Ex Parte Antoine

Patent Trials and Appeals Board

Apr 22, 2019

15607454 - (D) (P.T.A.B. Apr. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/607,454 05/27/2017
138757 7590 04/26/2019
QuickChore Corp.
701 Tennessee Avenue #201
Alexandria, VA 22305
FIRST NAMED INVENTOR
Jennifer Dawn Antoine
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.
JA.0003 7599
EXAMINER
MATTER, KRISTEN CLARETTE
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
04/26/2019 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):
awhittington@quickchore.com
anthony.whittingtonl@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JENNIFER DAWN ANTOINE
Appeal2018-006239
Application 15/607 ,454
Technology Center 3600
Before STEFAN STAICOVICI, LEE L. STEPINA, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jennifer Dawn Antoine ("Appellant") 1 appeals under 35 U.S.C. § 134(a)
from the Examiner's decision in the Final Office Action (dated Jan. 4, 2018,
hereinafter "Final Act.") rejecting claims 1-23. We have jurisdiction over this
appeal under 35 U.S.C. § 6(b ).
SUMMARY OF DECISION
We AFFIRM.
1 Jennifer Dawn Antoine is identified as the real party in interest in Appellant's
Appeal Brief (filed Feb. 1, 2018, hereinafter "Br."). Br. 2.
Appeal2018-006239
Application 15/607,454
INVENTION
Appellant's invention relates to "surgical anesthesia masks." Spec. para. 2.
Claims 1, 7, and 15 are independent. Claim 1 is illustrative of the claimed
invention and reads as follows:
1. A mask comprising:
a tubing portion having a fastener portion;
a face receptacle portion having a valve portion, the face
receptacle portion being coupled to the tubing portion for
facilitating the transfer of one or more fluids to a patient,
wherein the face receptacle portion has a semi-filled, dome
shape with a gap between 2.5 inches and 5.5 inches to form a
V-shape;
an air cushion for providing a comfortable seal to the
skin, wherein the air cushion has an inflated cavity with a
thickness between 1.3 and 1.5 inches; and
the mask is composed of at least three of: silicone,
polyvinyl chloride (PVC), latex, and plastic.
REJECTI0NS 2
I. The Examiner rejects claims 1-23 under U.S.C. § 112(b) as being indefinite.
II. The Examiner rejects claims 21-23 under U.S.C. § 112(d) as being of
improper dependent form.
III. The Examiner rejects claims 1, 3, 5, 6, and 21 under 35 U.S.C. § 103 as
being unpatentable over Hellings et al. (US 5,975,079, iss. Nov. 2, 1999,
hereinafter "Hellings"), Anthony (WO 2014/125066 Al, pub. Aug. 21,
2 Appellant seeks to have us review the Examiner's objections to an amendment to
the Specification and the Drawings, filed December 1, 2017, on the basis that the
amendment introduces new matter in the disclosure (see Final Act. 5---6). Br. 5---6.
However, such objections constitute petitionable matters and, thus, are not within
the jurisdiction of the Board. See In re Mindick, 371 F.2d 892, 894 (CCPA 1967).
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Application 15/607,454
2014), Carroll et al. (US 2011/0162654 Al, pub. July 7, 2011, hereinafter
"Carroll"), and Ho (US 2011/0232647 Al, pub. Sept. 29, 2011).
IV. The Examiner rejects claims 2, 4, 7-20, 22, and 23 under 35 U.S.C. § 103 as
being unpatentable over Hellings, Anthony, Carroll, Ho, and Chandran et al.
(US 2006/0174887 Al, pub. Aug. 10, 2006, hereinafter "Chandran").
ANALYSIS
Rejection I
Claims 1-20
The Examiner determines that the limitation "the air cushion has an inflated
cavity with a thickness between 1.3 and 1.5 inches," as recited by each of
independent claims 1, 7, and 15, is indefinite "because the [S]pecification does not
provide any guidance on what dimension the thickness is referring to." See Final
Act. 7; see also Br. 12-14 (Claims App.). According to the Examiner, "the
'thickness' of an inflated air cushion ... can be referring to the thickness of the
wall material itself, the thickness from the patient's face (e.g., a diameter of the
cavity) in use, or the distance across the entire cushion from one side to another."
Final Act. 7.
Appellant argues that the claimed thickness "is defined by the claims and [it]
includes the wall material thickness associated with the air cushion when the air
cushion is in the inflated state." See Br. 6 (citing Spec. para. 22).
We do not agree with Appellant's construction because although the claims
are interpreted in light of the Specification, limitations from the Specification are
not read into the claims. See Superguide Corp. v. DirecTV Enterprises, Inc., 358
F.3d 870, 875 (Fed. Cir. 2004). In this case, paragraph 22 of the Specification,
which Appellant points to as support, merely states that "[t]he thickness of the air
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Application 15/607,454
cushion portion may range from .0001 mm to 1000 mm or .0001 inches to 100
inches." Nonetheless, even though paragraph 22 refers to the thickness of the "air
cushion portion," the claims are more limiting as the term "thickness" specifically
relates to "an inflated cavity." In other words, the use of the term "inflated" makes
it clear that the term "thickness" refers to the interior of the cavity in an inflated
state. See also Final Act. 7 ("diameter of the cavity").
As such, for the foregoing reasons, we do not sustain the rejection under 35
U.S.C. § 112(b) of independent claims 1, 7, and 15, and their respective dependent
claims 2---6, 8-14, and 16-20, as being indefinite.
Claims 21-23
Claims 21-23 depend from independent claims 1, 7, and 15, respectively,
and each of claims 21-23 recites "wherein the face receptacle portion has a semi-
filled, dome shape." See Br. 15 (Claims App.) ( emphasis added).
The Examiner determines that the limitation of "a semi-filled, dome shape"
in each of claims 21-23 is indefinite as "it is unclear if the dome shape is the same
as that already claimed in independent claims 1, 7, and 15 because these claims
already have a semi-filled dome shape. Final Act. 7.
Appellant argues that "the dome shape of claims 1, 7 and 15 is a different
dome shape by virtue of a smaller gap in dependent claims 21-23." Br. 6.
Claim language should be read in light of the Specification, as it would be
interpreted by one of ordinary skill in the art. In re Suitco Surface, Inc., 603 F .3d
1255, 1260 (Fed. Cir. 2010). In this case, Appellant's Specification describes face
receptacle 1 as having "a domed shape or raised portion," wherein "the dome
shaped portion may have a thickness, width, and length in the range of .0001
inches to 100 inches." Spec. para. 16. As such, although a dimension, such as the
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Application 15/607,454
gap, of the dome shaped portion may vary in the range of .0001 inches to 100
inches, the resulting "dome shaped portion" is still in the shape of a dome.
Accordingly, in light of the Specification, we do not agree with Appellant's
position that a smaller gap results in a different dome shape. See Br. 6. In other
words, providing a smaller gap to a dome shaped portion merely results in a dome
shaped portion having a smaller gap and not a different dome shaped portion, as
Appellant contends.
As Appellant's Specification describes a face receptacle 1 having a single
"domed shape or raised portion" and Appellant's Figure 1 illustrates the same, the
Examiner is correct that "referring back to ... [the semi-filled dome shape] with
'a' instead of 'the' or 'said' makes it unclear if they are intended to be the same
element or separate ones." Examiner Answer 6 ( dated Mar. 1, 2018, hereinafter
"Ans."); see also Spec., Fig. 1. 3
Accordingly, for the foregoing reasons, we sustain the rejection under 35
U.S.C. 112(b) of claims 21-23 as being indefinite.
Rejection II
Each of independent claims 1, 7, and 15 recites "the face receptacle portion
has a semi-filled, dome shape with a gap between 2.5 inches and 5.5 inches to form
a V-shape." Br. 12-14 (Claims App.) (emphasis added). Each of dependent
claims 21-23, which depend from independent claims 1, 7, and 15, respectively, in
tum, recites "wherein the face receptacle portion has a semi-filled, dome shape
with a gap between 2.6 inches and 5.5 inches to form a U-shape." Id. at 15
( emphasis added).
3 We refer to Appellant's Drawings filed May 27, 2017.
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The Examiner finds that as independent claims 1, 7, and 15 "already have a
V-shape," the recitation of a "U-shape" in dependent claims 21-23 does not further
limit the scope of independent claims 1, 7, and 15. Final Act. 8. According to the
Examiner, each of claims 21-23 is of improper dependent form because each claim
"remove[s] the V-shape and instead claim[s] a U-shape." Id.
Appellant argues that "dependent claims 21-23 further limit independent
claims 1, 7, and 15 by narrowing the gap range of the dome shape," wherein "[t]he
narrow gap range of the dome shape refers to the U shape" and "[t]he broad gap
range of the dome shape refers to the V-shape." Br. 7. Thus, according to
Appellant, "the various ranges of the gaps have different names." Id.
We appreciate that dependent claims 21-23 narrow the gap range of the
dome shape from "between 2.5 inches and 5.5 inches" to "between 2.6 inches and
5.5 inches." See Br. 12-15. However, we do not agree with Appellant that
dependent claims 21-23 also narrow the shape of the dome from the "V-shape" of
independent claims 1, 7, and 15 to a "U-shape." In other words, we do not agree
that the "U-shape" of dependent claims 21-23 is narrower than the "V-shape" of
independent claims 1, 7, and 15, from which claims 21-23 respectively depend.
Stated differently, claims 21-23 do not include all the limitations of
independent claims 1, 7, and 15, because the recitation of a "U-shape" in claims
21-23 constitutes non-overlapping subject matter with respect to the "V-shape" of
independent claims 1, 7, and 15. See Pfizer, Inc. v. Ranbaxy Labs. Ltd., 457 F.3d
1284, 1291 (Fed. Cir. 2006) ("In other words, claim 6 does not narrow the scope of
claim 2; instead, the two claims deal with non-overlapping subject matter."). Here,
Appellant's Specification describes face receptacle 1 as having a "U-shape, V-
shape, or any semi-filled shape design known to those skilled in the art." Spec.
para. 16. As such, the Specification describes a U-shape as an alternative shape
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Application 15/607,454
design to a V-shape for a face receptacle portion rather than as a type of or a
further-limited V-shape. Accordingly, we agree with the Examiner that merely
narrowing the gap "would have no effect on whether a shape was considered to be
U or V." Ans. 7. For example, a V-shape with a narrower gap would still be a V-
shape.
Hence, although claims 21-23 are narrower with respect to the gap range of
the dome shape, they are also broader in regards to the shape of the dome, and,
thus, recite non-overlapping subject matter. Accordingly, because claims 21-23
recite certain subject matter that does not overlap with the subject matter of
independent parent claims 1, 7, and 15, claims 21-23 fail to satisfy 35 U.S.C.
§ 112(d). See Pfizer, 457 F.3d at 1291. Therefore, we sustain the rejection under
35 U.S.C. § 112(d) of claims 21-23.
Rejection III
Appellant does not present arguments for the patentability of claims 3, 5,
and 6 apart from claim 1. See Br. 7-9. Therefore, in accordance with 3 7 C.F .R. §
4I.37(c)(l)(iv), we select claim 1 as the representative claim to decide the appeal,
with claims 3, 5, and 6 standing or falling with claim 1. In view of Appellant's
arguments, we will address the rejection of claim 21 separately. See Br. 10.
The Examiner finds that Hellings discloses a mask including, inter alia, a
face receptacle portion 1, 5, 6 having "a semi-filled dome shape (9; see Figures 1-
2) with a gap that is V-shaped." Final Act. 9 (citing Hellings, Figs. 1, 2).
However, the Examiner finds that although Hellings "discloses that the shape
allows the mask to 'curve around the nasal bridge,"' Hellings is "silent as to the
dimensions of the mask." Id. Nonetheless, the Examiner finds that in Anthony
"the dimensions of a mask depend on the characteristics of the human face" and,
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Application 15/607,454
furthermore, Anthony discloses "exemplary dimensions that overlap the claimed
ranges." Id. at 10. For example, the Examiner finds in Anthony that "a distance
[L] from the top to bottom of the mask can range from 5-25 cm (1.97-9.84 inches;
see page 7, lines 25-30) and ... a distance [W] from the left to the right side can
range from 7-20 cm (2.76-7.87 inches; see page 7, lines 30-35)." Id. at 10; see also
Anthony, Fig. 2. The Examiner further finds that Anthony's nose portion T has
dimensions HT, BT ranging from 2 to 8 cm (0.79-3.15 inches). Final Act. 10.
Thus, the Examiner concludes that
Id.
[I]t would have been obvious to one of ordinary skill in the art . . . to
have made the mask of Hellings the claimed dimensions in order to
accommodate an adult human face for example. Such a modification
involves the mere optimization of a value within a well-known
workable range, yielding predictable results that do not patentably
distinguish an invention over the prior art.
The Examiner further finds that although Hellings' mask includes "an
inflatable air cushion (7 - the cavity being the area inside the wall of the cushion as
is known in the art) for providing a comfortable seal," Hellings is "silent as to the
thickness of the inflated cavity". Id. Nonetheless, the Examiner finds that Carroll
discloses a face mask having "cushions with a thickness of 30-40mm (1.18-1.57
inches; see paragraph 208) and that may be filled with air (see paragraph 113)."
Id. Thus, the Examiner further determines that
[I]t would have been obvious to one of ordinary skill in the art ... to
have made the inflated cushion of Hellings between 1.3-1.5 inches as
taught by Carroll in order to provide sufficient cushioning to create a
comfortable and effective seal and increased comfort without the
cushioning bottoming out too readily, for example. Such a
modification involves the mere optimization of a value within a well-
known workable range and a mere change in dimension without a
significant change in function, both yielding predictable results that do
not patentably distinguish an invention over the prior art.
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Id.
In response, Appellant argues that
[N]o portion of Hellings, alone or in combination, with Anthony,
Carroll, Ho, and/or Chandran teaches or suggests: "wherein the face
receptacle portion has a semi-filled, dome shape with a gap between
2.5 inches and 5.5 inches to form a V-shape ... wherein the air
cushion has an inflated cavity with a thickness between 1.3 and 1.5
inches," as required by independent claim 1.
Br. 7 ( emphasis omitted). According to Appellant, none of the prior art "teaches
the claimed subject matter relating to the ranges and dimensions" and "[b ]ecause
there is no prior art disclosing the claimed ranges as discrete elements, the KSR
rationale mentioned in MPEP § 2144.05 [pertaining to the optimization of ranges]
does not apply." Br. 9. Thus, Appellant takes the position that "even if Anthony,
Carroll, Ho, and Chandran did teach the missing features of the claimed invention,
which they do not, there is no motivation to combine Hellings, Anthony, Carroll,
Ho, and/or Chandran together to produce the claimed invention." Id. at 8. 4
We are not persuaded by Appellant's arguments because "[n]onobviousness
cannot be established by attacking references individually where the rejection is
based upon the teachings of a combination of references. [Each reference] must be
read, not in isolation, but for what it fairly teaches in combination with the prior art
as a whole." See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). In
this case, the Examiner correctly finds that Hellings discloses a face mask 1
including a face receptacle portion 5, 6 having a V-shaped or U-shaped "semi-
filled dome shape" 9 and an inflatable air cushion 7. See Final Act. 9-10; see also
4 As Appellant's arguments do not refer to the teachings of Ho and Chandran, for
the purpose of discussing Rejections III and IV, we limit ourselves to discussing
the combined teachings of Hellings, Anthony, and Carroll. See Br. 7-10; Final
Act. 9, 14, 15.
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Hellings, Figs. 2, 3. The Examiner then employs the disclosures of Anthony and
Carroll to show that the claimed dimensions are known in the prior art. See Final
Act. 10. More specifically, the Examiner correctly finds that Anthony discloses
that the dimensions of nose aperture 3 of nose mask 2 range from 2 to 8 cm (0. 79-
3 .15 inches) and Carroll discloses that face mask air cushions are known to have a
thickness of 30-40 mm (1.18-1.57 inches). See Ans. 9. As such, we agree with
the Examiner that providing the dimensions of Anthony's nose aperture 3 to
Hellings' gap of V-shaped dome 9 and Carroll's thickness dimension to Hellings'
air cushion 7 would have been obvious for a skilled artisan as Anthony discloses
that its dimensions "accommodate an adult human face," whereas Carroll discloses
that its dimensions "provide sufficient cushioning to create a comfortable and
effective seal and increased comfort without the cushioning bottoming out
readily." Id.; see also Anthony, p. 7, 1. 35-p. 8, 1. 5, Carroll, para. 208. Hence, the
Examiner's articulated reasoning to combine the teachings of Hellings, Anthony,
and Carroll is based on the explicit teachings of Anthony and Carroll, and has
rational underpinnings. Appellant's conclusory assertion that there is "no
motivation" ignores and fails to point out the error in the rationale provided by the
Examiner discussed supra.
We further agree with the Examiner's position that in light of the dimensions
taught by Anthony and Carroll, determining the claimed ranges would have been
obvious to a person of ordinary skill in the art because "it involves the mere
optimization of a value within a well-known workable range, yielding predictable
results that do not patentably distinguish an invention over the prior art." Ans. 9
( emphasis added). It is well established that where a variable is known to affect a
particular desirable result, i.e., a "result-effective" variable, an overlap of ranges
"itself provides sufficient motivation to optimize the ranges," and "it is not
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inventive to discover the optimum or workable ranges by routine experimentation,"
because the desire to improve results would motivate skilled artisans to experiment
with, and improve upon, known conditions in the prior art. In re Applied
Materials, Inc., 692 F.3d 1289, 1295-96 (Fed. Cir. 2012) (citations and quotations
omitted). Here, the length and width of Anthony's nose aperture 3 of nose mask 2
range from 2 to 8 cm (0.79-3.15 inches), which overlaps the claimed range of
Appellant's V-shaped dome's gap of "between 2.5 and 5.5 inches." Final Act. 10.
Similarly, the thickness of Carroll's face mask air cushion ranges from 30-40 mm
(1.18-1.57 inches), which overlaps the claimed range of Appellant's inflatable
cavity of "between 1.3 and 1.5 inches." Id. Furthermore, as Anthony's
dimensions are determined such as to "accommodate an adult human face,"
whereas Carroll's dimensions are determined to "provide sufficient cushioning to
create a comfortable and effective seal and increased comfort," the Examiner is
correct to determine that the dimensions of Anthony and Carroll constitute result-
effective variables. See Ans. 9. Hence, the dimensional ranges of the result-
effective variables taught by Anthony and Carroll overlap with the ranges of the
claimed invention and, thus, would "provide sufficient motivation to optimize the
ranges." In re Applied Materials, Inc., 692 F.3d at 1295-96.
Appellant further argues that "the claimed ranges are part of the originally
filed claims and therefore deemed non-trivial for patentability purposes." Br. 9
( emphasis added).
Appellant's argument is not persuasive because "a prima facie case of
obviousness established by the overlap of prior art values with the claimed range
can be rebutted by evidence that the claimed range is critical because it achieves
unexpected results." In re Applied Materials, Inc., 692 F.3d at 1297 (citation and
quotation omitted). Here, Appellant has neither shown criticality of the claimed
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range of the gap dimension or the claimed range of the inflated chamber thickness
nor any new and unexpected results arising from the claimed ranges of dimensions.
See Ineos USA LLC v. Berry Plastics Corp., 783 F.3d 865, 871 (Fed. Cir. 2015)
("[W]hen the prior art discloses a range, rather than a point, the court must
evaluate whether the patentee has established that the claimed range is critical to
the operability of the claimed invention.").
Lastly, with respect to the rejection of claim 21, Appellant's argument
amounts to a recitation of the claim elements and a "naked assertion" that the
elements are not found in the prior art. See Br. 10. Such statements do not
constitute a separate argument for patentability pursuant to 3 7 C.F .R.
§ 4I.37(c)(l)(iv). See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding
that the Board had reasonably interpreted the same language in the prior rule under
3 7 C.F .R. § 41.3 7 ( c )( 1 )( vii) as requiring "more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that the
corresponding elements were not found in the prior art"). Appellant has waived
any argument for separate patentability of this dependent claim. See id. Moreover,
we note that Appellant's remarks do not dispute the Examiner's finding that "there
is no patentable difference between a U shape and a V shape" and that the terms
are "interchangeabl[e] in the prior art." Final Act. 9.
In conclusion, for the foregoing reasons, we sustain the rejection under 35
U.S.C. § 103 of claims 1 and 21 as unpatentable over Hellings, Anthony, Carroll,
and Ho. Claims 3, 5, and 6 fall with claim 1.
Rejection IV
In addition to the arguments discussed supra in Rejection III, that we have
not found persuasive, Appellant's remarks regarding the rejection of independent
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claims 7 and 15, and dependent claims 22 and 23, merely recite claim limitations
and baldly assert that these limitations are not taught or suggested by the applied
prior art. See Br. 10. As noted above in Rejection III, these vague statements do
not constitute separate arguments for patentability of the dependent claims
pursuant to 37 C.F.R. § 41.37(c)(l)(iv). Appellant has waived any argument for
separate patentability of these claims.
As Appellant does not separately argue dependent claims 2, 4, 8-14, and 16-
20 (see Br. 10), and for the reasons discussed supra in Rejection III, we also
sustain the rejection of claims 2, 4, 7-20, 22, and 23 as unpatentable over the
combined teachings of Hellings, Anthony, Carroll, Ho, and Chandran.
SUMMARY
The Examiner's decision to reject claims 1-23 under U.S.C. § 112(b) as
being indefinite is reversed as to claims 1-20 and affirmed as to claims 21-23.
The Examiner's decision to reject claims 21-23 under U.S.C. § 112(d) as
being of improper dependent form is affirmed.
The Examiner's decision to reject claims 1, 3, 5, 6, and 21 under 35 U.S.C.
§ 103 as unpatentable over Hellings, Anthony, Carroll, and Ho is affirmed.
The Examiner's decision to reject claims 2, 4, 7-20, 22, and 23 under 35
U.S.C. § 103 as unpatentable over Hellings, Anthony, Carroll, Ho, and Chandran 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
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