Drägerwerk AG & Co. KGaA

Patent Trials and Appeals Board

May 14, 2021

2020006554 (P.T.A.B. May. 14, 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.
14/785,108 10/16/2015 Thomas GRASSL 75212 9218
23872 7590 05/14/2021
MCGLEW & TUTTLE, PC
P.O. BOX 9227
SCARBOROUGH STATION
SCARBOROUGH, NY 10510-9227
EXAMINER
STUART, COLIN W
ART UNIT PAPER NUMBER
3785
MAIL DATE DELIVERY MODE
05/14/2021 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte THOMAS GRASSL, GERD WOTHA, and
MEINHARD BRAEDEL
____________

Appeal 2020-006554
Application 14/785,108
Technology Center 3700
____________

Before BIBHU R. MOHANTY, MICHAEL C. ASTORINO, and
MICHAEL L. HOELTER, Administrative Patent Judges.

MOHANTY, 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, 2, and 4–21. We have jurisdiction
under 35 U.S.C. § 6(b). Oral arguments were presented on May 10, 2021 by
telephone.

SUMMARY OF THE DECISION
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 Drägerwerk AG &
Co. KgaA. (Appeal Br. 1).
Appeal 2020-006554
Application 14/785,108

2

CLAIMED SUBJECT MATTER
The Appellant’s claimed invention relates to ventilation tube unit for
connection to a medical ventilator (Spec., para. 2). Claim 1, reproduced
below, is representative of the subject matter on appeal.

1. A ventilation tube unit for connection to a medical
ventilator, the ventilation tube unit comprising:
an outer tube comprising a first outer tube part, a second
outer tube part and a tubular connection device comprising at
least one jacket-side branch for connecting a medical unit, the
connection device being arranged between the first outer tube
part and the second outer tube part of the outer tube, the outer
tube comprising an outer tube interior space defining at least a
portion of a first fluid flow path;
an inner line arranged within the outer tube, the inner line
comprising an inner line interior space defining a second fluid
flow path; and
two port connectors, between which the outer tube and
the inner line extend, wherein each of the port connectors is
connected by a corresponding inner line port to one end of the
inner line and by a corresponding outer tube port to an end of
the outer tube, the end of the outer tube and the one end of the
inner line being located on the same side, wherein each outer
tube part comprises a variable length structure with a length that
is variable between a compressed state and an expanded state,
and the connection device is displaceable in a longitudinal
direction relative to the inner line by compressing one outer
tube part and correspondingly expanding the other outer tube
part.

Appeal 2020-006554
Application 14/785,108

3

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Name Reference Date
Rosenkoetter US 5,894,839 Apr. 20, 1999
Reinboth US 2010/0122702 A1 May 20, 2010
Chang US 2010/0252035 A1 Oct. 7, 2010
Dhuper US 7,870,857 B2 Jan. 18, 2011

The following rejections are before us for review:
1. Claims 1, 2, 4–11, 16–18, and 21 are rejected under 35 U.S.C.
§ 103 as unpatentable over Chang and Dhuper.
2. Claims 19 and 20 are rejected under 35 U.S.C. § 103 as
unpatentable over Chang, Dhuper, and Reinboth.
3. Claims 12 and 13 are rejected under 35 U.S.C. § 103 as
unpatentable over Chang, Dhuper, and Rosenkoetter.
4. Claims 14 and 15 are rejected under 35 U.S.C. § 103 as
unpatentable over Chang, Dhuper, Rosenkoetter, and Reinboth.

FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence.2

2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
Appeal 2020-006554
Application 14/785,108

4

ANALYSIS
The Appellant argues that the rejection of claim 1 as unpatentable
over Chang and Dhuper is improper because one of ordinary skill in the art
would not have combined the cited prior art teachings as asserted in the
rejection (Appeal Br. 15).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Act. 5, 6; Ans. 4–8).
We agree with the Appellant. Claim 1 requires in part:
two port connectors, between which the outer tube and
the inner line extend, wherein each of the port connectors is
connected by a corresponding inner line port to one end of the
inner line and by a corresponding outer tube port to an end of
the outer tube.

(Claim 1, emphasis added). The rejection of record cites to Chang as
disclosing outer tubes (50, 40), two port connectors, (80, 70), and an inner
line (20) (Final Act. 5). Here, the cited claim limitation above requires that
“each of the port connectors is connected by a corresponding inner line port
to one end of the inner line.” In the Chang reference the port connector (70)
is not connected to a corresponding inner line port (21) but rather connected
to member (75). The rejection of record fails to account for this deficiency
in the citation to the Dhuper reference (Final Act. 6).
Claim 1 further requires the outer tube part to include “a variable
length structure with a length that is variable between a compressed state
and an expanded state, and the connection device is displaceable in a
longitudinal direction relative to the inner line by compressing one outer
tube part and correspondingly expanding the other outer tube part.”
Appeal 2020-006554
Application 14/785,108

5

In KSR International Company v. Teleflex Incorporated, 550 U.S. 398
(2007) the Supreme Court at page 418 noted that in an obviousness analysis
that “[r]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” Initially, the cited combination fails to account for the
requirement that “each of the port connectors is connected by a
corresponding inner line port to one end of the inner line.” Further, the cited
rejection lacks articulated reasoning with rational underpinnings to support a
conclusion of obviousness. Dhuper does disclose a device in Figure 5 with
expandable and compressible outer lines (592, 594, 530), but the reference
does not contain a citation to an inner line. Further, in the Chang reference
portions of the outer tube (50, 40) and inner tube (20) also have a “spaced
rib” structure which will already allow for some degree of flexibility in
bending in both tubes (50, 40) to prevent some level of bending stresses.
Here, the rejection of record fails to account for all the limitations in the
claim and further lacks articulated reasoning with rational underpinnings to
support the references being combined in the rejection to meet the claimed
limitations without impermissible hindsight. Accordingly, the rejection of
claim 1 and its dependent claims is not sustained. The remaining
independent claims 16 and 21 are drawn to similar subject matter and the
rejection of these claims and their dependent claims is not sustained for the
same reasons given above.

Appeal 2020-006554
Application 14/785,108

6

CONCLUSIONS OF LAW
We conclude that Appellant has shown that the rejection of claims 1,
2, 4–11, 16–18, and 21 under 35 U.S.C. § 103 as unpatentable over Chang
and Dhuper is improper.
We conclude that Appellant has shown that the rejection of claims 19
and 20 under 35 U.S.C. § 103 as unpatentable over Chang, Dhuper, and
Reinboth is improper.
We conclude that Appellant has shown that the Examiner rejection of
claims 12 and 13 under 35 U.S.C. § 103 as unpatentable over Chang,
Dhuper, and Rosenkoetter is improper.
We conclude that Appellant has shown that rejection of claims 14 and
15 under 35 U.S.C. § 103 as unpatentable over Chang, Dhuper,
Rosenkoetter, and Reinboth is improper.

Appeal 2020-006554
Application 14/785,108

7

DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 4–11,
16–18, 21
103 Chang, Dhuper 1, 2, 4–11,
16–18, 21
19, 20 103 Chang, Dhuper,
Reinboth
19, 20
12, 13 103 Chang, Dhuper,
Rosenkoetter
12, 13
14, 15 103 Chang, Dhuper,
Rosenkoetter,
Reinboth
14, 15
Overall
Outcome
1, 2, 4–21

REVERSED