ResMed Pty Ltd

Patent Trials and Appeals Board

Jun 1, 2021

2021003410 (P.T.A.B. Jun. 1, 2021)

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.
14/926,633 10/29/2015 Philip Rodney KWOK PTB-4398-1635 9644
23117 7590 06/01/2021
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
LOUIS, LATOYA M
ART UNIT PAPER NUMBER
3785
NOTIFICATION DATE DELIVERY MODE
06/01/2021 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 PHILIP RODNEY KWOK, KARTHIKEYAN SELVARAJAN,
and JAMES MORRISON
____________

Appeal 2021-003410
Application 14/926,633
Technology Center 3700
____________

Before STEFAN STAICOVICI, EDWARD A. BROWN, and
WILLIAM A. CAPP, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE.
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision in the Final Office Action (dated Aug. 20, 2020, hereinafter “Final
Act.”) rejecting claims 41–71 and 73–83.2 We have jurisdiction over this
appeal 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. ResMed Pty Ltd. is identified as the real party in interest in
Appellant’s Appeal Brief (filed Oct. 30, 2020, hereinafter “Appeal Br.”).
Appeal Br. 3.
2 Claims 1–40 and 72 are canceled. Appeal Br. 14, 30 (Claims App.).
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SUMMARY OF DECISION
We AFFIRM IN PART.

INVENTION
Appellant’s invention “relates to an apparatus that delivers breathable
gas to a patient.” Spec. para. 2.3
Claim 41, the sole independent claim, is representative of the claimed
invention and reads as follows:
41. A swivel connector system comprising:
first and second air passages that are concentric with one
another about a common axis;
a first connector having inner and outer walls; and
a second connector having inner and outer walls; wherein
the first air passage is at least partially defined by an
inside of the inner wall of the first connector and an inside of
the inner wall of the second connector;
the second air passage is at least partially defined
between an outside of each of the inner walls of the first and
second connectors and an inside of each of the outer walls of
the first and second connectors;
the inner wall of the first connector includes a first inner
coupling element adapted to interlock via a snap-fit with a
second inner coupling element of the inner wall of the second
connector to prevent relative axial movement but allow relative
rotation, and the outer wall of the first connector includes a first
outer coupling element adapted to interlock via a snap-fit with a
second outer coupling element of the outer wall of the second
connector to prevent relative axial movement but allow relative
rotation, wherein:
a thickness of each of the inner walls of the first and
second connectors is equal to a combined thickness of the first
and second inner coupling elements so that the respective inner
walls maintain substantially constant thickness along the axis

3 We refer to the Substitute Specification, filed Nov. 16, 2015.
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including across a transition between the first and second
connectors where the first and second inner coupling elements
are interlocked; and
each of the first air passage and the second air passage
comprises a substantially constant cross-section along its length
so as to define a continuous and undisturbed flow along both
the inside and the outside of the inner walls along the axis,
including across the transition.

Appeal Br. 24–25 (Claims App.).

REJECTIONS

I. The Examiner rejects claim 82 under 35 U.S.C. § 112, second
paragraph, as being indefinite.
II. The Examiner rejects claims 41–71 and 73–83 under 35 U.S.C.
§ 103(a) as being unpatentable over Dryden,4 Webb,5 and
Clerc.6

ANALYSIS
Rejection I
Appellant has not addressed the indefiniteness rejection of claim 82.
See Appeal Br. 8–22. Accordingly, Appellant has waived any argument of
error, and we summarily sustain the rejection of this claim. See Hyatt v.
Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (explaining that summary
affirmance without consideration of the substantive merits is appropriate
where an appellant fails to contest a ground of rejection).

4 Dryden, US 5,284,160, issued Feb. 8, 1994.
5 Webb et al., US 4,676,241, issued June 30, 1987.
6 Clerc, US 4,214,358, issued July 29, 1980.
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Rejection II
The Examiner finds Dryden discloses a swivel connector system 31
including, inter alia, first connector 33 having inner and outer walls 33B,
33A, and second connector 41 having inner and outer walls 41B, 41A,
wherein a first (inner) passage is partially defined by inner walls 33B, 41B
and a second (outer) passage is defined by inner walls 33B, 41B and outer
walls 33A, 41A. See Final Act. 4 (citing Dryden, Fig. 1). The Examiner
further finds that Dryden discloses first coupling elements 35B adapted to
couple inner walls 33B, 41B and second coupling elements 35A adapted to
couple outer walls 33A, 41A, wherein coupling elements 35A, 35B prevent
relative axial movement, but allow for relative rotation. See id. (citing
Dryden, col. 5, ll. 10–20, col. 6, ll. 56–68, Fig. 1).
However, the Examiner finds that Dryden fails to disclose “a snap fit
interlocking connection such that a thickness of each of the inner walls of
the first and second connectors is equal to a combined thickness of the first
and second inner coupling elements.” Id. Nonetheless, the Examiner finds
that Webb discloses a snap-fit interlocking connection in which “a thickness
of the walls of the first and second connectors (i.e. 19, 31) is equal to a
combined thickness of the first and second inner coupling elements (i.e. 23,
33).” Id. (citing Webb, col. 3, ll. 49–55). Thus, the Examiner concludes that
it would have been obvious for a person of ordinary skill in the art “to have
provided the connection of Dryden with a snap fit interlock fit as taught by
Webb to provide the advantage of enhanced feedback and security in
connection for ease of use.” Id. at 4–5.
The Examiner further finds that the inner walls of the connector of
Dryden, as modified by Webb, do not “maintain [a] substantially constant
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thickness along the axis including across a transition between the first and
second connectors where the first and second inner coupling elements are
interlocked.” Id. at 5. As such, the Examiner relies on Clerc to teach a
connection between first and second connectors A, B, wherein the walls
“maintain [a] substantially constant thickness along the axis (X-X')
including across a transition (C) . . . where the first and second inner
coupling elements are interlocked.” Id. (citing Clerc, Fig. 1). Thus, the
Examiner determines that it would have been obvious for a person of
ordinary skill in the art “to have provided the inner and outer walls of the
first and second connectors” of Dryden, as modified by Webb, “with a
constant width and cross section across the transition as taught by Clerc to
provide reduced tendency to snag on clothing and enhanced ease of use.” Id.
at 5–6.
Appellant argues that “Webb does not disclose that a thickness of
each of the inner walls of the first and second connectors are equal to a
combined thickness of the first and second inner coupling elements.”
Appeal Br. 10. According to Appellant, “the thickness of connector 15
along an interface between a central member 31 and a first end piece 19 is
not the same as the thicknesses of the central member 31 and the first end
piece 19 alone.” Id. For a better understanding of Appellant’s contention,
we reproduce below Appellant’s annotated Figure 4 of Webb.
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Appellant’s annotated Figure 4 of Webb illustrates a thickness T1 of an end
of central member 31, a combined thickness T1 between an end of central
member 31 and outer end 23, and a thickness T2 of end piece 19.7 Id. at 9.
The Examiner responds in a similar manner and provides an annotated
Figure 4 of Webb, as reproduced below.

7 In light of Appellant’s arguments, we view Appellant’s use of T2, rather
than T1, to denote the combined thickness between an end of central member
31 and outer end 23, as a typographical error.
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The Examiner’s annotated Figure 4 of Webb illustrates a thickness T1 of an
end of central member 31, a combined thickness T2 between an end of
central member 31 and outer end 23, and a thickness T3 of end piece 19.
Examiner’s Answer (dated Mar. 25, 2021, hereinafter “Ans.”) 13. Thus,
according to the Examiner, annotated Figure 4 of Webb “shows [that]
thicknesses T1, T2, and T3 are approximately the same.” Id. (emphasis
added).
We appreciate that a drawing teaches all that it reasonably discloses
and suggests to a person of ordinary skill in the art. In re Aslanian, 590
F.2d 911, 914 (CCPA 1979). Accordingly, in a first instance, we agree with
both Appellant and Examiner that a skilled artisan would readily discern
through reasonable observation that the combined thickness T1 (as per
Appellant’s annotated Figure 4 of Webb) between an end of central
member 31 and outer end 23 is “similar in thickness to the central
member 31.” Appeal Br. 10; see also Ans. 13 (referring to thicknesses T1
and T2 in annotated Figure 4 of Webb). However, Appellant is correct that
the skilled artisan would not be able to make a similar determination with
respect to the relationship of the combined thickness T1 between an end of
central member 31 and outer end 23, and the thickness T2 of end piece 19,
which appears to be smaller. See Appeal Br. 11, 9 (Appellant’s annotated
Figure 4 of Webb).
Furthermore, we note that Webb does not specify any dimensions for
the thickness T1 of an end of central member 31, a combined thickness
between an end of central member 31 and outer end 23, and a thickness T2
of end piece 19. Therefore, as Webb does not indicate that Figure 4 is drawn
to scale, it cannot be relied upon to establish the claimed relationship of
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“equality” between the claimed thicknesses. See Hockerson- Halbertstadt,
Inc. v. Avia Group Int’l, 222 F.3d 951,956 (Fed. Cir. 2000) (patent drawings
not designated as being drawn to scale cannot be relied upon to define
precise proportions of elements if the specification is completely silent on
the issue). Accordingly, the Examiner’s finding with respect to the recited
relationship in independent claim 41 between the “thickness of each of the
inner walls of the first and second connectors” and the “combined thickness
of the first and second inner coupling elements,” as being “equal,” is not
supported by a preponderance of the evidence. See Appeal Br. 24 (Claims
App.). Moreover, we note that claim 41 recites that “thickness of each of the
inner walls of the first and second connectors” and the “combined thickness
of the first and second inner coupling elements,” are “equal,” and not
“approximately the same, ” as the Examiner asserts. See Ans. 13 (emphasis
added).
In addition to Webb, the Examiner finds that Clerc also discloses that
the “thickness of each of the inner walls of the first and second connectors”
and the “combined thickness of the first and second inner coupling
elements” are “equal”. See Final Act. 13. According to the Examiner,
“Clerc teaches flush portions that maintain [a] substantially constant
thickness along the axis (X-X') including across a transition (C) between the
first and second connectors [A, B],” and, thus, “Clerc teaches [that] the
thickness of the walls A, B equals the thickness of the connector elements.”
Id. at 13; Ans. 14. For a better understanding, we reproduce below the
Examiner’s annotated Figure 1 of Clerc.
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The Examiner’s annotated Figure 1 of Clerc illustrates a thickness T1
of first connector A, a combined thickness T2 between an end of first
connector A and an end of second connector B, and a thickness T3 of second
connector C. Ans. 13. The Examiner finds that “thicknesses Tl, T2, and T3
are the same.” Id. at 14.
We, thus, understand the Examiner’s position to be that modifying the
inner and outer walls of Dryden’s first and second connectors 33, 41, as
modified by Webb’s snap-fit connection, to have Clerc’s “constant width
and cross section” would result in the “thickness of each of the inner walls
of the first and second connectors . . . [being] equal to . . . the combined
thickness of the first and second inner coupling elements.”
We appreciate that a combination of teachings does not necessarily
require that the structure taught by one of the references be bodily
incorporated into the structure of the other reference, and, thus, that “Clerc is
relied on [by the Examiner] for the connection design in which connecting
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portions lie flush.” Ans. 14; see also Final Act. 14 (“Clerc is relied on for
the flush connection design.”). However, we fail to see in what manner the
inner and outer walls of Dryden’s first and second connectors 33, 41, as
modified by Webb’s snap-fit connection, are to be modified to have “a
constant width and cross section,” as per Clerc. Appellant is correct that
Webb’s snap-fit connection “includes a rim 37 at each of its extreme ends,
which snaps into place against the internal shoulders 24, 51.” Appeal Br. 16
(citing Webb, col. 3, ll. 51–53). Appellant is also correct that “[t]he
shoulders [24, 51], and therefore, the offset design, are necessary to achieve
the connection described in Webb.” Id. Therefore, we agree with Appellant
that “creating a constant cross-section” in the connector of Dryden, as
modified by Webb, would necessitate “removal of the shoulders,” and, thus,
“would not allow for the snap connection as described in Webb.” Id. at 17.
The Examiner’s Answer offers no rebuttal to any of Appellant’s
arguments regarding the Clerc disclosure discussed supra. In particular, the
Examiner has not adequately explained how the inner and outer walls of
Dryden’s first and second connectors 33, 41 would be modified to have “a
constant width and cross section,” as per Clerc, and, yet, include Webb’s
snap-fit connection. The Examiner’s rejection states only that it would have
been obvious to a skilled artisan to modify the inner and outer walls of
Dryden’s first and second connectors 33, 41, as modified by Webb’s snap-fit
connection, to have “a constant width and cross section” because
(1) Clerc discloses such a feature, and
(2) it would “provide reduced tendency to snag on clothing and
enhanced ease of use.” See Final Act. 13, 14; Ans. 14.

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Given that the Examiner has not adequately explained how the inner
and outer walls of Dryden’s connector have “a constant width and cross
section,” as per Clerc, and yet provide a snap-fit connection, as per Webb,
we essentially are left with an unrebutted (and as far as we can see, correct)
statement from Appellant that the modification would render the connector
inoperable. Therefore, the Examiner’s legal conclusion of obviousness is
not supported by sufficient factual evidence, and thus, cannot stand. See In
re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (holding that “[t]he legal
conclusion of obviousness must be supported by facts. Where the legal
conclusion is not supported by facts it cannot stand.”).
In conclusion, for the foregoing reasons, we do not sustain the
rejection under 35 U.S.C. § 103(a) of independent claim 41, and its
dependent claims 42–71 and 73–83 as unpatentable over Dryden, Webb, and
Clerc. See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988) (If an
independent claim is nonobvious under 35 U.S.C. § 103, then any claim
dependent therefrom is nonobvious).

CONCLUSION

Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
82 112, 2nd
paragraph
Indefiniteness 82
41–71,
73–83
103(a) Dryden, Webb,
Clerc
41–71,
73–83
Overall
Outcome
82 41–71,
73–81, 83

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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 IN PART