Ex Parte MADAUS et al

Patent Trials and Appeals Board

Jan 9, 2019

13616036 - (D) (P.T.A.B. Jan. 9, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/616,036 09/14/2012
23117 7590 01/11/2019
NIXON & V ANDERHYE, PC
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Stefan Rolf MADA US
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-4750-86 6968
EXAMINER
STUART, COLINW
ART UNIT PAPER NUMBER
3785
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):
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 STEP AN ROLF MADA US and HARALD VOGELE
Appeal2018-004839
Application 13/616,036
Technology Center 3700
Before JENNIFER D. BAHR, WILLIAM A. CAPP, and JILL D. HILL,
Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 seek our review under 35 U.S.C. § 134(a) of the non-final
rejection of claims 17-19, 21--42, 44--47, 49, 50, 52, 53, and 55-57. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter a new ground of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b).
1 ResMed R&D Germany GmbH is the Applicant and real party in interest.
Appeal Br. 3.
Appeal2018-004839
Application 13/616,036
THE INVENTION
Appellants' invention relates to respiratory masks. Spec. 1.
Claim 17, reproduced below with emphasis in italics added, is illustrative of
the subject matter on appeal.
17. A holding arrangement configured to sealingly hold a
respiratory mask against a face of a patient during treatment
with pressurized respiratory gas, said holding arrangement
compnsmg:
a strap arrangement including an upper strap portion
adapted to pass along a side of the patient's head over the
patient's ear, a lower strap portion adapted to pass along and
abut the patient's cheek, and a rear strap portion adapted to
descend behind the patient's ear towards the patient's neck,
wherein at least one portion of the strap arrangement having
a multi-layered construction including a padding material
enclosed between a patient contacting material and a second
material, the patient contacting material including a fabric layer
configured to be positioned between the padding material and
the patient's skin, the fabric layer having a face contacting
surface adapted to contact the patient's skin in an application
position of the holding arrangement;
wherein the multi-layered construction is fixed by
connection points each configured to secure at least the patient
contacting material to the second material via a thermoformed
weld or ultrasonic weld, the connection points being spaced
from one another when viewed in cross-section, each of the
connection points being spaced away from the patient's skin in
the application position of the holding arrangement; and
wherein the at least one portion of the strap arrangement is
configured to maintain the mask in sealing communication with
at least one airway of the patient and to reduce or eliminate
marks left on the face of the patient during treatment.
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Appeal2018-004839
Application 13/616,036
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Motsinger
Bulbulian
Ackerman
Ashinoff
Stafford
Nebeker
us 1,942,442
us 2,353,643
us 4,774,946
us 4,947,488
us 5,395,400
us 5,566,395
Jan.9, 1934
July 18, 1944
Oct. 4, 1988
Aug. 14, 1990
Mar. 7, 1995
Oct. 22, 1996
The following rejections are before us for review:
1. Claims 17, 18, 21, 22, 24, 25, 38, 39, 41, 42, 45, 47, 49, 50,
and 55-57 are rejected under 35 U.S.C. § 103(a) as being unpatentable over
Bulbulian and Nebeker.
2. Claims 26, 27, 32-36, 44, 46, 52, and 53 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Bulbulian, Nebeker, and
Ashinoff.
3. Claims 19 and 40 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bulbulian, Nebeker, and Stafford.
4. Claim 23 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bulbulian, Nebeker, and Ackerman.
5. Claims 28 and 37 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bulbulian, Ashinoff, Nebeker, and Ackerman.
6. Claims 29 and 30 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bulbulian, Ashinoff, Nebeker, Ackerman, and Stafford.
7. Claim 31 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bulbulian, Ashinoff, Nebeker, and Motsinger.
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Appeal2018-004839
Application 13/616,036
CONTINUATION HISTORY
The instant case is a divisional of US Application No. 11/529,296,
filed September 29, 2006, now US 8,286,634, which is a divisional of U.S.
Application No. 10/333,020, filed June 2, 2003, now US 7,562,658, which is
a National Phase of PCT/EPOI/07132, filed June 22, 2001, and which claims
priority to German Patent Application DE 100 35 946.9, filed July 21,
2000. 2 Limitations directed to reducing marks on the face were first added
by amendment on August 12, 2015. See Amendment dated Aug. 12, 2015.
NEW GROUND OF REJECTION
35 U.S.C. § 112, second paragraph - INDEFINITENESS
Legal Principles of Indefiniteness
"Because the claims perform the fundamental function of delineating
the scope of the invention, the purpose of the definiteness requirement is to
ensure that the claims delineate the scope of the invention using language
that adequately notifies the public of the patentee's right to exclude."
Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir.
2005) ( citation omitted). The governing section of the Patent Code provides,
in pertinent part, that:
The specification shall conclude with one or more claims
particularly pointing out and distinctly claiming the subject
matter which the inventor or a joint inventor regards as the
invention.
35 U.S.C. § 112, second paragraph. A claim is properly rejected as
indefinite if, after applying the broadest reasonable interpretation in light of
the specification, the metes and bounds of a claim are not clear because the
2 A continuation of the instant application, Application No. 14/561,896, filed
December 5, 2014, is also presently before us as Appeal No. 2017-004790.
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Appeal2018-004839
Application 13/616,036
claim "contains words or phrases whose meaning is unclear." In re
Packard, 751 F.3d 1307, 1310, 1322 (Fed. Cir. 2014) (per curiam)
(approving, for pre-issuance claims, the standard from MPEP § 2173.05(e));
see also Ex parte McAward, Appeal 2015-006416, 2017 WL 3669566, at *5
(PTAB Aug. 25, 2017) (precedential) (adopting the approach for assessing
indefiniteness approved by the Federal Circuit in Packard).
During patent prosecution when claims can be amended, ambiguities
should be recognized, scope and breadth of language explored, and
clarification imposed. In re Zletz, 893 F.2d 319,321 (Fed. Cir. 1989).
Section 112 places the burden of precise claim drafting on the applicant. See
In re Morris, 127 F.3d 1048, 1056-57 (Fed. Cir. 1997). Ifno reasonably
definite meaning can be ascribed to certain claim terms, the subject matter
becomes indefinite, not obvious. In re Wilson, 424 F.2d 1382, 1385 (CCP A
1970).
More specifically, when a "word of degree" is used, the patent
application must provide a standard for measuring that degree. Enzo
Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1332 (Fed. Cir. 2010),
quoting Seattle Box Co., Inc. v. Indus. Crating & Packing, Inc., 731 F.2d
818, 826 (Fed. Cir. 1984). The definiteness of a term of degree is
problematic if its baseline for comparison is unclear to those of ordinary
skill in the art. Liberty Ammunition, Inc. v. United States, 835 F.3d 1388,
1395 (Fed. Cir. 2016).
We especially take caution when presented with terms of
degree following the Supreme Court's decision in Nautilus, Inc.
v. Biosig Instruments, Inc., [572 U.S. 898], 134 S.Ct. 2120, 189
L.Ed.2d 37 (2014), which instructs that a claim must "inform
those skilled in the art about the scope of the invention with
reasonable certainty" to meet the definiteness requirement of 3 5
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Appeal2018-004839
Application 13/616,036
U.S.C. § 112, ,r 2, id. at 2129. While our post-Nautilus cases
indicate that terms of degree are not "inherently indefinite" in
light of the Supreme Court's decision, we have recognized that
claims having terms of degree will fail for indefiniteness unless
they "provide objective boundaries for those of skill in the art"
when read in light of the specification and the prosecution
history.
Id. at 1395-96, citing Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364,
1370-71 (Fed. Cir. 2014).
With the foregoing legal standards in mind, we analyze each of the
independent claims.
Indefiniteness of Claims 17, 26, and 38
Claims 17, 26, and 38 are independent claims. Claims App. Each
independent claim contains a substantially similar limitation directed to a
strap arrangement that is configured to "reduce ... marks" on the face. Id.
Throughout their briefs, Appellants argue repeatedly that limitations directed
to reducing visible marks on the face distinguish their invention from the
prior art. Appeal Br. 16, 17, 18, 20, 25, 26, 27, 29, 31, 34, and 35; Reply Br.
13, 14, 25, 26, 29, and 30.
The term "reduce" is a term of degree as it requires a comparison
against some baseline. See Liberty, 835 F.3d at 1395 (finding that "reduced
area of contact" is a term of degree as it necessarily calls for a comparison
against some baseline). In the Liberty case, the Federal Circuit noted that
the background section of the specification identified a "conventional"
projectile that the invention seeks to improve upon. Id. at 1396. The court
then used such conventional projectile as a baseline for the claim limitation
"reduced area of contract." Id. at 1396-97.
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Application 13/616,036
However, in the instant case, we find no disclosure in the
Specification that is analogous to the language in Liberty that saves the
"reduce" term from indefiniteness. Appellants' Specification mentions
"visible marks" only once. Spec. 1.
Depending on required therapeutic pressure of the respiratory
gas supplied via the respiratory mask and depending on the
individual face structure of the patient, mask press-on forces are
partially required, which leave visible marks after a longer
application of the mask on the face of the patient or in the
forehead area.
The invention is based on the object to provide a manageable
holding device for a respiratory mask through which a desired
respiratory mask press-on force by obtaining an improved
wearing comfort can be exerted in a reliable manner.
Id. ( emphasis added). In context, Appellants admit that both the prior art
and the instant invention apply a "mask press-on force" to a patient's face.
Appellants' objective is to obtain an "improved wearing comfort." Id.
Finally, "visible marks" on the face appear to be, at least in part, a function
of: (1) wearing comfort; and (2) duration of time that a mask is worn. Id.
Our reading of the Specification indicates that Appellants fail to
provide an objective standard, with respect to measuring a "visible mark,"
which can serve as a baseline of comparison to determine whether a "visible
mark" caused by the invention is "reduced." In the complete absence of
providing such an objective standard, the term is indefinite. See Datamize,
417 F.3d at 1351 (explaining that the specification must provide some
standard for measuring that degree).
Consequently, we hereby enter a NEW GROUND OF REJECTION
that claims 17, 26, and 38 are unpatentable as indefinite under 35 U.S.C.
§ 112, second paragraph.
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Application 13/616,036
Indefiniteness of
Claims 18, 19, 21-25, 27-37, 39--42, 44-47, 49, 50, 52, 53, and 55-57
These claims depend from one of independent claims 17, 26, or 38.
Claims App. As such, they are each unpatentable as indefinite by reason of
their dependency from an indefinite independent claim. Consequently, we
hereby enter a NEW GROUND OF REJECTION that claims 18, 19, 21-25,
27-37, 39--42, 44--47, 49, 50, 52, 53, and 55-57 are unpatentable as
indefinite under 35 U.S.C. § 112, second paragraph.
Unpatentability of Claims 17--46
The Examiner rejected claims 17-19, 21--42, 44--47, 49, 50, 52, 53,
and 55-57 under 35 U.S.C. § 103 as patentable over Bulbulian in
combination with one or more references. Non-Final Action 3-27. Because
we have concluded that claims 17-19, 21--42, 44--47, 49, 50, 52, 53, and 55-
57 are indefinite, the prior art rejections of these claims must fall because
they are necessarily based on a speculative assumption as to the meaning of
the claims. In re Steele, 305 F.2d 859, 863 (CCPA 1962).3
DECISION
The decision of the Examiner to reject claims 17-19, 21--42, 44--4 7,
49, 50, 52, 53, and 55-57 over the prior art is reversed in view of our entry
of an indefiniteness new ground of rejection.
We hereby enter a NEW GROUND OF REJECTION under 35 U.S.C.
§ 112(b), that claims 17-19, 21--42, 44--47, 49, 50, 52, 53, and 55-57 are
indefinite.
3 Our decision in this regard is based solely on the indefiniteness of the
claimed subject matter, and does not reflect on the adequacy of the prior art
evidence applied in support of the rejection.
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Appeal2018-004839
Application 13/616,036
FINALITY OF DECISION
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 4I.50(b). 37 C.F.R. § 4I.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 4I.50(b) also provides that the Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. ...
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record ....
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).
REVERSED; 37 C.F.R. § 4I.50(b)
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