Ex Parte Burz et al

Patent Trial and Appeal Board

Jun 25, 2018

12737538 (P.T.A.B. Jun. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121737,538 04/11/2011
23117 7590 06/27/2018
NIXON & V ANDERHYE, PC
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Johann S. Burz
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.
PTB-4750-106 7254
EXAMINER
LOUIS,LATOYAM
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
06/27/2018 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):
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 JOHANN S. BURZ, ACHIM BIENER, JOHANNES NICKOL,
and BERND LANG 1
Appeal2017-010287
Application 12/737,538
Technology Center 3700
Before: DANIELS. SONG, JAMES P. CALVE, and
JILL D. HILL, Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Action (hereinafter "Final Act.") rejecting claims 1, 2, 4--10, 13, 14,
16-47, 50, and 51 in the present application. We have jurisdiction under 35
U.S.C. §§ 6(b) and 134.
We AFFIRM-IN-PART.
1 Collectively referred to as "Appellant" herein. The real party in interest is
RESMED LIMITED (Appeal Brief (hereinafter "App. Br.") 3).
Appeal2017-010287
Application 12/737,538
The claimed invention is directed to a cushion for a respiratory mask,
and a method for manufacturing the same (Abstract). Claims 1, 21, 31, 3 8,
and 42 are independent claims. Independent claims 1 and 21 illustrative of
the invention, read as follows (App. Br. 15, 17, Claims App'x, emphasis
added):
1. A method of manufacturing a cushion for a respiratory
mask, comprising:
providing a mold, the mold comprising at least two mold
halves and at least one core, the at least one core being C-shaped;
closing the mold around the core;
injecting a first material into the mold and around the at
least one core to enclose the core by the first material and form
the cushion as a one-component structure with a central through
hole;
opening the mold; and
removing the core from within the cushion through a
single orifice; and
sealing the orifice after the core is removed from within
the cushion;
wherein:
removal of the core from within the cushion creates at least
one cavity completely surrounded by the cushion but for the
single orifice through which the core is removed;
a cross section along a central axis of the central through
hole immediately after removal of the core includes an
uninterrupted perimeter around the at least one cavity;
the single orifice provides the only fluid communication
between the at least one cavity and an environment external to
the cushion; and
the at least one cavity is defined solely by the first material
of the surrounding cushion.
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21. A method for manufacturing a cushion usable in a
respiratory mask, the method comprising:
injecting a first elastomeric material into a mold, the mold
comprising at least two mold segments and at least one core
enclosed within a chamber defined by the mold segments, to
form a one-component cushion body within the mold, the
cushion body forming around and substantially enclosing the at
least one core, the cushion body having at least one substantially
enclosed cavity formed by the core and an opening sized to fit
around a patient's nose, the at least one cavity being
substantially surrounded by the first material so that a cross
section of the one-component cushion body along a central axis
of the opening includes an uninterrupted perimeter of the first
elastomeric material around the at least one cavity prior to
removal of the at least one core from the cushion body; and
removing the cushion body from the at least one core such
that only a single orifice through which the cushion body was
removed provides fluid communication between the at least one
cavity and an environment external to the cushion body.
REJECTIONS
The Examiner rejects various claims on appeal as follows:
1. Claims 1, 2, 4--10, 16, 18, 21-30, 36, and 43--46 under 35
U.S.C. § 112, first paragraph, for failing to comply with the written
description requirement (Final Act. 5).
2. Claims 10, 21-30, 36, 45, and 46 under 35 U.S.C. § 112,
second paragraph, as being indefinite (Final Act. 6).
3. Claims 1, 2, 4--6, 31, 32, and 37 under 35 U.S.C. § 102(e) as
anticipated by Grane (US 2010/0170516 Al, pub. July 8, 2010) (Final
Act. 7).
4. Claims 14, 19, 20, 35, 38, and 39 under 35 U.S.C. § 103(a) as
unpatentable over Grane (Final Act. 10).
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Application 12/737,538
5. Claims 7-10, 13, 16-18, 33, 34, 40-47, 50, and 51under35
U.S.C. § 103(a) over Grane in view ofBurz (WO 2007/009782 Al)
(Final Act. 13).
ANALYSIS
Only those arguments actually made by the Appellant have been
considered in this decision. Arguments that the Appellant could have made,
but chose not to make, have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(l)(iv); In re Jung, 637 F.3d 1356, 1365-
66 (Fed. Cir. 2011); Ex parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI 2010
(precedential) ).
We further observe that the Appellant relies on the dependency of an
independent claim for patentability of the dependent claims, stating "[t]he
various dependent claims are patentable because they depend from one of
claims 1, 21, 31 and 42 and because of the additional features they recite."
(App. Br. 14). While the Appellant asserts patentability of dependent claims
based on "additional features," this amounts to no more than a statement
pointing out what the dependent claims recite, and such allegation is not
considered to be an argument for separate patentability. See 37 C.F.R.
41.37(c)(l)(iv). Accordingly, the dependent claims stand or fall with the
independent claim from which they depend.
Rejection 1
Claims 1, 2, 4--10, 16, 18, 21-30, 36, and 43--46 stand rejected for
failing to comply with the written description requirement (Final Act. 5).
As to independent claim 1, the Examiner finds that the limitation "a cross
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Application 12/737,538
section along a central axis of the central through hole immediately after
removal of the core includes an uninterrupted perimeter" lacks written
descriptive support in the application (Final Act. 5). In particular, the
Examiner finds that there is "no recitation in the specification or illustration
in the drawings that a perimeter shown in a cross section along a central axis
is uninterrupted immediately after removal. Instead [F]igs. 2B and 5A
appear to show the perimeter interrupted at opening 3." (Id.). In that regard,
the Examiner finds that "Fig. 5 shows orifice 3 at a bottom location such that
the cavity 4 does not have a completely enclosed perimeter," and "[s]ince
the orifice is not sealed immediately, the cavity is not sealed immediately,"
there is no written descriptive support for the limitation at issue (Ans. 13-14,
citing Spec. p. 20, 11. 11-19).
However, we agree with the Appellant that "[a]n uninterrupted
perimeter is illustrated in Fig. 4A." (App. Br. 8; see also id. at 9, annotated
Fig. 4A). Similar view is shown in Figure 4B as well (see Fig. 4B). The
Appellant is correct that, as claimed, "[ s Jo long as the present application
discloses one uninterrupted perimeter around the at least one cavity, written
description is satisfied." (Reply Br. 1 ). The Examiner appears to
misunderstand that claim 1 requires that "a cross section" have an
uninterrupted perimeter around the cavity, and does not require that all cross
sections of the cushion have such an uninterrupted perimeter.
Similar to claim 1, the Examiner also finds that independent claim 21
lacks written descriptive support because "[ t ]he specification and drawings
do not indicate or illustrate an uninterrupted perimeter in a cross section
along a central axis before the core is removed" as required by claim 21
(Final Act. 5). In that regard, the Examiner finds that "[ t ]here is no drawing
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Application 12/737,538
which illustrates a completely closed cavity when the core is still within the
cavity. There is no recitation in the specification of an enclosed perimeter
prior to removal of the core." (Ans. 14).
However, we generally agree with the Appellant that "the reasoning
discussed above regarding the written description for claim 1 is applicable
here as well. The uninterrupted cross section can be in place before removal
of the core because no additional finishing operations are required to achieve
the structure illustrated in Fig. 4A." (App. Br. 9). In that regard, we observe
that Figure 6 shows cushion 1 with core 15 therein being formed, the core
being "used for creating a hollow cavity inside the cushion." (Reply Br. 2,
citing Spec. p. 13, 11. 31-32; see also Fig. 6). Accordingly, when considered
in conjunction with Figures IA and 4A, a person of ordinary skill would
have appreciated that the Appellant was in possession of the claimed
invention of claim 21 (see Figs. 1 A, 4A, 6 and disclosures related thereto).
Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(The "test for sufficiency is whether the disclosure of the application relied
upon reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date.").
Therefore, we reverse the Examiner's rejection of independent claims
1 and 21 based on lack of written description. The remaining claims in this
rejection stand rejected based on their dependency on a rejected claim (Final
Act. 5). Accordingly, this rejection of the remaining claims 2, 4--10, 16, 18,
22-30, 36, and 43--46 is also reversed.
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Rejection 2
Claims 10, 21-30, 36, 45, and 46 stand rejected as being indefinite
(Final Act. 6). The Examiner rejects dependent claim 10, determining that
the limitation "two horizontal or longitudinal cavities" is indefinite "since a
cavity is previously claimed (see claim 1 line 14). Thus it is unclear if the
same cavity is included or whether different cavities are being claimed."
(Final Act. 6; see also Ans. 15). The Examiner also determines that "it is
unclear how many cavities are being claimed." (Ans. 15).
The Appellant argues that "the rejection improperly conflates breadth
with indefiniteness" (Reply Br. 3), and that:
[T]here is no need to explicitly define whether the two or more
horizontal or longitudinal cavities include the at least one cavity
for claim 10 to be definite. A cavity (i.e., claim 1) can encompass
one or more cavities. Two or more cavities may include the
cavity from claim 1 (if the cavity is horizontal or longitudinal) or
may not (which would result in at least three cavities). Both two
cavities and three cavities is consistent with the features of claim
10.
(App. Br. 10).
Independent claim 1 specifically recites creation of "at least one
cavity," and further makes particular reference to "the at least one cavity" in
the last three limitations thereof, thereby clearly referring back to the recited
"at least one cavity." However, claim 10 does not refer to, or otherwise
modify, the "at least one cavity" recited in claim 1, but instead, recites
"method according to claim 1,further comprising creating two or more
horizontal or longitudinal cavities." (App. Br. 16, Claims App'x, emphasis
added). Accordingly, we interpret claim 10 as reciting creating two or more
cavities that are different from the recited "at least one cavity" in claim 1.
While claim 10 is thus not inconsistent with claim 1, it requires not only "at
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Application 12/737,538
least one cavity" of claim 1, but also "two or more horizontal or longitudinal
cavities" as recited. This meaning is clear from the claim language.
Accordingly, we disagree with the Examiner that independent claim 10 is
indefinite.
However, evident from the above claim interpretation, we do not
agree with the Appellant's implicit assertion that the recited "at least one
cavity" of claim 1 can be interpreted to encompass the recited cavities of
claim 10. While the Appellant's argument would have been consistent with
language reciting "wherein the at least one cavity created comprises creating
two or more horizontal or longitudinal cavities," that is not what claim 10
recites. Therefore, in view of the above, we disagree with the Examiner that
dependent claim 10 is unclear and reverse the indefiniteness rejection
thereof, although not for the reasons advocated by the Appellant.
The Examiner also rejects independent claim 21, finding that the
limitation "the cushion body having at least one substantially enclosed
cavity formed by the core and an opening sized to fit around a patient's
nose" is indefinite because "[i]t is unclear whether it is being claimed that
the opening also forms the enclosed cavity or if it is being claimed that the
cushion body additionally has an opening." (Final Act. 6; see also Ans. 16).
The Appellant disagrees and asserts that "[ t ]he clear meaning of the
above quoted features is a cushion body having (1) and (2), where (1) and
(2) are: (1) at least one substantially enclosed cavity formed by the core, and
(2) an opening sized to fit around a patient's nose." (App. Br. 10).
We understand the basis for the Examiner's rejection because
grammatically, the limitation at issue can be read such that "formed"
modifies both the recited "core" and "opening," that is, as reciting "cavity
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Application 12/737,538
formed by the core and an opening." However, such interpretation has no
basis in the Specification wherein the cavity is defined by walls formed
around the core, and not the opening of the cushion. Accordingly, a person
of ordinary skill in the art would have understood the pertinent limitation as
reciting "the cushion body having at least one ... cavity ... and an opening
sized to fit around a patient's nose," such construction being fully supported,
and the only construction disclosed in the Specification. Orthokinetics, Inc.
v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (test for
definiteness under 35 U.S.C. § 112, second paragraph, is "whether those
skilled in the art would understand what is claimed when the claim is read in
light of the specification."). Therefore, we also reverse the Examiner's
indefiniteness rejection of independent claim 21.
The Examiner further rejects dependent claim 45, finding that the
limitation "two or more vertical or transverse cavities" is indefinite "since a
cavity is previously claimed (see claim 1 line 14). Thus it is unclear if the
same cavity is included or whether different cavities are being claimed."
(Final Act. 6). The Appellant relies on the same arguments submitted
relative to reasoning as claim 10 (App. Br. 9). Accordingly, we reverse the
Examiner's indefiniteness rejection of claim 45 for substantially the same
reasons as claim 1 0.
The Examiner rejected the remaining dependent claims in this
rejection based on their dependency on a rejected claim (id. at 7). Having
reversed the Examiner's indefiniteness rejection with respect to independent
claims 10, 21, and 45, we reverse the indefiniteness rejections of the
remaining dependent claims.
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Application 12/737,538
Rejection 3
The Examiner rejects claims 1, 2, 4--6, 31, 32, and 37 as anticipated
by Grane, thereby finding that Grane discloses each and every limitation of
these claims (Final Act. 7). As to claim 1, the Examiner finds that Grane
discloses, inter alia:
[A] cross section along a central axis of the central through hole
immediately after removal of the core includes an uninterrupted
perimeter of the first material around the last least one cavity
([0035] lines 1-10 disclose that after the injection molding step,
the flanges are sealed in the next step as shown in [F]igs. 6 and
9. Thus the perimeter becomes uninterrupted in the
next/immediate step).
(Final Act. 8, emphasis added).
As to inflation tube 14 of Grane, the Examiner notes that Grane
discloses that "inflation tube 14 is not necessary and therefore could be
omitted such that cavity 13 would be the only means of communication."
(Final Act. 8, citing Grane i-f 37). The Examiner summarizes that in Grane,
"the perimeter is uninterrupted when flanges 6, 7 are sealed in the immediate
step after core removal," and the disclosure does not provide a "definition
for what is encompassed by 'immediate'." (Ans. 16).
However, we agree with the Appellant that Grane fails to anticipate
claim 1 because "[ n Jo matter where the cross section is taken, there is a gap
between the first flange 6 and the second flange 7. This gap is present until
the gap is glued." (App. Br. 12, citing Grane i-fi-123-24, Fig. 2). As the
Appellant argues, ordinary meaning of "immediate" would be applicable, the
relevant definition being "without interval of time." (App. Br. 11, citing
https://www.merriam-webster.com/dictionary/immediately). As the
Appellant argues, in Grane, "[a ]t least two additional actions are disclosed:
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Application 12/737,538
application of adhesive and stretching the inner wall to fold over the second
flange." (Reply Br. 4; see also App. Br. 12). Thus, because Grane fails to
disclose an "uninterrupted perimeter around the at least one cavity"
immediately after removal of the core, we reverse the Examiner's
anticipation rejection of independent claim 1.
Independent claim 31 recites, inter alia, "a cross section along a
central axis of the central through hole includes an uninterrupted and
continuous perimeter of the first elastomeric material around the cavity."
(App. Br. 18, Claims App 'x, emphasis added). In rejecting claim 31, the
Examiner finds that Grane discloses "an uninterrupted and continuous
perimeter (3, 4, 5) composed of the first elastomeric material ([0034] lines 1-
10) around the cavity (as shown in figs. 4 and 6, the outer perimeter of the
cavity 13 is continuously and completely surrounded by the first material)."
(Final Act. 9). The Examiner further finds that in Grane, "[ t ]here is no gap
between the elastic materials of flanges 6, 7. Thus the flanges provide a
continuous elastomeric material around the cavity. Further, glue 11 is only
located between the overlapping portions and thus does not provide a
discontinuity in the perimeter of elastomeric material." (Ans. 17, emphasis
added).
We disagree with the Examiner and generally agree with the
Appellant that in Grane, the perimeter of the first elastomeric material is
interrupted and discontinuous "between the facing surface 9 and the inner
surface 1 O" by virtue of the presence of adhesive 8 that forms the bonded
joint 11 (App. Br. 13; see also Grane i-f 35). As the Examiner concedes,
Grane discloses glue that is located between "the overlapping portions" of
facing surface 9 and inner surface 10, and as such, there is, albeit extremely
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thin, an interruption and discontinuity in the elastomeric material.
Lindemann Maschinenfabrik GMBH v. American Hoist and Derrick Co.,
730 F.2d 1452, 1458 (Fed. Cir. 1984) ("Anticipation requires the presence in
a single prior art reference disclosure of each and every element of the
claimed invention, arranged as in the claim."). Accordingly, we reverse the
Examiner's anticipation rejection of claim 31 as well.
The Appellant relies dependency on an independent claim 1 or 31 for
patentability of the remaining dependent claims (App. Br. 14). Thus, we
reverse the Examiner's anticipation rejection of the remaining dependent
claims as well.
Rejection 4
Claims 14, 19, 20, 35, 38, and 39 stand rejected as obvious over Grane
(Final Act. 10-11). This obviousness rejection does not address the
deficiency of Grane noted above relative to independent claims 1 and 31
from which claims 14, 19, 20, and 35 ultimately depend. Accordingly, this
rejection is reversed as to claims 14, 19, 20, and 35.
The Appellant does not submit any arguments specifically directed to
independent claim 3 8, which also is subject to this obviousness rejection,
and claim 39 that depends from claim 38 (see App. Br. 14). Accordingly,
we summarily affirm the obviousness rejection of claims 38 and 39.
Rejection 5
Claims 7-10, 13, 16-18, 33, 34, 40-47, 50, and 51 stand rejected as
unpatentable over Grane in view of Burz (Final Act. 13). The Examiner
relies on Burz for disclosing a C-shaped cavity (Final Act. 16). The
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Examiner's application of Burz does not remedy the deficiency of Grane
discussed above relative to independent claims 1 and 31 from which claims
7-10, 13, 16-18, 33, 34, 43--47, 50, and 51 ultimately depend. Accordingly,
we reverse this obviousness rejection relative as to these claims.
As to claims 40 and 41, we observe that these claims depend from
claim 3 8, the rejection of which we summarily affirm above. Accordingly,
the rejection of claims 40 and 41 is likewise summarily affirmed.
As to independent claim 42, it requires "an uninterrupted perimeter of
the first material around the enclosed cavity." (App. Br. 21, Claims App'x).
The Appellant argues that in Grane, there is "an interruption at least at the
bonded joint 11." (App. Br. 13). Therefore, we reverse the Examiner's
rejection of claim 42 for reasons already discussed above.
CONCLUSIONS
The Examiner's rejections are decided as follows:
1. Rejection 1 is reversed;
2. Rejection 2 is reversed;
3. Rejection 3 is reversed;
4. Rejection 4 is:
a. reversed as to claims 14, 19, 20, and 35; and
b. summarily affirmed as to claims 38 and 39; and
5. Rejection 5 is:
a. reversed as to claims 7-10, 13, 16-18, 33, 34, 42--47, 50, and
51; and
b. summarily affirmed as to claims 40 and 41.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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