Ex Parte Gloag et al

Patent Trial and Appeal Board

Mar 20, 2013

11743723 (P.T.A.B. Mar. 20, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NICOLAS J. GLOAG, AUDRA A. WILSON, JOHN M. FACER,
and CHRISTOPHER P. HENDERSON
____________

Appeal 2011-009756
Application 11/743,723
Technology Center 3700
____________

Before ERIC B. GRIMES, LORA M. GREEN, and ULRIKE W. JENKS,
Administrative Patent Judges.

JENKS, Administrative Patent Judge

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims directed to a
respirator mask body that comprises a plurality of panels that can be folded
and unfolded. The Examiner has rejected the claims for indefiniteness,
anticipation, and obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

Appeal 2011-009756
Application 11/743,723
2
STATEMENT OF THE CASE
The Specification is directed to a “maintenance-free, flat-fold
respirator that is capable of being folded flat for storage and, during use, is
capable of forming a cup-shaped air chamber over the wearer's nose and
mouth.” (Spec. ¶ 0001.)
Claims 1-12 are on appeal, and can be found in the Claims Appendix
of the Appeal Brief (App. Br. 6-7). Independent claims 1 and 12 read as
follows:
1. A maintenance-free, flat-fold respirator that comprises:
(a) a mask body that comprises a plurality of panels that can be
folded in towards each other and that can be unfolded into an open in-
use configuration, and that further comprises a graspable tab that
extends from a regular periphery of at least one of the panels such that
the tab can assist the user in pulling the panel(s) from a folded
condition to open the mask body from the folded configuration into an
open ready-to-use configuration; and
(b) a harness that is secured to the mask body.

12. A mask body that comprises a plurality of panels that can be
folded in towards each other and that can be unfolded into an open in-
use configuration, and that further comprises a graspable tab that
extends from a regular periphery of at least one of the panels such that
the tab can assist the user in pulling the panel(s) from a folded
condition to open the mask body from the folded configuration into an
open ready-to-use configuration.

Appeal 2011-009756
Application 11/743,723
3
The Examiner has rejected the claims as follows:
I. claims 1-12 under 35 U.S.C. § 112, second paragraph as being
indefinite for failing to point out and distinctly claim the subject
matter;
II. claims 1-5, 9, 10, and 12 under 35 U.S.C. § 102(b) as being
anticipated by Haliczer;1
III. claims 6 and 7 under 35 U.S.C. § 103(a) as unpatentable over
Haliczer; and
IV. claims 8 and 11 under 35 U.S.C. § 103(a) as unpatentable over
Haliczer in view of Hollander.2

I.
Issue
The Examiner takes the position “that folded configuration,”3 in
claims 1 and 12, does not have sufficient antecedent basis in the claims
because a “condition” is not the same as a “configuration” (Ans. 3, 7).
Appellants contend that “the antecedent basis for this limitation may
be found in the immediately preceding line in the claim where ‘a folded
condition’ is recited.” (App. Br. 3.)
The issue with respect to this rejection is whether the “configuration”

1 Marcus Haliczer, US 2,752,916, issued July 3, 1956.
2 David S. Hollander et al., US 2002/0104543 A1, published Aug. 8, 2002.
3 In the After Final Amendment of September 1, 2010, entered by the
Examiner on September 15, 2010, Appellants amended the claims from “that
folded configuration” to “the folded configuration.”
Appeal 2011-009756
Application 11/743,723
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limitation renders the claims so unclear that it would not apprise the ordinary
artisan of the scope of the claim.

Analysis
“The standard of indefiniteness is somewhat high; a claim is not
indefinite merely because its scope is not ascertainable from the face of the
claims.” Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1342,
(Fed. Cir. 2003). Rather, “[a] claim is indefinite if, when read in light of the
specification, it does not reasonably apprise those skilled in the art of the
scope of the invention.” Id. Here, the Specification provides that the mask
can be folded flat for storage, and “[a] graspable tab is provided along the
mask body periphery to assist in opening the mask from its storage
configuration to its open in-use configuration.” (Spec. ¶ 0001.) “By having
the graspable tab extend from the regular periphery, the wearer does not
need to grasp the regular interior of the mask body when unfolding the mask
from its folded condition.” (Spec. ¶ 0053.) Here, the skilled artisan would
have been apprised of the scope of both “a folded condition” and “the folded
configuration,” as being the same as the folded flat storage configuration.
We reverse the rejection.

II.
Issue
Appellants contend that “Haliczer does not teach or suggest a tab that
extends from the regular periphery of the mask body.” (App. Br. 3-4; see
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Appeal 2011-009756
Application 11/743,723
6
(id. at col. 2, l. 20), showing “exposed longitudinal lips 20, 22 are defined at
opposite sides of the mask on the panels 12, 14” (id. at ll. 62-63; Ans. 4).
2. Haliczer disclosed that:
when the mask is folded, exposed longitudinal lips 20, 22 are
defined at opposite sides of the mask on the panels 12, 14,
respectively, the lip 20 extending in one direction from the
folded body, that is upwardly in the several figures of the
drawings, and the lip 22 extending downwardly, in an opposite
direction. This facilitates grasping of the outer panels by the
wearer when the mask is to be unfolded, and it is merely
necessary that one grasp the respective lips with both hands,
and pull outwardly thereon in opposite directions from the
body.
(Haliczer col. 2, ll. 61-71; Ans. 4)
3. The Specification provides that a “‘tab’ means a projecting part
or flap, excluding an exhalation valve or harness, that is intentionally sized
to be large enough for being pulled on by a person's fingers.” (Spec.
¶ 0042.)
4. The Specification provides that a “‘regular periphery’ is the
periphery that the mask body would have if a tab was not present on the
mask body.” (Spec. ¶ 0040.)

Principles of Law
In order for a prior art reference to serve as an anticipatory reference,
it must disclose every limitation of the claimed invention, either explicitly or
inherently. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).

Appeal 2011-009756
Application 11/743,723
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Analysis
The Examiner finds that:
parts 20/22 (Fig. 1, Fig. 3, Fig. 5) do in fact extend from at least
one of the panels 16 as is shown clearly in Fig. 5. . . . [and]
parts 20 and 22 serve the same purpose as applicants[’] “tabs”
in that they are intended to be grasped by a user[ ] to assist in
unfolding the mask.
(Ans. 7-8.)
We are not persuaded by Appellants’ argument that Haliczer does not
show “flaps that extend from the regular periphery and are intentionally
sized to be large enough for being pulled on by a person's fingers.” (App.
Br. 4.) Here, the Specification defines that a “tab” can be a flap that is large
enough to be pulled by a person’s finger (FF3); and that the “regular
periphery” is the periphery of the mask if the tab is not present (FF4). Based
on the definition provided in the Specification the only structural limitation
for the tab is that it needs to be large enough to be pulled by a person’s
finger, because any tab that is on the periphery of a mask will change the
mask’s periphery; that is, the periphery will be different from the periphery
the mask would have if the tab was not present.
We agree with the Examiner’s finding that “Haliczer's parts 20 and 22
do extend from a periphery which would exist if the parts 20 and 22 were
not present on the body of the mask. (The periphery would be defined by
the edge of the outer most inner panels 16).” (Ans. 7-8.) Here, the lips
extending from the panel help facilitate grasping of the outer panels to
unfold the mask (FFs 1, 2). Thus, if the panels that contain the lips 20 and
Appeal 2011-009756
Application 11/743,723
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22 are removed from the mask all that is left are the inner folds 16. Because
the panels containing “parts 20 and 22 serve the same purpose as applicants
‘tabs’ in that they are intended to be grasped by a user[ ] to assist in
unfolding the mask” (Ans. 8), we find that they are sized to be large enough
for being pulled by a person’s fingers, meeting the “graspable tab” limitation
of the claims.
We agree with the Examiner that, based on the definition of regular
periphery as set out in the Specification, it would be reasonable to interpret
that outermost edge of the inner panels 16 as being the regular periphery (see
Ans. 7-8). The Specification defines regular periphery as the perimeter that
would be followed if a tab was not present along the perimeter (FF4). If the
panels containing the lips are removed from Haliczer’s mask all that would
be left are the inner panels 16 which are reasonably interpreted by the
Examiner to meet the limitation of the “regular periphery” as recited in the
claims (see Ans. 7-8).
Accordingly, we affirm the anticipation rejection of claims 1 and 12.
As Appellants do not argue the claims separately, we focus our analysis on
claim 1, and claims 2-5, 9 and 10 fall with that claim. 37 C.F.R. § 41.37
(c)(1)(vii).

III.-IV.
Issue
With respect to claims 6 and 7, the Examiner takes the position that
the “the size of the tab is considered a matter of design consideration” and
Appeal 2011-009756
Application 11/743,723
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thereby obvious (Ans. 6). With respect to claims 8 and 11, the Examiner
takes the position that it is obvious “to modify the mask of Haliczer so that
the tab has a trapezoidal shape in order to provide a suitable shape for
accommodating a person[’]s finger(s) since it appears that Haliczer's
respirator would perform equally well with a trapezoidal shaped tab.” (Ans.
6.)
Appellants contend that “Haliczer merely describes a respirator that
has a regular periphery. There is no suggestion of providing a tab that
extends from the regular periphery.” (App. Br. 4.) “As illustrated in that
Figure [of Hollander], item 28 is a pull tab for the sealing sheets 4 and 6.”
(Id. at 5.)
The issues are: Has the Examiner set forth a prima facie case of
obviousness based on Haliczer or the combination of Haliczer and Holander,
and if so have Appellants provided sufficient rebuttal evidence?

Analysis
We are not persuaded by Appellants’ arguments that Haliczer does not
disclose “a tab that extends from the regular periphery.” (Ans. 4; see also
Reply Br. 4.) For the reason discussed above (II), we agree with the
Examiner’s interpretation of the regular periphery as applied to Haliczer’s
mask as being the edge of the outermost inner panels 16 (Ans. 7-8). We
agree with the Examiner, that the size of the tab would be a matter of design
choice within the skills of an ordinary artisan (Ans. 6), and Appellants have
not provided any persuasive evidence to the contrary.
Appeal 2011-009756
Application 11/743,723
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Appellants contend that the pull tab of Hollander is used to pull apart
the sealing sheets and is not part of a respirator mask (App. Br. 5). We are
not persuaded by Appellants’ arguments. “In United States v. Adams,. . .
[t]he Court recognized that when a patent claims a structure already known
in the prior art that is altered by the mere substitution of one element for
another known in the field, the combination must do more than yield a
predictable result.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Here, the Examiner relies on Hollander “to teach a suitable shape
(trapezoidal) of a tab to modify Haliczer's tab.” (Ans. 8.)
We conclude that the preponderance of the evidence of record
supports the Examiner’s conclusion that Haliczer renders obvious the tab
size of claims 6 and 7; and that the combination of Haliczer and Hollander
renders obvious the tab shape of claims 8 and 11. Arguments not made are
waived. See 37 C.F.R. § 41.37(c)(1)(vii).

SUMMARY
We reverse the rejection of claims 1-12 under 35 U.S.C. § 112, second
paragraph.
We affirm the rejection of claims 1-5, 9, 10 and 12 under 35 U.S.C.
§ 102(b) as being anticipated by Haliczer.
We affirm the rejection of claims 6 and 7 under 35 U.S.C. § 103(a) as
being unpatentable over Haliczer.
We affirm the rejection of claims 8 and 11 under 35 U.S.C. § 103(a)
as unpatentable over Haliczer in view of Hollander.
Appeal 2011-009756
Application 11/743,723
11
TIME PERIOD FOR RESPONSE
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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