Ex Parte Salvadori et al

Board of Patent Appeals and Interferences

May 31, 2012

11362659 (B.P.A.I. May. 31, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/362,659 02/24/2006 Lawrence Salvadori 1502-55 (HKN-00208) 4416
55825 7590 06/01/2012
Tyco Healthcare Group LP
d/b/a Covidien
15 Hampshire Street
Mansfield, MA 02048
EXAMINER
DOUGHERTY, SEAN PATRICK
ART UNIT PAPER NUMBER
3736
MAIL DATE DELIVERY MODE
06/01/2012 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 LAWRENCE SALVADORI and STEPHEN TULLY
____________

Appeal 2010-001030
Application 11/362,659
Technology Center 3700
____________

Before JOHN C. KERINS, STEVEN D. A. McCARTHY, and
STEFAN STAICOVICI, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-001030
Application 11/362,659

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STATEMENT OF THE CASE
Lawrence Salvadori and Stephen Tully (Appellants) appeal under 35
U.S.C. § 134 from the Examiner’s decision to reject under 35 U.S.C.
§ 102(b) claim 20 as anticipated by Meisch (US 4,305,405, issued Dec. 15,
1981) and under 35 U.S.C. § 103(a) (1) claims 1-4, 7-12, 14 and 19 as
unpatentable over Meisch and Bard (GB 1,128,186, published Sep. 25,
1968); and (2) claims 13 and 15 as unpatentable over Meisch, Bard and
Napoli (US 5,409,014, issued Apr. 25, 1995). Claims 5, 6 and 16-18 have
been canceled. We have jurisdiction over this appeal under 35 U.S.C. § 6.

THE INVENTION
Appellants’ invention relates to a urine meter 10 for facilitating
drainage and volume measurement, including (1) a housing 12 having an
upper wall 30, a lower wall, a rear wall 42, first and second sidewalls, and an
inlet port 32; and (2) a faceplate 14. Spec. 1, ll. 5-6; 4, l. 16; and 6, ll. 10-20
and figs. 1 and 1A.
Claims 1 and 20 are representative of the claimed invention and read
as follows:
1. A urine meter comprising:
a housing having an inlet port, the housing including an
upper wall, a lower wall, first and second sidewalls, and a rear
wall defining the at least one fluid receptacle, the upper wall
extending between the first and second sidewalls and having a
substantially concave shape, the upper wall including a central
portion and first and second ends located adjacent the first and
second sidewalls, the central portion having a height which is
less than the height of the first and second ends of the upper
wall; and
a substantially transparent faceplate enclosing the
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Application 11/362,659

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housing, the faceplate having indicia formed thereon for
identifying the volume of fluid contained within the at least one
fluid receptacle;
wherein the inlet port defines an opening extending
through the central portion of the upper wall and the housing
defines a first drain opening positioned adjacent the first end of
the upper wall and a second drain opening positioned adjacent
the second end of the upper wall, the first and second drain
openings being positioned at an upper end of the fluid
receptacle.

20. A urine meter comprising:
a housing defining at least one fluid receptacle, an inlet
port and first and second spaced drain openings positioned in an
upper portion of the at least one fluid receptacle, the housing
further defining a recessed channel positioned about each of the
first and second drain openings, the recessed channel defining
substantially a periphery of the first and second drain openings
and extending between and interconnecting the first and second
drain openings.

SUMMARY OF DECISION

We AFFIRM-IN-PART.

OPINION
The anticipation rejection based upon Meisch
Appellants argue that Meisch fails to teach or suggest a recessed
channel that interconnects the first and second drain openings, as required by
independent claim 20. App. Br. 8. According to Appellants, in contrast to
claim 20 which requires a “recessed channel … extending between and
interconnecting the first and second drainage openings,” Meisch teaches (1)
a raised vertically, angled interior wall that extends between ports 57 and 58
(App. Br. 5-6 and 8. See also Meisch, fig. 5); and (2) “the ‘recess’ identified
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by the Examiner [see figure 4 of Meisch] does not interconnect ports 57 and
58 as ports 57 and 58 extend well outwardly of the recess” (App. Br. 9). In
other words, as far as we understand, Appellants appear to argue that Meisch
does not teach a recessed channel that fluidly interconnects the first and
second drain openings of Meisch.
While we appreciate that Figure 5 of Appellants’ drawings illustrates
fluid interconnection between the first and second drain openings, 40a and
40b, respectively, via recessed channel 43 (see App. Br. 7), claim 20 is not
so limited. Specifically, claim 20 merely requires that the recessed channel
interconnects the first and second drain openings. We must be careful not to
read a particular embodiment appearing in the written description into the
claim if the claim language is broader than the embodiment. See Superguide
Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). The
challenge is to interpret claims in view of the specification without
unnecessarily importing limitations from the specification into the claims.
See E-Pass Techs., Inc. v. 3Com Corp., 343 F.3d 1364, 1369 (Fed. Cir.
2003). In this case, we agree with the Examiner that Meisch teaches a
housing including a recessed channel that interconnects (via a zigzag wall)
the first and second drain openings, 57 and 58, respectively. See Ans. 4 and
12. See also, Meisch, fig. 4. Hence, as long as the recessed channel of
Meisch interconnects the first and second drain openings, 57, 58 the claim
limitation has been met. As such, we find that claim 20 does not require a
recessed channel that fluidly interconnects the first and second drain
openings, as Appellants argues. Accordingly, the rejection of independent
claim 20 as anticipated by Meisch is sustained.

Appeal 2010-001030
Application 11/362,659

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The obviousness rejection over Meisch and Bard
The Examiner found that Meisch discloses all the limitations of
independent claims 1 and 14 except an upper wall extending between first
and second sidewalls having a substantially concave shape. Ans. 5-6. The
Examiner further found that Bard discloses a substantially concave shaped
upper wall (at 42, see figs. 1 and 4) extending between first and second
sidewalls, 19 and 14, respectively. Ans. 6 and 13. As such, the Examiner
takes the position that a person of ordinary skill in the art at the time the
invention was made would have found it obvious to modify the upper wall
of Meisch to be substantially concave shaped, as taught by Bard, “since the
predictable result of providing a concave upper wall for receiving a drainage
tube leading from a body drainage site would ensue.” Ans. 6. See also
Bard, p. 2, ll. 71-75.
Appellants argue that neither Meisch nor Bard teach or suggest an
upper wall extending between first and second sidewalls having a
substantially concave shape, as required by each of independent claims 1
and 14. App. Br. 10, 12, and 13. Specifically, Appellants argue that (1)
“Meisch’s upper wall includes a flat cover member 50” and (2) “Bard’s
upper wall 18 is substantially linear but includes a concavity adjacent the
location where drainage tube 27 enters bag 10.” App. Br. 12.
Although we appreciate that Meisch discloses an upper wall having a
flat cover member 50, whereas Bard discloses an upper wall 18 including a
concave portion 24, nonetheless, both Meisch and Bard disclose an aperture
for receiving a drainage tube. Similar to Bard’s urine meter device which
includes an aperture for receiving drainage tube 27, Meisch’s urine meter
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device includes an aperture 51 (i.e., inlet) for receiving a drainage tube 27
leading from a body drainage site (i.e., a catheter). Meisch, col. 3, ll. 16-20
and ll. 53-55 and fig. 1. See also Bard, p. 2, ll. 71-75 and fig.1. Thus, the
reason proffered by the Examiner to modify the teachings of Meisch to
include a substantially concave upper wall, i.e., “for receiving a drainage
tube leading from a body drainage site” (Ans. 6), appears to already be
performed by Meisch’s urine meter device. As such, the Examiner has not
provided any findings that Meisch recognized a problem with the flat cover
member. Without a persuasive articulated rationale based on rational
underpinning for modifying the reference as proposed, the Examiner’s
rejection appears to be the result of hindsight analysis. See In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR Int'l Co. v.
Teleflex, Inc., 550 U.S. 398, 418 (2007)) (“rejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness”). Therefore, absent hindsight,
we fail to see why one having ordinary skill in the art would have been led
to replace the flat member of Meisch’s urine meter device with the concave
member of Bard, as the Examiner proposes.
In conclusion, for the foregoing reasons, the rejection of independent
claims 1 and 14, and their respective dependent claims 2-4, 7-12, and 19 as
unpatentable over Meisch and Bard cannot be sustained. See In re Fine, 837
F.2d 1071, 1076 (Fed. Cir. 1988).

Appeal 2010-001030
Application 11/362,659

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The obviousness rejection over Meisch, Bard, and Napoli
The addition of Napoli does not remedy the deficiencies of Meisch
and Bard as described above. Accordingly, the rejection of claims 13 and 15
as unpatentable over Meisch, Bard and Napoli likewise cannot be sustained.

DECISION
The decision of the Examiner is affirmed as to claim 20 and reversed
as to claims 1-4, 7-15, and 19.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

MP