Ex Parte CONTENTE et al

Board of Patent Appeals and Interferences

May 27, 1998

08215062 (B.P.A.I. May. 27, 1998)

1 Application for patent filed March 21, 1994.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte AUDREY CONTENTE,
BRUCE F. ROSS
and
RICHARD C. POTTER
____________
Appeal No. 97-2555
Application No. 08/215,0621
____________
ON BRIEF
____________
Before McCANDLISH, Senior Administrative Patent Judge,
PATE and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1, 4 to 16, 19 to 23, 82, 86, 87, 91 to 93
and 97, which are all of the claims pending in this application.
We AFFIRM-IN-PART.
Appeal No. 97-2555
Application No. 08/215,062
Page 2
BACKGROUND
The appellants' invention relates to a vaginal discharge
collection device. An understanding of the invention can be
derived from a reading of exemplary claims 1, 4 and 86 (the
independent claims on appeal), which appear in the appendix to
the appellants' brief.
The prior art reference of record relied upon by the
examiner in rejecting the appealed claims is:
Davis et al. (Davis) 3,983,874 Oct. 5, 1976
Claims 1, 4 to 16 and 19 to 23 stand rejected under
35 U.S.C. § 112, second paragraph, as being indefinite for
failing to particularly point out and distinctly claim the
subject matter which the appellants regard as the invention.
Claims 1, 4, 9, 10, 13, 14, 19, 23, 82, 86, 87, 91 and 97
stand rejected under 35 U.S.C. § 102(a, b and e) as being
anticipated by Davis.
Claims 5 to 8, 11, 12, 15, 16, 20 to 22, 92 and 93 stand
rejected under 35 U.S.C. § 103 as being unpatentable over Davis.
Appeal No. 97-2555
Application No. 08/215,062
Page 3
Rather than reiterate the conflicting viewpoints advanced by
the examiner and the appellants regarding the above-noted
rejections, we make reference to the final rejection (Paper No.
7, mailed July 7, 1995) and the examiner's answer (Paper No. 15,
mailed June 25, 1996) for the examiner's complete reasoning in
support of the rejections, and to the appellants' brief (Paper
No. 14, filed March 7, 1996) and reply brief (Paper No. 16, filed
August 22, 1996) for the appellants' arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
claims, to the applied prior art reference, and to the respective
positions articulated by the appellants and the examiner. As a
consequence of our review, we make the determinations which
follow.
The indefiniteness issue
We do not sustain the rejection of claims 1, 4 to 16 and 19
to 23 under 35 U.S.C. § 112, second paragraph.
The examiner's complete statement (final rejection, p. 3) of
the reasons for this rejection is
Appeal No. 97-2555
Application No. 08/215,062
Page 4
[t]he following are examples of lack of clarity
problems that occur through out these claims. It is left to
Applicant and their Counsel to identify and correct all
those not explicitly made example of below.
Claim 1 is indefinite because the term " the height "
and " is indefinite as to what plane of reference is
intended to be referred to determine the height.
The initial burden is on the examiner to identify the
specific portions of the claims which fail to particularly point
out and distinctly claim the subject matter which the appellants
regard as the invention. This the examiner has done only with
respect to independent claim 1. Accordingly, the examiner's
rejection of independent claim 4, and claims 5 to 16 and 19 to 23
dependent thereon, under 35 U.S.C. § 112, second paragraph, is
reversed since the examiner has not specified any indefiniteness
with respect to these claims.
We agree with the appellants (brief, p. 7) that the term
"the height" in claim 1 is definite. The second paragraph of
35 U.S.C. § 112 requires claims to set out and circumscribe a
particular area with a reasonable degree of precision and
particularity. In re Johnson, 558 F.2d 1008, 1015, 194 USPQ 187,
193 (CCPA 1977). In making this determination, the definiteness
of the language employed in the claims must be analyzed, not in a
vacuum, but always in light of the teachings of the prior art and
Appeal No. 97-2555
Application No. 08/215,062
Page 5
of the particular application disclosure as it would be
interpreted by one possessing the ordinary level of skill in the
pertinent art. Id. In this case, the appellants specification
(pp. 30-38) and Figure 31 clearly define which dimension of the
rim is "the height" and which dimension of the rim is "the
thickness." Thus, the meaning of the term "the height" in claim
1 would be understood by one skilled in the art. Accordingly,
the examiner's rejection of claim 1 under 35 U.S.C. § 112, second
paragraph, is reversed.
The prior art issues
Claims 1, 4 to 16 and 19 to 23
We do not sustain the rejection of claims 1, 4, 9, 10, 13,
14, 19 and 23 under 35 U.S.C. § 102(a, b and e). Likewise, we do
not sustain the rejection of claims 5 to 8, 11, 12, 15, 16 and 20
to 22 under 35 U.S.C. § 103.
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., 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed.
Cir.), cert. denied, 484 U.S. 827 (1987). The inquiry as to
whether a reference anticipates a claim must focus on what
Appeal No. 97-2555
Application No. 08/215,062
Page 6
subject matter is encompassed by the claim and what subject
matter is described by the reference. As set forth by the court
in Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ
781, 789 (Fed. Cir. 1983), cert. denied, 465 U.S. 1026 (1984), it
is only necessary for the claims to "'read on' something
disclosed in the reference, i.e., all limitations of the claim
are found in the reference, or 'fully met' by it."
Claims 1, 4 to 16 and 19 to 23 each recite the limitation
that the elastomeric rim has a height to thickness ratio of
approximately two and one-half.
The examiner believes that this limitation "reads on" the
lip 21 of Davis as shown in Figure 3 (answer, pp. 5-6). The
appellants disagree (brief, pp. 8-11).
Davis is silent as to both the height and thickness of his
lip 21. While lip 21 is shown in Figure 3, the patent drawings
are not drawn to scale; thus, Figure 3 does not disclose the
height and thickness of lip 21. Since neither the height or
thickness of lip 21 is disclosed, Davis cannot disclose, either
Appeal No. 97-2555
Application No. 08/215,062
Page 7
2 We note that the openings shown in the appellants'
drawings are circularly shaped, not annularly shaped.
expressly or inherently, the claimed ratio of height to thickness
of approximately two and one-half.
In our view, all the limitations of claims 1, 4 to 16 and 19
to 23 are not taught or suggested by Davis. Accordingly, the
examiner's rejections thereof are reversed.
Claims 82 and 86
We sustain the rejection of claims 82 and 86 under
35 U.S.C. § 102(a, b and e).
Independent claim 86 recites a vaginal discharge collector,
comprising, inter alia, a body means for providing a collection
space and an annular rim means for providing resilient outward
holding force sufficient for holding the collector in position
during use. The body means includes an annular opening2 and a
top. The annular rim means is affixed to the body means
proximate the top of the body means and is concentric with the
opening of the body means. Dependent claim 82 recites that the
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Application No. 08/215,062
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rim means is composed of material that includes a shape memory
material.
Davis discloses a catamenial device that presents a
reservoir for the uterine discharge and with an expendable tampon
retained therein (column 1, lines 63-66). As shown in Figures 1
and 3, the catamenial device includes a diaphragm D stabilized in
position by its flexible rim R. The rim R is reinforced by
spring coil 10 weakened at diametrically opposite portions (not
shown) so as to facilitate collapse for insertion into position
in the vagina. The rim R carries a cover C provided with an
inturned lip 21 to define an opening 20. The diaphragm D and the
cover C are formed of supple and pliant elastic material within
which a tampon T is inserted. In addition, Davis teaches that a
spermicidal preparation can be applied to the cover C.
Claims 82 and 86 are readable on Davis. Claim 86 reads on
Davis as follows: A vaginal discharge collector (Davis'
catamenial device) comprising: a body means (Davis' diaphragm D)
for providing a collection space and having an annular opening
for the passage of discharge into said space, said body means
having a top; and an annular rim means (Davis' rim R) for
providing resilient outward holding force sufficient for holding
the collector in position during use, said rim means being
Appeal No. 97-2555
Application No. 08/215,062
Page 9
affixed to said body means proximate the top of said body means,
said rim means being concentric with said opening. Claim 82
reads on Davis as follows: said rim means (Davis' rim R) is
composed of material that includes a shape memory material
(Davis' spring coil 10 or the material forming protective rim
13).
The argument advanced by the appellants (brief, pp. 15-16)
does not convince us that these claims are not anticipated by
Davis for the following reasons. First, it is our opinion that
Davis' rim R is equivalent to the corresponding rims described in
the present specification especially since the rims could contain
a coil spring as disclosed in the appellants' Figure 24. Second,
it is our view that Davis' rim R does provide a resilient outward
holding force sufficient for holding the device in position
during use since Davis teaches (column 2, lines 55-58) that the
diaphragm D is stabilized in position by the flexible rim R.
In our view, all the limitations of claims 82 and 86 are
taught by Davis. Accordingly, the examiner's rejections thereof
are affirmed.
Appeal No. 97-2555
Application No. 08/215,062
Page 10
Claims 87, 91 to 93 and 97
We do not sustain the rejection of claims 87, 91 and 97
under 35 U.S.C. § 102(a, b and e). Likewise, we do not sustain
the rejection of claims 92 and 93 under 35 U.S.C. § 103.
Claim 87 and its dependent claims (i.e., claims 91 to 93 and
97) require that at least one of the body means and rim means
includes a substance released during use of the collector.
The examiner believes that this limitation "reads on" the
spermicidal preparation that can be applied to Davis' cover C
(answer, p. 8).
We agree with the appellants (brief, p. 17) that the
spermicidal preparation of Davis is not "released" during use.
Accordingly, this limitation does not "read on" the spermicidal
preparation applied to Davis' cover C. Thus, in our view, all
the limitations of claims 87, 91 to 93 and 97 are not taught or
suggested by Davis. Accordingly, the examiner's rejections
thereof are reversed.
CONCLUSION
Appeal No. 97-2555
Application No. 08/215,062
Page 11
To summarize, (1) the decision of the examiner to reject
claims 1, 4 to 16 and 19 to 23 under 35 U.S.C. § 112, second
paragraph, is reversed; (2) the decision of the examiner to
reject claims 82 and 86 under 35 U.S.C. § 102(a, b and e) is
affirmed; (3) the decision of the examiner to reject claims 1, 4,
9, 10, 13, 14, 19, 23, 87, 91 and 97 under 35 U.S.C. § 102(a, b
and e) is reversed; and (4) the decision of the examiner to
reject claims 5 to 8, 11, 12, 15, 16, 20 to 22, 92 and 93 under
35 U.S.C. § 103 is reversed.
Appeal No. 97-2555
Application No. 08/215,062
Page 12
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
HARRISON E. McCANDLISH, Senior )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
WILLIAM F. PATE, III ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 97-2555
Application No. 08/215,062
Page 13
DICKSTEIN, SHAPIRO & MORIN
2101 L STREET, N.W., STE. 400
WASHINGTON, DC 20037
APPEAL NO. 97-2555 - JUDGE NASE
APPLICATION NO. 08/215,062
APJ NASE
APJ McCANDLISH
APJ PATE
DECISION: AFFIRMED-IN-PART
Prepared By: Delores A. Lowe
DRAFT TYPED: 12 May 98
FINAL TYPED: