Ex Parte ThorntonDownload PDFPatent Trial and Appeal BoardSep 12, 201814524432 (P.T.A.B. Sep. 12, 2018) Copy Citation 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; 2 Appeal2018-002572 Application 14/524,432 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. 3 Appeal2018-002572 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. 4 Appeal2018-002572 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 5 Appeal2018-002572 Application 14/524,432 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 6 Appeal2018-002572 Application 14/524,432 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. 7 Appeal2018-002572 Application 14/524,432 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). 8 Appeal2018-002572 Application 14/524,432 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 9 Appeal2018-002572 Application 14/524,432 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, 10 Appeal2018-002572 Application 14/524,432 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 11 Copy with citationCopy as parenthetical citation