KONINKLIJKE PHILIPS N.V.

Patent Trials and Appeals Board

Aug 26, 2021

2020005655 (P.T.A.B. Aug. 26, 2021)

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.
14/781,749 10/01/2015 NATHAN JOHN BERRY ANN 2013P00230WOUS 3839
24737 7590 08/26/2021
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
1600 Summer Street
5th Floor
Stamford, CT 06905
EXAMINER
VO, TU A
ART UNIT PAPER NUMBER
3785
NOTIFICATION DATE DELIVERY MODE
08/26/2021 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 NATHAN JOHN BERRY ANN and
WILLIAM ANTHONY TRUSCHEL
Appeal 2020-005655
Application 14/781,749
Technology Center 3700
Before JENNIFER D. BAHR, DANIEL S. SONG, and
CHARLES N. GREENHUT, Administrative Patent Judges.
GREENHUT, 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 1–15. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as KONINKLIJKE
PHILIPS ELECTRONICS N.V. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claims are directed to a critical care ventilator with mouth piece
ventilation. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A ventilation system configured to provide respiratory support
by intermittently delivering a pressurized flow of breathable gas
to a subject, the system comprising:
a pressure generator configured to generate the pressurized
flow of breathable gas for delivery to an airway of the subject;
an interface appliance configured to be at least partially
and releasably received into an airway orifice of the subject, the
interface appliance further configured to deliver the pressurized
flow of breathable gas generated by the pressure generator to the
airway of the subject;
one or more sensors configured to generate output signals
conveying information indicating whether the subject is ready to
receive the pressurized flow of breathable gas through the
interface appliance, the one or more sensors including a
positional sensor configured to generate output signals
conveying information indicating a position of the interface
appliance; and
one or more processors configured to execute one or more
computer program modules, the computer program modules
comprising:
a delivery triggering module configured to determine
whether the subject is ready to receive the pressurized flow of
breathable gas based on the output signals, wherein the subject is
determined to be ready to receive the pressurized flow of
breathable gas responsive to the position of the interface
appliance indicating that the interface appliance is received into
the airway orifice of the subject, and
a control module configured to initiate and/or terminate
delivery of the pressurized flow of breathable gas to the airway
of the subject through the interface appliance based on a
determination by the delivery triggering module as to whether
the subject is ready to receive the pressurized flow of breathable
gas, the control module further configured to control the pressure
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generator to adjust one or more parameters of the pressurized
flow of breathable gas based on a prescribed therapy regimen
designed to ventilate the subject.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Emerson US 2005/0039749 A1 Feb. 24, 2005
Cattano US 2006/0118112 A1 June 8, 2006
Prough US 2014/0058253 A1 Feb. 27, 2014

REJECTIONS
Claims 1–15 are rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement. Final Act. 3.
Claims 1–15 are rejected under 35 U.S.C. § 112(b) as being indefinite.
Final Act. 4.
Claims 1, 3–6, 8–11, and 13–152 are rejected under 35 U.S.C.
§ 102(a)(1) as anticipated by Cattano or, in the alternative, under 35 U.S.C.
§ 103 as obvious over Cattano and Prough. Final Act. 11.
Claims 2, 7, and 12 are rejected under 35 U.S.C. § 103 as being
unpatentable over Cattano, Prough, and Emerson. Final Act. 27.

OPINION
Claim Interpretation in view of § 112(f)
Although Appellant and the Examiner debate on the matter, whether
§ 112(f) is invoked for purposes of the “positional sensor” limitation of

2 Claims 2, 7 and 12 appear to have been inadvertently included in this
rejection in the Final Action. Compare Final Act. 11, with Ans. 12.
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claims 1 and 6 is not really outcome determinative in this case. Rather, the
result of that inquiry just dictates whether claims 1 and 6 are more
appropriately rejected as not being in compliance with paragraph (b) of
§ 112, or paragraph (a) of that section. Ultimately, for the claims in which
§ 112(f) is invoked, there becomes an issue determining the so-called
“corresponding structure, material, or acts” in the Specification, rendering
the claims not in compliance with § 112(b). However, if one concludes that
§ 112(f) is not invoked, although the reader may be able to determine that
claims 1 and 6 encompass a very broad class of “positional sensor[s]” as
Appellant argues, the Specification still lacks sufficient detail under § 112(a)
to demonstrate that Appellant was in actual or constructive possession of
such sensors for performing the recited function of “generat[ing] output
signals conveying information indicating a position of the interface
appliance” as required by claims 1 and 6, or of the “position of the means for
delivering” in claim 11. Despite the statutory order of the paragraphs, one is
not truly in a position to determine if the claimed subject matter is
adequately described under § 112(a) before one can definitively ascertain
what subject matter they encompass as required by § 112(b). In re Moore,
439 F.2d 1232, 1235 (CCPA 1971).
Claim 1 recites:
an interface appliance configured to be at least partially and
releasably received into an airway orifice of the subject
. . .
a positional sensor configured to generate output signals
conveying information indicating a position of the interface
appliance[.]
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Claim 11 recites:
means for delivering the pressurized flow of breathable gas to the
airway of the subject at least partially and releasably received
into an airway orifice of the subject;
. . .
positional means configured to generate output signals
conveying information indicating a position of the means for
delivering[.]
As can be seen from the portions of claims 1 and 11 quoted above,
claim 1 recites the term “positional sensor” in place of the term “positional
means” used in claim 11. Claim 6 also calls for a “positional sensor” and
recites the functional language associated with the “positional sensor” of
claim 1 as an active, manipulative step.
Appellant and the Examiner agree that the “positional means” of at
least claim 11 should be construed to invoke 35 U.S.C. § 112(f). Final Act.
4–10; Appeal Br. 6. The Examiner states that the limitations “a positional
sensor configured to generate output signals conveying information
indicating a position of the interface appliance” in claim 1 and “a positional
sensor” in claim 6 should also be construed to invoke 35 U.S.C. § 112(f).3
Final Act. 4–10.
Appellant disagrees and contends that “positional sensor” does not
invoke § 112(f) by analogizing the “positional sensor” to the “digital
detector” in Personalized Media.4 Appeal Br. 6. Appellant reasons that

3 The Examiner also interprets the limitation “positional means configured to
generate output signals conveying information indicating a position of the
means for delivering” under § 112(f). Final Act. 4–10. Appellant agrees that
the “positional means” limitation “is in means plus function claim format.”
Appeal Br. 6.
4 Personalized Media Commc’ns LLC v. Int’l Trade Comm'n, 161 F.3d 696,
704–05 (Fed. Cir. 1998).
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“[t]he term ‘sensor’ is in the same category of terms as ‘detector’” and “are
often interchangeable with one another.” Id. Appellant further analogizes to
Personalized Media reasoning that “the term ‘positional’ before the term
‘sensor’ makes that term even more structurally definite.” Id. Appellant
further argues that the term “positional means” of claim 11 refers to a
“positional sensor,” which is sufficient corresponding structure to satisfy the
requirements of § 112 paragraphs (a), (b), and (f).
On the record presently before us, the Examiner has the better
position. Appellant and the Examiner generally agree on the legal standards
involved here. A claim limitation that does not use “means” or “step” creates
a rebuttable presumption that § 112(f) does not apply. See Williamson v.
Citrix Online, LLC, 792 F.3d 1339, 1348–49 (Fed. Cir. 2015). The
presumption may be overcome if the claim limitation does not recite
sufficient definite structure or recites function without reciting sufficient
structure for performing that function. Id. at 1349.
The court in Personalized Media analyzes whether the limitation
“digital detector” recites sufficient definite structure by considering the
intrinsic and extrinsic evidence of what one skilled in the art would
understand the term “detector” to mean. See Personalized Media, 161 F.3d
at 704–705. The court’s decision was based on one skilled in the television
broadcasting arts. Id. Every case must be considered on its own facts and in
the proper context. In this particular case, the invention is directed towards a
ventilator in the medical device arts and thus requires a separate analysis
from that in Personalized Media. The relevant inquiry under § 112(f) is not
necessarily resolved merely based on whether the terms “sensor” and
“detector” share certain similarities in the abstract, or as Appellant puts it,
whether “[t]he term ‘sensor’ is in the same category of terms as ‘detector.’”
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The question is whether the term “sensor,” in this particular context, i.e.,
considering Appellant’s Specification and any relevant extrinsic evidence,
carries with it a definite structural meaning that would be understood by one
skilled in the art. That inquiry is not well-developed by the mere reference to
an allegedly similar term in a different and distinct case.
On the record presently before us, Appellant has not directed our
attention to any subject matter in Appellant’s Specification or submitted any
evidence to support Appellant’s contention that the phrase “positional
sensor” in this context carries with it a definite structural meaning. Appellant
is in the best position to direct our attention to exemplary structure in
Appellant’s Specification, or elsewhere, that would fall within the scope of
this phrase, but Appellant has not done so. The Merriam-Webster dictionary
defines “sensor” as (1): a device that responds to a physical stimulus (such
as heat, light, sound, pressure, magnetism, or a particular motion) and
transmits a resulting impulse (as for measurement or operating a control).5
The dictionary definition for “sensor” does not include definite structure.
Instead, “sensor” is defined only in terms of the generic placeholder
“device” and its function: responding to a stimulus and transmitting an
impulse. Thus, all a reader of Appellant’s claims and Specification knows is
that, in this context, Appellant is referring to some structure, or some class
of structures based entirely on what they do, here, generating signals
conveying information indicating position. In this sense, the term “sensor” is
really no different than the terms “means,” “device,” or any other generic
place holder, in that it does not connote any specific structure. Thus, the

5 https://www.merriam-webster.com/dictionary/sensor last accessed Aug.
24, 2021
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Examiner reasonably concluded that the term “positional sensor,” in the
particular contexts of claims 1 and 6, lacks a sufficiently definite structural
meaning so as to preclude the application of § 112(f) here.
Because, for the reasons explained above, the record presently before
us weighs in favor of the Examiner’s position, that § 112(f) is invoked, even
in claims 1 and 6, we continue our indefiniteness analysis with that
understanding. However, as noted above, this interpretation is not outcome
determinative, at least with regard to the rejection under § 112(a).

The requirements of 35 U.S.C. § 112(a) and (b)
The requirements of 35 U.S.C. § 112(a) and (b) are separate and
distinct. Appellant’s combined analysis (Appeal Br. 5–6), in contravention
37 C.F.R. § 41.37(c)(1)(iv), does not make clear what points Appellant
believes relevant to each inquiry. We address Appellant’s arguments and
interpret their relevance to each statutory section as best as we understand
them .

Indefiniteness Rejection of Claims 1-15
The Examiner rejects claims 1, 6, and 11 for failing to disclose the
corresponding structure, material, or acts for the limitations “a positional
sensor configured to generate output signals conveying information
indicating a position of the interface appliance” in claim 1, “a positional
sensor” in claim 6,6 and “positional means configured to generate output
signals conveying information indicating a position of the means for

6 Although claim 6 is a method claim, the issue raised by the Examiner
relates to the corresponding structural aspects of the claim.
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delivering” in claim 11 which invoke § 112(f). Final Act. 4–5. The Examiner
states:
[T]he specification does not have support for what structure
corresponds to the “positional means” or “positional sensor”, a
positional sensor and positional means in the art are generic
terms, and hold no specific structure[.]
Id.
In addition to contending that these limitations do not invoke § 112(f)
as discussed above, Appellant contends that “[t]hose skilled in the art would
understand that the claimed ‘positional means’ is a position sensor, which is
a structure that is very well known in the art.” Appeal Br. 6.
With regard to support for claim limitations invoking § 112(f), MPEP
§ 2181(III) succinctly summarizes the relevant case law:
The disclosure must be reviewed from the point of view of one
skilled in the relevant art to determine whether that person would
understand the written description to disclose the corresponding
structure, material, or acts. Tech. Licensing Corp. v. Videotek,
Inc., 545 F.3d 1316, 1338, 88 USPQ2d 1865, 1879 (Fed. Cir.
2008); Med. Instrumentation & Diagnostics Corp. v. Elekta AB,
344 F.3d 1205, 1211-12, 68 USPQ2d 1263, 1269 (Fed. Cir.
2003). To satisfy the definiteness requirement under 35 U.S.C.
112(b) or 35 U.S.C. 112, second paragraph, the written
description must clearly link or associate the corresponding
structure, material, or acts to the claimed function. Telcordia
Techs., Inc. v. Cisco Systems, Inc., 612 F.3d 1365, 1376, 95
USPQ2d 1673, 1682 (Fed. Cir. 2010). A rejection under 35
U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph is
appropriate if the written description fails to link or associate the
disclosed structure, material, or acts to the claimed function, or
if there is no disclosure (or insufficient disclosure) of structure,
material, or acts for performing the claimed function. Donaldson,
16 F.3d at 1195, 29 USPQ2d at 1850.
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Appellant has provided no evidence that “a positional sensor” would
be understood to correspond to definite structure sufficient to perform the
recited function of “generat[ing] output signals conveying information
indicating a position of the interface appliance” or that corresponding to the
similar language in claims 6 and 11. There may be many structures that may
fall within the broad class of things regarded as a “positional sensor” per se.
However, the claims require a specific subset of only such things that are
capable of, again using the language of claim 1 as an example, “generat[ing]
output signals conveying information indicating a position of the interface
appliance.” The skilled artisan is left to speculate as to what particular
structures are capable of achieving that recited functional goal.
37 C.F.R. § 41.37(c)(1)(iii) indicates that:
[I]f the claim contains a means plus function or step plus function
recitation as permitted by 35 U.S.C. 112(f), then the concise
explanation must identify the structure, material, or acts
described in the specification in the Record as corresponding to
each claimed function with reference to the specification in the
Record by page and line number or by paragraph number, and to
the drawing, if any, by reference characters.
This section requires an appellant to clarify what precise structure should be
interpreted as the “corresponding structure, material, or acts” for purposes of
§ 112(f). Appellant’s attempt to comply with this section, merely citing
“Specification, e.g., ¶¶6, and 26-31; and FIG.1” (Appeal Br. 4) is far from a
“concise explanation” of that.
Appellant further contends, “[t]here is no requirement for the
Appellant to describe or disclose all possible structures or working
embodiments. Only a single example of a working embodiment is required,
and that single example need not be limiting of the claims.” Reply Br. 4.
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Regardless of the correctness of this contention, Appellant has not pointed to
a particular working embodiment. The Specification discloses an
embodiment utilizing a pressure sensor to determine the patient is ready to
receive pressurized flow of breathable gas. Spec. ¶¶ 29, 37. In this
embodiment, the pressure sensor detects a negative pressure at the
mouthpiece which corresponds to an inspiratory effort. Id. However, this
embodiment appears distinct from the embodiment in which a “positional
sensor” is utilized because the Specification discloses positional sensors as
separate from pressure sensors. Spec. ¶ 30. The Specification further
distinguishes readiness of the subject based on the position of the interface
appliance and readiness of the subject based on inspiratory effort. Spec.
¶ 29. Thus, paragraphs 29 and 30 cited by Appellant do not support the
contention that the Specification discloses a working embodiment of a
“positional sensor” performing the functions recited in the claims.
Claims invoking § 112(f) clearly fail to pass muster under § 112(b) if
one cannot identify the so-called “corresponding structure, material, or acts”
in the Specification. However, regardless of whether § 112(f) is invoked,
claims must be read in light of the Specification. That exercise is, at best,
complicated where, as here, the Specification lacks any concrete examples
detailing the preferred embodiment for the structures, materials, or acts
associated with “positional sensors” for achieving the recited function of
“generat[ing] output signals conveying information indicating a position of
the means for delivering.” Thus, even were we to agree with Appellant that a
“positional means” refers to a “positional sensor” and that is sufficient
“corresponding structure” and recitations of “positional sensor” themselves
invoke sufficient structure to fall outside the scope of § 112(f), there would
still be some uncertainty as to the proper scope to afford the claims under
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§ 112(b) because no actual examples of structure or acts demonstrating how
the functions associated with the positional sensor are achieved are provided
in Appellant’s Specification. Appellant does not supplement the record with
any extrinsic evidence on this point either.
Appellant apparently would have us simply consider the claims as
being very broad as opposed to being indefinite, essentially proposing that
we read them to encompass any combination of structures and acts that can
reasonably be equated to a “positional sensor” that can “generate, with the
one or more sensors, output signals conveying information indicating a
position of the interface appliance.” That is likely an unreasonably broad
interpretation of the claims. One may be tempted to read the claims in this
manner when considering the claims in isolation. However, claims must be
read in light of the Specification of which they are a part, not in isolation.
Courts have recognized that “[a] claim, although clear on its face, may . . .
be indefinite when a conflict or inconsistency between the claimed subject
matter and the specification disclosure renders the scope of the claim
uncertain as inconsistency with the specification disclosure or prior art
teachings may make an otherwise definite claim take on an unreasonable
degree of uncertainty. See, e.g., In re Cohn, 438 F.2d 989, 993 (CCPA 1971)
and In re Moore, 439 F.2d at 1235–36 (both discussed at MPEP § 2173.03).
In light of Appellant’s disclosure on the subject, or more precisely, the lack
thereof, the better approach during prosecution before the PTO is, as the
Examiner has done, to require Appellant to come forward with evidence or
explanation on the record to resolve this ambiguity. See In re Zletz, 893 F.2d
319, 321–22 (Fed. Cir. 1989) (The process of patent prosecution is an
interactive one, where “claims can be amended, ambiguities should be
recognized, scope and breadth of language explored, and clarification
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imposed. . . . An essential purpose of patent examination is to fashion claims
that are precise, clear, correct, and unambiguous. Only in this way can
uncertainties of claim scope be removed, as much as possible, during the
administrative process.”). Appellant has not done so.
For the foregoing reasons, we sustain the Examiner’s rejection of
claims 1–15 under § 112(b).

Written Description Rejection of Claims 1-15
Above, we commented that one is not truly in a position to determine
if the claimed subject matter is adequately described under § 112(a) before
one can definitively ascertain what subject matter they encompass as
required by § 112(b). In such situations examiners are generally advised to
avoid piecemeal examination “[b]y rejecting each claim on all reasonable
grounds available.” MPEP § 2173.06. For the sake of compact prosecution
we reach the Written Description rejection as well.
Above we concluded that § 112(f) was invoked in claims 1 and 6 in
addition to claim 11. The invocation of § 112(f) does not absolve the
applicant of the requirement to comply with the Written Description
requirement of § 112(a). Indeed, as MPEP § 2181(IV), summarizing the
relevant case law,7 comments:
Merely restating a function associated with a means-plus-
function limitation is insufficient to provide the corresponding
structure for definiteness…It follows therefore that such a mere
restatement of function in the specification without more

7 Noah Systems, Inc. v. Intuit Inc., 675 F.3d 1302, 1317 (Fed. Cir. 2012);
Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1384 (Fed. Cir.
2009); Aristocrat Techs. Australia Pty Ltd. v. Intern. Game Tech., 521 F.3d
1328, 1334 (Fed. Cir. 2008).
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description of the means that accomplish the function would also
likely fail to provide adequate written description under section
112(a).
For purposes of our analysis under § 112(a), however, we can also
consider the claims under the alternative construction that the Appellant
appears to advocate (Appeal Br. 6), where “positional means” in claim 11
refers to a “positional sensor” and that is sufficient “corresponding
structure” to comply with § 112 paragraphs (b) and (f), and recitations of
“positional sensor” themselves in claims 1 and 6 invoke sufficient structure
to fall outside the scope of § 112(f). Regarding such situations, our
reviewing court’s predecessor remarked that
‘Functional’ terminology may render a claim quite broad. By its
own literal terms a claim employing such language covers any
and all embodiments which perform the recited function.
Legitimate concern often properly exists, therefore, as to whether
the scope of protection defined thereby is warranted by the scope
of enablement indicated and provided by the description
contained in the specification.
In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). That is, the language may
be so “broad that it causes the claim to have a potential scope of protection
beyond that which is justified by the specification disclosure.” Id.
An absence of the so-called “corresponding structure” in the
Specification can often weigh against compliance with the Written
Description requirement. This can happen when a skilled artisan cannot
recognize within Appellant’s disclosure, or the general knowledge available
to the skilled artisan, sufficient details regarding how a recited function,
whether associated with “means” language or not, is achieved. This is
because the disclosure or general availability of such details would be
expected of one “in possession of” the subject matter in question. The
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ultimate and proper standard for analysis of the written description
requirement under § 112(a) is not whether there is merely a disclosure of
something that may be characterized as “corresponding structure” (Final
Act. 3; Appeal Br. 6), but whether the invention is described in sufficient
detail to demonstrate an applicant has possession of, and thus actually
invented, the invention claimed. Ariad Pharms., Inc. v. Eli Lilly & Co., 598
F.3d 1336, 1351 (Fed. Cir. 2010). That requirement is not necessarily
satisfied by coupling a description of a desired result with a generic structure
or step.8
The examiner bears the initial burden of presenting evidence or
reasoning to explain why one skilled in the art would not recognize in the
original disclosure a description of the invention defined by the claims. See
In re Wertheim, 541 F.2d 257, 263 (CCPA 1976) (“[T]he PTO has the initial
burden of presenting evidence or reasons why persons skilled in the art
would not recognize in the disclosure a description of the invention defined
by the claims.”). The burden then shifts to the applicant to cite to the
examiner where adequate written description could be found because the
applicant is generally in the best position to do so. See Hyatt v. Dudas, 492
F.3d 1365, 1371 (Fed. Cir. 2007).
Again, claim 1 recites the limitation “one or more sensors including a
positional sensor configured to generate output signals conveying
information indicating a position of the interface appliance.” Claim 6 recites
“one or more sensors including a positional sensor.” Claim 11 recites the
limitation “means for generating output signals include positional means

8 See, e.g., “Examining Computer-Implemented Functional Claim
Limitations for Compliance With 35 U.S.C. 112.” 84 Fed. Reg. 57 (Jan. 7,
2019); MPEP § 2161.01(I).
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configured to generate output signals conveying information indicating a
position of the means for delivering.”
The Examiner rejected claims 1, 6, and 11, and their dependent claims
for failing to meet the written description requirement. The Examiner stated:
The claims claimed a position sensor and a positional means for
generating output signals conveying information indicating a
position of the interface appliance, but does not disclose what
structure corresponds to the positional sensor/means is and how
the positional sensor/means measure or determine the position of
the interface appliance.
Final Act. 3. In doing so, the Examiner reasonably identified the precise
subject matter for which clarification was sought.
Appellant contends that the structure of a position sensor is “very well
known in the art.” Appeal Br. 6. Appellant further contends:
In the instant case, it is clear that the Specification conveys with
reasonable clarity to those skilled in the art that Appellant was in
possession of the claimed invention, including the recitation of
the hardware structure and the functional steps to operate the
hardware structure.
Reply Br. 3.
Appellant’s argument consists of only generic assertions unsupported
by evidence or detailed explanation. Appellant has cited to where in the
Specification the term “positional sensor” is used, but mere repetition of
terms does not necessarily equate to a description sufficient to demonstrate
possession in satisfaction of the requirements of § 112(a). Appellant’s
arguments directed towards the written description requirement appear to
rely entirely on understanding in the art as opposed to inventive disclosure in
Appellant’s Specification, yet Appellant has not presented any evidence of
such knowledge in the art. Appellant has not provided any evidence that a
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“positional sensor” capable of “generat[ing] output signals conveying
information indicating a position of the interface appliance” was known in
the art so that it need not be described to the skilled artisan in greater detail
than by name and desired function alone. Appellant has not pointed to any
exemplary positional sensors known in the art, nor has Appellant attempted
to describe what information indicating a position such sensors would
convey, or how the position would be determined from such information. As
discussed above, the Specification describes positional sensors as separate
from pressure sensors. Thus, to the extent it is Appellant’s position, it is not
clear on the record presently before us, why Appellant seems to believe
disclosures relating to pressure sensors should be regarded as providing
descriptive support for “positional sensors” under § 112(a) where
Appellant’s Specification seems to distinguish the two types of sensors. Due
to the lack of disclosure with regard to “positional sensors” and more
particularly ones capable of “generat[ing] output signals conveying
information indicating a position of the interface appliance,” the
Specification fails to demonstrate that Appellant was in actual or
constructive possession of the subject matter presently claimed.
For the foregoing reasons, we sustain the Examiner’s rejection of
claims 1–15 under § 112(a).

Prior Art Rejections of Claims 1-15
Generally, before a proper review of the rejection under 35 U.S.C. §§
102 or 103 can be performed, the subject matter encompassed by the claims
on appeal must be reasonably understood without resort to speculation. See
In re Steele, 305 F.2d 859, 862 (CCPA 1962) (A prior art rejection cannot be
sustained if the hypothetical person of ordinary skill in the art would have to
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make speculative assumptions concerning the meaning of claim language.);
see also In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (“If no reasonably
definite meaning can be ascribed to certain terms in the claim, the subject
matter does not become obvious—the claim becomes indefinite.”). Although
we have affirmed the § 112(b) rejection above, as with the § 112(a)
rejection, for the sake of completeness, we reach the prior-art rejections
based on the broader construction of “positional sensors” discussed above.
The Examiner rejects claim 1 as anticipated, or in the alternative,
obvious over Cattano in view of Prough.
Appellant contends:
[Cattano] does not describe a positional sensor configured to
generate output signals conveying information indicating a
position of the interface appliance. [Cattano]’s patient sensor
cannot be interpreted as a positional sensor that indicates a
position of the interface appliance. Detecting presence and/or
absence of the patient is not the same as determining position of
an interface appliance.
Appeal Br. 8 (emphasis omitted).
Cattano discloses “when the respiratory interface is appropriately
positioned over the patient’s face, the sensor will operate to detect the
patient’s presence.” Cattano ¶¶ 33, 114 (emphasis added). “Detecting
presence and/or absence of the patient” may not be “the same as determining
position of an interface appliance.” However, the Examiner does not rely on
“detecting presence and/or absence of the patient,” per se, as disclosing the
recited “positional sensor” or “positional means.” Final Act. 12–13. Rather,
the Examiner relies on the fact that Cattano indicates that such detection is
said to occur in Cattano when Cattano’s interface is “appropriately
positioned,” which implies the ability of Cattano’s sensor to convey
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information indicative of the position of the interface. As such, a person of
ordinary skill in the art would understand other uses of “detect the patient’s
presence” to include sensing position of the respiratory interface on the
patient’s face. For embodiments using an endotracheal tube,9 a person of
ordinary skill in the art would understand the equivalent of “on the patient’s
face” to be “in the patient’s trachea,” which also amounts to a “position.”
Appellant’s comment that “[d]etecting presence and/or absence of the
patient is not the same as determining position of an interface appliance”
raises precisely the type of issue that becomes difficult to address where
Appellant’s Specification lacks any concrete examples of how Appellant
actually determines position. For all one knows based on Appellant’s
disclosure, which does not elaborate on the subject, Appellant may use
precisely the same structures and acts as Cattano or completely different
ones. As we employ a broad reading of “positional sensor” for purposes of
our prior-art analysis we see no reason to exclude from the term “positional
sensor” the subject matter of Cattano that Appellant asserts that we should.
Appellant has provided no examples inconsistent with those in Cattano and
certainly no clear disavowal of such subject matter.
Appellant further contends:
[T]here is no description at all in [Cattano], of “a delivery
triggering module configured to determine that the subject is
ready to receive the pressurized flow of breathable gas based on
the output signals” or a delivery triggering module wherein “the
subject is determined to be ready to receive the pressurized flow
of breathable gas responsive to the position of the interface
appliance indicating that the interface appliance is received into
the airway orifice of the subject.”

9 Cattano ¶ 33.
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Appeal Br. 8.
Cattano contains no verbatim disclosure of a determination of “ready
to receive.” However, the interpretation of “ready to receive” in Appellant’s
claim 1 must be given the broadest reasonable interpretation in light of the
Specification. Appellant’s Specification states “in an embodiment where
interface appliance 160 is a mouthpiece, readiness of subject 105 is indicated
when subject 105 receives interface appliance 160 in his/her mouth and/or
makes an inspiratory effort.” Spec. ¶ 29. Therefore, in light of the
Specification, “ready to receive” is determined when the interface appliance
is in the patient’s mouth. As discussed above, Cattano equates patient’s
presence to the positioning of the respiratory interface on or in the patient.
Cattano discloses that the sensor then generates a signal that is transmitted to
the flow generator to activate the apparatus. Cattano ¶¶ 33, 114. Therefore,
Cattano discloses a means for determining the subject is ready to receive the
pressurized flow of breathable gas based on the output signals when the
limitation is interpreted in light of Appellant’s Specification.
The obviousness rejection is presented in the alternative in the case
that the sensor disclosed by Cattano is not considered a positional sensor. As
we have found that the sensor disclosed by Cattano determines that the
interface is positioned in/on the patient, the sensor may be considered a
“positional sensor” since it is determining position. Therefore, the alternative
obviousness rejection is cumulative and unnecessary. We nevertheless
address Appellant’s arguments in this regard for the sake of completeness.
Appellant contends:
The Office Action 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 teachings of guiding and
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assisting a healthcare provider with placement of an invasive
medical device (endotracheal tubes of [Prough]) to the non-
invasive sleep apnea system of [Cattano]. . . . [T]here is no
indication in [Prough] on how or why the optoacoustic sensor
would be used in a non-invasive respiratory therapy device for
treating sleep apnea.
Appeal Br. 10.
The Examiner identifies the motivation to combine as “to determine
the proper placement of an endotracheal tube within a patient.” Final Act.
15–16. As the use of an endotracheal tube is expressly contemplated by
Cattano,10 determining proper placement of the endotracheal tube utilizing
the sensors disclosed by Prough would have been recognized by one skilled
in the art as a predictable improvement. This motivation does not rely on
Appellant’s disclosure as Appellant contends. Cattano explicitly discloses
the use of endotracheal tubes (Cattano ¶ 33), which Appellant has
characterized as an invasive respiratory therapy device. Therefore, we find
no basis for Appellant’s characterization of Cattano as non-invasive in
comparison to Prough. Cattano’s express suggestion to use endotracheal
tubes provides both a motivation and at least a reasonable expectation of
success in making the Examiner’s proposed modification. See In re
O’Farrell, 853 F.2d 894, 903–04 (Fed. Cir. 1988) (absolute predictability
that the substitution will be successful is not required, all that is required is a
reasonable expectation of success).
For the foregoing reasons, we sustain the Examiner’s rejection of
claims 1–15 as anticipated by Cattano, and in the alternative as obvious in
view of Cattano over Prough.

10 Cattano ¶ 33.
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Claims 2, 7, and 12 are alternatively rejected over Cattano in view of
Prough and Emerson. Claims 2, 7, and 12 depend from claims 1, 6, and 11
respectively. See Appeal Br. 13–16 (Claims App.). Appellant does not
present arguments for claims 2, 7, and 12 separate from those presented for
claims 1, 6, and 11. See Appeal Br. 7. As we find no deficiencies in the
Examiner’s rejection of claims 1, 6, and 11 as unpatentable over Cattano and
Prough, for the reasons discussed above, we likewise sustain the Examiner’s
rejection of claims 2, 7, and 12 as unpatentable over Cattano, Prough, and
Emerson.
CONCLUSION
The Examiner’s rejections are AFFIRMED.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–15 112(a) Written
Description
1–15
1–15 112(b) Indefiniteness 1–15
1, 3–6, 8–
11, 13–15
102 Cattano 1, 3–6, 8–
11, 13–15

1, 3–6, 8–
11, 13–15
103 Cattano, Prough 1, 3–6, 8–
11, 13–15

2, 7, 12 103 Cattano, Prough,
Emerson
2, 7, 12
Overall
Outcome
1–15

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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)(1)(iv) (2009).
AFFIRMED