Ex Parte MADAUS et al

Patent Trials and Appeals Board

Jan 9, 2019

14561896 - (D) (P.T.A.B. Jan. 9, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/561,896 12/05/2014
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-4750-155 3224
EXAMINER
NELSON, KERI JESSICA
ART UNIT PAPER NUMBER
3786
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 WOLFGANG VOGELE
Appeal2017-004790
Application 14/561,896
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 final
rejection of claims 17--46. 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.
Appeal2017-004790
Application 14/561,896
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.
1 7. A headband device configured to hold a
respiratory mask against a face of a patient during
treatment with pressurized respiratory gas, the
device comprising:
a strap portion including a multi-layered
construction including an inner cover layer, an
outer cover layer, and foam padding,
the inner cover layer having a face contacting
surface configured to comfortably contact a
patient's skin in an application position of the
headband device,
the outer cover layer being configured to be
oriented opposite the inner cover layer and
outwardly from the patient's skin in the application
position of the headband device;
wherein the inner cover layer and the outer
cover layer are coupled to one another via
connection points configured to secure at least the
inner cover layer and the outer cover layer of the
strap portion together, the connection points being
laterally spaced from one another when viewed in
cross-section, each said connection point being
arranged and positioned to be spaced away from
the patient's skin in the application position of the
headband device; and
wherein the strap portion is configured to
reduce or eliminate marks left on cheeks of the
face of the patient during treatment due to a force
required to sealingly hold the respiratory mask
against the patient while the headband device is in
the application position.
2
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Application 14/561,896
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Payton
Ackerman
Sullivan
Marshall
Stafford
Starr
Nebeker
Landis
us 4,593,688
us 4,774,946
us 4,856,116
us 5,331,686
us 5,395,400
us 5,517,986
us 5,566,395
us 5,687,715
June 10, 1986
Oct. 4, 1988
Aug. 15, 1989
July 26, 1994
Mar. 7, 1995
May 21, 1996
Oct. 22, 1996
Nov. 18, 1997
The following rejections are before us for review: 2
1. Claims 17-20 and 22 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Sullivan and Nebeker.
2. Claim 21 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sullivan, Nebeker, and Stafford.
3. Claim 23 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sullivan, Nebeker, and Marshall.
4. Claim 24 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sullivan, Nebeker, and Ackerman.
5. Claim 25 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sullivan, Nebeker, Stafford, Marshall, and Ackerman.
6. Claim 26 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sullivan, Nebeker, and Starr.
7. Claims 27-36 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sullivan, Nebeker, Payton, Marshall, and Ackerman.
2 Various rejections of claims 17--46 under 35 U.S.C. § 112, second
paragraph, have been withdrawn by the Examiner. Final Action 2--4,
Ans. 18-19.
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Application 14/561,896
8. Claim 37 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sullivan, Nebeker, Payton, Marshall, Ackerman, and
Landis.
9. Claims 38--41 and 43--45 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Sullivan and Starr.
10. Claim 42 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sullivan, Starr, and Payton.
11. Claim 46 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Sullivan, Starr, and Nebeker.
CONTINUATION HISTORY
The instant case is a continuation of US Application No. 13/616,0363,
filed September 14, 2012, which, in tum, 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.
Limitations directed to reducing marks on the "face" were first added
by amendment on May 27, 2015. See Amendment dated May 27, 2015.
Claim 17 was subsequently amended to specify "cheeks" of the face on
August 5, 2015. See Amendment dated Aug. 5, 2015.
3 Application No. 13/616,036 is also presently before us as Appeal
No. 2018-004839.
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Application 14/561,896
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
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 Zietz, 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
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Application 14/561,896
definite meaning can be ascribed to certain claim terms, the subject matter
becomes indefinite, not obvious. In re Wilson, 424 F.2d 1382, 1385 (CCPA
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 35
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.
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Indefiniteness of Claims 17, 27, and 38
Claims 17, 27, and 38 are independent claims. Claims App. Each
independent claim contains a substantially similar limitation directed to a
strap portion that is configured to "reduce ... marks" on the face. Id.
Throughout their briefs, Appellants argue repeatedly that limitations directed
to reducing marks on the face relate to the problem to be solved by their
invention and distinguish their invention from the prior art. See Appeal
Br. 9, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, and21; Reply Br. 3, 4, 7, 8, 9,
10, 11, 12, 13, and 14.
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.
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.
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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. In context, Appellants admit that both the prior art and the instant
invention apply a "mask press-on force" to 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, 27, and 38 are unpatentable as indefinite under 35 U.S.C.
§ 112, second paragraph.
Indefiniteness of Claims 18-26, 28-37, and 39-46
These claims depend from one of independent claims 1 7, 2 7, or 3 8.
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 18-26, 28-37,
and 39--46 are unpatentable as indefinite under 35 U.S.C. § 112, second
paragraph.
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Application 14/561,896
Unpatentability of Claims 17-46
The Examiner rejected claims 17--46 under 35 U.S.C. § 103 as
patentable over Sullivan in combination with one or more references. Final
Action 4--20. Because we have concluded that claims 17--46 are indefinite,
the prior art rejections of claims 17--46 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). 4
DECISION
The decision of the Examiner to reject claims 17--46 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 1 7--46 are indefinite.
FINALITY OF DECISION
This decision contains a new ground 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
4 It should be understood, however, that 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
rejections.
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Application 14/561,896
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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