Ex Parte Kwok et al

Patent Trial and Appeal BoardJul 28, 2016

11921644 (P.T.A.B. Jul. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111921,644 0710612009 23117 7590 08/01/2016 NIXON & V ANDERHYE, PC 901 NORTH GLEBE ROAD, 11 TH FLOOR ARLINGTON, VA 22203 FIRST NAMED INVENTOR Philip Rodney Kwok 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-4398-788 8583 EXAMINER HAIRELL, AUNDRIA C ART UNIT PAPER NUMBER 3778 NOTIFICATION DATE DELIVERY MODE 08/01/2016 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 PHILIP RODNEY KWOK, RON RICHARD, ROHAN MULLINS, CHEE KEONG PHUAH, KARTHIKEYAN SELVARAJAN, ADRIAN BARNES, THOMAS EV AN MILLER, DAVID RICHARD VORREITER, CHRISTOPHER KINGSLEY BLUNSDEN, NICHOLAS JEROME REED, GLENN RICHARDS, and LARRY PUCKERIDGE Appeal2014-007194 Application 11/921,644 Technology Center 3700 Before LYNNE H. BROWNE, LISA M. GUIJT, and PAUL J. KORNICZKY, Administrative Patent Judges. BROWNE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Philip Rodney Kwok et al. (Appellants) appeal under 35 U.S.C. Â§ 134 from the rejection of claims 1-8, 10-22, 32, 33, 36, 37, and 39--41. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. Appeal2014-007194 Application 11/921,644 CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method of determining a continuous positive airway pressure (CPAP) treatment pressure for a patient, the method compnsmg: observing the patient in a clinical setting to determine a clinically- derived full therapeutic pressure; determining a limited therapeutic pressure which is less than said full therapeutic pressure; subjecting the patient to a plurality of treatment sessions including operating a device for treating sleep disordered breathing (SDB) during successive treatment sessions, wherein said device provides continuous positive airway pressure to the patient during sleep; applying a sub-therapeutic treatment pressure for an entire duration of a first session; incrementally increasing said treatment pressure for second and subsequent sessions until the limited therapeutic pressure is reached; monitoring the patient at said limited therapeutic pressure; and either stopping incremental increases in higher treatment pressure for subsequent sessions if said monitoring detects satisfactory treatment of the sleep disordered breathing at the limited therapeutic pressure, or continuing with one or more incremental increases in higher treatment pressure for subsequent sessions if the monitoring detects unsatisfactory treatment of the sleep disordered breathing at the limited therapeutic pressure. 2 Appeal2014-007194 Application 11/921,644 REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Miles Mechlenburg US 5,353,788 Oct. 11, 1994 US 2003/0213489 Al Nov. 20, 2003 REJECTIONS I. Claims 36, 37, and 39 stand rejected under 35 U.S.C. Â§ 112, first paragraph, as failing to comply with the written description requirement. II. Claims 1and3---6 stand rejected under 35 U.S.C. Â§ 102(b) as anticipated by Miles. III. Claims 2, 32, 36, 39, and 40 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Miles. IV. Claims 7, 8, 10-22, 33, 37, and 41 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over l\1iles and l\1echlenburg. DISCUSSION Rejection I Noting that "[c]laims 36-37 and 39 recite 'wherein the subtherapeutic pressure is a pressure that does not provide an optimum therapeutic benefit'," the Examiner determines that "[t]here is no support for this definition in the original disclosure." Final Act. 3. The Examiner explains "a therapeutic pressure would not inherently be an optimal pressure ... In fact a pressure could be out of an 'optimal' range while still providing some degree of therapy to the patient." Ans. 2. 3 Appeal2014-007194 Application 11/921,644 Appellants contend that because "the optimal pressure to treat sleep related breathing disorders will be a therapeutic pressure," "then necessarily the sub-therapeutic pressure will not provide an optimum therapeutic benefit because it is less than the therapeutic (optimal) pressure." Appeal Br. 8-9. Appellants are correct. Given that a sub-therapeutic pressure by definition cannot provide therapeutic benefit, it cannot provide optimal therapeutic benefit. We note that we do not understand claims 36, 37, and 39 to provide a definition of sub-therapeutic pressure. Rather, we understand these claims describe a feature of that pressure. We do not sustain the Examiner's decision rejecting claims 36, 37, and 39 as indefinite. Rejection II The Examiner finds that Miles discloses each and every limitation of independent claim 1. See Final Act. 3--4. In particular, the Examiner finds that Miles discloses "subjecting the patient to a plurality of treatment sessions (the calibration data can be collected over a series of nights; col 8, ln 45-50)" and "incrementally increasing said treatment pressure for second and subsequent sessions until said limited therapeutic pressure is reached (Fig. 3; step 34-37 which may result in increased overall base air pressure at step 46)." Id. Contending that "[t]he Office Action inconsistently interprets Miles to reject 'sessions' as recited in claim 1," Appellants note that, in addressing the limitation requiring "subjecting the patient to a plurality of treatment sessions," the Examiner interprets the claim term "session" to correspond to a night. Appeal Br. 10, 18. However, in addressing the limitation requiring "incrementally increasing said treatment pressure for second and subsequent 4 Appeal2014-007194 Application 11/921,644 sessions until the limited therapeutic pressure is reached," the Examiner interprets the claim term "session" to correspond to a period of 5 minutes. Id. Responding to this argument, the Examiner notes that the Specification does not define the amount of time that corresponds to a session. Ans. 3. The Examiner explains that: Id. because Miles teaches maintaining a pressure for any amount of time, Examiner has considered that as maintaining the pressure for the duration of a session (a session being any amount of time). If session is any amount of time the machine is in operation, there is no inconsistency in its application. The Examiner's position is untenable. Principles of claim construction require that "[ c ]laims [be] construed with an eye toward giving effect to all terms in the claim." Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950 (Fed. Cir. 2006); see also Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (denouncing claim constructions \vhich render phrases in claims superfluous). Here, by construing the claim term "session" to correspond to any amount of time and reading the term on different periods of time, the Examiner effectively reads the limitation out of the claim. Accordingly, the Examiner's findings pertaining to the claim term "session" are in error. We do not sustain the Examiner's decision rejecting claim 1, and claims 3---6 which depend therefrom. Rejections III and IV Rejections III and IV rely upon the same erroneous findings pertaining to the claim term "session" as Rejection II. Ans. 2-3. Accordingly, we do not sustain the Examiner's decisions rejecting claims 2, 5 Appeal2014-007194 Application 11/921,644 32, 36, 39, and 40 as unpatentable over Miles and rejecting claims 7, 8, 10- 22, 33, 37, and 41 as unpatentable over Miles and Mechlenburg. DECISION The Examiner's rejections of claims 1-8, 10-22, 32, 33, 36, 37, and 39--41 are REVERSED. REVERSED 6