Ex Parte Hitchcock et al

Patent Trial and Appeal Board

Sep 28, 2018

11793055 (P.T.A.B. Sep. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/793,055 06/15/2007
23117 7590 10/02/2018
NIXON & V ANDERHYE, PC
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Robin Garth Hitchcock
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.
PTB-4398-702 8937
EXAMINER
LOUIS,LATOYAM
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
10/02/2018 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 ROBIN GARTH HITCHCOCK, EVA NG, VINCENT CHU,
GEORGE GILES CAMPBELL, ERROL SAVIO ALEX D'SOUZA,
SCOTT ALEXANDER HOW ARD, MURRAY WILLIAM LEE,
PAUL STEW ART HUXTABLE, GEOFFREY CRUMBLIN, and
NICHOLAS JOHN ROSEBY 1
Appeal2017-001576
Application 11/793,055
Technology Center 3700
Before CHARLES N. GREENHUT, ANNETTE R. REIMERS, and
BRENT M. DOUGAL, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
1 ResMed Limited is indicated as "[t]he real party in interest" in the present
application. Appeal Brief 3 (hereinafter "Appeal Br.") (filed June 8, 2016).
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Application 11/793,055
STATEMENT OF THE CASE2
Robin Garth Hitchcock et al. (Appellants) appeal under 35 U.S.C.
§ 134(a) from the Examiner's decision to reject claims 90, 91, 97-103,
105-108, 112, 113, 118-129, 133-135, 140-146, 148, 150, 151, 155,
158-163, 165, 166, 168, 170, 180-190, and 200-209. Claims 1-89, 92-94,
104, 114--117, 136-139, 147, 149, 156, 157, 164, and 171-173 have been
canceled. Claims 95, 96, 109-111, 130-132, 152-154, 167, 169, 174--179,
and 191-199 have been withdrawn from consideration. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART.
CLAIMED SUBJECT MATTER
The claimed subject matter "relates generally to the field of forehead
supports for facial masks used to supply breathable gas to a wearer's
airways." Spec. ,r 2, Fig. 22-1. Claims 90, 112, 133, 155, and 168 are
independent.
Claims 90 and 112 are illustrative of the claimed subject matter and
recite:
90. A mask assembly to provide pressurized gas to a patient, the
mask assembly comprising:
a mask frame having a support extending from an upper
portion of the mask frame;
a mask cushion configured to be attached to the mask
frame;
2 The subject application is the parent of U.S. Application No. 13/920,834,
filed June 18, 2013. Appeal Br. 4. That application was before the Patent
Trial and Appeal Board in Appeal No. 2016-000332. See Decision dated Apr.
3, 2018. In that Decision, the adverse decision of the Examiner was
REVERSED.
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a forehead cushion support plate having an anterior side
and a posterior side and the forehead cushion support plate
having an aperture extending through the forehead cushion
support plate from the posterior side to the anterior side;
a forehead cushion having an attachment head protruding
from the forehead cushion, the attachment head being configured
to be inserted into the aperture to attach the forehead cushion to
the forehead cushion support plate;
a slider bar having a distal end and a proximal end, said
proximal end attached to the forehead cushion support plate at
the anterior side, said slider bar comprising a frosted portion, and
said slider bar comprising a plurality of forehead support position
indicators located on the frosted portion and longitudinally on an
upper side of the slider bar;
a receiver attached to the mask frame by the support, and
said receiver defining an adjustment path to adjustably receive
said slider bar along said adjustment path toward and away from
the forehead of the patient; and
an adjuster attached to the receiver, said adjuster adapted
to adjust said slider bar relative to said receiver along said
adjustment path,
wherein said plurality of forehead support position
indicators comprise a plurality of position markings,
wherein said plurality of position markings comprise a
plurality of numbers, and
wherein said plurality of position markings indicate at
least eight adjustment positions.
112. A mask system to provide pressurized gas to a patient, the
mask system comprising:
a mask assembly comprising:
a mask frame having a support extending from an upper
portion of the mask frame;
a mask cushion configured to be attached to the mask
frame;
a forehead cushion support plate having a pair of slots to
receive headgear straps, a front face, and a rear face;
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a forehead cushion configured to be attached to the
forehead cushion support plate;
a receiver attached to the mask frame by the support;
a slider bar having a distal end and a proximal end, said
proximal end attached to the forehead cushion support plate at
the front face, said slider bar extending slidably through said
receiver along an adjustment path, said slider bar comprising a
frosted portion, and said slider bar comprising a plurality of
forehead support position indicators located longitudinally on
said frosted portion of the slider bar; and
an adjuster attached to the receiver, said adjuster adapted
to adjust said slider bar relative to said receiver along said
adjustment path, wherein said plurality of forehead support
position indicators comprise a plurality of position markings; and
a headgear assembly including a plurality of straps to
secure the mask assembly on the patient's head in use by
attachment to the mask frame and to the slots of the forehead
cushion support plate,
wherein said plurality of position markings comprise a
plurality of numbers, and
wherein said plurality of position markings indicate at
least eight adjustment positions.
REJECTIONS
I. Claims 90, 91, 98-103, 105-108, 112, 113, 119-129, 155, 159-163,
165,166,200,201,203,205,206, and 208 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Sprinkle (US 2004/0182398 Al, published
Sept. 23, 2004), Ceriani (US 8,277,403 B2, issued Oct. 2, 2012),
Gunaratnam (US 6,374,826 Bl, issued Apr. 23, 2002), and Lang (US
2004/0112387 Al, published June 17, 2004).
II. Claims 97, 118, and 158 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Sprinkle, Ceriani, Gunaratnam, Lang, and Ho (US
2006/0191539 Al, published Aug. 31, 2006).
III. Claims 133,135, 141-146, 148, 150, 151, 168, 170, 180, 182-190,
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202, 204, 207, and 209 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sprinkle, Ceriani, and Lang.
IV. Claim 134 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Sprinkle, Ceriani, Lang, and Gunaratnam.
V. Claims 140 and 181 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sprinkle, Ceriani, Lang, and Ho.
ANALYSIS
Rejection I
Claims 90, 91, 98-103, 105-108, 155, 159-163, 165, 166, 200, 203,
205, and 208
Independent claim 90 is directed to a mask assembly including "a
forehead cushion support plate having an anterior side and a posterior side
and the forehead cushion support plate having an aperture extending through
the forehead cushion support plate from the posterior side to the anterior
side" and "a forehead cushion having an attachment head protruding from
the forehead cushion, the attachment head being configured to be inserted
into the aperture to attach the forehead cushion to the forehead cushion
support plate." See Appeal Br. 30, Claims App.
The Examiner finds that Sprinkle discloses the mask of claim 90
substantially as claimed including a forehead cushion support plate (152)
with a cushion strap (222) except the forehead cushion support plate having
an aperture extending through the forehead cushion support plate from the
posterior side to the anterior side and a forehead cushion having an
attachment head protruding from the forehead cushion, the attachment head
being configured to be inserted into the aperture to attach the forehead
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cushion to the forehead cushion support plate. See Final Act. 3-5. 3 The
Examiner relies on Lang for these limitations. In particular, the Examiner
finds that
Lang teaches that the forehead cushion support plate (102) has
an aperture (202) extending through the forehead cushion
support plate (102) from the posterior side to the anterior side
and a forehead cushion (300) having an attachment head (302)
protruding from the forehead cushion (300), the attachment head
(302) being configured to be inserted into the aperture (202) to
attach the forehead cushion (300) to the forehead cushion support
plate (102).
Id. at 5; see also Ans. 12-13.4
The Examiner concludes that it would have been obvious "to modify
the forehead cushion and support plate of Sprinkle to include an extending
forehead cushion as taught by Lang to provide the advantage of enhanced
conformity for user comfort and ease of removal for enhanced cleaning or
maintenance." Final Act. 5; see also Ans. 12-13.
Appellants contend that the Examiner "does not explain how Lang's
forehead pad 300 provides 'enhanced conformity for user comfort' over and
above the forehead straps 162 and 164 of Sprinkle" and "forehead straps 162
and 164 of Sprinkle are also removable and Lang does not appear to teach
any sort of enhanced removability over and above Sprinkle." Reply Br. 2;
see also Appeal Br. 16. 5
As an initial matter, Appellants correctly point out that "the
Examiner's Answer does not attempt to refute Appellants' positions.
Rather, the Examiner's Answer repeats the motivations for the proposed
3 Final Office Action (hereinafter "Final Act.") ( dated Mar. 11, 2016).
4 Examiner's Answer (hereinafter "Ans.") (dated Oct. 7, 2016).
5 Reply Brief (hereinafter "Reply Br." (filed Nov. 9, 2016).
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modification and states that 'proper motivation has been provided."' Reply
Br. 2; see also Ans. 12-13. Although straps 162, 164 of Sprinkle are not
referenced by the Examiner, straps 222 of Sprinkle, which are referenced by
the Examiner, "are made from a fairly thick, resilient material, so as to
provide a cushioning effect when worn by a user." See Sprinkle ,r 88
(emphasis added), Fig. 19; see also id. ,r 72, Fig. 2; Final Act. 5; Ans. 12-13.
We agree with Appellants that the Examiner fails to "explain how Lang's
forehead pad 300 provides 'enhanced conformity for user comfort' over and
above [forehead straps 222] of Sprinkle." Reply Br. 2; see also Appeal Br.
16. We further agree with Appellants that, similar to straps 162, 164 of
Sprinkle, straps 222 of Sprinkle "are removable" and that the Examiner fails
to provide sufficient reasoning as to how the addition of Lang "enhance[ s]
removability over and above Sprinkle." Reply Br. 2; see also Appeal Br. 16;
Final Act. 5; Ans. 12-13; Sprinkle Figs. 2, 19. As such, we agree with
Appellants that the Examiner fails to provide a reason with rational
underpinnings to combine the teachings of Sprinkle and Lang.
Independent claim 155 is directed to a mask assembly and includes
similar limitations to a forehead cushion support plate and a forehead
cushion as in claim 90. See Appeal Br. 36, Claims App. The Examiner
relies on the same insufficient reasoning for claim 155 as that discussed
above for claim 90. See Final Act. 3-5. Thus, the Examiner's reasoning
with respect to Sprinkle and Lang is deficient for claim 155 as well.
Accordingly, we do not sustain the Examiner's rejection of claims 90,
91, 98-103, 105-108, 155, 159-163, 165,166,200,203,205, and 208 as
unpatentable over Sprinkle, Ceriani, Gunaratnam, and Lang.
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Claims 112,113, 119--121, 123-129, and 206
Appellants do not offer arguments in favor of dependent claims 113,
119-121 123-129, 201, and 206 separate from those presented for
independent claim 112. See Appeal Br. 14--19, 26-28. We select claim 112
as the representative claim, and claims 113, 119-121, 123-129, and 206
stand or fall with claim 112. 37 C.F.R. § 4I.37(c)(l)(iv). We address
claims 122 and 201 separately below.
Contrary to the Appellants arguments (Appeal Br. 14--17),
independent claim 112 does not require the structural features for the
forehead cushion support plate or for the forehead cushion as recited in
claim 90. See Appeal Br. 30, 32, Claims App. Rather, claim 112 merely
recites "a forehead cushion support plate having a pair of slots to receive
headgear straps, a front face, and a rear face; a forehead cushion configured
to be attached to the forehead cushion support plate." Id. at 32, Claims
App. 6 In this case, we agree with the Examiner that upper end portion 152
of adjuster 140 constitutes "the forehead cushion support plate" and that
supporting cushion straps 222 constitutes "the forehead cushion" of claim
112. See Final Act. 3; see also Ans. 12. Appellants do not provide
persuasive evidence or argument apprising us of Examiner error. See
Appeal Br. 15.7
6 See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (Limitations not appearing
in the claims cannot be relied upon for patentability).
7 Paragraph 88 of Sprinkle discloses that straps 222 "are made from a fairly
thick, resilient material, so as to provide a cushioning effect when worn by a
user" (emphasis added); see also Ans. 12. Appellants further acknowledge
that straps 162, 164 of a different embodiment of Sprinkle "' ... are made
from a fairly thick, resilient material, so as to provide a cushioning effect when
worn by a user."' Appeal Br. 16 ( emphasis added) ( citing Sprinkle ,r 72); id.
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Appellants then contend that "the disclosure in the present application
describes a different benefit of using a 'frosted portion' [as claimed] in the
context of forehead supports," namely hiding internal threads. Appeal Br.
18; see also Reply Br. 3. Appellants contend that "[t]he advantageous tactile
feedback [ of the frosted portion] discussed in Gunaratnam would not be
needed for a forehead support because the patient [in the subject invention]
is not intended to touch the 'slide bar' itself' and that "[t]he claimed 'mask
assembly' includes 'an adjuster' to provide adjustability so that the patient
does not need to handle the 'slider bar' directly." Appeal Br. 18; see also
Reply Br. 3.
In response to Appellants' contention, the Examiner states that
Both Sprinkle and Gunaratnam are directed to facial masks able
to be used for CP AP therapy which usually occurs at night ( see
[0003] lines 1-5 of Sprinkle). The mask of Sprinkle allows for
forehead adjustment using a push button (136; fig. 12) which
does not face the user and which might need to be located at night
to adjust the position of the forehead support for comfort. Thus
one of ordinary skill in the art upon seeing the slider bar of
Sprinkle would realize that a frosted portion as taught in
Gunaratnam would provide the advantage of enhanced tactile
feedback to facilitate connection and adjustment as disclosed by
Gunaratnam in col. 5 lines 1-5.
Ans. 13-14.
The Examiner's findings are sound and based on rational
underpinnings. Appellants do not provide persuasive evidence or argument
apprising us of Examiner error. 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
at Fig. 2.
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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).
Appellants contend that:
Assuming arguendo that Gunaratnam discloses a "frosted
portion," Appellants do not believe that Gunaratnam discloses
that "forehead support position indicators" would be "located on
the frosted portion." Furthermore, Ceriani, which was relied
upon for the "forehead support position indicators," does not
appear to provide any teaching for positioning the "forehead
support position indicators" on a "frosted portion."
Appeal Br. 19. As such, Appellants conclude that "the cited combination of
references fails to teach 'a plurality of forehead support position indicators
located on the frosted portion."' Appeal Br. 19; see also Reply Br. 4 ("[T]he
cited combination of references fails to teach the 'forehead support position
indicators' and the 'frosted portion' recited by the claims").
In response to Appellants' contention, the Examiner states that
"Sprinkle teaches the slider bar (140)[,] Ceriani teaches in fig. 8 at least
eight adjustment positions facing outward on the tube [and] Gunaratnam is
relied on for teaching a frosted portion on components of face masks." Ans.
14 ( citing Gunaratnam 5: 1-5). The Examiner concludes that "since the
position markings are modified to be located on the slider bar, modifying the
slider bar of Sprinkle [and Ceriani] to be frosted as taught by Gunaratnam
would position the position marking on the frosted portion." Id.
Appellants' arguments appear to be holding the Examiner to a rigid
teaching, suggestion, or motivation ("TSM") standard where there must be
some suggestion or motivation, either in the references themselves or in the
knowledge generally available to one of ordinary skill in the art, to modify
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the reference or to combine reference teachings; such a standard is not
required. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,415 (2007) ("We
begin by rejecting the rigid ... [application and requirement of a TSM to
combine known elements in order to show obviousness]"). Appellants do
not provide persuasive evidence or argument apprising us of error in the
Examiner's proposed reasoning for the combined teachings of Sprinkle,
Ceriani, and Gunaratnam. The Examiner articulates adequate reasoning
based on rational underpinnings to explain why one of ordinary skill in the
art would have been led to combine the teachings of the references. Further,
there is no indication that the Examiner's proposed modification is beyond
the ability of one skilled in the art. See KSR, 550 U.S. at 421 ("A person of
ordinary skill is also a person of ordinary creativity, not an automaton").
Moreover, to the extent Appellants are arguing the references must be
capable of bodily incorporation in order to combine their teachings, the test
for obviousness is not whether the claimed invention is expressly suggested
in any one or all of the references, but whether the claimed subject matter
would have been obvious to those of ordinary skill in the art in light of the
combined teachings of those references .. In re Keller, 642 F.2d 413,425
( CCP A 1981 ). That Sprinkle, Ceriani, and Gunaratnam may teach
additional structure does not prevent the Examiner from relying on each
reference for limited purposes. Appellants do not provide persuasive
evidence or argument apprising us of error in the Examiner's proposed
reasoning for the combined teachings of Sprinkle, Ceriani, and Gunaratnam.
Appellants contend that Ceriani "is not in the same 'field of endeavor
as the claimed invention"' because "[ m ]ask assemblies and orthopedic
braces are distinct fields of endeavor"; and that "the broad concept of
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adjustability is the only commonality between the problem faced by the
inventors of this application and Ceriani, but that is insufficient to
guide 'an inventor [to] look to [ Ceriani] to solve the particular problem at
hand."' Appeal Br. 26-28 (citations omitted); see also Reply Br. 7-10.
The two separate tests for determining whether a prior art reference is
analogous are: (1) whether the art is from the same field of endeavor,
regardless of the problem addressed; and (2) if the reference is not within the
inventor's field of endeavor, whether the reference is reasonably pertinent to
the particular problem with which the inventor is involved. In re Bigio, 381
F.3d 1320, 1325 (Fed. Cir. 2004) (citing In re Deminski, 796 F.2d 436, 442
(Fed. Cir. 1986) and In re Wood, 599 F.2d 1032, 1036 (CCPA 1979)).
We disagree with Appellants that Ceriani is not reasonably pertinent
to a particular problem with which Appellants are involved. "Under the
correct analysis, any need or problem known in the field of endeavor at the
time of invention and addressed by the patent can provide a reason for
combining the elements in the manner claimed." KSR, 550 U.S. at 420. In
this case, the Specification discloses "[a] problem with conventional
forehead supports for masks, however, is that the range of adjustment is
relatively limited which therefore does not in fact provide a universal fit for
a relatively large number of wearers." Spec. ,r 9. Ceriani discloses that the
adjustment feature "allows the manufacture of a single adjustable orthopedic
brace which is capable of being fitted to a number of different sized users."
Ceriani 1:28-32. As such, Ceriani lends itself to a problem addressed by
Appellants, namely, the ability to provide an adjustable medical device "for
a relatively large number of wearers." See Spec. ,r 9; Ceriani 1:30-32; Ans.
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18. Accordingly, for these reasons, Ceriani is considered analogous art to
the subject invention.
In summary, and based on the record presented, we are not persuaded
the Examiner erred in rejecting independent claim 112 as unpatentable over
Sprinkle, Ceriani, Gunaratnam, and Lang. Accordingly, we sustain the
Examiner's rejection of claim 112 as unpatentable over Sprinkle, Ceriani,
Gunaratnam, and Lang. We further sustain the rejection of claims 113, 119-
121, 123-129, and 206, which fall with claim 112.
Claim 122
The Examiner finds that as shown in Figure 12 of Sprinkle, "the
support 24 narrows at the top nasal region and is at its most narrow at the
apex of the nasal region. The bottom portion of the receiver 120 is located
below the apex of the nasal region." Ans. 15; see also Sprinkle Fig. 12. As
such, the Examiner concludes that "the support 24 narrows from a bottom
portion of the receiver upward toward the apex of nasal region." Id.
Appellants do not provide persuasive evidence or argument apprising us of
Examiner error. See Appeal Br. 21.
Accordingly, we sustain the Examiner's rejection of claim 122 as
unpatentable over Sprinkle, Ceriani, Gunaratnam, and Lang.
Claim 201
While it is true that drawings are not presumed to be drawn to scale,
this "[does] not mean that things patent drawings show clearly are to be
disregarded." In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972) (emphasis in
original). Our reviewing court has stated that "[a]s long as a person of skill
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in the art could derive the claimed dimensions from the patent's disclosure,
there is no additional requirement that the specification must explicitly
disclose the precise proportions or particular sizes." Cummins-Allison Corp.
v. SBM Co., Ltd., 484 Fed. Appx. 499, 507 (Fed. Cir. 2012)
( nonprecedential).
Here, we agree with the Examiner that a skilled artisan would derive
from Figure 13 of Sprinkle that ribs 146 extend from a superior surface of
slider bar 140. See Final Act. 6; see also Ans. 15; Sprinkle, Fig. 13. As
such, Appellants do not provide persuasive evidence or argument apprising
us of Examiner error. Appeal Br. 21-22; see also Reply Br. 6.
Accordingly, we sustain the Examiner's rejection of claim 201 as
unpatentable over Sprinkle, Ceriani, Gunaratnam, and Lang.
Rejection II
Claims 97 and 158
Claim 97 depends from claim 90 and claim 15 8 depends from claim
15 5. See Appeal Br. 31, 3 7, Claims App. The Examiner's rejection of
claims 97 and 158 as unpatentable over Sprinkle, Ceriani, Gunaratnam,
Lang, and Ho is based on the same insufficient reasoning as that discussed
above with respect to claims 90 and 155. See Final Act. 7. The Examiner
does not rely on Ho to remedy the deficiencies of Sprinkle and Lang.
Accordingly, for reasons similar to those discussed above for claims
90 and 155, we do not sustain the Examiner's rejection of claims 97 and 158
as unpatentable over Sprinkle, Ceriani, Gunaratnam, Lang, and Ho.
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Claim 118
Claim 118 depends from claim 112. See Appeal Br. 31, 37, Claims
App. Appellants contend that Ho "does not teach a 'resilient arm."' Appeal
Br. 22. In particular, Appellants contend that the "guide protrusions 99"
relied on by the Examiner "are only discussed in paragraph [0059] of Ho and
nothing in this passage states that the guide protrusions 99 are 'resilient."'
Id.; see also Final Act. 7. In response to Appellants' argument, the
Examiner cites to paragraph 60 of Ho to support the finding that guide
protrusions 99 of Ho are resilient. See Ans. 16. However, Appellants
correctly note that paragraph 60 of Ho "does not refer to the guide
protrusions 99 at all." See Reply Br. 6-7; see also Ho ,r 60. Further,
Appellants correctly note that the Examiner does not address Appellants'
contention that "such an improvement is not necessitated by Sprinkle" as
"Sprinkle appears to teach that ... button 13 6, which cannot be the 'resilient
arm' because it is relied upon for the 'adjuster,' engaging with the
boundaries of ... opening 148 is sufficient to 'prevent disassembly."' See
Reply Br. 7; see also Appeal Br. 23; Ans. 16.
Accordingly, we do not sustain the Examiner's rejection of claim 118
as unpatentable over Sprinkle, Ceriani, Gunaratnam, Lang, and Ho.
Re} ection III
Claims 133, 135, 141-146, 148, 150,151,202, and 207
Independent claim 133 is directed to a mask assembly and includes
similar limitations to a forehead cushion support plate and a forehead
cushion as in claims 90 and 155. See Appeal Br. 34, Claims App. The
Examiner relies on the same insufficient reasoning as that discussed above
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for claims 90 and 155. See Final Act. 7-10. Thus, the Examiner's reasoning
with respect to Sprinkle and Lang are deficient for claim 133 as well.
Accordingly, for reasons similar to those discussed above for claims
90 and 155, we do not sustain the Examiner's rejection of claims 133, 135,
141-146, 148, 150, 151,202, and 207 as unpatentable over Sprinkle,
Ceriani, and Lang.
Claims 168, 170, 180, 182-190, and 209
Appellants do not offer arguments in favor of dependent claims 170,
180, 182-190, and 209 separate from those presented for independent claim
168. See Appeal Br. 23-24, 26-28. We select claim 168 as the
representative claim, and claims 170, 180, 182-190, and 209 stand or fall
with claim 168. 37 C.F.R. § 4I.37(c)(l)(iv). We address claim 204
separately below.
Similar to that discussed for independent claim 112, independent
claim 168 does not require the structural features for the forehead cushion
support plate or for the forehead cushion as recited in claim 90. See Appeal
Br. 30, 38, Claims App. To the contrary, similar to claim 112, claim 168
merely recites "a forehead cushion support plate having a pair of slots to
receive headgear straps, a front face, and a rear face; a forehead cushion
configured to be attached to the forehead cushion support plate." Id. at 38,
Claims App. 8 As discussed above, we agree with the Examiner that upper
end portion 152 of adjuster 140 constitutes "the forehead cushion support
plate" and that supporting cushion straps 222 constitutes "the forehead
8 See In re Self, 671 F.2d at 1348.
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cushion" of claim 112. See Final Act. 7-8; see also Ans. 12. Appellants do
not provide persuasive evidence or argument apprising us of Examiner error.
See Appeal Br. 15. 9
We note that claim 168 does not recite "a plurality of forehead support
position indicators located longitudinally on a top side of the slider bar."
See Appeal Br. 24; see also id. at 3 8, Claims App. Appellants contend that
the Examiner's rejection "relies on Sprinkle and Ceriani for the[] features"
of claim 168 but does not address any particular "features" of claim 168.
As such, Appellants do not apprise us of Examiner error. See Appeal Br. 24.
Further, as discussed above for claim 112, Appellants' analogous art
arguments regarding the Ceriani reference are not persuasive. See Appeal
Br. 26-28; see also Reply Br. 7-10.
In summary, and based on the record presented, we are not persuaded
the Examiner erred in rejecting independent claim 168 as unpatentable over
Sprinkle, Ceriani, Gunaratnam, and Lang. Accordingly, we sustain the
Examiner's rejection of claim 168 as unpatentable over Sprinkle, Ceriani,
and Lang. We, further, sustain the rejection of claims 170, 180, 182-190,
and 209, which fall with claim 168.
9 Paragraph 88 of Sprinkle discloses that straps 222 "are made from a fairly
thick, resilient material, so as to provide a cushioning effect when worn by a
user" (emphasis added); see also Ans. 12. Appellants further acknowledge
that straps 162, 164 of a different embodiment of Sprinkle "are made from a
fairly thick, resilient material, so as to provide a cushioning effect when worn
by a user." Appeal Br. 16 (emphasis added) (citing Sprinkle ,r 72); id. at Fig.
2.
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Claim 204
Appellants merely recite the claim language of claim 204 and state
that cited prior art of Sprinkle, Ceriani, and Lang "fails to teach this feature."
Appeal Br. 24--25. "A statement which merely points out what a claim
recites will not be considered an argument for separate patentability of the
claim." See 37 C.F.R. § 4I.37(c)(l)(iv) (2011); In re Lovin, 652 F.3d 1349,
1357 (Fed. Cir. 2011) (holding that the Board had reasonably interpreted 37
C.F.R. § 4I.37(c)(l)(iv) as requiring "more substantive arguments in an
appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art").
As discussed above, we find no deficiencies in the Examiner's rejection of
claim 168 as unpatentable over Sprinkle, Ceriani, and Lang. Therefore, for
the reasons stated above with respect to claim 168, we sustain the
Examiner's rejection of claim 204 as unpatentable over Sprinkle, Ceriani,
and Lang.
Re} ection IV
Claim 134
Claim 134 depends from claim 133. See Appeal Br. 35, Claims App.
The Examiner's rejection of claim 134 as unpatentable over Sprinkle,
Ceriani, Lang, and Gunaratnam is based on the same insufficient reasoning
as that discussed above with respect to claim 133. See Final Act. 11. The
Examiner does not rely on Gunaratnam to remedy the deficiencies of
Sprinkle and Lang. Accordingly, for reasons similar to those discussed
above for claim 133, we do not sustain the Examiner's rejection of claim
134 as unpatentable over Sprinkle, Ceriani, Lang, and Gunaratnam.
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Rejection V
Claim 140
Claim 140 depends from claim 133. See Appeal Br. 35, Claims App.
The Examiner's rejection of claim 140 as unpatentable over Sprinkle,
Ceriani, Lang, and Ho is based on the same insufficient reasoning as that
discussed above with respect to claim 133. See Final Act. 12. The
Examiner does not rely on Ho to remedy the deficiencies of Sprinkle and
Lang. Accordingly, for reasons similar to those discussed above for claim
133, we do not sustain the Examiner's rejection of claim 140 as unpatentable
over Sprinkle, Ceriani, Lang, and Ho.
Claim 181
Claim 181 depends indirectly from claim 168. See Appeal Br. 39,
Claims App. Appellants do not present any arguments for claim 181. See
Appeal Br. 25-26. Unlike claim 140, which is argued by Appellants, claim
181 does not recite a "resilient arm." See Appeal Br. 35, 39, Claims App.
The Examiner finds that "Sprinkle teaches a slider (142) surrounded on at
least three sides by the receiver (120) but does not specifically disclose that a
distal end of said slider bar is enclosed within the receiver in a fully retracted
position and a fully extended position." Final Act. 12. The Examiner
further finds that "Ho teaches that the slider (32) is fully enclosed in the
receiver (52) in fully extended and retracted positions." Id. The Examiner
concludes it would have been obvious "to manufacture the slider of Sprinkle
to be enclosed as taught by Ho to provide enhanced safety and prevent
unintended disengagement." Id. Appellants do not apprise us of Examiner
error.
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Application 11/793,055
Accordingly, we sustain the Examiner's rejection of claim 181 as
unpatentable over Sprinkle, Ceriani, Lang, and Ho.
DECISION
We REVERSE the Examiner's decision to reject claims 90, 91,
97-103, 105-108, 118, 133-135, 140-146, 148,150,151,155, 158-163,
165,166,200,202,203,205,207, and 208 under 35 U.S.C. § 103(a).
We AFFIRM the Examiner's decision to reject claims 112, 113,
119-129, 168, 170, 180-190, 201,204,206, and 209 under 35 U.S.C.
§ 103(a).
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-IN-PART
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