Ex Parte Klemperer

Patent Trial and Appeal Board

Nov 12, 2013

11213648 (P.T.A.B. Nov. 12, 2013)

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.
11/213,648 08/29/2005 Walter G. Klemperer FR2- DIV 2228
34833 7590 11/12/2013
FRANK ROSENBERG
P.O. BOX 29230
SAN FRANCISCO, CA 94129-0230
EXAMINER
NGUYEN, CAMTU TRAN
ART UNIT PAPER NUMBER
3772
MAIL DATE DELIVERY MODE
11/12/2013 PAPERPAPER
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 WALTER G. KLEMPERER
____________

Appeal 2012-001669
Application 11/213,648
Technology Center 3700
____________

Before TONI R. SCHEINER, DONALD E. ADAMS, and
FRANCISCO C. PRATS, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL1
This appeal under 35 U.S.C. § 134 involves claims 26-28 and 30-432
(App. Br. 2). Examiner entered rejections under 35 U.S.C. § 102(b) and
35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 The Real Party in Interest is the Appellant, Walter Klemperer (App. Br. 1).
2 “Claims 31, 32, 34, and 37-40 are withdrawn” (App. Br. 2).
Appeal 2012-001669
Application 11/213,648

2
STATEMENT OF THE CASE
The claims are directed to a head appliance for a CPAP device and a
method of treating sleep apnea. Claims 26, 27, and 41 are representative and
are reproduced in the Claims Appendix of Appellant’s Brief.
Claims 26, 28, and 43 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Elam.3
Claims 27 and 41 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Elam and Petrie.4
Claim 30 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Elam, Petrie, and Tirotta.5
Claims 33 and 42 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Elam, Petrie, and Byrd.6
Claims 35 and 36 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Elam and Landis.7

Anticipation:
ISSUE

Does the preponderance of evidence on this record support a finding
that Elam teaches a tube or oral insert that provides air inside/into a person’s
mouth?

3 Elam, US 4,090,518, issued May 23, 1978.
4 Petrie et al., US 5,361,416, issued Nov. 8, 1994.
5 Tirotta, US 5,431,158, issued Jul. 11, 1995.
6 Byrd, US 5,638,814, issued Jun. 17, 1997.
7 Landis et al., US 5,687,715, issued Nov. 18, 1997.
Appeal 2012-001669
Application 11/213,648

3
FACTUAL FINDINGS (FF)
FF 1. Elam’s Figures 1 and 2 are reproduced below:

“FIG. 1 is a diagrammatical sagittal sectional view illustrating an esophago-
pharyngeal airway system for … [Elam’s] invention in operative position.
FIG. 2 is a perspective view, shown partially schematically, of the device
depicted in FIG. 1” (Elam, col. 3, ll. 43-47).
FF 2. Elam’s
[E]sophagopharyngeal airway system or device [10] ha[s] a
tube assembly 11, an oral flange 12, a proximal oral cuff or
balloon 13, and a distal esophageal cuff or balloon 14. The
tube assembly 11 comprises a pair of main tubes preferably
arranged in side-by-side relation; specifically, an elongated
stomach drain tube 15 and a shorter air tube 16. The purpose of
the air tube is to ventilate a patient’s lungs and, for that
purpose, the paroximal end 16a of the air tube may be
connected to any conventional resuscitator 17.
(Id. at col. 4, ll. 14-25.)
FF 3. Elam teaches that “the breathing tube’s distal end 16b … [is] located
… at the entrance to the larynx 51 when the device is properly positioned in
a patient” (id. at col. 5, ll. 53-57).
Appeal 2012-001669
Application 11/213,648

4
FF 4. Elam teaches that
The oral cuff or balloon 13 … is sealed to the tube assembly
just above … the breathing tube’s distal end….
When the device is properly positioned the oral cuff is disposed
in the rear of the oral cavity 52 and, the cuff bears upwardly
continuously against the soft palate 53 to urge the soft palate
into sealing engagement with the posterior nasopharyngeal wall
54.
(Id. at col. 6, ll. 6-9 and 20-24.)
FF 5. Examiner finds that since Elam’s air tube 16 provides a channel
through which air is passed through an individual’s mouth to the larynx,
Elam’s “air tube (16) is adapted to supply/provide air inside the mouth”
(Ans. 6).
ANALYSIS
Appellant’s claimed invention requires, inter alia, a tube or oral insert
that provides air inside/into a person’s mouth (see Appellant’s claim 26).8 In
contrast, the tube assembly of Elam’s device provides air directly to the
larynx and prevents air from entering a person’s mouth through the use of an
oral cuff or balloon 13 (FF 1-4). Therefore, we are not persuaded by
Examiner’s assertion that Elam’s air tube 16 is adapted to supply/provide air
inside the mouth (FF 5).
CONCLUSION OF LAW
The preponderance of evidence on this record fails to support a
finding that Elam teaches a tube or oral insert that provides air inside/into a
person’s mouth. The rejection of claims 26, 28, and 43 under 35 U.S.C.
§ 102(b) as being anticipated by Elam is reversed.

8 Claims 28 and 43 depend from claim 26.
Appeal 2012-001669
Application 11/213,648

5
Obviousness:
ISSUE

Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 6. Examiner relies on Elam as discussed above (FF 1-4).
FF 7. Examiner finds that Elam fails to suggest a jaw strap and relies on
Petrie to make up for this deficiency in Elam (Ans. 7).
FF 8. Examiner finds that the combination of Elam and Petrie fails to
suggest “a pressure portion attached to … [a] diaphragm” and relies on
Tirotta to make up for this deficiency in the combination of Elam and Petrie
(id. at 8).
FF 9. Examiner finds that the combination of Elam and Petrie fails to
suggest “a tube holding strap … attached to [a] connection portion” and
relies on Byrd to make up for this deficiency in the combination of Elam and
Petrie (id. at 9).
FF 10. Examiner finds that Elam fails to suggest “a pad covering the user’s
lips” and relies on Landis to make up for this deficiency in Elam (id.).
ANALYSIS
Examiner failed to establish an evidentiary basis to support a
conclusion that Petrie or Landis alone, or Petrie in combination with Tirotta
and Byrd make up for the deficiency in Elam discussed above.
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner fails to
support a conclusion of obviousness.

Appeal 2012-001669
Application 11/213,648

6
The rejection of claims 27 and 41 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Elam and Petrie is reversed.
The rejection of claim 30 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Elam, Petrie, and Tirotta is reversed.
The rejection of claims 33 and 42 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Elam, Petrie, and Byrd is reversed.
The rejection of claims 35 and 36 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Elam and Landis is reversed.

REVERSED

cdc