Ex Parte Landis et al

Patent Trial and Appeal Board

Jun 5, 2017

13545606 (P.T.A.B. Jun. 5, 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.
13/545,606 07/10/2012 Robert M. Landis 1573-01 ICON 8777
7590 06/07/201729973
CRGO LAW
ATTN: STEVEN M. GREENBERG, ESQ.
7900 Glades Road
SUITE 520
BOCA RATON, EL 33434
EXAMINER
HEFFNER, NED T
ART UNIT PAPER NUMBER
3778
NOTIFICATION DATE DELIVERY MODE
06/07/2017 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):
docketing@crgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT M. LANDIS and CHARLES A. LEWIS
Appeal 2015-007499
Application 13/545,606
Technology Center 3700
Before: CHARLES N. GREENHUT, JILL D. HILL, and LISA M. GUIJT,
Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1—
3 and 5—20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
Appeal 2015-007499
Application 13/545,606
CLAIMED SUBJECT MATTER
The claims are directed to artificial airway connectors. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A connector configured for connecting to an artificial airway,
the connector comprising:
an inlet conduit configured to receive supplied respiratory
gas;
an outlet conduit configured to allow exhaled gas to exit to
ambient during use;
an artificial airway side conduit configured to couple to an
artificial airway;
and,
a restrictor coupled with the outlet conduit, wherein the
restrictor includes a flap valve that includes a flap that is adapted
to rotate from a first closed position to a second open position
about an axis that is coaxial to a center axis of the outlet conduit.
REJECTIONS
Claims 1—3, 5—8 and 10-18 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Nelson (US 4,374,521, issued Feb. 22, 1983).
Claims 19 and 20 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Komesaroff (US 5,816,240, issued Oct. 6, 1998), with
extrinsic evidence from Fortuna (US 2004/0020491 Al, published Feb. 5,
2004).
Claim 9 rejected under 35 U.S.C. § 102(b) as anticipated by or, in the
alternative, under 35 U.S.C. § 103(a) as unpatentable over, Nelson.
OPINION
With regard to independent claim 1, and thus dependent claims 2, 3,
5—8 and 9-16, Appellants correctly argue that Nelson’s valve disc member
242", regarded by the Examiner as the recited “flap,” is clearly not “adapted
2
Appeal 2015-007499
Application 13/545,606
to rotate . . . about an axis that is coaxial to a center of the outlet conduit,”
which the Examiner regards as passages 250. App. Br. 6—8; see Final Act. 3.
In the Answer the Examiner maintains, but does not further explain, the
position taken on this point. See Ans. 7—8. Nelson’s flap is configured to
rotate about an axis that extends normal to the page as viewed in Figure 11,
whereas the axis of passages 250 extends vertically as viewed in that figure.
Accordingly, we see no basis for the Examiner’s determination that Nelson’s
valve disc member 242" satisfies the limitation requiring the recited flap to
be “adapted to rotate . . . about an axis that is coaxial to a center of the outlet
conduit.” This defeats the anticipation rejection of independent claim 1, and
dependent claims 2, 3, 5—8 and 9-16 and also the § 103(a) rejection of claim
9 which does not account for this shortcoming.
Claim 17, in calling for “a reducer coupled externally to the outlet
conduit,” presents a closer issue. We recognize that the structure regarded
by the Examiner as the reducer, reduced zone 296, creates a zone that is
larger than the passage 250, regarded by the Examiner as the recited “outlet
conduit.” App. Br. 10. However, when considering the precise language of
the claim, we must consider Appellants’ argument as not commensurate in
scope. The limitation in question never actually calls for the reducer to
reduce the size of the outlet conduit or to be an outlet conduit reduce for
example. We fully appreciate that the reducer depicted in Appellants’
preferred embodiment is sized and situated in such a manner. Reply Br. 4—
5. However, we must be careful not to import limitations from the preferred
embodiment into the claims. See, e.g., In re American Academy of Science
Tech Center, 367 F. 3d 1359, 1369 (Fed. Cir. 2004) (“We have cautioned
against reading limitations into a claim from the preferred embodiment
3
Appeal 2015-007499
Application 13/545,606
described in the specification, even if it is the only embodiment described”).
Appellants further argue in the Reply Brief that Nelson’s reduced zone is
“not coupled externally and in the flowpath of the outlet conduit passages
250 of Nelson.” This argument is untimely (37 C.F.R. § 41.41(b)(2)) and
again not commensurate in scope with the claim. There is nothing requiring
the reducer to be in the flow path of the outlet conduit. By virtue of being
coupled to lower housing section 204 which forms the walls of the passage
250, the reduced zone 296 is reasonably regarded as “coupled externally to”
that passage. Accordingly, we are not apprised by Appellants’ arguments of
any reversible error in the Examiner’s rejection of claim 17 or claim 18
argued therewith (App. Br. 4).
Turning lastly to the “safety valve” of claim 19, Appellants contend,
“nowhere in Komesaroff is a discussion of any ‘safety’ features much less a
‘safety valve’ as recited in claim 19.” App. Br. 11. As it is clear that the
expiratory valve 23 relied upon by the Examiner regarding this limitation is
a “valve,” we understand Appellants’ argument to be directed toward the
term, “safety.” It is well-settled that anticipation is not an ipsissimis verbis
test. In re Bond 910 F.2d 831, 832 (Fed. Cir. 1990)(citations omitted).
Komesaroff s failure to use the particular word “safety” is not dispositive as
to this rejection. See In re Neugebauer, 330 F. 2d 353, 356 n. 4 (CCPA
1964) (“In the construction of words, not the mere words, but the thing and
the meaning, are to be inquired after.”). Here, Appellants do not apprise us
of any special definition in the Specification or elsewhere for the term
“safety” as used to modify “valve.” The Examiner presents unrebutted
reasoning and evidence that Komesaroff employs expiratory valve 23 to vent
pressure that may be harmful to a patient. Final Act. 6; Ans. 10.
4
Appeal 2015-007499
Application 13/545,606
Komesaroff demonstrates venting pressure in cavity 126 is desirable because
that would help “prevent the flow of gases back into the chamber 56 through
the inspiratory apertures 64, 66.” Komesaroff col. 5,11. 16—20. Appellants
do not dispute this but contend in rebuttal simply, “that was not the intent of
the inventor.” Reply Br. 7. It is not clear what inventor Appellants are
referring to, but in any case, subjective intent has little bearing on our
inquiry in this regard. Accordingly, we are not apprised by Appellants’
arguments of any reversible error in the Examiner’s rejection of independent
claim 19 or dependent claim 20 argued therewith.
DECISION
The Examiner’s rejections of claims 1—3, 5—8 and 9—16 are reversed.
The Examiner’s rejections of claims 17—20 are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED-IN-PART
5