Joanne Elizabeth. Drew et al.

Patent Trials and Appeals Board

Sep 27, 2019

13975601 - (D) (P.T.A.B. Sep. 27, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/975,601 08/26/2013 Joanne Elizabeth DREW PTB-4398-1380 1685
23117 7590 09/27/2019
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
STUART, COLIN W
ART UNIT PAPER NUMBER
3785
NOTIFICATION DATE DELIVERY MODE
09/27/2019 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 JOANNE ELIZABETH DREW,
ALEXANDER VIRR, and GEOFFREY CRUMBLIN
____________________

Appeal 2018-000966
Application 13/975,601
Technology Center 3700
____________________

Before MICHELLE R. OSINSKI, ERIC C. JESCHKE, and
PAUL J. KORNICZKY, Administrative Patent Judges.

KORNICZKY, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision, as set forth in the Final Office Action, rejecting claims
15, 16, 21–23, 25–30, and 32–41.3 We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

THE CLAIMED SUBJECT MATTER
The application is directed to “a respiratory mask and a vent for a
respiratory mask.” Spec. 1:5–6. Claims 15 and 38 are the independent
claims on appeal. Claim 15 is reproduced below:
15. A respiratory mask for delivery of a flow of breathable
gas at a continuously positive pressure with respect to
atmospheric pressure to an entrance to a patient’s airways,
wherein the respiratory mask is configured to maintain a
therapy pressure in a range of about 3 cmH2O to about 20
cmH2O above atmospheric pressure in use, throughout a
patient’s respiratory cycle, while the patient is sleeping, to
ameliorate sleep disordered breathing, the respiratory mask
comprising:
a shell forming an inner cavity and including a breathable
gas inlet adapted to connect to a breathable gas supply conduit;
a seal provided to the shell and adapted to interface with
a patient’s nose and/or mouth; and

1 In this Decision, we refer to (1) the Examiner’s Final Office Action
dated December 29, 2016 (“Final Act.”), and Answer dated September 8,
2017 (“Ans.”), and (2) Appellant’s Appeal Brief dated June 20, 2017
(“Appeal Br.”), and Reply Brief dated November 7, 2017 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as ResMed
Limited. Appeal Br. 3.
3 Claims 1–14, 17–20, 24, and 31 are cancelled. Appeal Br. 22–25
(Claims App.).
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a gas washout vent including a thin air permeable
material provided to the shell, wherein the thin air permeable
material is constructed and arranged to extend across an
opening provided to the shell and allow an airflow therethrough
to allow washout of exhaled gas from the inner cavity to
atmosphere while allowing a therapy pressure to be maintained
within the inner cavity,
wherein the thin air permeable material includes a
thickness that is less than a thickness of the shell, and
wherein the shell includes an exterior surface and said
opening is provided through said exterior surface, and the thin
air permeable material includes an exterior surface extending
across said opening of the shell, and the exterior surface of the
thin air permeable material includes a curvature along its length
across said opening that substantially corresponds to a
curvature of the exterior surface of the shell.

REFERENCES
In rejecting the claims on appeal, the Examiner relied upon the
following prior art:
Roy
Tanny
Landis
Metzger
Kwok
Hurst
Popitz
Kanno
Wood
Dunhao
US 4,601,465
US 5,126,189
US 5,687,715
US 5,732,695
WO 98/34665
US 5,836,303
US 5,857,460
US 6,309,438 B1
US 6,478,026 B1
US 6,694,973 B1
July 22, 1986
June 30, 1992
Nov. 18, 1997
Mar. 31, 1998
Aug. 13, 1998
Nov. 17, 1998
Jan. 12, 1999
Oct. 30, 2001
Nov. 12, 2002
Feb. 24, 2004

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REJECTIONS
The Examiner made the following rejections:
1. Claim 25 stands rejected under 35 U.S.C. §112, first paragraph,
as failing to comply with the written description requirement.4
2. Claims 15, 25–29, 33, 35, and 40 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Kwok and Roy.
3. Claims 21, 23, and 41 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Kwok, Roy, and Tanny.
4. Claims 16, 22, and 30 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Kwok, Roy, and Kanno.
5. Claim 32 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kwok, Roy, and Dunhao.
6. Claim 34 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kwok, Roy, and Hurst.
7. Claim 36 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kwok, Roy, and Metzger.
8. Claim 37 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kwok, Roy, Metzger, and Wood.
9. Claim 38 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kwok and Kanno.
10. Claim 39 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kwok, Roy, and Landis.
11. Claims 15, 25–29, 32, 33, 35, and 40 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Kwok, Roy, and Popitz.

4 The rejection of claim 39 is withdrawn. Ans. 75.
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12. Claims 21, 23, and 41 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Kwok, Roy, Popitz, and Tanny.
13. Claims 16, 22, and 30 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Kwok, Roy, Popitz, and Kanno.
14. Claim 34 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kwok, Roy, Popitz, and Hurst.
15. Claim 36 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kwok, Roy, Popitz, and Metzger.
16. Claim 37 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kwok, Roy, Popitz, Metzger, and Wood.
17. Claim 38 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kwok, Kanno, and Popitz.
18. Claim 39 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kwok, Roy, Popitz, and Landis.
19. Claims 15, 25–29, 32, 33, 35, and 40 stand rejected on the
ground of nonstatutory double patenting as being unpatentable over claim 42
of U.S. Patent 8,528,558 in view of Roy, Kwok, and Popitz.
Appellant seeks our review of these rejections.

DISCUSSION
Rejection 1: Claim 25
as Failing to Comply with the Written Description Requirement
Claim 25 recites a respiratory mask “wherein the gas washout vent
includes two thin air permeable materials, each one of the two thin air
permeable materials provided to a respective side of the shell.” The
Examiner finds that this limitation “appears to introduce new matter not
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found in the disclosure as originally filed” because the “embodiment which
includes the two thin air permeable material vents located on the shell is
shown in Fig. 6–7[,] which does not appear to show the vent/thin air
permeable material having an exterior surface with a curvature to
substantially match the curvature of the exterior surface of the shell.” Final
Act. 3.
Whether a specification complies with the written description
requirement of 35 U.S.C. § 112, first paragraph, is a question of fact and is
assessed on a case-by-case basis. See, e.g., Purdue Pharma L.P. v.
Faulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (citing Vas-Cath, Inc.
v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)). The disclosure, as
originally filed, need not literally describe the claimed subject matter
(i.e., using the same terms or in haec verba) in order to satisfy the written
description requirement. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d
1336, 1352 (Fed. Cir. 2010) (en banc) (stating that the written description
requirement “does not demand any particular form of disclosure or that the
specification recite the claimed invention in haec verba” (internal citations
omitted)). But the Specification must convey with reasonable clarity to
those skilled in the art that, as of the filing date, Appellant was in possession
of the claimed invention. See id.
Appellant argues that the Examiner’s rejection is erroneous because
Exemplary support for [claim 25] is provided by Fig. 6 showing
two thin air permeable materials provided to a respective side of
the shell. In addition, page 7, lines 1–5; page 7, line 23 to page
8, line 2; and page 9, lines 28–33 of the [S]pecification, for
example, clearly discuss combining aspects of different
examples to devise other arrangements, e.g., curved air
permeable materials provided to a respective side of the shell.
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Appeal Br. 20. We agree that these portions of the Specification show that
Appellant was in possession of the subject matter recited in claim 25.
Figures 1–2, for example, illustrate that the curvature of the exterior surface
of the thin air permeable material 28 corresponds to the curvature of the
exterior surface of the shell 12. The Specification states that its “various
vent arrangements can be used with various mask arrangements” (Spec. 7:1–
5), and “like reference numerals [in Fig. 6] have been used to indicate like
features” in Fig. 2 (Spec. 7:25–26 (compare membranes 28 and shells 12)).
Thus, the rejection of claim 25 is not sustained.

Rejections 2–10: Claims 15, 16, 21–23, 25–30, and 32–41
In Rejections 2–10, the Examiner relies on Kwok to teach or suggest
“the exterior surface of the thin air permeable material includes a curvature
along its length across said opening that substantially corresponds to a
curvature of the exterior surface of the shell” as recited in independent
claims 15 and 38. Final Act. 5–6 (claim 15), 14–15 (claim 38). The
Examiner’s annotated Figure 8 of Kwok is reproduced below.

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Ans. 76. According to the Examiner, annotated Figure 8, a cross-sectional
view of the material 20, illustrates the “exterior surface” of thin air
permeable material 20, which starts at locations 1 and ends at location 2, and
thus extends across an opening defined in shell 12. Id. The Examiner finds
a curvature exists at locations 1 and 2, and thus, both the “exterior surface”
of thin air permeable material 20 and shell 12 includes a curvature. Id.
Appellant argues that the Examiner’s finding is erroneous because
locations 1 and 2 of annotated Figure 8 are the boundary edges, not the
exterior surfaces, of permeable material 20 and shell 12. Reply Br. 2–3. We
agree. Locations 1 and 2 of shell 12 are merely the edge of an opening in
shell 12. Figure 8 illustrates that (1) shell 12 has a flat surface, and does not
have a curvature, and (2) material 20 has a flat surface that corresponds to
the flat surface of shell 12. Kwok does not teach or suggest “the exterior
surface of the thin air permeable material includes a curvature along its
length across said opening that substantially corresponds to a curvature of
the exterior surface of the shell” as recited in independent claims 15 and 38.
The Examiner does not find that the other prior art (Roy, Tanny, Kanno,
Dunhao, Hurst, Metzger, Wood, Landis) cited in Rejections 2–10 remedy
the deficiencies of Kwok. Thus, Rejections 2–10 are not sustained.

Rejections 11–16 and 18: Claims 15, 16, 21–23, 25–30, 32–37, and 39–41
In the alternative rejections in Rejections 11–18, the Examiner
construes “curvature” to mean that the exterior surface of the shell has, for
example, a convex curvature. Final Act. 16. A plain meaning of
“curvature” is “the state of being curved.” Merriam-Webster.com,
https://www.merriam-webster.com/dictionary/curvature (last visited
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September 20, 2019). The Specification does not use the terms “curvature”
or “curved.”

Claim 15
In Rejection 11, the Examiner relies on Popitz to teach or suggest “the
exterior surface of the thin air permeable material includes a curvature along
its length across said opening that substantially corresponds to a curvature of
the exterior surface of the shell” as recited in claim 15. Final Act. 18. The
Examiner finds that
Popitz teaches a respiratory mask which includes an exterior
surface which is convexly curved and also includes a thin air
permeable material which includes an exterior surface that is
curved to substantially match the curvature of the shell (see
Popitz Fig. 1 which shows the exterior surface of the mask shell
being convexly curved as well as thin air permeable material 40
also having convex curvature which substantially corresponds
to the shell curvature).
Id. The Examiner reasons it would have been obvious to one of ordinary
skill in the art to modify “Kwok device’s shell exterior surface to be
convexly curved and the exterior surface of the thin air permeable material
to also be convexly curved, as taught by Popitz” because “this is a well-
known shape for a respiratory mask which provides ample interior space for
a patient’s breathing passages and does not provide sharp edges to the
device.” Id.
Appellant argues that the Examiner’s rejection is erroneous for several
reasons. First, Appellant argues that Roy and Popitz are non-analogous art
and cannot be applied in an obviousness rejection. Appeal Br. 16. To be
suitable for use in an obviousness rejection, a reference must be within an
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analogous art as the claimed invention. In re Bigio, 381 F.3d 1320, 1325
(Fed. Cir. 2004). The test for determining whether a reference is in an
analogous art is a two-part, alternative test that requires a showing that: (1)
the reference is from the same field of endeavor as the claimed invention
(even if it addresses a different problem); or (2) the reference is reasonably
pertinent to the problem faced by the inventor (even if it is not in the same
field of endeavor as the claimed invention). Id. As to the first prong, the
“test for analogous art requires the PTO to determine the appropriate field of
endeavor by reference to explanations of the invention’s subject matter in
the patent application, including the embodiments, function, and structure of
the claimed invention.” Id.
Here, Appellant argues that independent claim 15 is directed to
a respiratory mask for delivery of a flow of breathable gas at a
continuously positive pressure with respect to atmospheric
pressure to an entrance to a patient’s airways, wherein the
respiratory mask is configured to maintain a therapy pressure in
a range of about 3 cmH2O to about 20 cmH2O above
atmospheric pressure in use, throughout a patient’s respiratory
cycle, while the patient is sleeping, to ameliorate sleep
disordered breathing.
Appeal Br. 16–17. According to Appellant, Roy is directed to “a device for
stimulating the human respiratory system by making breathing more difficult
and limiting lung ventilation and does not include any disclosure related to a
respiratory mask for ameliorating sleep disordered breathing.” Id. at 10
(underlining omitted). According to Appellant, Popitz is directed to “an
oxygen mask including a gas sensor structured to sense the presence or
absence of a selected respired gas and does not include any disclosure
related to a respiratory mask providing appropriate seals and therapy
pressures for ameliorating sleep disordered breathing.” Id. at 17. Appellant
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concludes that Roy and Popitz are from different fields of endeavor and fail
the first prong of the test for analogous art. Id. at 10, 17.
In response to Appellant’s argument, the Examiner asserts that
Appellant uses “an overly narrow definition of the field of endeavor of the
instant invention.” Ans. 76. We agree. Appellant attempts to use
limitations from claim 15 to narrow the field of the endeavor. However,
according to the “Field of the Invention” of Appellant’s Specification, the
“present invention relates to a respiratory mask and a vent for a respiratory
mask.” Spec. 1:4–6. We agree with the Examiner that, like the
Specification,
Roy is also directed towards a respiratory device, more
particularly a respiratory mask type of device (see Fig. 3 and 7
of Roy for example) with an air permeable element (air
permeable vent 17, Roy Fig. 3 for example). Although Roy and
the instant application address different issues (sleep apnea in
the instant application and respiratory system stimulation in the
Roy reference)[,] they both are analogous in that they belong to
the respiratory arts, more particularly respiratory mask devices
with air permeable elements.
Ans. 78–79. We also agree with the Examiner that, like the Specification,
Popitz is also directed towards a respiratory device, more
particularly a respiratory mask type of device (see Fig. 1) with
an air permeable element (air permeable element 40, Popitz Fig.
1, col. 4 ln. 27-30 for example). Although Popitz and the
instant application address different issues (sleep apnea in the
instant application and respiratory gas sensing mask in the
Popitz reference)[,] they both are analogous in that they belong
to the respiratory arts, more particularly respiratory mask
devices with air permeable elements.
Ans. 85. Appellant’s arguments that the Specification, Roy, and Popitz are
not in the same field of endeavor are not persuasive.
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Second, Appellant argues that there is no reason or motivation to
combine Kwok and Roy. Appeal Br. 16. The Examiner reasons that it
would have been obvious to one of ordinary skill in the art “to modify the
Kwok device’s vent material to be thinner than the thickness of the mask
shell, as taught by Roy, in order to provide a lightweight vent material which
would provide a lighter device overall (via lesser thickness/material than that
of the mask shell).” Final Act. 17.
Appellant argues that there is no reason or motivation to combine
Kwok and Roy because
Kwok discloses a vent insert constructed of a flexible
elastomeric material that allows the vent insert to be squeezed
through an opening in the shell before resiliently expanding to
engage the rim bounding the opening in the shell in the fashion
of a grommet (e.g., see Fig. 8 of Kwok). Accordingly, there is
no reason or motivation to modify Kwok to include a vent
having a thickness that is less than a thickness of the shell as
such modification may adversely affect noted benefits of
Kwok’s vent, e.g., easy installation, retention, reduction of
noise.
Appeal Br. 11. Appellant also argues that “modifying the vent material to be
thinner than the thickness of the mask shell does not necessarily provide a
lighter device overall, e.g., thicker mask shell may in fact provide a heavier
device overall.” Id. at 12.
Appellant’s arguments are not persuasive. The Examiner’s rationale
that a person of ordinary skill in the art would have desired a lighter vent
material and mask has rational underpinnings. Appellant’s arguments are
conclusory and do not provide a persuasive explanation why a thinner vent
material would adversely affect Kwok’s “easy installation, retention,
reduction of noise” or would require a “thicker mask shell.”
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Third, Appellant argues that there is no reason or motivation to
combine Kwok and Popitz. Appeal Br. 18. The Examiner reasons that it
would have been obvious to one of ordinary skill in the art
to modify the modified Kwok device’s shell exterior surface to
be convexly curved and the exterior surface of the thin air
permeable material to also be convexly curved, as taught by
Popitz, as this is a well-known shape for a respiratory mask
which provides ample interior space for a patient’s breathing
passages and does not provide sharp edges to the device.
Final Act. 18.
Appellant presents three arguments that there is no reason or
motivation to combine the teachings of Kwok and Popitz:
(1) Because “the alleged air permeable material at [40] of Popitz is a
gas sensor element structured to detect and visually indicate (e.g., by
changing colors) the presence or absence of a selected respired gas,” “there
is no reason or motivation to modify Kwok’s vent in view of a gas sensor
element” (Appeal Br. 18);
(2) “[T]he mask 20 of Popitz includes ventilation apertures 28 for gas
washout (e.g., see col. 5, lines 25–30), which further exemplifies that there is
no reason or motivation to look to Popitz’s gas sensor to modify Kwok’s gas
washout vent” (id.); and
(3) Because “the alleged air permeable material [40] of Popitz
comprises a housing (top portion [40A] and a body portion [40B]) for
housing appropriate indicators, a suitable sealing gasket between the air
permeable material [40] and the mask [20], and baffles [44] for directing
flow (e.g., see Fig. 3),” “modification of Kwok in view of Popitz would alter
the structure and retention mechanism of Kwok’s vent, and there is no
reason or motivation for such modification which may adversely affect
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noted benefits of Kwok’s vent, e.g., easy installation, retention, reduction of
noise” (id. at 19).
Appellant’s arguments are not persuasive. Arguments 1 and 2 do not
address the Examiner’s proposal to modify the shape of Kwok’s flat shell
and vent to have Popitz’s convex curvature so that there is more space for
the patient’s face and breathing passages. Contrary to argument 3, the
Examiner proposes using Popitz’s convex curvature, not substituting
Popitz’s material 40, housing, gaskets, and baffles. Because Appellant does
not address the rejection as articulated by the Examiner, Appellant does not
identify Examiner error.
For the reasons above, the rejection of claim 15 is sustained.

Claims 16, 21–23, 25–30, 32–37, and 39–41
For the reasons discussed above, the rejection of claim 15 is sustained.
Because Appellant does not address the rejections of claims 16, 21–23, 25–
30, 32–37, and 39–41, which depend from claim 15, the rejections of these
claims are summarily sustained.

Rejection 17: Claim 38
as Unpatentable Over Kwok, Kanno, and Popitz
The Examiner finds that the combined teachings of Kwok, Kanno, and
Popitz disclose the limitations in claim 38. Final Act. 25–27.
Appellant argues that the Examiner’s rejection is erroneous for several
reasons. Appeal Br. 19. First, Appellant argues that Kanno is nonanalogous
art and cannot be applied in an obviousness rejection of the present claims.
Id. According to Appellant, independent claim 38 is directed to
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a respiratory mask for delivery of a flow of breathable gas at a
continuously positive pressure with respect to atmospheric
pressure to an entrance to a patient's airways, wherein the
respiratory mask is configured to maintain a therapy pressure in
a range of about 3 cmH2O to about 20 cmH2O above
atmospheric pressure in use, throughout a patient’s respiratory
cycle, while the patient is sleeping, to ameliorate sleep
disordered breathing.
Id. at 13–14. In contrast to claim 38, Appellant argues that because Kanno is
directed to “a filter unit for dust-proof and gas-proof masks structured to
improve dust collection efficiency and does not include any disclosure
related to a respiratory mask for ameliorating sleep disordered breathing,”
“Kanno is from a different field of endeavor and fails the first prong of the
test for analogous art.” Id. at 14.
In response to Appellant’s argument, the Examiner asserts that
Appellant uses “an overly narrow definition of the field of endeavor of the
instant invention.” Ans. 82. We agree. Appellant attempts to use
limitations from claim 38 to narrow the field of the endeavor. However,
according to the “Field of the Invention” of Appellant’s Specification, the
“present invention relates to a respiratory mask and a vent for a respiratory
mask.” Spec. 1:4–6. We agree with the Examiner that, like the
Specification,
Kanno is also directed towards a respiratory device, more
particularly a respiratory mask type of device (see Kanno col. 2
ln. 4-9) with an air permeable element (air permeable element:
Kanno col. 1 ln. 60 through col. 2 ln. 3, col. 3 ln. 7–12 for
example). Although Kanno and the instant application address
different issues (sleep apnea in the instant application and filter
masks in the Kanno reference)[,] they both are analogous in that
they belong to the respiratory arts, more particularly respiratory
mask devices with air permeable elements. One of ordinary
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skill in the art, when looking to modify a respiratory mask such
as Kwok, would not have been limited to masks for delivery of
flow to maintain pressure in a range of about 3 cm H2O to about
20 cm H2O above atmosphere throughout the patient’s
respiratory cycle, while the patient is sleeping to ameliorate
sleep disordered breathing, but rather one would have
reasonably looked to references relating to breathing masks
with air permeable elements, such as the Kanno reference.
Ans. 82. Appellant’s arguments are not persuasive.
Second, Appellant argues that “there is no evidence on the record
supporting the Examiner’s conclusion that it would be obvious to modify
Kwok in view of Kanno.” Appeal Br. 19. Turning first to the Examiner’s
findings and reasoning, the Examiner finds that “Kanno teaches an air
permeable material for use in respiratory masks which includes a thickness
of less than 0.5 mm and hole diameter of less than 0.2 mm.” Final Act. 26
(citing Kanno, 3:7–12 (thickness of 0.1 to 20 microns which is less than 0.5
mm, hole diameter of 0.1 to 0.5 microns which is less than 0.2 mm)). The
Examiner reasons that it would have been obvious to one of ordinary skill in
the art
to modify the Kwok device by replacing the vent material with
the expanded PTFE vent material, as taught by Kanno and thus
having hole diameters less than 0.2 mm and thickness less than
0.5 mm, in order to provide a lightweight vent material which
would provide a lighter device overall (via lesser
thickness/material than that of the mask shell).
Id.
Appellant presents three reasons to support its argument that there is
no reason or motivation to combine the teachings of Kwok and Kanno:
(1) Because “Kwok discloses a vent insert constructed of a flexible
elastomeric material that allows the vent insert to be squeezed through an
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opening in the shell before resiliently expanding to engage the rim bounding
the opening in the shell in the fashion of a grommet (e.g., see Fig. 8 of
Kwok),” “there is no reason or motivation to modify Kwok to include a vent
having a thickness less than 0.5 mm and each of the holes having a diameter
less than 0.2 mm as such modification may adversely affect noted benefits of
Kwok’s vent, e.g., easy installation, retention, reduction of noise” (Appeal
Br. 14–15);
(2) Because “the alleged air permeable material of Kanno comprises a
filter material that must be folded into pleats to maximize dust collection
(see col. 4, lines 26–33) and requires a reinforcing material or a filter
cartridge and corresponding filter holder (col. 4, lines 5–23) to hold the filter
material in position,” “modification of Kwok in view of Kanno would alter
the structure and retention mechanism of Kwok’s vent, and there is no
reason or motivation for such modification” (id. at 15); and
(3) “[M]odifying the vent material to be thinner than the thickness of
the mask shell does not necessarily provide a lighter device overall, e.g.,
thicker mask shell may in fact provide a heavier device overall” (id.).
Appellant’s arguments are not persuasive. Appellant does not explain
persuasively why the Examiner’s proposal to use Kanno’s membrane
thickness and hole size would adversely affect Kwok’s “easy installation,
retention, reduction of noise” or require a “thicker mask shell.” Similarly,
the Examiner’s proposal uses Kanno’s membrane thickness and hole size,
not Kanno’s folded pleat configuration. Because Appellant does not address
the rejection as articulated by the Examiner, Appellant does not identify
Examiner error.
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Finally, Appellant argues that, for the same reasons discussed above
in connection with claim 15, Popitz is not analogous art and cannot be
applied in an obviousness rejection of the present claims, and there is no
reason or motivation to combine Kwok and Popitz. Appeal Br. 19. As
discussed above in connection with claim 15, Appellant’s arguments are not
persuasive.
For the above reasons, the rejection of claim 38 is sustained.

Rejection 19: Claims 15, 25–29, 32, 33, 35, and 40
The Examiner rejects claims 15, 25–29, 32, 33, 35, and 40 on the
ground of nonstatutory double patenting as being unpatentable over claim 42
of U.S. Patent 8,528,558 in view of Roy, Kwok, and Popitz. Appellant only
argues that “[e]ach of the double patenting rejections of independent claims
15 and 38 rely on Roy, Kwok, Popitz and/or Kanno and should be
withdrawn for at least reasons noted above with respect to Roy, Kwok,
Popitz and/or Kanno.” Appeal Br. 20. As discussed above, the rejections of
the claims in Rejections 11–18 are sustained. Likewise, the rejection of
claims 15, 25–29, 32, 33, 35, and 40 on the basis of double patenting is
sustained.

Appeal 2018-000966
Application 13/975,601

19

CONCLUSION
In summary:
Claims
Rejected
Basis
(35 U.S.C.)
Affirmed Reversed
25 §112, first paragraph 25
15, 25–29, 33,
35, 40
§103(a) Kwok, Roy 15, 25–29, 33,
35, 40
21, 23, 41 §103(a) Kwok, Roy, Tanny 21, 23, 41
16, 22, 30 §103(a) Kwok, Roy, Kanno 16, 22, 30
32 §103(a) Kwok, Roy, Dunhao 32
34 §103(a) Kwok, Roy, Hurst 34
36 §103(a) Kwok, Roy, Metzger 36
37 §103(a) Kwok, Roy, Metzger,
Wood
37
38 §103(a) Kwok, Kanno 38
39 §103(a) Kwok, Roy, Landis 39
15, 25–29, 32,
33, 35, 40
§103(a) Kwok, Roy, Popitz 15, 25–29,
32, 33, 35, 40

21, 23, 41 §103(a) Kwok, Roy, Popitz,
Tanny
21, 23, 41
16, 22, 30 §103(a) Kwok, Roy, Popitz,
Kanno
16, 22, 30
34 §103(a) Kwok, Roy, Popitz,
Hurst
34
36 §103(a) Kwok, Roy, Popitz,
Metzger
36
37 §103(a) Kwok, Roy, Popitz,
Metzger, Wood
37
38 §103(a) Kwok, Kanno, Popitz 38
39 §103(a) Kwok, Roy, Popitz,
Landis
39
15, 25–29, 32–
33, 35, 40
Nonstatutory double patenting
as being unpatentable over
claim 42 of U.S. Patent
8,528,558, Roy, Kwok, Popitz
15, 25–29,
32–33, 35, 40

Overall
Outcome
15, 16, 21–
23, 25–30,
and 32–41

Appeal 2018-000966
Application 13/975,601

20

For the above reasons, we AFFIRM the Examiner’s rejections of
claims 15, 16, 21–23, 25–30, and 32–41 under 35 U.S.C. § 103.
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.
§ 1.136(a)(1)(iv).

AFFIRMED