KONINKLIJKE PHILIPS N.V.

Patent Trials and Appeals Board

Sep 8, 2020

14429128 - (D) (P.T.A.B. Sep. 8, 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.
14/429,128 03/18/2015 Jerome Matula JR. 2012P00489WOUS 5540
24737 7590 09/08/2020
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
LUARCA, MARGARET M
ART UNIT PAPER NUMBER
3785
NOTIFICATION DATE DELIVERY MODE
09/08/2020 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):
katelyn.mulroy@philips.com
marianne.fox@philips.com
patti.demichele@Philips.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEROME MATULA, GREGORY JOHN JABLONSKI,
ANTONIO BUGAMELLI, and DERRICK BLAKE ANDREWS
Appeal 2019-005117
Application 14/429,128
Technology Center 3700
Before BENJAMIN D. M. WOOD, FREDERICK C. LANEY, and
BRENT M. DOUGAL, Administrative Patent Judges.
WOOD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–6 and 8–15. See Final Act. 1. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 “Appellant” refers to the applicant as defined by 37 C.F.R. § 1.42.
Appellant identifies the real party in interest as Koninklijke Philips N.V.
Appeal Br. 1.
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Application 14/429,128

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CLAIMED SUBJECT MATTER
The claims are directed to an articulating full face mask. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A cushion for use in a patient interface device, the cushion
comprising:
a first portion adapted to sealingly engage around the nares
of a patient;
a second portion adapted to sealingly engage around the
mouth of the patient; and
a third portion configured to provide for the relative
positioning of the first portion and the second portion to be
selectively adjusted, wherein the first portion comprises one of a
nasal mask, a pillows mask, or a cradle mask, and wherein the
third portion is formed as a part of at least one of: the first portion
and the second portion.
REFERENCES
Name Reference Date
Berthon-Jones US 5,560,354 Oct. 1, 1996
Barlow US 2013/0220327 A1 Aug. 29, 2013
McAuley WP 2004/071565 Aug. 26, 2004
REJECTIONS
Claims Rejected 35 U.S.C. § Reference(s)/Basis
1–6, 8–12, 14, 15 103 McAuley, Berthon-Jones
13 103 McAuley, Berthon-Jones, Barlow
OPINION
A. Claims 1–6, 8–12, 14, and 15: Rejected as Unpatentable over
McAuley and Berthon-Jones
Appellant argues the claims subject to this rejection as a group.
Appeal Br. 5–7. We select claim 1 as representative of the group, and
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decide the appeal of this rejection on the basis of claim 1 alone. 37 C.F.R.
§ 41.37(c)(1)(iv).
The Examiner finds that McAuley teaches a cushion for use in a
patient interface device comprising a first portion adapted to sealingly
engage around the nares of a patient, a second portion adapted to sealingly
engage around the mouth of the patient, and a third portion configured to
provide for the relative positioning of the first portion and the second portion
to be selectively adjusted, wherein the third portion is formed as a part of at
least one of the first portion and the second portion. Final Act. 3 (citing
McAuley, 4:15–20, Fig. 2). The Examiner acknowledges, however, that
McAuley does not disclose wherein the first portion comprises one of a
nasal mask, a pillows mask, or a cradle mask, and therefore relies on
Berthon-Jones to teach the missing limitation. Id. (citing Berthon-Jones,
Figs. 2–6). The Examiner determines that it would have been obvious for
one of ordinary skill in the art “to have modified the mask of McAuley to
have a separate nasal and mouth mask as disclosed by Berthon-Jones in
order to provide a better seal with the patient’s nose and mouth.” Id. (citing
Berthon-Jones, 1:63–68, 2:5–10).
We have considered each of Appellant’s arguments in support of the
patentability of claim 1, but find them unpersuasive of Examiner error.
Appellant first argues that McAuley fails to teach a cushion comprising a
first portion adapted to sealingly engage around the nares of a patient, a
second portion adapted to sealingly engage around the mouth of a patient,
and a third portion configured to provide for the relative positioning of the
first portion and the second portion to be selectively adjusted. Appeal Br. 5.
According to Appellant, “McAuley simply teaches a patient interface 2
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having a single seal 30 which engages the face of a patient 1 around both
the mouth and nares,” and thus, at most, “teaches a cushion comprising a
first portion adapted to sealingly engage near the nares of a patient and a
second portion adapted to sealingly engage near the mouth of the patient as
plainly neither of such alleged portions identified by the Examiner when
viewed as only a portion is actually disposed around (i.e., disposed on all
sides thereof, encircling) either of the mouth or nares of the patient.” Id.
This argument is not persuasive of Examiner error, as it constitutes an
attack on McAuley individually and fails to consider the combined teachings
of McAuley and Berthon-Jones and the rejection as articulated by the
Examiner. See In re Merck & Co., Inc., 800 F.2d 1091, 1097–98 (Fed. Cir.
1986) (“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.” (citations omitted)). Even if we were to agree
with Appellant that McAuley fails to teach this limitation, the Examiner also
finds that Berthon-Jones teaches—as Appellant acknowledges—“two
separate encompassing members – a first sealing member which is disposed
around the nares of a patient and a second sealing member which is disposed
around the mouth of the patient.” Appeal Br. 6; see Final Act. 3. Thus, the
combination of McAuley and Berthon-Jones teaches the limitations that
Appellant argues is missing from McAuley alone.
Appellant also disputes the Examiner’s asserted reason to combine
McAuley and Berthon-Jones. According to Appellant, “such suggested
combination appears to be based on the teaching of the present application
and no teaching or suggestion from the prior art.” This is incorrect. The
Examiner relies on Berthon-Jones to support the determination that
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modifying McAuley to have separate nasal and mouth masks would result in
a better seal. See Final Act. 3 (citing Berthon-Jones, 1:63–68, 2:5–10; Ans.
5 (citing Berthon-Jones, 6:40–50). “Any judgment on obviousness is in a
sense necessarily a reconstruction based on hindsight reasoning, but so long
as it takes into account only knowledge which was within the level of
ordinary skill in the art at the time the claimed invention was made and does
not include knowledge gleaned only from applicant's disclosure, such a
reconstruction is proper.” In re McLaughlin 443 F.2d 1392, 1395 (CCPA
1971).
Appellant further argues that:
[B]ased on the art relied upon by the Examiner, one starting
with the arrangement of McAuley looking to improve the seal
with a patient's nose and mouth would simply either: i.) utilize
only the arrangement of Berthon-Jones instead of the full face
arrangement of McAuley (McAuley is not solely concerned
with a full face mask but also discloses that its mask may be a
nasal mask, or any other type of mask, see, e.g., page 3, lines
24–30), or ii.) modify either or both of the encompassing
members, i.e., nasal cushion 44 and/or the mouth cushion 46, of
Berthon-Jones such that a portion of one or both of such
encompassing members has an adjustable portion such that the
seal of either or both of such portion is improved.
Appeal Br. 6. But Appellant does not explain why one of ordinary skill in
the art would be more likely to combine McAuley and Berthon-Jones in
either of the above manners, or otherwise directly address the Examiner’s
stated reason to combine the references (other than to incorrectly assert that
it was based solely on the Specification, as discussed above). Appellant also
fails to provide evidentiary support for its argument. Thus, we are not
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persuaded that the Examiner’s reason to combine McAuley and Berthon-
Jones is erroneous.
Appellant also argues that:
In any case, no combination of McAuley and [Berthon-]Jones
would result in an arrangement having a [third] portion
configured to provide for the relative positioning of a first
portion (which is adapted to sealingly engage around the nares
of a patient) and a second portion (which is adapted to sealingly
engage around the mouth of a patient) to be selectively
adjusted, such as recited in claim 1.
Appeal Br. 6. But Appellant does not explain why the Examiner erred in
finding that adjustable portion 31 of McAuley’s mask cushion corresponds
to the claimed third portion. See Final Act. 3 (annotated version of McAuley
Fig. 2 identifying adjustable portion 31 as claimed “third portion”).
Appellant does not provide evidence or persuasive argument demonstrating
that this finding is erroneous.
In the Reply Brief, Appellant elaborates on this argument. Appellant
contends that:
[T]he third portion of McAuley cited by the Examiner simply
provides for a portion of seal 30 to be adjusted in order to adjust
the spacing between such portion of seal 30 and the patient's
face (e.g., see page 4, lines 15–32 of McAuley). Hence
McAuley simply describes an arrangement which allows for
adjustment of a portion of a single encompassing member
(i.e., seal 30), and thus plainly does not disclose or suggest the
elements of claim 1 contended by the Examiner.
Reply Br. 2–3. Appellant does not explain, however, why a “portion” of
McAuley’s mask cushion 30 cannot correspond to the claimed “third
portion.” Nothing in claim 1 or the Specification requires the claimed third
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portion to be entirely separate from the claimed cushion. On the contrary,
claim 1 expressly requires the third portion to be “formed as a part of at
least one of the first portion and the second portion” of the claimed cushion.
Appeal Br. 9 (Claims. App.). Therefore, we are not persuaded that the
Examiner erred in finding that adjustable portion 31 corresponds to the
claimed third portion.
Because we are not persuaded that the Examiner erred in determining
that claim 1 is unpatentable over McAuley and Berthon-Jones, we sustain
the Examiner’s rejection of claims 1–6, 8–12, 14, and 15 on that basis.
B. Claim 13: Rejected as Unpatentable over McAuley, Berthon-
Jones, and Barlow
Claim 13 indirectly depends from claim 10. Appeal Br. 10 (Claims
App.). Appellant relies on the patentability of claim 10 to support the
patentability of claim 13. Id. at 7. Because we are not persuaded that the
Examiner erred in determining that claim 10 is unpatentable over McAuley
and Berthon-Jones, we likewise are not persuaded that the Examiner erred in
rejecting claim 13 as unpatentable over McAuley, Berthon-Jones, and
Barlow. This rejection is sustained.
CONCLUSION
The Examiner’s rejections are affirmed.
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DECISION SUMMARY
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–6, 8–12,
14, 15
103 McAuley, Berthon-
Jones
1–6, 8–12,
14, 15

13 103 McAuley, Berthon-
Jones, Barlow
13
Overall
Outcome
1–6, 8–15

TIME PERIOD FOR RESPONSE
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)(1)(iv).
AFFIRMED