Ex Parte Henry et al

Patent Trial and Appeal Board

Jun 28, 2016

11792942 (P.T.A.B. Jun. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111792,942 10/28/2008
23117 7590 06/30/2016
NIXON & V ANDERHYE, PC
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Robert Edward Henry
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-4398-701 6491
EXAMINER
WOODWARD, VALERIE LYNN
ART UNIT PAPER NUMBER
3771
NOTIFICATION DATE DELIVERY MODE
06/30/2016 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 EDWARD HENRY, JOANNE ELIZABETH DREW,
GEOFFREY CRUMBLIN, and ALEXANDER VIRR
Appeal2014-001838
Application 11/792,942
Technology Center 3700
Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
The Appellants request that we reconsider our decision of March 31,
2016 ("Decision") affirming the Examiner's rejections of claims 1-5, 7-10,
12-28, and 30-35 under 35 U.S.C. § 103(a) as unpatentable over Alderson in
combination with other prior art references. In the Appellants' Request for
Rehearing filed on May 31, 2016 ("Request"), the Appellants assert that our
determination that "Alderson is analogous art is erroneous." (Request 3.) We
have carefully considered the Appellants' arguments in this regard, but we
decline to change our Decision for the following reasons.
A reference qualifies as prior art for an obviousness determination
under § 103 only when it is analogous to the claimed invention. (In re Bigio,
381F.3d1320, 1325 (Fed. Cir. 2004); In re Clay, 966 F.2d 656, 658 (Fed.
Appeal2014-001838
Application 11/792,942
Cir. 1992).) "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." (Bigio, 381 F.3d at 1325.)
Here, we relied upon the "reasonably pertinent to the particular problem"
test in our determination that Alderson is analogous art. (See Decision 3--4.)
"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." (Clay, 966 F.2d at 659.)
"If a reference disclosure has the same purpose as the claimed invention, the
reference relates to the same problem, and that fact supports use of that
reference in an obviousness rejection." (Id.)
According to the Appellants, the problems faced by the inventors are
limited to "minimization of noise through the gas washout vent, minimization
of the exhaust gas jet by diffusing airflow, minimizing both the elimination of
exhaled C02 through the vent and also the inhalation of supplied breathable
gas, minimization of the weight of the vent assembly, providing a vent that
does not block when used with humidified gas, and a vent that can be easily
cleaned or economically disposed." (Request 2.) We note that at least some
of the above-listed problems occur because "[t]he Appellants are involved
with providing a membrane for gas (i.e., exhaled air) to pass through."
(Decision 4.) Therefore, we disagree with the Appellants' contention that
"[ n ]one of the problems disclosed by the inventors of the presently claimed
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Appeal2014-001838
Application 11/792,942
invention relate to providing a membrane for gas to pass through."
(Request 2.)
The Appellants argue generally that "Alderson does not satisfy the
'reasonably pertinent' prong of the test for analogous art because structural
similarity does not satisfy that prong." (Request 2.) According to the
Appellants, "[t]he evidence cited that allegedly supports Alderson satisfying
the "reasonably pertinent" prong is about structural similarity (i.e., the
present application discloses a solution to a problem by using a material
similar to that which Alderson discloses as a filtration material)." (Id.)
However, our determination regarding the analogous-art status of Alderson
is not based upon "structural similarity," but rather on the fact that Alderson
teaches "materials for use in porous membranes through which gas is
passed." (Decision 4.) The Appellants do not adequately address why the
evidence does not support that Alderson teaches "providing woven materials
for use in filter membranes" and that "[a] filter is a porous article through
which gas is passed." (Id.)
The Appellants argue more particularly that we have misapprehended
or overlooked the holding in In re Klein, 647 F.3d 1343 (Fed. Cir. 2011).
(See Request 1.) In Klein, the problem faced by the inventor was "making a
nectar foeder with a movable divider to prepare different ratios of sugar and
water for different animals." (id. at 1348.) Notably, the Klein court did not
hold that certain prior art references were non-analogous art because they
were not directed to making a nectar foeder and/or because they were not
directed to preparing different sugar-water ratios. Instead, the Klein court
held that the prior art references at issue were non-analogous because they
were directed to a different purpose (i.e.~ separating solid objects) and
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Application 11/792,942
because none of the references showed "a partitioned container that is
adapted to receive water or contain it long enough to be able to prepare
different ratios in the different compartments." (Id at 1350-51.) In
contrast, here, Alderson is not directed to a different purpose (e.g., passing
solid objects rather than gas through a membrane) and A1derson's membrane
is adapted for gas to flow therethrough.
The Appellants also direct our attention (see Request 2----3) to a more
recent case, Circuit Check Inc., v. QAJYinc., 795 F.3d 1331, 1335 (Fed. Cir.
2015), where the field of the invention was "circuit board testers and test
fixtures used in the manufacture of electronics." Significantly, the prior art
in question in this case was "rock carvings" and "engraved signage." (Id)
With this set of facts, it is not surprising that the Federal Circuit held that
"the inventor would not have looked to rock carvings to irnprove the process
of painting small dots on interface plates for expensive circuit board testers"
and that "the inventor would not necessarily have considered using the
techniques disclosed in engraved signage to solve the problem of marking
circuit board tester interface plates." (Id.) \Ve consider these facts
distinguishable from the present situation, and stand by our finding that,
here, the inventor '\,vould naturally look to prior art teachings regarding
materials for use in porous membranes through which gas is passed"
(Decision 4) to solve at least some of the above-listed problems.
\Ve view the facts of this case as more closely aligned with those at
issue in Jn re Paulson, 30 F.3d 1475 (Fed. Cir. 1994). In this case, "[t]he
problems encountered by the inventors" concerned "how to connect and
secure the computer's display housing to the cmnputer while meeting certain
size constraints." (id. at 1481.) The claims at issue were rejected over prior
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Application 11/792,942
art references "directed to hinges and latches as used in a desktop telephone
directory, a piano lid, a kitchen cabinet, a \vashing machine cabinet, a
wooden furniture cabinet, or a two-part housing for storing audio cassettes."
(Id.) The Federal Circuit agreed with the Board that "given the nature of the
problems confronted by the inventors, one of ordinary skm in the art would
have consulted the mechanical arts for housings, hinges, latches, springs,
etc." (Id. at 1482, inten1al quotes omitted.) Likewise, given the nature of
the above-listed problems confronted by the inventor in this case, one of
ordinary skill in the art would have consulted the vent/filter arts for
membrane materials through which gas could pass. 1
In view of the foregoing, we stand by our determination that Alderson
is analogous art.
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).
REHEARING DENIED
1 Moreover, the Supreme Court has since directed us to take into account
that "familiar items may have obvious uses beyond their primary purposes,
and a person of ordinary skill often will be able to fit the teachings of
multiple patents together like pieces of a puzzle." KSR Int 'l Co. v. Teleflex,
Inc., 550 U.S. 398, 402 (2007).
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