Ex Parte Choi et alDownload PDFPatent Trial and Appeal BoardJul 20, 201613087629 (P.T.A.B. Jul. 20, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/087,629 04/15/2011 32692 7590 07/22/2016 3M INNOVATIVE PROPERTIES COMPANY PO BOX 33427 ST. PAUL, MN 55133-3427 FIRST NAMED INVENTOR Dong-II Choi 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 67345US002 6639 EXAMINER TSAI, MICHAEL JASPER ART UNIT PAPER NUMBER 3771 NOTIFICATION DATE DELIVERY MODE 07/22/2016 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 DONG-II CHOI, KYOUNG-HO LEE, JIN-HO LEE, BONGHYUP KANG, and DONG-SUN NOH Appeal2014--005535 Application 13/087,629 1 Technology Center 3700 Before ANNETTE R. REIMERS, JILL D. HILL, and THOMAS F. SMEGAL, Administrative Patent Judges. SMEGAL, Administrative Patent Judge. DECISION ON APPEAL Appellants appeals under 35 U.S.C. § 134(a) from a final rejection of claims 1--4 and 6-17, which are all the pending claims in this application. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner's Final Rejection under 35 U.S.C. § 103(a) of claims 1--4, 6, 8-11, 14, and 15 as unpatentable over Rekow (US 2001/0013347 Al, pub. Aug. 16, 2001) 1 According to Appellants, the real party in interest is 3M Company. Appeal Br. 2. Appeal2014--005535 Application 13/087,629 and Reischel (US 5,924,420, iss. July 20, 1999); claims 7, 16, and 17 as unpatentable over Rekow, Reischel, and White (US 4,739,755, iss. Apr. 26, 1988); and claims 12 and 13 as unpatentable over Rekow, Reischel, and Castiglione (US 6,729,332 Bl, iss. May 4, 2004).2 CLAIMED SUBJECT MATTER Claims 1 and 10 are independent. Claim 1 is reproduced below and illustrates the claimed subject matter, with the disputed limitation emphasized. 1. A respirator that comprises: (a) a mask body that comprises: (i) a central portion that compnses a rigid first thermoplastic material; (ii) a peripheral portion that comprises a compliant second thermoplastic material, wherein the first thermoplastic material is welded to the second thermoplastic material to create a hermetic seal bet\'l/een the central portion and the peripheral portion; and (b) at least one filter cartridge that is secured to the rigid central portion. ANALYSIS Obviousness of Claims 1--4, 6, 8-11, 14, and 15 over Rekow and Reischel Appellants argue claims 1--4, 6, 8-11, 14, and 15 together in contesting the rejection of these claims as obvious over Rekow and Reischel. See Appeal Br. 3-7 and Reply Br. 2--43. We select claim 1 as the 2 Claim 5 has been canceled. Id. 3 We have assigned consecutive numbering to the pages of the Reply Brief. 2 Appeal2014--005535 Application 13/087,629 representative claim for this group, and the remaining claims stand or fall with claim 1. See 37 C.F.R. 41.37(c) (l)(iv). We have considered Appellants' arguments raised in the Appeal Brief and Reply Brief, but do not find them persuasive to demonstrate error in the Examiner's rejection of claim 1 as being obvious over Rekow and Reischel. In rejecting claim 1, the Examiner finds that Rekow discloses a respirator 10 comprising a mask body 16 having a rigid structural central portion 30 and a soft compliant peripheral portion 28, and relies on Reischel for teaching "a mask body 10 with a central portion 50 and face contacting member 14 that [are] welded together." See Final Act. 2-3 (citing Reischel, Abstract). Based upon the foregoing, the Examiner reasons that "it would have been obvious ... to modify the first thermoplastic material and the second thermoplastic material of Rekow to be welded together as taught by Reischel in order to permanently fix the central portion to the face contacting member." Id. at 3. Appellants take issue with the analysis and conclusions presented in the Final Action, first contending that "Reischel does not teach or suggest the welding of a first thermoplastic material in the central portion of a mask body to a second thermoplastic material in the peripheral portion." Appeal Br. 4. In restating this contention, Appellants also assert that "both Rekow and Reischel fail to teach or suggest the basic feature of the present invention, namely, the welding of a mask body central portion to a mask body peripheral portion," because the portion of Reischel that the Examiner cites "only discusses the welding of the bayonet connector 50 to the lens 14." Id. at 5---6. 3 Appeal2014--005535 Application 13/087,629 However, as the Examiner explains, "Reischel is only relied upon for the process of welding a first thermoplastic material to a second thermoplastic material." Ans. 7. Nonobviousness cannot be established by attacking references individually when the rejection is predicated upon a combination of prior art disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The Examiner also points out that "[t]he Rekow reference discloses all of the structural elements as claimed including the central portion 30 (rigid structural portion) and peripheral portion 28 (soft compliant portion)," and that "Rekow further specifies that the two components are hermetically sealed (face piece can be made, for example, as disclosed in U.S. Pat. No 5,062,421 )," where at "col. 4, lines 18-30, a face piece and insert are formed together with a process [that] ensures against leakage between the facepiece and the insert." Ans. 7 (citing Rekow, i-f 27). Appellants contend that Reischel does not provide "any enabling disclosure of how to create a hermetic seal between the thermoplastic materials of the central portion and the peripheral portion." Appeal Br. at 4-- 5. However, the Examiner explains that "Reischel teaches the well-known welding process for integrating a first thermoplastic material to a second thermoplastic material in order to create a hermetic seal (creates a monolithic element)," (citing Reischel, col. 4, 11. 9-16), and reasons that "[ o ]ne of ordinary skill in the art ... would have found it obvious to use another well-known process (ultrasonic welding) [for] merging two thermoplastic materials instead of the molding process as disclosed by Rekow," to provide "an enabling disclosure on how to create a hermetic seal between thermoplastic materials and the benefits that the structure 4 Appeal2014--005535 Application 13/087,629 provides." Ans. 7-8. We agree. "[l]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Appellants argue that "[ w ]hile Reischel discusses the welding of two parts together, Reischel is not suggesting that a central portion of the mask body can be welded to a peripheral portion," nor "is Reischel suggesting that a compliant portion can be welded to a rigid portion," and conclude that "none of the cited documents suggest that a sturdy weld could successfully achieve a hermetic seal in a respiratory mask." Appeal Br. 7. However, the Examiner has the better position, explaining that "Reischel teaches the merging of two components rather than mechanical fastening to create a hermetic seal (glued to, welded, molded or otherwise formed with ... to form a monolithic continuous element)." Ans. 8 (citing Reischel, col. 4, 11. 5-20). Again we agree. Appellants contend at page 5 of the Appeal Brief that because "both Rekow and Reischel fail to teach or suggest the basic feature of the present invention, namely, the welding of a mask body central portion to a mask body peripheral portion," that they "also fail to address the benefits that this structure provides." Appellants repeat this contention in the Reply Brief, asserting that "the Examiner has not cited any art that recognizes the benefits ... that are achieved when the compliant part of a mask body is welded to a rigid peripheral portion." Reply Br. 4. However, Appellants' contention amounts to unsupported attorney argument, and thus is entitled to little, if any, weight. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) 5 Appeal2014--005535 Application 13/087,629 (holding that arguments and conclusions unsupported by factual evidence carry no evidentiary weight). Further, Appellants' contention that the cited prior art fails to "recognize[] the benefits" of welding a mask body central portion to a mask body peripheral portion (see Appeal Br. 5; Reply Br. 4), is not commensurate with the scope of the claims and therefore is not persuasive. Limitations not appearing in the claims cannot be relied upon for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). Moreover, it is well established that the reason to modify the reference may often prompt a person of ordinary skill in the art to do what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggests the combination to achieve the same advantage or result discovered by an applicant. In re Kahn, 441 F.3d 977, 987-88 (Fed. Cir. 2006). Here, as discussed above, Appellants do not apprise us of error in the Examiner's findings and conclusions based on the combined teachings of Rekow and Reischel. For the foregoing reasons, we are not persuaded that the Examiner erred in rejecting claims 1--4, 6, 8-11, 14, and 15 as obvious over Rekow and Reischel. Obviousness of claims 7, 16, and 17 over Rekow, Reischel, and White; and Claims 12 and 13 over Rekow, Reischel, and Castiglione Other than observing that neither White nor Castiglione "teach or suggest the welding of a mask body central portion to a mask body peripheral portion," Appellants do not separately argue dependent claims 7, 12, 13, 16, and 17. See Appeal Br. 5---6. For the reasons set forth above, Appellants have not demonstrated error in the rejection of claim 1. 6 Appeal2014--005535 Application 13/087,629 Accordingly, we likewise sustain the rejection of dependent claims 7, 12, 13, 16, and 17. DECISION We AFFIRM the Examiner's rejections of claims 1--4 and 6-17. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation