DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In view of the Appeal Brief filed on 08/03/2026, PROSECUTION IS HEREBY REOPENED. New grounds of rejection are set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below.
/BRANDY S LEE/ Supervisory Patent Examiner, Art Unit 3785
Response to Amendment
The amendment filed 05/18/2026 has been entered. Claims 39-43 and 46-55 remain pending in the application, with claims 56-58 remaining withdrawn. Applicant’s amendments to the claims have overcome the objections and 112(b) rejections previously set forth in the Final Rejection mailed 03/19/2026.
Response to Arguments
Applicant's arguments filed in the Appeal Brief received 08/03/2026 have been fully considered.
The argument on page 8 that Tiemann (US 2019/0269966 A1) is not qualified as prior art, as being commonly owned by the same entity as the instant application, is persuasive. The rejection over Tiemann has been withdrawn.
The arguments over Tiemann have been considered, but are moot since the rejection over Tiemann has been withdrawn. Please refer to the updated rejection detailed below over Callaghan and Husted.
The argument on page 15 that Girard does not disclose the placement of “at least one interface and/or the at least one cable connection are arranged laterally on the housing system in the at least two mounting positions” according to claim 47 has been considered, but is not persuasive. However, due to the update rejection, Girard is not relied upon to reject the claims. Please see the rejection below of claims 46-47 as obvious in view of Callaghan.
The argument on pages 16-17 that Callaghan does not disclose a handle has been considered, but is not persuasive. Drawings can be used as prior art; see MPEP 2125(I) and 2121.04: “Drawings and pictures can anticipate claims if they clearly show the structure which is claimed. In re Mraz, 455 F.2d 1069, 173 USPQ 25 (CCPA 1972). However, the picture must show all the claimed structural features and how they are put together. Jockmus v. Leviton, 28 F.2d 812 (2d Cir. 1928). The origin of the drawing is immaterial. For instance, drawings in a design patent can anticipate or make obvious the claimed invention as can drawings in utility patents. When the reference is a utility patent, it does not matter that the feature shown is unintended or unexplained in the specification. The drawings must be evaluated for what they reasonably disclose and suggest to one of ordinary skill in the art. In re Aslanian, 590 F.2d 911, 200 USPQ 500 (CCPA 1979).” (emphasis added). In this case, it is reasonable for one of ordinary skill in the art to consider the elongated opening in fig. 5B to be a handle, particularly since the ventilator is disclosed to be portable (col. 6 line 9) as well as repositionable (fig. 5B and col. 17 lines 42-48). Figure 5B also clearly shows that the device handle is positioned “such that the handle system can be reached in both mounting positions by an operator standing in front of the respiratory therapy device”, as required by claim 48.
The argument that Callaghan does not have a “tilting edge” is not persuasive. Claim 50 recites “wherein the housing element comprises at least one housing edge designed as a tilting edge, the tilting edge being resilient and/or reinforced and/or rounded”. “Designed as a tilting edge” is considered to be a functional limitation reciting what the housing edge does, rather than what it is. Meanwhile “the tilting edge being resilient and/or reinforced and/or rounded” positively recited features of the tilting edge. In this case, the resilient edge disclosed by Callaghan (fig. 5B, col. 17 lines 63-67, “rubber or other absorbable bumpers, e.g., extending around the periphery of the ends to reduce the risk of damage…”) fulfills the positively recited characteristics of the claimed tilting edge, and one of ordinary skill in the art would have been able to recognize the interchangeability of the element shown in the prior art for the corresponding element disclosed in the specification, along with insubstantial differences between the prior art element and the corresponding element disclosed in the specification (see MPEP 2183).
The remaining arguments are moot, since the rejection has been updated.
The argument on pages 19-20 against the NEMA reference have been considered; however, the rejection has been updated to use the IEC standard, which is the origin of the previously cited NEMA reference. Please see the updated rejection below.
Claim Objections
Claim 50 is objected to because of the following informalities: line 2 recites “housing element” where the claim term “housing system” has previously been recited. It appears that this is a typographical error, and the term has been interpreted to mean “housing system”.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 39 are rejected under 35 U.S.C. 103 as unpatentable over Callaghan et al. (US 9707371 B2), hereafter Callaghan, in view of Huster et al. (US 2008/0000477 A1) hereafter Huster, further in view of Ouchi (WO 2014/083593 A1), hereafter Ouchi. A machine translation of Ouchi is relied upon to address claims.
Regarding Claim 39, Callaghan discloses a respiratory therapy device (abstract, ventilator) for generating a respiratory air stream for carrying out respiratory therapy (col. 2 lines 13-15), wherein the device comprises at least one housing system (fig. 5B, housing 12, col. 6 line 10) for accommodating device components respiratory therapy device (col. 6 line 11), the housing system comprising at least a first mounting surface (fig. 5B, the bottom surface on the horizontally mounted position) and a second mounting surface (fig. 5B, the side surface on the vertically mounted position) on its outside (both the bottom and the side are located on the outside surface of the housing 12), such that the respiratory therapy device can be mounted and operated as intended in at least two mounting positions (fig. 5B shows two mounting positions, horizontal and vertical).
Callaghan is silent on wherein a device center of gravity is arranged in a lower device half, at least in the one of the at least two mounting positions in which the respiratory therapy device has a greater mounting height, the device center of gravity being made available at least by an arrangement of at least one battery system for energy supply to the respiratory therapy device and/or at least one fan system for generating a respiratory gas stream (fig. 1 schematically shows a battery 64, col. 6 line 29; however, there is no mention of the position of the battery within the device).
Huster teaches a respiratory therapy system ([0005] the disclosure focuses on a high frequency chest wall oscillation system, but discloses that other respiratory therapy systems may apply) in which positioning heavier internal components in the lower part of the system to enhance the stability of the system and reduce the tendency of the system to tip ([0111]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to position the heavier components of Callaghan’s respiratory device, including a fan system for generating a gas stream and/or a battery, as these components are known in the art to be heavier components, in a lower device half, so that the device is less likely to tip over, as taught by Huster.
In the event that it not clear that one of ordinary skill in the art of designing respiratory therapy devices would consider the positioning of a battery to be relevant to the center of gravity of the respiratory device, Ouchi teaches an oxygen concentrator having a built-in battery mounted on the bottom surface in order to lower the center of gravity (fig. 4, oxygen concentrator 100 represented schematically, battery 228, page 6, third full para.).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to position Callaghan’s battery in a lower half of the device, such as built into the bottom of the device as taught by Ouchi, to lower the center of gravity of a respiratory device.
Regarding Claim 40, Callaghan discloses a respiratory therapy device of claim 39, wherein the housing system comprises the first mounting surface for at least one first mounting position (see annotated fig. 5B, the bottom surface on which the device rests is for a horizontal mounting surface) and the second mounting surface for at least one second mounting position (see annotated fig. 5B, the second mounting surface is the side wall surface on which the device rests for a vertical mounting position).
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Regarding Claim 41, Callaghan discloses a respiratory therapy device of claim 40, wherein the first mounting surface is suitable and configured for a horizontal mounting position (see annotated fig. 5B) and the second mounting surface is suitable and configured for a vertical mounting position (see annotated fig. 5B, col. 17 lines 45-48).
Regarding Claim 42, Callaghan discloses a respiratory therapy device system of claim 41, wherein, in the horizontal mounting position, a mounting height of the respiratory therapy device is less than a length and/or a width of the first mounting surface (fig. 5B, the mounting height is shorter than the length of the bottom mounting surface; see annotated fig. 5B below), and/or wherein, in the vertical mounting position, a mounting height of the respiratory therapy device is greater than a length and/or a width of the second mounting surface (see annotated fig. 5B below, in the vertical mounting position, the side wall is shorter than the height of the device).
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Regarding Claim 43, Callaghan discloses a respiratory therapy device of claim 39, wherein the mounting surfaces are arranged at an angle of at least 65° and at most 115° (fig. 5B, the mounting surfaces are approximately 90° to each other).
Regarding Claim 46, Callaghan discloses a respiratory therapy device of claim 39, wherein the device further comprises at least one interface for coupling a hose for a respiratory gas stream and/or at least one cable connection (fig. 5B, 13, col. 17 lines 56-59), the at least one interface and/or the at least one cable connection being arranged in a lower device half (fig. 5B, 13 is located in the lower half as seen in the horizontal mounting position).
However, Callaghan is silent on the at least one interface and/or cable connection being arranged in a lower device half at least in the one of the at least two mounting positions in which the respiratory therapy device has a greater mounting height (fig. 5B shows 13 located on the left-hand side wall in the horizontal position, but when moved to the vertical position by rotating the ventilator 10 to the right as shown in fig. 5B, 12 would be located on the top wall).
However, it would have been obvious to one of ordinary skill in the art that since Callaghan’s device is able to be changed from a horizontal to a vertical position (see col. 17 lines 45-48, the device is able to change between horizontal and vertical positions and the orientation of the user display adapts to the orientation of the device), that the user could rotate the ventilation system to a vertical position by rotating it to the left (see fig. 5B, the vertical orientation is shown in the drawing as rotating the horizontal position to the right). After rotating the device to its left to a vertical position, 13 would be located on the bottom wall, and therefore the interface would be arranged in a lower device half in the mounting position in which the respiratory device has a greater mounting height (i.e., in the vertical mounting position, which is shown in fig. 5B to be the greater height, 13 would be on the bottom wall when rotated 90 degrees to the left).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to rotate Callaghan’s ventilator to the left rather than the right to reposition the ventilator from a horizontal to a vertical mounting position, so that the interface (fig. 5B, 13) is located in a lower device half when the respiratory therapy device has a greater mounting height, since Callaghan’s device is shown to be repositionable and the display adapts to the change in positioning (col. 17 lines 45-48).
Regarding Claim 47, Callaghan discloses a respiratory therapy device of claim 46, wherein the at least one interface and/or the at least one cable connection are arranged laterally on the housing system (fig. 5B, 13 is arranged on the lateral wall in the horizontal positions).
However, Callaghan is silent on the at least one interface and/or the at least one cable connection being arranged laterally in the at least two mounting positions (interpreted to mean both the horizontal and the vertical mounting positions).
However, it has been held that rearranging parts is a matter of design choice when the operation of the device would not be changed. See MPEP 2144.04(VI)(C) In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) (Claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device.); In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice). In this case, positioning the at least one interface (fig. 5B, 13) to be positioned laterally (“laterally” is interpreted according to its standard definition of “by, to, or from the side”, Merriam-Webster) rather than the apparent center of the triangular wall of the housing 12, would not change the function of the device when positioned in either the horizontal or the vertical mounting positions.
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the at least one interface of Callaghan’s respiratory device to be arranged laterally on the housing system in the at least two mounting positions, as an obvious matter of design choice.
Regarding Claim 48, Callaghan discloses a respiratory therapy device of claim 39, wherein at least one handle system (fig. 5B shows a handle in housing 12; while the text does not specifically state that the opening in the housing is a handle, one of ordinary skill in the art can readily recognize that the elongated opening shown in the figure is a handle, particularly since the ventilator is disclosed to be portable, col. 6 lines 9-10) is arranged in such a way that the handle system is located, in a horizontal mounting position, on a front face of the housing system (fig. 5, in the horizontal position, the handle is shown on the front surface), such that the handle system can be reached in both mounting positions by an operator standing in front of the respiratory therapy device (fig. 5B shows the handle as accessible for use from the front of the device).
However, Callaghan is silent on the handle system being located in a vertical mounting position, on a top face of the housing system (instead, fig. 5B shows that the handle is located on the front/side face of the device in the horizontal mounting position).
However, it has been held that rearranging parts is a matter of design choice when the operation of the device would not be changed. See MPEP 2144.04(VI)(C) In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) (Claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device.); In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice). In this case, the ability to grasp the ventilator housing by the handle would still be present if Callaghan’s handle system were rearranged to be both located on the front face of the housing system when the device is in the horizontal position, and when the device is in the vertical position, the handle located on a top face of the housing element. This may be accomplished, for example, by placing the handle in the lateral reinforced side edge of Callaghan’s device. Moving the location of the handle would not change the function of the device, since a user would still be able to grasp the device by the handle to maintain portability (col. 6 lines 9-11) and repositionable (col. 17 lines 42-48).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the position of the handle in Callaghan’s respiratory device to be positioned on a lateral reinforced side edge such that he handle system is located, in a horizontal mounting position, on a front face of the housing system, and, in a vertical mounting position, on a top face of the housing system, such that the handle system can be reached in both mounting positions by an operator standing in front of the respiratory therapy device, as an obvious matter of design choice.
Regarding Claim 49, Callaghan discloses a respiratory therapy device of claim 39, wherein at least one handle system is arranged in a recessed manner on the housing system (fig. 5B, the handle is a recessed cut out from the housing 12), such that the handle system does not protrude from a contour of the housing system (fig. 5B, the handle is a part of the contour of the triangular shaped prism, col. 17 lines 49-55) and/or at least one handle system is arranged immovably on the housing system (fig. 5B, the handle is shown as an integral part of the housing with no moving components).
Regarding Claim 50, Callaghan discloses a respiratory therapy device of claim 39, wherein the housing element comprises at least one housing edge designed as a tilting edge, the tilting edge being resilient and/or reinforced and/or rounded (fig. 5B, the edges of the housing include bumpers, col. 17 lines 63-67, which are capable of being used as a tilting edge since they prevent damage; it is further understood that the device is rotatable between horizontal and vertical orientations according to fig. 5B and col. 17 lines 45-48; one of ordinary skill in the art would have been able to understand the bumper along the edges is not substantially different that the tilting edge described in the instant specification).
Regarding Claim 51, Callaghan discloses a respiratory therapy device of claim 39, wherein the mounting surfaces are in each case on a side face of the housing system (fig. 5B, the horizontal mounting surface is on the bottom side, and the vertical mounting surface is on a lateral side).
Regarding Claim 52, Callaghan discloses a respiratory therapy device of claim 39, wherein the respiratory therapy device is suitable and configured to be capable of being transferred as intended between the mounting positions by mounting of the housing system (fig. 5B and col. 17 lines 45-48).
Regarding Claim 53, Callaghan discloses a respiratory therapy device of claim 39, wherein the respiratory therapy device is suitable and configured to independently detect an adopted mounting position by at least one control system to change at least one device setting in accordance with the mounting position (fig. 5B, col. 17 lines 42-48).
Regarding Claim 54, Callaghan discloses a respiratory therapy device of claim 53, wherein at least one display mode of a display system and/or at least one function assignment of an operating system is set in accordance with the mounting position (fig. 5B, the display re-orients itself depending on a vertical or horizontal mounting position, col. 17 lines 42-48).
Claim 55 is rejected under 35 U.S.C. 103 as unpatentable over Callaghan and Huster, further in view of IEC 60529: 2001 (published online as Indian Standard “Degrees of Protection Provided by Enclosures”, identical with international standard IEC 60529:2001), hereafter IEC 60529.
Regarding Claim 55, Callaghan discloses a respiratory therapy device of claim 39, but does not disclose wherein all of the openings provided in the housing system are protected, in the at least two intended mounting positions, at least against solid foreign bodies with a diameter of > 12.5 mm and against access with a finger and have protection against falling water when the housing system is inclined by up to 15°.
However, IEC 60529 teaches that enclosures may have a level of protection against various types of ingress, including where all openings provided in a housing system are protected against solid foreign bodies with a diameter of >12.5mm (page 5, table 4.2, row “First characteristic numeral” column IP, row 2 “meaning for the protection of equipment”) and against access with a finger (page 5, table 4.2, “Meaning of Protection of persons” column corresponding to IP 2). Additionally, protection against falling water when the housing system is inclined by up to 15° (page 5, table 4.2, row “Second characteristic numeral”, column IP, row 2 “Meaning for the protection of equipment”). See also page 6, section 5 describing enclosure protection and page 8, section 6 describing the enclosure protection against ingress of water.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Callaghan’s housing system openings to comply with the standard of protection for enclosures for electrical equipment, as taught by IEC 60529, to protect users against access to hazardous components as well as protect the equipment against ingress (IEC 60529 page 1, section 1).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Giard et al. (US 2021/0069443 A1) discloses a ventilator which is repositionable between horizontal and vertical (fig. 1 [0090]) or a horizontal position (fig. 5 [0094]).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARA K. TOICH whose telephone number is (703)756-1450. The examiner can normally be reached M-Th 7:30 am - 4:30 pm, every other F 7:30-3:30 ET.
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/SARA K TOICH/ Examiner, Art Unit 3785
/BRANDY S LEE/ Supervisory Patent Examiner, Art Unit 3785
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