Ex Parte Frater

Patent Trial and Appeal Board

Dec 31, 2015

13138575 (P.T.A.B. Dec. 31, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/138,575 09/07/2011
23117 7590 01/05/2016
NIXON & V ANDERHYE, PC
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Robert Frater
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-4398-1190 4303
EXAMINER
STANIS, TIMOTHY A
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
01/05/2016 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 ROBERT FRATER
Appeal2016-001166
Application 13/138,575
Technology Center 3700
Before ANNETTE R. REIMERS, JILL D. HILL, and
JASON W. MELVIN, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1'2
Robert Frater (Appellant) appeals under 35 U.S.C. § 134(a) from the
Examiner's decision to reject: (1) claim 43 under 35 U.S.C. § 112, first
paragraph, for lack of written description; (2) claim 43 under 35 U.S.C.
§ 112, second paragraph, for indefiniteness; (3) claims 1-5, 8, 28-30, 37,
1 The Examiner has withdrawn the rejection of claims 28-30 under 35
U.S.C. § 112, first paragraph, for lack of written description. Ans. 12-13.
2 The Examiner indicates that (1) "[ c ]laim 7 is objected to as being
dependent upon a rejected base claim, but would be allowable if rewritten in
independent form including all of the limitations of the base claim and any
intervening claims"; and (2) "[c]laim 38 is allowed." Final Act. 12-13
(mailed Dec. 16, 2014).
Appeal2016-001166
Application 13/138,575
and 40-44 under 35 U.S.C. § 103(a) as unpatentable over Thornton (US
2007/0006879 Al, pub. Jan. 11, 2007) and Berthon-Jones (US 5,560,354,
iss. Oct. 1, 1996); and (4) claim 6 unpatentable over Thornton, Berthon-
Jones, and Drew (US 6,581,594 Bl, iss. June 24, 2003). 3 Claims 14--20, 25-
27, and 31-33 have been withdrawn from consideration. Claims 9-13, 21-
24, 34--36, and 39 have been canceled. We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
The claimed subject matter "relates to a mask system used for
treatment of respiratory disorders." Spec. para. 2, Figs. 1, la, and lb.
Claims 1, 28, and 40 are independent. Claims 1 and 40 are illustrative of the
claimed subject matter and recite:
1. A mask system, comprising:
an interface adapted to deliver pressurized gas to a
patient's nasal airways;
a mouth seal adapted to seal with the patient's mouth and
to prevent inhalation through the mouth when pressure is
supplied in the interface, wherein the mouth seal is adapted to
be adjacent to or in light contact with the patient's mouth such
that increased pressure in the patient's mouth causes the
patient's lips and/ or cheeks to seal with the mouth seal; and
a one-way air path in air communication with the
interface and with the mouth seal, wherein the one-way air path
allows exhausted air from the mouth seal to pass into the
3 Claims 43 and 44 are not presented in the heading of this rejection.
However, claims 43 and 44 are included in the body of the rejection. Final
Act. 5, 11-12; see also Ans. 4, 11. We consider this an inadvertent error by
the Examiner.
2
Appeal2016-001166
Application 13/138,575
interface, but prevents the pressurized gas from the interface
from passing into the mouth seal.
40. A mask system, comprising:
an interface adapted to deliver pressurized gas to a
patient's nasal airways;
a mouth seal adapted to seal with the patient's mouth, to
prevent inhalation through the mouth when pressure is supplied
in the interface, and provide an effective seal without applying
excess rearward force to the patient's jaw; and
a one-way air path in air communication with the
interface and with the mouth seal, wherein the one-way air path
allows exhausted air from the mouth seal to pass into the
interface and equalize pressure between the interface and the
mouth seal, but prevents the pressurized gas from the interface
from passing into the mouth seal.
ANALYSIS
Rejection 1 - Written Description
Claim 43
Claim 4 3 recites " [ t] he mask system according to claim 1, wherein the
mouth seal is structured to be spaced apart from the patient's mouth in the
absence of internal pressurization of the patient's mouth." Appeal Br. 26,
Claims App. The Examiner determines that "the limitation 'the mouth seal
is structured to be spaced apart from the patient's mouth in the absence of
internal pressurization of the patient's mouth ... is new matter that is not
supported in the [Appellant's] original specification." Final Act. 3; Ans. 2-
3.
To satisfy the written description requirement, the disclosure must
convey with reasonable clarity to skilled artisans that Appellants were in
possession of the claimed invention as of the filing date. Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563---64 (Fed. Cir. 1991).
3
Appeal2016-001166
Application 13/138,575
At the outset, we agree with Appellant that "there is no requirement
that the [S]pecification explicitly state that the mouth seal 20 in Fig. la is
spaced apart from the mouth of the patient." Reply Br. 2. Appellant's
Specification describes that "Fig. la shows the sealing portion 20 in relation
to the patient's mouth before sealing, and Fig. 1 b shows the sealing portion
20 engaged with the patient's mouth when differential pressure pushes the
patient's lips and/or cheeks against the sealing portion." Spec. para. 52; see
also id. at paras. 21, 22. We agree with Appellant that Figure 1 a of the
subject application illustrates the mouth seal "spaced apart from the patient's
mouth." Appeal Br. 9; see also Reply Br. 1-2. In re Mraz, 455 F.2d 1069,
1072 (CCPA 1972) ("[T]hings patent drawings show clearly are [not] to be
disregarded.").
Accordingly, for the foregoing reasons, we do not sustain the
Examiner's rejection of claim 43 under 35 U.S.C. § 112, first paragraph, for
lack of written description.
Rejection 2-Indefiniteness
Claim 43
The Examiner determines that "the limitation 'the mouth seal is
structured to be spaced apart from the patient's mouth in the absence of
internal pressurization of the patient's mouth' ... is unclear as to how such a
configuration would still be able to 'seal with the patient's mouth and
prevent inhalation through the mouth when pressure is supplied in the
interface."' Final Act. 4; Ans. 3--4. According to the Examiner, "the
configuration of having the mouth seal spaced apart from the patient's
mouth would allow the patient to breath in air around the sides of the mouth
4
Appeal2016-001166
Application 13/138,575
seal. This runs contrary to the claimed functional limitation ofpreventing
inhalation through the mouth." Ans. 14.
As discussed above in reference to Rejection 1, we agree with
Appellant that Figure la of the subject application illustrates the mouth seal
"spaced apart from the patient's mouth." Appeal Br. 9; see also Reply Br.
1-2. Claim 1 recites, in relevant part, "a mouth seal adapted to seal with the
patient's mouth and to prevent inhalation through the mouth when pressure
is supplied in the interface." Appeal Br. 22, Claims App. (emphasis added);
see also id. at 10; Reply Br. 3--4. Appellant's Specification describes that
the patient's mouth may become pressurized due to mouth leak. If mouth
leak occurs (i.e., the patient mouth breathes), then the resulting pressure in
the mouth expands the patient's lips into sealing contact with the interface.
See Spec. paras. 44, 52, 62, 74; Fig. 1 b; see also Appeal Br. 1 O; Reply Br. 4.
Claim 43, which depends from claim 1, recites, in relevant part, "the mouth
seal is structured to be spaced apart from the patient's mouth in the absence
of internal pressurization of the patient's mouth." Appeal Br. 26, Claims
App. (emphasis added); see also id. at 10; Reply Br. 3--4. We agree with
Appellant that "if a patient is awake, mouth leak may not occur because, for
example, the patient [would have] conscious control of [his or her]
respiratory system." Reply Br. 4.
Accordingly, for the foregoing reasons, we do not sustain the
Examiner's rejection of claim 43 under 35 U.S.C. § 112, second paragraph,
for indefiniteness.
5
Appeal2016-001166
Application 13/138,575
Rejection 3 - Obviousness over Thornton and Berthon-Jones
Claims 1-5, 8, 28-30, 37, and 41--43
Claim 1 recites, in relevant part, "the mouth seal is adapted to be
adjacent to or in light contact with the patient's mouth such that increased
pressure in the patient's mouth causes the patient's lips and/or cheeks to seal
with the mouth seal." Appeal Br. 22, Claims App. (emphasis added). The
Examiner finds that Thornton discloses the mask system of claim 1
substantially as claimed. See Final Act. 5---6; see also Ans. 4--5.
Specifically, the Examiner finds: "[Figure] 2A [of Thornton] depicts the
mouth seal adjacent to (and in light contact with) the patient's mouth; an
increase in pressure within the patient's mouth would cause the patient's lips
to bulge out and create a further seal with walls 104 and 106 of the mouth
seal." Id. at 5 (emphasis added); see also Ans. 5.4
Appellant contends:
The Office Action alleges that "an object can be both 'adjacent
to' and in contact with another object simultaneously" and that
no special definition has been provided for adjacent that would
exclude contact. . . . This analysis is unreasonable because
claim 1 recites both "adjacent to" and "in light contact." Thus
based on the cannons of claim construction "adjacent to" cannot
be interpreted as being in contact because it effectively renders
"light contact" superfluous.
Appeal Br. 11 (citing Final Act. 14); see also Reply Br. 5. Appellant further
contends: "Even if Thornton discloses a mouth seal that is adjacent. .. there
4 The Examiner relies on Berthon-Jones for disclosure of the mouth seal
preventing inhalation through the mouth when pressure supplied in the
interface. Final Act. 6; see also Ans. 5---6.
6
Appeal2016-001166
Application 13/138,575
is no evidence provided that the patient's lips will bulge out and create a
further seal as alleged in the Office Action." Id. According to Appellant:
At issue is whether the applied references disclose, or would
have rendered obvious, "increased pressure in the patient's
mouth causes the patient's lips and/or cheeks to seal with the
mouth seal" as recited in claim 1 . ... there is no evidence
increased pressure causes a seal with Thornton's device.
Thornton's figures show a device that is pressed against the
user's lips and/or cheeks. When pressed in this way, any seal is
likely already in place.
Reply Br. 6; see also Appeal Br. 11-12, 14.
Appellant's Specification describes: "[In Figure 1], the sealing portion
20 may be closely adjacent to or in light sealing contact with the patient's
mouth." Spec. para. 52 (emphasis added). Claim 1 recites that the mouth
seal "is adapted to be adjacent to or in light contact with the patient's
mouth." Appeal Br. 22, Claims App. (emphasis added). Although we agree
\'l1ith 1A:\.ppellant that "based on the cannons of claim constrt1ction 'adjacent
to' cannot be interpreted as being in contact because it effectively renders
'light contact' superfluous," Thornton's mask is in contact with the patient's
mouth. Thornton, Figs. IA, 2A, 2B; see Appeal Br. 11, Final Act. 5; Ans. 5.
Claim 1 further recites that "increased pressure in the patient's mouth causes
the patient's lips and/or cheeks to seal with the mouth seal." Appeal Br. 22,
Claims App. (emphasis added). The Examiner takes the position that Figure
1 of the subject invention and Figure 2A of Thornton "clearly have
analogous structure that would behave in similar manners to a patient
attempting to exhale out of their mouth." Ans. 15. We disagree with the
Examiner's position for the following reasons.
7
Appeal2016-001166
Application 13/138,575
Appellant's Specification describes:
The mouth seal 10 of Fig. 1 is structured to be used in
conjunction with a nasal interface 80 (including nasal and full-
face masks, pillows, nozzles, nasal pillows or prongs, etc.) that
provides pressurized breathable gas to the patient's nose. As
illustrated, a mount in the form of a conduit portion 40
interconnects the sealing portion 20 with the nasal interface 80.
The conduit portion 40 communicates with an opening 82
provided to the nasal interface 80.
Spec. para. 81 (emphasis added).
Thornton discloses:
In certain embodiments, multi-chamber mask 100 is
custom formed to fit the user's unique facial structure and
features, including at least the portion of the user's face
surrounding the user's mouth and nostrils ....
In certain embodiments, multi-chamber mask 100 is
formed from a first layer 102, a second layer 104, and a
partition 106. When assembled, first layer 102, second layer
104, and partition 106 define an upper chamber and a lov,rer
chamber. In certain embodiments, first layer 102 operates to
form a seal between multi-chamber mask 100 and the user's
face.
Thornton, paras. 14--15 (emphasis added); Fig. 1.
Thornton discloses a single multi-chambered mask 100 including a
seal 102 that fits around/surrounds the user's mouth and nostrils. Id. In
contrast, the subject invention includes a separate mouth seal 10 and nasal
interface 80 (i.e., mouth seal 10 is used in conjunction with nasal interface
80). See Spec. para. 81. Mouth seal 10 is connected (mounted) via conduit
portion 40 to nasal interface 80. Id. Although we agree with the Examiner
that Figure 2A of Thornton depicts the mouth seal in contact with the
8
Appeal2016-001166
Application 13/138,575
patient's mouth, the Examiner does not direct us to any discussion in
Thornton that increased pressure in the patient's mouth causes the patient's
lips and/or cheeks to seal with the mouth seal. Final Act. 5; see also Ans. 5.
Further, the Examiner does not establish, by evidence or technical reasoning,
a sufficient factual basis to support the position that increased pressure in the
patient's mouth necessarily causes the patient's lips and/or cheeks to seal
with the mouth seal of Thornton. Id.; see also Ans. 5, 15. We agree with
Appellant that "Thornton's figures show a device that is pressed against the
user's lips and/or cheeks. When pressed in this way, any seal is likely
already in place." Reply Br. 6; see also Thornton, Figs. 1, 2A, 2B.
Consequently, based on the foregoing reasons, the Examiner fails to
establish a prima facie case that the combined teachings of Thornton and
Berthon-Jones disclose the mask system of claim 1.
Independent claim 28 calls for a method of controlling air flow in a
mask system including the step of "increasing pressure in the patient's
mouth to cause the patient's lips and/ or cheeks to seal with the mouth seal."
Appeal Br. 23-24, Claims App. The Examiner relies on the same
unsupported findings and conclusions for claim 28 as discussed above in
claim 1. Final Act. 5, 7-8; see also Ans. 4, 7-8. Thus, the Examiner's
findings and conclusions with respect to Thornton and Berthon-Jones are
deficient for claim 28 as well.
Accordingly, for the foregoing reasons, we do not sustain the
Examiner's rejection of independent claims 1 and 28 and their respective
dependent claims 2-5, 8, 29, 30, 37, and 41--43 as unpatentable over
Thornton and Berthon-Jones.
9
Appeal2016-001166
Application 13/138,575
Claims 40 and 44
Independent claim 40 calls for a mask system including "a mouth seal
adapted to seal with the patient's mouth, ... [to] provide an effective seal
without applying excess rearward force to the patient's jaw." Appeal Br. 25,
Claims App. The Examiner finds that Thornton "provide[ s] an effective seal
without applying excess rearward force to the patient's jaw (Thronton, Fig.
2A, depicts an effective seal being applied without any 'excess' rearward
force applied to the patients jaw, as the patient's jaw appears healthy and
intact)." Ans. 9; see also Final Act. 9. 5
Appellant contends that the Examiner's interpretation of "excess
rearward force" is unreasonable "in view of the specification and claims
because nothing in the present application suggests that 'unhealthy' is the
correct interpretation of excess reward force." Appeal Br. 17. According to
Appellant, "[i]t would be absurd to think that a breathing device, particularly
in the present field of endeavor, would be designed to intentionally break the
patient's jaw in normal use. Thus every mask system would not apply an
excessive force and the features are meaningless under the proposed
interpretation." Id. at 18.
Appellant's Specification describes:
In [Figure] 1, the sealing portion 20 may be closely adjacent to
or in light sealing contact with the patient's mouth, so as to not
apply excessive rearward force, if any, to the patient's mouth
region, especially so as not to apply such rearward force to the
patient's lower jaw. This avoids the backward displacement of
the patient's lower jaw, which could reduce the size of the
5 The Examiner relies on Berthon-Jones for disclosure of the mouth seal
preventing inhalation through the mouth when pressure supplied in the
interface. Final Act. 9-10; see also Ans. 9-10.
10
Appeal2016-001166
Application 13/138,575
patient's airways, reducing the effectiveness of the therapy
and/or potentially requiring increased pressure to achieve the
same therapeutic effect.
Spec. para. 52; see also Reply Br. 10.
It would be clear to one of ordinary skill in the art, reading
Appellant's Specification, that the phrase "excess rearward force to a
patient's jaw" refers to backward displacement of the patient's jaw. The
Examiner does not direct us to any discussion in Thornton regarding
backward displacement of the patient's jaw. Final Act. 9-10; see also Ans.
9-10. The Examiner further does not establish, by evidence or technical
reasoning, a sufficient factual basis to support the position that Thornton's
mouth seal provides an effective seal without necessarily applying excess
rearward force to the patient's jaw. Final Act. 10; see also Ans. 9 (both
citing Fig. 2A of Thornton).
Accordingly, for the foregoing reasons, we do not sustain the
Examiner's rejection of independent claim 40 and its dependent claim 44 as
unpatentable over Thornton and Berthon-Jones.
Rejection 4 - Obviousness over Thornton, Berthon-Jones, and Drew
Claim 6
The Examiner's rejection of claim 6 as unpatentable over Thornton,
Berthon-Jones, and Drew is based on the same unsupported findings and
conclusions discussed above with respect to independent claim 1. Final Act.
12; see also Ans. 11-12. The Examiner does not rely on Drew to remedy
the deficiencies of Thornton. Accordingly, for similar reasons set forth
above for independent claim 1, we likewise do not sustain the Examiner's
11
Appeal2016-001166
Application 13/138,575
rejection of claim 6 as unpatentable over Thornton, Berthon-Jones, and
Drew.
DECISION
We REVERSE the decision of the Examiner to reject claim 43 for
lack of written description.
We REVERSE the decision of the Examiner to reject claim 43 for
indefiniteness.
We REVERSE the decision of the Examiner to reject claims 1-5, 8,
28-30, 37, and 40-44 under 35 U.S.C. § 103(a) as unpatentable over
Thornton and Berthon-Jones.
We REVERSE the decision of the Examiner to reject claim 6 as
unpatentable over Thornton, Berthon-Jones, and Drew.
REVERSED
rvb
12