Ex Parte Koch

Patent Trial and Appeal Board

Oct 26, 2017

13044167 (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.
13/044,167 03/09/2011 Jochim KOCH 73811 1316
23872 7590 10/26/2017
MCGLEW & TUTTLE, PC
P.O. BOX 9227
SCARBOROUGH STATION
SCARBOROUGH, NY 10510-9227
EXAMINER
HO, TAN-UYEN THI
ART UNIT PAPER NUMBER
3778
MAIL DATE DELIVERY MODE
10/26/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOCHIM KOCH
___________

Appeal 2016-000168
Application 13/044,167
Technology Center 3700
____________

Before JENNIFER D. BAHR, EDWARD A. BROWN, and
ANTHONY KNIGHT, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Jochim Koch (Appellant)1 appeals under 35 U.S.C. § 134(a) from the
Examiner’s decision rejecting claims 1–5, 7–15, and 21.2,3 We heard oral
argument on October 10, 2017. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.

1 Herein, we cite to the Appeal Brief filed on January 20, 2015, as the
“Appeal Brief” or “Appeal Br.”
2 The Appeal Brief identifies Dräger Safety AG & Co. KGaA, as the real
party in interest. Appeal Br. 1.
3 Claims 17–20 are allowed, and claim 16 is objected to. Non-Final Act.
(Office Action Summary).
Appeal 2016-000168
Application 13/044,167

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INVENTION
Claims 1 and 21 are independent. Claim 1 is illustrative and reads as
follows:
1. A breathing circuit device, comprising:
a breathing gas line forming a closed breathing system,
wherein a breathing bag is part of the breathing gas line, said
breathing bag comprising a breathing bag interior and a partition
wall, said partition wall extending within said breathing bag
interior;
a cooling device with at least one cooling element for
cooling a breathing gas sent through the breathing gas line; and
a deformable wall separating the at least one cooling
element from the breathing gas, the deformable wall establishing
a direct contact between the at least one cooling element and the
deformable wall by a deformation of the deformable wall, said
deformable wall and said partition wall defining a channel, said
breathing gas exiting said breathing bag via said channel, said at
least one cooling element engaging said deformable wall in an
area adjacent to said channel.
Appeal Br. 29 (Claims App.).

REJECTIONS4
1. Claims 2 and 4 are rejected under 35 U.S.C. § 112, second
paragraph, as being incomplete for omitting essential elements.
2. Claim 1–5, 7–15, and 21 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Tanaka (US 4,817,597, issued Apr. 4, 1989) and
Pasternack (US 4,188,947, issued Feb. 19, 1980).5

4 A rejection of claim 2 under the enablement requirement of 35 U.S.C.
§ 112, first paragraph, has been withdrawn. Ans. 4; Non-Final Act. 3.
5 The obviousness rejection of claim 2 is a new ground of rejection. See
Ans. 2–3.
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ANALYSIS
Rejection 1
Claim 2 recites “a pressure on a first side of the deformable wall with
the cooling element is higher than a pressure on a second side of the
deformable wall, so that the deformable wall is pressed onto the cooling
element based on a pressure difference between the first side and the second
side.” Appeal Br. 29 (Claims App. (emphasis added)). The Examiner finds
that claim 2 is incomplete for omitting essential elements. Non-Final Act. 3.
The Examiner determines that the claim recites use of “a pressure,” but this
implies the use of structure to provide or apply such pressure and such
structure is missing in the claim. Id. The Examiner adds that “the existence
of a pressure on the first side of the deformable wall requires a structural
element capable of performing or providing the claimed functionality of
deforming the deformable wall onto the cooling element.” Ans. 5.
Appellant contends that claim 2 is not required to recite the structure
that provides or applies such pressure, as the claim recites that the
deformable wall is pressed onto the cooling element. Appeal Br. 8.
We agree with the Examiner that claim 2 recites functional limitations
of the breathing circuit device. Appellant asserts that “[p]ressing of a
deformable wall onto a cooling element based on a pressure difference is
clearly a structural limitation, which does not omit any essential elements.”
Reply Br. 1. However, claim 2 recites no structural limitation of the
breathing circuit device that produces “a pressure on a first side of the
deformable wall with the cooling element [that] is higher than a pressure on
a second side of the deformable wall,” causing “the deformable wall [to be]
pressed onto the cooling element based on a pressure difference between the
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Application 13/044,167

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first side and the second side.” Consequently, claim 2 imposes no limits on
how the claimed pressure-related function is performed in terms of structure,
and, thus, does not provide a clear indication of claim scope. See
Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1, 12–13 (1946)
(explaining the problems with functional claiming when the function is not
associated with particular structure); In re Donaldson Co., Inc., 16 F.3d
1189, 1193–94 (Fed. Cir. 1994) (explaining that 35 U.S.C. § 112, sixth
paragraph, was enacted to permit recitation of an element in a claim for a
combination as a means for performing a specified function without the
recital in the claim of structure in support thereof and addresses the problem
identified in Halliburton by limiting the scope of the claimed element to
cover only the corresponding structure described in the specification and
equivalents thereof).
We note the Specification describes that “[s]prings 19 apply a weak
pressing force on the breathing bag wall 32, so that the pressure of the
breathing gas within the breathing bag 13 is slightly higher than the ambient
pressure outside the breathing circuit device 1. Thus, a lower pressure is
present outside the breathing bag 13 than within the breathing bag 13.” See
Spec. 10:14–17. The action of springs 19 appears to produce the claimed
pressures and pressure differential. See id. 10:17–11:4. However, claim 2
fails to recite “means-plus-function” language that relates the claimed
pressure-related function to corresponding structure for performing the
function described in the Specification.
For these reasons, we sustain the rejection of claims 2 and 4 under 35
U.S.C. § 112, second paragraph.
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Application 13/044,167

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Rejection 2
Claims 1–5 and 7–15
As to claim 1, the Examiner finds that Tanaka discloses a breathing
circuit device comprising a breathing bag 4 including a partition wall 10
(“portion of 10 that extends within 4 and that defines gas line/channel 11”),
and a deformable wall (“breathing bag 4 comprises a deformable wall at 11
that is at least partially expandable via pressure/pressure means within 11”),
where the deformable wall and partition wall define a channel 11. Non-
Final Act. 4. The Examiner finds that Tanaka does not disclose a cooling
device with at least one cooling element placed in direct contact with the
deformable wall at 11 by deformation of the deformable wall. Id. The
Examiner finds that Pasternack teaches a cooling element comprising a
cooling bag 5’ and a heat conducting wall 6’, in which ice in cooling bag 5’
is placed directly against a deformable wall of breathing bag 2’ for improved
cooling of breathing gas in the area of contact with breathing bag 2’. Id.
(citing Pasternack, Fig. 2). The Examiner concludes that it would have been
obvious to modify Tanaka to include a cooling device placed against the
deformable wall, as taught by Pasternack, to improve heat transfer efficiency
in the area of the channel 11. Id.
Appellant contends that neither Tanaka nor Pasternak teaches or
suggests a cooling element that engages a deformable wall in an area
adjacent to a channel, which is defined by the deformable wall and a
partition wall extending within an interior of a breathing bag, and where
breathing gas exits the breathing bag via the channel, as claimed. Appeal
Br. 9. Appellant notes that Tanaka discloses an oxygen passage defined
between an inner surface of breathing bag 4 and the outer surface of partition
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wall 10, and describes, “[w]hile the oxygen-enriched gas follows through the
passage 11, . . . it is able to radiate heat to the atmosphere efficiently and
thus be cooled.” Id. at 10. Appellant contends that Pasternack does not
teach or suggest arranging coolant bag 5’ in an area adjacent to a channel
defined by a deformable wall and a partition wall that extends within an
interior of a breathing bag, as claimed. Id. at 11.
Appellant’s contentions are persuasive. As noted by Appellant,
Tanaka discloses that oxygen-enriched gas flows through passage 11 and “is
able to radiate heat to the atmosphere efficiently and thus be cooled.”
Appeal Br. 10; see Tanaka, col. 4, ll. 53–58, Fig. 1. Pasternack discloses
that coolant bag 5 reduces the breathing air temperature. See Pasternack,
col. 3, ll. 38–42, Fig. 1. The breathing air is cooled by contact wall 6, which
is separated from the breathing air by the material of breathing bag 2. See
id. at col. 3, ll. 53–57, Fig. 1. The cooled breathing air flows out of
breathing bag 2 via line 54 and then flows around bag 2 in breathing passage
34. See id. at col. 3, ll. 19–26, Fig. 1. The coolant bag 5 additionally cools
the back portion of the equipment carrier, producing “intensive heat
transfer” and, thus, “a cooling of the body surface of the wearer.” See id. at
col. 3, ll. 45–47, ll. 61–65.
Tanaka discloses that “by virtue of the provision of the partition wall,
the self-contained closed-circuit oxygen-generating breathing apparatus in
accordance with the present invention exhibits an excellent heat radiating
effect, thus efficiently restraining a rise in temperature of inhalation gas.”
See Tanaka, col. 6, ll. 63–68 (emphasis added). Accordingly, we understand
that Tanaka’s breathing apparatus provides efficient cooling of the oxygen-
enriched gas flowing through channel 11. The Examiner has not articulated
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an adequate reason with a rational underpinning why, despite this teaching
in Tanaka, one of ordinary skill in the art would have modified Tanaka’s
breathing apparatus to incorporate Pasternack’s coolant bag 5 or 5’ such that
a cooling element engages Tanaka’s breathing bag 4 adjacent to passage 11,
as required by claim 1.
In that regard, the Examiner does not explain clearly where
Pasternack’s coolant bag would be located in Tanaka’s modified breathing
apparatus. Appellant points out that “Pasternack discloses cooling breathing
gas prior to adding oxygen to the breathing gas.” Reply Br. 6. We note that
Pasternack discloses that cartridge 3 adds oxygen to the (cooled) breathing
air that flows through breathing line 34. See Pasternack, col. 3, ll. 26–29,
Fig. 1. Pasternack also discloses that breathing line 34 is connected to
oxygen bottle 1. See id. at col. 3, ll. 29–30, Fig. 1. Consequently, if Tanaka
were modified by placing Pasternack’s coolant bag to engage breathing bag
4 adjacent to passage 11, it appears that the coolant bag would cool oxygen-
enriched gas flowing through channel 11, not breathing gas to which oxygen
is added after being cooled, as taught by Pasternack.
Accordingly, we do not sustain the rejection of claim 1, or dependent
claims 2–5 and 7–15, as unpatentable over Tanaka and Pasternack.
Claim 21
Claim 21 recites limitations similar to those discussed above for claim
1. Appeal Br. 32–33 (Claims App.). Accordingly, we also do not sustain
the rejection of claim 21 as unpatentable over Tanaka and Pasternack.

Appeal 2016-000168
Application 13/044,167

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DECISION
We affirm the rejection of claims 2 and 4 under 35 U.S.C. § 112,
second paragraph.
We reverse the rejection of claims 1–5, 7–15, and 21 under 35 U.S.C.
§ 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended according to 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART