PREVENTECH LTD. et al.

Patent Trials and Appeals Board

Jan 20, 2022

2021003899 (P.T.A.B. Jan. 20, 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. 14/897,998 12/11/2015 Reuven FICHMAN GPK-4110-344 7008 23117 7590 01/20/2022 NIXON & VANDERHYE, PC 901 NORTH GLEBE ROAD, 11TH FLOOR ARLINGTON, VA 22203 EXAMINER FISHER, VICTORIA HICKS ART UNIT PAPER NUMBER 3786 NOTIFICATION DATE DELIVERY MODE 01/20/2022 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): 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 REUVEN FICHMAN, ELIAHU URI GROOMI COHEN, ARIEL PINHAS BEN-REY, GUY DAVID ROBIN, and MORAN BODAS Appeal 2021-003899 Application 14/897,998 Technology Center 3700 ____________ Before STEFAN STAICOVICI, EDWARD A. BROWN, and MICHAEL L. HOELTER, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-8, 11-14, and 27. See Non-Final Act. 1 (Office Action Summary). We have jurisdiction under 35 U.S.C. § 6(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real parties in interest as “PREVENTECH LTD. and DEA R&D LTD.” Appeal Br. 3. Appeal 2021-003899 Application 14/897,998 2 We REVERSE the Examiner’s rejections of these claims. CLAIMED SUBJECT MATTER The disclosed subject matter “relates to the field of disposable masks for personal protection.” Spec. 1.2 Apparatus claim 1 is the sole independent claim, is illustrative of the claims on appeal, and is reproduced below. 1. A face mask comprising: (a) a mask body portion configured to surround a mouth and at least part of a nose of a wearer; and (b) a sealed compressible cushion attached to an inner proximal side of said mask body portion such that, when in use, the sealed compressible cushion is configured to be in contact with the wearer's face, wherein a middle portion of said sealed compressible cushion is placed in close proximity to a middle portion of the superior perimeter of said mask body portion, and wherein said sealed compressible cushion is partially filled with a fluid; wherein said sealed compressible cushion is completely sealed, wherein the sealed compressible cushion comprises two lateral pocket portions, wherein said two lateral pocket portions have larger volumes than that of the middle portion of said sealed compressible cushion, wherein the middle portion of said sealed compressible cushion is configured to fit on a bridge of the nose of the wearer, and said two lateral pocket portions are configured to be deployed on the sides of the nose of the wearer, wherein part of the fluid in one lateral pocket portion is configured to travel to the other lateral pocket portion; thus said sealed compressible cushion being configured to seal areas between an upper cheek and an eye socket of the wearer, and 2 Appellant’s Specification lacks both line and paragraph numbering. We thus reference Appellant’s Specification via page number only. Appeal 2021-003899 Application 14/897,998 3 wherein the sealed compressible cushion does not include a valve, such that fluid cannot be added to or removed from the sealed compressible cushion. EVIDENCE Name Reference Date Miura US 5,727,544 Mar. 17, 1998 Elsberg US 6,644,314 B1 Nov. 11, 2003 Krempel et al. (“Krempel”) US 2005/0187502 A1 Aug. 25, 2005 Gebrewold et al. (“Gebrewold”) US 2008/0099022 A1 May 1, 2008 Palomo et al. (“Palomo”) US 2012/0272973 A1 Nov. 1, 2012 Spanner US 2015/0040920 A1 Feb. 12, 2015 REJECTIONS3 Claims 1, 4-8, and 27 are rejected under 35 U.S.C. § 103 as unpatentable over Miura and Krempel. Claims 2 and 3 are rejected under 35 U.S.C. § 103 as unpatentable over Miura, Krempel, and Gebrewold. Claim 11 is rejected under 35 U.S.C. § 103 as unpatentable over Miura, Krempel, and Elsberg. Claim 12 is rejected under 35 U.S.C. § 103 as unpatentable over Miura, Krempel, Elsberg and Palomo. Claims 13 and 14 are rejected under 35 U.S.C. 103 as unpatentable over Miura, Krempel, and Spanner. 3 The rejection of claims 1-8, 11-14, and 27 “as failing to comply with the written description requirement” has “been withdrawn by the [E]xaminer.” Ans. 3. Appeal 2021-003899 Application 14/897,998 4 ANALYSIS The rejection of claims 1, 4-8, and 27 as unpatentable over Miura and Krempel Sole independent claim 1 recites “a mask body portion” and “a sealed compressible cushion attached to an inner proximal side of said mask body portion.” Claim 1 further recites that “said sealed compressible cushion is completely sealed.” Claim 1 also recites that “said sealed compressible cushion is partially filled with a fluid” and “that fluid cannot be added to or removed from the sealed compressible cushion.” See Appeal Br. 23 (Claims App.). The Examiner relies on Miura for teaching “a mask body portion” and also “a cushion” 3 attached as recited. Non-Final Act. 6. However, the Examiner acknowledges that Miura “does not teach” the limitations directed to “a sealed compressible cushion” that “is partially filled with a fluid.” Non-Final Act. 6. The Examiner relies on Krempel for these and other teachings (“an analogous device with the cushion . . . being a sealed . . . compressible cushion”). Non-Final Act. 7-9; see also Ans. 4. The Examiner concludes that it would have been obvious to a skilled artisan “to modify the cushion of Miura to provide the cushion being a sealed compressible cushion” as taught by Krempel because Krempel’s device “is known to be an alternate configuration in the art.” Non-Final Act. 9-10; Ans. 8. Appellant disagrees with the Examiner’s assessment of Krempel, stating that Krempel’s “[f]luid passageway 406 is not completely sealed.” Appeal Br. 12; see also Reply Br. 2. According to Appellant, “none of Krempel’s configurations involve a completely sealed compressible cushion such that fluid cannot be added to or removed from the sealed compressible Appeal 2021-003899 Application 14/897,998 5 cushion” as recited. Appeal Br. 12. Instead, as per Appellant, Krempel’s “purpose is to constantly provide a constant temperature by always refreshing the fluid, as opposed to having the fluid stay in its place.” Appeal Br. 13 (referencing Krempel ¶¶ 3-10) (italics added). In other words, “Krempel does not teach or suggest a ‘sealed compressible cushion’ as recited in the pending claims.” Appeal Br. 14. There is merit to Appellant’s contentions. Krempel discloses a splint 402 placed atop a person’s nose having fluid passageways 406 extending from one side to the other.4 See Krempel ¶ 142, Fig. 4. Figure 4 of Krempel also illustrates “inlet and outlet ports (410) and (408) respectively,” which Krempel describes as “provid[ing] for the inlet and outlet of fluid to the fluid passageway region (406).” Krempel ¶ 142. Paragraph 26 of Krempel further explains that “the fluid passageway region comprises an inlet and an outlet port for connection to a thermally-regulated fluid source.” In fact, Krempel is replete with discussions of a splint configured for a “flow therethrough.” See Krempel ¶¶ 11, 12, 28-30, 54, 89, 93, 115, 143. To be clear, Figure 4 of Krempel is replicated below: 4 The parties do not dispute the cushioning aspect of splint 402. See also Krempel ¶ 69 discussing Krempel’s device as “enhanc[ing] comfort when used or worn by a subject.” Appeal 2021-003899 Application 14/897,998 6 The above Figure 4 of Krempel illustrates device 400 consisting of splint 402, fluid passageway region 406, outlet port 408, inlet port 410 and flexible elements 412 providing fluid passage to/from the splint. The subject’s nose is identified as item 404. See Krempel ¶¶ 142, 143. The Examiner explains that Krempel teaches “a sealed compressible cushion” because paragraph 28 of Krempel teaches that “the pocket of the fluid passageway region is taught in [0028] to be ‘sealed.’” Ans. 4. Indeed, paragraph 28 of Krempel states “[t]he pocket may be sealed or be sealable.” However, the “pocket” Krempel references is that located between a “fluid passageway region” (“formed by a first layer and a second layer for allowing fluid to flow therethrough”) “and a third layer at least partly attached to the second layer.” Krempel ¶ 28. Hence, the “pocket” that may be “sealed” is that which is formed between this second and third layer, and such “pocket” is not a reference to the fluid passageway region “formed by a first layer and a second layer.” Krempel ¶ 28. Although not raised by the Examiner, paragraphs 56 and 57 of Krempel state that the fluid passageway “may be enclosed” and that “fluid does not leak from the fluid passageway.” However, this is to indicate that Appeal 2021-003899 Application 14/897,998 7 the fluid passing through the splint does not escape and/or seep onto the subject’s face or clothing, but instead remains within its pathway. In other words, Krempel does not teach what might be characterized as a “closed” fluid system of the type recited in claim 1. The Examiner also states that “[w]hile Krempel et al. teaches fluid flow into and out of the fluid passageway region 406 . . . all of the configurations of Krempel et al. do not involve fluid flow, as Appellant alleges.” Ans. 4 (referencing Krempel ¶ 15). Here, the Examiner is referencing Krempel’s teaching that the device “may include valves (or obstructions) configured to selectively block fluid flow into, and out of, selected regions.” Krempel ¶ 15. However, by acknowledging that Krempel may use valves or other obstructions to control fluid flow with respect to selected regions of the splint, the Examiner does not explain how this satisfies the limitations of a “completely sealed” device where “fluid cannot be added to or removed from the sealed compressible cushion.” See Appeal Br. 23 (Claims App.). This is because by employing Krempel’s valves, then it would appear that, indeed, fluid can be added to or removed from selected regions at will, contrary to this limitation. The Examiner also addresses the use of “freezer-based devices like ice packs and gel packs” while acknowledging reasons raised by Krempel as to why such use is not acceptable. Ans. 5; see also Krempel ¶¶ 3, 4. Appellant characterizes Krempel’s disparagement of their use stating “[i]n fact, Krempel denigrates and teaches away from non-continuous devices (such as freezer-based devices like ice packs and gel packs) that do not involve fluid circulation.” Appeal Br. 12; see also Reply Br. 3-4. Appellant does appear Appeal 2021-003899 Application 14/897,998 8 to be correct and the Examiner does not explain how such a discussion in Krempel might overcome Krempel’s shortcomings discussed above. Accordingly, we are not persuaded the Examiner has established by a preponderance of the evidence that the combination of Miura and Krempel render claim 1 obvious. Thus, based on the record presented, we reverse the Examiner’s rejection of claims 1, 4-8, and 27 as being unpatentable over Miura and Krempel. The rejections of (a) claims 2 and 3 as unpatentable over Miura, Krempel, and Gebrewold; (b) claim 11 as unpatentable over Miura, Krempel, and Elsberg; (c) claim 12 as unpatentable over Miura, Krempel, Elsberg, and Palomo; and, (d) claims 13 and 14 as unpatentable over Miura, Krempel, and Spanner The Examiner does not employ the additionally cited references (i.e., Gebrewold, Elsberg, Palomo, and Spanner) in a manner that might cure the defect above regarding the combination of Miura and Krempel as to claim 1. See Non-Final Act. 12-16. For example, the Examiner relies on Gebrewold for teaching a film “made of EVA (Ethylene-vinyl acetate).” Non-Final Act. 12. The Examiner relies on Elsberg for teaching “layers of nonwoven fabrics.” Non-Final Act. 14. The Examiner relies on Palomo for teaching a mask portion which “comprises three functional layers.” Non-Final Act. 14. The Examiner relies on Spanner for teaching material being “folded into a series of pleats.” Non-Final Act. 15. Accordingly, we likewise reverse the Examiner’s rejections of these dependent claims, all of which also rely on the Examiner’s combination of Miura and Krempel discussed above. Appeal 2021-003899 Application 14/897,998 9 CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 4-8, 27 103 Miura, Krempel 1, 4-8, 27 2, 3 103 Miura, Krempel, Gebrewold 2, 3 11 103 Miura, Krempel, Elsberg 11 12 103 Miura, Krempel, Elsberg, Palomo 12 13, 14 103 Miura, Krempel, Spanner 13, 14 Overall Outcome 1-8, 11-14, 27 REVERSED