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 .
Response to Amendment
This Office Action is in response to an amendment filed on 1/27/2026. As directed by the amendment, claims 3-4, 12, and 19 were canceled, claims 1 was amended, and no new claims were added. Thus, claims 1, 5-11, and 13-18 are pending for this application.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 11 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Specifically, claim 11 does not further near claim 1 because the range of the diameter in claim 11 (2 to 6 inches) is broader than the range of diameter in claim 1 (3 to 4 inches).
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Paquette (US 2021/0369430) in view of Nepon (US 5,513,632), Roberts (US 2021/0346120) and Guevrekian (US 5,715,813).
Regarding claim 1, Paquette discloses (Figs. 1-2) a method of evacuating medical gas or airborne contaminants from a vicinity of a face of a patient in a patient chair (Abstract), the method comprising:
providing an intake duct (nozzle 120) having one or more intake apertures defining an intake opening at a single intake location at an open end of the duct (single opening of nozzle 120 adjacent to patient face);
supporting the intake duct adjacent to the patient chair (chair shown in Fig. 1) such that the single intake location of the intake duct is spaced laterally to one side of a face of the patient (one inch from side of face and thus spaced laterally, paragraph [0015]); and
drawing a single flow of gas across the face of the user downwardly towards the single intake location offset to one side of the face of the patient by applying an exhaust flow to the intake duct at a flow rate through the intake duct (paragraph [0014]. Flow is downward because patient is positioned in recline position and facing forward as shown in Fig. 1 and the positioning of the intake location would result in the air to be drawn downwardly due to patient face facing forward direction and thus flow, due to being suction, would be drawn in the opposite and thus downward direction).
Paquette does not disclose the open end is directed in a forward direction that the patient is facing at a slope towards an area in front of the face of the patient and the single intake location longitudinally between a chin and a cheekbone of the patient.
However, Nepon teaches wherein the intake opening is defined at an open end of the intake duct (see opening 20 in Fig. 4-5 of Nepon) and wherein the method includes supporting the intake duct to be spaced laterally to one side of the face of the patient (see positioning of intake duct on left side of patient face in Fig. 3) such that the open end is directed in a forward direction that the patient is facing at a slope towards an area in front of the face of the patient (open end directed to direction patient facing and sloped toward front of face as shown in Fig. 1 and 3), and the single intake location is longitudinally between a chin and a cheekbone of the patient (see location between chin and cheekbone in Fig. 1 Nepon).
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 the method of Paquette such that the open end is directed in a forward direction that the patient is facing at a slope towards an area in front of the face of the patient and the single intake location longitudinally between a chin and a cheekbone of the patient, as taught by Nepon, for the purpose of allowing the patient's mouth and nose to be fully exposed and unobstructed by the gas evacuation apparatus so that the administration of gases, dental treatments and any other procedures requiring access to the mouth and nose area may be carried out (Abstract Nepon).
Modified Paquette does not disclose the flow rate through the intake duct is greater than 200 cubic feet per minute.
However, Roberts teaches (Fig. 1) a method of air purification in a surgical or dental office comprising moving (paragraph [0031] an air purifier (300) as close as possible to a patient (paragraph [0032]) and then using a hose and nozzle to remove exhaled air from a patient so that air is purified at a rate of approximately 250 cubic feet per minute (paragraph [0104]), which suggests that the flow rate through the duct must be greater than 200 cubic feet per minute. However in the case where it is not, the flow rate of a scavenging apparatus is a result-effective variable to optimize reduction of contaminated air, 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 the flow rate through the intake duct to be at least 200 cfm, for the purpose of optimizing removal of pathogens within the surrounding air to avoid contamination to surrounding users, since discovering the optimum value of a result effective variable involves only routine skill in the art.
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 the flow rate of modified Paquette to be greater than 200 cubic feet per minute, as taught and suggested by Roberts, for the purpose of providing sufficient air flow to remove pathogens from the air around the user so that contamination does not occur (paragraph [0104] Roberts); as it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Further, applicant appears to have placed no criticality on the claimed range (see page 9 lines 24-25 and page 10 line 1 indicating the flow rate “more preferably” is within the claimed range). Additionally, 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 flow rate to be at least 200 cfm, for the purpose of optimizing removal of pathogens within the surrounding air to avoid contamination to surrounding users, since discovering the optimum value of a result effective variable involves only routine skill in the art. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Modified Paquette discloses the intake duct has a diameter (circular cross section shown in Fig. 1 and thus a diameter dimension is inherent), but is silent regarding the specific dimensions and thus does not disclose the intake duct has a diameter between 3 and 4 inches.
However, Guevrekian teaches (Fig. 1) an intake duct (30) having a diameter between 3 and 4 inches (diameter between 0.5-4.0 inches).
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 diameter of the intake duct of modified Paquette to be between 3-4 inches, as taught by Guevrekian, for the purpose of reducing the well-known rushing sound of air in such environments (Col. 4 lines 46-50 Guevrekian), as it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Further, applicant appears to have placed no criticality on the claimed range (see page 9 lines 22-24 and indicating the diameter “more preferably” is within the claimed range), so one of ordinary skill would have found it obvious to try a diameter of 3 to 4 inches since discovering the optimum value only involves routine skill in the art. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 18, modified Paquette discloses the intake duct includes an end portion (fluid flow passageway 136 of Paquette) locating the intake opening therein (see Fig. 1 Paquette), the method including adjusting a position of the intake location relative to the face of the patient by flexing of the end portion of the intake duct (paragraph [0018] Paquette), the end portion being flexible and having a shape memory arranged to retain a shape of the end portion upon being flexed by a user (resilient material and retains desired position and thus shape memory, paragraph [0018]).
Claims 1-2 and 5-11 are rejected under 35 U.S.C. 103 as being unpatentable over Lu (US 6,308,707) in view of Nepon (US 5,513,632), Roberts (US 2021/0346120) and Guevrekian (US 5,715,813).
Regarding claim 1, Lu discloses (Fig. 1-5) a method of evacuating medical gas or airborne contaminants from a vicinity of a face of a patient in a patient chair (Abstract), the method comprising:
providing an intake duct (duct 63) having one or more intake apertures defining an intake opening (aperture of opening front end of duct 63) at a single intake location at an open end of the duct (one opening and thus one intake opening, see Fig. 1, and positioned at open end of duct 63)
supporting the intake duct adjacent to the patient chair (supported by vacuum device 30 adjacent to patient chair 50) such that the single intake location of the intake duct is spaced offset to one side of a face of the patient (spaced offset to side of user’s face as shown in Fig. 2).
Figure 2 of Lu shows the intake location is spaced laterally to one side of the user’s face (see Fig. 2 Lu), but does not disclose the single intake location is longitudinally between a chin and a cheekbone of the patient and the open end is directed in a forward direction that the patient is facing at a slope towards an area in front of the face of the patient.
However, Nepon teaches wherein the intake opening is defined at an open end of the intake duct (see opening 20 in Fig. 4-5 of Nepon) and wherein the method includes supporting the intake duct to be spaced laterally to one side of the face of the patient (see positioning of intake duct on left side of patient face in Fig. 3) such that the open end is directed in a forward direction that the patient is facing at a slope towards an area in front of the face of the patient (open end directed to direction patient facing and sloped toward front of face as shown in Fig. 1 and 3), and the single intake location is longitudinally between a chin and a cheekbone of the patient (see location between chin and cheekbone in Fig. 1 Nepon).
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 the method of Lu such that the open end is directed in a forward direction that the patient is facing at a slope towards an area in front of the face of the patient and the single intake location longitudinally between a chin and a cheekbone of the patient, as taught by Nepon, for the purpose of allowing the patient's mouth and nose to be fully exposed and unobstructed by the gas evacuation apparatus so that the administration of gases, dental treatments and any other procedures requiring access to the mouth and nose area may be carried out (Abstract Nepon).
Modified Lu discloses drawing a single flow of gas across the face of the user downwardly towards the single intake location offset to one side of the face of the patient (due to patient positioning in recline position in Fig. 1 Lu and the positioning of the intake location as taught by Nepon, the air would be drawn downwardly due to patient face facing forward direction and thus flow, due to being suction, would be drawn in the opposite and thus downward direction), but does not disclose the flow rate through the intake duct is greater than 200 cubic feet per minute.
However, Roberts teaches (Fig. 1) a method of air purification in a surgical or dental office comprising moving (paragraph [0031] an air purifier (300) as close as possible to a patient (paragraph [0032]) and then using a hose and nozzle to remove exhaled air from a patient so that air is purified at a rate of approximately 250 cubic feet per minute (paragraph [0104]), which suggests that the flow rate through the duct must be greater than 200 cubic feet per minute. However in the case where it is not, the flow rate of a scavenging apparatus is a result-effective variable to optimize reduction of contaminated air, 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 the flow rate through the intake duct to be at least 200 cfm, for the purpose of optimizing removal of pathogens within the surrounding air to avoid contamination to surrounding users, since discovering the optimum value of a result effective variable involves only routine skill in the art.
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 the flow rate of Lu to be greater than 200 cubic feet per minute, as taught and suggested by Roberts, for the purpose of providing sufficient air flow to remove pathogens from the air around the user so that contamination does not occur (paragraph [0104] Roberts); as it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Further, applicant appears to have placed no criticality on the claimed range (see page 9 lines 24-25 and page 10 line 1 indicating the flow rate “more preferably” is within the claimed range). Additionally, 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 flow rate to be at least 200 cfm, for the purpose of optimizing removal of pathogens within the surrounding air to avoid contamination to surrounding users, since discovering the optimum value of a result effective variable involves only routine skill in the art. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Modified Lu discloses the intake duct has a diameter (the intake duct has a circular cross section as shown in Fig. 1 and thus has a diameter), but is silent regarding the dimensions and thus does not disclose the intake duct has a diameter between 3 and 4 inches.
However, Guevrekian teaches (Fig. 1) an intake duct (30) having a diameter between 3 and 4 inches (diameter between 0.5-4.0 inches).
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 diameter of the intake duct of modified Paquette to be between 3-4 inches, as taught by Guevrekian, for the purpose of educe the well-known rushing sound of air in such environments (Col. 4 lines 46-50 Guevrekian), as it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Further, applicant appears to have placed no criticality on the claimed range (see page 9 lines 22-24 and indicating the diameter “more preferably” is within the claimed range), so one of ordinary skill would have found it obvious to try a diameter of 3 to 4 inches since discovering the optimum value only involves routine skill in the art. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 5, modified Lu discloses supporting the intake duct such that the single intake location is offset laterally to one side of a face of the patient by a distance, but does not disclose of between 2 and 4 inches. However, outside evidence of criticality, one of ordinary skill in the art before the effective filing date of the claimed invention would find it obvious to try a distance between 2 and 4 inches, for the purpose of allowing the device to optimize suction of contaminated air without providing discomfort to a user, since discovering the optimum value only involves routine skill in the art. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 6, modified Lu discloses supporting the intake duct such that the single intake location is offset laterally to one side of a face of the patient by a distance, but does not disclose the distance is approximately 3 inches. However, outside evidence of criticality, one of ordinary skill in the art before the effective filing date of the claimed invention would find it obvious to try a distance of 3 inches, for the purpose of allowing the device to optimize suction of contaminated air without providing discomfort to a user, since discovering the optimum value only involves routine skill in the art. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 7, modified Lu discloses wherein the intake opening is defined at an open end of the intake duct (see Fig. 1 Lu) and wherein the method includes supporting the intake duct such that the open end is directed in a forward direction that the patient is facing (forward direction as disclosed in Fig. 1 and 3 Nepon) and protrudes forwardly of the face of the patient (protrudes forwardly as shown in Fig. 2 Lu and Col. 2 lines 50-55 Lu).
Regarding claim 8, modified Lu discloses supporting the open end of the intake duct to protrude forwardly of the face of the patient by a distance (as shown in Fig. 2 Lu and Col. 2 lines 50-55 Lu), but does not disclose this distance is between 2 and 4 inches. However, outside evidence of criticality, one of ordinary skill in the art before the effective filing date of the claimed invention would find it obvious to try a distance of 2-4 inches, for the purpose of allowing the device to optimize suction of contaminated air without providing discomfort to a user, since discovering the optimum value only involves routine skill in the art. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 9, modified Lu discloses supporting the open end of the intake duct to protrude forwardly of the face of the patient by a distance distance (as shown in Fig. 2 Lu and Col. 2 lines 50-55 Lu), but does not disclose this distance is approximately 3 inches. However, outside evidence of criticality, one of ordinary skill in the art before the effective filing date of the claimed invention would find it obvious to try a distance of 3 inches, for the purpose of allowing the device to optimize suction of contaminated air without providing discomfort to a user, since discovering the optimum value only involves routine skill in the art. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 10, modified Lu discloses supporting the open end of the intake duct to protrude forwardly of the face of the patient by a distance (as shown in Fig. 2 Lu and Col. 2 lines 50-55 Lu), but does not disclose the distance exceeding a terminal velocity distance, the terminal velocity distance being defined as a distance forward of the mouth of the user at which point expelled gases and contaminants from the mouth of the user reach a terminal velocity. However, outside evidence of criticality, one of ordinary skill in the art before the effective filing date of the claimed invention would find it obvious to try a distance exceeding a terminal velocity distance, for the purpose of allowing the device to optimize suction of contaminated air without providing discomfort to a user, since discovering the optimum value only involves routine skill in the art. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 11, modified Lu discloses wherein the intake duct has a diameter between two and six inches (3 to 4 inches, Col. 4 lines 46-50 Guevrekian).
Claim(s) 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lu (US 6,308,707) in view of Nepon (US 5,513,632), Roberts (US 2021/0346120) and Guevrekian (US 5,715,813), and further in view of Paquette (US 2021/0369430) and Lynch (US 7,320,447).
Regarding claim 13, modified Lu discloses the intake duct is supported adjacent the chair (see Fig. 1 Lu), but does not disclose the intake duct is supported on the chair.
However, Paquette teaches (Fig. 1) an intake duct (116) supported on chair (removably attached to treatment chair 144 via mounting element 124, paragraph [0016]).
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 the intake duct of modified Lu to be supported on the chair, as taught by Paquette, for the purpose of improving manipulation of the intake duct by the operator due to keeping it supported behind the patient’s head.
Modified Lu does not disclose a supporting frame in which the supporting frame includes a pivot assembly defining a longitudinal pivot axis about which the intake duct is pivotal between a first position offset laterally to a first side of the face of the patient and a second offset laterally to a second side of the face of the patient.
However, Lynch teaches (Fig. 17) a supporting frame (attaching mechanism 10’’) in which the supporting frame includes a pivot assembly (hose support 30’’ that receives a hose and is rotatably attached to a clamp 63, Col. 6 lines 63-68) defining a longitudinal pivot axis (axis passing through the connection of clamp 63 and support 30’’) about which the intake duct is pivotal between a first position offset laterally to a first side of the face of the patient and a second offset laterally to a second side of the face of the patient (primary reference Lu discloses placing the intake duct in a first position offset laterally to a first side of the face of the patient in Fig. 2 and a second offset laterally to a second side of the face in Fig. 5. Because the pivot assembly is rotatably connected to the clamp, the combination of Lynch and Lu would provide for this claimed feature). 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 the method of modified Lu to include a supporting frame in which the supporting frame includes a pivot assembly defining a longitudinal pivot axis about which the intake duct is pivotal between a first position offset laterally to a first side of the face of the patient and a second offset laterally to a second side of the face of the patient, as taught by Lynch, for the purpose of improving manipulation of the intake duct by the operator so that optimal positioning for a given patient is enabled.
Regarding claim 14, modified Lu discloses the support frame further comprises a pivot clamp (clamp 63) arranged to selectively fix the pivot assembly immovably about the longitudinal pivot axis so as to retain the intake duct in either selected one of the first position or the second position (clamp 63 fixes the pivot assembly longitudinally on the surface for which it is attached).
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lu (US 6,308,707) in view of Nepon (US 5,513,632), Roberts (US 2021/0346120), Guevrekian (US 5,715,813), Paquette (US 2021/0369430) and Lynch (US 7,320,447), and further in view of Gao (CN 108324395 A).
Regarding claim 15, modified Lu discloses a support frame, but does not disclose wherein the support frame further comprises a swivel assembly coupling the intake duct relative to the chair for pivotal movement about a tilt axis that is oriented laterally in each of the first position and the second position and wherein the method includes adjusting a longitudinal position of the intake location relative to the face of the patient by pivoting the intake duct about the tilt axis.
However, Gao teaches (Fig. 1-5) support frame (comprising fixing belt, horizontal rod 3, joint 4, rotating arm 5, and clamp 6) further comprises a swivel assembly (comprising rotating arm 5 and joint 4) coupling the intake duct (clamp 6 of arm 5 receives a suction tube, Abstract) relative to the chair for pivotal movement about a tilt axis (joint 4 described as a universal joint, meaning even though one rotation direction is shown in drawing, another rotation direction exists which is illustrated by tilt axis in Annotated Fig. 5 of Gao below) that is oriented laterally in each of the first position and the second position (forward and backward direction and thus lateral to each of the first and second position) and wherein the method includes adjusting a longitudinal position of the intake location relative to the face of the patient by pivoting the intake duct about the tilt axis (Gao discloses an operator adjusts position of the arm 5 until it is desired position, page 3 paragraph 3, meaning adjusting the longitudinal position is adjusted due to rotation about tilt axis).
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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 the support frame of modified Lu to include a swivel assembly coupling the intake duct relative to the chair for pivotal movement about a tilt axis that is oriented laterally in each of the first position and the second position and wherein the method includes adjusting a longitudinal position of the intake location relative to the face of the patient by pivoting the intake duct about the tilt axis, as taught by Gao, for the purpose of allowing for medical worker to adjust position of the intake duct to the desired position (page 3 paragraph 3 Gao).
Claim(s) 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Paquette (US 2021/0369430) in view of Nepon (US 5,513,632), Roberts (US 2021/0346120) and Guevrekian (US 5,715,813), and further in view of Mirbahaeddin (US 11,179,287).
Regarding claim 16, modified Paquette discloses supporting the intake duct on the chair (see Fig. 1), but does not disclose this is performed using a supporting frame that includes a chair clamp by releasably clamping the chair clamp onto the patient chair.
However, Mirbahaeddin teaches (Fig. 1-3) an intake duct (hood 301 that provides suction function, Abstract) supported on a chair (chair 321) via a support frame (frame 303) that includes a chair clamp (fastener 311, which may include a “clamp”, Col. 3 lines 65-68 and Col. 4 lines 1-5) by releasably clamping the chair clamp onto the patient chair (clamp fasteners are inherently releasable connectors, therefore releasably clamping of the chair clamp to the patient chair is comprehended by Mirbahaeddin).
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 the method of modified Paquette to include a support frame supporting the intake duct using a chair clamp by releasably clamping the chair clamp onto the patient chair, as taught by Mirbahaeddin, for the purpose of allowing the position of the duct to be adjustable positioned due to the support frame having multiple rotatable segments (Col. 4 lines 1-5 Mirbahaeddin).
Regarding claim 17, modified Paquette discloses the patient chair includes a back portion (back portion of seat shown in Fig. 1 Paquette) supporting a back of the user thereon (see Fig. 1 Paquette) and a headrest portion (headrest 144 of Paquette) joined to the back portion by a post, (see connecting post in Fig. 1) the headrest portion supporting a head of the user thereon (see Fig. 1 Paquette and paragraph [0013] (though fake patient is shown, real patient could also be used)), the method comprising supporting the intake duct on the chair by releasably clamping the chair clamp onto the post of the headrest portion (see Fig. 3 Mirbahaedden).
Response to Arguments
Applicant’s arguments filed 1/27/2026 have been fully considered but are not persuasive.
Regarding rejection of canceled claim 19, applicant argued (page 6 paragraph 3 Remarks) that the office action combines elements from four different references, and that this is only permissible if there is a clear motivation that would have prompted a POSA to combine these teachings. Applicant argues that the Office Action fails to provide the necessary motivation for this combination.
Examiner respectfully disagrees.
In response to applicant's argument that the examiner has combined an excessive number of references, reliance on a large number of references in a rejection does not, without more, weigh against the obviousness of the claimed invention. See In re Gorman, 933 F.2d 982, 18 USPQ2d 1885 (Fed. Cir. 1991).
Regarding the lack of motivating statements for the combination of references, examiner respectfully disagrees and points to the motivating statements provided for each reference in the rejection (i.e. teachings of Nepon “for the purpose of allowing the patient's mouth and nose to be fully exposed and unobstructed by the gas evacuation apparatus so that the administration of gases, dental treatments and any other procedures requiring access to the mouth and nose area may be carried out (Abstract Nepon)”).
Applicant further argued (page 7 paragraph 1 Remarks) that the claimed method of claim 1 requires “directing the open end in forward direction that the patient is facing at a slope towards an area in front of the face of the patient”, where the “forward” direction corresponds to the opening facing upwardly. This is different from the systems of Lu and Paquette which show the intake facing downwardly.
The examiner respectfully disagrees.
This teaching of “forward direction” is taught by the Nepon reference, not Lu and Paquette. Therefore arguments that Lu and Paquette fail to teach these feature are moot because they are not used in the rejection for teaching this feature.
Applicant’s arguments with respect to claim(s) 1 regarding the Blau reference have been considered but are moot because the new ground of rejection does not rely on the Blau reference for any teaching or matter specifically challenged in the argument.
Regarding the Nepon reference, applicant argued (page 7 paragraph 3 Remarks) that the Nepon reference combination is based on hindsight because Nepon utilizes a bilateral system, which teaches away from the claimed invention due to creating interference between two opposing flows. A POSA would not be motivated to selectively extract positioning details from Nepon while disregarding its core teaching, especially when the problems with such a system are known.
Examiner respectfully disagrees.
In response to Applicant' s argument that the present application teaches away from the configuration of Nepon, it is noted that a teaching away requires a reference (not the instant application) to actually criticize, discredit, or otherwise discourage investigation into the claimed solution. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). It has been further instructed that the Examiner will not read into a reference a teaching away from a process where no such language exists. See DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006).
In response to applicant's argument that a POSA would not be motivated to selectively extract positioning details of Nepon while disregarding its core teaching, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Finally, Nepon provides a motivation for this combination (for the purpose of allowing the patient's mouth and nose to be fully exposed and unobstructed by the gas evacuation apparatus so that the administration of gases, dental treatments and any other procedures requiring access to the mouth and nose area may be carried out (Abstract Nepon)), therefore the examiner believes the combination is reasonable and thus maintains rejection.
Applicant further argued (page 8 paragraph 1 Remarks) that taking the duct diameter of Guevrekian would not have been obvious and lacks a reasonable expectation of success and would not be a simple substitution, as Guevrekian teaches a y-shaped conduit with two intake openings positioned underneath a patients chin operating at a low flow rate, and that the diameter of Guevrekian is specifically chosen to its dual intake low flow design. A POSA would understand that the fluid dynamics are fundamentally different in a dual intake system compared to a single intake system of Lu, and there is no teaching or suggestion that such a diameter would function predictably or effectively is a single high flow intake duct were used as claimed, rather a POSA would expect that forcing a high volume of air through a single intake duct whose diameter is from a low flow system would lead to unpredictable and undesirable results, such as excessive turbulence and noise, rather than the stable, effective flow field achieved by the claimed invention. There is no reasonable expectation of success for such a combination.
The examiner respectfully disagrees.
First regarding applicant’s claim that examiner used “simple substitution”, examiner respectfully disagrees. Nowhere in the previous action or this action is simple substitution the reasoning for combining the teaching of Guevrekian with the combined invention. Rather, Guevrekian provides an explicit motivating statement for using this diameter, specifically to reduce the rushing sound of air due to the larger diameter (Col. 4 lines 46-50 Guevrekian).
Regarding applicant’s argument that the diameter of Guevrekian is specifically chosen to its dual-intake low flow design, applicant has not provided evidence for this statement. The fact that Guevrekian uses a dual-intake low flow design does not mean that the diameter of the intakes is only permissible with this design and not possible designs that are single intake and higher flow. Furthermore, while applicant cites Guevrekian only utilizes a flow rate of 10 cfm, Guevrekian actually states in the body of the specification (Col. 3 lines 53-57) that the “fluid flow of captured anesthesia gas of at least ten cubic feet per minute and, preferably, of 50 cubic feet or more per minute”. Thus, examiner disagrees that Guevrekian only discloses a low flow design and that the parameters of the dimensions of Guevrekian would only be suitable for a low flow scavenging system.
In response to Applicant' s argument that the Guevrekian reference teaches away from using its diameter in a single intake high flow design, it is noted that a teaching away requires a reference to actually criticize, discredit, or otherwise discourage investigation into the claimed solution. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). It has been further instructed that the Examiner will not read into a reference a teaching away from a process where no such language exists. See DyStar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006). Nowhere in Guevrekian does it teach away from single intake or high flow design, and as stated above, Guevrekian even appears to imply that higher flows are desirable.
Regarding applicant’s argument that “a POSA would understand that the fluid dynamics are fundamentally different in a dual intake system compared to a single intake system of Lu, and there is no teaching or suggestion that such a diameter would function predictably or effectively is a single high flow intake duct were used as claimed, rather a POSA would expect that forcing a high volume of air through a single intake duct whose diameter is from a low flow system would lead to unpredictable and undesirable results, such as excessive turbulence and noise, rather than the stable, effective flow field achieved by the claimed invention”, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Furthermore, nowhere in Guevrekian does it teach away from single intake or high flow design, and as stated above, Guevrekian even appears to imply that higher flows are desirable and thus modifying the combined Lu/Nepon/Roberts reference so that the intake opening has the diameter of the intake opening of Guevrekian is reasonable and motivated by Guevekian itself (to reduce the rushing sound of air due to the larger diameter (Col. 4 lines 46-50 Guevrekian)).
Finally, as stated in the rejection, it should be noted applicant has placed no criticality on the claimed range (see page 9 lines 22-24 and indicating the diameter “more preferably” is within the claimed range). Thus it appears that this diameter is a matter of engineering design choice, so one of ordinary skill would have found it obvious to try a diameter of 3 to 4 inches since discovering the optimum value only involves routine skill in the art. See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW R MOON whose telephone number is (571)272-2554. The examiner can normally be reached Monday-Thursday 7:30am-5:30pm.
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/MATTHEW R MOON/Examiner, Art Unit 3785
/TIMOTHY A STANIS/Supervisory Patent Examiner, Art Unit 3785