/367,250
Appellant also argues that Jones does not cure the deficiency in Orr
because Jones does not disclose a filter disposed in a filter housing
integrated within the housing of the adapter. Appeal Br. 7. As explained
above, the Examiner did not rely on Jones for teaching a filter housing
integrated within the adapter housing. Rather, the Examiner relied on the
combined teachings of Jones, i.e., a filter integrated within an adapter
housing, and Brown, i.e., a filter disposed in a filter housing, as evidence
supporting the determination of obviousness of the subject matter of claim 1.
Final Act. 5-7; Ans. 3-4 ("the test [ for obviousness] is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art"). Thus, this argument by Appellant does not identify an error in
the rejection.
Appellant also argues that Brown's pulmonary function filter 20 is a
"stand-alone device ... and not a filter housing to be integrated within the
housing of the adapter in any relation to pressure sensing tubes." Appeal
Br. 9 ( emphasis omitted). As explained above, the Examiner did not rely on
Brown for teaching a filter housing integrated within an adapter housing.
Rather, the Examiner relied on the combined teachings of Jones and Brown.
Final Act. 5-7; Ans. 3-4. Thus, this argument by Appellant also does not
identify an error in the rejection.
In response to the Examiner's findings about the combined teachings
of Orr, Jones, and Brown, Appellant argues that the Examiner erred in
combining the teachings of the pulmonary function filter 20 of Brown and
the adapter of Orr because "these references are directed to two
fundamentally different elements: a portable pressure transducer [50, of
Orr], and the pulmonary function filter 20 of Brown." Appeal Br. 10
6
Appeal2018-002681
Application 14/367,250
( emphasis omitted). Appellant argues that "providing a device with a
mouthpiece (pulmonary function filter 20 of Brown) into a device (portable
pressure transducer 50 [of] Orr) that is connected to a mouthpiece (12 of
Orr) ... would be a redundancy ... and would present a filter housing
significantly larger than the portable transducer 50 of Orr." Id. (arguing "the
suggested filter housing would clearly not fit the housing of the adaptor as
specifically claimed"). This argument does not address the proper
obviousness inquiry.
The Examiner's proposed modification was not based on bodily
incorporation of the exact filter housing structure disclosed in Brown into
Orr's adapter. Final Act. 21; Adv. Act. 3; Ans. 3-4. Rather, the Examiner
determined that it would have been obvious to one having ordinary skill in
the art, in light of the teaching in Brown of a technique to dispose a filter
within a housing and the corresponding advantages flowing from use of such
a filter and filter housing arrangement, to use a filter housing in the modified
Orr adapter housing to achieve the advantages disclosed in Brown. Final
Act. 6-7; Adv. Act. 4; Ans. 4 (identifying advantages of use of a filter
housing include placing the filter element under tension, helping to hold the
filter element in place, and minimizing any obstruction to free-flow of air
through the filter element).
Indeed, Brown teaches that the effectiveness of filters used on medical
devices such as spirometers and other respiratory function equipment to
remove viral and bacterial organisms from an air or other gas stream
"depends upon proper positioning of the filter element and ensuring that the
configuration of the filter element remains unchanged during normal use."
Brown, col. 1, 11. 10-14, 26-29. For example, when using such filters, it is
7
Appeal2018-002681
Application 14/367,250
important to avoid collapse of the filter element. Id. at col. 1, 11. 29-31.
Brown teaches a technique for holding the filter element under tension
between mated housing elements. Id. at col. 2, 11. 13-22. "Having the filter
element under some tension helps to hold the filter element in place, and
helps to minimize any obstruction to free-flow of air ( or gases) through the
filter." Id. at col. 2, 11. 33-35. Also, the arrangement minimizes "vibration
or movement of the filter element." Id. at col. 2, 11. 43-44; see also id. at
col. 1, 11. 54-63 ( describing that the arrangement "minimizes the possibility
of stretching or movement of the filter element within the housing" and
"minimizes the possibility of wrinkling of the filter element, thereby
permitting improved flow and filtration characteristics").
Based on these teachings in Brown, the Examiner determined that one
of ordinary skill in the art would have been "sufficiently motivated to further
modify the arrangement of Orr by providing the filter, which is integrated
into the adapter housing, within an integrated filter housing to provide
similar, predictable advantages." Adv. Act. 4; Ans. 4. In other words, the
Examiner determined that one having ordinary skill in the art would have
recognized that using a filter housing to maintain Orr's filters under tension
would improve Orr's adapter in the same way as disclosed in Brown. We
find no error in this reasoning. "[I]f a technique has been used to improve
one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill." KSR Int 'l
Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
We also agree with the Examiner's finding that " [ o ]ne of ordinary
skill in the art would appreciate that including a filter housing as proposed
8
Appeal2018-002681
Application 14/367,250
would require said housing to be appropriately sized to fit within the adaptor
[sic] housing in order to provide the suggested advantages." Ans. 5. Based
on the state of the art evidenced in the prior art references relied upon in the
rejection, we agree with the Examiner's determination that it would be
within the level of skill of one having ordinary skill in the art to apply the
technique disclosed in Brown to fashion a filter housing for use in the
adapter of Orr to maintain the filters in tension. "A person of ordinary skill
is also a person of ordinary creativity, not an automaton." KSR, 550 U.S. at
421.
For these reasons, we agree with the Examiner's determination of
obviousness of the subject matter of claim 1 over Orr, Jones, and Brown.
Thus, we sustain the rejection of claim 1, and claims 2-4, 6, 7, 10, and 12
fall with claim 1.
Third and Fourth Grounds of Rejection
Appellant relies on the same arguments made in response to the
second ground of rejection as the basis for seeking reversal of the third and
fourth grounds of rejection of dependent claims 8 and 13. Appeal Br. 12.
For the reasons discussed above, we likewise sustain the rejections of claims
8 and 13.
Fifth Ground of Re} ection
In the fifth ground, the Examiner proposes to modify Orr with the
teaching of Miller, instead of Jones, to modify the location of Orr's filters to
be integrated within the adapter housing, and to further modify Orr with the
teaching of Brown in the same manner as set forth in the rejection of claim 1
to dispose Orr's filters in a filter housing integrated within the housing of the
adapter. Final Act. 15-18. Appellant relies on the same arguments made in
9
Appeal2018-002681
Application 14/367,250
response to the second ground of rejection as the basis for seeking reversal
of the fifth ground of rejection. Appeal Br. 12 (arguing that "[c]laim 15
includes similar features as those of claim 1 "). For the reasons discussed
above, we do not find error in the Examiner's rejection of claim 15. Thus,
we sustain the rejection of claim 15. Claims 16 and 17 fall with claim 15.
See 37 C.F.R. § 4I.37(c)(l)(iv).
DECISION
The decision of the Examiner rejecting claims 1-4, 6-8, 10, 12, 13,
and 15-1 7 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
10