Ex Parte Kratzenstein

Patent Trial and Appeal Board

Apr 29, 2016

12445810 (P.T.A.B. Apr. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/445,810 04/16/2009
23872 7590 04/29/2016
MCGLEW & TUTTLE, PC
P.O. BOX 9227
SCARBOROUGH STATION
SCARBOROUGH, NY 10510-9227
FIRST NAMED INVENTOR
Markus Kratzenstein
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.
73211 1343
EXAMINER
VASAT,PETERS
ART UNIT PAPER NUMBER
3778
MAILDATE DELIVERY MODE
04/29/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARKUS KRATZENSTEIN
Appeal2013-010944
Application 12/445,810
Technology Center 3700
Before JOHN C. KERINS, BRANDON J. WARNER, and LISA M. GUIJT,
Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Markus Kratzenstein (Appellant) seeks our review under 35 U.S.C.
§ 134(a) of the Examiner's final rejection of claims 10-29. We have
jurisdiction under 35 U.S.C. § 6(b ). An oral hearing was held on April 21,
2016, with Brian M. Duncan, Esq., appearing on behalf of Appellant.
We AFFIRM.
Appeal2013-010944
Application 12/445,810
THE INVENTION
Appellant's invention is directed to a breathing tube system with a
heating element. Independent claim 10, reproduced below, is illustrative:
10. A breathing tube system comprising:
a breathing tube with an inner tube wall;
a heating element with a single, continuous resistance wire
extending continuously, without interruption, several times to
and fro in the longitudinal direction of said tube and with wire
terminals integrally connected to said resistance wire at one end
thereof; and
a plurality of spreading elements spaced apart from each other in
the longitudinal direction of the tube, said resistance wire being
held in parallel in the tube by said spreading elements with said
resistance wire extending continuously, without interruption, at
least four times in the longitudinal direction of the tube, said
spreading elements having guide elements for receiving the
resistance wire at said inner tube wall, said spreading elements
being displaceable \'l1ith the resistance \'l1ire in the longitudinal
direction of said tube.
THE REJECTIONS ON APPEAL
The Examiner has rejected:
(i) claims 10-29 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement;
(ii) claims 10, 11, 15-17, 19, 20, 24--26, and 28 under 35 U.S.C.
§ 103(a) as being unpatentable over Comer (WO 2004/105848 Al,
published Dec. 9, 2004);
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Application 12/445,810
(iii) claims 12, 21, and 29 under 35 U.S.C. § 103(a) as being
unpatentable over Comer in view of Huddart (US 6,078,730, issued June 20,
2000);
(iv) claims 13, 14, 22, and 23 under 35 U.S.C. § 103(a) as being
unpatentable over Comer in view of Smith (US 2004/0118401 Al, published
June 24, 2004); and
(v) claims 18 and 27 under 35 U.S.C. § 103(a) as being unpatentable
over Comer in view of Fukunaga (US 6,439 ,231 B 1, issued Aug. 27, 2002).
ANALYSIS
Claims 10--29--35 U.S. C. § 112--Written Description
Initially, we note that the Examiner has withdrawn, on appeal, the
specific grounds for rejecting claims 11, 12, 19, 20, 28, and 29 as failing to
meet the written description requirement set forth in 35 U.S.C. § 112, first
paragraph. Ans. 2. The Examiner now identifies only independent claims
10, 19, and 28 as containing language that does not have written descriptive
support in the application as filed. Id. at 3---6. The Examiner notes,
however, that claims 11-18, 20-27, and 29 continue to be subject to the
rejection by virtue of their dependence from one of claims 10, 19, and 28.
Id.
While there is no in haec verba requirement, claim limitations added
subsequently to the filing of the original application must be supported in the
specification through express, implicit, or inherent disclosure. The
fundamental factual inquiry is whether the specification conveys with
reasonable clarity to those skilled in the art that, as of the filing date sought,
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Application 12/445,810
applicant was in possession of the invention as now claimed. See, e.g., Vas-
Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563---64 (Fed. Cir. 1991).
The Examiner's findings as to each of claims 10, 19, and 28 are
essentially the same, namely that the claims employ the term "integrally
connected," which, according to the Examiner, is not described or defined in
Appellant's Specification. Final Act. 2-3. The Examiner explains further,
in response to arguments advanced by Appellant, that
Appellant fails to point out where in the specification the wire
terminals are described as being integrally connected to the
resistance wire. None of Appellant's cited portions of the
specification provide any support, for the wire terminals being
"integrally" connected to the resistance wire. Furthermore,
Appellant appears to argue that the resistance wire "forms a
wire terminal", which is at odds with the limitation of claim 10
calling for "wire terminals integrally connected to said
resistance wire." Since claim 10 calls for the "wire terminal"
element to be "integrally connected" to the "resistance wire",
there must be a separate "wire terminal" to be "integrally
connected" to the "resistance \'l1ire". ii~ppellant has failed to
provide full and clear disclosure of the term "integrally
connected".
Ans. 3. The Examiner employs the same reasoning for claims 19 and 28.
Id. at 4--5. Claim 19, however, does not include the language calling for
wire terminals to be "integrally connected" to the continuous resistance wire,
and, even though Appellant fails to point out this difference, the Examiner's
findings and analysis cannot be said to pertain to the relevant portion of
claim 19, and the rejection as to that claim is not sustained. Claims 20-27
are rejected only on the basis that they depend from claim 19, and the
rejection is not sustained as to those claims as well. The remainder of this
discussion of this rejection pertains to independent claims 10 and 28, and the
claims depending therefrom.
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Application 12/445,810
Appellant principally points to paragraphs 12 and 25, as well as
Figure 2 of the disclosure, as providing a disclosure of the claim limitation at
issue. Specifically, and relying on those portions of the disclosure,
Appellant maintains that
paragraph [0025] of Appellant's substitute specification
provides that the electrical contacts (wire terminals) are led out
of the tube at the device-end of the tube. The terminals are
integrally connected to the single resistance wire as Appellant's
disclosure makes clear that each end of the single, continuous
resistance wire forms a wire terminal. Further, Figure 2 of
Appellant's disclosure shows the one-piece resistance wire with
integrally connected wire terminals,
and that
[t]he terms "integrally connected" as featured in the present
invention refer to the wire terminals being part of a one-piece,
singular structure of the resistance wire. There is no
requirement that there be a separate "wire terminal" to be
"integrally connected" to the "resistance wire" as stated on
pages 3 and 4 of the Examiner's Answer. Paragraph [0012] of
Appellant's substitute specification provides that the wire
terminals are provided at one end of a resistance wire wherein
the resistance wire extends several times to and fro in the
longitudinal direction of the tube.
Appeal Br. 14; Reply Br. 1.
The Examiner has the better position here. Paragraph 12, relied on by
Appellant, states that "a resistance wire extends several times to and fro in
the longitudinal direction of the tube. Wire terminals are provided at one
end in a tube." Paragraph 25 states that "the resistance wire 1 is led to and
fro twice when viewed from the device. Both electrical contacts are led out
of the tube at the device-side end 5 .... " In each instance, reference is
made to a "resistance wire," and, separately, to "wire terminals," or
"electrical contacts." In addition, paragraph 14 provides that "[t]he wire
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Application 12/445,810
terminals may advantageously be arranged at the device-side end of the
tube," without any reference to their being a part of the resistance wire.
These passages would have apprised a person of ordinary skill in the art that
additional elements, i.e., "wire terminals" or "electrical contacts," would be
placed at the free ends of the single resistance wire.
Figure 2 is also unavailing in establishing written descriptive support
for the claim term at issue. We regard Figure 2 as inviting at least three
possible interpretations as to what is illustrated at the device end of the tube.
The discontinuities illustrated at the extreme end portions being offset from
the resistance wire could be seen as an illustration of some form of the
disclosed wire terminals connected at the ends of two of the longitudinal
extents of the resistance wire. Figure 2 could also be viewed as showing the
ends of the wires, with the described wire terminals not yet provided. A
third interpretation, based only on Appellant's arguments presented on
appeal, is that the drawing illustrates that the ends of the wire themselves
serve as the wire terminals. The latter, which possibly could be seen as
providing written descriptive support for the "wire terminals [being]
integrally connected to said resistance wire at one end thereof," however,
does not comport with the use in the Specification and claims of the separate
terms "resistance wire" and "wire terminals" that are to be "connected to"
the resistance wire.
We are therefore not apprised of error in the Examiner's position that
the limitation in claims 10 and 28 requiring wire terminals that are integrally
connected to the claimed resistance wire lacks adequate written descriptive
support in the Specification as filed. The rejection of claims 10 and 28
under 35 U.S.C. § 112, first paragraph, is sustained. Claims 11-18 depend
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Application 12/445,810
either directly or indirectly from claim 10, and claim 29 depends from claim
28, and the rejection is thus sustained as to those claims as well. As noted
previously, the rejection is not sustained as to claims 19-27.
Claims 10, 11, 15-17, 19, 20, 24-26, and 28--0bviousness--Corner
Claim 10
The Examiner takes the position that the embodiment illustrated in
Figures 1---6 of Comer discloses all limitations recited in claim 10, with the
exception that the resistance wire does not extend at least four times in the
longitudinal direction of the tube. Final Act. 5. The Examiner further finds
that,
[i]n another embodiment shown in Figures 7 and 8, Comer
further teaches resistance wire 2 extending at least four times in
the longitudinal direction of the tube 4. Regarding the
embodiment having resistance wire 2 extending at least four
times in the longitudinal direction of tube 4, Comer further
teaches that the additional \'l1ire extensions provide more
efficient heating of the interior of the breathing tube 4 (pg. 10,
11. 22-30).
Id. Based on this teaching, the Examiner concludes that,
Id.
[i]t would have been obvious ... to modify the embodiment
shown in Figures 1---6 of Comer with a resistance wire
extending at least four times in the longitudinal direction of the
tube, as taught by Comer in the embodiment shown in Figures
7 and 8, because the additional wire extensions provide more
efficient heating of the interior of the breathing tube.
Appellant's arguments have at their base an assertion that Figures 7
and 8 of Comer do not disclose a single, continuous resistance wire, but
rather two separate heating wires. See, e.g., Appeal Br. 21-22. Thus,
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Application 12/445,810
according to Appellant, Comer "does not provide any teaching or suggestion
as to using a single, continuous resistance [wire] to form a heating element
as featured in the present invention." Id. at 23.
The issue as to whether Figures 7 and 8 of Comer do or do not
disclose a single continuous heating wire is not determinative here.
Although the Examiner ultimately followed Appellant's lead in discussing
why it is believed that those figures do disclose a single heating wire, 1 the
rejection, as seen in the quoted language above, is based on a proposed
modification of the single heating wire that is the subject of the embodiment
in Figures 1-6, such that it extends four times in a longitudinal direction.
This is proposed in order that the wire be present at four, rather than two,
locations near the inner wall, which, as disclosed with respect to Figures 7
and 8 of Comer, provides more efficient heating of the interior of the
breathing tube.
Appellant does not assert that the Examiner's proposed modification
to the single-wire embodiment of Comer does not disclose or suggest all
limitations of claim 10, nor that the Examiner's expressed reason for making
such a modification is contrary to the evidence or lacking in rational
underpinnings. Accordingly, the rejection of claim 10 as being obvious in
view of Comer is sustained.
1 As part of the Examiner's findings, the Examiner notes that Comer
describes the "heating wire," singular, in reference to Figures 7 and 8, and
thus those figures involve a single heating wire. Final Act. 5. We do not
regard this additional finding relative to Figures 7 and 8 to be critical to the
Examiner's prima facie case of obviousness. See Non-Final Action 3, dated
February 28, 2012.
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Application 12/445,810
Claim 11
Appellant argues that "Comer et al. simply fails to provide any
teaching or suggestion as to a heating wire having three connecting portions
that connect four wire portions to form a single, continuous resistance wire
that extends at least four times in a tube as featured in the present invention."
Appeal Br. 23. As with claim 10, this argument fails to take into account the
modification to the embodiment of Figures 1-6 of Comer as proposed by the
Examiner. The modification to extend the single wire of those embodiments
to obtain four longitudinal wire extensions would further require two
additional connecting portions, for a total of three, as claimed.
Appellant additionally prefaces the above argument by reciting certain
claim elements, and baldly asserting that these elements are not taught or
suggested by Comer. To the extent that this was intended to be a separate
argument, the assertion is analogous to those in In re Lovin, and does not
apprise us of Examiner error. In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011) ("we hold that the Board reasonably interpreted Rule 41.37 to require
more substantive arguments in an appeal brief than a mere recitation of the
claim elements and naked assertion that the corresponding elements were
not found in the prior art").
The rejection of claim 11 is sustained.
Claim 15
Appellant argues that Comer does not teach or suggest the provision
of spreading elements that have a plurality of spreading arms corresponding
to four portions of a single continuous wire as claimed. Appeal Br. 24. The
Examiner concludes that, in modifying the single wire to include four
longitudinal wire extensions, the spreading arms would be modified to
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Application 12/445,810
accommodate the four extensions. Final Act. 6-7; Ans. 10. "A person of
ordinary skill is also a person of ordinary creativity, not an automaton."
KSR Int'!. Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
The rejection of claim 15 is sustained.
Claim 16
Appellant maintains that Comer does not disclose arranging its clips
in the tube equidistantly, and that reliance on Figure 2 of Comer as
disclosing such a teaching "is based on mere conjecture." Appeal Br. 25.
We disagree that conjecture would be required to arrive at the finding that
Figure 2 of Comer contains a disclosure that would be understood by those
of ordinary skill in the art as an equidistant arrangement of spacers in the
tube along the longitudinal extents of the wires, or in order to conclude that
such an arrangement would have been obvious.
The rejection of claim 16 is sustained.
Claim 17
As with the argument presented with respect to claim 15, Appellant's
argument directed to claim 17 fails to take into account the Examiner's
proposed modification of the first embodiment in Comer. Appeal Br. 25-
26.
The rejection of claim 17 is sustained.
Claim 19
Appellant's arguments directed to claim 19 mirror those presented for
claim 10, discussed above. Appeal Br. 26-28. For the same reasons
expressed with respect to sustaining the rejection of claim 10, the rejection
of claim 19 is sustained as well.
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Application 12/445,810
Claim 20
Appellant's arguments directed to claim 20 mirror those presented for
claim 11, discussed above. Appeal Br. 28-29. For the same reasons
expressed with respect to sustaining the rejection of claim 11, the rejection
of claim 20 is sustained as well.
Claim 24
Appellant's arguments directed to claim 24 mirror those presented for
claim 15, discussed above. Appeal Br. 29. For the same reasons expressed
with respect to sustaining the rejection of claim 15, the rejection of claim 24
is sustained as well.
Claim 25
Appellant's arguments directed to claim 25 mirror those presented for
claim 16, discussed above. Appeal Br. 30. For the same reasons expressed
with respect to sustaining the rejection of claim 16, the rejection of claim 25
is sustained as well.
Claim 26
Appellant's arguments directed to claim 26 mirror those presented for
claim 17, discussed above. Appeal Br. 3 0-31. For the same reasons
expressed with respect to sustaining the rejection of claim 17, the rejection
of claim 26 is sustained as well.
Claim 28
Appellant's arguments directed to claim 28 mirror those presented for
claims 10, discussed above. Appeal Br. 31-32. For the same reasons
expressed with respect to sustaining the rejection of claim 10, the rejection
of claim 28 is sustained as well.
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Application 12/445,810
Claims 12, 21, and 29--0bviousness--Corner/Huddart
Claim 12
Appellant's arguments directed to claim 12 are essentially the same as
those presented for claim 10 above, with the additional argument that
Huddart does not cure the alleged deficiencies noted with respect to the
Comer disclosure. Appeal Br. 33-34. As noted above, Appellant has not
apprised us of Examiner error in the proposed modification to Comer, and
thus Huddart is not needed to cure any such deficiencies.
The rejection of claim 12 is sustained.
Claim 21
Appellant's arguments directed to claim 21 are essentially the same as
those presented for claim 10 above, with the additional argument that
Huddart does not cure the alleged deficiencies noted with respect to the
Comer disclosure. Appeal Br. 34--35. As noted above, Appellant has not
apprised us of Examiner error in the proposed modification to Comer, and
thus Huddart is not needed to cure any such deficiencies.
The rejection of claim 21 is sustained.
Claim 29
Appellant's arguments directed to claim 29 are similar in nature to
those presented for claims 10 and 28 (claim 29 depending from claim 28).
Appeal Br. 35-36. For the same reasons noted above in the discussion of
claim 10, we are not persuaded of Examiner error. Appellant further repeats
language appearing in the claims and asserts that neither Comer nor Huddart
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Application 12/445,810
discloses those limitations. Such arguments fail to apprise us of Examiner
error. See Lovin, 652 F.3d at 1357, supra.
The rejection of claim 29 is sustained.
Claims 13, 14, 22, and 23--0bviousness--Corner/Smith
Claim 13
Appellant argues that "[t]here is no teaching or suggestion in the
combination of Smith and Comer et al. as to applying a single, continuous
resistance wire having a plurality of strands coated together via an
electrically insulating plastic," as claimed. Appeal Br. 36-37. This
statement appears to be premised on Appellant's characterization of Comer,
discussed above, and does not take into account the modification proposed
by the Examiner.
The rejection of claim 13 is sustained.
Claim 14
Appellant's arguments directed to claim 14 are essentially the same as
those advanced for claim 13. Appeal Br. 3 7. For the same reason stated in
the discussion of that claim, the rejection of claim 14 is sustained.
Claim 22
Appellant's arguments directed to claim 22 are essentially the same as
those advanced for claim 13. Appeal Br. 38. For the same reason stated in
the discussion of that claim, the rejection of claim 22 is sustained.
Claim 23
Appellant's arguments directed to claim 23 are essentially the same as
those advanced for claim 13. Appeal Br. 38-39. For the same reason stated
in the discussion of that claim, the rejection of claim 23 is sustained.
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Application 12/445,810
Claims 18 and 27--0bviousness--Corner/Fukunaga
Claim 18
Appellant's argument advanced for claim 18 fails to account for the
Examiner's proposed modification of Comer, in a manner similar to the
argument advanced with respect to claim 13 discussed above. Appeal Br.
39--40. For the same reason stated in the discussion of that claim, the
rejection of claim 18 is sustained.
Claim 27
Appellant's arguments directed to claim 27 are essentially the same as
those advanced for claim 18. Appeal Br. 40--41. For the same reason stated
in the discussion of that claim, the rejection of claim 27 is sustained.
DECISION
The rejection of claims 10-18, 28, and 29 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement is
affirmed.
The rejection of claims 19-27 under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement is reversed.
The rejection of claims 10, 11, 15-17, 19, 20, 24-26, and 28 under 35
U.S.C. § 103(a) as being unpatentable over Comer is affirmed.
The rejection of claims 12, 21, and 29 under 35 U.S.C. § 103(a) as
being unpatentable over Comer and Huddart is affirmed.
The rejection of claims 13, 14, 22, and 23 under 35 U.S.C. § 103(a) as
being unpatentable over Comer and Smith is affirmed.
The rejection of claims 18 and 27 under 35 U.S.C. § 103(a) as being
unpatentable over Comer and Fukunaga is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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