Ex Parte Choi et al

Patent Trial and Appeal Board

Jul 20, 2016

13087629 (P.T.A.B. Jul. 20, 2016)

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.
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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.
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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
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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)
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(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.
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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
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