Ex Parte Nuttal

Patent Trial and Appeal Board

Jun 10, 2016

12854329 (P.T.A.B. Jun. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/854,329
757 7590
BGL
P.O. BOX 10395
CHICAGO, IL 60610
08/11/2010
06/13/2016
FIRST NAMED INVENTOR
Michael Nuttal
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.
6298-712 7576
EXAMINER
HONG, THOMAS J
ART UNIT PAPER NUMBER
3715
MAILDATE DELIVERY MODE
06/13/2016 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 MICHAEL NUTT AL
Appeal2014-004251
Application 12/854,329
Technology Center 3700
Before LINDA E. HORNER, THOMAS F. SMEGAL, and
ERIC C. JESCHKE, Administrative Patent Judges.
SMEGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Michael Nuttal (Appellant) 1 seeks our review under 35 U.S.C. § 134
of the Examiner's Final Rejection of claims 1-5 and 7-20. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION pursuant to 37 C.F.R. § 41.50(b).
1 According to Appellant, the real party in interest is Trudell Medical
International. Appeal Br. 2.
Appeal2014-004251
Application 12/854,329
CLAIMED SUBJECT MATTER
Claims 1, 12, 17, and 18 are independent. Claim 1 is reproduced
below and illustrates the claimed subject matter, with disputed limitations
emphasized.
1. A model face and airway for use in evaluation of
medication delivery by a delivery apparatus, the model face and
airway compnsmg:
a simulated bone structure defining a nasal cavity;
a simulated trachea defining an air passageway in
communication with the nasal cavity of the simulated bone
structure;
simulated soft tissue positioned over at least a portion of
the simulated bone structure; and
a simulated epidermal skin layer surrounding at least one
side of the simulated soft tissue;
wherein the simulated soft tissue and the simulated
epidermal skin layer are configured to allow air to enter into the
air passageway at the nasal cavity of the simulated bone
structure; and
wherein the simulated bone structure, simulated soft
tissue, and simulated epidermal skin layer are configured to, in
response to a facemask of a medication delivery apparatus
applied to the model face at a clinically appropriate force,
emulate a seal between a human face and the facemask of the
medication delivery apparatus when the facemask of the
medication delivery apparatus is applied to the human face at a
clinically appropriate force.
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Appeal2014-004251
Application 12/854,329
REJECTIONS
The following Examiner's rejections are before us for review. 2
1. Claims 1, 2, 5, 7-9, 11-17, 19, and 20 are rejected under 35
U.S.C. § 103(a) as unpatentable over Owens (US 6,957,961 Bl, iss. Oct. 25,
2005), Cohen (US 7,549,866 B2, iss. June 23, 2009), and Liland (US
2007 /0089747 Al, pub. Apr. 26, 2007).
2. Claims 3 and 4 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Owens, Cohen, Liland, and Sakezles (US 7,272,766 B2,
iss. Sept. 18, 2007).
3. Claim 10 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Owens, Cohen, Liland, and Meythaler (US 2005/0100873 Al, pub.
May 12, 2005).
4. Claim 18 is rejected on the ground of nonstatutory obviousness-
type double patenting as being unpatentable over claim 14 of Limbrick (US
8;196;483 B2; iss. June 12; 2012).
ANALYSIS
NEW GROUND OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a NEW
GROUND OF REJECTION against claims 1-5 and 7-20 under 35 U.S.C. §
112, second paragraph, as being indefinite for failure to particularly point
out and distinctly claim the subject matter which Appellant regards as the
invention. A claim fails to comply with 35 U.S.C. § 112, second paragraph,
2 The Final Rejection of claim 18 under 35 U.S.C. § 103 as unpatentable
over Bowden (US 6,296,490 Bl, iss. Oct. 2, 2001) and Tilley (US 6,435,009
Bl, iss. Aug. 20, 2002) was withdrawn. See Ans. 5.
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Appeal2014-004251
Application 12/854,329
"when it contains words or phrases whose meaning is unclear." Jn re
Packard, 751F.3d1307, 1310, 1314 (Fed. Cir. 2014) (approving, forpre-
issuance claims, the standard from MPEP § 2173.05(e)). "It is the
applicants' burden to precisely define the invention, not the PTO' s." In re
Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997). "[T]his section puts the
burden of precise claim drafting squarely on the applicant." Id.
Independent claims 1, 12, and 17, each recite a model face and
airway, comprising a "simulated bone structure, simulated soft tissue, and
simulated epidermal skin layer," which "in response to a facemask of a
medication delivery apparatus being applied to the model face at a clinically
appropriate force," is configured to "emulate a seal between a human face
and a facemask of the medication delivery apparatus when the facemask is
applied to the human face at a clinically appropriate force," while Claim 18
recites "initiating a force ... to simulate a clinically appropriate force
between the medication delivery apparatus and the model face and airway."
See Appeal Br. 11-14, Claims App. (emphasis added).
The claim phrase "clinically appropriate" is a term of degree
qualifying the degrees of force to be applied between the facemask and the
model face and between the facemask and a human face. See, e.g., Interval
Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1370 (Fed. Cir. 2014)
(identifying "unobtrusive manner" as a term of degree); Star Scientific, Inc.
v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1372 (Fed. Cir. 2008) ("Here,
the term 'anaerobic condition' is in effect a term of degree because its
bounds depend on the degree of oxygen deficiency."). Our reviewing court
has recently reaffirmed that terms of degree are not "inherently indefinite."
Interval Licensing, 766 F.3d at 1370. "Claim language employing terms of
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Appeal2014-004251
Application 12/854,329
degree has long been found definite where it provided enough certainty to
one of skill in the art when read in the context of the invention." Id.
(citations omitted). However, to satisfy the statute, "[t]he claims, when read
in light of the specification and the prosecution history, must provide
objective boundaries for those of skill in the art." Id. at 1371 (citing
Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2130 & n.8
(2014) (additional citation omitted)).
Appellant's Specification provides no quantification of degree of
force that is "clinically appropriate." While the words "clinically
appropriate force between the facemask and the model face" appear at
paragraph 34 of the Specification, there are no "objective boundaries"
provided for determining what would or would not constitute "a clinically
appropriate force," either between a facemask and a model face, or between
a facemask and a human face. See Seattle Box Co. v. Indus. Crating &
Packing, Inc., 731F.2d818, 826 (Fed. Cir. 1984) (When a word of degree is
used, then the question is "whether the patent's specification provides some
standard for measuring that degree ... that is, whether one of ordinary skill
in the art would understand what is claimed when the claim is read in light
of the specification").
Furthermore Appellant does not apprise us that "clinically appropriate
force" is a term of art, which could potentially provide "objective
boundaries" to one of ordinary skill in the art, absent such boundaries being
provided explicitly in the Specification
Thus, we find that claims 1-5 and 7-20 fail to comply with 35 U.S.C.
§ 112, second paragraph, in failing to particularly point out and distinctly
claim the subject matter which Appellant regards as the invention. See also
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Appeal2014-004251
Application 12/854,329
Jn re Packard, 751 F.3d at 1313 ("It is the claims that notify the public of
what is within the protections of the patent, and what is not.").
Obviousness of Claims 1, 2, 5, 7-9, 11-17, 19, and 20 over Owens,
Cohen, and Lil and; of Claims 3 and 4 over Owens, Cohen, Lil and and
Sakezles; and of Claim 10 over Owens, Cohen, Lil and, and Meythaler
We do not sustain the rejections of claims 1-5, 7-17, 19, and 20 based
on obviousness, proforma, because those rejections are necessarily based on
speculative assumptions as to the meaning of the claims. See In re Steele,
305 F.2d 859, 862---63 (CCPA 1962); Ex Parte Miyazaki, 89 USPQ2d 1207,
1221 (BP AI 2008) (precedential). For reasons discussed above, the term
"clinically appropriate" renders those claims indefinite. It should be
understood, however, that our decision in this regard is based solely on the
indefiniteness of the claimed subject matter and does not reflect on the
adequacy of the prior art evidence applied in support of the Examiner's
rejection.
Nonstatutory obviousness-type double patenting of Claim 18
We summarily affirm the Examiner's rejection of claim 18 on the
grounds of nonstatutory obvious-type double patenting, because Appellant
chose not to present any arguments addressing the Examiner's rejection.
DECISION
The rejection of claims 1, 2, 5, 7-9, 11-17, 19, and 20 over Owens,
Cohen, and Liland is REVERSED proforma.
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Appeal2014-004251
Application 12/854,329
The rejection of claims 3 and 4 over Owens, Cohen, Liland, and
Sakezles is REVERSED proforma.
The rejection of claim 10 over Owens, Cohen, Liland, and Meythaler
is REVERSED proforma.
The rejection of claim 18 on the grounds of nonstatutory obvious-type
double patenting is AFFIRMED,
We enter a NEW GROUND OF REJECTION of claims 1-5 and 7-20
under 35 U.S.C. § 112, second paragraph.
The decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides that, "[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 THIS DECISION, must exercise one of
the following two options with respect to the new ground 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
prosecution 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.
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Appeal2014-004251
Application 12/854,329
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; 37 C.F.R. § 41.50(b)
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