Ex Parte Chase et al

Board of Patent Appeals and Interferences

Jan 20, 2012

10847952 (B.P.A.I. Jan. 20, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte DAVID J. CHASE, ERIN MARSEE, MARI HOU, TARA GLASGOW, JULIA K. IRIS, and JENNIFER STURGEON __________ Appeal 2010-008598 Application 10/847,952 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 rejection of claims directed to an intravaginal device. The Patent Examiner rejected the claims as anticipated and obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal 2010-008598 Application 10/847,952 2 STATEMENT OF THE CASE Claim 1 is representative and reads as follows: 1. An intravaginal device comprising: a. at least one fluid transport element comprising: i. a first plate having an outwardly oriented surface and an inwardly oriented surface; ii. a second plate coupled to the first plate; 1) that has a first surface disposed and maintained in facing relationship with the inwardly oriented surface of the first plate and an opposite surface; and 2) that is capable of separating from the first plate sufficiently to provide inter-plate capillary action; and b. a fluid storage element having a longitudinal axis, the fluid storage element being in fluid communication with the at least one fluid transport element; wherein the at least one fluid transport element is bendable about an axis substantially parallel to the longitudinal axis of the fluid storage element. The Examiner rejected the claims as follows:  claims 1, 3, 4, and 13 under 35 U.S.C. § 102(b) as anticipated by Fries;1  claims 1, 2, 5-7, 11, 12, and 14 under 35 U.S.C. § 102(b) as anticipated by, or in the alternative, under 35 U.S.C. § 103(a) as obvious over, Korteweg;2  claims 1-4, 10, and 11 under 35 U.S.C. § 103(a) as obvious over Osborn ‘867;3 1 Donald M. Fries et al., US 4,341,214, issued July 27, 1982. 2 Wayne Korteweg et al., US 6,183,436 B1, issued Feb. 6, 2001. 3 Thomas W. Osborn, III et al., US 6,206,867 B1, issued March 27, 2001. Appeal 2010-008598 Application 10/847,952 3  claims 1, 2, 11, and 14 under 35 U.S.C. § 103(a) as obvious over Osborn ‘235;4  claim 9 under 35 U.S.C. § 103(a) as obvious over Korteweg;  claims 8, 15, and 16 under 35 U.S.C. § 103(a) as unpatentable over Korteweg and Thompson; and  claims 17 and 18 under 35 U.S.C. § 103(a) as unpatentable over Korteweg, Thompson, and Fries. ANTICIPATION Principles of Law “To anticipate a claim, a prior art reference must disclose every limitation of the claimed invention, either explicitly or inherently.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (citations omitted). To support a finding of inherency, the evidence “must make clear that the missing descriptive matter is necessarily present in the thing described in the reference . . . . Inherency . . . may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations omitted). A. The Rejection over Fries The Examiner’s position is that Fries’ first and second layers of foam are plates providing inter-plate capillary action: “[t]he second plate has a first surface disposed and maintained in facing relationship with the inwardly oriented surface of the first plate, and an opposite surface (Figs. 8- 10). The second plate is capable of separating from the first plate 4 Thomas Ward Osborn, III et al., US 6,358,235 B1, issued March 19, 2002. Appeal 2010-008598 Application 10/847,952 4 sufficiently to provide inter-plate capillary action (Figs. 8-10, col. 5, lines 22-58).” (Ans. 4, citations to Fries.) Appellants contend that the materials Fries described “provide capillary flow between fibers and within the layer itself. Therefore, there is no teaching or suggestion in Fries that such materials are capable of providing inter-plate capillary fluid transport.” (App. Br. 18.) The Examiner responds that “Fries expressly teaches capillary action occurring between the plates (Figs. 8-10, col. 5, lines 5-44, col. 6, lines 53- 64, Claim 4; note that foam 14a has fluid transfer channels between the plies).” (Ans. 20, citations to Fries.) Findings of Fact 1. Fries disclosed: For example, while most hydrophilic polyurethane foams have high capacity for fluids, i.e. on the order of 20 to 30 grams of fluid per gram of foam, more effective utilization of the foam's capacity for fluids during use can be obtained by positioning between the foam plies, layers of other material which aid fluid transfer, such as creped tissue, cellulose wadding, rayon fiber, nonwoven webs, high capillarity micro-fibers, or the like. Layers of such fluid transfer material are shown at 11 in FIG. 9a. (Fries, col. 5, ll. 2-11.) Analysis Appellants disclosed various kinds of capillary action, and the Specification, for example at pages 8-9, and the Nguyen Declaration5 establish that inter-plate capillary action has features distinct from other kinds of capillary action. The Examiner found that Fries “expressly teaches 5 Declaration of Hien Vu Nguyen, dated March 26, 2008. Appeal 2010-008598 Application 10/847,952 5 capillary action occurring between the plates.” (Ans. 20, citing Fries cols. 5 and 6 and claim 4.) Fries described sheets of foam, and did not describe them as “plates.” At column 5, Fries disclosed that high capillarity micro- fibers may be disposed between the foam sheets. (FF 1.) Fries at column 6 does not mention capillary action. Fries’ claim 4 does not mention capillary action. Appellants have established that inter-plate capillary action is distinct from the interaction of micro-fibers with foam or foam sheets with each other. On this record, there is no evidence that Fries expressly described a device capable of providing inter-plate capillary action, and insufficient evidence that Fries inherently described such a device. B. The Rejection over Korteweg The Issue The Examiner’s position is that Korteweg’s device includes a sheath made of fluid transport elements in the form of coupled plates, i.e., smooth polymeric films. (Ans. 5.) According to the Examiner, “[t]he second plate is capable of separating from the first plate sufficiently to provide inter-plate capillary action, without modification (Fig. 2, col. 3, lines 21-34, col. 5, lines 19-33). . . . inter-plate capillary action is inherent in the smooth polymeric film taught by Korteweg.” (Id. at 6, citing Korteweg.) Appellants contend that Korteweg’s tampon separates the sidewalls in the device, and the gap between the sidewalls “prevents them from forming generally parallel plates that could provide inter-plate capillary action.” (App. Br. 13.) The Examiner responds: Appellant's Claim 1 requires that the second plate is capable of separating from the first plate sufficiently to provide inter-plate capillary action. The plates of Korteweg are fully capable of doing Appeal 2010-008598 Application 10/847,952 6 this under at least some conditions, such as when the sheath is folded or twisted. Folding or twisting of the Korteweg device within the vaginal cavity would eliminate any gap which might exist between the sidewalls 13 (Fig. 2, col. 5, lines 29-34). No modifications of the Korteweg article would be necessary for it to provide inter-plate capillary action. (Ans. 18-19.) Findings and Analysis Korteweg’s device has a tampon placed inside a sheath, the tampon blocking the films from which the sheath is formed from near contact with each other. (See Korteweg, Fig. 2.) The possibility that the sheath in Korteweg’s device might become twisted, causing the films forming the sheath to approach each other sufficiently close to allow for inter-plate capillary action, is only a possibility. Possibility is insufficient to prove that Korteweg’s device had the claimed capability. See Robertson, 169 F.3d at 745. OBVIOUSNESS C. The Rejections over Korteweg The obviousness rejection of claims 1, 2, 5-7, 11, 12, and 14 over Korteweg was entered as a pro-forma alternative to an anticipation rejection. (Ans. 5.) The anticipation rejection was reversed, and the Answer presents no separate analysis showing that the claims would have been obvious over Korteweg. We therefore reverse the obviousness rejection. The additional obviousness rejection of claim 9 over Korteweg alone, and the rejections of claims 8 and 15-18 over Korteweg in combination with one or more other references, are explicitly premised on the soundness of a finding that Korteweg taught all the limitations of claim 6. (Ans. 11-16.) Appeal 2010-008598 Application 10/847,952 7 However, the evidence does not support that finding, as discussed in the Anticipation section above. We therefore reverse all the obviousness rejections based on Korteweg. D. The Rejection over Osborn ‘867 The Examiner found that Osborn ‘867 taught an intravaginal device having a fluid storage element and flexible panels as coupled fluid transport elements. (Ans. 7-8.) According to the Examiner: The plates of Osborn '867 are flexible, which suggests that when the device is used in the normal fashion at least some of the plate surfaces will be close enough to each other for inter-plate capillary action to occur (Figs. 1-2 and 6, col. 3, lines 43-67, col. 5, lines 16-28, col. 7, lines 23-67). Osborn teaches that the fluid transport elements collect fluid and direct acquired fluid to the fluid storage element (col. 5, lines 18-20, col. 12, lines 4-7). Osborn teaches that the plates themselves may be non-absorbent, which suggests that fluid may be directed to the fluid storage element by capillary action between the plates (col. 9, lines 12-14). Osborn does not expressly teach the second plate being capable of separating sufficiently from the first plate to provide inter-plate capillary action. In light of the teaching of Osborn '867 of multiple plates spaced around the fluid storage element, that the fluid transport elements collect fluid and direct the fluid to the fluid storage element, and that the fluid transport elements may be non-absorbent, it would have been obvious to one of ordinary skill in the art to modify Osborn '867 to include the second plate being capable of separating sufficiently from the first plate to provide inter- plate capillary action. (Ans. 8.) Appellants contend that Osborn ‘867 “fails to teach or suggest any arrangement of elements making up its absorbent product to provide inter- plate capillary action.” (App. Br. 11.) We reverse. The rejection fails to show that a person of ordinary skill in the art, informed by Osborn ‘867, would have been aware of a reason to Appeal 2010-008598 Application 10/847,952 8 arrange the fluid transport elements in such a way as to provide inter-plate capillary action. An invention composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art….[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). E. The Rejection over Osborn ‘235 The Examiner’s position is that Osborn ‘235 taught an intravaginal device having a fluid transport element which the Examiner identified as “the left half of the main bag portion.” (Ans. 10, citing Osborn ‘235 Figs. 1, 3, 5, and 8.) According to the Examiner, the front left quarter of the bag section is a first plate, and the back left quarter of the bag section is a second plate, and the second plate is capable of separating from the first plate. (Id.) The Examiner explained: Osborn's description of the flexible plates having a flattened tube shape or collapsed bag like shape suggests that when the device is used in the normal fashion at least some of the plate surfaces will be close enough to each other for inter-plate capillary action to occur (Figs. 1, 3, 5, and 8, col. 6, line 66 to col. 7, line 37, col. 9, lines 54- 65). Osborn '235 does not expressly teach the second plate being capable of separating from the first plate sufficiently to provide inter- plate capillary action. In light of the teachings of Osborn '235 of first and second plates and of the flexible plates having a flattened tube shape or a collapsed bag like shape, it would have been obvious to one of ordinary skill in the art to modify Osborn '235 to include the second plate being capable of separating from the first plate sufficiently to provide inter-plate capillary action. (Id. at 10-11.) Appeal 2010-008598 Application 10/847,952 9 Appellants contend that Osborn fails to render the invention of claim 1 obvious. (App. Br. 17.) We reverse. The rejection fails to show that a person of ordinary skill in the art, informed by Osborn ‘235, would have been aware of a reason to reconstruct Osborn’s bag-like device in such a way as to provide inter-plate capillary action. See KSR, 550 U.S. at 418. SUMMARY We reverse the rejection of claims 1, 3, 4, and 13 under 35 U.S.C. § 102(b) as anticipated by Fries. We reverse the rejection of claims 1, 2, 5-7, 11, 12, and 14 under 35 U.S.C. § 102(b) as anticipated by, or in the alternative, under 35 U.S.C. § 103(a) as obvious over, Korteweg. We reverse the rejection of claims 1-4, 10, and 11 under 35 U.S.C. § 103(a) as obvious over Osborn ‘867. We reverse the rejection of claims 1, 2, 11, and 14 under 35 U.S.C. § 103(a) as obvious over Osborn ‘235. We reverse the rejection of claim 9 under 35 U.S.C. § 103(a) as obvious over Korteweg. We reverse the rejection of claims 8, 15, and 16 under 35 U.S.C. § 103(a) as unpatentable over Korteweg and Thompson. We reverse the rejection of claims 17 and 18 under 35 U.S.C. § 103(a) as unpatentable over Korteweg, Thompson, and Fries. REVERSED lp