Ex Parte Varga et al

Patent Trial and Appeal BoardMar 11, 2019

13105782 (P.T.A.B. Mar. 11, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/105,782 05/11/2011 144137 7590 03/13/2019 Morgan, Lewis & Bockius LLP (OC)(Vyaire) 600 Anton Boulevard Suite 1800 Costa Mesa, CA 92626-7653 FIRST NAMED INVENTOR Christopher M. Varga 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. 101675-0190 3943 EXAMINER BLOCH, MICHAEL RYAN ART UNIT PAPER NUMBER 3791 NOTIFICATION DATE DELIVERY MODE 03/13/2019 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): ocipdocketing@morganlewis.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHRISTOPHER M. VARGA and STEPHEN J. BIRCH Appeal2018-004133 Application 13/105,782 1 Technology Center 3700 Before MICHAEL C. ASTORINO, PHILIP J. HOFFMANN, and KENNETH G. SCHOPPER, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. Â§ 134(a), Appellants appeal from the Examiner's rejection of claims 1-10, 21, and 22. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. According to Appellants, their invention is directed to a "carbon- dioxide sampling device for non-invasively measuring carbon dioxide in 1 Appellants identify "CareFusion 207, Inc." as the real party in interest. Appeal Br. 3. Appeal2018-004133 Application 13/105,782 exhaled breath." Specification, Abstract. Claim 1 is the only independent claim on appeal. Below, we reproduce the independent claim as representative of the appealed claims. 1. A carbon-dioxide sampling device for non- invasively measuring carbon dioxide in exhaled breath, said device comprising: a breath-sampling chamber comprising a frame and an interchangeable patient interface piece, the breath-sampling chamber configured to be disposed over a nose and mouth of a patient, and configured to seal with said patient's face preventing leakage of respiratory gases from said breath-sampling chamber; an inhalation gas supply line coupled directly to the frame and configured to transport oxygen gas to the patient; an exhalation gas collection line coupled directly to the frame and configured to remove exhaled gases in the exhaled breath from the breath-sampling chamber; and a carbon-dioxide collector comprising a concave breath scoop disposed within said breath-sampling chamber and coupled on an interior side of said interchangeable patient interface piece such that said concave breath scoop is fluid dynamically isolated from flow of said respiratory gases; wherein said concave breath scoop includes an upper portion and a lower portion, shorter than the upper portion, that collectively form an open concave surface that faces said nose and mouth of said patient when in use, and a breath scoop channel disposed between and extending through the concave surface to a breath sampling port in the interchangeable patient interface piece, and wherein said concave breath scoop is configured to be disposed in proximity to, and outside of, said nose and mouth of said patient, and to collect a sample of said exhaled breath from said patient. REJECTIONS AND PRIOR ART The Examiner rejects the claims as follows: 2 Appeal2018-004133 Application 13/105,782 I. Claims 1-3, 7, 21, and 22 under 35 U.S.C. Â§ I03(a) as unpatentable over Scarberry et al. (US 7,568,483 B2, issued Aug. 4, 2009) (hereinafter "Scarberry") and Malmin (US 3,747,599, issued July 24, 1973); II. Claims 4 and 5 under 35 U.S.C. Â§ I03(a) as unpatentable over Scarberry, Malmin, and Evans (US 5,474,060, issued Dec. 12, 1995); III. Claim 6 under 35 U.S.C. Â§ I03(a) as unpatentable over Scarberry, Malmin, Belfer et al. (US 5,918,598, issued July 6, 1999) (hereinafter "Belfer"), and Curti et al. (US 2005/0284484 Al, published Dec. 29, 2005) (hereinafter "Curti"); and IV. Claims 8-10 under 35 U.S.C. Â§ I03(a) as unpatentable over Scarberry, Malmin, and Hickerson (US 2008/0039735 Al, published Feb. 14, 2008). ANALYSIS Reiection I As set forth above, independent claim 1 recites, in relevant part, a "concave breath scoop includ[ing] ... a lower portion ... shorter than [an] upper portion." Appeal Br., Claims App. In support of the rejection, the Examiner finds that although Scarberry's conical structure 322 discloses the claimed breath scoop (Answer 4), [t]he combination [of Scarberry and Malmin] does not directly teach that the breath scoop lower portion is shorter than the upper portion. However, it would have been an obvious matter of choice to make the different portions of the breath scoop of whatever 3 Appeal2018-004133 Application 13/105,782 form or shape or relative sizes desired or expedient (Final Action 5). Based on our review of the record, including Appellants' Appeal Brief and Reply Brief, and the Examiner's Final Office Action and Answer, we agree with the Examiner. Appellants argue that the Examiner errs because Appellants' application "provid[es] clear evidence [that] the relative dimensions of the scoop [are] significant." Appeal Br. 12; see also id. 11-14. We disagree with Appellants, however. Although it is correct that "the instant application ... calls out the design and positioning of the breath scoop as being significant," it is not clear that any portion of the Specification or any figure establishes that the relative lengths of the upper and lower breath scoop portions are significant. Id. at 12 (internal quotation marks omitted). Further, we agree with Appellants that the instant application ... includes a description of the design of the breath scoop having upper portion 502-1 and lower portion 502-2, . . . shows the upper portion 502-1 and lower portion 502-2 in F[igure] 13 with the lower portion being shorter than the upper portion, [and] ... shows the relative positioning of the upper and lower portions with respect to the patient's nose and mouth ( with arrows indicating the flow of exhaled breath with respect to the upper and lower portions) Id. (internal quotation marks omitted). Such facts do not establish sufficiently that the claimed relative lengths are significant, however. Still further, even if Appellants' Specification, including paragraphs 67 and 136, "specifically describes the significance of the upper and lower portions and their positioning relative to the patient's nose and mouth," Appellants' description does not establish sufficiently that the scoop portion's relative lengths are significant. Id. (internal quotation marks omitted). 4 Appeal2018-004133 Application 13/105,782 Appellants argue that the Examiner errs because, unlike the situation in Gardner v. TEC Syst., Inc., 725 F.2d 1338 (Fed. Cir. 1984), Appellants' "device having the claimed relative dimensions would indeed perform differently than that shown by the Examiner in the prior art." Appeal Br. 13. As discussed above, however, Appellants do not persuade us that the claimed device would perform differently than a device where the breath scoop includes a lower portion equal to in length, such as in Scarberry' s element 322, or longer than an upper portion. Further, Appellants do not demonstrate that the claimed breath scoop "performs functions differently than taught by the prior art and performs functions that are not taught or contemplated by" a combination of the prior art, as a result of the claimed relative sizes of the upper and lower portions of the breath scoop. Id. Based on the foregoing, Appellants do not persuade us that the claimed relative lengths are critical. Therefore, we sustain the Examiner's obviousness rejection of claim 1, and the rejection of claims 2-7, 21, and 22 that depend from, and which the Examiner rejects with, claim 1. Re;ections II-IV Appellants argue that the Examiner erroneously rejects dependent claims 4---6 and 8-10, because no reference remedies the argued-deficiency in independent claim 1 's rejection. Appeal Br. 14--16. Inasmuch as there is no deficiency in claim 1 's rejection, we sustain the Examiner's obviousness rejections of these dependent claims. 5 Appeal2018-004133 Application 13/105,782 DECISION We AFFIRM the Examiner's rejections of claims 1-10, 21, and 22. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C. F. R. Â§ 1.136(a). AFFIRMED 6