Ex Parte Parks et alDownload PDFBoard of Patent Appeals and InterferencesFeb 16, 201210453316 (B.P.A.I. Feb. 16, 2012) Copy Citation 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. 10/453,316 06/03/2003 Mark Parks 10561.5USU1 9679 52835 7590 02/16/2012 HAMRE, SCHUMANN, MUELLER & LARSON, P.C. P.O. BOX 2902 MINNEAPOLIS, MN 55402-0902 EXAMINER SU, SUSAN SHAN ART UNIT PAPER NUMBER 3761 MAIL DATE DELIVERY MODE 02/16/2012 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte MARK PARKS and JAMES C. BLOCK ____________________ Appeal 2010-000885 Application 10/453,316 Technology Center 3700 ____________________ Before: STEVEN D.A. MCCARTHY, WILLIAM V. SAINDON, and JAMES P. CALVE, Administrative Patent Judges. SAINDON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-000885 Application 10/453,316 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-5 and 7-20. We have jurisdiction under 35 U.S.C. § 6(b). Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. An extra-labia urine voiding apparatus comprising: a container including a top and a bottom, the top being sized and shaped to externally cover a vulval region of a female anatomy, the container defining a reservoir between the top and the bottom, and having a generally open side disposed at the top and adapted for receiving urine into the reservoir, the container defining a substantially planar surface disposed at the top, the planar surface being constructed and arranged to face and generally surround a periphery of the vulval region; a blocking mechanism disposed proximate the top of the container, the blocking mechanism being capable of preventing urine from escaping the reservoir at the top of the container, the blocking mechanism includes a wall defining a blocking surface thereon, the wall being disposed about a perimeter of the reservoir and being disposed continuously between a superior end and an inferior end of the container, the wall extending a distance inward from the perimeter of the reservoir, whereby the blocking surface being capable for countering urine from exiting through the open side of the container; and a conduit in fluid communication with the reservoir of the container disposed proximate the bottom of the container, the conduit being adapted for draining urine from the reservoir. Rejections I. Claims 1-5, 7-13 and 15-20 are rejected under 35 U.S.C. § 103(a) as unpatentable over Block (US 5,632,736, iss. May 27, 1997) and Canahuate (US Des. 379,225, iss. May 13, 1997). II. Claim 14 is rejected under 35 U.S.C. § 103(a) as unpatentable over Block, Canahuate, and Rempe (US 6,041,448, iss. Mar. 28, 2000). Appeal 2010-000885 Application 10/453,316 3 SUMMARY OF DECISION We REVERSE. OPINION The Examiner’s rejections rely on a finding that Canahuate describes a urinating aid having an inwardly extending flange (wall) that inherently prevents urine from leaking from the perimeter of the device. Ans. 5-6, 10- 11. Appellants argue that Canahuate, a design patent, does not describe an inwardly extending wall for blocking. App. Br. 5-6. In particular, Appellants argue that the figures “simply show a planar thickness at the top of the design [of figures 1, 5, and 6], and they do not show any view with a wall extending inward toward the reservoir.” Id. at 5. Description via drawings and pictures can be relied upon alone as well as by words to anticipate claimed subject matter if they clearly show the structure claimed. In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972). We acknowledge the Examiner’s position (Ans. 11-12) regarding a first embodiment of Canahuate (figure 1) showing a planar edge on the interior of the device, similar to the planar edge depicted in a second embodiment of Canahuate (figure 7) that clearly has an outwardly extending wall (see fig. 12). However, we cannot agree that a preponderance of the evidence supports the Examiner’s finding that Canahuate discloses an inwardly extending wall in the first embodiment, let alone one capable of performing as the claimed blocking mechanism. It is not apparent from figure 1 (or figs. 5 or 6) how far, if at all, the planar edge extends into the interior – it could merely be a design flourish or of an insufficient distance to provide blockage. Further, the side walls of the device could be thicker at the top than at the bottom. The Examiner’s reliance of the contour lines in figure 1 (Ans. 11-12) likewise unduly relies on the precision of the drawings. See Appeal 2010-000885 Application 10/453,316 4 Hockerson-Halberstadt, Inc. v. Avia Group Int’l, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000) (“patent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue”). Accordingly, we agree with Appellants that the Examiner erred in relying on Canahuate to teach a blocking mechanism as required by claims 1 and 8 and, by dependency, claims 2-5, 7, and 9-20. DECISION We reverse the Examiner’s decision regarding claims 1-5 and 7-20. REVERSED hh Copy with citationCopy as parenthetical citation