Ex Parte Gunaratnam et al

Patent Trial and Appeal Board

Oct 26, 2017

14479915 (P.T.A.B. Oct. 26, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/479,915 09/08/2014 Michael Kassipillai Gunaratnam PTB-4398-1523 8111
23117 7590 10/30/2017
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
STUART, COLIN W
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
10/30/2017 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 MICHAEL KASSIPILLAI GUNARATNAM
and PHILIP RODNEY KWOK
Appeal 2016-006720
Application 14/479,915
Technology Center 3700
Before: CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ANNETTE R. REIMERS, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-006720
Application 14/479,915
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1—
19 and 21—26.1 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse and enter a new ground of rejection under 37 C.F.R.
§ 41.50(b).
THE INVENTION
The claims are directed to a mask and headgear connector. Sole
independent claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A respiratory mask and headgear combination
comprising:
headgear to secure said mask on a patient,
said headgear including at least one length-
adjustable strap;
a rigid mask frame having at least one rigid
first connector; and
at least one second connector connectable to
the at least one length-adjustable strap in a
manner that allows the patient to adjust the at
least one length-adjustable strap relative to the
at least one second connector,
wherein said at least one second connector
is structured to releasably mate with said at least
one rigid first connector to allow the patient to
detach the headgear from the mask without the
need to detach the at least one length-adjustable
strap from said at least one second connector,
wherein the patient receives feedback when
said at least one second connector and said at
least one rigid first connector are mated, and
1 Claims 20 is objected to as being dependent on 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. Final Act. 14.
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Application 14/479,915
wherein said at least one rigid first
connector is positioned on said mask frame such
that when said at least one second connector is
mated with said at least one rigid first connector
said at least one second connector is held clear
of the patient’s face when the mask is worn by
the patient.
REFERENCES
Krauss US 4,282,634 Aug. 11, 1981
Fudaki US 5,263,234 Nov. 23, 1993
Ogden US 5,662,101 Sept. 2, 1997
Laks US 5,778,498 July 14, 1998
Barnett US 5,884,624 Mar. 23, 1999
REJECTIONS
Claims 1—12, 17—19, and 22—26 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Ogden and Krauss. Final Act. 2.
Claims 14—16 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Ogden, Krauss, and Laks. Id. at 8.
Claims 1, 12, and 13 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Ogden and Fudaki. Id. at 9.
Claims 1 and 21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Barnett, Ogden, and Krauss. Id. at 11.
ANALYSIS
NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b)
Claim 1—Rejected Under 35 U.S.C. § 112, first paragraph
We enter a new ground of rejection for claim 1 for failing to satisfy
the written-description requirement of 35 U.S.C. § 112, first paragraph.
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To satisfy the written description requirement, an applicant must
describe the invention is such a way as to convey to one skilled in the art
that the applicant possessed the invention when the application was filed.
AriadPharms., Inc. v. EliLilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
(en banc). The Specification must provide sufficient written description to
support the full scope of the claims. See Reiffin v. Microsoft Corp., 214 F.3d
1342, 1345 (Fed. Cir. 2000) (The purpose of the written description
requirement “is to ensure the scope of the right to exclude, as set forth in the
claims, does not overreach the scope of the inventor's contribution to the
field of art as described in the patent specification.”).
Claim 1 requires the at least one rigid first connector to be positioned
on the mask frame so that when the at least one second connector is mated to
the first connector, the second connector “is held clear of the patient’s face
when the mask is worn by the patient.” App. Br. 27. Claim 26 depends
from claim 1 and additionally recites “wherein said at least one rigid first
connector is secured to said mask frame without a strap between said at least
one rigid first connector and the mask frame.” Id. at 31. The “presence of a
dependent claim that adds a particular limitation gives rise to a presumption
that the limitation in question is not present in the independent claim.”
Phillips v. AWHCorp., 415 F.3d 1303, 1314—15 (Fed. Cir. 2005). Thus, we
presume that claim 1 encompasses respiratory masks wherein the at least one
rigid first connector is secured to the mask frame with a strap between the
first connector and mask frame. But the Specification does not describe an
embodiment of the invention that is configured in this way. Instead, the
Specification only describes an embodiment having a rigid mask frame with
a pair of female connectors “integrally moulded” in the frame. Spec 133,
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Application 14/479,915
Figs. 4, 5. Further, the Specification states that it is “known” to use a short
strap between the mask and a two-part connector, but such a configuration is
disadvantageous because “the connector may be in contact with the patient’s
face which may lead to discomfort in use.” Id. 17.
This case is similar to Tronzo v. Biomet, Inc., 156 F.3d 1154 (Fed. Cir.
1998). Tronzo concerned artificial hip sockets with cup implants to be
inserted into a hip bone. Id. at 1156. All of the described cup-implant
embodiments were conical in shape, and the specification only mentioned
differently shaped cups to criticize them. Id. at 1159. The Court held that
the specification at issue “disclose[d] only conical shaped cups and nothing
broader,” and thus did not support claims that were not limited to conical­
shaped cups. Id. (emphasis in original).
Likewise, because the present Specification describes embodiments of
the invention as having rigid first connectors that are directly connected to a
mask frame without an intervening strap, and criticizes prior-art masks that
use a strap between the mask frame and connectors, the Specification does
not adequately support any claim that encompasses a mask with a strap
between the mask frame and first connector. Accordingly, we reject claim 1
under 35 U.S.C. § 112, first paragraph, as not adequately supported by the
written description. We have entered the new ground only for independent
claim 1 and leave it to the Examiner to evaluate the patentability of the other
claims depending upon claim 1.
REJECTIONS UNDER 35 U.S.C. § 103(a)
Claims 1—12, 17—19, and 22—26—Unpatentable over Ogden and Krauss
The Examiner finds that Ogden teaches the respiratory mask and
headgear combination of claim 1, except that Ogden does not teach a second
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connector that is connectable to the at least one length-adjustable strap and is
structured to releasably mate with the at least one rigid first connector. Final
Act. 2—3. The Examiner finds that Krauss “teaches a well-known snap-fit
releasable connector mechanism with a male (Krauss 12) and a female
(Krauss 14) connectors.” Id. at 3. The Examiner asserts that one of ordinary
skill in the art would have replaced Ogden’s slots 27, 29, and 31 with the
“female connector portion of Krauss not including the rear strap connection
portion,” and would have attached Krauss’s male connector to Ogden’s
straps to connect the strap to the female connector portion. Id. According to
the Examiner, this combination would have been obvious to one of ordinary
skill in the art “to provide a quick release attachment mechanism” for the
mask. Id.
Appellants respond that Krauss does not teach removing the “rear
strap engaging portion” of female connector 14, i.e., the portion that receives
belt 76, and thus, would not have been obvious to one of ordinary skill in the
art. App. Br. 8—9; see also Reply Br. 3 (stating that the Examiner has not
provided any express teachings in Ogden of Krauss, or any explanation
based on technical reasoning for modifying Krauss’s female connector 14
without the benefit of impermissible hindsight). Appellants contend that, on
the contrary, Krauss’s connector is used only for the purpose of connecting
strap ends together, which would necessitate retaining the strap connection
portion of the female connector. Id. at 10 (citing Krauss, 3:35—36, 39-40).
Appellants also assert that any obvious combination of Ogden and Krauss
would resemble the prior art structure shown in Figure 2a of the
Specification—which presumably is outside the scope of claim 1 because its
connector may not be held clear of the patient’s face when the mask is worn
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(Spec. 17) —and such combination would not require “effectively cut[ting]
in half’ female member 14, as the Examiner proposes. App. Br. 16.
In response, the Examiner acknowledges that “while the Krauss
reference itself does not provide an explicit teaching for removing the strap
engaging portion of the female member 14,” the Examiner contends that
“one of ordinary skill in the art, when looking to modify the Ogden
reference’s strap-to-mask frame type of headgear connection with the quick
release snap connectors of Krauss, would have found it obvious to integrate
the necessary portion of the female connector 14 of Krauss into the mask
frame portion 9 of Ogden.” Ans. 15.
We are not persuaded that the proposed combination of Ogden and
Krauss would have been obvious to one of ordinary skill in the art.
Specifically, the Examiner has not provided sufficient evidence or technical
reasoning to support a finding that one of ordinary skill in the art would have
used only a portion of Krauss’s connector element 14 to replace Ogden’s
strap-receiving slots. First, Krauss does not teach or suggest removing the
strap-connecting portion of connector element 14, or teach or suggest using
the described connector for any purpose other than releasably connecting
straps or belts. The Examiner points to a statement in Krauss that its buckle
“is suitable for a variety of applications, including but not limited to restraint
straps,” as supporting the notion that the buckle may be used for more than
connecting straps. Ans. 16—17 (quoting Krauss, 3:55—57 (emphasis added
by Examiner)). But the quoted sentence, when read in its entirety, more than
likely teaches that the straps or belts that the buckle connects, not the buckle
itself, may have a variety of applications. See Krauss, 3:55—58 (“the
invention provides a buckle which is suitable for a variety of applications,
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including but not limited to restraint straps, belts in scuba and other diving
equipment, and other uses.”).
The Examiner’s reliance on Ogden to support using only a portion of
Krauss’s connecting element 14 is likewise unavailing. The Examiner
alleges that “when looking to modify the Ogden reference’s strap-to-mask
frame type of headgear connection with the quick release snap connectors of
Krauss, [one of ordinary skill in the art] would have found it obvious to
integrate [only] the necessary portion of the female connector 14 of Krauss
into the mask frame portion 9 of Ogden.” Ans. 15. But the Examiner has
not provided any evidence to support the premise that one of ordinary skill
in the art would have “look[ed] to modify the Ogden’s reference’s strap-to-
mask frame type of headgear connection with the quick release snap
connectors of Krauss.” Id. For example, the Examiner has not shown or
alleged that either Ogden or Krauss teaches or suggests that attaching straps
directly to the mask frame is disadvantageous. Thus, the Examiner has not
provided a reason why one of ordinary skill in the art would have considered
removing the strap-connecting portion of Krauss’s connection element 14.
Claims 14—16—Unpatentable over Ogden, Krauss, andLaks
This rejection relies on the Examiner’s erroneous finding that one of
ordinary skill in the art would have removed the strap-connecting portion of
Krauss’s connecting element 14 in combining Ogden and Krauss. Final Act.
8—9. Laks is not relied upon to cure this deficiency. Id. Accordingly, for
the reasons discussed above, we do not sustain the Examiner’s rejection of
claims 14—16 as unpatentable over Ogden, Krauss, and Laks.
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Claims 1, 12, and 13—Unpatentable over Ogden and Fudaki
In rejecting claims 1, 12, and 13 as unpatentable over Ogden and
Fudaki, the Examiner relies on Fudaki as an alternative to Krauss to teach a
“well-known snap-fit releasable connection mechanism” with male and
female connectors. Final Act. 9—11. Appellants assert that “[t]he rejection
of claim 1 based on Ogden and Fudaki appears to be nearly identical to the
rejection based on Ogden and Krauss,” and that “the analysis of the rejection
based on Ogden and Krauss is similarly applicable to the rejection based on
Ogden and Fudaki.” App. Br. 21. The Examiner agrees that “the
analysis/arguments are similar” for both rejections. Ans. 25. Accordingly,
for the reasons discussed above, we do not sustain the Examiner’s rejection
of claims 1, 12, and 13 as unpatentable over Ogden and Fudaki.
Claims 1 and 21—Unpatentable over Barnett, Ogden, and Krauss
The Examiner relies on Barnett as an alternative to Ogden to teach
certain aspects of claim 1 ’s mask and headgear combination. Final Act. 11—
13. Krauss is relied upon for the same teachings as for the rejection based
on Ogden and Krauss, discussed above. Id. Appellants assert that this
rejection is “deficient for the same reasons” as that based on the Ogden-
Krauss combination. App. Br. 24. The Examiner agrees that “the
analysis/arguments are similar” to those at issue in the previous rejection.
Ans. 27. Accordingly, for the reasons discussed above, we do not sustain
this rejection.
DECISION
For the above reasons, we reverse the Examiner’s rejection of
(1) claims 1—12, 17—19, and 22—26 as unpatentable over Ogden and Krauss;
(2) claims 14—16 as unpatentable over Ogden, Krauss, and Laks; (3) claims
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1, 12, and 13 as unpatentable over Ogden and Fudaki; and (4) claims 1 and
21 as unpatentable over Barnett, Ogden, and Krauss. We enter a new
ground of rejection of claim 1 under 35U.S.C. § 112, first paragraph, as
lacking adequate written-description support.
FINALITY OF DECISION
This decision contains new grounds of rejection under 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds 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 . . .
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
REVERSED: 37 C.F.R, $ 41.50(b)
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