Ex Parte Davidowski et al

Patent Trial and Appeal Board

Nov 22, 2013

11300052 (P.T.A.B. Nov. 22, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte DOUG L. DAVIDOWSKI, PETER CHI FAI HO,
LANCE BUSCH, RICHARD J. LORDO, and JEROME MATULA, JR.
__________

Appeal 2012-003510
Application 11/300,052
Technology Center 3700
__________

Before FRANCISCO C. PRATS, JEFFREY N. FREDMAN, and
SHERIDAN K. SNEDDEN, Administrative Patent Judges.

SNEDDEN, Administrative Patent Judge.

DECISION ON APPEAL
This appeal1 under 35 U.S.C. § 134 involves claims 1-3, 5, and 24. The
Examiner entered rejections under 35 U.S.C. § 102(e) and 35 U.S.C. §
103(a). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

1 Appellants identify the real party in interest as RIC Investments LLC,
Respironics, Inc. and Koninklijke Philips Electronics NV. (App. Br. 2.)
Appeal 2012-003510
Application 11/300,052

2
STATEMENT OF THE CASE
Claim 1, the only independent claim on appeal, is representative and
reads as follows (emphasis added):
1. A patient circuit adapted to deliver a flow of breathing
gas to an airway of a patient, the patient circuit comprising:
a flexible conduit having a first end portion, a second end
portion, and a lumen defined therein from the first end portion
to the second end portion, wherein the conduit is configured to
deliver a pressurized flow of breathable gas from a pressure
generating device to a patient interface appliance that is
configured to deliver the pressurized flow of breathable gas
from the conduit to the airway of the patient; and
a radiant barrier integrated with the conduit such that
the radiant barrier is disposed between an ambient
environment and the lumen,
wherein the radiant barrier is a low emissivity material,
wherein the radiant barrier and conduit are configured and
arranged so as to minimize heat loss from within the lumen to
ambient atmosphere resulting from radiation of energy from
within the lumen by reflecting such radiation back into the
lumen, and wherein the conduit and the radiant barrier are
sufficiently flexible so as to be bendable by the patient.

The claims stand rejected as follows:
I. Claims 1-3, 5, and 24 under 35 U.S.C. § 102(e) as being
anticipated by Huber.2
II. Claims 1, 2, 5, and 24 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Bohn3 and Yoshikawa.4

2 Huber et al., US 7,086,422 B2, issued Aug. 8, 2006.
3 Bohn et al., US 6,860,268 B2, issued Mar. 1, 2005.
4 Yoshikawa et al., US 5,476,121, issued Dec. 19, 1995.
Appeal 2012-003510
Application 11/300,052

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III. Claim 3 under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Bohn, Yoshikawa, and Pitzer.5

OPINION
REJECTION I.—ANTICIPATION
Issue
The Examiner rejected claims 1-3, 5, and 24 under 35 U.S.C. § 102(e)
as being anticipated by Huber. The Examiner finds that
Huber discloses the conduit (1) is made of multiple layers
including an external layer (8), an insulating layer (9), and an
internal radiant barrier (10, made from blister film, metalized
“aluminum, silver, gold, or foil” Column 3, Lines 18-24),
where the radiant barrier is formed on an interior surface of the
conduit (1) and integrated with the conduit by “gluing,
stitching, or, preferably, by hot-laminating.” (Column 5, Lines
11-24).

(Ans. 5.)
Appellants contend that the Examiner “repeatedly refers to the
removable flexible sheathing body of [Huber] as an actual conduit,” and that
“[t]his characterization is inconsistent with what [Huber] discloses because
[Huber] clearly and unambiguously describes the removable flexible
sheathing body as just that—a sheath that can be attached and removed from
a flexible tube” (App. Br. 6). “Regardless of whether the flexible sheathing
body includes a metallized film, the flexible sheathing body is still a
standalone object and is not integrated with the flexible tube” (id.).

5 Pitzer et al., US 6,905,566 B1, issued Jun. 14, 2005.
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Appeal 2012-003510
Application 11/300,052

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FF3. “Through corresponding pulling of the cords 4, 5 it is possible
to draw together the end regions of the sheathing body 1, this
advantageously fixing the sheathing body 1 to the flexible tube” (id. at col.
4, ll. 60-63).
FF4. Huber discloses as follows:
[T]he sheathing body 1 is preferably of multi-layered design.
Thus, for example, as the uppermost or outer covering layer, a
textile covering layer 8, . . . can be laminated onto a cushioning
and insulating substrate, which, in this case, consists of a foam
plastic layer 9 and a blister film 10. The individual layers may
be joined by corresponding glueing, by stitching or, preferably,
by hot-laminating.

(Id. at col. 5, ll. 13-20.)
FF5. “The flexible sheathing body is preferably in the form of a tube-
like body and is slipped onto the flexible tube” (id. at col. 2, ll. 17-18).
Principles of Law
The words of the claim must be given their plain meaning unless the
plain meaning is inconsistent with the specification. See In re Zletz, 893
F.2d 319, 321 (Fed. Cir. 1989). We determine the scope of the claims not
solely on the basis of the claim language, but upon giving claims their
broadest reasonable construction in light of the specification as it would be
interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Prater, 415 F.2d 1393,
1395-96 (CCPA 1969).
Anticipation requires that every element and limitation of the claimed
invention must be found in a single prior art reference, arranged as in the
claim. Brown v. 3M, 265 F.3d 1349, 1351 (Fed. Cir. 2001).
Appeal 2012-003510
Application 11/300,052

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Analysis
Claims 1 and 24
We begin with claim interpretation, since until a claim is properly
interpreted, its scope cannot be compared to the prior art. Appellants
contend that “claim 1 requires that the radiant barrier be integrated with the
conduit. This requires that the radiant barrier and the conduit form a single
object, and that the radiant barrier is not readily removable from the
conduit.” (App. Br. 5.)
Since the Specification does not define the term “integrated,” we
interpret this term according to the ordinary meaning of the terms as they
would be interpreted by the ordinary artisan. Here, the term “integrate” is
reasonably interpreted as “[t]o join with something else; unite.”6 Using this
interpretation, we find that Huber discloses a radiant barrier integrated with
the conduit as required by claim 1. Specifically, Huber discloses a radiant
barrier integrated with a conduit Huber discloses that the sheath is fixed (i.e.,
joined) to a flexible tube (conduit) by pulling of cords that draws together
the end regions of the sheathing body and joins the sheathing body to the
flexible tube (FF4). Accordingly, we are not persuaded by Appellants’
arguments to the contrary.
Claims 2, 3, and 5
Like Appellants, we are unable to find, and the Examiner does not
adequately explain, where Huber discloses the elements of claims 2, 3, and 5
(App. Br. 7-9). Since all claim limitations are not taught or suggested by the

6 See The Free Dictionary, http://www.thefreedictionary.com/integrated, last
accessed Nov. 21, 2013.
Appeal 2012-003510
Application 11/300,052

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applied prior art, the Examiner has failed to establish that Huber anticipates
claims 2, 3, and 5.
Conclusion of Law
The preponderance of evidence on this record supports the
Examiner’s conclusion that Huber anticipates claim 1. Claim 24 falls with
claim 1. See 37 C.F.R. § 41.37(c)(1)(vii). Although we agree that Huber
anticipates claims 1 and 24, our reasoning differs from that of the Examiner.
We therefore designate our decision a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) to provide Appellants a full and fair opportunity to
address this new rationale.
The preponderance of evidence on this record does not support the
Examiner’s conclusion that Huber anticipates claims 2, 3, and 5. We reverse
the rejection with regard to these claims.

REJECTIONS II & III—OBVIOUSNESS
Issue
The Examiner rejected claims 1, 2, 5, and 24 under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Bohn and Yoshikawa. The
Examiner finds that “Bohn does not expressly disclose the use of a radiant
barrier associated with the conduit” (Ans. 6-7). For the missing element, the
Examiner relies on Yoshikawa and finds that “Yoshikawa teaches the
method of manufacturing the conduit by which the conduit is extruded and
coated with the radiant barrier (silver)” (id. at 7, citing Yoshikawa at col. 8,
l. 65 to col. 9, l. 20). The Examiner concludes that “it would have been
obvious to one having ordinary skill in the art at the time the invention was
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Application 11/300,052

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made to modify the conduit of Bohn to include a radiant barrier within the
conduit as taught by Yoshikawa for the purpose of providing a flexible
rubber hose capable of conveying gas from a source to a patient” (id.).
The Examiner rejected claim 3 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Bohn, Yoshikawa, and Pitzer. The
Examiner relies on Pitzer for the teaching of a radiant barrier that “is formed
interior to the internal surface of the conduit and having an insulation barrier
there between for the purpose of providing a tube that is able to transport
gases from one point to another with while maintaining the desired
temperature regulations within the pipe” (Ans. 8).
Appellants contend that “[t]he thin film 2 described in [Yoshikawa] is
intended to increase fluid resistance and impermeability, not act as a radiant
barrier” (App. Br. 11). Thus, because “the thin film 2 described in
[Yoshikawa] does not necessarily provide a radiant barrier, the Office
Action cannot rely on the thin film 2 in [Yoshikawa] for an express or
implicit teaching of the claimed radiant barrier” (id.).
Appellants further contend that Yoshikawa is “concerned with the
problem of providing rubber hoses that are flexible, resistant to transfer
media, and fully impermeable to organic gases and organic solvents” and
thus is not reasonably pertinent to the particular problem(s) with which
Appellants were involved (id. at 13).
The issue presented is: Does the evidence of record support the
Examiner’s findings that the combined prior art renders Appellants’ claims
obvious?
Appeal 2012-003510
Application 11/300,052

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Additional Findings of Fact
FF6. Yoshikawa discloses “[a] rubber hose comprising an inner tube
of synthetic resin, a silver or silver alloy thin film sputtered or ion plated on
the inner tube, and a rubber layer heat cured to the thin film through
adhesive exhibits low gas and solvent permeability and high flexibility while
maintaining such properties even on angular bending” (Yoshikawa,
abstract).
FF7. Yoshikawa discloses that an “object of the present invention is
to provide such a composite rubber hose which is resistance against solvent
and moisture and durable against strains by angular bending” (id. at col. 3, ll.
27-30).
FF8. Yoshikawa discloses that
[T]hese and other objects are achieved by furnishing an inner
tube of a synthetic resin having an outer peripheral surface,
forming a thin film of silver or a silver base alloy on the outer
surface of the inner tube, and heat curing a rubber layer to the
thin film through an adhesive layer, thus integrating into a low
permeable rubber hose

(id. at col. 3, ll. 34-40).
Principles of Law
“The identification of analogous prior art is a factual question.” In re
Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004) (citing In re GPAC, Inc., 57
F.3d 1573, 1577 (Fed. Cir. 1995)). Two separate tests define the scope of
analogous prior art: (1) whether the art is from the same field of endeavor,
regardless of the problem addressed and, (2) if the reference is not within the
field of the inventor’s endeavor, whether the reference still is reasonably
pertinent to the particular problem with which the inventor is involved. In re
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Application 11/300,052

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Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986); see also In re Wood, 599 F.2d
1032, 1036 (CCPA 1979).
“A reference is reasonably pertinent if, even though it may be in a
different field from that of the inventor’s endeavor, it is one which, because
of the matter with which it deals, logically would have commended itself to
an inventor’s attention in considering his problem.” In re Clay, 966 F.2d
656, 659 (Fed. Cir. 1992).
Analysis
We disagree with the Examiner’s finding that Yoshikawa is analogous
art based on a determination that Yoshikawa is reasonably pertinent to the
problem facing Appellants. The problems facing Appellants include
(1) liquid in the patient circuit reaching the patient, where it
could drip on the patient’s face leaving it more prone to
formation of bacteria; (2) gas flowing through any accumulated
condensation generating an annoying gurgling sound; (3)
condensation removal where it is necessary for the patient or
caregiver to periodically disconnect the patient from the gas
flow/pressure generator, which is disruptive and may interfere
with the patient’s therapy; and/or (4) loss of humidity level of
the breathing gas

(Reply Br. 8; citing Spec. 2, ¶¶ 6 and 8). We find that a disclosure for a
rubber hose with containing a silver lining for the purposes of providing
“low gas and solvent permeability and high flexibility” (FF6) would not
have logically commended itself to Appellants’ attention in considering the
problem of constructing a patient circuit comprising a conduit with a radiant
barrier of a low emissivity material.
Appeal 2012-003510
Application 11/300,052

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We further note that the Examiner makes no finding on the emissivity
of Yoshikawa’s thin silver film. KSR Int’l v. Teleflex Inc., 550 U.S. 398,
418 (2007) (“[A] patent composed of several elements is not proved obvious
merely by demonstrating that each of its elements was, independently,
known in the prior art.”). Pitzer does not cure the deficiencies of the
combination of Bohn and Yoshikawa. For at least these reasons, we find
that the Examiner has not established a prima facie case of obviousness.
Conclusion of Law
The evidence of record does not support the Examiner’s findings that
the combined prior art renders Appellants’ claims obvious.

SUMMARY
We affirm the rejection of claims 1 and 24 under 35 U.S.C. § 102(e)
as being anticipated by Huber.
We reverse the rejection of claims 2, 3, and 5 under 35 U.S.C. §
102(e) as being anticipated by Huber.
We reverse the rejection of claims 1, 2, 5, and 24 under 35 U.S.C. §
103(a) as being unpatentable over the combination of Bohn and Yoshikawa.
We reverse the rejection of claim 3 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Bohn, Yoshikawa, and Pitzer.

TIME PERIOD FOR RESPONSE
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b), which provides that “[a] new ground of rejection . . . shall not be
considered final for judicial review.”
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Application 11/300,052

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37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard under §
41.52 by the Board upon the same record. . . .
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, 37 C.F.R § 41.50(b)

cdc

Notice of References Cited

Application/Control No.

11/300,052
Applicant(s)/Patent Under
Reexamination
Doug Davidowski et al.
Examiner

Annette Dixon
Art Unit

3700

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The Free Dictionary, http://www.thefreedictionary.com/integrated, last accessed Nov. 21,
2013.

V

W

X

*A copy of this reference is not being furnished with this Office action. (See Manual of Patent Examining Procedure, Section 707.05(a).)
**APS encompasses any electronic search i.e. text, image, and Commercial Databases.
U.S. Patent and Trademark Office
PTO-892 (Rev. 03-98Notice of References Cited Part of Paper No. 16
integrated - definition of integrated by the Free Online Dictionary, Thesaurus and Encyclopedia.
file:///S|/...of%20integrated%20by%20the%20Free%20Online%20Dictionary,%20Thesaurus%20and%20Encyclopedia_.htm[11/21/2013 6:27:18 AM]
thefreedictionary.com
in·te·grate ( n t -gr t )
v.inte·grat·ed, inte·grat·ing, inte·grates
v.tr.
1. To make into a whole by bringing all parts together; unify.
2.
a. To join with something else; unite.
b. To make part of a larger unit: integrated the new procedures into the work routine.
3.
a. To open to people of all races or ethnic groups without restriction; desegregate.
b. To admit (a racial or ethnic group) to equal membership in an institution or society.
4. Mathematics
a. To calculate the integral of.
b. To perform integration on.
5. Psychology To bring about the integration of (personality traits).
v.intr.
To become integrated or undergo integration.
[From Middle English, intact, from Latin integr tus, past participle of integr re, to make whole, from integer,
complete; see tag- in Indo-European roots.]
The American Heritage® Dictionary of the English Language, Fourth Edition copyright ©2000 by Houghton Mifflin Company. Updated in 2009. Published by Houghton
Mifflin Company. All rights reserved.
integrated [ˈɪntɪˌgreɪtɪd]
adj
1. characterized by integration
2. (Business / Industrial Relations & HR Terms) denoting a works which combines various processes normally carried out at
different locations an integrated steelworks
3. (Life Sciences & Allied Applications / Biology) Biology denoting a virus the DNA of which is incorporated into the
chromosomes of the host cell
Collins English Dictionary – Complete and Unabridged © HarperCollins Publishers 1991, 1994, 1998, 2000, 2003
Thesaurus Legend: Synonyms Related Words Antonyms
Adj. 1. integrated - formed or united into a whole
incorporate, incorporated, merged, unified
united - characterized by unity; being or joined into a single entity; "presented a united front"
2. integrated - formed into a whole or introduced into another entity; "a more closely integrated economic and political
system"- Dwight D.Eisenhower; "an integrated Europe"
nonintegrated, unintegrated - not integrated; not taken into or made a part of a whole
3. integrated - not segregated; designated as available to all races or groups; "integrated schools"
integrative - combining and coordinating diverse elements into a whole
joint - united or combined; "a joint session of Congress"; "joint owners"