Ex Parte Kotlyar et al

Patent Trial and Appeal Board

Mar 17, 2017

12420764 (P.T.A.B. Mar. 17, 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.
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