Ex Parte Veliss et al

Patent Trial and Appeal BoardApr 27, 2018

12735977 (P.T.A.B. Apr. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/735,977 08/27/2010 23117 7590 05/01/2018 NIXON & V ANDERHYE, PC 901 NORTH GLEBE ROAD, 11 TH FLOOR ARLINGTON, VA 22203 FIRST NAMED INVENTOR Lee James Veliss 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-4398-1077 2828 EXAMINER HEFFNER, NED T ART UNIT PAPER NUMBER 3778 NOTIFICATION DATE DELIVERY MODE 05/01/2018 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): 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 LEE JAMES VELISS, ALICIA KRISTIANNE WELLS, FIONA CATHERINE CARROLL, GERARD MICHAEL RUMMERY, and DAVID ANTHONY PIDCOCK Appeal2017-005194 Application 12/735,977 Technology Center 3700 Before EDWARD A. BROWN, BRANDON J. WARNER, and ARTHUR M. PESLAK, Administrative Patent Judges. PESLAK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Lee James Veliss et al. ("Appellants") 1 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision rejecting claims 1--4 and 6-39. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We AFFIRM. 1 ResMed Limited is identified as the real party in interest. Appeal Br. 3. Appeal2017-005194 Application 12/735,977 THE CLAIMED SUBJECT MATTER Appellants' "invention relates to a respiratory mask with a foam contacting portion." Spec. ,r 2. Claim 1, reproduced below with italics added, is illustrative of the claimed subject matter. 1. A patient interface for delivering breathable gas to a patient, the patient interface comprising: a foam interfacing portion formed of foam and adapted to provide a nasal interface, wherein the foam is configured and positioned to directly contact under and around the patient's nose in use, and the foam interfacing portion including an orifice adapted to surround both the patient's nares in use; and a positioning and stabilizing structure to support the foam interfacing portion in an operative position on the patient's face, the positioning and stabilizing structure including a frame, wherein the positioning and stabilizing structure resists the application of tube drag and/or headgear tension to the foam interfacing portion, wherein the foam interfacing portion is removably connected to the positioning and stabilizing structure, the foam interfacing portion being wrapped around at least a portion of the positioning and stabilizing structure and secured in its wrapped position by one or more connectors, and wherein at least one of the one or more connectors is disposed on a surface of an underside of the foam interfacing portion. REJECTIONS 1) Claims 1--4, 6-8, 10, 13-15, and 20-39 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Correa (US 6,119,694, issued Sept. 19, 2000) and Goldstein (US 6,012,455, issued Jan. 11, 2000). 2 Appeal2017-005194 Application 12/735,977 2) Claim 9 is rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Correa, Goldstein, and Gelinas (US 6,817,362 B2, issued Nov. 16, 2004). 3) Claim 11 is rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Correa, Goldstein, and Gunaratnam (US 6,412,487 Bl, issued July 2, 2002). 4) Claim 12 is rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Correa, Goldstein, and McCall (US 5,921,239, issued July 13, 1999). 5) Claims 15-17 are rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Correa, Goldstein, and Sansoni (US 5,526,806, issued June 18, 1996). 6) Claim 18 is rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Correa, Goldstein, and Jones (US 2006/0201514 Al, issued Sept. 14, 2006). 7) Claim 19 is rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Correa, Goldstein, and Beevers (US 7,331,348 Bl, issued Feb. 19, 2008). 8) Claims 1--4, 6-8, 10, 13-15, and 20-39 are rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Correa, Kopacko (US 6,467,483 Bl, issued Oct. 22, 2002), and Goldstein. 2 9) Claim 9 is rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Correa, Kopacko, Goldstein, and Gelinas. 2 The caption of this rejection also includes claim 5. Final Act. 20. However, claim 5 is cancelled. Appeal Br. 15 (Claims App.). 3 Appeal2017-005194 Application 12/735,977 10) Claim 11 is rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Correa, Kopacko, Goldstein, and Gunaratnam. 11) Claim 12 is rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Correa, Kopacko, Goldstein, and McCall. 12) Claims 15-17 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Correa, Kopacko, Goldstein, and Sansoni 13) Claim 18 is rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Correa, Kopacko, Goldstein, and Jones. 14) Claim 19 is rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Correa, Kopacko, Goldstein, and Beevers. DISCUSSION Rejection 1 The Examiner finds that Correa discloses all the limitations of claim 1, except for the recited "foam interfacing portion" being "formed of foam." Final Act. 7-8. Among the Examiner's specific findings is that Correa discloses: At least one of said connectors ( said screws) being disposed to transfix the interfacing portion of Correa, are disposed at least partially on a surface (that directly facing 17 including the surfaces of said interfacing portion directly facing the bosses depicted in Figure 4) of an underside (that below portions 92, 94 & 95 and in contact with support 17, as partially shown in Figure 5A) of the interfacing portion (by way of having a portion of said screws extending there-from). Further, as depicted one of ordinary skill in the art would reasonably expect said bosses to be a further population of said connectors disposed on said surface of an underside of the interfacing 4 Appeal2017-005194 Application 12/735,977 portion by way of being situated adjacent said underside when the interface of Correa is assembled. Id. at 8. The Examiner finds that Goldstein discloses "a foam interfacing portion formed of foam." Id. The Examiner concludes that it would have been obvious to one of ordinary skill in the art to substitute Goldstein's foam interfacing portion for Correa' s interfacing portion "for the purpose ... of having an interfacing portion that readily seals around the nostrils." Id. Appellants contend that Correa's screws "simply pass through a hole formed in a surface of the underside ... the screws never contact the surface on the underside of the nare seal and therefore clearly cannot be said to be disposed on said surface of the nare seal." Appeal Br. 9. Appellants also contend that if Correa' s bosses, which receive the screws, are considered part of the connectors, the bosses "are not disposed on a surface of an underside of the nare seal, but are instead received in holes formed in a bottom surface of the nare seal." Id. at 10. The Examiner responds "that by way of being transfixed through the material of the nare seal and extending from the underside thereof, the screws of Correa are disposed on a surface of the underside as required by the claims" and "the condition of being received in holes formed in the bottom surface of [] nare seal is not contradictory to being disposed on a surface of the underside of the nare seal." Ans. 2, 4--5. With respect to Correa' s bosses, the Examiner states that "the disposition of the bosses adjacent the underside would be understood by one of ordinary skill in the art to be one wherein the bosses are connected to the underside and adjacent thus disposed on the underside of the seal." Id. at 4. 5 Appeal2017-005194 Application 12/735,977 Correa discloses "a nasal mask for providing pressurized gas to a patient and more particularly to a nasal mask which only encloses the nares of a patient." Correa 1 : 6-8. Correa discloses a nare seal 14 with a top surface 56 and seal bottom 64. Id. 3:66-4:2, 15. Correa's Figure 4 is an exploded view of Correa's nasal mask. Id. 2:23-24, Fig. 4. One of ordinary skill in the art could determine from Figure 4 that screws [ not identified by number] pass through the nare seal 14 from the top surface and eventually mate with the upstanding bosses [ not identified by number] of support arm 16. However, given the fact that the screws are shown to be inserted from the top surface of nare seal 14 into corresponding through holes, one of ordinary skill in the art could not reasonably determine that the screws are "disposed on a surface of an underside of the foam interfacing portion," as claim 1 requires. In addition, it is not clear from Figure 4 or any of the other figures in Correa if nare seal 14 rests on top of the bosses or if the bosses engage the bottom of the through holes when assembled. One of ordinary skill in the art would be unable to reasonably determine if the bosses are "disposed on a surface of an underside of the foam interfacing portion." Consequently, the Examiner's finding that Correa discloses one or more connectors "disposed on an underside of the foam interfacing portion" is not supported by a preponderance of the evidence. We, therefore, do not sustain the rejection of claim 1 as unpatentable over Correa and Goldstein. Independent claim 26 contains the same limitation as claim 1. Appeal Br. 18 (Claims App.). In the rejection of claim 26, the Examiner relies on substantially the same findings with respect to Correa as for claim 1. Final Act. 11-12. We do not sustain the rejection of claim 26 for the same reasons as discussed above for claim 1. Claims 2--4, 6-8, 10, 13-15, 20-25, and 38 6 Appeal2017-005194 Application 12/735,977 depend from claim 1, and claims 27-37 and 39 depend from claim 26. We do not sustain the rejection of these dependent claims for the same reasons as discussed above in connection with claims 1 and 26. Rejections 2-7 Claims 9, 11, 12, and 15-19 depend directly or indirectly from claim 1. Appeal Br. 1-17 (Claims App.). The Examiner rejects these claims based on the combination of Correa and Goldstein with additional disclosure from Gelinas, Gunaratnam, McCall, Sansoni, Jones, or Beevers. Final Act. 15- 19. The Examiner does not rely on the additional disclosure from Gelinas, Gunaratnam, McCall, Sansoni, Jones, or Beevers to cure the deficiencies in the rejection of claim 1 discussed above. We do not sustain the rejections of claims 9, 11, 12, and 15-19 for the same reasons discussed above in connection with claim 1. Rejection 8 Appellants argue claims 1--4, 6-8, 10, 13-15, 20, 21, 23, 25-35, and 37 as a group. Appeal Br. 8-12. We select claim 1 as representative, and claims 2--4, 6-8, 10, 13-15, 20, 21, 25-35, and 37 stand or fall with claim 1. 37 C.F.R. Â§ 4I.37(c)(l)(iv). We address claims 24, 36, 38 and 39 separately. The Examiner makes findings, based on Correa and Goldstein that are substantially the same as discussed above in connection with Rejection 1. Final Act. 20-21. The Examiner additionally finds that Kopacko teaches an interfacing portion (Figures 9A and 9B, the assembly of cushion 602 and plate 610, as per Column 10, lines 9-25) wherein connectors (protrusions 608) are disposed on a surface ( that of 610 such as would face away from the patient when in use, the left as depicted) of an underside (that of the assembly of 602 and 610 such as would face away from the patient when in use) of the interfacing portion, the connectors 7 Appeal2017-005194 Application 12/735,977 being disposed to be received in corresponding slots ( 606) of a stabilizing structure and frame. Id. at 21. The Examiner concludes that it would have been obvious to one of ordinary skill in the art "to substitute the protrusions and slots of Kopacko for the screws and bosses of Correa in the interfaces of Correa as a means of removably fixing an interfacing portion to a stabilizing structure and frame. Doing so would result in said interface of Correa wherein at least one of the connectors is disposed on a surface of an underside of the interfacing portion." Id. Appellants contend that replacing Correa's screws with the protrusions of Kopacko does not meet the "features recited in the claims." Appeal Br. 11. Appellants do not dispute the Examiner's finding that Goldstein discloses "a foam interfacing portion formed of foam," or the Examiner's reasoning for combining the teachings of Goldstein with Correa. Compare Final Act. 21-22 and Appeal Br. 8-12. Appellants argue that "there is no teaching or suggestion to place the protrusions 608 in Kopacko directly on the foam nare seal of modified Correa" "let alone removing the protrusions 608 from the one-piece plate 610 in Kopacko which they are an integral part and attaching these protrusions ... directly to a foam nare seal of a modified Correa device." Id. The Examiner responds that the rejection "involve[s] substitution of the protrusions and slots of Kopacko for the screws and bosses of Correa, thus resulting [in] Correa having connectors superficially disposed on the surface of the seal of Correa thus meeting the claimed feature." Ans. 5. For the following reasons, we sustain the rejection of claim 1. 8 Appeal2017-005194 Application 12/735,977 We understand the Examiner's rejection to be based on the substitution of one known connecting structure for removably connecting the foam interfacing portion to the positioning and stabilizing structure in Correa, i.e., screws engaging bosses, with another known connecting structure taught by Kopacko, i.e. protrusions with mating slots. While we understand, as noted by Appellants (Reply Br. 6), that the slots and protrusions in Kopacko are used to attach a forehead cushion, Appellants do not argue that it would be beyond the level of skill of an ordinary artisan to adapt Kopacko' s connecting structure to Correa' s nare seal. We note that the rejection does not propose a bodily incorporation of Kopacko's structure into the device of Correa. See In re Keller, 642 F.2d 413,425 (CCPA 1981); In re Keller, 642 F.2d 413,425 (CCPA 1981) (citations omitted) ("The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference .... Rather, the test is what the combined teachings of those references would have suggested to those of ordinary skill in the art."). We have considered all of Appellants' arguments. Those arguments fail to persuasively apprise us of error in the Examiner's factual findings or rationale for the combination of Correa, Goldstein, and Kopacko, which we determine to be reasonable and supported by rational underpinnings. See KSR Int'!. Co. v Teleflex Inc., 550 U.S. 398,416 (2007) ("[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results"). We, thus, sustain the rejection of claim 1 under 35 U.S.C. Â§ 103(a). Claims 2--4, 6-8, 10, 13-15, 20, 21, 23, 25-35, and 37 fall with claim 1. 9 Appeal2017-005194 Application 12/735,977 Claim 24 Appellants contend that the rejection of claim 24 is inconsistent with the rejection of claim 23, from which claim 24 depends. Appeal Br. 12. Appellants argue: In addressing claim 23, the Office Action relies on the deflector 76 and stem 78 in Correa as a teaching of the claimed "portion of the positioning and stabilizing structure" which the foam interfacing portion is wrapped around .... [I]n addressing claim 24 ... the Office Action relies on support 1 7 as a teaching of the claimed surface of the portion of the positioning and stabilizing structure ... however, the nare seal 14 is not wrapped around the support 1 7 to form an arc-shaped portion there about. Appeal Br. 12. The Examiner responds that, "as shown in Figures 4 and 5A [ of Correa,] 14 forms a ring shape about 7 6 and in contact with 17 thus, particularly about the front thereof as when disposed on a user is wrapped around 17." Ans. 7. For the following reasons, we sustain the rejection of claim 24. Claim 23 requires "the foam interfacing portion is wrapped around the at least a portion of the positioning and stabilizing structure to form an arc- shaped portion there about." Appeal Br. 17 (Claims App.). Claim 24 requires that the "arc-shaped portion ... is provided to a surface of the at least a portion of the positioning and stabilizing structure." Id. Appellants' contention is not persuasive because it fails to address the language of claim 24. The Examiner finds that "upper surface of support 17" in Correa corresponds to "a surface of the ... positioning and stabilizing structure, as claimed" Final Act. 24. Appellants argue that Correa's arc-shaped portion does not wrap around support 17, but do not adequately explain why 10 Appeal2017-005194 Application 12/735,977 Correa's arc-shaped portion, as described by the Examiner in the findings supporting claim 23, is not "provided to a surface of the at least a portion of the positioning and stabilizing structure," as claim 24 recites. We, thus, sustain the rejection of claim 24 because Appellants' contention is not commensurate with the scope of claim 24. Claims 36, 38, and 39 Appellants contend that these claims are patentable because the screws in Correa "are not attached to a surface of the underside of the nare seal 14" ( claim 3 6) and "are not disposed on a surface of the underside of nare seal 14" (claims 38 and 39). Appeal Br. 12. This contention is not persuasive because it does not address the modification of the attachment of Correa' s nare seal with the teachings of Kopacko, as relied on in the rejection. We, thus, sustain the rejection of claims 36, 38, and 39. Rejections 9-14 Appellants do not address the rejections of claims 9, 11, 12, 15, 18, and 19 as set forth in Rejections 9-14. See Appeal Br. passim. We, thus, summarily sustain the rejections of claims 9, 11, 12, 15, 18, and 19. DECISION The Examiner's decision rejecting claims 1--4 and 6-39 is affirmed. 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). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 11