ResMed Pty LtdDownload PDFPatent Trials and Appeals BoardJun 1, 20212021003410 (P.T.A.B. Jun. 1, 2021) Copy Citation 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.). Appeal 2021-003410 Application 14/926,633 2 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. Appeal 2021-003410 Application 14/926,633 3 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. Appeal 2021-003410 Application 14/926,633 4 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 Appeal 2021-003410 Application 14/926,633 5 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. Appeal 2021-003410 Application 14/926,633 6 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. Appeal 2021-003410 Application 14/926,633 7 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 Appeal 2021-003410 Application 14/926,633 8 “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. Appeal 2021-003410 Application 14/926,633 9 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 Appeal 2021-003410 Application 14/926,633 10 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. Appeal 2021-003410 Application 14/926,633 11 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 Appeal 2021-003410 Application 14/926,633 12 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 Copy with citationCopy as parenthetical citation