Loewenstein Medical Technology S.A.

Patent Trials and Appeals Board

Mar 30, 2022

2021004229 (P.T.A.B. Mar. 30, 2022)

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. 16/008,266 06/14/2018 Arnold FRERICHS 6580-P50457 1030 13897 7590 03/30/2022 Abel Schillinger, LLP 12414 Alderbrook Drive Suite 201 Austin, TX 78758 EXAMINER LOUIS, LATOYA M ART UNIT PAPER NUMBER 3785 NOTIFICATION DATE DELIVERY MODE 03/30/2022 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): hmuensterer@abel-ip.com mail@Abel-IP.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte ARNOLD FRERICHS, MARTIN BECHTEL, MARTIN EIFLER, and JOACHIM GARDEIN __________ Appeal 2021-004229 Application 16/008,266 Technology Center 3700 __________ Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and ANNETTE R. REIMERS, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 22-41. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. 1 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 Loewenstein Medical Technology S.A. Appeal Br. 3. Appeal 2021-004229 Application 16/008,266 2 STATEMENT OF THE CASE The claims are directed to a respiratory mask. Claim 22, reproduced below, is illustrative of the claimed subject matter: 22. A respiratory mask, wherein the mask comprises a mask bead, which seals off the mask in a direction of a patient, a mask body, and at least one wing for receiving a harness clip for fixing a head harness on the mask, the wing having a funnel-shaped cutout, and the harness clip locking in a region of a locking point of the cutout. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Eaton US 2013/0284178 A1 Oct. 31, 2013 REJECTIONS Claim 41 is rejected under 35 U.S.C. § 112(b), as being indefinite. Final Act. 2. Claims 22-41 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Eaton.2 Final Act. 3. OPINION Indefiniteness In regard to claim 41, the Examiner determines that: (1) the recitation “‘depression/locking’ on line 1 is unclear as it is unclear what ‘/’ is intending to represent;” (2) “the limitation after the last comma on line 3 is unclear 2 In the statement of the rejection, the Examiner inadvertently referred to this reference as “Easton” rather than “Eaton.” Final Act. 3. Appeal 2021-004229 Application 16/008,266 3 since ‘and/or’ was previously recited” and thus, “[i]t is unclear what part of the sentence the last limitation is directed to;” and (3) because “a locking pin” and “a pin” are previously claimed, the recitation “the pin” in this claim is unclear. Final Act. 2. Appellant contends that: (1) “claim 41 depends upon claim 40, which in turn depends upon claim 39 (which in turn depends upon claim 38);” (2) “according to claim 41 the depression/the locking pin are axially centered or axially uncentered in the axial direction of the (locking) pin, and a pivoting movement of the (harness) clip about an axis of the (locking) pin leads to a release of the connection between the depression and the locking pin” and “[i]t is not seen that any of the above statements, at least when considered in combination, is unclear;” and (3) “[i]t also is apparent that ‘pin’ and ‘locking pin’ are the same as there is no pin which is different from a locking pin in the context of claim 41, nor has the Examiner made any allegation to the contrary in this regard.” Appeal Br. 6. Appellant’s contentions are unpersuasive. Even with Appellant’s response, the Examiner’s three points regarding the lack of clarity concerning the particular languages recited in claim 41 remain uncontroverted. Moreover, Appellant’s response that “the pin” and “the locking pin” recited in claim 41 should be interpreted to be the same thing buttresses the Examiner’s position that the term “the pin” in unclear in claim 41. A claim is properly rejected as being indefinite under 35 U.S.C. § 112 second paragraph if, after applying the broadest reasonable interpretation in light of the specification, the metes and bounds of a claim are not clear because the claim “contains words or phrases whose meaning is unclear.” In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014). “It is of utmost Appeal 2021-004229 Application 16/008,266 4 importance that patents issue with definite claims that clearly and precisely inform persons skilled in the art of the boundaries of protected subject matter.” MPEP § 2173. Here, Appellant’s contentions do not apprise us of Examiner error because a skilled person must rely on conjecture from the recited terms as pointed out by the Examiner and the unclarity of claim language should be remedied during prosecution. We thus sustain the rejection of claim 41 under 35 U.S.C. § 112(b). Anticipation by Eaton Claim 22 requires, among other limitations, a “wing having a funnel- shaped cutout.” Appeal Br. 14 (Claims App.). The Examiner finds that Eaton’s first connector 30 has a funnel-shaped cutout. Final Act. 3. According to the Examiner, Eaton’s first connector 30 “include[s] an interior opening that is wide at the proximal end and narrow at the distal end wherein the ball end of clips 32 are locked into the cutout.” Ans. 7. Appellant contests this finding. Appeal Br. 8. Appellant contends that: both Fig. 1 and Fig. 3 of EATON show[] that the upper surfaces of the side walls of the connectors 30 are parallel, i.e., do not converge toward the distal ends of the connectors 30 (which would be the case if the cutout were funnel-shaped). In other words, there is no narrowing at all of the walls of the connectors 30 to be recognized in the drawings of EATON. Id. at 8-9. Appellant refers to MPEP § 2125 II (citing Hockerson- Halberstadt, Inc. v. Avia Group Int’l, 222 F.3d 951, 956 (Fed. Cir. 2000)) which states that “[w]hen the reference does not disclose that the drawings are to scale and is silent as to dimensions, arguments based on measurement of the drawing features are of little value” and “[when the] disclosure gave no indication that the drawings were drawn to scale,” “it is well established Appeal 2021-004229 Application 16/008,266 5 that patent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue.” Id. at 9. Appellant has the better position. We first note that the Specification does not define “funnel-shaped.” Spec., passim. We thus look to the plain and ordinary meaning of the term “funnel-shaped.” The term “funnel” is defined as “a conically shaped utensil having a narrow tube at the small end; used to channel the flow of substances into a container with a small mouth” or “a conical shape with a wider and a narrower opening at the two ends.”3Figures 8 and 9 show a funnel-shaped cutout 19 having a perimeter that is tapered. We thus construe “funnel-shaped cutout” as a cutout that has a tapered shape. It seems to us that this construction is consistent with the Specification’s use this term “funnel” and what is depicted in the figures that show a funnel-shaped cutout 19 of wing 12. See Spec. 8:8-10, 8:29-32, 14:23-26, 15:8-10, 18:4-7; Figures 7, 8. 3 https://www.vocabulary.com/dictionary/funnel (last accessed Mar. 4, 2022). Appeal 2021-004229 Application 16/008,266 6 Figure 3 of Eaton is reproduced below. Figure 3 is an exploded view of a mask and forehead support system. Eaton ¶ 16. The mask and forehead support system includes a mask shell 14 with first connectors 30 rigidly connected thereto and second connectors 32 being removably connected to first connectors 30. Id. at ¶ 31. We agree with Appellant that as seen in Figure 3, each of the side walls of the first connectors 30 appear to be parallel to the other and both side walls do not appear to converge toward the distal ends of first connectors 30. See Appeal Br. 8-9. Nonetheless, as recognized by Appellant, Eaton does not disclose that the drawings are drawn to scale and is silent as to the dimension or Appeal 2021-004229 Application 16/008,266 7 shape of first connectors 30. Eaton, passim. Thus, neither Figure 3 nor Figure 1 of Eaton may be relied on to show particular sizes because Eaton’s Specification is completely silent on this issue. This results in a skilled artisan viewing the figures not being able to quite discern whether the shape of first connector 30’s cutout constitutes a tapered shape, i.e., a “funnel” shape. We have been instructed by our reviewing court that they “did not mean that things patent drawings show clearly are to be disregarded.” In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972) (emphasis in original). The key term here is “clearly.” Neither Figure 1 nor Figure 3 of Eaton is detailed enough to clearly show whether a portion of the cutout of first connector 30 has tapered shape. More specifically, it is unclear whether Figure 1 and Figure 3 of Eaton show a portion of the cutout has a step decrease or a stop in its width (as in the case of a smaller rectangle being positioned next to a larger rectangle) or whether Figure 1 and Figure 3 of Eaton show a portion of the cutout has a gradual decrease in width (as in the case of funnel for channeling the flow of substances). Here, the Examiner appears to rely upon speculation or unfounded assumption in her findings with respect to the claimed subject matter at issue. See In re Warner, 379 F.2d 1011, 1017 (CCPA) (the examiner has the initial duty of supplying the requisite factual basis and may not, because of doubts that the invention is patentable, resort to speculation, unfounded assumptions, or hindsight reconstruction to supply deficiencies in the factual basis). Thus, the Examiner fails to establish that Eaton discloses a wing having a “funnel-shaped cutout.” For these reasons, the anticipation rejection is not sustained. Appeal 2021-004229 Application 16/008,266 8 CONCLUSION The Examiner’s rejection of claim 41 as being indefinite is affirmed and the Examiner’s rejection of claims 22-41 as being anticipated is reversed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 41 112(b) Indefiniteness 41 22-41 102(a)(1) Eaton 22-41 Overall Outcome 41 22-40 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED IN PART