ResMed Limited

Patent Trials and Appeals Board

Aug 18, 2020

2019006686 (P.T.A.B. Aug. 18, 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.
15/830,673 12/04/2017 Michiel Kooij BKK-4398-1757 5894
23117 7590 08/18/2020
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
08/18/2020 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 MICHIEL KOOIJ,
GERARD MICHAEL RUMMERY, and
ROBERT EDWARD HENRY

Appeal 2019-006686
Application 15/830,673
Technology Center 3700
____________

Before EDWARD A. BROWN, MICHAEL L. HOELTER, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.

HOELTER, 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 21–46, which constitute all the claims
pending in this application. See Appeal Br. 1. We have jurisdiction under
35 U.S.C. § 6(b).

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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We AFFIRM the Examiner’s rejections of these claims.
CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to a retractable tube for use in
Continuous Positive Airway Pressure (CPAP) therapy.” Spec. ¶ 2. System
claims 21 and 33 are independent. Claim 21 is illustrative of the claims on
appeal and is reproduced below.
21. A continuous positive airway pressure (CPAP) system
configured to deliver positively pressurized breathable gas to a
patient's airways, the CPAP system comprising:
a patient interface configured to sealingly engage the
patient's face;
a retractable air delivery tube configured to deliver the
breathable gas to the patient interface, the retractable air
delivery tube comprising a helical spring with a plurality of
coils that bias the retractable air delivery tube to an unextended
length that does not exceed 1 m in length, the retractable air
delivery tube being extensible by about 40-100% of the
unextended length, having an internal diameter between 10 mm
and 20 mm, having a weight per unit length of 100 g/m or less
and bowing outwardly between the coils of the helical spring;
a swivel elbow assembly connecting the patient interface
to the retractable air delivery tube; and
headgear connected to the patient interface and
configured to support the patient interface on the patient's head,
the headgear being limited to a pair of side portions that are
connectable to the patient interface and a rear portion
connecting the side portions and being configured to engage a
rear side of the patient's head.
EVIDENCE
Name Reference Date
Hammerton-Fraser US 4,316,458 Feb. 23, 1982
Corces et al. (“Corces”) US 5,156,146 Oct. 20, 1992
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Drew et al. (“Drew”) US 2004/0112385 A1 June 17, 2004
Edirisuriya et al.
(Edirisuriya”)
US 2004/0239001 A1 Dec. 2, 2004
Ragner et al. (“Ragner”) US 6,948,527 B2 Sept. 27, 2005
Davidowski et al.
(“Davidowski”)
US 2006/0144399 A1 July 6, 2006
Walker et al. (“Walker”) US 2006/0231100 A1 Oct. 19, 2006
Moulton et al. (“Moulton”) US 7,156,127 B2 Jan. 2, 2007
Sherman US 2008/0072909 A1 Mar. 27, 2008
Berthon-Jones US 2008/0099023 A1 May 1, 2008
REJECTIONS
Claims 45 and 46 are rejected under pre-AIA 35 U.S.C. § 112, second
paragraph, as being indefinite.
Claims 21–23, 26–29, 31, 33–35, 38–41, 43, 45, and 46 are rejected
under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Sherman, Moulton,
Walker, Berthon-Jones, Hammerton-Fraser, Ragner, and Drew.
Claims 24, 32, 36, and 44 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Sherman, Moulton, Walker, Berthon-Jones, Hammerton-
Fraser, Ragner, Drew, and Edirisuriya.
Claims 25 and 37 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Sherman, Moulton, Walker, Berthon-Jones, Hammerton-
Fraser, Ragner, Drew, and Corces.
Claims 30 and 42 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Sherman, Moulton, Walker, Berthon-Jones, Hammerton-
Fraser, Ragner, Drew, and Davidowski.

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ANALYSIS
The rejection of claims 45 and 46 as being indefinite
The Examiner finds that these two dependent claims “recite ‘the
extended length,’ which lacks proper antecedent basis.” Final Act. 5.
Indeed, parent claim 21 (claim 45) recites “an unextended length” while
parent claim 33 (claim 46) recites “a neutral length.” There is no indication
that Appellant disputes this rejection. See Briefs generally. We sustain the
Examiner’s rejection of claims 45 and 46 as being indefinite.
The rejection of claims 21–23, 26–29, 31, 33–35, 38–41, 43, 45, and 46
as unpatentable over Sherman, Moulton, Walker, Berthon-Jones,
Hammerton-Fraser, Ragner, and Drew
Appellant presents arguments for independent claim 21 (see Appeal
Br. 8–17) separate from arguments presented with respect to independent
claim 33 (see Appeal Br. 17–25). However, these arguments are essentially
duplicative of each other (compare Appeal Br. 8–17 with Appeal Br. 17–25)
and thus we address claims 21 and 33 together. Appellant also presents
separate arguments for claims 22 and 34, which are argued together. See
Appeal Br. 25–26. Appellant presents no separate arguments for the
remaining claims. Accordingly, we select independent claim 21 and
dependent claim 22 for review, with the remaining claims (i.e., claims 23,
26–29, 31, 33–35, 38–41, 43, 45, and 46) standing or falling with their
respectively grouped claim. See 37 C.F.R. § 41.37(c)(1)(iv).
Claim 21
Before addressing claim 21, the Examiner notes that this claim
includes the limitation “the headgear being limited to a pair of side portions
that are connectable to the patient interface and a rear portion connecting the
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side portions.” Final Act. 4 (emphasis added). The Examiner interprets this
“limited to” language as “headgear [that] only includes a pair of side
portions and a rear portion as claimed and excludes any other headgear
structure.” Final Act. 5.
On this point, the Examiner finds that the primary reference to
Sherman discloses “headgear [24] being limited to a pair of side portions” as
recited. Final Act. 7 (referencing Sherman Fig. 1); see also Ans. 19.
Appellant disagrees stating that “it is not necessary for the headgear of
Sherman to be [so] limited . . . to achieve the function of supporting the
patient interface on the patient’s face.” Appeal Br. 9. However, the same
can be said of Appellant’s device because Appellant’s Specification clearly
discusses multiple means of performing the function of supporting a patient
interface on a patient’s face. For example, compare Appellant’s Figures 1–
4 (disclosing a strap having side and rear portions that encircle a patient’s
head) with Fig. 10 (disclosing ear straps). Appellant also discusses prior
headgear that “includes a cap portion with four straps,” but Appellant
contends that this cap/four-strap assembly “may be uncomfortable . . . and
difficult to adjust.” Spec. 6.
Thus, Appellant discloses multiple ways to support a patient interface
on a patient’s face. However, consistent with the Examiner’s claim
interpretation, we understand Appellant has elected to claim less than what
Appellant may be entitled to claim by specifically only reciting headgear
having “a pair of side portions . . . and a rear portion connecting the side
portions and being configured to engage a rear side of the patient’s head.”
Appellant further contends that Sherman’s “Fig. 1 only shows one
side of the headgear and the mask” and that the user’s head and mask “block
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the view of the other side of the mask and headgear.” Reply Br. 2. Thus,
Appellant surmises that “the headgear on the other side of the face may
merely loop around the user’s left ear instead of connecting to the rear
portion.” Reply Br. 2. In other words, because Sherman’s Figure 1 fails to
fully illustrate the strap completely encircling the patient’s head (the left side
is not shown), Appellant contends that Sherman fails to disclose this
limitation.
We disagree with Appellant’s assessment which implies that a skilled
person has very limited imagination and can only rely upon that which is
overtly disclosed. The Supreme Court has instructed otherwise stating that a
skilled person is “a person or ordinary creativity, not an automaton.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Thus, in view of Figure
1 of Sherman, we are not persuaded the Examiner erred in relying on this
reference for teaching, or suggesting, the limitation of the headgear having
“a pair of side portions . . . and a rear portion connecting the side portions
and being configured to engage a rear side of the patient’s head.”
Appellant next contends the Examiner relied on improper hindsight to
reject claim 21. See Appeal Br. 10 (“one of ordinary skill would not have
been able to achieve the specific combination of air delivery tube features
recited in claim 21 without a preexisting knowledge of the specific
combination”). Appellant notes the Examiner’s reliance on seven
references, describing it as an “unnatural combination of references,” but
does not challenge any of the reasons provided by the Examiner for the
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combination of the references with Sherman.2 Appeal Br. 10. Thus,
Appellant’s “hindsight” contention lacks merit because Appellant does not
identify error by the Examiner, only that the Examiner employed references
from “disparate industries.”3 Appeal Br. 10.
Appellant next challenges the Examiner’s reliance on Walker
specifically. See Appeal Br. 11–13; Reply Br. 5–6. Walker was relied upon
by the Examiner for teaching “a respiratory tube having a length that does
not exceed 1 m (para 43).”4 Final Act. 7. Appellant further identifies the
four reasons expressed by the Examiner for combining Walker’s teachings
of air hose length with Sherman’s device (i.e., “accommodate a smaller
user,” “avoid extra slack,” “avoid entanglement,” and “ensure that the
respirator is close to the user for easier access”).5 See Appeal Br. 11; see
also Reply Br. 3, 5. Appellant acknowledges that “[t]he Examiner’s first
three rationales . . . are based on the teachings of Walker,” but that the last
one is not. Appeal Br. 12. Despite acknowledging the four independent

2 We are instructed that it “is not the number of references, but what they
would have meant to a person of ordinary skill in the field of the invention.”
In re Gorman, 933 F.2d 982, 986 (Fed. Cir. 1991).
3 Appellant further specifically states that their “remarks in the Appeal Brief
are not concerned with whether or not Moulton, Walker, Hammerton-Fraser,
and Ragner are non-analogous” art. Reply Br. 3.
4 Appellant urged the Examiner to rely on the teachings of Berthon-Jones for
tube length (see Appeal Br. 11, 12), but “[t]he Examiner chooses to ignore
the [longer] ‘length’ teaching of Berthon-Jones and rely on Walker” for tube
length instead. Reply Br. 3; see also Final Act. 7.
5 Appellant states that with respect to a CPAP system, “it is desired that the
air delivery tube dangles away from the user’s body so that the air delivery
tube can be connected to the flow generator.” Reply Br. 4. Appellant does
not explain how Walker’s shorter length would fail to accomplish the same,
just with less “dangle.”
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rationales, Appellant challenges only two of them. See Appeal Br. 12–13.
For example, Appellant states, “a longer air delivery tube does not prevent a
respirator from being close to the user” and “the actions described by
Walker that lead to entanglement likely do not occur when a user is asleep.”
Appeal Br. 13. Even assuming, arguendo, that Appellant’s concerns are
reasonable, Appellant remains silent as to the remaining two reasons the
Examiner expressed, and does not explain how or why these other two
reasons to combine with Sherman are faulty. Hence, we are not persuaded
the Examiner erred in relying on Walker for teaching a tube “having a length
that does not exceed 1 m” (Final Act. 7) or that the Examiner erred in
combining such teachings with the device of Sherman.6
Appellant further addresses the Examiner’s reliance on Moulton. See
Appeal Br. 13–15; Reply Br. 7–8. The Examiner relied on Moulton for
teaching “a retractable tube with a helical wire 22 and plastic tubing (Col. 4,
ll. 21–24) that is extensible by 100% of its unextended length (Claim 1).”
Final Act. 7. Appellant does not dispute Moulton’s teachings or the ability
of Moulton’s tube to extend “about two to about six times greater than the
length in said retracted position.” Moulton 6:23–25 (claim 1). Instead,
Appellant addresses Moulton’s expandability, stating “[s]uch issues are
irrelevant to the CPAP patient interface of Sherman.” Appeal Br. 14. In
other words, as per Appellant, “[a] CPAP system user does not have to
worry about moving the CPAP apparatus or extending its reach during a
therapy session,” and as such “the ‘stretch hose’ teaching of Moulton does

6 Appellant further states, “Walker does not teach that ‘an unextended length
that does not exceed 1 meter’ decreases slack.” Reply Br. 5. Appellant does
not explain how a shorter length fails to decrease slack.
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not apply to the CPAP system of Sherman.” Appeal Br. 14; see also Reply
Br. 7 (“the length of a CPAP air delivery tube need only span the length
from the user’s face to the flow generator”). Appellant also discusses, for
the first time via the Reply Brief, a desire for a CPAP device to be compact,
which “can be achieved by wrapping the air delivery tube.” Reply Br. 8.
In the matter before us, claim 21 recites the specific limitation of a
“retractable air delivery tube being extensible by about 40–100% of the
unextended length.” Paragraph 77 of Appellant’s Specification discusses a
stretch ratio “in a range of about 1:1–1:4” allowing the tube “to expand from
about 0% – 400%.” Appellant’s Specification indicates that these
requirements are so that “movement of the patient without breaking the seal
of the mask is maximized.” Spec. ¶ 77. Hence, Appellant is addressing the
problem of providing patient mobility without breaking the patient’s seal. In
view of this, Appellant does not explain how Moulton’s tube, which exceeds
the stretch ratio set forth in Appellant’s Specification (i.e., Moulton has a
stretch ratio of about 1:6), as well as also being “convenient to store” and of
“flexible construction” (Moulton 3:50–58), would not be of interest to a
skilled person when addressing these issues. See Ans. 22 (“Moulton is at
least reasonably pertinent to the problem sought to be solved by Appellant”),
23 (“providing extensibility of 100% provides the added benefit of allowing
for more storage convenience”). Indeed, Moulton explicitly teaches a
“Stretch Hose.” Moulton, Title. We thus are not persuaded by Appellant
(see, e.g., Reply Br. 7, 8, 10) that the Examiner erred in relying upon
Moulton for teaching such an expandable/retractable tube.7

7 Appellant also addresses the teachings of Walker and Ragner in the Appeal
Brief (see Appeal Br. 15–16), but neither reference was relied on by the
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Appellant does not address the further teachings of Hammerton-
Fraser, Ragner, and Drew or otherwise explain how the Examiner’s reliance
thereon was faulty. Appellant only addresses the further teachings of
Berthon-Jones by comparing same to the teachings of Walker regarding the
limitation discussed above of an air delivery tube whose unextended length
“does not exceed 1 m in length.” See Appeal Br. 11, 12. Appellant’s
comparison is not indicative that the Examiner erred when the Examiner
elected to rely on Walker’s length teachings instead. See Final Act. 7.
Accordingly, and based on the record presented, we are not persuaded the
Examiner erred in relying on Sherman, Moulton, Walker, Berthon-Jones,
Hammerton-Fraser, Ragner, and Drew in rejecting claim 21. We sustain the
Examiner’s rejection of claims 21, 23, 26–29, 31, 33, 35, 38–41, 43, 45, and
46 in view thereof.
Claim 22
Claim 22 depends directly from claim 21 and recites a certain level of
“bendability of the retracted air delivery tube.” The Examiner acknowledges
that “modified Sherman does not explicitly recite” this disclosure but that, in
view of both Moulton (extendibility) and Hammerton-Fraser (low density
plastic), it would have been obvious to modify Sherman’s bendable and
retractable tube with a bendability of the retractable air delivery tube” as
recited. Final Act. 9–10. The Examiner further states “that the modified
Sherman[] current tube would perform equally as well . . . to prevent a large
downward pulling force on the user’s mask and head.” Final Act. 10; see
also Hammerton-Fraser 2:60–64 (addressing a desire to “reduce the loading

Examiner for disclosing a tube with helical coils that expands/retracts as
claimed.
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at the interface member and thereby minimize the discomfort of the
patient”); Ans. 25. Appellant does not challenge this finding by the
Examiner, and instead contrasts the recited limitation with “the degree of
bending [of] other air delivery tubes in the art.” Appeal Br. 16, 26 (both
referencing Spec. ¶¶ 80–83). Based on Appellant’s comparison with “other
air delivery tubes in the art” (Appeal Br. 16, 26), Appellant contends that
“the combination of features recited in claim 22 achieves an unexpected
result.” Appeal Br. 17; see also Ans. 26 (“the claimed ‘bendability’ is an
unexpected result and would not have been obvious over the prior art”).
Paragraphs 80–83 of Appellant’s Specification provide tables of
comparison between Appellant’s “TPU/ABS” tube (Spec. ¶ 81) and
“ResMed’s Swift™ tube and Sleepnet’s IQ®” as well as “Respironic’s
Optilife™ short tube.” Spec. ¶ 83. Appellant states that the claimed tube is
“highly bendable and this is readily apparent by comparison with the tubes
of prior art masks.” Spec. ¶ 80. First, it is noted that only Appellant’s
TPU/ABS tube is identified as being “retractable” and thus it is not known if
the other tubes in the comparison are equally retractable. Second, Table 2
relied on by Appellant only addresses tubes whose stretch ratio is at most
half of Moulton’s disclosed stretch ratio of 1:6. See Moulton 6:23–25 (claim
1). As a consequence, since Moulton clearly addresses bendability and
flexibility (see Moulton 3:56–58, “the hose readily bends due to its flexible
construction”), Appellant is not persuasive the Examiner was in error when
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stating that “the modified Sherman[] current tube would perform equally as
well.”8, 9 Final Act. 10.
Accordingly, and based on the record presented, we are not persuaded
the Examiner erred in rejecting claims 22 and 34 as being obvious in view of
Sherman, Moulton, Walker, Berthon-Jones, Hammerton-Fraser, Ragner, and
Drew. We thus sustain the rejection of claims 22 and 34.
The rejection of claims 24, 32, 36, and 44 as unpatentable over
Sherman, Moulton, Walker, Berthon-Jones, Hammerton-Fraser, Ragner,
Drew, and Edirisuriya
Each of these dependent claims additionally recite “a cuff” at the end
of the tube with this “cuff being configured to connect to a humidifier or a
flow generator.” The Examiner relies on Edirisuriya for this additional
teaching. Final Act. 16, 20. There appears to be some confusion on
Appellant’s part because Appellant does not address claims 24 and 36, but
instead seems only to address claims 32 and 44. See Appeal Br. 25
(addressing “claims 22, 32, 34 and 44”). Further compounding the
confusion, when addressing claims 32 and 44, Appellant does not address
this additional reference to Edirisuriya, but instead focuses on the

8 See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Whether the rejection
is based on ‘inherency’ under 35 U.S.C. § 102, on ‘prima facie obviousness’
under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the
same, and its fairness is evidenced by the PTO’s inability to manufacture
products or to obtain and compare prior art products”).
9 Claim 22 recites a criteria whereby a weight “is attached to a free end of
the [cantilevered] unsupported portion” of the tube. This weight is such that
“the retractable air delivery tube bends at least 78 degrees from a
longitudinal axis of the supported end.” However, if the cantilevered tube is
vertically aligned and suspended from above, it is not clear how any bending
measured “from a longitudinal axis of the supported end” would ensue.
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“bendability” of the claims as discussed above with respect to claim 22. As
noted, Appellant’s position regarding “bendability” is not persuasive of
Examiner error. Further, lacking any explanation from Appellant as to why
the Examiner’s additional reliance on Edirisuriya might be improper (see
Appeal Br. 25–26), we are not persuaded the Examiner erred when rejecting
claims 24, 32, 36, and 44 as unpatentable over Sherman, Moulton, Walker,
Berthon-Jones, Hammerton-Fraser, Ragner, Drew, and Edirisuriya.
The rejection of (a) claims 25 and 37 as unpatentable over Sherman,
Moulton, Walker, Berthon-Jones, Hammerton-Fraser, Ragner, Drew, and
Corces, and (b) claims 30 and 42 as unpatentable over Sherman, Moulton,
Walker, Berthon-Jones, Hammerton-Fraser, Ragner, Drew, and Davidowski
Appellant presents no arguments for any of claims 25, 30, 37, or 42 in
view of the additionally recited references to Corces and Davidowski. We
thus sustain the Examiner’s rejections of these claims.
CONCLUSION
In summary:

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
45, 46 112,
second
paragraph
Indefinite 45, 46
21–23, 26–
29, 31, 33–
35, 38–41,
43, 45, 46
103(a) Sherman, Moulton,
Walker, Berthon-
Jones, Hammerton-
Fraser, Ragner, Drew
21–23, 26–
29, 31, 33–
35, 38–41,
43, 45, 46

24, 32, 36,
44
103(a) Sherman, Moulton,
Walker, Berthon-
Jones, Hammerton-
Fraser, Ragner, Drew,
Edirisuriya
24, 32, 36,
44

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25, 37 Sherman, Moulton,
Walker, Berthon-
Jones, Hammerton-
Fraser, Ragner, Drew,
Corces
25, 37
30, 42 Sherman, Moulton,
Walker, Berthon-
Jones, Hammerton-
Fraser, Ragner, Drew,
Davidowski
30, 42
Overall
Outcome
21–46
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED