Ex Parte Walker et al

Patent Trial and Appeal Board

Feb 12, 2013

11106833 (P.T.A.B. Feb. 12, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GARRY J. WALKER, DESMOND T. CURRAN,
ANDREW MURPHY, and DEREK A. PARKIN
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Appeal 2010-006765
Application 11/106,833
Technology Center 3700
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Before LINDA E. HORNER, PHILLIP J. KAUFFMAN, and
WILLIAM V. SAINDON, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Garry J. Walker et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 1-3, 5-9, 16, 18-22, and
24, which are all of the pending claims. We have jurisdiction under
35 U.S.C. § 6(b).
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We AFFIRM.
THE INVENTION
Appellants’ claimed invention “pertains to a supplied air respirator
that uses an adjustable length hose as a conduit between the respirator
facepiece and the clean air supply source.” Spec. 1, ll. 7-8. Claims 1 and 19
are independent. Claim 1, reproduced below, is illustrative of the subject
matter on appeal.
1. A supplied air respirator that comprises:
(a) a clean air supply source that is designed to be carried
by a user of the supplied air respirator;
(b) a face piece that is sized to fit at least over the user's
nose and mouth; and
(c) an adjustable length hose that extends from the clean
air supply source to the facepiece for supplying clean air to the
user; wherein the hose extends in response to tension by a user
applied along a length of the hose; and wherein the hose retracts
in the absence of tension by the user applied along the length of
the hose.
THE EVIDENCE
The Examiner relies upon the following evidence:
Leagre US 6,129,082 Oct. 10, 2000
Wright US 6,889,688 B1 May 10, 2005
Lansing US 7,061,832 B1 Jun. 13, 2006
Gossweiler US 7,082,944 B2 Aug. 1, 2006
Balla DE 702098 Jan. 2, 1941
Miller GB 1 419 841 Dec. 31, 1975
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THE REJECTIONS
Appellants seek review of the following rejections:
1. Claims 1-3, 7, 8, 18-22, and 24 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Balla, Miller, and Gossweiler.
2. Claims 5 and 6 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Balla, Miller, Gossweiler, and Lansing.
3. Claim 9 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Balla, Miller, Gossweiler, and Leagre.
4. Claim 16 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Balla, Miller, Gossweiler, and Wright.
ISSUES
Appellants argue the claims subject to the first ground of rejection as a
group. App. Br. 6-9. We select claim 1 as the representative claim, and
claims 2, 3, 7, 8, 18-22, and 24 stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011). For the remaining grounds of rejection,
Appellants argue only that the additional references of Lansing, Leagre, and
Wright fail to cure the asserted deficiencies in the combined teachings of
Balla and Miller as argued with respect to claim 1. App. Br. 9-10. As such,
the outcome of this appeal turns on our analysis of the rejection of claim 1.
Appellants argue that the Examiner erred in finding that the flexible
hose of Balla is capable of retracting on its own, as called for in claim 1 and
that the Examiner erred in the proposed modification of Balla based on
Miller because Miller teaches away from a tube that expands or contracts on
its own. App. Br. 7-8.
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The issues presented by this appeal are:
Did the Examiner show that Balla’s flexible tube is necessarily
capable of retracting on its own?
Does Miller’s asserted teaching away from a flexible retractable tube
that exhibits axial resilience render the claimed invention patentable over the
prior art?
PRINCIPLES OF LAW
“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994).
Although a reference that teaches away is a significant factor to
be considered in determining unobviousness, the nature of the
teaching is highly relevant, and must be weighed in substance.
A known or obvious composition does not become patentable
simply because it has been described as somewhat inferior to
some other product for the same use.
Id.
ANALYSIS
The Examiner found:
Balla does not specifically disclose the hose retracting in
the absence of applied tension by the user, but Balla does
disclose that in order to fix the length of the tube, the sleeve
must be secured over the tube once compressed/extended to
hold the folds of the tube in a desired position (last paragraph),
implying that the tube tends to restore to its original length after
application of tension or compression by a user.
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Ans. 4. Balla discloses only that the hose is “flexible” but does not disclose
that the hose is constructed such that it has restorative properties. We agree
with Appellants that the Examiner has not shown that Balla’s hose is
necessarily capable of restoring to its original length after application of
tension by a user. We find that it is possible from Balla’s disclosure that the
hose has no restorative properties and that the case in Balla is used simply to
clamp a limp, slack, or “flexible” hose with the sleeve. Reply Br. 3.
Nonetheless, this error is harmless as the Examiner relied on a proposed
modification of Balla’s hose based on the teachings of Miller to conclude
that the claimed invention would have been obvious.
Turning now to the proposed modification to Balla based on Miller,
the Examiner relied on the description of prior art found in Miller to show
that “extendable/retractable flexible tubes comprising a plastic material that
is disposed over a spirally-wound cord were well known and commonly
used in the art at the time the invention was made.” Ans. 4. The Examiner
determined that it would have been obvious to replace the flexible tube of
Balla with the prior art tubes discussed in Miller “because such tubes are
well known and commonly used to provide flexibility without kinking in
hoses for conveying air” and the device of Balla would perform equally well
with such tubes. Ans. 4-5. See also Ans. 9 (“Such a modification would
appear to involve the mere substitution of one well known device/method for
another to yield predictable results that do not patentably distinguish an
invention over the prior art.”).
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Appellants’ sole argument raised in the Appeal Brief against this
proposed modification is that Miller teaches away from the proposed
modification.1 A known or obvious apparatus does not become patentable
simply because it has been described as somewhat inferior to some other
apparatus for the same use. See In re Gurley, 27 F.3d at 553. A person
seeking to improve the art of length adjustable tubes for oxygen breathing
apparatuses, on learning from Miller that flexible tubes having a high degree
of resistance to axial compression or extension were inferior to flexible tubes
that retain the helix in the closed condition, might well be led to search
beyond such well known flexible tubes for improved products. However,
Miller also teaches that such flexible tubes having a helical support member
and an envelope of plastics material or textile covering the helical member
are usable and have been used for Appellants’ purpose. Appellants do not
distinguish their adjustable length hose from the prior art adjustable length
flexible hoses disclosed in the background section of Miller. On these facts,
Appellants’ teaching away argument is insufficient to establish patentability.
Even reading Miller’s description as discouraging use of such well known

1 Although the Affidavit of Garry Walker Under 37 C.F.R. § 1.132 is
provided in the Evidence Appendix to the Appeal Brief (App. Br. 14-16),
this affidavit is not discussed in the “Argument” portion of the Appeal Brief
(App. Br. 6-10) and therefore it is not clear for what purpose, if any,
Appellants seek to rely on the affidavit. As such, it will not be considered.
See 37 C.F.R. § 41.37(c)(1)(vii) (2011) (providing that the Argument portion
of the Appeal Brief shall include “[t]he contentions of appellant with respect
to each ground of rejection presented for review in paragraph (c)(1)(vi) of
this section, and the basis therefor, with citations of the statutes, regulations,
authorities, and parts of the record relied on.”).
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flexible hoses for this purpose, Appellants’ claims recite no discovery
beyond what was known to the art. See Gurley, 27 F.3d at 553.
CONCLUSIONS
The Examiner did not show that Balla’s flexible tube is necessarily
capable of retracting on its own.
Miller’s asserted teaching away from a flexible retractable tube that
exhibits axial resilience does not render the claimed invention patentable
over the prior art.
DECISION
We AFFIRM the decision of the Examiner to reject claims 1-3, 5-9,
16, 18-22, and 24.
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

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