Ex Parte Zhang et al

Patent Trial and Appeal Board

Nov 20, 2014

11819518 (P.T.A.B. Nov. 20, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte ZHENGPING ZHANG and LIANG ZHANG
_________

Appeal 2012-006120
Application 11/819,518
Technology Center 3700
__________

Before ERIC B. GRIMES, CHRISTOPHER G. PAULRAJ, and
ROBERT A. POLLOCK, Administrative Patent Judges.

PAULRAJ, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to a device
for vaginal cleaning and hygiene and sexual aid. The Examiner rejected the
claims as anticipated. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.

STATEMENT OF THE CASE
Background
According to the Specification, “[t]his invention relates to disposable
and inflatable devices for the cleansing and antisepsis of the vagina and for
sexual aid.” (Spec. 1.) “In accordance with several embodiments, the

1 Appellants identify the Real Parties in Interest as Zhengping Zhang and
Liang Zhang (see App. Br. 2).
Appeal 2012-006120
Application 11/819,518

2
inflatable device comprises a bladder that is shaped substantially as a
smooth-contoured cylinder at one end, like an ordinary condom, and made
of a thin layer of flexible, inelastic, airtight and durable material” (id. at 3).
The Claims
Claims 1, 6, 7, 12, 21, and 222 are under appeal. Independent claim 1
is representative, and reads as follows:
1. A collapsible device for vaginal cleaning and hygiene and for
sexual aid, comprising:
(a) a substantially phallic-shaped pouch with a smooth-contoured
close-end made of a sheet of substantially flexible and inelastic fluid-
impervious material, and
(b) a closure means for sealing fluid-imperviously the open-end of
said pouch including a check valve that enables a user to inflate said pouch
by mouth or a combination of a bottle-neck and a bottle-closure, thereby said
pouch can be inflated or filled by fluid and be deflated or emptied through
said closure means, whereby said device can be collapsed, packed and sealed
in a small package when empty, can penetrate the vagina as a dildo when
inflated or filled, and can deliver a medicine or antiseptic thereon to
appropriate areas of the vagina.

The Rejection

The Examiner rejected the claims under 35 U.S.C. § 102(b) as being
anticipated by Hermann.3
FINDINGS OF FACT
FF1. Hermann teaches “[b]alloon loaded dissection devices with
elongate balloons and a pushing member . . . . The devices may
utilize an elongate balloon of any suitable length which may be

2 Although claims 21 and 22 are not identified in the initial statement of the
Examiner’s rejection, they are addressed in the body of the rejection (Ans.
8). Appellants also address those claims in their brief (App. Br. 3–7).
3 Hermann et al., US 5,944,734, issued Aug. 31, 1999.
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Appeal 2012-006120
Application 11/819,518

4
“FIG. 7 is an isometric view of a balloon dissector according to the
invention, illustrating the balloon dissector in its expanded state”
(id., col. 4 ll. 62–64). With reference to Fig. 7, Hermann teaches
that “[a] luer-type fitting with check valve 67, is connected to one
port of the wye fitting 70 and an evacuation fitting 69 is connected
to the other port of the wye fitting 70” (id., col. 8 ll. 27–29).
Hermann further teaches:
In the FIG. 7 example, the elongate balloon 58 is
inflated by closing the pinch clamp 66 and injecting a
suitable inflation fluid, preferably saline solution,
although other fluids such as air may be utilized instead,
through the fitting 67 into the balloon inflation lumen
68, which is in communication with the interior space
63 of the balloon 58.

(Id., col. 8 ll. 43–49.)
FF3. Hermann teaches:
Once the desired location for dissection has been
reached through blunt tunneling, the elongate balloon
58 may be inflated by closing the pinch clamp 66 and
communicating an inflation fluid through the balloon
inflation harness 60 into the interior space 63 of the
balloon 58. As it inflates, the balloon 58 expands into
the predetermined elongate shape and dissects tissue
away from the elongate structure to create a tunnel
alongside the elongate structure. After the tunnel has
been created, the dissector 50 may be deflated by
releasing the pinch clamp 66 and applying vacuum to
the male evacuation fitting 69. After deflation, the
dissector 50 may be removed from the body through the
incision, or further advanced alongside the elongate
structure and reinflated to enlarge the tunnel.

(Id., col. 9 ll. 15–28.)
Appeal 2012-006120
Application 11/819,518

5
ANALYSIS
The Examiner finds that Hermann’s balloon dissector anticipates
independent claims 1 and 7, and dependent claims 6, 12, 21, and 22. The
Examiner’s rejection treats the preamble’s recitation of a “collapsible device
for vaginal cleaning and hygiene and for sexual aid” as an intended use
limitation given no patentable weight. Under this approach, the Examiner
asserts that “element -50- [of Hermann] is a phallic shaped pouch made from
inelastic material,” that “element -67- is a check valve,” and that “[t]he
device is collapsed when not inflated” (Ans. 8).
We determine that a prima facie showing of anticipation has not been
made. Even assuming that the balloon dissector 50 of Hermann satisfies the
structural requirements of “a substantially phallic-shaped pouch” (Cl. 1) or
“an elongated fluid-impervious bladder substantially of lateral size of the
penis” (Cl. 7), the Examiner provides no basis to conclude that the check
valve 67 taught by Hermann satisfies the requirements for the claimed
closure means. In particular, claim 1 recites a “closure means for sealing
fluid-imperviously the open-end of said pouch including a check valve that
enables a user to inflate said pouch by mouth . . ., thereby said pouch can be
inflated or filled by fluid and be deflated or emptied through said closure
means” (Cl. 1). Claim 7 recites
a closure means for inflating or filling and at least a smooth-
contoured end, wherein said closure means includes a check
valve that enables a user to inflate said pouch by mouth or a
combination of a bottle-neck and a bottle-closure and said
bladder is made of a thin layer of flexible and substantially
inelastic material and is inflated, filled, or emptied through said
closure means.
(Cl. 7.)
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Application 11/819,518

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Appellants argue that element 67 of Hermann, which is identified as a
“luer-type fitting with check valve,” is not suitable for inflating balloon 57
by mouth “because of its small-scale in nature” and “because balloon 58 is
inflated after being inserted into an incision (Hermann: column9, line 3 and
lines 15-17), its inflation needs a stronger fluid pressure to dissect tissue in
addition to against the atmospheric pressure” (App. Br. 3).
We agree with Appellants that the Examiner has not established that
element 67 satisfies the requirement for the claimed closure means.
Although the closure means is recited in a presumptive means-plus-function
format under 35 U.S.C. § 112, ¶ 6 (pre-AIA), we find that the recitation of
“a check valve that enables a user to inflate said pouch by mouth” in the
claim language imparts sufficient structure to overcome that presumption.
See Sage Products, Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1427–28 (Fed.
Cir. 1997) (“[W]here a claim recites a function, but then goes on to elaborate
sufficient structure, material, or acts within the claim itself to perform
entirely the recited function, the claim is not in means-plus-function
format.”).
There is nothing to suggest that Hermann’s element 67 enables a user
to inflate the balloon by mouth. The Examiner provides no support for the
statement that “there is no structural difference between the check valve
claimed and the check valve of Hermann therefore the examiner believes
that the check valve would be inflatable by mouth just as that set forth by the
appellant” (Ans. 9). Given the entirely different purpose for Hermann’s
balloon dissection device compared to the claimed vaginal hygiene/sexual
aid device (FF1), we agree with Appellants that one of ordinary skill in the
art would not necessarily recognize the check valve of Hermann as being
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Application 11/819,518

7
inflatable by the user’s mouth in the manner required by the claims. To the
contrary, Hermann only discloses that the balloon may be inflated by
injecting a fluid such as saline, or alternatively using air through fitting 67,
after the balloon has been placed into the body (FF2–3).
Furthermore, as noted by Appellants, “Hermann disclosed that balloon
58 is inflated through the check-valve of fitting 67 but deflated through a
different channel or device - evacuation fitting 69 with pinch clamp 66.
(Hermann: column 9, lines 23-25)” (App. Br. 4; FF3). We agree with
Appellants that this teaching does not satisfy the claim requirement that the
pouch can be both inflated and deflated/emptied through the same closure
means. See Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed.
Cir. 2008) (“Because the hallmark of anticipation is prior invention, the prior
art reference—in order to anticipate under 35 U.S.C. § 102—must not only
disclose all elements of the claim within the four corners of the document,
but must also disclose those elements ‘arranged as in the claim.’”) (Citation
omitted.)
We accordingly reverse the anticipation rejection based on Hermann.

SUMMARY
We reverse the rejection of claims 1, 6, 7, 12, 22, and 21 under
35 U.S.C. § 102(b) as being anticipated by Hermann.

REVERSED

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