MARTIN, RUTH E. et al.

Patent Trials and Appeals Board

Feb 25, 2020

13040048 - (D) (P.T.A.B. Feb. 25, 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.
13/040,048 03/03/2011 RUTH E. MARTIN 6298-735 2112
757 7590 02/25/2020
BGL
P.O. BOX 10395
CHICAGO, IL 60610
EXAMINER
MILLER, CHRISTOPHER E
ART UNIT PAPER NUMBER
3785
MAIL DATE DELIVERY MODE
02/25/2020 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RUTH E. MARTIN, JULIE THEURER, MICHAEL NUTTALL,
BRYAN FINLAY, BART NOWAK, and JOHN ZEHR

Appeal 2019-003691
Application 13/040,048
Technology Center 3700
____________

Before JENNIFER D. BAHR, MICHAEL J. FITZPATRICK, and
BRANDON J. WARNER, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 1–6 and 8–29. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.

1 Appellant is the “applicant” under 37 C.F.R. § 1.42(a) and identifies two
real parties in interest: The University of Western Ontario and Trudell
Medical International. Appeal Br. 1.
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STATEMENT OF THE CASE
The Specification
The Specification’s disclosure “relates generally to an air pulse
delivery device used to administer a stimulus to a human or animal to elicit
and/or facilitate a desired physiological response.” Spec. ¶2.
The Claims
Claims 1–6 and 8–29 are rejected. Final Act. 1. No other claims are
pending. Id. Claim 1 is illustrative and reproduced below.
1. A portable air pulse delivery device comprising:
a housing;
an air compressor comprising a motor disposed in said
housing, said motor operable at speeds between 1200 and 4800
rpm, said air compressor comprising an air inlet and an air
outlet;
an untethered power source disposed in said housing and
operably connected to said motor;
an intake filter disposed in said housing, said intake filter
in fluid communication with said air inlet of said air
compressor;
an outlet port coupled to said air outlet of said air
compressor and communicating with an exterior of said
housing;
a mouthpiece comprising an inlet coupled to said outlet
port and said mouthpiece further comprising an outlet
comprising a gas exit port, wherein said air compressor is
operative to produce a gas flow at said gas exit port at a
pulsation frequency of between about 20 Hz to 80 Hz when said
motor is on; and
a controller operably coupled to said motor so as to
repeatedly cycle said motor on and off in a predetermined
sequence of predetermined time periods, wherein said
predetermined sequence of predetermined time periods
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comprises a first predetermined time period and a second
predetermined time period, wherein said controller is operable
to repeatedly cycle said motor on for said first predetermined
time period and off for said second predetermined time period
over a third predetermined time period; and
a switch operably coupled to said controller and
moveable to on and off positions, wherein said controller is
operable to repeatedly cycle said motor on and off in said
predetermined sequence of predetermined time periods in
response to a single movement of said switch to said on
position, and wherein said controller is operable to prevent said
motor from operating after said third predetermined time period
without moving said switch a second time.
Appeal Br. 11–12.
The Examiner’s Rejections
The following rejections, all pursuant to 35 U.S.C. § 103(a), are
before us:
1. claims 1, 2, 4–6, 8, 13, 14, 18, 19, 21, 22, and 24–29 over
Martin,2 Bliss,3 Loyd,4 and Hansen5 (Final Act. 2);
2. claims 3, 12, and 23 over Martin, Bliss, Loyd, Hansen, and
O’Dea6 (id. at 16);
3. claims 9 and 20 over Martin, Bliss, Loyd, Hansen, and Ward7
(id. at 18);

2 WO 2006/116843 A1, published Nov. 9, 2006 (“Martin”).
3 US 7,736,132 B2, issued June 15, 2010 (“Bliss”).
4 US 2004/0025244 Al, published Feb. 12, 2004 (“Loyd”).
5 US 2002/0016560 A1, published Feb. 7, 2002 (“Hansen”).
6 US 6,705,314 B1, issued Mar. 16, 2004 (“O’Dea”).
7 US 4,604,114, issued Aug. 5, 1986 (“Ward”).
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4. claim 10 over Martin, Bliss, Loyd, Hansen, O’Dea, and Trask8
(id. at 19);
5. claim 11 over Martin, Bliss, Loyd, Hansen, O’Dea, and
Hajianpour9 (id.);
6. claims 15 and 16 over Martin, Bliss, Loyd, Hansen, and
Zimlich Jr.10 (id. at 20); and
7. claim 17 over Martin, Bliss, Loyd, Hansen, Zimlich Jr., and
Trask (id. at 21).
DISCUSSION
Rejection 1
The rejection of independent claim 1 starts with Martin, which
“discloses a portable oral air pulse delivery device.” Final Act. 2 (citing
Martin Figs. 8–9); see also Martin 4:13–17. The Examiner finds that Martin
discloses, among other things, an air compressor operative to produce a gas
flow rate at a gas exit port at a pulsation frequency up to 30 Hz, which
overlaps the recited range of between about 20 Hz to 80 Hz when the
compressor is being run. Final Act. 2–3 (citing Martin 10:20, 8:15–16, Figs.
2, 3, 8–9). The Examiner relies on a second reference, Bliss, for teaching an
air compressor having a motor operable “between 1200 and 4800 rpm” and
“an untethered power source,” as recited in claim 1. Id. at 3–4 (citing Bliss
13:19–22, 20:46–50, 31:2–6, 33:24–25, Figs. 1A, 2, 3, 5A, 7). The
Examiner relies on a third reference, Loyd, for teaching a “controller” within
the scope of claim 1. Id. at 5–6 (citing Loyd ¶¶24, 26, and 29, Figs. 1, 2, and

8 US 6,666,647 B1, issued Dec. 23, 2003 (“Trask”).
9 US 5,575,761, issued Nov. 19, 1996 (“Hajianpour”).
10 US 6,796,303 B2, issued Sept. 28, 2004 (“Zimlich Jr.”).
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4). Lastly, the Examiner relies on a fourth reference, Hansen, for teaching
an additional feature required of the controller. Id. at 6–7 (citing Hansen
¶58, Fig. 3).
The Examiner sets forth substantially similar findings and reasoning
in rejecting independent claim 13. See Final Act. 8–13.
Appellant’s arguments focus on the Examiner’s proposed
modification of an already combined Martin/Bliss in view Loyd. Appeal
Br. 6–10. Hence, our Decision focuses on the same.
Loyd discloses:
an adjustable water therapy combination comprising . . . (b) a
water pump having a suction side and a discharged side, . . .
(d) an electric motor for driving the pump, (e) a controller
capable of turning the motor on and off, the controller also
having settings for adjusting the pulsing of water discharged
from the pump, both as to frequency and duration, the controller
being capable of pulsing the electric motor on and off so as to
drive the pump in pulsing flow mode in a plurality of pulsing
flow frequencies and durations.
Loyd ¶5. Figure 4 of Loyd is reproduced below.

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Figure 4 of Loyd shows a “control panel” for use with Loyd’s water therapy
combination. Loyd ¶11.
As illustrated in FIG. 4, the control panel 22 can have 13 buttons
44. A first button 44f turns the power on. A second button 44g
turns the power off. A third button 44h turns the pump on and
off. A fourth button 44i turns the pulse mode on and off. A fifth
button 44j instructs the controller 20 to go forward through a
series of pre-set massage modes, each typically varying in
duration, frequency and amplitude. A sixth button 44k allows
the user to go backwards through the massage modes. Buttons
44l-44r allow the user to select any of 7 different pulse modes.
Id. ¶28.
It is Loyd’s controller/control panel teachings only that are
incorporated into Martin/Bliss per the Examiner’s rejection. Final Act. 6,
12; see also Ans. 23 (“Loyd was relied upon to merely modify the
controller.”). More specifically, the rejection states:
it would have been obvious to one having ordinary skill in the art
at the time the invention was made to modify the controller of
Martin/Bliss to include a control panel with the functionality to
cycle the motor on and off in a plurality of adjustable settings as
taught by Loyd so that a user is able to quickly and easily select
to operate the compressor motor at different on/off settings.
Final Act. 6, 12.
Appellant points out that Loyd “discloses a controller that turns a
motor on and off to create pulses, not a controller that turns a motor on for a
predetermined time, during which pulses are generated by a compressor.”
Appeal Br. 6; see also id. at 7 (“Yes, the controller of L[]oyd cycles a motor
on and off, but is programmed to deliver only a single pulse when on.”).
Appellant’s characterization of Loyd is accurate. See Loyd ¶23
(“Specifically, when the motor 18 is suddenly turned on, the motor 18 drives
the pump 14 and projects a pulse of water from the water inlet openings 32.
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When the motor 18 is suddenly turned off, the pump 14 suddenly stops, and
no water flows from the water inlet openings 32.”), ¶29 (disclosing seven
exemplary pulse modes, the first such mode repeatedly cycling the
compressor on for 0.5 seconds and then off for 2 seconds).
Appellant argues that a person of ordinary skill in the art would not
have incorporated Loyd’s controller feature of turning a motorized
compressor on and off for brief predetermined periods of time, the purpose
of which is to create pulses, into Martin/Bliss. Appeal Br. 5–8. We agree
with Appellant.
Martin/Bliss already emits pulses of gas. See Martin 8:13–16; see
also Ans. 22 (The Examiner acknowledges that Martin/Bliss “already . . .
generates pulses while the motor is on.”). Thus, on the record before us, a
person of ordinary skill in the art would not have a reason to incorporate
Loyd’s controller feature of turning a motorized compressor on and off for
brief predetermined periods of time (i.e., “PULSE MODES” (see Loyd Fig.
4)) into Martin/Bliss. Put differently, the Examiner’s reason for
incorporating anything from Loyd—“so that a user is able to quickly and
easily select to operate the compressor motor at different on/off settings”
(Ans. 24)—lacks rational underpinnings with respect to incorporating
Loyd’s pulse modes (during which the compressor is cycled on and off for
brief predetermined periods of time). See KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007) (“[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.” (quoting In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006)).
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Further, the prior art itself does not provide a reason for incorporating
Loyd’s controller feature of turning a motorized compressor on and off for
brief predetermined periods of time into Martin/Bliss. Loyd teaches such a
feature for the sole purpose of creating pulses. Loyd ¶¶23, 29. Thus, Loyd
does not provide a reason for incorporating such a feature into Martin, the
compressor of which already generates pulses. Martin 8:13–16.
For the foregoing reasons, we reverse the rejection of claims 1 and 13.
We likewise reverse the rejection of claims 2, 4–6, 8, 14, 18, 19, 21, 22, and
24–29, all which ultimately depend from either claim 1 or claim 13.
Rejections 2 – 7
Rejections 2–7 suffer from the same deficiency of lacking an adequate
reason for why a person of ordinary skill in the art would have modified
Martin/Bliss in view of Loyd. Although these rejections rely on additional
prior art references, they do not do so in a manner that would cure the
deficiency noted in the discussion of Rejection 1. Accordingly, we likewise
reverse Rejections 2–7.

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SUMMARY
Claims
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
1, 2, 4–6, 8,
13, 14, 18,
19, 21, 22,
24–29
103(a) Martin, Bliss,
Loyd, Hansen
1, 2, 4–6,
8, 13, 14,
18, 19, 21,
22, 24–29
3, 12, 23 103(a) Martin, Bliss,
Loyd, Hansen,
O’Dea
3, 12, 23
9, 20 103(a) Martin, Bliss,
Loyd, Hansen,
Ward
9, 20
10 103(a) Martin, Bliss,
Loyd, Hansen,
O’Dea, Trask
10
11 103(a) Martin, Bliss,
Loyd, Hansen,
O’Dea, Hajianpour
11
15, 16 103(a) Martin, Bliss,
Loyd, Hansen,
Zimlich Jr.
15, 16
17 103(a) Martin, Bliss,
Loyd, Hansen,
Zimlich Jr., Trask
17
Overall
Outcome
1–6, 8–29

REVERSED