SYK TECHNOLOGIES, LLC

Patent Trials and Appeals Board

Feb 23, 2022

2021003884 (P.T.A.B. Feb. 23, 2022)

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. 14/810,303 07/27/2015 J. W. Randolph Miller SYKT.005P1 5821 20995 7590 02/23/2022 KNOBBE MARTENS OLSON & BEAR LLP 2040 MAIN STREET FOURTEENTH FLOOR IRVINE, CA 92614 EXAMINER MURPHY, VICTORIA ART UNIT PAPER NUMBER 3785 NOTIFICATION DATE DELIVERY MODE 02/23/2022 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): efiling@knobbe.com jayna.cartee@knobbe.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte J. W. RANDOLPH MILLER and ROSS M. WILLE Appeal 2021-003884 Application 14/810,303 Technology Center 3700 ____________ Before STEFAN STAICOVICI, EDWARD A. BROWN, and MICHAEL J. FITZPATRICK, Administrative Patent Judges. FITZPATRICK, Administrative Patent Judge. DECISION ON APPEAL Appellant, SYK Technologies, LLC,1 appeals under 35 U.S.C. § 134(a) from the Examiner’s final decision rejecting claims 4-6 and 10-25. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE The Specification The Specification’s disclosure “relates . . . to apparatus and methods for analyzing and controlling delivery of nitric oxide over a comparatively wide range of dosage rates.” Spec. 1:18-20. 1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42 and identifies itself as the sole real party in interest. Appeal Br. 2. Appeal 2021-003884 Application 14/810,303 2 The Claims Claims 4-6 and 10-25 are rejected. Final Act. 1. Claims 1-3 and 7-9 are canceled. Id. at 2. Claim 4 is illustrative and reproduced below with key limitations italicized. 4. A method for precisely delivering nitric oxide, the method comprising: providing a ventilator delivering breathing air; providing a source of nitric oxide; providing a mixer combining the nitric oxide and the breathing air into a breathing mixture; providing a detector comprising a manifold receiving a portion of the breathing mixture, at least one sensor, capable of sensing at least one of oxygen, nitric oxide, and another oxide of nitrogen, and a diverter vectoring the portion of the breathing mixture toward the at least one sensor; the providing the detector, wherein the diverter is sized, shaped, and positioned to reduce an aerodynamic boundary layer of the portion of the breathing mixture proximate the at least one sensor; and providing control of a fraction of nitric oxide in the breathing mixture based on an output from the detector provided to the source of nitric oxide. Appeal Br. 22 (emphasis added). The Examiner’s Rejections The following rejections, all under 35 U.S.C. § 103, are before us: 1. claims 4, 5, 15, 16, and 21-23 as unpatentable over Miller,2 Mault,3 and Campbell4 (Final Act. 4); 2 US 2013/0022691 A1, published Jan. 24, 2013 (“Miller”). 3 US 6,612,306 B1, issued Sept. 2, 2003 (“Mault”). 4 US 5,816,704, issued Oct. 6, 1998 (“Campbell”). Appeal 2021-003884 Application 14/810,303 3 2. claims 6, 10-12, 17-19, 24, and 25 as unpatentable over Miller, Mault, Campbell, and Stenzler5 (id. at 12); 3. claims 13 and 14 as unpatentable over Miller, Mault, Campbell, and Toth6 (id. at 16); and 4. claim 20 as unpatentable over Miller, Mault, Campbell, Stenzler, and Toth (id. at 17). DISCUSSION Rejection 1 Appellant argues the patentability of all claims subject to this rejection together. Appeal Br. 13-21. We choose claim 4 as representative. 37 C.F.R. § 41.37(c)(1)(iv). The Examiner found that Miller teaches all of the subject matter of claim 4 except for the diverter and its features (i.e., the italicized limitations above). Final Act. 4-5. The Examiner relies on modifications of Miller in view Mault and Campbell in determining the subject matter of claim 4 would have been obvious. Id. at 5. Appellant’s paramount argument is that Miller is not prior art. Appeal Br. 13-15; Reply Br. 2-3. Appellant points out that the instant Application has a priority claim that includes the application that published as Miller, i.e., U.S. Patent Application Serial No. 13/197,695. Appeal Br. 14. But that is not enough. To qualify for an earlier filing date, section 120 requires, inter alia, that the earlier-filed U.S. patent application contain a disclosure which complies with 35 U.S.C. § 112, ¶ 1 (1994) for each claim in the newly filed application. Thus, this benefit only 5 US 6,581,599 B1, issued June 24, 2003 (“Stenzler”). 6 US 2014/0275857 A1, published Sept. 18, 2014 (“Toth”). Appeal 2021-003884 Application 14/810,303 4 applies to claims that recite subject matter adequately described in an earlier application, and does not extend to claims with subject matter outside the description in the earlier application. In other words, a claim complies with 35 U.S.C. § 120 and acquires an earlier filing date if, and only if, it could have been added to an earlier application without introducing new matter. Studiengesellschaft Kohle, M.B.H. v. Shell Oil Co., 112 F.3d 1561, 1564 (Fed. Cir. 1997) (internal citations omitted).7 Appellant argues: “The Office Action contains no assertion that . . . Appellant’s co-pending, non-provisional applications failed to comply with 35 U.S.C. §112.” Appeal Br. 14. But this is not correct. The Examiner specifically found that Miller, which is the published parent application, lacks a disclosure of the diverter and related features. Final Act. 5. Appellant does not dispute these findings. See Appeal Br. 13-15; Reply Br. 2-3. Instead, and after the Examiner repeats such findings (Ans. 5), Appellant argues that Miller is not prior art because it allegedly “does not name another inventor.” Reply Br. 2 (citing 35 U.S.C. § 102(a)(2)). This argument is late. See 37 C.F.R. § 41.41 (“Any argument raised in the reply brief which was not raised in the appeal brief, or is not responsive to an argument raised in the examiner’s answer, . . . will not be considered by the Board for purposes of the present appeal, unless good cause is shown.”). Further, this argument is without merit. Miller names J.W. Randolph Miller, John J. Miller, and Stephen H. Fairbanks as inventors. See Miller, code (76). The instant application names J.W. Randolph Miller and Ross M. Wille and, thus, “another inventor.” See Spec. 7 Section 112(a) is virtually identical to the former §112 ¶1 cited in Studiengesellschaft Kohle. Appeal 2021-003884 Application 14/810,303 5 cover page; see also Declaration of Ross M. Wille under 37 C.F.R. § 1.63 (filed Dec. 10, 2015). On the arguments and evidence before us, Miller is prior art to the claims on appeal. Appellant’s next argument is based on claim construction. One of the steps of the method of claim 4 recites: “providing a detector comprising a manifold receiving a portion of the breathing mixture, at least one sensor, capable of sensing at least one of oxygen, nitric oxide, and another oxide of nitrogen, and a diverter vectoring the portion of the breathing mixture toward the at least one sensor.” Appellant argues that this language requires “that the ‘at least one sensor’ is found in ‘a detector comprising a manifold.’” Appeal Br. 15. We disagree. Claim 4 recites “a detector comprising a manifold” but does not recite that the detector also comprises the at least one sensor. Thus, Appellant’s argument that the rejection relies on separate structures to satisfy the manifold and sensor limitations (see id.) does not apprise us of Examiner error. Appellant argues that a person of ordinary skill in the art would not have made the proposed modification of Miller/Mault in view of Campbell because “Campbell teaches removing the boundary layer to improve the measurement of dew point temperature.” Appeal Br. 16. Appellant identifies additional teachings related to measuring dew points and argues: “These teachings from Campbell do not amount to a conclusion that removing the boundary layer when measuring the concentration of nitric oxide in a flowing gas would achieve the same results.” Id. (emphasis added). Thus, according to Appellant, “the results of combining Appeal 2021-003884 Application 14/810,303 6 Miller/Mault and Campbell are not predictable.” Id.; see also id. at 17 (further arguing unpredictability). Appellant’s arguments are not persuasive. “Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. [Campbell] must be read, not in isolation, but for what it fairly teaches in combination with the prior art as a whole.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citation omitted). Further, there is no requirement that the diverter in the proposed combination achieve “the same results” as the diverter in Campbell, as Appellant implies. See Appeal Br. 16. “Obviousness does not require absolute predictability of success. . . . For obviousness under § 103, all that is required is a reasonable expectation of success.” In re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988). The record supports the finding, implicit in the Examiner’s rejection, that a person of ordinary skill in the art would have had a reasonable expectation of success, in the view of the cited prior art teachings, of “providing . . . a diverter vectoring the portion of the breathing mixture toward the at least one sensor; . . . wherein the diverter is sized, shaped, and positioned to reduce an aerodynamic boundary layer of the portion of the breathing mixture proximate the at least one sensor,” as recited in claim 4.8 We have considered Appellant’s arguments but they fail to apprise us of Examiner error in the rejection of claim 4. Accordingly, we affirm the rejection of claim 4, as well as that of claims 5, 15, 16, and 21-23, which fall therewith. 37 C.F.R. § 41.37(c)(1)(iv). 8 A “finding of a reasonable expectation of success is a question of fact.” Medichem S.A. v. Rolabo S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). Appeal 2021-003884 Application 14/810,303 7 Rejections 2-4 These rejections are of claims 6, 10-14, 17-20, 24, and 25, all of which are dependent claims. Appellant argues against these rejections solely on the basis of these claims’ dependency from independent claims. Appeal Br. 21. As Appellant fails to show error in the rejection of independent claims 4, 15 and 21, it likewise fails to show error in the rejection of claims 6, 10-14, 17-20, 24, and 25. Accordingly, we affirm the rejections of claim 6, 10-14, 17-20, 24, and 25. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 4, 5, 15, 16, 21-23 103 Miller, Mault, Campbell 4, 5, 15, 16, 21-23 6, 10-12, 17-19, 24, 25 103 Miller, Mault, Campbell, Stenzler 6, 10-12, 17-19, 24, 25 13, 14, 103 Miller, Mault, Campbell, Toth 13, 14, 20 103 Miller, Mault, Campbell, Stenzler, Toth 20 Overall Outcome 4-6, 10-25 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED