Ex Parte Abbato

Board of Patent Appeals and Interferences

Apr 23, 2010

10705177 (B.P.A.I. Apr. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte TOMASINE ABBATO
____________________

Appeal 2008-002443
Application 10/705,177
Technology Center 3700
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Decided: April 23, 2010
____________________

Before JOHN C. KERINS, KEN B. BARRETT, and
FRED A. SILVERBERG, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Tomasine Abbato (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 1-37. Response to
Non-Compliant Appeal Brief (hereinafter “Appeal Brief” or “App. Br.”) at
13. In the Answer, the Examiner withdrew the rejection of claims 1-37
under 35 U.S.C. § 112, first paragraph. Ans. 3. As a result, claim 15 is no
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longer subject to any rejection and is not before us for consideration. See
App. Br. 13 (listing no art rejection of claim 15); Ans. 3 (the Examiner
agreeing that Appellant’s statement of the grounds of rejection is correct).
Claims 1-14 and 16-37 remain subject to at least one rejection. Ans. 6. We
have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We AFFIRM-IN-PART.

THE INVENTION
Appellant’s claimed invention pertains to a portable urinal.
According to Appellant, the claimed invention addresses the need for an
improved portable urinal that effectively resists backflow and spillage.
Spec. 3:13-24. Claim 1, reproduced below, is representative of the subject
matter on appeal.
1. A portable urinal comprising:
a container defining a liquid reservoir and a
spout extending therefrom;
said spout having an inlet for receiving a
liquid;
a valve assembly disposed within said spout,
said valve assembly having a sidewall and one or
more sealable openings for permitting flow of a
liquid into said reservoir, while resisting undesired
flow of the liquid out of said reservoir, said valve
assembly further having an interior region and an
exterior region, said openings defining the line
between said interior region and said exterior
region; and
said valve assembly sidewall having a
shaped contour structured to direct liquid flow into
said openings and wherein there is no barrier
extending perpendicular to said sidewall into the
flow path of said liquid.
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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Hill US 4,059,124 Nov. 22, 1977
Ehrenkranz US 5,069,878 Dec. 3, 1991

The following Examiner’s rejections are before us for review:
1. Claims 1-14 and 16-37 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Hill;1 and
2. Claims 1-6 and 24-29 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Ehrenkranz.

The Examiner has explicitly withdrawn the rejection of claims 1-37
under 35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement. Ans. 3; see Final Rej. 4-5.
The Final Rejection contained a rejection of claims 4-9 and 27-32
under 35 U.S.C. § 103(a) as unpatentable over Hill. Final Rej. 9. That
rejection is not repeated or discussed in the Answer. Therefore, we consider
the § 103 rejection to have been withdrawn. See Manual of Patent
Examining Procedure (MPEP) § 1207.02 (8th ed., Rev. 7, Jul. 2008).

1 The Examiner objected to claims 10-14, 19-23, and 31-35 as being
dependent upon a rejected base claim, but indicated that those claims would
be allowable if rewritten in independent form. Final Rej. mailed May 22,
2006, at 1, 10-11. However, the Examiner also included those claims in the
Hill anticipation rejection. Id. at 6; Ans. 3-6. Appellant also treats those
claims as standing rejected as anticipated by Hill. App. Br. 2, 16, 21-24.
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ISSUES
Appellant contends that the Examiner erred in rejecting claim 1 as
anticipated by Hill because that reference discloses a partial flange (Hill’s
stops 38) extending perpendicular to the sidewall and into the liquid flow
path. App. Br. 20.
Appellant contends that Hill fails to disclose a curved sidewall. App.
Br. 20-21; Reply Br. 5.
Appellant contends that Hill does not disclose a lateral member being
integral to the valve assembly sidewall. App. Br. 22.
Thus, the issues on appeal include: whether Appellant has shown that
the Examiner erred because Hill’s stops extend perpendicular to the sidewall
into the flow path of the liquid as precluded by the language of claim 1;
whether Hill discloses a curved sidewall; and whether Hill discloses a lateral
member being integral to the valve assembly sidewall.
Appellant contends that Ehrenkranz fails to disclose a valve assembly
disposed within the spout as recited in claim 1. App. Br. 26.
Regarding claim 24, Appellant contends that Ehrenkranz fails to
disclose a valve assembly structured to resist a reverse flow of liquid. App.
Br. 26.
Regarding claim 26, the Examiner found that Ehrenkranz discloses a
valve assembly with concave surface 16 and sidewall 34 (Ans. 9), and that
the valve assembly comprises sidewalls having parallel outer surfaces and
sloped inner surfaces (Ans. 7 (citing fig. 3C)). Appellant argues that
Ehrenkranz lacks a valve assembly sidewall that has generally parallel outer
surfaces and generally sloped inner surfaces. App. Br. 26.
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Thus, the issues on appeal also include: whether Ehrenkranz discloses
a valve assembly disposed within the spout, whether Ehrenkranz discloses a
valve assembly structured to resist a reverse flow of liquid, and whether
Ehrenkranz discloses inner and outer surfaces as recited in claim 26.

FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence.
1. Hill discloses a valved stopper 20 for a conventional urine
bottle 10 having a generally rectangular container body 12 and a spout or
inlet 14. Hill, col. 2, ll. 29-32, 48-51. The valved stopper 20 is placed in the
bottle spout 14, as is shown in Figure 2. Id., col. 2, ll. 52-53; fig. 2. The
tubular body 22 of Hill’s stopper comprises upper and lower segments 24,
26, each of which is in the form of a frustum. Id., col. 2, ll. 55-59; col. 3, ll.
9-10. Valve member 34 is retained within the lower segment 26 by a pair of
stops 38. Id., col. 3, ll. 11-18; figs. 2 (showing unmarked stops), 4.
2. Hill’s stops 38, as shown (unmarked) in Figure 2, do not appear
to extend perpendicular to the walls of either the upper segment 24 or the
lower segment 26 of the tubular body 22.
3. Ehrenkranz discloses a urine sample collection apparatus 12
including a collection bowl 16 having a raised portion 18. Ehrenkranz, col.
2, ll. 19-21; col. 3, ll. 20-21. Raised portion 18 serves as both a pouring
spout and an anti-splatter shield. Id., col. 3, ll. 21-22. The collection
apparatus, or collector, 12 has a cylindrical wall base 34. Id., col. 4, ll. 4-5.
4. Ehrenkranz’s device utilizes ball 28 which is kept by cage 30 in
tapered channel 26 of urine input tube 24. Ehrenkranz, col. 3, ll. 43-44, 57-
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58. Because the ball 28 remains in the channel 26, the ball will restrict the
flow of liquid out of the device if, for example, the device is inverted. See
id., col. 3, ll. 9-10; fig. 5 (showing the inverted collector).
5. A modified version of Ehrenkranz’s Figure 3C is reproduced
below:

The modified version of Figure 3C
shows Ehrenkranz’s urine collector

The modified Figure 3C depicts a cross-sectional view of Ehrenkranz’s urine
collector with the addition of dimensioning lines at the lower bowl area. See
Ehrenkranz, col. 3, ll. 3-5. The figure depicts, in the area indicated by the
dimensioning lines, generally parallel outer surfaces (wall base 34) and
generally curved inner surfaces (the inside of collection bowl 16).

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987) (citations omitted).
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ANALYSIS
The rejection of claims 1-14 and 16-37 under 35 U.S.C. § 102(b) as being
anticipated by Hill
Claims 1-3
Claim 1 recites a “valve assembly sidewall . . . wherein there is no
barrier extending perpendicular to said sidewall into the flow path of said
liquid.” Appellant argues that Hill’s Figure 2 discloses partial flanges or
tabs (Hill’s stops 38) that extend perpendicular to the sidewall and into the
flow path. App. Br. 18-19, 20; Reply Br. 2-3. Appellant utilizes a modified
version of Hill’s Figure 2 to help explain this argument. App. Br. 19. That
modified figure is reproduced below:

Appellant’s modified figure is a modified version of
Hill’s figure 2 showing a urine bottle inlet and stopper

The modified Figure 2 is a sectional view of the urine bottle inlet provided
with a valved stopper in position to allow fluid to pass into the bottle, and
with the addition of two circles at that bottom of the figure. See Hill, col. 2,
ll. 17-19.
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We are not persuaded of error by Appellant’s argument. The term
“said sidewall” in the claim phrase “no barrier extending perpendicular to
said sidewall” refers to the valve assembly sidewall. The sidewalls of Hill’s
valve assembly are the walls of the two frustums (upper and lower segments
24 and 26, respectively), not the sides of the spout 14. See Fact 1. The stops
38, which are shown but not labeled in the circled areas of Hill’s Figure 2
above, do not appear to be extending perpendicular to the sidewall of the
valve assembly. Fact 2. As such, we affirm the rejection of claim 1 as
anticipated by Hill.
Appellant argues that claims 2 and 3 are allowable over Hill due to
their dependency from allowable independent claim 1. App. Br. 20.
Because we affirm the rejection of independent claim 1, we also sustain the
rejection of claims 2 and 3.

Claims 4-14
Claim 4 recites a valve assembly sidewall having an inner surface
curving from the upper diameter to the lower diameter. Claims 5-15 depend
directly or indirectly from claim 4, and thus also include the curving surface
limitation. Appellant contends that Hill’s stopper sidewall is straight, not
curved. App. Br. 20; Reply Br. 5. The Examiner, citing Hill’s Figure 2,
finds that Hill’s sidewalls 24, 26 “have portions pointing in a notch shape
curve.” Ans. 8. It appears that the Examiner is referring to the point where
the two frustums (the upper and lower segments 24, 26 of Hill’s tubular
body 22) meet. Figure 2 appears to depict the walls of both frustums as
straight, with the junction being angular rather than curved. As such, we
cannot find by a preponderance of the evidence that Hill’s Figure 2 discloses
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an inner surface curving from the upper diameter to the lower diameter. We
reverse the rejection of claim 4, and of its dependent claims 5-14, as
anticipated by Hill.

Claims 16-23
Claim 16 recites that the valve assembly includes a lateral member,
with the lateral member being integral to the valve assembly sidewall.
Appellant contends that Hill does not disclose this feature. App. Br. 22.
It appears that the Examiner found Hill’s valve member 34 to be the
recited lateral member. See Ans. 5; Final Rej. 10 (“[Hill’s] element 34 may
be interpreted as the central disk, a lateral member, or the membrane of the
claimed invention.”) (emphasis added). However, the Examiner did not find
that – and we fail to see how – Hill’s valve member 34 is integral to the
valve assembly sidewall. Cf. Final Rej. 3 (The Examiner maintaining that
“integral” does not require a unitary one-piece structure, but not applying
that construction to Hill’s disclosure.). As such, we cannot sustain the
rejection of claim 16 as anticipated by Hill. We also cannot sustain the
rejection of claims 17-23, which depend directly or indirectly from claim 16.

Claims 24-26
Independent claim 24 recites a valve assembly “wherein there is no
barrier extending perpendicular to said sidewall [of the valve assembly] into
the flow path of said liquid.” As with claim 1, Appellant argues that Hill’s
device has a partial flange that extends perpendicular to the sidewall and into
the flow path. App. Br. 23. For the same reasons set forth above regarding
claim 1, we affirm the rejection of claim 24 as anticipated by Hill.
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For claims 25 and 26, Appellant relies on their dependency on claim
24 for patentability. App. Br. 23. As we have not been persuaded of error
regarding claim 24, we also affirm the rejection of claims 25 and 26.

Claims 27-37
Claim 27 recites that the valve assembly sidewall has an inner surface
curving from the upper diameter to the lower diameter. For the reasons
discussed above regarding claim 4, we reverse the rejection of claim 27, and
of claims 28-37 which depend therefrom, as anticipated by Hill.

The rejection of claims 1-6 and 24-29 under 35 U.S.C. § 102(b) as being
anticipated by Ehrenkranz
Claims 1-6
Appellant contends that Ehrenkranz fails to disclose a valve assembly
disposed within the spout as recited in claim 1. App. Br. 26. The Examiner
found that, in Ehrenkranz, the “valve assembly is concave surface 16
forming sidewall 34 disposed within/inside spout 18.” Ans. 9 (citing
Ehrenkranz, figs. 1 and 3b). Ehrenkranz’s component 18 is a raised portion
of the collection bowl 16. Fact 3. The Examiner has not adequately
articulated, and we fail to see, how the components found to be the valve
assembly are disposed within the raised portion 18. As such, we cannot
sustain the rejection of claim 1 as anticipated by Ehrenkranz. We also
cannot sustain the Ehrenkranz-based rejection of claims 2-6, which depend
directly or indirectly from claim 1.

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Claims 24-25
Independent claim 24 is directed to the valve assembly itself, and does
not contain the “disposed within said spout” limitation of claim 1. Claim 24
recites:
A valve assembly . . . comprising . . . one or more sealable
openings within said passageway for permitting flow of a liquid
through said passageway, while resisting undesired backflow of
the liquid through said passageway . . . .
We assume, for the purposes of this appeal only, that the “resisting”
language applies to the entire valve assembly (rather than merely the
“openings” limitation in which it appears) as argued by Appellant. See App.
Br. 26 (“The valve assembly is structured to resist a reverse flow of
liquid.”).
We are not persuaded of error by Appellant’s argument that
Ehrenkranz’s valve is designed to block flow into the container rather than
backflow out of the container, App. Br. 25, 26. Appellant’s assertion that
Ehrenkranz’s configuration does not prevent backflow (Reply Br. 6) is not
commensurate with the language of claim 24. That claim merely recites:
“while resisting undesired backflow of the liquid through the passageway.”
Although the ball in the passageway may not prevent backflow, it will
impede – or resist –flow out of the device. Fact 4.
For claim 25, Appellant relies on its dependency on claim 24 for
patentability. App. Br. 26. As we have not been persuaded of error
regarding claim 24, we also affirm the rejection of claim 25.

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Claims 26-29
We are not persuaded of error by Appellant’s argument that
Ehrenkranz fails to disclose a valve assembly sidewall having generally
parallel outer surfaces and generally sloped inner surfaces, App. Br. 26. The
Examiner found (Ans. 9), and Appellant does not appear to dispute (App.
Br. 25; Reply Br. 5-6), that Ehrenkranz’s valve assembly includes the
collection bowl 16 and cylindrical wall base 34. We find that Ehrenkranz’s
Figure 3C depicts the lower portion of the collection bowl as having
generally parallel outer walls and generally curved inner surfaces. See
Fact 5.
For claims 27-29, Appellant relies on their dependency on claim 26
for patentability. App. Br. 26. As we have not been persuaded of error
regarding claim 26, we also affirm the rejection of claims 27-29.

CONCLUSIONS
Appellant has not shown that the Examiner erred in finding that Hill’s
stops do not extend perpendicular to the sidewall into the flow path of the
liquid as required by the language of claim 1.
Hill does not disclose a curved sidewall and Hill does not disclose a
lateral member being integral to the valve assembly sidewall.
Ehrenkranz does not disclose a valve assembly disposed within the
spout.
Ehrenkranz discloses a valve assembly structured to resist a reverse
flow of liquid, and Ehrenkranz discloses inner and outer surfaces as recited
in claim 26.

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DECISION
The decision of the Examiner to reject claims 4-14, 16-23, and 30-37
is reversed. The decision of the Examiner to reject claims 1-3 and 24-29 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED-IN-PART

Klh

DAVID C. JENKINS
ECKERT SEAMANS CHERIN & MELLOTT, LLC
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