Ex Parte Gunaratnam et al

Patent Trial and Appeal Board

May 23, 2017

11962621 (P.T.A.B. May. 23, 2017)

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.
11/962,621 12/21/2007 Michael K. GUNARATNAM PTB-4398-807 8448
23117 7590 05/25/2017
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
STANIS, TIMOTHY A
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
05/25/2017 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 MICHAEL K. GUNARATNAM,
PHILIP R. KWOK,
ROBIN G. HITCHCOCK,
LEE J. VELISS,
MEMDUH GUNEY,
RICHARD SOKOLOV,
PERRY D. LITHGOW,
DONALD DARKIN, and
SUSAN R. LYNCH
Appeal 2015-006273
Application 11/962,621
Technology Center 3700
Before MICHAEL L. HOELTER, NATHAN A. ENGELS, and
BRENT M. DOUGAL, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from a final
rejection of claims 53—58, 60-62, 64—67, 69-71, 73—87, and 89. Final Act.
1 (Office Action Summary). Claims 1—52, 59, 63, 68, 72, and 88 have been
Appeal 2015-006273
Application 11/962,621
canceled. App. Br. 19-28 (Claims Appx.). We have jurisdiction under 35
U.S.C. § 6(b). We AFFIRM.
THE CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to a nasal assembly used for
treatment, e.g., of Sleep Disordered Breathing (SDB) with Continuous
Positive Airway Pressure (CPAP) or Non-invasive Positive Pressure
Ventilation (NPPV).” Spec. 11. Claims 53, 66, 67, 74, 84, and 85 are
independent. Claim 53 is illustrative of the claims on appeal and is
reproduced below:
53. A headgear assembly for securing a nozzle arrangement
of a nasal pillows mask in a desired adjusted position on the
face of a patient's head, said nozzle arrangement including a
base portion and a pair of nasal pillows projecting from the base
portion, said headgear assembly including:
a rear portion formed from a soft and flexible strap
material and including an adjustable top strap arrangement
structured to pass over a top portion of the patient's head and a
rear strap arrangement structured to pass over a rear portion of
the patient's head; and
a pair of side portions, each side portion being structured
to extend from the rear portion towards the nozzle arrangement;
wherein the adjustable top strap arrangement includes
first and second top strap portions structured to pass over the
top of the patient's head and a top strap buckle arrangement
adjustably coupling together the top strap portions, the top strap
buckle arrangement being structured to allow symmetrical
adjustment of the headgear assembly, by allowing the tension in
the first and second top strap portions to be symmetrically
altered, the top strap buckle arrangement being configured to be
centrally located on the head of the patient, and wherein the
headgear assembly does not include a chin strap, and does not
include a strap adapted to extend adjacent to and contact the
patient's forehead.
2
Appeal 2015-006273
Application 11/962,621
REFERENCES RELIED ON BY THE EXAMINER
Trimble
Trethewey
Kwok (“Kwok ’844”)
Correa
Kwok (“Kwok ’207”)
Amarasinghe
US 4,782,832
US 5,548,871
US 6,044,844
US 6,119,694
US 6,494,207 B1
WO 02/47749 A1
Nov. 8, 1988
Aug. 27, 1996
Apr. 4, 2000
Sept 19, 2000
Dec. 17, 2002
June 20, 2002
THE REJECTIONS ON APPEAL
Claims 53—58, 60-62, 64—66, 74—87 and 89 are rejected under 35
U.S.C. § 103(a) as unpatentable over Correa, Trimble, Trethewey, and
Amarasinghe.1 2
Claims 67 and 69-71 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Correa, Trimble, Trethewey, Amarasinghe, and Kwok
’844.
Claim 73 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Correa, Trimble, Trethewey, Amarasinghe, Kwok ’844, and Kwok ’207.
1 The Examiner listed claim 67 as one of the claims rejected, but did not
provide any basis for such rejection in the body of the rejection. See Final
Act. 3—17. “Appellants assume that claim 67 is only rejected in view of
Correa, Trimble, Trethewey, Amarasinghe and Kwok as later discussed in
the Office Action.” App. Br. 12, th 1. We agree with Appellants and
understand the Examiner’s inclusion of a reference to claim 67 in this
rejection to be inadvertent error. A similar error by the Examiner regarding
the listing of claim 71 in this rejection occurs as well.
2 The Examiner listed claims “74—88” as being rejected, but we understand
the Examiner to be referring to claims 74—87 and 89. This is because (a)
“claim 88 has been canceled” (App. Br. 12, th 2) and (b) the Examiner
addresses claim 89 in the body of the rejection (Final Act. 17), but not claim
88. We understand the Examiner’s incorrect listing to be inadvertent error.
3
Appeal 2015-006273
Application 11/962,621
ANALYSIS
Appellants present arguments for various combinations of
independent claims 53, 66, 67, 74, 84, and 85 (even though claim 67 is
rejected involving an additional reference to Kwok ’844). App. Br. 12—16.
Appellants also present separate arguments for dependent claim 58 and for
dependent claim 83. App. Br. 17. We address each of the arguments
presented by Appellants separately with the non-argued claims standing or
falling with their respective parent claim. See 37 C.F.R. § 41.37(c)(l)(iv).
Claims 53, 66, 67, 74, 84, and 85
No rear portion formed from a soft and flexible strap material
We select independent claim 53 for review. Claim 53 includes the
limitation, “a rear portion formed from a soft and flexible strap material.”
The Examiner relies on Correa for teaching this “soft and flexible” limitation
and references “Col. 3, In. 37^40” as support. Final Act. 3; see also Ans. 21.
This cited portion of Correa states, “first and second headgear members 20
and 22 are formed from a semi-rigid plastic material providing a semi-rigid
support.”3 Correa 3:37—39. The Examiner states that Correa’s teaching of
the headgear members being formed from a semi-rigid plastic material
“implies a degree of flexibility as well as some degree of ‘softness,’ as the
term ‘soft’ is a relative term.” Final Act. 3; see also Ans. 21. “In the
alternative,” the Examiner relies on the teachings of Correa as modified by
Amarasinghe that discloses strap materials “made out of a soft, flexible
3 Correa further states, “[t]he semi-rigid support retains its shape when
assembled and transfers support forces along the entire periphery of the
headgear assembly C.” Correa 3:39-41.
4
Appeal 2015-006273
Application 11/962,621
composite material comprising nylon fabric, polyurethane foam, and loop
material.” Final Act. 5 (referencing Amarasinghe 7:1—11).
Appellants address both the teachings of Correa alone (App. Br. 12—
13), and the “alternative” teaching of modifying Correa in view of
Amarasinghe (App. Br. 13—14). Regarding Correa alone, Appellants state,
“[s]emi-rigid is defined in the Oxford online dictionary as ‘stiff and solid,
but not inflexible.’” App. Br. 12—13; Reply Br. 2. As such, according to
Appellants, a semi-rigid “material is clearly not ‘soft’ as anything that
retains its shape must be firm or hard which is in direct contrast [to] the
definition of ‘soft.’” App. Br. 13; Reply Br. 2. Thus, Appellants contend,
Correa does not disclose “a ‘soft and flexible’ strap per the relevant claims”
and “that a material can be semi-rigid but not soft.”4 App. Br. 13.
Appellants’ Specification does not explicitly define the claim term
“soft” but states that the straps “may be constructed from a soft, flexible
composite material.” Spec. 1211. Other uses of the term “soft” occur in
Appellants’ Specification as well, but not specifically with respect to straps.
For example, regarding nasal nozzles 50, Appellants’ Specification states
that the associated “base portion 48 is soft and compliant” and that both the
nozzle and the base portion “may be constructed from a soft, flexible, skin-
compatible material such as silicone.” Spec. H 190, 191; see also Spec. 11
326, 328,351.
4 Regarding the claim term “flexible,” Appellants explain, “[w]hile the term
‘semi-rigid’ may imply ‘flexibility,’ to some degree, it does not imply
‘softness.’” Reply Br. 2. The Examiner finds that “a disclosure of a ‘semi­
rigid’ [material] could reasonably be considered to also be a ‘flexible’
material.” Ans. 21. As there appears to be no dispute regarding the claim
term “flexible,” the issue thus centers on the claim term “soft.”
5
Appeal 2015-006273
Application 11/962,621
As noted above, Appellants’ Specification describes silicone as a
“soft, flexible” material. Spec. Tflf 191, 328. Appellants’ Specification also
describes silicone as “a harder material” “to prevent kinking or occlusion.”
Spec. 1259; see also Spec. 299, 307. Accordingly, Appellants’
specification describes silicone both as being “soft” as well as in terms of its
“hardness” (i.e., “semi-rigid”) to avoid crushing. Spec. Tflf 299, 307.
Consequently, as per Appellants’ Specification, the terms “soft” and “semi­
rigid” (defined above as “stiff and solid, but not inflexible,” i.e., having
some “hardness”) are not mutually exclusive properties of a material. In
other words, as per Appellants’ Specification, a single material can have
both characteristics. Thus, we are not in agreement with Appellants’
contention “that a material can be semi-rigid but not soft.” App. Br. 13.
In view of the above understanding of the claim term “soft,” we are
not persuaded the Examiner was wrong when finding that Correa’s strap
material can also be described as “soft.” Final Act. 3. Accordingly, we are
not persuaded the Examiner erred in relying on Correa’s disclosure of
strapping material “formed from a semi-rigid plastic material providing a
semi-rigid support” (Correa 3:37—39) as teaching the limitation of a “soft
and flexible strap material.”
Regarding the “alternative” combination of Correa and Amarasinghe,
Appellants contend that modifying Correa in this manner “would render the
Correa device unsatisfactory for its intended purpose of transferring support
forces along the entire periphery of the headgear assembly C.” App. Br. 13—
14; Reply Br. 2. Amarasinghe teaches a strap “for securing and positioning
a mask” and “for holding and securing a mask” in order to improve “patient
comfort.” Amarasinghe Abstract, 5:16—20. In view of such teachings in
6
Appeal 2015-006273
Application 11/962,621
Amarasinghe, Appellants do not explain how Amarasinghe’s nylon fabric
straps would preclude the ability to transfer support forces along the
headgear for proper securement (and sealing), which are objects of Correa’s
device. See App. Br. 14; Reply Br. 3; Correa 1:47—50.
Accordingly, we are not persuaded of Examiner error. We sustain the
Examiner’s stated rejection of these claims on this point.
Claim 67
Correa in view of Kwok ’844 renders the Correa device unsatisfactory
The Examiner acknowledged that Correa does not have adjustable
side straps that are connected “via a side strap buckle arrangement” as
recited. Final Act. 18. The Examiner relies on Kwok ’844 for such
teaching, and specifically “buckle slot 23” depicted in figure 2 thereof.
Final Act. 18.
Appellants explain that Correa teaches a connector assembly that can
be “readily attached linearly and ‘at any angle’ with respect to the
headgear.” App. Br. 15 (referencing Correa 3:44—55); see also Reply Br. 3,
4. In contrast, modifying Correa as suggested “would restrict. . . Correa to
having a fixed angular position” and that such a “modification would render
the Correa device unsatisfactory for its intended purpose” which is to permit
attachment “at any angle.” App. Br. 15; Reply Br. 3; see also Reply Br. 4—5.
The Examiner disagrees with Appellants’ assertion that the intended
purpose of Correa is to permit attachment “at any angle.” Ans. 22. Correa
does describe the straps as enabling such a manner of attachment (Correa
3:50—52), but the Examiner states that the intended purpose of Correa is to
provide a mask “that is comfortable to wear.” Ans. 22—23 (referencing
Correa 1:47—55). Indeed, this section of Correa states, “it is an object of the
7
Appeal 2015-006273
Application 11/962,621
present invention to provide a nasal mask which is comfortable to wear by a
patient and which is easily secured for providing a seal around the nares of a
patient.” Correa 1:47—50. Hence, comfort and easy securement (to achieve
a nasal seal) are both stated objects of Correa’s device.
Regarding the use of Kwok ’844’s buckle arrangement, the Examiner
explains, “[ujsing a buckle instead of the hook and loop connectors [of
Correa] may limit certain angle positioning of the nasal mask on the user,
but may provide tightening benefits that result in greater comfort for the
user.” Ans. 23. Appellants acknowledge, “there may be some advantage to
the modification” but contend, “the proposed modification can still render
the primary reference unsatisfactory for its intended purpose.” App. Br. 15.
Our reviewing court has provided instruction stating, “[t]he fact that
the motivating benefit comes at the expense of another benefit, however,
should not nullify its use as a basis to modify the disclosure of one reference
with the teachings of another. Instead, the benefits, both lost and gained,
should be weighed against one another.” Winner Int 7 Royalty Corp. v.
Wang, 202 F.3d 1340, 1349 n. 8 (Fed. Cir. 2000). In the Examiner’s stated
combination, the “lost” benefit of being able to be secured “at any angle”
would be supplanted by the “gained” benefit of providing better tightening
for greater patient comfort and sealing. Thus, modifying Correa in the
manner stated by the Examiner to achieve better tightening remains
consistent with Correa’s object of patient comfort. Therefore, we are not
persuaded that the Examiner’s stated modification would render the Correa
device unsatisfactory for its intended purpose.
Appellants also contend, “a less complicated adjustment arrangement
is already provided in Correa.” Reply Br. 4. However, Appellants do not
8
Appeal 2015-006273
Application 11/962,621
explain how Correa’s existing arrangement (requiring both tensioning and
angling) is less complicated than just tensioning alone (since the Kwok ’ 844
buckle angle is fixed).
Consequently, Appellants’ contention that such “modification would
render the Correa device unsatisfactory for its intended purpose” is not
persuasive. App. Br. 15; Reply Br. 3; see also Reply Br. 4. We sustain the
Examiner’s stated rejection of independent claim 67 and its dependent
claims 69-71.
Claims 74, 84, and 85
No stiffening support structure
We select independent claim 74 for review. Claim 74 includes the
limitation of side strap portions that are “joined to a stiffening support
structure.” The Examiner relies on different teachings in Amarasinghe for
disclosing this limitation. Final Act. 11 (referencing Amarasinghe 7:1—5);
Ans. 23 (referencing Amarasinghe 10:12—14). Appellants address the
former citation to Amarasinghe discussing foam as found in the Examiner’s
Final Office Action (App. Br. 16; Reply Br. 5), but are silent as to this latter
citation to Amarasinghe as stated in the Examiner’s Answer. This latter
citation (i.e., Amarasinghe 10:12—14) states, “the stiffness of the straps can
be altered by attaching stiffening material (64) to the top and bottom edge of
the straps.” See also Amarasinghe Figs. 6a, 6b.
As noted above, the limitation at issue pertains to side portions
“joined to a stiffening support structure.” Appellants do not explain how
Amarasinghe fails to disclose side portions joined to Amarasinghe’s
stiffening material 64. In view of Amarasinghe’s disclosure and
9
Appeal 2015-006273
Application 11/962,621
illustrations, we are not persuaded Amarasinghe fails to teach this limitation.
We sustain the Examiner’s rejection of these claims on this point.
Claim 58
Support arms are not part of the headgear
Claim 58 depends from claim 53 and includes the additional limitation
of “a support for holding an inlet conduit in position.” The Examiner states,
“Correa, Fig. 2, depicts arms 18 and 16 serving as support elements for
holding a delivery tube 19.” Final Act. 7. Appellants contend, “support
arms 16, 18 are part of the frame . . . not the headgear.” App. Br. 17. The
Examiner disagrees stating “[Appellants have] no limitations within the
claims that would exclude the support from being detachable from the rest of
the headgear” and that “support arms 16, 18 of Correa could be considered
part of the headgear.” Ans. 23—24. Appellants reply stating, “Correa
differentiates between the support arms and the headgear” and “specifically
states that the support arms are part of the nasal mask assembly, B, not the
headgear assembly C.” Reply Br. 6.
However, claim 58 is silent as to what part of the headgear assembly
provides support (Correa teaches that headgear C is interconnected with
nasal mask assembly B via arms 16, 18 (see Correa Figs. 1—3)) or whether or
not such arms can also be detachable. Accordingly, we are not persuaded
that Correa’s interconnecting arms 16, 18 fail to provide the recited support.
We sustain the Examiner’s rejection of claim 58.
Claim 83
Amarasinghe’s foam is not a relatively rigid material
Claim 83 depends from claim 74 and includes the additional limitation
that “each stiffening support structure is made of a relatively rigid material.”
10
Appeal 2015-006273
Application 11/962,621
Appellants address Amarasinghe’s straps, and particularly their foam
construction (App. Br. 17), but does not address Amarasinghe’s teaching of
“stiffening material (64)” secured to the straps (Amarasinghe 10:12—14).
Amarasinghe teaches that such stiffening provided to the straps “makes the
headgear less ‘floppy’ and more convenient to put on the head of a wearer.”
Amarasinghe 10:16—17. In view of such teachings, we are not persuaded the
Examiner erred in relying on Amarasinghe for teaching the limitation, “each
stiffening support structure is made of a relatively rigid material.” We
sustain the Examiner’s rejection of claim 83.
DECISION
The Examiner’s rejections of claims 53—58, 60-62, 64—67, 69-71, 73—
87, and 89 are affirmed.
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)(l)(iv).
AFFIRMED
11