Ex Parte Kotlyar et alDownload PDFPatent Trial and Appeal BoardMar 17, 201712420764 (P.T.A.B. Mar. 17, 2017) Copy Citation 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. M-17579 US 3107 EXAMINER FRISBY, KESHA ART UNIT PAPER NUMBER 3715 NOTIFICATION DATE DELIVERY MODE 12/420,764 04/08/2009 Vadim Kotlyar 25235 7590 03/21/2017 HOGAN LOVELLS US LLP - Colorado Springs TWO NORTH CASCADE AVENUE SUITE 1300 COLORADO SPRINGS, CO 80903 03/21/2017 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): patentcoloradospring @ hoganlo veils, com HLU S Docke ting @ hoganlovells. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte VADIM KOTLYAR and ANATOLY KOTLYAR Appeal 2015-004064 Application 12/420,764 Technology Center 3700 Before: LINDA E. HORNER, MICHELLE R. OSINSKI, and GORDON D. KINDER, Administrative Patent Judges. OSINSKI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Vadim Kotlyar and Anatoly Kotlyar (Appellants)* 1 appeal under 35 U.S.C. § 134 from the Examiner’s Final decision rejecting claims 1—20 under 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellants identify the real party in interest as Vadim Kotlyar. Appeal Br. 1. Appeal 2015-004064 Application 12/420,764 THE CLAIMED SUBJECT MATTER Claims 1 and 11 are independent. Claim 1 is reproduced below and is illustrative of the claimed subject matter on appeal. 1, A breathing exercise apparatus, comprising: a graphical display: input elements that receive from a user, prior to beginning a breathing exercise, durations for inhalation, exhalation and pause phases of a breathing exercise pattern, wherein the breathing exercise comprises a number of repeating cycles, each cycle having one or more user-specified inhalation phases, one or more user-specified exhalation phases and one or more user- specified pause phases in a user-specified order; a controller which causes the graphical display to display a sequence of graphical images according to the received durations of the inhalation, the exhalation and the pause phases of the breathing exercise pattern; and a countdown clock timer which displays a remaining time of the breathing exercise calculated using the received durations of the inhalation, the exhalation and pause phases and the number of repeating cycles. EVIDENCE The Examiner relied on the following evidence in rejecting the claims on appeal: Schreiber Kang Baumert Datema US 2002/0024888 A1 US 2006/0246407 A1 US 2007/0089740 A1 US 2010/0080431 A1 Feb. 28, 2002 Nov. 2, 2006 Apr. 26, 2007 Apr. 1,2010 REJECTIONS I. Claims 1—5, 7—15, and 17—20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Schreiber, Datema, and Baumert. Final Act. 2— 5. II. Claims 6 and 16 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Schreiber, Datema, Baumert, and Kang. Id. at 5—6. 2 Appeal 2015-004064 Application 12/420,764 OPINION Rejection I Appellants argue claims 1—5, 7—15, and 17—20 as a group. Appeal Br. 3—10; Reply Br. 4—9. We select claim 1 as the representative claim, and claims 2—5, 7—15, and 17—20 stand or fall therewith. 37 C.F.R. §41.37(c)(l)(iv) (2014). The Examiner relies on Schreiber for teaching all of the limitations of independent claim 1, except for the limitations relating to “a controller” and “a countdown clock timer.” Final Act. 2—3. The Examiner finds that Datema and Baumert, respectively, teach these features, and the Examiner concludes that it would have been obvious to one of ordinary skill in the art to modify Schreiber based on the relevant teachings of Datema and Baumert. Id. at 3^4. Appellants do not challenge the Examiner’s findings with respect to Datema and Baumert, nor the Examiner’s reasoning for combining their teachings with Schreiber. Appellants challenge only the Examiner’s findings with respect to Schreiber. In particular, Appellants assert that their claimed invention allows a user to specify durations for phases of a breathing exercise “which may include multiple inhalation, exhalation and pause phases in a user-specified order.” Appeal Br. 5 (emphasis omitted); see also id. at 6 (Appellants arguing that their apparatus “allows the user to specify any breathing exercise pattern, such as one with repeating cycles of different number of inhalation and exhalation phases of different durations in each exercise cycle”). Appellants argue that, in contrast to the claimed invention, Schreiber is limited to an apparatus for allowing a user to specify durations of phases of a “structured ‘focused breathing session’ [that] has a rigid 3 Appeal 2015-004064 Application 12/420,764 structure in which an exhalation phase is followed by an exhalation pause phase, which is then followed by an inhalation [Jphase and then an inhalation pause phase.” Id. at 4 (citing Schreiber, H 36, 51).2 Independent claim 1 is directed to a breathing exercise apparatus, which is intended to be used in connection with a breathing exercise. The breathing exercise, however, is not positively recited in claim 1 as part of the claimed breathing exercise apparatus.3 Thus, even if claim 1 recites that a breathing exercise has inhalation, exhalation, and pause phases in a user- specified order, claim 1 does not tie the breathing exercise to the breathing exercise apparatus so as to impart any structural or functional limitation on the breathing exercise apparatus itself. In other words, claim 1 does not explain sufficiently how a user-specified order of the inhalation, exhalation, 2 Appellants make similar arguments throughout their Appeal Brief and Reply Brief. See Appeal Br. 9 (“Schreiber’s paragraph [0005] teaches nothing to suggest that Schreiber’s apparatus allows user specification of the component phases in the repeating cycle (e.g., two exhalation phases before a single inhalation phase) or their relative order (e.g., inhalation, pause, exhalation, pause, exhalation, pause), as permitted in the apparatus and method of Claims 1 and 11.”). See also id. (citing Schreiber 151) (“Schreiber’s apparatus merely provide[s] ‘predetermined programs’ rather than supporting] [the] ‘user-specified order of. . . [c]laims 1 and 11”); id. at 10 (“a breathing technique that requires repeating cycles of (Inhalation- Pause-Inhalation-Pause-Inhalation-Pause-Exhalation-Pause) maybe supported by apparatus or method according to Claims 1 and 11, but cannot be supported by Schreiber’s device, as Schreiber provides no means for specifying consecutive ‘inhalation and pause’ phases”); and Reply Br. 6 (“Schreiber’s apparatus is structurally programmed to execute only the rigid ‘focused breathing session’ defined by a system-specified order”). 3 We expressly disagree with Appellants’ contention that the limitations of claim 1 “describe the program residing in the claimed apparatus that customizes the claimed apparatus to specific operations, and are thus structural.” Reply Br. 6. 4 Appeal 2015-004064 Application 12/420,764 and pause phases of a particular breathing exercise is actually input into and taken into account by the structural elements of the breathing apparatus. For example, claim 1 does not require the controller to be configured to receive the user-specified order of inhalation, exhalation, and pause phases of a breathing exercise and/or cause a display of graphical images based on the received user-specified order of inhalation, exhalation, and pause phases. Rather, the controller of claim 1 is recited to cause the graphical display to display a sequence of graphical images “according to the received durations” of the recited phases of the breathing exercise pattern. The recitation that the breathing exercise has a number of cycles in which each cycle has inhalation, exhalation, and pause phases in a user- specified order does not impart structural limitations on the claimed breathing exercise apparatus used to carry out such a breathing exercise. As such, this recitation relating to the “breathing exercise” in the “input elements” limitation of claim 1 cannot be relied on to distinguish the claimed apparatus from the apparatus disclosed in the prior art. Accordingly, Appellants’ arguments directed to Schreiber’s purported failure to teach the particularities of a breathing exercise do not persuade us that the Examiner erred in finding that Schreiber teaches a breathing exercise apparatus having “input elements” and “a controller” in accordance with claim 1. Appellants also argue that Schreiber fails to disclose input elements that “receive[] from a user, prior to beginning a breathing exercise, durations for inhalation, exhalation and pause phases of a breathing exercise pattern.” Appeal Br. 6 (quoting claim 1). More particularly, Appellants argue that “the duration of each phase is determined by the system (i.e., Schreiber’s 5 Appeal 2015-004064 Application 12/420,764 control means 18), not by user input, based on the duration of [the intended] focused breathing session and a predetermined respiration ratio.” Id. at 7 (citing Schreiber 149); see also Reply Br. 8 (“Schreiber teaches that the duration of each phase is determined by the system based on the duration of the intended focused breathing session and a predetermined respiration ratio, and not by user input.”). Appellants maintain that “Schreiber merely teaches user specification for the entire exercise session,” rather than “user specification of individual duration for each phase of the breathing exercise pattern.” Reply Br. 9. The Examiner responds that “[paragraph []51 clearly states the steps taken in order to use the assistive breathing device.” Final Act. 8. More specifically, the Examiner responds that “Schreiber discloses in paragraph []51 that the user may select the parameters, such as, the duration of the focused breathing session, the count of each phase (exhalation, inhalation and/or pause) of the focused breathing session [and] [therefore, the parameters are user-specified.” Ans. 6. The Examiner also points to paragraph 54 as explaining that “in order to use the assistive breathing device, the user must select the parameters and duration of the focused breathing session after turning on the power switch.” Id. at 7. See Schreiber | 51 (“The following parameters may be selected by the user: the duration of the focused breathing session, the count of the exhalation phase (preferably ranging from 10-40 second), the count of the exhalation pause phase (preferably ranging from 2—5 seconds), the count of the inhalation phase (preferably ranging from 10—30 seconds), and the count of the inhalation pause phase (preferably ranging from 2—10 seconds).”). Appellants have not persuaded us how this particular disclosure in Schreiber fails to teach a 6 Appeal 2015-004064 Application 12/420,764 device with input elements that receive durations for inhalation, exhalation, and pause phases of a breathing exercise pattern, such that each of these phases are “user-specified” as recited in claim 1. For the foregoing reasons, we are not persuaded that the Examiner erred in concluding that the combination of Schreiber, Datema, and Baumert renders obvious the subject matter of independent claim 1. Accordingly, we sustain the rejection of independent claim 1 under 35 U.S.C. § 103(a) as unpatentable over Schreiber, Datema, and Baumert. We also sustain the rejection of claims 2—5, 7—15, and 17—20 which fall with independent claim 1. Rejection II Because Appellants rely on the same arguments and reasoning we found unpersuasive in connection with the independent claims, we also sustain the rejection of claims 6 and 16 under 35 U.S.C. § 103(a) as unpatentable over Schreiber, Datema, Baumert, and Kang. See Appeal Br. 10-11 (relying on the alleged deficiency of Schreiber and asserting that Kang fails to remedy such deficiency). DECISION The Examiner’s decision to reject claims 1—20 under 35 U.S.C. § 103(a) is 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)(l)(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation