Ex Parte Amarasinghe

Patent Trial and Appeal Board

Jun 22, 2016

11794151 (P.T.A.B. Jun. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111794, 151 0612612007
23117 7590 06/24/2016
NIXON & V ANDERHYE, PC
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Amal Shirley Amarasinghe
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
PTB-4398-714 1417
EXAMINER
YOUNG, RACHEL T
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
06/24/2016 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AMAL SHIRLEY AMARASINGHE
Appeal2014-005716
Application 11/794, 151
Technology Center 3700
Before LYNNE H. BROWNE, JILL D. HILL, and LISA M. GUIJT,
Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Amal Shirley Amarasinghe ("Appellant") appeals under 35 U.S.C.
§ 134 from the Examiner's decision rejecting claims 1-18. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal2014-005716
Application 11/794, 151
CLAIMED SUBJECT MATTER
The claims are directed to a headgear assembly for attachment to a
patient interface. Claim 1, reproduced below, is representative of the
claimed subject matter:
1. A headgear assembly for attachment to a patient interface that
delivers breathable gas to a patient, including:
a pair of side portions and a rear portion that interconnects
the pair of side portions,
each of the side portions including an upper side strap and
a lower side strap,
the rear portion including an upper strap, a lower strap, and
intermediate connecting straps extending between the upper
strap and the lower strap, wherein:
a height from a bottom of the lower strap of the rear
portion to a top of the upper strap of the rear portion is less than
about 175 mm.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Amarasinghe
Smith
WO 02/47749 Al June 20, 2002
US 2003/0051732 Al Mar. 20, 2003
REJECTIONS
I. Claims 1-5 and 8-18 1 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Amarasinghe and the admitted prior art2.
1 The statement of this rejection omits claims 15-18; however, the
explanation includes claims 15-18. Accordingly, we understand the
omission of claims 15-18 to be a typographical error.
2 Throughout prosecution the Examiner refers to the instant application as
"Amarasinghe 151 '" and Appellant refers to the instant application as
"Amarasinghe '151." In order to avoid confusion between the instant
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Appeal2014-005716
Application 11/794, 151
IL Claims 6 and 7 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Amarasinghe, the admitted prior art, and Smith.
OPINION
Rejection I
Regarding independent claim 1, the Examiner finds that Amarasinghe
discloses all of the limitations of claim 1 except for "the height from a
bottom of the lower strap of the rear portion to a top of the upper strap of the
rear portion." Final Act. 3. The Examiner further finds that the admitted
prior art discloses "a height range between 196 mm and 168 mm (196-9-
19= 168) since it is unclear if the raised portion of the bottom portion of the
lower strap is at the same height as the bottom of the rear portion." Id.
Based on these findings, the Examiner determines that it would have been
obvious to one skilled in the art "to modify [ Amarasinghe' s] height with a
height between 196 mm and 168 mm, as taught by [the admitted prior art]
for the purpose of providing comfort to a user depending on their head size."
Id. The Examiner further determines that:
it would have been obvious to one having ordinary skill in the
art at the time the invention was made to modify the modified
[ Amarasinghe] height with a height less than 17 5 mm, since it
has been held that discovering an optimum value of a result
effective variable involves only routine skill in the art.
application and US Patent No. 7,509, 958 to Amarasignhe, we refer to "the
admitted prior art" when referencing the instant application and
"Amarasignhe" when referencing the US Patent No. 7,509,958.
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Application 11/794, 151
Id. Thus, we understand the Examiner to find that the height between the
bottom of the lower strap of the rear portion to the top of the upper strap of
the rear portion is a result-effective variable.
Noting how the Examiner determined a height in the range of 196 mm
to 168 mm, Appellant contends that the Examiner's "analysis is flawed."
Appeal Br. 10. In support of this contention, Appellant "submits that the
'bottom of the lower strap of the rear portion' is a distinct location from
either the bottom of the wider portion of the bottom strap or the top of the
bottom strap" and that the admitted prior art "does not disclose a height
dimension for the rear portion 708." Id.
Appellant is correct that the Figures of the admitted prior art provide
insufficient information to precisely calculate the height from the bottom of
the lower strap of the rear portion to a top of the upper strap of the rear
portion. Accordingly, the Examiner's determination that this height is
within the range of 196 mm to 168 mm is speculative.
Appellant further argues that the prior art fails to "recognize[] that the
claimed strap height is a result-effective variable that would be obvious to
optimize." Appeal Br. 12; see also Reply Br. 3--4.
Responding to this argument, the Examiner explains that "the height
claimed does achieve a recognized result of affecting fit and comfort of the
user depending on the shape and size of the user's head and there is a clear
relationship between the height dimension claimed and the functionality of
providing a proper fit and comfort to a user." Ans. 12.
Although the Specification describes the relationship between the
dimensions of the headgear and the comfort and fit of the headgear (see e.g.
Spec. i-f 7), the Examiner provides no evidence in the prior art that the height
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Appeal2014-005716
Application 11/794, 151
between the bottom of the lower strap of the rear portion to the top of the
upper strap of the rear portion is a result-effective variable. "[W]here the
general conditions of a claim are disclosed in the prior art, it is not inventive
to discover the optimum or workable ranges by routine experimentation." In
re Aller, 220 F.2d 454, 456 (C.C.P.A. 1955). However, before a variable
can be optimized through routine experimentation, it must first be
recognized in the prior art as result-effective. See In re Antonie, 559 F.2d
618, 620 (C.C.P.A. 1977) (emphasis added). Thus, Appellant apprises us of
error.
For these reasons, we do not sustain the Examiner's decision rejecting
independent claim 1 and claims 2-5 and 8-16, which depend therefrom.
Rejection II
Claims 6 and 7 depend from claim 1 and rely upon the same
erroneous finding as the rejection of claim 1 discussed supra. Accordingly,
we do not sustain the Examiner's decision rejecting claims 6 and 7.
DECISION
The Examiner's rejections of claims 1-18 are REVERSED.
REVERSED
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