Ex Parte Parks et al

Board of Patent Appeals and Interferences

Feb 16, 2012

10453316 (B.P.A.I. Feb. 16, 2012)

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