Ex Parte Thornton

Patent Trial and Appeal Board

Sep 12, 2018

14524432 (P.T.A.B. Sep. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/524,432 10/27/2014
5073 7590
BAKER BOTTS L.L.P.
2001 ROSS A VENUE
SUITE 900
DALLAS, TX 75201-2980
09/14/2018
FIRST NAMED INVENTOR
W. Keith Thornton
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.
080601.0356 1011
EXAMINER
LOPEZ ALVAREZ, OLVIN
ART UNIT PAPER NUMBER
2125
NOTIFICATION DATE DELIVERY MODE
09/14/2018 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):
ptomaill@bakerbotts.com
ptomail2@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte W. KEITH THORNTON
Appeal2018-002572
Application 14/524,432
Technology Center 2100
Before JOHN A. JEFFERY, BRUCE R. WINSOR, and
JUSTIN BUSCH, Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner's decision to reject claims 21-24 and 30-34, which constitute all
the claims pending in this application. We have jurisdiction under 35 U.S.C.
§ 6(b ). Claims 1-20 and 25-29 were cancelled.
We affirm.
1 Appellant identifies the real party in interest as Airway Technologies, LLC.
App. Br. 2.
Appeal2018-002572
Application 14/524,432
CLAIMED SUBJECT MATTER
Appellant's "invention relates ... to a system and method for forming
a custom medical mask from a three-dimensional electronic model."
Spec. 1 :6-8. Appellant's Figure 9 is illustrative and is reproduced below:
64
F7G. 9
Figure 9 illustrates an example custom medical mask 18
with receptacle 68 for a coupling device 80.
According to the Specification, "[a] s shown, custom medical mask 18
may include body 60, one or more openings 62, and/or one or more tabs 64."
Spec. 11:25-26; see also id. at 15:3-5 ("As shown, in addition to the
features described above in relation to FIGURES 5 and 7, custom medical
mask 18 may include receptacle 68 configured to receive coupling device
80. "). Claim 21 is representative and reproduced below:
21. A method for use in forming a custom medical mask for a
particular user, the method comprising:
scanning at least a portion of a particular user's face using
an electronic scanning device;
generating a three-dimensional electronic model of the
portion of the particular user's face based on the scanning;
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processing the three-dimensional electronic model of the
portion of the particular user's face to form an electronic model
of a custom medical mask, the processing comprising:
merging the three-dimensional electronic model of
the portion of the particular user's face with an electronic
fitting model representing a fitting shaped to couple to a
clinical gas delivery system; and
merging the three-dimensional electronic model of
the portion of the particular user's face with an electronic
model of a receptacle for a coupling device shaped to
couple the custom medical mask to an oral appliance; and
transmitting the electronic model of the custom medical
mask for use in forming a custom medical mask for the particular
user with a rapid prototyping technique.
REJECTIONS
Claims 21-24 and 30-34 stand rejected on the ground of non-statutory
obviousness-type double patenting over claims 1-17 of US Patent No.
8,874,251. Final Act. 6-7.
Claims 21, 23, 24, 30, and 32-34 stand rejected under 35 U.S.C.
§ I03(a) as being unpatentable over Rogers (US 2004/0263863 Al; Dec. 30,
2004), Geng (US 2006/0023228 Al; Feb. 2, 2006), Bruce H. Bitterman,
Application of Finite Element Modeling and Analysis to the Design of
Positive Pressure Oxygen Masks (Dec. 1991) (published dissertation, Air
Force Institute of Technology), and Thornton (US 6,571,798 Bl; June 3,
2003). Final Act. 7-32.
Claims 22 and 31 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Rogers, Geng, Bitterman, Thornton, and Su Jin Kim &
Min Yang Yang, Offset of STL Model Generated from Solid Model, 22 J. OF
THE KOREAN Soc'y OF PRECISION ENG'G 202-11 (Sept. 2005) ("Kim 2005").
Final Act. 32-34.
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Application 14/524,432
ANALYSIS
THE DOUBLE PATENTING REJECTION
Appellant does not contest the Examiner's rejection of claims 21-24
and 30-34 under non-statutory obviousness-type double patenting. See
generally App. Br. 11-13; Reply Br. 2-5. We, therefore, summarily sustain
this rejection. See MANUAL OF PATENT EXAMINING PROCEDURE (MPEP)
§ 1205.02 (9th ed. Rev. 08.2017, Jan. 2018).
THE OBVIOUSNESS REJECTIONS
Claims 21, 23, 24, 30, 33, and 34
On this record, we see no error in the Examiner's obviousness
rejection of independent claim 21. In the rejection, the Examiner finds that
Rogers discloses many recited elements of claim 21 including, among other
things, generating a three-dimensional electronic model of a portion of a
particular user's face. Final Act. 8 (citing Rogers ,r,r 13-14; Fig. 4). The
Examiner also finds that Rogers teaches "processing the three-dimensional
electronic model of the portion of the particular user's face to form an
electronic model of a custom medical mask," as recited in claim 21
(hereinafter "the disputed limitation"). Id. (citing Rogers ,r,r 13, 79-82);
Ans. 4. According to the Examiner, Rogers discloses an electronic model of
a custom medical mask because "[ o ]ne [ ofJ skill in the art will understand
that in order to manufacture a mask using one [ of] computer numerical
controlled (CNC) milling systems, stereo lithography systems, laser
sintering systems, ... an electronic model is used." Ans. 3 ( citing Rogers
,r 81 ). Thus, at the outset, we find unavailing Appellant's unfounded
assertion that the Examiner relies on paragraph 39 of Geng, not Rogers, to
teach the disputed limitation. App. Br. 12.
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Application 14/524,432
In response to the Examiner's explanation on page 3 of the Answer,
Appellant argues Rogers does not disclose forming an electronic model of a
mask because Rogers' only electronic model is an electronic model of the
user's/ace. Reply Br. 2-3 (citing Rogers ,r,r 80-82).
We see no error in the Examiner's reliance on Rogers at least suggests
the disputed limitation. Rogers is generally directed to forming face masks.
Rogers, Abstract. Rogers' face masks may be designed at a bum care
facility by a clinician. Id. ,r 15. Rogers' scanning device acquires a user's
facial topography information. Id. ,r,r 13, 32, 37; Fig. 3. Rogers' facial
topography data is used to form a computerized model of a client's face. Id.
,r 80. Rogers' software application allows a user to make modifications to
the computerized model, including trimming, filling voids, smoothing, and
reshaping the computerized model. Id. Thus, by making modifications to an
original computerized model of a user's face, Rogers at least suggests
processing the original computerized model of a user's face (the claimed
"three-dimensional electronic model") to form a modified computerized
model (the claimed "electronic model of a custom medical mask").
"When the computerized model is complete, the software application
may send control information to a computerized manufacturing device to
form a solid model of the client's face. A computerized manufacturing
device may be configured to form a solid model substantially corresponding
to the computer model." Id. ,r 81. Rogers' modified computerized model of
the user's face is used to create a solid model of a modified version of the
user's face that, in tum, is used to create a mask. Id. ,r 81, Fig. 5. Thus,
Rogers' modified computerized model of a user's face is an "electronic
model of a custom medical mask" because the electronic model is
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transmitted (to a computerized manufacturing device) "for use in forming a
custom medical mask for the particular user."
We disagree with Appellant that "Rogers does not process an
electronic model of a user's face to form an electronic model of a mask" or
that Rogers' disclosures of the same are "erroneous" or "inconsistent" with
the rest of Rogers. Reply Br. 2-3. Rogers is clearly directed to using
computers to create a mask design. See, e.g., Rogers, Abstract ("System
software may be configured to ... design a mask based on the topography
information, and send mask information to a computerized manufacturing
device," emphases added), ,r 13 ("The gathered facial topography
information may be used in a CAD/CAM system to design a face mask. A
face mask design may be exported to a computerized manufacturing device
to manufacture a positive model of the client's face.") (emphases added)).
This is further evident when reviewing Rogers' background to
understand the conventional process Rogers intends to replace. Specifically,
Rogers explains the conventional process involved making a cast of a
patient's face, making a plaster pattern (i.e., model) from the cast, and
molding the mask over the pattern. Rogers ,r 9. Of particular relevance,
Rogers explains that the plaster pattern of the patient's face may be modified
by adding to, removing from, or smoothing the pattern, the end result being
a pattern (i.e., model) used to create the mask. Id. ,r,r 11-12. Rogers
replaces the physical cast of a patient's face and the physical sculpting of the
pattern or model with software. Id. ,r,r 13, 26 ("[M]any steps in the design of
a [transparent facial mask] may be performed on a computer system using a
CAD/CAM software application."), 78 (explaining that obtaining facial
topography using a scanning device instead ( as opposed to physically
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creating a cast) is faster, "painless[,] and non-anxiety provoking"), 80
(explaining how the computerized model of the patient's face can be
modified, similarly to reshaping the plastic pattern but using software, to
generate an electronic model of the mask).
As discussed above, Rogers then sends the electronic model of the
mask (i.e., the modified model of the patient's face) to a computerized
manufacturing system, which can form a solid model using the electronic
model of the mask (i.e., the modified electronic model of the patient's face).
Rogers ,r 81. Rogers then creates a customized mask using the solid model
of the mask (i.e., the modified model of the patient's face). Id. ,r,r 13 ("A
face mask may be molded using the model of the client's face."), 81-84.
Notably, claim 21 does not preclude intermediate steps between
"transmitting the electronic model of the custom medical mask" and forming
the custom medical mask for the particular user with a rapid prototyping
technique. 2
Although the Examiner acknowledges that Rogers' processing does
not include merging the three-dimensional electronic model with an
electronic fitting model representing a fitting shaped to couple to a clinical
gas delivery system, the Examiner cites Geng for teaching this feature. Final
Act. 9 (citing Geng ,r,r 11, 37-39, 72, 88; Figs. 2B, 12; claims 17-20).
Appellant argues "the Examiner does not explain how the system in Rogers
can be combined with this teaching in Geng." App. Br. 12. According to
Appellant, "one of skill would not be motivated to modify the system in
2 We further note claim 21 does not positively recite forming the mask;
claim 21 's last step is transmitting the electronic model for use in forming
the mask.
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Rogers to design a mask as described in Geng because the resulting mask
would not apply sufficient pressure to a bum victim's face to encourage
healing," thereby rendering Rogers' process unsatisfactory for its intended
purpose. Reply Br. 4 (citing Rogers ,r,r 4--12; Geng ,r 39).
We are unpersuaded of Examiner error. Appellant's argument is not
germane to the reason why Geng was cited, namely merging a three-
dimensional electronic model with an electronic fitting model representing a
fitting shaped to couple to a clinical gas delivery system. Nor has Appellant
shown, apart from mere attorney argument, that combining Rogers and Geng
would somehow render Rogers' process unsatisfactory for its intended
purpose. It is well settled that mere lawyer argument and conclusory
statements, which are unsupported by factual evidence, are entitled to little
probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997).
The Examiner concludes that it would have been obvious to a person
of ordinary skill in the art, at the time the invention was made, to combine
Rogers and Geng "to construct or design a custom fit medical mask and its
fitting configured to attach to a clinical gas delivery system for conducting a
gas like treatment medicine to a patient." Final Act. 10 ( citing Geng
Abstract; ,r,r 11, 37-38; Figs. 2B, 12). The Examiner provides the additional
rationale that the combined system would be faster because "merging
models reduces the time of designing the mask since the fittings are already
designed models." Ans. 5. We find the Examiner has articulated reasoning
with rational underpinnings sufficient to justify the legal conclusion of
obviousness, which is not persuasively rebutted by Appellant's
unsubstantiated contentions. See KSR Int'! Co. v. Teleflex Inc., 550 U.S.
398, 416 (2007).
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Thus, the arguments presented by Appellant do not persuade us of
error in the rejection of claim 21. See Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential). Accordingly, we sustain the rejections of
(1) independent claim 21; independent claims 24, 30, 33, and 34, which are
argued relying on the arguments made for claim 21, see App. Br. 11-13; and
(3) claims 23 and 32, which depend directly, and respectively, from claims
21 and 30, and were not separately argued with particularity, see id.
Claims 22 and 31
We sustain the Examiner's obviousness rejection of claim 22 (Final
Act. 32-34), which recites the three-dimensional electronic model further
comprises extruding a surface of the three-dimensional electronic model in a
direction normal to the surface a distance between 0.05 and 0.20 inches.
That is, claim 22 recites ( 1) extruding the three-dimensional electronic
model's surface in a direction normal to the surface a distance ("the
extruding element"), and (2) the distance between 0.05 and 0.20 inches ("the
distance element").
We begin by noting that the Examiner cites (1) Kim 2005 alone or,
alternatively, (2) the combination of Rogers, Geng, and Bitterman for
teaching or suggesting the extruding element. Compare Final Act. 33-34
(finding Kim 2005 explicitly teaches the extruding element) and Ans. 5---6
(same articulated findings as the Final Action), with Final Act. 32-33
( articulating that the combination of Rogers, Geng, and Bitterman implicitly
teaches extruding a surface and Rogers teaches a mask with the recited
thickness) and Ans. 7-8 (finding, "[i]n the alternative, the combination of
Rogers, Geng and Bitterman" teaches the extruding element) (emphasis
omitted). We emphasize the Examiner's alternative reliance on these two
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separate citations because Kim 2005 's teachings are cumulative to those of
Rogers, Geng, and Bitterman with respect to the extruding element. See
MPEP § 1207.03(a)(II) (Item 3 dealing with relying on fewer than all
references in support of an obviousness rejection).
We agree with Appellant that the Examiner's reliance on Kim 2005-
a foreign document written in a non-English language ( other than the
Abstract}--is problematic. App. Br. 12-13; Reply Br. 4--5. Rather than
relying on a copy of Kim 2005, the Examiner relies on a copy of Kim, Offset
Triangular Mesh Using the Multiple Normal Vectors of a Vertex, 285-91
(2004) ("Kim 2004"). See present Appl'n 14/524,432, PT0-892 mailed
March 3, 2016. The Examiner admits that no English translation of Kim
2005 was provided, but nevertheless finds Kim 2004 "is a reasonable
translation of the prior art relied upon. If the Appellant believes that another
translation exists, wherein the underling text teaches away from the Kim
abstract or differentiates the claimed subject matter from the teachings of
Kim's abstract, then, the Examiner will consider such evidence." Ans. 6.
The Examiner's position is contrary to United States Patent and
Trademark Office (USPTO) policy. "Citation of an abstract without citation
and reliance on the underlying scientific document itself is generally
inappropriate where both the abstract and the underlying document are prior
art. Abstracts often are not written by the author of the underlying document
and may be erroneous." Ex parte Jones, 62 USPQ2d 1206, 1208 (BPAI
2001) (unpublished); see also MPEP § 706.02 (citing Jones).
Despite Kim 2005 being problematic, Appellant does not dispute, nor
do we see error in, the Examiner's reliance on the combination of Rogers,
Geng, and Bitterman as teaching or suggesting the extruding element. Thus,
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Appellant does not persuade us of error in the Examiner's finding that the
combination of Rogers, Geng, and Bitterman at least suggests the extruding
element. Moreover, Appellant does not dispute, nor do we see error in, the
Examiner's conclusion that the distance element of claim 22 is an obvious
matter of design choice. Thus, Appellant's arguments do not persuade us of
error in the rejection of claim 22. Accordingly, we sustain the rejection of
claim 22 and the rejection of claim 31, which was rejected on substantially
the same bases as claim 22. See Final Act. 34.
DECISION
For the above reasons, the Examiner's decision to reject claims 21-24
and 30-34 is affirmed.
We summarily sustain the double patenting rejection.
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.
§ 41.50(±).
AFFIRMED
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