Ex Parte Bruckert

Patent Trial and Appeal Board

Mar 30, 2018

13522027 (P.T.A.B. Mar. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/522,027 07 /13/2012
23370 7590 04/03/2018
KILPATRICK TOWNSEND & STOCKTONLLP
Mailstop: IP Docketing - 22
1100 PEACHTREE STREET
SUITE 2800
ATLANTA, GA 30309
Sebastien Bruckert
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.
41052/843255 4914
EXAMINER
SUL, DOUGLAS YOUNG
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
04/03/2018 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):
ipefiling@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SEBASTIEN BRUCKERT
Appeal2017-007801
Application 13/522,027
Technology Center 3700
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
BRADLEY B. BAY AT, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Sebastien Brockert ("Appellant") 1 seeks our review under 35 U.S.C.
§ 134 of the Final Rejection of claims 1--4, 11, and 12. 2 We have
jurisdiction under 35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We AFFIRM.
1 The Appellant identifies Zodiac Aerotechnics, as the real party in interest.
(App. Br. 3).
2 Claims 5-10 are allowed.
Appeal2017-007801
Application 13/522,027
THE INVENTION
Claim 12 is illustrative, and is reproduced below:
12. A breathing assembly for use in aircraft, comprising:
a. a breathing mask configured for gaseous connection to a
source of breathing gas;
b. a stowage box (i) forming a receptacle for receiving the
breathing mask in a stowage position and (ii) having an opening
for extracting the breathing mask therefrom for use;
c. a valve assembly (i) supported by the breathing mask and (ii)
comprising a valve (A) at least part of which is external to the
stowage box when the breathing mask is received by the stowage
box in the stowage position, (B) having an open position
allowing feeding of breathing gas to the breathing mask, (C)
having a closed position preventing feeding of breathing gas to
the breathing mask, and (D) automatically positioned in the open
position when the breathing mask is extracted from the stowage
box; and
d. a retaining element directly or indirectly connected to the
stowage box and cooperating with the valve assembly to
maintain the valve in the closed position when the breathing
mask is in the stowage position.
THE REJECTIONS
The following rejections are before us for review:
1. Claims 1-3, 11, and 12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Hay et al. (US 3,073,301, iss. Jan. 15, 1963) ("Hay") and
Bertheau et al. (US 5,690,102, iss. Nov. 25, 1997) ("Bertheau").
2. Claim 4 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Hay, Bertheau and McDonald et al. (US 7,836,886 B2, iss. Nov. 23, 2010)
("McDonald").
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Application 13/522,027
ISSUES
Did the Examiner err in rejecting claims 1-3, 11, and 12 under
35 U.S.C. § 103(a) as unpatentable over Hay and Bertheau; and claim 4
under 35 U.S.C. § 103(a) as unpatentable over Hay, Bertheau and
McDonald?
FINDINGS OF FACT
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence. Additional findings of fact
may appear in the Analysis below.
Facts Related to the Prior Art
Hay
FPO 1. Figure 1 of Hay, reproduced below, is a side view of a storage
compartment for a delivery and administration outlet of an emergency
oxygen supply system having a face inhaler mounted on the door of a
compartment, shown in open position ready for use and showing a station
outlet valve and gas conduit and actuating linkage means interconnecting
said valve and mask inhaler. (Hay col. 3, 11. 35--42).
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Application 13/522,027
F I G. I
24
10
FF02. Reference numeral 10 in Figure 1 of Hay refers to a station
outlet valve 10 (Hay col. 4, 1. 19).
FF03. Reference numeral 12 in Figure 1 of Hay refers to a delivery
conduit that connects station outlet valve 10 to face mask 16 (Hay col. 4,
1. 20).
FF04. Reference numeral 16 in Figure 1 of Hay refers to a face mask
(Hay col. 4, 1. 22).
FF05. Reference numeral 24 in Figure 1 of Hay refers to a cabinet
(Hay col. 4, 1. 52).
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Application 13/522,027
FF06. Reference numeral 26 in Figure 1 of Hay refers to a front
opening door of the cabinet (Hay col. 4, 1. 53).
FF07. Reference numeral 32 in Figure 1 of Hay refers to a U-shaped
spring clip whose bifurcated ends extend along the sides of the face mask
and frictionally act against the rim portion thereof to hold it in place against
the front cover of the storage compartment (Hay col. 5, 11. 11-15).
FF08. Reference numeral 34 in Figure 1 of Hay refers to a linkage
cord or chain (Hay col. 5, 1. 20).
FF09. Reference numeral 36 in Figure 1 of Hay refers to a spherical
locking element (Hay col. 5, 11. 20-21 ), valve locking element (Hay col. 6,
1. 12), removable locking ball (Hay col. 5, 1. 26), ball closing element (Hay
col. 8, 1. 32), and ball element (Hay col. 8, 1. 36).
FFlO. Reference numeral 38 in Figure 1 of Hay refers to a spring
clasp at the top of the station outlet valve 10 and is effective, normally, to
maintain the station outlet valve in a closed position (Hay col. 5, 11. 21-23)
when ball element 36 is inserted in spring clasp 38 (Hay col. 8, 11. 28-38).
FFl 1. Reference numeral 88 in Figure 1 of Hay refers to a stem 88 of
the valve element that extends through an end plate 90 situated within the
open end of the valve body and is urged inwardly toward normal closed
position under the influence of the U-spring clip 3 8 through the interposed
ball closure or locking element 36 (Hay col. 7, 11. 38--43).
Bertheau
FF12. Figure 1 of Bertheau, reproduced below, is an isometric view
illustrating the external aspect of a respiratory mask provided with a harness
(Bertheau col. 2, 11. 33-35).
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f\G.~ ·
FF 13. Reference numeral 10 in Figure 1 of Bertheau refers to an
oronasal face cover secured to a rigid connecting block 14.
FF14. Reference numeral 14 in Figure 1 of Bertheau refers to a rigid
connecting block that communicates the regulator with the hose and has
manually controlled means for inflating the harness, comprising a control
valve for actuation by squeezing two ears 18 carried by the connecting
block 14 between the thumb and index finger of the user.
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Application 13/522,027
ANALYSIS
The rejection of claims 1-3, 11, and 12 under 35 USC§ 103(a) as
unpatentable over Hay and Bertheau.
The Appellant argues these claims as a group. See App. Br. 7-9. The
Examiner provides a thorough analysis of claim 1. Claim 12 is similar to
claim 1 but provides further details regarding the valve's open and closed
positions. The Examiner's position for claim 12 relies on the Examiner's
position for claim 1 (id. at 5---6). However, Appellant's arguments for this
rejection focus only on claim 12. We select claim 12 as the representative
claim for this group, and the remaining claims 1-3 and 11 stand or fall with
claim 12. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner's position is that Hay discloses every claim 1 limitation
except that "Hay does not disclose the valve assembly is supported by the
breathing mask." (Non-Final Act. 3). The Examiner finds that Bertheau
discloses that "valve assembly [(14)] is supported by the breathing mask
[(10)]" and concludes that it would have been obvious to one of ordinary
skill in the art at the time the invention was made "to modify the valve
assembly of Hay such that the valve assembly is supported by the breathing
mask and the retaining element is connected to the stowage box as taught by
Bertheau as an obvious rearrangement of parts" (id. at 4). The Examiner's
position for claim 12 is substantially the same as for claim 1 (id. at 7-9).
The Examiner's proposed modification of Hay is illustrated in the
Examiner's annotated version of Figure 1 of Hay (Ans. 10).
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Application 13/522,027
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The Appellant argues that the Examiner's proposed modification
would change the principle of operation of the Hay device (App. Br. 7-8).
According to the Appellant, "to function at all, breathing mask 16 must be
pulled away from valve assembly 10 to a distance greater than the length of
linkage cord 34" (id. at 7) and in the Examiner's proposed modification
"locking ball 3 6 could never be extracted from clasp 3 8, and oxygen would
never flow to the mask 16" (id. at 8). See also id. at 10-11 (arguing that the
principle of operation of Hay precludes "the mask from supporting the valve
assembly in a fixed-position relationship").
The Examiner disagrees, and finds that "the principle of operation of
the [Hay] device is that the mask [must] be moved some distance from the
linkage (34) in order to decouple the retaining element (36) (ball) from the
valve (10)" (Non-Final Act. 9) (citing Hay col. 6, 11. 24--35). According to
the Examiner, "rearranging the position of the valve and the retaining
element such that the valve is supported by the mask and the linkage and
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Application 13/522,027
retaining element is supported by the stowage box would not change the
principles of operation of the device" (id.).
We find that the Examiner has the better position.
Hay discloses linkage 34 connected at one end to locking ball 36 and
at the other end to mask 16 (Hay Figure 1 ). Hay discloses that the principle
of operation is that "the movement of the mask necessary to remove it from
the security of the retaining clasp 32 exceeds the slack in the length of the
connecting linkage 34" such that "removal of the face mask for use
inherently requires an extraction of the locking ball 36, causing the valve 10
to open substantially simultaneously with such manipulation of the mask"
(Hay col. 6, 11. 29--35). In other words, the principle of operation of the Hay
device is not dependent on movement of mask 16 relative to valve 10.
Rather, consistent with the Examiner's finding, the principle of operation of
the Hay device is that removing mask 16 from retaining clasp 32 causes the
extraction of locking ball 36 by linkage 34, thereby opening valve 10.
The Examiner's proposed modification is based on the same principle
of operation. In the Examiner's proposed modification, linkage 34 is
connected at one end to locking ball 36, as disclosed in Hay. The Examiner
proposes relocating valve 10 (including locking ball 3 6) to mask 16 and
connecting the other end of linkage 34 to cabinet 24. Thus, in the proposed
modification, removing mask 16 from retaining clasp 32 exceeds the slack in
linkage 34, thereby extracting locking ball 36 and opening valve 10.
Accordingly, Appellant's arguments do not persuade us that the
proposed modification would render the prior art being modified
unsatisfactory for its intended purpose. See Tee Air, Inc. v. Denso Mfg.
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Application 13/522,027
Michigan Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999); In re Gordon,
733 F.2d 900, 902 (Fed. Cir. 1984).
Furthermore, "when a patent 'simply arranges old elements with each
performing the same function it had been known to perform' and yields no
more than one would expect from such an arrangement, the combination is
obvious." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Here,
the claimed combination is the result of arranging the elements in Hay so
that the breathing mask supports the valve assembly as shown in Bertheau.
Each element performs the same function as it had been known to perform;
just the location of the valve and the location of the linkage connection in
Hay has been modified. The record does not evidence that said changes in
location yield a result that one would not expect from such an arrangement.
The Appellant further argues that Hay discloses that valve 10
"remains wholly within stowage box 24 at all times" and "no motivation
exists to remove any portion of valve 10 from within stowage box 24 and
place it outside the box 24" (App. Br. 9). According to the Appellant, the
Examiner's position is unreasonable because "[i]n ordinary parlance, a
sandwich in a lunchbox is not rendered 'external' to the lunchbox merely by
opening the lid of the box, nor is a present in a gift box rendered 'external'
to the gift box merely by removing the box lid." (Id., see footnote).
The Examiner responds in the Answer that "[t]he position shown in
fig 1 of Hay is considered to be a 'stowage position', as the mask (16) is still
retained within the spring clip (32), the retaining element (36) is still
retained within the valve (10), and no oxygen is being supplied to the mask."
(Ans. 10-11). In other words, the Examiner's position is that in the
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Application 13/522,027
proposed modification of Hay (i.e., valve 10 is supported by mask 16),
valve 10 is external to cabinet 24 when door 26 is open and mask 16 is
secured by spring clip 32 on door 26 as shown in Figure 1.
The Appellant's argument does not persuade us of error in the
rejection. By relocating valve 10 onto mask 16, as the Examiner proposes,
at least part of valve 10 is external to cabinet 24 when mask 16 is stowed on
door 26 (when door 26 is open) as shown in Figure 1. We further note that
in the Appellant's lunch box analogy, a sandwich secured to the lid of the
lunchbox- as mask 16 is secured to door 26 by retaining clasp 32 -would
indeed be external to the lunchbox when the lid of the lunch box is open.
The Appellant's arguments having been fully considered and found,
for the foregoing reasons, unpersuasive as to error in the rejection, the
rejection as to claim 12 is sustained. For the same reasons, the rejection of
claims 1-3 and 11, which fall with claim 12, is also sustained.
The rejection of claim 4 under 35 US.C. § 103(a) as unpatentable over Hay,
Bertheau and McDonald.
The Appellant argues that "valve 10 of the Hay patent necessarily is
upstream of feeding duct 12" and that the Examiner's proposed
modification "add[ing] a regulator of the McDonald patent to the system of
the Hay patent (as modified by the Bertheau patent) [ ... ] would not
somehow reposition valve 10 so as to be downstream of feeding duct 12."
(App. Br. 10). According to the Appellant, "repositioning valve 10 of the
Hay patent in the manner proposed by the Examiner could prevent mask 16
from receiving any oxygen from feeding duct 12, again completely
undermining the ability of mask 16 to provide emergency oxygen to its
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Application 13/522,027
wearer." (Id.) See also Reply Br. 4 ("no way exists to interpose a
pneumatic regulator between valve 10 and mask 16 of the Hay patent so as
to allow the regulator to function in any useful way").
The Appellant's argument that modifying Hay's device so that a
regulator is located as shown in McDonald would undermine the ability of
Hay's mask to provide oxygen is not persuasive because there is insufficient
record evidence to support it. The Appellant has not offered any persuasive
technical reasoning to show that the proposed modification would prevent
mask 16 from receiving or providing oxygen. Accordingly, Appellant's
argument amounts to attorney argument, not record evidence sufficient to
rebut the Examiner's prima facie case of obviousness. See In re Geisler,
116 F.3d 1465, 1470 (Fed. Cir. 1997) (Attorney argument cannot take the
place of record evidence).
For the first time in the Reply Brief, Appellant argues that the
Examiner has not "established why someone of ordinary skill in the art
would add the pneumatic regulator of the McDonald patent to the assembly
of the Hay patent." (Reply Br. 4) (Emphasis original). Notwithstanding that
the argument was not timely presented in the Appeal Brief, we will address
this argument here. 3 According to the Appellant, McDonald's "pneumatic
3 This argument is entitled to no consideration because it was not presented
for the first time in the opening brief, and Appellant has not shown good
cause why it should be considered, as required by our procedural rule. See
37 C.F.R. § 41.41(b)(2) (2012); see also Ex parte Borden, 93 USPQ2d 1473,
1473-74 (BPAI 2010) (informative opinion) (absent a showing of good
cause, the Board is not required to address an argument newly presented in
the reply brief that could have been presented in the principal brief on
appeal).
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regulator 48 is positioned in an auxiliary breathing channel to facilitate flow
of combinations of air and/or oxygen as needed" and "[t]he breathing
assembly of the Hay patent has no such auxiliary breathing channel, nor
does it contemplate regulating oxygen flow once valve 10 is opened." (Id.
at 5).
First, contrary to Appellant's argument, we note that the Examiner
indeed provides an articulated reason for the modification, namely "in order
to reliably deliver the required amount of oxygen at different altitudes"
(Non-Final Act. 8).
Second, the Appellant's challenge to the rejection based on the lack of
auxiliary breathing channel and regulator in Hay is not persuasive of
Examiner error because it amounts to attacking the references individually.
That Hay alone does not disclose every limitation of claim 4 is not
persuasive of error in the rejection which is based on the combination of
Hay, Bertheau, and McDonald. Non-obviousness cannot be established by
attacking references individually where the rejection is based upon the
teachings of a combination of references. In re Merck, 800 F .2d 1091, 1097
(Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981).
For the foregoing reasons, the Appellant's arguments as to error in the
rejection are unpersuasive. Accordingly, the rejection of claim 4 under
35 U.S.C. § 103(a) is sustained.
CONCLUSIONS
The rejection of claims 1-3, 11, and 12 under 35 U.S.C. § 103(a) as
unpatentable over Hay and Bertheau is sustained.
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The rejection of claim 4 under 35 U.S.C. § 103(a) as unpatentable
over Hay, Bertheau and McDonald is sustained.
DECISION
The decision of the Examiner to reject claims 1--4, 11, and 12 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).
AFFIRMED
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