HUBER, Petra et al.

Patent Trials and Appeals Board

Feb 7, 2020

15668619 - (D) (P.T.A.B. Feb. 7, 2020)

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.
15/668,619 08/03/2017 Petra HUBER PTB-4750-0170 6555
23117 7590 02/07/2020
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
SIPPEL, RACHEL T
ART UNIT PAPER NUMBER
3785
NOTIFICATION DATE DELIVERY MODE
02/07/2020 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 PETRA HUBER, BERND CHRISTOPH LANG,
ACHIM BEINER, and DIETER HEIDMANN

Appeal 2019-002021
Application 15/668,619
Technology Center 3700
____________

Before DONALD E. ADAMS, CHRISTOPHER G. PAULRAJ, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 2–31. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
BACKGROUND
The Specification discloses that “[t]he invention relates to a
respiratory gas tube arrangement for supplying a respiratory gas to a
person.” Spec. ¶ 2.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as “RESMED
LIMITED.” Appeal Br. 3.
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Application 15/668,619

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CLAIMS
Claims 2, 12, and 22 are the independent claims on appeal. Claim 2 is
illustrative of the appealed claims and recites:
2. An apparatus for treatment of sleep-related respiratory
problems by application of positive pressure gas to the
respiratory passages of a patient, the apparatus comprising:
a CPAP device comprising:
a blower configured to deliver gas at a delivery
pressure for CPAP therapy,
an electronic controller configured to adjust the
delivery pressure of the gas,
a power supply socket provided on the CPAP
device; and
a heatable respiratory gas tube arrangement, the tube
arrangement comprising:
a heatable respiratory gas tube configured to deliver
the positive pressure gas from the CPAP device to the
patient,
a first connector at a first end of the tube and
configured to connect to a breathing mask, and
a second connector at a second end of the tube and
configured to connect to the CPAP device, wherein the
second connector is configured to connect to the power
supply socket provided on the CPAP device when the
second connector is engaged into the power supply socket,
and comprises a connector plug providing a respiratory
gas passage cross-section and contact elements configured
to supply the heatable respiratory gas tube with power.
Appeal Br. 14.
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Application 15/668,619

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REJECTIONS
1. The Examiner rejects claims 2, 5–7, 9–11, 22, 25–27, and 29–31 under
35 U.S.C. § 103(a) as unpatentable over Lopatinsky2 in view of Truschel3
and Pauler.4
2. The Examiner rejects claims 3 and 23 under 35 U.S.C. § 103(a) as
unpatentable over Lopatinsky in view of Truschel, Pauler, and Sladek.5
3. The Examiner rejects claims 4 and 24 under 35 U.S.C. § 103(a) as
unpatentable over Lopatinsky in view of Truschel, Pauler, Sladek, and
Holden.6
4. The Examiner rejects claims 8 and 28 under 35 U.S.C. § 103(a) as
unpatentable over Lopatinsky in view of Truschel, Pauler, and Sumner.7
5. The Examiner rejects claims 12, 15–17, and 19–21 under 35 U.S.C.
§ 103(a) as unpatentable over Lopatinsky in view of Truschel, Bowles,8
and Pauler.
6. The Examiner rejects claim 13 under 35 U.S.C. § 103(a) as unpatentable
over Lopatinsky in view of Truschel, Bowles, Pauler, and Sladek.
7. The Examiner rejects claim 14 under 35 U.S.C. § 103(a) as unpatentable
over Lopatinsky in view of Truschel, Bowles, Pauler, Sladek, and
Holden.

2 Lopatinsky, US 5,600,752, iss. Feb. 4, 1997.
3 Truschel, US 2002/0014240 A1, pub. Feb. 7, 2002.
4 Pauler, et al., US 3,034,085, iss. May 8, 1962.
5 Sladek, US 6,014,972, iss. Jan. 18, 2000.
6 Holden, US 3,928,715, iss. Dec. 23, 1975.
7 Sumner, US 6,092,557, iss. July 25, 2000.
8 Bowles et al., US 4,621,633, iss. Nov. 11, 1986.
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8. The Examiner rejects claim 18 under 35 U.S.C. § 103(a) as unpatentable
over Lopatinsky in view of Truschel, Bowles, Pauler, and Sumner.
DISCUSSION
Rejections 1–3 and 5–8
With respect to claim 2, for example, the Examiner finds that
Lopatinsky discloses an apparatus including a gas system “for delivering gas
to a user, but is silent regarding a blower configured to deliver gas at a
delivery pressure for CPAP therapy and an electronic controller configured
to adjust the delivery pressure of the gas.” Final Act. 4. However, the
Examiner determines that it would have been obvious to modify Lopatinsky
to include these elements based on Truschel and Pauler. Id. at 4–5. The
Examiner relies on similar analysis regarding claim 22. Id. at 6–8.
Regarding claim 12, the Examiner relies on similar analysis regarding
Lopatinsky, Truschel, and Pauler, and further relies on Bowles regarding the
claimed configuration of a humidifier device. Id. at 12–15.
As discussed below, we are not persuaded of reversible error in the
rejections of independent claims 2, 12, and 22.
With respect to claims 2 and 12, Appellant first argues that the
Examiner erred in finding that Lopatinsky discloses an apparatus for
treatment of sleep-related respiratory problems. Appeal Br. 8–9. Appellant
asserts that “Lopatinsky discloses a flexible hose for use in military and
civilian applications (col. 1, lns. 8-9), in particular for use with
crewmembers in tanks and other military vehicles (col. 1, lns. 34-37).” Id.
at 8. Appellant also notes that Lopatinsky only teaches the use of pressure
below one atmosphere, which is not positive pressure, and is contrary to the
Examiner’s findings. Reply Br. 1–2.
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We are not persuaded of reversible error. In the rejection, the
Examiner finds that “Lopatinsky discloses an apparatus for treatment of
sleep-related respiratory problems by application of positive pressure gas to
the respiratory passages of a patient.” Final Act. 4. However, we determine
that this finding relates only to the intended use of the device presented in
the claim preamble and does not relate to any structural requirements of the
claim. To be clear, a claim’s preamble may be treated as a limitation of the
claim in some circumstances. However, we determine that the preamble is
not a limitation here because the claim recites a structurally complete
invention in the claim body, and the preamble only recites an intended use.
See Catalina Marketing Int’l., Inc. v. Coolsavings.com, Inc., 289 F.3d 801,
808 (Fed. Cir. 2002). To the extent the Examiner makes findings regarding
Lopatinsky’s application to the treatment of respiratory problems and the
delivery of positive pressure, we find that any error in those findings is
harmless because they relate to the non-limiting claim preambles, are not
specific to any structure required by the claims, and thus, do not affect the
merits of the overall rejection before us. Therefore, Appellant’s argument
does not persuade us of reversible error.
Regarding claim 22, Appellant argues that the Examiner erred in
finding that Lopatinsky discloses “a heatable respiratory gas tube configured
to deliver positive pressure gas” because “[n]othing in Lopatinsky relates to
patients or delivery of gas to patients.” Appeal Br. 9. However, in the
rejection, the Examiner finds only that “Lopatinsky discloses a heatable
respiratory gas tube arrangement . . . for delivering gas to a user.” Final Act.
6. The Examiner further relies on Truschel as teaching a system for
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delivering “gas at a delivery pressure for CPAP therapy.” Id. Appellant has
not identified any error in these findings.
Next, Appellant argues that the Examiner erred in rejecting each of
the independent claims because “[t]here is no evidence to explain why one
of ordinary skill would have been motivated to modify a hose in a military
vehicle to treat sleep apnea or any other breathing disorder.” Appeal Br. 10.
We are not persuaded of error for reasons provided by the Examiner. See
Final Act. 18; Ans. 18. Specifically, we agree with the Examiner that
Lopatinsky discloses that the invention is applicable to both military and
civilian uses related to conveying gas through flexible hoses with adequate
temperature control. See Lopatinsky col. 1, ll. 7–34. Lopatinsky discloses
that military use is simply “[o]ne such application where these problems
arise is in air supply hoses.” Id. at col. 1, ll. 34–36. This evidence suggests
that Lopatinsky’s invention is applicable to civilian uses in which flexible
hoses deliver gas at controlled temperatures, e.g., in a CPAP device. Thus,
we are not persuaded of error by Appellant’s argument.
Based on the foregoing, we are not persuaded of reversible error in the
rejections of independent claims 2, 12, and 22. Accordingly, we sustain the
rejections of these claims. We also sustain the rejections of dependent
claims 3, 5–7, 9–11, 13–21, and 23–31, for which Appellant does not
provide separate arguments.
Rejection 4
This rejection partially relies on Sumner in determining that claims 8
and 28 would have been obvious. See Final Act. 10–12. Claims 8 and 28
each require a heat-insulating body that has a wall thickness of 1–7 mm.
Appeal Br. 15, 18. The Examiner determines that the claimed thickness
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would have been obvious in view of Sumner’s disclosure of a gas pipeline
with 3 mm thick thermal insulating layers. Final Act. 10–12.
Appellant argues that the Examiner erred in rejecting claims 8 and 28
because Sumner is not analogous art. Appeal Br. 10–12. Appellant asserts
that Sumner is not in the same field of endeavor because “Sumner is directed
to an offshore pipeline with waterproof thermal insulation.” Id. at 11.
Appellant also asserts that Sumner is not reasonably pertinent to the problem
faced by the present inventors. Id. at 11. More specifically, Appellant
asserts that present application addresses problems related to respiratory gas
tube arrangements being bothersome or inconvenient, and “Sumner
addresses problems related to pipeline insulating materials” and “[n]one of
these problems are relevant to a respiratory gas tube arrangement.” Id. at 11.
Appellant indicates that the Examiner has not considered the problems
addressed by the present application and the purpose of the prior art relied
upon in assessing whether Sumner is analogous. Id. at 11–12.
The Specification discloses that prior art flexible tubing used in CPAP
devices “is often found to be bothersome” and that the object of the
invention here is to create a device with “increased convenience of use.”
Spec. ¶¶ 4, 5. The Specification indicates that these problems are solved, at
least in part, by a device that “avoid[s] direct contact of the tube with the
patient[; that] conceal[s] the tube in a manner advantageous with respect to
aesthetic considerations;” and that prevents condensation from forming in
the tube. Id. at ¶ 7. The Specification also makes clear that the improved
convenience of the device also advantageously includes appropriate heat
insulation for the supply tube. See, e.g., id. at ¶¶ 9, 18, 22, 24. Thus, the
one of ordinary skill in the art would understand from the Specification that
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the invention addresses problems related to “bothersome” flexible tubing in
CPAP devices, and that addressing these problems includes providing
appropriate insulation around the tubing.
Given the considerations discussed above with respect to the problems
addressed by the inventors, we agree with the Examiner that Sumner is
reasonably related to those problems. Sumner discloses a pipeline with
insulating layers applied thereon “that will substantially inhibit heat transfer
between the contents of the pipeline and the environment.” Sumner,
Abstract. Sumner is specifically concerned with providing “a waterproof
insulating composition, cost-effective insulated pipelines, and insulating
laminate compositions comprising a suitable substrate to which said
composition is applied.” Id. col. 3, ll. 31–35.9 Given this disclosure, we
agree with the Examiner that Sumner is at least reasonably pertinent to the
problems faced by the present inventors, i.e. Sumner is related to providing a
suitable insulating layer for a conduit, and one of ordinary skill in the art
would understand that a suitable insulating layer is advantageous to improve
the convenience of a such conduit.
Based on the foregoing, we are not persuaded of reversible error in the
rejection of claims 8 and 28. Accordingly, we sustain the rejections of these
claims.
CONCLUSION
We AFFIRM the rejections of claims 2–31.

9 Notably, the present Specification also discloses the use of an insulating
layer formed from a suitable substrate onto which an outer layer is
laminated. See Spec. ¶ 48.
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Application 15/668,619

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In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
2, 5–7, 9–11,
22, 25–27,
29–31
103(a) Lopatinsky,
Truschel, Pauler
2, 5–7, 9–
11, 22, 25–
27, 29–31

3, 23 103(a) Lopatinsky,
Truschel,
Pauler, Sladek
3, 23
4, 24 103(a) Lopatinsky,
Truschel,
Pauler, Sladek,
Holden
4, 24
8, 28 103(a) Lopatinsky,
Truschel,
Pauler, Sumner
8, 28
12, 15–17,
19–21
103(a) Lopatinsky,
Truschel,
Bowles, Pauler
12, 15–17,
19–21

13 103(a) Lopatinsky,
Truschel,
Bowles, Pauler,
Sladek
13
14 103(a) Lopatinsky,
Truschel,
Bowles, Pauler,
Sladek, Holden
14
18 103(a) Lopatinsky,
Truschel,
Bowles, Pauler,
Sumner
18
Overall
Outcome
2–31

Appeal 2019-002021
Application 15/668,619

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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