Ex Parte Bridges et al

Board of Patent Appeals and Interferences

May 16, 2012

10511766 (B.P.A.I. May. 16, 2012)

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.
10/511,766 10/19/2004 Peter Clive Bridges 04-870 6029
20306 7590 05/16/2012
MCDONNELL BOEHNEN HULBERT & BERGHOFF LLP
300 S. WACKER DRIVE
32ND FLOOR
CHICAGO, IL 60606
EXAMINER
OSTRUP, CLINTON T
ART UNIT PAPER NUMBER
3771
MAIL DATE DELIVERY MODE
05/16/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte PETER CLIVE BRIDGES, ADRIAN HUGGINS, and
BARRY SHORT
____________________

Appeal 2010-005579
Application 10/511,766
Technology Center 3700
____________________

Before: JOHN C. KERINS, EDWARD A. BROWN, and
WILLIAM V. SAINDON, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-005579
Application 10/511,766
2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting under 35 U.S.C. § 103(a) claims 1-7 as unpatentable over
Quilter (US 2,861,568, iss. Nov. 25, 1958) and Tischer (US 6,328,031 B1,
iss. Dec. 11, 2001). We have jurisdiction under 35 U.S.C. § 6(b). An oral
hearing was held on May 8, 2012.
We REVERSE.
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A respirator assembly comprising:
a first sub-assembly adapted to be worn on the head and
including a seal adapted to seal against the periphery of the
user’s face when worn; and
a second sub-assembly separable from the first sub-
assembly but selectively co-operable therewith, the second sub-
assembly comprising a face piece adapted to co-operate with
the first sub-assembly to define therewith a facial cavity
bounded by said seal, an inlet connectable to a source of
breathing gas for supply to the user and an outlet for the
exhaustion of exhaled gas from the user.

OPINION
Sole independent claim 1 requires a first sub-assembly worn on a
user’s head and a second sub-assembly attachable to the first sub-assembly
and having a face piece. The Examiner found that Quilter teaches a
respirator assembly substantially as claimed but without the second sub-
assembly separable from the first sub-assembly. Ans. 4-5. The Examiner
found that Tischer teaches separable first and second assemblies. Ans. 5.
The Examiner concluded that it would have been obvious to modify
Quilter’s device to make the sub-assemblies separable “for the purposes of
Appeal 2010-005579
Application 10/511,766
3
preventing direct exposure of wearer’s head to high heat environment as
taught by Tischer.” Ans. 5 (citing Tischer, col. 2, ll. 35-40).
Appellants raise the dispositive issue of whether the Examiner has
articulated reasons with rational underpinnings to support the conclusion of
obviousness. App. Br. 10. In particular, Appellants argue that Tischer
teaches that the protection from high heat occurs when the two sub-
assemblies are attached. Id. (citing Tischer, col. 2, ll. 35-40). Given that the
device in Quilter already has the sub-assemblies attached, Appellants argue,
means that there is no reason to make the sub-assemblies separable. Id. at
10-11. Appellants’ argument is persuasive.
One of ordinary skill in the art would not consider it obvious to
modify the respirator assembly in Quilter to make the first and second
separable for the purpose of making the wearer of Quilter’s respirator less
exposed to high heat. In particular, the Examiner’s proposed reason for
combining the teachings of the references (preventing exposure) does not
logically relate to making Quilter’s sub-assemblies separable because, as
Appellants allude, the prevention from exposure in Tischer stems from the
sub-assemblies being joined together, not being separate or separable. See
Tischer, col. 2, ll. 1-3 (“gaps tend to develop between the … hood and the
face mask leaving portions of the firefighter’s skin [exposed]”), col. 2, ll. 35-
40 (“[t]he hood is detachably connected … so as to secure the … hood [to
the] face mask”) (emphasis added). Accordingly, the Examiner’s reasoning
is not based on a rational underpinning.
The Examiner sets forth an alternative rationale: that the separation of
elements is a design consideration within the skill of the art. Ans. 9 (citing
In re Dulberg, 289 F.2d 522 (CCPA 1961)). However, as Appellants point
out (Reply Br. 3-4), in Dulberg it was held obvious to make a press fit cap
Appeal 2010-005579
Application 10/511,766
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removable because there was a particular reason to make the cap removable:
to gain access to the end of the tube upon which the cap was secured. See
Dulberg, 289 F.2d at 523. In this case, however, the Examiner has not
identified a valid reason to make the first sub-assembly separable from the
second. Accordingly, the Examiner’s alternative reasoning is not based on a
rational underpinning.

DECISION
We reverse the Examiner’s decision regarding claims 1-7.

REVERSED

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