Ex Parte RUMMERY et al

Patent Trials and Appeals Board

Apr 29, 2019

14070677 - (D) (P.T.A.B. Apr. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/070,677 11/04/2013
23117 7590 05/01/2019
NIXON & V ANDERHYE, PC
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Gerard Michael RUMMERY
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.
BKK-4398-1414 7883
EXAMINER
DIXON, ANNETTE FREDRICKA
ART UNIT PAPER NUMBER
3782
NOTIFICATION DATE DELIVERY MODE
05/01/2019 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 GERARD MICHAEL RUMMERY,
ROBERT EDWARD HENRY, PHOEBE KATHERINE HILL,
ANDREW HURST, and PHILIP MICHAEL NURSE
Appeal2018-003586
Application 14/070,677
Technology Center 3700
Before CHARLES N. GREENHUT, ANNETTE R. REIMERS, and
PAUL J. KORNICZKY, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant and Real Party in Interest, ResMed Ltd., appeal under 35
U.S.C. § 134 from a rejection of claims 1-28. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm-in-part.
Appeal2018-003586
Application 14/070,677
CLAIMED SUBJECT MATTER
The claims are directed to patient interface systems. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. Headgear for a patient interface configured to deliver a
flow of breathable gas to a patient, the headgear comprising:
an elastomer in the form of a strap adapted to position the
patient interface in sealing engagement with the patient's
airways, wherein a first side of said elastomer includes a first
region with a surface that is textured to increase surface
roughness and reduce surface tension and/or friction between the
strap and the patient.
REJECTIONS 1
Claims 1--4, 8, 9, 19, and 20 are rejected under 35 U.S.C. § I02(b) as
being anticipated by Bullard (US 2,199,690, issued May 7, 1940).
Claims 1--4, 8, 12, 19, 202, and 23-27 are rejected under 35 U.S.C.
§ I02(b) as being anticipated by Holloway (US 3,457,564, issued July 29,
1969).
Claims 5 and 11 3 are rejected under 35 U.S.C. § I03(a) as being
unpatentable over Bullard.
Claim 7 is rejected under 35 U.S.C. § I03(a) as being unpatentable
over Bullard and Wondka (US 2009/0183739 Al, issued July 23, 2009).
1 Several rejections based entirely or in part on Pirelli have been withdrawn
by the Examiner. Ans. 3--4.
2 Although not included in the rejection statement (Final Act. 7), the
Examiner appears to have intended to include claim 20 in the anticipation
rejection based on Holloway. See Final Act. 9; Ans. 15-16.
3 Claim 10, which is nowhere discussed in the Final Action, appears to have
been inadvertently included in this rejection in the Answer. Ans. 2.
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Claims 13-17 are rejected under 35 U.S.C. § I03(a) as being
unpatentable over Bullard and Dougherty (US 5,428,844, issued July 4,
1995).
Claim 18 is rejected under 35 U.S.C. § I03(a) as being unpatentable
over Bullard, Dougherty, and Bart (US 6,220,916 B 1, April 24, 2001 ).
Claims 1---6, 8, 9, and 19-28 are rejected under 35 U.S.C. § I03(a) as
being unpatentable over Bullard and Sherman (US 2002/0177793 Al, issued
November 28, 2002).
Claim 7 is rejected under 35 U.S.C. § I03(a) as being unpatentable
over Bullard, Sherman, and Wondka.
Claims 13-17 are rejected under 35 U.S.C. § I03(a) as being
unpatentable over Bullard, Sherman, and Dougherty.
Claim 18 is rejected under 35 U.S.C. § I03(a) as being unpatentable
over Bullard, Sherman, Dougherty, and Bart.
OPINION
The anticipation rejections of claims 1-4, 8, 9, and 19 over Bullard and
claims 1-4, 8, 19, 26, and 27 over Holloway, are affirmed.
The rejections of independent claim 1 as anticipated by either Bullard
or Holloway both hinge on the same issue, the meaning of the claim
recitation "textured to increase surface roughness and reduce surface tension
and/or friction between the strap and the patient." App. Br. 9-12, 13-15;
Reply. Br. 2-3, 4--5. Appellant contends that the generally similar surface
features of Bullard (grooves 26/protuberances 27) and Holloway (ribs
20/dimples 21) relied upon by the Examiner to demonstrate the recited
property of being "textured to increase surface roughness" (Final Act. 5---6,
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7-8), "contribute to the macroscopic shape of the straps [and] 'surface
roughness' is a property of the surface finish of an object and is measured on
a microscopic scale." App. Br. 10, 13. Although we recognize the term
"surface roughness" may have a specific meaning in the context of
engineering drawings or certain specifications, we disagree with Appellant
that the term carries such a meaning in the context of claim 1. First, as the
Examiner points out (Final Act. 5-8), paragraph 286 of Appellant's
Specification states, "[a] textured surface finish may roughen the surface.
The textured surface finish may comprise, for example, frosting, dimples or
troughs, waves, etched, cross hatched, knurled." This provides examples of
features that increase surface roughness without any mention or qualification
that those features exist only at a microscopic scale. Appellant's argument
that surface roughness would be the same for all parts of the Bullard and
Holloway straps, including over their respective surface deviations (App. Br.
10, 13), relies on the assumption that "surface roughness" must be a quantity
measured over a small enough sampling length so as to render those
deviations inconsequential to the measurement. Appellant is correct in that
surface roughness could be measured this way, such as by measuring Ra
over a small enough sample length. However, we are not apprised of any
language in claim 1 that requires surface roughness to be measured over
such a minute sampling length so as to preclude the respective surfaces of
Bullard and Holloway from being considered "textured in increase surface
roughness" as recited in claim 1. Appellant's Specification states, at
paragraph 294 (with emphasis added), "[p ]referably, surface texture or
surface roughness is measured by Ra. Ra is an average measurement of the
peaks and valleys over an area of the material. In this description, the Ra
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values are quoted as micro meters (µm)." Although the claims are
interpreted in light of the specification, limitations from the specification,
particularly those described only as "preferable," are not read into the
claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). Appellant's
argument is also inconsistent with dependent claim 4, which suggests claim
1 does not preclude surface roughness, when measured in terms of Ra
specifically, from being zero-something that could theoretically happen if
the surface features exist on a scale sufficiently larger than the Ra sampling
length as Appellant alleges they do in Bullard and Holloway. Accordingly,
in light of the Specification, we disagree with Appellant that the recited
phrase "textured to increase surface roughness" serves to exclude the relied-
upon texturing of Bullard or Holloway.
The next part of Appellant's argument focuses on the functional
recitation associated with the texturing: "reduce surface tension and/or
friction between the strap and the patient." There does not appear to be any
disagreement between Appellant and the Examiner that the cited surface
features of Bullard (26, 27) and Holloway (20, 21) serve different purposes:
reducing slippage with their respective buckles (Bullard 23 (p. 2, col. 2, 11.
14--18); Holloway 22 (col. 2, 11. 47-58)), and that neither Bullard nor
Holloway discusses what the effects of the features would be interfacing
with a patient. The Examiner takes a reasonable and sound position that, as
the structures are the same or similar to those described in the Specification,
the same results would be expected. Ans. 7-8, 14--15 ( citing Spec. paras.
286,287, 294, 297). Appellant, citing the same paragraphs cited by the
Examiner, asserts without further technical explanation on this point, that
"Appellants' specification discloses that the types of 'dimples',
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'depressions', 'troughs' and 'knurled portions' that form the 'textured
surface' are the types that reduce surface tension and/or friction between a
headgear strap and a patient." Reply Br. 3, 5. However, we find nothing in
the cited paragraphs distinguishing, for example, a dimple that does "reduce
surface tension and/or friction between a headgear strap and a patient" from
a dimple that does not. In other words, neither Appellant's arguments nor
Appellant's Specification provides any evidence or technical reasons to
conclude, for example, that the dimples of Holloway would function any
differently from the dimples of Appellant. The court in Swinehart states
that:
[W]here the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent characteristic
of the prior art, it possesses the authority to require the applicant
to prove that the subject matter shown to be in the prior art does
not possess the characteristic relied on.
In re Swinehart, 439 F.2d 210,213 (CCPA 1971); see also MPEP § 2112(V)
(citing In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997)). Appellant has
not done so. Claims differing from the prior art by no more than the
recitation of a result or latent characteristic do not distinguish those claims
over the prior art. See In re Wiseman, 596 F.2d 1019, 1023 (CCPA 1979)
("[Appellants] are, in effect, arguing that a structure suggested by the prior
art, and, hence, potentially in the possession of the public, is patentable to
them because it also possesses an inherent, but hitherto unknown, function
which they claim to have discovered. This is not the law.") (discussed, along
with similar cases, at MPEP § 2145(II)); Bristol-Myers Squibb Co. v. Ben
Venue Labs., Inc., 246 F.3d 1368, 1376-77 (Fed. Cir. 2001).
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For the foregoing reasons, we sustain the Examiner's rejections of
claim 1 as being anticipated by Bullard and also by Holloway. Appellant
does not present separate arguments for the anticipation rejection of claims
2--4, 8, 9, and 19 based on Bullard or for the anticipation rejection of claims
2--4, 8, 19, 26, and 27 based on Holloway. Accordingly, we sustain the
respective anticipation rejections against these claims as well. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
The anticipation rejections of claim 20 over Bullard and claims 20 and 23-
25 over Holloway are reversed.
The Examiner's position with regard to claim 20 is that the term
"coating" is a product-by-process limitation, which therefore does not
distinguish the claim over Bullard or Holloway. Ans. 9-10; 16-16. First,
although "coating" may be used as a verb to describe a process by which
something is formed, it may also, as is the case here, be used as a noun
connoting a structural meaning. See MPEP § 2113 (!)(giving examples of
terms, such as welded, that may have a structural meaning typically resulting
from a process bearing a name having the same root word). Second, even if
the word coating was used in a manner that only referred to the process by
which a textured surface is placed on the strap, it would be incumbent upon
the Examiner to show identity with the final prior-art structure being relied
on. For example, one would expect a coating process to result in a structural
configuration that is, at least, layered. See MPEP § 2113 (II) ( emphasis
added) ("Once the examiner provides a rationale tending to show that the
claimed product appears to be the same or similar to that of the prior art,
although produced by a different process, the burden shifts to
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applicant ... "). The Examiner has provided no such reasoning along these
lines. For the foregoing reasons, we do not sustain the Examiner's
anticipation rejection of claim 20 over Bullard and that of claims 20 and 23-
25 over Holloway.
The obviousness rejections of claims 1-9 and 13-28 based on Bullard and
Sherman, with or without the cited additional references, are reversed.
In the rejection of independent claim 1 predicated on the combination
of Bullard and Sherman, the Examiner indicates that "Bullard does not
expressly disclose the manner by which the textured surface can reduce
friction." Final Act. 16. Above, we discussed the reasons why Bullard need
not make such an express disclosure to support a finding of anticipation,
namely, because the same structure would be expected to exhibit the same
behavior when worn by a patient.
However, to the extent the Examiner relies on Sherman to fill in this
information, the Examiner's reliance is misplaced. Appellant correctly
points out (App. Br. 17) that the friction-reducing mechanism of Sherman's
Teflon® or similar material does not operate by reducing surface tension
like the various forms of texturing described in Appellant's Specification
(see para. 287). Thus, the Examiner's conclusion that it would have been
obvious "to include an elastic low friction material to reduce surface
tension" (Final Act. 17) lacks rational underpinnings in the record before us.
Further, because neither Sherman nor the Examiner provides any evidence
pertaining to the texture of Teflon® or similar materials, making a
modification to Bullard to include one of those materials does not supply the
subject matter for which the Examiner turns to a secondary reference:
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"Bullard does not expressly disclose the manner by which the textured
surface can reduce friction." As the Examiner has not supported the rejection
of claim 1 predicated on Bullard and Sherman with a cogent explanation
demonstrating the reasons for unpatentability, we do not sustain the
Examiner's rejection of independent claim 1, or its dependent claims 2-6, 8,
9, 19, 21, 22, and 26-28 based on Bullard and Sherman. As the additional
references cited by the Examiner do not remedy this shortcoming we also do
not sustain the rejections against claims 7 and 13-18 based on Bullard,
Sherman and one or more of W ondka, Dougherty, and Bart.
With regard to claim 20, the Examiner makes a statement that is
somewhat difficult to parse grammatically but appears to relate to the same
unsupported and seemingly inaccurate statements discussed above
concerning claim 1: "Consequently, the relationship where a low fiction
material is being used, produces a surface texture that smoother, which
results in a surface roughness where there are a higher number peaks and
valleys, in tum a higher Ra value, over the material to facilitate a 'strap to
slide or slip' (Paragraph 00297)." Final Act. 18. The Examiner's product-by-
process reasoning (Final Act. 18) is flawed for reasons already discussed
above. As the Examiner has not supported the rejection of claim 20
predicated on Bullard and Sherman with a cogent explanation demonstrating
the reasons for unpatentability, we do not sustain the Examiner's rejection of
independent claim 20, or its dependent claims 23-25, based on Bullard and
Sherman.
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The anticipation rejections of claim 12 over Holloway is reversed.
Appellant correctly argues, "[ t ]he Examiner fails to provide any
evidence or explain how Holloway discloses the 'parting line' feature of
claim 12." App. Br. 22. The Examiner includes claim 12 in the rejection
statement but never articulates a specific basis for rejection. Final Act. 7-9.
Examination "shall be complete with respect ... to the patentability of the
invention as claimed." 37 C.F.R. § 1.104(a)(l). "The reasons for any adverse
action ... will be stated in an Office action and such information or
references will be given as may be useful in aiding the applicant ... to judge
the propriety of continuing the prosecution" 3 7 C.F .R. § 1.104( a )(2 ). "The
pertinence of each reference, if not apparent, must be clearly explained and
each rejected claim specified." 37 C.F.R. § 1.104(c)(2). Because it is unclear
from the record how the teachings and disclosures of Holloway are being
applied by the Examiner to reject claim 12, we do not sustain the rejection of
claim 12 as being anticipated by Holloway.
The obviousness rejection of claims 5 and 11 over Bullard is reversed.
In rejecting claim 5, the Examiner reasoned:
In light of the relationship between Ra value and surface
roughness, it would have been obvious [] to modify the Ra value
of the strap with respect to the desired surface finish, texture, and
reduced frictional engagement, since it has been held that where
the general conditions of a claim are disclosed in the prior art
discovering the optimal or workable ranges involves only routine
skill in the art. Moreover, Applicant has not asserted the specific
Ra value range provides a particular advantage, solves a stated
problem, or serves a purpose different from that of reducing
friction by providing a smooth finish for engagement of the strap
about the patient: thus, the use of the specific Ra value range
lacks criticality in its design.
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Final Act. 11-12.
In rejecting claim 11, the Examiner reasoned:
In light of the relationship between radius of curvature and the
ability of the edges of the strap to not be sharp, it would have
been obvious [] to modify the radius of curvature of the strap
with respect to the desired surface finish, texture, and reduced
frictional engagement, since it has been held that where the
general conditions of a claim are disclosed in the prior art
discovering the optimal or workable ranges involves only routine
skill in the art. Moreover, Applicant has not asserted the specific
radius of curvature provides a particular advantage, solves a
stated problem, or serves a purpose different from that of
reducing friction by providing a smooth finish for engagement of
the strap about the patient; thus, the use of the specific radius of
curvature lacks criticality in its design.
Final Act. 12.
Both rejections mention "reducing friction by providing a smooth
finish for engagement of the strap about the patient." Both the basis and the
relevance of this statement are unclear. As discussed above, Appellant's
Specification discusses providing texture, the opposite of a smooth surface,
to reduce friction between strap and patient. Bullard discusses providing
similar features to decrease slip between the strap and buckle. The point the
Examiner is attempting to make regarding reducing friction with a smooth
surface is unclear. The Examiner's comments regarding frictional
engagement also do not appear to be relevant to the radius aspect of claim
11.
Although certain dimensional characteristics of the claimed subject
matter may be the product of "routine optimization" or "design choices," the
Examiner must always support a rejection with a fact-specific analysis to
explain why the claimed subject matter would have been obvious despite
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these differences between the subject matter claimed and the prior art. In re
Kahn, 441 F .3d 977, 988 (Fed. Cir. 2006) ( citation omitted) ("[R ]ejections
on obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.") ( Cited with
approval in KSR Int'! v. Teleflex Inc., 550 U.S. 398,418 (2007)). In the case
of routine experimentation, it is incumbent upon the Examiner to explain, or
provide evidence to demonstrate, the parameter optimized was recognized as
a result-effective variable. App. Br. 24--25 (citing MPEP § 2144.05(II)(B)
and In re Antonie, 559 F.2d 618 (CCPA 1977)). In the case of design
choices, the Examiner should provide a cogent explanation why, despite
differences in the claimed structure, the function it performs would not differ
from that of the prior art. In re Chu, 66 F.3d 292, 299 (Fed. Cir. 1995)
(citing In re Gal, 980 F.2d 717 (Fed. Cir. 1992)). The Examiner's rejections
of claims 5 and 11 are not supported by these types of particularized, fact-
specific analyses. Substituting per se rules for the particularized inquiry
required by section 103, as appears to have been done here, necessarily
produces erroneous results. In re Ochiai, 71 F.3d 1565, 1571 (Fed. Cir.
1995). The general purposes of the Ra value and radius are explained in
paragraphs 297 and 303, respectively. Although, pertaining to specific
dimensional recitations, criticality and/or unexpected results may, if present,
lend support to a conclusion of non-obviousness (MPEP §§ 2144.05, 2145),
"the absence of objective evidence is a neutral factor" in the obviousness
inquiry (Medtronic, Inc. v. Intermedics, Inc., 799 F.2d 734, 739 n.13 (Fed.
Cir. 1986) ( citations omitted)) and "does not dictate a conclusion of
obviousness" (Kansas Jack, Inc. v. Kuhn, 719 F.2d 1144, 1150 (Fed. Cir.
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1983) ). Even absent evidence of criticality, the Examiner does not provide
sufficient evidence or explanation to support the Examiner's conclusion of
obviousness with regard to the subject matter of claims 5 and 11. See, e.g.,
In re Stepan Co., 868 F.3d 1342, 1348 (Fed. Cir. 2017).
The obviousness rejections of claims 7 and 13-18 that do not rely on
Sherman are affirmed.
These rejections are affirmed because they are not separately argued.
DECISION
The anticipation rejections of claims 1--4, 8, 9, and 19 over Bullard
and claims 1--4, 8, 19, 26, and 27 over Holloway, are affirmed.
The anticipation rejections of claim 20 over Bullard and claims 20 and
23-25 over Holloway are reversed.
The obviousness rejections of claims 1-9, and 13-28 based on Bullard
and Sherman, with or without the cited additional references, 4 are reversed.
The anticipation rejection of claim 12 over Holloway is reversed.
The obviousness rejection of claims 5 and 11 over Bullard is reversed.
The obviousness rejections of claims 7 and 13-18 that do not rely on
Sherman 5 are affirmed.
4 Claim 7 as being unpatentable over Bullard, Sherman, and Wondka; claims
13-17 as being unpatentable over Bullard, Sherman, and Dougherty; and
claim 18 as being unpatentable over Bullard, Sherman, Dougherty, and Bart.
5 Claim 7 as being unpatentable over Bullard and W ondka; claims 13-17 as
being unpatentable over Bullard and Dougherty; and claim 18 as being
unpatentable over Bullard, Dougherty and Bart.
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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
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