Ex parte Bird

Board of Patent Appeals and Interferences

Jul 27, 1998

07981910 (B.P.A.I. Jul. 27, 1998)

Application for patent filed November 23, 1992. 1
According to appellant, the application is a continuation of
Application 07/400,730, filed August 30, 1989, now abandoned,
which is a division of Application 07/145,734, filed January 14,
1988, now U.S. Patent No. 5,007,420, issued April 16, 1991, which
is a continuation of Application 06/671,491, filed November 14,
1984, now abandoned, which is a continuation-in-part of
Application 06/516,133, filed July 21, 1983, now U.S. Patent No.
4,592,349, issued June 3, 1986, which is a continuation-in-part
of Application 06/291,622, filed August 10, 1981, now abandoned,
which is a continuation-in-part of Application 06/261,929, filed
Apr. 3, 1981, which is a continuation-in-part of Application
06/250,586, filed April 3, 1981, now abandoned. The appellant
may wish to review the foregoing parent application data which is
set forth on page 1 of the specification since it would appear
that the reference to Application 06/261,929 instead should be to
Application 06/261,629.
-1-
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 42
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte FORREST M. BIRD
________________
Appeal No. 95-3184
Application 07/981,9101
________________
ON BRIEF
________________
Before CALVERT, FRANKFORT and McQUADE, Administrative Patent
Judges.
McQUADE, Administrative Patent Judge.
Appeal No. 95-3184
Application 07/981,910
The appellant has amended claim 33 subsequent to final2
rejection.
-2-
DECISION ON APPEAL
Forrest M. Bird appeals from the final rejection of claims
33 through 39, all of the claims pending in the application.2
The invention relates to a method for ventilating a
patient’s airway. Claim 33 is illustrative and reads as follows:
33. In a method for ventilating a patient airway during the
inspiratory phase and the expiratory phase from a source of gas
under pressure, supplying to the patient airway during the
inspiratory phase a plurality of pulses of small volumes of gas
from said source of gas, adding in succession the pulses of small
volumes of gas to provide successively greater volumes of gas
successively increasing in pulsatile form the pressure of the gas
in the airway of the patient during the inspiratory phase by
adding the successively greater volumes of gas, said successive
increase in pulsatile form of the pressure of the gas in the
airway of the patient being caused solely by the successive
addition of the small volumes of gas and serving to provide
diffusive ventilation to the patient during the inspiratory phase
and permitting the patient to exhale during the expiratory phase.
The reference relied upon by the examiner as evidence of
obviousness is:
Emerson 2,918,917 Dec. 29, 1959
Claims 33 through 39 stand rejected:
a) under 35 U.S.C. § 112, first paragraph, as being based on
a specification which, as originally filed, does not provide
support for the invention now claimed; and
Appeal No. 95-3184
Application 07/981,910
In the final rejection (Paper No. 28), the examiner3
relied upon the combined teachings of Emerson and U.S. Patent No.
4,096,875 to Jones et al. to support the 35 U.S.C. § 103
rejection of claims 33 through 39. It is apparent from the
statement and explanation of this rejection in the main answer
(Paper No. 34), however, that the examiner is no longer relying
on Jones et al. for this purpose.
-3-
b) under 35 U.S.C. § 103 as being unpatentable over
Emerson.3
Reference is made to the appellant’s main and reply briefs
(Paper Nos. 32, 35 and 37) and to the examiner’s main and
supplemental answers (Paper Nos. 34, 36 and 38) for the
respective positions of the appellant and the examiner with
regard to the merits of these rejections.
The 35 U.S.C. § 112, first paragraph, rejection rests on the
examiner’s determination that the appellant’s originally filed
specification “fails to provide support for the phrase ‘solely by
the successive addition of the small volumes of gas’ as recited
in claim 33" (main answer, pages 3 and 4). According to the
examiner, this claim limitation “states that airway pressure is
increased solely by the addition of small volumes of gas” (main
answer, page 6).
This explanation indicates that the rejection is based on an
alleged failure of the specification to comply with the written
Appeal No. 95-3184
Application 07/981,910
-4-
description requirement of 35 U.S.C. § 112, first paragraph. The
test for determining compliance with the written description
requirement is whether the disclosure of the application as
originally filed reasonably conveys to the artisan that the
inventor had possession at that time of the later claimed subject
matter, rather than the presence or absence of literal support in
the specification for the claim language. In re Kaslow, 707 F.2d
1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983). The content of
the drawings may also be considered in determining compliance
with the written description requirement. Id.
Claim 1 recites a method for ventilating a patient airway
comprising, inter alia, the steps of supplying to the airway
during the inspiratory phase a plurality of pulses of small
volumes of gas and adding these pulses in succession to provide
successively greater volumes of gas successively increasing in
pulsatile form the pressure of the gas in the airway by adding
the successively greater volumes of gas. The claim language at
issue, read in context, requires that the successive increase in
pulsatile form of the pressure of the gas in the airway be caused
“solely” by the successive addition of the small volumes of gas.
Appeal No. 95-3184
Application 07/981,910
-5-
This limitation finds support in a number of places in the
appellant’s originally filed disclosure such as, for example, the
graph depicted in Figure 4 (see reference numeral 421) and the
corresponding portions of the underlying specification (page 62
et seq.). Contrary to the examiner’s interpretation, the word
“solely” limits only the successive increase in pulsatile form of
the pressure of the gas in the airway and does not exclude other
pressure increases such as those involving the constant positive
airway pressure (CPAP) and tidal volume deliveries discussed
throughout the appellant’s specification.
Thus, the disclosure of the instant application as
originally filed would reasonably convey to the artisan that the
appellant had possession at that time of the method now recited
in claim 33 wherein the successive increase in pulsatile form of
the pressure of the gas in the airway of the patient is caused
“solely” by the successive addition of the small volumes of gas.
Accordingly, we shall not sustain the standing 35 U.S.C. § 112,
first paragraph, rejection of this claim or of claims 34 through
39 which depend therefrom.
As for the standing 35 U.S.C. § 103 rejection of claims 33
through 39, Emerson discloses a method and apparatus “for
Appeal No. 95-3184
Application 07/981,910
-6-
treating a patient by vibrating a column of gas which is in
communication with his airway” (column 1, lines 15 through 17).
This treatment is said to exercise and massage the airway and
associated organs, to loosen and remove mucous therefrom, and to
cause the gas to diffuse more rapidly within the airway (see
column 1, lines 51 through 57). As explained by Emerson,
[t]he method and apparatus of the present
invention may be used to vibrate a column of gas during
both the period of a patient’s inhalation and the
period of his exhalation or during either of said
periods. The column of gas which is vibrated may be
under positive, negative or atmospheric pressures and
it may be either static or in motion inwardly or
outwardly of his airway and such motion may be created
by his own natural breathing or by the application of
positive or negative pressures to the column [column 1,
lines 31 through 40].
In essence, the apparatus consists of a face mask A, a pump C, a
line, including tube 17 and conduit 11b, for connecting the face
mask to the input or output side 42, 43 of the pump, and a
vibrating device B. The vibrating device
comprises [a] chamber 25 having a movable wall or
diaphragm 26 made of rubberized fabric or other air
impervious flexible material and which when moved
upwardly and downwardly varies the volume of the
chamber and the pressure of the air therein. The
chamber 25 opens into the tube 17 through the passage
21 and as the volume of the chamber is varied
vibrations or pulsations are created in the gas in the
tube 17 causing the gas to move first in one direction
and then in the opposite direction. These vibrations
are transmitted to the column of gas in the conduit 11b
Appeal No. 95-3184
Application 07/981,910
-7-
which communicates with the face mask A and the
patient’s airway [column 3, lines 55 through 68].
The examiner’s conclusion that Emerson teaches or would have
suggested a ventilating method meeting the limitations in
appealed claim 33 requiring the addition in succession of pulses
of small volumes of gas to provide successively greater volumes
of gas successively increasing in pulsatile form the pressure of
the gas in the patient’s airway wherein the successive increase
in pulsatile form of the pressure is caused solely by the
successive addition of the small volumes of gas is not well
taken. While Emerson’s vibration of the column of gas in the
patient’s airway would appear to supply to the airway a plurality
of pulses of small volumes of gas, it is not apparent, nor has
the examiner explained, how these pulses would be additive in
succession to provide successively greater volumes of gas
successively increasing in pulsatile form the pressure of the gas
in the airway. Indeed, Emerson’s teaching that the vibrations or
pulses applied to the column of air cause the air to move first
in one direction and then in the opposite direction would seem to
belie any such conclusion.
Appeal No. 95-3184
Application 07/981,910
-8-
In this light, the examiner’s determination that the method
recited in claim 33, and in claims 34 through 39 which depend
therefrom, would have been obvious to one of ordinary skill in
the art in view of Emerson must fall. Accordingly, we shall not
sustain the standing 35 U.S.C. § 103 rejection of these claims.
The decision of the examiner is reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
CHARLES E. FRANKFORT ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
Appeal No. 95-3184
Application 07/981,910
-9-
Harold C. Hohbach
4 Embarcadero Center
STE 3400
San Francisco, CA 94111