Ex Parte Brambilla et al

Patent Trial and Appeal Board

Mar 13, 2017

12134801 (P.T.A.B. Mar. 13, 2017)

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.
12/134,801 06/06/2008 Enrico Brambilla BKK-4398-842 2391
23117 7590 03/15/2017
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
PHILIPS, BRADLEY H
ART UNIT PAPER NUMBER
3778
NOTIFICATION DATE DELIVERY MODE
03/15/2017 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 ENRICO BRAMBILLA, RENEE FRANCES DOHERTY, and
PHILIP RODNEY KWOK
Appeal 2014-006519
Application 12/134,8011
Technology Center 3700
Before MURRIEL E. CRAWFORD, CYNTHIA L. MURPHY, and
BRUCE T. WIEDER, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35U.S.C. § 134 from the
Examiner’s rejection of claims 14, 15, 21, 22,2 31, 32, 41—46, and 48—72.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellants the real party in interest is ResMed Limited.
(Appeal Br. 3.)
2 Because claim 20 is not pending in the application (see Final Action 1), we
consider the reference to claims “20-22 . . . is/are rejected” (id.) to be a
typographical error.
Appeal 2014-006519
Application 12/134,801
CLAIMED SUBJECT MATTER
Appellants’ claimed invention relates “to a patient interface for use in
delivering a flow of breathable gas to an airway of a patient” and “to a non-
invasive positive pressure ventilating method.” (Spec. 12.)
Claims 14, 31, 53, 54, 59, and 60 are the independent claims on
appeal. Claim 14 is illustrative. It recites:
14. A patient interface for use in delivering a flow of
breathable gas to an airway of a patient, the patient interface
comprising:
a flexible cushion adapted to contact the patient’s face and
seal a space between the patient interface and the patient’s face
at a positive pressure; and
a means for reducing and diffusing leakage of gas from the
space.
REJECTIONS
Claims 14, 53, and 59 are rejected under 35 U.S.C. § 112, second
paragraph, for not clearly linking the means to an associated structure or
material.3
3 The rejection of claims 31, 54, and 60 under 35 U.S.C. § 112, second
paragraph, for not clearly linking the means to an associated structure or
material (Final Action 2—5) was withdrawn (Answer 2). The rejection of
“claims 14, 15, 18-23, 31-35, 41^16, and 48-72” under 35 U.S.C. § 112,
second paragraph, as indefinite (Final Action 4—5), was withdrawn
(Answer 2).
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Application 12/134,801
Claims 14, 15, 21, 22, 31, 32, 41^16, 48-50,4 52-55, 57, 59-61, 63,
66, and 68—72 are rejected under 35 U.S.C. § 102(e) as anticipated by Ho
(US 7,743,768 B2, iss. June 29, 2010).
Claims 51, 58, and 64 are rejected under 35 U.S.C. § 103(a) in view
of Ho.
Claims 56, 62, and 65 are rejected under 35 U.S.C. § 103(a) in view
of Ho and Bordewick (US 2008/0053451 Al, pub. Mar. 6, 2008).
Claims 14, 15, 21, 22, 31, 32, 41, 42, 44^46, and 48—725 are rejected
under 35 U.S.C. § 103(a) in view of Rudolph (US 6,082,360, iss. July 4,
2000), Hans Rudolph, Inc., “Ultimate Seal User Application Instructions,”
May, 1998 (hereinafter “Hans Rudolph I”), and Hans Rudolph, Inc., “Nasal
CPAP Mask & Mask Seals (Comfort Seal & Ultimate Seal),”
www.medcatalog.com, with enlarged image of “A New Nasal CPAP/Bilevel
Mask,” dated Sept. 2000 (hereinafter “Hans Rudolph II”) (Hans Rudolph I
and Hans Rudolph II hereinafter collectively “Hans Rudolph.”)
4 Because claim 47 is not pending in the application (see Final Action 1), we
consider the reference to claims “41—50 . . . being anticipated by Ho” (id.
at 8) to be a typographical error.
5 Because claims 20 and 35 are not pending in the application (see Final
Action 1), we consider the references to claims 20 and 35 as rejected under
§ 103(a) (see id. at 16) to be typographical errors. Because claim 72 is
rejected under § 103(a) in view of Rudolph and Hans Rudolph (see id.
at 22), we consider the omission of claim 72 from the list of rejected claims
(see id. at 16) to be a typographical error.
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Application 12/134,801
ANALYSIS
The § 112, second paragraph, rejection
Claims 14, 53, and 59 are rejected under § 112, second paragraph “for
[not] clearly linking the means to an associated structure or material.” (Final
Action 2.)
Appellants argue that paragraph 58 of the Specification
explicitly discloses, “The filler layer 14 also ... reduces any leak
flow by increasing resistance of the seal formed by the cushion
12” and explicitly discloses, “The filler layer 14 also diffuses any
leak flow that may occur.” One of ordinary skill would consider
such a disclosure as a clear link between the filler layer 14 and
the recited functions.
(Appeal Br. 14.)
Title 35 provides that “[t]he specification shall conclude with one
or more claims particularly pointing out and distinctly claiming
the subject matter which the applicant regards as his invention.”
35 U.S.C. § 112,12. For a means-plus function claim to satisfy
the definiteness requirement, the written description must clearly
link or associate structure to the claimed function. Biomedino,
LLCv. Waters Techs. Corp., 490 F.3d 946, 950 (Fed. Cir. 2007).
Whether the written description adequately sets forth the
structure corresponding to the claimed function must be
considered from the perspective of a person skilled in the art.
Intel Corp. v. VIA Techs., Inc., 319 F.3d 1357, 1365—66 (Fed.
Cir. 2003). “The question is not whether one of skill in the art
would be capable of implementing a structure to perform the
function, but whether that person would understand the written
description itself to disclose such a structure.” Tech. Licensing
Corp. v. Videotek, Inc., 545 F.3d 1316, 1338 (Fed. Cir. 2008).
Telecordia Techs., Inc. v. Cisco Sys., Inc., 612 F.3d 1365, 1376 (Fed. Cir.
2010).
The written description discloses that “a filler layer 14 [is] provided
on the cushion 12” and that the “[t]he filler layer 14 . . . reduces any leak
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Application 12/134,801
flow by increasing the resistance of the seal” and “also diffuses any leak
flow that may occur.” (Spec. 1 58.) We are persuaded that one of ordinary
skill in the art would understand that this discloses a structure “for reducing
and diffusing leakage of gas from the space.” Therefore, we will reverse this
rejection of claim 14.
Claim 53 recites “mean for diffusing gas from the space and
increasing the resistance of the seal formed by the cushion,” and claim 59
recites “means for diffusing leakage of gas from the space.” For the reasons
discussed, we will also reverse this rejection of claims 53 and 59.
The §102 rejection
In relevant part, the Examiner finds that “the structure recited in the
[Ho] reference is substantially identical to that of the claims of the instant
invention” and, therefore, the “claimed properties or functions are presumed
to be inherent.” (Final Action 9.) Specifically, the Examiner finds that
“inserts 33 and 26 [of Ho] are made from foam.” (Id.)
Appellants disagree and argue that
[t]he Examiner asserts that the first end 24 of the cushion 6 of Ho
inherently diffuses a leakage of gas from a space between the
first end 24 and the patient’s skin because the structure of the
first end 24 of the cushion 6 of Ho is substantially identical to the
structure of the filler layer 14 in Appellants’ Fig. 3d. However,
the Examiner fails to provide any evidence that the structure of
the first end 24 of Ho is substantially identical to the structure of
Appellants' filler layer 14 in Fig. 3d.
(Appeal Br. 17—18.) Appellants further argue that “the Examiner has not
rebutted Appellants’ assertions that the first end 24 of Ho is not made of
foam.” (Reply Br. 11.)
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Application 12/134,801
Figure 3a of the Specification and Figure 4 of Ho are helpful.
3/8
,10
14b
3 a
Figure 3 a of the Specification, shown above, discloses “a patient interface
according to one embodiment of the invention.” (Spec. 127.) The
Specification discloses that “cushion 12 may be formed of, for example,
silicone, and the filler layer 14 may be formed of, for example, foam.” (Id.
158.) The Specification further discloses, as discussed above, the “[t]he
filler layer 14 . . . reduces any leak flow by increasing the resistance of the
seal formed by the cushion 12. The filler layer 14 also diffuses any leak
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Application 12/134,801
flow that may occur.” (Id.) “The filler layer 14 is adapted to be in contact
with the patient’s skin.” (Id.)
Figure 4 of Ho, shown below, discloses “a cross-sectional view of the
mask cushion” of a patient interface device. (Ho, col. 3,11. 33—34).
Ho discloses that “[f]irst end wall 24a, outerwall 31, intermediate wall 30,
and inner wall 32 define a first portion 33,” and that “in the current
embodiment, first portion 33 is constmcted of a gel material.” (Id. at col. 7,
11. 22—23, 27.) Ho also discloses that “first portion 33 may be constructed of
any suitably pliable material, such as silicone, thermoplastic elastomer, gel,
or any combination thereof.” (Id. at col. 7,11. 37—39.) Ho further discloses
that “the present invention contemplates placing another material (e.g., a
foam material, etc.) inside chamber 26 to manage the rate of dampening of
mask cushion 6.” (Id. at col. 9,11. 13—16.)
In short, claim 14 recites “means for reducing and diffusing leakage of
gas” and discloses that “filler layer 14 also diffuses any leak flow that may
occur.” (Spec. 158.) The Specification discloses that the filler layer 14 may
be formed of foam. (Id.) However, the structure of Ho relied upon by the
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Application 12/134,801
Examiner as corresponding to the filler layer 14, i.e., portion 33, “may be
constructed of. . . silicone, thermoplastic elastomer, gel, or any combination
thereof’ (Ho, col. 7,11. 37—39), and not, as the Examiner finds, “from foam.”
(Final Action 9.) Therefore, we are persuaded that the structure of Ho relied
upon by the Examiner is not substantially identical to that of claim 14. For
the same reasons, we are persuaded that the Examiner erred in determining
that the “claimed properties or functions” are properly “presumed to be
inherent” (see Final Action 9) and therefore, erred in rejecting claim 14
under § 102. Independent claims 53 and 59 contain similar language, and
for similar reasons, we are persuaded that the Examiner erred in rejecting
claims 53 and 59 under § 102.
Independent claims 31, 54, and 60 do not use means-plus-fimction
language. Claim 31 recites “a leak reducing layer provided on the cushion
and configured to reduce and diffuse leakage of gas from the space.”
Claim 54 recites “a resistance layer provided on the cushion configured to
diffuse gas from the space and increase the resistance of the seal to leakage
of gas flow from the space.” Claim 60 recites “a diffusing layer provided on
the cushion that diffused leakage of gas from the space.”
Nonetheless, because the Examiner relies on an erroneous finding
regarding the structure disclosed in Ho, we are also persuaded that the
Examiner erred in finding diffusion in “a leak reducing layer provided on the
cushion,” “a resistance layer provided on the cushion,” and “a resistance
layer provided on the cushion” to be inherently disclosed in Ho. Therefore,
we are persuaded that the Examiner erred in rejecting claims 31, 54, and 60
under § 102.
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Application 12/134,801
The £103 rejection of dependent claims 51, 58, and 64
Dependent claims 51,58, and 64 are rejected under § 103 in view of
Ho. In relevant part, the Examiner determines that “it would have been
obvious to one of ordinary skill in the art at the time the invention [sic] to
adhesively attach the leak reducing means of Ho to the cushion.” (Final
Action 16.)
Although Appellants do not argue this rejection, in view of our
reversal of the § 102 rejection of the independent claims from which these
claims depend, and the fact that the Examiner does not indicate that the error
discussed above regarding the anticipation rejection is remedied by this
§103 rejection, we will also reverse this rejection.
The §103 rejection of dependent claims 56, 62, and 65
Dependent claims 56, 62, and 65 are rejected under § 103 in view of
Ho and Bordewick. In relevant part, the Examiner determines that “it would
have been obvious to one of ordinary skill in the art to substitute the foam of
Ho with the silicone foam of Bordewick.” (Id. at 16.)
Once again, Appellants do not argue this rejection. Nonetheless, in
view of the reversal of the § 102 rejection of the independent claims from
which these claims depend, and the fact that the Examiner does not indicate
that the error discussed above regarding the anticipation rejection is
remedied by this § 103 rejection, we will also reverse this rejection.
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Application 12/134,801
The f 103 rejection of claims 14, 15, 21, 22, 31, 32, 41, 42,
44-46, and 48-72
The Examiner finds that
while Rudolph discloses a means/layer for reducing leakage of
gas from the space and increasing the resistance of the seal (5,)
Rudolph does not disclose a means/layer for diffusing leakage of
gas from the space, reducing leakage of gas from the space, and
increasing the resistance of the seal.
Hans Rudolph discloses a flexible cushion having a
means/layer for diffusing leakage of gas from the space, reducing
leakage of gas from the space, and increasing the resistance of
the seal (foam accessory.) Examiner considers the foam
accessory as a leak diffusing means because of its structure.
{Id. at 17.) Therefore, the Examiner determines, “it would have been
obvious to one of ordinary skill in the art at the time the invention was made
to substitute the hydrogel 5 of Rudolph for the foam accessory of Hans
Rudolph for the benefit [sic] providing a comfortable seal.” {Id. at 17—18.)
Appellants argue, in relevant part, that “Rudolph discloses using a
hydrogel cushion to create a ‘tight seal’ that assures a leak-free fit” and that
“replacing the hydrogel cushion of Rudolph with the foam accessory of
Hans Rudolph would increase gas leakage and would diminish mask
sealing.” (Appeal Br. 36.) Moreover, Appellants argue, “modifying
Rudolph to allow for controlled leakage (i.e., diffusion of leakage) would
render the mask of Rudolph unsatisfactory for its intended use since the
focus of Rudolph is utilizing hydrogel seals to prevent passage of gasses
between the periphery of the mask and the user’s face.” {Id.) In short,
Appellants argue that “[o]ne of ordinary [s]kill would not have modified
Rudolph in view of Hans Rudolph as suggested by the Examiner.” {Id.)
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Application 12/134,801
Rudolph discloses a mask with a gel seal to aid in “analyzing] the gas
content of the exhaled breath of a person.” (Rudolph, col. 1,11. 1, 12—13.)
Rudolph also discloses that a problem with prior art masks was that
a small leakage sometimes occurs around the periphery of the
mask where it sits upon the face of the user, thereby allowing
escape of gasses from the mask or outside air into the mask, such
that the analysis of the exhaled gases is less accurate then it
would be if no such leakage occurred.
{Id. at col. 1,11. 41—46.) Rudolph further discloses that “applicants have
attempted to find a suitable material which will provide a good seal between
the mask and the face of a user” {id. at col. 1,11. 58—60) and that “[t]he
properties of the hydrogel maintain a very tight seal between the periphery
of the mask and the face when the mask is in use” {id. at col. 2,11. 40-43).
The Supreme Court in KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398 (2007), explained that, “because inventions in most, if not
all, instances rely upon building blocks long since uncovered,
and claimed discoveries almost of necessity will be combinations
of what, in some sense, is already known,” “it can be important
to identify a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements in the
way the claimed new invention does.” Id. at 418—19. The
required “expansive and flexible approach,” id. at 415, may look
at a variety of facts, including prior-art teachings and
marketplace demands and artisans’ background knowledge, “in
order to determine whether there was an apparent reason to
combine the known elements in the fashion claimed by the patent
at issue,” id. at 418; see also id. at 420-421. The Supreme Court
added: “To facilitate review, this analysis should be made
explicit.” Id. at 418. We have repeatedly applied those
requirements in reviewing the adequacy of the Board’s
obviousness analysis, noting that the amount of explanation
needed will vary from case to case, depending on the complexity
of the matter and the issues raised in the record. See Nu Vasive,
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Application 12/134,801
842 F.3d at 1381—82; Ariosa, 805 F.3d at 1364—66; In re Lee,
277 F.3d 1338, 1343 (Fed. Cir. 2002).
Personal Web Techs., LLC v. Apple, Inc., No. 2016-1174, slip op. at 11
(Fed. Cir. Feb. 14, 2017).
Even assuming the foam accessory of Hans Rudolph is a leak
diffusing means, it is unclear why one would have modified Rudolph’s
mask, which seeks to avoid small leakages, by using a foam seal that
produces such leakages. Therefore, we are persuaded that the Examiner
erred in rejecting claim 14 under § 103. For the same reason, we are
persuaded that the Examiner erred in rejecting claims 15, 21, 22, 31, 32, 41,
42, 44^46, and 48—72 under § 103.
DECISION
The Examiner’s rejection of claims 14, 53, and 59 under 35 U.S.C.
§112, second paragraph, is reversed.
The Examiner’s rejection of claims 14, 15, 21, 22, 31, 32, 41—46, 48—
50, 52-55, 57, 59-61, 63, 66, and 68-72 under 35 U.S.C. § 102(e) is
reversed.
The Examiner’s rejections of claims 14, 15, 21, 22, 31, 32, 41, 42, 44—
46, and 48—72 under 35 U.S.C. § 103(a) are reversed.
REVERSED
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