3M INNOVATIVE PROPERTIES COMPANY

Patent Trials and Appeals Board

May 4, 2021

2020005946 (P.T.A.B. May. 4, 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.
15/519,562 04/17/2017 Christopher R. Kokaisel 75756US004 2701
32692 7590 05/04/2021
3M INNOVATIVE PROPERTIES COMPANY
PO BOX 33427
ST. PAUL, MN 55133-3427
EXAMINER
GALLEGOS, CANA A
ART UNIT PAPER NUMBER
3785
NOTIFICATION DATE DELIVERY MODE
05/04/2021 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):
LegalUSDocketing@mmm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER R. KOKAISEL and
IAN MACMURRAY

Appeal 2020-005946
Application 15/519,562
Technology Center 3700
Before JENNIFER D. BAHR, BRETT C. MARTIN, and
CARL M. DEFRANCO, Administrative Patent Judges.
DEFRANCO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s final rejection of claims 1 and 3–20. We have jurisdiction under
35 U.S.C. § 6(b). We reverse.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as 3M
Innovative Properties Company. Appeal Br. 2.

Appeal 2020-005946
Application 15/519,562

2
CLAIMED SUBJECT MATTER
Of the claims on appeal, claims 1, 14, and 20 are independent.
Claim 1 recites a “breathing tube retainer,” while claim 14 recites a
“supplied air respirator” and claim 20 recites a “method of using a
respirator.” Appeal Br. (Claims App.). Claim 1 is representative and
reproduced below.
1. A breathing tube retainer comprising:
a mask attachment portion configured to connect the
retainer to a face mask of a respirator; and
a tube attachment portion comprising an arm that
connects the tube attachment portion to the mask attachment
portion, wherein the tube attachment portion further comprises
a tube receiver configured to receive a breathing tube of the
respirator, wherein the retainer is configured to position the
breathing tube adjacent a shoulder and neck of a user of the
respirator.

Id. (emphasis added).
EXAMINER’S REJECTIONS2
1. Claim 20 stands rejected under 35 U.S.C. § 102(a)(1) as
anticipated by Kwok (US 6,044,844, iss. Apr. 4, 2000). Final Act. 4.
2. Claims 1, 3, 5, 11, and 12 stand rejected under 35 U.S.C. § 103 as
unpatentable over Chien (US 2013/0068231 A1, pub. Mar. 21, 2013) and
Kwok. Final Act. 5–8.
3. Claims 1, 4–9, and 13 stand rejected under 35 U.S.C. § 103 as
unpatentable over Reier (US 2007/0235033 A1, pub. Oct. 11, 2007),
Reischel (US 5,924,420, iss. July 20, 1999), and Chien. Final Act. 8–12.

2 The Examiner withdrew rejections under 35 U.S.C. § 112(a) (see Ans. 3)
and § 112(b) (see Advisory Act. dated Feb. 28, 2020).
Appeal 2020-005946
Application 15/519,562

3
4. Claims 10 and 14–19 stand rejected under 35 U.S.C. § 103 as
unpatentable over Reier, Chien, and Niewiadomski (US 2015/0075523 A1,
pub. Mar. 19, 2015). Final Act. 13–15.
ANALYSIS
Central to our analysis of the Examiner’s rejections is the following
limitation common to all the independent claims: “wherein the retainer is
configured to position the breathing tube adjacent a shoulder and neck of a
user of the respirator.” We address each of the Examiner’s prior art
rejections in the context of that disputed limitation.
A. Anticipation (Claim 20)
The Examiner rejects claim 20 as anticipated by Kwok, finding that
Kwok’s retainer 10 is configured to position breathing tube 18 “adjacent a
shoulder and neck of a user of the respirator.” Ans. 3–4 (citing Kwok,
Fig. 1). In support of that finding, the Examiner points to the Specification’s
definition of “adjacent a shoulder” as meaning “that an element or device is
positioned closer to the shoulder of the user th[a]n to a torso of the user” and
also points to Merriam Webster’s dictionary definition of “adjacent” as
meaning “nearby.” Id. at 4 (citing Spec. 6:31–33). From there, the
Examiner’s reasons that, “[w]hen looking to Fig. 1 of Kwok, the location of
the breathing tube is closer to the neck of the user than to the torso and the
breathing tube is also nearby the neck of the user.” Id. at 15.
Appellant disputes the Examiner’s finding that Kwok’s retainer
positions the breathing tube “adjacent a shoulder and neck of the user.”
Appeal Br. 10 (emphasis added). According to Appellant, Kwok’s breathing
tube retainer 10 includes yoke 20, which directs breathing tube 18 upward
around the user’s head and then laterally away from the user’s head, thereby
Appeal 2020-005946
Application 15/519,562

4
preventing the breathing tube from being adjacent either the shoulder or
neck of the user. Id. at 10–11. Appellant adds that, even given the
Examiner’s definition of the term “adjacent,” Kwok’s retainer 10 does not
position breathing tube 18 “‘nearby’ the neck of the user but instead directs
the tube away from the neck.” Reply Br. 2.
We agree with Appellant. At the outset, we note that the
Specification’s definition of “adjacent a shoulder” simply specifies that
positioning the breathing tube adjacent the torso would be too low to be
considered “adjacent a shoulder;” it does not change the ordinary and
customary meaning of the term “adjacent” as used in the context of the
claim. With that in mind, nowhere do we discern that Kwok teaches or
suggests that Kwok’s breathing tube 18 is positioned adjacent a shoulder and
neck of the user. As plainly shown in Figure 1 of Kwok, yoke 20 and tube
receiver 20a divert the breathing tube upward around the user’s ear and
away from the user’s neck. Indeed, Kwok expressly discloses that the tube
be positioned “on the head of the wearer” so as to prevent the tube from
being “inadvertently pulled by movement of the wearer, particularly during
sleep.” Kwok, 1:17–41. That disclosure suggests that, if the tube was
positioned elsewhere, such as near the neck and shoulders of the wearer, it
would be subject to being pulled whenever the wearer moved or rolled over
during sleep. Moreover, Kwok discloses elsewhere that the breathing tube is
positioned so that it “has a large frictional contact area with the head” and
“lays flat against the head,” thereby making the breathing tube “more
resistant to pulling.” Id. at 4:29–37.
Taken together, those disclosures indicate that Kwok’s breathing tube
is configured to be positioned around the user’s head in a way that
Appeal 2020-005946
Application 15/519,562

5
completely bypasses potential pulling movement from the neck and
shoulders. Thus, we are persuaded of error in the Examiner’s finding that
Figure 1 of Kwok depicts the breathing tube as being adjacent the shoulders
and neck of the user. As such, we reverse the Examiner’s anticipation
rejection of claim 20.
B. Obviousness (Claims 1, 3, 5, 11, and 12)
In rejecting claim 1 as obvious over Chien and Kwok, the Examiner
relies on Kwok, rather than Chien, for teaching the disputed claim limitation
reciting that “the retainer is configured to position the breathing tube
adjacent a shoulder and neck of a user.” See Ans. 5–6. But, in doing so, the
Examiner does not remedy Kwok’s unequivocal disclosure that the breathing
tube is positioned around the head of the user rather than adjacent the neck
and shoulder of the user, which, as discussed above, Kwok emphasizes as
being critical to preventing the tube from being inadvertently pulled during
sleep. Thus, for the same reasons discussed above with respect to the
Examiner’s anticipation rejection based on Kwok alone, we reverse the
Examiner’s obviousness rejection of claim 1, which likewise errs in relying
on Kwok. We also reverse the rejection of claims 3, 5, 11, and 12, as they
depend from claim 1.
C. Obviousness (Claims 1, 4–9, and 13)
The Examiner rejects claims 1, 4–9, and 13 as obvious over Reier,
Chien, and Reischel. Ans. 7–11. The Examiner does not rely on either
Reier or Reischel for teaching the disputed limitation that “the retainer is
configured to position the breathing tube adjacent a shoulder and neck of a
user.” Id. at 8–10. Instead, the Examiner points to Chien’s teaching of a
breathing tube “positioning device” that is mounted on a strap “on the top of
Appeal 2020-005946
Application 15/519,562

6
a user’s head” and “is rotatable to account for possible change of position of
the breathing device.” Id. at 9–10. And in combining the teachings of Reier
and Chien, the Examiner reasons that a skilled artisan would have known
that Reier’s head harness could be modified to include Chien’s positioning
device and, in doing so, the breathing tube would be “capable of passing
directly next to the neck and shoulders of the user before rising up toward
the tube retainer at the top of the head.” Id. at 18–19 (depicting the
Examiner’s proposed modification of Reier).
We do not find the Examiner’s reasoning persuasive. More
persuasive is Appellant’s position that a skilled artisan would understand
from Chien’s teaching that Reier’s head harness would be modified such that
the breathing tube passes directly in front of the user’s face and over the top
of the user’s head, thereby keeping the tube away from the neck and
shoulder of the user. Appeal Br. 19; Reply Br. 6–7 (arguing that “[e]ven
under the Examiner’s definition of the term ‘adjacent,’ one of skill in the art
would not consider the breathing tube of the modified Reier et al. mask as
being ‘nearby’ the shoulder and neck of the user as it extends away from the
shoulder and neck to the top of the user’s head”). That is because the
Examiner’s proposed modification of Reier would entail turning and
twisting the breathing tube in a way that Chien expressly seeks to avoid.
More specifically, Chien teaches positioning the breathing tube so that
it passes directly in front of a user’s face and over the top of the user’s head
so as “to prevent accidental fall or swing” of the breathing tube and to
“prevent the breathing tube . . . from curving or twisting.” Chien ¶¶ 38, 41.
Chien’s avoidance of unwanted twisting and turning and swinging of the
tube means that the tube “is assured to smoothly convey air or oxygen.” Id.
Appeal 2020-005946
Application 15/519,562

7
¶ 41. But the Examiner’s proposed modification, which incorporates twists
and turns and more play in the tube, stands in stark contrast to those
teachings by Chien. See Ans. 18–19 (depicting the Examiner’s proposed
modification of Reier). Indeed, we see the twists and turns of the
Examiner’s proposed modification of Reier’s breathing tube as more likely
than not interfering with the tube’s smooth conveyance of air or oxygen, all
of which Chien expressly seeks to avoid. Thus, because Chien does not
support the Examiner’s reasoning of how Reier would have been modified to
include a retainer that positions the breathing tube adjacent the neck and
shoulder, we are persuaded of reversible error in the Examiner’s rejection of
claims 1, 4–9, and 13 as obvious over Reier, Chien, and Reischel.
D. Obviousness (Claim 10)
Claim 10 depends from claim 1. In rejecting claim 10, the Examiner
does not cure the deficiency in his reasoning for the rejection of claim 1.
See Ans. 12. Thus, for the same reasons discussed above with respect to
claim 1, we reverse the Examiner’s obviousness rejection of dependent
claim 10.
E. Obviousness (Claims 14–19)
In rejecting independent claim 14 (and its dependents) as obvious over
Reier, Chien, and Niewiadomski, the Examiner again relies on Chien for
teaching the same disputed limitation already discussed above with respect
to claim 1. See Ans. 12–14. But, as with the obviousness rejection of
claim 1, the Examiner fails to remedy the deficiency of how Reier would be
modified to include a retainer configuration in which the breathing tube is
positioned adjacent the neck and shoulder of the user. See id. Thus, for the
same reasons discussed above with respect to the Examiner’s rejection of
Appeal 2020-005946
Application 15/519,562

8
claim 1, we likewise reverse the Examiner’s obviousness rejection of
independent claim 14, as well as claims 15–19 depending therefrom.
CONCLUSION
Claim(s)
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
20 102(a)(1) Kwok 20
1, 3, 5, 11, 12 103 Chien, Kwok 1, 3, 5, 11,
12
1, 4–9, 13 103 Reier, Chien,
Reischel
1, 4–9, 13
10, 14–19 103 Reier, Chien,
Niewiadomski
10, 14–19
Overall
Outcome
1, 3–20
REVERSED