Ex Parte Whitcher et al

Patent Trial and Appeal Board

Dec 26, 2018

14344164 (P.T.A.B. Dec. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/344,164 03/11/2014 Douglas Adam Whitcher
24737 7590 12/28/2018
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus A venue
Suite 340
Valhalla, NY 10595
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.
2011P01330WOUS 4765
EXAMINER
STUART, COLINW
ART UNIT PAPER NUMBER
3785
NOTIFICATION DATE DELIVERY MODE
12/28/2018 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):
patti. demichele@Philips.com
marianne.fox@philips.com
katelyn.mulroy@philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DOUGLAS ADAM WHITCHER,
BRADLEY STEWART KOEPPEL, BERNHARD LEWIS HABERLAND,
and JEREMY BLAIR
Appeal2018-004591
Application 14/344, 164
Technology Center 3700
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Douglas Adam Whitcher et al. ("Appellants") 1 appeal under 35 U.S.C.
§ 134(a) from the Examiner's decision rejecting claims 1-18. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Koninklijke Philips
Electronics N.V. Appeal Br. 2.
Appeal2018-004591
Application 14/344, 164
THE CLAIMED SUBJECT MATTER
Claims 1, 7, and 13 are independent. Claim 1, reproduced below, is
illustrative of the subject matter on appeal.
1. An oxygen concentrator system, comprising:
an oxygen concentration subsystem configured to
implement adsorption to generate a supply of oxygen-enriched
gas;
an oxygen delivery subsystem configured to communicate
oxygen-enriched gas from the oxygen concentration subsystem
to a respiratory circuit for delivery to an airway of a subject;
one or more batteries configured to act as a sole power
supply for the oxygen concentrator system, the one or more
batteries having a single-charge battery-life of greater than 2
hours during operating conditions of maximum continuous flow
of 100 % oxygen equivalent gas; and
a housing configured to house the oxygen concentration
subsystem, the oxygen delivery subsystem, and the one or more
batteries, wherein
a ratio Row is determined as: Row= (02 output)/total
weight of the oxygen concentrator system housed within
the housing, where 02 output is the maximum continuous
flow of 100 % oxygen equivalent gas of the oxygen
concentrator system, the ratio Row being greater than 0.19
lpm/lbs.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Bliss US 2008/0282880 Al Nov. 20, 2008
Armstrong US 2011/0247620 Al Oct. 13, 2011
Taylor US 8,366,815 B2 Feb. 5,2013
Wilkinson US 8,616,207 B2 Dec. 31, 2013
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Application 14/344, 164
REJECTIONS 2
I. Claims 1, 2, 4--8, 10-14, and 16 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Bliss, Wilkinson, and Taylor. Final
Act. 4--11.
II. Claims 3, 9, 15, 17, and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bliss, Wilkinson, Taylor, and Armstrong. Id. at
11-12.
OPINION
Rejection I
Appellants argue independent claims 1, 7, and 13 together as a group,
and do not present any separate arguments for dependent claims 2, 4--6, 8,
10-12, 14, and 16. Appeal Br. 8-14; Reply Br. 2--4. We select claim 1 as
the representative claim, and claims 2, 4--8, 10-14, and 16 stand or fall
therewith. 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds that Bliss teaches, in relevant part, "a housing
configured to house the oxygen concentration subsystem, the oxygen
2 Appellants present arguments contesting the Examiner's objection to the
drawings. Appeal Br. 6-8. However, the propriety of the objection to the
drawings under 37 C.F.R. § 1.83 is reviewable by petition (MPEP
§ 1002.02(c)), and is not appealable. Ex Parte Frye, 94 UPSQ2d 1072,
1077-78 (BPAI 2010) (precedential); see MPEP § 1201 (the Board will not
ordinarily hear a question that is reviewable by petition); In re Berger, 279
F.3d 975, 984 (Fed. Cir. 2002) (citing In re Hengehold, 440 F.2d 1395, 1403
(CCP A 1971) ( stating that there are many kinds of decisions made by
examiners that are not appealable to the Board when they are not directly
connected with the merits of issues involving rejections of claims)).
Accordingly, the drawing objection is not before us for review as part of the
instant appeal.
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Application 14/344, 164
delivery subsystem, and the one or more batteries (see Fig. IA, IB, housing
59)." Final Act. 5. The Examiner finds that "[t]he Bliss system teaches
delivery conditions for maximum continuous flow of 100% oxygen
equivalent gas ( see Bliss para. 0118 for example), but is silent as to having a
ratio Row as claimed which is greater than 0.19 lpm/lbs." Id. However, the
Examiner determines that "one of ordinary skill in the art at the time the
invention was made would have found the 02 output capacity and/or the
weight of the system to be an obvious matter of design choice to provide a
particular oxygen delivering capacity and/or increase portability." Id. The
Examiner also finds that "Wilkinson teaches a similar system which includes
a total weight of less than 10 lbs, or less than 5 lbs ( see Wilkinson col. 7 ln.
53-62)." Id. The Examiner determines that it would have been obvious "to
modify the modified Bliss system to have a weight of 5 lbs or less, as taught
by Wilkinson, in order to increase portability of the system." Id. According
to the Examiner, "[t]he now modified Bliss system, with the total weight of
5 lbs or less, has an Row ratio of greater than 0.19 lpm/lbs (see Bliss para.
0118 and Wilkinson col. 7 ln. 53-62)." Id.
Appellants argue that the cited references do not teach or suggest "a
ratio Row ... determined as: Row= (02 output)/total weight of the oxygen
concentrator system housed within the housing, where 02 output is the
maximum continuous flow of 100 % oxygen equivalent gas of the oxygen
concentrator system, the ratio Row being greater than 0.19 lpm/lbs," as
recited in claim 1. Appeal Br. 8-11. In particular, Appellants assert that
"[t]here is no description in [Wilkinson] of an oxygen output to weight ratio
Row greater than 0.19 lpm/lbs." Id. at 12; see also id. at 13 (asserting that
"there is no disclosure whatsoever in [Wilkinson] of any ratios, nor [is there]
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Application 14/344, 164
a description of 02 output being the maximum continuous flow of 100 %
oxygen equivalent gas" (underlining omitted)). According to Appellants,
neither Bliss nor Wilkinson teaches "any system ratios, much less, (i) an
oxygen output to weight ratio (Row) and (ii) the Row being greater than 0.19
lpm/lbs." Reply Br. 2, 3 (underlining omitted). These arguments are
unpersuasive because they essentially attack Bliss and Wilkinson
individually, rather than the rejection as articulated by the Examiner, which
is based on the combined teachings of the references. See In re Keller, 642
F .2d 413, 425 (CCP A 1981) ( one cannot show nonobviousness by attacking
references individually when the rejection is based on a combination of the
references). As discussed above, the Examiner relies on Bliss for teaching a
portable gas generator system having a particular output of 100% oxygen
equivalent gas and Wilkinson for a similar portable gas generator having a
paiiicular weight. Final Act. 5----6. In this regard, Appellants do not
persuasively refute the Examiner's position that "Bliss at least implies the
presence of a ratio Row as the system of Bliss would inherently have a
weight." Ans. 15.
Appellants argue that "the Examiner has failed to provide any
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness for combining [Bliss and Wilkinson]." Appeal
Br. 13. Appellants assert that "[t]he Examiner provides no analysis, or
proper motivation as to why one of ordinary skill in the art, without first
seeing the present disclosure, would apply the alleged teachings of
[Wilkinson] (the system being less than 10 or 5 lbs) to [Bliss]." Id.
According to Appellants, "[t]he Examiner does not explain how one of
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Application 14/344, 164
ordinary skill in the art would physically modify [Bliss] to achieve these
device weights." Id. We are not persuaded by this line of argument.
As discussed above, the Examiner determines that one of ordinary
skill in the art would have been led to modify Bliss according to the
teachings of Wilkinson in order to increase system portability. Final Act. 5;
see also Ans. 17 (reasoning that "one of ordinary skill in the art would have
been motivated to look to the teachings of Wilkinson to provide a low
overall weight to the Bliss system which would increase the portability of
the system and promote ease of use" ( citing Bliss ,r 65) ). The Examiner also
explains that
Wilkinson teaches a similar oxygen concentrator system
which includes like components to that of Bliss: an oxygen
concentration subsystem (sieve beds, Wilkinson col. 7 ln. 63
through col. 8 ln. 3 for example), an oxygen delivery subsystem
(see Wilkinson Fig. 1, compressor 200, reservoir 150 and tubing
for delivery to the user, see col. 15 ln. 37-51), and one or more
batteries (Wilkinson col. 4 ln. 18-24 for example).
Ans. 17-18; see also id. at 18 (reasoning that, given the like components of
Bliss and Wilkinson, "one of ordinary skill in the art would expect that
modifying the Bliss system to have a total overall weight of, for example,
5 lbs to be both physically possible and obvious in view of increasing the
portability of the system and promoting ease of use"). In this regard,
Appellants' argument does not specifically address the Examiner's findings
regarding the similarity of components in Bliss and Wilkinson, nor
persuasively refute the Examiner's reasoning articulated in support of the
conclusion of obviousness or adequately explain why the Examiner's
reasoning lacks rational underpinnings. Final Act. 5; Ans. 17-18.
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Moreover, Appellants do not identify any knowledge relied on by the
Examiner that was gleaned only from Appellants' disclosure and that was
not otherwise within the level of ordinary skill in the art at the time of the
invention. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) ("Any
judgment on obviousness is in a sense necessarily a reconstruction based
upon hindsight reasoning, but so long as it takes into account only
knowledge which was within the level of ordinary skill at the time the
claimed invention was made and does not include knowledge gleaned only
from applicant's disclosure, such a reconstruction is proper."). Thus,
Appellants' assertion that the Examiner relied on impermissible hindsight is
unsupported. See Reply Br. 3--4.
For the foregoing reasons, Appellants do not apprise us of error in the
Examiner's conclusion of obviousness with respect to claim 1. We sustain
the rejection of claim 1, and claims 2, 4--8, 10-14, and 16 falling therewith,
under 35 U.S.C. § 103(a) as unpatentable over Bliss, Wilkinson, and Taylor.
Rejection II
In contesting the rejection of claims 3, 9, 15, 17, and 18, Appellants
rely on the same arguments and reasoning we found unpersuasive in
connection with the independent claims, from which these claims depend.
Appeal Br. 14. Accordingly, we also sustain the rejection of claims 3, 9, 15,
17, and 18 under 35 U.S.C. § 103(a) as unpatentable over Bliss, Wilkinson,
Taylor, and Armstrong.
DECISION
The Examiner's decision to reject claims 1, 2, 4--8, 10-14, and 16
under 35 U.S.C. § 103(a) as unpatentable over Bliss, Wilkinson, and Taylor
is AFFIRMED.
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Appeal2018-004591
Application 14/344, 164
The Examiner's decision to reject claims 3, 9, 15, 17, and 18 under
35 U.S.C. § 103(a) as unpatentable over Bliss, Wilkinson, Taylor, and
Armstrong is 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
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