Ronald D. Matich

Patent Trials and Appeals Board

Dec 4, 2019

13754875 - (D) (P.T.A.B. Dec. 4, 2019)

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.
13/754,875 01/30/2013 Ronald D. Matich RDM-InnerSeal-2A 1031
23165 7590 12/04/2019
ROBERT J JACOBSON PA
650 BRIMHALL STREET SOUTH
ST PAUL, MN 551161511
EXAMINER
STUART, COLIN W
ART UNIT PAPER NUMBER
3785
MAIL DATE DELIVERY MODE
12/04/2019 PAPER
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 RONALD D. MATICH
____________

Appeal 2018-003033
Application 13/754,875
Technology Center 3700
____________

Before JAMES P. CALVE, MICHELLE R. OSINSKI, and
JEREMY M. PLENZLER, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–16 and 18–20.2 An oral hearing was held on
November 7, 2019.3 We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Breathe Safely, Inc.
Appeal Br. 4.
2 Claim 17 is allowed. Final Act. 13.
3 The record includes a transcript of the oral hearing (“Tr.”).
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Application 13/754,875

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THE CLAIMED SUBJECT MATTER
Claims 1 and 15 are independent. Claim 1 is reproduced below.
1. A disposable filtering passive face mask for a face, the
face having nostrils, a mouth and chin, comprising:
a) a covering for the nostrils and mouth, the covering
having a periphery, the covering having an inside confronting the
face, and the covering having an exterior opposing the inside and
facing away from the face, the inside of the covering having a
single and common face;
b) a first endless skin adhesive seal on the single and
common face of the inside of the covering;
c) a second endless skin adhesive seal on the single and
common face of the inside of the covering, the second endless
skin adhesive seal being spaced from the first endless skin
adhesive seal, and the second endless skin adhesive seal
confronting the first endless adhesive seal;
d) wherein the covering is structured to permit air into and
out of the covering and wherein the covering is structured to
minimize a flow of substances into the covering, the covering
comprising a filter;
e) wherein the first endless skin adhesive seal has a first
diameter, wherein the second endless skin adhesive seal has a
second diameter, wherein the first diameter is greater than the
second diameter, wherein the first endless skin adhesive seal is
disposed outwardly of the second endless skin adhesive seal such
that a toxic substance that finds a way through the first endless
skin adhesive seal must wind through a space between the first
and second endless skin adhesive seals until finding a way
through the second endless skin adhesive seal before being
drawn by breathing into the nostrils and mouth such that the first
and second endless skin adhesive seals provide a tortuous path
for toxic substances to guard against the entry of toxic substances
drawn into the nostrils and mouth by breathing;
f) wherein the face mask is a disposable face mask;
g) wherein the face mask is a passive face mask; and
h) wherein the periphery of the face mask is adapted to
completely surround the nostrils and mouth.
Appeal 2018-003033
Application 13/754,875

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EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Bordewick US 6,341,606 B1 Jan. 29, 2002
Huang US 2004/0231023 A1 Nov. 25, 2004
Bansal US 2009/0211581 A1 Aug. 27, 2009

REJECTIONS4
I. Claims 1–7, 9–16, and 18–20 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Huang and Bordewick. Final Act. 4–13.
II. Claim 8 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Huang, Bordewick, and Bansal. Id. at 13.
OPINION
Rejection I
Independent Claims 1 and 15
The Examiner finds that Huang teaches most of the limitations of the
independent claims, but “is silent as to including a second endless skin
adhesive seal on the inside of the covering spaced apart [from] and
confronting the first seal.” Final Act. 4–5 (independent claim 1), 8–9
(independent claim 15). The Examiner finds that “Bordewick teaches a
respiratory mask which includes a second endless seal spaced from and
confronting a first seal (see seals 106A and 106B Fig. 4).” Id. at 5, 9. The
Examiner concludes that it would have been obvious to “modify the Huang
device to include the second endless adhesive seal, as taught by Bordewick,

4 A rejection of claim 19 under 35 U.S.C. §112, second paragraph as being
indefinite (Final Act. 3) has been withdrawn (Ans. 12) and is not before us
on appeal.
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in order to provide a stronger sealing arrangement in case one of the seals
fails.” Id. The Examiner clarifies in the Answer that “the combination did
not involve any modification to the mask structure of Huang[,] but only
involved modification of the sealing structure to be a double sealing
structure as taught by Bordewick” and that “[i]t is . . . obvious in the art to
duplicate such structure as supported by MPEP [§] 2144.04 VI B.” Ans. 16.
Appellant raises the threshold issue of whether Bordewick is
analogous art. See Appeal Br. 8–11. References that qualify as analogous
art to the claimed invention may be considered as prior art for an
obviousness determination. In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir.
2004) (citing In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992)). A prior art
reference is analogous to an application (1) if it is from the same field of
endeavor as the inventor’s, regardless of the problem addressed, or (2) if the
reference is not within the field of the inventor’s endeavor, it is nonetheless
reasonably pertinent to the particular problem with which the inventor is
involved. Id. (citations omitted). The “field of endeavor” prong asks if the
structure and function of the prior art is such that it would be considered by a
person of ordinary skill in the art because of the similarity to the structure
and function of the claimed invention as disclosed in the application. Id. at
1325–27. With respect to the second prong, a reference is reasonably
pertinent if it is one that, because of the matter with which it deals, would
have logically commended itself to an inventor’s attention in considering the
invention as a whole. In re ICON Health & Fitness, Inc., 496 F.3d 1374,
1379–80 (Fed. Cir. 2007).
The Examiner determines that “[o]ne of ordinary skill in the art at the
time the invention was made would have . . . reasonably looked to other
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respiratory mask references dealing with adhesive sealing structures
provided between the mask and the user.” Ans. 14. Appellant argues that
“[t]he particular problem with which the inventor is involved is preventing
toxic substances from entering the mouth and nostrils.” Appeal Br. 10
(citing Spec. ¶ 805). Appellant contends that Bordewick is concerned with
the different problem of “maintain[ing] a constant pressure.” Id.
One underlying problem with which Appellant was involved (in order
to prevent toxic substances from entering a user’s mouth and nostrils) was
trying to address the “unique and undulating” nature of “[f]aces” and the
need for a face mask to “fit, with great effectiveness, the face of an adult or
the face of a child.” Spec. 1:28–30, 4:10–11. In other words, the face mask
must provide an effective seal for users with very different facial features.
Bordewick similarly teaches that one problem it was concerned with is
“ensur[ing] that the face piece forms a seal with the face of the patient” and
a “drawback of related art respiratory masks is that inflexible face pieces do
not accommodate a variety of sizes of patients.” Bordewick 1:24–25, 49–
51; see also id. at 3:29–32 (“The adhesive strips 106 therefore accommodate
faces of different sizes while retaining a substantially airtight seal (airtight
defined as a barrier to any type of gas.”).
Accordingly, we agree with the Examiner that Bordewick is
reasonably pertinent to a problem with which the inventor is involved.
Ans. 14–15. Therefore, we determine Bordewick is analogous art to the
present application.

5 Paragraph 80 of the Specification as identified by Appellant appears to
correspond to page 13, lines 12–17 of the Specification as filed.
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Appellant next argues that “[t]he Bordewick . . . reference does not
show a double seal,” but rather “shows a single seal on a first ply and a
single seal on a second ply.” Appeal Br. 13 (emphasis omitted). Appellant
contends that “[t]he Examiner must take the entire sealing structure of
Bordewick.” Id. at 14. The Examiner responds that “the plies of material of
the mask of Bordewick are not part of the sealing structure of Bordewick[,]
but rather [are] part of the mask to which the sealing structure seals the
user’s face,” such that the Examiner need not modify Huang to utilize
Bordewick’s plies. Ans. 16. The Examiner further responds that “the
[E]xaminer is not necessarily physically borrowing either of seals 106a and
106b, but rather the [E]xaminer is borrowing the idea of a double adhesive
seal structure.” Id.
The Examiner explains that although Bordewick utilizes its double
sealing structure with a bag mask that includes two plies, Huang does not
have a two-ply filter covering. Id. at 16–17. According to the Examiner,
modification of Huang’s filter covering 11 with Bordewick’s double sealing
structure would result in the claimed device. Id. Bordewick teaches two
adhesive strips 106A, 106B for use in connection with a single bag 103, and
accordingly, we do not find error by the Examiner in utilizing Bordewick’s
general teaching of a double adhesive seal structure in connection with
Huang’s single covering element.
Appellant suggests that Appellant’s “invention has become a template
for the combination of Huang and Bordewick.” Appeal Br. 14. We
disagree. The Examiner cites Huang for a first endless skin adhesive seal on
a face covering, the inside of the face covering being made up of single and
common face. Final Act. 4 (citing Huang Figs. 3–4). The Examiner cites
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Bordewick for teaching or suggesting the use of multiple seals for a single
bag element. When considering that Bordewick’s adhesive strips 106 go
completely around the nose of a user (Bordewick Figs. 1–3), the detail of the
skin-to-mask interface in Figure 4 of Bordewick (id. at 2:22–23; Fig. 4)
shows two adhesive strips 106A, 106B that would generally follow the same
shaped outline around a user’s nose, with one adhesive strip defining an
outline more inwardly disposed of the outline defined by the other adhesive
strip (i.e., more toward the shared center of both outlines). Thus, the
Examiner has sufficiently pointed to teachings in the references themselves
to suggest how a second endless skin adhesive seal would be positioned
relative to the first endless skin adhesive seal of Huang when Huang is
modified in accordance with the teachings of Bordewick. Ans. 16–17.
Thus, we do not view the Examiner as improperly relying upon what one of
ordinary skill in the art would have recognized only after reading
Appellant’s Specification in order to support the Examiner’s rejection.
Accordingly, the Examiner has not used Appellant’s Specification as a
template for the combination of Huang and Bordewick as argued by
Appellant.
We have also considered Appellant’s other arguments, including that
the Examiner has not found a seal that is spaced from the periphery of one
layer of material, and thus has failed to support how the references would
have led one of ordinary skill in the art to the claimed arrangement of first
and second adhesive seals. Appeal Br. 19. More particularly, Appellant
argues that Huang “shows only a single seal on a periphery” and Bordewick
only “shows a first seal on a first periphery and a second seal on a second
periphery.” Id. As explained above, when taking (i) Bordewick’s teaching
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of two adhesive strips for attaching a bag to a wearer’s face, the two
adhesive strips forming two outlines around a user’s nose in which one
adhesive strip defines an outline positioned more toward the shared center of
both outlines, in connection with (ii) Huang’s teaching of a particular filter
covering, the Examiner has adequately explained how one of ordinary skill
in the art would arrive at the claimed invention. See Ans. 16–17.
Appellant additionally contends that objective evidence in the form of
unexpected results, as supported by a Declaration Under 37 C.F.R. § 1.132
of Jeff Weed (“the Weed Declaration” or “the Declaration” or “Decl.”),
establishes the nonobviousness of the claimed invention. See Appeal
Br. 45–49. More specifically, Appellant argues that the Examiner did not
properly consider the Weed Declaration. See id. The Weed Declaration
provides test results of 2008 and 2014 evaluations relating to respirator fit.
Decl. ¶ 15. Appellant points to the statements in the Declaration that the
Declarant found a “271% improvement in the fit factor over a single bead
adhesive to be unexpected” and a “fit factor of 598 with a six-fold
improvement over a single bead adhesive, to be surprisingly and
unexpectedly better than the result of a 109 fit factor for the single bead
adhesive.” Id. at 46–47 (quoting Decl. ¶¶ 44–46, 54–55); see also Decl.
¶¶ 37, 39, 40 (setting forth test data for the 2008 evaluation in Tables 1–3,
respectively).
Appellant queries, in response to the Examiner’s statement that testing
must compare the claimed subject matter to the closest prior art, how its
testing could have compared the claimed subject matter to “Huang as
modified by Bordewick” because “[a] modified Huang device is an artificial
imagined device created by the Examiner.” Id. at 48.
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The Examiner responds:
Testing shown in Table 1 compares a double adhesive seal to a
respirator with no adhesive seal. Testing shown in Table 2
compares a single adhesive seal to no adhesive seal. Testing
shown in Table 3 compares [a] single adhesive seal to no
adhesive seal. Additionally it appears that the 2014 Evaluation
involves bridges between the first and second adhesive seals (see
#49 of the [D]eclaration and page 2 of [E]xhibit A, Figure on
right and second paragraph). Thus Appellant’s argument (and
Declarant[’]s statement) that a double adhesive seal provided
unexpected results over a single adhesive seal is not well-taken
as the [D]eclaration and the testing explained within, did not test
the claimed invention (double adhesive seal, no adhesive
bridges) compared to the closest prior art (single adhesive seal,
Huang).
Ans. 30–31. We agree with the Examiner that the testing results set forth in
the Declaration do not support the Declarant’s statement that a double seal
(or double bead) provided unexpected improvement as compared to a single
seal (or single bead) taught in the prior art in that there is never a direct
comparison of the results of a double seal to the results of a single seal.
Instead, the testing results compare a double seal to no seal for a first set of
test subjects, and a single seal to no seal for a different set of test subjects
(see column labeled “Subject No.” in Tables 1–3; Tr. 5:4–20), making even
an indirect comparison of the results of a double seal to a single seal
impossible.
“[W]hen unexpected results are used as evidence of nonobviousness,
the results must be shown to be unexpected compared with the closest prior
art.” In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (citing
In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984)). Because there is
never a direct or even indirect comparison between the double seal and the
single seal, the Declaration fails to establish that any improved fit factor is
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due to features recited in the claims (e.g., a double seal) and not merely due
to those features present in prior art respirators such as Huang (e.g., a single
seal). The Weed Declaration does not provide sufficient evidence to support
the assertion of superior or unexpected results for a double seal as compared
to a single seal. Moreover, Appellant acknowledges that the Weed
Declaration is not strong evidence of non-obviousness. See Tr. 6:14–7:5.
Appellant also suggests that the dearth of prior art references
regarding face masks with double seals uncovered by both the United States
Patent and Trademark Office (“USPTO”) and the European Patent Office is
evidence of the nonobviousness of using two seals instead of just one seal.
Tr. 11:18–12:15.6 Just as “[t]he mere age of the references is not persuasive
of the unobviousness of the combination of their teachings, absent evidence
that, notwithstanding knowledge of the references the art tried and failed to
solve the problem” (In re Wright, 569 F.2d 1124, 1127 (CCPA 1977)), we
do not view the absence of prior art references disclosing a double seal alone
or on its face to be persuasive of the nonobviousness of the Examiner’s
combination of the references. Appellant has provided no objective
evidence in the record before us that establishes the existence of a problem
which was of concern in the face mask industry and has remained unsolved.
See Vandenberg v. Dairy Equip. Co., 740 F.2d 1560, 1567 (Fed. Cir. 1984).7

6 Appellant explained that it is “not relying on the fact that the European
Patent Office issued a patent” as the basis for patentability in the United
States. Tr. 12:16–17. We would not have found such an argument
persuasive at least in that patentability criteria vary among different
sovereign states and the USPTO is not bound by the patentability
determinations of foreign patent offices.
7 This can be accomplished, for example, by the testimony of experts in the
industry, or publications and the like, which speak to the duration and extent
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Accordingly, having fully considered Appellant’s evidence of
nonobviousness, including the arguments pertaining to unexpected results
and the dearth of prior art teaching a double seal, we agree with the
Examiner that the evidence of obviousness, on balance, outweighs the
evidence of nonobviousness.
For the foregoing reasons, we sustain the rejection of independent
claims 1 and 15 under 35 U.S.C. § 103(a) as unpatentable over Huang and
Bordewick.
Dependent Claims 2 and 3
Dependent claim 2 recites “a third endless skin adhesive seal on the
inside of the covering, the third endless skin adhesive seal being spaced from
the second endless skin adhesive seal, the third endless skin adhesive seal
confronting the second endless skin adhesive seal.” Appeal Br. 50–51
(Claims App.). Dependent claim 3 includes similar recitations regarding a
“fourth endless skin adhesive seal.” Id. at 51 (Claims App.). The Examiner
acknowledges that the cited prior art references are “silent as to explicitly
including a third and fourth adhesive seal,” but the Examiner concludes that
“the exact number, 2–4, of seals would have been obvious to try to obtain
greater protection from leakage and toxin intake from the sides of the mask.”
Final Act. 6. The Examiner also explains that it would have been obvious
“to duplicate such structure as supported by MPEP [§] 2144.04 VI B.”
Ans. 21.

of a problem, and of the substantial effort and resources which had been
expended during that time in attempts to solve the problem. See Railroad
Dynamics, Inc. v. A. Stucki Co., 579 F. Supp. 353, 363 (E.D. Pa. 1983), aff’d
727 F.2d 1506 (Fed. Cir. 1984).
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Appellant argues that a “rejection based on ‘design choice’ must fail”
because Appellant’s “[S]pecification explicitly discloses that the structure
recited in each of dependent claims 2 and 3 has advantages and serves
particular purposes.” Appeal Br. 21 (citing Spec. ¶¶ 21, 798). We do not
find this argument persuasive in that the Examiner’s rejection of claims 2
and 3 does not appear to be based on design choice, but rather on the
reasoning that additional seals would provide greater protection for leakage
and toxin intake from the sides of the mask. See Final Act. 6. For the
foregoing reasons, we sustain the rejection of dependent claims 2 and 3
under 35 U.S.C. § 103(a) as unpatentable over Huang and Bordewick.
Dependent Claim 4
Dependent claim 4 recites that “the first endless adhesive seal
confronts the periphery of the covering.” Appeal Br. 51 (Claims App.). The
Examiner finds that Huang teaches this feature. Final Act. 6 (citing Huang
Figs. 3–5). Appellant presents similar arguments to those discussed above in
connection with the independent claims that Huang and Bordewick do not
teach or suggest seals other than those on or near a periphery. Appeal
Br. 22–23. For the same reasons discussed above in connection with the
independent claims, we do not find these arguments persuasive and we
sustain the rejection of dependent claim 4 under 35 U.S.C. § 103(a) as
unpatentable over Huang and Bordewick.

8 Paragraphs 21 and 79 of the Specification as identified by Appellant appear
to correspond to page 4, lines 10–11 and page 13, lines 4–11, respectively,
of the Specification as filed.
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Dependent Claims 5–7, 9–14, 16, and 18–20
Although Appellant argues claims 5–7, 9–14, 16, and 18–20 under
separate headings, Appellant essentially relies on the same arguments
presented in connection with the independent claims as the basis for
reversal. Appeal Br. 24–44. For the same reasons discussed above in
connection with the independent claims, we do not find these arguments
persuasive and we sustain the rejection of dependent claims 5–7, 9–14, 16,
and 18–20 under 35 U.S.C. § 103(a) as unpatentable over Huang and
Bordewick.
Rejection II
Appellant relies on the same arguments presented in connection with
the independent claims as the basis for reversal of the rejection of claim 8.
Appeal Br. 44–45. For the same reasons discussed above in connection with
the independent claims, we do not find these arguments persuasive and we
sustain the rejection of dependent claim 8 under 35 U.S.C. § 103(a) as
unpatentable over Huang, Bordewick, and Bansal.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–7, 9–16,
18–20
103(a) Huang, Bordewick 1–7, 9–16,
18–20

8 103(a) Huang, Bordewick,
Bansal
8
Overall
Outcome
1–16, 18–
20

No time period for taking any subsequent action in connection with
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this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED