Ex Parte Chase et al

Board of Patent Appeals and Interferences

Jan 17, 2012

10847951 (B.P.A.I. Jan. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte DAVID J. CHASE, ERIN MARSEE,
and TARA GLASGOW
__________

Appeal 2010-009016
Application 10/847,951
Technology Center 3700
__________

Before TONI R. SCHEINER, FRANCISCO C. PRATS, and
STEPHEN WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the Patent
Examiner’s obviousness rejections of claims to a fluid management device.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.
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STATEMENT OF THE CASE
Claim 1 is representative and reads as follows:
1. A fluid management device for use in a mammalian body, the device
sized to fit a human vagina and comprising at least one fluid transport
element arranged and configured to interface with a vaginal wall to provide
a substantially uninterrupted fluid conduit to a fluid storage element in fluid
communication therewith;
wherein (1) a distal portion of the at least one fluid transport element is
arranged and configured to extend away from the fluid storage element and
(2) the at least one fluid transport element comprises at least a first,
substantially continuous plate having an outwardly oriented surface and an
inwardly oriented surface. (Emphasis added.)

The Examiner rejected the claims as follows:
(A) claims 1, 6 and 15-18 under 35 U.S.C. § 103(a) as unpatentable over
Osborn1 and Hasse;2 and
(B) claims 1, 3-5, 7-9, 14 and 26 under 35 U.S.C. § 103(a) as unpatentable
over Korteweg3 and Hasse.
OBVIOUSNESS
(A) The Rejection over Osborn and Hasse
The Issue
The Examiner’s position is that Osborn described a fluid management
device, or tampon, sized to fit a vagina, corresponding to the device defined
in claim 1 in all particulars, except that Osborn did not expressly state the
intended vagina was human. The Examiner concluded that it would have

1 Thomas W. Osborn, III et al., US 6,206,867 B1, issued March 27, 2001.
2 Margaret Henderson Hasse et al., US 2003/0097108 A1, published May
22, 2003.
3 Wayne Korteweg et al., US 6,183,436 B1, issued Feb. 6, 2001.
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been obvious to size Osborn’s tampon to fit a human vagina. (Ans. 4-5,
citing also Hasse’s teaching to size a tampon to fit a human vagina.)
Appellants contend that the rejection improperly interprets the claim
phrase “substantially uninterrupted” in a way inconsistent with the
Specification. (App. Br. 10-11.) According to Appellants, “Osborn does not
disclose a substantially uninterrupted fluid conduit or a substantially
continuous plate,” nor does Hasse. (Id. at 11.)
The issue with respect to this rejection is whether Osborn’s fluid
transport element panel 26 is a substantially continuous plate arranged and
configured to provide a substantially uninterrupted fluid conduit.
Findings of Fact
1. We adopt the Examiner’s findings concerning the scope and content
of the Osborn and Hasse disclosures. (See Ans. 4-6 and 14-15.)
Analysis
The Examiner found that Osborn’s device had a fluid transport
element configured to interface with a vaginal wall, specifically, Osborn’s
flexible panels 26, which provided a substantially uninterrupted fluid
conduit to fluid storage element 21. (Ans. 4.) We agree. The Examiner’s
finding is consistent with the plain meaning of “substantially uninterrupted”
and, contrary to Appellants’ contentions, there is no more limiting definition
of “substantially uninterrupted” in the Specification. “Absent claim
language carrying a narrow meaning, the PTO should only limit the claim
based on the specification or prosecution history when those sources
expressly disclaim the broader definition.” In re Bigio, 381 F.3d 1320, 1325
(Fed. Cir. 2004). The evidence presented supports the prima facie case of
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obviousness over Osborn and Hasse. We find Appellants’ arguments to the
contrary unpersuasive for the reasons the Examiner gave. (See Ans. 14-15.)
Claims 6 and 15-18 have not been argued separately and therefore fall
with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).

(B) The Rejection over Korteweg and Hasse
The Issue
The Examiner’s position is that Korteweg described a fluid
management device, or tampon, corresponding to the device defined in
claim 1, except that Korteweg did not expressly state the device was to be
sized for a human vagina. The Examiner concluded that it would have been
obvious to size Korteweg’s tampon to fit a human vagina. (Ans. 6-8, citing
also Hasse’s teaching to size a tampon to fit a human vagina.) According to
the Examiner:
[t]he device has a fluid transport element which is arranged and
configured to interface with a vaginal wall (the fluid transport element
includes the upper half of sheath 10 and posterior end 16; fluid storage
element includes tampon 12; . . . note that Korteweg teaches the
sheath 10 being a film). The fluid transport element is fully capable of
providing a substantially uninterrupted fluid conduit to a fluid storage
element in fluid communication therewith under at least some
conditions . . . . Korteweg teaches a distal portion of the fluid
transport element, which is arranged and configured to extend away
from the fluid storage element (Figs. 1-2, col. 1, lines 56-60; col. 2,
lines 32-38, col. 3, lines 21-34, col. 4, lines 45-54, col. 5, lines 19-46,
Claims 1-2; . . . .

(Id. at 6-7.)
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Appellants dispute that Korteweg’s fluid transport element has a distal
portion arranged and configured to extend away from the fluid storage
element. (App. Br. 12.)
The issue with respect to this rejection is whether Korteweg’s sheath
10 has “a distal portion . . . arranged and configured to extend away from the
fluid storage element” as recited in claim 1.
Findings of Fact
2. Korteweg’s Figures 1 and 2 are reproduced here:

{FIG. 1 is a plan view of an article embodying [Korteweg’s] invention, with
portions of the sheath component broken away to expose the compressed,
dry tampon component contained therewithin;
FIG. 2 is a sectional view of the article of FIG. 1, taken
along line 2-2 thereof. (Korteweg, cols. 2-3.)}

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3. An ordinary definition of “distal” is: “situated away from the point of
attachment or origin or a central point especially of the body.”
(www.merriam-webster.com/dictionary/distal, accessed Jan. 6, 2012.)
Principles of Law
When determining whether a claim is obvious, an Examiner must
make “a searching comparison of the claimed invention – including all its
limitations – with the teachings of the prior art.” In re Ochiai, 71 F.3d 1565,
1572 (Fed. Cir. 1995).
Analysis
After reviewing the rejection and the passages of Korteweg cited
therein, we are unable to agree with the Examiner that the sheath in
Korteweg’s device is fairly described as having a portion corresponding to
Appellants’ “a distal portion . . . arranged and configured to extend away
from the fluid storage element.” Korteweg’s Figures 1 and 2 show a sheath
10 surrounding the fluid storage element 12. (FF 2.) The rejection does not
clearly identify the feature or part of Korteweg’s sheath 10 that stands in a
distal relation to element 12, nor is such an aspect of sheath 10 prima facie
evident in Korteweg’s Figures 1 and 2. The ordinary meaning of distal is
“situated away from the point of attachment” (FF 3), but there is no point of
attachment between Korteweg’s elements 10 and 12. Distal may also mean
“situated away from . . . a central point” (FF 3), and it is fair to say
Korteweg’s sheath 10 is situated away from storage element 12. However,
claim 1 also recites the “fluid transport element is arranged and configured
to extend away from the fluid storage element.” (Emphasis added.) While
Korteweg’s sheath 10 is situated away from storage element 12, it does not
extend from it, and therefore does not have the “extend away from”
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structure. We therefore agree with Appellants that the rejection did not set
out a prima facie case of obviousness.
SUMMARY
We affirm the rejection of claims 1, 6 and 15-18 under 35 U.S.C.
§ 103(a) as unpatentable over Osborn and Hasse.
We reverse the rejection of claims 1, 3-5, 7-9, 14 and 26 under
35 U.S.C. § 103(a) as unpatentable over Korteweg and Hasse.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

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